JOHN R. TUNHEIM, District Judge.
This case arises out of Plaintiff Olga Issaenko's brief tenure as a research scientist
Defendants move to dismiss the First Amended Complaint in its entirety. Issaenko later moved for leave to file a second amended complaint. Finally, Issaenko brought a motion seeking preliminary injunctive relief based on her copyright infringement claim. Because the Court concludes that it lacks subject matter jurisdiction over a number of Issaenko's claims and that, with the exception of Issaenko's claims for promissory estoppel and tortious interference, the First Amended Complaint fails to state claims upon which relief can be granted, the Court will grant Defendants' motion to dismiss, except to the extent it seeks dismissal of the promissory estoppel and tortious interference claims brought against Bazzaro in her individual capacity. The Court also concludes that amendment of the complaint would be futile with respect to all claims except the tortious interference claim to the extent it is asserted against Defendants Frances Lawrenz and Tucker LeBien in their individual capacities, and therefore will grant the motion to amend only with respect to that claim. Finally, the Court will deny Issaenko's motion for a preliminary injunction, as she has failed to demonstrate either likelihood of success on the merits or irreparable harm.
Issaenko holds a Ph.D. in biology and has worked in the area of academic cancer research for a number of years. (Am. Compl. ¶ 30, Jan. 16, 2014, Docket No. 7.)
(Id. ¶ 37, Ex. 5 at 11.)
Issaenko alleges that for the first three months after beginning her job, she "managed the lab (ordering chemical supplies and equipment)." (Id. ¶ 42.) Between January and March 2010 Issaenko alleges that Bazzaro would instruct Issaenko as to what work to perform but Issaenko "expanded experiments to correct incorrect assumptions, modify the protocol deficiencies, or enhance the experiments." (Id. ¶ 43.) Issaenko alleges that Bazzaro "provided little to no input to the development of research projects," "refused to provide certain, necessary software and support for Plaintiff to perform . . . experiments" and "was dismissive of the work/experimentation Plaintiff was conducting." (Id. ¶ 44.)
Between January and April 2010 Issaenko worked on two projects "under the general supervision of Defendant Bazzaro." (Id. ¶ 47.) The first project related to the survival of ovarian and cervical cancer cells after certain types of treatments. (Id. ¶ 48.) For this project, Issaenko obtained raw data from Dr. Polunovsky, her former supervisor in a different department at the University, and provided the data to Bazzaro. (Id.) Issaenko then, "without Defendant Bazzaro's knowledge or input or instruction," used this data to compile tables and graphs at home. (Id. ¶ 49.) With respect to this project, Issaenko suggested to Bazzaro in March 2010 that they perform experiments using a certain type of cell sorting, which Bazzaro declined to do after deciding that such experiments "were not needed." (Id. ¶ 50.) Issaenko proceeded to perform these experiments and the resulting analysis with the help of Dr. Polunovsky. (Id. ¶¶ 51-55.) Issaenko alleges that she performed the analysis "at her own initiative after hours on her free and unpaid time at home, on which she used her own software [or Dr. Polunovsky's computer] to generate tables and figures." (Id. ¶¶ 55-56.)
With respect to the second "independent" project discussed in the First Amended Complaint, Issaenko alleges that she "provided raw data to Defendant Bazzaro and also worked at home on compilations of tables and graphs, and draft[s] of a joint manuscript," which Issaenko and Bazzaro planned to submit to the Journal of Medicinal Chemistry ("JMC") in May 2010. (Id. ¶ 57.) Issaenko conducted numerous experiments related to the second project, and alleges that when she asked Bazzaro for help, Bazzaro either did not provide it or asked for more information about Issaenko's questions. (Id. ¶¶ 58, 63.) Issaenko alleges that Bazzaro was unaware of the nuances of many of these experiments and Issaenko "worked on statistical analyses for this project at her own home us[ing] her own software because none was provided [by] Defendants" and that "Defendants did not pay for this after hours work." (Id. ¶ 60; see also id. ¶¶ 59-62.) Issaenko alleges that, also without Bazzaro's instruction, she "conceived, designed and performed additional experiments." (Id. ¶ 62.) Issaenko alleges that based on her independent experiments she "created compilations of tables, graphs and images," and asked Bazzaro to include them in the joint manuscript to be submitted to the JMC. (Id. ¶ 63.) Issaenko continued to conduct experiments that Bazzaro determined were unnecessary, and submitted to Bazzaro the figures she made at home as a result of these experiments. (Id. ¶¶ 64-65.) Bazzaro denied Issaenko's request to have this material included in the joint manuscript. (Id. ¶ 66.)
In May and June 2010, Bazzaro went on vacation. (Id. ¶ 79.) During this time period, Issaenko alleges that she performed experiments that had been requested by Bazzaro and provided her with the raw data and compilations that resulted from those experiments. (Id. ¶¶ 77-79.) During Bazzaro's vacation Issaenko also "conceived ideas and designed several additional experiments" but was unable to work on them in Bazzaro's lab as she did not have the financial resources to purchase the necessary supplies and certain equipment was not functioning. (Id. ¶ 78.) Instead, Issaenko decided to conduct these experiments in Dr. Polunovsky's laboratory. (Id. ¶ 79.) Issaenko compiled the results of these experiments into tables, graphs, and images using her own software. (Id. ¶ 80.) Later in June, when Bazzaro returned from vacation, Issaenko presented Bazzaro with the independent work she had done in Dr. Polunovsky's lab. (Id. ¶¶ 82, 84.) Bazzaro requested that Issaenko provide her with copies of her work and raw data so that Bazzaro could draft a joint manuscript on which Issaenko would be listed as the first author. (Id. ¶ 87.) Issaenko provided the requested information. (Id. ¶ 88.) Issaenko alleges that afterward, when Issaenko returned to work from vacation on July 1, 2010,
Issaenko alleges that in August 2010 Bazzaro used Issaenko's research findings and figures in the joint manuscript submitted to the JMC and although she told Issaenko that Issaenko had been listed as an author, Bazzaro in fact did not list Issaenko as an author. (Id. ¶¶ 67-68; see also id., Ex. 15 at 41.) Bazzaro also signed a publishing license agreement with the JMC, which Issaenko alleges transferred to the journal Issaenko's copyright in the works she had created. (Id. ¶ 67, Ex. 16 at 43.) But Issaenko also alleges that pursuant to this agreement, Issaenko "retained non-exclusive copyrights and all proprietary rights on the research presented with that article." (Id. ¶ 68.)
Because of her concerns over authorship of the joint manuscript Issaenko contacted several University professors regarding Bazzaro's behavior, and ultimately on August 26, 2010, Issaenko submitted a letter to Defendant Linda Carson, head of the Department of Obstetrics, Gynecology and Women's Health at the University indicating her belief that Bazzaro had violated the University of Minnesota Policy—Code of Conduct. (Id. ¶ 69, Ex. 18 at 59-60.) Issaenko's letter stated that "[r]esults of my work were included in one manuscript submitted for publication in Journal of Medicinal Chemistry (JMC), one manuscript in preparation (or already submitted for publication in JMC or elsewhere) and 2 or 3 additional manuscript[s] were planned in the future." (Id., Ex. 18 at 59.) In the letter Issaenko requested that her co-authorship be reflected as to the compilations she had created that were included in the manuscript and requested that "this matter be investigated by your Office, and my authorship in current manuscript and corresponding patent, and all future publications. . . be properly assigned." (Id., Ex. 18 at 60.)
Defendants Carson, Douglas Yee (the director of the Masonic Cancer Center) Frances Lawrenz (associate vice president for research), and Tucker LeBien (associate vice president of the Academic Health Center Office of Research) responded to Issaenko's complaint by letter dated September 10, 2010. (Id., Ex. 19 at 63-64.) In the letter Defendants indicated that if the joint manuscript was accepted by the JMC for publication, Issaenko would "be included as a co-author" provided that Issaenko reviewed the manuscript and agreed to its publication, and subject to a final decision by the Editor of the JMC. (Id. ¶ 71, Ex. 19 at 63.) With respect to authorship on future publications the letter explained:
Issaenko alleges that at some point during this time period Bazzaro "made damaging statements to the University Administration that Plaintiff `improperly shared' with her co-authors . . . Plaintiff's independently created works." (Id. ¶¶ 72-73.).
In early 2011 Issaenko sought and was granted copyrights in three different compilations related to the projects described above (collectively, "the Copyrighted Works"). (Id. ¶ 90, Exs. 1-3.) In a letter dated January 28, 2011 Issaenko notified the University that she had sought this copyright protection, and also responded to the September 10, 2010 letter, noting that she still had concerns about her authorship rights particularly over work that she had performed on her own "personal and un-paid time and not at the direction or knowledge of Dr. Bazzaro or any other University representative." (Id., Ex. 24 at 89; see also id. ¶ 91.) Issaenko also responded that she had never "inappropriately shared data" and had only presented or discussed data with "authors of the corresponding manuscript(s) and/or patent(s) on which I was working at the time." (Id., Ex. 24 at 90.) Issaenko also noted that she "consider[ed] any communication that states or implies that I acted inappropriately or unethically regarding my work to be defamatory, and I expressly reserve all my rights and claims in that regard as well" (id.) and requested that the University place this "rebuttal letter" into her personnel file (id., Ex. 24 at 91).
Issaenko alleges that in January and February 2011 she performed additional experiments in the laboratory of Dr. Zukowska's—another University professor—who gave her permission to perform the experiments and publish the results. (Id. ¶ 93.) Issaenko alleges that after she notified the University on January 28, 2011, that she intended to seek copyright protection for her work she was terminated. (Id.)
After her termination Dr. Polunovsky continued to perform work on Issaenko's data samples, and Issaenko used those results as well as her previous research to generate figures for an article which she drafted in April 2011. (Id. ¶¶ 94-95.) Issaenko alleges that "[w]hen Defendants learned of Plaintiff's intent to publish her authors' works, they engaged in intimidation and threats and allegations of unlawful and/or illegal activity." (Id. ¶ 96.)
Despite these apparent threats, Issaenko alleges that she sought and received approval from the other contributors to her research and submitted her article to the Journal of Molecular Cancer Therapeutics in the fall of 2011. (Id. ¶ 97.) Issaenko alleges that the journal refused to publish her article because "Defendant Bazzaro made false allegations to the journal that Plaintiff was under a `misconduct investigation' by the University of Minnesota." (Id. ¶ 97 (citing id., Ex. 25 at 93).)
In response, Cell Cycle published a retraction of Issaenko's manuscript on May 1, 2013, noting that the University had reviewed the manuscript and determined that the tables and figures in the paper were generated by Issaenko "while working as a staff member in the laboratory of Dr[.] Martina Bazzaro from September 2009 to July 2010 and were used by Dr[.] Issaenko without permission from Dr[.] Bazzaro or the University." (Id., Ex. 25 at 94.) Issaenko alleges that the article was only temporarily retracted, and that "Defendants then threated [sic] the journal and demanded that it publish defamatory statements about Plaintiff and her work." (Id. ¶ 98.) Specifically, Cell Cycle published an expression of concern regarding the May 1, 2012 manuscript, noting that in October 2012 Issaenko "claimed copyright infringement of her work by a competing researcher Dr[.] Martina Bazzaro of the University of Minnesota," and that "[i]n return, the University of Minnesota performed a review of Dr[.] Bazzaro's laboratory materials from 2010 and claim ownership of data from Table 1 and Parts of Figures 1-6. These claims have been denied, and the dispute is ongoing." (Id., Ex. 26 at 98 (emphases omitted).)
