United States District Court, D. Maryland, Southern Division
J. HAZEL, UNITED STATES DISTRICT JUDGE
American Chemical Society (“ACS”) and Elsevier
Inc., Elsevier Ltd, and Elsevier B.V. (collectively,
“Elsevier”) allege that Defendant ResearchGate
GmbH engages in various forms of copyright infringement when
it disseminates peer-reviewed articles published and owned by
Plaintiffs' academic journals. Pending before the Court
is Defendant's Motion for Notice pursuant to 17 U.S.C.
§ 501(b) in which Defendant requests that the Court
order Plaintiff to serve certain authors with notice of this
suit. ECF No. 10. In support of that motion, Defendant claims
that when Plaintiffs' publications appear on
Defendant's website, it is often because a coauthor who
has not personally signed an agreement with Plaintiffs has
uploaded the material. In this context, Defendant argues that
Plaintiffs must serve these co-authors with § 501(b)
notice because the co-authors “have an interest”
in the copyrights asserted by Plaintiffs and the
coauthors' rights are “likely to be affected”
by the outcome. Plaintiffs filed an opposition, ECF No. 19,
arguing that Defendant has not met its burden to show that
any authors have a current legal interest in the copyrights
at issue because even where co-authors did not personally
sign an agreement with Plaintiffs, their duly authorized
agents signed on their behalf. A hearing was held on June 10,
2019. ECF No. 28. For the following reasons, Defendant's
Motion for Notice will be denied.
ACS is a professional and scientific society. ECF No. 1
¶ 2. It publishes over 50 peer-reviewed scientific
journals, primarily in the field of chemistry and related
disciplines. Id. Plaintiff Elsevier is a multimedia
publishing company. Id. Elsevier publishes hundreds
of thousands of articles annually in the over 2, 500
peer-reviewed journals it maintains. Id. Defendant
ResearchGate is an online professional network for
scientists. ECF No. 10-2 ¶ 2. Scientists may sign up for
an account with ResearchGate, create a profile, ask questions
of other scientists, and upload articles. Id.
Plaintiffs accept articles, the articles' authors
transfer copyright ownership to Plaintiffs through a signed
written agreement. ECF No. 1 ¶ 21. Publication
agreements generally assign article copyrights to the
publisher such that the completed, peer-reviewed article
usually cannot be posted publicly by anyone else. ECF No. 1
¶ 41. Plaintiff attaches to their Complaint a list of
over 3000 relevant articles for which, by way of signed
written agreement with the authors, they are the copyright
owners or owners of exclusive rights. Id.; ECF No.
1-1. Plaintiffs have registered all the publications at issue
with the United States Copyright Office. ECF No. 1 ¶ 21.
Plaintiffs allege that Defendant uses its website to
disseminate unauthorized copies of Plaintiffs'
peer-reviewed journal articles. ECF No. 1 ¶ 3.
to Defendant, however, for articles written by co-authors,
Plaintiffs often only have one of the articles' authors
(i.e. the “corresponding author”) sign the
publication agreement. ECF No. 10-1 at 8. In support of this
fact, which is not alleged in Plaintiffs' Complaint,
Defendant points to sample agreements posted on
Plaintiffs' websites. Id. A sample agreement
posted on Plaintiff Elsevier's website requires the
corresponding author to confirm that she is “one author
signing on behalf of all co-authors of the manuscript.”
ECF No. 10-5. The corresponding author is required to agree
that “I have informed the co-author(s) of the terms of
this Journal Publishing Agreement and that I am signing on
their behalf as their agent, and I am authorized to do
so.” Id. at 4. Similarly, a sample form
Plaintiff ACS uses for most of its journals states that
“[t]he Corresponding Author or designee below, with the
consent of all co-authors, hereby transfers to the ACS the
copyright ownership in the referenced Submitted Work
including all versions in any format now known or hereafter
developed.” ECF No. 10-7 at 2.
