Petition for Writ of Certiorari — Ehat v. Tanner

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§ 7 * 7 9 " () St Suoreme Court, U.S.

FILED

MAY 12 1988

JOSEPH F. SPANIOL, JR,

CLERK

IN THE

Supreme Court of the United States

OCTOBER TERM, 1985

ANDREW F. EHAT,

Petitioner,

JERALD TANNER and SANDRA TANNER,

dba MODERN MICROFILM COMPANY,

Respondents.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE TENTH CIRCUIT

GORDON A. MADSEN

ROBERT C. CUMMINGS

320 South Third East

Salt Lake City, UT 84111

Telephone: 322-1141

Attorneys for Petitioner

QUESTIONS PRESENTED

i. Whether the ruling of the Tenth

Circuit Court is contrary to the recent

holding of this court in the case of Harper

& Row v. Nation Enterprises, 471 U.S...85

L.Ed. 2d 588, 105 S.Ct...

2. Whether Harper & Row applies to

historical research not otherwise

copyrightable.

3. Whether the new copyright act of

1976 pre-empts that body of law pre-existing

under the general heading of "unfair

competition" beginning with International

News Service v. The Associated Press, 248

U.S. 215 (1918), 63 L.Ed. 211, 39 $.Ct. 68,

and continuing through Roy Export Company

Establishment v. Columbia Broadcasting

System, Inc., 672 F.2d 1095 (2nd

Circuit) (1982).

4. Whether the decision of the Tenth

Circuit Court ignores the Congressional

Intent in enacting the Coypright Act of

1976, more specifically Section 301(b)(3)

and the explanatory notes related thereto.

TABLE OF CONTERTS

Questions Presented

Citations to the Record and Opinions

Below

Jurisdiction

Statutes Involved

Statement of the Case

Reasons for Granting the Writ

Iit.

Iv.

The Tenth Circuit Court

opinion is contrary to this

Court's decision in Harper

& Row.

The rationale of this Court's

decision in Harper & Row

applies equally to uncopy-

rightable, unpublished

research as it does to works

of authorship.

The Copyright Act of 1976

did not preempt that body of

of law known as "the Unfair

Competition" cases.

In enacting the 1976 copyright

act, Congress did not intend

to eliminate the Unfair

Competition cases.

Page

Conclusion 22

Appendix A A-1

Opinion of the Court \of Appeals

Appendix B B-1

Findings, Conciusions and Judgment of

the Trial Court

TABLE OF AUTHORITIES

Harper & Row, Publishers, Inc. and the 8,9,10

Reader's Digest Assocation, Inc. v. 11,12,16

The Nation Associates, Inc., 4th 17,23

U.S. , 8&§ L.Ed. 2a 588, 105 S.Ct.

(1985)

Harper & Row (same case) 723 F.2d 195 8,10,11

(2a Cir) (1983)

International News Service v. Associated 18

Press, 248 U.S. 215, 63 L.Ed. 211, 39

S.Ct. 68 (1918)

Roy Export Co. Establishment v. Columbia 17,18

Broadcasting System, Inc., 672 F.2d

1095 (2d Cir) (1982)

Schuhart and Associates, v. Solo Serve 18

Corporation, et al., 540 F.Supp. 928

(W.D. Texas) (1982)

Warner Brothers, Inc. v. American Broad- 17,18

casting Co., 720 F.2d 231 (2d Cir)(1983)

iil

STATUTES

Page

17 U.S.C. Sec. 301(a), 301(b) 19

OTHER AUTHORITY

H.R. Report No. 1476, 94th Congress, 21

2a Sess. reprinted 1976 U.S. Code

Cong & Ad News, 5746 Et. Seq.

IN THE

Supreme Court of the Hnited States

OCTOBER TERM, 1985

ANDREW F. EHAT,

Petitioner,

Vv.

JERALD TANNER and SANDRA TANNER,

dba MODERN MICROFILM COMPANY,

Respondents.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE TENTH CIRCUIT

Petitioner, Andrew F. Ehat, prays that a

writ of certiorari issue to review the

Judgment and opinion of the United States

Court of Appeals for the Tenth Circuit entered

in the above-entitled case on December 30,

1985, overuling the decision of the United

States District Court for the Central Division

of Utah.

CITATIONS TO THE RECORD AND OPINIONS BELOW

The opinion of the Court of Appeals was

reported at 780 F.2d 876 and is reproduced at

Appendix A hereto. The District Court's

Findings of Fact, Conclusions of Law and

Judgment are reproduced at Appendix B hereto.

JURISDICTION

The Court of Appeals entered its Judgment

(Appendix A) on December 30, 1985, and denied

a timely petition for rehearing and petition

for rehearing en banc on February 10, 1986.

The jurisdiction of the court is invoked under

28 USC, paragraph 1254(1)(1970).

STATU-ES INVOLVED

The statutes involved are United States

Code, Title 17, paragraphs 301(a) and 301(b),

which provide in pdrtinent parts:

(a) "On and after January 1, 1978,

all legal or equitable righic that

are equivalent to any of the

exclusive rights within the general

scope ef copyright as specified by

Section 106 in works of authorship

that are fixed in a tangible medium

of expression and come within the

subject matter of copyright as

specified by Sections 102 and 103,

whether created before or after that

date and whether published or

unpublished, are governed

exclusively by this title.

Thereafter, no person is entitled to

any such right or equivalent right

in any such work under the common

law or statutes of any state."

(b) “Nothing in this title annuls

or iimits any right or remedies

under the common law or statutes of

any state with respect to:

(3) activities violating legal or

equitable rights that are not

equivalent to any of the exclusive

rights within the general scope of

106."

STATEMENT OF THE CASE

The opinion of the Tenth Circuit

succinctly states the relevant facts.

"“Ehat was a scholar engaged in post-

graduate research on the history of

the Church of Jesus Christ of

Latter-Day Saints (the LDS Church).

The Tanners publish and distribute

documents and works relevant to the

LDS Church. In the course of his

research, Ehat examined and took

notes from a 350-page transcript of

the William Clayton Journals at the

LDS Church Archives. Ehat gave to

his colleague, Lyndon Cook, material

consisting of quotations he and

another researcher had taken from

the Journals as well as his own

notes and comments. This material

was surreptitiously taken from

“Cook's office, copied, and

replaced. One of these unauthorized

copies found its way to the Tanners,

who had no part in the original

removal from Cook's office. They =

blacked out the material added by

ZEhat, printed the original extracts,

and sold them to the public.

Ehat's complaint asserted

claims under the federal copyright

statutes, on which the judge granted

summary judgment for the Tanners.

In addition, the complaint alleged

state common law claims for unfair

competition and unjust enrichment.

Following a bench trial on these

claims, the Court entered judgment

for Ehat. On appeal, the Tanners

assert that the district court erred

in awarding damages on Ehat's common

law claims because those claims are

preempted by the federal copyright

statutes. (Appendix A, page A-3 to A-5)

The Tenth Circuit's language that the 77

pages of notes belonging to Petitioner "were

surreptitiously taken" is a euphamism for

stolen. Moreover, the Trial Court found that

the Respondents well knew that they were

stolen when a copy of the notes reached their

establishment, that they indeed exulted in the

fact that they were now printing stolen

documents. So the fundamental issue presented

on this appeal is whether the Tenth Circuit

Court opinion should be allowed to stand thus

permitting theives and receivers of stolen

documents full impunity to ply their trade.

REASOHS FOR GRANTING THE WRIT

POINT I.

The Tenth Circuit Court opinion is

contrary to this Court's decision in Harper &

Row.

The Trial Court in making his Findings of

Fact expressly held that in the blacking out

process the defendants removed from the notes

any indicia of "authorship" that would give

the works the resulting copyrightability.

In his Findings, Judge Christensen

specifically found:

"that plaintiff had acquired

and had a special possessory

interest in his notes as he had

personally prepared them, which was

recognized by the limited number of

colleagues with which he shared

copies and particularly by Lyndon W.

Cook. That special proprietary or

iE esi

property interest in his physical

notes did not include any

copyrightable interest in their

content apart from certain

interpretations and comments

hereinafter to be mentioned.

The Trial Court continued:

"The quotations from the

Clayton journals themselves were not

a product of any literary effort of

accomplishment by plaintiff nor any

creativity and were not subject to

in plaintiff's favor, but

plaintiff's right in the Ehat notes

as a physical matter and property

was of a nature and character

different in kind from any

copyrightable interest that may have

existed in said original writings

comprising the Clayton journals, and

were and are not within the scope or

purpose of right established under

the copyright laws of the United

States or any equivalent."

(Emphasis added) (Appendix B, page

16-11).

