Full opinion text
MEMORANDUM AND ORDER FREEDMAN, Chief Judge. I. INTRODUCTION Plaintiff Boothroyd Dewhurst, Inc. (“BDI”), a Rhode Island corporation which is the successor to a Massachusetts corporation, Boothroyd & Dewhurst, Inc. (“B & D, Inc.”), brings suit against Professor Corrado Poli (“Poli”), charging in a four-count complaint that Poli’s activities have violated the Copyright Act, 17 U.S.C. §§ 101 et seq. (count one), section 43(a) of the Lanham Act, 15 U.S.C. § 1125 (count two), the Massachusetts Consumer Protection Act, Mass.Gen.Laws ch. 93A (“chapter 93A”) (count three) and constitute unfair competition under the common law of Massachusetts (count four). Defendant has filed counterclaims, alleging that plaintiff — through the actions of its principals, Professor Geoffrey Boothroyd (“Booth-royd”) and Professor Peter Dewhurst (“De-whurst”) — has unfairly competed in trade in violation of chapter 93A, §§ 2 and 11 (count one) and Massachusetts common law (count two). The parties filed cross motions for summary judgment on the claims against them. Pursuant to 28 U.S.C. § 636(b)(1)(B), the matter was referred to Magistrate Judge Michael Ponsor for report and recommendation (resulting in the “Magistrate Judge’s Report” or “the Report”). The Magistrate Judge recommended denying defendant’s motion for summary judgment on plaintiff’s copyright and state law claims; however, he recommended granting summary judgment for defendant on plaintiff’s Lanham Act claim. With respect to defendant’s counterclaims, the Magistrate Judge recommended granting plaintiff the summary judgment that it seeks. Both parties have objected to certain portions of the Magistrate Judge’s Report. Defendant objects to two specific statements in the Report’s fact section and he reiterates to this Court his argument that plaintiff’s copyright infringement claim is barred by laches and estoppel. Defendant also objects to the recommendation that plaintiff be granted summary judgment on defendant’s chapter 93A counterclaim. In turn, plaintiff objects to the recommendation that defendant be granted summary judgment on plaintiff’s Lanham Act claim. The Court will review these issues de novo. 28 U.S.C. § 636(b)(1). Those portions of the Report to which neither party has specifically objected will be adopted without further discussion. II. FACTUAL BACKGROUND The Magistrate Judge’s Report relates in detail the facts relevant to this suit and, with the exception of two specific objections by defendant, the parties have accepted his summary as accurate. For purposes of this Memorandum and Order, the Court will describe briefly the factual background of this dispute, reiterating in more detail those facts central to the parties’ objections. Additional facts, not immediately pertinent to the issues before this Court, may be found in the Magistrate Judge’s Report. A. Background Facts This case arises from a longstanding dispute between the parties concerning Poli’s alleged misuse of Boothroyd and De-whurst’s intellectual property. Poli and Dewhurst were originally colleagues and collaborators in research in the University of Massachusetts at Amherst’s Department of Mechanical Engineering. From 1973 to 1982, they collaborated on research in the engineering field of Design for Manufac-turability and, at least through 1978, in a sub-specialty, Design for Assembly (“DFA”). Magistrate Judge’s Report at 5-6, citing Plaintiff’s L.R. 18 at 112; Defendant’s Opp.L.R. at 112; Transcript of Hearing on Cross-Motions for Summary Judgment at 12 (Sept. 7, 1990) (“T.R.”). From 1978 through 1981, Boothroyd served as investigator and Poli as co-principal investigator on a National Science Foundation (“NSF”) funded “Design for Manufacturability” research program which included a DFA component. The parties dispute the extent of Poli’s contribution to DFA-related research under the grant, see infra at page 676, but they do not dispute that there were two tangible products of the research program: a handbook entitled “Design for Assembly” (“NSF Handbook”) and a software program (“NSF Software”). Neither of these was protected by copyright. Magistrate Judge’s Report at 6-7. Dewhurst arrived at the University of Massachusetts as a visiting professor in 1980 and began collaborating with Booth-royd on various DFA-related projects. Id. at 7. Subsequent to 1981, NSF declined to provide any additional funding for DFA research. However, Boothroyd and De-whurst continued to collaborate in the field, spending 1981 through 1982 on the development of a microcomputer version of a software program, titled “Design for Assembly Software Tool Kit,” (“DFA Software”) intended to assist industrial designers in evaluating the difficulty of assembling their products. Id. Although defendant suggests that at least some of this work was done while Professor Boothroyd was still expending NSF funds, see Defendant Poli’s Objections to the Magistrate’s Report and Recommendation at 3-4 (Jan. 28, 1991), citing Boothroyd Deposition at 241-48 (attached to Defendant’s Motion for Summary Judgment (July 2, 1990)), defendant does not dispute that this software program contained original copyrightable material in addition to material from the NSF Software. Boothroyd and Dewhurst also published a handbook, “Design for Assembly,” incorporating material from the NSF Handbook but also containing original material. In December 1983, to exploit burgeoning industry interest in their research and its tangible products, Boothroyd and De-whurst incorporated B & D, Inc. to market their DFA Software and related items. Magistrate Judge’s Report at 8. The copyrights in Boothroyd and Dewhurst’s various DFA-related projects were assigned to the corporation. Id. Subsequently, in 1985, Boothroyd and Dewhurst left the University of Massachusetts and joined the faculty at the University of Rhode Island. They dissolved B & D, Inc. and incorporated BDI, plaintiff in this case, in Rhode Island. B & D Inc.’s copyrights were assigned to BDI. Id. at 8; 26-29. B. Poli’s Spreadsheet and Plaintiffs Allegations of Infringement The Magistrate Judge has provided the following thorough account of the facts underpinning plaintiff’s allegation of copyright infringement and Boothroyd and De-whurst’s response to defendant’s allegedly infringing activities. By 1983 Poli had become a consultant for Digital Equipment Corporation (“DEC”). Boothroyd avers that he and Dewhurst “allowed” Poli to use their copyrighted DFA Software, which was apparently being used by DEC with Boothroyd and Dewhurst’s permission. Boothroyd [Declaration (Aug. 16, 1990) (“Boothroyd Decl.”) ] at 1111. He asserts that, without their knowledge or approval, Poli then created and distributed a so-called spreadsheet derived directly from Booth-royd and Dewhurst’s DFA Software, thereby infringing on BDI’s copyright. Specifically, plaintiff alleges that Poli copied the questions on the top of the spreadsheet from those which appear on the screen displays of BDI’s Software. Poli also used the novel “partial silhouettes” that Boothroyd and Dewhurst had created to function along with the questions to allow programmers to make the design calculations more quickly. Id. at Till 8 and 11. Adding insult to injury, at least from plaintiff’s point of view, Poli copyrighted this derivative work and affixed a 1983 copyright notice to the spreadsheet naming himself as author