United States District Court, S.D. Texas, Houston Division
MEMORANDUM AND OPINION
Rosenthal Chief United States District Judge
plaintiff, Geophysical Services Incorporated, brought this
copyright suit against the defendant, TGS-NOPEC Geophysical
Services. (Docket Entry No. 1). TGS moved for summary
judgment, Geophysical responded, and TGS replied. (Docket
Entry Nos. 96, 98, 99). The parties appeared at a hearing on
July 15, 2018 and presented oral argument on their positions.
on the law, the record, and the parties' arguments, the
summary judgment motion is granted. Final judgment is entered
separately. The reasons for this ruling are explained below.
Services Incorporated is a Canadian company that collects
seismic data by bouncing sound waves off the ocean floor,
recording the information and processing, transcribing, and
storing the information as seismic lines. Geophysical
licenses the seismic data to oil and gas companies for use in
oil, gas, and other hydrocarbon exploration. Geophysical
asserts a copyright interest in the seismic data under United
1999, TGS, a Houston company, requested copies of seismic
data that Geophysical had submitted to a Canadian agency in
1982 and 1983, the Canada Oil and Gas Lands Administration,
pursuant to Canadian laws and regulations. The
Administration's successor, the Canada-Newfoundland and
Labrador Offshore Petroleum Board, made copies and sent them
to TGS at its Houston address. TGS performed seismic surveys
at several of the same locations Geophysical had surveyed in
1982. TGS licensed the seismic data it collected to oil and
gas companies. Geophysical discovered TGS's actions in
2013 and sued in May 2014.
The First Motion to Dismiss
original complaint alleged that TGS directly and
contributorily infringed Geophysical's copyrights in the
1982 seismic data by requesting copies from the Board, making
the copies it received from the Board available to third
parties, creating derivative works by surveying the locations
disclosed in the Geophysical seismic lines to collect its own
seismic data, which it licensed to third parties, and
licensing and distributing copies of these derivative works
without including Geophysical's copyright-management
information. (Docket Entry No. 1).
moved to dismiss, arguing that Geophysical's complaint
failed to state a claim and that any claim was barred by the
act-of-state doctrine and by international comity. (Docket
Entry No. 10). After briefing and argument, the court granted
TGS's motion to dismiss. (Docket Entry No. 28). The court
vacated its dismissal because the opinion relied on grounds
that the parties had not expressly raised. (Docket Entry No.
43). The court issued an amended memorandum and opinion and
order that again dismissed Geophysical's complaint.
The Interlocutory Appeal
filed an interlocutory appeal challenging the dismissals of
the unauthorized-importation basis of its direct infringement
claim and the dismissal of the contributory infringement
claim. Geophysical Serv., Inc. v. TGS-NOPEC Geophysical
Co., 850 F.3d 785, 792 (5th Cir. 2017). The Fifth
Circuit affirmed the dismissal of Geophysical's
contributory infringement claim on extraterritoriality
grounds, but reversed the dismissal of the
unauthorized-importation component of Geophysical's
direct infringement claim. Id. at 799-800. The Fifth
Circuit directed this court to decide on remand which law
governs the determination of whether the copies TGS imported
were “lawfully made” under 17 U.S.C. § 109,
and then to apply that law to the record in this case.
The Second Motion to Dismiss
the Fifth Circuit's remand, TGS filed a renewed motion to
dismiss, Geophysical responded, and TGS replied. (Docket
Entry Nos. 62, 72, 74). After the court heard oral argument,
(Docket Entry No. 79), TGS filed a supplemental reply,
Geophysical filed a supplemental response, and TGS filed a
second supplemental reply. (Docket Entry Nos. 81, 84, 85).
November 21, 201, this court issued a memorandum and order
denying TGS's motion to dismiss. (Docket Entry No. 86).
First, this court found that a copy is “lawfully made
under this title” if the copy is lawfully made in the
United States in compliance with Title 17, or in a foreign
country in a manner that would comply with Title 17 if United
States copyright law applied. Id. at 17; 17 U.S.C.
