WJJH V Wms Ecf 13 Redacted

___ ,fiLED EiffERED
___ .LODGED RECEIVED

J N'I ZOi4
William John Joseph Roge,
Plaintiff,
v.
William M. Schmalfeldt,
Defendant.
BY
EDSTATESDISTRICTCOURT
HEDISTRICTOFMARYLAND
ORTHERNDIVISION
Case No. ELR-14-CV-1683
PLAINTIFFHOGE'SMOTIONFORPRELIMINARYINJUNCTION
COMESNow Plaintiff William John Joseph Roge with this Motion for Preliminary
Injunction to prevent Defendant Schmalfeldt's further use of Mr. Roge's copyrighted
material without permission. In support of this motion, Mr. Roge states as follows:
FACTS
1. On information and belief Defendant has a pattern of viewing Mr. Roge's website
Hogewash! and capturing digital image files of what he sees on his computer screen (called
"screencaps" in Internet vernacular). Re takes such images, often of whole articles (or
blog "posts"), and republishes them without permission. The instant lawsuit deals with
such online republication of Mr. Roge's copyrighted material via Defendant's Patriot-
Ombudsman website (patriot-ombudsman.com) and the social medium Twitter
Case l:l4-cv-0l683-ELH Document l3 Filed 06/l3/l4 Page l of 7
(twitter. com) and with other republication of Mr. Hoge's copyrighted material in books and
ebooks.
2. Mr. Hoge has taken steps place the various publishers and online service
providers on notice of Defendant's infringement. Defendant responded with the following:
"Here is my official DMCATakedown Counterclaim. Hoge ... [has] until June 4 AT THE
LATEST to file suit against me in US District Court for the District of Maryland."
1
3. The instant law suit was file pursuant to the requirement in 17 U.S.C ~ 512(g) to
file for injunctive relief within 14 business of a DMCAcounterclaim.
MR. HOGE'S LAWSUIT WILL LIKELY SUCCEED ON THE MERITS
4. The two elements to be proved in a copyright infringement action are (1) that a
the plaintiff holds a valid copyright on the work(s) in question and (2) the defendant used
the work(s) without authorization from the copyright holder or the law.
5. Applications for certificates of registration have been submitted to the Copyright
Office by Mr. Hoge and "Paul Krendler"2 for all works covered by the instant lawsuit in
J http://patriot-ombudsman.com/my-official-dmca-takedown-counterclaim/index.html/
viewed 15 May, 2014.
2 "Paul Krendler" is the pseudonymous author of one of the works covered by the instant
lawsuit.
2
Case l:l4-cv-0l683-ELH Document l3 Filed 06/l3/l4 Page 2 of 7
conformance with this Court's precedent. See Patrick Collins, Inc. v. Does 1-22, 11-
CV-01772-AW, ECF No. 18 (D.Md. 2011) at 3, 4.
6. Defendant effectively admits in his Amended Answer (ECF NO.8) to Mr. Hoge's
Complaint that he has republished Mr. Hoge's works without permission by raising the
issue of Fair Use.
7. Therefore, a prima facie case for copyright infringement exists, and it is likely
that Mr. Hoge's case will succeed on the merits. The motion for a preliminary injunction
should be granted.
MR. HOGE FACES IRREPARABLE HARM WITHOUT A PRELIMINARY INJUNCTION
8. Defendant is a copyright scofflaw, a serial infringer who continues to use the
copyrighted work of others on the Internet. Exhibit A shows an extract from a recent
posting on his I Got Your Lawsuit, Right Here! website which incorporates material lifted
"Paul Krendler's" website.
3
3 Exhibit A is an extract from http://i-got-yer-lawsuit-right-here.com/2014/06/why-i-am-so-
looking-forward-to-meeting-paul-krendler/ viewed 11 June, 2014. The original "Krendler"
material can be found at http://thinkingmanszombie.wordpress.com/2014/05/15/trying-to-
silence-me-pretty-much-because-im-guilty/. The image of the "Krendler" material was
stored on the Defendant's website as http://i1.wp.com/i-got-yer-lawsuit-right-here.com/wp-
contentluploads/2014/06/Screen-Shot -2014-06-09-at-5.04.04-PM .png.
3
9. Defendant continues to screencap and republish comments from Mr. Hoge's
Hogewash! website. For example, see Exhibit B.4
10. The Supreme Court has recognized that a copyright holder possesses "the right
to exclude others from using his property." Fox Film Corp. v. Doyal, 286 U.S. 123, 127
(1932). If Defendant's infringement is allowed to continue, Mr. Hoge's right to control the
use of his property will be partially extinguished. The harm from uncontrolled
distribution of intellectual property is essentially the same whether it is a literary work, a
newsletter, or software. "[H]arm to ... [one's] ability to control the distribution of ...
software is sufficient to establish irreparable harm." Adobe Sys., Inc. v. Kornrumpf, 2011
WL 6303358 (N.D.Cal. Dec. 16,2011) quoted in Accusoft Corrporation v. Quest
Diagnostics, et al., Case No. 12-CV-40007-TSH, ECF No. 53 (D.Ma. 2012) at 16.
11. Given Defendant's continuing behavior as a copyright infringer and the
likelihood of additional infringement, a preliminary injunction prohibiting Defendant's
further use of Mr. Hoge's copyrighted material until a final disposition ofthe instant
lawsuit should be granted.
4 Exhibit B is from Defendant's @WMSRadioNetworkTwitter account at https://twitter.com/
wmsradionetwork/status/476478061 093728256 viewed 11 June, 2014. It republishes the
comment found at http://hogewash.com/2014/06/1 O/meanwhile-back-at-the-merits/
#comment-44971.
4
THE BALANCE OF HARMS WEIGHS IN MR. HOGE'S FAVOR
12. The injunctive relief Mr. Roge seeks would not place a gag on Defendant. Re
would be free to speak and write on any subject, including Mr. Roge and criticism of his
writings. But he would be temporarily restrained from appropriation of Mr. Roge's work
and any further unauthorized distribution thereof.
13. Absent some relief, Mr. Roge will lose control of the use of his intellectual
property and will be at risk for some degree of ongoing and potentially increasing
infringement.
14. Thus, the balance of harms is in Mr. Roge's favor and the preliminary
injunction should be granted.
A PRELIMINARY INJUNCTION IS IN THE PUBLIC INTEREST
15. Generally, the public interest is served by enjoining violations of federal laws.
In Federalist No. 43 James Madison described the Congress's authority to grant copyright
protection as
[a] power "to promote the progress of science and useful arts, by securing,
for a limited time, to authors and inventors, the exclusive right to their
respective writings and discoveries." The utility of this power will
scarcely be questioned.
5
Thus, a preliminary injunction in the instant lawsuit should be favorable to the public
because it would uphold the public's interest in copyright protection without unduly
burdening the Defendant.
REQUESTFORAHEARING
16. Mr. Hoge requests a hearing on this motion.
PRAYERFORRELIEF
WHEREFORE, Mr. Hoge asks this Honorable Court to ENJOINDefendant from
further infringement of Mr. Roge's copyrights and ORDER
(i.) That Defendant SHALLremove all of Mr. Roge's copyrighted materials from any
Internet websites or social media accounts under his control,
(ii.) That Defendant SHALLNOTsell, lend, give away, or otherwise distribute any books or
ebooks containing Mr. Roge's copyrighted material,
(iii.) That Defendant SHALLNOTrepublish any further copyrighted material belonging to
Mr. Roge
(iv) That Defendant SHALLNOTuse image capturing in order to quote words presented in
a text format as a part of anything posted on the Internet, and
6
(v.) That Mr. Roge SHALLhave such other relief as this Court may find just and proper-
said Order to be effective until the final disposition of the instant lawsuit.
Date: 12 June, 2014
William John Joseph Roge, pro se
20 Ridge Road
Westminster, Maryland 21157
(410) 596-2854
himself@wjjhoge.com
Verification
I certify under penalty of perjury that the foregoing is true and correct to the best of
my knowledge and belief and all copies are true and correct representations of the
originals documents.
