The opinion of the court was delivered by: BARTELS
MEMORANDUM - DECISION AND ORDER
In 1979, plaintiff Reliability Research Incorporated ("RRI") entered into a contract with University Computing Company ("UCC") licensing to the latter certain copyrighted programs collectively referred to as "Reliability Plus." In 1984, for reasons unknown to the Court, they entered into a new agreement on such licensing. The 1984 agreement included a provision that granted RRI ownership of certain computer programs made by UCC. In 1987, defendant Computer Associates International, Inc. ("CA") took over UCC. Now, in this action, RRI asserts that CA breached this provision of the 1984 agreement. The defendants have interposed a defense of misuse of copyright. RRI now moves to strike defendant's copyright misuse defense pursuant to Rule 12(f) of the Federal Rules of Civil Procedure on the ground of legal insufficiency.
The plaintiff has a weighty burden. "A motion to strike an affirmative defense . . . for legal insufficiency is not favored . . ." William Z. Salcer, Panfeld, Edelman v. Envicon Equities Corp., 744 F.2d 935, 939 (2nd Cir. 1984), vacated on other grounds, 478 U.S. 1015, 106 S. Ct 3324, 92 L. Ed. 2d 731 (1986). "Even when the defense presents a purely legal question, the courts are very reluctant to determine disputed or substantial issues of law on a motion to strike; these questions quite properly are viewed as determinable only after discovery and a hearing on the merits." Id. (quoting with approval, 5 C. Wright and A. Miller, Federal Practice and Procedure § 1381, at 800-801 [at pages 673-76 in volume 5A, § 1381 (2d edition, 1990)]) (emphases added).
Such a disputed issue of law exists here. Neither the Supreme Court nor the Second Circuit has addressed the issue of the existence and extent of a misuse of copyright defense. The Seventh Circuit has held that the defense applies only where there is a violation of antitrust law, Saturday Evening Post Company v. Rumbleseat Press, Inc., 816 F.2d 1191, 1200 (7th Cir. 1987) (holding copyright misuse analogous to the treatment of patent misuse in USM Corporation v. SPS Technologies, Inc., 694 F.2d 505 (7th Cir. 1982), cert. den., 462 U.S. 1107, 77 L. Ed. 2d 1334, 103 S. Ct. 2455 (1983)), which is not alleged here.
"If misuse claims are not tested by conventional antitrust principles, by what principles shall they be tested? Our law is not rich in alternative concepts of monopolistic abuse; and it is rather late in the day to try to develop one without in the process subjecting the rights of patent holders to debilitating uncertainty." Saturday Evening Post, supra, 816 F.2d at 1291 (quoting USM, supra, 694 F.2d at 512).
Meanwhile, the Fourth Circuit has held that the copyright misuse defense exists even without an antitrust violation. Lasercomb America, Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990).
"While it is true that the attempted use of a copyright to violate antitrust law probably would give rise to a misuse of copyright defense, the converse is not necessarily true . . . The question is not whether the copyright is being used in a manner violative of antitrust law (such as whether the licensing agreement is "reasonable"), but whether the copyright is being used in a manner violative of the public policy embodied in the grant of a copyright." Lasercomb, supra, 911 F.2d at 978.
Such an open and disputed question of law is not a proper basis for a motion to strike.
RRI argues, however, that even under an expansive definition of the copyright misuse defense there can be no misuse of copyright here because RRI's copyrights were not used to obtain ownership in these other copyrights. Plaintiff contends that the original 1979 agreement granting the exclusive ninety-nine year license to plaintiff's computer programs did not contain the provision in the 1984 agreement that is now being alleged to be a misuse of the original copyright. Rather, it was only in the subsequent 1984 agreement, which RRI characterizes as an "amendment" to the 1979 agreement, that the parties included the allegedly illegal provisions, which granted the plaintiff ownership in certain programs created by the other party to this contract. Thus, ...