United States District Court, D. Massachusetts
ORDER ON REPORT AND RECOMMENDATION (DOC. NO.
Sorokin United States District Judge.
de novo review of Magistrate Judge Boal's Report and
Recommendation, Doc. No. 140, and both parties'
objections, Doc. Nos. 146, 147, and replies to those
objections, Doc. Nos. 149, 150, the Court ADOPTS the Report
and Recommendation with the exception of the analysis of
copyright infringement (Count I) at to the statement of work
template (“SOW”) (TXu-1-867-104) and the software
by machine query computer code (TXu-1-867-067).
objects to the Magistrate Judge's recommendation that its
Motion for Summary Judgment be denied on its copyright
infringement claim (Count I) against Defendant Sam-on-Demand
as to the SOW and the software by machine query computer
code. To establish copyright infringement,
Plaintiff must prove two elements: “ownership of a
valid copyright” and “copying of constituent
elements of the work that are original.” Johnson v.
Gordon, 409 F.3d 12, 17 (1st Cir. 2005). In its Reply to
Plaintiff's Objections, Doc. No. 149, Defendant
challenges both elements.
ownership of a valid copyright, ‘a plaintiff must prove
that the work as a whole is original and that the plaintiff
complied with applicable statutory formalities.'”
Soc'y of Holy Transfiguration Monastery, Inc. v.
Gregory, 689 F.3d 29, 40 (1st Cir. 2012) (quoting
Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d
807, 813 (1st Cir. 1995)). “It is generally accepted
that ‘a certificate of copyright registration
constitutes prima facie evidence of copyrightability and
shifts the burden to the defendant to demonstrate why the
copyright is not valid.'” Id. (quoting
Lotus Dev. Corp., 49 F.3d at 813); see
Johnson, 409 F.3d at 17 (“A certificate of
copyright constitutes prima facie evidence of ownership and
originality of the work as a whole.”). Plaintiff has
provided copies of its certificates of copyright registration
for both copyrights, thus shifting the burden to Defendant to
produce evidence that the copyright is not valid.
See Doc. Nos. 128-148, 128-149, 128-150, 128-151,
128-152, 128-153. Defendant has not met its burden.
to what Defendant asserts in its Reply to Plaintiff's
Objections, the onus is not on Plaintiff to prove
originality. The existence of the certificates is sufficient
to establish originality unless Defendant can rebut that
presumption. See 17 U.S.C. § 410(c). At the
outset, the Court notes that a contract can enjoy the
protection of a copyright, that is they are not inherently
uncopyrightable. See Total Marketing Techs., Inc. v.
Angel MedFlight Worldwide Air Ambulance Servs., LLC, No.
8:10-cv-2680-T-33TBM, 2012 WL 2912515, at *5 (M.D. Fla. July
16, 2012) (“The Court finds nothing in the copyright
regulations precluding copyright of a contract.”);
C&J Mgmt. Corp. v. Anderson, 707 F.Supp.2d 858,
862 (S.D. Iowa 2009) (collecting cases); 1-2 Nimmer on
Copyright § 2.18[E] (2009) (“There appear to
be no valid grounds why legal forms such as contracts . . .
and other legal documents should not be protected under the
law of copyright.”). On the SOW, Defendant offers only
speculation that the contract is not copyrightable but never
explains why beyond conclusory assertions that the contract
is not original. Defendant asserts in its reply that
Microsoft provided the information and guidelines necessary
to create the SOW. But as evidence Defendant points only to a
Declaration which vaguely references that “Microsoft
provided guidelines that needed to be achieved and included
within the statement of work.” Doc. No. 120 at 1.
Defendant offers no specifics describing the guidelines
Microsoft provided. This is insufficient evidence to overcome
the presumption of validity because Defendant has not
identified the material, if any, provided by Microsoft.
Defendant also invokes the rule laid down in the
Morrissey case suggesting that only a limited number
of ways exist to express the terms of the SOW. See
Morrissey v. Proctor & Gamble Co., 379 F.2d 675,
678-79 (1st Cir. 1967). But, the four corners of the SOW do
not establish that point and Defendant fails to establish by
evidence or meaningful argument that this is so.
query computer code, Defendant notes that some of the code
involved in the queries were publically available, but he
provides no evidence of any such code or its nature. Next, he
states that he considers himself a coauthor of any original
work but the Court ADOPTS the Magistrate Judge's
rejection of this assertion for the reasons stated in the
Report and Recommendation. Defendant also claims that the
copyright is not valid because the work is not original,
again based on the Microsoft guidelines. Defendant's
evidence again falls short; based on the Declaration cited,
Microsoft provided an Excel document that the code populated.