William John Joseph Roge
Certificate of Service
I certify that on the 12th day of June, 2014, I served a copy of the foregoing Motion
for Preliminary Injunction on William M. Schmalfeldt by First Class Mail to Trailer 71,
6636 Washington Blvd., Elkridge, Maryland 21075.
William John Joseph Roge
7
Exhibit A
Extract from http://i-got-yer-lawsuit-right-here.com/2014/06/why-i-am-so-Iooking-
forward-to-meeting-paul-krendler/ viewed 11 June, 2014.
Case l:l4-cv-0l683-ELH Document l3-l Filed 06/l3/l4 Page l of 2
Total visitors: 2074
I
Visitors today: 254
Visitors yesterday: 288
Visitors last week: 1865
Visitors per month: 2074
Visitors per day: 230
Visitors currently 5
online:
Counter June 3. 2014
starts on:
I am identified by fIlIml! and called a lin, lhit ts not
pirody. That Is libel.
They have filed severallegttlmate DMCA complaints against me. This morning, I was Iyng about that
to friends one of my many Twitter accounts, one of the very few that has not been susPended or
abandoned. Now, thai has b8en taken from me as well.
t had yet another Faeebook account taken dawn beolwse I em writing lies about Robin causey and
WJJ Hope III. I re-established It last night and posted NOTHING! ThIs mOtnlng, it was gone ageln,
bccDuso these wise and gentlo men who regularly scare s1mams of fear-pee from my' tolns. do not
want me 10 continue spreading lies aboUt thom.
we Humes HAlE n. When You F'tght BDOkI
Trying To Silence Me, Pretty Much Because
I'm Guilty
These images can be found at
http://thinkingmanszombie.wordpress.com/and are
reproduced in full to demonstrate the casual libel of an
anonymous clown. Therefore, their use qualifies as "fair use"
for the purpose of demonstration and criticism.
r'~6.6. "",.t
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Et l-got-ver-lawsult-rlght-here.com/2014/06/why-r-am-so-looking- (: ft... Startpage
I guess this Is going to tum into one of those games where my efforts 10 tell lies abC01 them wfB be
like -whack-a-moIe.- tf I put up II new Twitter account and start talking shit. CauseylHoge will jJst get
It laken down, It I put up a new Fecebook aeoount, Causeyfi.foge will lust have it taken down.
Because I'm a big fat liar, Wrth Parkinson's. And I'm Indlgent Probabty because I got hOld 01 some
bad mayonnaise.
Admin stuff
I hope I don't make b1g~ &gain befom ahB gets home.
HOGEISTSII
Log in
CAUSEYIl
Entries RSS
FOCUS!!
Comments RSS
Case l:l4-cv-0l683-ELH Document l3-l Filed 06/l3/l4 Page 2 of 2
Exhibit B
Defendant's @WMSRadioNetwork Twitter account at https://twitter.com/
wmsradionetwork/status/476478061 093728256 viewed 11 June, 2014.
Case l:l4-cv-0l683-ELH Document l3-2 Filed 06/l3/l4 Page l of 2
Q Twitter, Inc. (US) https:lltwitter.com/wmsradlonetwork/status/4764; {J C !I" Startpage Q.
401 Reply t.'1 Relweel Favorite More
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I'm only too happy to settle. My price just
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Case l:l4-cv-0l683-ELH Document l3-2 Filed 06/l3/l4 Page 2 of 2
Exhibit C
Patrick Collins, Inc. v. Does 1-22, 11-CV-01772-AW, ECF No. 18 (D.Md. 2011) at 3,4.
Case l:l4-cv-0l683-ELH Document l3-3 Filed 06/l3/l4 Page l of l0
Case 8:11-cv-01772-AW Document 18 Filed 11/08/11 Page 1 of 9
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
SOUTHERN DIVISION
PATRICK COLLINS, INC.,
Plaintiff,
v.
DOES 1-22,
Defendants.
Civil Action No. ll-cv-O 1772-A W

****************************************************************************
Memorandum Opinion
Plaintiff Patrick Collins, Inc. filed this action against twenty-two John Doe defendants for
copyright infringement. Pending before the Court is John Doe #3's Motion to Dismiss for Failure
to State a Claim or to Dismiss or Sever for Misjoinder and Motion to Quash the Subpoena. See
Doc. No. 13. The Court has reviewed the entire record, as well as the pleadings and exhibits, and
finds that no hearing is necessary. See Local Rule 105.6 (D. Md. 2010). For the reasons set forth
below, the Court denies Defendant's motion.
I. FACTUAL & PROCEDURAL BACKGROUND
On June 28, 2011, Plaintiff Patrick Collins, Inc. ("Collins") filed this Complaint against
twenty-two John Doe Defendants alleging that Defendants used a file-sharing protocol called
BitTorrent to illegally infringe Plaintiff's copyrights in the motion picture Cuties 2. Plaintiff
claims to know the Internet Protocol address ("IP address") of each infringing defendant, but not
their real names, addresses, or other identifying information. The entity that possesses
information linking an IP address to real identifying information is the Internet Service Provider
Case l:l4-cv-0l683-ELH Document l3-3 Filed 06/l3/l4 Page 2 of l0
("ISP") for that IP address. ISPs, such as Comcast or Verizon, maintain temporary internal logs
that record the date, time, and customer identity for each IP address serviced by that ISP. On July
28, 20 II, the Court granted Plaintiff s Motion to Expedite Discovery prior to the Rule 26(f)
conference, enabling Plaintiff to conduct limited discovery on the ISPs that service the allegedly
infringing IP addresses so that Plaintiff can discover the identity of the defendants and serve
them with process. See Doc. No.8.
Since the Court's order permitting such discovery, the ISPs have provided their
subscribers with notice of the subpoena. As a result, a few of the putative John Doe Defendants
whose contact information have been subpoenaed have filed motions with the Court seeking to
dismiss the case for failure to state a claim or to dismiss or sever for misjoinder and to quash the
subpoena and prevent the ISPs from turning over their identifying information. See Doc. Nos. 9,
13. Specifically, the Doe Defendants contends that: (1) Plaintiff cannot make out a copyright
infringement claim because Plaintiff does not have a formal copyright registration as required
under 17 U.s.C. 9 411 (a); (2) Defendants are not properly joined under Federal Rule of Civil
Procedure 21; and (3) the subpoena burdens and harasses Doe Defendants and should be quashed
pursuant to Federal Rule of Civil Procedure 45(c)(3)(A)(iv); and (4) the subpoena violates the
Electronic Privacy Communication Act, codified at 18 U.S.C. 99 2701-2703 and should be
quashed on that basis. Although one of these motions was mooted after Plaintiff dismissed the
movant John Doe, see Doc. No. II, the Court is currently considering such a motion by John
Doe #3. For the reasons stated below, the Court denies John Doe #3's motion.
III. ANALYSIS
A. Motion to Dismiss for Failure to State a Claim for Copyright Infringement
2
As an initial matter, Doe Defendant #3 argues that Plaintiff cannot make out a copyright
infringement claim because Plaintiff does not have a formal copyright registration as required
under 17 U.S.C. S 41 I(a), and Plaintiffs claim should thus be dismissed pursuant to Federal
Rule 12(b)(6). The purpose of a motion to dismiss under Rule 12(b)(6) is "to test the sufficiency
of [the] complaint." Edwards v. City of Goldsboro, 178 F.3d 231, 243 (4th Cir. 1999). Except in
certain specified cases, the complaint need only satisfy the "simplified pleading standard" of
Rule 8(a), Swierkiewicz v. Sorema NA., 534 U.S. 506, 513 (2002), which requires a "short and
plain statement of the claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a)(2).
A plaintiff must plead "enough facts to state a claim to relief that is plausible on its face." Bell
Atlantic Corp. v. Twombly, 550 U.S. 544, 547 (2007).
