Petition for Writ of Certiorari — Frye v. Excelsior College

Supreme Court brief2010

Ask Donna

What actually matters in this document.

Text

Supreme C ,

oenceS YS

091934 FEB 19 2010

No. ___ Feige OF THE CLERK

an The

Supreme Court of the Gnited States

CHARLES M. FRYE,

Petitioner,

EXCELSIOR COLLEGE

Respondent.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF

APPEALS FOR THE NINTH CIRCUIT

PETITION FOR A WRIT OF

CERTIORARI

Charles M. Frye, Pro Se

6444 East Spring Street No. 134

Long Beach, California 90815

(714) 499-3823

QUESTIONS PRESENTED

1. Should a “Fair Use” defense be defeated on

the basis of a “presumption of harm” when there

has been no market substitution and the copyright

owner granted permission te the Internet world to

download and print any number of copies of a

copyrighted work without any articulation as to

restrictions, fees, licenses, limitations, attributions,

expectations of use, directions, or reservation of

rights?

2. Does the Due Process principle prohibit a

grossly excessive statutory damage award,

(punitive-to-compensatory ratio of 150,000:0) even

though the jury award itself falls within the

minima and maxima ($30,000 to $150,000)

permitted by the particular statute (Copyright

Act)?

3. Does Federal Rules of Civil Procedure 26 and

34 require the actual production of copies of

documents as opposed to _ permitting’ the

“representative to inspect, copy...”?

4. If a party admits in the appellee brief that

the evidence placed on the overhead projector for

jury viewing was fabricated and the testimony

regarding it was false, should the “magnitude” of

importance to the case and the “impact” of the

evidence on the jury be presumed?

PARTIES TO THE PROCEEDING

Charles M. Frye is the defendant — appellant

below and Petitioner for this proceeding.

West Haven University, Inc. — defendant in

district court action, not an appellant below nor a

petitioner for this proceeding.

Professional Development Systems School of

Health Sciences, Inc. — defendant in district court

action, not an appellant below nor a petitioner for

this proceeding.

Excelsior College is the plaintiff — appellee

below and is a Respondent under Rule 12.6.

TABLE OF CONTENTS

Title _ SL

QUESTIONS PRESENTED ...................... i

PARTIES TO THE PROCEEDING ............ il

TABLE OF CONTENTS..................-.-.. roe iii

TABLE OF AUTHORITIES (Listing).......... Vill

CERTIFICATE OF COMPLIANCE .......... xi

1 8 8 6 00 ne 1

BASIS FOR JURISDICTION ...................... 1

CONSTITUTIONAL PROVISIONS............. 2

A. Fourteenth Amendment .................... 2

STATUTORY PROVISIONS....................... 2

A. §107. Limitations on exclusive rights:

EE dann dadcinnenerssx Seay oe 2

B. § 504. Remedies for infringement ...... 4

FED. RULES OF CIV. PROCEDURE .......... 4

TABLE OF CONTENTS - CONTINUED

Title _Page

A. Fed. R. Civil Procedure 26(a)(1) .........

B. Fed. R. Civil Procedure 26(e)(1)

C. Fed. R. Civil Procedure 34

D. Fed. R. Civil Procedure 37(c)1)

STATEMENT OF THE CASE .........

Sly I haisouccacny ccs aducnande vas

B. DISTRICT COURT ACTION ...............

C. POST THREAL FPRIASE. .........cccccccee

D. APPELLATE PHASE ....... Sou enaas

Vil. SUMMARY OF ARGUMENT ............

SEES So nnccssveccxesucauen PLONE OE RAB

A. If the copyright owner grants

permission to download and copy ......

B. The Due Process principle should

Apply irrespective ©” law’s origin ......

C. Rule 34 Does Not Require Copies .......

TABLE OF CONTENTS - CONTINUED

Title een ee Page

D. Fraud Upon the Court Involves

Unconscionable Plan or Scheme to

Improperly Influence Court [Hazel] .... 30

E. Acts of Deception ............ scewenabaepareee 32

Ce ccs gbacccraceucdvcsiedncundacssecuewrres 36

APPENDICES ...... aaboui don nnieaaiara: App. 1-22

Final Judgment and Permanent [Injunction of

The United States District Court, Southern

District of California ................... App. 1

Order of the United States District Court, Southern

District of California .................. App. 12

Memorandum of Opinion of the of the Ninth Circuit

Court of Appeals ................... ae App. 16

Order of the Ninth Circuit Court of Appeals

Denying Rehearing ......... ounueees App. 22

TABLE OF AUTHORITIES

Cited Court Cases

Campbell v. Acuff-Rose Music, 510 U.S. 569 ...

Hazel-Atlas Glass Co. v. Hartford-Empire Co.

18 > eiiiledetetaiatbihcaebiotecces

peaeper G& Row, 471 U.S. GSO .........cccccccsceees:

Kawaauhau v. Geiger, 523 U.S. 57 .................

NXIVM Corp. v. The Ross Institute,

Neen eT eT nnn en css cadedinnenwennei

Ruckelshaus v. Monsanto Co., 467 U.S.

986 ........ icone eunaiaemens Saab cud dy ircinensinuadepuaecion

EE Wee is hcatal Shkhnaseacddeavescceeenveserees

Sony Corp. of America v. Universal City

Studios, Inc., 464 U.S. 417, 450 (1984) ...........

RSO Records, Inc. v. Peri, 596 F. Supp. 849,

EE Me ccc cevnncesscevesturensevesenes

Sundeman v. The Seajay Soc’y, Inc.,

Rid cg tanec heeknateseeesascesseeevonves

__ Page

hee A of re — Pa ie > a ae rs ar) a TA MOP :

Vil

TABLE OF AUTHORITIES - CONTINUED

United States Constitution

Fourteenth Amendment to the

ESE LOLS TLE RA STENT AI

United States Codes

RF Fe Qaeenernee ssdipeilenc oe euwule eb cave

ee NS ET vn nha csniebinsusssaebendadanrnas oO

le Se | Eee nee vais bulveneeeetan

IEE: EE IE citindn ies acwnireevenecdiesecsucune ,

ay I Disrencsaics vais iecmcnninndacewaeiebaes Se

EO ED as tisanndisncevesakausicdtincinsis

EE Sc TREE cad odecinceseceusincewscdveensdiaes

citesintniniancaciineteghidccuedein

Fed. R. Civil Procedures —__|

Fed. R. Civil Procedure 26(a)(1) ..............

Fed. R. Civil Procedure 26(e)(1) ............. ;

_Page

Vill

TABLE OF AUTHORITIES - CONTINUED

Fed. R. Civil Procedures (Cont.) _ _ Page

Fed. R. Civil Procedure 34 .................cccccess- 5

Fed. R. Civil Procedure 37(c)(1) .................. 5

California State Codes _ & __ Page

California Code of Civil Procedure § 1621 .... 16

ee wae Page

Nimmer § 13.05[A][4], p. 13-102.61 ............ 14

ey I ID avn cnvensccnescddccnvecdsvecscesenas 23

Charles M. Frye v. Excelsior College,

CC-08-1055 Bankruptcy Appellate

Panel for the Ninth Circuit ................. ceeewe 19

(1)

OPINION BELOW

The unreported “Final Judgment and

Permanent Injunction” of the United States

District Court, Southern District of California was

entered on March 23, 2007. (App. 1 - 11).

The “Order” affirming the Final Judgment and

Permanent Injunction of the United States District

Court, Southern District of California was entered

on June 14, 2007. (App. 12 - 15).

The unreported “Memorandum” of the United

States Court of Appeals for the Ninth Circuit

(“Ninth Circuit”) affirming decision of the district

court was entered September 1, 2009. (App. 16 -

21).

The unreported “Order” of the Ninth Circuit

denying Petitioner’s motion for reconsideration was

entered September 22, 2009. (App. 22).

BASIS FOR JURISDICTION

The Ninth Circuit issued its “Memorandum” of

opinion denying Respondent’s appeal of the district

court’s decision on September 1, 2009. Petitioner

timely filed a motion to reconsider. The motion was

denied on September 22, 2009. This Court has

jurisdiction to review the Ninth Circuit's denial of

appeal and petition for review pursuant to 28

U.S.C. § 1254. The Ninth Circuit had jurisdiction

over the appeal of the district court’s decision

(2)

pursuant to 28 U.S.C. § 1291. The District

Courthad original subject matter jurisdiction over

federal claims pursuant to 28 U.S.C. §§ 1331 and

1332.