The opinion of the Circuit Court not only

ignores those express Findings of the Trial

Court but says categorically, "Literary works,

including compilations and derivative works,

are within the subject matter of copyright if

they are original works of authorship fixed in

any tangible medium of expression. See 17

U.S.C. paragraph 102, 103. This is so

notwithstanding the material could not be

copyrighted. See Harper & Row, 723 F.2d. at

200. The material at issue here clearly falls

within the subject matter of copyright. The

District Court did not address this issue, and

Ehat does not argue otherwise on appeal."

(Appendix A, page A-8 )(Emphasis added).

There is not a whisper in the Circuit Court

opinion to suggest that the notes stolen and

printed herein were "original works of

authorship fixed in any tangible medium of

expression." Moreover petitioner and the

Trial Court did “address the issue" as noted

above.

There is thereafter no statement in the

Circuit Court opinion nor any reference to the

transcript to show that the notes, verbatim

extracts from William Clayton's journals, come

"within the subject matter of copyright." The

Circuit Court's opinion simply makes a blanket

assertion both of law and fact with no

reference whatever to the record and in direct

conflict with the explicit findings of the

Trial Court. The Circuit Court cannot reverse

the Trial court's Findings on legal issues and

should not on equitable issues unless the

record on appeal shows the clear weight of the

evidence demands.

The Harper & Row citation, noted above,

is to the Second Circuit opinion reversed by

this Court, which reversal happened after the

oral argument of the case at bar before the

Tenth Circuit but before the opinion was

rendered. Copies of this Court's decision in

Harper & Row were furnished by the undersigned

to the members of the Tenth. Circuit Court

before the written decision was issued.

Circuit Judge Seymour's opinion, speaking

for the Tenth Circuit, continues:

"In an effort to distinguish

this case from a pre-empted claim,

the District Court granted Ehat

relief based on its finding that, by

printing and selling Ehat's notes,

the Tanners “bodily appropriated the

work product of plaintiff' and

derived a profit from their

misappropriation [Citation to

Record]. We need not decide whether

this misappropriation of material

states a claim for relief under Utah

law. Assuming that is does, [cases

and commentary cited], we see no

ee ee

distinction except between such a

state right and those exclusive

rights encompassed by federal

cannot agree with the District Court

that Ehat's state claim was not

within the scope of copyright

because it was based on his right in

the notes “as a physical matter and

property.' [Citation to Record].

Ehat did not allege a state iaw

claim of conversion to recover for

the physical deprivation of his

notes. Instead he sought to recover

for damage flowing from their

reproduction and distribution.

{Citation to the Second Circuit

Harper & Row opinion]. Such

reproduction interferes with an

intangibie, literary or artistic

property right equivalent to

(Emphasis Added) (Appendix A, page

A-10 ).

So the Tenth Circuit Court says that the

petitioner had only a physical right to

a of the actual paper cn which his

notes were made with no other property rights

in the notes that would fall outside the scope

of copyright. That flies directly in the face

of the expressed language of this Court in

Harper & Row and while the Trial Court did not

coin the phrase "the right of first

publication, an important, marketable,

subsidiary right" Justice O'Connor, speaking

ee Le me eR oe Tie Sen ee |

for the majority of this Court makes it very

clear that such a right does indeed exist and

is independent of the physical paper requiring

an action for conversion to retrieve.

Indeed, referring to that opinion of this

Court, Judge Seymour in the Tenth Circuit

states that Harper & Row "was reversed on

other grounds." (Appendix A, page A-7 ).

The undersigned respectfully submits that the

Harper & Row case was not reversed on "other

grounds" but rather, the ground for reversal

included the very grounds employed by the

Trial Court in the case at bar.

While it is true that in Harper & Row the

question of fair use and certain other

doctrines were invoived, the opinion of the

Supreme Court makes it clear that it reversed

the Second Circuit on all points. The very

opinion itself which awarded relief to

plaintiff for violation of their pre-

publication rights indicates that it has

approved in this substantial area a right not

preempted by the new copyright law. It

ee |

therefore seems inconsistent for the Tenth

Circuit Court to cite the Second Circuit's

decision in Harper & Row's language of

preemption when this Court's decision which

reverses it, reaffirms a substantial area of

non-preemption. We believe that the opinion

of the Supreme Court in Harper & Row makes it

clear that an author, even a compiler has a

"first right of publication" in both

copyrightable and uncopyrightable material

which is a valuable property right and which

cannot be infringed upon even when dealing

with historical or factual as opposed to

creative matters.

It should be noted at this point that

whereas, in Harper & Row, the Nation Magazine

scooped Time by publishing an article largely

created with indicia of authorship and using

some three to four hundred words of the Gerald

Ford manuscript, in the case at bar the

vouigelitient appropriated petitioner's entire 77

pages of notes and printed them in full. So

we are not dealing here with just 13% of a

EE LT TN

creative article as in Harper & Row, even

though that percentage was "the heart" of the

Ford manuscript, here we are dealing with the

whole heart and soul, the complete set of

notes.

POINT iI.

The rationale of this Court's decision in

Harper & Row applies equally to uncopy-

rightable, unpublished research as it does to

works of authorship.

In Justice O'Connor's opinion, speaking

for the majority, she said:

"In its commercial guise,

however, an author's right to choose

when he will publish is no less

deserving of protection. The period

encompassing the work's initiation,

its preparation, and its grooming

for public dissemination is a

crucial one for any literary

endeavor. The Copyright Act, which

accords the copyright owner the

“right to control the first public

distribution' of his work, House

Report, at 62, echoes the common

law's concern that the author or

throughout this critical stage. See

generally Comment, The Stage of

Publication as a "Fair use" Factor:

Harper & Row, Publishers v. Nation

Enterprises, 58 St. John's L Rev 597

(1984). The obvious benefit to

author and public alike of assuring

authors the leisure to develop their

ideas free from fear of

expropriation outweights any short

term "news value" to be gained from

premature publication of the

author's expression. See Goldstein,

70 Colum L. Rev 983. 1004-1006

(1970) (The absolute protection the

common law accorded to soon-to-be

published works "({was] justified by

[its] brevity and expedience"). The

author's control of first public

distribution implicates not only his

personal interest in creative

control but his property interest in

exploitation of prepublication

rights, which are valuable in

themselves and serve as a valuable

adjunct to publicity and marketing.

See Belushi v. Woodward, 598 F Supp

36 (DC 1984) (successful marketing

Gepends on coordination of

serialization and release to

public); Marks, Subsidiary Right and

Permissions, in What Happens in Book

Publishing 230) (C. Grannis ed

1967) (exploitation of subsidiary

rights is necessary to financial

success of new books). Under

ordinary circumstances, the author's

right to control the first public

appearance of his undisseminated

expression will outweight a claim of

fair use." (Emphasis added) (85

L.Ed. 2d 603, 604).

Continuing, the opinion reads:

"Where an author and publisher

have invested extensive resources in

creating an original work and are

poised to release it to the public,

no legitimate aim is served by

preempting the right of first

publication. The fact that the

words the author has chosen to

clothe his narrative may of

themselves be "newsworthy" is not an

independent justification for

unauthorized copying of the author's

expression prior to publication. To

paraphrase another recent Second

Circuit decision:

"(Respondent] possessed an

unfettered right to use any factual

information revealed in [the

memoirs] for the purpose of

enlightening its audience, but it

can claim no need to “bodily

appropriate' [Mr. Ford's}

“expression' of that information by

utilizing portions of the actual

[manuscript]. The public interest

in the free flow of information is

assured by the law's refusal to

recognize a valid copyright in

facts. The fair use doctrine is not

a license for corporate theft,

empowering a court to ignore a

underlying work contains material of

possible public importance." Iowa

State University Reserach

Foundation, Inc. v. American

Broadcasting Cos., Inc. 621 F2d 57,

61 (1980)(citations omitted)."

Accord, Roy Export Co.

Establishment v. Columbia

Broadcasting System, Inc. 503 F Supp

1137 (SDNY 1980) ("“newsworthiness"

of material copied does not justify

copying), aff'd 672 F2d 1095 (CA2),

cert denied. 459 US 826, 74 L Ed 2d

63, 103 S Ct 60 (1982)" (Emphasis

added) (85 L.Ed 2d 605).

It is submitted that whereas the

researcher in the uncopyrightable arena of

Ee |

historical facts by the very process of taking

notes and selecting that which he ultimately

intends to use is investing "extensive

resources" which may well be part of an

original and later copyrightable work. To

leave that unpublished research in a no-man's

land of easy prey to document pirates puts all

historians doing research and others in

related social and physical science research

fields dealing with collection of facts (as

well as the repositories where those facts,

unpublished journals, case histories, data

banks, etc., repose), in jeapordy. Moreover

it acts as a serious deterrent to research

because it puts the researcher at risk until

he publishes; surrounding the research with

his original, creative authorship. That

jeapordy is not essentially different, the

undersigned submits, from the jeapordy in

which ex-President Ford was put, between the

time of creation of his manuscript and the

publication of extracts therefrom by the

Nation magazine. The researcher's notes in

this instance are simply one step before the

creative process that existed in the Harper &

Row situation and that one critical step is

the difference between copyrightability with

attendant protection and uncopyrightability

and no protection if the Tenth Circuit Court's

epinion is allowed to stand.

