UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Intellitech Corporation, Plaintiff

v. Case No. 16-cv-9-SM Opinion No.

The Institute of Electrical and Electronics Engineers, Defendant

O R D E R

This is an action for copyright infringement. Plaintiff,

Intellitech Corporation, alleges that defendant, The Institute

of Electrical and Electronics Engineers (“IEEE”), infringed its

registered work, entitled “Clause for a Pipeline v. 20.” By

prior order, the court dismissed its claims against the

individually named defendants. Defendant, IEEE, has also moved

to dismiss the suit, pursuant to Fed. R. Civ. P. 12(b)(6), for

failure to state a claim upon which relief can be granted.

Defendant’s motion to dismiss is necessarily denied, as

explained below.

Standard of Review

When ruling on a motion to dismiss under Fed. R. Civ. P.

12(b)(6), the court must “accept as true all well-pleaded facts

set out in the complaint and indulge all reasonable inferences

1 in favor of the pleader.” SEC v. Tambone,

(1st Cir. 2010). Although the complaint need only contain “a

short and plain statement of the claim showing that the pleader

is entitled to relief,” Fed. R. Civ. P. 8(a)(2), it must allege

each of the essential elements of a viable cause of action and

“contain sufficient factual matter, accepted as true, to state a

claim to relief that is plausible on its face.” Ashcroft v.

Iqbal,

(2009) (citation and internal

punctuation omitted).

“Under Rule 12(b)(6), the district court may properly

consider only facts and documents that are part of or

incorporated into the complaint; if matters outside the

pleadings are considered, the motion must be decided under the

more stringent standards applicable to a Rule 56 motion for

summary judgment.” Trans-Spec Truck Serv., Inc. v. Caterpillar

Inc.,

(1st Cir. 2008) (citing Garita Hotel

Ltd. Partnership v. Ponce Fed. Bank, F.S.B.,

(1st Cir. 1992)). “When ... a complaint's factual allegations

are expressly linked to — and admittedly dependent upon — a

document (the authenticity of which is not challenged), that

document effectively merges into the pleadings and the trial

court can review it in deciding a motion to dismiss under Rule

12(b)(6).”

(quoting Beddall v. State St. Bank & Trust Co.,

2

, 16–17 (1st Cir. 1998) (additional citations

omitted).

To survive a motion to dismiss, “a plaintiff's obligation

to provide the ‘grounds' of his ‘entitle[ment] to relief’

requires more than labels and conclusions, and a formulaic

recitation of the elements of a cause of action will not do.”

Bell Atl. Corp. v. Twombly,

(2007) (citation

omitted). Instead, the facts alleged in the complaint must, if

credited as true, be sufficient to “nudge[ ] [plaintiff's]

claims across the line from conceivable to plausible.”

. If, however, the “factual allegations in the complaint are

too meager, vague, or conclusory to remove the possibility of

relief from the realm of mere conjecture, the complaint is open

to dismissal.” Tambone,

.

Background

The relevant facts, as set forth in plaintiff’s amended

complaint and construed in the light most favorable to

Intellitech, are as follows. Intellitech is a New Hampshire

corporation that possesses a portfolio of intellectual property

assets, including the copyright relevant to this suit. That

copyright, for the work entitled, “Clause for a Pipeline v. 20,”

was registered with the United States Copyright Office on

3 October 24, 2014 (the “Work”). IEEE is a not-for-profit

corporation, which promulgates standards regarding certain

technical issues related to electrical and electronic endeavors.

IEEE’s standards are developed collaboratively by working groups

comprised of expert volunteers in the field.

The complaint alleges that IEEE caused derivatives of the

work to be published without Intellitech’s permission or

license. Intellitech alleges that, at some point, a derivative

of the work was published and disseminated to members of an IEEE

working group, specifically the “P1838 working group.” In

October 2014, in response to Intellitech’s assertion of

copyright ownership in the Work, IEEE reported that all copies

of the Work would be removed from its servers. However, in

December 2015, members of the P1838 working group again

“published more than one derivative of the work while . . .

indicating that no private entity owned a copyright in the

material.” Compl. ¶ 26. Based on the above, Intellitech

asserts a copyright infringement claim against IEEE.

