Opinion
No. 98 C 8337.
February 22, 2000.
MEMORANDUM OPINION AND ORDER
Plaintiff brings this action pursuant to the Copyright Act of 1976, Pub.L. 94-553, 90 Stat. 2541 et seq., 17 U.S.C.A. § 101et seq. (Copyright Act), the Illinois Uniform Deceptive Trade Practices Act (UDTPA), and common law tort and equity principles. Plaintiff Cassim Igram, author of the book, Self-Test Nutritional Guide, claims that text in his book was used without permission and in violation of his copyright, by Defendant Linda Rector Page, author of the allegedly infringing work, the 10th edition of Healthy Healing. The parties are before the Court on cross motions for summary judgment. Plaintiff moves for summary judgment on his claims of unjust enrichment, unfair competition, claims based on the Illinois Uniform Deceptive Trade Practices Act, copyright infringement, and contributory infringement. Plaintiff also requests this Court to issue a permanent injunction against Defendants. Defendants move for partial summary judgment on the issues of the scope of copyright infringement, for partial summary judgment as to the issue of willfulness, and summary judgement on Plaintiff's state law claims. For the reasons articulated below, both parties' motions for summary judgment shall be granted in part and denied in part. Further, Defendants' motion for summary judgement will be granted in part, and denied in part.
I. BACKGROUND
Plaintiff Cassim Igram is a doctor of osteopathy and the coauthor and sole owner of the registered copyright of the book,Self-Test Nutritional Guide (Reg. No. TX 3-805-206 issued April 5, 1994). Published in 1994, Self-Test Nutritional Guide, is an original work of non-fiction which focuses on the improvement of "health and nutritional status through personalized tests."Self-Test Nutritional Guide (hereinafter STNG). Igram asserts his book is the "first of its kind" in that it utilizes a series of questions and descriptions to help readers evaluate and remedy various nutritional maladies. Igram's book is divided into three main sections: Section I lists and describes a series of "Nutritional Deficiency Tests"; Section II lists "Dietary Tests"; and Section III lists "Illnesses and Syndromes." Dr. Igram is also employed by the North American Herb and Spice Company (NAHS). NAHS sells a line of nutritional supplements. Dr. Igram contends that copyright protected text from his book, STNG, appears without permission and in violation of his copyright in Defendants' book, the 10th Edition of Healthy Healing.
Defendant Linda Rector Page is the author of the 10th Edition of Healthy Healing (hereinafter HH10), first published on October 13, 1996. Linda Page holds an N.D. degree (doctor of naturopathy) and a Ph.D. in Nutrition. Ms. Page is married to Defendant Elliot Page, the owner president of Healthy Healing Enterprises, the corporation which originally published HH10. HH10 is also a work of non-fiction which focuses on nutrition as a source of healing.HH10, was preceded by nine editions of Healthy Healing, the first of which was published in 1985. Combined, the ten editions ofHealthy Healing have sold in excess of 400,000 copies.
Between 1992 and 1997, Doris Wendt worked as a researcher for Ms. Page. Ms. Wendt worked on HH10, and specifically worked on Section 8, of HH10, the diagnostic section. The diagnostic section is the section where the vast majority of the alleged infringing text is found. Defendants contend that to the degree any infringement occurred, Ms. Wendt was responsible for the copying of text, and that Defendants had no knowledge of the origin of the allegedly infringing text. Ms. Wendt died in 1998, and consequently could not be deposed in this matter.
Linda and Elliot Page were the sole shareholders in a corporation called Crystal Star Herbal Nutrition (CSHN). CSHN sells nutritional supplements formulated by Ms. Page. In May of 1997, CSHN sold its assets to Geranium Ltd., which in turn sold those assets to Jones Products International (JPI) in June of 1997.
II. DISCUSSION
The parties are before the Court on cross motions for summary judgment. Summary judgment may be made "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). The moving party must initially prove from the record an absence of a genuine issue of fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322-323, 106 S.Ct. 2548. (1986). The non-moving party must then provide specific facts demonstrating a genuine issue for trial exists. Fed.R.Civ.P. 56(e). The court must review the evidence in the light most favorable to the non-moving party.Anderson. v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505 (1986).