CONSTITUTIONAL PROVISIONS INVOLVED

Fourteenth Amendment to U. S.

Constitution

“All persons born or naturalized in the

United States, and subject to the jurisdiction

thereof, are citizens of the United States and

of the state wherein they reside. No state

shall make or enforce any law which shall

abridge the privileges or immunities of

citizens of the United States; nor shall any

state deprive any person of life, liberty, or

property, without due process of law; nor

deny to any person within its jurisdiction the

equal protection of the laws.”

STATUTORY PROVISIONS INVOLVED

Relevant provisions of the Copyright Act, 17

U.S.C. §§107 and 504, are reprinted below:

17 U.S.C. §107. Limitations on exclusive

rights: Fair use

“Notwithstanding the provisions of sections

106 and 106A [17 USC § §106 and 106AI, the

(3)

fair use of a copyrighted work, including

such use by reproduction in copies or

phonorecords or by any other means

specified by that section, for purposes such

as criticism, comment, news reporting,

teaching (including multiple copies for

classroom use), scholarship, or research, is

not an infringement of copyright. In

determining whether the use made of a work

in any particular case is a fair use the factors

to be considered shall include—

(1) the purpose and character of the use,

including whether such use is of a

commercial nature or is for nonprofit

educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the

portion used in relation to the copyrighted

work as a whole; and

(4) the effect of the use upon the potential

market for or value of the copyrighted work.

The fact that a work is unpublished shall not

itself bar a finding of fair use if such finding

is made upon consideration of all the above

factors.”

(4)

17 U.S.C. § 504. Remedies for

infringement: Damages

(a)“In General. - Except as_ otherwise

provided by this title, an infringer of

any additional profits of the infringer...or

statutory damages, as_ provided by

subsection (C).

(1) In a case where the copyright owner

sustains the burden of proving, and the

court finds, that infringement was

committed willfully, the court in its

discretion may increase the award of

statutory damages to a sum of not more

than $150,000.”

FEDERAL RULES OF CIVIL PROCEDURE

Relevant provisions of Federal Rules of Civil

Procedures (Rule) 26, 34, and 37 are reprinted

below:

Fed. R. Civil Procedure 26(a)(1)

“Under Rule 26 (a)(1) a party has a duty to

make initial disclosures *** without waiting

for discovery (1) the name of individuals

“likely to have discoverable information...”;

(2) “a copy — or a description by category and

location — of all documents *** the

(5)

disclosing party has in its_ possession,

custody, or control and may use to support

its claims or defenses”; (3) “a computation of

each category of damages claimed by the

disclosing party*** and (4) “for inspection

and copying ***any insurance agreement...”

Fed. R. Civil Procedure 26(e)(1)

“A party who has made a disclosure under

Rule 26(a) — or who has responded to al|

*** request for production, ***

supplement or correct its disclosure or

must

response: (A) in a timely manner if the party

learns that in some material respect the

disclosure or response is incomplete... or (B)

as ordered by the court.”

Fed. R. Civil Procedure 34

“A party may serve on any other party a

request within the scope of Rule 26(b): (1) to

produce and permit the requesting party or

its representative to inspect, copy, ***(A) any

designated documents...”

Fed. R. Civil Procedure 37(c)(1)

“If a party fails to provide information or

identify a witness as required by Rule 26(a)

or 26(e), the party is not allowed to use that

information *** to supply evidence *** at a

trial, unless the failure was substantially

(6)

justified or is harmless.”

STATEMENT OF THE CASE

A. BACKGROUND:

In 2002, Excelsior College (“Excelsior,”

“Plaintiff,” or “Respondent”) was suspected of being

out of compliance with existing laws relative to its

nurse training program and hearings were held by

the California Board of Registered Nursing

(“Board”) relative to this concern. Petitioner

Charles M. Frye (“Petitioner” “Petitioner Frye,” or

“Frye”), a registered nurse and educator, was

invited to apprise the Board of his knowledge of

Excelsior College’s training program. This

knowledge was gained by his offering the RN Fast

Tracking Program which required his students to

take certain examinations offered by Excelsior.

Essentially, students would use _ Excelsior’s

program as the vehicle for earning a degree but

would learn the arts and sciences of being a

registered nurse through the RN Fast Tracking

Program. Without the RN Fast Tracking Program

students would advance to registered nurse status

without a day of classroom or clinical training. The

process was explained in the testimony of

Marianne Barrinuevo, RN, MSN:

Q. Were you ever offered clinical training by

Excelsior College?

A. No, I was not.

Q. Did you learn anything in the RN Fast

(7)

Tracking Program?

A. I did.---Everything that has anything to

do with nursing.

Petitioner Frye had _ training facilities

throughout California and other states and offered

training on the Internet. Despite this widespread

offering, Excelsior discouraged students from

enrolling in the RN Fast Tracking Program as it

highlighted the absence of a basic training program

within Excelsior. This was confirmed by the

testimony of Excelsior’s Dean of Nursing, Dr.

Bridgett Nettleton, during her cross examination:

Q. (By Mr. Frye) So if Excelsior College

doesn’t evaluate test preparation

institutions such as my RN Fast

Tracking Program, what basis does it

have to discourage students from

enrolling in the program?

A. We feel it’s in the best interest of the

students to work directly with the

college

As a result of the Board’s investigation and

Frye’s adverse testimony, a determination was

made that Excelsiors program was not in

compliance with the law and its approval was

revoked. Excelsior did take an appeal but the

decision of the Board was affirmed by the

California Court of Appeal, Third Appellate

District:

(8)

California has the right and responsibility to

regulate nursing within the state for the

protection of its citizens...The record reveals

numerous attempts by the Board to assist

Excelsior with developing strategies for

coming into compliance with California’s

requirements. Excelsior chose not to do so.

B. DISTRICT COURT ACTION:

Following Petitioner Frye’s contact with the

Board, Excelsior filed a lawsuit alleging a plethora

of claims against him and two corporate entities he

owned 100% stock in: Professional Development

Systems School of Health Sciences, Inc. and West

Haven University, Inc. The meritless of its claims

is best demonstrated by the fact that of the thirty

claims Excelsior filed against all the defendants in

February 2003, it only prevailed by summary

judgment on three, and those involve the Content

Guides at issue in this appeal. Notably, on three

occasions Excelsior did not deny that the lawsuit

leveled against Petitioner Frye was in retaliation

for him giving adverse testimony before the Board.

Surreptitiously, after filing § its’ original

complaint in February 2003, Excelsior implemented

a policy requiring test takers to sign a

Nondisclosure Agreement prior to taking its

examinations. It then amended its Complaint and

added misappropriation of trade secret claim. From

that point on it never let the court, jury, or

defendants know it was a new policy, projecting

(9)

instead that it had been a long standing practice for

at least “14 years.” Without the contrived

Nondisclosure Agreement, Excelsior would have

had to admit that it released its trade secrets to

hundreds of thousands of test takers each year.

Judgment should be reversed as how can Excelsior

now claim, as it did in the appellee brief, the

Nondisclosure Agreement is irrelevant?

If an individual discloses his trade secret to

others who are under no obligation to protect

the confidentiality of the information, or

otherwise publicly discloses the secret, his

property right is extinguished. Ruckelshaus

v. Monsanto Co., 467 U.S. 986, 1002 (1984)

In September 2005, all parties filed for

summary judgment. The district court granted

summary judgment on the three Content Guides.

C. POST TRIAL PHASE:

When Petitioner filed a motion for a new trial

based on the deceptions and misrepresentations

carried out by Excelsior, he did not have the hard

evidence to prove Excelsior fabricated claims

relative to the Nondisclosure Agreement.

Suspicions were raised by the fact that four of

Excelsior’s graduates testifying for defense had

never heard of the Nondisclosure Agreement and

claimed they never signed such an agreement,

notwithstanding the testimony of Excelsior’s

employee witnesses. Excelsior defeated the motion

(10)

for a new trial by claiming its witnesses’ testimony

was “impeccably honest and true.” After Frye filed

his motion for a new trial and before Professional

Development Systems School of Health Sciences

filed its own, hard evidence was discovered that the

Nondisclosure Agreement came into existence after

it filed its complaint and therefore irrelevant as to

any issue before the jury.

