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Energy Intelligence Group, Inc. v. CHS McPherson Refinery, Inc.

United States District Court, D. Kansas

March 14, 2018

ENERGY INTELLIGENCE GROUP, INC. and ENERGY INTELLIGENCE GROUP UK LIMITED, Plaintiffs,
v.
CHS McPHERSON REFINERY, INC. F/K/A A NATIONAL COOPERATIVE REFINERY ASSOCIATION, Defendant.

          MEMORANDUM AND ORDER

          ERIC F. MELGREN UNITED STATES DISTRICT JUDGE.

         Plaintiffs Energy Intelligence Group, Inc., and Energy Intelligence Group (UK) Limited (collectively “EIG”) have sued CHS McPherson Refinery, Inc. (“the Refinery”) for copyright infringement. There are four motions pending before the Court. The Refinery has moved for partial summary judgment (Doc. 52) seeking to limit EIG's claims based on the three-year statute of limitations and seeking to limit EIG's request for statutory damages. In response to this motion, EIG has filed a cross-motion for summary judgment (Doc. 67) regarding EIG's statutory damages request. In addition, EIG has moved for partial summary judgment (Doc. 100) seeking to dismiss the Refinery's affirmative defenses and has filed a Motion Challenging the Admissibility of Expert Report and Testimony of William Rosenblatt (Doc. 86). For the reasons stated below, the Court denies the Refinery's motion for partial summary judgment, grants EIG's cross motion for summary judgment, grants in part and denies in part EIG's motion for partial summary judgment, and grants EIG's motion to exclude the expert testimony and report of Rosenblatt.

         I. Factual and Procedural Background

         A. EIG's Publications and Copyright Registrations

         EIG sells subscriptions to many publications, two of which include Oil Daily and Petroleum Intelligence Weekly. EIG sells at least three types of subscriptions to its publications: (1) a single subscription; (2) multiple subscriptions; and (3) a Global Enterprise License, which includes up to 15 publications and six databases. In addition to its subscriptions, EIG allows readers to access individual articles or issues on a pay-per-view basis.

         Within EIG, account managers are required to make periodic calls on their assigned accounts to, among other things, look for opportunities to increase the number of subscriptions an individual or company might hold. Account managers are assigned to both large and small accounts. One of EIG's account managers who specializes in small accounts is Derrick Dent. Dent managed the Refinery's account with EIG beginning in 2009.

         Since 2006, Deborah Brown-an account services manager at EIG-has filed EIG's copyright applications with the U.S. Copyright Office. During that time, EIG registered Oil Daily using Form G/DN. From 2006 to 2008, Brown checked the “Compilation” box in the “Author's Contribution” section of Form G/DN, as well as the “text” and “editing” boxes in the group applications. In 2008, she stopped checking the “Compilation” box but continued checking the “text” and “editing” boxes. From 2004 to 2016, EIG registered Petroleum Intelligence Weekly as a collective work using Form SE/Group.

         B. EIG's Copyright Enforcement

         EIG began enforcing its copyrights and pursuing potential copyright infringement litigation around 2005. At that time, EIG's president, Tom Wallin, proposed copyright enforcement as a potential revenue stream, comprised of both legal settlement and improved subscription revenues due to better compliance by subscribers. In 2007, EIG ramped up its copyright enforcement tactics by issuing copyright notices on its publications, implementing new procedures for monitoring and enforcing its copyrights, and running “password abuse” reports designed to “pick out users with the most suspicious behavior.” When EIG uncovered information indicating infringement by its large clients, EIG believed that it should pursue remedies for that infringement, including litigation. This aggressive approach was supported by EIG's board of directors and ownership.

