CHICAGO SCHOOL REFORM BOARD OF TRUSTEES, an Illinois
Municipal Corporation, Plaintiff, v. SUBSTANCE, INC., an Illinois
Corporation; GEORGE N. SCHMIDT, individually; JANE or JOHN DOES (ONE through
TWENTY), individually, and VOLUMES XXIV, NOS. 5 and 6 of SUBSTANCE
(January-February, 1999), in rem, Defendants. SUBSTANCE, INC., an
Illinois Corporation; and GEORGE N. SCHMIDT, Third-Party Plaintiffs, v. PAUL
VALLAS, Chief Executive Officer, Chicago Public Schools, in his official
capacity, Third-Party Defendant.
No. 99 C 440
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
ILLINOIS, EASTERN DIVISION
79 F. Supp. 2d 919; 2000 U.S. Dist. LEXIS 23; 53 U.S.P.Q.2D
(BNA) 1623; Copy. L. Rep. (CCH) P28,025; 28 Media L. Rep. 1289
January 4, 2000, DecidedDISPOSITION: [**1] Board's motion to dismiss
Defendants' Counterclaim and Third-Party Complaint granted. Board's motion to
strike Defendants' Second, Third, and Fourth Affirmative Defenses granted.
COUNSEL: For CHICAGO SCHOOL REFORM BOARD OF
TRUSTEES, Plaintiff: Patricia Anne Felch, Laura J. DeMoor, Gilberto Hernandez,
Banner & Witcoff, Ltd., Joshua Lee Smith, Peterson & Ross, Edmund Sebree
McAlister, Sachnoff & Weaver, Ltd., Chicago, IL.
For SUBSTANCE, INC., GEORGE N SCHMIDT, JANE DOES, JOHN DOES, VOLUMES
XXIV, NOW. 5 AND 6 OF SUBSTANCE, defendants: Jeffrey Charles Boulden, Despres
Schwartz & Geoghegan, Chicago, IL.
For
SUBSTANCE, INC., GEORGE N SCHMIDT, defendants: Alan Barinholtz, Barinholtz &
Gault, Mark H. Barinholtz, Attorney at Law, Chicago, IL.
For SUBSTANCE, INC., GEORGE N SCHMIDT, third-party plaintiffs: Jeffrey
Charles Boulden, Despres Schwartz & Geoghegan, Alan Barinholtz, Barinholtz
& Gault, Mark H. Barinholtz, Attorney at Law, Chicago, IL.
For PAUL VALLAS, third-party defendant: Laura J.
DeMoor, Gilberto Hernandez, Banner & Witcoff, Ltd., Chicago, IL.
For SUBSTANCE, INC., GEORGE N SCHMIDT,
counter-claimants: Jeffrey Charles Boulden, Despres Schwartz & Geoghegan,
Alan [**2] Barinholtz, Barinholtz & Gault, Mark H. Barinholtz,
Attorney at Law, Chicago, IL.
For CHICAGO SCHOOL
REFORM BOARD OF TRUSTEES, counter-defendant: Patricia Anne Felch, Banner &
Witcoff, Ltd., Joshua Lee Smith, Peterson & Ross, Edmund Sebree McAlister,
Sachnoff & Weaver, Ltd., Chicago, IL.
JUDGES: CHARLES RONALD NORGLE, SR., Judge, United States
District Court.
OPINIONBY: CHARLES RONALD
NORGLE, SR.
OPINION: [*920]
OPINION and ORDER CHARLES R. NORGLE, SR.,
District Judge:
Plaintiff Chicago School Reform Board
of Trustees and Third-Party Defendant Paul Vallas move to dismiss Defendants'
Counterclaim and Third-Party Complaint and to strike three of Defendants'
Affirmative Defenses. For the following reasons, the court grants the motion.
[*921] I. Background n1
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n1 The court compiles the background facts
from the Amended Verified Complaint, Answer, and pleadings and notes that
"averments in a pleading to which a responsive pleading is required . . ., are
admitted when not denied in the responsive pleading." Fed. R. Civ. P. 8(d); see
also Fed. R. Civ. P. 8(b). Disputed points are noted in the text.
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The Illinois
Common Schools Act empowers the Plaintiff in this case, the Chicago School
Reform Board of Trustees ("the Board"), to develop and administer educational
level tests. See 105 ILCS §§ 5/34-2.4, 5/34-3.3. Pursuant to this authority, the
Board developed the 1998 Chicago Academic Standards Examinations ("CASE" or
"tests"). The Board designed the tests to assess the educational levels of
Chicago Public High School freshman and sophomore students, and to calculate up
to 20% of a student's grade in various academic subjects. The Board expected to
use the tests, 22 in all, in 1999 and in future years. (See Am. Compl. P 13.)
According to the Board, the tests cost approximately $ 1.3
million to develop. Of this cost, the John D. and Catherine T. MacArthur
Foundation contributed $ 500,000 from a fund that was "dedicated to pay for the
professional testing design services of the Center for Research on Evaluation,
Standards, and Student Testing [and] to assist [the Board] in designing CASE."
(Id. P 10.) Illinois taxpayers funded the remaining $ 800,000. (See id.)
To protect its interest in the tests, the Board included a
copyright notice on each of the 22 tests. [**4] That notice reads:
(c) 1998 Chicago School Reform Board of Trustees
(Answer P 17.) Each of the tests also contains the
following restriction:
This work may not be reproduced in any form or by any means
(electronic, including photography, recording, or any information storage and
retrieval) without prior permission in writing from the Chicago Public
Schools.
(Id.) Additionally, the
Board implemented the "Chicago Public Schools Test Security Guidelines," which
required the Guidelines to be distributed to all staff members who handle test
materials. These Guidelines, as well as the CASE General Administration
Policies, expressly prohibit copying the CASE examinations.
The Board administered the tests to students from January 11, 1999
through January 15, 1999. (Id.) Defendant George Schmidt ("Schmidt"), a Chicago
Public School teacher and editor of Defendant newspaper
Substance, Inc.
("Substance") n2, helped administer the January 1999 test for freshman
English. (See id. P 22.) Prior to administering the test, Schmidt received a
copy of a booklet entitled "Instructions for Administering the CASE Constructed
Response and Multiple Choice Examination. [**5] " (See id. PP 24.)
The Instructions state in large, bold type: "
According to the Test Security
Guidelines, CASE material may not be duplicated." (Id. P 25.)
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n2 Defendants state that
Substance currently has 1,250 subscribers and publishes approximately
3,000 copies monthly (see Counterclaims P 10.)
Substance's primary
purpose is to inform the public of educational issues, including matters
relating to the Chicago Public Schools. (See id. P 11-12.)
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- - -
During the week of January 11, 1999, Schmidt
asked Bowen High School's CASE coordinator, Judy Wiatrowski, for copies of an
unspecified number of tests for subject areas other than freshman English.
Wiatrowski provided him the requested copies, and Schmidt returned them to her
shortly thereafter. However, in their Counterclaim and Third Party Complaint
(collectively "Counterclaims"), Schmidt and
Substance ("Defendants")
maintain that "in January 1999, [they] received, through anonymous sources,
copies of some of the [CASE] pilot B [**6] Examinations." (Countercl.
P 13.) n3 Defendants [*922] assert that an anonymous source left one
test on
Substance's doorstep, although the court notes that Defendants
share the same address. (See id.) Defendants also claim that several other tests
were delivered in plain envelopes to
Substance's mailbox. (See id.) On or
before January 21, 1999, Schmidt published, in the January-February, 1999 issue
of
Substance (Volumes XXIV, Nos. 5 and 6), entire copies of five of the
tests and a substantial portion of a sixth. (See Answer P 27.) In two of the
test reproductions, Schmidt included the copyright notice and the "no
reproduction" restriction. (See id. P 28.) As for the other four reproductions,
Schmidt deleted the copyright notice and the "no reproduction" restriction. (See
id.) In the same issue of
Substance that included copies of the tests,
Schmidt criticized the tests.
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- Footnotes - - - - - - - - - - - - - - -
n3 Defendants attached their Affirmative Defenses and Counterclaims to
their Answer at pages 26 and 27-32, respectively. For clarity, the court will
cite to the Affirmative Defenses and Counterclaims when referring to those
pleadings and not to the Answer.
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On January 26, 1999, the Board filed a verified Complaint
against Schmidt,
Substance, Jane or John Does (One through Twenty), and
Volumes XXIV, Nos. 5 and 6 of
Substance (January-February, 1999),
in
rem. Also on January 26, 1999, the Board moved for a Temporary Restraining
Order and Writ of Seizure to restrain Defendants from copying or disseminating
any of the CASE tests in any format, and to give up for seizure any and all
copies of Substance Volume XXIV, Nos. 5-6 (January-February 1999). The court
granted the Board's motion on the same day. On February 1, 1999, the Board
sought to extend the temporary restraining order. The court denied the Board's
request.
On February 5, 1999, the Board filed an
Amended Verified Complaint. Count I alleges that Defendants published the
Board's copyrighted literary works, see 17 U.S.C. § 102(a)(1), and thus violated
the United States Copyright Act ("Copyright Act"), 17 U.S.C. §§ 101
et
seq., and Count II claims that Defendants misappropriated trade secrets in
violation of Illinois' trade secret statutes, 765 ILCS §§ 1065/1
et seq.
(See Am. Compl. at 8-14.) The Board maintains [**8] that by
publishing the tests, Defendants divulged confidential materials and destroyed
the Board's future use of the tests. The Board asserts that developing more
tests to replace the now-unusable tests will cost in excess of $ 1,000,000. (See
id. P 49.) The Board asks the court (1) to enjoin Defendants from continuing to
publish and deliver issues of
Substance which contain reproductions of
the tests; (2) to order the seizure and destruction of all copies of
Substance in which the tests were reproduced; (3) to report the conduct
of Defendants and other "Teacher-Publishers" to the United States Attorney for
the Northern District of Illinois, Eastern Division, pursuant to section 506 of
the Copyright Act; (4) to award the Board damages, attorneys fees and costs,
pursuant to the Copyright Act; (5) to award the Board damages, punitive damages,
attorneys fees and costs, and prejudgment interest pursuant to the Illinois
Trade Secrets Act; and (6) for other relief the court deems appropriate. (See
id. at 14-18.)