Such a distinction would work against,

not for the free dissemination of ideas.

Moreover, a researcher's right to choose when

he will publish is essentially the same right

before he has clothed the research with

authorship as well as after he has done so,

and in either case brings him clearly within

the language of Harper & Row cited above.

This is because the research is part and

parcel of the "period encompassing the works

initiation, its preparation, and its grooming

for public dissemination." It is indeed the

beginning step of that very process.

POINT III.

The Copyright Act of 1976 did not preempt

that body of law known as “the Unfair

Competition" cases.

The undersigned quotes again that portion

of the Tenth Circuit opinion relating to pre-

emption:

"We need not decide whether

this misappropriation of materials

states a claim for relief under Utah

law. Assuming that is does, see,

generally, International News

Service v. Associated Press, 248 US

215 (1918), Prosser and Keeton on

Torts, paragraph 130 at 1020-22 (5th

Ed. 1984), we see no distinction

between such a state right and those

exciusive rights encompassed by the

federal copyright laws. See Warner

Brother's Inc. v. American

Broadcasting Co.'s., 720 F.2d, 231,

247 (2d Cir 1983)("state law claims

that rely on the misappropriation

branch of unfair competition are

preempted'); Schuchart ane

Associates, 540 F.Supp. at 943-44

(same). See, generally, 1 Nimmer,

paragraph 1.01[{B], at 1-16 to 1-22."

(Emphasis added).

Warner Brothers cited above was a Second

Circuit decision rendered a year after the Roy

Export case, cited with approval in the

Supreme Court's Harper & Row decision noted

above in Point II. Those three cases, the two

cited herein and Roy Export point up the

conflict. Our Tenth Circuit opinion alludes

again to the Roy Export Company case, 672 F.2d

1095 in a footnote at the end of the opinion

(Appendix A, page A-15 ) and says reliance on

that case is “misplaced because that case is

decided under the prior copyright law." As

argued hereafter in more detail, the re-

enacting of the copyright law did not overule

Roy Export and its predecessors under the

guise of "preemption." Accordingly, this

Court needs to clearly resolve that conflict

between the Warner and Schuchart cases and the

International News Service to Roy Export body

of law and clearly and affirmatively reassert

the longstanding law that some recognized

types of expression, though not copyrightable

are still protected from misappropriation

under the Unfair Competition theory, whether

they be news (INS) or film clips partly in the

public domain (Roy Export) or in historian's

unpublished research notes.

POINT IV.

—

In enacting the 1976 copyright act,

Congress did not intend to eliminate the

Unfair Competition cases.

The Tenth Circuit opinion in the case at

bar quotes Section 301(a) set out at the

beginning of this petition which contains the

preemption language on which the opinion is

based and further quotes the committee of the

judiciary notes suggesting congressional

intent, (Appendix A, page A-15 ) but the

Court neglects to refer to Sub-section (b)

also set out at the beginning of this petition

but which is here repeated as follows:

"(b) Nothing in this title

annuls or limits any right or

remedies under the common law or

statutes of any State with respect

to --

(1) subject matter that

does not come within the

subject matter of copyright as

specified by sections 102 and i103,

including works of authorship not

fixed in any tangible medium of

expression; or

(2) any cause of action

arising from undertakings commenced

before January 1, 1978; or

(3) activities violating legal

or equitable rights that are not

equivalent to any of the exclusive

rights within the general scope of

106." (Emphasis added).

The relevant explanatory notes of this

section provide:

"In a general way subsection

(b) of section 301 fsubsec. (b) of

this section] represents the obverse

of subsection (a). It sets out in

broad terms and without necessarily

being exhaustive, some of the

principal areas of protection that

preemption would not prevent the

States from protecting. Its purpose

is to make clear, consistent with

the 1964 Supreme Court decisions in

Sears, Roebuck & Co. v. Stiffel Co.,

376 U.S. 225 [84 S.Ct. 784, 11

L.Ed.2a 661 rehearing denied 84

S.Ct. 1131, 376 U.S. 973, 12 L.Ed.2d

87], and Compco Corp. v. Day-Brite

Lighting, Inc. 376 U.S. 234 [84

S.Ct. 779, 11 L.Ed.2d 669, rehearing

denied 84 S.Ct. 1162, 377 U.S. 913,

12 L.Ed.2d 183], that preemption

does not extend to causes o. action,

or subject matter outside the scope

of the revised Federal Copyright

statute.

The note continues:

“Misappropriation' is not

necessarily synonymous with

cause of action labeied as

“misappropriation' is not preempted

if it is fact based neither on a

right within the general scope of

106 {section 106 of this title] nor

of a right equivalent thereto. For

example, state law should have the

flexibility to afford a remedy

(under traditional principles of

equity) against a consistent pattern

of anauthorized appropriation by a

competitor of the facts (i.e., not

the literary expression)

constituting "hot" news, whether in

the traditional mold of

International News Service v.

Associated Press, 248 U.S. 215

(1918)(39 S.Ct. 68, L.Ed. 211], or

in the newer form of data updates

from scientific, business, or

financial data bases. Likewise, a

person having no trust or other

relationship with the proprietor of

a computerized data base should not

be immunized from sanctions against _

electronically or cryptographically

breaching the proprietor's security

arrangements and accessing the

proprietor's data." Report No. 94-

1476, House Committee on the

Judiciary.

Thus, it is reasonably clear that

Congress intended to leave intact the status

quo. To the same effect is this Court's

holding in Harper & Row in construing Section

107 of the new copyright act as follows:

"Even if the legislative

history were entirely silent, we

would be bound to conclude from

Congress' characterization of

Section 107 as a “restatement' that

its effect was to preserve existing

law concerning fair use of

unpublished works as of other types

of protected works and not to

~change, narrow, or enlarge it.'

Id., at 66. We conclude that the

unpublished nature of a work is ~[a]

key, though not necessarily

determinative factor' tending to

negate a defense of fair use.

Senate Report, at 64. See 3 Nimmer

Section 13.05, at 13-62 n 2; W.

Patry, The Fair Use Privilege in

Coypright Law 125 (1985) (hereinafter

Patry)." (Emphasis added)(85 L.Ed.

2d 603).

In its preemption argument the Tenth

Circuit erred on two counts. One, it ignored

Sub-section (3) of Paragraph (b) of Section

301 and second, it disregarded the explanatory

notes thereto which make it clear that the new

or a "restatement" that preserved the existing

law and was not intended to "change, narrow or

enlarge it."

CONCLUSION

Judge A. Sherman Christensen, the Trial

Judge in this case fairly summarized the

fundamental issues raised by the facts of this

case when ruling from the bench at the

conclusion of the trial as follows:

"I have inquired of myself

whether it must be held that our

legal system has painted itself and

its citizens into a corner where

private archives can no longer

‘ii

honestly acquire, process, study,

and publish manuscripts which have

not already entered the public

domain and exercise over them a

proprietary right or permit others

to do so in private under limited

permission until within that

permission they are made a part of

the public domain.

But must it be held that where

as such documents as studied and

analyzed in private they can be

physically stolen or equivalently

misappropriated and then through

this means added to the public

domain by peddling them for profit

to whomsoever the thief or receivier

of] the documents with knowledge of

the theft may wish, and that thereby

the recipients can enrich themselves

or accomplish their pecuniary or

nonpecuniary purposes, and that the

exchange of historical documents

must be underground, and that the

law must recognize that underground

Gistribution of stolen documents is

the -- an accepted way of life

beyond protection, and particularly

in the context of this case that

when that surfaces the law will

protect the public exploitation of

stolen documents as such,

independent of the ideas which they

may portray. If this were so, we

would hav established a system

designed to destroy the very

foundations of scholarly research

and the preservation of historical

writings and the relevant widening

public knowledge of history, and

every depository from the east coast

to the west coast would have to

revise its basic principles and be

victims without legal remedy to

anyone who directly or indirectly

steals their physical property, and

with knowledge or with knowledge of

theft publishes it contrary to their

claimed rights and against their

will.