         In 2010, EIG hired John Hitchcock as managing director. On February 23, 2010, he emailed his team a memorandum “which represented[ed] a ratcheting-up of [EIG's] efforts to thwart copyright abuse.” In the memorandum, EIG rolled out its bonus plan, calling upon the “sales force and customer service representatives to act as another line of defense in identifying incidents of unauthorized use among [its] customers.” The plan required all documented information of suspicious activity or direct evidence of unauthorized usage to be reported immediately to Hitchcock. Under these policies, if management determines that there are ambiguous circumstances as to whether unauthorized copying occurred, the account representative is instructed to contact the customer and ask them to confirm the scope of their usage of EIG's publications.

         If an EIG salesperson reports suspicious behavior to management and EIG initiates a lawsuit based on such reporting, then EIG pays that salesperson $5, 000. If the lawsuit leads to a settlement or court-ordered award, EIG then pays the salesperson an additional $5, 000. Since 2005, EIG has vigilantly protected its copyrights and aggressively enforced them after discovering overt evidence of infringement.

         C. The Refinery's Subscription to Oil Daily and Petroleum Intelligence Weekly

         The Refinery purchased a subscription to Oil Daily beginning in 1992 and renewed it annually until it allowed the subscription to expire on or around May 15, 2015. The Refinery received Oil Daily by print delivery until 1999 when it elected to receive it electronically. EIG directed its subscription renewals to Galen Menard, who was the Refinery's Vice-President of Supply & Trading. Refinery employee LeAnn Flickinger, who was Menard's assistant, received the publication through an email sent by EIG with the publication attached. Flickinger forwarded the email with the attached publication to Menard and other Refinery employees daily.

         The Refinery first subscribed to Petroleum Intelligence Weekly in 1982 and renewed it annually until it allowed the subscription to expire on or around June 13, 2016. The Refinery received the publication by print delivery until approximately 2002 when EIG moved from print delivery to electronic delivery. From 2005 to 2011, EIG directed its renewal subscriptions to Refinery employee Kathy Swanson. Swanson served as an assistant to James Loving, who was the Refinery's president. Swanson downloaded issues of Petroleum Intelligence Weekly and distributed it to multiple Refinery employees including Loving. When Swanson retired in June 2012, her responsibilities regarding the publication were assumed by Deborah Ratzloff.

         Both Oil Daily and Petroleum Intelligence Weekly contained copyright notices and warnings. In addition, EIG included a copyright notice and warning on the weekly emails it sent notifying the Refinery that a new issue was available.

         D. Communications between the Refinery and EIG

         On September 25, 2007, Menard sent an email to Loving, which stated:

The Oil Daily is produced by the same company as Energy [sic] Intelligence Weekly. Please note the copyright pronouncement below for the Energy Intelligence Group.
We will need to discontinue the e-mailing of the Oil Daily until a decision is made as to our subscription and the cost of retaining service to the list that currently receives the publication.

         Five months later, on February 26, 2008, Flickinger emailed 11 Refinery employees, including Menard and Loving, stating: “I will no longer be forwarding the Energy Oil Daily report out every morning due to Energy Oil Daily's copyright policy.” That same day, in response to an inquiry from a Refinery employee about Oil Daily's ongoing availability, Menard told the employee that he was going to attempt to negotiate with EIG regarding a group discount and that he would make sure copies were available until the situation was resolved.

         The following day, on February 27, Menard emailed EIG Customer Service indicating that he would like to discuss the costs associated with adding up to 10 users within the Refinery for Oil Daily. EIG responded with a pricing schedule that indicated that five users would cost $7, 863.00 annually and that 10 users would cost $14, 708 annually. Menard then notified the Refinery employees of the quoted prices and stated that he was reluctant to increase the Refinery's subscription because the prices were “highway robbery.” Menard further stated that he would continue to negotiate with EIG for better rates but that EIG did not seem interested in lowering its prices.

         Menard followed up with EIG on April 2, and again on April 3, requesting pricing for two or three additional users. On April 17, the Refinery received a renewal notice from EIG for its subscription to Oil Daily. The Refinery renewed that subscription on May 12.

