McMahon v. Prentice-Hall, Inc.

• Decision Date: 26 March 1980
• Docket Number: No. 77-598C(2).,77-598C(2).
• Parties: Dr. Frank McMAHON, Plaintiff, v. PRENTICE-HALL, INC. et al., Defendants.
• Court: U.S. District Court — Eastern District of Missouri

486 F. Supp. 1296

Dr. Frank McMAHON, Plaintiff, v. PRENTICE-HALL, INC. et al., Defendants.

No. 77-598C(2).

United States District Court, E. D. Missouri, E. D.

March 26, 1980.

COPYRIGHT MATERIAL OMITTED

John M. Howell, Richard E. Haferkamp, Rogers, Eilers & Howell, St. Louis, Mo., for plaintiff.

George S. Hecker, Charles A. Weiss, Bryan, Cave, McPheeters & McRoberts, St. Louis, Mo., for Prentice-Hall, Inc.

Robert S. Allen, Lewis, Rice, Tucker, Allen & Chubb, St. Louis, Mo., for Charles Morris.

J. Richard McEachern, Guilfoil, Symington, Petzall & Shoemake, St. Louis, Mo., for Meredith Corp.

MEMORANDUM

I

NANGLE, District Judge.

This case is now before the Court on defendants' motions for summary judgment and to strike plaintiff's jury demand. Plaintiff brought this suit pursuant to 28 U.S.C. §§ 1332 and 1338 alleging copyright infringement, fraud, breach of contract, breach of fiduciary duty, and breach of implied covenants.

Plaintiff is Dr. Frank B. McMahon, a psychology professor and the author of the introductory psychology textbooks allegedly infringed by defendants. Defendants are Dr. Charles G. Morris, likewise a psychology professor, and author of the allegedly infringing works, and Prentice-Hall, Inc., the publisher of both plaintiff's and Morris' textbooks. Originally, Meredith Corporation, the predecessor publisher of the books involved was also a defendant, but summary judgment was granted as to Meredith Corporation on the basis of a release executed by plaintiff. McMahon v. Prentice-Hall, Inc., 443 F.Supp. 596, aff'd 595 F.2d 433 (8th Cir. 1979).

Involved in this litigation are seven books and a manuscript. Plaintiff is the author of three editions of Psychology, The Hybrid Science. He has also authored Abnormal Behavior: Psychology's View, and the manuscript for that book. Defendant Morris is author of three editions of Psychology, An Introduction.

Plaintiff's complaint is in six counts. One count has previously been dismissed by plaintiff. Plaintiff's major claim is presented in Count II. In this count, plaintiff alleges that he is the owner of an equitable copyright in the books authored by him and published by defendant Prentice-Hall, as well as the owner of a common-law copyright in the Abnormal Behavior manuscript. Plaintiff further alleges that the books authored by defendant Morris and published by defendant Prentice-Hall infringe these copyrights.

The remaining four counts seek to recover from defendant Prentice-Hall via differing legal theories and variations of the facts alleged in Count II. Count I alleges that during the negotiations leading to plaintiff's publishing contracts with Prentice-Hall, Prentice-Hall falsely and fraudulently represented that it would not engage in conduct detrimental to plaintiff's books, which representations were breached by the publication of the infringing Morris books. Count III alleges that plaintiff is entitled to receive royalties from the sales of the Morris books, since those books infringe plaintiff's copyrights. Count IV alleges that Prentice-Hall breached its fiduciary duty to plaintiff through the publication of infringing books. Finally, Count VI alleges that Prentice-Hall breached implied covenants and contracts by promoting and selling the infringing Morris books.

The various counts are not phrased in terms of "infringement" or "infringing books". The substance of each count, however, clearly appears to be bottomed on the assertion that the Morris books infringe plaintiff's copyrights. Without such a basis, this Court does not believe a cause of action would be stated in those counts. Cf. Alexander v. Haley, 460 F.Supp. 40 (S.D.N. Y.1978). Defendants have, therefore, moved for summary judgment on each count on the basis that there is no substantial similarity between the authors' works, and therefore no infringement. This Court must agree that if summary judgment is appropriate as to the issue of "substantial similarity" and, therefore, infringement, plaintiff's complaint must be dismissed in its entirety.

II.

Before reaching defendants' motions for summary judgment, this Court must initially deal with defendants' motion to strike plaintiff's demand for a jury trial. The standards to be applied, and the appropriateness of summary judgment, will necessarily depend on whether or not this case is to be tried to a jury. Nunez v. Superior Oil Co., 572 F.2d 1119 (5th Cir. 1978). See Part III, infra.

Plaintiff requests various forms of relief in his complaint, some of which are unquestionably equitable and some of which are unquestionably legal. Plaintiff initially requests that his publishing contracts with Prentice-Hall be terminated, and that Prentice-Hall assign the copyrights to his books to him. He further seeks injunctions against the further publication and sale of the Morris books and further infringement of his copyrights, as well as impoundment of all copies of the Morris books. Monetarily, plaintiff seeks recovery of the profits Prentice-Hall has earned on the Morris books, royalties from the sales of the Morris books, statutory copyright infringement damages, plus actual and punitive damages.