I do not think under the

authorities that I have read that

the courts have been so painted into

a corner of futility and self-defeat

of this nature, and if that were so,

it would be a step immeasurably back

from the spread of knowledge that

has occurred within the protection

of our constitution and established

authority, and particularly with

regard to writings. If it were to

be held that no property in the

physical writing could be protected

in a court of law even though that

physical writing were stolen unless

it were subject to copyright or a

right equivalent thereto, not

including theft, it would be an

unfortunate thing. On the contrary,

however, I believe that some cf the

strongest and most respected pillars

of the common law [and] equity and

the state rule which I think will be

recocnized and is recognized in Utah

in principle mandate to the

contrary, among these are nemo dare

potest quod non habet, no man can

give what he hasn't got. Thou shalt

not steal. He who receives stolen

property acts improperly in the same

kind although not in the same degree

necessarily as the thief. One may

not profit by his own wrong.

(Appendix B, page 30-33 ) (Emphasis

added).

Judge Christensen therefore fairly and

Girectly addressed the issues of this case and

they are vital issues of importance and impact

not only to Utah but to historians and

researchers throughout the nation.

It is hardly fair to uphold a Tenth

Circuit opinion which

skirts all the issues by simply saying the

whole matter has been pre-empted by the new

For the foregoing reasons, Petitioners

respectfuliy request that this Court issue its

Writ of Certiorari to the Tenth Circuit Court

for review of its opinion.

Respectfully submitted,

GORDON A. MADSEN

ROBERT C. CUMMINGS

APPENDIX A

Andrew F. EHAT, Plaintiff-Appellee,

Vv.

Jerald TANNER AND Sandra Tanner,

Gba Modern Microfilm Company,

Defendants~-Appellants.

No. 84-1787

United States Court of Appeals,

Tenth Circuit.

Dec. 30, 1985

Scholar brought action alleging injury

from unauthorized reproduction and sale of

literary material in which he claimed

proprietary interest. The District Court for

the District of Utah, A. Shetman Christensen,

J., entered judgment against defendants.

Defendants appealed. The Court of

Appeals, Seymour, Circuit Judge, held that

state common-law claims for unfair competition

and unjust enrichment were preempted by

federal copyright statute.

Reversed and remanded.

A-1

Before HOLLOWAY, Chief Judge, SEYMOUR,

Circuit Judge, and BALDOCK, District Judge.

SEYMOUR, Circuit Judge.

Andrew Ehat brought this action against

Gerald and Sandra Tanner, dba Modern Microfilm

Company (the Tanners), alleging injury from

the Tanners' unauthorized reproduction and

sale of literary material in which Ehat

claimed a proprietary interest. Judgment was

entered against the Tanners, and they appeal.

We reverse.

Ehat was a scholar engaged in post-

graduate research on the history of the Church

of Jesus Christ of Latter-Days Saints (the LDS

Church). The Tanners publish and distribute

documents and works relevant to the LDS

Church. In the course of his research, Ehat

examined and took notes from a 350-page

transcript of the William Clayton Journals at

Ax2

the LDS Church Archives. Ehat gave to his

colleague, Lyndon Cook, material consisting of

quotations he and another researcher had taken

from the Journals as well as his own notes and

comments. This material was surreptitiously

taken from Cook's office, copied and replaced.

One of these unauthorized copies found its way

to the Tanners, who had no part in the

Original removal from Cook's office. They

blacked out the material added by Ehat,

printed the original extracts, and sold them

to the public.

Ehat's complaint asserted claims under

the federal copyright statutes, on which the

judge granted summary judgment for the

Tanners. In addition, the complaint alleged

State common law claims for unfair competition

Le William Clayton lived during the 1800's

and was for a time the private secretary to

Joseph Smith, the first president of the LDS

Church. The Journals at issue were kept by

Clayton from 1842 to 1846 while he and Joseph

Smith lived in Nauvoo, Illinois.

A-3

and unjust enrichment. Following a bench

trial on these claims, the Court entered

judgment for Ehat. On appeal, the Tanners

assert that the district court erred in

awarding damages on Ehat's common law claims

because those claims are preempted by the

2. In this regard, the complaint alleged as

follows:

"The unauthorized and infringing

use therefore by the defendants of

the copyrighted work, the

publication of stolen or ‘obtained

without permission' notes that were

unpublished in which the plaintiff

owns the exclusive proprietary

interest, and the unfair and illegal

use of purloined work product and

research intended by plaintiff to be

published in his own right will

cause, unless enjoined, irreparable

harm, damage and injury to

plaintiff, will constitute unfair

competition and unjust enrichment of

the defendants from the work product

of the plaintiff and will rob the

plaintiff of his proprietary

interest in both published and

unpublished materials vouchsafed to

him by the statutes of the United

States noted hereinabove."

Rec. vol. I, at 5.

A-4

federal copyright statutes. We agree.

Federal copyright law was amended by the

follows:

"On and after January l, 1978,

all legal or equitable rights that

are equivalent to any of the

exclusive rights within the general

scope of copyright as specified by

section 106 in works of author

that are fixed in a tangible medium

of expression and come within the

subject matter of copyright as

specified by sections 102 and 103,

whether created before or after tnat

date and whether published or

unpublished, are governed

exclusively by this title.

Thereafter, no person is entitled to

any such right or equivalent right

in any such work under the common

law or statutes of any State.”

17 U.S.C § 30l(a) (1982). Congress expressly

stated that section 301 is intended to prevent

"the States from protection ... [a work]

a Ehat has not appealed the grant of

summary judgment against him on his federal

even if it fails to achieve Federai statutory

in originality to qualify, or because it has

fallen into the public domain." H.R.Rep. No.

1476, 94th Cong., 2d Sess. 131, reprinted in

1976 U.S.Code Cong. & Ad.News 5659, 5747.

State law forbidding others to copy an article

"unprotected by a patent or a copyright...

would interfere with the federal policy, found

in Art. I, § 8, cl.8, of the Constitution and

in the implementing federal statutes, of

allowing free access to copy whatever the

federal patent and copyright laws leave in the

public domain." Compco Corp. v. Day-Brite

Lighting, Inc., 376 U.S. 234, 237, 84 &.Ct.

779, 782, 11 L.Ed.2d 669 (1964); see also Suid

——————e

v. Newsweek Magazine, 503 F.Supp. 146, 148

(D.D.C.1980).

Under section 301, a state common law or

statutory claim is preempted if: (1) the work

is within the scope of the “subject matter of

103; and (2) the rights granted under state

law are equivalent to any exclusive rights

within the scope of federal copyright as set

out in 17 U.S.C. § 106. See Harper & Row

Publishers, Inc. v. Nation Enterprises, 723

F.2d 195, 199-200 ;(2d Cir.1983), rev'd on

other grounds, U.S. , 205 §.Ct.

2218, 85 L.Ed.2d 588 (1985); Schuchart &

Associates v. Solo Serve Corp., 540 F.Supp.

928, 942 (W.D.Tex.1982); 1M. Nimmer, Nimmer

on Copyright § 1.01[{B], at 1-9 (1985).

{1] Literary works, including

compilations and derivative works, are within

the subject matter of copyright if they are

original works of authorship fixed in any

tangible medium of expression. See 17 U.S.C.

§§ 102, 103. This is so notwithstanding the

material could not be copyrighted. See Harper

& Row, 723 F.2d at 200. The material at issue

here clearly falls within the subject matter

of copyright. The district court did not

address this issue, and Ehat does not argue

otherwise on appeal.

We now. turn to whether the rights Ehat

seeks to assert under state common law are

equivalent to those exclusive rights within

the scope of copyright. Under federal law,

the owner of copyright has the exclusive right

"to reproduce the copyrighted work" and "to

distribute copies” to the public by sale. See

17 U.S.C. §§ 106(1), (3).

"When a right defined by state law

may be abridged by an act which, in

and of itself, would infringe one of

the exclusive rights, the state law

in question must be deemed

preempted. .. . Conversely, when a

state law violation is predicated

upon an act incorporating elements

beyond mere reproduction or the

like, the rights involved are not

equivalent and preemption will not

occur.” ,

Harper & Row, 723 F.2d at 200 (citations

omitted).

{2] In an effort to distinguish this

case from a preempted claim, the district

court greanted Ehat relief based on its

finding that, by printing and selling Ehat's

notes, the Tanners "bodily appropriated the

work product of plaintiff" and derived a

profit from their misappropriation. Rec.,

vol. V. at 13-14. We need not decide whether

this misappropriation of material states a

claim for relief under Utah law. Assuming

that it does, see generally International News

Service v. Associated press, 248 U.S. 215, 39

S.Ct. 68, 63 L.Ed. 211 (1918); Prosser and

Keeton on Torts § 130 at 1020-22 (5th ed.

1984), we see no distinction between such a

State right and those exclusive rights

encompassed by the federal copyright laws.

See Warner Bros., Inc. v. American

Broadcasting Co's., 720 F.2d 231, 247 (2d

Cir.1983)("state law claims that rely on the

misappropriation branch of unfair competition

are preempted"); Schuchart & Associates, 540

F.Supp. at 943-44 (same). See generally l

Nimmer § 1.01[{B], at 1-16 to 1-22. We cannot

agree with the district court that Ehat's

state claim was not within the scope of

the notes "as a physical matter and property."