and copyright owner. Id. at [¶] 11; Plaintiff’s Exhibit 14 (copy of Poli’s registration form No. TX 1-493-573) [attached to Plaintiff’s Opposition to Defendant’s Motion for Summary Judgment (Aug. 16, 1990) ]. Dated October 30, 1984, this copyright registration not only lists Poli as the author of the entire spreadsheet but also fails to indicate the existence of any pre-existing materials upon which his work was based. Id. Plaintiff also asserts that defendant admits that he “adapted” the questions directly from the DFA Software. Plaintiff’s L.R. 18 at ¶ 4. The one-page deposition excerpt cited by plaintiff indicates that defendant concedes that he copied the questions “verbatim” from software he identifies as being produced “during the [1977-1982] NSF grant.” Plaintiff’s Exhibit 8 (Poli [Deposition at 1:95) attached to Plaintiff’s Motion for Summary Judgment on Defendant’s Counterclaims (June 29, 1990) ]. For his part, Poli does not dispute that he prepared the 1983 spreadsheet to be used in conjunction with Boothroyd and Dewhurst’s copyrighted DFA software. Defendant’s L.R. 18 at II17. However, he insists that his spreadsheet was “adapted, not derived” from software “developed in part under [the] NSF grant.” Defendant’s Opp.L.R. 18 at 114, citing Poli [Deposition at 1:92-96]. In 1984 B & D, Inc. learned that Poli had also prepared a software package for DEC entitled “Electronic Spreadsheet,” believed by plaintiff to be based upon both the derivative 1983 Poli spreadsheet as well as plaintiff’s copyrighted DFA Software and Handbook. The title page of the electronic spreadsheet actually lists Poli as one of three co-authors and indicates that DEC owns the 1984 copyright. See Plaintiff’s Exhibit 16 [attached to Plaintiff’s Opposition to Defendant’s Motion for Summary Judgment) ]. Through its attorney, William E. Hart (“Hart”), plaintiff’s predecessor immediately complained to Poli. See [Plaintiff’s Exhibit 15, attached to Plaintiff’s Opposition to Defendant’s Motion for Summary Judgment (Hart Letter to Poli of 10/19/84)]. This letter was forwarded to Poli’s attorney, John J. Dempsey (“Dempsey”), who replied on November 1, 1984 that Poli “has absolutely no intention of infringing ...” and that any similarities resulted from Poli’s “bona fide attempt to provide a graphic aid for the user of [B & D, Inc.] software.” Defendant’s Exhibit 4 [attached to Defendant’s Motion for Summary Judgment (July 2, 1990) ]. Moreover, Dempsey informed Hart that DEC owned the copyright for the accused software and that in order to avoid any further disputes regarding the spreadsheet, Poli had decided, “effective immediately, to abort any further distribution or use of this spreadsheet.” Id. According to plaintiff, Boothroyd and Dewhurst relied on Dempsey’s assurances until they learned that Poli had produced a new, revised spreadsheet late in 1984, “Assembly Analysis and Lineba-lancing Spreadsheet” ... and an associated software version, both of which Poli considered to be non-infringing. Defendant’s L.R. 18 at II20. Boothroyd, however, viewed the so-called revision as “nothing more than a rearrangement of the column headings of the 1983 spreadsheet.” Boothroyd Decl. at ¶ 14. Once again, Boothroyd and Dewhurst protested through their attorney, putting Poli on notice that they considered this 1984 spreadsheet to be an additional infringement of their work. Id., citing Plaintiff’s Exhibit 18 (Letter from Hart to Dempsey of 2/6/85) [attached to Plaintiff’s Opposition to Defendant’s Motion for Summary Judgment]. Dempsey wrote a series of letters to Hart dated 2/8/85, 2/25/85 and 9/16/85 advising Boothroyd and Dewhurst that Poli did not view these new works as infringing and explaining why. The last letter concluded by warning that Poli considered their allegations of infringement to “smack of blatant harassment” and to be an effort to damage his reputation. See Plaintiff’s Exhibit 49 at 2 [attached to Plaintiff’s Opposition to Defendant’s Motion for Summary Judgment]. As late as August 16, 1985, Hart informed Dempsey by letter that Booth-royd and Dewhurst had finally had an opportunity thoroughly to examine the Poli electronic spreadsheet, which was by then freely available to students and faculty at a U. Mass, engineering lab. Hart stated that after a “thorough analysis and comparison” of the two softwares, there was “no question” that Poli’s work was “an unauthorized derivative work.” This letter notified Poli, in detail, of plaintiff's specific claims of infringement. He also warned that Boothroyd and Dewhurst planned to “monitor the situation carefully” and would resort to “the courts for relief” should Poli attempt to sell or distribute the software. Plaintiffs Exhibit 48 [attached to Plaintiffs Opposition to Defendant’s Motion for Summary Judgment], Defendant notes that from September 16, 1985 until early August of 1989, the three professors had no further communications in which complaints were pressed regarding either the 1984 Poli spreadsheet or the software version of the spreadsheet. Defendant’s L.R. 18 at 21, citing Poli Affidavit at ¶¶ 8-9 [attached to Defendant’s Motion for Summary Judgment]. This silence continued in spite of the fact that, beginning in 1985, the Poli 1984 spreadsheet and software had been offered for sale by the University of Massachusetts.... Boothroyd attributes this quiescence to the high cost of litigation, the “crudity” of Poli’s “clearly inferior” spreadsheet, and his reluctance to sue an academic colleague. Boothroyd Decl. at If 14. Plaintiff continued to withhold action against Poli in 1987, even though Booth-royd and Dewhurst learned by then that Poli had prepared several new products which allegedly infringed, as well as a series of professional papers and a 1989 video lecture series which occasionally criticized BDI’s software and, plaintiff says, repeatedly reproduced aspects of it without permission. See Plaintiff’s L.R. 18 at 111117-22. Boothroyd and Dewhurst still viewed the high cost of litigation as a deterrent, especially in light of the potentially small monetary recovery and the lack of a serious commercial threat posed by Poli at this time. Id. at ¶ 16. However, they never indicated to Poli that they approved of — or that they would ignore— his infringements. Magistrate Judge’s Report at 9-14 (most footnotes omitted). Plaintiffs tolerance ended when its principals perceived defendant’s activities as a possible commercial threat. In 1989, Richard Adler (“Adler”), a Stanford University graduate student, contacted BDI seeking a license to use BDI’s copyrighted material. Plaintiff refused Adler’s request, concerned about possible misuse of its product, which had been supplied to Stanford solely for teaching purposes. Plaintiff’s Opposition to Defendant’s Motion for Summary Judgment, Exhibit 39 (4/12/89 letter from Dewhurst to Adler). Shortly thereafter, plaintiff’s principals read in a trade magazine that Adler’s company Sapphire Design Systems, Inc. (“Sapphire”), had obtained a license to use Poli’s DFA methodology. Convinced that the material Poli was licensing to Sapphire was BDI’s copyrighted material, BDI filed this suit on July 28, 1989. C. Factual Underpinnings of Poli’s Chapter 93A Claim Defendant initially identified six documents that he alleged provided the factual basis for his chapter 93A counterclaim. Magistrate Judge’s Report at 18-20. Before this