Tavory v. Ntp, Inc.

• Decision Date: 17 July 2007
• Docket Number: Civil Action No. 3:06-CV-628.
• Citation: 495 F.Supp.2d 531
• Court: U.S. District Court — Eastern District of Virginia
• Parties: Oren TAVORY, Plaintiff, v. NTP, INC., Defendant.

495 F.Supp.2d 531

Oren TAVORY, Plaintiff, v. NTP, INC., Defendant.

Civil Action No. 3:06-CV-628.

United States District Court, E.D. Virginia, Richmond Division.

July 17, 2007.

COPYRIGHT MATERIAL OMITTED

Dana Duane McDaniel, Joel Christopher Hoppe, Spotts Fain PC, Richmond, VA, G. Wrede Kirkpatrick, George Donovan Conwell, Jr., Conwell Sukhia & Kirkpatrick PA, Tampa, FL, Steven G. Hill, Hill Kertscher & Wharton LLP, Atlanta, GA, for Plaintiff.

Christopher Michael Mills, Wiley Rein LLP, McLean, VA, Gregory Michael Murphy, Maya Miriam Eckstein, Hunton & Williams LLP, Richmond, VA, James Harold Wallace, Jr., John Benedict Wyss, Kevin Paul Anderson, Wiley Rein LLP,. Washington, DC, for Defendant.

MEMORANDUM OPINION

JAMES R. SPENCER, Chief Judge.

This matter comes before the Court on Defendant NTP's Motion for Summary Judgment, filed as Docket Entry No. 85, pursuant to Federal Rule of Civil Procedure 56. On September 20, 2006, and in the wake of the notorious and protracted BlackBerry litigation, NTP, Inc. v. Research In Motion, 3:01-CV-767, Plaintiff Oren Tavory brought this civil action to be joined as an inventor with respect to six certain patents.¹ Additionally, Counts VII and VIII of the Complaint sought damages for copyright infringement and unjust enrichment, respectively. By Memorandum Opinion & Order dated December 26, 2006, Count VIII was dismissed. (Docket Entry No. 42.) NTP then moved for summary judgment as to the remaining counts, and by Order dated May 16, 2007, that Motion was granted. (Docket Entry No. 105.) This Opinion has been issued to explain that disposition.

I.

In the latter years of the 1980s, Oren Tavory became employed as an independent technical consultant with Telefind, a telecom concern that was then engaged in the operation of a nation-wide paging network. While affiliated with Telefind, the Plaintiff was assigned to a project that purposed to merge portable computing with emerging pager technology. The objective of that project was to create the first commercially viable, wireless-enabled laptop computer. Telefind subcontracted with ESA, a manufacturer of electronic hardware components, to assist with construction. The President of ESA was Tom Campana, a gentleman who moonlighted with Telefind as an executive officer. Mr. Campana was involved extensively in the laptop project, as were two of ESA's programmers, Mike Ponschke and Gary Thelen. The Plaintiff came to know these men through that association.

Initially, their work met with some success. Email was effectively sent through Telefind's pager network to destination processors — the pagers, which then transmitted those messages to laptop computers to which they were connected. For reasons that are not relevant to these proceedings, however, the laptop project was abandoned. By early 1991, Telefind had discontinued funding, and Tavory had sought other employment.

At about the same time, Mr. Campana, Mr. Ponschke, and Mr. Thelen filed a joint application with the United States Patent & Trademark Office for what is described as an "electronic mail system." It is the Court's understanding that this system and its associated technology were developed in the course of the laptop project. Eventually, the PTO approved the application and a patent was issued.² Over the coming years, these men would apply for and be granted at least five more patents, each involving electronic mail systems or related technology. Together, these six are the patents-in-suit.

In 1992, Mr. Campana co-founded NTP, a Virginia-based corporation that is principally engaged in the business of holding telecom patents for licensing to third-party manufacturers. It is estimated that NTP's portfolio contains fifty or more active patents. The patents-in-suit are among NTP's holdings.

In 2001, NTP brought an action for infringement against Research In Motion, the manufacturer of the wireless handheld device BlackBerry, with respect to a number of patents that included the patents-insuit in the instant proceedings. That case was litigated before this Court, and Tavory was deposed in connection with his work at Telefind. In the course of his deposition, the Plaintiff identified portions of source code in the patents-in-suit that he had allegedly authored. At no time, however, did he assert the existence of a copyright in the code, nor did he offer any proof of authorship or ownership.