A. COPYRIGHT INFRINGEMENT
Plaintiff asserts that infringing text is present in Section 3, Section 4, Section 6, and Section 8 of HH10. Plaintiff complains of 1313 lines of word for word or substantially similar copying from approximately 95 pages of STNG. Plaintiff further asserts that the "guts" of two of the three sections of STNG were copied: the descriptions and tests from Sections I and III. The majority of this alleged copying is limited to Section 8 of HH10, the diagnostic section, which will be addressed separately below.
Plaintiff also tangentially asserts claims of copyright infringement with respect to the publication of materials in addition to HH10, including an article entitled Detoxification. However, plaintiff failed to plead these claims and nor were they included in Plaintiff's motions for summary judgment, except as argument in support of Plaintiff's motion for a permanent injunction. Nor has Plaintiff provided sufficient evidence such that a reasonable fact finder could find for Plaintiff on these claims. The court does not find these claims to be sufficiently raised as independent claims of infringement in this action.
Only original expression may be copyrighted. Fiest Publications Inc. v. Rural Telephone Service Company, 499 U.S. 340 (1991).Harper Row Publishers v. Nation Enterprises, 471 U.S. 539 (1985). Facts are not copyrightable, "[b]ecause no person can claim the original conception of facts, they are excluded from copyright protection." Publications Intern, Ltd. v. Meredith, 88 F.3d 473 (7th Cir. 1996)
Further, ideas and descriptive phrases are not copyrightable. Plaintiff's assertion that the "guts" of STNG's Sections I and III, is in part an attempt to claim protection for the concept of a self-questioning diagnostic approach to nutritional healing. However, the Copyright Act denies copyright protection in any "idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." 17 U.S.C. § 5102(b). Thus, Plaintiff cannot claim copyright protection for the idea of a self-diagnostic approach to nutritional healing, or the method of questioning and symptom listing he employed. See, Igram v. Page, 1999 WL 705895 (N.D.Ill.). Plaintiff also seeks protection for descriptive titles of various syndromes. For example, Plaintiff claims protection for the phrase "Sluggish Thyroid Syndrome." However, the descriptive phrases which Plaintiff seeks to protect cannot be construed to be an original work within the definition of the Act. See, Arthur Retlaw Associates, Inc. v. Travenol Laboratories, Inc., 582 F. Supp. 1010 (N.D.Ill. 1984) See, Igram v. Page, 1999 WL 705895 (N.D.Ill.).
Outside of Section 8, Plaintiff cites only eight pages of allegedly infringing text. Upon scrutinization of these eight pages, the Court finds only four instances in which protectable text had been copied. The remainder of the text which Plaintiff cites outside of Section 8 is not protectable original expression. Instead this text constitutes either a listing of facts which lacked a sufficiently original arrangement such as would warrant copyright protection, or ideas and phrases which likewise lacked copyright protection. Therefore, the Court holds that to the degree there is copying outside of Section 8, it is too de minimis to be actionable as a matter of law.
Surprisingly, as an assessment of the precise lines alleged to be copied are absolutely central to this analysis of copyright infringement, Plaintiff chose in his motion to identify the only pages in each text on which the alleged copying occurred, rather than the specific lines or even paragraphs. In some instances the allegedly copied lines were scattered over as many as five pages. As a result, for the court to analyze Plaintiff's claims, the court had to scour 107 pages of text looking for phrasing that appeared similar, and determining whether that text constituted a copyright violation. Through this process, the court found only four instances in which protectable text was copied outside of Section 8.
For example, the court found the following to be an instance of substantially similar and word for word copying of original expression. This text is located in Section Four of HH10:
STNG, p. 239: The skin is a barometer of how rapidly an individual is aging. Americans often marvel at how elderly individuals from non-Western societies appear young and how their skin remains beautiful.
HH10, p. 126: Your skin is a barometer of how rapidly you are aging. Americans often marvel at how elderly people from non-Western societies have such beautiful, youthful skin.