Rec., vol. V, at 9. Ehat did not allege a

State law claim of conversion to recover for

the physical deprivation of his notes.

Instead, he sought to recover for damage

flowing from their reproduction and

distribution. See Harper & Row, 723 F.2d at

200-01. Such reproduction interferes with an

intangible literary or artistic property right

equivalent to copyright. See 1 Nimmer §

1.01{B], at 1-14.4 n. 51.

[3] Our view of the nature of Ehat's

claim is confirmed by the district court's

award of damages. The court awarded $960,

representing the Tanners‘ profits from the

printing and sale of their publication, which

is clearly an award for the reproduction of

Ehat's work. The court also awarded $3,000

which it found Ehat suffered as a reduction in

the market value of his master's thesis due to

the misappropriation. This damage also flows

from the reproduction of the material rather

than from its physical taking. See Harper &

Row, 723 F.2d at 201. Finally, the court

awarded Ehat $12,000 for general damage to his

reputation as a scholar resulting from

"defendant's unlawful and improper

publication." Rec., vol. V, at 15. Because

the reputation injury arose out of the copying

of Ehat's work, that claim is preempted as

well. See 1 Nimmer § 1.01[B], at 1.14.2 n.

49,

The judgment entered by the district

court conclusively establishes the nature of

Ehat's claim as equivalent to one within the

scope of the federal copyright. The court

thus stated:

A-13

—

"IT IS NOW HEREBY ORDERED, ADJUDGED AND

DECREED:

l. That defendants' publication as such

of a facsimile of the 'Ehat notes' as referred

to in the findings herein was’ and is unlawful

and a violation of plaintiff's rights thereto.

2. That by reason cf said publication

the plaintiff is hereby granted judgment

against the defendants for the sum of $15,960,

with interest from date of judgment at the

rate provided by law." Rec., vol. I, at 196

(emphasis added).

(4] Ehat "cannot achieve by an unfair

competition claim what [he] failed to achieve

under [his] copyright claim." See Durham

A-14

Industries, Inc. v. Tomy Corp., 630 F.2d 905,

918 (2d Cir.1980).

"The intention of section 301 is to

preempt and abolish any rights under

the common law or statutes of a

State that are equivalent to

coming within the scope of the

Federal copyright law. The

declaration of this principle in

section 301 is intended to be stated

in the clearest and most unequivocal

language possible, so as to

foreclose any conceivable

misinterpretation of its unqualified

intention that Congress shall act

preemptively, and to avoid the

development of any vague borderline

areas between State and Federal

Proection."

H.R.Rep. No. 1476, 94th Cong., 2d Sess. 130,

reprinted in 1976 U.S.Code Cong. & Ad News,

5659, 5746. ,

Accordingly, Ehat's state law claim is

preempted. The case is reversed and remanded

4. Ehat's reliance on Roy Export Co. v.

Columbia Broadcasting Sys., 672 F.2d 1095 (2d

Cir.1982), is misplaced because that case was

decided under the prior copyright law. Roy

Export involved film clips protected by

federal copyright and a compilation that

included the clips which was protected by

state common law copyright.

A-15

consistent with this

for further proceedings

opinion.

APPENDIX B

IN THE UNITED STATES DISTRICT COURT

STATE OF UTAH, SALT LAKE CITY

ANDREW F. EHAT,

PLAINTIFF, Case No. C83-0593C

Vs.

COURT'S RULING

JERALD TANNER, ET. AL.

DEFENDANT.

ll le i

BEFORE THE HONORABLE A. SHERMAN CHRISTENSEN

MARCH 23, 1984

SALT LAKE CITY, UTAH. MARCH 23, 1984, FRIDAY.

2:20 P.M.

THE COURT: Ladies and gentlemen, I

apologize for being 20 minutes late. A matter

of trying to go over notes, refresh

recollection as to records, and formulate

ideas, however roughly or time consuming. Yet

I'm convinced that when I feel myself

adequately advised, and all of us have been

studying this case over a period of time, and

the result depends at least in part upon

recollection as to facts testified to as well

as arguments and perceptions of counsel as

they contend with each other, one is seldom in

a better positiun to rule upon matters given

adequate preparation [than] when those things

are fresh in his mind. Accordingly, I propose

today to make and enter my findings of fact

and conclusions of law. I find as follows:

Be The plaintiff, Andrew F. Ehat, a

resident and citizen of the state of Illinois,

and the defendant, Jerald Tanner and Sandra

Tanner, who have done business under the name

of Modern Microfilm Company, are residents and

citizens of Salt Lake County, State of Utah.

This action involves conduct of the defendants

which occurred within Salt Lake County, Utah,

and arises under the laws of the United

States, involves a pendant state claim on

essentially the same facts.

2. Plaintiff is a graduate student of

Southern Illinois University, pursuing his

studies toward a Ph.D. in History, who by

reason of his experience and reputation as a

scholar and researcher and writing concerning

the history of the Church of Jesus Christ of

Latter-Day Saints, called the Mormon church,

enjoyed access to original documents and other

sources of information within the ownership or

care, custody, and control of that church.

For more than ten years the defendants have

been involved in investigation and research

and in the publication and distribution of

scholarly or historical documents and works

and commentaries with regard to the history of

that church from a somewhat different

perspective or viewpoint.

3. William Clayton lived during the

1800's and was for a period of time the

private secretary of Joseph Smith, the first

president of the Mormon church. William

Clayton kept three personal journals or

Giaries during the time that he and Joseph

Smith resided in Nauvoo, Illinois, during the

period Ncvember 27, 1942, through January 30,

1846 -- if I said 1942, of course I meant 1842

-~- through January 30, 1846. These journals I

will refer to generally as the Clayton

Journals.

4. The ownership, property, or literary

rights, copyrights or other interest in the

Clayton journals and other similar original

documents in the possession of the Mormon

church is not an issue in this case, nor is

that church a party to this action. It has

been sufficient to determine for the purposes

of this case, as I do, that that church has

had over a substantial period of time the

exclusive and lawful custody and possession of

the Clayton journals with unquestioned

authority to grant access to them as physical

property to whomsoever and under the

conditions it may determine. And whatever its

rights may be, it is clear that its rights are

superior to the rights of any of the parties

of -- in it to the original journals,

including its right to grant access to those

original journals as physical property to

whomsoever and under the conditions it might

determine.

§. During the approximate months of

January and February of 1979 the plaintiff

obtained from the Mormon church permissive

access to and did in fact read the Clayton

journals, particularly three volumes covering

the time period 1842 to 1846. The plaintiff

took therefrom notes and dates, and later

within said time copied from a transcript of

———— << LULL

said journals approximately 77 pages of

extracts. On his extracts plaintiff added

editorial comments of his own and dates, notes

of spelling and accuracy, and other minor

insertions. In the process the plaintiff

extended as a researcher substantial time and

effort.

6. Three other historians, Dr. Richard

Anderson, Dr. James Allen, and Dr. Dean Jesse,

also had access to the Clayton journals during

the same period, and Jesse and Allen

collaborated in making a complete typescript

of said journals, and by a preponderance of

the evidence the Court finds that that was

with the acquiescence and consent of the

Mormon church. It was from said typescript

that extracts in plaintiff's possession were

taken. Sometime in the fall of 1980 plaintiff

received from James Alien an additional

approximately 12 pages of extracts from the

Clayton journals that constituted reported

sermons of Joseph Smith which Clayton had

recorded in the original journals. At the

time of receiving these pages from Allen,

Plaintiff obtained permission from Allen to

use them in a book then in process ultimately

authored by plaintiff and Lyndon W. Cook

entitled The Words of Joseph Smith. Again,

the preponderance of the evidence establishes

that that furnishing, copying, and use, was

with the acquiescence and consent of the

Mormon church.

Ze In addition to using the Clayton

extracts in the book, The Words of Joseph

Smith, plaintiff used other extracts in an

article printed in the BYU Studies and used

other extracts in his master's thesis, Joseph

Smith's Introduction of Temple Orinances and

the 1844 Mormon Succession Question. Prior to

the compiling and printing of all three

publications, plaintiff obtained permission

specifically from Don Schmidt, LDS Church

Archivist to use the extracts in each of the

said works.

8. The usage in the profession of

historians in the generai area when copying or

quoting documents from repositories, public

and private, is that access to the document

carries with it the implication that the party

examining the document may make occasional

quotes from it in connection with the research

done to examine the same. This does not

extend to permitting a total reproduction of

said document in print. Further custom in the

profession is that if something more than

occasional quotes is desired for publication,

the historian must obtain express permission

either orally or in writing for such extended

quotations.