D. APPELLATE PHASE:

The appellate review was conducted on the

pleadings. Within the appellee brief Excelsior

admitted to wrongdoing but projected that Frye

had failed to establish how he was prejudiced by

issues relative to the Nondisclosure Agreement.

The Ninth Circuit found that “Frye failled] to meet

his burden of showing that he “could not have

discovered the evidence sooner through the exercise

of reasonable diligence, and that the new evidence

is of such magnitude that it would likely have

changed the outcome of the case.” (Citation

omitted)

SUMMARY OF ARGUMENT

This case raises issues of national importance,

conflicts between circuits, strong departures from

previous decisions of this Court and the Federal

Rules of Civil Procedure.

1. The Court is requested to review an issue

that may be of first impression and one that is not

(11)

only extremely important to our nation as a whole,

but to the judiciary specifically as it is the one

being called upon to protect property rights in

copyrighted material that the owner has chosen not

to protect. This is especially true of individuals who

post their copyrighted work on the Internet and

permit anyone with print capability to make copies

of the documents without reservations of rights or

restrictions as to the number of copies that can be

made.

2. The Court is also requested to review

another issue that may be of first impression as

well. Specifically, the issue involves statutory

damages for willful copyright infringement. The

Ninth Circuit’s position is that as long as the jury

award falls within the minima and maxima, the

award stands. The question presented to the Court

is whether the Due Process principle for “grossly

excessive” statutory damages requires courts to

make adjustments when the jury award exceeds

the bounds of reason.

3. The next issue may be of first impression

as well, yet involves addressing the plain language

of Federal Rules of Civil Procedure 26 and 34. The

district court imposed a Rule 37 sanction for Frye’s

failure to provide actual copies of books he had

listed as trial exhibits. Respondent were provided a

listing of the books at issue a year earlier per the

order of the magistrate handling discovery issues.

Although Respondent was invited to inspect on site,

it chose not to. Just prior to trial it brought a

(12)

motion in /imine resulting in the striking of all the

documents and books on the list previously

provided.

4. The fourth issue involves’ attorney

misconduct and the Ninth Circuit entered an

opinion that conflicts with its own precedence and

this Court’s Hazel-Atlas Glass Co. v. Hartford-

Empire Company decision. Essentially, faced with

catastrophic case failure, Excelsior’s counsel, (in

concert with Excelsior) simply altered the course of

the case with contrived testimony and fabricated

evidence. The evidence and the _ testimony

undoubtedly permeated the entire tmal and

judgment in toto should be set aside.

Excelsior discounts the relevance of the

fabricated evidence. The specific conduct and effort

to minimize the wrongdoing contrast with Hazel-

Atlas and its principle has stood the test of time

and it is most relevant to this case:

“Upon the record, the Circuit Court of

Appeals had the power and the duty to

vacate its 1932 judgment and to give the

District Court appropriate directions. [Hazel-

Atlas Glass Co. v. Hartford-Empire Co. 322

U.S. 238, 247 (1944)].

(a)Even if Hazel failed to exercise due

diligence to uncover the fraud, relief may

not be denied on that ground alone, since

public interests are involved. [Id. @ 246].

(13)

(b) In the circumstances, Hartford may not

be heard to dispute the effectiveness, not

to assert the truth, of the article.” [Id. @

247).

ARGUMENT

A. If the copyright owner grants

permission to download and copy, is

there a right to protect?

In addressing the issue presented for the Court,

it is helpful to focus first on what the copyright

owner did; discuss its wider implication; and then

apply the law to the facts pres -nted in this case.

In a very real sense, when an owner places a

copyrighted work on the Internet for access by

anyone with an Internet connection, a reasonable

assumption could be made that there is greater

value to the owner for it being available to the

public on the Internet (for viewing) than being

controlled or shielded in some fashion, such as

within a book that can be sold for profit or access to

viewing restricted by a fee or non-fee membership

status.

The value of posting the work on the Internet

could also be financial such as with marketing, self-

adulation, complaining, praising others, promoting

a business, or endless number of other reasons. But

it is the owner who accepts the tradeoff he receives

for the copyrighted work he shares with the world

(14)

freely. The issue would be different if the author

provided books free and it was the _ books

themselves that served as the “original” for the

copies being made. Here the copyright owner is

granted permission to make an untold number of

original like copies from an image appearing on a

monitor.

In the instant action, Excelsior provided such

invitation to Frye, a member of the class it was

trying to reach (i.e. administrator of a college):

If you are a faculty member or administrator

of a college or university and want to make

flexible alternative study options available to

your students, Excelsior College

Examinations can be very helpful. We

encourage you to obtain copies of all relevant

content guides. They will provide you and

your institution with an objective basis for

making decisions about awarding credit.

It also aimed a general invitation to the world:

“Preparing for the Examination,” “You can also

download and print content guides from our

website at www.excelsior.edu.”

Considering this is an offering with no

reservations of rights or restriction whatsoever, is

there a property right worth protecting when the

“You are invited to make a single copy for your own

personal use”?

(15)

For purpose of a shock illustration, an Internet

user could print 266 million copies and distribute

them to every child, woman, and man in the United

States and be in full compliance with the laws of

to make a copy from one of the copies, liability

would attach for willful copyright infringement and

subject the doer to statutory damages in the

amount of $30,000 to $150,000.

The facts surrounding the infringement claim

against Petitioner, to a large extent, are not in

dispute. In_ short, Petitioner, while seeking

approval to offer a nursing degree program through

West Haven University, requested permission from

the licensing authority to conduct the actual

training for enrolled students but allow them the

option of taking a comparative examination offered

by Excelsior College. Students taking this option

would be required to pay Excelsior’s testing fee of

$880.

As part of the approval process, the licensing

authority requested to see the actual examinations

that would be administered to the students for a fit

for purpose analysis. Since Petitioner did not have

the actual examinations he asked if he could

submit Content Guides in lieu of the examinations,

as they contained study areas and sample

questions. The state accepted the offer. In the end,

the licensing authority did not approve of the

(16)

proposal. It is important to note that another

program was submitted without reference to

Excelsior or its examinations and the degree

program was approved. The importance lies in the

fact that there was no room for “presumption” of

market harm as found by the district court.

There never was a need to use the “Content

Guides” beyond having them assessed by the

licensing authority.

The exclusive rights afforded the copyright

owner under 11 U.S.C. § 106 are subject to § 107

“Limitations on Exclusive Rights: Fair Use.” A

person who makes fair use of a copyrighted work is

not an infringer even if such use is otherwise

inconsistent with the exclusive mghts of the

In the “Fair use” analysis conducted by the

district court, only “the nature of the copyright

work” was found in Petitioner’s favor. The court

gave its reasoning for finding for Respondent as to

the other three factors:

Although indirectly, [Petitioner Frye] used

Excelsiors Content Guides in order to

ultimately achieve commercial gain. The

likelihood of market harm may therefore be

presumed.

Respectfully, it would appear that the district

court put too much stock in “presumption of market

(17)

harm” as the facts clearly demonstrated there was

no harm nor potential for it.

The fourth fair use factor is "the effect of the

use upon the potential market for or value of

the copyrighted work." Section107(4). It

requires courts to consider not only the

extent of market harm caused by the

particular actions of the alleged infringer,

but also "whether unrestricted and

widespread conduct of the sort engaged in by

the defendant .. . would result in a

substantially adverse impact on the potential

market" for the original. Nimmer §

13.05[A][4], p. 13-102.61 (footnote omitted);

accord Harper & Row, 471 U. S., at 569;

Senate Report, p. 65; Folsom v. Marsh, 9 F.

Cas., at 349. The enquiry "must take account

not only of harm to the original but also of

harm to the market for derivative works.”

Harper & Row, supra, at 568.