However, within Section 8, the Court found copying of protectable text consistent with that alleged by Plaintiff. The Court finds in favor of Plaintiff on the issue of copyright infringement with respect to the copying alleged in Section 8.
Plaintiff also seeks summary judgment on his contributory infringement claim. Plaintiff asks the Court to find that Ms. Page, HHE, and Mr. Page are all liable for contributory infringement by knowingly inducing others to distribute and sellHH10. However, to succeed in his claim for contributory infringement, Plaintiff must prove that Defendants knew of the infringing activities. See, Rhien Building Company v. Gehrt, 21 F. Supp.2d 896 (E.D.Wis. 1998). There are material facts in dispute as to whether the Pages had knowledge of the infringing activity at the time when "induced others to distribute and sellHH10." Thus, the Court finds that summary judgment cannot be entered as to this claim.
Plaintiff does not assert an argument for vicarious liability, which does not necessarily require knowledge of the infringing activity, so the Court does not consider the issue of vicarious liability.
Additionally, Plaintiff has moved for summary judgement on the issue of willfulness. A finding of willfulness is appropriate if, "the infringer knows that it is an act of infringement, or if the infringer acted in reckless disregard of the copyright owner's right." Wildlife Express Corp. v. Carol Wright Sales, Inc., 18 F.3d 502 (7th Cir. 1994) quoting, Video Views Inc. v. Studio 21 Ltd., 925 F.2d 1010, 1020 (7th Cir. 1991). Willfulness is a question of fact, and the Court here finds that there are material facts in dispute with respect to the question of willfulness, so that summary judgment may not be granted on this issue.
B. STATE LAW CLAIMS
Plaintiff has moved for summary judgment with respect to his Illinois Uniform Deceptive Trade Practices Act (UDTPA), unfair competition, and unjust enrichment claims. Defendants likewise move for summary judgment on these counts, asserting, inter alia, that all of Plaintiff's state claims are preempted by the Copyright Act. Defendants are correct.
Because the issue of preemption is dispositive with respect to Plaintiff's state claims, the court does not address the myriad of other fatal flaws plaguing Plaintiff's state claims, including but not limited to the lack of evidence on record to support essential elements in each of the three claims.
To determine whether a cause of action has been preempted by the Copyright Act, the Court employs a two-step analysis, as is required by 17 U.S.C. § 301 (a). That section provides preemption will be found where (1) the work is fixed within a tangible form and comes within the subject matter of copyright as specified in § 102; and (2) the right is equivalent to any of the rights specified in § 106. 17 U.S.C. § 301 (a). Here, the text in question unarguably is fixed within a tangible form and falls within the subject matter of copyright, so the Court must determine whether Plaintiff's claims assert rights that are equivalent to any of the rights outlined in 17 U.S.C. § 106.
17 U.S.C. § 106 provides in relative part:
106. Exclusive rights in copyrighted works
Subject to sections 107 through 121, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phono records;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phono records of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly;
The Seventh Circuit has held that to avoid preemption under the Copyright Act, Plaintiff's state claim must incorporate an extra element so that it is qualitatively different than a claim of infringement. Baltimore Orioles Inc. v. Major League Baseball Players Assoc., 805 F.2d 663 (7th Cir. 1986). To determine whether Plaintiff's state claims include an element which makes the claim qualitatively different than an infringement claim, the Court considers nature of the cause of action asserted in conjunction with the nature of the specific malfeasance alleged by Plaintiff. See, Stephen Hayes Construction v. Meadowbrook Homes, 988 F. Supp. 1194 (N.D.Ill 1998).
