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American Chemical Society v. ResearchGate GmbH

United States District Court, D. Maryland, Southern Division

June 11, 2019

AMERICAN CHEMICAL SOCIETY, et al., Plaintiffs,
v.
RESEARCHGATE GMBH, Defendant.

          MEMORANDUM OPINION

          GEORGE J. HAZEL, UNITED STATES DISTRICT JUDGE

         Plaintiffs 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.

         I. BACKGROUND[1]

         Plaintiff 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.

         When 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.

         According 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.

         Even as 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.

         The “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 ¶ 6.

         ResearchGate 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.

         Defendant 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. ¶ 9.

         II. DISCUSSION

         In the 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).

         Section 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 ...

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