Plaintiff is clearly seeking both legal and equitable relief. Though defendants characterize the legal relief as "incidental" to the equitable relief, such a characterization is not justification for the denial of a jury trial where the legal claims would entitle a party to such a trial if those claims were presented on their own. Dairy Queen v. Wood, 369 U.S. 469, 82 S.Ct. 894, 8 L.Ed.2d 44 (1962). It is also clear that merely because portions of plaintiff's prayer seek an "accounting" the right to trial by jury is not lost. Only when the accounts involved are of such a complicated nature that only a court of equity can unravel them is the right lost; such circumstances will only rarely arise. Id. See, also, Bernstein v. Universal Pictures, 79 F.R.D. 59, 67 (S.D.N.Y.1978).

There is dispute among the courts as to whether a party is entitled to a trial by jury in a suit seeking only statutory damages. Compare Broadcast Music, Inc. v. Papa John's Inc., 201 U.S.P.Q. 302 (N.D.Ind. 1979); Cayman Music, Ltd. v. Reichenberger, 403 F.Supp. 794 (W.D.Wis.1975), with Chappell & Co., Inc. v. Pumpernickel Pub, Inc., 79 F.R.D. 528 (D.Conn.1977); Chappell & Co. v. Cavalier Cafe, 13 F.R.D. 321 (D.Mass.1952). In this case, however, plaintiff seeks not merely statutory damages but also actual and punitive damages. It has long been held that an action to recover actual damages for copyright infringement is legal in nature and the parties are entitled to a trial by jury. Arnstein v. Porter, 154 F.2d 465 (2d Cir. 1946). Dairy Queen, supra at 477 n.15, 82 S.Ct. at 899. Even assuming there is no right to trial by jury on the claim for statutory damages, the combination of these claims, with unquestionably legal claims for actual damages in a single complaint does not deprive plaintiff of his right to trial by jury on the legal claims.

Defendants also seek to strike the jury demand due to the equitable nature of plaintiff's copyrights. Equity is necessary only to recognize plaintiff's right to bring this infringement action; the underlying claim is, as previously mentioned, legal in character. Under these circumstances, the equitable nature of plaintiff's copyright does not deprive plaintiff of his right to a jury trial. Ross v. Bernhard, 396 U.S. 531, 90 S.Ct. 733, 24 L.Ed.2d 729 (1970). In any event, in only one count is plaintiff seeking to recover for the actual infringement of the copyright. The remaining counts assert fraud, breach of covenant, and other theories to which the infringement is merely an element. Whether plaintiff has an equitable or legal copyright is immaterial to these counts.

Finally, defendants argue that the case as structured by the plaintiff is beyond the practical abilities and limitations of a jury. This Court must concede that the thought of attempting to present this case to the jury in an organized and comprehensible fashion is troubling. This case does not appear significantly more complex or unmanageable than other cases, however. The complexities of this case do not appear to approach those of Bernstein, supra, a case on which defendants heavily rely. In some situations, the complexity of the case alone might well dictate the refusal of a jury demand, but this is not the case. Defendants' motion to strike the jury demand will therefore be denied. In re United States Financial Securities Litigation, 609 F.2d 411 (9th Cir. 1979).

III.

Plaintiff claims in Count II that defendants infringed his equitable copyrights in the works in question. An essential element of plaintiff's claim in this count is the proof that the allegedly infringing and infringed works are substantially similar. Reyher v. Children's Television Workshop, 533 F.2d 87 (2d Cir. 1976); Arnstein, supra; Fuld v. National Broadcasting Company, Inc., 390 F.Supp. 877 (S.D.N.Y.1975); Nimmer on Copyright, §§ 8.01G, 13.03A, 13.03D. Similarly, as previously discussed, a finding of substantial similarity is essential to plaintiff's proof on the remaining counts.

In opposition to the present motion for summary judgment, plaintiff claims that this Court must hear evidence as to why the works are to be considered substantially similar. It is true that evidence as to the development of the works in question, the sources and originality of the authors' material, the limited vocabulary available to explain the scientific concepts discussed, and explanations of the technical subjects covered are relevant to the disposition of this case. McGraw-Hill, Inc. v. Worth Publishers, Inc., 335 F.Supp. 415 (S.D.N.Y. 1971); Arnstein, supra; Toksvig v. Bruce Pub. Co., 181 F.2d 664 (7th Cir. 1950); Meredith Corporation v. Harper & Row Publishers, Inc., 378 F.Supp. 686 (S.D.N.Y.) aff'd 500 F.2d 1221 (2d Cir. 1974); Higgins v. Baker, 309 F.Supp. 635 (S.D.N.Y.1970). These...