1. UNJUST ENRICHMENT
Under Illinois law, for Plaintiff to mount a claim for equitable relief under an unjust enrichment theory, Plaintiff must demonstrate that Defendant received a benefit at Plaintiff's expense and that the benefit was unjust. TRW Title Insurance Co. v. Security Union Title Insurance Co., 153 F.3d 822, 828 (7th Cir. 1998). Plaintiff offers two distinct theories in support of his unjust enrichment claim. First, Plaintiff argues that (1) Ms. Page received a benefit from Dr. Igram in the form of the infringing text; (2) the benefit to the Ms. Page was at the expense of Dr. Igram; and (3) Ms. Page's retention of that benefit was unjust. However, this theory clearly does not incorporate an extra element which is qualitatively different than that of copyright infringement. Plaintiff is merely claiming that Defendants profited from the use of the copied text, at Plaintiff' s expense.
In an effort to distinguish his unjust enrichment claim from infringement, Plaintiff offers a second theory of unjust enrichment liability, specifically that:
[I]t is not the content of HH10 that give rise to Plaintiff's state claims. It is the fact that Ms. Page uses HH10 as a whole to support her false public reputation, to portray herself disingenuously as a nutritional scientist, as a diagnostician, and as a practitioner of alternative medicine . . . She trades on a false, undeserved reputation, using it to sell supplements and books. Because she uses her reputation to see products and because that reputation depends on the diagnostic section of HH10, which she pirated from STNG, she has acquired ill-gotten gains, has competed unfairly and has been unjustly enriched. Plain. Opposition to Pages' Motion for Summary Judgment. p. 3, ¶ 3, emphasis added.
However, this second theory of liability does not save Plaintiff's unjust enrichment claim from preemption because even had Plaintiff adequately supported this allegation with evidence, which he certainly has not, this alleged "extra element" is not material to the issue of unjust enrichment.
The court will here note that although Plaintiff has made much of this allegation, Plaintiff has not provided sufficient evidence that Linda Page has "held herself out" to be a diagnostician, a nutritional scientist, and a practitioner of medicine such that a reasonable jury could find in favor of Plaintiff on this issue. Also, Plaintiff fails offer evidence demonstrating that Ms. Page is not a diagnostician or even what Plaintiff considers the qualifications of a diagnostician to be. Similarly, Plaintiff does not demonstrate how Ms. Page fails to merit the title of nutritional scientist, or what the minimum qualifications of a nutritional scientist might be, beyond citing Ms. Page's deposition testimony in which she generally purports to not be a scientist.
Primarily Plaintiff's second theory fails to be material the question of unjust enrichment because Plaintiff does not demonstrate how he conferred the benefit of this allegedly false reputation upon Ms. Page. Plaintiff claims to be injured by the infringement because Ms. Page's general reputation is bolstered by the infringing text and that Ms. Page's reputation promote the sales of CSHN products. Plaintiff identifies benefits Ms. Page has received in connection with the publication of HH10. Plaintiff argues that Ms. Page uses HH10 as a whole to create, a falsely positive reputation and that false reputation in fact "depends on the diagnostic section of HH10." Plaintiff claims that Ms. Page has developed a false reputation as a diagnostician, a nutritional scientist, and a practitioner of alternative medicine, when in fact plaintiff alleges Ms. Page is none of these. Plaintiff then seems to be claiming that the infringing text is the sole source of this reputation. However, the Court finds to the contrary. The record is devoid of evidence that Ms. Page's reputation depends on the diagnostic section ofHH10. Plaintiff has provided the Court with no evidence creating a sufficient nexus between Ms. Page's professional reputation and her use of the copyrighted material, such that the Court could find that the benefits which Plaintiff identifies were the result of Ms. Page's infringement. On the contrary, the evidence indicates that the infringing text is isolated to one chapter ofHH10, the diagnostic chapter. Further, Ms. Page produced nine editions of Healthy Healing prior to the publication of HH10, none of which contained infringing text. Plaintiff has not been able to satisfactorily demonstrate that Ms. Page received any particularized discernable benefit from the use of the infringing text. At best Plaintiff has made an amorphous argument that Ms. Page's general reputation was bolstered by the diagnostic section of HH10, yet Plaintiff points to no particular part of the record in which allegation is adequately supported. Thus, the question of Ms. Page's general reputation is not material to the issue of unjust enrichment. Absent this allegation, Plaintiff's unjust enrichment claim does not extend beyond the scope of rights covered by the Copyright Act, and the Court finds this claim to be preempted as a matter of law.
