Subject: Long Order from Whyte
From: Keith Henson
Date: Sat, 24 Apr 1999 03:56:23 GMT
APRIL 19, 1999
R1CHARD W. WEIKING
CLERK. US DISTRICT COURT
DISTRICT OF CALIFORNIA
NORTHERN SAN JOSE
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
NO. C-95-20091 RMW
RELIGIOUS TECHNOLOGY CENTER, a
California non-profit corporation; and BRIDGE ORDER:
PUBLICATIONS, INC., a California non-profit
corporation, (1) GRANTING PLAINTIFF'S MOTION TO
DISMISS DEFENDANT'S COUNTERCLAINI
Plaintiffs, FOR A DECLARATORY JUDGMENT
REGARDING TRADE SECRETS;
(2) GRANTING IN PART DEFENDANT'S
DENNIS ERLICH, an individual, COUNTER-MOTION TO ELIMINATE
PROTECTION BASED ON TRADE SECRFF
(3) DENYING PLAINTIFF'S EXPARTE
MOTION TO STRIKE DEFENDANT'S
REPLY IN FURTHER SUPPORT OF
[Re: Docket Nos. 1060, 1964, 10671
Plaintiff Religious Technology Center's ("plaintiff') motion to dismiss
defendant's counterclaim for a declaratory judgment regarding trade
secrets and defendant Dennis Erlich's ("defendant") counter-motion to
eliminate protection based on trade secret status were submitted on March
8, 1999. The court has read the moving and responding papers. For the
reasons set forth below, plaintiffs motion is granted and defendant's
counter-motion is granted in part. Plaintiffs ex-parte motion to strike
defendant's reply in further support of defendant's counter-motion is
I. PROCEDURAL BACKGROUND
Plaintiff dismissed its trade secret claim against
defendant with prejudice on July 21, 1997. Defendant has not, however,
dismissed his counterclaim for a declaratory judgment regarding trade
On January 28, 1999, during a hearing concerning the issue
of bifurcation, the parties and the court discussed the status of
defendant's declaratory judgment counterclaim. See Corrected Reply
Declaration of Jana Gold in Response to RTC's U ntimely Opposition to Mr.
Erlich's Counter-Motion to Eliminate Trade Secret Protection ("Gold Ded.")
Ex. 1. As part of that discussion plaintiff's counsel stated on the record
that plaintiff will not bring an action for trade secret misappropriation
of th e works at issue against defendant in the future:
Mr. Rosen [plaintiff's counsel]: ... I can say that we have no intention
of bringing any other legal proceeding against Mr. Erlich alleging trade
secret, trade secret violations, trade secret complaints that were before
you, and that resolves it.
The Court: Okay. Let's assume that tomorrow Mr. Erlich posted on the
Internet one of the RTC documents that you previously contended was
subject to trade secret protection.
Mr. Rosen: Previously contended before you in this case? Yes. I'm telling
you we will not bring an action against him.
The Court: Okay. But - and so you're saying -
Mr. Rosen: For trade secret. Maybe copyright, but not trade secret.
The Court: So you think that - but you're not prepared to take the
position that, or agree, that those documents are not' entitled to trade
Mr. Rosen: No, for one very simple reason. As against somebody else who
may post that, there is no justiciable controversy. But some unknown third
party, if they post it, we may or may not decide to bring suit, but that
is not a concern of Mr. Erlich 's... There is no claim. We withdrew it a
year and a half ago and we have told your honor, I've just told your honor
now for the record, we will not reassert the claim, and that's it.
Id. Ex. 1 at 49:5-50:22. Plaintiffs motion to dismiss further confirms
that it has made "an affirmative representation that it will never again
assert a trade secret claim against Erlich based on any future
misappropriation of the Advanced Technology materials at issue in Erlichs
declaratory judgment counterclaim." RTC's Motion to Dismiss Erlich 's
Counterclaim for a Declaratory Judgment Respecting Trade Secrets ("Motion
to Dismiss") at 6:21-23 (emphasis in original).