Court, he relies on only two of those documents, described as follows by the Magistrate Judge: A two-page December 6, 1989 news release issued by plaintiff, sent from Rhode Island to editors around the country, which summarizes the counts and allegations contained in this lawsuit. Defendant’s Exhibit 16 [attached to Defendant’s Memorandum in Opposition to Plaintiff’s Motion for Summary Judgment Respecting Defendant’s Counterclaims (Aug. 2, 1990)]; Plaintiff’s L.R. 18 at 117. Approximately 10% of these editors were located in the Commonwealth of Massachusetts. Boothroyd Declaration at ¶ 7. BDI obtained the advice of counsel before authorizing issuance of this release. Plaintiffs L.R. at 117. A January 1990 newsletter sent by BDI from Rhode Island to “its readers in the manufacturing engineering community.” Defendant’s Exhibit 17 at 6 [attached to Defendant’s Memorandum in Opposition to Plaintiff’s Motion for Summary Judgment Respecting Defendant’s Counterclaims]. The last page of this newsletter contains an announcement regarding BDI’s decision to file suit that is substantially similar in tone and content to the December 1989 press release. Id. Magistrate Judge’s Report at 18-20. Approximately seven percent of the addressees on BDI’s mailing list, to whom the January 1990 newsletters were sent, are located in Massachusetts. T.R. at 25, 35; Correction to June 27, 1990 Declaration of Geoffrey Boothroyd (Aug. 27, 1990). D. Defendant’s Objections to Recitation of Facts Contained in the Magistrate Judge’s Report 1. Poli’s Objection to the Statement that he did not Contribute to the Field of DFA Research Under the 1977-1981 NSF Grant Defendant Poli objects to the Magistrate Judge’s statement that: [w]hen [defendant] was unable to make any progress in the [field of Manual Insertions in the Field of Design for Assembly], Poli concentrated instead on his main area of research, non-traditional machining. It is undisputed that Poli produced nothing under the NSF grant that contributed to the subject of Design for Assembly. Magistrate Judge’s Report at 6, citing Defendant’s L.R. 18 at 116; Plaintiff’s Motion for Summary Judgment on Defendant’s Counterclaims, Exhibit 8 (Poli Deposition at 1:55, 1:57, 1:66). The Court concludes that evidence of record from the defendant’s own mouth supports the Magistrate Judge’s factual statement. In his deposition testimony, defendant stated that during the initial period of the NSF grant, he and Boothroyd each had a student working in the DFA field, and that Poli, Boothroyd and the two students met weekly to discuss progress and exchange ideas. Plaintiff’s Opposition to Defendant’s Motion for Summary Judgment, Exhibit 57 (Poli Deposition at 1:53). However, in his succeeding testimony, defendant explicitly stated that his share of this research effort was not productive, and that he phased out of this area to undertake research in non-traditional machining and forging. Id. at 1:55, 1:60. On several occasions in the course of his deposition, Poli confirmed that, for reasons beyond his control (an assertion plaintiff contests), he was unable to gather significant DFA data, id. at 1:55, 1:57, 1:66, 1:69, 1:77, and that when he phased out of the field, he had nothing to turn over to a possible successor. Id. at 1:57, 1:66, 1:69. See also Defendant’s Opp.L.R. 18 at 11 6 (“In 1977 and 1978, Professor Poli was unable to produce a data base for design for assembly under the NSF grant because the critical parameters required to construct such a data base had not yet been identified.”). In light of this ample support for the Magistrate Judge’s factual statement, defendant’s objection will be overruled. 2. Poli’s Objection to the Statement that Boothroyd and Dewhurst Developed Their DFA Software on Their Own Time and at Their Own Expense Poli also objects to the statement that “once Dewhurst joined the U. Mass. faculty in 1981, he and Boothroyd began work in the Design for Assembly Field on their own time and at their own expense.” Magistrate Judge’s Report at 7. He asserts (1) that Boothroyd was supported by NSF funds during the initial phase of developing the DFA Software, and (2) he apparently objects to the phrase “at their own expense” on the grounds that plaintiff’s principals performed some of this work at the University of Massachusetts, on a computer loaned to them by a colleague. Defendant does not contend that this entire project was carried out with NSF support. During his deposition testimony, Booth-royd stated that he had perhaps continued to receive NSF funding during the initial period when he and Dewhurst were developing their DFA, Software. Defendant’s Motion for Summary Judgment, Boothroyd Deposition at 242-43. In its opposition to defendant’s motion for summary judgment, plaintiff listed as a contested fact the question of whether the software program which is the basis for plaintiff’s copyright infringement claim was developed with NSF support. Plaintiff’s Opp.L.R. 18 at ¶ 1. It is, however, uncontested that De-whurst aided in the development of the software and that he never received funding from the 1977-81 NSF grant. In light of this evidence, it is appropriate to qualify slightly the Magistrate’s statement of fact. Accordingly, the Court finds that once De-whurst joined the University of Massachusetts faculty in 1981, he and Boothroyd collaborated on the development of a DFA software program, working at least in part on their own time and without NSF support. It is uncontested, albeit immaterial, that Boothroyd and Dewhurst did at least some of this work at the University of Massachusetts, using a colleague’s computer. Defendant’s Motion for Summary Judgment, Boothroyd Deposition at 244-45; 247-49. III. LEGAL ISSUES A. Standard of Review Summary judgment is appropriate when the material facts in the case, meaning those facts which could affect the outcome of the litigation, are not in dispute, and when the moving party is entitled to judgment as a matter of law. See, e.g., Brennan v. Hendrigan, 888 F.2d 189, 191 (1st Cir.1989), citing Fed.R.Civ.P. 56(c); Anderson v. Liberty Lobby, 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). In making this determination, the Court must view the factual record in the light most favorable to the non-moving party, Mack v. Great Atlantic and Pacific Tea Co., Inc., 871 F.2d 179, 181 (1st Cir.1989), citing Greenburg v. Puerto Rico Maritime Shipping Auth., 835 F.2d 932, 934 (1st Cir.1987); however, the non-moving party must demonstrate the existence of “specific, provable facts demonstrating that there is a triable issue.” Hendrigan, 888 F.2d at 191. The standard remains the same when the parties have filed cross-motions for summary judgment. See, e.g., Borowiec v. Local No. 1570, 889 F.2d 23, 25-26 (1st Cir.1989). With this essential preface in place, the Court turns to the three substantive objections raised by the parties. B. Plaintiffs Motion for Summary Judgment on Defendant’s Chapter 93A Claim Although Poli initially pointed to six documents as comprising the factual basis for his Chapter 93A claim against BDI, he now presses his claim baséd solely on two documents, the December 1989 press release and the January 1990 newsletter. See supra at pages 675-676. The Magistrate Judge concluded that these documents provided an inadequate basis for defendant’s chapter 93A counterclaim for two reasons. First, he