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UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF TEXAS Ft. Worth Division ERGUN CANER, Plaintiff, v. JONATHAN AUTRY, et al., Defendants. * * * * * * * * * * * * * * * * *

Civil Action No. 4:13-cv-00494 (Y)

DEFENDANT JASON SMATHERS MOTION TO DISMISS FOR FAILURE TO JOIN ALL NECESSARY PARTIES AND MOTION FOR A MORE DEFINITE STATEMENT Pursuant to Federal Rules of Civil Procedure 12(b)(7) and 12(e), Defendant Jason Smathers (Smathers) respectfully moves to dismiss the case for failure to join the United States as a necessary party. Smathers also asks the Court to order Plaintiff to provide a more definite statement regarding the factual support for his claims of ownership of the copyright for the videos at issue in this case. In support of this motion, the Court is respectfully referred to Defendant Jason Smathers Memorandum in Support of His Motion to Dismiss for Failure to Join All Necessary Parties and Motion for a More Definite Statement. A proposed Order consistent with the relief sought also accompanies this Motion.

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Date: November 26, 2013 Respectfully submitted, /s/ Kelly B. McClanahan Kelly B. McClanahan, Esq. N.D. Tex. Bar #984704DC National Security Counselors 1200 South Courthouse Road Suite 124 Arlington, VA 22204 301-728-5908 240-681-2189 fax Kel@NationalSecurityLaw.org Counsel for Defendant Jason Smathers

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UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF TEXAS Ft. Worth Division ERGUN CANER, Plaintiff, v. JONATHAN AUTRY, et al., Defendants. * * * * * * * * * * * * * * * * *

Civil Action No. 4:13-cv-00494 (Y)

DEFENDANT JASON SMATHERS MEMORANDUM IN SUPPORT OF HIS MOTION TO DISMISS FOR FAILURE TO JOIN ALL NECESSARY PARTIES AND MOTION FOR A MORE DEFINITE STATEMENT Pursuant to Federal Rules of Civil Procedure 12(b)(7) and 12(e), Defendant Jason Smathers (Smathers) respectfully moves to dismiss the case for failure to join the United States as a necessary party. Because the United States is an indispensable party, but cannot be joined for jurisdictional reasons, the Court should dismiss this case. Smathers also asks the Court to order Plaintiff to provide a more definite statement regarding the factual support for his claims of ownership of the copyright for the videos at issue in this case. ARGUMENT Rule 19 of the Federal Rules of Civil Procedure governs the joinder of absent parties. Fed. R. Civ. P. 19. Under Rule 19(a)(1), a person who is subject to process and whose joinder will not deprive the court of subject matter jurisdiction must be joined if: a. in that persons absence, the court cannot afford complete relief among existing parties; or b. that person claims an interest relating to the subject of the action and is so situated that disposing of the action in the persons absence may:

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1. as a practical matter impair or impede the persons ability to protect the interest; or 2. leave an existing party subject to a substantial risk of incurring double, multiple, or otherwise inconsistent obligations because of the interest. Fed. R. Civ. P. 19(a)(1). Rule 12(b)(7) provides for dismissal of a case for failure to join a party under Rule 19. Fed. R. Civ. P. 12(b)(7); HS Res., Inc. v. Wingate, 327 F.3d 432, 438 (5th Cir. 2003). Rule 19 provides for the joinder of all parties whose presence in a lawsuit is required for the fair and complete resolution of the dispute at issue. Haug v. Dependable Auto Shippers, Inc., No. 091279, 2010 U.S. Dist. LEXIS 16779, at *5 (N.D. Tex. Feb. 25, 2010) (quoting Wingate, 327 F.3d at 438). It further provides for the dismissal of litigation that should not proceed in the absence of parties that cannot be joined. Ameriprise Fin., Inc. v. Bailey, No. 12- 4290, 2013 U.S. Dist. LEXIS 69259, at *6 (N.D. Tex. May 13, 2013) (quoting Wingate, 327 F.3d at 438). To decide a Rule 19 challenge, the court applies a two-step inquiry. Hood ex rel. Mississippi v. City of Memphis, Tenn., 570 F.3d 625, 628 (5th Cir. 2009). First, the court determines whether an absent party should be joined to the lawsuit under Rule 19(a). Id. While the party advocating joinder has the initial burden of demonstrating that an absent party is necessary, after an initial appraisal of the facts indicates that a possibly necessary party is absent, the burden of disputing this initial appraisal falls on the party who opposes joinder. Id. (quoting Pulitzer-Polster v. Pulitzer, 784 F.2d 1305, 1309 (5th Cir.1986)). If the court determines that an absent party is required under Rule 19(a) but cannot be joined, the court turns to Rule 19(b) to determine whether in equity and good conscience, the action should proceed among the existing parties or should be dismissed. Id. at 633 (quoting Fed. R. Civ. P. 19(b)).

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I.

