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Declaratory Judgment in the Maaherra Case
January 29, 1999

THE UNITED STATES DISTRICT COURT FOR
THE DISTRICT OF ARIZONA
CIV 91-0325 PHX WKU

Urantia FOUNDATION, a non-profit foundation, Plaintiff, vs.
KRISTEN MAAHERRA, Defendant.

MEMORANDUM AND ORDER ON PLAINTIFF Urantia FOUNDATION'S
MOTION FOR DECLARATORY JUDGMENT

This case comes before me on the Foundation's Motion for Declaratory Judgment. (filing 387). Specifically, the Foundation seeks a final order declaring that Maaherra infringed the Foundation's renewal copyright in The Urantia Book by copying its text, in its entirety, and distributing it on computer diskettes. Such a declaration may be summarily granted, without a formal hearing, the Foundation contends, because it merely memorializes the law of this case, the Ninth Circuit's finding on appeal that the Foundation did hold a valid copyright under the Copyright Act of 1909 and Maaherra did in fact infringe upon it. Urantia Foundation v. Maaherra, 114 F.3d 955 (9th Cir. 1997).

After having considered the parties briefs, as well as the relevant law, I shall grant the Foundation's motion.

Analysis

Congress has afforded federal courts the authority to entertain actions for declaratory judgment through two provisions of the Declaratory Judgment Act, which state, in pertinent part, as follows:

Section 2201. Creation of Remedy

(a) In a case of actual controversy within its jurisdiction, . . . any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration. whether or not further relief is or could be sought. Any such declaration shall have the force and effect of a final judgment or decree and shall be reviewable as such.

Section 2202. Further relief

Further necessary or proper relief based on a declaratory judgment or decree may be granted, after reasonable notice and hearing, against any adverse party whose rights have been determined by such judgment. 28 U.S.C. sections 2201(a), 2202. See also FED. R. CIV. P. 57 (regularizing the procedure for obtaining declaratory relief.. In short, "[t]he Declaratory Judgment Act permits federal courts to declare the rights and other legal relations of any 'interested party' in a case of 'actual controversy within its jurisdiction."' 12 Moore's Federal Practice, 57.10[1][a] (Matthew Bender 3d ed.). Considering the advanced stage of this litigation, I find no reason to review in any great detail these issues of justifiability. Rather, in the interest Procedure, as well as completeness, I shall simply announce my finding that a justiciable controversy, as the parties concede, exists to warrant my consideration of this motion for declaratory relief.

Even so, the Declaratory Judgment Act confers 'unique and substantial discretion" on federal courts in deciding whether to declare the rights of litigants. Wilton v Seven Falls Co., 515 U.S. 277, 286 (1995). On its face, the statute provides not a mandate but that a court "may declare the rights and other legal relations of any interested party seeking such declaration." 28 U.S.C. section 2201(a). Indeed, as the Supreme Court has noted, '`By the Declaratory Judgment Act, Congress sought to place a remedial arrow in the district court's quiver; it created an opportunity, rather than a duty, to grant a new form of relief to qualifying litigants." Wilton, 515 U.S.C. at 288. Such an opportunity should be denied by the district court. the Ninth Circuit instructs, "when it will neither serve a useful purpose in clarifying and settling the legal relations in issue nor terminate the proceedings and afford relief from the uncertainty and controversy faced by the parties." United States v. State of Wash., 759 F.2d 1353, 1357 (9th Cir. 1985); Natural Resources Defense Council, Inc. v. EPA, 966 F.2d 1292, 1299 (9th Cir. 1992) (same).

Here, Maaherra asserts that summarily to grant declaratory relief, as the Foundation requests, would neither settle nor clarify the legal relations at issue between herself and the Foundation. Rather, she argues, such a result may only be obtained through a hearing designed to determine the exact nature and scope of the Foundation's human contribution to The Urantia Book, as a single revelation is not subject to copyright protection and remains in the public domain. Without such an adjudication, she proclaims, the court simply cannot know precisely how the respective rights of the parties should be declared. I disagree.