Also at the January 28, 1999 hearing, the parties agreed to a
briefing schedule for plaintiffs motion to dismiss defendant's declaratory
judgment counterclaim concerning trade secret status. The parties agreed
that plaintiffs motion to dismiss wou ld be filed no later than "a week
from the following] Monday" (i.e., February 8, 1999), that the opposition
would be filed "one week after that" (i.e., by February 16, 1999), and
that the reply would be filed "one week after that" (i.e., by February 23,
Plaintiff filed its motion to dismiss the declaratory judgment
counterclaim on February 8, 1999. Defendant filed an opposition to the
motion and a counter-motion to eliminate protection based on trade secret
status on February 16, 1999. Plaintiff filed a reply to defendant's
opposition to the motion to dismiss on February 23, 1999, but did not at
that point file an opposition to defendant's counter-motion. Despite the
absence of an opposition to the counter-motion, defendant filed a "reply"
in fur ther support of his counter-motion on February 24, 1999. On
February 25, 1999; plaintiff filed an ex parte motion to strike
defendant's reply in further support of his counter-motion. On March 1,
1999, defendant filed an opposition to plaintiffs ex parte motion. On
March 2, 1999, plaintiff filed its opposition to defendant's
counter-motion to eliminate protection based on trade secret status
(titled "opposition to defendant's motion to vacate the February 20, 1997
protective order"). On March 8, 1999, defendant filed his reply to
plaintiffs opposition to the counter-motion.
A. Timeliness and Procedural Compliance of Briefing
Defendant argues in his February 24, 1999 reply in further support
of his counter-motion that because plaintiff failed to oppose the
counter-motion by February 23, 1999, defendant's counter-motion should be
considered unopposed. Plaintiff filed an exparte motion to strike the
February 24, 1999 further reply on the grounds that "(a) it is a 'Reply'
to nothing, and (0) it ignores that, undder Local Rule 7-3, there is no
right of reply on a counter-motion."' Ex Parte Motion to Strike Purported
"Reply " of Dennis Erlich in Support of His "Counter-Motion" at 1:15-16.
Although the court is inclined to strike both the late-filed opposition
and defendant's "further reply" for failure to comply with the Local
Rules, it will consider both parties' papers since each addresses
important issues concerning the confidentiality of the documents in this
case. Plaintiffs ex parte motion is therefore denied.
B. Plaintiffs Motion to Dismiss Defendant's Counterclaim for Declaratory
Judgment Regarding Trade Secrets
Although plaintiff dismissed its trade secret claim against
defendant with prejudice on July 21, 1997, defendant has not withdrawn his
counterclaim for a declaratory judgment regarding the trade secret status
of the works at issue. Plaintiff contends that defendant's counterclaim
is no longer justiciable.
The Declaratory Judgment Act permits a federal court to "declare
the rights and other legal relations" of parties to "a case of actual
controversy." 28 U.S.C. 2201. The "actual controversy" requirement of the
Declaratory Judgment Act ("the Act") i s the same as the "case of
controversy" requirement of the U.S. Constitution. Societe de
Conditionnement en Aluminium v. Hunter Engineering Co., 655 F.2d 938, 942
(9th Cir. 1981). "Thus, the Act requires no more stringent showing
ofjusticiability than the Constitution does.'1 Id. The Declaratory
Judgment Act provides protection from the threat of litigation by allowing
parties' rights to be determined before a suit for damages is filed:
The Declaratory Judgment Act was designed to relieve potential defendants
from the Damoclean threat of impending litigation which a harassing
adversary might brandish, while initiating suit at his leisure or never.
The Act permits parties so situated to forestall the accrual of potential
damages by suing for a declaratory judgment, once the adverse positions
have crystallized and the conflict of interests is real and Immediate.
1 To the extent that plaintiffs exparte motion includes argument
going to the merits of defendant's counter-motion, the court looks to
plaintiffs' actual opposition to the counter-motion, filed March 2, 1999,
for plaintiffs position and argument co ncerning the counter-motion.
************** [end FN]
Id., citing Japan Gas Lighter Assoc. v. Ronson Corp., 257 F. Supp. 219,
237 (D.N.J. 1966). The party asserting the declaratory judgment claim has
the burden of establishing a sufficiently concrete dispute under the Act.