On February 23, 1999, the court entered
the parties' agreed protective order, requiring Defendants to deliver all copies
of the tests and all copies of Substance [**9] that contained
reproductions of the tests to the Board. (See Agreed Protective Order P 12.)
Defendants also agreed to make no new copies of the tests until further court
order. (See id. P 13.) In the meantime, the Board transferred Schmidt from his
teaching position to an administrative position, and then, on March 5, 1999,
suspended him without pay pending an Illinois State Board of Education hearing
regarding his termination. (See Counterclaims P 16.)
On
April 2, 1999, Defendants answered the Amended Verified Complaint. In their
Answer, Defendants assert the following affirmative defenses: (1) Counts I and
II fail to allege valid claims under Federal Rule of Civil Procedure 12(b)(6);
(2) Defendants' reproductions of the tests are privileged under the doctrine of
fair use, 17 U.S.C. § 107; (3) Defendants' reproductions of the tests are
privileged under the First and Fourteenth Amendments; (4) Defendants'
reproductions of the tests [*923] are privileged by the "Free Speech
and Press provisions of applicable state constitutions"; (5) the Board's action
is barred by estoppel; (6) the Board's action is barred by waiver; and (7) the
Board's action is barred [**10] by laches. (See Answer at 26.)
In the same pleading, Defendants filed their
Counterclaims, pursuant to 42 U.S.C. § 1983. See Counterclaims reproduced infra
p. 34. In those Counterclaims, Defendants allege that the Board's participation
in the decision-making process regarding Schmidt's employment and its filing of
the instant suit violates Defendants' substantive due process rights under the
First and Fourteenth Amendments. n4 (See Countercl. P 19-21.) Additionally,
Defendants add Paul Vallas, Chief Executive Officer of the Chicago Public
Schools, in his official capacity, as a third-party defendant. (See Countercl. P
3.) Defendants ask the court to: (1) declare the actions of the Board and Vallas
violative of the First Amendment; (2) enjoin the Board and Vallas from taking
future discriminatory employment action against Schmidt; (3) return Schmidt to
his job as a Chicago Public School teacher; and (4) award Schmidt punitive
damages of over $ 1,000,000. (See Countercl. at 31.)
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n4 In its Motion to Dismiss, the Board
assumed that Defendants assert procedural due process violations in their
Counterclaims. However, in their Memorandum in Opposition, Defendants clarify
that they allege substantive, and not procedural, due process violations. (See
Mem. in Opp. at 15.)
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On May 10, 1999, the Board and Vallas moved to dismiss
Defendants' Counterclaim and Third-Party Claims and moved to strike Defendants'
Second, Third, and Fourth Affirmative Defenses (from this point forward, the
court refers to both movants simply as "the Board"). The Board argues that the
court should dismiss: (1) Defendants' Counterclaim for failing to state a claim
pursuant to Federal Rule of Civil Procedure 12(b)(6) because the First Amendment
does not protect copyright infringement; (2) Defendants' Counterclaim and
Third-Party Complaint to the extent that they allege violations of Schmidt's due
process rights under the Fourteenth Amendment because they fail to state claims
under Rule 12(b)(6); and (3) Defendants' Third-Party Complaint against Vallas,
in his official capacity, because Defendants improperly named him as a
third-party defendant. (See Mem. in Supp. at 8.) The Board also asks the court
to strike Defendants' Second, Third, and Fourth Affirmative Defenses because the
First Amendment does not protect copyright infringement, and because Defendants
cannot show that their use of the tests is a fair use under the Copyright Act.
(See id. at 5.)
In their Memorandum [**12]
in Opposition to the Motion to Dismiss, Defendants admit that "Defendant
Substance has published a small portion of plaintiff's copyrighted Work."
(Mem. in Opp. at 3); (see also Mem. in Opp. at 13) ("[Defendants'] First
Amendment rights to publish a newspaper are paramount to the Board's asserted
copyright and thus avoid the normal legal consequences for a copyright
violation.") Defendants argue, however, that "this dispute centers around
whether [the Board] may use the federal Copyright Act as a means to suppress
public access to and debate over purported standardized tests . . . ." (Mem. in
Opp. at 3.) Defendants proceed to address the First Amendment/Copyright issue
only as it applies to their Second, Third, and Fourth Affirmative Defenses,
because "[the Board's] Motion and Memorandum . . . raise issues that seem, at
least to Defendants, to call into question the legal sufficiency of certain of
Defendants' Affirmative Defenses." (Mem. in Opp. at 2.) Defendants then
apparently argue that their Counterclaims state a First Amendment violation
claim because even if Defendants violated the copyright laws, the Board violated
Schmidt's First Amendment rights by taking disciplinary [**13] action
against Schmidt. (See Mem. in Opp. at 12-15.) Defendants also state that their
use of the tests is a fair use, (see Mem. in Opp. at 8), and [*924]
maintain that the Board cannot discipline Schmidt because his actions
constituted speech on a matter of public concern. (See Mem. in Opp. at 14.)
Next, Defendants contend that their Counterclaims state a violation of their
substantive due process rights, and that "it was necessary for [Defendants] to
plead the First Amendment rights as also being Fourteenth Amendment rights,
redress for which is sought through § 1983." (See Mem. in Opp. at 16.) With
regard to naming Vallas as a third-party defendant, Defendants admit they
mistakenly failed to name him in his individual capacity in their Third-Party
Complaint. (See Mem in Opp. at 16.) Nevertheless, Defendants argue that because
they ask the court to order Vallas, as well as the Board, to reinstate Schmidt
as a Chicago Public School teacher, Defendants properly named Vallas in his
official capacity. (See Mem. in Opp. at 16.) After the Board replied to
Defendants' Response, Defendants filed a Sur-reply.
II.
Discussion
A. Motion to Dismiss Standard
When [**14] reviewing a motion to dismiss under
Rule 12(b)(6), the court merely looks at the sufficiency of the complaint, Autry
v. Northwest Prem. Servs., Inc., 144 F.3d 1037, 1039 (7th Cir. 1998); it does
not decide whether the plaintiff has a winning claim. Herdrich v. Pegram, M.D.,
154 F.3d 362, 369 (7th Cir. 1998). Accordingly, "[a] complaint may not be
dismissed unless 'it is impossible to prevail under any set of facts that could
be proved consistent with the allegations.'" Moriarty v. Lewis Funeral
Directors, Ltd., 150 F.3d 773, 777 (7th Cir. 1998) (quoting Hishon v. King &
Spalding, 467 U.S. 69, 73, 81 L. Ed. 2d 59, 104 S. Ct. 2229 (1984)); see also
Marshall-Mosby v. Corporate Receiv., Inc., 194 F.3d 830, 833 (7th Cir. 1999)
("Dismissal under Rule 12(b)(6) is proper only where the plaintiff can prove no
set of facts that would entitle him to relief."). The court "must look to see
whether there is any possible interpretation of the complaint under which it can
state a claim." Martinez v. Hooper, 148 F.3d 856, 858 (7th Cir.1998); see also
Sanjuan v. American Bd. of Psychiatry and Neurology, Inc., 40 F.3d 247, 251 (7th
Cir.1994) [**15] ("At this stage, the plaintiff receives the benefit
of imagination, so long as the hypotheses are consistent with the complaint.").
"Complaints need not plead law or match facts to every element of a legal theory
. . . ." Bennett v. Schmidt, 153 F.3d 516, 518 (7th Cir. 1998). "Matching facts
against legal elements comes later." Sanjuan, 40 F.3d at 251. The court will
deny a Rule 12(b)(6) motion to dismiss where the defendant merely "attempts to
nit-pick the complaint to death." LaSalle v. Medco Research, Inc., 54 F.3d 443,
447 (7th Cir. 1995).
However, the Seventh Circuit has
also stated that "[a] complaint must contain either direct or inferential
allegations respecting all the material elements necessary to sustain a recovery
under some viable legal theory." Herdrich, 154 F.3d at 369. "'It is true that
the Federal Rules of Civil Procedure do not require a plaintiff to set out in
detail the facts upon which a claim is based. Nevertheless, a plaintiff must
allege sufficient facts to outline a cause of action, proof of which is
essential to recovery.'" Stevens v. Umsted, 131 F.3d 697, 700 (7th Cir.
1997) [**16] (quoting Ellsworth v. City of Racine, 774 F.2d 182, 184
(7th Cir. 1985)). In other words, "while federal notice-pleading allows for a
generous reading of a complaint, in order to resist a motion to dismiss, the
complaint must at least set out facts sufficient to 'outline or adumbrate' the
basis of the claim." Panaras v. Liquid Carbonic Indust. Corp., 74 F.3d 786, 792
(7th Cir. 1996). For instance, "attaching a bare legal conclusion to the facts"
will not suffice. Id. Moreover, although "[a] complaint may not be dismissed
under Fed. R. Civ. P. 12(b)(6) just because it omits factual allegations . . .
it may be dismissed when the plaintiffs make it clear that they do not plan to
prove an essential element of their case." La Porte County Republican Cent.
Comm. v. Bd. of Commiss., 43 F.3d 1126, 1129 (7th Cir. 1994). With these
principles in mind, the [*925] court turns to the Board's Motion to
Dismiss.
B. The First Amendment Does Not Protect
Copyright Violators
Section 106 of the Copyright Act
outlines the rights of owners of copyrighted materials:
Subject to sections 107 through 121, the owner of copyright under
this title [**17] has the exclusive rights to do and to authorize
any of the following:
(1) to reproduce the copyrighted work in copies or
phonorecords;
(2) to prepare derivative works based upon the
copyrighted work;
(3) to distribute copies or phonorecords of
the copyrighted work to the public by sale or other transfer of ownership,
or by rental, lease, or lending;
(4) in the case of literary,
musical, dramatic, and choreographic works, pantomimes, and motion pictures
and other audiovisual works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic
works, pantomimes, and pictorial, graphic, or sculptural works, including
the individual images of a motion picture or other audiovisual work, to
display the copyrighted work publicly; and
(6) in the case of
sound recordings, to perform the copyrighted work publicly by means of a
digital audio transmission.