noted that announcing pending litigation in cases of copyright and patent infringement has been held to be commercially reasonable conduct. Second, he questioned whether documents sent from Rhode Island to recipients around the country qualified as conduct occurring “primarily and substantially” in Massachusetts. Magistrate Judge’s Report at 39-41. In response, defendant argues that notices of pending litigation, if sent in bad faith or with knowledge that the underlying action is groundless, cannot be excused as commercially reasonable conduct. He suggests that as long as the copyright infringement claim between the parties has not been adjudicated, the issue of bad faith, and, therefore, the question of the commercial reasonableness of plaintiff’s actions, cannot be decided. Thus, according to defendant, a grant of summary judgment on this basis is premature. With respect to chapter 93A’s requirement that the conduct complained of occur primarily in Massachusetts, defendant renews his contention that the complainant’s place of injury is a significant factor in this determination, and that the Magistrate Judge did not give it appropriate weight. 1. Notice of Pending Litigation as Basis of Chapter 93A Claim The Court agrees with Poli that if plaintiff instituted its copyright infringement suit knowing that the claim was groundless, and proceeded to send notices of the pending litigation to defendant’s potential customers, its conduct would violate chapter 93A. See, e.g., Datacomm Interface, Inc. v. Computerworld, Inc., 396 Mass. 760, 778-79, 489 N.E.2d 185, 196-97 (1986) (finding violation of chapter 93A when, among other deceptive actions, defendant commenced suit by filing a verified complaint containing a deliberate misstatement and then used existence of litigation as marketing technique to gain advantage over plaintiff). In contrast, if plaintiff had a sound basis for its infringement suit, it was justified in sending out the relatively restrained notices which form the basis of defendant’s chapter 93A counterclaim. See e.g., Abcor, Inc. v. Romicon, Inc., 212 U.S.P.Q. (BNA) 679 (D.Mass.1980); cf. Conceptual Engineering Assocs., Inc. v. Aelectronic Bonding, Inc., 714 F.Supp. 1262, 1269 (D.R.I.1989) (if patent owner which has instituted suit acts in good faith, it may notify trade of its patent rights without violating Sherman Antitrust Act); Airtex Corp. v. Shelley Radiant Ceiling Co., 536 F.2d 145, 155-56 (7th Cir.1976) (no unfair competition when party which has good faith belief that patent is being infringed mails notices of infringement to infringer’s customers). Furthermore, it does not necessarily follow, even if plaintiff’s copyright claim is ultimately unsuccessful, that plaintiff has violated chapter 93A by instituting suit and following the procedures that a copyright infringement plaintiff normally follows. See, e.g., Quaker State Oil Refining v. Garrity Oil Co., 884 F.2d 1510, 1513 (1st Cir.1989) (in context of chapter 93A claim, fact that party does not prevail on its claims is not signal that claims were groundless). If there is an objectively reasonable basis for a party’s claims, that party “ha[s] the right to test them through litigation.” Id. at 1514. Once plaintiff moved for summary judgment on defendant’s chapter 93A counterclaim, it was defendant’s responsibility to bring forward some material fact to support his claim that plaintiff had deliberately initiated a baseless infringement suit. Hendrigan, supra. The record, viewed in the light most favorable to defendant, is devoid of evidence supporting his position. In fact, to the contrary. As the Magistrate Judge observed, the present record contains sufficient evidence, uncontested by defendant, to warrant committing the infringement issue to a jury. Magistrate Judge’s Report at 24; see supra note 1. Defendant has admitted that, to produce his 1983 spreadsheet, he copied verbatim questions appearing in Boothroyd and De-whurst’s DFA Software. Plaintiff’s Opposition to Defendant’s Motion for Summary Judgment, Exhibit 57 (Poli Deposition at 1:95-98). Although there is evidence that Boothroyd received some NSF support while he and Dewhurst developed the DFA Software, defendant has not contested the Magistrate Judge’s statement that the DFA software contained original copyrightable material. See Magistrate Judge’s Report at 7, citing Complaint at Till 7-8 (July 28, 1989). Had defendant produced evidence suggesting that the portions of the DFA Software which he admittedly copied appeared in the uncopyrighted NSF Software and were therefore in the public domain, such evidence might have supported the theory that BDI’s suit was brought in bad faith. However, Poli has not produced such evidence. In sum, defendant has failed to meet its burden of producing evidence which, if believed, would demonstrate that plaintiff has knowingly instituted an unjustified copyright infringement suit. Therefore, plaintiff is entitled to summary judgment on defendant’s chapter 93A counterclaim. 2. Conduct Occurring Primarily and Substantially in Massachusetts The Magistrate Judge further supported his recommendation that defendant’s chapter 93A counterclaim be dismissed by reference to the statutory requirement that the conduct complained of occur “primarily and substantially” in Massachusetts. Mass. Gen.Laws ch. 93A, § 11. Because the Court considers this a somewhat closer issue than did the Magistrate Judge, the Court’s decision to grant judgment to plaintiff on defendant’s chapter 93A counterclaim does not rest on this ground. At the outset, the Court notes that the burden of proving that the conduct complained of did not occur primarily and substantially in Massachusetts rests on the defendant in counterclaim, in other words, on BDI. Mass.Cen.Laws ch. 93A, § 11; Clinton Hospital Association v. Corson Group, Inc., 907 F.2d 1260, 1264 (1st Cir.1990). The factual basis for defendant’s chapter 93A claim consists of the 1989 press release, sent to editors across the country, ten percent of whom were located in Massachusetts, and the 1990 BDI newsletter, sent to individuals on BDI’s standard mailing list, approximately seven percent of whom were in Massachusetts. Based on the figures supplied by the parties during oral argument, the Court calculates that close to five hundred individuals in Massachusetts received the newsletter. See T.R. at 35, 42. Because plaintiff and defendant are involved in a specialized field, it is probable that at least some of the Massachusetts recipients of the BDI newsletter were aware of Poli’s identity and of his recent work in the DFA field. BDI has not suggested otherwise. Although the Massachusetts courts have addressed the meaning of the phrase “primarily and substantially within the commonwealth” more than once, no bright line concerning its interpretation has emerged. Clinton Hospital, 907 F.2d at 1266. In Clinton Hospital, the First Circuit Court of Appeals concluded that a district court should consider at a minimum (1) where the defendant committed the unfair practices complained of; (2) where plaintiff received and acted upon the deceptive statements; and (3) the location of plaintiff’s injury. However, the First Circuit concluded that this list of factors was not exhaustive. Id. at 1265-67. Focusing on the newsletter alone, close to five hundred Massachusetts individuals and/or businesses, interested