Super Sack Manufacturing Corp. v. C hase Packaging Corp., 57 F.3d 1054
1058 (Fed. Cir. 1995). The "actual controversy must be extant at all
stages of review, not merely at the time the complaint is filed." Id
citing International Med. Prosthetics Research Assocs. V. Gore Enter.
Holdings. Inc., 787 F.2d 572, 575 (Fed. Cir. 1986).
A declaratory judgment action is an "actual controversy"
sufficient to confer subject matter jurisdiction where the defendant
"objectively has a reasonable apprehension" that he is facing or will face
liability if he continues his course of conduc t. Super Sack, 57 F.3d at
1056.2 "'(The objective words and actions of the [defendant to the
declaratory judgment action] are controlling' in determining reasonable
apprehension." K-Lath v. Davis Wire Corp., 1SF. Supp. 2d 952,962 (Cl) Cal.
1998), citing B P Chemicals Ltd. v. Union Carbide Corp., 4 F.3d 975, 980
(Fed. Cir. 1993)." [A] subjective apprehension is insufficient without
objective substance" Id citing BP, 4. F.3d at 979. The apprehension must
have been caused by the [declaratory] defendant's actions." Hal Roach
Studios, 796 F.2d at 1556. "A reasonable apprehension alone, if not
inspired by the defendant's actions, does not give rise to an actual
controversy." Evans Medical Ltd. v. American Cyanamid Q, 980 F. Supp. 132,
136 (S.D.N.Y. 1997), ci ting Int'l Harvester Co. v. Deere & Co., 623 F.2d
1207, 1211(7th Cir. 1980). However, the declaratory judgment plaintiff
"must establish an actual controversy on the 'totality of the
circumstances."' Super Sack, 57 F.3d at 1058, citing Spectronics Corp. v.
H.B. Fuller Co. Inc., 940 F.2d 631, 634 (Fed. Cir. 1991).
2. Defendant's Past Internet Postings
Plaintiffs dismissal of its trade secret claim with prejudice with
regard to defendant's past Internet postings is res judicata as to that
claim, and plaintiff therefore may not assert it again against defendant.
See Be&d V. Sheet Metal Workers Un ion. Local 150, 908 F.2d 474, 477 n.3
[FN] 2 Although most of the cases cited by the parties involving the
"reasonable apprehension" requirement are patent infringement cases, the
requirement has been applied by the Ninth Circuit outside of the patent
context. See e.g. Hal Roach Studi os. Inc. V. Richard Feiner and Co..
Inc., 896 y.2d 1542 (9th Cir. 1990).
Defendant appears not to dispute that plaintiffs dismissal precludes
it from bringing a trade secret claim against him with regard to his past
Internet postings, and does not argue that he has reasonable apprehension
of trade secret suit for his pas t Internet postings. There is no case or
controversy with regard to defendant's past Internet postings of the works
at issue, and defendant's declaratory judgment counterclaim is therefore
not justiciable as it applies to defendant's past Internet posting s of
the works at issue.
3. Potential Future Internet Postings
Plaintiff contends that defendant does not have a reasonable
apprehension that plaintiff will sue him for any future Internet postings
because plaintiffs counsel has stated on the record that plaintiff will
not sue defendant for trade secret misap propriation for any future
Internet postings. Defendant argues in opposition that the agreement is
uncertain and that the parties' particular history in and out of this
litigation creates a reasonable apprehension of suit.
A. Agreement Not To Sue
In Super Sack, the court held that plaintiffs counsel's
unconditional promise, in moving papers and on the record during oral
argument, that it would not sue defendant in the future for infringement
with regard to the patents-in-suit "totally remo ves any current or future
apprehension by Chase that it will face claims of infringement regarding
the patents-in-suit, and it completely eliminates any actual case or
controversy in this case." Super Sack, 57 F.3d at 1056. The court which
found that "[t] he legal effect of Super Sack's promise not to sue is the
heart of the matter, concluded that the promise created an "estoppel"
which prevented Super Sack from asserting liability in the future and
"removes from the field any controversy sufficiently actu al to confer
jurisdiction over this case. Id. at 1059.