Remember, to prevail on the claim of copyright infringement the Foundation must establish both ownership of a valid copyright and "copying" of the protected components of the copyrighted material by Maaherra. Urantia Foundation v. Maaherra, 895 F. Supp. 1347, 1349 (D. Ariz. 1995). Since Maaherra had admitted "copying" the entire text of The Urantia Book, the sole focus throughout this litigation has been whether the Foundation owned a valid copyright in the Book. In other words, if the Foundation could prove such ownership, then it is entitled to prevail on its claim of copyright infringement. On appeal, the Ninth Circuit made three crucial rulings with respect to this issue: first, the Urantia Papers that comprise the Book were amenable to common law copyright protection at the time they came into being; second, the Foundation owned the common law copyright of the Papers at the time of the Book's initial publication in 1955; and third, the Foundation's 1983 renewal copyright was valid. See Urantia Foundation v. Maaherra, 114 F.3d 955, 958-964 (9th Cir. 1997). Consequently, the Ninth Circuit ruled that the Foundation held a valid copyright in the Book, and that Maaherra infringed it. Id. at 964.

Next, Maaherra contends that simply memorializing the Ninth Circuit's decision in this case through declaratory judgment would not end the legal dispute between the parties. Maaherra must remember, however, that the claim of copyright infringement in this case concerns the verbatim copying of the entire Urantia Book, including the selection and arrangement of the revelations into the Papers that comprise the Book. This case does not concern the use of a single "revelation'' outside the context of the Book, which for purposes of this case would be analogous to a "fact," and which of course would not be copyrightable. Id. at 959.

Consequently, I need not decide, as Maaherra contends, the precise scope of the Foundation's human contribution to the Book. Indeed to engage in such a hearing would expand the perimeters of the case beyond the realm of the case and controversy presented here for adjudication. Maaherra is not entitled to an advisory opinion detailing her legal rights for acts short of complete verbatim copying of the entire Book, including the selection and arrangement of the revelations into the Papers that comprise the Book, and subsequent distribution. In short, then, I believe that a declaratory judgment, issued in the letter and spirit of the Ninth Circuit's ruling on appeal, would in fact serve a useful purpose in clarifying and settling the legal relations at issue between the parties in this litigation. Moreover such an order would terminate these proceedings and afford relief from the uncertainty and controversy faced by the parties with respect to the precise issue presented in this case; namely, whether Maaherra violated the Foundation's copyright by copying The Urantia Book in its entirety, including the selection and arrangement of the revelations into the Papers that comprise the Book, onto computer diskette and distributing it.

Maaherra also argues that a declaratory judgment is inappropriate at this time because she has defenses that remain to be tried. Specifically, Maaherra points to her defenses of "unclean hands" and "public interest" in regards to the Foundation's motion for a permanent injunction as well as other possible defenses to her liability for copyright infringement. With respect to this latter contention, Maaherra maintains that it is clear from the Ninth Circuit's use of the word "infringe" that it "merely was noting that [she] did not raise the usual copyright infringement defense that her work was not substantially similar to the Foundation's work." Defendant's Opposition to Plaintiffs Motion for Declaratory Judgment, p. 3. Consequently, she maintains that she should be afforded the opportunity to present such defenses since the Ninth Circuit did not expressly decide any issue not before it on appeal. I disagree.

While it is true that I may on remand address any issue not disposed of either expressly or impliedly, on appeal, Nguyen v. United States, 792 F.2d 1500, 1502 (citing Stevens v. F/V Bonnie Doon, 731 F.2d 1433, 1435 (9th Cir. 1984)); Lindy Pen Co, Inc. v. Bic Pen Corp., 982 F.2d 1400, 1404 (9th Cir. 1993); In re Exxon Valdez, 1995 WL 328493, *1 (D. Alaska 1995); United States v. Derewal, 1995 WL 672821, at * I (E.D. Pa. 1995), I may not do so if to deviate from the mandate would be counter to the spirit of the circuit court's decision. Lindy, 982 F.2d at 1404; Derewal, 1995 WL 672821, at *1. In determining its spirit, I may examine "[t]he opinion delivered by [the] court at the time of rendering its decree ...." Cote, 51 F.3d at 182; see also Bankers Trust Co. v Bethlehem Steel Corp., 761 F.2d 943, 950 (3d Cir. 1985) (holding that a district court is "free to make any order or direction in further progress of the case, not inconsistent with the decision of the appellate court, as to any question not settled by the decision."). Here, the Ninth Circuit's holding and mandate are quite clear: "the Foundation's renewal copyright is valid, and that Maaherra infringed it;" and ''[f]or the foregoing reasons, the decision of the district court is REVERSED and the case REMANDED for further proceedings on [relief]." Id. at 964.