Discussion

In support of its motion to dismiss, IEEE makes two

arguments. First, it says that, because plaintiff has only

alleged a “limited publication” of the Work to IEEE working

group members, Intellitech has not stated a viable claim for 4 copyright infringement. Second, IEEE argues that, even if

Intellitech has sufficiently stated a claim for infringement,

its claims for statutory damages and attorneys’ fees should be

dismissed because Intellitech has failed to allege sufficient

facts to support either claim.

(1) Consideration of Materials Outside the Pleadings

Before reaching the merits of defendant’s arguments, the

court must first address defendant’s reliance on documents

outside the pleadings. IEEE cites to declarations and exhibits

filed by Intellitech, as well as to declarations and exhibits

filed on its behalf. For purposes of this motion, the exhibits

fall within two broad categories. The first category includes

those documents related to the IEEE website, which, IEEE argues,

is a private website that is password protected and accessible

only by IEEE working group members. The second category

includes documents consisting of IEEE working group meeting

minutes and emails, which relate to the timing of the purported

infringement.

IEEE argues that the court may consider these materials

because they are referred to in plaintiff’s amended complaint,

and because neither party disputes their authenticity. It

points out that documents relating to the IEEE website were

5 submitted as an exhibit by Intellitech, as were some of the

P1838 working group emails upon which IEEE relies. And, it

argues, the working group meeting minutes, although filed by it,

are properly considered because the activities of the P1838

working group are directly referenced in Intellitech’s

complaint. Intellitech seemingly does not dispute the

authenticity of any of the documents, but does object generally

to the court’s consideration of documents filed by IEEE.

As noted earlier, “[o]rdinarily . . . any consideration of

documents not attached to the complaint, or not expressly

incorporated therein, is forbidden, unless the proceeding is

properly converted into one for summary judgment under Rule 56.

See Fed. R. Civ. P. 12(b)(6). However, courts have allowed

“exceptions for documents the authenticity of which [is] not

disputed by the parties; for official public records; for

documents central to plaintiffs' claim; or for documents

sufficiently referred to in the complaint.” Watterson v. Page,

(1st Cir. 1993) (citations omitted). Here, as

IEEE states, documents relating to the IEEE website were filed

by Intellitech, and it seemingly does not dispute their

authenticity. Accordingly, the court will consider the printout

of the specific IEEE website (docket no. 14-15). For identical

6 reasons, the court will also consider the September 11, 2014,

email from Kathryn Bennett (document no. 14-12).

The same cannot be said, however, with respect to the

authenticity of documents filed by or on behalf of IEEE,

specifically, the P1838 working group meeting minutes and the

declaration of IEEE employee Kathryn Bennett. IEEE does not

argue that those documents are central to Intellitech’s claim.

And, the complaint’s passing references to the “activities” of

the P1838 working group and the P1838 working group meeting

minutes do not rise to the level of “sufficiently referred to in

the complaint.” While the complaint does discuss the

“activities” of the P1838 working group, at no point does the

complaint reference the working group meeting minutes. Passing

references to the general activities of the P1838 working group

are not enough to qualify specific meeting minutes as

“sufficiently referred to in the complaint.” Watterson,

; cf., Freeman v. Town of Hudson,

(1st

Cir. 2013).

(2) “Limited Publication”

Moving to the substance of IEEE’s arguments, the court

first considers its argument concerning “limited publication” of

the purported derivative work. IEEE argues that Intellitech’s

7 sole allegation of infringement is that IEEE “violated

plaintiff’s copyright by distributing or publishing the Work on

the P1838 Private Site.” Def.’s Mem. in Support of Mot. to

Dismiss at 5. So, IEEE says, because the publication at issue

was limited to members of the P1838 working group, Intellitech

fails to sufficiently allege “publication,” and therefore has

not stated a viable infringement claim as a matter of law.

Plaintiff disagrees, countering that its copyright infringement

claim is not based exclusively on defendant’s publication of the

Work, but on defendant’s unauthorized creation of derivative

works as well.