The University objected to the language used in this expression of concern, and suggested that the expression of concern should read:
(Id., Ex. 26 at 98 (emphases omitted); see also id. ¶ 98.) The journal noted that "[t]his conflict appears to extend past the bounds of this journal, and the publisher wishes to remain impartial. We leave it to the two parties involved to settle this matter in an appropriate venue." (Id., Ex. 26 at 98.)
Issaenko initiated this action on December 23, 2013. (Compl., Dec. 23, 2013, Docket No. 1.) On January 16, 2014, Issaenko filed the First Amended Complaint
The First Amended Complaint alleges that all Defendants are liable for copyright infringement, violation of Minnesota's Uniform Deceptive Trade Practice Act, unfair competition, unjust enrichment, defamation, tortious interference with a prospective business advantage, promissory estoppel, violations of the Privileges and Immunities Clause, and violations of the Due Process Clause. Issaenko seeks injunctive relief as well as damages. (Id. at 56-57.) Specifically, Issaenko alleges that Defendants' actions resulted in her inability "to secure employment in academic science or the scientific industry and . . . to further develop her research or procure funding to support such research with grant applications." (Id. ¶ 99.) Issaenko further contends that Defendants' actions "irreparably harmed Plaintiff's professional reputation and standing as well as her career development" and "destroyed all of the Plaintiffs['] educational investments, hard work and effort to advance the knowledge in her field of cancer research science." (Id. ¶¶ 100-101.)
Defendants bring a motion to dismiss Issaenko's First Amended Complaint in its entirety under Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6). (Mot. to Dismiss, Feb. 14, 2014, Docket No. 10.) Several months later, Issaenko filed a motion to amend seeking permission to file a Proposed Second Amended Complaint ("Second Amended Complaint") which dismisses the Individual Defendants that are regents of the University, seeks to sue the remaining Individual Defendants in their individual as well as official capacities, and adds some factual allegations regarding the identities of the various Individual Defendants and additional details with respect to the defamation claim. (Mot. to Amend, June 5, 2014, Docket No. 38; see also id., Ex. 2 ("Second Am. Compl.").) In response to the motion to amend, Defendants argue that the Court should deny the motion because amendment would be futile. (See generally Defs.' Mem. in Opp'n to Mot. to Amend, June 26, 2014, Docket No. 47.) As explained more fully below, deciding a motion to dismiss and determining whether amendment would be futile employ the same standard of review. Because these motions employ an identical standard of review and raise identical substantive issues, with respect to each claim or relevant group of claims, this Order will first discuss whether dismissal of the claims raised in the First Amended Complaint is appropriate. With that law and analysis in mind, the Order will then address whether anything in the Second Amended Complaint alters the conclusion
Before considering the merits of the motions to dismiss and for leave to amend, the Court will address an initial procedural matter. Prior to oral argument on the pending motions Issaenko filed a motion to strike Defendants' memorandum in response to her motion seeking leave to file the Second Amended Complaint. (Mot. to Strike, July 1, 2014, Docket No. 58.) Issaenko argues that the memorandum must be struck because it was untimely. Specifically, Issaenko argues that because a motion to amend is a nondispositive matter, the memorandum in opposition should have been filed seven days after service of the motion, which occurred on June 5, 2014, and was therefore due on June 12, 2014, but was not filed until June 26, 2014. (Pl.'s Mem. in Supp. of Mot. to Strike at 2, July 1, 2014, Docket No. 60); see also D. Minn. LR 7.1(b)(2) (providing that "[w]ithin 7 days after filing of a nondispositive motion and its supporting documents . . . the responding party must file and serve" a memorandum of law and any accompanying affidavits or exhibits). Issaenko explains that "Defendants have neither offered excusable neglect nor requested an extension of the filing and service date" and that "[t]herefore Defendants' submissions were untimely and should be stricken." (Pl.'s Mem. in Supp. of Mot. to Strike at 2.) Issaenko also asks for a general award of "her expenses" and "fees," although she does not specify an amount of fees, or to what those fees are related. (Id. at 3.)
Defendants concede that their memorandum was untimely filed, but explain that the mistake was made in good faith and their confusion about the deadline for that memorandum was caused, to some extent, by Issaenko's filing of a motion for preliminary injunction shortly before the hearing and the Court's entry of a briefing schedule with respect to that motion. (Defs.' Mem. in Opp'n to Mot. to Strike at 2, July 2, 2014, Docket No. 62.) Defendants argue, however, that their brief should not be stricken because Issaenko has suffered no prejudice. Defendants also argue that striking the memorandum will only unnecessarily delay the case because if the Court declines to consider their arguments that the motion to amend is futile and allows Issaenko to file her Second Amended Complaint, it will require that another motion to dismiss that complaint be filed, which will raise the same arguments found in Defendants' current memorandum in opposition to the motion to amend.
The Court agrees that, although Defendants' memorandum was untimely, that untimeliness is harmless under these circumstances. The lack of prejudice to Issaenko is demonstrated in particular by the fact that Defendants' arguments against the filing of the Second Amended Complaint are almost identical to their arguments made in connection with the motion to dismiss the First Amended Complaint. In other words, the late-filed memorandum primarily explains how the proposed amendments do not cure the deficiencies identified in the original motion to dismiss. Therefore there does not appear to be any unfair surprise, nor has Issaenko argued that the late-filing caused her to be unable to prepare for the hearing on the motion or otherwise prejudiced her case. Here, the sanction requested—exclusion of the entire memorandum—is out of proportion to any possible inconvenience suffered by Issaenko. Because Issaenko has failed to demonstrate any prejudice caused by the Court's consideration of Defendants' memorandum, the Court will deny the motion to strike, and will also
Rule 15(a) of the Federal Rules of Civil Procedure provides that "[t]he court should freely give leave [to amend a pleading] when justice so requires." Fed. R.Civ.P. 15(a)(2). But "[a] district court may appropriately deny leave to amend where there are compelling reasons such as undue delay, bad faith, or dilatory motive, repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the non-moving party, or futility of the amendment." Moses.com Sec., Inc. v. Comprehensive Software Sys., Inc., 406 F.3d 1052, 1065 (8th Cir.2005) (internal quotation marks omitted). Where, as here, futility is raised as a basis for opposing proposed amendments to a complaint, the Court must determine whether the proposed claims state a claim for relief at this stage of the case. See Briscoe v. Cnty. of St. Louis, Mo., 690 F.3d 1004, 1015 (8th Cir.2012) ("When the court denies leave to amend on the basis of futility, it means the district court has reached the legal conclusion that the amended complaint could not withstand a motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure. . . ." (alteration and internal quotation marks omitted)); Zutz v. Nelson, 601 F.3d 842, 850 (8th Cir.2010). Thus, the question in determining whether to permit amendment is "whether the proposed amended complaint states a cause of action under the Twombly pleading standard." Zutz, 601 F.3d at 850-51.
In reviewing a motion to dismiss brought under Federal Rule of Civil Procedure 12(b)(6), the Court considers all facts alleged in the complaint as true to determine if the complaint states "`a claim to relief that is plausible on its face.'" Magee v. Trs. of Hamline Univ., Minn., 747 F.3d 532, 535 (8th Cir.2014) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009)). To survive a motion to dismiss, a complaint must provide more than "`labels and conclusions' or `a formulaic recitation of the elements of a cause of action. . . .'" Iqbal, 556 U.S. at 678, 129 S.Ct. 1937 (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id. "Where a complaint pleads facts that are merely consistent with a defendant's liability, it stops short of the line between possibility and plausibility," and therefore must be dismissed. Id. (internal quotation marks omitted). Finally, Rule 12(b)(6) "authorizes a court to dismiss a claim on the basis of a dispositive issue of law." Neitzke v. Williams, 490 U.S. 319, 326, 109 S.Ct. 1827, 104 L.Ed.2d 338 (1989).
Defendants have also moved to dismiss for lack of subject matter jurisdiction on sovereign immunity grounds pursuant to Federal Rule of Civil Procedure 12(b)(1). See Hagen v. Sisseton-Wahpeton Cmty. Coll., 205 F.3d 1040, 1043 (8th Cir.2000) (explaining that "sovereign immunity is a jurisdictional question" and properly addressed as a Rule 12(b)(1) motion to dismiss (alteration and internal quotation marks omitted)). A motion to dismiss for lack of subject matter jurisdiction pursuant to Rule 12(b)(1) may challenge the plaintiff's complaint either on its face or on the factual truthfulness of its averments. See Osborn v. United States, 918 F.2d 724, 729 n.6 (8th Cir.1990). Defendants' jurisdictional argument based on sovereign immunity is a facial challenge because it does not call upon the Court to "engage[] in a factual review" by "inquir[ing] into and
With respect to her copyright infringement claim, in the First Amended Complaint Issaenko alleges generally that she "has not authorized Defendants to copy, reproduce, solicit for grants, duplicate, disseminate, distribute, sell, offer for sale, use, or display images that are the same, substantially similar, or confusingly similar to any of Plaintiff's works of authorship, including her Copyrighted Images and Works," but that Defendant has in fact so used the Copyrighted Works. (Am. Compl. ¶¶ 102-105.) In Count I Issaenko alleges that Defendants infringed her copyrights in the Copyrighted Works "by using, making grant applications, soliciting for grants, seeking patents, distributing, publicly displaying, offering for sale, and/or selling images that were copied, caused to be copied from, or constitute derivative works of Dr. Olga Issaenko's Copyrighted Images and Works, and which are virtually identical and/or substantially similar to those Copyrighted Images." (Id. ¶ 121.) Issaenko lists specific uses made of her Copyrighted Works—including Bazzaro's submission of a patent application, various presentations of Bazzaro's, and various of the University's grant applications. (Id. ¶ 106.) The only Defendant specifically named in any of these allegations is Bazzaro. (See id. ¶¶ 102-111.) Issaenko further alleges that "Defendants possessed the right and ability to supervise the infringing activity and possessed an obvious and direct financial interest in Dr. Olga Issaenko's exploited works of authorship and/or her Copyrighted Images and Works" (id. ¶ 122) and that
(id. ¶ 124). Issaenko seeks statutory and actual damages, profits made by Defendants, and injunctive relief "that the infringing copies of the Copyrighted Images be seized, impounded and destroyed." (Id. ¶ 132; see id. ¶¶ 125-128.)
Defendants first argue that the copyright infringement claim must be dismissed against the University and all of the Individual Defendants and Bazzaro to the extent they are sued in their official capacities
The Eleventh Amendment bars suits against state governments brought in
Issaenko does not dispute that Defendants have not clearly and unequivocally waived their Eleventh Amendment immunity. Instead, the parties dispute whether Congress abrogated the states' Eleventh Amendment immunity with respect to violations of the Copyright Act. To determine whether Congress has abrogated immunity, the Court employs "a two-prong analysis." Alsbrook v. City of Maumelle, 184 F.3d 999, 1005 (8th Cir.1999) (citing Seminole Tribe, 517 U.S. at 55, 116 S.Ct. 1114). First, the Court must "determine whether Congress has unequivocally expressed its intent to abrogate the immunity." Id. Second, the Court must ascertain whether, when Congress effectuated that abrogation, it acted pursuant to a valid exercise of its power under the enforcement provision found in Section 5 of the Fourteenth Amendment. Bd. of Trs. of Univ. of Ala. v. Garrett, 531 U.S. 356, 364, 121 S.Ct. 955, 148 L.Ed.2d 866 (2001) ("[T]he Eleventh Amendment, and the principle of state sovereignty which it embodies, are necessarily limited by the enforcement provisions of § 5 of the Fourteenth Amendment. As a result . . . Congress may subject nonconsenting States to suit in federal court when it does so pursuant to a valid exercise of its § 5 power." (citations and internal quotation marks omitted)). Where Congress has failed to act pursuant to a proper exercise of its power under Section 5 of the Fourteenth Amendment "there is no valid abrogation" of states' Eleventh Amendment immunity from private suit in federal court, and accordingly the district court will lack subject matter jurisdiction over claims relying on such abrogation. See Alsbrook, 184 F.3d at 1010 (holding "that the extension of Title II of the ADA to the states was not a proper exercise of Congress's power under Section 5 of the Fourteenth Amendment. Consequently, there is no valid abrogation of Arkansas' Eleventh Amendment immunity from private suit in federal court and the district court lacked subject matter jurisdiction over the ADA claim.").
