United States District Court, W.D. Wisconsin
MARILYN MOFFAT, KAREN KEMMIS, DANIELLE PARKER, and MARK RICHARDS, Plaintiffs,
ACADEMY OF GERIATRIC PHYSICAL THERAPY, Defendant.
OPINION & ORDER
D. PETERSON DISTRICT JUDGE
main issue in this case is the ownership of materials used in
a program that certifies physical therapists as experts in
geriatric exercise. This dispute was a foreseeable one that
could have been avoided easily if the parties had fully
worked out their agreements in writing when they undertook to
develop the course. But they did not, and now disagreements
over control of the course have given rise to a messy
Academy of Geriatric Physical Therapy is a non-profit
professional association of physical therapists who
specialize in treating older adults. More than a decade ago,
the Academy established a task force to promote physical
therapists as experts in exercise for the aging. This effort
led to the Academy's creation of the Certified Exercise
Expert for Aging Adults (CEEAA) program, which requires
participants to complete three two-day courses to achieve
certification. Plaintiffs are highly credentialed physical
therapists and members of the Academy. They each taught parts
of the CEEAA course and played a role in its development.
What matters most here is that they claim to have written the
course materials, consisting of several PowerPoint slide
decks and lab manuals. After a dispute over control of the
course arose, plaintiffs applied for and received copyright
registrations in the course materials in their own names.
Academy now offers the CEEAA course without plaintiffs'
participation, but it uses a version of the course materials
that plaintiffs claim as theirs. So plaintiffs brought this
suit alleging that the Academy infringes their copyrights.
The Academy asserts counterclaims for breach of contract
against all plaintiffs and for breach of fiduciary duty
against plaintiff Danielle Parker, who had been a member of
the Academy board of directors when plaintiffs registered
copyright to the course materials.
sides move for summary judgment on plaintiffs' copyright
infringement claims. Dkt. 29 and Dkt. 30. The material facts
are not genuinely disputed, despite the unsupportable
allegations in plaintiff Moffat's affidavits, which the
court discredits as a matter of law. The court concludes that
although plaintiffs were not formal employees of the Academy,
the course materials were nevertheless prepared as works made
for hire under the principles set out in Cmty. for
Creative Non-Violence v. Reid, 490 U.S. 730 (1989). The
Academy at all times retained ownership of the course itself,
had the right to control course content, paid two plaintiffs
for course administration, and other Academy members
contributed to the course materials. And the versions of the
course materials plaintiffs now claim are derivative works
based on earlier versions that the Academy owns.
the course materials were not works made for hire,
plaintiffs' infringement claims would fail for an
additional reason: plaintiffs have, at a minimum, granted the
Academy an implied, non-exclusive license to use
plaintiffs' contributions in connection with the CEEAA
course and certification program. Although this implied
license would not allow the Academy to sue for infringement,
it would defeat plaintiffs' copyright infringement
also move for summary judgment on the Academy's
counterclaims. Dkt. 30. That part of plaintiffs' motion
is also denied. Plaintiffs raise no argument as to the
Academy's contract claims. Factual disputes preclude
summary judgment on the breach of fiduciary duty claim
against plaintiff Parker.
laying out the facts, the court must deal with
plaintiffs' failure to comply with the court's
summary judgment procedures, which are provided in the
preliminary pretrial conference order. Dkt. 9. The essential
requirement is that the parties must set out proposed
findings of fact that include “all facts necessary to
sustain the motion for summary judgment.” Id.
at 9. These proposed facts, and any fact-based objections to
the opposing side's proposed facts, must cite admissible
evidence. These evidentiary requirements are important
because only a genuine dispute of a material fact
will preclude summary judgment, and a genuine dispute is one
supported by admissible evidence. See Johnson v.
Cambridge Indus., Inc., 325 F.3d 892, 897-98 (7th Cir.
Academy's summary judgment submissions are meticulously
prepared to comply with the court's requirements. But
plaintiffs failed to comply in many ways, as the Academy
points out. Dkt. 46, at 3-10 and Dkt. 54, at 4-9.
Plaintiffs' submissions are replete with factual
assertions and objections that are not grounded in evidence.
See Dkt. 46, at 5-6 (listing 25 examples of
statements in plaintiffs' summary judgment brief that are
not supported by citations to proposed facts or evidence).