In order for Plaintiff to state a copyright infringement claim, Plaintiff must show: "(I)
ownership of a valid copyright, and (2) copying of constituent elements of the work that are
original." Feist Publ'ns, Inc. v. Rural Tel. Servo Co., 499 U.S. 340, 361 (1991). Although
Plaintiff has filed a United States Copyright Registration Application for its motion picture
Cuties 2, the copyright is still pending registration. In a 2005 case, this Court found that "the
plain language of the Copyright Act ... requires registration of a copyright or denial of same as
jurisdictional prerequisites to instituting an action for copyright infringement." Mays & Assocs.
v. Euler, 370 F. Supp. 2d 362, 370 (D. Md. 2005).
However, the Supreme Court has more recently held that registration of a copyright is not
necessary to bring a copyright infringement claim in federal court. See Reed Elsevier, Inc. V.
Muchnick, 130 S.Ct. 1237, 1246 (2010) ("Federal district courts have subject-matter jurisdiction
over copyright infringement actions based on 28 U.S.C. SS 1331 and 1338. But neither S 1331,
which confers subject-matter jurisdiction over questions offederallaw, nor S 1338(a), which is
3
specific to copyright claims, conditions its jurisdictional grant on whether copyright holders have
registered their works before suing for infringement."). Subsequently, at least one court in the
Fourth Circuit considering the impact of this decision has found that it has subject matter
jurisdiction over a plaintiff s copyright infringement claims for both registered and unregistered
images. See Tattoo Art, Inc. v. TAT Int'l, LLC, Civ. NO.2: IOcv323, 2011 WL 2585376, at *II
(E.D. Va. June 29,2011). Accordingly, the Court finds that Plaintiff has adequately stated a
claim for copyright infringement even though its copyright registration is still pending.
B. Motion to Dismiss or Sever for Misjoinder
Additionally, Doe #3 argues that Defendants are not properly joined under Federal Rule
of Civil Procedure 21 and should accordingly be dismissed or severed from the instant action. As
an initial matter, the Court notes that there is a wealth of case law in other federal district courts
supporting joinder in similar cases. See, e.g., Call of the Wild Movie, LLC v. Does 1-1062, 770 F.
Supp. 2d 332, 342-32 (D.D.C. 2011) (finding joinder proper in a similar case involving over
1,000 Doe Defendants); Donkeyball Movie, LLC v. Does 1-171, Civ. No. 10-1520(BAH), 2011
WL 1807452, at *4-*5 (D.D.C. May 12,2011) (same); West Coast Prod., Inc. v. Does 1-5829,
Civ. No. 11-57(CKK), 2011 WL 2292239, at *5-*6 (D.D.C. Jun. 10,2011) (same).
However, courts have also found joinder inappropriate in similar cases. See Pac. Century
Int'l, Ltd. v. Does 1-101, No. C 11-02533 DMR, 2011 WL 2690142 (N.D. Cal. Ju18, 2011)
(severing all defendants but one due to lack of evidence that defendants were part of the same
"swarm" in uploading the same initial files of a given work); see also Patrick Collins v. Does 1-
58, NO.3: 11-cv-531 (JAG) (E.D. Va. Oct. 13, 20 II) (Doc. No. 17 Ex. I) ("The mere allegation
that the defendants have used the same peer-to-peer network to copy and reproduce the Work-
4
which occurred on different days and times over a span of two months-is insufficient to meet
the standards to joinder set forth in Rule 20.").
Permissive joinder is governed by Federal Rule of Civil Procedure 20, which provides
that:
Persons ... may be joined in one action as defendants if: (A) any right to relief
is asserted against them jointly, severally, or in the alternative with respect to
or arising out of the same transaction, occurrence, or series of transactions or
occurrences; and (B) any question of law or fact common to all defendants will
arise in the action.
Fed. R. Civ. P. 20(a)(2). Many courts have determined that all "logically related" events
underlying a legal cause of action are generally considered as comprising a transaction or
occurrence. See, e.g., Mosley v. Gen. Motors Corp., 497 F.2d 1330, 1333 (8
th
Cir. 1974). The
Court may sever improperly joined parties at any time, as long as the severance is on just terms
and the entire action is not dismissed outright. Fed. R. Civ. P. 21. However, "the impulse is
toward the broadest possible scope of action consistent with fairness to the parties and joinder of
claims, parties and remedies is strongly encouraged." United Mine Workers of Am. v. Gibbs, 383
U.S. 715, 724 (1966). Considering the two requirements for permissive joinder under Federal
Rule 20(a)(2) as they apply to the instant action, the Court finds that at this procedural juncture,
joinder of the putative Defendants is proper.
The first requirement of permissive joinder is that claims "aris[ e] out of the same
transaction, occurrence, or series of transactions or occurrences." Fed. R. Civ. P. 20(a)(2)(A).
Doe #3 argues that Plaintiff is attempting to join numerous individuals without alleging any
coordinated action between the Defendants or any right to reliefthat arises out of the same
transaction. Additionally, Doe #3 argues that there is no alleged or implied relationship between
5
the Doe Defendants and that the Complaint contains no allegation that any two Defendants acted
in concert or otherwise conspired against Plaintiff.
These contentions largely ignore the allegations in the Complaint. Plaintiff alleges that
each Defendant peer member participated in the same "swarm" of BitTorrent users that illegally
uploaded and downloaded Plaintiffs copyrighted movie. See Compl. '\[33. Additionally, Plaintiff
alleges that each Defendant directly interacted and communicated with other members of that
swarm through digital handshakes, the passing along of computer instructions, and by other
types of transmissions. Id. Plaintiff further alleges that once a Defendant has downloaded the full
copyrighted work, the Defendant becomes known as an "additional seed" and continues to
distribute the torrent file containing the copyrighted work. Id. '\[35. Finally, Plaintiff contends
that it has only sued Defendants in the exact same swarm, i. e., Defendants who participated in
downloading or transmitting the same unique version of Plaintiffs movie. Plaintiff explains that
such identification is possible through the use of forensic software which identifies the Doe
Defendants' IP Addresses as having a unique cryptographic "Hash Number" which serves as a
digital footprint. See id. '\[38.
Doe #3 points out that this swarm involved possibly thousands of other online users from
across the country. Even though Plaintiff is suing only a small portion of the swarm, the Court
finds that Plaintiff has sufficiently alleged that the putative Defendants used the same file-
sharing device at around the same time to copy the same version of Plaintiffs movie.
Additionally, Plaintiff has sufficiently alleged not only that each Doe played a role in the
collaborative effort of distributing Plaintiffs movie, but that each of the twenty-two Defendants
may have directly facilitated the download of Plaintiffs movie by another of the twenty-two
Defendants. See Call of the Wild Movie, 770 F. Supp. 2d 332, 343 (D.D.C. 2011) (finding joinder
6
proper where "[eJach putative defendant is a possible source for the plaintiffs' motion pictures,
and may be responsible for distributing the motion pictures to other putative defendants").
Although Defendants may be able to rebut these allegations once the Court becomes aware of
their identities and individual defenses, at this stage Plaintiffs have adequately satisfied the first
prong of permissive joinder.
The second prong of the permissive joinder test, Federal Rule 20(a)(2)(B), requires
Plaintiff s claims against Defendants to contain common questions of law or fact. Plaintiff meets
this requirement in the instant action because it asserts identical claims against the Doe
Defendants. Although Defendants will necessarily present different factual issues and legal
defenses at a later stage in the litigation, the commonality oflegal claims at this time supports
joinder. Additionally, the interests of judicial efficiency also weigh in favor of joining these
claims, and doing so may be more beneficial for the Doe Defendants. See London-Sire Records,
Inc. v. Doe 1, 542 F. Supp. 2d 153, 161 (D. Mass. 2008) (finding that consolidating a group of
similar cases "ensures administrative efficiency for the Court, the plaintiffs, and the ISP, and
allows the defendants to see the defenses, if any, that other John Does have raised."). Moreover,
joinder serves Plaintiff s interests by providing it with an effective tool to protect its motion
picture from copyright infringement. Accordingly, the Court fmds that joinder is proper and
accordingly declines to sever or dismiss Doe #3 on that basis.