In the Copyright Remedy Clarification Act ("CRCA" or "Copyright Act"), under which Issaenko brings her copyright claims, Congress clearly expressed an intent to abrogate state immunity. Section 511 of the Act states:
17 U.S.C. § 511(a); see also 17 U.S.C. § 501(a) ("Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this title in the same manner and to the same extent as any nongovernmental entity."). Therefore, the relevant question for purposes of Defendants' motion is whether that abrogation was made pursuant to a valid exercise of Congress' power under Section 5 of the Fourteenth Amendment.
The Fourteenth Amendment provides, in relevant part, that "[n]o State shall make or enforce any law which shall abridge the privileges or immunities of citizens of the United States; nor shall any State deprive any person of life, liberty, or property, without due process of law." U.S. Const. amend. XIV, § 1. Section 5 of the Amendment provides that "The Congress shall have power to enforce, by appropriate legislation, the provisions of this article." U.S. Const. amend. XIV, § 5. Section 5 is "a positive grant of legislative power" to Congress. Katzenbach v. Morgan, 384 U.S. 641, 651, 86 S.Ct. 1717, 16 L.Ed.2d 828 (1966). But that power is a "remedial" one, which "extends only to enforcing the provisions of the Fourteenth Amendment." City of Boerne v. Flores, 521 U.S. 507, 519, 117 S.Ct. 2157, 138 L.Ed.2d 624 (1997) (alterations and internal quotation marks omitted), superseded on other grounds by statute as stated in Burwell v. Hobby Lobby Stores, Inc., ___ U.S. ___, 134 S.Ct. 2751, 189 L.Ed.2d 675 (2014). In other words, Congress "has been given the power `to enforce,' not the power to determine what constitutes a constitutional violation. Were it not so, what Congress would be enforcing would no longer be, in any meaningful sense, the `provisions of [the Fourteenth Amendment].'" Id. (alteration in original). The Supreme Court has held that in order to be a valid exercise of Section 5's enforcement power "[t]here must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end." Id. at 520, 117 S.Ct. 2157.
Neither the United States Supreme Court nor the Eighth Circuit has addressed whether Congress acted pursuant to a valid exercise of its Section 5 power when it abrogated state sovereign immunity under § 511 of the CRCA. But the Fifth Circuit and numerous district courts have concluded that Congress did
Id. at 632, 119 S.Ct. 2199 (alteration in original) (internal quotation marks omitted). The Court began by acknowledging that "in enacting the Patent Remedy Act, Congress has made its intention to abrogate the States' immunity unmistakably clear in the language of the statute" and went on to consider "[w]hether Congress had the power to compel States to surrender their sovereign immunity for these purposes." Id. at 635, 119 S.Ct. 2199 (internal quotation marks omitted).
With respect to Congressional power, the Court noted that Congress had justified its passage of the Patent Remedy Act under the Patent Clause, U.S. Const. art. I, § 8, cl. 8, the Commerce Clause, U.S. Const. art. I, § 8, cl. 3, and Section 5 of the Fourteenth Amendment. Id. at 635-36, 119 S.Ct. 2199. But the Court explained that "Congress may not abrogate state sovereign immunity pursuant to its Article I powers; hence the Patent Remedy Act cannot be sustained under either the Commerce Clause or the Patent Clause." Id. at 636, 119 S.Ct. 2199 (citing Seminole Tribe, 517 U.S. at 72-73, 116 S.Ct. 1114). The Court therefore focused its analysis on the propriety of abrogation pursuant to Section 5 of the Fourteenth Amendment. The Court began by reviewing the legislative history that Congress had considered in passing the Patent Remedy Act and concluded that the Act could not "be viewed as remedial or preventive legislation aimed at securing the protections of the Fourteenth Amendment for patent owners" because "[i]n enacting the Patent Remedy Act . . . Congress identified no pattern of patent infringement by the States, let alone a pattern of constitutional violations." Id. at 639-40, 119 S.Ct. 2199. The Court distinguished the Patent Remedy Act from, for example, voting rights cases where Congress was confronted with an "undisputed record of racial discrimination" that it was remedying. Id. at 640, 119 S.Ct. 2199. Unlike those cases, the Court explained that with respect to patents
Id. (citations and internal quotation marks omitted).
The Court also concluded that, although the relevant question for purposes of assessing state constitutional violations was whether states were depriving individuals patents without due process of law, Congress had failed to consider the availability of state remedies for patent infringement, and had thus not demonstrated any congruence or proportionality between the remedies in the Patent Remedy Act and any unconstitutional conduct by states. Id. at 643-45, 119 S.Ct. 2199. In light of Congress' failure to identify widespread unconstitutional conduct in need of remedying, the Court concluded that "the provisions of the Patent Remedy Act are so out of proportion to a supposed remedial or preventive object that they cannot be understood as responsive to, or designed to prevent, unconstitutional behavior." Id. at 646, 119 S.Ct. 2199 (alteration and internal
Id. at 646-47, 119 S.Ct. 2199. Based on this reasoning the Court concluded:
Id. at 647-48, 119 S.Ct. 2199 (footnote omitted).
The Fifth Circuit in Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir.2000) applied the rationale from Florida Prepaid to the CRCA. The Chavez court began by noting that Congress' abrogation of state sovereign immunity in the CRCA was invalid because Congress relied explicitly on the Copyright Clause in Article I in enacting the CRCA, and the court was therefore not required to "consider another ground of constitutionality—the Fourteenth Amendment—that Congress did not invoke." Id. at 604 (citing Florida Prepaid, 527 U.S. at 642 n.7, 119 S.Ct. 2199 ("There is no suggestion in the language of the statute itself, or in the House or Senate Reports of the bill which became the statute, that Congress had in mind the Just Compensation Clause of the Fifth Amendment. Since Congress was so explicit about invoking its authority under Article I and its authority to prevent a State from depriving a person of property without due process of law under the Fourteenth Amendment, we think this omission precludes consideration of the Just Compensation Clause as a basis for the Patent Remedy Act.")).
Despite Congress' failure to explicitly rely on Section 5 as the basis for its authority to abrogate state sovereign immunity under the CRCA, the Chavez court went on to consider whether the CRCA was a proper exercise of Congress' power to enforce the Due Process Clause. Id. at 605. As in Florida Prepaid, the Chavez court first looked to the legislative history of the CRCA to determine whether Congress had identified a pattern of copyright infringement or constitutional violations by the States that warranted remedial legislation. Id. at 605. The court concluded that "[a]lthough the legislative history for the CRCA documents a few more instances of copyright infringement than the [Patent Act] legislative history did of patent violations, the CRCA's history exhibits similar deficiencies." Id. For example, testimony showed that states were not involved in wholesale violation of the copyright laws,
The Chavez court also considered "whether Congress studied the existence and adequacy of state remedies for injured copyright owners when a state infringes their copyrights." Id. at 606. The court found that the CRCA's history was "parallel" to the Patent Act in that "Congress barely considered the availability of state remedies for infringement." Id. Finally, the court "examined the breadth of coverage of the legislation," and found that the remedies in the CRCA were overly broad and therefore were not "proportionate to legitimate section 5 ends." Id. at 607. Therefore, the court concluded:
Id.; see also Rodriguez v. Tex. Comm'n on the Arts, 199 F.3d 279, 281 (5th Cir.2000) ("It is appropriate for us to adopt [the analysis from Florida Prepaid] in the copyright context. The interests Congress sought to protect in each statute are substantially the same and the language of the respective abrogation provisions are virtually identical.").
Although neither the Supreme Court nor the Eighth Circuit has addressed the issue, all of the other courts to consider the question to date have concluded that Congress lacked a valid grant of constitutional authority to abrogate the states' sovereign immunity under the CRCA. See, e.g., Jacobs v. Memphis Convention & Visitors Bureau, 710 F.Supp.2d 663, 674-82 (W.D.Tenn.2010) (conducting an extensive, independent review of the legislative history of the CRCA before determining that "the attempt at abrogation of state sovereign immunity contained in the Copyright Remedy Clarification Act of 1990, codified at 17 U.S.C. § 511, cannot be sustained as appropriate prophylactic legislation under § 5 of the Fourteenth Amendment"); Mktg. Info. Masters, Inc. v. Bd. of Trs. of Cal. State Univ. Sys., 552 F.Supp.2d 1088, 1094-95 (S.D.Cal.2008) (dismissing copyright infringement claims against state university actors after concluding that "the CRCA fails to meet the `congruence and proportionality' test and is not a valid exercise of Congress's power under § 5 of the Fourteenth Amendment"). Some courts have concluded that Congress did not validly abrogate sovereign immunity in the CRCA because it explicitly cited only Article I as a basis for its action, and did not rely on its Section 5 power. See Coyle v. Univ. of Ky., 2 F.Supp.3d 1014, 1017-19 (E.D.Ky.2014) (finding that the CRCA did not abrogate sovereign immunity, but relying on the basis that Congress cited only Article I and not, therefore, engaging in an analysis of whether Congress' action would have been valid under § 5); Jehnsen v. N.Y. State Martin Luther King Jr., Inst. for Nonviolence, 13 F.Supp.2d 306, 310 (N.D.N.Y.1998) (same). Most courts have, however, gone on to analyze whether Congress acted pursuant to a valid exercise of its Section 5 power in abrogating state
The Court finds persuasive the reasoning of Chavez and the numerous district courts that have concluded that Congress failed to act pursuant to a valid exercise of its enforcement powers under Section 5 when it sought to abrogate state sovereign immunity in the CRCA. Issaenko makes two primary arguments in support of her position that the Court should reach the opposite conclusion. First, Issaenko cites the dissent in Florida Prepaid, which stated in a footnote, "there is hope that the Copyright Remedy Clarification Act of 1990 may be considered `appropriate' § 5 legislation. The legislative history of that Act includes many examples of copyright infringements by States—especially state universities." 527 U.S. at 658 n.9, 119 S.Ct. 2199 (Stevens, J., dissenting). Second, Issaenko argues that, consistent with the contention in that footnote, the legislative history of the CRCA shows that Congress did find that states were engaged in constitutional violations with respect to copyright ownership that warranted remedial action. Specifically, Issaenko cites several comments from a senate hearing during which witnesses stated that publishers in the educational field were particularly vulnerable to state infringement of their textbooks. (See Pl.'s Mem. in Opp'n to Mot. to Dismiss at 13, Mar. 24, 2014, Docket No. 20.)
