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Joint Commission on Accreditation of Healthcare Organizations v. Fortis Business Media LLC

United States District Court, N.D. Illinois, Eastern Division

September 6, 2017



          John J. Tharp, Jr. Judge

         For the reasons stated more fully below, defendant Fortis Business Media LLC's motion to dismiss [72] is denied. A status hearing is set for September 25, 2017 at 9:00 a.m.


         Fortis has moved to dismiss this copyright infringement action for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6). This Court therefore takes as true all well-pleaded facts alleged in the complaint and draws all reasonable inferences in favor of the Joint Commission, the non-moving party. See Mann v. Vogel, 707 F.3d 872, 877 (7th Cir. 2013).

         The plaintiff, The Joint Commission of Accreditation of Healthcare Organizations, is a not-for-profit corporation that provides accreditation and certification services for more than 20, 000 health care organizations and programs in the United States. Third Am. Compl. ¶ 3. The Joint Commission is the sole member of, and fully controls, non-party Joint Commission Resources, Inc. (“JCR”), which has “the exclusive right to carry out the Joint Commission's education, publication, and accreditation preparation functions” as they relate to improving patient safety and health care quality. Id. ¶¶ 4-5. The Joint Commission has also granted JCR the right to “copy, sell, distribute, and publish” materials that the Joint Commission owns. Id. ¶ 4. The Joint Commission licenses its copyrighted works to third parties, who pay fees in order to reproduce those works, prepare derivative works, distribute copies of the works, publicly perform the works, and publicly display the works. Id. ¶ 6.

         In 2011, the Joint Commission authored and published a document titled 2011 Comprehensive Accreditation Manual for Hospitals, Update 2 (“2011 CAMH Update 2”). Id. ¶ 9; 2011 CAMH Update 2, ECF No. 58-1. This 742-page publication is organized into two sections. Id. ¶ 10. The first is titled “Requirements for Accreditation” and addresses discrete issues in how a health care organization can comply with the Joint Commission's requirements; for example, one chapter in this section is titled “Infection Prevention and Control” and explains how health care organizations can develop and maintain an infection prevention and control program. Id. The second section is titled “Policies, Procedures, and Other Information” and explains the processes that the Joint Commission uses to asses an organization's compliance with its requirements as well as the different accreditation outcomes that will result based on how the organization performed. Id. ¶ 11. The Joint Commission alleges that the 2011 CAMH Update 2 “in its individual chapters and as a whole, expresses and reflects The Joint Commission's expertise, experience, and judgment on its accreditation services.” Id. ¶ 12. The U.S. Copyright Office issued Copyright Registration Number TX 7-528-407 for the 2009 CAMH Update 2 to the Joint Commission on November 8, 2011. Id. ¶ 14; 2011 CAMH Update 2 Registration, ECF No. 58-2. On June 15, 2015, the Joint Commission sought supplementary registration to correct some incorrect facts in the copyright registration; that request was still pending with the U.S. Copyright Office as of the filing of the third amended complaint. Id. ¶¶ 15-16. The Joint Commission has licensed all parts of the text and artwork in the 2011 CAMH Update 2 to third parties in exchange for a fee, but defendant Fortis has never had any license or authorization from the Joint Commission to reproduce, distribute, publicly perform or display, or prepare derivative works based on the 2009 CAMH Update 2. Id. ¶¶ 17-18.

         The Joint Commission alleges in its complaint that Fortis-and another defendant that Joint Commission has since voluntarily dismissed from the case, see ECF No. 71-has reproduced and distributed a series of publications that include “text that has been copied from, is substantially similar to, and/or is derivative of” the 2011 CAMH Update 2. Id. ¶¶ 19-21. The Joint Commission names, by example and without limitation, six allegedly infringing publications, copies of which it also attaches to its complaint: Chapter Leader's Guide to Provision of Care (2012 ed.), ECF No. 87-1; Chapter Leader's Guide to Infection Control (2012 ed.), ECF No. 58-4; Chapter Leader's Guide to Information Management (2012 ed.), ECF No. 58-5; Chapter Leader's Guide to Life Safety, Second Edition (2013 ed.), ECF No. 58-6; Chapter Leader's Guide to Human Resources (2012 ed.), ECF No. 58-7; and Verify and Comply: Credentialing and Medical Staff Standards Crosswalk, Sixth Edition (2014 ed.), ECF Nos. 58-8, 58-9. See Compl. ¶ 18. Fortis has distributed four of these works continuously since 2012, and has distributed the Life Safety publication since 2013 and Verify and Comply since 2014. Compl. ¶ 22. The Joint Commission alleges that Fortis' infringement has been willful, and that Fortis had access to the 2011 CAMH Update 2-and knew about the Joint Commission's copyright in it- before engaging in infringement. Id. ¶ 27.

         The Joint Commission and JCR first launched this suit in 2014 accusing Fortis and several other defendants of infringing its publication titled 2013 Comprehensive Accreditation Manual for Hospitals. Compl. ¶ 9, ECF No. 1. Those plaintiffs lodged a Second Amended Complaint in June 2015 that substituted the 2011 CAMH Update 2, as well as a 2009 publication, for the 2013 publication as works that Fortis and the others had allegedly infringed. This Court dismissed that complaint in April 2016, finding that the complaint did not sufficiently allege JCR's status as an exclusive licensee; that the plaintiffs had not applied to register their copyright in the 2009 work before filing the suit, as required; and that the complaint otherwise failed to state a claim. See Mem. Op., ECF No. 57. This Court granted the plaintiffs leave to amend, and the Joint Commission filed the current Third Amended Complaint alleging infringement of just the 2011 CAMH Update 2. See Third Am. Compl. After registering the copyright in its 2009 work, the Joint Commission filed a separate suit in 2016. See The Joint Comm'n on Accreditation of Healthcare Orgs. v. Fortis Business Media, No. 16 C 04724 (N.D. Ill.). Fortis has filed a motion to dismiss that suit as well, and this Court is issuing a contemporaneous order in that case that is consistent with the rationale and result with respect to Fortis's motion in this case.