         Almost four years later, on the morning of March 27, 2012, Flickinger forwarded Oil Daily to Menard and three other Refinery employees. Later that day, she spoke with EIG account manager Derrick Dent about the Refinery's subscription to Oil Daily. After their conversation, she sent Dent the following email:

As per our phone conversation, the Energy [sic] Oil Daily is forwarded to Galen Menard by me and if he is out it is forwarded to one of the other executives. I get the email since Galen is out of the office on occasions and then someone else in the Executive office can see the information.

         Pursuant to EIG's copyright infringement policy, Dent reported this information to Hitchcock. Two days later, on March 29, the Refinery renewed its Oil Daily subscription. The next day, Dent sent the following email:

Thank you for your recent renewal to Oil Daily. You are one of your [sic] valued subscribers and we appreciate your business. This is just a gentle reminder to inform you that our publications are licensed for use by the named authorized user as provided in the license (subscription) agreement for their sole use and are priced accordingly. All single user subscriptions such as yours are intended solely for the designated named recipient and not anyone else or any entire organization or group within it. A single user subscription cannot be shared by electronic means among multiple readers by forwarding or posting on an intranet, or by sharing of a log-in name and password. If access is required by other beyond the current subscription agreement, a multiple named user subscription could be purchased.

         No further action was taken by Dent or EIG. The Refinery did not stop forwarding Oil Daily or Petroleum Intelligence Weekly after receiving this email until June 2015.

         Three years later, on or about March 27, 2015, Dent contacted Menard for a routine sales call. During that call, Menard informed Dent that Flickinger distributed Oil Daily to himself and Loving. Dent contacted Menard after the two had spoken stating:

I would like to make clear that the terms of our subscription agreement with [the Refinery] for the Oil Daily publication do not permit the kind of usage you described during our phone call. Electronic forwarding of the publication creates copies that violate the terms of the subscription agreement and our copyrights in the publication.

         Nonetheless, Dent offered to discuss a license that would “be in keeping with the usage [the Refinery] is making of Oil Daily.”

         Menard responded on March 31, apologizing for the misunderstanding and requesting a quote for additional users. Dent did not respond to Menard's email. After conferring with counsel, EIG began to treat the Refinery's use of Oil Daily as a copyright infringement matter. On or about November 10, 2015, EIG pitched its “Global Enterprise License” to the Refinery.

         E. EIG Files Suit against the Refinery

         EIG filed this lawsuit against the Refinery on January 18, 2016, and filed an Amended Complaint on August 16. EIG claims that the Refinery engaged in copyright infringement by allegedly copying Oil Daily and Petroleum Intelligence Weekly and distributing copies of these publications to multiple Refinery employees in violation of the subscription agreements. The Refinery disputes these allegations and contends that EIG's claims are limited or barred by the following affirmative defenses: (1) the three year statute of limitations set forth in 17 U.S.C. § 507(b); (2) EIG's failure to mitigate damages; (3) the doctrine of copyright misuse; (4) the doctrine of implied license; (5) EIG has an adequate remedy at law; (6) EIG's claims fail to state a claim upon which relief may be granted; and (7) EIG's claims for statutory damages violate the due process requirements of the Fourteenth Amendment and/or Fifth Amendment.

         On July 17, 2017, the Refinery filed a motion for referral to the Register of Copyrights and a concurrent stay on the grounds that EIG knowingly included inaccurate information in its copyright applications for Oil Daily that, if known at the time of registration, would have caused the Register of Copyrights to refuse registration. The Court denied the Refinery's motion in a Memorandum and Order dated January 17, 2018. It concluded that the Refinery did not meet its burden to show that EIG included inaccurate information in its copyright applications or that even if EIG did include inaccurate information, it did not do so with knowledge that it was inaccurate.

         The Refinery has now moved for partial summary judgment seeking to limit EIG's claim based on the statute of limitations and its statutory damages request based on the number of registrations obtained versus the number of publications the Refinery received. In response, EIG filed a cross motion for summary judgment on the statutory damages issue. In addition, EIG has filed a motion for partial summary judgment on the Refinery's affirmative defenses two through seven listed above and a motion challenging the admissibility of the report and testimony of Rosenblatt-the Refinery's designated expert. All of these motions are ripe for the Court's consideration.