BlackBerry lingered in the courts for nearly five full years. It was not until the early months of 2006 that a settlement between the parties was reached.³ Mr. Campana never lived to see that day, though; he had passed away two years earlier.

Soon after BlackBerry's settlement, Tavory submitted an application for copyright registration as to the portions of the source code he had claimed to author. Then on September 20, 2006, this action for co-inventorship was filed. The Plaintiffs allegations in this matter are twofold. First, that he is the author of the source code that was used to "push" an item of email onto the paging network for delivery. This is referred to periodically as the Push Software. His second allegation is that through neglect or design, his name was omitted from the patent applications. He seeks to be established as the copyright owner of the Push Software, to be recognized as a co-inventor of the patentsin-suit, and damages appertaining to the infringement of those rights.

II.

Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed. R.Civ.P. 56(c). "The plain language of Rule 56(c) mandates the entry of summary judgment ... against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The non-moving party may not rest upon mere allegations or denials contained in his pleadings, but must set forth specific facts showing that there is a genuine issue for trial. Fed.R.Civ.P. 56(e). The facts of this matter, as well as any reasonable inferences to be drawn from those facts, have been construed in the light more favorable to the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). "Summary judgment will be granted unless a reasonable jury could return a verdict for the non-moving party on the evidence presented." Id. at 247-48, 106 S.Ct. 2505.

III.

The claim before the Court consists in part of an action for direct copyright infringement. To prevail, the copyright holder must prove "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co.,499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991); see also ALS Scan, Inc. v. RernarQ Cmtys., Inc., 239 F.3d 619 (4th Cir.2001). There is also a jurisdictional limitation. A copyright must be registered prior to the institution of an action for infringement. 17 U.S.C. § 411(a); Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283 (4th Cir.2003). "[T]o obtain a copyright registration, an applicant must deposit as part of his application a `copy' or `copies' of the work." Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1211 (9th Cir.1998)(citing 17 U.S.C. § 408(b)(1),(2)). Not just any kind of copy will suffice, though; only originals or "bona fide copies" are acceptable. See Seiler v. Lucasfilm, Ltd., 808 F.2d 1316 (9th Cir.1986); see also Coles v. Wonder, 283 F.3d 798 (6th Cir.2002); Geoscan, Inc. v. Geotrace Techs., Inc., 226 F.3d 387 (5th Cir.2000); Kodadek, 152 F.3d 1209. A bona fide copy is one that is "virtually identical to the original" and was "produced by directly referring to the original." Kodadek, 152 F.3d at 1211. In contrast are "reconstructions," documentary evidence of putative copyrights that are created without reference to original works or bona fide copies. See, e.g., Seiler, 808 F.2d 1316 (9th Cir.1987).

The Copyright Act is wisely disdainful of reconstructions. One need look no further than to Kodadek, 152 F.3d 1209 (9th Cir. 1998), for an illustration. In 1993, MTV aired Beavis and Butt-Head, an animated series that centered on two Texas teens and their penchant for petty vandalism, music videos, and "chillaxin'." The cartoon was an instant success. Among its viewers was the plaintiff, Kodadek. He claimed that the characters Beavis and Butt-Head were his ideas, that he had conceived their characters in 1991, and that the show's creator, Mike Judge, had stolen his concepts. Kodadek filed for a copyright registration in 1993, and submitted in connection with his application copies of sketches of the characters Beavis and Butt-Head. Not only were these sketches drawn that same year, they were made after Kodadek had seen the show. The plaintiff also backdated his application to indicate that "the year in which his work was created" was 1991. The Copyright Office issued a certificate of registration, and Kodadek followed with an action for infringement against MTV and Mr. Judge. Summary judgment was entered against the plaintiff, in relevant part for his failure to obtain a valid copyright registration, and affirmed on appeal.

This is precisely the type of fraudulent claim that the Copyright Act seeks to frustrate. In one sense, the deposit requirement serves a gatekeeping function. Effective registration of a copyright is predicated on the submission of some objective indicia of an individual's authorship. In another sense, the requirement serves an evidentiary function. The copies that are submitted in connection with an application for registration then become part of a record by which claims of infringement are tested. The utility of these functions, as well as our confidence in the integrity of the copyright system, breaks down when...