In Evans, the court stated that "[t]he law makes clear that an
agreement by a declaratory defendant not to sue on any claim regarding the
patents-in-suit 'totally removes any current or future apprehension' by
the declaratory plaintiff, thereby 'e liminat[ing] any actual case or
controversy. Evans, 980 F. Supp. at 136, citing Super Sack, 57 F.3d at
1056. The court held that the affidavits of company officers and
statements by counsel which denied ownership and other rights to the
patents at issue, and their promise to be bound by any judgment in the
case, "forever estop Glaxo from bringing claims against defendants
regarding the issues in this litigation, and thereby have 'remov[ed] any
controversy sufficiently actual to confer jurisdiction over th is case"'Id
citing Super Sack, 57 F.3d at 1059.
In holding that the defendant did have a reasonable apprehension
of suit, the court in Hal Roach Studios, stated that, in addition to an
implied threat of suit, "[i]t is also relevant, under the circumstances of
this case, that plaintiff has not i ndicated to [defendant] that it will
not institute an infringement action." Hal Roach Studios, 896 F.2d at
1556. In K-Lath, the court held that the plaintiff did not have a
reasonable apprehension of suit where, although defendants refused to
waive their right to enforce the patent at issue, they 'never threatened
K-Lath in connection with the [patent at issue,]... presently have no
plans or intentions concerning such an action" and had not inspected the
accused product. K-Lath, 15 F. Supp. at 960. The court found no reasonable
apprehension of suit even though the text of the opinion nowhere refers to
an explicit promise not to sue. In Grain Processing Corp. V. American
Maize-Products Co., 840 F.2d 902 (Fed. Cir. 1988), the court found no
reasonable apprehension of suit where th e plaintiff abandoned its claim
that defendant had infringed prior to trial and since then had
"steadfastly refused to assert infringement and where nothing in the
record [suggested] that Maize will be faced with a similar infringement
suit in the future. " Grain Processing, 840 F.2d at 906.
The case law well establishes that an unequivocal statement by a
declaratory judgment defendant's counsel that the defendant will not sue
the declaratory judgment plaintiff on the underlying claim precludes
"reasonable apprehension of suit, render ing the declaratory judgment
claim non-justiciable. Here, plaintiffs counsel stated on the record that
plaintiff "will not bring an action against him [defendant] ... for trade
secret" if defendant in the future posts on the Internet one of the
documents that plaintiff previously contested was subject to trade secret
protection. Gold Ded. Ex. 1 at 49:11-17. Plaintiff has repeated this
promise not to sue in its moving papers. See Motion to Dismiss at 6:21-23.
Defendant cites no case in which a court has fo und a reasonable
apprehension of suit where the opposing party, or its counsel, clearly and
unequivocally states that it will not bring suit. Under Super Sack,
plaintiffs counsel's statement that it will not sue defendant for trade
secret misappropriation estops plaintiff from doing do. Defendant cannot,
therefore, have a reasonable apprehension of suit.
Defendant argues that he has a reasonable apprehension of suit
because plaintiffs counsel's representation that plaintiff will not sue is
vague and uncertain. Mr. Erlich's Opposition to RTC's Motion to Dismiss
Counterclaim for Declaratory Judgment Respecting Trade Secrets and Counter
Motion to Eliminate Protection Based on Trade Secret Status ("Erlich
Opposition") at 10:8-12:11 First, defendant contends that the
representation "does not go far enough in unambiguously declaring that RTC
has no trade secrets in the courses, and it is n ot signed by RTC." Erlich
Opposition at 10:19-21. However, in Super Sack, the court found that the
promise not to sue precluded a reasonable apprehension of suit even though
Super Sack took "great pains to emphasize that it 'has not and does not
concede i ts claims of infringement against Chase."' Super Sack, 57 F.3d
~t 1057 Further, the court in Super Sack specifically held that the
statement not to sue made by Super Sack's counsel in motion papers and
briefs was sufficient to create the estoppel, reject ing the defendant's
contention that the promise had to be signed by Super Sack itself. Id. at
Second, defendant contends that the terms of the representation,
which defendant inaccurately refers to as a "license," are too uncertain.