C. Motion to Quash Subpoenas
Finally, Doe #3 has filed a motion to quash the subpoena issued to the ISP seeking
information about the Doe Defendants. Doe #3 contends that the subpoena burdens and harasses
Doe Defendants and should be quashed pursuant to Federal Rule of Civil Procedure
7
45(c)(3)(A)(iv). Federal Rule 45 provides that pursuant to a timely motion, the issuing court
must quash or modify a subpoena that, inter alia, "subjects a person to undue burden." In the
instant action, the Court permitted Plaintiff to serve subpoenas on ISPs so that Plaintiff may
identify the Doe Defendants responsible for the alleged infringement. Such identification is
necessary so that Plaintiff may pursue these actions and enforce its legal rights to distribute
Cuties 2 by obtaining a remedy against infringers. Doe #3's argument that the subpoena presents
an undue burden is unavailing because the subpoena is directed toward the ISPs and not the Doe
Defendants and accordingly does not require Doe #3 to produce any information or otherwise
respond. Therefore, the Court denies Doe #3's motion to quash the subpoena on the basis that it
presents an undue burden to Defendants.
In addition, Doe #3 contends that Plaintiffs subpoenas violate the Electronic
Communication Privacy Act ("ECPA"), 18 U.S.C. 992701-2703 (West 2011). Specifically,
Defendant contends that the ECPA restricts the disclosure by an electronic communications
service of its customers' records and the contents of their electronic communications. Defendant
presumably relies in part on section 2702(a)(l), which provides that "a person or entity providing
an electronic communication service to the public shall not knowingly divulge to any person or
entity the contents of a communication while in electronic storage by that service." This
provision does not apply in the instant action, where Plaintiff seeks not the contents of a
communication in electronic storage but rather Defendants' names, addresses, telephone
numbers, e-mail addresses, and Media Access Control addresses.
Additionally, Doe #3 presumably relies on section 2702(a)(3), which restricts the
disclosure of customer records. See 18 U.S.C. 9 2702(a)(3) (West 2011). Doe #3 fails to consider
section 2702(c)(6), which provides an exception allowing an ISP to "divulge a record or other
8
information pertaining to a subscriber ... to any person other than a governmental entity." Id. S
2702(c)(6). Because Plaintiff in the instant action is not a governmental entity, disclosure of the
information sought by Plaintiff pursuant to the subpoena is permitted by the ECP A. See First
Time Videos, LLC v. Does 1-500, No. 10 C 6254, 2011 WL 3498227, at *4 (N.D. Ill. Aug. 9,
2011) (finding under similar facts that the information subpoenaed to the plaintiff is permitted by
the ECPA and therefore not privileged). Accordingly, the Court denies Doe #3's motion to quash
the subpoena on this ground.
IV. CONCLUSION
For the foregoing reasons, Defendant's motion is denied. A separate order will follow.
November 8, 2011
Date
9
lsi
Alexander Williams, Jr.
United States District Judge
Case l:l4-cv-0l683-ELH Document l3-3 Filed 06/l3/l4 Page l0 of l0
Exhibit D
Accusoft Corrporation v. Quest Diagnostics, et aZ., Case No. 12-CV-40007-TSH, ECF
No. 53 (D.Ma. 2012).
Case l:l4-cv-0l683-ELH Document l3-4 Filed 06/l3/l4 Page l of 22
Case 4:12-cv-40007-TSH Document 53 Filed 04/18/12 Page 1 of 21
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
ACCUSOFT CORPORATION,
Plaintiff,
v.
QUEST DIAGNOSTICS, INC., and
MEDPLUS, INC.,
Defendants.
)
)
)
)
)
)
)
)
)
)
)
)
Civil Action No.
12-40007- FDS
MEMORANDUM AND ORDER ON PLAINTIFF'S MOTION FOR PRELIMINARY
INJUNCTION AND DEFENDANTS' MOTION FOR PROTECTIVE ORDER
SAYLOR,J.
This is an action for copyright infringement arising from a software-licensing dispute.
Plaintiff Accusoft Corporation holds a registered copyright on ImageGear, a computer program
that operates as a component in other software applications to provide discrete imaging functions.
Accusoft sells two types of licenses for ImageGear: development licenses, which allow the
licensee to incorporate ImageGear into those other software applications; and distribution
licenses, which authorize distribution of those applications once ImageGear has been incorporated
into them.
Defendant MedPlus, inc., a subsidiary of defendant Quest Diagnostics, Inc., develops
software that is used by hospitals and other health-care providers to manage patient records and
test results. In 2001, a predecessor to Accusoft granted MedPlus both development and
distribution licenses for ImageGear as implemented in two of the company's own software
"'UTHENTIC.ATE~
U s_ COVERNMENT
INFClRM nO:-.l
CPO
Case 4:12-cv-40007-TSH Document 53 Filed 04/18112 Page 2 of 21
products, ChartMaxx and eMaxx. MedPlus later purchased a development license to incorporate
ImageGear into a third product, OptiMaxx. It eventually assigned OptiMaxx to Quest. Niether
Quest nor MedPlus ever obtained an express license from Accusoft to distribute ImageGear as
implemented in OptiMaxx.
The relationship between the parties deteriorated after Accusoft discovered what it alleges
are numerous unlicensed distributions of OptiMaxx and, consequently, ImageGear. After filing
suit for breach of contract and copyright infringement, Accursoft has now moved for preliminary
injunctive relief prohibiting MedPlus and Quest from further use or distribution of OptiMaxx and
requiring the companies to recall all existing licenses of that product. In the alternative, it
requests a prospective injunction that would prohibit further distribution of OptiMaxx (or any
other program making unlicensed use of ImageGear) to new customers or facilities. Defendants
have also filed a motion for a protective order relating to 19 subpoenas that Accusoft has served
on their customers.
For the following reasons, the Court finds that plaintiff has established a sufficient basis to
justify limited injunctive relief that will maintain the status quo pending resolution of this matter.
In addition, because it finds that Accusoft may more conveniently obtain the information it seeks
from defendants directly, the Court will quash the subpoenas without prejudice to their re-
issuance under appropriate circumstances.
I. Background
The following facts are taken from the parties' filings and are undisputed except where
indicated otherwise.
A. The Parties
2
Plaintiff Accusoft Corporation is a Florida corporation engaged in the development and
sale of a software product known as ImageGear. (Compl." 2, 11). ImageGear is a tool useful
in functions such as scanning, compression, viewing, annotation, editing, processing, and printing
of images. (ld.l) 12). Accusoft owns all copyrights, intellectual property, and licenses associated
with ImageGear. (Comp!.' 31, Berlin Decl. Ex. B). It sells the program as a "software
development toolkit" ("SDK") that is used by software developers, who implement ImageGear as
a discrete module within other software products. (ld.). The company also sells distribution
licenses for ImageGear, each of which entitles its holder to sell a product that contains ImageGear
to one end user. (Berlin Dec!" 13). These distribution licenses typically take the form of a
concurrent-user license, by which the end user is permitted "to have a fixed number of individual
users who are authorized to use one copy of the Application on a single personal computer or a
single networked computer at the same time." (Berlin Decl. Ex. A).
Defendant Quest Diagnostics, Inc., a Delaware corporation with its principal place of
business in Madison, New Jersey, provides medical testing diagnostics, information, and services.
(Compl.' 3). It operates about fifty testing laboratories nationwide. (Kessler Decl.' 4). Quest
currently markets and provides support for OptiMaxx, a software program that is used in its
testing laboratories to process and archive physician test requisitions and results. (Kessler Dec!. ,
5). OptiMaxx is also licensed to about 25 third-party customers, including hospitals and other
clinical facilities. (ld.l) 6).