to some degree in DFA developments, received a communication from BDI. Although the newsletter originated in Rhode Island, it was directed in part to individuals in the Commonwealth who might have acted on the communication in Massachusetts. BDI has not countered Poli’s suggestion that he has lost consulting opportunities in the Commonwealth, an injury occurring in Massachusetts. In sum, had Poli produced evidence suggesting that the newsletter announced an infringement suit instituted in bad faith, the Court would conclude that whether BDI’s conduct occurred primarily and substantially in Massachusetts presented a material issue of disputed fact. Disposition of the claim at the summary judgment stage would not be appropriate. New England Mutual Life Insurance Co. v. Stuzin, Civ.Action Nos. 86-2470-S; 86-2471-S, 1990 WL 252171 (D.Mass. Dec. 20, 1990). C. Defendant’s Motion for Summary Judgment on Plaintiffs Copyright Infringement Claim on the Basis of Laches and Estoppel Before the Magistrate Judge, defendant Poli sought summary judgment on plaintiffs copyright infringement claim on a number of grounds, all of which were rejected by the Magistrate Judge. In his objections to the Magistrate Judge’s Report, defendant focuses on a single argument. He contends that plaintiffs copyright infringement claim should be dismissed on the basis of laches and estoppel. 1. Laches “To establish laches, the defendant must show 1) unreasonable and inexcusable delay in filing suit and 2) material prejudice from the delay.” Meyers v. Brooks Shoe Inc., 912 F.2d 1459, 1461 (Fed.Cir.1990). See also Adelberg Laboratories, Inc. v. Miles, Inc., 921 F.2d 1267, 1270 (Fed.Cir.1990); Lotus Development Corp. v. Paperback Software International, 740 F.Supp. 37, 82 (D.Mass.1990). The burden of proving these elements is on the defendant, Lotus Development Corp. 740 F.Supp. at 82, and, because this is a motion for summary judgment, the record must be viewed in the light most favorable to plaintiff BDI, the non-moving party on this issue. Pointing to the correspondence between Hart and Dempsey, defendant argues that plaintiffs principals were fully aware of defendant’s allegedly infringing activity by 1985; therefore, the four-year delay in filing suit was unreasonable. Defendant further argues that plaintiff’s delay in filing suit misled defendant, who believed that plaintiff was satisfied that defendant’s activities were not infringing. Defendant staked his professional reputation on this belief, and continued to publish and deliver lectures incorporating material which BDI now claims violates its copyright. Although defendant’s argument has superficial appeal, the Court is not convinced that plaintiff’s delay in filing suit was unreasonable. Factually, this case presents a remarkably close parallel to A.C. Aukerman Co. v. R.L. Chaides Construction Co., No. 90-1137, slip op., 1991 WL 62407 (Fed.Cir. April 25, 1991), a patent infringement case recently decided by the Federal Circuit Court of Appeals. In Aukerman, plaintiff informed defendant in 1979 that defendant was infringing plaintiff’s patent, and that plaintiff intended to enforced its patent rights. Defendant responded that if plaintiff wanted to sue defendant for the minimal amount of money involved, plaintiff should go ahead. Plaintiff delayed eight years before filing suit. Id. at 8. In reversing the district court’s grant of summary judgment on the basis of laches and estoppel, the Aukerman court stated: [Defendant] informed [plaintiff] that its infringement was minimal. [Plaintiff] could reasonably have made a judgment that, considering the cost of litigation and the value of the lost business, it was not in the best interests of the company to pursue [defendant] at that time. But, [plaintiff] alleges, some years later the situation had changed. [Plaintiff] presented evidence that [defendant] substantially increased its infringing activities. When viewed in a light most favorable to [plaintiff], the evidence of [plaintiff’s] earlier understanding regarding [defendant’s] minimal infringing activities and the evidence of [defendant’s] increased infringing use of the patented method provides a reasonable basis on the facts of this case for the timing of [plaintiff’s] suit and does not support a contrary summary judgment as a matter of law. Id. at 9. In the case sub judice, defendant responded to plaintiff’s stated, concerns first by indicating that it would withdraw a particular spreadsheet from circulation, and later by refusing to address directly plaintiff’s concerns about the revised electronic spreadsheet on the grounds that the copyright in the electronic spreadsheet was owned by DEC. In addition, plaintiff produced uncontested evidence that the electronic spreadsheet became obsolete when DEC abandoned production of the computer for which it was designed. Defendant’s alleged infringing activities were, from plaintiff’s perspective, minimal if annoying, and plaintiff might reasonably have judged that it was not worth the cost of bringing suit. Aukerman, supra; Lottie Joplin Thomas Trust v. Crown Publishers, Inc., 592 F.2d 651, 655 n. 4 (2d Cir.1978) (plaintiff’s delay in asserting rights no ground for estoppel and laches defense when enforcing rights was not worth the cost of litigation). Viewing the record in the light most favorable to plaintiff, defendant’s infringing activities escalated, and for the first time presented a commercial threat, when he agreed to license his DFA methodology to Sapphire. In sum, on this record, the Court is not convinced that plaintiff’s delay in bringing suit was unreasonable. Furthermore, defendant’s claim of prejudice is not wholly convincing. In response to Hart’s August 16, 1985 letter documenting plaintiff’s assertion of continuing copyright violations, counsel for defendant stated that defendant’s activities were not infringing, and that plaintiff’s repeated expressions of concern were “a deliberate attempt to damage Poli’s reputation.” Letter of Dempsey to Hart (Sept. 10, 1985) (attached as Exhibit 49 to Plaintiff’s Opposition to Defendant’s Motion for Summary Judgment). The evidence can be viewed as suggesting that defendant’s conduct did not depend on a reasonable belief that plaintiff was satisfied with the status quo but rather on defendant’s belief that plaintiff’s accusations lacked a sound legal basis. See, e.g., Meyers, 912 F.2d at 1463 (defendant’s claim of prejudice unconvincing when evidence suggested that defendant’s course of conduct was unaffected by plaintiff’s activities). The Court agrees with the Magistrate Judge that laches does not bar plaintiff’s copyright infringement claim. 