The Supreme Court described Factor 4 as the

"single most important element of fair use," Harper

& Row, 471 U.S. at 566, considering that a primary

goal of copyright is to ensure that "authors [have]

the opportunity to realize rewards in order to

encourage them to create." Leval, Toward a Fair

Use Standard, 103 Harv. L. Rev. at 1124. By

contrast, "a use that has no demonstrable effect

upon the potential market for, or the value of, the

copyrighted work need not be prohibited in order to

(18)

protect the author’s incentive to create." Sony, 464

U.S. at 450. (Emphasis added).

The issue should not be "whether the

secondary use suppresses or even destroys

the market for the original work or its

potential derivatives, but [upon] whether the

secondary use usurps the market of the

original work.” NXIVM Corp. v. The Ross

Institute, 364 F.3d 471, 482 (2nd Cir. 2004).

The fair use doctrine protects against a

republication which offers the copyrighted

work in a_ secondary packaging, where

potential customers, having read _ the

secondary work, will no longer be inclined to

purchase again something they have already

read." Sundeman v. The Seajay Soc’y, Inc.,

142 F.3d 194, 207 (4th Cir. 1998) (internal

quotation marks omitted).

It was in Campbell v. Acuff-Rose Music, 510

U.S. 569 (1994), that this Court reversed the Sixth

Circuit Court of Appeals for, among other reasons,

holding that a commercial use is presumptively

unfair. 510 U.S. at 583-84. This is essentially what

the district court did in the instant action.

As clearly stated in the opposition to Excelsior’s

(successful) motion for summary judgment,

submitting the Content Outlines to the state

agency had no effect on the market because:

(19)

1. There was no market substitute;

2. The use closely paralleled the use

envisioned by Excelsior’ since it

“encourage” educational administrators to

make copies’;

3. Presumption of harm should never be

applied when it is known that the market

could not be harmed.

4. Additionally, it seems that this issue

should be resolved under state contract

law as a breach of implied contract, if

anything. Under California Code of Civil

Procedure § 1621, “An implied contract is

one, the existence and terms of which are

manifested by conduct.” This would also

place a curb on blow-out damage awards.

In summary: A decision should be made by

this Court as to whether there is a need for court

intervention to protect mghts when the copyright

owner offers to the Internet world his works

without any reservation of rights or fees. In effect,

much like a contract, the copyright owner is the

Master of his Offering and if it provides no

limitation on copying, then appropriately, de

minimis non curat lex.

Customarily, Respondent attempts to gain

distance by mentioning that Petitioner placed the

mast of West Haven University on the front of the

(20)

Content Guides. There was testimony by an

employee that there was a misunderstanding as to

what he was to do when he was instructed to

“label” the Content Guides for the licensing

authority. Irrespective, adding a name is not

its false designation of origin claim.

B. The Due Process principle should apply

irrespective of the law’s origin

This Honorable Court is requested to address

an issue of extreme national importance wherein

there are no bright lines regarding award limits

other than those set by Congress in the form of a

statutory minima and maxima. This allows courts

(juries), upon a finding of “willful” copyright

infringement to ratchet up the damage award to

$150,000 for each work infringed.

Perhaps, the greatest need is parameters a jury

(courts) can use in determining whether a

particular act is “willful” in the context of an

infringement claim. Until this is done, “willful”

infringement will mean anything the jury thinks it

means, and the damage award may depend more

on the doer than his deeds.

The facts surrounding the infringement claim

against Petitioner were discussed in the previous

section. For the single submission of three Content

Guides to the licensing authority and to no other

point, the jury awarded $450,000 ($150,000 per

(21)

work submitted). This is a 150,000 to 0, punitive to

compensatory damage ratio.

Just in this case alone, three interpretations of

“willful” emerged:

District Court:

Although the court granted Respondent

summary judgment on its claims related to the

Content Guides, it left the finding of “willful”

infringement to the jury. Jury Instruction 1] set a

very low threshold for a finding of infringement:

Infringement was_ willful when _ the

Defendants engaged in acts that infringed

the copyrights, and knew that those actions

may infringe the copyrights.” [Emphasis

added].

Ninth Circuit:

[Tlhe court has wide discretion § in

determining the amount of = statutory

damages to be awarded, constrained only by

the specified maxima and minima.

Bankruptcy Appellate Panel for the Ninth

Circuit:

Petitioner sought to discharge the damage

award from the infringement claim relative to the

Content Guides in his Chapter 7 bankruptcy

(22)

petition, which was opposed by Excelsior. The

bankruptcy court ruled that the claim was not

dischargeable as the act underpinning the

infringement claim was “willful.” The Ninth Circuit

Bankruptcy Appellate Panel’s (“9% BAP”)

confirmed the findings of the bankruptcy court and

ruled that copyright infringement is a

“categorically harmful activity.” (For comparative

purposes so is drunk driving resulting in the death

of a person). The following is an excerpt from the

decision which was provided to the Ninth Circuit by

Respondent:

[Tihe jury’s verdict that Frye committed a

willful infringement of Excelsior’s copyrights

satisfies the willfulness prong under [11] §

523(aX6). An injury is willful under that

subsection if the debtor intends. the

consequences of his action. Kawaauhau v.

Geiger, 523 U.S. 57, 61 (1998) [See Charles

M. Frye v. Excelsior College, CC-08-1055.

Ninth Circuit Bankruptcy Appellate Panel’s

(2008).

Petitioner was only able to find one case in

which a court identified a damage award as being

unreasonable. The remainder dic not disrupt the

award as long as it was within the minima and

maxima permitted under 17 U.S.C. § 504.

Undoubtedly assessed statutory damages

should bear some relation to actual damages

suffered.” RSO Records, Inc. v. Peri, 596 F.

(23)

Supp. 849, 864, 225 U.S.P.Q. 407, 417

(S.D.N.Y. 1984).

C. RULE 34 DOES NOT REQUIRE COPIES

Federal Rules of Civil Procedure (“Rule”) 26 and

34 do not require the responding party to provide

actual copies of documents, but rather requires

them to be made available for inspection and

copying. [See Federal Civil Procedures Before Trial

(The Rutter Group — 2002 p. 11-77, 11:139) “The

initial disclosure of documents need not produce

the actual documents, nor must it contain an

itemized listing of each exhibit”]. [See Rule 26, (a)

(1) (b), Advisory Committee Note to 1992

Amendment to Fed. R. Civ. P.).

1. Duty To Make Disclosure Pursuant to Rule

26:

Under Rule 26 (a1) “a party has a duty to

make initial disclosures *** without waiting

for discovery...”

2. Duty To Supplement Disclosure: Rule 26

(e)(1):

“A party who has made a disclosure under

Rule 26(a) — or who has responded to an

interrogatory, request for production, or

request for admission — must supplement or

correct its disclosure or response: (A) in a

timely manner if the party learns that in

(24)

some material respect the disclosure or

response is incomplete or incorrect, and if

the additional or corrective information has

not otherwise been made known to the other

parties during the discovery process or in

writing; or (B) as ordered by the court.”

3. Duty To Make Available For Inspection:

A party may serve on any other party a

request within the scope of Rule 26(b): (1) to

produce and permit the requesting party or

its representative to inspect, copy, ***(A) any

designated documents...”

4. Sanctions Under Rule 37(c)(1):

“If a party fails to provide information*** as

required by Rule 26(a) or 26(e), the party is

not allowed to use that information ***to

supply evidence on a motion, at a hearing, or

at a trial, unless the (failure was

substantially justified or is harmless.”

5. District Court Rule 37 Sanction:

During formal discovery Petitioner served

copies of over 8,000 documents and was deposed for

three days. Additionally; he provided all the

required documents pursuant to the First and

Second Request for Production and specifically the

one served in March 2005 as admitted by David

Peter Miranda, lead counsel for Excelsior

(“Attorney Miranda”) on June 28, 2005 at a Motion

to Compel Hearing:

The Court:

Miranda:

The Court:

Miranda:

Well wait. Let me ask - - let me ask

you a question. With respect to the

documents that you just referenced,

why they weren’t provided before the

deposition, what was the triggering

event that caused them or should have

caused them to be produced before the

deposition?

The - - well, the first and second

request of production of documents

was the triggering event for the bulk

of them.

So the documents that were

produced at the deposition were the

same documents you requested in the

first and second request _ for

production in December of ’04 and

March of ’05?

They were... (Emphasis added).