Defendant MedPlus, Inc., an Ohio corporation and subsidiary of Quest with its principal
place of business in Mason, Ohio, develops and licenses clinical-connectivity and data-
management software used by physician practices, pharmacies, hospitals, and other healthcare
3
providers. (Marshall Decl. ~ 6). MedPlus currently has two software products that implement
ImageGear's imaging functions: ChartMaxx and eMaxx. (Compl. ~ 4). ChartMaxx is a tool for
electronic patient medical record management that is used by about 82 MedPlus customers to
manage more than 1.8 million documents. (Marshall Decl. ~ 11).
B. The ImageGear Licensing Dispute
ImageGear was originally developed by a Delaware corporation, also called Accusoft
Corporation. (Compl. ~ 10, Berlin Decl. ~ 5). Although the record does not establish precisely
when ImageGear was created, one certificate of copyright registration for the product is dated
June 10, 1996. (Berlin Decl. Ex. B). Also in the 1990s, MedPlus developed and began selling
OptiMaxx. (ld. ~ 16). At that time, OptiMaxx did not include 1mageGear. (ld. ~ 16).
On November 30, 2001, Accusoft (Delaware) and MedPlus entered into a license
agreement for the development and distribution of ImageGear in ChartMaxx and eMaxx ("2001
Agreement"). (PI.'s Mem. Ex. C). The agreement included two development licenses, allowing
MedPlus to implement ImageGear into both of its programs. (ld.). It also granted MedPlus
4,500 concurrent-user distribution licenses. (ld.). The price for this combination of development
and distribution licenses was $90,000, payable in two installments. (ld.).' The agreement allowed
MedPlus to purchase additional distribution licenses as necessary, as well as annual support,
upgrades, enhancements, and license maintenance. (Marshall Decl. Ex. A). Section 1.2 of the
agreement limited the scope of the distribution licenses to the use of ImageGear in ChartMaxx
and eMaxx, as opposed to any other program. (PI.'s Mem. Ex. C). The agreement contained an
I Since 2001, MedPlus has paid $187,500 for additional license upgrades and $281,870 for support related
to these licenses. (ld. ~~ 13-14).
4
integration clause that indicated that the document constituted the entire understanding and
agreement between the parties. (ld.). Finally, Sections 10.3 and 10.4 provided that the
agreement could be modified only by written agreement and that rights under the agreement are
not transferrable or assignable. (ld.).
In 2005, MedPlus decided to integrate ImageGear into OptiMaxx. (Marshall Dec!. ~ 17).
It purchased an ImageGear development license from Accusoft in February of that year at a price
of $3,995. (ld. Ex. F, G). In an e-mail exchange during that period, MedPlus employee Ray
Mazza indicated to Accusoft employee Brendan Day that MedPlus was purchasing the new
development license for its OptiMaxx product. (ld. Ex. H). In March 2007 and again in February
2008, MedPlus purchased maintenance support packages related to its integration of ImageGear
into OptiMaxx. (ld. ~~20-22, Ex. L, M). It does not appear that the companies ever executed
any written agreement relating to distribution of ImageGear in OptiMaxx.
By 2006, MedPlus began distributing OptiMaxx both to Quest and to third-party
customers. (Marshall Decl. ~ 23). From an e-mail exchange in which Day requested a report of
the number of deployments of both ChartMaxx and OptiMaxx, it appears that Accusoft was
aware that MedPlus had begun distributing OptiMaxx during that period. (ld. Ex. M).
In March 2008, MedPlus determined that it would cease marketing and selling OptiMaxx.
(Kessler Decl. ~ 6). At that time, OptiMaxx was in use at laboratories operated by Quest as well
as at the facilities of about 25 third-party customers of MedPlus. (ld.). Instead of discontinuing
the product, MedPlus transferred its rights in the software to Quest, and the six employees on
MedPlus's former OptiMaxx team became employees of Quest. (ld.).
In December 2008, Accusoft (Rorida), which was then operating under the name PIC
5
Acquisitions II, Inc., acquired the assets of Accusoft (Delaware), including all rights to
ImageGear. (Comp!. ~ 10-11). PIC changed its name to Accusoft shortly after the acquisition.
(Id. ~ I I). Previously, Day had been the primary contact at Accusoft (Delaware) for MedPlus and
Quest with respect to ImageGear licensing. (Kessler Dec!. ~ 7). After the sale of assets, another
Accusoft employee, Leif Peters, became Quest's primary contact on issues relating to ImageGear
and ImageGear licensing. (Id.).
A series of e-mails between Peters and Quest employee George Kessler demonstrate that
Accusoft was aware that OptiMaxx had been transferred from MedPlus to Quest earlier that year.
(Kessler Dec!. Ex. A). That exchange concluded with an invoice, dated September 30, 2009, in
the amount of $1,499.s0 for a renewed development license for the implementation of lmageGear
in OptiMaxx. (Id. Ex. A). It is unclear whether Peters was aware of the OptiMaxx distributions
at the time of those e-mails.
Peters and Kessler corresponded again in July 2010 after an accounting error at Quest
resulted in its failure to pay the September 2009 invoice. (Kessler Decl. ~~ 11-12). Later that
month, Peters e-mailed Kessler to ask whether distributions of OptiMaxx were being reported to
Accusoft. (Id. ~~13-14). In August, Peters, Kessler, and MedPlus employee Jennifer Marshall
conferred about license reporting and determined that OptiMaxx distributions had not been
included in MedPlus's reports to Accusoft that had been made under the 2001 Agreement. (Id. ~~
15-(6). Peters expressed Accusoft's desire to bring up to date all records of OptiMaxx
distributions so that appropriate billing could be completed to license those distributions. (Id. ~
(6).
In early September 2010, Peters and Kessler corresponded concerning 240 distributions of
6
OptiMaxx that Kessler had estimated to have occurred without a proper license. (Kessler. Decl.
Ex. F). In one e-mail, Peters attached a pro forma invoice for those previous distributions. (ld.).
He also requested that the companies negotiate a written licensing agreement to cover any further
use of OptiMaxx. (ld.). He explained that the 2001 Agreement was not sufficient for that
purpose because it was not assignable and that, in any event, it only licensed the use oflmageGear
in ChartMaxx and eMaxx. (ld.). Peters assured Kessler, however, that Accusoft was "not
standing in the way of IQuest] distributing IAccusoft's] code at all" but that it would be "best for
[both companies] to have an appropriate governing license agreement in place." (ld.).
In response to Peters's e-mail, Kessler stated that the fee listed in the pro forma invoice
seemed, at $222 per distribution, "high" compared to the $IO-per-license fee Accusoft had
charged for ImageGear licenses when the OptiMaxx team was at MedPlus. (ld. ~ 18, Ex. F).
Later that month, Kessler contacted Peters to revise his estimate of the number of concurrent
users of OptiMaxx in Quest facilities. (ld. ~ 19, Ex. H). Using what he considered to be the
industry-standard definition of "concurrent user license" as a license "based on the number of
simultaneous users accessing the program," Kessler calculated that Quest had distributed
OptiMaxx to only J7 users. (ld. ~ 19). Peters replied that Accusoft defined the term to mean "a
licensed user with concurrent rights to use among any number of client machines [ImageGear] is
installed on." (ld. ~ 20, Ex. H). The two were unable to come to an agreement as to the
appropriate definition to use in calculating what licensing fee was due for Quest's past
distributions of OptiMa xx. (ld. ~ 22).
On November 23, 2010, Accusoft President Jack Berlin issued a letter to Jennifer
Marshall, an employee of MedPlus, terminating the 2001 Agreement. (PI.'s Mem. Ex. I). As
7
grounds for the termination, Berlin cited "MedPlus's transfer of distribution rights to Quest
Diagnostics." (Id.). He demanded (I) that Quest remove Accusoft software from all MedPlus
and Quest products, (2) that it exclude ImageGear from any future application created by those
companies, and (3) that an officer of each company provide an affidavit stating that the software
had been removed and would not be used thereafter. (Id.). MedPlus and Quest assert that they
have made no new distributions of ChartMaxx since receiving the termination letter, but that
Quest and its customers that currently hold licenses to the program continue to use it. (Marshall
Decl. ~~ 27-29).
