Joint Comm'n On Accreditation of Healthcare Organizations v. Greeley Co.

THE JOINT COMMISSION ON ACCREDITATION OF HEALTHCARE ORGANIZATIONSand JOINT COMMISSION RESOURCES, INC., Plaintiffs, v. THE GREELEY COMPANY, INC. and FORTIS BUSINESS MEDIA LLC d/b/aBLR - BUSINESS & LEGAL RESOURCES, Defendants.

No. 14 C 10225

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION

April 13, 2016

Judge John J. Tharp, Jr.

MEMORANDUM OPINION AND ORDER

The plaintiffs, the Joint Commission on Accreditation of Healthcare Organizations ("the Joint Commission") and Joint Commission Resources, Inc. ("JCR"), bring suit against the defendants, the Greeley Company, Inc. ("Greeley") and Fortis Business Media LLC ("Fortis"), alleging copyright infringement under the Copyright Act of 1976, 17 U.S.C. §§ 106, 501. The defendants have moved to dismiss. See Mts. Dismiss, ECF Nos. 44, 45. For the following reasons, the motions to dismiss are granted.

BACKGROUND¹

The Joint Commission is a not-for-profit corporation that provides accreditation and certification services for more than 20,000 health care organizations and programs in the United States. Sec. Am. Compl. ("SAC") ¶ 3, ECF No. 42. JCR is also a not-for-profit corporation in thehealth care accreditation industry; the Joint Commission is the sole member of JCR and wholly controls JCR. SAC ¶¶ 4-5. JCR has the "excusive [sic] right to carry out the Joint Commission's education, publication, and accreditation preparation functions, as they pertain to improving patient safety and quality of care in the health care environment" and "has the right, from The Joint Commission, to (among other things) copy, sell, distribute, and publish materials owned by The Joint Commission." SAC ¶ 4. The Joint Commission licenses its copyrighted works to third parties who pay licensing fees to exercise some or all of the rights it owns, including reproduction, distribution, public performance and display of the works, and preparation of derivative works. SAC ¶ 6.

In 2009, the Joint Commission authored a publication entitled "2009 Comprehensive Accreditation Manual for Hospitals, Update 2" ("2009 CAMH"). SAC ¶ 9. On June 3, 2015, the Joint Commission filed an application to register the copyright in the 2009 CAMH with the U.S. Copyright Office. SAC ¶ 10, Ex. B. As far as the Court is aware, this copyright application currently remains pending. In 2011, the Joint Commission authored a publication entitled "2011 Comprehensive Accreditation Manual for Hospitals" ("2011 CAMH"). SAC ¶ 11. On November 8, 2011, the U.S. Copyright Office issued Copyright Registration No. TX 7-528-407 to the Joint Commission for the 2011 CAMH. SAC ¶ 12, Ex. D. On June 15, 2015, the Joint Commission filed a supplementary registration form with the U.S. Copyright Office for Copyright Registration No. TX 7-528-407; the supplementary registration seeks to change the author and copyright claimant from "Joint Commission" and "Joint Commission Resources," respectively,to "Joint Commission on Accreditation of Healthcare Organizations" for both. SAC ¶ 13, Ex. E. As far as the Court is aware, the supplemental registration is also still pending.²

The Joint Commission has licensed the 2009 and 2011 CAMHs to third parties who pay licensing fees for the right to reproduce, distribute, publicly perform and/or display the works, and prepare derivative works. SAC ¶ 14. Neither Greeley nor Fortis have ever had any license, authorization, permission, or consent from the plaintiffs to reproduce, distribute, publicly perform and/or display the works, or prepare derivative works. SAC ¶ 15. The plaintiffs allege that the defendants have published text that has been "copied from, is substantially similar to, and/or is derivative of" the 2009 and 2011 CAMHs. SAC ¶ 17. The plaintiffs allege that the defendants' infringing publications include "[f]or example and without limitation, . . . Chapter Leader's Guide to Provision of Care (2012 ed.); Chapter Leader's Guide to Infection Control (2012 ed.); Chapter Leader's Guide to Information Management (2012 ed.); Chapter Leader's Guide to Life Safety (2013 ed.); Chapter Leader's Guide to Human Resources (2012 ed.); and Verify and Comply: Credentialing and Medical Staff Standards Crosswalk, Sixth Edition." SAC ¶ 17.

The SAC includes two charts of examples "without limitation" of the comparative pages in the 2009 and 2011 CAMHs and the allegedly infringing pages in the defendants' publications.See SAC ¶¶ 18-19. For example, the plaintiffs allege that page 83 of the defendants' Infection Control Guide infringes on page NPSG-17 of the 2011 CAMH and that page 124 of the Human Resources Guide infringes on page HR-6 of the 2011 CAMH.³ See SAC ¶ 19.

