Embassy Software v. eCopy

2009 DNH 006
CourtDistrict Court, D. New Hampshire
DecidedJanuary 13, 2009
DocketCV-06-391-JL
StatusPublished

This text of 2009 DNH 006 (Embassy Software v. eCopy) is published on Counsel Stack Legal Research, covering District Court, D. New Hampshire primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Embassy Software v. eCopy, 2009 DNH 006 (D.N.H. 2009).

Opinion

Embassy Software v . eCopy CV-06-391-JL 01/13/09 P UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Embassy Software Corporation

v. Civil N o . 06-cv-00391-JL Opinion N o . 2009 DNH 006 eCopy, Inc.

O R D E R

This case involves the validity of a copyright registration

obtained by a corporation that has been administratively

dissolved under state corporation law. The issue is potentially

dispositive because this court’s jurisdiction requires the

existence of a valid copyright registration.

The plaintiff, Embassy Software Corporation (“New Embassy”),

has sued1 defendant eCopy, Inc., a Delaware corporation, alleging

copyright infringement in violation of 17 U.S.C. § 501 (2000 and

2002). The claim arises from what New Embassy claims is eCopy’s

unauthorized use of New Embassy’s intellectual property, a

portable document software program. This court has jurisdiction

1 The lawsuit was initiated by a related but separate corporation of the same name (“Old Embassy”) which, as explained below, was administratively dissolved by the State of New Hampshire. An amended complaint substituted “New Embassy” as the plaintiff in this case. under 28 U.S.C. §§§ 1331 (federal question), 1338 (copyright),

and 1367 (supplemental jurisdiction).

Before the court is eCopy’s motion for judgment on the

pleadings under Federal Rule of Civil Procedure 12(c). ECopy

asserts that this court lacks jurisdiction because the copyright

registration at issue is invalid, having been obtained by an

administratively dissolved corporation, or in its words, “an

entity that did not exist.” After a hearing, and for the reasons

set forth below, eCopy’s motion is denied.

I. APPLICABLE LEGAL STANDARD

During the litigation of this dispositive motion, both

parties’ filings presented to the court matters outside the

pleadings. “If, on a motion under Rule 12(b)(6) or 12(c),

matters outside the pleadings are presented to and not excluded

by the court, the motion must be treated as one for summary

judgment under Rule 56.” Fed. R. Civ. P. 12(d); DeMayo v .

Nugent, 517 F.3d 1 1 , 19 (1st Cir. 2008). Rule 12(d) “is perhaps

too infrequently invoked and too often overlooked. In a proper

case, it can be an excellent device for conserving time, expense,

and scarce judicial resources by targeting early resolution of

threshold issues.” Rivera-Gomez v . de Castro, 900 F.2d 1 , 2 (1st

2 Cir. 1990) (decided under prior version of the rule). The court

will proceed under the directive of Rule 12(d) in this case.

Summary judgment is appropriate where the “pleadings, the

discovery and disclosure materials on file, and any affidavits

show that there is no genuine issue as to any material fact and

that the movant is entitled to judgment as a matter of law.”

Fed. R. Civ. P. 56(c). In making this determination, the “court

must scrutinize the record in the light most flattering to the

party opposing the motion, indulging all reasonable inferences in

that party’s favor.” Mulvihill v . Top-Flite Golf Co., 335 F.3d

1 5 , 19 (1st Cir. 2003).

II. BACKGROUND

The initial complaint and amended complaint in this action

created ambiguities as to the registration, ownership, and

ultimately the validity of the copyright in question. These

ambiguities triggered eCopy’s motion to dismiss because, as more

fully explained infra Part III, this court’s subject matter

jurisdiction depends on the registration of a valid copyright.

Noting that the plaintiff carries the burden of establishing

subject matter jurisdiction, see Aversa v . United States, 99 F.3d

1200, 1209 (1st Cir. 1996), the court sua sponte ordered the

plaintiff to file a Second Amended Complaint “clearly alleging

3 facts establishing the proper claimants with respect t o , and the

actual possessors o f , the . . . copyright during the entire

period relevant to this litigation.” Embassy Software Corp. v .

eCopy, Inc., N o . 06-cv-00391 at 4 (D.N.H. Oct. 3 0 , 2008). The

court further invited supplemental briefing, id., of which only

eCopy took advantage. The Second Amended Complaint is the

subject of this motion, and forms the basis of the facts as set

forth below.2

Jeffrey K. Tidd, a software programmer and former employee

of eCopy,3 established Embassy Software Corporation (“Old

Embassy”) in 2001. Old Embassy and eCopy contracted for Old

Embassy’s development of a portable document format software

program referred to by the parties as “G1.” On November 7 , 2003,

unbeknownst to both parties, Old Embassy was administratively

dissolved by the New Hampshire Secretary of State’s office for

2 As required in a summary judgment analysis, this statement of facts puts the background facts in the light most flattering to New Embassy, indulging all reasonable inferences in its favor. See Mulvihill, 335 F.3d at 1 9 . The court notes that these facts, as set forth in the pleadings, possess the clarity of a muddy river; the basic contours of the flow can be discerned, but not the existence of what lies beneath the surface. 3 In 1994, Tidd formed Tidal Software Corporation, which he sold to eCopy in 1995. Tidal Software performed work for eCopy prior to the acquisition, and Tidd went to work for eCopy as its Vice President of Engineering. Tidd left eCopy’s employ in 1995.

4 failure to comply with routine filing requirements under New

Hampshire corporation law. N.H. Rev. Stat. Ann. 293-A:14.21

(Supp. 2008) (amended 2004, 2006).

Almost three years later, in August, 2006, Old Embassy

registered the copyright to a new portable document format

software program called “G2.”4 The copyright application listed

Tidd as author and Old Embassy as claimant. Tidd and eCopy had

been wrangling over whether G2 was a derivative program developed

from a prior iteration of G 1 , or an entirely new successor

product. Two months later, Old Embassy put the dispute into

suit, alleging in its complaint that it held a registered

copyright in G 2 . In its answer to Old Embassy’s complaint, eCopy

pointed out that Old Embassy had been administratively dissolved

in November, 2003, and alleged that the copyright registration of

G2 is therefore invalid because Old Embassy “did not exist” at

the time it purported to register G2 as copyright claimant in

2006.

Old Embassy’s representatives attempted to reinstate its

active status under the statutory procedure in the New Hampshire

4 Actually, Old Embassy’s registered agent listed “Embassy Software, Inc.,” rather than the corporation’s correct name, “Embassy Software Corp.,” as the claimant with respect to G 2 , but eCopy concedes, for the purposes of this motion, that that was a clerical error and that Old Embassy was the intended copyright claimant.

5 Business Corporation Act, see N.H. Rev. Stat. Ann.

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