Although the magistrate essentially denied

Excelsior’s motion to compel, wanting to insure any

dispute regarding the identification of documents

was put to rest, he ordered each party to make a

list of what was requested in a production demand

(26)

and what was received. Upon comparison of the

lists, the parties would:

“create a third separate list itemizing

all documents not yet provided to

Plaintiff, if any. Defendants shall then

produce any such documents, subject

to any privileges asserted, within ten

days after the meet and confer.”

Judge Papas also served notice to parties to

bring to his attention any disagreements.

“If any dispute arises with regard to

any aspect of the procedures, the

parties are directed to contact the

Court immediately.” (Emphasis

Added).

As ordered by Judge Papas, lists of documents

were exchanged between parties as reflected in the

letter from Kenneth C. Simonian, Esq., corporate

defendants’ counsel, to Attorney Miranda:

In accordance with Judge Papas’ Order dated

August 4, 2005, below is a listing of all

documents which are responsive to the

specifically identified requests within

Excelsior’s Second Request for Production...

Please consider this as a supplement to the

formal Response of Defendant Frye served

April 14, 2005..., With regards to the books

(27)

and other reference materials identified in

paragraph l(a) above, my suggestion is that

you...inspect the materials at Defendant

Fryec’s office at a mutually agreeable time.

Although Excelsior admitted to Judge Papas

that all documents from the Second Request for

Production had been provided, over one year later

it informed the Hon. District Court Judge William

Q. Hayes it had not received a single document in

response to the discovery requests. The following

demonstrate the claims were the same and false:

To Magistrate Papas in Motion to

Compel:

All documents or materials used in the

creation of Defendants Nursing Concepts

“Test Tips”, “Power Points. (Second

Request for Production, March 2005).

To Judge Hayes in Motion in Limine:

“All documents or materials used in the

creation of Defendants Nursing Concepts

“Test Tips”, “Power Points.” (Miranda’s

Declaration Exhibit “C”) [September

2006].

As a result of the deception, all the documents

on the list provided pursuant to Judge Papas’ order

were stricken. It is worth noting, Judge Papas was

(28)

well within his rights to order the list to be drafted

and exchanged. [See Fed. R. Civil Procedure

26(e)(1), {al party who has made a disclosure under

Rule 26(a) ***must supplement*** (B) as ordered

by the court.”].

Notably, Excelsior did not take Judge Papas up

on the offer to wit: “If any dispute arises with

regard to any aspect of the procedures, the parties

are directed to contact the Court immediately.”

(Emphasis Added). Therefore, it was absolutely

inappropriate for Excelsior (through Attorney

Miranda) to claim to Judge Hayes that the

documents were not produced relative to the First

and Second Request for Production in view of the

fact that lists were compiled and exchanged per

Judge Papas’ order.

The striking of the documents a week before

trial was nothing short of devastating and

capricious. Judge Hayes gave no weight to the fact

that the list of documents had been exchanged “[als

ordered by the court.” (October 26, 2006 hearing 6

days before trial) relative to the Motion in Limine .”

[See Rule 26(e)(1)(B)]:

The Court: The Books — What Books? I

mean have they been given to

counsel?

Mr. Simonian: Theyve been identified for

counsel pursuant to Judge

(29)

Papas’ order some time ago.

They were identified for counsel

The Court: That’s not going to make them

admissible...

The Court: I’m not going to let you

introduce your library...

Mr. Frye: No I want to use 12 books, your

honor... how are we are going to

prove our case, your honor?

The Court: Counsel - - Mr. Frye, it’s not for

me to tell you how to prove your

case...

Mr. Frye: Nowhere in Federal Rules am I

required to give him a book.

Nowhere in there is that. It

says in there he has to come

look. He chose to be in New

York.

On October 26, 2006, the district court issued a

Rule 37 sanction striking all the books and exhibits

identified on the list which was prepared and

exchanged pursuant to the August 5, 2005 order of

Judge Papas.

The Ninth Circuit’s order contrast even with

the district court’s order and ignores the events

(30)

that transpired.

We conclude that the district court did not

abuse its discretion in excluding Frye’s 400

library books because they were not timely

disclosed prior to Fryes Apml 2005

deposition. As such, the district court did not

abuse its discretion in excluding Trial

Exhibit O1, which had substantial material

from the excluded library books.

The Ninth Circuit mentioned “disclose” and the

district court mentioned provide a copy. According

to Attorney Miranda all books pursuant to First

and Second Request for Production had _ been

provided, followed by the supplement as ordered by

the magistrate. Therefore, Petitioner had fully

complied with discovery requests. Additionally

there is no rule that says any exhibit has to be

disclosed prior to deposition. What drives party’s

discovery obligations is Rule 26 and Rule 34 that

results from serving discovery devices.

D. FRAUD UPON THE COURT INVOLVES

UNCONSCIONABLE PLAN GR SCHEME TO

IMPROPERLY INFLUENCE THE COURT

After losing thirty claims to defendants (below),

Respondent altered the direction of the case by

falsely claiming that it protected its’ examinations

as trade secrets by requiring over 100,000 test

takers a year, prior to being exposed to its trade

secrets, to sign a “Nondisclosure Agreement.” It did

(31)

this through sworn testimony of two witnesses and

the placement of the contrived document (Trial

Exhibit 64) on the overhead projector for viewing by

the jury. In the immediate post trial phase, to

defeat a motion for a new trial, Respondent and its

counse! lauded the testimony of the employee

witnesses as being “impeccably honest and true.” In

the Appellee Brief, Respondent (and the same

counsel as signor) admitted to the wrongdoing:

Defendant Frye’s issue on appeal requires a

finding that the district court abused its

discretion in failing to find that the

introduction of, and testimony regarding

Excelsior College’s Academic Honesty Policy

(“Policy”) and nondisclosure agreement

constituted “clear and convincing evidence

that the verdict was obtained through fraud,

misrepresentation, or other misconduct” that

prevented Defendant Frye “from fully and

fairly presenting his case or defense.”

What is not mentioned by Excelsior is that the

district court was deceived into believing that the

Nondisclosure Agreement had been in use for an

extended period of time (14 years). What makes

the situation even worse, Excelsior’s own in-house

counsel (but not attorney of record), sat through the

entire trial and even read testimony into the

record, but did not advise the court of the deception

being carried out against defendants, though he

had, as an officer of the court, an affirmative duty

to do so.

(32)

These undisputed facts reveal that Thomp-

son, through Bartlett [Thompson’s in-house

counsel but not counsel of record], engaged in

a scheme to defraud the jury, the court, and

[Defendant], *** through the presentation of

fraudulent evidence, and the failure to

correct the false impression created by [a

witness]. The end result of the scheme was to

undermine the judicial process, which

amounts to fraud upon the court. Cf. Hazel-

Atlas Glass Co. v. Hartford Empire Co., 322.

U.S. 238, 245-46, 250 (1944) [ Pumphrey v.

KW Thompson Tool Co. (9% Cir. 1995) 62

F3d 1128, 1133].

E. ACTS OF DECEPTION

1. To demonstrate the degree of harm

Respondent, under Attorney Miranda’s signature,

was willing to inflict, it used the fabricated

Nondisclosure Agreement to gain a _ preliminary

injunction against Petitioner.

2. Attorney Miranda falsely claimed in the

pretrial brief that test takers had to agree not to

release Excelsior’s trade secrets:

Students taking an _ Excelsior College

examination are required to agree that they

will not disclose the content of the

examination.

3. Attorney Miranda committed a continuing

(33)

act of fraud by securing Judge Hayes’ signature on

a pretrial order that he knew contained erroneous

information supplanted by him, to wit:

4219 (In part) Students taking an Excelsior

College examination are required to agree

that they will not disclose the content of the

examination. (Emphasis added).

q 238: All test takers must agree to abide by

the terms of the Academic Honesty Policy

(“Honesty Policy”) before taking = an

examination.

4. Attorney Miranda committed a continuing

act of fraud by introducing Trial Exhibit 64 through

Bridgett Nettleton and placing it on the overhead

projector for viewing by the jury and solicited false

testimony from her as to its utility when he knew

the testimony was false:

Q. (by Mr. Miranda) Showing you what

has been Marked as Exhibit Number 54

-- 64. I'm sorry. Exhibit Number 64.

