State of Tex. v. West Pub. Co.

• Decision Date: 13 January 1988
• Docket Number: Civ. A. No. A-87-CA-639.
• Citation: 681 F. Supp. 1228
• Parties: The STATE OF TEXAS, Plaintiff, v. WEST PUBLISHING COMPANY, Defendant.
• Court: U.S. District Court — Western District of Texas

681 F. Supp. 1228

The STATE OF TEXAS, Plaintiff, v. WEST PUBLISHING COMPANY, Defendant.

Civ. A. No. A-87-CA-639.

United States District Court, W.D. Texas, Austin Division.

January 13, 1988.

Jim Mattox, Atty. Gen. of Texas, Allene D. Evans, Asst. Atty. Gen., Chief, Antitrust Div., Donna L. Nelson, Asst. Atty. Gen., Antitrust Div., Austin, Tex., for plaintiff.

Vance K. Opperman, Linda L. Holstein and Raymond Oechsler, Opperman & Paquin, Minneapolis, Minn., for defendant.

ORDER

WALTER S. SMITH, Jr., District Judge.

Came on to be considered Defendant's Motion to Dismiss. After careful consideration, the Court is of the opinion that the Defendant's motion is meritorious and should be granted.

Defendant, West Publishing Company (West), seeks to have the State of Texas' claims for declaratory relief pursuant to 28 U.S.C. § 2201 dismissed for lack of subject-matter jurisdiction. Although West argues several grounds for dismissal, this Court is of the opinion that Plaintiff State of Texas (State) has failed to satisfy the threshold requirement that an action for declaratory relief present an actual controversy, which is a jurisdictional prerequisite. Consequently, the Court declines to express an opinion on the merits of the remainder of West's motion.

It is well-settled that "a federal court may not issue a declaratory judgment unless there exists an `actual controversy,' i.e., there must be a substantial controversy of sufficient immediacy and reality between parties having adverse legal interests." Middle South Energy, Inc. v. City of New Orleans, 800 F.2d 488, 490 (5th Cir.1986). In this regard, the "case or controversy" requirement of Art. III of the Constitution is identical to the "actual controversy" requirement of the Declaratory Judgment Act. Adams v. McIlhany, 764 F.2d 294, 299 (8th Cir.1985); Windsurfing International, Inc. v. AMF, Inc., 828 F.2d 755, 757 (Fed.Cir.1987). Thus, the fundamental inquiry is "whether the conflicting contentions of the parties ... present a real, substantial controversy between parties having adverse legal interests, a dispute definite and concrete, not hypothetical or abstract." Babbitt v. United Farm Workers National Union, 442 U.S. 289, 298, 99 S.Ct. 2301, 2308, 60 L.Ed.2d 895, 906 (1979) (quoting Railway Mail Assn. v. Corsi, 326 U.S. 88, 93, 65 S.Ct. 1483, 1487, 89 L.Ed. 2072, 2076 (1945)); KVUE, Inc. v. Austin Broadcasting Corp., 709 F.2d 922, 927 (5th Cir.1983). While this rule is well-established, it is not, of course, a magic wand to wave over a case and instantly and mathematically divine whether the facts present a "dispute definite and concrete." This Court recognizes that the difference between an abstract or hypothetical question which is not justiciable by a federal court and an "actual controversy" which is justiciable is one of degree "and is not discernible by any precise test." Babbitt, 442 U.S. at 297, 99 S.Ct. at 2308, 60 L.Ed.2d. at 906.

With this conceptual framework in mind, the question in this case becomes whether there is an actual controversy of sufficient immediacy and reality in the particular context of a copyright claim. In the absence of Circuit Court authority directly addressing this issue, the Court finds the reasoning in patent and trademark cases persuasive.¹ In patent and trademark infringement cases where a party has sought a declaratory judgment prior to an actual infringement, federal courts have established a threshold requirement that "the defendant must have engaged in conduct giving rise to a reasonable apprehension on plaintiff's part that it will face ... suit or the threat of one if it commences or continues the activity in question." Crown Drug Co., Inc. v. Revlon, Inc., 703 F.2d 240, 243 (7th Cir.1983); International Medical Prosthetics Research Associates, Inc. v. Gore Enterprise Holdings, Inc., 787 F.2d 572 (Fed.Cir.1986) ("the actual controversy requirement is satisfied when `a defendant's conduct has created on the part of the declaratory plaintiff a reasonable apprehension that it will face an infringement suit if it commences or continues the activity in question'"). Thus, it logically follows that "the focus of the analysis ... must rest on the defendant's statements or conduct; a `reasonable apprehension alone, if not inspired by defendant's actions, does not give rise to an actual controversy.'" Crown Drug, 703 F.2d at 243 (quoting International Harvester Co. v. Deere & Co., 623 F.2d 1207, 1211 (7th Cir.1980)); see also International Medical Prosthetics, 787 F.2d at 575. Consequently, an objectively reasonable apprehension of litigation can only be created by the defendant's actions rather than unilateral conduct on the part of the plaintiff. Under this analysis, the Court is to look at the defendant's (i.e. West's) conduct to determine whether it would justify an objectively reasonable fear of litigation which would thereby bring the parties into a truly adversarial posture. Without this adversarial posturing, there can be no "actual controversy" upon which to base this Court's jurisdiction. It is important to note that the burden of establishing this requirement is on the declaratory plaintiff. Indium Corporation of America v. Semi-Alloys, Inc., 781 F.2d 879, 883 (Fed.Cir.1985); Accord Middle South Energy, Inc. v. City of New Orleans, 800 F.2d 488, 490 (5th Cir.1986).

When one looks at the facts of this case, it becomes evident that the State has failed to carry its burden of showing that an actual controversy exists now between it and West. The State's complaint concedes that the "nature of the controversy" is that:

It has come to the attention of the State of Texas that West claims a copyright in the statutory headings and article numbers supplied by its editorial board. The State of Texas seeks to establish that any such work done by West cannot and should not be copyrighted.

Plaintiff's Original Complaint, p. 7.

The Complaint goes on to request alternative declaratory relief to the effect that if West ever held a valid copyright, the copyrighted material is now in the public domain or that any use of the material by the State would be "fair use." Notwithstanding the alternative requests for relief, the crux of the "controversy" is that the State wants to have the validity of West's claimed copyright adjudicated.

The Federal Circuit noted in International Medical Prosthetics:

that a patent exists does not alone create a right to challenge its validity in court. Absent an actual controversy, such a challenge is an abuse of the judicial process.

International Medical Prosthetics, 787 F.2d at 576.

Similarly, in this case, the fact that someone claims a copyright in certain material does not, standing alone, create a right to challenge it and thereby create a justiciable controversy. The State of Texas may not find it appealing that West has claimed this copyright, but this is not enough to create a dispute which is ripe for the federal courts. There can be no actual controversy unless West does something that gives the State a reasonable apprehension of litigation. Nowhere in its Complaint or other pleadings does the State allege that West has...