17 U.S.C. § 106. n5 Because Defendants admit that "Defendant
Substance has published a small portion of plaintiff's copyrighted
Work[,]" (see Mem. in Opp. at 3), they admit they infringed upon the Board's
exclusive right to reproduce the copyrighted [**18] tests, and thus
violated § 106(1) of the Copyright Act. See 17 U.S.C. § 106(1). Thus, the issue
before the court is quite narrow: Whether the First Amendment permits a Chicago
Public School teacher to publish, in his own for-profit newspaper, copyrighted
tests as a means to generate public debate over the tests' validity. The court
finds that the First Amendment affords no such protection.
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n5 The court notes that the Copyright Act's
principal purpose is to promote the progress of the "useful Arts" by rewarding
creative activity. See Quality King Dist., Inc. v. L'anza Research Int'l, Inc.,
523 U.S. 135, , 140 L. Ed. 2d 254, 118 S. Ct. 1125, 1133
(1998). Nevertheless, the Act's protections clearly apply to the case at bar.
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The First Amendment provides:
"Congress shall make no law . . . abridging the freedom of speech, or of the
press . . . ." U.S. Const. amend. I. And while "great responsibility is . . .
placed upon the news media to report fully and accurately [**19] the
proceedings of government," Cox Broadcasting Corp. v. Cohn, 420 U.S. 469,
491-492, 43 L. Ed. 2d 328, 95 S. Ct. 1029 (1975); see also Wilson v. Layne, 526
U.S. 603, , 119 S. Ct. 1692, 1698, 143 L. Ed. 2d 818 (1999),
the First Amendment's freedoms are not boundless. Indeed, in Cohen v. Cowles
Media Co., 501 U.S. 663, 115 L. Ed. 2d 586, 111 S. Ct. 2513 (1991), the Supreme
Court iterated that it has repeatedly recognized that "generally applicable laws
do not offend the First Amendment simply because their enforcement against the
press has incidental effects on its ability to gather and report the news." Id.
501 U.S. at 669-70 (citing Branzburg v. Hayes, 408 U.S. 665, 684, 33 L. Ed. 2d
626, 92 S. Ct. 2646 (1972) (press must respond to grand jury subpoenas);
Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 576-579, 53 L. Ed. 2d
965, 97 S. Ct. 2849 (1977) (press must obey copyright laws); Associated Press v.
NLRB, 301 U.S. 103, 81 L. Ed. 953, 57 S. Ct. 650 (1937) (media must obey the
National Labor Relations Act); Oklahoma Press Publ'g Co. v. Walling, 327 U.S.
186, 192-193, 90 L. Ed. 614, 66 S. Ct. 494 (1946) [**20] (press must
obey the Fair Labor Standards Act); Associated Press v. United States, 326 U.S.
1, 89 L. Ed. 2013, 65 S. Ct. 1416 (1945) (press may not restrain trade in
violation of the antitrust laws); Citizen Publ'g Co. v. United States, 394 U.S.
131, 139, [*926] 22 L. Ed. 2d 148, 89 S. Ct. 927 (1969) (same);
Murdock v. Pa., 319 U.S. 105, 112, 87 L. Ed. 1292, 63 S. Ct. 870 (1943) (press
must pay non-discriminatory taxes); Minneapolis Star & Tribune Co. v.
Minnesota Comm'r of Revenue, 460 U.S. 575, 581-583, 103 S. Ct. 1365, 75 L. Ed.
2d 295 (1983) (same)). n6
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Footnotes - - - - - - - - - - - - - - -
n6
As an aside, the court notes that the traditional defenders of First Amendment
freedoms, the press, themselves rely on the Copyright Act's protections. For
example, in its January 3, 2000 issue, the
Chicago Tribune inserts the
line" 153 Year - No. 3 (c) Chicago Tribune 6 Sections" just beneath the
newspaper's front-page heading, and on page four states, "Copyright (c) 1999
Chicago Tribune Company. All rights reserved as to the entire content. Chicago
Tribune is a registered trademark."
Chicago Tribune, January 3, 2000, at
1, 4. The January 3, 2000 issue of the
Chicago Sun-Times states, "The
Chicago Sun-Times Vol. 53, No. 285 (c) 1999 (UPS No. 103-920) is published daily
. . . by Chicago Sun-Times, Inc. . . ."
Chicago Sun-Times, January 3,
2000, at 2.
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End Footnotes- - - - - - - - - - - - - - [**21]
In Cohen, a confidential source of information sued two newspapers
under a promissory estoppel theory after the newspapers broke their promises to
the source not to publish his identity. See 501 U.S. at 665-66. In addressing
the press's First Amendment rights, the Court stated:
It is . . . beyond dispute that "the publisher of a newspaper has
no special immunity from the application of general laws. He has no special
privilege to invade the rights and liberties of others." Associated Press v.
NLRB, supra, 301 U.S. at 132-133, 57 S. Ct. at 655-656. Accordingly,
enforcement of such general laws against the press is not subject to stricter
scrutiny than would be applied to enforcement against other persons or
organizations.
501 U.S. at
670. The Court held that the First Amendment does not forbid Minnesota's
promissory estoppel law from applying to the press. See id.
Importantly, the Court plainly stated that, like Minnesota's promissory
estoppel law, copyright law is a "generally applicable law" that limits First
Amendment freedoms: "The press, like others interested in publishing, may not
publish copyrighted material without obeying [**22] the copyright
laws." Id. (citing Zacchini, 433 U.S. at 576-79 (holding that the First and
Fourteenth Amendments do not immunize the media when they broadcast a
performer's entire act, in Zacchini's case, a "human cannonball" act, without
performer's consent); see also San Francisco Arts and Athletics v. Olympic
Committee, 483 U.S. 522, 541, 97 L. Ed. 2d 427, 107 S. Ct. 2971 (1987) (holding
that organization had no First Amendment right of expression to appropriate the
word "Olympic" for use in the term "Gay Olympic Games"); Branzburg, 408 U.S. at
684 ("First Amendment does not guarantee the press a constitutional right of
special access to information not available to the public generally"); Dallas
Cowboys Cheerleaders, Inc. v. Scoreboard Posters, Inc., 600 F.2d 1184, 1188 (5th
Cir. 1979) (the first amendment is not a license to trammel on legally
recognized rights in intellectual property").
Defendants offer few reasons why the principles of Cohen, 501 U.S. at
669; Zacchini, 433 U.S. at 576-79; San Francisco Arts, 483 U.S. at 541;
Branzburg, 408 U.S. at 684; [**23] and Dallas Cowboys Cheerleaders,
600 F.2d at 1188 do not apply to the current case, and none are persuasive. For
example, Defendants state that they "do not agree with the general principles
emphasized by this Court and extracted from the Cohen and Branzburg decisions
[in the court's Order of February 3, 1999], but suggest that those principles do
not exclude, by any means, the First Amendment claims and defenses made by
defendants under the unique facts presented here." (Mem. in Opp. at 10.)
Defendants' wholly unsupported "suggestion" fails to demonstrate why the
principles of Cohen and Branzburg do not apply "under the unique facts presented
here." (Id.) Furthermore, Defendants' contention that their position is
[*927] somehow tenable because they "are not disobeying the
copyright laws[.]" (Mem. in Opp. at 10) is inconsistent with their admission
that "
Substance has published a small portion of plaintiff's copyrighted
Work." (Mem. in Opp. at 3.) In short, Defendants offer nothing to show that the
court should not follow Cohen and the other cases cited above.
Defendants' attempts to factually distinguish the cases above (see Mem.
in Opp. [**24] at 8-12) also fail to convince the court that the
principles cited therein are inapplicable to the case at bar. For example,
Defendants argue that because the Cohen court addressed the press's First
Amendment rights as they related to a promissory estoppel claim, Cohen cannot
apply to a First Amendment/copyright case. (See Mem. in Opp. at 10.) Given
Cohen's general principle that "the publisher of a newspaper has no special
immunity from the application of general laws[,]" Cohen, 501 U.S. at 670, and,
more specifically, that "the press . . . may not publish copyrighted material
without obeying the copyright laws[,]" id., the court declines to read Cohen as
narrowly as Defendants argue.
Likewise, Defendants
contend that the Supreme Court's statement in Branzburg that the "First
Amendment does not guarantee the press a constitutional right of special access
to information not available to the public generally" is inapplicable here
because Branzburg did not involve a copyright violation. (See Mem. in Opp. at
10.) Indeed, the Branzburg Court discussed whether requiring newsmen to appear
and testify before state or federal grand [**25] juries abridges the
First Amendment's right freedom of speech and press; and the Court found it did
not. See Branzburg, 408 U.S. at 667. Nevertheless, this distinction does not
render Branzburg inapplicable.
Defendants also cite
numerous cases to support the contention that the First Amendment guarantees
their right to publish copyrighted tests. However, Defendants fail to provide
any argument or analysis to demonstrate how or why these cases apply in the
instant cause of action. For example, Defendants cite to several cases to
support the general contention that, under certain circumstances, the First
Amendment may allow copyright infringement. (See Resp. at 2) (citing Belmore v.
City Pages, Inc., 880 F. Supp. 673, 680 (D. Minn. 1995) (holding that the fair
use doctrine entitled a newspaper to publish a fable that was written by a
police officer in order to critique the unique fable and the police department);
Time, Inc. v. Bernard Geis Assoc., 293 F. Supp. 130, 146 (1968) (finding that an
author's reproduction of frames of film footage recording President Kennedy's
assassination (the Zapruder film) caused little, if any, [**26]
damage to copyright holder and was thus a fair use of the film); Schnapper v.
Foley, 215 U.S. App. D.C. 59, 667 F.2d 102 (D.C. Cir. 1982) (discussing whether,
under the copyright law, the United States Government may receive and hold
copyrights transferred to it by assignment, bequest, or otherwise)). But
Defendants fail to show how or why these cases, and not Cohen, control the
instant case. Notably, Defendants never conduct a fair use analysis as did the
courts in Belmore and Bernard Geis. Further, Defendants provide, and the court
finds, no reason why Schnapper would have any bearing on the instant case.
Accordingly, the court finds Defendants' citations unpersuasive.