Can you tell me, Dr. Nettleton, what

that is?

A. It's the Academic Honesty Policy and a

Nondisclosure agreement that the

students sign that they understand the

Academic Honesty Policy and that they

will abide by it, and then there's a place

for their signature.

Q. Can you tell me Dr. Nettleton, when the

(34)

Excelsior College Academic Policy went

into effect?

It has been in effect as long as I’ve been

with the college.

And how long has that been?

14 years. (Emphasis added)

5. Attorney Miranda did not intervene when

Nettleton continued to give perjured testimony in

response to cross examination questions although

he had a legal obligation to do so.

(by Mr. Frye) Dr. Nettleton, you said

that if a student took a pencil and

paper test, the academic policy was on

that examination, is that correct?

Not on the examination. Before they

get to the examination, they have to

agree to the Academic Honesty Policy.

When would that happen?

While they're in the exam process. A

student would come to the

examination center and have their

identity validated, and then they

would be required to sign something

like this, the exhibit 64, which is the

Academic Honesty Policy, prior to

beginning the actual examination

itself. So this would be completed

before they began the exam.

(Emphasis added).

And when did that signature policy go

into effect?

(35)

A: To my knowledge, it's always been in

effect for as long as I've been with the

college.

6. Attorney Miranda continued the deception

and process with Dr. Patrick Jones:

Q. (Mr. Miranda): Dr. Jones, I'm showing

you what has been marked as Exhibit

No. 64, can you tell me what that

document is, Dr. Jones?

A. Yes, that's the nondisclosure

agreement for Excelsior College

examinations which students and test

takers are required to execute before

gaining access to an examination.

7. In the post trial phase it was discovered that

Dr. Jones had signed the introductory letter in a

catalog entitied, Excelsior College Examinations A

Guide for Test Preparation and Registration Con-

taining the following notice thereby demonstrating

his knowledge of falsity of his testimony:

Academic Honesty Nondisclosure Statement

Beginning April 2003 all test takers must

agree to abide by the terms of the Academic

Honesty Policy before taking the

examination. The non disclosure

agreement will be presented on a separate

form enclosed with your examination booklet

or printed inside the front cover of the

examination booklet. This Nondisclosure

(36)

Agreement must be read and_signed prior

to breaking the seal on the examination

booklet.” (Bold in original).

And finally: This notice established there was no

signature requirement on a é Nondisclosure

Agreement until April 2003, A fact Excelsior

doesn’t deny now that it has judgment in hand:

Defendant Frye fails to set forth how the

introduction of [contrived] evidence

regarding Excelsior College’s [Nondisclosure

Agreement] prevented him from fully and

fairly presenting his case. (Apellee Brief p.

31).

CONCLUSION

For the reasons stated, the petition for a writ

of certiorari should be granted.

February 19, 2010

Respect igs submitted,

Leb M. FR Li ax.

(App. 1)

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA

EXCELSIOR COLLEGE,

Plaintiff, CASE NO.

04CV0535 WQH

VS.

Nee Nee ee eee ee”

CHARLES M. FRYE;

PROFESSIONAL )

DEVELOPMENT ) FINAL

SYSTEMS SCHOOL OF ) JUDGMENT

HEALTH SCIENCES, a ) AND

California Corporation; and ) PERMANENT

WEST HAVEN ) INJUNCTION

UNIVERSITY, Inc., )

)

Defendants. )

Hayes, Judge:

The above-entitled action was instituted by

Plaintiff Excelsior College (“Excelsior College”)

on February 20, 2003, against the Defendants

Charles M. Frye, Professional Development

Systems School of Health Sciences, and West

Haven University, Inc. The issues were tried to a

jury and the jury rendered its verdict on November

14, 2006. Pursuant to the orders of this Court and

the verdict of the jury:

(App. 2)

IT IS ORDERED, ADJUDGED AND DECREED

THAT

Judgment is rendered on Counts I-III in

favor of the Plaintiff Excelsior College and against

Defendant Charles M. Frye and Defendant West

Haven University, Inc. for willful copyright

infringement of Excelsior College’s copyrighted

Content Guides.

Plaintiff Excelsior College is entitled to

recover an award of damages from Defendant

Charles M. Frye and Defendant West Haven

University, Inc., joint and several, in the amount of

Four Hundred Fifty Thousand Dollars

($450,000.00), representing the sum of the

following:

Count I — Statutory damages for willful

Registration No. TX5-121-364 in the amount of One

Hundred Fifty Thousand Dollars ($150,000.00).

Count II — Statutory damages for willful

Registration No, TX5-126-945 in the amount of One

Hundred Fifty Thousand Dollars ($150,000.00).

Count III - Statutory damages for willful

(App. 3)

Registration No, TX5-121-365, in the amount of

One Hundred Fifty Thousand Dollars

($150,000.00).

IT IS FURTHER ORDERED, ADJUDGED AND

DECREED THAT

Judgment is rendered on Count IV in favor

of the Plaintiff Excelsior College and against the

Defendant Charles M. Frye and Professional

Development Systems School of Health Sciences for

Excelsior College Examinations:

a. Excelsior College Examinations,

Reg. No. TX-5-637-617,

b. ACT PEP: Regents College

Examinations, February 8, 1996 Administration,

U.S. Copyright Reg. No. TX-4-276-214,

c. ACT PEP: Regents College

Examinations, October 3, 1996 Administration,

U.S. Copyright Reg. No. TX-4-442-168;

d. ACT PEP: Regents College

Examinations, February 6, 1997 Administration,

U.S. Copyright Reg. No. TX-4-539-630;

e. Regents College Examinations,

Reg. No. TX-4-677-540;

f. ACT PEP: Regents College

Examinations, September 29, 1997 Administration,

U.S. Copyright Reg. No. TX-4-677-541; and

(App. 4)

g. Regents College Examinations, October 1,

1999 Administration, U.S. Copyright Reg.

No. TX-5-117-309.

and judgment is rendered on Count VI in favor of

the Plaintiff Excelsior College and against

Defendant Charles M. Frye and Defendant

Professional Development Systems School of

Health Sciences for trade secret Misappropriation.

Plaintiff Excelsior College is entitled to recover an

award of damages from Defendant Charles M. Frye

and Defendant Professional Development Systems

School of Health Sciences, as follows:

Count IV — Actual damages in the amount

of Six Hundred Ninety-Three Thousand Five

Hundred Eighty-Eight Dollars ($693,588.00)

against defendant Charles M. Frye and Defendant

Professional Development Systems School of

Health Sciences, joint and several, and profits of

Three Million Five Hundred Thousand Four

Hundred Eighty-One Dollars and seventy cents

$3,500,481.70) against Defendant Charles M. Frye.

Count VI - Punitive damages against

Defendant Charles M. Frye in the amount of One

Million Eighty-Two Thousand “jne Hundred and

One Dollars ($1,082,101.00), and punitive damages

against Defendant Professional Development

Systems School of Health Sciences in the amount of

One Million Four Hundred Forty-Seven Thousand

(App. 5)

Seven Hundred Thirty-Three Dollars

($1,447,733.00).

{IT IS FURTHER ORDERED, ADJUDGED AND

DECREED THAT

Plaintiff Excelsior College is entitled to

recover pre-judgment interest pursuant to 28

U.S.C. §1961(a), on the amouut of Six Hundred

Ninety-Three Thousand Five Hundred Eighty-

Eight Dollars ($693,588.00) against Defendant

Charles M. Frye and Defendant Professional

Development Systems School of Health Sciences,

joint and several, at a rate of 5.00% per annum,

from the date of Plaintiff Excelsior College’s

commencement of this action on February 20, 2003,

through February 20, 2007, for total interest in the

amount of One Hundred Thirty-Eight Thousand

Seven Hundred Seventeen Dollars and sixty cents

($138,717.60), and from Defendant Charles M. Frye

on Three Million Five Hundred Thousand Four

Hundred Eighty-One Dollars and seventy cents

($3,500,481.70), at a rate of 5.00% per annum, from

the date of Plaintiff Excelsior College’s

commencement of this action on February 20, 2003,

through February 20, 2007, for total interest in the

amount of Seven Hundred Thousand Ninety-Six

Dollars and thirty-two cents ($700,096.32).