Defendant argues that "the make-up of the 'works at issue' in this case is
still an open question." Erlich Opposition at 11:1-2. However, "Final
Exhibit B-l"to the Second Amended Complaint defines the documents which
are "at issue" in this case. See Declaration of Helena K. Kobrin in
Further Support of RTC's Motion to Dismiss Erlich's Counterclaim for a
Declaratory Judgment Respecting Trade Secrets, Ex. H.
3 Defendant also presents argument concerning his prayer for
attorneys' fees. Erlich Opposition at 12:14-14:4. However, as plaintiff
notes, entitlement to attorneys' fees is to be addressed in a post-trial
proceeding see Kobrin Ded. Ex. I, and de fendant's ability to show bad
faith on plaintiffs trade secret claim does not go to the issue of the
justiciability of his declaratory relief counterclaim.
4 Defendant also argues that plaintiff might reconstitute itself
to avoid the estoppel. Erlich Opposition at 10 n.7. Defendant's
speculation is not sufficient to form a reasonable apprehension of suit
and, as plaintiff points out, the representat ion estops any
successor-in-interest of plaintiff.
Third, defendant states that he "needs an unequivocal declaration by
this court that the documents are not trade secrets" in order to dispel
his reasonable apprehension of suit. Erlich Opposition at 11:11 - 19.
However, as is discussed above, the cou rt in Super Sack held that Chase
(the declaratory judgment plaintiff) did not have a reasonable
apprehension of suit because Super Sack promised not to sue Chase in the
future for infringement, even though it would not concede its claims of
infringement a gainst Chase. Super Sack, 57 F.3d at 1057.
Plaintiffs statement that it will not sue defendant for trade
secret regarding any future postings of the works at issue in this case is
sufficiently certain and unequivocal to create an estoppel and precludes a
reasonable apprehension of suit.
B. The Parties' Particular History
Defendant acknowledges that courts have found "a representation by
counsel to be sufficient to dispel a reasonable apprehension of suit," but
argues that "[t]his is not a typical case and these are not typical party
opponents." Erlich Opposition a t 10 n.7. Defendant cites C.R. Bard. Inc.
v. Schwartz, 716 F.2d 874 (Fed. Cir. 1983), in support of his argument
that the parties' particular history in and out of litigation creates a
reasonable apprehension of suit. In Bard, decided befor Super Sack, a
patent licensee brought a declaratory judgment action to declare a patent
subject to license invalid while the license was still in effect. The
court held that there was a "reasonablc threat" that the patentee would
bring an infringement action even though the license was still in effect
based on the totality of the circumstances, which included that the
plaintiff licensee had stopped paying royalties, allowing the defendant to
sue for infringement at any point. The court further noted that the
defendant's willingness to enforce his patent rights during his
involvement in the litigation and his demand for royalty-payments were
"factors to be considered" in determining whether there was a reasonable
threat of an infringement suit Bard, 716 F.2d at 88I. Although the
defendant had filed an affidavit stating that "I have and have had no
intention of instituting any
5 The court disagrees with defendant's characterization of Bard as
holding that "history of litigatic between parties sufficient to establish
apprehension of suit, notwithstanding defendant's representation that he
would not sue." Erlich Opposit ion at 7:17-18. The Bard court held that
the defendant't willingness to enforce his patent rights was a factor in
determining whether there was a threat of litigation, and based its
decision in large part on its finding that the terms of the representatio
n were phrased such that the defendant could "terminate the agreement at a
time of his choosing and institute an infringement action." Bard, 716 F.2d
action against Bard for infringement," the court found the affidavits's
words to be "carefully chosen" and "not negat[ing] the possibility of an
infringement action" because "intentions . . . may change over time." Id.
Plaintiffs statement in the present case is not, however, equivocal.