Similarly, Defendants cite to United States v. Paramount Pictures, 334
U.S. 131, 158, 92 L. Ed. 1260, 68 S. Ct. 915 (1948) (anti-trust case) (see Mem.
in Opp. at 5, 7) and Kreiss, "Copyright Fair Use of Standardized Tests," 48
Rutgers Law Review No. 4, 1043 (1996) (see id. at 4-5, 7) for the contention
that the primary purpose of copyright law is to benefit the public by releasing
created works to the public. And Defendants cite generally to College Entrance
Exam. Bd. v. Pataki, 893 F. Supp. 152 (N.D.N.Y. 1995) [**27] for the
assertion that a recent trend in state legislation requires disclosure of
standardized tests. Again, however, Defendants never even attempt to demonstrate
why or how these [*928] concepts apply here or how the Board's
actions "chilled" their First Amendment rights. (See Resp. at 6.) These bare
references fail to undermine the principles discussed above and fail to
demonstrate that the First Amendment protects Defendants' publication of the
copyrighted tests.
Additionally, Defendants cite to
Triangle Pubs., Inc. v. Knight-Ridder Newspapers, Inc., 445 F. Supp. 875 (S.D.
Fla. 1978) for the contention, "when the Copyright Act and the First Amendment .
. . operate at cross purposes, the primacy of the First Amendment mandates that
the Copyright Act be deprived of effectuation." (Mem. in Opp. at 6.) Again,
Defendants offer no reason why this general assertion applies to the specific
facts of the instant case, and the court finds Triangle Pubs. inapplicable for
three reasons. First, Triangle Pubs. utilized a fair use analysis, which, as
noted above, Defendants never performed. Second, Triangle Pubs. predates Cohen
by 13 years and offers nothing to suggest [**28] that applying Cohen
here is erroneous. Third, as the Second Circuit stated in 1982,
In Triangle, the District Court held that the fair use doctrine
did not protect the defendant's use of a photograph of TV Guide's cover in
comparative advertisements, but that the First Amendment nonetheless prevented
the issuance of an injunction to stop it. That case is alone in its holding
and is not even the law of the Fifth Circuit: the affirmance found that the
use made of the cover was fair, and did not reach the First Amendment
issue.
Roy Export Co.
Establishment of Vaduz, Liechtenstein v. Columbia Broadcasting Sys., Inc., 672
F.2d 1095, 1099 n.10 (2d Cir. 1982) (emphasis added).
In short, Defendants fail to discuss their cited authority and fail to
even minimally develop their arguments. The court notes that it is not obliged
to make Defendants' arguments for them. See Outsource Int'l v. Barton, 192 F.3d
662, 669 (7th Cir. 1999) ("defendants' argument is underdeveloped and
unsupported by law and, therefore, it is waived.") (citing United States v.
Brocksmith, 991 F.2d 1363, 1366 (7th Cir. 1993) ("The premise
of [**29] our adversarial system is that appellate courts do not sit
as self-directed boards of legal inquiry and research, but essentially as
arbiters of legal questions presented and argued by the parties before them."));
Reidt v. County of Trempealeau, 975 F.2d 1336, 1341 (7th Cir.1992) (plaintiff
waived disparate impact claim alleged in complaint by failing to fulfill her
"minimal responsibility of identifying the applicable law and arguing why the
facts . . . fit into the parameters of that law."); Freeman United Coal Mining
Co. v. Office of Workers' Compensation Programs, 957 F.2d 302, 305 (7th Cir.
1992) ("We have no obligation to consider an issue that is . . . not developed
[] in a party's brief."). Thus, Defendants' failure to develop their cited
authority does not obligate the court to do so. Nevertheless, the court has
reviewed Defendants' cited authority and finds no support for Defendants' First
Amendment right to publish the copyrighted tests.
To
summarize, in the case at bar,
Substance received copies of confidential,
copyrighted educational tests through, according to Defendants, anonymous
sources. Schmidt, unconcerned that the Board [**30] prohibited the
tests' reproduction and distribution, published copies of certain tests in
Substance in violation of the Copyright Act, 17 U.S.C. § 106(1). The
unauthorized publication destroyed the published (and possibly the unpublished)
tests' usefulness and value. Given these facts, the court finds that Defendants
possessed no First Amendment right to publish the copyrighted tests. See Cohen,
501 U.S. at 669; Zacchini, 433 U.S. at 576-79; San Francisco Arts, 483 U.S. at
541; Branzburg, 408 U.S. at 684; Dallas Cowboys Cheerleaders, 600 F.2d at 1188.
Defendants offer no authority to the contrary.
Furthermore, Defendants present only one reason for publishing the
tests: to stir public debate about them. (See Countercl. [*929] P
27); (see also Mem. in Opp. at 3.) While creating public awareness of
potentially ineffective educational tests is an admirable goal, it fails to
convert Defendants' copyright violations to conduct protected by the First
Amendment. The court notes that "litigants may plead themselves out of court by
alleging facts that establish defendants' entitlement [**31] to
prevail." Bennett v. Schmidt, 153 F.3d 516, 518 (7th Cir. 1998). In other words,
a "plaintiff can plead himself out of court by alleging facts which show that he
has no claim, even though he was not required to allege those facts." Soo Line
R.R. Co. v. St. Louis S.W. Ry. Co., 125 F.3d 481, 483 (7th Cir. 1997). The court
is not "'obliged to ignore any facts set forth in the complaint or its attached
exhibits, see Fed. R. Civ. P. 10(c), that undermine the plaintiff's claim.'"
Hamilton v. O'Leary, 976 F.2d 341, 343 (7th Cir. 1992) (quoting R.J.R. Services,
Inc. v. Aetna Casualty & Surety Co., 895 F.2d 279, 281 (7th Cir. 1989)); see
also Soo Line R.R. Co., 125 F.3d at 483 ("Judicial efficiency demands that a
party not be allowed to controvert what it has already unequivocally tole a
court by the most formal and considered means possible."). Given that Defendants
sole motivation for publishing the tests was to stir public debate, the court
finds that the First Amendment provides no protection for Defendants actions.
1. Defendants' Counterclaims
Moreover, the court finds no set of circumstances [**32]
that would afford Defendants First Amendment protection for publishing the
copyrighted tests. Thus, although Defendants direct their First Amendment
arguments toward "certain of Defendants' Affirmative Defenses" (Mem. in Opp. at
2), to the extent they base their Counterclaims on First Amendment protections,
those are untenable and fail as a matter of law. (See Countercl. PP 19-21.)
Accordingly, the court grants the Board's Rule 12(b)(6) Motion to Dismiss
Defendants' Counterclaims to the extent they assert First Amendment
violations.
2. Defendants' Third and Fourth
Affirmative Defenses
The Board also moves to strike,
apparently under Federal Rule of Civil Procedure 12(f), Defendants' Second,
Third, and Fourth Affirmative Defenses. (See Mem. in Supp. at 5.) The court
first addresses the Board's motion to strike Defendants' Third Affirmative
Defense (Publication of copyrighted tests are privileged under First and
Fourteenth Amendments) and Fourth Affirmative Defense (Publication of
copyrighted tests are privileged under "Free Speech and Press provisions of
applicable state constitutions"). (See Affirmative Defenses at 26.) Although the
Board's motion to strike is [**33] technically untimely under the 20
day limitation of Rule 12(f), "upon the court's own initiative at any time, the
court may order stricken from any pleading any insufficient defense . . . ."
Fed. R. Civ. P. 12(f); see also Williams v. Jader Fuel Co., Inc., 944 F.2d 1388,
1400 (7th Cir. 1991) (stating that "Courts have read Rule 12(f) to allow a
district court to consider a motion to strike at any point in a case, reasoning
that it is considering the issue of its own accord despite the fact that its
attention was prompted by an untimely filed motion.") (citations omitted); Trull
v. Microsoft Corp., 1998 U.S. Dist. LEXIS 22653, No. 97-2709, 1998 WL 25195, at
*1 (N.D. Ill. Jan. 13, 1998). Accordingly, the court addresses the merits of
Defendants' Third and Fourth Affirmative Defenses. See Williams, 944 F.2d at
1400; Trull, 1998 WL 25195, at *1.
Under Federal Rule
of Civil Procedure 8(a), a defendant must set forth a "short and plain
statement" of the affirmative defense. See Heller Fin. Inc. v. Midwhey Powder
Co., Inc., 883 F.2d 1286, 1294 (7th Cir. 1989) (citing Bobbitt v. Victorian
House, Inc., 532 F. Supp. 734, 736-37 (N.D. Ill. 1982)). [**34] The
Board does not argue that Defendants improperly plead these affirmative defenses
under Rule 8(a), but contends that because the First Amendment affords no
protection for Defendants' actions, the defenses must be stricken.
[*930] (See Mem. in Supp. at 5.) In general, courts disfavor motions
to strike, because such motions potentially serve only to delay. See Heller
Fin., 883 F.2d at 1294; see also Codest Eng'g v. Hyatt Int'l Corp., 954 F. Supp.
1224, 1228 (N.D. Ill. 1996); Wilson v. City of Chicago, 900 F. Supp. 1015, 1023
(N.D. Ill. 1995). Where, however, motions to strike "remove unnecessary clutter
from the case, they serve to expedite, not delay." Heller Fin., 883 F.2d at
1294. Thus, motions to strike "will not be granted unless it appears to a
certainty that plaintiffs would succeed despite any state of the facts which
could be proved in support of the defense . . . and are inferable from the
pleadings." Williams, 944 F.2d at 1400 (citations omitted); see also Codest
Eng'g, 954 F. Supp. at 1228; Wilson, 900 F. Supp. at 1023-24. Put another way,
motions to strike [**35] affirmative defenses should be granted where
the affirmative defenses are "patently defective and could not succeed under any
circumstances." Mobley v. Kelly Kean Nissan, Inc., 864 F. Supp. 726, 732 (N.D.
Ill. 1993)).
Having determined that Defendants
possessed no First Amendment right to publish the Board's copyrighted tests, the
court concludes that under no circumstances can Defendants prevail under their
Third ("First and Fourteenth Amendment privilege") and Fourth ("Free Speech and
Press provisions of applicable state constitutions privilege") affirmative
defenses. Accordingly, the court opts to "remove unnecessary clutter from the
case[,]" and grants the Board's motion to strike Defendants' Third and Fourth
Affirmative Defenses. Heller Fin., 883 F.2d at 1294.
