Date: Tue, 28 Jul 1998 12:57:39 -0500
To: FreeUrantia@cuenet.com, UBtalk@Utalk.org
From: Kristen Maaherra <urantian@concentric.net>
Resent-From: FreeUrantia@cuenet.com
Subject: FreeUrantia: DEFENDANT'S OPPOSITION TO MOTION FOR A PERMANENT INJUNCTION  

DEFENDANT'S OPPOSITION TO MOTION FOR A PERMANENT INJUNCTION
By Joe Lewis
(for Kristen Maaherra)
July 22, 1998

UNITED STATES DISTRICT COURT
DISTRICT OF ARIZONA
CIV 91-325 PHX WKU

URANTIA FOUNDATION,
Plaintiff,
KRISTEN MAAHERRA
Defendant.

Defendant, Kristen Maaherra, hereby responds to the Plaintiff's Motion for a Permanent Injunction. [Footnote 1: Although the Foundation submitted some "evidence" with its motion, counsel for the Foundation confirmed in a telephone conversation with the undersigned that the "motion" was not intended as a motion for summary judgment. Ms. Maaherra will present her evidence at the hearing on damages. End of Footnote 1].

I. DAMAGES MAY BE WAIVED BY THE FOUNDATION, BUT THIS DOES NOT JUSTIFY AN INJUNCTION

Ms. Maaherra does not contest that the issue of damages remains for adjudication. Previously, the Foundation reiterated its intention to pursue a claim for damages. Indeed, after the Ninth Circuit's decision in this case, the Foundation requested and conducted discovery on the issue of damages.

The Foundation now has indicated a desire to withdraw its statutory damage claim. This decision likely was sparked by the recent Supreme Court decision in Feltner v. Columbia Pictures Television, Inc., U.S., 118 S.Ct. 1279 (1998), which reversed a Ninth Circuit decision and held that a defendant is entitled to a jury trial on the issue of statutory damages in copyright cases. In accordance with the Feltner decision, Ms. Maaherra now would have a right to a jury trial on this issue.

Moreover, implicit in the Feltner decision is the holding that the statutory damages clause of the Copyright Act as presently drafted is unconstitutional. Section 504(c) of the Copyright Act vests the exclusive authority to set the amount of statutory damages in "the court," which the Supreme Court interpreted as a reference to the judiciary. Because the Feltner decision recognized a constitutionally-mandated right to a jury trial on the amount of statutory damages, this language in the Copyright Act limiting authority over this issue to the judiciary is in conflict. Until the Congress amends Section 504(c) to make it consistent with the Feltner ruling, it must be deemed inoperative. The Foundation may have decided to forego statutory damages for either or both of these reasons. Regardless of the reason, any election by the Foundation should be made in a more direct and formal manner than the statements contained in the Foundation's legal memorandum. [Footnote 2: Counsel for the Foundation has indicated in a telephone conference a willingness to formalize the Foundation's withdrawal of the damages claim in an appropriate manner. End of Footnote 2].

The Copyright Act gives this court broad discretion in fashioning relief. If the Foundation does not wish to seek damages, that is its prerogative. However, any such election should have no bearing on whether or not the Foundation is entitled to injunctive relief -- which is a wholly separate issue. From the Foundation's motion, it appears that in withdrawing the claim for damages, the Foundation is trying to pressure the court or tie its hands so that the court will be in the position of having either to award an injunction, or to give the Foundation no relief at all. Foundation's Memorandum at 5. The record should be made clear that the Foundation's withdrawal of the damages claim shall have no bearing on whether or not an injunction shall issue from this court after an appropriate hearing.

II. NO INJUNCTION SHOULD BE ISSUED

Ms. Maaherra opposes the imposition of any injunction in this case. At the evidentiary hearing, Ms. Maaherra will show that an injunction is not necessary, is not in the public interest, and is not consistent with the decision of the Ninth Circuit Court of Appeals in this case.

A. An Injunction is not in the Public Interest

A finding of copyright infringement does not necessarily mandate an injunction. The United States Court of Appeals for the Ninth Circuit has adopted the view that an injunction may not be appropriate in instances where such relief would work "great public injury." Abend v. MCA, Inc., 863 F.2d 1465, 1479 (9th Cir. 1988), aff'd sub nom., Stewart v. Abend, 495 U.S. 207 (1990) (quoting 3 M. Nimmer, Nimmer on Copyrights, Section 14.06[B], at 14-56.2 (1988). [Footnote 3: Other courts have found apportionment of profits as an appropriate alternative to an injunction without discussion of any possible injury to the public which might have resulted from the latter form of relief. See American Direct Marketing v. Azad International, Inc., 783 F.Supp. 84, 97-98 (E.D.N.Y. 1992). End of Footnote 3]. In Abend, the court denied injunctive relief to the aggrieved plaintiff in part because the public would have been injured by the unavailability of a motion picture. Id. at 1478- 79.