2. Estoppel The elements of estoppel diffe.r somewhat from those of laches. The parties have accepted the legal standard enunciated by the Magistrate Judge: “1) [the] party to be estopped [BDI] must know the facts; 2) [BDI] must intend that [its] conduct [i.e., failure to protest after 1985] shall be acted on or must so act that the party asserting the estoppel has a right to believe it is so intended; 3) [Poli] must be ignorant of the true facts; and 4) he must rely on [BDI’s] conduct to his injury.” Magistrate Judge’s Report at 31, citing Hampton v. Paramount Pictures Corp., 279 F.2d 100, 104 (9th Cir.), cert. denied 364 U.S. 882, 81 S.Ct. 170, 5 L.Ed.2d 103 (1960); Hearst Corp. v. Stark, 639 F.Supp. 970, 980 n. 14 (N.D.Cal.1986). The Federal Circuit Court of Appeals noted in Auker-man, supra, that “[e]stoppel is conceptually different from laches in that it is conduct, not time, that triggers judicial intervention.” Aukerman, slip op. at 7 (emphasis added). In addition, the Aukerman court noted that “because estoppel is even more potent than laches” in barring plaintiff’s claim, “courts must be that much more chary in imposing arbitrary judgments on market-based decisions.” Id. Certainly BDI’s principals possessed at least some knowledge of Poli’s allegedly infringing activities in 1985. However, the remaining evidence does not support a finding that — as a matter of law and viewing the record in the light most favorable to BDI — BDI’s conduct reasonably induced Poli to believe that BDI was satisfied that Poli was no longer infringing its copyright. Hart’s August 16, 1985 letter does not announce that legal action is imminent. Rather, it cautions that BDI’s principals “will monitor the situation carefully,” and will assert their rights if Poli attempts to sell or distribute infringing software. The letter also documents Boothroyd and De-whurst’s belief that Poli’s activities continued to infringe BDI’s copyrights. Plaintiff’s Opposition to Defendant’s Motion for Summary Judgment, Exhibit 48. In addition, as the Court has already explained, defendant’s response does not unambiguously indicate reliance on plaintiff’s acquiescence in his activities. Rather, Dempsey’s September 16, 1985 letter to Hart implies that defendant did not believe his activities were infringing BDI’s copyrights. Dempsey suggested that Poli was using material in the public domain rather than copyrighted material, and that defendant bore no responsibility for the 1984 electronic spreadsheet. A reasonable interpretation of the evidence is that, rather than relying on plaintiffs acquiescence, defendant was proceeding in defiance of plaintiffs complaints. In these circumstances, defendant is not entitled to summary judgment on his estoppel defense. See, e.g., Meyers, 912 F.2d at 1463 (defendant has not demonstrated prejudice where evidence suggests that defendant would have pursued the same course of conduct even if plaintiff had filed suit sooner); Lotus Development Corp., 740 F.Supp. at 83 (defendant’s claim of prejudice rejected where its defense was that copyright infringement suit was frivolous). D. Defendant’s Motion for Summary Judgment on Plaintiffs Lanham Act Claim The version of the Lanham Act in effect at the time relevant to this suit read as follows: Any person who shall affix, apply, or annex, or use in connection with any goods or services, or any container or containers for goods, a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce, and any person who shall with knowledge of the falsity of such designation of origin or description or representation cause or procure the same to be transported or used, shall be liable to a civil action by any person doing business in the locality falsely indicated as that of origin or in the region in which said locality is situated, or by any person who believes that he is or is likely to be damaged by the use of any such false description or representation. Lanham Act § 43(a), 15 U.S.C. § 1125(a) (amended effective Nov. 16, 1989). In its objections to the Magistrate’s Report, plaintiff identifies the following factual basis for its Lanham Act claim: 1) defendant’s alleged failure to acknowledge the source of various materials, such as diagrams, formulas and charts, that appear in defendant’s own productions such as his 1989 videotape; and 2) the fact that defendant places his own copyright notice on his materials, such as his 1989 videotape, without acknowledging that these materials contain the copyrighted material of others. Plaintiff labels this as “reverse palming off,” i.e., an attempt to pass off as defendant’s own work material actually produced by another. Plaintiff’s Opposition to Defendant’s Motion for Summary Judgment at 25; see, e.g., Smith v. Montoro, 648 F.2d 602, 605 (9th Cir.1981) (reverse palming off occurs when someone obliterates or removes the original trademark before reselling goods produced by someone else). Conversely, “palming off” is “the selling of a good or service of one’s own creation under the name or mark of another.” Montoro, 648 F.2d at 604, citing 2 J. McCarthy, Trademarks and Unfair Competition, § 25.1 (1973); 1 R. Callman, Unfair Competition, Trademarks and Monopolies, § 18.2(b)(1), at 294 (1980 Supp. to 3rd ed.). Defendant argues that First Circuit case law interpreting section 43(a) encompasses only those claims which involve “attempts to appropriate the goodwill associated with a competitor’s trademark by means of a confusingly similar marking and packaging which would create the impression that the products of the defendant originated with the plaintiff,” Purolator, Inc. v. EFRA Distributors, Inc., 687 F.2d 554, 560-61 (1st Cir.1982), in other words, palming off. See also Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154, 160 (1st Cir.1977) (in palming off case, basis for section 43(a) claim is “use of a mark in interstate commerce which is likely to cause confusion or to deceive purchasers concerning the source of goods”); Samson Crane Co. v. Union Nat. Sales, 87 F.Supp. 218 (D.Mass.1949), aff'd per curiam, 180 F.2d 896 (1st Cir.1950). Although the case law in the First Circuit is somewhat ambiguous, and despite the fact that restrictive interpretations of section 43(a) have been criticized, see, e.g., Schroeder v. Lotito, 577 F.Supp. 708, 721-24 (D.R.I.1983) (Selya, D.J.), the weight of authority in this circuit and in this district favors defendant’s position. See, e.g., Clamp-All Corp. v. Cast Iron Soil Pipe Institute, 3 U.S.P.Q.2d 1018, 1021-23, 1987 WL 9760 (D.Mass.1987), aff'd 851 F.2d 478 (1st Cir.1988), cert. denied, 488 U.S. 1007, 109 S.Ct. 789, 102 L.Ed.2d 780 (1989); Quincy Cablesystems, Inc. v. Sully’s Bar, 650 F.Supp. 838, 844-46 (D.Mass.1986); Salomon/North America, Inc. v. AMF Inc., 484 F.Supp. 846, 848-49 (D.Mass.1980). Most recently, the First Circuit appeared to acknowledge that the restrictive interpretation of section 43(a) announced in Samson Crane remains the controlling law in the First Circuit. See Clamp-All Corp., 851 F.2d at 491 (“We therefore continue to assume the validity of Samson Crane, and postpone its reconsideration for another day.”). The Court concludes that in the First Circuit a section 43(a) plaintiff must allege that defendant has misappropriated or misused a trademark or something analogous to a trademark, deceiving consumers as to the source of goods or services and trading on plaintiffs goodwill, to state a valid claim. In light of the First Circuit’s recent statement, this Court may not, as plaintiff requests, overrule Samson Crane. Perhaps anticipating this response, plaintiff argues that even under the Samson Crane interpretation of section 43(a), it can maintain its claim. In support of its position, plaintiff takes issue with the Magistrate Judge’s discussion of Brandon v. Regents of the University of California, 441 F.Supp. 1086 (D.Mass.1977), and relies on Montoro, supra. In Brandon, plaintiff was the producer and director of a successful short film titled “Anything You Want To Be.” Defendant first attempted to purchase a copy of plaintiff’s film and, when the request was refused, began