C. Defendants' Fair Use Affirmative Defense
Next, the Board moves to strike, again apparently under Federal Rule of
Civil Procedure 12(f), Defendants' Fair Use Affirmative Defense. (See Mem. in
Supp. at 5; Second Affirmative Defense, Answer at 26.) As discussed above, the
court considers the untimely motion to strike (See cases cited supra p. 18), and
again notes [**36] that motions to strike "will not be granted unless
it appears to a certainty that plaintiffs would succeed despite any state of the
facts which could be proved in support of the defense . . . and are inferable
from the pleadings." See cases cited supra p. 19.
Whether a use qualifies as a permissible fair use is a mixed question
of law and fact. See Harper & Row Publishers., Inc. v. Nation Enters., 471
U.S. 539, 560, 85 L. Ed. 2d 588, 105 S. Ct. 2218 (1985). Furthermore, the court
recognizes that fair use affirmative defenses are not typically decided pursuant
to motions to strike. Cf. Cortland Line Co., Inc. v. Orvis Co., Inc., 1998 U.S.
Dist. LEXIS 32, 1997 WL 808608, at *4 (N.D.N.Y. 1998) ("although affirmative
defenses may be raised in a motion to dismiss, defenses such as the fair use
doctrine involve a more detailed analysis of the facts at issue and are best
resolved by summary judgment motions or adjudication at trial."); Int-Elect
Engineering, Inc. v. Clinton Harley Corp., 1993 U.S. Dist. LEXIS 11510, 1993 WL
557639, at *2 (N.D. Cal. 1993) (same). However, faced with the facts of the
instant case, the court finds it proper to grant the Board's motion to strike
Defendants' [**37] fair use affirmative defense. As discussed below,
the court necessarily finds that "it appears to a certainly that plaintiffs
would succeed despite any state of the facts which could be proved in support of
the defense . . . and are inferable from the pleadings." Williams, 944 F.2d at
1400.
The fair use doctrine, codified at § 107 of the
Copyright Act provides:
Notwithstanding the provisions of section 106, the fair use of a
copyrighted work . . . for purposes such as criticism, comment, news
reporting, teaching (including multiple copies for classroom use),
scholarship, or research, is not an infringement of copyright. In determining
whether the use made of a work in any particular case is a fair use the
factors to be considered shall include-
(1) the purpose and character of the use, including whether such
use is of a [*931] commercial nature or is for nonprofit
educational purposes;
(2) the nature of the copyright work;
(3) the amount and substantiality of the portion used in relation
to the copyright work as a whole; and
(4) the effect of the use
upon the potential market for or value of the copyrighted
work.
17 U.S.C. §
107. [**38] No single fair use factor is dispositive of the issue,
and all of the factors must be considered in light of the purposes of copyright.
See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577, 127 L. Ed. 2d 500,
114 S. Ct. 1164 (1994). "The task is not to be simplified with bright-line
rules, for the statute, like the doctrine it recognizes, calls for case-by-case
analysis." Id. Moreover, Defendants bear the burden of demonstrating their fair
use affirmative defense. See id. at 591 (citing Harper & Row, 471 U.S. at
561).
In the instant case, despite the Board's detailed
analysis of the fair use factors, see Reply at 6-9, Defendants present little to
support that their use of the tests was fair. For example, in their Memorandum
in Opposition, Defendants assert, but never develop or otherwise support, that
"the scope of the fair use doctrine is wider when the use relates to issues of
public concern[,]" n7 (Mem. in Opp. at 8) (quoting National Rifle Ass'n v.
Handgun Control Fed., 15 F.3d 559, 562 (6th Cir. 1994)). But see Harper &
Row, 471 U.S. at 569 (holding that verbatim copying of former [**39]
President Gerald Ford's unpublished manuscript, a matter of public concern, was
not a fair use of the manuscript). Further, Defendants cite to Professor Nimmer
who "instructs us that there remains an ongoing conflict or paradox between the
First Amendment and Copyright, and a continuing 'Need to Reconcile Copyright and
the First Amendment.'" (Mem. in Opp. at 10-11) (citing 1 Nimmer on Copyright §
1.10[A] (1998).) Defendants also state that "the defenses of fair use and free
speech should be kept separate . . . ." (See Mem. in Opp. at 11) (citing 1
Nimmer on Copyright § 1.10[A] (1998).) Again, however, Defendants fail to
demonstrate how these generalities apply here. Finally, Defendants basically
ignore the Board analysis of the factors, see Reply at 6-9, and merely respond,
"Even assuming
arguendo defendants copied "entire" works, that
circumstance alone would not be dispositive in a proper fair-use analysis."
(Sur-reply at 2.)
- - - - - - - - - - - - - - Footnotes
- - - - - - - - - - - - - - -
n7 The court
notes that the public may also be concerned with the potential utility of the
costly test project than with one person's attempt to stir public debate about
the tests by publishing them.
- - -
- - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**40]
In sum, Defendants never even recite the fair use factors
in any of their pleadings, much less discuss how those factors weigh in their
favor. Defendants offer nothing substantive to support a fair use argument, and
the court is not obliged to make their arguments for them. See cases cited supra
p. 14. Furthermore, Defendants offer no indication that they plan to present
facts, argument, or analysis in support of a fair use later. Accordingly,
Defendants fail to meet their burden of demonstrating that the publication of
the tests constitutes a fair use, and do not suggest that they will argue the
point later. See Campbell, 510 U.S. at 577; (citing Harper & Row, 471 U.S.
at 561); see also Bauer, 150 F.3d 759 at 763); Midway Manuf. Co., 883 F.2d 1286,
1994 WL 188531, at *2.
Moreover, the court finds that,
given the background surrounding the publication of the tests, Defendants cannot
support a fair use affirmative defense under any circumstances. As indicated
above, the Supreme Court conducted a fair use analysis in Harper & Row, 471
U.S. 539, 85 L. Ed. 2d 588, 105 S. Ct. 2218. In that case, former
president [**41] Gerald Ford contracted with Harper & Row
Publishers, Inc. to publish his unwritten memoirs. See id. at 542. As the
memoirs neared completion, Harper & [*932] Row contracted with
Time Magazine to provide Time with excerpts of the memoirs for a fee. See id. at
542-53. Shortly before Time published the magazine edition containing the
excerpts of the memoirs, Nation Magazine published a 2,250-word article which
included "verbatim quotes of the author's original language totaling between 300
and 400 words and constituting some 13% of The Nation article." Id. at 548-49.
The Court rejected The Nation's argument "that the public's interest in learning
this news as fast as possible outweighed the right of the author to control its
first publication[,]" because this theory would "expand fair use to effectively
destroy any expectation of copyright protection in the work of a public figure."
Id. at 556-557. The Court then analyzed the case using the fair use factors and
determined that The Nation's use of verbatim excerpts from the unpublished
manuscript was not a fair use. Id. Likewise, examining the four fair use factors
here, [**42] the court finds that Defendants' publishing of the
tests fails a fair use analysis.
1. Purpose and
Character of Use
The first factor, the purpose and
character of the use, including whether such use is of a commercial nature or is
for nonprofit educational purposes, weighs heavily against a fair use. The "fact
that a publication was commercial as opposed to nonprofit is a separate factor
that tends to weigh against a fair use[,]" Harper & Row, 471 U.S. at 562
(citing Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 451, 78
L. Ed. 2d 574, 104 S. Ct. 774 (1984)), but is not the only factor. See Campbell,
510 U.S. at 584 ("the commercial or nonprofit educational purpose of a work is
only one element of the first factor enquiry . . . ."). Nonetheless, the court
notes that (1)
Substance is a for-profit newspaper owned by Schmidt,
whose goal is, presumably, to increase sales and profits; and (2) any
publication of the tests (whose creation allegedly cost approximately $ 1.3
million (see Am. Compl. P 9)) would destroy their confidentiality, and diminish
the Board's future educational use of them. (See [**43] id. P 49.)
Accordingly, that the tests were published in Schmidt's for-profit newspaper
weighs against Defendants' assertion of a fair use.
Furthermore, even if the court ignores that
Substance is a
for-profit newspaper, and assumes, as Defendants argue, that the sole purpose of
publishing the tests was to stir public debate over the tests' effectiveness,
the "sensitive balancing of interests" in making the purpose or character of use
determination weighs against Defendants. Campbell 510 U.S. at 584 (discussing
whether rap group 2 Live Crew's parody of Roy Orbison's
Oh, Pretty Woman
was a fair use of the original song and determining that the commercial
character of the parody did not create a presumption against fair use); see also
Sony, 464 U.S. at 451. Defendants' actions have few redeeming qualities to
balance out the interests of the Board. Defendants chose to print substantial
portions of the tests to the detriment of the tests' owner, a charitable
foundation, and taxpayers. Furthermore, Defendants could have stirred debate
over the tests in a way that did not destroy the usefulness of five, if not six
or more, of the 22 tests. Even [**44] if Defendants' actions revealed
that the tests are invalid, Defendants' actions which destroy someone else's
confidential, costly property is difficult to condone. Thus, even if Defendants'
sole motivation for publishing the tests was to generate public debate, the
character of Defendants' use of the tests weighs against that use being fair.
Cf. Harper & Row, 471 U.S. at 562 (stating that the Court is unable to
ignore the impropriety of defendant's publishing of a purloined manuscript); see
also Cohen, 501 U.S. at 669 ("truthful information sought to be published must
have been lawfully acquired.").
2. Nature of the
Copyrighted Work
The second factor, the nature of the
copyrighted work, also demonstrates that [*933] publishing the tests
was not a fair use. "This factor calls for recognition that some works are
closer to the core of intended copyright protection than others, with the
consequence that fair use is more difficult to establish when the former works
are copied." Campbell, 510 U.S. at 586. "The fact that a work is unpublished is
a critical element of its 'nature'" and "the scope of fair use is narrower with
respect to [**45] unpublished works." Harper & Row, 471 U.S. at
564 (citations omitted) (stating that publishing purloined manuscripts verbatim
in order to "scoop" the material's owner's news story is a use that so clearly
infringes the copyright holder's interests in confidentiality and creative
control that it is difficult to characterize such a use as fair). In the case at
bar, the Board developed the tests to determine the educational levels of
students, and the need to keep the tests confidential and out of the public
realm is obvious. Publishing the tests destroyed their confidentiality and
prevents the Board from using the published tests (and possibly the unpublished
tests) in the future. Thus, the nature of the copyrighted work favors the
Board.