§ 602(a)(1). This court declined to dismiss on the basis
of an implied license, because the record was insufficient to
find a license as a matter of law. Id. at 26. The
TGS argues that Geophysical's complaint allegations
establish an intent to convey an implied license because
Geophysical was aware of and complied with Canada's
licensing requirement to submit the seismic data and agree to
a limited confidentiality period. TGS asserts that the
Canadian regulatory regime has, at the relevant times,
provided that the submitted data would be disclosed on
request after a period of confidentiality, and that
Geophysical voluntarily submitted its seismic data to the
Board knowing that it could be disclosed when this period
TGS is correct that the complaint alleges Geophysical's
participation in this regulatory licensing scheme.
Geophysical alleges that it “was required to, and did,
submit to the [Board] a copy of [its works].” (Docket
Entry No. 1, ¶ 29). But the parties dispute whether this
amounted to an implied license and, if so, the parameters of
the license that resulted. These disputes cannot be resolved
on the present record.
One dispute is whether Geophysical intended to grant the
Board an implied license that extended to copying and
distribution. Geophysical alleges that the Board “was
never authorized to copy or distribute [Geophysical's
works], or make derivative works from [its works].”
Id. at ¶ 30. As this court previously noted,
“[n]either the Act nor the Regulations contain language
limiting the Petroleum Board's authority to copy and
distribute the seismic line and other data it requires
surveyors to submit.” (Docket Entry No. 28, at 15).
Instead, the Canadian regulations use broad language that
gives the Board “extensive control over the data,
including the right to copy and distribute it after the
confidentiality period ends.” Id. But even
assuming that the Board had the authority to copy and
distribute the seismic data it required, the question of
Geophysical's intent turns on the information and
circumstances available to it at the relevant time. Would a
company in Geophysical's position in 1982 and 1983
reasonably understand that the Canadian regulations
permitting the Board to disclose the seismic data after the
confidentiality period ended could result in the copying and
distribution of that data to any requesting party? Did the
Board have discretion to decide whether to copy and send the
data to those requesting it, as Geophysical argues? (Docket
Entry No. 72, at 25; Docket Entry No. 84, at 4). If so, does
the Board's discretion affect whether Geophysical
intended to grant an implied license that included copying
and distribution? And if Geophysical granted an implied
license, should Geophysical have reasonably expected the
license to extend to importation of copies of its works into
the United States?
These questions-and there may be more-cannot be answered on
the present record. The questions are important to determine
whether Geophysical's participation in the Canadian
regulatory regime shows that it granted the Board an implied
license to copy and distribute its seismic data and import it
into the United States. See Geophysical, 850 F.3d at
799 (the creation of an implied license is a fact question).
On the present record, TGS's motion to dismiss on the
implied-license ground must be denied.
Id. at 25-27.
December 1, the parties were given a deadline to complete
discovery limited to the implied-license issue. (Docket Entry
Nos. 88, 89). After, TGS moved for summary judgment,
Geophysical responded, and TGS replied. (Docket Entry Nos.
96, 98, 99).
Timeline of Important Events
following timeline describes the Canadian regulatory regime
and the actions of Geophysical and its predecessors as to the
seismic data at issue under that regime:
• 1953: The Territorial Regulations of 1953 establishes
a Canadian regime governing the submission and disclosure of
geophysical data. (Docket Entry No. 81 at 3); Geophysical
Serv., Inc. v. Encana Corp. et al., 2016 ABQB 230,
¶ 145 (Ct. Queen's Bench of Alberta 2016).
• 1960: The Canada Oil and Gas Regulations are enacted
under the Territorial Lands Act and the Public Lands Grants
Act. (Docket Entry No. 81 at 3); RSC 1952, c. 363; RSC 1952,
c. 224. The regulations require offshore seismic surveyors to
obtain government permission before beginning seismic
surveying operations and to submit the resulting seismic data
to the government. SOR 60-182, §§ 5(1), 29 (1960).
The regulations provided for the “release” of the
data after a one-year confidentiality period. SOR 60-182,
• 1961: The Canada Oil and Gas Land Regulations are
amended to clarify the contents of the report that was
required to be submitted by geophysical companies and to
lengthen the confidentiality period. (Docket Entry No. 81 at
5); SOR 61-253, §§ 28, 54(2), 54(4)(a)-(c),
• 1978: The Canada Oil and Gas Land Regulations are
amended again, but no substantive changes are made. (Docket
Entry No. 81 at 7); CRC 1518 (1978).