9. The general usage in the profession

between historians is that when a document or

source of quotation or a quotation is shared,

the party, by receiving it, gains no authority

to further circulate the document or

quotation, and should he intend to allude to

t or quote it or publish it in part or in

whole, he first obtains the permission cf the

giver and attributes or cites the giver as his

source, or as they may agree cites the

iii

original depository or source from which it

was originally obtained by the giver. These

customs as disclosed by the evidence are not

accepted by the Court as legal requirements,

but they are germane in appraising and

examining the facts with regard to the custody

of copies of the Clayton journal, and the

sharing of those copies among historians or

researchers. Plaintiff shared a copy of his

Clayton extracts which will in the 88 pages

comprising them be referred to as the Ehat

extracts, with his co-author of the book The

Words of Joseph Smith, Lyndon W. Cook, who

recognized that that copy was to be used only

for his own reserach in collaboration with

plaintiff or with his consent, and that he was

not to release or distribute copies to anyone.

This copy was ultimately stolen from Cook's

files, photocopied, and circulated, all

without permission or authority of Cook, and

all without permission or authority of the

plaintiff. The copies stolen consisted of

Ehat's 88 pages of the so-called Ehat notes

which had been assembled by Ehat as a result

of his access to the original journals and

typewritten copy as mentioned in the precise

form he determined to be most useful to him

and historically significant for his purposes.

10. By reason of plaintiff's reputation

as a Mormon scholar, a special privilege he

had enjoyed in getting original access to the

original Clayton journal and his relationship

to other scholars who had similar access

pursuant to authority and in keeping with his

efforts to compile an accurate copy of the

extracts from the Clayton journal which would

have maximum historical value for his purposes

as a writer and scholar, and be of

significance as an original source material

which he chose to publish them, the plaintiff

acquired and had a special possessory interest

in his notes as he had personally prepared

them, which was recognized by the limited

number of colleagues with which he shared

copies, and particularly by Lyndon W. Cook.

That special propietary or property interest

in his physical notes did not include any

copyrightable interest in their content apart

from certain interpretations and comments

hereafter to be mentioned.

11. The quotations from the Clayton

journals themselves were not a product of any

literary effort of accomplishment by plaintiff

nor any creativity and were not subject to

plaintiff's favor, but plaintiff's rights in

the Ehat notes as a physical matter and

property was of a nature and character

@ifferent in kind from any copyrightable

interest there may have existed in said

original writings comprising the Clayton

journals, and were and are not within the

scope or purpose of of rights established

under the copyright laws of the United States

or any equivalent.

12. The copy of plaintiff's assembled

extracts, plaintiffs comments and

interpolations which plaintiff had entrusted

to Professor Cook as already described, was in

the early part of 1982 surreptitiously removed

from the files of Professor Cook, which he

maintained for his own use in his office, by

one Kelly Johnson who had gained access to

that office under the guise of using it for

the purpose of religious gathering exclusively

and who, unknown to Dr. Cook and without his

authority, searched through Dr. Cook's

personal files -- now I could be mistaken in

this, buy my recollection is it was within a

file cabinet and not laying on his desk,

although my recollection is that a previous

paper was laying on his desk and which was

extracted by Johnson and then returned with an

apology without mentioning the extraction from

the file itself of the Ehat notes. Thus, it.

does appear by a great preponderance of the

evidence that with the deception and

subterfuge that had been mentioned, Johnson

went through Dr. Cook's personal files ina

file cabinet, and without authority extracted

and stole the 88-page copy of the Ehat notes

which had been entrusted to hin.

=—=—— °° °° °° ——

After Johnson had removed said notes from

Cook's office under such circumstances, he

surreptitiously made a photocopy or copies

thereof, then secretly, in order to avoid

detection, returned the copy he had stolen,

the copies so made being exact facsimiles.

Our basic concepts don't change very often,

but their application changes in connection

with the development among other things of

modern technology, and I can perceive no

difference, although Dr. Cook's precise copy

was stolen and thus reproduced, in that

situation and a situation where the very

physical piece of paper that had been stolen

had been stolen without being thereafter

copied, in the progress of events was

published in the precise form that the

original notes in Cook's possession were as

they had been stolen.

13. In May or June, 1982, the defendants

received an exact copy of the stolen Ehat

notes consisting of the 88 pages exactly as

plaintiff had recorded them including this

said interpolation and the comments of

plaintiff from one Kent Walgren, a Sait Lake

attorney. Neither defendant -- neither

Gefendants nor Kent Walgren were involved in

the originai theft of the Ehat notes. At that

time, hwoever, Kent Walgren knew, according to

my view of the preponderance if not

overwhelming evidence, that the notes he

delivered to defendants were a copy of the

very notes that had been stolen from Professor

Cook's office. Nor can the Court accept the

claim or argument that this was in the course

of an underground sharing of stolen or

misrepresented documents or misppropriated

documents for the purpose in and of itself

laudable of diffusing knowledge and viewpoints

and sharing historical information for profit,

advantage, or as a public service, and that

this excuse the conduct of the participants or

that others may have participated in similar

conduct as a reason for disregarding the

rights of the plaintiff does not impress the

Court in view of the absence of any convincing

proof that the plaintiff was a party to such

practice or failed to do anything --

everything within his power to correct or

remedy the situation in which he found himself

upon discovering that Cook's notes -- Cook's

copy of the Ehat notes had neon stolen.

13. At the time when the defendants

received the copy of the Ehat notes from

Walgren, they knew that said notes as so

received were an exact photocopy of the Ehat

notes which had been stolen from Dr. Cook's

office, and they either -=- and they not net

only confirm but they rather boasted about

that knowledge when they published said notes,

not only verbatim, with -- after excising

comments that they thought might subject them

to liability to the plaintiff under the

arrangement of the stolen notes. Among other

things in their signed oe in their attributed

introduction, I don't know whether they signed

it by handwriting, but it was printed, they

appeared in print as the authors preceding the

a |

publication of the exact Ehat notes as

indiciated, they recited from press reports

and comments with the apparent approval and at

least implied acceptance the very

circumstances of the stealing that have been

confirmed more specifically in the evidence.

Among other things in their introduction

they claimed no lack of knowledge as to how

they came to get the copy or no understanding

that it was anything but an exact reproduction

of the physical paper that Ehat had prepared

and entrusted to Dr. Cook, but they said among

other things on this point, quote, "In an

article entitled Restricted Church Documents

Stolen, the 7th East Press reported the

following, the names David Brown and Tom

Wilson are pseudonyms, according to this

paper," and then they quote the accounts that

they read emphasizing throughout that in the

first place the material was restricted. "A

BYU Graduate student has accused a member of a

bishopric of stealing copies of materials

which the student obtained from the vault of

the First Presidency. In doing research in

the LDS church, Andrew F. Ehat obtained

permission to examine restricted Nauvoo

diaries of William Clayton and make notes. He

gave a copy of his notes to BYU religious

instructor Lyndon Cook who kept these in his

campus office. The notes were taken without

permission and photocopied by David Brown, a

member of the bishopric which uses Cooks's

office."

Well, the evidence doesn't disclose it

was Brown in the first instance, but Johnson,

and that's a variance, but that would make no

difference as to my concept of the notice with

which defendants published the material in

question. and then as if to dispel the

argument that Ehat was somehow negligent in

not attempting to do everything he could to

maintain the privacy of his notes,

irrespective of this, it goes on to say:

"Individuals present report that Ehat was

extremely upset." They recite further, "Ehat

was able to obtain five copies of the

reproduced notes within 12 hours, but that

three of the people who turned in copies had

secretly made extra copies." It might occur

to one that if these were a rigged proceeding

within the view of the defendants, it would

hardly be in keeping to have Ehat so disturbed

about the matter as indeed the evidence shows

Clearly that he was.

The so-called Introduction leaves no room

to speculate whether the defendants were on

notice and had knowledge of the theft, and

that the copy they published was a precise --

a precise copy of the very thing that was

stolen. This eieieinee account they quote was

several months before the defendants published

the material in question.

14. I further find that in printing

plaintiff's extracts, defendant bodily

appropriated the work product of plaintiff,

and in doing so, sought to and did profit from

the efforts of the plaintiff under the

circumstances mentioned through the physical

misappropriation of his notes.