But other courts have concluded that, despite the footnote in the Florida Prepaid dissent "upon closer examination, the legislative record created during the consideration of the Copyright Remedy Clarification Act does not establish that Congress found a sufficient pattern of prior unconstitutional conduct by the states." Jacobs, 710 F.Supp.2d at 675. Although Issaenko is correct that the legislative history of the CRCA demonstrates that some witnesses testified about copyright infringement in the field of educational publishing specifically and Congress did find some examples of copyright infringement by states, these examples "were ultimately few in number and show nothing more than that some states have engaged in sporadic, individual acts of infringement." Id. at 676; see also Mktg. Info. Masters, Inc., 552 F.Supp.2d at 1094 ("The testimony and evidence demonstrated at most sporadic violations, not widespread violations by states."). Additionally, most of the harms considered by Congress were prospective in nature, and did not identify an existing pattern of constitutional abuses. See S.Rep. No. 101-305 (1990), available at 1990 WL 259306 ("The Copyright Office concludes and the committee agrees that copyright owners have demonstrated that they
Furthermore Issaenko's argument ignores the additional reasons that the Chavez and other courts found Congress' abrogation of states' immunity to be invalid. The legislative history cited by Issaenko does not demonstrate that Congress considered the scope of state remedies,
Finally Issaenko argues that even if Congress was not validly enforcing the Due Process Clause of the Fourteenth Amendment when it sought to abrogate sovereign immunity in the CRCA, the abrogation was valid as an enforcement of the Privileges and Immunities Clause of the Fourteenth Amendment. In support of her privileges and immunities argument, Issaenko relies upon Saenz v. Roe, 526 U.S. 489, 119 S.Ct. 1518, 143 L.Ed.2d 689 (1999), a case in which the Supreme Court addressed a California statute which placed a durational residency requirement on the receipt of certain state benefits to needy families. In that case, the Court held that the Privileges and Immunities Clause protects an aspect of a citizen's right to travel, namely "the right of the newly arrived citizen to the same privileges and immunities enjoyed by other citizens of the same State." Id. at 502, 119 S.Ct. 1518. The Court concluded based upon this, and other constitutional provisions, that California's scheme of requiring individuals to reside in California for a period of time before receiving benefits discriminated against citizens with respect to their right to interstate travel. Id. at 505, 119 S.Ct. 1518. Citing the dissent from Saenz, Issaenko argues that the Privileges and Immunities Clause protects "`the right to acquire and possess property of every kind'" and therefore protects copyrights as well. (Pl.'s Mem. in Opp'n to Mot. to Dismiss at 21 (quoting Saenz, 526 U.S. at 525, 119 S.Ct. 1518 (Thomas, J., dissenting)).)
But Issaenko's argument that Congress' action in abrogating state immunity under the CRCA was valid as remedial legislation to enforce the Privileges and Immunities Clause does not avoid the problems identified by numerous courts with respect to Congress' authority under the Due Process Clause. In other words, in order to be a valid exercise of its Section 5 power, Congress must still have been able to identify constitutional violations by states—whether they be of the Due Process Clause or the Privileges and Immunities Clause—prior to passing remedial legislation. Furthermore, Congress must craft legislation that is congruent and proportional to those problems. Because the Court has already concluded that Congress did not identify a pattern of states infringing copyrights in an unconstitutional manner and did not tailor the remedies in the CRCA to address any constitutional violations by states, the Court concludes that Congress did not act pursuant to a valid exercise of its power to enforce the Privileges and Immunities Clause in passing the CRCA.
Because the CRCA did not validly waive state immunity under the Eleventh Amendment, the Court will grant Defendants' motion to dismiss for lack of subject matter jurisdiction with respect to the University. The Court will also grant the motion with respect to the Individual Defendants, who are sued only in their official capacities, and Bazzaro in her official capacity, to the extent Issaenko's copyright claims seek damages.
Issaenko argues that even if her claim for damages against Bazzaro in her official capacity and the Individual Defendants are subject to dismissal under the Eleventh Amendment, she may still pursue injunctive relief against those Defendants.
Under Ex parte Young, 209 U.S. 123, 28 S.Ct. 441, 52 L.Ed. 714 (1908) "state officials may be sued in their official capacities for prospective injunctive relief without violating the Eleventh Amendment." Monroe v. Ark. State Univ., 495 F.3d 591, 594 (8th Cir.2007) (explaining that this doctrine applies only to state officials and "does not extend to states or state agencies"). Therefore, courts have declined to dismiss claims brought for injunctive relief against state employees in their official capacities. See, e.g., Klingler v. Dir., Dep't of Revenue, 281 F.3d 776, 777 (8th Cir.2002) (reversing "district court's order dismissing the plaintiffs' claim for declaratory and injunctive relief, but affirm[ing] its dismissal of the claim for damages" against state officials in their official capacity); B.K. ex rel. Kroupa v. 4-H, 877 F.Supp.2d 804, 815 (D.S.D.2012) ("Thus, defendants' motion to dismiss B.K.'s claims for monetary damages from Nielson and Geppert in their official capacities is granted but, to the extent that defendants move to dismiss B.K.'s claims for injunctive relief from Nielson and Geppert in their official capacities, that motion is denied.").
In her First Amended Complaint, Issaenko seeks injunctive relief against all Defendants with respect to her copyright infringement claim. (Am. Compl. ¶ 132.) Because injunctive relief against the Individual Defendants and Bazzaro in their official capacities is not barred by the Eleventh Amendment, the Court declines to grant Defendants' motion to dismiss Issaenko's copyright claim for lack of subject matter jurisdiction under Rule 12(b)(1) on the basis of sovereign immunity to the extent the claim seeks injunctive relief against the Individual Defendants and Bazzaro in their official capacities.
Although Issaenko's copyright infringement claim for injunctive relief against the Individual Defendants and Bazzaro in their official capacities is not barred by Eleventh Amendment immunity, Defendants argue that it must be dismissed for failure to adequately plead a claim upon which relief could be granted. The Supreme Court has explained "that official-capacity suits `generally represent only another way of pleading an action against an entity of which an officer is an agent.'" Hafer v. Melo, 502 U.S. 21, 25, 112 S.Ct. 358, 116 L.Ed.2d 301 (1991) (internal quotation marks omitted) (quoting Kentucky v. Graham, 473 U.S. 159, 165, 105 S.Ct. 3099, 87 L.Ed.2d 114 (1985)). "Suits against state officials in their official capacity therefore should be treated as suits against the State. . . . Because the real party in interest in an official-capacity suit is the governmental entity and not the named official, `the entity's policy or custom must have played a part in the violation of federal law.'" Id. (internal quotation marks omitted) (quoting Graham, 473 U.S. at 166, 105 S.Ct. 3099). Therefore, to establish liability of an individual in an official capacity suit, a plaintiff must show that the official took an action pursuant to an unconstitutional or unlawful governmental policy or custom, or that he or she possessed final authority to establish policies over the subject matter at issue and used that authority in an unconstitutional or unlawful manner. See Nix v. Norman,
With respect to her copyright infringement claim, Issaenko alleges:
(Am. Compl. ¶ 121.) Issaenko also alleges that "[o]n information and belief, Defendants possessed the right and ability to supervise the infringing activity and possessed an obvious and direct financial interest in Dr. Olga Issaenko's exploited works of authorship and/or her Copyrighted Images and Works." (Id. ¶ 122.) But Issaenko's First Amended Complaint contains no allegations about a policy or custom at the University of unlawfully infringing employees' copyrighted works. Nor does Issaenko's First Amended Complaint contain any allegations that the Individual Defendants and/or Bazzaro had final authority to establish University policies regarding copyright and exercised that authority in an unlawful manner. The only reference in the First Amended Complaint to a University policy or practice is Issaenko's citation to the University's copyright policy which provides that "[c]onsistent with academic tradition, University faculty and students shall own the copyrights in the academic works they create[] unless otherwise provided in a written agreement between the creator(s) and the University." (Id. ¶ 40 (internal quotation marks omitted).) But this allegation does not bear upon whether an unlawful or unconstitutional policy or custom of the University "played a part in the violation of federal law." Hafer, 502 U.S. at 25, 112 S.Ct. 358 (internal quotation marks omitted). Accordingly, the Court concludes that Issaenko has failed to state a plausible claim for relief against the Individual Defendants and Bazzaro in their official capacities, and will grant Defendants' motion to dismiss the copyright claim against them in their official capacities to the extent that claim seeks prospective injunctive relief. See Vogel v. Turner, Civ. No. 11-446, 2012 WL 5381788, at *2 (D.Minn. Nov. 1, 2012) (dismissing official capacity claim against state employee of the Minnesota Department of Corrections because the complaint did not plausibly allege that the employee was "`an official who has the final authority to establish governmental policy'" (quoting Jane Doe A v. Special Sch. Dist., 901 F.2d 642, 645 (8th Cir.1990))).
In the First Amended Complaint Issaenko also brings her copyright claim against Bazzaro in her individual capacity. Defendants argue that this claim must be dismissed because Bazzaro is protected by qualified immunity.
Qualified immunity shields government officials from liability if "their conduct does not violate clearly established statutory or constitutional rights of which a reasonable person would have known." Harlow v. Fitzgerald, 457 U.S. 800, 818, 102 S.Ct. 2727, 73 L.Ed.2d 396 (1982). To determine whether Bazzaro is entitled to
Although qualified immunity is typically applied in the context of suits under 42 U.S.C. § 1983, courts have also applied the protection to suits alleging copyright violations by state officials. See Assoc. for Info. Media & Equip. v. Regents of the Univ. of Cal., Civ. No. 10-9378, 2012 WL 7683452, at *5 (C.D.Cal. Nov. 20, 2012) (noting that "[w]hile most cases applying qualified immunity are in the civil rights context, some courts have applied the doctrine in the copyright cases"); Campinha-Bacote v. Bleidt, Civ. No. 10-3481, 2011 WL 4625394, at *3 (S.D.Tex. Oct. 3, 2011); Molinelli-Freytes v. Univ. of Puerto Rico, 792 F.Supp.2d 150, 156-57 (D.P.R.2010); Nat'l Ass'n of Bds. of Pharmacy, 2008 WL 1805439 at *21-23; Lane v. First Nat'l Bank of Boston, 687 F.Supp. 11, 15-17 (D.Mass.1988). Issaenko does not dispute that the doctrine of qualified immunity is applicable to allegations of violations of the CRCA. Accordingly, the Court, finding the above-cited authority persuasive, will analyze Bazzaro's liability for copyright infringement under this doctrine.
Defendants argue, as an initial matter, that Issaenko's rights under the CRCA that she claims were violated were not clearly established at the time of the alleged violation.
Defendants characterize Issaenko's copyright claim as alleging essentially that "(a) she generated the `work' while employed
The Copyright Act "provides that copyright ownership `vests initially in the author or authors of the work.'" Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 737, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989) (quoting 17 U.S.C. § 201(a)). Typically, this provision affords copyright protection to "the party who actually creates a work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection." Id. But "[t]he Act carves out an important exception. . . for `works made for hire.'" Id.; see 17 U.S.C. § 201(b) ("In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright."). A work made for hire is further defined, in relevant part, under the Act as "a work prepared by an employee within the scope of his or her employment." 17 U.S.C. § 101. "Although the Copyright Act does not define either `employee' or `scope of employment,' these terms must be `understood in light of the general common law of agency.'" U.S. Auto Parts Network, Inc. v. Parts Geek, LLC, 692 F.3d 1009, 1015 (9th Cir.2012) (quoting Reid, 490 U.S. at 739-41, 109 S.Ct. 2166). Citing this guidance, numerous courts have adopted the three-part test under the Second Restatement of Agency "for determining when a work is made by an employee `within the scope' of employment." Id. (citing Avtec Sys., Inc. v. Peiffer, 21 F.3d 568, 571 (4th Cir.1994); Shaul v. Cherry Valley-Springfield Cent. Sch. Dist., 363 F.3d 177, 186 (2d Cir.2004)). Under this three-part test, in determining whether a work was prepared within the scope of employment, courts consider whether the work "is of the kind [the employee] is employed to perform," "occurs substantially within the authorized time and space limits," and "is actuated, at least in part, by a purpose to serve the master." Rouse v. Walter & Assocs., L.L.C., 513 F.Supp.2d 1041, 1056 (S.D.Iowa 2007) (citing Restatement (Second) of Agency § 228 (1958)). When the first element of the test is met "courts have tended not to grant employees authorship rights solely on the basis that the work was done at home on off-hours." Avtec Sys., Inc., 21 F.3d at 571 (collecting cases); see also Rouse, 513 F.Supp.2d at 1058; Vanderhurst v. Colo. Mountain Coll. Dist., 16 F.Supp.2d 1297, 1307 (D.Colo.1998) (concluding that a work was one for hire even though the outline in question was prepared on the employee's own time and using his own materials because it was connected directly with the work for which he was hired to perform).