         To state a claim for copyright infringement, a plaintiff must plausibly allege that: (1) the plaintiff owns a valid copyright; and (2) the defendant copied “constituent elements of the work that are original.” Feist Publications, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991). Fortis' overarching argument is that the Joint Commission has not sufficiently pled the second element of its infringement claim: that the defendant copied original elements of the plaintiff's work. A plaintiff can establish this second element through direct evidence, such as an admission of copying, or may do so indirectly “by showing that the defendant had the opportunity to copy the original (often called ‘access') and that the two works are ‘substantially similar, ' thus permitting an inference that the defendant actually did copy the original.” Peters v. West, 692 F.3d 629, 633 (7th Cir. 2012).

         I. Derivative Work

         Before addressing substantial similarity, however, the Court must address a threshold issue raised for the first time in Fortis's Reply brief. Fortis maintains that the Joint Commission's complaint relies on a copyright covering only a derivative work. The Copyright Act defines a “derivative work” as “a work based upon one or more preexisting works, ” and includes within this definition a work “consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship.” 17 U.S.C. § 101; see also Sissom v. Snow, 626 Fed. App'x 163, 166 (7th Cir. 2015); Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983). The Copyright Act “specifically grants the author of a derivative work copyright protection in the incremental original expression he contributes as long as the derivative work does not infringe the underlying work.” Schrock v. Learning Curve Intern., Inc., 586 F.3d 513, 518 (7th Cir. 2009) (citing 17 U.S.C. § 103(a), (b); Pickett v. Prince, 207 F.3d 402, 405 (7th Cir. 2000); Lee v. A.R.T. Co., 125 F.3d 580, 582 (7th Cir. 1997)). But the copyright in that derivative work “extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work.” § 103(b); see also Schrock, 586 F.3d at 518. Fortis argues that the copyright registration therefore only protects new material that the Joint Commission added as “updates” in the 2009 CAMH Update 2, and does not protect preexisting material that the 2009 CAMH Update 2 carried forward from prior versions of the manual. Reply at 2. Fortis asserts that the Joint Commission therefore needed to show a substantial similarity between Fortis's works and the new material in the 2009 CAMH Update 2 that is covered by the derivative copyright-rather than such a similarity between Fortis's works and any material that appears in the 2009 CAMH Update 2-and that it failed to do so. Id. Because this issue is potentially dispositive, this Court directed the Joint Commission to file a sur-reply addressing only the derivative works argument, and allowed Fortis to respond to that sur-reply.

         The Joint Commission does not appear to dispute that the letter of the copyright registrations it asserts in its complaint in this case and in the related case concerning the 2011 CAMH publication extends only to derivative works. See Sur-reply at 1. Instead, the Joint Commission points to a doctrine some courts have followed in cases where the entity who owns the copyright in the derivative work also owns the copyright in the underlying, pre-existing work. In situations where the copyright in that pre-existing work is not registered, [1] these courts have allowed the copyright owner to use that derivative copyright registration to bring an infringement action covering both the new and the pre-existing parts of the derivative work. See 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 7.16[B][5][c] (Matthew Bender ed., 2015) (explaining rule and collecting cases); see also, e.g., Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 284 (4th Cir. 2003), abrogated on other grounds (in case where underlying works were not formally registered, adopting view that the registration of a derivative or compilation work “is sufficient to allow an infringement claim based on the copying of material, whether newly added or contained in the underlying work”); Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 747 (2d Cir. 1998) (where the plaintiff did not offer proof of registration of the pre-existing work, finding that because the plaintiff “is the owner of the copyright of both the derivative and pre-existing work, the registration certificate relating to the derivative work in this circumstance will suffice to permit it to maintain an action for infringement based on defendants' infringement of the pre-existing work”).

         The Joint Commission argues in this case and the related case that this Court should apply the above rule to find that the plaintiff “need not limit its comparison of what Fortis copied to only the material added by the two Updates, ” but that instead “Fortis' copying can be evaluated based on a comparison of its infringing publications to the Updates in their entireties, which include the underlying CAMHs.” Sur-reply at 2. Fortis notes in its brief that the Seventh Circuit does not seem to have addressed the applicability of this doctrine, see Resp. to Sur-reply at 1 n.1. and objects that courts have only applied it when the copyright in the underlying, original work has not been registered. Resp. to Sur-reply at 1-2.

         As an initial matter, it bears noting that in advancing this objection Fortis has not clearly identified which copyright registration, for which pre-existing work, makes the rule explained above inapplicable. Fortis points to a registration-number TX0007467482- covering a work titled “2011 Comprehensive Accreditation Manual for Hospitals, ” though this Court notes that the copyright claimant listed for that registration is “Joint Commission Resources, ” not the Joint Commission.[2] Fortis also identifies registration number TX0007459061 as covering “2011 CAMH, Update ...

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