“[T]he Copyright Act grants the copyright holder

‘exclusive’ rights to use and to authorize the use of his work

in five qualified ways,” Sony Corp. of America v. Universal City

Studios, Inc.,

, 432–33 (1984), including the right

to prepare derivative works based upon the copyrighted work, and

“to distribute copies . . . of the copyrighted work to the

public by sale or other transfer of ownership, or by rental,

lease or lending.”

. “Anyone who violates any

of the exclusive rights of the copyright owner,’ that is, anyone

who trespasses into his exclusive domain by using or authorizing

the use of the copyrighted work in one of the five ways set

forth in [

], ‘is an infringer of the copyright.’”

8 Sony Corp.,

(quoting

(a)). “To

establish copyright infringement, the plaintiff must prove two

elements: ‘(1) ownership of a valid copyright, and (2) copying

of constituent elements of the work that are original.’” Latin

Am. Music Co. v. Media Power Grp., Inc.,

(1st

Cir. 2013) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co.,

(1991)).

Read generously at this stage, the complaint states a

viable claim for infringement based not only on IEEE’s purported

publication of the Work, but based on its purported creation of

a derivative work as well. The complaint alleges the

Intellitech’s ownership of a valid copyright (see, e.g., compl.

at ¶ 19), and that IEEE wrongfully used its Work in at least one

of the ways described in

. More specifically,

Intellitech’s complaint alleges that its copyright was infringed

when IEEE published derivatives of the Work to the P1838 working

group. See, e.g., Compl. at ¶ 22. Implicit in that allegation

is that IEEE created a derivative of the Work at issue, and then

distributed that derivative to members of the P1838 working

group. While plaintiff’s complaint is pretty thin, it

9 sufficiently states a copyright infringement claim for Rule

12(b)(6) purposes.1

(3) Statutory Damages and Attorneys’ Fees

In the alternative, IEEE suggests that Intellitech’s claims

for statutory damages and attorneys’ fees, pursuant to

and 505, should be dismissed because both claims are

precluded by

. That section provides: “no award

of statutory damages or of attorney’s fees, as provided by

sections 504 and 505, shall be made for: (1) any infringement of

a copyright in an unpublished work commenced before the

effective date of its registration; or (2) any infringement of

copyright commenced after first publication of the work and

before the effective date of its registration, unless such

registration is made within three months after the first

publication of the work.”

.

1 IEEE is likely correct that infringement of the “distribution right” requires actual dissemination to the public. See Atl. Recording Corp. v. Howell,

(D. Ariz. 2008) (collecting authority); see also London-Sire Records, Inc. v. Doe 1,

(D. Mass. 2008). However, because defendant’s argument relies extensively on facts beyond plaintiff’s complaint, it is not ripe at this stage of the litigation. For example, IEEE argues that the purported derivative work was distributed to members of the P1838 working group “for the limited purpose of developing a new IEEE standard.” Def.’s Mot. to Dismiss at p. 6. That factual allegation is well outside the scope of the complaint. It is an argument more appropriately made in the summary judgment context. 10 Relying upon the P1838 working group meeting minutes, IEEE

construes Intellitech’s complaint as alleging that it first

infringed the copyright at some point during the summer of 2014,

well before the Work’s registration date (October 24, 2014).

Intellitech’s allegations that IEEE infringed the copyright in

December of 2015 do not alter the analysis, it argues, because

the alleged December 2015 infringement constitutes a mere

continuation of IEEE’s alleged earlier pre-registration

infringement. IEEE also argues that statutory damages and

attorneys’ fees are precluded because plaintiff failed to

register the Work within three months after its first

publication, which, it says, occurred in April or May of 2014.

IEEE’s points may well have dispositive merit. But, given

the allegations in the complaint, the initial date of purported

infringement, or the date plaintiff first published the Work,

cannot be definitively determined. IEEE’s arguments rely

entirely on documents and facts outside Intellitech’s complaint,

and so are not properly before the court. These, too, are

arguments more appropriately made in the summary judgment

context.

11 Conclusion

For the reasons set forth herein, the IEEE’s motion to

dismiss (document no. 21) is necessarily denied.

SO ORDERED.

____________________________ Steven J. McAuliffe United States District Judge

February 27, 2017

cc: Todd A. Sullivan, Esq. Jeffrey C. Spear, Esq.

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