The opinion of the court was delivered by: Judge Rebecca R. Pallmeyer
MEMORANDUM OPINION AND ORDER
Plaintiff, Nielsen Media Research, Inc., has created a series of maps that divide the United States into geographically-distinct marketing regions, referred to as "designated marketing areas" or "DMAs." In this lawsuit, Plaintiff charges Defendant, Truck Ads, LLC, with violating Nielsen's copyright by reproducing Plaintiff's DMA maps on the Truck Ads website. Defendant Truck Ads has filed a counterclaim, seeking a declaratory judgment that the DMA Data and DMA Regions depicted on the DMA Maps are not copyrightable, and alleging that Plaintiff has engaged in copyright misuse. Plaintiff moves to dismiss the declaratory judgment counterclaim for lack of jurisdiction, and seeks summary judgment on the copyright misuse claim. For the reasons stated herein, both of Plaintiff's motions are granted.
Plaintiff brought this action alleging that Truck Ads "copies, reproduces, and by permitting their reproduction by website users, distributes copies of Nielsen's Copyrighted DMA Maps." (Second Am. Compl. ¶ 11.) Plaintiff alleges that it designed these maps utilizing "a set of proprietary criteria and testing devices, as well as the experience and judgment of its analysts, to partition regions of the United States into geographically-distinct marketing regions, or designated marketing areas (the 'DMA Regions'). . . ." (Id. ¶ 6.) According to Nielsen, its DMA Maps are original creations that "graphically depict" Nielsen's proprietary DMA Regions, and "are the product of a creative selection, arrangement and expression of variables and data sets." (Id.) The 210 DMA Regions are "marketing regions that Nielsen has determined constitute meaningful marketing areas." (Pl.'s Mem. in Supp. of Mot. to Dismiss  at 3.) Nielsen also "produces statistical and demographic data and analyses based on its proprietary testing and research methods for each DMA Region," known as DMA Data. (Compl. ¶ 6.)
Nielsen's complaint charges Truck Ads with reproducing Nielsen's DMA Maps on the Truck Ads web site, and using the maps to define geographic advertising regions that assist Truck Ads and its affiliates in providing mobile advertising services (specifically, advertising on the sides of trucks). (Id. ¶ 10.) In fact, so far as the court is aware, it is only on the Truck Ads web site that an internet user can find up-to-date nationwide DMA Maps broken down to the county level.*fn1 Plaintiff alleges that Defendant's use of the copyrighted DMA Maps violates Nielsen's rights under the Copyright Act, 17 U.S.C. § 101, et seq., and seeks relief including an injunction and damages. (Id. at 6.) Defendant denies that it has distributed any of Plaintiff's maps on its website, and contends that, in any event, the DMA Maps at issue are not copyrightable. (Answer ¶¶ 5, 6, 11.)
Defendant has also counterclaimed. Defendant seeks a declaratory judgment that Plaintiff's DMA Regions and DMA Data are not subject to U.S. copyright protection. (Second Am. Countercl.
¶¶ 36, 37, 38.) Defendant also alleges that Plaintiff has misused its copyright because when Plaintiff brought suit, it "knew or should have known" that the DMA Maps, DMA Data, and DMA Regions are not subject to copyright protection. (Id. ¶¶ 43, 44, 45, 48, 49.)
Truck Ads' alleged infringement of the Nielsen DMA Maps is unquestionably at issue here. Plaintiff has moved to dismiss the counterclaim allegations that the DMA Regions and DMA Data are not subject to copyright protection; Nielsen urges that it is not now claiming that Defendant violated any copyright in DMA Regions or DMA Data, and therefore there is no case or controversy that would support subject matter jurisdiction concerning those allegations. (Pl.'s Mem. in Supp. of Mot. to Dismiss at 10-11.) Plaintiff has also moved for summary judgment on Defendant's counterclaim of copyright misuse. (Pl.'s Mem. in Supp. of Summ. J.  at 1.) The court previously dismissed Defendant's counterclaim for copyright misuse because Defendant had not alleged any injury stemming from the alleged misuse aside from the cost of defending this lawsuit. (Hearing Tr.  at 3-4.) In its Second Amended Counterclaim, Defendant again counterclaimed for copyright misuse, this time alleging that its negotiations to sell, lease, or license a patent-pending technology fell through as a result of this litigation. (Countercl. ¶¶ 50-56.) Had the deal gone forward, Defendant projects it would have received revenues of $25 million or more over a twenty-year period. (Id. ¶ 52.)