Id. at 1-2. Defendant has not shown how
Microsoft's providing a format for the output renders the
code gathering the information and creating the output is
uncopyrightable. Defendant's Morrissey argument
again fails for the same reason as above: there are countless
ways to write a computer code that would gather the
information Microsoft requires. Because Defendant has offered
no evidence or persuasive argument that would rebut the
presumption of copyrightability, Plaintiff has established
ownership of a valid copyright as to both the SOW and the
second element is met by the Plaintiff showing, first,
“that, as a factual matter, the defendant copied the
plaintiff's copyrighted material.”
Johnson, 409 F.3d at 18. To do so, Plaintiff can
either “present direct evidence of factual copying or,
if that is unavailable, evidence that the alleged infringer
had access to the copyrighted work and that the offending and
copyrighted work are so similar that the court may infer that
there was factual copying.” Lotus Dev. Corp.,
49 F.3d at 813. Here, access to the copyrighted work is
undisputed. While Defendant attempts to assert that Plaintiff
has not proven that the works are so similar as to allow an
inference of copying, common sense tells us that they are
copied. See Segrets, Inc. v. Gillman Knitwear Co.,
Inc., 207 F.3d 56, 62 (1st Cir. 2000) (“[T]here
are unquestionably sufficient articulable similarities to
justify a finding that the defendant has copied from the
protected work. Indeed, other than color, it is difficult to
find any articulable differences between the . . .
design[s].” (quotation marks and citation omitted)).
The documents are nearly identical with the exception of the
company names. Compare Doc. No 128-57, with
Doc. No. 128-58; compare Doc. No. 128-15,
with Doc. No. 128-51. Thus, the Court concludes that
Defendant copied Plaintiff's copyrighted material.
Plaintiff must prove “that the copying of the
copyrighted material was so extensive that it rendered the
infringing and copyrighted works substantially
similar.” Johnson, 409 F.3d at 18. Defendant
offers citations to a number of cases about substantial
similarity. When, as here, the documents are essentially
identical with the exception of the company and client names,
Defendant has no serious argument about substantial
similarity. The cases Defendant cites to attempt to establish
that the documents are not substantially similar are
unavailing because they concern works of art. See
Johnson, 409 F.3d at 14 (musical composition);
Concrete Machinery Co., Inc. v. Classic Lawn Ornaments,
Inc., 843 F.2d 600, 603 (1st Cir. 1988) (concrete lawn
ornaments). Those cases are easily distinguished from the
situation that presents itself here: the content here was
copied in full by Defendant. Defendant also argues that the
existence of the Microsoft guidelines means that Plaintiff
has not shown that the works are substantially similar. But
Defendant has pointed to no code that was provided by
Microsoft or provided the Microsoft guidelines to the Court
to allow an analysis of whether what Defendant copied was
original. Thus, Defendant has failed to raise an issue of
material fact on either the SOW or the query copyright.
Count I, Plaintiff's claim for copyright infringement as
to the SOW (TXu-1-867-104) and the software by machine query
computer code (TXu-1-867-067), the Court ALLOWS the Motion
for Summary Judgment. The Court ADOPTS the Magistrate
Judge's recommendation as to Count I for the other
copyrights Plaintiff claims are infringed and note that
Defendant did not object to this portion of the
Recommendation of the Magistrate Judge. The Court rejects
Defendant's objections to the Report and Recommendation.
The Court ALLOWS Plaintiff's Motion to Supplement the
Complaint, Doc. No. 133. The Court DENIES Plaintiff's
Motion for Summary Judgment, Doc. No. 110, as to
misappropriation of trade secrets (Count III), breach of
contract (Count IV), and breach of the implied covenant of
good faith and fair dealing (Count V). The Court ALLOWS
Plaintiff's Motion for Summary Judgment as to the Lanham
Act claims (Count II), unfair competition (Count VI),
violations of Chapter 93A (Count VII), and unjust enrichment
(Count VIII). The Court DENIES summary judgment on
Defendants' counterclaims for defamation (Count I),
intentional interference with business relationships (Count
II), uniform trade deceptive practices (Count III), and
declaratory relief (Count V). The Court ALLOWS summary
judgment for Plaintiff on Defendants' counterclaim for
CFAA violations (Count IV).
fourteen days, the parties shall file a joint status report
stating (a) the anticipated duration of trial; (b) whether
the parties anticipate any mediation process and, if so, the
amount of time needed for such a process (either in the
Court's mediation program or otherwise as the parties
prefer); and (c) whether all parties consent to the exercise
of jurisdiction by the magistrate judge assigned to this case
(the parties shall not report their individual positions and
the failure to consent shall not result in any adverse
 As the Magistrate Judge pointed out,
Plaintiff did not include copies of the contracts with its
Motion for Summary Judgment. Plaintiff did submit copies with
Plaintiff's Reply. See Doc. No. 128-15, 128-51.
As it is within the Court's discretion to consider
material not properly ...