The plaintiffs filed suit on December 19, 2014 against HCPro, Inc.⁴ and Fortis, alleging infringement of their publication, "2013 Comprehensive Accreditation Manual for Hospitals." Compl. ¶ 9, ECF No. 1. The plaintiffs filed a First Amended Complaint in May 2015, naming Greeley as a defendant instead of HCPro, Inc. See First Am. Compl., ECF No. 23. In June 2015, the plaintiffs filed the Second Amended Complaint against Greeley and Fortis, this time substituting the 2009 and 2011 CAMHs for the 2013 CAMH as the works that the defendants have allegedly infringed. Fortis filed a partial motion to dismiss, seeking dismissal of the claims based on the 2009 CAMH, and Greeley filed a motion to dismiss the entire SAC for failure to state a claim.

DISCUSSION

A motion to dismiss pursuant to Rule 12(b)(6) tests the sufficiency of the complaint, not the merits of the case. See Gibson v. City of Chicago, 910 F.2d 1510, 1520 (7th Cir. 1990). To survive a motion to dismiss under Rule 12(b)(6), "a complaint must 'state a claim to relief that is plausible on its face.'" Adams v. City of Indianapolis, 742 F.3d 720, 728 (7th Cir. 2014) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). "'A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.'" Adams, 742 F.3d at 728 (quoting Ashcroft v.Iqbal, 556 U.S. 662, 678 (2009)). Although notice pleading under Rule 8 is a more lenient standard than the code pleading that preceded it, "it does not unlock the doors of discovery for a plaintiff armed with nothing more than conclusions." Iqbal, 556 U.S. at 678-79. A court must accept all of the plaintiff's factual allegations as true when reviewing the complaint, but conclusory allegations merely restating the elements of a cause of action do not receive this presumption: "a court considering a motion to dismiss can choose to begin by identifying pleadings that, because they are no more than conclusions, are not entitled to the assumption of truth." Id. at 679. "A complaint must allege facts to support a cause of action's basic elements; the plaintiff is required to do at least that much." Adams, 742 F.3d at 728.

To state a claim for copyright infringement, a plaintiff must plausibly allege that (1) the plaintiff owns a valid copyright; and (2) the defendant copied "constituent elements of the work that are original." Feist Publications, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991). However, "no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title." 17 U.S.C. § 411(a). The Seventh Circuit has held that compliance with the registration requirement in § 411(a) "is not a condition of copyright protection but is a prerequisite to suing for infringement." Brooks-Ngwenya v. Indianapolis Pub. Sch., 564 F.3d 804, 806 (7th Cir. 2009); see also Reed Elsevier v. Muchnick, 559 U.S. 154, 166-169 (section 411(a)'s registration requirement "does not restrict a federal court's subject-matter jurisdiction," but rather is a "precondition to filing suit," an element of a copyright infringement claim).

The parties make much of the open question in this Circuit whether merely applying for copyright registration satisfies § 411(a)'s registration requirement (the "application approach") or whether the Copyright Office must have acted on the registration prior to the filing of the suit(the "registration approach"). See Greeley Mem. in Supp. 6-7, ECF No. 46; Fortis Mt. Dismiss 3-8; Resp. to Fortis 1-6, ECF No. 50. Compare Panoramic Stock Images, Ltd. v. John Wiley & Sons, Inc., 963 F. Supp. 2d 842, 850 (N.D. Ill. 2013) (adopting the application approach), with TriTeq Lock & Sec. LLC v. Innovative Secured Sols., LLC, No. 10 CV 1304, 2012 WL 394229, at *4 (N.D. Ill. Feb. 1, 2012) (endorsing the registration approach).

The Court need not weigh in on this debate, however: the plaintiffs filed suit in December 2014 but did not file an application to register the copyright in the 2009 CAMH until June 3, 2015, nearly six months after this lawsuit was instituted. See SAC ¶ 10, Ex. B. "A rule in the form 'no action shall be instituted until . . .' means that the condition must be fulfilled before the litigation begins. Satisfaction of the condition while the suit is pending does not avoid the need to start anew." Brooks-Ngwenya v. Thompson, 202 F. App'x 125, 127 (7th Cir. 2006); see also Brooks-Ngwenya v. Indianapolis Public Schools, 564 F.3d 804, 806 (7th Cir. 2009); Automation By Design, Inc. v. Raybestos Prods. Co., 463 F.3d 749, 752 n.1 (7th Cir. 2006); cf. McNeil v. United States, 508 U.S. 106, 110-11 (1993) (Federal Tort Claims Act, which provides that no action may be instituted until an administrative claim has been made and resolved, requires dismissal of a suit filed before the administrative claim's resolution, even if that step occurs while the suit is pending); Hallstrom v. Tillamook County, 493 U.S. 20, 25-26 (1989) (statutory 60-day waiting period after giving notice to the EPA before filing suit requires outright dismissal of premature action rather than keeping it inactive on...