In this instance, an injunction would injure substantially Urantians and others who are believers in or students of, The Urantia Book, who might be denied access to this work. Ms. Maaherra will show that the Foundation arbitrarily has refused to sell copies of The Urantia Book to her and other Urantians. In the past, the Foundation also has delisted the book with distributors. Thus, an injunction could hinder their future access to the work which represents the underpinnings of their religion. As this court is aware, adherents to the faith believe the text of The Urantia Book to be of divine origin. Clearly, an injunction would result in "public injury" at least comparable to -- and Ms. Maaherra submits substantially greater than -- the injury posed by the denial of the use of the fictional story that was the subject of the Abend case. [Footnote 4: To the extent that the Foundation can show an economic interest in the book, the court could set an appropriate royalty amount. End of Footnote 4]. Accordingly, Ms. Maaherra submits that the evidence of the nature of the book and its importance will show that the public interest mandates that no injunction should issue.

B. This Case was Remanded Only for a Determination of Damages

An injunction is beyond the scope of the remand mandate issued by the Ninth Circuit. This is an additional, independent basis for denying injunctive relief.

In reversing this court's decision, the Ninth Circuit remanded the case "for further proceedings on damages." Urantia Foundation v. Maaherra, 114 F.3d 955, 963 (9th Cir. 1997). The order did not mandate or even suggest any other form of relief.

Under the rule of mandate, a district court receiving the mandate of an appellate court "cannot vary it or examine it for any other purpose than execution." United States v. Cote, 51 F.3d 178, 181 (9th Cir. 1995) (quoting In re Sanford Fork & Tool Co., 160 U.S. 247, 255 (1895)). In this connection, a trial court is precluded from supplementing the remedy mandated by the appeals court. See Newhouse v. Robert's Ilima Tours, Inc. 708 F.22 436, 441-42 (9th Cir. 1983) (award of prejudgment interest reversed because it was beyond the scope of the remand order); Ostano Commerzanstalt v. Telewide Systems, 880 F.2d 642, 650 (2d Cir. 1989) (where remand was on issue of damages, defendants precluded by law of the case doctrine from raising nondamage issue relating to copyright protection). The appropriate action for a party which believes that the mandate of an appeals court is too narrow or incomplete is to seek reformation in a petition for rehearing. See Gele v. Wilson, 616 F.2d 146, 149 (5th Cir. 1980). Where no such petition is filed, the aggrieved party may not complain later about the wording of the mandate. [Footnote 5: Only Ms. Maaherra sought a rehearing in this case. End of Footnote 5]. Id. It becomes the law of the case. Ostano Commerzanstalt v. Telewide Systems, 880 F.2d at 650.

In the case at bar, the plain language of the Ninth Circuit's mandate is that this court should consider on remand only one form of relief -- namely, damages. There is no express or implied reference to an injunction. To the extent Plaintiff believed this mandate to be incomplete or ambiguous in any way, it should have raised this issue in a petition for rehearing to the Ninth Circuit. Plaintiff did not avail itself of this option. It cannot now complain about any perceived infirmity in the appeals court's mandate. Accordingly, because an injunction is beyond the scope of the Ninth Circuit's remand order, this court must deny the Plaintiff's request for injunctive relief.

C. Ms. Maaherra is Not an Outlaw

The Foundation goes to great lengths to try to paint Ms. Maaherra as an outlaw, claiming that "she neither respects nor adheres to secular law." Foundation Motion at 11. However, Ms. Maaherra's conduct in this case shows the Foundation's assertion to be false.

This is not a commercial counterfeiting case of the sort involved in many of the cases cited by the Foundation. Ms. Maaherra distributed her study aids without charge, and did not profit from her project. In addition, Ms. Maaherra did not continue the allegedly infringing acts during the time that this court had issued a preliminary injunction.

Ms. Maaherra has cooperated with the judicial process, she has extensively responded to discovery requests and has appeared three times to be deposed. The Foundation has not shown any violation of court rules or any court order. The Foundation rests its theory on Ms. Maaherra's expression of displeasure shortly after the Ninth Circuit's decision. Ms. Maaherra certainly was free to express her disagreement, [Footnote 6: As Ms. Maaherra explained, Judge Shroeder's opinion "says both parties believe, and then follows up with something that I absolutely do not believe and have put in the record that I do not believe." Third Maaherra Deposition at 59. End of Footnote 6] just as the Foundation was free to do so when it criticized this court's grant of Summary Judgment.