• April 1979: The Department of Energy, Mines and
Resources' Resource Management Branch released the eighth
issue of “Offshore Exploration, ” which contains
information and procedures for offshore operators. (Docket
Entry No. 96, Ex. 7). Offshore Exploration provides
for the release of “[r]eports of geological and
geophysical surveys, ” including “seismic
sections and maps.” Id. at 61-62.
“Copies” of “seismic sections and maps may
be purchased after expiry of the confidential period.”
Id. at 62.
• December 1981: The Canadian Parliament passed the
Canada Oil and Gas Act, to become effective in March 1982.
(Docket Entry No. 81 at 8); Canada Oil and Gas Act, SC
1980-81-82-83 (1982). Under the Oil and Gas Act, the 1978 Oil
and Gas Regulations remained in effect to the extent they
were consistent with the Oil and Gas Act. (Docket Entry No.
81 at 8); Canada Oil and Gas Act, SC 1980-81-82-83, c. 81,
§ 62 (1982). “The Oil and Gas Act did not contain
a data submission requirement, ” but it does include a
disclosure provision. (Docket Entry No. 81 at 8); Canada Oil
and Gas Act, SC 1980-81-82-83, c. 81, § 50 (1982).
• January 1982: The Canada Oil and Gas Lands
Administration was established, succeeding the Department of
Energy, Mines and Resources and the Department of Indian and
Northern Affairs Canada. (Docket Entry No. 96, Ex. 3 at
¶¶ 6-7). The Administration's Land Management
Branch was “responsible for the negotiation, execution,
and administration of exploration and production rights on
all federal offshore and Northern lands.” Id.
at ¶ 6. The Administration's Resource Evaluation
Branch was responsible for “the regulatory regime
governing the submission and disclosure of technical data
such as seismic lines.” Id. at ¶ 7.
• March 24, 1982: Delaware GSI submitted a permit
application seeking permission to conduct the survey that
resulted in the creation of the seismic data at issue.
(Docket Entry No. 96, Ex. 12). The application contained an
Offshore Program Notice signed by a Delaware GSI official,
but not yet approved by the Administration. Id. The
notice states: “The requirements and services of the
Federal agencies concerned are outlined in the publication
“Offshore Exploration.” Id.
• May 4, 1982: The Administration approved Delaware
GSI's permit application. (Docket Entry No. 96, Ex. 6).
The returned Offshore Program Notice contains the same
reference to “Offshore Exploration.” Id.
• November 1982: The Administration issued
“Geophysical Surveys on Canada Lands: Guidelines for
Approvals and Reports.” (Docket Entry No. 96, Ex. 8).
The “Guidelines for Approvals and Reports”
expressly refer to “Offshore Exploration” as a
“recommended reference publication” that
“outline[d] the responsibilities and requirements of
federal departments and agencies concerned with the offshore,
” and provided the list of “released
geophysical/geological reports to April 1979.”
Id. at ¶ 1.
• November 26, 1982: According to Geophysical's
records, the first submission of the seismic data at issue is
made to the Administration. (Docket Entry No. 96, Ex. 11 at
4, Ex. 14).
• January 1983: The Administration issued
“Released Geophysical and Geological Reports-Canada
Lands, ” pre-dating at least four submissions of the
seismic data. (Docket Entry No. 96, Ex. 11 at 4, Ex. 15). The
“Reports” confirmed that released seismic lines
would be “reproduce[ed]” and
“duplicat[ed]” by a commercial firm, and
identified 698 speculative and non-speculative geophysical
programs that had already been released for reproduction and
duplication. (Docket Entry No. 96, Ex. 15 at 5).
• March 8, 1983: Geophysical submitted prints of the
seismic data at issue. (Docket Entry No. 96, Ex. 11 at 4, Ex.
• March 21, 1983: Geophysical submitted prints of all
Newfoundland data it shot and processed in 1982. (Docket
Entry No. 96, Ex. 11 at 4, Ex. 17).
• April 6, 1983: Geophysical submits additional prints
of the seismic data at issue. (Docket Entry No. 96, Ex. 11 at
4, Ex. 18).
• November 3, 1983: Geophysical submits additional
prints of the seismic data at issue. (Docket Entry No. ...