15. I further find that because of

Gefendant's publication of plaintiff's notes,

plaintiff's access to private repositories is

impaired to a degree. His future use of the

remaining extracts in his doctoral

dissertation is imparied for which -- and the

negotiations and saleability of the

dissertation are impaired, and that plaintiff

has been put to considerable expense in

attempting to vindicate his rights in this

case. I further find with regard to

plaintiff's claim for damages that the proof

is quite unsatisfactory in many respects and

in some respects is insufficient, even in view

of the rule that when one by an improper act

deprives an opposing party of the ability to

reconstruct, which would have happened without

the infraction, the Court is very liberal in

accepting estimates with some substantial

foundation in the record. Thus, plaintiff's

Claim for expenses in connection with his

efforts to protect his property rights and his

notes in the amount of $2,400 must be

rejected. That particular item on the ground

that that isn't recoverable as proximately

caused damages under the accepted rule. I do

find the evidence supports damages for $960

against the defendants representing

defencant's profits in the printing and sale

of approximately 1,950 copies of defendant's

publication. That plaintiff further as a

proximate cause of defendant's improper

publication has suffered damage in the amount

of $3,000 in reduction of the potential market

value of his master's thesis, dependent

substantially upon his use therein of the Ehat

notes unanticipated by a misappropriator of

his propietary interests therein.

I further find as general damages to

plaintiff's [reputation] as a scholar and

research historian plaintiff -- and as a

proximate result of defendant's unlawful and

improper publication, the plaintiff has

suffered damages in the sum of $12,000.

17. I find that the conduct of the

defendants was deliberate, and in bad faith in

some respects. In view of the co-mingling of

ideas and claims concerning freedom of speech,

freedom of press, however irrelevent to the

peculiar circumstances of this case they may

have been, but asserted in good faith by the

defendants, and because of the Court's

commitment to these principles which might be

compromised or misunderstood were punitive

damages to be awarded, and because the issue

of punitive damages was reserved by plaintiffs

neither in his complaint nor in the pretrial

order which I made clear governed the

proceedings at the trial, and no amendment to

either having been requested, punitive damages

within the discretion of the Court will be

denied.

18. The Court finds that unless an order

is issued enjoining the defendants from

continuing to publish and/or sell or circulate

the Ehat extracts as such is or as they are

printed in the Tanner publication, Clayton['s]

Secret Writings Uncovered, received in

evidence in this case, the defendants will

eas

continue to do so to the irreparable damage of

the plaintiff, and the defendants in so doing

would be unjustly enriched, and thus I find it

reasonably necessary and appropriate to enjoin

the defendants, their agents, and employees,

and those acting under their direction or in

concert therewith from publishing said Ehat

extracts in form as thus appropriated. I have

no disposition nor intent in any way to impede

the dissemination of the knowledge or the

ideas, but the very thing that has been thus

misappropriated cannot lawfully be continued

to be sold and distributed by the defendant

and those acting under then.

19. In view of the fact that the primary

efforts of the defendants in defense of this

action, irrespective of the particular grounds

of complaint, has been to establish their

right of publication of the Ehat notes as such

and as misappropriated and converted by them

knowingly, and in view of all of the other

circumstances of the case, the Court denies an

award of attorney's fees and in view of the

Deitel

fact that -- attorneys' fees to either party,

and in view of the fact that with regard to

the particular claims made by the plaintiff,

plaintiff has succeeded in part and failed in

part as the defendants have succeeded in part

and failed in part, an award of even taxable

[costs] will be denied.

From these finding of fact the Court now

Graws the following conclusions of law.

The Court has jurisdiction over this

action and jurisdiction to award the relief

hereby granted because that action involves a

state claim to the extent recognized here

which is pendent to a federal claim arising

under the laws of the United States, and by

reason of the diversity of the citizenship

between the parties, and that venue in this

district is proper. The original pleadings

have co-mingled the claim for copyright

infringement and unfair competition, and there

was no objection to that co-mingling on the

part of the defendants in formulating the

issues, the pretrial order reserves the issue

of unfair competition and I think implicit in -

the matter before me with regard to the

pendent claim or whatever legal theories may

support this action. Accordingly the Court,

if there should have been any problem of

pleadings that could have been amended in

advance and was not, will deem the complaint

amended to conform with the claim hereby

recognized and the proof which I deem

justifies it.

Ze That the plaintiff has no

copyrightable interest in the so-called Ehat

notes nor their ideas nor content, and that

plaintiff's claim against the defendants for

with prejudice.

3. That the plaintiff's pendent claim

for unfair competition and unjust enrichment

through conduct in the nature of violation of

a trade secret or partaking of principles

related thereto as dealt with in the case of

Kewanee Oil Company versus Bicron Corporation,

416 U.S. 471, and based specifically upon the

theft and misappropriation bodily of the Ehat

notes in which plaintiff had a valuable

proprietary and possessory interest and which

defendants in effect for profit physically

misappropriated, is essentially different in

kind and character from any rights within the

scope of protection of the copyright act or

any equivalent right or remedy and is not pre-

empted by the Federal Copyright Act nor any

authority of decision pusuant thereto.

4. That the ownership, property right,

or copyright interest in the historical

documents in the possession of the LDS church

are not in issue in this case nor is the

church a party to this action. And that for

the purposes of this case it is sufficient to

determine that it had and has a lawful and

exclusive custody and control fo the original

writings involved here with authority to grant

access to them during relevant times to

whomever and under what conditions it might

choose.

5. That apart from the ideas expressed

therein, the Ehat notes as they were

physically made and recorded by the plaintiff

and misppropriated and published by the

defendants represented a valuable proprietary

interest in the right of the plaintiff, the

violation of which the plaintiff has a valid

claim against the defendants which has been

established in this case.

6. The Court concludes that this is not

a case involving conflicting issues of

religious liberty, the right of expression of

conflicting or critical ideas, freedom of the

press, freedom of speech, prior restraint, or

the free interchange of ideas, it is simply

one involving the protection of property

interests in the Court's view against theft

and the knowing exploitation thereof for

commercial gain in unfair competition with

those possessing the possessory proprietary

interest.

It isn't an easy case. There are

conceptual, statutory, and precedential

difficulties presented in defendants claim,

and there are principles strongly supporting

it. One can note this in various cases, for

example, in International News Service versus

Associated Press, 248 U.S. 215 (1918); Kewanee

Oil Company versus Bicron Corporation, which I

have already mentioned; Schuchart ana

Associates, Professional Engineers

Incorporated, --I'm sorry, Schuchart and

Associates, Professional Engineers

Incorporated vs. Solo Serve Corporation, 540

F.Supp. 928, Western District of Texas, 1982,

citations to which I gave counsel yesterday,

which I think is a case perhaps most strongly

supporting defendant's contention of pre-

emption and written by one whom I know

personally to be an excellent judge. New York

Times Company versus United States, 403 U.S.

713 (1971), entirely different issue of

restraint, but in the concurring and

dissenting opinions of which may be found

words of wisdom which could touch if not

affect our problem. Harper and Row Publishers

versus Nation Enterprises, 501 F.Supp. 848,

Southern District of New York, 1980, Grove

Press Incorporated vs. Collectors Publication

Incorporated, 264 F.Supp. 603, Central

District of California, 1967; Capital Records

Incorporated vs. Richard W. Erickson, 2

Cal.App.3d 526, 40 ALR3d 553, certiorari

denied 398 U.S. 960 (1969); [Roy] Export

Company vs. Columbia, 503 F.Supp. 1137,

Southern District of New York, 1980, affirmed

672 F.2d 1095, certiorari denied, 646 Law.Ed.

2d 63, 1982. E.I. duPont deNemours and

Company vs. Christopher, 531 F.2d 1012, 5th

Circuit, 1970, among others.

I have merely cited these so that counsel

wiil know what has had influence upon my mind

because a number of those haven't been

mentioned by counsei and a number have. But

despite the [shoals], so to speak, the

importance of the issue here in the Court's

view transcends the somewhat limited pecuniary

interest of the parties and certainly any

difficulty of bother to the Court in

perceiving and applying correct principles

with appropriate differentiation of

essentially different situations. It is clear

that the Ehat notes were not copyrightable as

I have indicated, nor is recovery permitted

under any equivalent theory in view of the

1976 amendment to the Federal statute pre-

empting the field of copyright and indeed of

the view of principles that had been expressed

anticipating such statutory provisions..

Certainly the idea that public research

materials can be reserved for historians only

‘for the purpose of dissemination by those who

share their own religious, philosophical, or

intellectual viewpoints is repugnant to me,

and it is to the First Amendment and

Fourteenth Amendment of the Constitution of

the United States. And the very essence of

scholarly pursuit mandates that the

acquisition for] discernment of knowledge

shall not be constrained by any considerations

not compeliing and essential to sustain the

American system best calculated overall to

achieve expanding freedoms.

I certainly agree with the language of

Mr. Justice Brandeis, although not pausing to

inquire into the context in which he applied

it, that the noblest of human production,

knowledge, truth ascertained, conceptions, and

ideas become, after voluntary communication to

others, free as the air to common use. That

expression is both grand and an important

principle. And yet we must inquire deeper in

cases coming before courts than

generalizations that often people indulge in

in applying concepts to inappropriate

situations. And I have inquired of myself

whether it must be held that our legal system

has painted itself and its citizens into a

corner where private archives can no longer

honestiy acquire, process, study, and publish

manuscripts which have not already entered the

public domain and exercise over them a

proprietary right or permit others to do so in

private under limited permission until within

that permission they are made a part of the

public domain.