THE UNITED STATES IS AN INDISPENSABLE PARTY As the Amended Complaint currently stands, the United States is an indispensable party,

in that Smathers obtained the two videos in question through a proper request under the Freedom of Information Act (FOIA), 5 U.S.C. 552, to the United States Marine Corps (Marines), and the Marines released the videos to him without any restrictions on their use or dissemination, knowing that Smathers intended to disseminate them on the Internet. (Smathers Decl., Dkt. #231, 2-4 (filed Nov. 25, 2013).)1 According to the governing Department of Defense (DOD) regulations at the time of Plaintiffs contract with the Marines to give the recorded presentations, all contracts for services of that type were required to contain language assigning all copyrights to the U.S. Government and giving the U.S. Government [u]nlimited rights . . . to use, modify, reproduce, perform, display, release, or disclose [the] work in whole or in part, in any manner, and for any purpose whatsoever, and to have or authorize others to do so. See Defense Fed. Acquisition Reg. Suppl. [hereinafter DFARS] 252.227-7020(b)(5), (c)(1)-(2) (Mar. 11, 2005), available at http://farsite.hill.af.mil/archive/dfars/dcn20050422/Dfars252_227.htm (last accessed Nov. 26, 2013). Moreover, such contracts were required to include the language: The Contractor shall indemnify and save and hold harmless the Government, and its officers, agents and employees acting for the Government, against any liability, including costs and expenses, (1) for violation of proprietary rights, copyrights, or rights of privacy or publicity, arising out of the creation, delivery, use, modification, reproduction, release, performance, display, or disclosure of any works furnished under this contract . . . . DFARS 252.227-7020(e) (Mar. 11, 2005).

Even though Plaintiff did not include this relevant information in his Amended Complaint, it is well-established that a Court may consider extrinsic evidence outside the pleadings when ruling on a dismissal for lack of joinder of an indispensable party. Timberlake v. Synthes Spine, Inc., No. 08-4, 2011 U.S. Dist. LEXIS 70894, at *5-6 (S.D. Tex. June 30, 2011) (quoting Davis Companies v. Emerald Casino, Inc., 268 F.3d 477, 480 n.4 (7th Cir. 2001)). 3

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One of the best-known maxims in FOIA is colloquially stated as release to one is release to all.2 In other words, once information is released to one person pursuant to a FOIA request, it is deemed releasable to the general public. Natl Archives & Records Admin. v. Favish, 541 U.S. 157, 174 (2004) ([O]nce there is disclosure, the information belongs to the general public.); Dept of Justice Office of Information and Privacy, Supreme Court Rules for Survivor Privacy in Favish, FOIA Post (Apr. 9, 2004), at http://www.justice.gov/oip/foiapost/2004foiapost12.htm (last accessed Nov. 26, 2013) (referring to [t]he well-known maxim under the FOIA that release to one is release to all).3 With this as a backdrop, it is easy to see the indispensable nature of the United States in this dispute: 1. Sometime before 15 April 2005, Plaintiff signed a contract to give presentations for the Marines. (Amended Compl., Dkt. #13, 15, 33, 42 (filed Oct. 14, 2013) [hereinafter AC].) 2. DOD regulations in place at the time required that all contracts for this type of work must contain language giving the U.S. Government unlimited rights to duplicate and disseminate any new intellectual property created during the performance of the contract or existing intellectual property modified and used in performance of the contract. See DFARS 252.227-7020(a) (Mar. 11, 2005) (This clause applies to works first created, generated, or produced and required

This phrase never actually appears in any judicial opinion, however. The undersigned does not know its origin.

The one exception to this rule is that agencies cannot invoke privacy-related exemptions to withhold from a requester information pertaining only to himself. See DOJ v. Reporters Comm. for Freedom of the Press, 489 U.S. 749, 771 (1989) (citing DOJ v. Julian, 486 U.S. 1, 13-14 (1988)). 4

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to be delivered under this contract.); DFARS 227.7105-3 (Mar. 11, 2005), available at http://farsite.hill.af.mil/archive/dfars/dcn20050422/Dfars227.htm (last accessed Nov. 26, 2013) (Use the clause at 252.227-7020, Rights in Special Works, in solicitations and contracts for modified existing works . . . .).4 3. Plaintiff performs the services for which he was contracted, and the Marines record the presentations. 4. Smathers files a FOIA request for the Marines videorecordings of Plaintiffs presentations. (Smathers Decl. 2.) 5. In accordance with the unlimited rights provided to the U.S. Government in its contract with Plaintiff, the Marines duplicate and disclose the videos to Smathers in response to his FOIA request. (Id. 3.) 6. With full knowledge that Smathers intended to publish the videos on the Internet (see Letter from Smathers to Marine JAG of 5/18/10, Dkt. #28-4 (filed Nov. 26,

The Government considered the type of services performed by Plaintiff to be Special Works. These contracts: are primarily for the production or compilation of data (other than limited rights data or restricted computer software) for the Governments own use, or when there is a specific need to limit distribution and use of the data and/or to obtain indemnity for liabilities that may arise out of the content, performance, or disclosure of the data. Examples are contracts for *** (i) The production of audiovisual works, including motion pictures or television recordings with or without accompanying sound, or for the preparation of motion picture scripts, musical compositions, sound tracks, translation, adaptation, and the like; [and] *** (iv) Works pertaining to the instruction or guidance of Government officers and employees in the discharge of their official duties . . . . 5

