UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF NEW HAMPSHIRE

Embassy Software Corporation

v. Civil No. 06-cv-00391-JL

eCopy, Inc.

PROCEDURAL ORDER ON

PENDING DISPOSITIVE MOTION

In a recently decided copyright infringement case, the First

Circuit Court of Appeals stated:

[W]hen a motion to dismiss for lack of subject

matter jurisdiction under Fed.R.Civ.P. 12(b)(1)

involves factual questions, the court engages in a twopart inquiry.

First, the court must determine whether the

relevant facts, which would determine the court’s

jurisdiction, also implicate elements of the

plaintiff’s cause of action. See Garcia v. Copenhaver,

Bell & Assocs., 104 F.3d 1256, 1261 (11th Cir. 1997)

(“On a factual attack of subject matter jurisdiction, a

court’s power to make findings of fact and to weigh the

evidence depends on whether the factual attack on

jurisdiction also implicates the merits of the

plaintiff’s cause of action.”) “[W]here ... ‘the

jurisdictional issue and substantive claims are so

intertwined the resolution of the jurisdictional

questions is dependent on factual issues going to the

merits, the district court should employ the standard

applicable to a motion for summary judgment.’” Autery

v. United States, 424 F.3d 944, 956 (9th Cir. 2005)

(quoting Rosales v. United States, 824 F.2d 799, 803

(9th Cir. 1987)). . . .

* * * * * *

Second, if the facts relevant to the

jurisdictional inquiry are not intertwined with the

merits of the plaintiff’s claim, “the trial court may

proceed as it never could under 12(b)(6) or [Federal

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Rule of Civil Procedure 56]. Because at issue in a

factual 12(b)(1) motion is the trial court’s

jurisdiction-its very power to hear the case-there is

substantial authority that the trial court is free to

weigh the evidence and satisfy itself as to the

existence of its power to hear the case.” Lawrence v.

Dunbar, 919 F.2d 1525, 1529 (11th Cir. 1990); see also

Scarfo 175 F.3d at 961 (holding that whether the

defendants in an employment discrimination case

constituted an employer under Title VII was not an

element of the cause of action, and thus the district

court should weigh the evidence and find the facts

necessary to resolve the 12(b)(1) motion).

In cases like this one, then, where the defendant

makes a 12(b)(1) motion to dismiss, the parties should

submit evidence, much as they would for a summary

judgment motion, and the court should determine whether

the dispute over the origins and validity of the

deposit copy implicates the merits of the plaintiff’s

claim.

Torres-Negrón v. J & N Records, LLC, 504 F.3d 151, 162-63 (1st

Cir. 2007) (emphasis added) (footnote omitted). Although this is

a Rule 12(c) (as opposed to Rule 12(b)) motion, this is just such

a case, as the parties have implicitly recognized by attaching

exhibits to their motion papers. The “jurisdictional issue and

substantive claims are so intertwined the resolution of the

jurisdictional question is dependant on factual issues going to

the merits . . . .” Id. at 163.

Thus, the court will treat the defendant’s motion for

judgment on the pleadings as, and apply the standard applicable

to, a motion for summary judgment.

While the court views the thrust of the defendant’s legal

argument--that the copyright registration at issue is invalid

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because Old Embassy “did not exist” due to its administrative

dissolution--as somewhat dubious, the plaintiff has been

something of a moving target. For example, plaintiff’s counsel

amended the original complaint to substitute a new plaintiff, New

Embassy, for the original plaintiff, Old Embassy. But the

amended complaint and the Opposition to Defendant’s Motion for

Judgment on the Pleadings do little to clarify who or what owns

the copyright to G2. The amended complaint states that “Tidd

assigned all right, title, and interest in the intellectual

property in G2 to a newly-formed corporation, [New Embassy],” and

that New Embassy holds the registered copyright to G2. The

plaintiff’s Opposition to Defendant’s Motion for Judgment on the

Pleadings, however, makes reference to a “2007 rescission of the

2005 assignments by Jeffrey and James to Old Embassy,” which the

court assumes was meant to “set up” the subsequent assignment to

New Embassy. Nothing in the amended complaint, however, makes

any reference to the “2007 rescission of the 2005 assignments,”

or even alleges that that rescission took place. The exhibits

attached to the opposition also fail to establish that

rescission.

Simply put, even if the court rejects the legal theory

underlying the defendant’s motion on the pleadings, it would not

follow that this court has subject matter jurisdiction, because

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it is not clear that the plaintiff, New Embassy, possesses the

copyright to G2, regardless of its validity.

In a copyright infringement case, like all cases, “[i]t is

the plaintiff’s burden to prove the existence of subject matter

jurisdiction.” Morgan, Inc. v. White Rock Distilleries, Inc.,

230 F.Supp.2d 104, 105 (D.Me. 2002) (citing Aversa v. United

States, 99 F.3d 1200, 1209 (1st Cir. 1996)). Thus, the plaintiff

is ordered to file, no later than November 6, 2008, a Second

Amended Complaint clearly alleging facts establishing the proper

claimants with respect to, and the actual possessors of, the G2

copyright during the entire period relevant to this litigation. 

On or before November 17, 2008, the parties may file memoranda,

supplementing (and, if necessary, modifying) their positions in

light of the plaintiff’s Second Amended Complaint, addressing the

issue underlying the defendant’s motion for judgment on the

pleadings: whether this court has subject matter jurisdiction in

this case. The memoranda may not exceed 10 pages in length, but

may include any affidavits or other exhibits the parties deem

helpful to their arguments.

The hearing currently scheduled for November 12, 2008, on

the motion for judgment on the pleadings shall be removed from

the court calendar by the deputy clerk, and will be rescheduled

at a later date. This order does not preclude future summary

judgment motions as contemplated by the Discovery Plan.

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SO ORDERED.

 

Joseph N. Laplante

United States District Judge

Dated: October 30, 2008

cc: Lawrence D.W. Graves, Esq.

Thomas J. Donovan, Esq.

Jeremy T. Walker, Esq.

Jonathan W. Lent, Esq.

Mark S. Puzella, Esq.

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