copyright litigants were free to use declaratory relief to preclude any "overlap" by competitors, there is a danger that further refinements and developments in technology would be unduly stunted.
The cases cited by Xerox in support of its claim that an actual controversy exists are factually distinguishable from the present case. In Chesebrough-Pond's v. Faberge, Inc., 666 F.2d 393 (9th Cir. 1982), Faberge had sent Chesebrough a letter declaring its intent to file opposition proceedings in the Patent Office on the grounds that Chesebrough's proposed use of the mark at issue was likely to cause confusion with respect to Faberge's existing mark. Because the "likelihood of confusion" standard would be relevant not only in registration proceedings but also in infringement actions, the court found that it was reasonable for Chesebrough to infer a threat of litigation from the letter. In Societe de Conditionnement en Aluminium, 655 F.2d 938 (9th Cir. 1981), a Hunter employee telephoned a potential customer of the plaintiff and threatened to sue for patent infringement. The court noted that Hunter's failure to withdraw the threat left the plaintiff with a "Damoclean threat" of suit hanging above it.
Likewise, in each of the other cases cited by Xerox, the defendant had taken actions or engaged in a course of conduct that supported plaintiff's apprehensions. See, e.g., Sherwood Medical Indus. v. Deknatel, 512 F.2d 724 (8th Cir. 1975) (defendant's actions, including suit against another company, letter from its attorney to plaintiff warning of infringement, surreptitious examination of plaintiff's product, and statement by high-ranking employee to plaintiff that plaintiff was infringing, justified apprehension); Airship Indus. v. Goodyear Tire & Rubber, 643 F. Supp. 754 (S.D.N.Y. 1986) (defendant sued two customers of plaintiff and plaintiff alleged that defendant was about to file other suits); Nippon Electric Glass Co. v. Sheldon, 489 F. Supp. 119 (S.D.N.Y. 1980) (defendant's attorney sent plaintiff letters alleging infringement); Japan Gas Lighter Ass'n v. Ronson Corp., 257 F. Supp. 219 (D.N.J. 1966) (possibility of in terrorem effect of defendant's letters and lawsuits required discovery and possibly trial).
In contrast, Xerox alleges no actions on Apple's part that could be construed as threats of imminent litigation. Apple's suit against Microsoft and Hewlett-Packard alone cannot reasonably be viewed as giving rise to an "apprehension of liability" on Xerox' part, since the defendants therein have no relationship to Xerox, their alleged status as "potential licensees" notwithstanding.
See, e.g., Texas v. West Publishing Co., 882 F.2d 171 (5th Cir. 1989), cert. denied, 493 U.S. 1058, 110 S. Ct. 869, 107 L. Ed. 2d 953 (1990) (simple assertion by defendant that it holds a copyright in certain material does not amount to a threat of litigation); Indium Corp. of America v. Semi-Alloys, Inc., 781 F.2d 879, 228 U.S.P.Q. (BNA) 845 (Fed.Cir. 1985), cert. denied, 479 U.S. 820, 93 L. Ed. 2d 37, 107 S. Ct. 84 (1986) (plaintiff could not demonstrate reasonable fear of litigation based on its allegations of defendant's litigation against unconnected third parties and letter to plaintiff inviting discussion of becoming licensee under defendant's patent).
In the absence of other allegations, the court finds that Xerox' apprehension is not reasonable and thus does not justify declaratory relief. In the interests of considering a more comprehensive record on this issue, however, the court will not enter judgment on Count I at this point. The earlier order staying discovery will be modified as set forth in Part below to allow Xerox, if it is able, to substantiate its allegations as to fear of liability caused by Apple's actions.
B. Counts II and III: Order Striking Apple's Copyright Registrations.
In Counts II and III, Xerox seeks an order directing the Copyright Office to strike Apple's Lisa and Macintosh Finder registrations for violations of 17 U.S.C. §§ 103(a), 106(2) and 409(9).
Xerox alleges that Apple unlawfully copied portions of Xerox' Star work in violation of section 103(a) and in derogation of its exclusive rights under section 106(2), and that Apple's copyright applications intentionally and purposefully failed to identify Lisa and Macintosh Finder as derivative works of Star and Smalltalk
in violation of section 409(9). For these reasons, Xerox argues, Apple's copyrights should be declared invalid and ordered stricken.
Xerox contends that it has standing to request this relief under the Copyright Act, the Declaratory Judgment Act and "relevant case law." The court finds no basis for such relief in any of these sources.
As discussed above, an action for declaratory judgment involving the validity of a copyright is justiciable if the plaintiff has a real and reasonable apprehension of liability caused by the defendant's actions. Hal Roach Studios v. Richard Feiner & Co., 883 F.2d 1429, 1442 (9th Cir. 1989). For the same reasons discussed in Part III.A, the court finds that Xerox has failed to allege an "actual controversy" warranting the requested declaration. The court notes that even if Xerox had succeeded in meeting this requirement, Apple's use of litigation to assert its rights under its copyright registrations, without more, would not be sufficient grounds for declaring those registrations invalid.
Xerox claims that its standing is assured by its allegation of a "personal stake in the outcome of the controversy sufficient to assure that concrete adverseness which sharpens the presentation of issues." Larson v. Valente, 456 U.S. 228, 238-39, 72 L. Ed. 2d 33, 102 S. Ct. 1673 (1982). However, a Larson showing is appropriate to rebut a charge that the complainant is not the proper party to be bringing suit. The question with respect to Counts II and III of the complaint is not whether Xerox is the proper party to be bringing suit, but whether the relief requested is available. For the reasons that follow, this court holds that it is not.
The Copyright Act does not provide that a court may order the cancellation of a copyright. Of course, the inquiry does not end there. In determining whether a private right of action can be implied from a regulatory statute, the court must look to the Cort v. Ash factors:
Is the plaintiff a member of a class for whose especial benefit the statute was enacted?