Plaintiffs acknowledge that they were aware of the
court's summary judgment procedures. But they contend
that although they did not provide as much “citation
support” as the Academy did, “virtually all of
the individual PFOFs were supported by citation to the
evidence.” Dkt. 56, at 4-5. But this is simply not
true. Many of plaintiffs' responses to the Academy's
proposed facts are not at all grounded in evidence. The
problem is so pervasive that the court will deem the
Academy's proposed facts undisputed.
submissions pose a second problem. The primary source of
plaintiffs' putative evidence is two affidavits from
plaintiff Moffat, the first dated July 21, 2016, Dkt. 45, and
the second filed August 18, 2016, Dkt. 52. Moffat was
deposed on May 23, 2016. Dkt. 25. Some of Moffat's
affidavit statements contradict her deposition testimony, as
well as the deposition testimony of the other
plaintiffs. It appears that Moffat's affidavit
statements, particularly those in her second affidavit, were
made simply to controvert facts established by the
Academy's motion for summary judgment. Moffat offers no
explanation for why her affidavit testimony varies from her
deposition testimony. The court will not disregard
Moffat's affidavits entirely, but it will disregard any
affidavit statement by Moffat that contradicts her deposition
testimony under the sham affidavit rule. See McCann v.
Iroquois Mem'l Hosp., 622 F.3d 745, 750-51 (7th Cir.
2010). The court will also disregard any affidavit statement
that is merely conclusory (such as that the Academy had
“no ‘control' whatsoever, ” or that it
“repeatedly acknowledged” that plaintiffs owned
the copyright to the course materials, Dkt. 52, ¶¶
22, 36) or not based on her personal knowledge (such as
“it was always the understanding of everyone concerned
that we owned the Copyrighted Materials, ” Dkt. 45,
follows then is a summary of the core background facts as
established by the parties' submissions. They are
undisputed unless otherwise noted. Additional detail will be
added in the analysis section where pertinent.
Academy of Geriatric Physical Therapy is a non-profit
professional association for physical therapists who
specialize in geriatrics. The Academy is a section of the
American Physical Therapy Association, and it was formerly
known as the Section on Geriatrics of that association. The
Academy is a 501(c)(3) charitable organization incorporated
under the laws of the state of Virginia. Its headquarters are
in Madison, Wisconsin, which accounts for the venue of this
litigation. In addition to the typical functions of a
professional association, the Academy provides training for
therapists that can lead to certification as a Certified
Exercise Expert for Aging Adults. The designation CEEAA is a
federally registered trademark owned by the Academy.
Marilyn Moffat, Karen Kemmis, Danielle Parker, and Mark
Richards are physical therapists with advanced degrees and
extensive experience. Plaintiffs have taught the
Academy's courses that lead to CEEAA certification. They
participated in the development of the courses, and Moffat
especially played a key role. Moffat and Kemmis also served
as course administrators. Parker was a member of the
Academy's board of directors.
Development of the course materials and the dispute over
2004, the Academy formed a task force to promote physical
therapists as experts in geriatric exercise. The task force
had about 10 physical therapist members, including plaintiffs
Moffat, Kemmis, and Richards, and several Academy staff
members. Moffat and Dale Avers (a non-party to this case)
were co-chairs. The task force created educational and
promotional materials, which included physical education
curriculum content guidelines, instructions for physical
therapists, and a PowerPoint presentation for continuing
education for physical therapists, among other items. The
task force did its work under the auspices of the Academy,
and the task force reported and sought approval for its work
and its proposals from the Academy. The Academy reimbursed
expenses of the task force members, but no one was paid for
task force was winding up its work, Avers proposed to the
Academy that it establish a formal certification program. By
the time the task force submitted its last report to the
Academy in 2007, the task force had created a PowerPoint
presentation of 500-600 slides for use as a continuing
education program for physical therapists. The Academy
established an “interim committee” to test and
plan for the implementation of what would become the CEEAA
program. Moffat and Kemmis chaired the interim committee.
the demand for such a program, the Academy offered several
two-day “pre-courses” in 2007 and 2008. The
pre-courses used the PowerPoint presentation created by the
task force, which the court will refer to as the
“Pre-course PowerPoint, ” and a set of tests and
exercises, which the court will refer to as the
“Pre-course Lab Manual.” The court will refer to
them together as the “Pre-course Materials.”
Plaintiffs contend that they did most of the work on the
Pre-course Materials, but they now concede that the Academy
owns the Pre-course PowerPoint and Pre-course Lab Manual.
(Plaintiffs would later register the Pre-course Materials in
their own names, and they asserted infringement of the
Pre-course Materials in the complaint, although they have
since dropped that claim.)
interim committee proposed to implement the full CEEAA
certification program; the Academy board of directors
approved the program in 2008. The first CEEAA certification
course was offered in Montgomery, Alabama, in March 2009.
According to plaintiffs, the “Alabama Materials”
used at this program were an interim version of the course
materials: they were expanded versions of the Pre-course
Materials, but not yet the fully expanded versions that
plaintiffs would later register.