         II. Legal Standard

         Summary judgment is appropriate if the moving party demonstrates that there is no genuine issue as to any material fact, and the movant is entitled to judgment as a matter of law.[1] A fact is “material” when it is essential to the claim, and issues of fact are “genuine” if the proffered evidence permits a reasonable jury to decide the issue in either party's favor.[2] The movant bears the initial burden of proof and must show the lack of evidence on an essential element of the claim.[3]If the movant carries its initial burden, the nonmovant may not simply rest on its pleading but must instead “set forth specific facts” that would be admissible in evidence in the event of trial from which a rational trier of fact could find for the nonmovant.[4] These facts must be clearly identified through affidavits, deposition transcripts, or incorporated exhibits-conclusory allegations alone cannot survive a motion for summary judgment.[5] The Court views all evidence and reasonable inferences in the light most favorable to the party opposing summary judgment.[6]

         Though the parties in this case filed cross-motions for summary judgment, the legal standard remains the same.[7] Each party retains the burden of establishing the lack of a genuine issue of material fact and entitlement to judgment as a matter of law.[8] Each motion will be considered separately.[9] To the extent the cross-motions overlap, however, the court may address the legal arguments together.[10]

         III. Analysis

         A. The Refinery's Motion for Partial Summary Judgment (Doc. 52) and EIG's Cross Motion for Summary Judgment (Doc. 67)

         The Refinery seeks partial summary judgment on two grounds. First, the Refinery seeks summary judgment on EIG's copyright infringement claims occurring before January 18, 2013, arguing that these claims are barred by the statute of limitations. Second, the Refinery seeks summary judgment on EIG's claim that if it is liable for copyright infringement it is entitled to statutory damages for each individual publication infringed from 2004 to 2016. EIG has filed a cross motion for summary judgment on the statutory damages issue.

         1. Statute of Limitations

         A claim for copyright infringement must be brought “within three years after the claim accrued.”[11] The Tenth Circuit has long applied the discovery rule of accrual in the copyright context, meaning that the claim accrues when the copyright owner has “knowledge of a violation or is chargeable with such knowledge.”[12] The Supreme Court, however, recently discussed the limitations period in Petrella v. Metro-Goldwyn-Mayer, Inc., in an opinion holding that the equitable defense of laches does not apply to claims for copyright infringement brought within the statute of limitations.[13] In discussing the applicable statute of limitations, the Supreme Court applied the incident of injury rule, meaning that the claim accrues when the infringement occurs.[14]The Supreme Court acknowledged that a majority of circuits use the discovery rule and noted that the Court has “not passed on the question, ” but proceeded to analyze the case under the incident of injury rule.[15]

         Since Petrella, district courts have wrestled with its implication on the use of the discovery rule in copyright infringement cases. Many of the district courts who have examined Petrella have concluded that the Supreme Court did not intend to abrogate the discovery rule in that case.[16] Furthermore, in a subsequent case, SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., [17] the Supreme Court made the following statement regarding Petrella:

While some claims are subject to a discovery rule under which the limitations period begins when the plaintiff discovers or should have discovered the injury giving rise to the claim, that is not a universal feature of statutes of limitations. . . . And in Petrella, we specifically noted that we have not passed on the question whether the Copyright Act's statute of limitations is governed by such a rule.[18]

         This statement appears to confirm that the Supreme Court has not determined whether the discovery rule or the incident of injury rule applies when calculating the statute of limitations in a copyright infringement case. Neither party in this case has addressed Petrella or its applicability. Because this Court is bound to apply Tenth Circuit law, it will apply the discovery rule in this case.

