WPOW, Inc. v. MRLJ ENTERPRISES

Decision Date15 March 1984
Docket NumberCiv. A. No. 83-0636.
Citation584 F. Supp. 132
PartiesWPOW, INC., Plaintiff, v. MRLJ ENTERPRISES, et al., Defendants.
CourtU.S. District Court — District of Columbia

Benjamin S. Warren, III, Washington, D.C., David C. Hilliard, Thomas R. Leavens, Pattishall, McAuliffe & Hofstetter, Chicago, Ill., for plaintiff.

James K. Edmundson, Terry Michael Banks, Tepper & Edmundson, Washington, D.C., for defendants.

MEMORANDUM

HAROLD H. GREENE, District Judge.

This is an action for copyright infringement, unfair competition, and fraudulent and corrupt practices based upon defendants' alleged wrongful filing of an application with the Federal Communications Commission (FCC) for authorization to construct new radio broadcasting facilities. Plaintiff claims that defendants prepared their application by copying its copyrighted material, and it seeks a writ of seizure of the allegedly infringing materials. Alternatively, plaintiff requests an impoundment order pursuant to § 503(a) of the Copyright Act, 17 U.S.C. § 503(a), which would require defendants to deliver to the Court all infringing materials, including their application with the FCC.

Based upon its finding that plaintiff is entitled to injunctive relief, the Court will grant the request for an impoundment order.

I

In 1980, plaintiff decided to apply to the FCC for permission to change the city of license of its AM radio station WHAZ in Troy, New York, to East Greenbush, New York, and, accordingly, to develop a new transmitting antenna on a site near East Greenbush. The site plaintiff chose was one adjacent to WHAZ's broadcasting studio facilities. It retained the engineering firm of Lohnes and Culver to conduct a study of the proposed change in broadcast facilities, to create a transmitting antenna design for the new facilities, and to prepare an engineering report.

The report was completed in March of 1981, and all rights, title and interest in and to the report were assigned to plaintiff effective March 12, 1981. Eight days later, three copies of the report were filed as an exhibit to the FCC application. No other copies were distributed to anyone.

When an application for new or modified AM facilities is filed, the FCC issues a public notice advising the general public of the acceptance of the application for filing and inviting interested persons to file competing applications by a designated date.1 The application is then made available for inspection in the FCC's public reference room in Washington, D.C.2 The first application for a particular frequency is also made available to the public in the proposed community of license.3

In August of 1981, five months after the filing of the WPOW application, defendant MRLJ Enterprises filed its application for authorization to construct a new radio broadcast station in East Greenbush. The facilities proposed in defendants' application, if authorized by the FCC, would exclude operation of the facilities proposed by plaintiff and thus would result in the FCC's rejection of plaintiff's application.4 Attached to the MLRJ Enterprises application was an engineering report containing an antenna design which was identical to that submitted by WPOW in a number of particulars.5 This action followed.

II

The first question the Court must address concerns the nature of the showing plaintiff must take to obtain relief under section 503(a) of the Copyright Act.6

Section 503(a) notably lacks an explicit statutory standard to be applied by a court upon a request for impoundment.7 Plaintiff relies upon the Ninth Circuit decision in Duchess Music Corp. v. Stern, 458 F.2d 1305 (9th Cir.1972) for the proposition that impoundment may be granted upon summary, even ex parte proceedings, at which the applicant need only make a prima facie showing of infringement. The Court rejects that construction of the statute.

The Copyright Act makes impoundment discretionary with the Court rather than mandatory, as plaintiff's argument would imply. Section 503(a) provides that the Court "may" order impoundment "on such terms as it may deem reasonable," suggesting that the Court must determine whether impoundment is warranted and what terms are appropriate. Such determinations can appropriately be made only by procedures which are other than summary in character. Decisions such as that in Duchess Music Corp. v. Stern, supra, were based on provisions of the Copyright Act before it was amended in 1976,8 as were the Rules of Practice for Copyright cases on which plaintiff likewise relies.9 In none of the cases decided since the amendment was an impoundment granted without compliance with the normal injunction or stay requirements. See, e.g., Munn v. Minority Broadcasting Co. of the Midwest, Civ. No. 82 C 0759 (N.D.Ill. March 26, 1982); Martin Luther King, Jr. Center for Social Change, Inc. v. American Heritage Products, Inc., supra, 508 F.Supp. at 861; Dollcraft Industries, Ltd. v. Well-Made Toy Manufacturing Co., 479 F.Supp. 1105 (E.D.N.Y.1978). See also Clark Equipment Co. v. Harlan Corp., 539 F.Supp. 561 (D.Kan.1982) (writ of seizure and impoundment dissolved upon expiration of temporary restraining order and failure of plaintiff to meet showing of entitlement to preliminary injunction).