In September 20ll, the parties appeared poised to reach a settlement of their dispute
concerning unlicensed distributions of ImageGear. (Wallace Decl. ~ 5). On September 30, 2011,
Kristin Wallace, counsel for Quest, sent a proposed final agreement to Peters. (Id. ~ 6). Under
the proposal, Quest would pay a one-time fee of $42,500 for all distributions of ImageGear in
OptiMaxx that occurred before October 1,201 I. (Id. Ex. A). The proposal also provided that
Quest would purchase an "enterprise" license that would allow unlimited distribution of
OptiMaxx with ImageGear during the period from October 1,2011, to September 30,2012, for a
fee of $50,000. (Id.). The license would be renewable on an annual basis. (Id.).
Initially, counsel for Accusoft responded favorably to the proposal. (Id. ~6). In fact, the
company sent Quest an invoice, dated September 30, for the total amount contemplated under the
proposal, $92,500. (Romeo Decl. ~ 9). During the following week, Accusoft's Vice President of
Sales and Marketing, Russ Puskaric, indicated to Quest's Director of IT Growth Initiatives, Tom
Romeo, that Accusoft would prefer an agreement that resolved its disputes with both MedPlus
and Quest simultaneously. (Romeo Decl. ~ 7). However, according to Romeo, on October 7
8
Puskaric indicated that Accusoft was willing to execute an agreement that addressed only the
licensing arrangement between Accusoft and Quest. (Romeo Dec!. ~ 7). On October 27, Quest's
Executive Director of Enterprise Systems, Michael Hanlon, signed a copy of the proposed
agreement and sent it to Accusoft. (Romeo Decl. ~ 8, Ex. A). The document was never fully
executed, however, because Accusoft continued to insist that it would only accept an agreement
that simultaneously resolved its disputes with both MedPlus and Quest. (Ashley Decl. ~~ 9-11;
PI's Reply Ex. C, D, E; Puskarik Dec!. ~ 13). Meanwhile, Quest and MedPlus agreed that each
would pay a portion of the sum due under the proposed agreement. (Romeo Dec!. ~ 11). On
November 14,2011, Quest tendered payment to Accusoft with a check in the amount of
$24,444.50, which Accusoft cashed on November 25. (Id.).
On the same day that Quest tendered its payment, Accusoft initiated this lawsuit by filing a
complaint with the United States District Court for the Middle District of florida. The complaint
contains four counts. Count I alleges breach of contract against MedPlus on the ground that
MedPlus made distributions of ChartMaxx that were not licensed by the 2001 Agreement. Count
2 alleges copyright infringement against MedPlus on essentially the same basis. Count 3 alleges
copyright infringement against Quest for its distribution of ImageGear via OptiMaxx. Count 4
alleges secondary copyright infringement against Quest on grounds that it allegedly facilitated the
unlicensed distribution of ImageGear via OptiMaxx by MedPlus.
The negotiation between the parties toward an agreement appears to have continued into
December 2011, although ultimately no agreement was reached. (Ashley Dec!. ~~ 18-19). On
January 26, 2011, the case was transferred to this Court because it arises in part from the 200 I
Agreement, which contains a forum-selection clause specifying that any action related to the
9
Case l:l4-cv-0l683-ELH Document l3-4 Filed 06/l3/l4 Page l0 of 22
agreement must be brought in Massachusetts.
Accusoft has now moved for preliminary injunctive relief prohibiting MedPlus and Quest
from further use or distribution of OptiMaxx and requiring the companies to recall all existing
licenses of that product. In the alternative, it requests a limited, prospective injunction prohibiting
further distribution of OptiMaxx or any other product that makes unlicensed use of ImageGear to
new customers or facilties. Defendants have moved for a protective order quashing 19 subpoenas
duces tecum served by Accusoft on the grounds that those subpoenas are overly broad,
duplicative, and unduly burdensome.
For the following reasons, the Court will grant a limited injunction against further
distributions of OptiMaxx and any other program that makes unlicensed use of ImageGear. It will
also grant Defendants' motion for a protective order and quash the 19 subpoenas duces tecum.
II. Standard of Review
To obtain a preliminary injunction, "a plaintiff 'must establish (I) that he is likely to
succeed on the merits, (2) that he is likely to suffer irreparable harm in the absence of preliminary
relief, (3) that the balance of equities tips in his favor, and (4) that the injunction is in the public
interest.''' Peoples Fed. Say. Bank v. People's United Bank, 2012 WL 414251, at *6 (1st Cir.
Feb. 10,2012) (quoting Winter v. Natural Res. Dej. Council, Inc., 555 U.S. 7, 20 (2008).
Although each of these factors must be considered independently, the movant's likelihood of
success on the merits "weighs heaviest in the decisional scales." Coquico, Inc. v. Rodriguez-
Miranda, 562 F.3d 62, 66 (1st Cir. 2009) (citations omitted). This focus on the likelihood of
success is particularly appropriate in actions for copyright infringement because "the resolution of
the other three factors often turns on the plaintiff's likelihood of success." ld.
IO
Case l:l4-cv-0l683-ELH Document l3-4 Filed 06/l3/l4 Page ll of 22
A plaintiff seeking a preliminary injunction does not bear the burden of disproving each
affirmative defense asserted by the defendant. See Gonzales v. 0 Centro Espirita Beneficente
Uniao do Vegetal, 546 U.S. 418,429 (2006) ("[H]urdens at the preliminary injunction stage track
the burdens at trial."). Thus, once a plaintiff establishes a likelihood of success on its prima facie
case, the burden shifts to the opposing party to demonstrate that it is likely to prevail on one or
more of its defenses.
III. Analysis
A. Likelihoodof Success
Plaintiff contends that the record establishes a likelihood that it will succeed on its
copyright claims. Because the 200 I Agreement did not license use oflmageGear in OptiMaxx
but defendants nonetheless apparently did copy, use, and distribute that software, the Court
agrees.
Computer programs are protected as "literary works" under the Copyright Act. Lotus
Dev. Corp. v. Borland In!'l, Inc., 49 F.3d 807,817 (1st Cir. 1995); see 17 U.S.c. S 102(a). The
owner of a registered copyright holds an exclusive right to exclude others from copying the
software, from making works derivative of it, and from distributing or using it. See 17 U.S.c. S
106. Both damages and injunctive relief are available as remedies for infringement of these rights.
17 U.S.c. SS 501,502,504. To prevail on a claim for copyright infringement, a plaintiff must
demonstrate (I) ownership of a valid copyright and (2) copying the elements of the work that are
original. Feist Publ'ns, Inc. v. Rural Tel. Servo Co., 499 U.S. 340, 361 (1991). A party may also
infringe a copyright contributorily, or secondarily, by "intentionally inducing or encouraging direct
infringement of the copyright." MGM Studios v. Grokster, Ltd., 545 U.S. 913, 930 (2005).
II
Defendants do not contest the validity of plaintiff's copyright. Nor do they contest that,
between November 2001 and November 2011, they incorporated ImageGear into ChartMaxx and
OptiMaxx and distributed the product for use at Quest facilities as well as by third-party
customers. Thus, the sole question is whether defendants' actions amounted to unlicensed
infringement.
Plaintiff's prima facie case of infringement through OptiMaxx deployment is relatively
straightforward. It is essentially undisputed that, between 2005 and 2012, defendants
incorporated ImageGear into OptiMaxx pursuant to a development license purchased in 2005.
(Marshall Dec!. ~ 17, Ex. F, G, H). Maintenance support packages were purchased for this
development license in 2007 and 2008. (ld. ~~20-22, Ex. L, M). At least before the settlement
negotiations in 2011, however, the parties never executed an express distribution license
agreement for OptiMaxx.