Defendant cites lawsuits brought by plaintiff against other
parties and points to evidence which, he argues, shows that he has been a
"victim of Scientology harassment" since 1984. Although "a
'litigation-saturated' environment will sometimes resu lt in finding
reasonable apprehension as a matter of law," Evans, 980 F. Supp. at 136,
the court must still look to the threat of litigation in light of the
totality of the circumstances with a particular view to the conduct of the
defendant. Id. at 137. Defendant does not dispute that this is the first
suit that plaintiff has brought against him, or that plaintiff has not
asserted a trade secret claim against another party since it withdrew its
claim against him in 1997. The court has been cited no autho rity in which
a court found a reasonable apprehension of suit based on the parties'
particular relations with each other in the face of an explicit and
unequivocal promise not to sue in the future. The court must look to the
objective reasonableness of the apprehension. Here, given the clear and
repeated promise not to sue, defendant has no objectively reasonable
apprehension of suit, and the declaratory judgment counterclaim is
therefore not justiciable.
Because the court concludes that the declaratory judgment
counterclaim is not justiciable, it need not address the issue of the
right to jury trial on the counterclaim.
C. Defendant's Counter-Motion to Eliminate Protective Order Based on
Alleged Trade Secrets
Defendant's counter-motion asks the court to (1) lift the
requirements of the February 27, 1997 protective order where the claimed
confidentiality is based upon the alleged trade secret status of the
courses at issue, (2) unseal the court file in this matter where the basis
for the sealing was the alleged trade secret status of the courses at
issue and (3) maintain an open and public courtroom throughout the trial
and declare that exhibits containing the courses at issue are not
6 In Evans, the fact that the plaintiff had brought other
litigation ag4nst the defendant and had at one point broken off
negotiations regarding its promise not to sue was held not to create a
reasonable apprehension of suit. Evans, 980 F. Supp. at 136.
1. Protective Order and Sealing of Documents
Protective orders are granted under Fed. R. Civ P. 26(c)
only upon a showing of good cause Fed. R. Civ P.26(c); Welsh V. City and
County of San Francisco, 887 F. Supp. 1293, 1297 (N.Cal. 1995). "A
demonstration of good cause embodies a sho wing (1) that the documents in
question truly are confidential and (2) that disclosure of the documents
would cause a 'clearly defined and very serious injury."' Welsh, 887 F.
Supp at 1297, citing Traveler's Ins. Co. v. Allied-Signal. Inc. Mastei
Pension Trust, 145 F.R.D. 17, 18 (D. Conn. 1992).
With regard to the confidentiality of the materials,
plaintiff has expressly stated that it will not pursue a claim of trade
secret misappropriation against defendant if defendant posts the works 'at
issue," meaning the works listed on Exh ibit B-I, on the Internet in the
future. See Part II.B.2, supra Plaintiffs willingness to abandon any trade
secret rights as to defendant if he posts the alleged trade secrets on the
Internet undermines its attempt to argue that the materials are confide
ntial for purpose~ of Rule 26(c). The materials are not "truly
confidential" if plaintiff intends not to take reasonable steps to ensure
their confidentiality by enforcing its claimed trade secret rights in the
event that defendant posts the materials on the Internet. Furth er,
plaintiff itself notes that it has not pursued trade secret claims against
anyone since 1997. Defendant points to evidence that copies of certain
Advanced Technology Materials have been posted and are currently
circulated on the Internet. Declaration of Dennis L. Erlich in Opposition
to RTC's Motion to Dismiss Counterclaim for Declaratory Judgment
Respecting Trade Secrets ("Erlich Deci.") 24-34, Exhs. 2-11 . Therefore,
although plaintiff has made certain efforts to maintain the secrecy of the
Advan ced Technology, defendant's evidence indicates that at least some of
the materials have nonetheless entered the public domain via the Internet,
and thereby probably lost any trade secret or confidential status. See
Religous Technology Center v. Netcom On-Line Comm. Services Inc., 923 F.
Supp. 1231, l255-5
7 The court finds that defendant has sufficiently complied
with the meet and confer obligations the Protective Order. Plaintiffs
objections to Erlich's declaration re Exhibits 2-11 are overruled.