(App. 6)

IT IS FURTHER ORDERED,

ADJUDGED AND DECREED THAT

Based upon the above, final judgment in

total damages is awarded to Excelsior College as

follows:

Counts I, II, and II: Four Hundred Fifty

Thousand Dollars ($450,000.00) against Defendant

Charles M. Frye and Defendant West Haven

University, Inc., joint and several liability;

Count IV: Six Hundred Ninety-Three

Thousand Five Hundred Eighty-Eight Dollars

($693,588.00) plus interest in the amount of One

Hundred Thirty-Eight Thousand Seven Hundred

Seventeen Dollars and sixty cents ($138,717.60), for

total judgment of Fight Hundred Thirty-Two

Thousand Three Hundred Five Dollars and sixty

cents ($832,305.60) against Defendant Charles

M. Frye and Defendant Professional Development

Systems School of Health Sciences, joint and

several liability, and Three Million Five Hundred

Thousand Four Hundred Eighty-One Dollars and

seventy cents ($3,500,481.70) plus interest in the

amount of Seven Hundred Thousand Ninety-Six

Dollars and thirty-two cents ($700,096.32) for total

judgment of Four Million Two Hundred Thousand

Five Hundred Seventy-Eight Dollars and two cents

($4,200,578.02) against Defendant Charles M. Frye;

(App. 7)

Count VI: One Million Eighty-Two

Thousand One Hundred One Dollars

($1,082,101.00) against Defendant Charles M. Frye

and One Million Four Hundred Forty-Seven

Thousand Seven Hundred Thirty-Three Dollars

($1,447,733.00) against Defendant Professional

Development Systems School of Health Sciences.

IT IS FURTHER ORDERED, ADJUDGED AND

DECREED THAT

Judgment be granted in favor of Plaintiff

Excelsior College and against Defendants Charles

M. Frye, West Haven University, Inc. and

Professional Development Systems School of

Health Sciences in an amount to be determined by

this court, based upon the following additional

sums:

1) Plaintiff Excelsior College is the

prevailing party on all claims of copyright

infringement, and Plaintiff is entitled to an award

of costs and attorney’s fees pursuant to 17 U.S.C.

§505, in an amount to be determined upon receipt

of Plaintiffs supporting papers, and after

consideration of Defendants’ objections.

2) Other taxable costs and disbursements

incurred by Plaintiff, as the prevailing party, in an

amount to be determined upon receipt of a Bill of

Costs.

(App. 8)

IT IS FURTHER ORDERED, ADJUDGED AND

DECREED THAT

1) Pursuant to the Copyright Act, 17 U.S.C.

§502(a), Defendants Charles M. Frye,

Professional Development Systems Schoo! of

Health Sciences, West Haven University, Inc., and

their stockholders, officers, directors, agents,

servants, employees, or affiliates thereof,

representatives and attorneys, and all persons

acting or attempting to act in concert or

participation with them are permanently enjoined

and restrained from any and all use of Excelsior

College copyrights, trade secrets and other

proprietary materials as further set forth herein;

2) Defendants Charles M. Frye and

Professional Development Systems School of

Health Sciences are permanently enjoined from,

either directly or indirectly:

(A) infringing in any manner Excelsior

College copyrighted works and specifically from

printing, publishing, delivering, distributing,

selling, transferring, copying, duplicating,

reproducing, offering, displaying, marketing,

transferring or communicating in any manner,

orally or in written, printed, audio, photographic,

electronic, or other form, any Excelsior College

copyrighted Nursing Concepts Examination or any

Excelsior College copyrighted Content Guide, or

any materials derived from any Excelsior College

(App. 9)

copyrighted works, including but not limited to the

following:

a. Excelsior College Examinations, October

1, 2002 Administration, U.S. Copyright Reg.

No. TX-5-637-617;

b. ACT PEP: Regents College Examinations,

Reg. No. TX-4-276-214;

c. ACT PEP: Regents College Examinations,

Reg. No. TX-4-442-168;

d. ACT PEP: Regents College Examinations,

Reg. No. TX-4-539-630;

e. Regents College Examinations, October 1,

1997 Administration, U.S. Copyright Reg.

No. TX-4-677-540;

f. ACT PEP; Regents College Examinations,

Reg. No. TX-4-677-541;

g. Regents College Examinations, October 1,

1999 Administration, U.S. Copyright Reg.

No. TX-S-117-309;

h. Health Support A: Health Promotion and

Health Protection Content Guide

(Baccalaureate Level). U.S. Copyright Registration

No. TX5-121-364;

i. Health Restoration: Area II Content Guide

(Baccalaureate Level). U.S. Copyright

Registration No. TX5-126-945; and

(App. 10)

j. Health Support B: Community Health

Nursing Content Guide (Baccalaureate Level).

U.S. Copyright Registration No. TX5-121-365.

(B) Preparing derivative questions based on

and Excelsior College copyrighted works;

knowingly obtaining from any person,

questions or answers from any Excelsior College

Nursing Concepts exam;

(D) Compiling, or attempting to compile, any

Excelsior College examination questions and/or

answers identified herein or in any existing or

future Excelsior College examinations;

(E) Assisting, aiding, or abetting any other

person or business entity engaging or

performing any of the enjoined activities referred to

in paragraphs (A)-(D) above.

3) Defendants Charles M. Frye and

Professional Development Systems School of

Health Sciences are permanently enjoined from

using, acquiring or attempting to acquire, directly

or indirectly any materials containing trade secrets

or proprietary materials of Excelsior College,

including but not limited to Excelsior College

examination questions or answers or any materials

derived from any Excelsior College examination

questions or answers.

The Clerk is directed to forward copies of

this Order to all counsel of record and to enter

(App. 11)

judgment for the Plaintiff Excelsior College,

pursuant to Rule 58 of the Federal Rules of Civil

Procedure.

DATED: March 23, 2007

/s/ William Q. Hayes

WILLIAM Q. HAYES

United States District Judge

(App. 12)

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA

EXCELSIOR COLLEGE, )

)

Plaintiff, ) CASE NO.

vs. ) 04CV0535 WQH

)

CHARLES M. FRYE; )

PROFESSIONAL )

DEVELOPMENT ) ORDER

SYSTEMS SCHOOL OF )

HEALTH SCIENCES, a )

California Corporation; and )

WEST HAVEN )

UNIVERSITY, Inc., )

)

Defendants.

Hayes, Judge:

The matters before the Court are: 1) the motion

for new trial (#396) filed by Defendant Charles M.

Frye, 2) the motion to reduce damage award and

for other relief (#398) filed by Defendant Charles

M. Frye, and 3) the motion for a new trial (#423)

filed by Defendant Professional Development

Systems School of Health Sciences.

(App. 13)

BACKGROUND

On November 14, 2006, the jury rendered its

verdict against the Defendants Charles M. Frye,

and Professional Development Systems School of

Health Sciences and in favor of Plaintiff Excelsior.

(Doc. # 368).

On March 23, 2007, this Court entered a “Final

Judgment and Permanent Injunction” awarding

damages against Defendant Charles M. Frye and

Defendant West Haven University on Counts I, IT,

and III for copyright infringement; against

Defendants Charles M. Frye and Professional

Development Systems School of Health Sciences on

Count IV and VI for copyright infringement and

trade secret misappropriation. (Doc. # 417)

Defendant Charles Frye moves the Court for a

new trial on the grounds that 1) Plaintiff engaged

in unfair litigation strategies, 2) Plaintiff misled

the Court and gained a major evidence sanction,

and 3) the verdict in favor of Plaintiff was against

the clear weight of the evidence. In addition,

Defendant Charles Frye moves the Court to reduce

the damage award and to enter judgment as a

matter of law on Counts I II and III.

Defendant Professional Development Systems

School of Health Sciences moves the Court for a

new trial on the claims for copyright infringement

and the claim for trade secret misappropriation on

(App. 14)

the grounds that Plaintiff failed to prove any

infringement and failed to sufficiently protect its

trade secrets.

Plaintiff asserts that there are no facts to

support a new trial. Plaintiff contends that the

evidence at trial was sufficient to support the

verdict of the jury and the amount of damages

awarded by the jury.