3. Amount of Work used in Relation to the
Whole
Third, the court finds that the "amount and
substantiality of the portion used in relation to the copyrighted work as a
whole" weighs against a fair use as well. "This factor calls for thought not
only about the quantity of the materials used, but about their quality and
importance, too." Campbell, 510 U.S. at 587. Furthermore, "whether 'a
substantial portion [**46] of the infringing work was copied
verbatim' from the copyrighted work is a relevant question . . ., for it may
reveal a dearth of transformative character or purpose under the first factor,
or a greater likelihood of market harm under the fourth . . . ." Campbell, 510
U.S. at 587 (quoting Harper & Row, 471 U.S. at 565)). In the instant matter,
Defendants printed five entire tests and a substantial portion of a sixth, all
but guaranteeing that the published tests (and possibly the unpublished ones)
would be unusable in the future. At the very least, Defendants placed more than
22% of the testing materials into the public realm. Moreover, each test can be
viewed as its own educational tool. Considering the tests in this manner,
Defendants ruined 100% of each of the reproduced tests. This degree of
publication demonstrates a substantial portion of the tests as a whole and
weighs against a fair use. See Harper & Row, 471 U.S. at 548-49 (finding
against a fair use where the published article included "verbatim quotes of the
author's original language totaling between 300 and 400 words and constituting
some 13% of The Nation article."). [**47]
4. Effect on the Market
Finally, the effect on
the market factor also disfavors Defendants. As noted in Harper & Row, the
Copyright Act "focuses on the effect of the use upon the potential market for
or value of the copyrighted work[,]" and is the single most important
element of fair use. 471 U.S. at 565 (citations and internal marks omitted)
(emphasis added). While most cases present issues related to the potential
commercial market for a copyrighted work, this is not always the case. See e.g.
Quality King Dists., 118 S. Ct. at 1128 (noting unusual posture of that
copyright case where plaintiff wished to protect the integrity of its marketing
method, and not its copyrighted product labels). In the case at bar, the market
factor centers around "the value of the copyrighted work[,]" not its potential
commercial market. See Harper & Row, 471 U.S. at 566. The tests' value lies
in the Board's ability to used them repeatedly in the future. Defendants'
publication of the tests significantly decreased that value, and the court need
not determine at this time the monetary damage Defendants caused. The court
finds no difference [**48] between a copyright holder losing future
profits because of a copyright infringement [*934] and a the Board
losing its future educational value of its copyrighted work. Further, Defendants
offer nothing to show that their actions did not harm the Board Cf. id. at 567
("once a copyright holder establishes with reasonable probability the existence
of a causal connection between the infringement and a loss of revenue, the
burden properly shifts to the infringer to show that this damage would have
occurred had there been no taking of copyright expression."). Thus, like the
other three factors, the market factor also weighs against Defendants.
In sum, Defendants fail to even discuss any of the four
fair use factors. n8 And given that Defendants willfully (or, at the very least,
recklessly) destroyed the value of the Board's property in an effort to generate
public debate about the tests' validity, the court finds no set of circumstances
under which Defendants can prevail under a fair use affirmative defense. Thus,
the Board will succeed despite any set of facts "which could be proved in
support of the defense . . . and are inferable from the pleadings." Williams,
944 F.2d at 1400; [**49] Codest Eng'g, 954 F. Supp. at 1228; Wilson,
900 F. Supp. at 1023-24; Mobley, 864 F. Supp. at 732. Accordingly, in an effort
to "remove unnecessary clutter from the case," Heller Fin., 883 F.2d at 1294,
the court grants the Board's motion to strike Defendants' Fair Use Affirmative
Defense.
- - - - - - - - - - - - - - Footnotes - - - -
- - - - - - - - - - -
n8 Defendants cite
Belmore v. City Pages, Inc., 880 F. Supp. 673 (D. Minn. 1995); Triangle Pubs.,,
445 F. Supp. 875; and Hustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d
1148 (9th Cir. 1986) in apparent support of their fair use affirmative defense.
(See Mem. in Opp. at 9.) However, Defendants again neglect to discuss or
otherwise demonstrate how these cases apply to the case at bar. Furthermore, the
court finds these cases dissimilar to the case at bar and unpersuasive.
- - - -
- - - - - - - - End Footnotes- - - - - - - - - - - - - -D. Pickering Balancing
Test
Defendants also cite to Pickering v. Bd. of Educ.,
391 U.S. 563, 20 L. Ed. 2d 811, 88 S. Ct. 1731 (1968) [**50] and
state that the court should sustain their Counterclaims because "a teacher's
exercise of his right to speak on issues of public importance may not furnish
the basis for his dismissal from public employment." (Mem. in Opp. at 14.)
However, Defendants' mere citation to Pickering (and that's all it is), is
unpersuasive and fatally unsupported. See cases cited supra at 15-16.
Furthermore, the court notes that Defendants never assert that the Board
dismissed Schmidt, but only that the Board suspended Schmidt without pay. (See
Countercl. at 27.) Nevertheless, the court addresses whether a Pickering
analysis is appropriate and if so, whether Defendants can prevail under that
analysis.
Before the court addresses the merits of
Defendants' "argument," it must first provide the background relevant to
Pickering. In Board of County Commissioners, Wabaunsee County., Kan. v. Umbehr,
518 U.S. 668, 679, 135 L. Ed. 2d 843, 116 S. Ct. 2342 (1996), the Supreme Court
iterated that the First Amendment provides no absolute guarantee of freedom of
speech, rather, it "protects government employees from termination
because of their speech on matters of public [**51] concern."
Id. (citing Connick v. Myers, 461 U.S. 138, 146, 75 L. Ed. 2d 708, 103 S. Ct.
1684 (1983)). "To prevail, an employee must prove that the conduct at issue was
constitutionally protected, and that it was a substantial or motivating factor
in the termination." Wabaunsee County., 518 U.S. at 679. Moreover, even if a
defendant clears the "constitutionally protected activity" hurdle, "termination
because of protected speech may be justified when legitimate countervailing
government interests are sufficiently strong." Id.; see also Marshall v. Allen,
984 F.2d 787, 797 n. 8 (7th Cir. 1993). When examining allegations of such a
termination, "government employees' First Amendment rights depend on the balance
between the interests of the [employee], as a citizen, in commenting upon
matters of public concern and the interest of the State, as an employer, in
promoting the efficiency of the public services [*935] it performs
through its employees." Wabaunsee County., 518 U.S. at 680 (citing Pickering,
391 U.S. at 568). "The key to First Amendment analysis of government employment
decisions, then, is this: The [**52] government's interest in
achieving its goals as effectively and efficiently as possible is elevated from
a relatively subordinate interest when it acts as sovereign to a significant one
when it acts as employer." Wabaunsee County., 518 U.S. at 680 (citing Waters v.
Churchill, 511 U.S. 661, 674, 128 L. Ed. 2d 686, 114 S. Ct. 1878 (1994)
(plurality opinion approved by seven Justices). In addition, the Seventh Circuit
recently summarized the Pickering analysis this way:
In Pickering v. Board of Education, 391 U.S. 563, 88 S. Ct. 1731,
20 L. Ed. 2d 811 (1968), the Court set out a two-pronged balancing test to
determine whether a public employee's First Amendment rights have been
violated. First, it must be determined whether the speech (or association) is
on a matter of public concern. If it is, then the court must balance the
interest of the public employee, as a citizen, in commenting upon matters of
public concern with the interest of the government, as the employer, in
promoting the efficiency of the public services it provides.
Klug v. Chicago Sch. Reform Bd. of Trustees,
197 F.3d 853, 1999 U.S. App. LEXIS 30457, 1999 WL 1063466, [**53] at
*3 (7th Cir. Nov. 23, 1999); see also Weicherding v. Riegel, 160 F.3d 1139, 1142
(7th Cir. 1998); Messman v. Helmke, 133 F.3d 1042, 1045 (7th Cir. 1998).
However, as Waubansee County illustrates, "an employee
must prove that the conduct at issue was constitutionally protected" before
undertaking a Pickering analysis. 518 U.S. at 679. Only after an employee clears
the "constitutionally protected activity" hurdle does a court address whether
the employee's termination because of protected speech was justified by
legitimate countervailing government interests. See id. As discussed above, the
court has already determined as a matter of law that the First Amendment does
not protect Defendants' conduct. See discussion supra pp. 10-19; see also Button
v. Kibby-Brown, 146 F.3d 526, 528 (7th Cir. 1998) ("whether a public employee's
speech has protected status presents a question of law determined in the first
instance by the trial judge . . . .") (quoting Wright v. Illinois Dept. of
Children and Family Servs., 40 F.3d 1492, 1499-1500 (7th Cir. 1994)) (other
citations omitted). Thus, accepting [**54] as true the well-pleaded
facts in Defendants' Counterclaims, as the court must, see Klug, 197 F.3d 853,
1999 WL 1063466, at *3, the court finds that Defendants fail to clear to
"constitutionally protected activity" hurdle. Accordingly, the court need not
conduct a Pickering balancing test to determine whether the First Amendment
protects the publishing of the tests. Nevertheless, the court proceeds with a
Pickering analysis.
While courts ordinarily are
reluctant to perform the Pickering balancing test on the basis of the pleadings
(because of the liberal notice pleading requirements of Federal Rule of Civil
Procedure 8(a)) where a plaintiff chooses to plead particulars, and those
particulars "'show he has no claim, then he is out of luck--he has pleaded
himself out of court.'" Id. at *4; (quoting Thomas v. Farley, 31 F.3d 557,
558-559 (7th Cir. 1994) and citing Jefferson v. Ambroz, 90 F.3d 1291 (7th Cir.
1996)); see also Bennett v. Schmidt, 153 F.3d 516, 518 (7th Cir. 1998)
("litigants may plead themselves out of court by alleging facts that establish
defendants' entitlement to prevail.") Again, the court notes [**55]
that "judicial efficiency demands that a party not be allowed to controvert what
it has already unequivocally told a court by the most formal and considered
means possible." Soo Line R.R. Co., 125 F.3d at 483.