         A copyright infringement claim accrues when the copyright owner has actual knowledge or constructive knowledge of the infringement.[19] It is easy to determine the limitations period when a copyright owner has actual knowledge. Accrual begins with the acquisition of that knowledge and is determined based on the passage of time.[20] But, in the absence of actual knowledge, the question becomes “when a reasonably prudent person in the plaintiff's shoes would have discovered (that is, would have acquired an awareness of) the putative infringement.”[21] The defendant bears the burden of proof in this “fact-intensive inquiry.”[22]

         EIG filed its Complaint on January 18, 2016. The Refinery argues that EIG cannot recover damages for any act of infringement three years before this date, i.e. January 18, 2013, because EIG knew or should have known of the Refinery's alleged infringement at least as early as 2008 and at the latest in 2012. According to the Refinery, EIG had constructive knowledge that it was forwarding Oil Daily in 2008 and it had actual knowledge that it was forwarding the publication in 2012. The Refinery also asserts that EIG had constructive notice that the Refinery was forwarding Petroleum Intelligence Weekly at least as early as 2012.

         a. EIG's Knowledge of the Refinery's Use of Oil Daily in 2008

         The Refinery argues that when EIG received an email from Menard in 2008 asking how much it would cost to increase his subscription by ten, EIG, acting as a reasonably diligent plaintiff under the circumstances, should have investigated the Refinery's use of Oil Daily. The Refinery seeks to hold EIG to a higher standard of care than a reasonably prudent person. The Refinery contends that EIG has specialized knowledge about what constitutes copyright infringement due to its enforcement efforts that it established in 2005 and that it must exercise “a quantum of care which is commensurate with the circumstances.” Thus, the Refinery argues that EIG, as a company with specialized knowledge of copyright infringement, failed to act reasonably and diligently when it did not investigate Menard's request to increase the Refinery's subscription. The Court disagrees.

         First, the Court declines to impose a more stringent standard other than that of a reasonably prudent person. The Refinery has cited no case law in the copyright context indicating that EIG should be held to have “special knowledge” about copyright infringement because of its enforcement policies. The cases the Refinery relies on involve negligence during a skiing accident and an illness contracted while manufacturing airplane instruments, not copyright infringement.[23]If the Court were to apply this standard it would contravene well-established law regarding the discovery rule.

         With regard to EIG's knowledge in 2008, a reasonable fact-finder could conclude that Menard's email in 2008 was not sufficient to trigger a duty to investigate further. A customer's inquiry into increasing the number of subscriptions does not in and of itself provide a basis for constructive knowledge of infringement.[24] While Menard's request may have been motivated by his knowledge that the Refinery was forwarding Oil Daily beyond what was allowed in the subscription agreement, this knowledge is not imputed to EIG simply from an email exchange asking to increase subscriptions. Furthermore, even if Menard's email triggered an investigation by EIG, it is not likely that EIG would have discovered that the Refinery was forwarding Oil Daily to employees beyond Menard. EIG had no access to the Refinery's email system or computer network. The only way EIG could have learned of the infringement would be if the Refinery told it that it was copying and distributing Oil Daily to multiple employees. Thus, based on the evidence before the Court, a reasonable fact-finder could conclude that a reasonably prudent person in EIG's shoes would not have discovered the Refinery's infringement in 2008.

         b. EIG's Knowledge of the Refinery's Use of Oil Daily in 2012

         In the alternative, the Refinery contends that EIG had actual or at least constructive knowledge of the Refinery's alleged infringement in March 2012 when Flickinger emailed Dent telling him that she received Oil Daily through her email account, that she forwarded the publication to Menard daily, and on occasion, when Menard was gone, she forwarded it to another Refinery executive. The Refinery claims that there are several critical facts that weigh in favor of granting summary judgment, including (1) Dent's reporting of Flickinger's March 27, 2012, email to EIG's in-house counsel under EIG's copyright enforcement policy; (2) Dent's email to Flickinger reiterating the terms of the Refinery's subscription and warning her that electronic forwarding of the publication violates the subscription agreement; and (3) Dent's testimony that EIG was placed on a potential litigation hold list in 2012.