Since its creation, OptiMaxx has been copied and distributed to both Quest facilities and
third-party customers. (Kessler Dec!. ~~ 6, 24). Those distributions were not authorized by the
2001 license agreement, because that agreement applied only to use oflmageGear in ChartMaxx
and eMaxx. (P!.'s Mem. Ex. C). Defendants suggest that certain e-mails between the parties in
2005 and 2006 show that plaintiff was aware that defendants were distributing ImageGear
through OptiMaxx during this period. (Marshall Dec!. ~ 18,24, Ex. H, M). However, this
awareness alone does not put OptiMaxx within the scope of the 2001 Agreement. Section 10.3
of that document provides that its terms "shall not be amended, altered, changed or modified in
any way, unless agreed to in writing by both AccuSoft and Licensee." (PJ.'s Mem. Ex. C). The
record does not show any such amendment to the license agreement before defendants began
12
distribution of OptiMaxx. Thus, even if plaintiff's knowledge of defendants' unlicensed uses
might otherwise be sufficient to create an implied license agreement, such a result is barred by the
express terms of the 200 I Agreement. The Court therefore finds that plaintiff is likely to prevail
on its claims that defendants copied and distributed ImageGear without a license through their
OptiMaxx product.
Defendants contend, as an affirmative defense, that the settlement negotiations of2011led
to an accord and satisfaction of any licensing fees owed to plaintiff for distributions of OptiMaxx
before 2011 as well as to an express license permitting them to continue those distributions
thereafter. However, the parties vigorously dispute whether plaintiff actually adopted the 2011
proposal. (Wallace Decl.' 5; Romeo Decl.' 7; Ashley Decl.'lJ 7-9; Puskaric Decl." 10-12).
For purposes of this motion, the Court finds that defendants have not met their burden of showing
a likelihood of establishing that defense.'
B. Irreparable Harm
Plaintiff asserts that continued infringement of its copyright creates risks of irreparable
harm to its interests, which include preserving the value of its intellectual property and controlling
, Even if the parties did enter into a binding agreement in 2011, defendants have not established each
element of the defense. To prove an accord and satisfaction, a defendant must show:
(I) that there has arisen between the parties a bona fide dispute as to the existence or extent of
liability; (2) that subsequent to the arising of that dispute the parties entered into an agreement
under the terms of which the dispute is compromised by the payment by one party of a sum in
excess of that which he admits he owes and the receipt by the other party of a sum less in amount
than he claims is due him. all for the purpose of settling the dispute; and (3) a performance by
the parties of that agreement.
Rust Eng'g Co. v. Lawrence Pumps, Inc., 401 F. Supp. 328, 333 (D. Mass. 1975). Here. defendants have not
shown performance of the alleged 2011 agreement. The 2011 proposal contemplated a one-time payment of
$42,500 for distributions made before October 1, 20 II. (Wallace Decl. Ex. A). Defendants assert only that they
tendered, and Accusoft received, a payment of $24,444.50. (Romeo Decl. ~ II). Thus, defendants' own
representations establish that any accord between the parties has not been satisfied in full.
13
the pricing model for distribution ofimageGear. (Berlin Dec!. ~ II). These risks appear to be
less severe than plaintiff fears.' Nonetheless, because further distributions could pose significant
risks to plaintiff's control over its intellectual property, the Court finds that circumstances do
weigh in favor of injunctive relief.
Plaintiff relies in part on a traditional rule in copyright law that irreparable harm is
presumed once a plaintiff has established a likelihood of success on an infringement claim. See,
e.g., Concrete Mach. Co., Inc. v. Classic Lawn Ornaments, Inc., 843 F.2d 600,611 (1st Cir.
1988). In eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388,393 (2006), however, the Supreme
Court eschewed the use of categorical presumptions in determining the propriety of injunctive
relief in a patent infringement action. The First Circuit has not decided whether the decision in
eBay precludes application of the traditional presumption of harm in other fields of intellectual
property law. See Mercado-Salinas v. Bart Enter. Int'I, Ltd., 671 F.3d 12, 19 (1st Cir. 2011).
However, other circuits have held that it does. See Salinger v. Colting, 607 F.3d 68,77-78 (2d
Cir. 2010); Perfect IO,Inc. v. Google, Inc., 653 F.3d 976,980-81 (9th Cir. 2011).
Here, the Court finds that continued (and possibly expanding) infringement of plaintiff's
software presents a risk of irreparable harm that is sufficient to support a limited, prospective
injunction, regardless whether a presumption to that effect is applied. In an industry where
exclusive control of intellectual property is crucial to profitability, it is understandable that plaintiff
fears that unchecked distribution of its code will lead to market disadvantages that cannot be
corrected. It is therefore unnecessary for this Court to decide whether the presumption of
3 For example. according to Kessler, defendant Quest has made only three additional distributions of
OptiMaxx since March 2008. (Kessler Decl. ~ 24).
14
irreparable harm survives the decision in eBay.
Defendants suggest that the fact that plaintiff delayed bringing this lawsuit is evidence that
it does not face any real risk of irreparable harm from the distribution of OptiMaxx. Delay in
filing suit may, under some circumstances, suggest that a plaintiff does not face imminent,
irreversible risks. See, e.g., Jagex Ltd. v.lmpulse Software, 750 F. Supp. 2d 228,239 (D. Mass.
2010) ("[P]laintiff's delay in filing suit and moving for injunctive relief undermines its claim of
irreparable harm."). However, plaintiff's delay in this case is not decisive on this point. Some
evidence suggests that the degree of infringement was not evident to plaintiff for several years
after it became aware that defendants were distributing ImageGear through OptiMaxx.
Furthermore, much of the delay after the transfer of OptiMaxx to Quest in 2008 resulted from
efforts of the parties to resolve the dispute without resort to litigation. It would be inequitable to
find that plaintiff's attempts to resolve the instant dispute before bringing its claims to court
renders it unable to seek protection from infringement now that it has.
In sum, the Court finds that although the probability that defendants' conduct during the
course of this action will severely harm plaintiff's interests is low, the nature of the potential risks
is substantial enough to warrant prospective injunctive relief.
C. Balanceof Hardships
The balance of hardships in this case tilts depending on the scope of the injunctive relief
that is considered. Plaintiff initially requested an order requiring that defendants cease operation
of all programs that use ImageGear other than ChartMaxx and eMaxx, recall those programs from
any third-party customers currently using them, and return all copies of the software to Accusoft.
(Pl.'s Mem. Ex. J). Defendants convincingly assert that a recall on this scale would impose heavy
15
and unnecessary costs on it and its customers that use OptiMaxx. Specifically, an order to recall
OptiMaxx licenses would impair the operation of record management systems in numerous
medical facilities until a version of the program that does not use ImageGear could be developed.
(Kessler Decl. ~~ 22-24; Marshall Decl. ~~ 28-29). The Court must also consider the delay
Accusoft may experience in collecting licensing fees for those programs for which such fees have
not yet been paid and its general loss of control over its intellectual property. (Berlin Decl. ~ II).
However, the balance of these relative risks weighs against issuance of so broad an injunction.
However, the balance shifts if the potential relief is limited to measures necessary to
maintain the status quo. Plaintiff's second proposed order would command defendants to halt
further distributions of the allegedly infringing applications but would not require them to recall
existing licenses or to return the software itself to Accusoft. (Pl.'s Supp. Ex. A). An order
enjoining new distributions of OptiMaxx will cause relatively minimal harm to defendants, who
(according to their own representation) have made only a limited number of new distributions
since 2008. (Kessler Decl. ~ 24; Marshall Decl. ~ 25).4 On the other hand, absent at least some
prospective relief, Accusoft will have no immediate control over its proprietary software and will
remain susceptible to a risk of an unknown degree of ongoing and potentially increasing
infringement. See, e.g., Adobe Sys./nc. v. Kornrumpj, 2011 WL 6303358 (N.D. Cal. Dec. 16,
2011) ("IH]arm to ... lone's] ability to control the distribution of ... software is sufficient to
establish irreparable harm."). Thus, the balance of hardships favors a limited injunction that will
4 These representations arc somewhat suspect, given that plaintiff has offered evidence in opposition to
defendants' motion for a protective order suggesting that defendant MedPlus sold atleasl one new OptiMaxx
license in 2011. (PI's Opp. to Protective Order Ex. C). Nonetheless, the Court finds defendants' statement on this
subject sufficiently reliable for the proposition that new distributions of OptiMaxx are occurring only at a moderate
rate. if at all.