In
the instant case, whether styled as a First Amendment violation or a substantive
due process violation, Defendants assert one theory in their Counterclaims: The
First Amendment allows Defendants to publish copyrighted tests as a way to stir
public debate. Thus, the instant case, like Klug, "is one of those rare cases in
[*936] which the balancing can be performed based on the facts in
the complaint." Klug 197 F.3d 853, 855, 1999 WL 1063466, at *5.
The court begins by assuming that Defendants satisfy the first
Pickering step, that is, the court assumes that the tests' validity is a matter
of public concern. See id. at *3. The court thus proceeds to the second step in
the Pickering analysis. That step requires a balancing of the interests of the
employee, as a citizen, in commenting upon matters of public concern and the
interest of the State, as an employer, in promoting the efficiency of the public
services it performs through its employees. See [**56] id.; see also
Feldman v. Ho, 171 F.3d 494, 497 (7th Cir. 1999) (stating that where "speech
proves excessively disruptive of an employer's mission, then the employer may
respond."); Weicherding, 160 F.3d at 1142). The relevant factors to consider in
performing the balancing in this case are: (1) the effect of Schmidt's conduct
on the orderly maintenance and efficiency of the Chicago Public Schools; (2) the
effect of Schmidt's constitutionally protected activity on his ability to
perform his duties; (3) the nature of Schmidt's employment, including whether
his position is one of loyalty or confidence; (4) the time, place, and manner of
Schmidt's speech or activity; (5) the context in which the dispute arose; and
(6) whether the matter was one on which debate was vital to decision. See id. at
*4 (citing Kokkinis v. Ivkovich, 185 F.3d 840, 845 (7th Cir.1999)); see also
Weicherding 160 F.3d at 1142 (citing Wright v. Illinois Dept. of Children &
Family Servs., 40 F.3d 1492, 1502 (7th Cir. 1994)).
Given these factors and the facts presented in the pleadings,
Defendants' Counterclaims do not survive even [**57] a motion to
dismiss. Examining the factors, the court first recognizes that Defendants'
publication of the tests drastically impeded the Board's interest in efficiently
educating and determining the education levels of students. Second, Schmidt's
ability to perform his teaching duties were minimally affected by publishing the
tests. Third, as a teacher administering the tests, Schmidt was in a position of
confidence. That he received the tests from anonymous sources is irrelevant, as
the court again notes that "truthful information sought to be published must
have been lawfully acquired." See Cohen, 501 U.S. at 669. Fourth, the time,
place, and manner of Schmidt's attempt to stir public debate significantly
damaged the value of the tests. Fifth, the "context in which the dispute arose,"
that is, the Board's disciplinary action against Schmidt for publishing its
copyrighted tests, is not an egregiously inappropriate response. See Feldman,
171 F.3d at 497 (stating where "speech proves excessively disruptive of an
employer's mission, then the employer may respond.") Finally, the Board's
decision to discipline Schmidt was not one on which debate was vital.
[**58] In sum, these balancing factors demonstrate that the Board's
interest in efficiently promoting its educational mission outweighs Schmidt's
interest in commenting upon the tests by publishing several of them in their
entirety. The court finds that Defendants could produce no facts to sway the
balance.
Additionally, when applying the Pickering
test, the Supreme Court has "consistently given greater deference to government
predictions of harm used to justify restriction of employee speech than to
predictions of harm used to justify restrictions on the speech of the public at
large.'" Wabaunsee County., 518 U.S. at 680 (quoting Waters, 114 S. Ct. at
1887). In the case at bar, Defendants' publication of the copyrighted tests,
designed for years of use, completely destroyed the value of several, if not
all, of the tests. Thus, given that (1) Defendants had no First Amendment right
to publish the copyrighted tests; (2) the Pickering factors weigh heavily
against Defendants' interest in publishing the tests; (3) Defendants' actions
harmed the Board's use of the tests in the future; and (4) Defendants complete
lack of support for sustaining their Counterclaims [**59] under a
Pickering [*937] analysis, n9 the court concludes that even if a
Pickering balancing test applies, Defendants' Counterclaims fail.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - -
- - - - -
n9 The court also notes that in
their Response, Defendants cite Walsh v. Ward, 991 F.2d 1344 (7th Cir. 1997);
Cliff v. Bd. of Sch. Commissioners, 42 F.3d 403 (7th Cir. 1994); and Hulbert v.
Wilhelm, 120 F.3d 648 (7th Cir. 1997) for the broad assertion that "a cause of
action under § 1983 to obtain legal and equitable relief for such deprivations
of constitutional rights was recognized by the Court of Appeals for the Seventh
Circuit[.]" (Resp. at 5.) Defendants fail to discuss any of these cases even
briefly, and the court finds that none of them support Defendants' Counterclaims
of substantive due process or First Amendment violations under the
circumstances.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - -
- - -E. Substantive Due Process Claim
Next, Defendants
assert that their Counterclaims state violations of their substantive due
process rights (see Mem. [**60] in Opp. at 16.) However, it is well
established that "where a particular amendment provides an explicit textual
source of constitutional protection against a particular sort of government
behavior, that Amendment, not the more generalized notion of substantive due
process, must be the guide for analyzing these claims.'" See County of
Sacramento v. Lewis, 523 U.S. 833, 842, 118 S. Ct. 1708, 1714, 140 L. Ed. 2d
1043 (1998) (holding that a police officer's killing of motorcycle passenger
during high-speed chase was not covered by any Constitutional Amendment)
(quoting Albright v. Oliver, 510 U.S. 266, 273, 127 L. Ed. 2d 114, 114 S. Ct.
807 (1994) (plurality opinion of Rehnquist, C.J.) (in turn quoting Graham v.
Connor, 490 U.S. 386, 395, 104 L. Ed. 2d 443, 109 S. Ct. 1865 (1989) ("Because
the Fourth Amendment provides an explicit textual source of constitutional
protection against this sort of physically intrusive governmental conduct
[police officer's excessive force during an investigatory stop], that Amendment,
not the more generalized notion of 'substantive due process,' must be the guide
for analyzing these claims."))); [**61] see also Conn v. Gabbert,
526 U.S. 286, , 119 S. Ct. 1292, 1296, 143 L. Ed. 2d 399
(1999) (refusing to determine validity of substantive due process claim because
"challenges to the reasonableness of a search by government agents clearly fall
under the Fourth Amendment, and not the Fourteenth"); Tesch v. County of Green
Lake, 157 F.3d 465, 472 (7th Cir. 1998) (rejecting attempt to circumvent
dismissal of Fourth Amendment unreasonable arrest claims by appealing
substantive due process claim based on the unreasonable arrest); Thaddeus-X v.
Blatter, 175 F.3d 378, 387-88 (6th Cir. 1999) (finding that a warden's
retaliation against the protected speech of an inmate aiding a fellow inmate's
litigation, was covered by the First Amendment, and thus, stated no substantive
due process claim); Valot v. Southeast Local Sch. Dist. Bd. of Educ., 107 F.3d
1220, 1232 (6th Cir. 1997) (concurring opinion) (stating that where plaintiff
grounds what he repeatedly refers to as his "constitutional right" under the
First Amendment, and fails to allege that the interest of which he has been
deprived is found either in the life, [**62] liberty, or property
components of the Fourteenth Amendment, the right is not protected by the Due
Process Clause, but by the First Amendment); Nestor Colon Medina &
Sucesores, Inc. v. Custodio, 964 F.2d 32, 45 (1st Cir. 1992) ("To the extent
[plaintiff's] substantive due process claim is based on the alleged retaliation
for his political views, it is coextensive with his First Amendment claim [and]
there is obviously no need to enter the uncharted thicket of substantive due
process to find an avenue for relief . . . ."); Davis v. Olin, 886 F. Supp. 804,
812 (D. Kan.1995) (dismissing substantive due process claim because it
paralleled First Amendment claim of retaliatory discharge for speaking out on an
issue of public concern); Silva v. Univ. of N.H., 888 F. Supp. 293, 325 (D.N.H.
1994) (granting summary judgment as to plaintiff's substantive due process
allegation because it was the same claim as plaintiff's First Amendment
claim).
In the case at bar, Defendants clearly seek the
First Amendment's protection in their substantive due process Counterclaims.
[*938] The Counterclaims, in their entirety, allege:
V. CLAIMS FOR RELIEF
[**63]
19. At all times relevant to the
action complained of herein, the Chicago School Reform Board and Paul Vallas
are each "persons" within the meaning of that term as it is used in 42 U.S.C.
§ 1983.
20. When, under color of state law, they
participated in the decision making process regarding George Schmidt's
employment and the filing of this lawsuit, the Chicago School Reform Board and
Paul Vallas deprived Substance, Inc. and George Schmidt of their rights
guaranteed by the First Amendment of the United States Constitution, as made
applicable to the states and their subordinate municipalities by the
Fourteenth Amendment to the United States Constitution.
21. When participating in the conduct outlined above, the Chicago
School Reform Board and Paul Vallas acted wilfully, recklessly, with callous
indifference to, and in gross disregard of the constitutional rights of
Substance, Inc. and George Schmidt.
(Countercl. PP 19-21.) Hence, Defendants specify no constitutional
right violations other than violations of the First Amendment. (See id.)
Additionally, Defendants' Response and Memorandum in
Opposition further demonstrate that they seek only [**64] First
Amendment protection. For example, Defendants argue that (1) "it is necessary
for Schmidt and Substance to invoke the Fourteenth Amendment and "due process"
in their claims which assert their First Amendment rights[,]" (Resp. at 6); (2)
"[Defendants' Counterclaims] raise claims based on violations of the First
Amendment rights of [Defendants,]" (Mem. in Opp. at 2); (3) "it is clear that
Schmidt was punished by the Board for his lawful exercise of his rights under
the First Amendment and has, therefore, stated a cause upon which relief may be
granted[,]" (Mem. in Opp. at 14); (4) even if Defendants violated copyright
laws, "the court will also have to determine if the Board (and Vallas)
subsequently violated the First Amendment rights of Schmidt and Substance by
disciplining Schmidt for his role in publishing Substance[,]" (Mem. in Opp. at
15); and (5) "it was necessary for Schmidt and Substance to plead their First
Amendment rights as also being Fourteenth Amendment rights, redress for which is
sought through § 1983." (Mem. in Opp. at 16.) Thus, the court finds that
Defendants' Counterclaims allege nothing more than First Amendment violations.