Issaenko's sole argument that Bazzaro would have been unreasonable in believing that the Copyrighted Works were works for hire is based upon her allegation in the First Amended Complaint "that the Copyrighted Images and Works (compilations of tables, graphs, and images) were created on her own time, at her home, using her own resources, her own software, and her
Issaenko's allegations demonstrate that Bazzaro could reasonably have concluded, based on existing law, that the work Issaenko performed on her own was the type she was employed to perform. When analyzing the first factor—whether the work in question was of the type of the employee was employed to perform—courts "rely heavily on the employee's job description." Fleurimond v. N.Y. Univ., 876 F.Supp.2d 190, 202 (E.D.N.Y.2012) (internal quotation marks omitted). Here, Issaenko's job description provided, in relevant part,
(Am. Compl. ¶ 37, Ex. 5 at 11.) Based on the allegations in the First Amended Complaint, a supervisor could have reasonably concluded that the independent work that Issaenko alleges she performed falls within this description. With respect to the first project related to the survival of ovarian and cervical cancer cells, Issaenko alleges specifically that she asked Bazzaro whether she should perform experiments using a certain type of cell sorting, and then proceeded to perform those experiments even after Bazzaro told her they were unnecessary. This conduct falls within the scope of "[e]valuat[ing], suggest[ing] alternate methods, modify[ing] or develop[ing] new procedures and techniques to aid in the investigation of a total research problem or program," (id. ¶ 37), regardless of whether Bazzaro specifically authorized or approved the experiments. See Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance, Inc., 380 F.3d 624, 640-41 (2d Cir.2004) ("There is no need for the employer to be the precipitating force behind each work created by a salaried employee, acting within the scope of her regular employment. Many talented people . . . are expected by their employers to produce the sort of work for which they were hired, without any need for the employer to suggest any particular project.").
As for the second project that resulted in one of the Copyrighted Works, Issaenko alleges that she "provided raw data to Defendant Bazzaro and also worked at home on compilations of tables and graphs, and draft[s] of a joint manuscript," which Issaenko and Bazzaro planned to submit to the JMC in May 2010. (Am. Compl. ¶ 57.) Issaenko conducted numerous experiments for this project, asked Bazzaro for help, and inquired whether the experiments should be conducted for purposes of the joint manuscript. (Id. ¶¶ 58, 63.) A supervisor could also reasonably conclude that this work was encompassed within Issaenko's job description which provided that she would be required to "[a]nalyze
It is also apparent from the allegations in the First Amended Complaint that a reasonable professor in Bazzaro's position could have concluded that Issaenko's research was motivated, at least in part, to serve Bazzaro's purposes, as it was conducted with respect to research supervised by Bazzaro, Issaenko frequently asked for Bazzaro's opinions on the work and provided copies of the work to Bazzaro, and some of the work was specifically intended to be part of a joint manuscript which Issaenko and Bazzaro planned to submit to the JMC. See Rouse, 513 F.Supp.2d at 1060 ("[T]he Restatement does not require that the servant's only motivation be to help his or her employer; the motivation need only be partial." (alteration in original) (internal quotation marks omitted)).
Based on the allegations in the First Amended Complaint, the Court concludes that the law was not clearly established that the type of work performed by Issaenko with respect to the Copyrighted Works would not fall within the work for hire provision, and Bazzaro therefore did not act unreasonably in concluding that Issaenko was not the owner of the Copyrighted Works. Accordingly, the Court will grant Defendants' motion to dismiss the copyright claim on the basis that Bazzaro is entitled to qualified immunity with respect to that claim.
Having determined that the copyright claim in the First Amended Complaint must be dismissed, the Court will go on to consider whether any of the new allegations in the Second Amended Complaint cure the deficiencies discussed above, and therefore whether amendment of this claim would not be futile.
In the Second Amended Complaint Issaenko removes as Defendants all of the individually named Regents of the University. (See Second Am. Compl. at 1.) Issaenko also adds claims against the remaining Individual Defendants in their individual capacities. With respect to these changes, Issaenko explains that "[t]he Second Amended Complaint caption now identifies Defendants LeBien, Lawrenz, Carson, Hanson, and Yee in their personal, individual, and official capacities. The amended caption provides clarity and a more definite statement regarding the nature of the capacity of suit in which each has been sued." (Pl.'s Mem. in Supp. of Mot. to Amend at 29-30, June 5, 2014, Docket No. 40.)
(Id. ¶¶ 18-23; see also id. ¶¶ 13-14, 16.)
The Court concludes that these allegations do not cure the deficiencies in Issaenko's copyright claim pled in the First Amended Complaint, and therefore finds that amendment with respect to the copyright claim would be futile. With respect to the claim asserted against the Individual Defendants in their official capacities, the Second Amended Complaint still fails to plead the existence of a policy or custom at the University of unlawfully infringing employees' copyrighted works. See supra § I.B.2. Nor does the Second Amended Complaint contain allegations that either the Individual Defendants and/or Bazzaro had final authority to
As for the copyright claim that the Second Amended Complaint asserts against the Individual Defendants in their individual capacities, the Court concludes that the qualified immunity analysis of the work for hire doctrine discussed above with respect to the claim against Bazzaro in her individual capacity, see supra § I.B.3, applies with equal force to the Individual Defendants. Accordingly, amendment to assert a copyright claim against the Individual Defendants in their individual capacities would be futile, and the Court will deny the motion to amend to the extent it seeks to amend Issaenko's copyright claim.
Issaenko brings claims for damages and injunctive relief pursuant to 42 U.S.C. § 1983 under the Privileges and Immunities and Due Process Clauses of the Fourteenth Amendment, alleging that Defendants violated her constitutional rights by infringing the Copyrighted Works.
Issaenko's allegations related to her § 1983 claim for violation of the Due Process Clause are similar. Specifically, Issaenko alleges that the Copyrighted Works are "a form of property" and "[t]he Due Process Clause protects Plaintiff's right to be free from copyright infringement by the state and state actors." (Id. ¶¶ 216-217, 244-245.) Issaenko alleges that Defendants violated her procedural and substantive due process rights
The Court concludes that because these § 1983 claims are expressly premised on the same violations of the Copyright Act that form the basis of Issaenko's claim for copyright infringement in Count I, they are subject to the same analysis regarding immunity and failure to plead viable claims that required dismissal of Count I. Specifically, the University is not a person within the meaning of § 1983, and therefore cannot be subject to liability under the statute. See Will v. Mich. Dep't of State Police, 491 U.S. 58, 63, 109 S.Ct. 2304, 105 L.Ed.2d 45 (1989). Furthermore, the Eleventh Amendment bars § 1983 suits for damages against the Individual Defendants and Bazzaro in their official capacities. See Nix, 879 F.2d at 432. With respect to the claims for injunctive relief against the Individual Defendants and Bazzaro in their official capacities, these claims are deficient because they fail to plead that any constitutional violations perpetrated by the Individual Defendants and/or Bazzaro that were the result of an unconstitutional policy or custom of the University. See Hafer, 502 U.S. at 25, 112 S.Ct. 358; Nix, 879 F.2d at 433. Finally, because Issaenko's § 1983 claims are premised on violations of the Copyright Act, the Court's analysis of Bazzaro's entitlement to qualified immunity applies with equal force here. Accordingly, the Court will grant Defendants' motion to dismiss Issaenko's § 1983 claims.
Issaenko argues that "Defendants erroneously assume that the claims under 42 U.S.C. Section 1983 are premised upon the enforcement of the Copyright Act." (Pl.'s Mem. in Opp'n to Mot. to Dismiss at 31.) Issaenko appears to be arguing that because her § 1983 claims are separate and distinct from her claims alleging violations of the Copyright Act, the same analysis applicable to those claims does not bar her § 1983 claims. (See id. at 33 ("Thus, it is not the enforcement of the federal statutory regulatory scheme which is at play as Defendants argue—but rather the well-established right of plaintiffs to enforce deprivation of property interests. . . .").)
Finally, to the extent Issaenko's brief can be construed as making an argument that her Privileges and Immunities and Due Process Clause claims entitle her to greater protection than would be available under the Copyright Act, the Court concludes that these claims would also fail. Issaenko has not pled a policy of the University that was unconstitutional under either these clauses. Furthermore, Issaenko has presented no argument or citation to any authority which would indicate that her constitutional rights to the Copyrighted Works under these clauses—which exceeded the scope of protection provided by the Copyright Act—were clearly established at the time of the alleged violation, such that a reasonable University employee in the position of Bazzaro would have known she was committing constitutional violations. Therefore, the Court finds that dismissal of the § 1983 claims is required for failure to state a claim.
Issaenko's First Amended Complaint also brings a number of state law claims against all of the named Defendants. Defendants argue, and Issaenko does not dispute, that her state law claims brought against the University are barred by the Eleventh Amendment. Pennhurst State Sch. & Hosp. v. Halderman, 465 U.S. 89, 98, 121, 104 S.Ct. 900, 79 L.Ed.2d 67 (1984) (concluding that the Eleventh Amendment's bar applies with equal force to state law claims brought into federal court under pendent jurisdiction); see also Minn. Pharmacists Ass'n v. Pawlenty, 690 F.Supp.2d 809, 815-16 (D.Minn.2010). Additionally, the Eleventh Amendment bars the claims against the Individual Defendants and Bazzaro in their official capacities to the extent the claims seek
Issaenko alleges that Defendants have engaged in deceptive trade practices in violation of Minnesota's Uniform Deceptive Trade Practices Act, ("MUDTPA") Minn. Stat. §§ 325D.44 et seq., by creating "a high likelihood of confusion, mistake, and/or deception in the industry and among consumers as to the origin or source of Defendants' and Dr. Olga Issaenko's Copyrighted Images and Works" and as to the "affiliation, connection, and/or association of themselves and their images, publications, and activities with Dr. Olga Issaenko and her Copyrighted Images and Works, publications, and activities." (Am. Compl. ¶¶ 135-136.) Issaenko seeks damages and injunctive relief as remedies. (Id. ¶¶ 140, 142.)