Defendant offers some evidence of Plaintiffs' standard
practices, it is not clear how often a corresponding author
signed a copyright agreement on behalf of a co-author in the
particular instances relevant to this suit. Defendant asserts
that 60 percent of the publications relevant to this action
“may have been uploaded to ResearchGate by an author
who was not the corresponding author.” ECF No. 10-1 at
16. Defendant obtained this number by comparing the author
who uploaded the articles listed in Plaintiffs' Complaint
with the author whose contact information was listed on
Plaintiffs' website and noting when there was no overlap.
ECF No. 10-2 ¶ 13. However, Defendant sometimes copies
articles from authors' personal websites, meaning a
co-author may not have uploaded their article to
Defendant's website. ECF No. 1 ¶ 31. It is unclear
from Defendant's “preliminary analysis” how
many of the articles at issue were actually uploaded by
co-authors versus taken from a co-author's website or
sourced by one of the other methods described in the
Complaint. See Id. Further, Plaintiff alleges that
Defendant misleads users into uploading articles by
misinforming them about how the articles will be used.
Id. ¶¶ 40-41. Additionally, it is not
clear from the record or Defendant's motion whether it
believes all of the co-authors that uploaded material to
Defendant's website-or some other number of
coauthors-believed that they did not actually transfer their
ownership interest to Plaintiffs.
“copyright” section of Defendant's website
states that ResearchGate “respect[s] the intellectual
property rights of others and ask[s] that [users] do the
same.” ECF No. 10-2 ¶ 5; ECF No. 10-3 at 2.
Defendant advises authors that, while ResearchGate allows
them to store or share their work (both publicly and
privately), “it's important that [they] check
in advance that [they] have the necessary rights to
do so.” ECF No. 10-3 at 2 (emphasis in original). Prior
to uploading an article to ResearchGate, authors must check a
box stating “I have reviewed and verified each file I
am uploading. I have the right to share each file publicly,
and agree to the Upload Conditions.” ECF No. 10-2
also has a notice and takedown procedure for responding to
notices of claimed copyright infringement submitted by
copyright owners, as required under § 512(c) of the
Digital Millennium Copyright Act (“DMCA”).
Id. ¶ 7; ECF No. 10-4. ResearchGate notifies
members whose uploads are subject to takedown notices so that
the members have an opportunity to submit a “counter
notice” claiming that the material they uploaded did
not infringe on a copyright and should not have been removed.
ECF No. 10-4 at 1-3.
has received a large number of takedown notices from
Plaintiff Elsevier. ECF No. 10-2 ¶ 8. Although Defendant
asserts that it has also “received a number of messages
from users objecting to the removal of (or disabling of
access to) their content from ResearchGate's website in
response to DMCA notices sent to ResarchGate by copyright
owners, ” these “messages” have apparently
not come in the form of “counter notices” from
users claiming that no infringement occurred. Id.
analogous context of a Rule 12(b)(7) motion regarding failure
to join an indispensable party, the burden is on the moving
party to show “the nature of the unprotected interests
of the absent parties.” 5A Federal Practice &
Procedure § 1359; see 7 Charles A. Wright,
Arthur R. Miller, & Mary K. Kane, Federal Practice &
Procedure § 1609 (3rd ed. 2001). To satisfy its burden,
a movant typically “present[s] affidavits of persons
having knowledge of” the absent parties' interests
and courts review this and other evidence outside the
pleadings. 5A Federal Practice & Procedure § 1359.
The Court borrows from this analogous standard here. Thus,
although not stated explicitly by the statute, the Court
presumes that Defendant, as the moving party, bears the
burden of providing evidence that shows § 501(b) notice
is warranted. See 17 U.S.C. § 501(b).
501(b) of the Copyright Act provides that:
The court may require [the plaintiff] to serve written notice
of the action with a copy of the complaint upon any person
shown, by the records of the Copyright Office or otherwise,
to have or claim an interest in the copyright, and shall
require that such notice be served upon any person whose
interest is likely to be affected by a decision in the case.
The court may require the joinder, and ...