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2013)), the Marines did not include any statements regarding restrictions on the videos use or dissemination in the release letter, nor were the released DVD discs marked with any copyright markings. (Smathers Decl. 3; DVD photo, Dkt. #28-5 (filed Nov. 26, 2013).) 7. In the absence of any marking or statements regarding restrictions on Smathers use and dissemination of the videos, it is plausible to conclude that the Marines actions constituted an authorization for Smathers to publish them. If that is the case, then any possible dissemination by Smathers is not infringement, since the U.S. Government was given [u]nlimited rights . . . to use, modify, reproduce, perform, display, release, or disclose [the] work in whole or in part, in any manner, and for any purpose whatsoever, and to have or authorize others to do so. DFARS 252.227-7020(b)(5) (emphasis added). Rule 19(a)(1)(A) mandates joinder of a person if, in that persons absence, the court cannot afford complete relief among existing parties. Fed. R. Civ. P. 19(a)(1)(A). In the absence of the U.S. Government, the Court cannot afford complete relief to any party. Plaintiffs alleged interest in his copyrightsassuming they are validcannot be protected, as anyone wishing to view his videos may simply request them from the Marines. Smathers, on the other hand, remains potentially liable for an action that the U.S. Government legitimately authorized, and may not be able to obtain indemnification from Plaintiff in accordance with DFARS 252.227-7020(e) because the middle manthe U.S. Governmentis not a party to the case. What the Marines did and why is central to all parties requests for relief.

Fed. Acquisition Reg. 27.405(a)(1) (Apr. 11, 2005), available at https://acquisition.gov/far/0503/html/FARtoHTML.htm (last accessed Nov. 26, 2013). 6

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II.

THE UNITED STATES CANNOT BE JOINED, SO THE CASE MUST BE DISMISSED No matter how indispensable the U.S. Government is, the fact remains that it cannot be

joined because of jurisdictional reasons. Simply put, the U.S. Government can only be sued for copyright infringement in the Court of Federal Claims, not in this or any other district court. 28 U.S.C. 1498(b); Boyle v. United States, 200 F.3d 1369, 1372-73 (Fed. Cir. 2000). Therefore, the Court must determine if in equity and good conscience, the action should proceed among the existing parties or should be dismissed. Hood, 570 F.3d at 633 (quoting Fed. R. Civ. P. 19(b)). For the reasons already stated, the answer is the latter. It would be a manifest injustice to hold Smathers accountable for actions taken with the authorizationexplicit or implicitof a United States agency, simply because the agency itself is not party to the lawsuit and cannot be questioned by the Court. Were it not for the jurisdictional restriction of the Copyright Act, the United States would easily be considered an indispensable party due to the pivotal role the Marines played in this entire controversy, and Smathers should not be made to sufferor be denied indemnification by way of Plaintiffs government contractbecause of the absence of the party necessary for relief. For his part, any relief Plaintiff could obtain against Defendants would be hollow, given that any interested person who is now denied the ability to view the videos on Defendants websites can still obtain them by simply asking the Marines for a copy. If Rule 19 stresses the desirability of joining those persons in whose absence the court would be obliged to grant partial or hollow rather than complete relief to the parties before the court, Fed R. Civ. P. 19 (Advisory Committee Notes), then the Court should find that continuing in the absence of those parties does not satisfy equity and good conscience. Fed. R. Civ. P. 19(b).

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III.

PLAINTIFF SHOULD BE ORDERED TO PROVIDE A MORE DEFINITE STATEMENT REGARDING HIS CONTRACT Smathers refers herein to the language required by the DOD regulations to be present in

contracts for the types of services Plaintiff performed for the Marines for the simple reason that Plaintiffs Amended Complaint is noticeably silent about the exact terms of his particular contract with the Marines. Defendants do not even know if Plaintiff is claiming that he created the intellectual property specifically for his presentations or that he already owned copyrights in that material and simply modified it for his presentations to the Marines. Given that the normas established by the DFARSfor such contracts weighs against relief for Plaintiff in this case, and that Defendants arguments regarding that aspect of the case are largely dependent on the actual terms of Plaintiffs contract and the nature of his copyright interest, Smathers is unable to refute Plaintiffs claims with any degree of particularity until the Court forces Plaintiff to provide more information. CONCLUSION For the foregoing reasons, the Court should dismiss this case with prejudice for failure to join the United States. If the Court feels that dismissal at this point is not warranted, the Court should order Plaintiff to file a more definite statement regarding the nature of his copyright interest and the specifics of his contract with the United States Marine Corps.

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Date: November 26, 2013 Respectfully submitted, /s/ Kelly B. McClanahan Kelly B. McClanahan, Esq. N.D. Tex. Bar #984704DC National Security Counselors 1200 South Courthouse Road Suite 124 Arlington, VA 22204 301-728-5908 240-681-2189 fax Kel@NationalSecurityLaw.org Counsel for Defendant Jason Smathers