Defendants argue that Issaenko's MUDTPA claim must be dismissed because it is preempted by the Copyright Act. The Act "preempts state laws that attempt to protect rights exclusively protected by federal law," Davidson & Assocs. v. Jung, 422 F.3d 630, 638 (8th Cir.2005), providing:
17 U.S.C. § 301(a). Under this provision "[a] state cause of action is preempted if: (1) the work at issue is within the subject matter of copyright as defined in §§ 102 and 103 of the Copyright Act, and (2) the state law created right is equivalent to any of the exclusive rights within the general scope of copyright as specified in § 106." Nat'l Car Rental Sys., Inc. v. Computer Assocs. Int'l, Inc., 991 F.2d 426, 428 (8th Cir.1993). Section 106 of the Copyright Act provides the owner of a copyright with the exclusive right "to do and to authorize," among other things, reproduction of the copyrighted work, preparation of derivative works, distribution of copies of the copyrighted work, and public display of the copyrighted work. 17 U.S.C. § 106. With respect to whether a right under state law is equivalent, the Copyright Act preempts only those state causes of action that "may be abridged by an act which, in and of itself, would infringe one of the exclusive rights provided by federal copyright law." Nat'l Car Rental Sys., Inc., 991 F.2d at 431 (internal quotation marks omitted). "If an extra element is required, instead of or in addition to the acts of reproduction, performance, distribution or display, in order to constitute a state-created cause of action, then the right does not lie within
The parties do not dispute that the first prong of the preemption test has been satisfied because the subject matter of Issaenko's MUDTPA claim is the Copyrighted Works. (See Am. Compl. ¶¶ 135-136.) With respect to the second prong of the preemption test, some courts have reasoned that causes of action similar to those provided under MUDTPA are nothing more than a disguised copyright claim or the "natural consequence[] of a Copyright Act violation" because the basic allegations are merely that "Defendants have represented [plaintiff's] copyrighted materials to the public as their own." Rutledge v. High Point Reg'l Health Sys., 558 F.Supp.2d 611, 620-21 (M.D.N.C.2008) (emphasis omitted). For example, the Ninth Circuit found a claim under California's unfair competition law to be preempted by the Copyright Act where the complaint alleged that defendants "have been publishing and placing on the market for sale products bearing the images subject to the copyright ownership of the plaintiff and ha[ve] thereby been engaging in unfair trade practices and unfair competition." Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1212 (9th Cir.1998) (internal quotation marks omitted). The court concluded that this unfair competition claim was "expressly base[d] . . . on rights granted by the Copyright Act," including the "rights to reproduce the copyrighted work in copies, to prepare derivative works based upon the copyrighted work, to distribute copies. . . to the public, and to display the copyrighted works publicly." Id. at 1213 (alteration in original) (internal quotation marks omitted); see also Defined Space, Inc. v. Lakeshore E., LLC, 797 F.Supp.2d 896, 901-03 (N.D.Ill.2011) (finding claims under Illinois statutes for consumer fraud and deceptive business and trade practices were preempted because "the rights asserted under Illinois state law in this case are not qualitatively different from the rights conferred under the Copyright Act"); Costar Grp. Inc. v. Loopnet, Inc., 164 F.Supp.2d 688, 714 (D.Md.2001) (concluding that an unfair competition claim was preempted where the claim alleged that defendant copied photographs and "passed them off as its own" because "[t]he same act which constitutes Loop-Net's alleged copyright infringement, the unauthorized copying of CoStar's photographs, also constitutes CoStar's unfair competition claim").
The Court concludes that the MUDTPA claim, as pled by Issaenko, is preempted by the Copyright Act. See Kodadek, 152 F.3d at 1212 (noting that for purposes of a preemption analysis the court does not analyze a cause of action in the abstract but instead "examine[s] the nature" of plaintiff's claim "to discern what rights [plaintiff] seeks to enforce with state law"). The relevant question is whether Issaenko's MUDTPA claim requires an extra element, in addition to the acts of reproduction or distribution that would support a claim for violation of the Copyright Act. See Nat'l Car Rental Sys., Inc., 991 F.2d at 431. Here, the allegations in the First Amended Complaint indicate that Issaenko's MUDTPA claim is based solely on conduct that, if true, would result in violation of the Copyright Act. The conduct Issaenko alleges in support of her MUDTPA claim is Defendants' use and distribution of the Copyrighted Works, which is equivalent to the exclusive rights protected by the Copyright Act. In other words, Issaenko's claim is that Defendants used the Copyrighted Works without her permission. By doing so, she argues that they created confusion about the ownership of the work by claiming that the work was their own. This claim falls within the
Issaenko attempts to distinguish her claim by arguing that it requires an additional showing of a misrepresentation and creation of confusion. These arguments are misplaced. MUDTPA specifically states that a plaintiff "need not prove . . . actual confusion or misunderstanding." Minn.Stat. § 325D.44, subd. 2; see also Claybourne v. Imsland, 414 N.W.2d 449, 451 (Minn.Ct.App.1987) ("The Uniform Deceptive Trade Practices Act does not require actual confusion or misunderstanding for a violation to be found and relief granted. The mere likelihood of such confusion is sufficient."). Instead, Issaenko's claim that Defendants created confusion is based solely on her allegation that Defendants improperly used her Copyrighted Works. Issaenko's First Amended Complaint does not include, for example, allegations that Defendants used misleading statements or deceptive representations apart from simply using the Copyrighted Works as if they owned the works. See Integrative Nutrition, Inc. v. Academy of Healing Nutrition, 476 F.Supp.2d 291, 296-97 (S.D.N.Y.2007) (finding an unfair competition claim preempted where "[t]he core of the unfair competition claim is the plaintiff's allegation that similarities between Integrative's Intellectual Property and the Plagiarized Website will cause confusion among the public" because the claim did not contain an "element to qualitatively differentiate it from those areas protected by copyright" such as allegations of fraud or breach of confidence (internal quotation marks omitted)).
In her unfair competition claim, Issaenko alleges that "Defendants' actions have caused a likelihood of confusion and/or misunderstanding as to the source, sponsorship, approval, or certification of themselves and their images, publications, and activities with Dr. Olga Issaenko and her Copyrighted Images, publications, and activities," and that "Defendants' actions have created a high likelihood of confusion, mistake, and/or deception in the industry and among consumers as to an affiliation, connection and/or association of themselves and their images, publications, and activities with Dr. Olga Issaenko and her Copyrighted Images and Works, publications, and activities." (Am. Compl. ¶¶ 145-146.)
Defendants argue that this claim must be dismissed as duplicative of the MUDTPA claim and preempted by the Copyright Act. "Unfair competition is not a tort with specific elements; it describes a general category of torts which courts recognize for the protection of commercial interests" including "product disparagement," "tortious interference with contractual interests and improper use of trade secrets." Zimmerman Grp., Inc. v. Fairmont Foods of Minn., Inc., 882 F.Supp. 892, 895 (D.Minn.1994) (internal quotation marks omitted). "[T]o remain viable, a common law unfair competition claim `must identify the underlying tort which is the basis for the claim.'" LensCrafters, Inc. v. Vision World, Inc., 943 F.Supp. 1481, 1490 (D.Minn.1996) (alteration omitted) (quoting Zimmerman Grp., Inc., 882 F.Supp. at 895). Furthermore, where an unfair competition claim is duplicative of another claim in the complaint, the unfair competition claim should be dismissed. See Zimmerman Grp., Inc., 882 F.Supp. at 895 (explaining with respect to an unfair competition claim that "[t]o the extent that the claim is based upon interference with contract, it is duplicative of Count V which also asserts an interference with contract claim based upon the same conduct. As Zimmerman does not identify another tort upon which to base its unfair competition claim, this claim must be dismissed in its entirety."). As with other state law claims, claims for unfair competition are preempted by the Copyright Act to the extent they are "based upon acts of copyright infringement." Id.
The Court concludes that Issaenko's unfair competition claim must be dismissed as duplicative of her MUDTPA claim, and preempted by the Copyright Act. Issaenko argues that her unfair competition claim is not duplicative of her MUDTPA claim, because she has properly identified the underlying tort upon which the unfair competition claim is based by incorporating by reference "the tort of tortious interference with prospective business advantage." (Pl.'s Mem. in Opp'n to Mot. to Dismiss at 39-40.) But even if Issaenko's unfair competition claim could be properly construed as alleging a tortious interference claim, according to Issaenko's own argument that claim would be identical to the tortious inference claim she asserts in Count VI and incorporates by reference into her unfair competition claim. Accordingly, to the extent the unfair competition claim is based upon the
Issaenko goes on to argue that her unfair competition claim is not duplicative of her MUDTPA claim because it is based on the underlying tort that Defendants have "`create[d] a likelihood of confusion or misunderstanding.'" (Pl.'s Mem. in Opp'n to Mot. to Dismiss at 40 (quoting Am. Compl. ¶ 147).) These are identical, however, to the allegations that underlie Issaenko's MUDTPA claim, and therefore to the extent her unfair competition claim is based upon those allegations, the claim is duplicative of the MUDTPA claim, and preempted by the Copyright Act for the same reasons that preemption applies to the MUDTPA claim. See Rottlund Co. v. Scott Larson Constr., Inc., Civ. No. 02-1238, 2004 WL 742054, at *7 (D.Minn. Mar. 4, 2004) (concluding that an unfair competition claim was duplicative of a MUDTPA claim where plaintiff described the unfair competition claim as "refer[ring] to the separate torts of false and misleading designation of origin and false advertising").
To establish a claim for unjust enrichment under Minnesota law "the claimant must show that the defendant has knowingly received or obtained something of value for which the defendant in equity and good conscience should pay." Caldas v. Affordable Granite & Stone, Inc., 820 N.W.2d 826, 838 (Minn.2012) (internal quotation marks omitted); see also Khoday v. Symantec Corp., 858 F.Supp.2d 1004, 1019 (D.Minn.2012). A plaintiff must demonstrate not just that "one party benefits from the efforts or obligations of others" but "that a party was unjustly enriched in the sense that the term unjustly could mean illegally or unlawfully." Caldas, 820 N.W.2d at 838 (internal quotation marks omitted).
Issaenko's unjust enrichment claim arises out of her allegation that "Defendants have unlawfully received benefits from their misappropriation of Dr. Olga Issaenko['s] proprietary and Copyrighted Images and Works." (Am. Compl. ¶ 153.) Issaenko further alleges that "Defendants have been and continue to be, unjustly enriched by retaining the benefits they have received as a result of their unlawful conduct." (Id. ¶ 155.) Defendants argue that the unjust enrichment claim must also be dismissed because it too is preempted by the Copyright Act.
The majority of courts to consider the preemption question have determined that state unjust enrichment claims are preempted by the Copyright Act. See R.W. Beck, Inc. v. E3 Consulting, LLC, 577 F.3d 1133, 1148 (10th Cir.2009); Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296, 306 (2d Cir.2004); Murray Hill
These courts have concluded that, where unjust enrichment claims are based upon the violation of rights protected by the Copyright Act, they "sound[] squarely in copyright infringement" and are therefore preempted. Ott, 153 F.Supp.2d at 1067 (concluding that an unjust enrichment claim based on the allegation that "[b]y failing to compensate Plaintiffs for the use of their dolls and designs, Defendants have been unjustly enriched at the expense of Plaintiffs" was preempted because this claim was based on defendants' distribution and copying of plaintiffs' dolls (internal quotation marks omitted)); see also Pan-Am. Prods. & Holdings, 825 F.Supp.2d at 695 (concluding that an unjust enrichment claim was preempted where "[t]he central allegation is that Defendants used the copyrighted designs, through advertising, distribution and sales, and were enriched thereby. . . . The gravamen of this allegation . . . is that Defendants were unjustly enriched as a result of the wrongful exercise of Pan-American's § 106 rights."). Furthermore, these courts have concluded that, although actual enrichment is part of an unjust enrichment claim and such enrichment "is not required for copyright infringement," this slight difference between the claims does not go "far enough to make the unjust enrichment claim qualitatively different from a copyright infringement claim." Briarpatch Ltd., 373 F.3d at 306; see also Zito v. Steeplechase Films, Inc., 267 F.Supp.2d 1022, 1027 (N.D.Cal.2003) ("While a claim for unjust enrichment may require proof that a benefit was conferred on the defendant, where the unjust enrichment arises from defendants' unauthorized use of a copyrighted work, such an extra element does not qualitatively change the rights at issue, the rights the plaintiff holds in the copyrighted work, and does not avoid preemption.").
The Court finds the reasoning of these courts persuasive, and concludes that Issaenko's unjust enrichment claim is preempted by the Copyright Act as it essentially seeks recovery for Defendants' wrongful exercise of her rights protected under § 106 of the Act.