This language, it seems to me, at the very least, impliedly dismisses all other defenses to copyright infringement not addressed in its decision. There is simply no basis to permit Maaherra to challenge whether she infringed on the Foundation's copyright under the facts in this case. I will not permit Maaherra to contest the Ninth Circuit's decision in this backdoor fashion. If Maaherra wished to raise such a defense, then she should have contested her verbatim copying The Urantia Book onto computer diskette from the beginning. Instead, she chose to admit to such copying and focus her defense on the invalidity of the Foundation's copyright in the Papers. It is too late for Maaherra to challenge this element of the offense.

That is not to say, however, that Maaherra may not raise defenses in opposition to a specific remedy sought by the Foundation for said infringement. Indeed, Maaherra has properly raised the defenses of "unclean hands" and "public interest" in response to the Foundation's motion for a permanent injunction. Although Maaherra's success on these defenses would defy the Foundation's request for a permanent injunction, their resolve bears no weight on this motion for declaratory judgment. Consequently, I find no reason to hold up the disposition of this particular motion based on irrelevant defenses.

Finally, Maaherra argues that to grant the Foundation a declaratory judgment at this time would violate her right to a jury trial. indeed, as Maaherra correctly contends, "A litigant is not deprived of a jury trial merely because an action in which it is a party is one for declaratory judgment." 9 Wright and Miller, Federal Practice and Procedure, section 2313 at p. 108 (1995). See also Fed. R. Civ. P. 57 (In declaratory judgment actions, "the right to trial by jury may be demanded under the circumstances and in the manner provided in Rules 38 and 39.") Therefore, "If there would have been a right to a jury trial on the issue if it had arisen in an action other than for declaratory judgment, it must be tried to a jury in the declaratory action." Id. at p. 110. Since alleged violations of copyright infringement are legal, rather than equitable in nature, defendants, such as Maaherra, are generally entitled to a jury trial. Therefore, Maaherra summarizes, "it would be wrong for this court to precipitously grant a declaratory judgment based solely on the Foundation's motion and prior to the final hearing in this case." Defendant's Opposition to Plaintiff's Motion for Declaratory Judgment, p. 5. In light of the advanced stage of this litigation, however, I must disagree with Maaherra.

The Ninth Circuit's prior ruling in this case has clarified the validity of the Foundation's copyright in The Urantia Book, and solidified that Maaherra infringed on that copyright. With respect to the essential elements of a copyright infringement claim, then? I find that no issue of fact remains to be tried. Surely Maaherra is not suggesting that a jury be impaneled for the sole purpose of reversing the findings of the Ninth Circuit with respect to the essential elements of the Foundation's infringement claim. Moreover, as I previously discussed, a declaratory judgment would serve to clarify the rights of the parties with respect to the actual dispute that this case has presented to the court. Consequently, I find that to issue a declaratory judgment at this time is an appropriate resolution to this litigation.

IT IS THEREFORE ORDERED that:

(1) the Foundation's Motion for Declaratory Judgment, filing 387, is granted.;

(2) the Motion for Permanent Injunction, filing 371, has been withdrawn and is therefore moot; and

(3) the Plaintiff Urantia Foundation's Motion in Limine to Exclude Anticipated Deposition and Trial Testimony and to Limit Period for Presentation of Defense, filing 388, is denied as moot.

Dated January 29, 1999. BY THE COURT
Warren K. Urbom United States Senior District Judge
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA CIV 91-0325 PHX WKU

Urantia FOUNDATION, a non-profit foundation, Plaintiff, vs.
KRISTEN MAAHERRA, Defendant. JUDGMENT

In accordance with the Memorandum and Order on Plaintiff Urantia Foundation's Motion for Declaratory Judgment and Urantia Foundation v. Maaherra, 114 F.3d 955 (9th Cir. 1997), IT IS ORDERED AND DECLARED as the final judgment in this case that the defendant, Kristen Maaherra, infringed the renewal copyrights in The Urantia Book by the verbatim copying of The Urantia Book onto computer diskettes and distributing the diskettes to others. Dated January 29, 1999.

BY THE COURT
Warren K. Urbom United States Senior District Judge