to distribute a competing film of very similar content, which had been titled “Anything They Want To Be.” Id. at 1088-89. Plaintiff brought no copyright infringement claim in Brandon. Instead, she relied on section 43(a) of the Lanham Act. The case was tried to Judge Caff rey, who ruled in plaintiff’s favor on her Lanham Act claim. The Magistrate Judge, while noting that Brandon contained some factual similarities to the case at bar, distinguished it on the basis that the Brandon plaintiff had not brought a copyright claim. In its objection to the Magistrate Judge’s Report, plaintiff stresses that much of the conduct it complains of is not prohibited by copyright law, but may be prohibited by the Lanham Act. Plaintiff’s Objection at 2-5. Thus, in plaintiff’s view, Brandon supports plaintiff’s position. More significant, in the Court’s view, is the fact that Brandon concerned conduct cognizable under Samson Crane and that BDI’s claim does not. In Samson Crane, the court stated: It is clear ... that the primary purpose of the Act was to eliminate deceitful practices in interstate commerce involving the misuse of trademarks, but along with this it sought to eliminate other forms of misrepresentations which are of the same general character even though they do not involve any use of what can technically be called a trademark. Samson Crane, 87 F.Supp. at 222. In Brandon, defendant marketed a film under a title very similar to the title of plaintiff’s film. The Court found that the similarity of titles was a source of confusion for those ordering films, and that defendant was trading on the goodwill that plaintiff’s film had generated. In short, by using a very similar title, defendant was palming its film off as plaintiff’s film. Thus, in a significant way, Brandon is factually distinguishable from the case at bar. In its Opposition to Defendant’s Motion for Summary Judgment, plaintiff relied on Montoro, supra, a Ninth Circuit case, to support its position that it has stated a valid Lanham Act claim. As the Magistrate Judge noted, the Ninth Circuit espouses a broad interpretation of section 43(a) which is foreclosed in the First Circuit. See Montoro, 648 F.2d at 604 (law of unfair competition has moved beyond fraudulent passing off to encompass any kind of commercial competition society deems unfair). Moreover, Montoro presents facts which this Court believes could not give rise to a section 43(a) claim in this circuit. In Mon-toro, plaintiff contracted to star in a film produced by an Italian film company. Under the terms of the contract, plaintiff was supposed to receive star billing in the screen credits. Instead, prior to distribution, plaintiff’s name was removed from the screen credits and replaced with another actor’s name. Id. at 603. The court described this as “reverse palming off.” Id. at 607. Montoro cannot be described as a case in which consumers might be confused as about the source of goods or services they were purchasing. In sum, the Court concludes that, based on the undisputed facts in this case, plaintiff has failed to state a section 43(a) claim. Defendant is entitled to judgment as a matter of law. IV. CONCLUSION For the reasons stated above, the Court ADOPTS the conclusions in the Magistrate Judge’s Report as follows: 1. The Court GRANTS plaintiff’s motion for summary judgment on defendant's chapter 93A counterclaim. 2. The Court GRANTS defendant’s motion for summary judgment insofar as it relates to plaintiff’s Lanham Act claim (count two), and DENIES defendant’s motion for summary judgment insofar as it relates to plaintiff’s copyright claim (count three). It is So Ordered. REPORT AND RECOMMENDATION REGARDING CROSSMOTIONS FOR SUMMARY JUDGMENT January 15, 1991 MICHAEL A. PONSOR, United States Magistrate Judge. I. INTRODUCTION. In this four-count complaint plaintiff, Boothroyd Dewhurst, Inc. (“BDI”), charges defendant, Corrado Poli (“Poli”), with violations of the Copyright Act, 17 U.S.C. §§ 101 et seq., and the Lanham Act, 15 U.S.C. § 1125, arising out of Poli’s development of a spreadsheet, companion software and related materials that allegedly duplicate products created by BDI and its predecessor, Boothroyd & Dewhurst, Inc. (“B & D, Inc.”). In Counts III and IV, plaintiff invokes this court’s pendent jurisdiction to state claims for unfair competition under Mass.Gen.Laws ch. 93A, §§ 2 and 11, as well as Massachusetts common law. Poli has responded with a two-count counterclaim in which he alleges that plaintiff— through its principals Geoffrey Boothroyd (“Boothroyd”) and Peter Dewhurst (“De-whurst”) — interfered with his professional and business relations by committing unfair and deceptive acts in violation of ch. 93A, and engaged in unfair methods of competition under the common law of Massachusetts. Each party has moved for summary judgment on its opponent’s claims. For the reasons set forth below, this court will recommend that defendant’s motion for summary judgment be allowed with respect to Count II, the Lanham Act claim, but denied with respect to Counts I, III and IV, and that plaintiff’s motion be allowed as to defendant’s counterclaims. II. FACTUAL BACKGROUND. A. Summary Judgment Standard. In addressing a motion for summary judgment, it is axiomatic that this court will view the facts, and all reasonable inferences that may be drawn from them, in the light most favorable to the non-moving party. Kennedy v. Josephthal & Co., Inc., 814 F.2d 798, 804 (1st Cir.1987). The basic inquiry in a summary judgment motion is whether “the pleadings, depositions, answers to interrogatories and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material facts and that the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c). By its very terms, this standard provides that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact. As to materiality, the substantive law will identify which facts are material. Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Factual disputes that are irrelevant or unnecessary will not be counted. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). (Emphasis in original.) The requirement that disputes be “material” is especially pertinent to this case. The embittered relationship between the principals in this action has generated disputes about almost everything; many, or most, of these conflicts are not material to the issues raised by the motions. At the summary judgment stage, the court’s function is not “to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial.” Id. at 249, 106 S.Ct. at 2510. In this regard, it is important to note that “the inquiry involved in a ruling on a motion for summary judgment or for a directed verdict necessarily implicates the substantive evidentiary standard of proof that would apply at the trial on the merits.” Id. at 252, 106 S.Ct. at 2512. The issue then is “whether there is [evidence] upon which a jury can properly proceed to find a verdict for the party producing it, upon whom the onus of proof is imposed.” Id. (Citation omitted.) In other words, in order to determine if a genuine factual issue exists to defeat summary judgment, the actual quantum and quality of proof necessary for the plaintiff to prevail must be considered. See Anderson v. Liberty Lobby, Inc., 477 U.S. at 254, 106 S.Ct. at 2513. “Thus, in ruling on a motion for summary judgment, the judge must view the evidence presented through the prism of the substantive evi-dentiary burden.” The question then becomes “whether a jury could reasonably find either that the plaintiff proved [its] case by the quality and quantity of evidence required by the governing law or that [it] did not.” Id. However, “[t]he evidence of the non-mov-ant is to be believed, and all justifiable inferences are to be drawn in [its] favor.” Id. at 255, 106 S.Ct. at 2513, citing Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-9, 90 S.Ct. 1598, 1608-09, 26 L.Ed.2d 142 (1970). “[T]he burden on the moving party may be discharged by ‘showing’ — that is, pointing out to the district court — that there is an absence of evidence to support the non-moving party’s case.” Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 2553, 91 L.Ed.2d 265 (1986). As noted by the Celotex court, “[o]ne of the principal purposes of the summary judgment rule is to isolate and dispose of factually unsupported claims or defenses_” Id. at 323-4, 106 S.Ct. at 2553. On crossmotions for summary judgment, such as those now before the court, the factual perspective shifts — each party’s motion is viewed in the light of facts favoring its adversary. Rule 56(f) provides an “escape hatch” for a party who “genuinely requires additional time to marshall ‘facts essential to justify [its] opposition’ when confronted by a summary judgment motion.” Paterson-Leitch v. Massachusetts Electric, 840 F.2d 985, 988 (1st Cir.1988), citing Herbert v. Wicklund, 744 F.2d 218, 221 (1st Cir.1984). However, to invoke 56(f) a request for additional discovery must be made “in some authoritative manner,” must “articulate some plausible basis for the party’s belief that specified ‘discoverable’ material facts likely exist which have not come in from the cold” and must “demonstrate good cause for failure to have conducted discovery earlier.” Paterson-Leitch, 840 F.2d at 988. With this general background, the court turns to the facts of this case. B. Facts of Record. While, as noted, numerous peripheral disputes clutter the record, the skeleton of basic facts is largely undisputed and relatively few material disagreements appear. The following facts are undisputed, except where conflicts are noted. This litigation is the culmination of an increasingly acrimonious dispute among three academics regarding which of them is entitled to receive credit for — and profit from — research initiated at the University of Massachusetts in the late 1960’s in an engineering field known as “Design for Manufacturability.” The plaintiff corporation, BDI, is a Rhode Island company formed in 1985 and owned by Professors Boothroyd and Dewhurst. BDI creates and markets software and related materials in a sub-field of “Design for Manufac-turability.” It is a successor to B & D, Inc., a Massachusetts corporation formed in December 1983 and dissolved in 1985 when the principals left the University of Mass, at Amherst for the University of Rhode Island. Plaintiff’s L.R. 18 at 111, citing Boothroyd Decl. at II2. From 1967 until 1985, the defendant, Professor Poli, and Professor Boothroyd were colleagues in the Mechanical Engineering Department at U. Mass./Amherst. Id. at ¶ 2; Defendant’s L.R. 18 at ¶ 1. From about 1973 through 1982, Poli and Booth-royd collaborated in the field of Design for Manufacturability and its sub-area, Design for Assembly. Defendant's Opp.L.R. 18 at 112, citing Poli Dep., Vol. 1 at 17-18, 49-53, 71-74 and 79-80. 1. Collaboration at U. Mass, on the NSF Grant. Beginning in 1978 and continuing through 1981, Boothroyd and Poli served as investigator and co-principal investigator, respectively, in a research program entitled “Design for Manufacturability,” funded by successive grants from the National Science Foundation (“NSF”) to the University of Massachusetts. Defendant’s L.R. 18 at ¶ 2, citing Defendant’s Exhibits 1 and 2. Poli originally agreed to work on two aspects of the NSF research: Design for Non-Traditional Machining and Manual Insertions in the Field of Design for Assembly. When he was unable to make any progress in the latter field, Poli concentrated instead on his main area of research, non-traditional machining. It is undisputed that Poli produced nothing under the NSF grant that contributed to the subject of Design for Assembly. Id. at 116; Plaintiff’s Exhibit 8 (Poli Dep. at 55, 57, 66). Two of the products that resulted from the U. Mass, research program were a Handbook entitled “Design for Assembly (1980)” (“NSF Handbook”) and a software program. Def.’s L.R. 18 at 113, citing Defendant’s Exhibit 3 and Boothroyd Dep. at 168-178. The NSF Handbook was published but not copyrighted. Defendant’s Exhibit 3. 2. Dewhurst’s Arrival at U. Mass, and His Participation in Subsequent Research. In 1980 Professor Dewhurst arrived at U. Mass./Amherst as a visiting professor at Boothroyd’s suggestion. Boothroyd Decl. at H113 and 7. He did not serve either as an investigator or co-principal investigator in the research program. Defendant’s L.R. 18 at 116. In fact, by early 1980 the NSF had declined to fund further work in the Design for Assembly field. Boothroyd Deck at 118. However, once Dewhurst joined the U. Mass, faculty in 1981, he and Boothroyd began work in the Design for Assembly field on their own time and at their own expense. Boothroyd Decl. at 11113 and 8. In late 1981, utilizing at least some of the results from the U. Mass, research program, Boothroyd and Dewhurst collaborated on and completed a microcomputer version of a software package entitled “Design for Assembly Software Tool Kit” (the “DFA Software”). The copyright registration notice indicates this software was originally copyrighted in January of 1982. Defendant’s L.R. 18 at II7, citing Boothroyd Dep. at 241-279; Defendant’s Exhibit 6 (copy of copyright registration No. TX 1-420-925). This software, used with related materials, was intended to assist designers in evaluating the difficulties of assembly of their products. It contained original copyrightable material produced by Boothroyd and Dewhurst. Complaint at ¶¶ 7-8. The date of actual registration of the copyright on the DFA Software is October 15, 1984. This registration states that the copyright was assigned to B & D, Inc. “at the time of incorporation.” Id. at ¶ 9; Defendant’s Exhibit 6 at 114. On November 15, 1982 Boothroyd and Dewhurst published a handbook entitled “Design for Assembly” (“DFA Handbook”). Like the DFA Software, the Handbook incorporated some of the prior work done for the research program at U. Mass., plus additional materials wholly originated by Boothroyd and Dewhurst. Complaint at 1110. This Handbook copyright was also registered by Boothroyd and Dewhurst, effective October 15, 1984, and assigned to B & D, Inc. as of the time of its incorporation. Defendant’s Exhibit 7 (copy of copyright registration No. TX 1-425-994); Complaint at ¶ 11. As early as 1982, Boothroyd and De-whurst had begun to generate significant industrial interest and support for their work through numerous industry presentations and articles in the technical and trade press. Boothroyd Deck at 119. They formed B & D, Inc. in December of 1983 to market the DFA Software and related materials. Plaintiff’s L.R. 18 at II3; Booth-royd Declaration at 11II2 and 8. By the time they left U. Mass, to join the faculty of the University of Rhode Island in 1985, industry interest and support had gro