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___ ,fiLED EiffERED

___ .LODGED RECEIVED

J N'I ZOi4William John Joseph Roge,

Plaintiff,

v.

William M. Schmalfeldt,

Defendant.

BY

ED STATESDISTRICTCOURT

HE DISTRICTOF MARYLANDORTHERNDIVISION

Case No. ELR-14-CV-1683

PLAINTIFFHOGE'S MOTIONFORPRELIMINARYINJUNCTION

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 websit

Hogewash! and capturing digital image files of what he sees on his computer screen (calle

"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

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(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 DMCA Takedown 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 DMCA counterclaim.

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

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http://patriot-ombudsman.com/my-official-dmca-takedown-counterclaim/index.html/http://patriot-ombudsman.com/my-official-dmca-takedown-counterclaim/index.html/


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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, aprima 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

3Exhibit 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

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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 inAccusoft 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

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http://hogewash.com/2014/06/1http://hogewash.com/2014/06/1


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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

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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.

REQUESTFORA HEARING

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 o

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

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(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

[email protected]

Verification

I certify under penalty of perjury that the foregoing is true and correct to the best o

my know ledge 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

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mailto:[email protected]:[email protected]


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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 11June, 2014.

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Total visitors: 2074

IVisitors today: 254Visitors 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 notpirody. 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 thevery 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. "",.tWhV'1Iml :WhV IAm50 looking Forward L : :t-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 Iput up II new Twitteraccount and start talking shit. CauseylHoge willjJst 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 l iar, 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

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http://thinkingmanszombie.wordpress.com/andhttp://thinkingmanszombie.wordpress.com/and


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Exhibit B

Defendant's @WMSRadioNetwork Twitter account at https://twitter.com/

wmsradionetwork/status/476478061 093728256 viewed 11 June, 2014.

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Q Twitter, Inc.(US) https:lltwitter.com/wmsradlonetwork/status/4764; {J C !I" Startpage Q.

401 Reply t.'1 Rel weel Favorit e M ore

Flagm~dia

o +.!. Follow

Twitter I wmsradlonetwork' I'm only too happy to settle

A Rco:b' on 10Juno, 1014 1111&:06 sao

05(10 o Ra:oThs, as lr~ mts 1Dload 8 ouiot i/o, th;r .1W)f1!is~"r:\ isosrrissod 8"d tl

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Exhibit C

Patrick Collins, Inc. v. Does 1-22, 11-CV-01772-AW, ECF No. 18 (D.Md. 2011) at 3,4.

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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

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("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

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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. S41 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 a2005 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

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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. 10-1 520(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, 20II)(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

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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 (8th 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

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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

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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

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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

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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

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Exhibit D

Accusoft Corrporation v. Quest Diagnostics, et aZ.,Case No. 12-CV-40007-TSH, ECF

No. 53 (D.Ma. 2012).

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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~Us_COVERNMENT

INFClRM nO:-.l

CPO

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24/43

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

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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

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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 ImageGearLicensing 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

ISince 2001, MedPlus has paid $187,500 for additional license upgrades and $281,870 for support related

to these licenses. (ld. ~~13-14).

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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

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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

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OptiMaxx that Kessler had estimated to have occurred without a proper license. (Kessler. Decl.

Ex. F). In one e-mail, Peters attached apro 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 thepro 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

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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

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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

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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.

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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 itsprima 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. LikelihoodofSuccess

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 17U.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 17U.S.c. S

106. Both damages and injunctive relief are available as remedies for infringement of these rights.

17U.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

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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

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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 bythe 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.

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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).

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irreparable harm survives the decision ineBay.

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

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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

4These 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.

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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

5Of course, ifexisting 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).

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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.

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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

8Defendants 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.

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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.

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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

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