.D. Cal. 1995) and Order Granting in Part Plaintiffs Motion to Expand
Preliminary Injunction dated January 6, 1997 at 19-21. However, materials
which are unpublished may still be subject to protection under Fed. R.
Civ. P.26(c) even though they are not trade secrets or confidential
information. Rule 26(c) allows "[t]he court [to] ... may make any order
which justice requires to protect a party or person from annoyance,
embarrassment, oppression, or undue burden or expense
Plaintiff raises the issue that the Advanced Technology is
comprised of unpublished copyrighted works, and that unsealing the court
file and allowing public access to the documents would be an open
invitation to defendant and others to copy the works and thus infringe
plaintiffs copyrights. See RTC's Opposition to Defendant's Motion to V
acate the February 20, 1997 Protective Order at 6:12-7:5. It is clear that
unpublished copyrighted materials can be made available for the public's
examination in, for example, public files or repositories, without
infringement of the copyrights. See Sali nger v. Random House, 811 F.2d 90
(2d Cir. 1987), cert. denied, 108 S. Ct. 2 (1 987).I0 Copyright
infringement would occur only if the public materials were copied from the
file or repository in violation of the copyright laws. See id.
In Grundberg v. Upjohn, 137 F.R.D. 372 (D.C. Utah 1991), the
plaintiff moved to release certain documents from a protective order prior
to trial. Apparently in response to the plaintiffs
9 The court in its January 6, 1997 order questioned RTC's ability
to prove trade secret status of the contents of any of the Advanced
Technology works but did find that there were sufficiently serious issues
so as to justify a preliminary injunc tion in light of the balance of
hardships. However, since that time it has become apparent that it would
be very difficult for RTC to successfulJy claim any trade secret in the
docurnents at issue.
10 In Salinger, unpublished letters written by J.D. Salinger were
donated to university libraries by the letters' recipients. The libraries
allowed public access to the letters, but required that anyone wishing to
examine the letters fill out for ms stating that permission was required
"to publish the contents of the manuscript or any excerpt therefrom," and
that the signer was obliged "not to copy, reproduce, circulate or publish"
inspected manuscripts without permission. Salinger, 811 F.2d at 93. The
plaintiffs unauthorized biographer reviewed the letters at the libraries
and cited them in the first draft of the biography. When shown the draft,
Salinger registered the letters for copyright protection and then objected
to the publication of the biography until all of his unpublished materials
were deleted. The author revised the draft, replacing the citations with
close paraphrasing. Id. at 93. The issues in Salinger co ncerned whether
the paraphrasing constituted copyright infringement; whether the
unpublished copyrighted works were properly made available to the public
in the library repositories was never at issue in the appeal.
motion, the defendant sought copyright registration for the documents,
some of which were unpublished, in order to enforce the copyright against
"anyone threatening to disclose the document without our authorization."
Orundberg, 137 F.R.D. at 383, 388, 388 n.18. The court held that a
copyright could not prevent disclosure since copyright laws cannot "thwart
accessibility to the public of information contained in documents which
may be offered and admitted into evidence in court proceedings." Orundberg
137 F.R.D. at 388. The court wrote that:
[i]t should be noted that placement of documents in court files and
offering documents into evidence, even though this may provide access to
the public, does not constitute publication under the copyright laws. [Fn.
omitted]. Also, the copyright law does not prohibit the disclosure of
information and does not make nonconfidential documents confidential.
Id. The court therefore ruled that "to whatever extent Upjohn may have a
copyrightable interest in the litigation documents, such may not be
asserted or maintained to impede or prevent the free use and accessibility
of such documents in the context of thi s litigation." Id.