2009 to 2013, the CEEAA course was presented more than 18
times, and more than 850 physical therapists received CEEAA
certification. Plaintiffs were among those who taught the
course and received the $1, 000 per day honorarium (plus
expenses) for doing so. Moffat and Kemmis were paid $4, 000
per year to serve as course administrators; that amount was
split between them. Dkt. 33-26, at 6.
course materials were expanded and revised over this period,
ultimately resulting in the six individually registered works
that plaintiffs now allege are infringed. The court will
refer to these six works as the 2013 Materials. They include:
Part I Slides; Part I Lab Manual; Part II Slides; Part II Lab
Manual; Part III Slides; and Part III Lab Manual. The 2013
Materials include approximately 2, 000 slides and 283 lab
manual pages. The 2013 slide collections present a paraphrase
of published research on geriatric exercise, organized in a
way that generally follows the outline of the Pre-course
PowerPoint. The 2013 lab manuals collect assessments and
exercises from third-party sources, again generally following
the organizational scheme of the Pre-course Lab Manual.
parties dispute exactly who did what on the 2013 Materials,
but the material facts are not in genuine dispute. Plaintiffs
and other Academy members met periodically, typically in
connection with an Academy meeting, to review the CEEAA
course materials. Moffat generally took primary
responsibility, and plaintiffs did most of the work in
expanding the Pre-course Materials into the 2013 Materials,
but other CEEAA instructors contributed as well. The
contributions of others were not as extensive as
Moffat's, but the others made the same types of
contribution that plaintiffs did. See,
e.g., Dkt. 58, ¶ 24.
trouble was brewing. In July 2012, the Academy established
another task force, this time to consider alternative models
and structure for the CEEAA course. Moffat and Kemmis, the
co-chairs of the CEEAA committee, were not appointed to the
four-member task force, although plaintiff Parker was. In
January 2013, the Academy board decided that it would have
the executive director ask for an electronic copy of the
CEEAA course materials. Academy president William Staples
made the request in June 2013. Moffat refused, asserting that
she and Kemmis owned the copyright to the course materials.
The Academy board contended that the course materials were
mostly unprotectable, given that they consisted of factual
matter largely drawn from third-party sources.
in 2013, the Academy attempted to negotiate new CEEAA
administrator contracts with Moffat and Kemmis. The new
contracts would expressly provide that the Academy owned the
course materials; Moffat and Kemmis would not agree. In
January 2014, the Academy informed Moffat and Kemmis that it
would not renew their administrator contracts. In March 2014,
plaintiffs applied for registration of the copyrights to the
Pre-course Materials and the 2013 Materials.
plaintiffs registered the course materials, plaintiff Parker
was a member of the Academy's board of directors. Parker
did not inform other board members about the filing. On
November 7, 2014, Parker and the other plaintiffs filed a
copyright infringement suit against the Academy in the United
States District Court for the Southern District of New York.
Dkt. 57, ¶ 1. Parker had been discussing her New York
case with her attorney for “a few months” before
filing the complaint. Id. ¶ 3. Parker resigned
from the board two weeks later. Plaintiffs voluntarily
discontinued their New York suit in September 2015 and then
filed this action in this court in the same
Academy appointed a new interim CEEAA course administrator
and continues to offer CEEAA courses using a modified version
of the 2013 Materials.
Contracts between the parties
of the course materials was not expressly locked in writing,
but three sets of contracts are informative of the
parties' intent on the issue.
first set of contracts is the original instructor contracts,
which each of the four plaintiffs entered when they taught
CEEAA courses in 2009 and 2010. The contract is a form
contract that the Academy used for Academy-sponsored programs
generally; it was not drafted specifically for use with the
CEEAA program. Using one of Moffat's contracts as an
example, the pertinent parts of the contract provide:
Handouts must be received by the Section no later than
October 21, 2009. Speakers agree to grant the Section on
Geriatrics permission to sell course handouts outside of the
course. This permission expires one year after the course is
given. The Section on Geriatrics will not have sole copyright
of the handouts or of the speaker's presentation. Should
the speaker fail to provide handouts to the Section by the
deadline, the Section has the right to reduce speaker
honorarium after the course.
* * *
Speaker attests to the following: my presentation is my own
original work, I have the authority to enter into this
Agreement, and I am the sole copyright holder or that I have
obtained all necessary permissions or licenses from any
persons or organizations whose material is included or used
in my presentation.
Dkt. 59-8, at 3, 6, 7. This was the form of the contract in
effect for the Alabama Materials.
handouts distributed to participants at the Alabama
conference bore this legend:
Handouts are property of the Section on Geriatrics. This
material may not be reproduced, displayed, modified or
distributed without the express prior written permission from
the Section on Geriatrics. For permission, contact
Dkt. 49-3, at 4 and Dkt. 57, ¶ 7.
second set of contracts is the revised instructor contracts,
which were in place from 2011 through 2014. The revised
instructor contracts were also form contracts, in that the
name of the instructor and the specific date and place of the
course were to be filled in. But this form was specifically
prepared for use with CEEAA courses. Each of the plaintiffs,
like all CEEAA instructors during ...