16
Case 4:12-cv-40007 -TSH Document 53 Filed 04/18/12 Page 17 of 21
prohibit defendants from distributing OptiMaxx licenses to new customers for the duration of this
litigation.
s
D. Public Interest
Generally, the public interest is served by enjoining violations of the federal copyright
laws. See, e.g., Sony BMG Music Entm't v. Tenenbaum, 2009 WL 4723397 (D. Mass. Dec. 7,
2009). Defendants counter that the broader injunction that plaintiff proposes would interfere with
the proficient service of medical care, and that such effects are recognized to weigh against
injunctive relief. See, e.g., Datascope Corp. v. Kontron Inc., 786 F.2d 398,401 (Fed. Cir. 1986)
(upholding denial of injunction where district court found that the public would be harmed by
withdrawing a medical product from use). Again, this potential harm is negated if the court-
ordered relief is limited to a prospective injunction against distributions of OptiMaxx to new
customers. Indeed, such an injunction would be favorable to the public because it would uphold
the public's interest in copyright protection without unduly burdening medical interests.
IV. Motion for Protective Order
Defendants seek a protective order limiting 19 subpoenas duces tecum that plaintiff has
served on customers of defendants that use OptiMaxx in their facilities.
6
Defendants contend that
the subpoenas are overbroad, beyond the scope of permissible discovery, and designed to harass
by disrupting defendants' relationships with their customers. They also emphasize that much of
5 Of course, if existing OptiMaxx licenses will expire and require renewed license agreements, this
balance holds only insofar as the injunction allows such renewals. Otherwise, the ongoing expiration of current
licenses would operate as a gradual recall with respecl to those customers.
6 Defendants seek attorney's fees under Fed. R. Clv. P. 37. That rule, however. provides for fec-shifting
only with respect to orders to compel discovery, whether ordered on motion or after a court denies a motion for a.
protective order, Fed. R, Civ. P. 37(a)(I), (5).
17
the information sought through the subpoenas could be obtained through discovery requests
directed to defendants themselves.
7
The scope of discovery generally extends to "any nonprivileged matter that is relevant to
any party's claim or defense." Fed. R. Civ. P. 26(b)(l). However, a court is required to limit the
frequency or extent of otherwise allowable discovery if the same information "can be obtained
from some other source that is more convenient, less burdensome, or less expensive ... or [if] the
burden or expense of the proposed discovery outweighs its likely benefit .... " Fed. R. Civ. P.
26(b)(2)(C). In addition, if a party or any person from whom discovery is sought shows good
cause, a court may issue a protective order that either prohibits the discovery or prescribes its
scope and nature. Fed. R. Civ. P. 26(c). See Gill v. Gulfstream Park Racing Ass'n, 399 F.3d
39 1,402 (I st Cir. 2005) ("Under Rule 26, the trial court is required to balance the burden of
proposed discovery against the likely benefit.").
Here, the discovery at issue must be limited because it is cumulative and because it can be
obtained from another source that is more convenient - namely, the defendants themselves. The
subpoenas, each of which is substantially identical, include 14 requests that together encompass
virtually all aspects ofthe business relationships between defendants and their customers. (Keyes
Decl. ~ 3, Ex. A). Plaintiff has already requested that the Court compel defendants to produce a
substantially similar set of information through a preliminary injunction order. (PI.'s Supp. Ex.
7 Fed. R. Civ. P. 26(c)(I) requires that a party seeking to protective order certify that it "has in good faith
conferred or attempted to confer with the other affected parties in an effort to resolve the dispute without court
action."' See also Local Rule 7.1. Defendants conferred with plaintiff prior to filing their motion to note their
objections (0 the subpoenas, and the parties discussed the possibility of stipulating a protective order to protect
confidential information of the third parties. (Keyes Dec!. Ex. B, C, 0, E). This prerequisite to defendants'
motion was therefore satisfied.
18
A). That aspect of plaintiff's request will be granted, and the injunction will require defendants to
produce an accounting of their OptiMaxx-licensing relationships. Once defendants comply with
that order, the parties will be better positioned to determine the need to seek additional discovery
from third parties. For the time being, at least, the expansive discovery request that plaintiff has
served on Quest's customers is unduly burdensome, potentially irrelevant, and inefficient.
Because the information sought may be obtained more conveniently from defendants themselves,
the subpoenas will be quashed without prejudice to renewal if additional discovery is warranted
after defendants have provided the accounting that the Court will require of them."
Plaintiff contends that defendants lack standing to seek this restriction on its discovery
requests because the subpoenas were issued not against them but against third parties. Some
courts have denied motions to quash subpoenas under Rule 45(c) that are made by parties other
than those to whom the subpoenas are directed unless the moving party can show a "claim of
personal right or privilege regarding the production or testimony." See 9A Wright & Miller,
Federal Practice and Procedure 9 2463.1 (3d ed. 2004). That requirement-that the moving
party have an interest in the subject matter of the disclosure - applies with essentially the same
force to a motion for a protective order under Rule 26(c). See Firetrace USA, LLC v. Jesclard,
2008 WL 5146691 (D. Ariz. Dec. 8,2008) (finding "[t]he ... interests required for a protective
order under Rule 26(c) and the 'claim of personal right or privilege' required for a party to
challenge a subpoena under Rule 45(c) to be the same."). However, notwithstanding this
8 Defendants also propose various limitations on the material subject to the subpoenas based on tbe
relation of the material to ImageGear and the time period to which it relates. Because it is unclear whether it will
be necessary to seek discovery from the third-party customers after defendants comply with the injunction, those
proposal are moot for the time being.
19
requirement, a party may move for a protective order "regardless of whether [it] is seeking to
prevent disclosure of information by a nonparty, as long as the moving party can tie the protected
information to an interest listed in the rule, such as annoyance, embarrassment, etc." Firetrace
USA, LLC v. Jesclard, 2008 WL 5146691 (D. Ariz. Dec. 8, 2008). Here, it is more than likely
that the breadth and intrusiveness of the subpoenas will cause a degree of harm to defendants'
customer relationships that is sufficient to satisfy the interest requirement of Rule 26( c).
At any rate, Rule 26(b) commands that this Court limit discovery when the information
sought can be obtained from a more convenient source. The Court may do so either "[o]n motion
or on its own." Fed. R. Civ. P. 26(b)(2)(C). The standard for when a Court must limit discovery
under Rule 26(b) is as applicable to the circumstances in this case as the terms of Rule 26(c) that
permit defendants to seek a protective order. Because this Court could effect the reliefthat
defendants request sua sponte, it is not precluded from reaching the same result merely because
defendants have taken the initiative.
IV. Conclusion
For the foregoing reasons,
I. The motion of plaintiff for a preliminary injunction is GRANTED in part. The
terms of the preliminary injunction will be set forth in a separate order.
2. The motion of defendants for a protective order is GRANTED; provided,
however, that in lieu of a protective order, the Court hereby quashes the 19
subpoenas identified in defendants' motion, without prejudice to their renewal after
defendants have produced an accounting as required by the accompanying
preliminary injunction order.
20
Case l:l4-cv-0l683-ELH Document l3-4 Filed 06/l3/l4 Page 2l of 22
Case 4:12.cv.40007-TSH Document 53 Filed 04/18/12 Page 21 of 21
So Ordered.
lsI F. Dennis Saylor
F. Dennis Saylor IV
United States District Judge
Dated: April 18, 2012
21

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