Motion in Limine
Submitted by Michael Foundation 06\04\01
This is probably the last filing before Michael v. UF goes to trial. There was been a continual refinement of positions -- by both sides -- in this litigation. This motion in limine sets forth the central copyright issues as understood by Michael Foundation.
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF OKLAHOMA
MICHAEL FOUNDATION, INC., a Foreign Corporation, Plaintiff and Defendant-in-Counterclaim,
v. ) Case No. CIV-00-885-W
Urantia FOUNDATION, an Illinois Charitable Trust, Defendant and Counter-claimant,
URANTIA FOUNDATION, Counterclaimant and Third Party Plaintiff,
HARRY McMULLAN III, a citizen of Oklahoma, Third Party Defendant,
and MICHAEL FOUNDATION, INC., a Foreign corporation, Defendant-in-Counterclaim.
RESPONSE TO MOTION IN LIMINE TO EXCLUDE
TESTIMONY AND ARGUMENT THAT THE “SCOPE” OF THE COPYRIGHT IN THE Urantia BOOK DOES NOT EXTEND TO PAPERS 121-196, CONSECUTIVELY
Urantia Foundation (“UF”) has moved, in limine, to prohibit Michael Foundation, Inc. (“Michael”) and Harry McMullan III (“McMullan”) from arguing or presenting evidence that the “scope” of the copyright claimed by UF does not extend to Papers 121-196 of The Urantia Book. Urantia Foundation seeks to preclude argument by Michael Foundation and McMullan that any purported renewal copyright held by Urantia Foundation in The Urantia Book does not extend to the text of the Papers, as authored by the Patient. There are two fatal flaws in its argument. First, the argument is premised on the proposition that The Urantia Book qualifies as a composite work. For the reasons set forth in Part I below, that characterization is unsustainable. Second, the argument is also premised on the proposition that the Patient conveyed all his rights, in perpetuity, in and to The Urantia Book to the Contact Commission. For the reasons set forth in Part II below, that characterization is likewise in dispute, and therefore not the proper subject for a ruling by the court as a matter of law.
I. Because The Urantia Book Is Not A Composite Work As A Matter Of Law, Urantia Foundation's Motion In Limine Cannot Be Granted
Much of Urantia Foundation's flawed logic proceeds from its newly minted theory seeking to qualify The Urantia Book as a composite work, with Urantia Foundation as its would-be proprietor. Because Urantia Foundation has slowly come to realize that proving proprietorship of a composite work is the sole means by which it can hope to validate its renewal registration, this theory has understandably become the centerpiece of its recent arguments. Urantia Foundation's instant motion in limine is no exception: The entire argument hinges, at the outset, on Urantia Foundation's ability to prove that The Urantia Book qualifies as a composite work. Unfortunately for Urantia Foundation, neither the relevant law, nor the applicable facts, support any such conclusion.
The following definition governs what qualifies as a "composite work:"
Generally, a composite work is an original publication relating to a variety of subjects, to which a number of different authors have contributed distinguishable and separable selections… A work by a single author, consisting of a collection of his writings, is not a composite work.
Cadence Industries Corp. v. Ringer, 450 F. Supp. 59, 63 (S.D.N.Y. 1978) (quoting The Compendium of Copyright Practices § 11.8.3). On this proposition, UF is in accord. See UF Reply Brief in Support of Partial Summary Judgment, p. 5 ("'composite work' means 'multiple authors, separately copyrightable contributions.'"). UF is unable to adduce any colorable theory under which The Urantia Book qualifies as a composite work, under the very definition that it concedes to apply at bar.
First, Urantia Foundation needlessly expends energy refuting an anticipated argument by Michael Foundation and McMullan that the term "composite work" is synonymous with the term "compilation," with the precedents applicable to the latter controlling the former. UF Motion In Limine, p. 6. Michael Foundation and McMullan have not, and do not, seek to advance any such confusion. On the contrary, as Michael Foundation and McMullan carefully pointed out at summary judgment, "composite works" are synonymous only with one specific subset of the general "compilation" category: "collective works." MF Brief in Opposition to Partial Summary Judgment, p. 21 (citing 3 Nimmer on Copyright § 9.03[B]). In turn, a collective work is defined as:
A work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.
17 U.S.C. § 101 (2001). See 1 Nimmer on Copyright § 3.02. Urantia Foundation has failed to adduce any evidence tending to show that The Urantia Book meets the requirements of being a "collective" work.