RULING OF THE COURT

A district court may grant a motion for new

trial, even when a verdict is supported by

substantial evidence, if “the verdict is contrary to

the clear weight of evidence, or is based upon

evidence which is false, or to prevent, in the sound

discretion of the trial court, a miscarriage of

justice.” United States v. 4.0 Acres of Land, 175

F.3d 1133, 1139 (9th Cir. 1999); accord Silver Sage

Partners, Ltd. v. City of Desert Hot Springs, 251

F.3d 814, 819 (9 Cir. 2001).

The Court finds that there was substantial

evidence presented at trial to support the verdict of

the jury and the damages awarded by the jury.

Defendants have failed to raise any grounds that

would support a new trial. All of the pretrial issues

raised by Defendants in support of the motion for

new trial were fully and fairly litigated prior to

trial and there are no grounds to reconsider any

prior orders. The Court finds the verdict of the jury

(App. 15)

in this case was supported by the weight of the

evidence and there are no facts or law which would

indicate that the jury reached an erroneous verdict.

IT IS HEREBY ORDERED that 1) the motion for

new trial (#396) filed by Defendant Charles M. Frye

is DENIED, 2) the motion to reduce damage award

and for other relief (#398) filed by Defendant

Charles M. Frye is DENIED, and 3) the motion for

a new trial (#423) filed by Defendant Professional

Development Systems School of Health Sciences is

DENIED.

DATED: June 14, 2007

/s/ William @. Hayes

WILLIAM Q. HAYES

United States District Judge

(App. 16)

NOT FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

EXCELSIOR COLLEGE, ) No. 07-55997

Plaintiff - Appellee, ) DC No.

) 04CV0535 WQH

VS. )

)

CHARLES M. FRYE; )

Appellant ~ Defendant )

) =

AND ) MEMORANDUM

)

PROFESSIONAL )

DEVELOPMENT SYSTEMS )

SCHOOL OF HEALTH )

SCIENCES; et al., )

Defendants.

Appeal from the United States District Court

for the Southern District of California

William Q. Hayes, District Judge, Presiding

Submitted April 20, 2009**

This disposition is not appropriate * for publication

and is not precedent except as provided by Ninth

Circuit Rule 36-3.

(App. 17)

Before: BEEZER, HALL and T.G. NELSON,

Circuit Judges.

Defendant Charles M. Frye appeals several

aspects of the district court’s judgment against him

following a jury trial on Plaintiff Excelsior College’s

(“Excelsior”) claims of copyright infringement and

trade secret misappropriation.

We have jurisdiction under 28 U.S.C. § 1291. We

conclude that the district court properly granted

partial summary judgment in favor of Excelsior

and did not abuse its discretion in ruling on the

post-trial and pre-trial motions now challenged by

Frye. We affirm.

The facts of the case are known to the

parties, and we do not repeat them below.

Frye argues that the district court erred in

granting partial summary judgment on Excelsior’s

three claims of copyright infringement of its

content guides. We review the district court’s grant

of summary judgment de novo. SeeEnlow v. Salem-

Keizer Yellow Cab Co., 389 F.3d 802, 811 (9th Cir.

2004). We agree with the district court’s thorough

analysis of Frye’s

** The panel unanimously finds this case suitable

for decision without oral argument. See Fed. R.

App. P. 34(a)(2).

(App. 18)

defenses in its May 8, 2006, order. The district

court properly granted summary judgment after

rejecting Frye’s defenses of merger, fair use,

implied license and unclean hands.

Frye argues that the district court abused its

discretion in excluding some of Frye’s evidence and

not excluding some of Excelsior’s evidence. A

district court’s evidentiary rulings are “reviewed for

abuse of discretion, and the appellant is

additionally required to establish that the error

was prejudicial.” Tritchler v. County of Lake, 358

F.3d 1150, 1155 (9th Cir. 2004). We conclude that

the district court did not abuse its discretion in

excluding Frye’s 400 library books because they

were not timely disclosed prior to Frye’s April 2005

deposition. As such, the district court did not abuse

its discretion in excluding Trial Exhibit O1, which

had substantial material from the excluded library

books. We also conclude that the district court did

not abuse its discretion in refusing to sanction

Excelsior after a discovery dispute regarding its

“Item Writers.”

Frye relies on punitive damages

jurisprudence to argue that the district court

abused its discretion in denying his motion to

reduce the jury’s award of maximum statutory

damages. We conclude that the district court did

not abuse its discretion in declining to reduce the

jury’s award of statutory damages. See Columbia

Pictures Television, Inc. v. Krypton Broad. of

(App. 19)

Birmingham, Inc., 259 F.3d 1186, 1194 (9th Cir.

2001) (“[Tlhe court has wide discretion in

determining the amount of statutory damages to be

awarded, constrained only by the specified maxima

and minima.” (quotation omitted)).

Frye argues that the district court abused its

discretion in denying his motion to reduce the jury’s

award of Frye’s profits. The district court did not

abuse its discretion in declining to reduce the jury’s

award because Frye failed to meet his burden of

establishing his deductible expenses. See 17 U.S.C.

§ 504(b); Eales v.Envtl. Lifestyles, Inc., 958 F.2d

876, 881 (9th Cir. 1992) (“Any doubt as to the

correctness of the profit calculation should . . . be

resolved in favor of the plaintiff.”), abrogated on

other grounds by Hunt v. Pasternack, 192 F.3d 877

. (9% Cir. 1999). We reject Frye’s argument that the

jury's award of profits was already “taken into

account in computing the actual damages.” See 17

U.S.C. § 504(b). The actual damages constituted

Excelsior’s cost of rewriting its examinations and

were independent of Frye’s profits.

Frye argues that the district court’s

permanent injunction is too broad because it

enjoins lawful activity. “The scope of injunctive

relief is reviewed for abuse of discretion.” Idaho

Watersheds Project v. Hahn, 307 F.3d 815, 823 (9%

Cir. 2002). The district court did not abuse its

discretion in crafting a broad injunction after Frye

was found liable for willful copyright infringement

(App. 20)

and trade secret misappropriation. See Creative

Computing v. Getloaded.com LLC, 386 F.3d 930,

937 (9th Cir. 2004) (upholding an “extraordinarily

broad prohibition” when justified by “past egregious

conduct”).

Frye argues that the district court abused its

discretion in denying his motion for a new trial

based on evidence Frye discovered after trial. Frye

fails to meet his burden of showing that he “could

not have discovered the evidence sooner through

the exercise of reasonable diligence, and that the

new evidence is of such magnitude that it would

likely have changed the outcome of the case.” See

Far Out Prods., Inc. v. Oskar, 247 F.3d 986, 998

(9th Cir. 2001). We also reject Frye’s argument that

a new trial is warranted based on the conduct of

Excelsior’s counsel. See Hemmings v. Tidyman’s

Inc., 285 F.3d 1174, 1192 (9th Cir. 2002) (“[Wle will

not overrule a district court’s ruling about the

impact of counsel’s alleged misconduct unless we

have a definite and firm conviction that the court

committed a clear error of judgment.” (internal

quotation marks omitted)).

To the extent Frye argues that the jury’s verdict

is not supported by substantial evidence, we

disagree. See Watec Co. v. Liu, 403 F.3d 645, 651

(App. 21)

n.5 (9th Cir. 2005) (“A jury’s verdict must be upheld

if supported by substantial evidence.”).

AFFIRMED.

(No signature on Document)

FILED

SEP 1, 2009

MOLLY C. DWYER, CLERK

(App. 22)

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

EXCELSIOR COLLEGE, ) No. 07-55997

Plaintiff - Appellee, ) DC No.

} 04CV0535 WQH

vs. ) Southern District

) of California, San

CHARLES M. FRYE; ) Diego

Appellant — Defendant )

)

AND ) ORDER

)

PROFESSIONAL )

DEVELOPMENT SYSTEMS )

SCHOOL OF HEALTH )

SCIENCES; et al., )

Defendants. )

Before: BEEZER, HALL and T.G. NELSON,

Circuit Judges.

Defendant-appellant Charles Frye’s petition for

panel rehearing is DENIED.

(No signature on Document)

FILED

SEP 22 2009

MOLLY C. DWYER, CLERK

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.