Issaenko argues that her unjust enrichment claim stands in "stark contrast" to the unjust enrichment claims involved in the above cited cases because it uses the term "misappropriation" and "does not state or involve `use,' `distribution,' or `reproduction.'" (Pl.'s Mem. in Opp'n to Mot. to Dismiss at 38.) But this is a distinction without a difference. Issaenko's unjust enrichment claim alleges that Defendants have received benefits from their "misappropriation" of the Copyrighted Works. Misappropriation means "to appropriate dishonestly for one's own
"To state a claim for promissory estoppel, the plaintiff must show that (1) there was a clear and definite promise, (2) the promisor intended to induce reliance and such reliance occurred, and (3) the promise must be enforced to prevent injustice." Park Nicollet Clinic v. Hamann, 808 N.W.2d 828, 834 (Minn.2011). Issaenko brings a claim for promissory estoppel alleging that "Defendant Bazzaro clearly, specifically, and definitely promised Dr. Olga Issaenko that if she disclosed her research, data, images and works they would jointly publish an article, crediting and recognizing Dr. Olga Issaenko as a first author, based on, among other things, Dr. Olga Issaenko's research, data, images and works." (Am. Compl. ¶ 192.) Issaenko alleges that she relied on the statement and was induced to produce her research based on this promise, but "Defendant Bazzaro broke her promise and breached her agreement with Dr. Olga Issaenko" by publishing an article on the topic Issaenko worked on "without listing Plaintiff as author." (Id. ¶¶ 193-195.)
Here, the Court concludes that Issaenko's allegations fall into the category of contract claims that are not preempted. Her promissory estoppel claim is not based on a promise merely to comply with the Copyright Act. Rather, her allegation is that Bazzaro specifically promised that Issaenko would be named first author on the joint published work if she disclosed certain research—a right that is not guaranteed by the Copyright Act. See Huckshold v. HSSL, L.L.C., 344 F.Supp.2d 1203, 1207 (E.D.Mo.2004) (allowing a breach of contract claim to go forward where "Plaintiff's first count requires not a showing . . . that HSSL copied its Software in violation of their agreement but that HSSL permitted a third party, Miller, to copy the Software in violation of their agreement."). Therefore, Issaenko's promissory estoppel claim is not preempted by the Copyright Act, and the Court will deny Defendants' motion to dismiss the claim to the extent it is brought against Bazzaro in her individual capacity.
Under Minnesota law, a defamation claim requires a plaintiff to show "that a statement was false, that it was communicated to someone besides the plaintiff, and that it tended to harm the plaintiff's reputation and to lower him in the estimation of the community." Rouse v. Dunkley & Bennett, P.A., 520 N.W.2d 406, 410 (Minn.1994). The basis of Issaenko's defamation claim is her allegation that Defendants made and sent statements and correspondence to Cell Cycle "which falsely stated that Defendants owned data and copyrighted information found in Dr. Olga Issaenko's scientific article . . . published in" Cell Cycle and that these statements were "calculated to and in fact did imply, connote, and insinuate that Dr. Olga Issaenko improperly took, appropriated, and used data and information allegedly belonging to Defendants." (Am. Compl. ¶ 159; see also id. ¶¶ 160, 162.) Issaenko also alleges that Defendants made defamatory statements when they failed to disclose to Cell Cycle that Issaenko had provided the at-issue data to Bazzaro (id. ¶ 161), and when they notified Cell Cycle that they had "confirmed ownership of data" in Issaenko's article (id. ¶ 163 (internal quotation marks omitted)). Issaenko also relies on Defendants' correspondence with the Journal of Molecular Cancer Therapeutics "falsely alleging that Dr. Olga Issaenko was under a `misconduct investigation' by the University of Minnesota." (Id. ¶ 164.) Issaenko additionally alleges "false statements in the Memorandum issued by Defendants on September 10, 2010 and circulated within the community that Dr. Olga Issaenko inappropriately used and/or shared data." (Id. ¶¶ 165-167.) Finally, Issaenko relies on other communications with Cell Cycle in which Defendants explained that Issaenko worked under Bazzaro's direction, some of the data for the paper was generated in Bazzaro's lab, and referred to Issaenko's notebooks as Bazzaro's notebooks. (Id. ¶¶ 169-174.) Issaenko contends that these false statements damaged her reputation. (Id. ¶¶ 177-178.).
Defendants argue that all of these defamation claims must be dismissed because they are barred by the statute of limitations. Under Minnesota law, a two-year statute of limitations applies to claims for defamation. See Minn.Stat. § 541.07(1) (providing that actions "for libel [and] slander . . . whether based on contract or tort" must be commenced within two years); see Church of Scientology of Minn. v. Minn. State Med. Ass'n Found., 264 N.W.2d 152, 154 (Minn.1978) (applying the 2-year limitations period in Minn.Stat. § 541.07 to a defamation claim). The statute of limitations on defamation claims "begins to run when the allegedly defamatory material is published." Church of Scientology of Minn., 264 N.W.2d at 154-55. Issaenko filed her complaint on December 23, 2013, so statements made before December 23, 2011 are not actionable. Additionally, because the only Defendant that is properly subject to liability for state law claims is Bazzaro to the extent she is sued in her individual capacity, the statements alleged to have been made after December 23, 2011, must be attributable to Bazzaro.
The Court concludes that Issaenko's First Amended Complaint does not allege any defamatory statements made by Bazzaro after December 23, 2011, and therefore the defamation claims must be dismissed on statute of limitations
The Second Amended Complaint adds new factual allegations to Issaenko's defamation claim and also seeks to bring the claim against Individual Defendants Hanson, Carson, Yee, LeBien, and Lawrenz in their individual capacities. For clarity, the Court will discuss the claims against each Defendant individually.
With respect to Defendant Hanson, the Second Amended Complaint contains no allegations that Hanson was responsible for the publication of any defamatory statements. Accordingly, amendment of the complaint to assert a defamation claim against Defendant Hanson would be futile.
With respect to Defendant Carson, the Second Amended Complaint alleges only that Carson made defamatory statements in writing in 2010 and 2011. (Second Am.
As for the allegations against Defendant Yee, the Second Amended Complaint alleges generally that:
(Second Am. Compl. ¶¶ 92-93, 166-167 (citing id., Ex. 29).) As support for these allegations, the Second Amended Complaint cites to Exhibit 29, which contains the collection of emails that supposedly contained the "repeated, circulated, and publicized" defamatory material. (See Second Decl. of Damon L. Ward, Ex. 29 at 9-17, June 5, 2014, Docket No. 41.)
In the Second Amended Complaint Issaenko brings claims against LeBien and Lawrenz that are identical to the defamation alleged against Yee. These claims are futile for the same reasons discussed above. First, the emails cited in the Second Amended Complaint contain no emails sent by either LeBien or Lawrenz, nor do any of the emails fall within the statute of limitations. (See, e.g., Second Am. Compl. ¶¶ 166-167, Ex. 29.) Second, Issaenko has failed to allege that LeBien and Lawrenz knew or had reason to know that Bazzaro's statement that Issaenko was under a misconduct investigation was defamatory.
Although not a model of clarity, the Second Amended Complaint also appears to base the defamatory claims against LeBien and Lawrenz on letters and a report sent to Cell Cycle in April 2013. (See, e.g., Second Am. Compl. ¶¶ 177-180, Ex. 28 at 5-8.) In the report, LeBien and Lawrenz state that in response to the publication of Issaenko's paper in Cell Cycle they
(Id., Ex. 28 at 6.) The report then includes conclusions drawn by LeBien and Lawrenz as to the origin of the tables and figures and their similarity to the work conducted in Bazzaro's laboratory. (Id., Ex. 28 at 6-8.) The report concludes that
(Id., Ex. 28 at 8 (emphasis omitted).)
The Court concludes that even to the extent this report could be construed as containing false or defamatory statements, the report does not support a defamation claim because, based on the allegations in the Second Amended Complaint, the statements in it made by LeBien and Lawrenz are protected by qualified privilege. "One who makes a defamatory statement will not be held liable if the statement is published under circumstances that make it qualifiedly privileged and if the privilege is not abused." Bol v. Cole, 561 N.W.2d 143, 149 (Minn.1997); see also Minke v. City of Minneapolis, 845 N.W.2d 179, 182 (Minn.2014) (noting that "qualified privilege bars liability only if the `defamatory statements are publicized in good faith and without malice'") (quoting Matthis v. Kennedy, 243 Minn. 219, 67 N.W.2d 413, 416 (1954)). "Qualified privilege applies when a court determines that statements made in particular contexts or on certain occasions should be encouraged despite the risk that the statements might be defamatory." Bol, 561 N.W.2d at 149 (internal quotation marks omitted); see also McClure v. Am. Family Mut. Ins. Co., 223 F.3d 845, 854 (8th Cir.2000). "For a defamatory statement to be protected by
The existence of a qualified privilege "is a matter of law for the court." Bahr v. Boise Cascade Corp., 766 N.W.2d 910, 920 (Minn.2009). As the Eighth Circuit has explained:
Sherman v. Rinchem Co., 687 F.3d 996, 1008 (8th Cir.2012) (quoting Keenan v. Computer Assocs. Int'l, Inc., 13 F.3d 1266, 1269-70 (8th Cir.1994)). Whether qualified privilege protects a defendant is therefore appropriately considered at the motion to dismiss stage, where, accepting as true the allegations in the complaint, the existence of privilege is apparent from the face of the complaint. See, e.g., Elkharwily v. Mayo Holding Co., 955 F.Supp.2d 988, 1000 (D.Minn.2013) (determining that qualified privilege applied to the defamatory statements alleged in plaintiff's complaint and granting a motion to dismiss because plaintiff had failed to plead facts which, if true, would demonstrate that defendants had lost the privilege by making statements with actual malice).
"`Statements made in the course of investigating or punishing employee misconduct are generally privileged, based on the employer's interest in protecting against harmful employees.'" Sherman, 687 F.3d at 1008 (internal quotation marks omitted) (quoting Rudebeck v. Paulson, 612 N.W.2d 450, 453 (Minn.Ct. App.2000)). "`Communications between an employer's agents made in the course of investigating or punishing employee misconduct are made upon a proper occasion and for a proper purpose, as the employer has an important interest in protecting itself and the public against dishonest or otherwise harmful employees.'" Id. (emphases omitted) (quoting McBride v. Sears, Roebuck & Co., 306 Minn. 93, 235 N.W.2d 371, 374 (1975)). In determining whether an employer had reasonable and probable grounds for making the statements in question, the court considers "whether the employer took investigative steps" and the "nature and extent of the investigation." Rudebeck, 612 N.W.2d at 454.
The Court concludes that the allegations in the Second Amended Complaint demonstrate, as a matter of law, that LeBien and Lawrenz are entitled to a qualified privilege in connection with the statements they made to Cell Cycle regarding the Copyrighted Works. With respect to whether the statements were made on a proper occasion and for a proper purpose, the Court acknowledges that the communications with Cell Cycle were not the type of
Additionally, the Court concludes that the allegations in the Second Amended Complaint demonstrate that LeBien and Lawrenz engaged in an adequate investigation that was sufficient to provide them with reasonable or probable cause to make the at-issue statements. Specifically, the Second Amended Complaint alleges that LeBien, Lawrenz, and Bazzaro reviewed the manuscript Issaenko submitted to Cell Cycle and compared each table and figure to materials found in Bazzaro's lab prior to drawing conclusions about the propriety of Issaenko's use of the materials. (Second Am. Compl., Ex. 28.) See Walker v. Wanner Eng'g, Inc., 867 F.Supp.2d 1050, 1055 (D.Minn.2012) (finding an investigation "sufficiently thorough" to provide defendants with "reasonable or probable cause for the statements at issue" as a matter of law where "the alleged defamatory statements were made on the basis of a reasonable investigation which included an eyewitness statement, investigation conducted by three different employees, and the Purchase Ticket Profile verifying that Walker had repeatedly taken scraps to Realliance Steel."). Therefore, the Court concludes that LeBien and Lawrenz are entitled to qualified privilege for their statements made to Cell Cycle.