Additionally, Plaintiff fails to establish how this allegedly false reputation has been created to Plaintiff's detriment. Plaintiff asserts that Ms. Page's reputation serves to increase the sales of CSHN products, and that as an employee of NAHS, Plaintiff is harmed by the successful of CSHN products. Plaintiff does not offer sufficient evidence to support this claim. Plaintiff is not an owner of NAHS, nor has he a particular pecuniary interest in the corporation's profits, beyond that of an employee. Plaintiff points to no evidence which indicates he personally would profit by increased sales of NAHS products. Further, Plaintiff does not provide sufficient evidence that CSHN and NAHS are in direct competition, such that a jury could find in favor of Plaintiff on this point.
2. UDTPA and UNFAIR COMPETITION
Plaintiff's UDTPA and unfair competition claims are also preempted by the Copyright Act. In his UDTPA claim, Plaintiff alleges that Defendants have created a likelihood of confusion among consumers by misrepresenting the source of the copied text. However, Plaintiff does not assert that Defendants made affirmative misrepresentations about the origin of the copied text. Rather, Plaintiff's claim rests on the fact that the text appears in HH10 as the work of Ms. Page. Generally, within the context of copyright infringement, UDTPA claims which do not include an element of affirmative misrepresentation are preempted by the Copyright Act. See, Tensor Group, Inc. v. Global Web Systems, 1999 WL 617818 (N.D.Ill). Goes Lithography Co. v. Banta Corp., 26 F. Supp.2d 1042 (N.D.Ill 1998). Here, Plaintiff asserts only that consumers are confused as to the source of the work copied. This would be true in any instance of infringement and does not go beyond the scope of the Copyright Act. Therefore, plaintiff's UDTPA claim is preempted.
Similarly, Plaintiff's claim of unfair competition is preempted by the Copyright Act. Plaintiff alleges no more than Defendants used the copied text to their advantage and Plaintiff's detriment. Further, while Plaintiff fails to adequately extend his false reputation argument to his UDTPA and unfair competition claims, the Court nonetheless notes that the degree to which Ms. Page holds herself out to be an expert in various fields is likewise immaterial to the UDTPA and unfair competition claims. Beyond just merely failing to produce evidence to support his false reputation argument, as discussed above, plaintiff also fails to demonstrate: (1) how this false reputation created a likelihood of consumer confusion or constituted an affirmative misrepresentation as to the origin of the copied work so as to be material to a UDTPA claim; or (2) how this false reputation constituted the appropriation of another's labor or created unfair competition from which Plaintiff particularly suffered. Therefore, the Court finds these claims to be preempted by the Copyright Act.
G. PERMANENT INJUNCTION
Finally, plaintiff asks the Court to grant a permanent injunction in this case. A permanent injunction is appropriate where liability has been established and the threat of continuing infringement has been demonstrated. 17 U.S.C. § 502 (a).Columbia Pictures et al. v. Tucker, 1997 WL 779093 (N.D.Ill.).Broadcast Music, Inc. v. Niro's Palaces Inc., 619 F. Supp. 958, 963 (N.D.Ill. 1985)
Here, while liability has been established, plaintiff has failed to demonstrate a threat of continued infringement. Copyright liability has only been established with respect to Section 8 of HH10. Defendants have offered evidence demonstrating that the infringing section of HH10 has not been published or distributed since this Court's issuance of the preliminary injunction in this case. There is no other evidence on record which indicates a threat of continued infringement exists. Therefore, the Court will deny the motion for a permanent injunction.
ORDERED: plaintiff's motion for summary judgement on the issue of copyright infringement is granted with respect to the copying alleged in Section 8 of the Tenth Edition of Healthy Healing. Plaintiff's motion for summary judgment with respect to the remainder of the copying alleged is denied. Defendants' motion for summary judgment with respect to unjust enrichment, violation of the UDTPA, and unfair competition is granted. Accordingly, the questions of willfulness with respect to copyright infringement, of contributory infringement, and damages will proceed to trial.