         EIG argues in response that there is a genuine issue of material fact regarding whether it had actual or constructive knowledge in 2012. In response to Flickinger's email regarding her forwarding practices of Oil Daily, EIG offers evidence of its long-standing policy that access by assistants for the purpose of sending a publication to a supervisor is not an unauthorized use. EIG argues that practically speaking, it is not concerned with the number of readers of a single copy of a given subscription, but the number of copies made. It also cites its policy that a printed copy of a publication may be placed in a library and read by multiple individuals. Accordingly, EIG claims Flickinger's practice of forwarding Oil Daily to Menard did not violate the subscription agreements. EIG also claims that Flickinger's practice of forwarding Oil Daily to another executive when Menard is absent conforms with the Refinery's subscription because on those days, only one subscribed copy would have been used by the Refinery-the copy that went to Menard simply went to another executive.

         EIG also offers the declaration of Thomas Wallin, EIG's Executive Vice President and Editor-In-Chief. Wallin explained that under EIG's policy, customer service employees are instructed to report any suspicious circumstance regarding a customer's unauthorized use of a publication. If the circumstances indicate unauthorized copying, the sales director will report them to senior management who will decide what steps to be taken. If the circumstances are ambiguous, the account representative is required to contact the customer and ask them to confirm their scope of usage. If the customer confirms that they are using EIG's publication in an authorized manner, and there is no further evidence, then EIG concludes its investigation. Here, because Dent's inquiry to Flickinger showed nothing more than the fact that she normally emailed Oil Daily to Menard, this concluded EIG's investigation of the matter.

         EIG also points out that although Dent testified that the Refinery was placed on a potential litigation list, Dent also testified that he was not aware whether the Refinery was placed on that list in 2012 or in 2015. Furthermore, Hitchcock stated in his declaration that no Potential Litigation Hold Notice involving the Refinery existed before 2015.

         Based on this evidence, the Court cannot conclude as a matter of law that EIG had actual or constructive notice of the Refinery's alleged infringement in 2012. “Generally, the reasonableness of [the] plaintiffs' actions, including the reasonableness of inquiring or failing to inquire, is a fact question for the jury.”[25] Flickinger's email stated that she forwarded Oil Daily to Menard daily and when he was absent she forwarded it to another Refinery executive. EIG claims that based on its policies this conduct was not infringing and thus it had no reason to know of the Refinery's alleged infringement. But, when Dent emailed Flickinger two days later, he informed her that the publication is only licensed for use by “the designated named recipient and not anyone else or any entire organization” and that the subscription could not be shared electronically by forwarding. Thus, there is a genuine issue of material fact as to whether EIG knew or had reason to know that infringement was occurring in March 2012. The Court denies summary judgment on this issue as to the Refinery's alleged infringement of Oil Daily.

         c. EIG's Knowledge regarding the Refinery's Use of Petroleum Intelligence Weekly

         Finally, the Refinery argues that EIG had constructive knowledge of the Refinery's alleged infringement of Petroleum Intelligence Weekly based on Flickinger's March 27, 2012, email to Dent. But, Flickinger's email is silent regarding Petroleum Intelligence Weekly, and throughout its relationship with EIG, different Refinery employees accessed the publications. Moreover, as discussed above, the Court could not conclude as a matter of law that EIG had actual or constructive knowledge of Oil Daily based on Flickinger's email, and thus this lack of evidence cannot be used to impute knowledge on EIG regarding Petroleum Intelligence Weekly. Based on the summary judgment evidence, there is genuine issue of material fact as to whether EIG knew or had reason to know that the Refinery was infringing Petroleum Intelligence Weekly in 2012.

         2. Statutory Damages

         EIG seeks an award of statutory damages for the Refinery's alleged infringement of Oil Daily and Petroleum Intelligence Weekly. EIG contends that each issue of Oil Daily and Petroleum Intelligence Weekly is eligible for its own statutory damages award, while the Refinery contends that EIG's statutory damages should be limited to the number of copyright registrations. Both parties seek summary judgment on the issue.

