Copyright application is not registration, federal judge rules

Daily Record, The (Baltimore), May 26, 2005 by Barbara Grzincic

A Maryland-based communications firm cannot sue for infringement of Web designs it sought to copyright just one business day before filing suit, a federal judge in Maryland has held.

U.S. District Judge Richard D. Bennett dismissed the suit by Mays & Associates Inc. against Robin N. Euler, a former employee who started her own Web design firm and posted copies of her work for Mays in her online portfolio.

It is axiomatic that copyright registration is a jurisdictional prerequisite to bringing an action for infringement under the Copyright Act-, Bennett wrote. The precise issue posed in this case is defining when a work is actually registered under copyright law.

An application to the Copyright Office is not enough, the judge concluded.

Euler left Mays and started Red Robin Design in January, according to last week's opinion.

Mays, which applied for the copyrights on Feb. 11 and filed suit for damages and injunctive relief on Feb. 14, argued that applying for registration is tantamount to registration.

The firm cited Iconbazaar LLC v. America Online, a 2004 opinion in which the U.S. District Court for the Middle District of North Carolina conducted a very thorough review of case authority and determined that the 4th U.S. Circuit Court of Appeals had not directly addressed the issue.

The Iconbazaar court concluded that its Maryland counterpart, in the 2001 case of Berlyn Inc. v. The Gazette Newspapers Inc., had adopted registration-upon-application.

Not so, Bennett wrote: Berlyn did not address the issue because the plaintiff had never even applied for registration.

While dicta in Berlyn may have suggested a registration upon application approach, two subsequent opinions of this Court have declined to adopt that principle, the judge added.

The first of those cases, 2003's Lowery Reports v. Legg Mason Inc., was distinguishable in that the plaintiff sought relief only for its registered copyrights.

The second, decided last year, was on point but unpublished. The plaintiff in Glynn Interactive Inc. v. iTelehealth Inc. had applied for a copyright but did not present a certificate of registration. The court granted partial summary judgment in the defendant's favor on the copyright infringement claim.

'Limbo'

Turning to the language of the Copyright Act last week, Bennett pointed out that the statute clearly makes application just one stop in the registration process, and allows suit after the copyright is registered or the application is denied.

This process reflects understandable public policy, Bennett wrote, since the copyright decision should be made in the first instance by the Copyright Office rather than a court.

Indeed, the facts of this case illustrate that the registration upon application approach-would place this Court in 'limbo,' the opinion says. [Mays] filed 30 copyright applications on a Friday and immediately, on the following Monday, sought injunctive relief in this Court.

Taking jurisdiction over such a case would cause this court to 'prejudge' determinations of the Copyright Office prior to its exercise of its expertise in the review of these applications, Bennett wrote.

The court also dismissed Mays' claim under Section 43 of the Lanham Act, which seeks to prevent deceptive or misleading use of marks and unfair competition.

Euler's portfolio samples contained a disclaimer, in which she acknowledged that the images were prepared while she was at Mays, that Red Robin was not taking credit for them, and that the images were not intended for sale or distribution.

Mays contended that the disclaimer failed to give proper credit to Mays for its creative work in developing, implementing, designing and executing the images.

However, under the Supreme Court's 2003 decision in Dastar Corp. v. Twentieth Century Fox, the Lanham Act only covers the tangible goods themselves and not 'any idea, concept or communication embodied in those goods,' which is covered, in this case, by copyright law, Bennett wrote. Thus, Mays' Lanham Act claim failed to state a claim upon which relief could be granted.

The court declined to exercise jurisdiction over Mays' state law claims, including unfair competition, misappropriation of trade secrets and breach of fiduciary duty.

WHAT THE COURT HELD

Case:

Mays & Assocs. Inc. v. Euler, USDMD No. RDB 05-437. Published. Opinion by Bennett, J. Published May 18, 2005.

Issue:

Can a party who has applied for copyright registration maintain an action for infringement before that application is acted upon by the Copyright Office?

Holding:

No; dismissed. Registration is a jurisdictional prerequisite to bringing an action for infringement under the Copyright Act. Dicta to the contrary in Berlyn Inc. v. Gazette Newspapers notwithstanding, adopting a registration-upon-application approach would force the courts to prejudge the Copyright Office's determination.

Counsel:

Brian Lee Oliner and Paul George Skalny for plaintiff; John M. Singleton and Gabriel Antonio Terrasa for defendants.