Ultimately, Urantia Foundation's plea for recognition of The Urantia Book as a composite work rests on the preposterous assertion that the inclusion of a table of contents in the first publication of a literary work transmutes it into composite status. Under its interpretation, John Grisham, Amy Tan, Toni Morrison etc. cannot be recognized as the authors of unified literary works, unless each personally went through galley proofs to draw out every heading and rectify it with the pagination as printed, in order to assemble a table of contents; to the extent that an editor at their publishing house performed that function, then their resulting products are all "collective works." That interpretation stands the case law on its head. See MF Brief in Opposition to Partial Summary Judgment, pp. 12-13 (citing Childress v. Taylor, 945 F.2d 500, 505 n. 5 (2d Cir. 1991)).
The essence of Urantia Foundation's strained composite argument boils down to the following syllogism: the Patient authored all the Papers of The Urantia Book; William Sadler, Jr. constructed a table of contents based on these Papers; therefore Urantia Foundation’s publication of the work together with its table of contents renders The Urantia Book a composite work. UF Motion In Limine, p. 6 (stating that Urantia Foundation expects to meet the composite requirement by demonstrating that Sadler's "Contents of the Book" is a copyrightable part of The Urantia Book, and that there is at least one other separately authored part of the book); see also UF Reply Brief in Support of Partial Summary Judgment, p. 5 (obscuring the fact that Sadler's contribution consists of a mere table of contents by referring to this material as "the first sixty pages of the book" and arguing that Urantia Foundation compiled this table with the Patient's Papers). What Urantia Foundation fails to realize is that the addition of a table of contents to an integrated literary work, even prior to its first publication, does not transform that work from a unified whole into a collective work (or "composite work" to use the terminology of the 1909 Act).
Addressing this very point, the House Report on the Copyright Act of 1976 states that collective works do not result "where relatively few separate elements have been brought together… such as a  work published with illustrations or front matter." H. Rep. No. 94-1476 at 122 (1976) (emphasis added); see also 1 Nimmer on Copyright § 3.02 ("It was apparently the view of the Committees that, in such cases, the originality involved in selection and arrangement was so minimal as not to warrant a collective work copyright."). This result is to be expected, inasmuch as a mere table of contents can hardly supply the requisite independently copyrightable contribution contemplated by the statute. Legislative and judicial authorities repeatedly reject Urantia Foundation’s theory of independent copyrightability for tables of contents. For instance, Spilman v. Mosby-Yearbook, Inc, 115 F. Supp. 2d 148, 155 (D. Mass. 2000), denies the claim to derivative work protection based on the creation of a table of contents, holding that "the table of contents [did] not have sufficient creativity to be protected." See also id. at 156 (holding that "additions of things that can only be expressed in a limited number of ways, such as… inclusion of a table of contents, are similarly not protected."); 37 C.F.R. 202.1(a) (2001) (including among examples of works not subject to copyright, a "mere listing of ingredients or contents"). By adding an unprotectable table of contents to the Patient's unified literary text, Urantia Foundation can hardly hope to transform The Urantia Book into a composite work.
One of the very cases cited by Urantia Foundation highlights the importance of retaining sharp distinctions between true composite works and unified literary texts. Urantia Foundation cites Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 206 F.3d 1322, 1329 (9th Cir. 2000), for the following argument: "a copyright holder in a composite work may prevent infringement of an individual contribution provided that it owned common law copyright in the individual contribution prior to publication." More telling than the proposition for which Urantia Foundation cites the case is the Ninth Circuit’s key distinction between renewal of books and renewal of articles, both of which were separately at issue in that case.
Ananda arose in a factual posture strikingly similar to many of the features at bar. Plaintiff church ("SRF") there sued defendants, a breakaway church ("Ananda"), alleging defendants infringed plaintiff's copyrights by publishing writings, photographs, and sound recordings of the founder and former leader of plaintiff church ("Yogananda"). 206 F.3d at 1324. Defendants admitted having published the works, but argued that plaintiff's copyrights were not valid. Id. The following facts were adduced regarding SRF's claimed copyright in the relevant works: Yogananda, a monk, founded SRF and subsequently wrote religious books and articles. These works were created before 1978 and governed by the 1909 Act. SRF arranged for the publication of Yogananda's books; it also published the articles in its own magazine. SRF argued that Yogananda assigned all common law copyright in the various writings to SRF prior to SRF's publication. Yogananda died before the initial copyright expired and SRF renewed the copyrights in its own name. Because some of the works were allegedly copied during the renewal period, the validity of the renewal was at issue. Id. at 1324-1326.
Drawing the aforementioned distinction between unified literary works and composite works, the Ninth Circuit specifically dismissed SRF's claim to valid renewal copyright in Yogananda's books: "With regard to books copied during their renewal terms, the district court's grant of summary judgment for Ananda must be affirmed. The books are not periodical, composite or encyclopedic works…" Id. at 1329. That holding applies equally to the case at bar, mandating treatment of The Urantia Book outside the category of "composite work." Like the summary judgment for defendant that the Ninth Circuit sustained in that case, so summary judgment results for Michael Foundation and McMullan in the case at bar, based on the same circumstances.