Plaintiff cites section 502(a) of the Act, arguing that the existence of this section— which governs injunctions and thus presupposes the normal standards for the grant of injunctive relief—implies that a lesser standard is to be applied when impoundment is applied for. The conclusion does not follow from the premise. An impoundment order is not technically an injunction, to be sure, but this does not exclude the possibility that a similar showing should be required as a prerequisite to its issuance with respect to relief that is technically injunctive in character. On the contrary, there is no reason whatever why a defendant against whom relief is sought under section 503(a) should be entitled to fewer protections than one who may be subject to an injunction under section 502(a). In both instances the defendant is deprived of a valuable property right, and the procedure in both types of cases should be commensurate with the injury inflicted.

The Court holds that a plaintiff seeking an impoundment must meet the requirements for permanent or preliminary injunctive relief.10

Since notwithstanding plaintiff's procedural argument the parties have also addressed the questions before the Court as if plaintiff's entitlement to a preliminary injunction were at issue, the Court will determine whether it should issue an impoundment order in accordance with the requirements normally required for the grant of preliminary injunctive relief.

III

In order to be entitled to a preliminary injunction, a plaintiff must show (1) that he is likely to prevail on the merits of its case at trial; (2) that if no relief is granted he will be irreparably injured; (3) that the threatened injury to him outweighs the threatened harm the injunction may inflict on the defendant; and (4) that the grant of a preliminary injunction will not disserve the public interest.11 The Court considers first the likelihood of success on the merits.

A. In order to prove infringement, a plaintiff must show ownership of a copyright and copying by defendants. 3 Nimmer on Copyright § 13.01 (1983).

In this case, plaintiff's ownership of a copyright is not in dispute. Protection under the Copyright Act exists automatically upon the creation of a work. 17 U.S.C. § 302(a). As long as the work is not published, it is protected whether or not it is registered with the Copyright Office or a copyright notice is placed on the work. 17 U.S.C. §§ 401, 408(a). Thus, plaintiff clearly has a copyright on the engineering report. The filing of that report with the FCC, and the action of the FCC in allowing public access to the application for inspection do not constitute publication. See 17 U.S.C. § 101 (definition of "publication"); 1 Nimmer on Copyright § 4.10 at 4-49.

Copyright infringement is ordinarily established by proof of (1) defendant's access to the copyrighted material and (2) substantial similarity between that material and the allegedly infringing material. 3 Nimmer on Copyright § 13.01B at 13-6. Defendants here of course had access to the engineering report when the FCC made plaintiff's application available to the public. In fact, defendants have admitted access, if not actual copying; their defense rests in part upon the assumption that they were entitled to some duplication of plaintiff's engineering report by virtue of the "fair use" doctrine. See infra.

With regard to the issue of substantial similarity, plaintiff has set forth a list of the striking similarities between the antenna design contained in its engineering report and the antenna design in the MRLJ report. Defendants claim that the reports themselves are markedly different, and they do present a number of differences in their papers. The reports' similarities are far greater than the differences, however, and, more important, such differences as exist are immaterial to the issue of copying.12

Whatever similarities or differences there are in the reports generally, the critical parts of the reports—the antenna design —are identical. Taking what is in essence the heart of the work is considered a taking of a substantial nature, even if what is actually taken is less than extensive. Elsmere Music, Inc. v. National Broadcasting Co., 482 F.Supp. 741, 744 (S.D.N. Y.), aff'd, 623 F.2d 252 (2d Cir.1980). Thus differences between the reports with regard to maps, text, and format have no bearing on the issue of whether defendants incorporated the antenna design in plaintiff's report into their own. Cf. National Business Lists, Inc. v. Dun & Bradstreet, Inc., 215 U.S.P.Q. 595, 600 (N.D.Ill.1982). The other differences defendants cite are either minor, or they constitute additions or modifications which may improve upon plaintiff's...

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