(See Countercl. at [**65] 30-32.) Furthermore, that Defendants' First
Amendment claim fails has no bearing on the court's dismissal of Defendants'
substantive due process Counterclaims. See Tesch, 157 F.3d at 471 (refusing to
entertain substantive due process claim of unreasonable arrest after district
court granted summary judgment as to Fourth Amendment claim of unreasonable
arrest and appellant did not appeal dismissal of Fourth Amendment claim).
Accordingly, the court dismisses the Counterclaims.
To
the extent that Defendants' substantive due process Counterclaims can be read to
assert claims other than First Amendment violations, their Counterclaims boil
down to this: The Board's disciplinary action against Schmidt and filing of the
instant suit is a violation of Defendants' substantive due process rights. As
discussed below, this bare-bones allegation fails to state a due process claim
upon relief can be granted pursuant to Federal Rule of Civil Procedure
12(b)(6).
The Supreme Court has repeatedly emphasized
that "'the touchstone of due process is protection of the individual against
arbitrary action of government[.]'" Lewis, 118 S. Ct. at 1716 (quoting Wolff v.
McDonnell, 418 U.S. 539, 558, 41 L. Ed. 2d 935, 94 S. Ct. 2963
(1974)). [**66] This due process guarantee protects not only against
denials of fundamental procedural fairness, see Lewis, 118 S. Ct. at 1716
(citing, e.g., Fuentes v. Shevin, 407 U.S. 67, 82, [*939] 32 L. Ed.
2d 556, 92 S. Ct. 1983 (1972)), but also against the "the exercise of power
without any reasonable justification in the service of a legitimate governmental
objective[.]" Lewis, 118 S. Ct. at 1716 (citing, e.g., Daniels v. Williams, 474
U.S. 327, 331, 88 L. Ed. 2d 662, 106 S. Ct. 662 (1986) (stating that the
substantive due process guarantee protects against government power arbitrarily
and oppressively exercised). The Supreme Court emphasizes that "only the most
egregious official conduct can be said to be 'arbitrary in the constitutional
sense[.]'" Lewis, 118 S. Ct. at 1716 (quoting Collins v. Harker Heights, 503
U.S. 115, 129, 117 L. Ed. 2d 261, 112 S. Ct. 1061 (1992)). Moreover, the Due
Process Clause was intended to prevent government officials "from abusing [their
power], or employing it as an instrument of oppression." Collins, 503 U.S. at
129 (citations omitted). In [**67] the case at bar, Defendants had no
right to publish the Board's tests. See discussion supra pp. 10-19. Hence, the
Board's actions against Defendants are not of the egregious and oppressive type
which violate Defendants' substantive due process rights.
Furthermore, in Washington v. Glucksberg, the Supreme Court iterated
that the Due Process Clause provides, in addition to those freedoms spelled out
in the Bill of Rights, "heightened protection against governmental interference
with certain fundamental rights and liberty interests," such as the right to
marry, to have children, to direct the education and upbringing of one's
children, to marital privacy, to use contraception, to bodily integrity, to
choose an abortion, and to refuse unwanted lifesaving medical treatment. 521
U.S. 702, 720, 117 S. Ct. 2258, 117 S. Ct. 2302, 138 L. Ed. 2d 772 (1997)
(citations omitted). However, as a general matter, the Court has "'always been
reluctant to expand the concept of substantive due process because the
guideposts for responsible decisionmaking in this uncharted area are scarce and
open-ended.'" Id. (quoting Collins v. Harker Heights, 503 U.S. 115, 125, 117 L.
Ed. 2d 261, 112 S. Ct. 1061 (1992)). The Seventh [**68] Circuit
recently emphasized this reluctance to expand substantive due process:
We have spent some time looking through the Constitution for the
Substantive Due Process Clause without finding it . . . . The fact that
[substantive due process] is a doctrine owing its existence to constitutional
structure rather than a clear grant of power to the judiciary has led the
Supreme Court to be cautious in its use.
Khan v. Gallitano, 180 F.3d 829, 833 (7th Cir. 1999) (quoting
National Paint & Coatings Assoc. v. City of Chicago, 45 F.3d 1124, 1129 (7th
Cir. 1995)).
To determine if a court should expand
substantive due process to cover a certain allegation, a court must invoke the
substantive due process analysis set forth in Glucksberg. See Khan, 180 F.3d at
833 ("The courts have long struggled to identify the appropriate analysis for
substantive-due-process claims . . ., but in [] Glucksberg . . ., a five-justice
majority of the Court agreed on a single analysis."). The Glucksberg Court
described the substantive due process analysis the following way:
First, . . . the Due Process Clause specially
protects [**69] those fundamental rights and liberties which are,
objectively, deeply rooted in this Nation's history and tradition, and
implicit in the concept of ordered liberty, such that neither liberty nor
justice would exist if they were sacrificed. Second, we have required in
substantive-due-process cases a careful description of the asserted
fundamental liberty interest. Our Nation's history, legal traditions, and
practices thus provide the crucial guideposts for responsible decision making
that direct and restrain our exposition of the Due Process
Clause.
521 U.S. at 720-21
(holding that asserted right to assistance in committing suicide not a
fundamental liberty interest protected by the Due Process Clause because that
"right" is not deeply rooted in our Nation's traditions); see also
[*940] Khan, 180 F.3d at 833, 835 (holding that plaintiff "failed to
show why the right to be free from tortious interference by state actors is a
fundamental right deeply rooted in out history and tradition or implicit in the
concept of ordered liberty."); cf. Dunn v. Fairfield Comm. High Sch. Dist. No.
225, 158 F.3d 962, 965 (7th Cir. 1998) ("The Constitution [**70] does
not guarantee . . . students the right not to receive an "F" in a course from
which they were excluded because of misbehavior.); Zorzi v. Cty. of Putnam, 30
F.3d 885, 894 (7th Cir. 1994) (holding that occupational liberty, such as
arbitrary or capricious termination, is not protected by substantive due
process, and stating that "in the absence of a life, liberty or property
interest [the plaintiff asserting a substantive due process claim] could be
terminated for arbitrary and capricious reasons.") citing DeTomaso v. McGinnis,
970 F.2d 211, 214 (7th Cir.1992)).
In the case at bar,
Defendants fail to "carefully formulate the interest at stake[.]" see Khan, 180
F.3d at 833. Other than asserting that they have a First Amendment right to
publish the tests (which, as discussed above, precludes their parallel
substantive due process Counterclaims, see supra at 32-35), Defendants provide
no description of any fundamental right in their Counterclaims or in their
pleadings. Indeed, Defendants fail to address the point. Additionally,
Defendants fail to show, and the court cannot discern, (1) how their substantive
due process Counterclaims [**71] differ from allegations of First
Amendment violations, or (2) how their right to publish the Board's copyrighted
tests "is a fundamental right deeply rooted in out history and tradition or
implicit in the concept of ordered liberty assert a precise substantive due
process liberty" Id.; see also Glucksberg, 521 U.S. at 720-21.
The court again notes that Defendants' scant support of their position
is unpersuasive. For example, Defendants's cite only one case and only for the
principle that "the liberty of the press and of speech is within the liberty
safeguarded by the due process clause of the Fourteenth Amendment from invasion
by state action." (See Mem. in Opp. at 16 (citing Near v. Minnesota, 283 U.S.
697, 706, 75 L. Ed. 1357, 51 S. Ct. 625 (1931)). Defendants also refer to Tribe,
American Constitutional Law, §§ 11-2 at 773, but again their "argument" is
unsubstantiated: "the Supreme Court decisions drawing on the Bill of Rights to
restrict state action have frequently limited the permissible substance of state
law and not merely its procedures for applying rules to particular cases." (Mem.
in Opp. at 16.) In short, Defendants offer nothing [**72] to support
that they properly state Counterclaims of substantive due process violations.
Thus, for the above reasons, Defendants fail to state a substantive due process
claim pursuant to Rule 12(b)(6).
F. Vallas
Finally, the Board argues that the court should dismiss
Vallas as a Defendant because Defendants named him only in his official
capacity. However, because none of Defendants' Counterclaims survive the Board's
motion to dismiss, the point is moot.
G. Federal
Rule of Civil Procedure 12(c)
The court emphasizes that
it based its granting of the Board's motion to dismiss on Rule 12(b)(6) because
Defendants' Counterclaims fail to state First Amendment violation or substantive
due process violation claims upon relief could be granted. See Fed. R. Civ. P.
12(b)(6). However, the Seventh Circuit recently clarified that Federal Rule of
Civil Procedure 12(c) is the appropriate mechanism to dismiss a formally
sufficient complaint when a plaintiff" does nothing to back it up after the
defendant moves for dismissal . . . ." See Walker v. National Recovery, Inc.,
200 F.3d 500, 1999 U.S. App. LEXIS 33586, No. 99-2119, 1999 WL 1257386, at *4
(7th Cir. Dec. 21, 1999); [**73] (citing Johnson v. Revenue Mgt.
Corp., 169 F.3d 1057 (7th Cir. 1999); Kirksey v. R.J. Reynolds Tobacco Co., 168
F.3d 1039 (7th Cir. 1999); Fed. R. Civ. P. 12(c) ("After the pleadings are
closed . . ., [*941] any party may move for judgment on the
pleadings."). In the case at bar, Defendants' scant support for their First
Amendment and substantive due process Counterclaims (and the court notes
Defendants' complete lack of support for its fair use and Pickering analysis
"arguments") do not compel further litigation on those points. Accordingly, even
if the Counterclaims technically state claims pursuant to Rule 12(b)(6), the
court grants the Board's motion to dismiss (or, more accurately, motion for
judgment on the pleadings), based on the reasoning set forth in this opinion,
pursuant to Rule 12(c). See Walker, 200 F.3d 500, 1999 WL 1257386, at *4.
III. Conclusion
For the foregoing
reasons, the court grants the Board's motion to dismiss Defendants' Counterclaim
and Third-Party Complaint. The court also grants the Board's motion to strike
Defendants' Second, Third, and Fourth Affirmative Defenses.
IT IS SO ORDERED.
ENTER:
CHARLES RONALD NORGLE, [**74] SR., Judge
United States District Court
DATED: 1-4-2000