In order to defeat application of the privilege, Issaenko would have to demonstrate
In the Second Amended Complaint Issaenko brings claims against Bazzaro for statements that occurred in September and October 2011. (Second Am. Compl. ¶¶ 163-165.) But these claims are futile because they are barred by the two-year statute of limitations. Next Issaenko alleges that Bazzaro recirculated these emails to others in January 2012. These claims are also futile, as explained above, because the emails allegedly containing the defamatory statements were all sent well before December 23, 2011. (See, e.g., id. ¶¶ 166-167, Ex. 29.)
Additionally, Issaenko brings claims against Bazzaro based on defamatory statements of Bazzaro that are allegedly contained in the investigation submitted to Cell Cycle by LeBien and Lawrenz. (Id. ¶¶ 177-179.) There are only two statements actually attributed to Bazzaro in the investigation submitted to Cell Cycle. The first is a statement describing the content of a figure, which Issaenko does not allege was false. (Id., Ex. 28 at 6 ("Dr. Bazzaro said that Figure 2 shows that the compounds AM-146, RA-9, and RA-14 are different from RA-4 and that similar data has been published.").) The second is a statement that "Dr. Bazzaro believes that Dr. Issaenko likely conducted the experiments and acquired the data in the Bazzaro laboratory, but then did the analysis to produce these Figures elsewhere." (Id., Ex. 28 at 7.) But at most this is a statement of an opinion, not a false statement of fact needed to support a defamation claim. See Metge v. Cent. Neighborhood Improvement Ass'n, 649 N.W.2d 488, 498 (Minn.Ct.App.2002) (concluding that an online "posting represents a statement of opinion and does not contain. . . an omission or juxtaposition of facts as would be necessary to establish genuine issues of material fact for defamation by implication").
Finally, Issaenko claims that Bazzaro's defamatory statements from September and October 2011 were republished when Issaenko filed the present complaint, and were again republished by the Star Tribune in an article reporting on the instant lawsuit, and therefore a new statute of limitations began to run from the time of this lawsuit and that publication. (Second Am. Compl. ¶ 184.) As explained above, a plaintiff cannot avoid the running of the statute of limitations on a defamation claim by filing a lawsuit regarding the defamatory statements. Accordingly, the Court concludes that amendment with respect to this claim would be futile, as the statute of limitations has run.
With respect to her tortious interference claim, Issaenko alleges that at all relevant times she "was poised to secure grants, publication of results, and employment based upon her scientific discoveries" but that
(Am. Compl. ¶¶ 182-183.) With respect to specific opportunities, Issaenko alleges that she applied for and was almost offered positions with two professors at the University, but they withdrew the offers shortly after reviewing Issaenko's personnel file and speaking with Bazzaro. (Id. ¶¶ 184-186.) Finally, Issaenko alleges that she "enjoyed a reasonable expectation of economic advantage or benefit in her employment, publishing opportunities, and securing grants" and that "Defendants knew or should have known of [her] reasonable expectations." (Id. ¶¶ 187-188.)
Minnesota law recognizes two separate torts relating to interference with economic relations: (1) interference with an existing contract; and (2) interference with a prospective business relation. See Hern v. Bankers Life Cas. Co., 133 F.Supp.2d 1130, 1137 (D.Minn.2001). In order to state a claim for tortious interference with prospective business relations, a plaintiff must show: (1) the existence of a reasonable expectation of economic advantage or benefit belonging to plaintiff; (2) that defendants had knowledge of that expectation; (3) that defendants wrongfully and without justification interfered with plaintiff's reasonable expectation; (4) that in the absence of the defendant's wrongful act, it is reasonably probable that plaintiff would have realized the economic advantage or benefit; and (5) that plaintiff sustained damages. Cenveo Corp. v. S. Graphic Sys., Inc., 784 F.Supp.2d 1130, 1137-38 (D.Minn.2011); Harbor Broad., Inc. v. Boundary Waters Broadcasters, Inc., 636 N.W.2d 560, 569 (Minn.Ct.App.2001).
Defendants argue that this claim must be dismissed because in actuality it seeks to challenge employment decisions of the University—specifically the decisions of the two professors at the University that declined to hire Issaenko after her position with Bazzaro had been terminated—and therefore should have been brought through a petition for writ of certiorari to the Minnesota Court of Appeals. See Shaw v. Bd. of Regents of Univ. of Minn., 594 N.W.2d 187, 190-91 (Minn.Ct.App.1999);
The Court concludes that here, at least a portion of Issaenko's tortious interference claim is viable. Issaenko's claim focuses primarily on Bazzaro's conduct in hindering Issaenko's economic opportunities, and does not only seek to challenge the failure of two professors to hire her. Issaenko also includes allegations that Defendants blocked her article from being published, blocked potential employment opportunities generally, and induced others not to enter into publication agreements or research arrangements with Issaenko. (Am. Compl. ¶ 183.) Because many of these allegations do not require inquiry into the discretionary decisions of two professors not to hire Issaenko, the Court concludes that the claim is not subject to dismissal. The Court notes that, for purposes of this motion, and in light of Issaenko's lengthy and somewhat repetitive allegations, it need not parse each of Issaenko's allegations to determine precisely which alleged conduct states a claim for tortious interference and which does not. It is sufficient at this stage to determine, as the Court has, that some aspects of Issaenko's allegations state a plausible claim for relief and therefore are sufficient to survive a motion to dismiss.
Defendants also argue that the tortious interference claim must be dismissed because "there is no cause of action for tortious interference against any employee of the contracting party absent a showing that the interfering actions were predominantly committed in bad faith." (Defs.' Mem. in Supp. of Mot. to Dismiss at 31.) As support Defendants cite Nordling v. Northern States Power Co., 478 N.W.2d 498 (Minn.1991), which held "that a company officer, agent or employee is privileged to interfere with or cause a breach of another employee's employment contract with the company, if that person acts in good faith, whether competently or not, believing that his actions are in furtherance of the company's business." Id. at 507. As explained above, however, Issaenko's tortious interference claim alleges more than Bazzaro's interference with Issaenko's contracts with the University. Instead, the allegations encompass other lost employment, publishing, and research opportunities. Accordingly, the Court will deny Defendants' motion to dismiss the tortious interference claim to the extent it
Although the Second Amended Complaint contains no new factual allegations specifically targeted at the tortious interference claim, it does seek to bring suit against the Individual Defendants in their individual capacities. And the tortious interference claim includes allegations that Defendants' actions in communicating with Cell Cycle caused Issaenko to lose economic opportunities. In the Second Amended Complaint Issaenko specifies that Defendants LeBien and Lawrenz authored these communications. Because Defendants have offered no argument that the tortious interference claim related to the Cell Cycle article are deficient, the Court concludes that these allegations are sufficient to state a claim against these two defendants in their individual capacities.
Issaenko brings a motion for a preliminary injunction "to protect her proprietary content during the pendency of the lawsuit." (Pl.'s Mem. in Supp. of Mot. for Prelim. Inj. at 3, June 6, 2014, Docket No. 43.) "A preliminary injunction is an extraordinary remedy. . . ." Watkins Inc. v. Lewis, 346 F.3d 841, 844 (8th Cir.2003). The Court considers four factors in determining whether to issue a preliminary injunction: (1) the probability that the moving party will succeed on the merits; (2) the threat of irreparable harm to the moving party; (3) the balance of harms as between the parties; and (4) the public interest. See Roudachevski v. All-Am. Care Ctrs., Inc., 648 F.3d 701, 705 (8th Cir.2011) (citing Dataphase Sys., Inc. v. CL Sys., Inc., 640 F.2d 109, 114 (8th Cir.1981)). "At base, the question is whether the balance of equities so favors the movant that justice requires the court to intervene to preserve the status quo until the merits are determined." Dataphase Sys., Inc., 640 F.2d at 113. The burden of establishing the propriety of an injunction is on the movant. Watkins, Inc., 346 F.3d at 844.
As to the first factor, Issaenko, as the moving party, must show that she has a "fair chance of prevailing" on her claims. Planned Parenthood Minn., N.D., S.D. v. Rounds, 530 F.3d 724, 732 (8th Cir.2008) (en banc). Likelihood of success does not, however, require the moving party to "`prove a greater than fifty percent likelihood that [s]he will prevail on the merits.'" PCTV Gold, Inc. v. SpeedNet, LLC, 508 F.3d 1137, 1143 (8th Cir.2007) (quoting Dataphase Sys., Inc., 640 F.2d at 113). In considering whether a movant is likely to prevail on the merits, "a court does not decide whether the movant will ultimately win." Id.
Even if Issaenko had shown a likelihood of success on the merits of her copyright claim, the Court would conclude that injunctive relief is not appropriate here because Issaenko has not demonstrated irreparable harm. To demonstrate irreparable harm, "a party must show that the harm is certain and great and of such imminence that there is a clear and present need for equitable relief." Iowa Utils. Bd. v. FCC, 109 F.3d 418, 425 (8th Cir.1996). Issaenko alleges that Defendants' continued use of the Copyrighted Works is causing her irreparable harm because she "is no longer able to control access to, and the distribution of, her works to the public," and that Defendants' "infringing conduct impermissibly and unfairly diverts publishers [and] grant funders, away from Plaintiff's grant applications, scholarly articles, and scientific accomplishments by offering near identical content." (Pl.'s Mem. in Supp. of Mot. for Prelim. Inj. at 35.) Issaenko's claims of irreparable harm are belied by the fact that the conduct she complained of largely occurred in 2010 and 2011 but she did not bring this suit until December of 2013, and just filed a motion for injunctive relief in June 2014, without identifying any changes in the circumstances of Defendants' use of the Copyrighted Works. This delay indicates that Issaenko has not demonstrated irreparable harm. See Novus Franchising v. Dawson, 725 F.3d 885, 895 (8th Cir.2013) (affirming district court's finding that movant failed to show irreparable harm because in part based on movant's "failure to seek injunctive relief for a period of seventeen months after Dawson quit paying royalties"); CHS, Inc. v. PetroNet, LLC, Civ. No. 10-94, 2010 WL 4721073, at *3 (D.Minn. Nov. 15, 2010) (denying a request for injunctive relief where plaintiff waited more than eight months to file for an injunction after knowing of the alleged behavior giving rise to an injury, explaining "that delay in seeking relief `vitiates much of the force of. . . allegations of irreparable harm'" (quoting Beame v. Friends of the Earth, 434 U.S. 1310, 1313, 98 S.Ct. 4, 54 L.Ed.2d 23 (1977))). Because the failure to show irreparable harm is itself a sufficient ground for denial of injunctive relief, see Watkins Inc. v. Lewis, 346 F.3d 841, 844 (8th Cir.2003), the Court will deny Issaenko's motion for a preliminary injunction.
Based on the foregoing, and all the files, records, and proceedings herein,
2. Plaintiff's Motion for Preliminary Injunction [Docket No. 36] is
3. Plaintiff's Motion for Leave to Amend Plaintiff's First Amended Complaint [Docket No. 38] is
4. Plaintiff's Motion to Strike Defendants' Memorandum in Opposition to Plaintiff's Motion for Leave to File Second Amended Complaint [Docket No. 58] is