         Under the Copyright Act, a copyright owner may select statutory damages for “all infringements involved in the action, with respect to any one work.”[26] “All the parts of a compilation or derivative work constitute one work.”[27] The Copyright Act defines a “compilation” as “a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.”[28]

         The U.S. Courts of Appeals are split in determining what constitutes a “compilation” or “one work” for purposes of statutory damages. The Second and Fourth Circuits follow a strict “registration determinative” test which more strictly follows the language of the statute.[29] Under this test, only one statutory damages award is available per compilation.[30] The First, Ninth, Eleventh, and D.C. Circuits employ a “separate economic value test, ” which allows a plaintiff to receive multiple statutory damages awards if part of the compilation copied “has an independent economic value and is, in itself, viable.”[31] The Tenth Circuit has not addressed this issue.

         The Refinery contends that EIG's damages should be limited under either test. Relying on the registration-determinative test, the Refinery argues that EIG's use of monthly group registration procedures established by the Copyright Office for Oil Daily and Petroleum Intelligence Weekly renders the collection of each month's issues of each publication a “compilation” that is only eligible for one statutory damages award. And relying on the independent economic value test, the Refinery contends that individual issues of Oil Daily and Petroleum Intelligence Weekly have no “independent economic value” apart from the subscriptions EIG sells for those publications. Neither test, however, supports the Refinery's argument in this case.

         EIG registers its daily issues of Oil Daily and weekly issues of Petroleum Intelligence Weekly using the group registration procedures established by the Copyright Office. Group registration allows a copyright claimant to register multiple works, such as daily newspapers or weekly periodicals, using a single application and single filing fee. EIG's group registration of Oil Daily is pursuant to 37 C.F.R. § 202.3(b)(9), which requires, in part, that “[t]he works must be essentially all new collective works or all new issues that have not been published before” and that all of the issues “bear issue dates within a single calendar month under the same continuing title.”[32]Since at least 2004, EIG has registered Oil Daily as “daily newsletters” by filing monthly applications using Form G/DN, each of which includes all issues of Oil Daily published during that month. Each issue of Oil Daily is a collective work[33] consisting of articles created, [34] selected, and arranged by EIG. Until 2008, EIG marked the “compilation” box when asked to describe the author's contribution in the works covered by the application.

         EIG's group registration of Petroleum Intelligence Weekly is pursuant to 37 C.F.R. § 202.3(b)(6), which allows for a single registration for a group of serials, a type of collective work, published at intervals of a week or longer. Since at least 2004, EIG has registered Petroleum Intelligence Weekly by filing monthly applications using Form SE/Group, each of which includes all issues of Petroleum Intelligence Weekly published that month. Each issue of Petroleum Intelligence Weekly is a collective work consisting of separate and independent articles created, selected, and arranged by EIG.

         The Refinery's arguments fail because they confuse group registration with compilation formation. Under the Refinery's theories, each collection of issues is a compilation simply because EIG placed them together for group registration. But this is not the case. “Authorship of work involves creation, not mere accumulation.”[35] A compilation is the product of arranging preexisting materials or data to create an original work.[36] While each individual issue of Oil Daily or Petroleum Intelligence Weekly may be a compilation, EIG's group registrations are not. EIG only bundled Oil Daily and Petroleum Intelligence Weekly into monthly collections for group registration purposes. There is no evidence that EIG sold these monthly collections to customers as one work. Furthermore, the U.S. Copyright Office has made clear that “[c]opyright owners who use a group registration option may be entitled to claim a separate award of statutory damages for each work-or each issue in the case of serials, newspapers, or newsletters-that is covered by the registration, because group registration covers each work or each issue that is submitted for registration (rather than the group as a whole).”[37] Accordingly, each issue of Oil Daily and Petroleum Intelligence Weekly is entitled to a separate statutory damages award if EIG prevails on its copyright infringement claim. The Court denies the Refinery's motion for partial summary judgment on this issue and grants EIG's cross motion for partial summary judgment on this issue.

         3. ...


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