The Ananda court’s other holding, for which Urantia Foundation cites it, applied only to discrete articles authored by Yogananda and published within the larger context of SRF's periodical magazine. Id. As to those magazine publications, the Ninth Circuit recognized that they could fall within the narrow exception applicable to "any periodical, cyclopedic, or other composite work." 17 U.S.C. § 304(a)(1)(B)(ii). Translated to current concerns, to the extent that the Patient had authored discrete articles that the Contact Commission had published in its in-house periodical, that holding would apply to the case at bar.
But given the actual facts at bar, that alternative holding is of no moment. Instead, The Urantia Book, being a book, unambiguously falls into the same category as Yogananda's books: as unified literary works. Just as SRF's attempted renewal of Yogananda's unified books failed, so too Urantia Foundation's attempted renewal of the Patient's unified book failed. It thus becomes clear that Urantia Foundation is improperly mischaracterizing The Urantia Book in a last-ditch attempt to avoid the inevitable conclusion: The Urantia Book now lies in the public domain.
II. Because Proprietorship of The Urantia Book Remains A Matter Of Triable Fact (To the Extent any Copyright in It Still Subsists), Urantia Foundation's Motion In Limine Cannot Be Granted
Notwithstanding the propositions set forth in Part I above, even assuming arguendo that Urantia Foundation could prove that The Urantia Book properly qualifies as a composite work, Urantia Foundation's in limine motion still cannot be granted. Beyond the issue of proving a composite structure, the validity of Urantia Foundation's renewal rests upon the further prerequisite that Urantia Foundation be the proprietor of the Patient's separate contribution. Urantia Foundation attempts to elide this argument by summarily noting that any argument by Michael Foundation and McMullan excluding the Patient's authored contribution from the scope of Urantia Foundation's asserted blanket copyright "is dead wrong, assuming that the proprietor of the copyright in the whole composite received the original grant of common law copyright from the author of the individual contribution in question." UF Motion In Limine, p. 4 (emphasis added). The italicized language masks an unwarranted assumption, given the current state of the evidence; in any event, it invokes an issue that cannot be decided as a matter of law. See e.g. Ananda, 206 F.3d at 1327-1329 (stating that "the existence of a transfer or assignment of common law copyright, however, is a factual question of the author's intent" and remanding for a determination of the factual issues regarding assignment, such as the author's intent to transfer common law copyright).
A number of additional defects plague UF’s in limine motion, given the current status of this case. UF cannot be allowed to preclude argument and testimony limiting the scope of any copyright UF may possess, given that UF has not disproven, as a matter of law, all theories of limited copyright ownership. For example, UF's recent summary judgment reply brief still argues that The Urantia Book may be considered a compilation. UF Reply Brief in Support of Partial Summary Judgment, p. 7-8. While Michael Foundation and McMullan oppose such a characterization of The Urantia Book, if this Court were to find that The Urantia Book did qualify as a compilation, then Michael Foundation and McMullan would be entitled to explain to the jury the limited copyright in selection and arrangement held by proprietors of factual compilations, and assert noninfringement on that basis. See 1 Nimmer on Copyright § 3.02 (explaining limited scope of copyright protection afforded to compilers of preexisting material).
Moreover, Urantia Foundation's conclusory assertion that the Patient transferred any common law copyright in his contribution to Urantia Foundation prior to publication is inadequate under the governing legal standards. UF Motion In Limine, pp. 4-5. Urantia Foundation essentially attempts to infer a binding transfer of common law copyright in the Patient's contribution strong enough to extend to a divestiture of renewal rights in the Patient from the simple fact that Urantia Foundation’s predecessor somehow gained possession of the Patient's alleged manuscripts. Id. Although the law regarding transfers of common law copyright is arguably relaxed to the extent of modifying the strict writing requirement for statutory copyright transfers, the doctrine has not been loosened to the extent suggested by Urantia Foundation. Rather, the current Copyright Act provides:
Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.
17 U.S.C. 201(c). Under this standard, any implied transfer of the Patient's common law copyright to Urantia Foundation would only grant Urantia Foundation the limited right of publishing the contribution as part of Urantia Foundation's collective work. To grant anything more – such as either a right of renewal or the right to prevent other parties from reproducing portions of the collective work – the transfer would have to have been express. The House Report makes clear that this provision codified the state of the existing law under the Copyright Act of 1909:
The bill does nothing to change the rights of the owner of copyright in a collective work under the present law [1909 Act]. These exclusive rights extend to the elements of compilation and editing that went into the collective work as a whole, as well as the contributions that were written for hire by employees of the owner of the collective work, and those copyrighted contributions that have been transferred in writing to the owner by their authors. However, one of the most significant aims of the bill is to clarify and improve the present confused and frequently unfair legal situation with respect to rights in contributions.