But must it be held that where as such

documenns as studied and analyzed in private

they can be physically stolen ~- equivalently

misappropriated and then thruough this means

added to the public domain by peddling them

for profit to whomsoever the thief or

receiv({er of] the documents with knowledge of

the theft may wish, and that thereby the

recipients can enrich themselves or accomplish

their pecuniary or nonpecuniary purposes, and

that the exchange of historical dccuments must

be underground, and that the law must

recognize that underground distribution of

onan documents is the -- an accepted way of

life beyond protection, and particularly in

the context of this case that when that

surfaces the law will protect the public

exploitation of stolen documents as such,

independent of the ideas which they may

portray. If this were so, we would ‘iave

established a system designed to destroy the

very foundations of scholarly research and the

preservation of historical writings and the

relevant widening public knowledge of history,

and every depository from the east coast to

the west coast would have to revise its basic

principles and be victims without legal remedy

to anyone who directly or indirectly steals

their physical property, and with knowledge or

with knowledge of theft publishes it contrary

to their claimed rights and against their

will.

I do not think under the authorities that

I have read that the courts have been so

painted into a corner of futility and self-

defeat of this nature, and if that were so, it

would be a step immeasurably back from the

spread of knowledge that has occurred within

the protection of our constitution and

estasblished authority, and particularly with

regard to writings. If it were to be held

that no property in the physical writing could

be protected in a court of law even though

that physical writing were stolen unless it

were subject to copyright or 4 right

equivalent thereto, not including theft, it

would be an unfurtunate thing. On the

contrary, however, I believe that some of the

strongest and most respected pillars of the

common law f{and] equity and the state rule

which I think will be recognized and is

recognized in Utah in principle mandate to the

contrary, among these are nemo dare potest

quod non habet, no man can give what he hasn't

got. Thou shalt not steal. He who receives

stolen property acts improperly in the same

kind although not in the same degree

necessarily as the thief. One may not profit

by his own wrong.

There is a valid distinction in the

degree and nature of its protection betwen

physical weneute lawfully in one's possession

and the possession of ideas not subject to

limitations I suggested in the words of Mr.

Justice Brandeis are free as the air, should

be. To recognize these principles is not to

impede public knowledge but to sustain the

very foundations om which the dissemination of

knowledge and other essential operations of an

ordered society of freedom must represent in

my Sudgmnet.

6. The plaintiff's entitled to a

judgment for compensatory damages against the

defendant in the sum of $960 representing

profits made by the defendants for the

unlawful publication of the Ehat notes, for

the sum of $3,000 for the reduction by

defendants unlawful acts of the potential

market value of the publication of plaintiff's

master's thesis, for the sum of $12,000 for

damage to plaintiff's reputation as a scholar

and researcher; that while other claims for

damage the Court regards as so speculative or

uncertain as to preclude award, it is

considered that the awards actually made are

fully supported by a preponderance of the

evidence. In view of the circumstances of the

case, I have considered whether the award of

$960 of profits, which the evidence shows

ens ee RT Ne NT

inured to the defendants, was duplicative of

the other awards. My judgment tells me that

the total amount of damages is substantially

in excess of what I have awarded, even by the

aggregation, and it so happens that the

precise measure of profits is the only exact

figure we have, and I am convinced that

damage, if we don't -- if we consider an

equivalent in the same light as the injury

plaintiff has suffered as distinguished from

the benefit, pecuniary benefit defendants have

achieved, there would be an equivalence from

that different view point under the

preponderance of the evidence substantially in

excess of the $960 item anyway.

7. That in view of the circumstances of

this case, and in the exercise of its

discretion, the Court has denied an award of

punitive damages against the defendants,

denied the defendants the recovery of

attorney's fees in expenses against the

plaintiff.

8. That in view of the fact that each

of the parties succeeded in part and failed in

part on the claims asserted in the complaint,

no taxable costs shall be awarded.

These findings of fact and conclusions of

law are intended to be and are deemed to be in

compliance with Rule 52(a) of the Federal

Rules of Civil Procedure as they are stated in

open court or the record.

Counsel for the parties are hereby

Girected to submit to the Court jointly or

severally, as they may elect, an appropriate

form of judgment in harmony with these

findings of fact and conclusions of iaw within

a period of ten days together with any

suggestions or motions in anticipatory

complaince with Rule 52(b), Federal Rules of

Civil Procedure. The Court thereupon without

further argument, unless otherwise determined

by it, but with reservations of its privilege

to file a memorandum of law in further support

of its conclusions herein expressed are as

they may be modified will execute and enter

judgment.

Any suggestions or motions for the

amendment of the Court's findings and

conclusions within the period of ten days I

have allowed for the submission of proposed

judgment form will not be deemed a waiver of

the right of the parties to file such motion

to amend following the entry of judgment as

provided in Rule 52(b), and any submission

after proposed judgment in conformity with the

Court's finding of fact and conclusion of law

will be deemed by the Court to be simply as a

convenience to the Court in reflecting the

views of the parties as to the form of

judgment only in the event the court's

findings and conclusions are sustained, and

not as any waiver or weakening of the

contentions of the respective parties as

heretofore expressed or as may hereafter be

advanced. In other words, I am seeking your

help as an officer of the court to better

enable me to properly refiect my determination

ee i

in a judgment in a proper form which will in

no sense be interpreted as a waiver of any

contention that you have made or which you

will make.

Is there anything further to come before

the Court at this time?

MR. BARNARD: Your honor, implicit in the

Court's ruling is a complete denial of my

motion in limine. I would simply like to

Clarify that and make sure that that is the

Court's ruling that my motion in limine was

denied in total.

THE COURT: Yes.

MR. BARNARD: Thank you.

THE COURT: In view of the record and in

view of my ruling pro forma to see if there

could be any possible prejudice and in view of

any showing at all that there was prejudice,

the ruling will be final subject to any

further showing. Anything further?

MR. MADSEN: If the Court would rather

have us do this subsequently, I don't believe

ESE ee

the Court in its conclusions made reference to

injunctive relief.

THE COURT: To what?

MR. MADSEN: To injunctive relief, the

restraining order.

THE COURT: I'm sorry I should include

and order the conclusion that the Court should

in efffect enter judgment enjoining and

restraining the defendants and all those

acting for or in concert with them or under

their control from publishing hereafter or

herafter distributing or circulating or

selling or marketing the Ehat notes in the

form I have held they were physically

appropriated by the publication of the

defendant's in evidence or in any

otherpublication. There has been some

discussion as to whether the defendants have:

transferred any interest or control ina

publication for future purposes. I think that

has no significasnce with regard to the award

of damages because damages awarded simply

relate to the damages which I find by a

preponderance of the evidence were caused by

the defendants. For the purposes of damage,

however, I considered that the transfer made

no substantial difference because of general

knowledge of its principle officers, the

transfer was made subject to that knowledge

and with the same sort of notice.

I may say for the information of counsel,

I am not ruling now upon the question of the

: complete insulation of liability of the

| successor non-profit corporation for contempt.

I must say that it could well be under the

present evidence that the successor

corporation is under the effectual control of

the defendants as alter-ego or otherwise. It

may well be that they are acting in concert

with, with knowledge of the defendants, and

with knowledge of the defendants in any future

exploitation of the Ehat property right as I

have found it. I find it unnecessary to get

involved in that now because if there is a

continued publication and distribution by

anyone else, the question will come about, is

he or it, someone, who is acting with the

knowledge of the defendants and under their

control or in concert with them, and in any

contempt proceeding that may well be the

issue. I find it sufficient to reserve that

issue until, if at all, it ever arises. Does

that clarify the matter?

Anything further?

MR. TANNER: Your Honor, I --

THE COURT: Talk to your counsel, Mr.

Tanner, and I am sure he'll reflect your view

to me if it should be --

MR. TANNER: Could I ask a question?

MR. BARNARD: It's been resolved, your

Honor.

THE COURT: Have you advised him that he

heard the peotreiasen order and I am not going

to rule upon that now, but it has been held in

the past that having knowledge of an order

based upon the record there could be some

question, I ask you to advise me to that. I'm

not going to rule upon it at this time.

Anything further?

MR. MADSEN: No, your Honor.

THE COURT: I think it would be

unfortunate and complicating if the defendants

would rush around and try to dispose of their

copies before the Court could go through this

process of entering a sound form and affording

defendant's counsel an Opportunity to be heard

on that before an order is precipitously

entered which would be effective. I think I

shall say nothing further about that matter

unless counsel have further inguiry.

We'll stand in adjournment.

(Whereupon the proceedings adjourned at

3:50 p.m.)

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.