This court has not yet had the opportunity to hear Ms. Maaherra's testimony first hand and to judge her demeanor and credibility. After doing so, the court will be in a better position to determine the necessity of any injunctive relief.

III. THE RELIEF SOUGHT IS TOO BROAD

Even if this court were to consider granting injunctive relief, the three elements of the request by the Foundation are far too broad. See Foundation Motion at 14. Issuing an injunction prohibiting Ms. Maaherra from "infringing Plaintiff's copyright" would leave Ms. Maaherra with questions as to what conduct is permitted.

It is clear from settlement discussions between the parties that they do not agree as to the scope of the purported copyright. The Foundation has asserted that any person using more than 1,000 words from the book must obtain the Foundation's permission. Ms. Maaherra submits that the Ninth Circuit decision held that the copyright extends only to any human contribution to The Urantia Book, and that any injunction must be equally limited. This contribution has yet to be determined. Thus, the court must examine this question.

The Foundation's copyright was upheld as a compilation of the Urantia Papers that appear in the book. As such, any copyright is "thin". Feist Publications v. Rural Tel. Serv., 499 U.S. 340, 349; 111 S.Ct. 1202, 1289 (1991). The divine revelations contained in the book are not protected by copyright and freely can be used by others. Thus, any injunction must be limited to the human contribution of authorship in the nature of compilation and not the actual underlying text. See Apple Computer v. Microsoft, 35 F.3d 1435 (9th Cir. 1994); TransWestern Publishing Co. LP v. Multimedia Marketing Associates Inc., 133 F.3d 773 (10th Cir. 1998). Any injunction must recognize Ms. Maaherra's right to disseminate these revelations.

The Foundation goes on to request that Ms. Maaherra be enjoined, not merely from infringing the copyright or from assisting others in infringing the copyright, but also in "encouraging others." If an injunction were appropriate in this case, it could govern Ms. Maaherra's conduct in infringing, or in assisting others. However, silencing her speech on the issue implicates her First Amendment rights, and the Foundation has made no argument sufficient to justify such draconian relief.

Moreover, the injunction sought by the Foundation seeks to cover not only Ms. Maaherra, but others who have participated with her. The Foundation has made no secret of its intent to enjoin others who may have assisted Ms. Maaherra with her defense of this action. See Memorandum and Order on Plaintiff's Request for Disclosure of Non-Parties, December 20, 1994, Docket No. 216. However, despite extensive discovery, including deposing Ms. Maaherra three times, the Foundation has not turned up any evidence that others were involved with Ms. Maaherra in the acts that were alleged to be infringing. [Footnote 7: There was an initial co-defendant in the case who early on entered into a Consent Judgment. End of Footnote 7]. Thus, there is no basis to expand any injunction beyond Ms. Maaherra.

IV. OTHER ISSUES REMAIN FOR ADJUDICATION

Should this court expand upon the Ninth Circuit's mandate, then it also must address the several other matters that remain for adjudication. These include certain affirmative defenses that were raised, but were never adjudicated. For example, Ms. Maaherra has asserted that the Foundation "has engaged in inequitable conduct" (i.e., copyright misuse). (Revised) Defendant's Substitute Second Amended Answer and Counterclaim, Affirmative Defense No. 5. This renders the Foundation's copyright unenforceable, wholly apart from the issue of whether or not the copyright registration is valid. Practice Management Information Group v. American Medical Association, 121 F.3d 516, 520, modified, 133 F.3d 1140, (9th Cir. 1998). Ms. Maaherra also has alleged that she obtained a license from persons involved in the creation of The Urantia Book and, therefore, her allegedly infringing acts were duly authorized. Affirmative Defense No. 10. Because it granted Summary Judgment for Ms. Maaherra, this court had no prior occasion to address these defenses, and they were not the subject of any ruling by the Ninth Circuit Court of Appeals. [Footnote 8: Ms. Maaherra acknowledges that some of the acts alleged as inequitable conduct have been dealt with in connection with other claims which already have been addressed by the court, such as the separate First Amendment defenses. It is not Maaherra's contention that these claims should be relitigated. However, to the extent that other legal issues are still unresolved, Maaherra is entitled to a full adjudication of each of the defenses raised in her Answer. End of Footnote 8]. These defenses would bar any injunctive relief and must be considered before any injunction can be entered.

V. CONCLUSION

For the above reasons, the Foundation's request for a permanent injunction should be denied.

Respectfully submitted,

Joseph D. Lewis

CLEARY, KOMEN & LEWIS, LLP 600 Pennsylvania Avenue, S.E., Suite 200 Washington, D.C. 20003 (202) 675-4700 Attorney for Defendant