Salinger and Grundberg indicate what plaintiff in the present case
does not appear to dispute: that the unpublished copyrighted Advanced
Technology works may be placed in public court files without any
infringement absent unlawful copying. However, the court has considered,
and finds some merit in, plaintiffs argument that placement of the
unpublis hed works in open court files may be an invitation to copyright
infringement by third parties given the particular circumstances of this
case. Therefore, the court orders that all unpublished copyrighted works
which are hereafter filed in this case be pro minently marked with the
By order of the court, this document or any portion of this. document may
not be copied without a further court order. Any person who copies this
document or excerpts from it may be liable for damages for copyright
Plaintiff shall re-file, unsealed, the documents listed on Exhibit B-I
which have previously been filed under seal, marked with the above
The court hereby (1) removes the requirements of the February 27,
1997 protective order where the claimed confidentiality is based upon the
alleged trade secret status of the contents of the works at issue and (2)
requires plaintiff to re-file in open files any works at issue previously
filed under seal, with the works marked with the warning indicated above."
This modification to the protective order does not affect the confidential
status of any RTC work produced in discovery which RTC has desig nated as
confidential other than the Exhibit B-I documents. The parties shall
submit a proposed amended Protective Order within 15 days of this order.
Because the court finds an insufficient basis for treating the
Exhibit B-i documents as confidential, it need not address whether
disclosure of the documents could cause injury sufficient to justify
protection as confidential documents under Fed. R. Civ. P.26(c).
2. Sealing of the Courtroom
Defendant argues that the courtroom should be open to the public
given the fact that plaintiffs trade secret claim has been dismissed and
plaintiff has given defendant "permission" to post the works.' Plaintiff
provides only a brief argument in opposition, stating that defendant's
argument is premature because, as it stands now, there wo uld seem to be
no reason for RTC to request that the courtroom be cleared since there
will be no jury and therefore the contents of the Advanced Technology
works will not be displayed or read aloud at trial. The court disagrees
that the argument is entire ly premature, given the issues raised by
plaintiffs motion to dismiss and defendant's counter-motion regarding the
The court does not intend to close or seal the courtroom due to
introduction of or reference to the materials listed on Exhibit B-i to the
Second Amended Complaint. Plaintiff has offered no argument on this motion
as to why the courtroom should be closed in the event that works other
than the B-i Exhibits which are claimed to be unpublished and confidential
are introduced or referenced but the court will consider any such
argument, if necessary, at the time of trial.
11 If any party believes that documents which have been previously
filed under seal, other than the Exhibit B - 1 documents, should be
unsealed pursuant to the reasoning of this order, that party should
identify the specific document, confer with the other side as to whether
it should remain under seal, and if agreement cannot be reached, submit
the issue to the court.
12 Defendant's statement that plaintiff has given defendant
"permission" to post is a mischaracterization of what was promised.
Plalntiff has only promised that it will not sue defendant on a trade
secret theory for any future misappropriation of
trade secrets in the works at issue.
~ DPT~Afl~ ~ AI~
For the foregoing reasons, plaintiffs motion to dismiss is granted
and defendant's counter motion is granted in part as set forth in this
order. Plaintiffs ex parte motion to strike defendant's reply in further
support of defendant's counter-motio n is denied.
RONALD M. WHYTE,
United States District Judge
I)~ TD A ~C~DI~T ~ A
Copy of order mailed on APR 1 ~ 1999 to:
Thomas R. Hogan
Law Offices of Thomas R. Hogan
Ten Almaden Blvd. Ste. 535
San Jose, CA 95113
Helena K. Kobrin
Moxon & Kobrin
6255 Sunset Blvd., Suite 2000
Los Angeles, CA 90028
Samuel D. Rosen
William M. Hart
Michael T. Mervis
Paul, Hastings, Janofsky & Walker LLP
399 Park Avenue, Thirty-First Floor
New York, NY 10022-4697
Eric M. Lieberman
Rabinowitz, Bousin, Standard, Krinsky & Lieberman, P.C.
740 Broadway - Fifth Floor
New York, NY 10003
Attorneys for plaintiffs RELIGIOUS TECHNOLOGY CENTER, a California
non-profli corporation; and BRIDGE PUBLICATIONS, INC., a California
Harold J. McElhinny
Morrison & Foerster
425 Market Street
San Francisco, CA 94105-2482
Jana G. Gold
Morrison & Foerster
755 Page Mill Road
Palo Alto, CA 94304-0792
Attorneys for defendant DENNIS ERLICH
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Subject: Long Order from Whyte