I. Plaintiff's Motion to Dismiss for Lack of Jurisdiction
In Count I of its counterclaim, Defendant seeks a declaratory judgment that Plaintiff's DMA Regions and DMA Data are not subject to copyright protection. (Countercl. ¶¶ 36-39.) Plaintiff has moved to dismiss this claim. Plaintiff insists it is not asserting that Defendant has violated any copyright in the DMA Regions or DMA Data, and argues that this claim should be dismissed because "there is no case or controversy regarding Nielsen's DMA Regions and DMA Data." (Mot. to Dismiss at 1.)
Because Defendant seeks a declaratory judgment, the court must determine whether a genuine controversy exists. To support the court's involvement, "the controversy must be of sufficient 'immediacy and reality to warrant the issuance of a declaratory judgment,' such that a declaration would not simply amount to 'an opinion advising what the law would be upon a hypothetical state of facts.'" Geisha, LLC v. Tuccillo, 525 F.Supp.2d 1002, 1013 (N.D. Ill. 2007) (quoting MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007) (citations omitted)). In deciding a motion to dismiss for lack of jurisdiction, the court may look beyond the complaint. Thus, "if the complaint is formally sufficient but the contention is that there is in fact no subject matter jurisdiction, the movant may use affidavits and other material to support the motion. The burden of proof on a 12(b)(1) issue is on the party asserting jurisdiction." United Phosphorous, Ltd. v. Angus Chemical Co., 322 F.3d 942, 946 (7th Cir. 2003).
Plaintiff argues that the only infringement challenged here is Truck Ads' use of the DMA Maps--and therefore there is no case or controversy regarding whether the DMA Regions or DMA Data may be copyrighted. Plaintiff explains that it filed a Second Amended Complaint to make clear that its copyright infringement claim is aimed at Defendant's use of the Nielsen maps. This allegation is, according to Plaintiff, "consistent with Nielsen's understanding that Defendant does not use DMA Regions or DMA Data apart from the publication of Nielsen's copyrighted DMA Maps." (Pl.'s Br. at 7.)
Defendant contends there remains a dispute that supports a declaratory judgment action because Truck Ads "currently uses and displays demographic and ranking data associated with DMA Regions, and plans to continue to display such DMA Regions and DMA Data . . . ." (Response Br. at 8.) Defendant does not directly respond to Plaintiff's assertion that Defendant's use of the DMA Regions and DMA Data is limited to presenting that information in DMA Maps. Instead, Defendant simply notes its CEO's testimony that "[t]he demographic information, which we call DMA data, consists of population broken out by ethnicity, the education level, all of this information is obtained through exactly the same place [Nielsen] obtained it, from the Census Bureau." (Response Br., Ex. 2 at 3.) In another deposition, Truck Ads president explains that the demographic data comes from "[t]he Census Bureau." (Response Br., Ex. 4 at 2.)
To the extent that Defendant challenges any claim to the copyrightability of census data, the court agrees with Plaintiff that there is no justiciable controversy here. Plaintiff does not allege that Defendant is using census data that is somehow copyrighted by Plaintiff (or that is copyrightable at all). Such a claim would be frivolous; census data is pure fact, and it is a bedrock principle of copyright that facts cannot be copyrighted. "Census takers . . . do not 'create' the population figures that emerge from their efforts; in a sense, they copy these figures from the world around them. . . . Census data therefore do not trigger copyright because these data are not 'original' in the constitutional sense." Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 347 (1991).
Plaintiff's focus in this lawsuit is on the maps, which it contends are original compositions that warrant copyright protection. As recognized in Rockford Map Publishers, Inc. v. Directory Service Company of Colorado, Inc., 768 F.2d 145 (7th Cir. 1985), maps could receive such protection regardless of whether the underlying data are in the public domain or not. "Factual compilations . . . may possess the requisite originality. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws." Feist, 499 U.S. at 348.
Plaintiff alleges that, like the defendant in Rockford Map, Defendant Truck Ads has created its map not by reviewing and analyzing publicly-available data on its own and presenting that data in graphic form, but instead by simply copying Plaintiff's work. In fact, in his deposition testimony, Truck Ads CEO effectively acknowledges that this is exactly what he has done. "If I saw a map that I thought was more accurate on the internet, I would--and more of a consensus that it was the market for the particular designated market area, then I would use--I would make an adjustment, a change. . . . But, again, all I'm doing is I'm just changing the color of the background of the county. I'm not doing anything else. There's no insignia, no indication there of anything except a county line and some color." (Subst. Ex. 2  at 4.)
Defendant asks the court for a declaratory judgment on the copyrightability of DMA Data and DMA Regions because it essentially sees these issues as inseparable from the copyright infringement of the DMA Maps.*fn2 But, as discussed above, copyright law provides protection for maps ...