The second sentence of section 201(c), in conjunction with the provisions of section 404 dealing with copyright notice, will preserve the author's copyright in a contribution even if the contribution does not bear a separate notice in the author's name, and without requiring any unqualified transfer of rights to the owner of the collective work. This is coupled with a presumption that, unless there has been an express transfer of more, the owner of the collective work acquires "only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series."
The basic presumption of section 201(c) is fully consistent with present law [1909 Act] and practice, and represents a fair balancing of equities.
H. Rep., supra, at 122 (emphasis added). The final word on this provision has yet to be pronounced, as the proper interpretation of Section 201(c) currently awaits decision by the United States Supreme Court. See Tasini v. New York Times Co., Inc., 206 F.3d 161 (2d Cir. 2000), cert. granted, __ U.S. ___ (2001). Meanwhile, for Urantia Foundation to pretend that the law is so clear on the subject as to preclude even consideration of the issue is unsupportable under any theory.
In any event, the presumption created by Section 201(c) (and the predecessor feature of the 1909 Act) is such that Urantia Foundation did not acquire the interests in any of the Patient's separate contributions that it now claims. In particular, whatever rights it might have obtained for the first 28-year term, it did not acquire the renewal interest in those materials. This result accords with the general practice of requiring greater proof of an intent to transfer an author's renewal interest than that which suffices to prove an initial term transfer, given the statute's concern with revesting this interest in the original author under most circumstances. See e.g. 3 Nimmer on Copyright § 9.06[A], [C]. It further accords with the construction given to the renewal exception for works copyrighted by a corporate body otherwise than as assignee or licensee of the individual author. See e.g.3 Nimmer on Copyright § 9.03[C] (construing this seemingly extraneous exception as indicating, by negative implication, "that one who obtained copyright as a proprietor by virtue of an assignment of common law rights from the author is not by reason of such fact entitled to claim the renewal copyright.").
There is no basis in law or in fact to exclude testimony or argument that any copyright in The Urantia Book may not extend to the text of the Papers, as authored by the Patient. Since such testimony and argument are properly at issue in determining Urantia Foundation's infringement counterclaim, they should not be excluded.
Accordingly, Michael Foundation and McMullan request that Urantia Foundation's instant motion in limine be DENIED.
Ross A. Plourde, OBA #7193
McAfee & Taft A Professional Corporation
Tenth Floor, Two Leadership Square
211 North Robinson
Oklahoma City, Oklahoma 73102-7103
Telephone: (405) 235-9621
Facsimile: (405) 235-0439
Irell & Manella, LLP
1800 Avenue of the Stars, Suite 900
Los Angeles, CA 90067-4276
ATTORNEYS FOR MICHAEL FOUNDATION, INC.
Murray E. Abowitz
Abowitz, Rhodes & Dahnke, P.C.
Post Office Box 1937
Oklahoma City, OK 73101
ATTORNEYS FOR HARRY MCMULLAN III
CERTIFICATE OF MAILING
This is to certify that on this 4th day of June, 2001, a true and correct copy of the above and foregoing document was mailed, postage prepaid, to:
D. Kent Meyers
Phillip L. Free, Jr.
Crowe & Dunlevy
1800 Mid-America Tower
20 N. Broadway
Oklahoma City, OK 73102-8273
Steven G. Hill
Peter F. Schoenthaler
Hill & Kertscher, LLP
2859 Paces Ferry Road
Atlanta, GA 30339
 That case likewise rejects copyrightability for other minor editorial additions and revisions, of the type purportedly added by the Contact Commission. Spilman at 156 ("The copyright laws do not protect stylistic and grammatical editing that does not distinguish [the asserted contributions] from the underlying work."). Similar authority abounds. See, e.g., H. Rep., supra, at 122 (discounting "compilations of information or other copyrightable material and works published with editorial revisions or annotations"); Matthew Bender & Co. v. West Publishing Co., 158 F.3d 674, 683-89 (2d Cir. 1998) (holding that enhancements, such as shortening the form of titles, capitalizing letters, providing subsequent case history and other garden-variety additions are not copyrightable because they lack a creative spark); Grove Press, Inc., v. Collectors Publication, Inc., 264 F. Supp. 603, 605 (C.D. Cal. 1967) (deeming "trivial" thousands of editorial revisions of spelling and punctuation and the correction of typographical errors).