Case 1:08-cv-00775-MSK-CBS Document 98 Filed 08/26/09 USDC Colorado Page 1 of 7
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`Honorable Marcia S. Krieger
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`Civil Action No. 08-cv-00775-MSK-CBS
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`GRANT HEILMAN and
`VARNETTE P. HONEYWOOD,
`individually, and on behalf of all other persons similarly situated,
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`Plaintiffs,
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`v.
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`HOUGHTON MIFFLIN HARCOURT PUBLISHING COMPANY, a Massachusetts
`corporation,
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`Defendant.
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`ORDER GRANTING MOTION TO DISMISS
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`THIS MATTER comes before the Court on (1) Defendant Houghton Mifflin Harcourt
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`Publishing Company’s (“Houghton Mifflin”) motion to dismiss for lack of subject matter
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`jurisdiction (#53), to which the Plaintiffs responded (#54) and Houghton Mifflin replied (#55);
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`and (2) Houghton Mifflin’s motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) (#71), to
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`which the Plaintiffs responded (#73) and Houghton Mifflin replied (#77). Having considered the
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`same, the Court
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`FINDS and CONCLUDES that:
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`I. Issues Presented
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`This is a copyright infringement case brought by Grant Heilman, who alleges
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`infringement of registered copyrights for several photographs, and Varnette P. Honeywood, who
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`Case 1:08-cv-00775-MSK-CBS Document 98 Filed 08/26/09 USDC Colorado Page 2 of 7
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`alleges infringement of unregistered copyrights.1 The motions to dismiss pertain solely to Ms.
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`Honeywood’s claims.
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`In the first motion, Houghton Mifflin argues that this Court lacks subject matter
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`jurisdiction to consider Ms. Honeywood’s claim because she has not registered her copyrights.
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`In the second motion, Houghton Mifflin argues that the absence of a registered copyright
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`deprives Ms. Honeywood of a cognizable federal claim. Both arguments are premised upon the
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`statute governing civil copyright infringement actions that provides that “no action for
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`infringement of the copyright in any United States work shall be instituted until . . . registration
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`of the copyright claim has been made in accordance with this title.” 17 U.S.C. § 411(a). The
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`issues presented, therefore, are (1) whether section 411(a) deprives this Court of subject matter
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`jurisdiction over Ms. Honeywood’s claims and (2) whether Ms. Honeywood has a cognizable
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`federal claim.
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`II. Jurisdiction
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`Subject matter jurisdiction is contested and is a topic of the instant motions. Therefore,
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`the Court exercises its inherent authority to determine its jurisdiction. See United States v. Ruiz,
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`536 U.S. 622, 628 (2002).
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`III. Undisputed Material Facts
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`For purposes of the motions currently before the Court, the parties do not dispute that
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`Ms. Honeywood has a copyright in three “images”, or that she has not registered any of the three
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`copyrights with the United States Copyright Office. In the Complaint, she contends that in 2000
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`1 The Complaint is entitled a “Class Action Complaint”, and it may be that Plaintiffs intend to
`seek to have several classes of plaintiffs designated under Fed.R.Civ.P. 23, but at the current time no
`request has been made.
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`2
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`she granted a license to Houghton Mifflin to reproduce the images in a limited number of
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`publications, but that Houghton Mifflin exceeded the scope of the license by publishing more
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`than the number authorized.
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`IV. Analysis
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`A. Rule 12(b)(1) Motion to Dismiss
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`In its first motion to dismiss (#53), Houghton Mifflin seeks dismissal of Ms.
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`Honeywood’s claims for lack of subject matter jurisdiction pursuant to Fed. R. Civ. P. 12(b)(1).
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`Rule 12(b)(1) motions generally take one of two forms. Holt v. United States, 46 F.3d 1000,
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`1002 (10th Cir. 1995). “The moving party may (1) facially attack the complaint's allegations as
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`to the existence of subject matter jurisdiction, or (2) go beyond allegations contained in the
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`complaint by presenting evidence to challenge the factual basis upon which subject matter
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`jurisdiction rests.” Maestas v. Lujan, 351 F.3d 1001, 1013 (10th Cir. 2003). Here, the
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`jurisdictional challenge is a facial one and, therefore, all allegations in the complaint are
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`accepted as true. Holt, 46 F.3d at 1002. The burden of establishing subject matter jurisdiction is
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`on the party asserting jurisdiction. Montoya v. Chao, 296 F.3d 952, 955 (10th Cir. 2002).
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` Houghton Mifflin contends that pursuant to 17 U.S.C. § 411(a) a federal court does not
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`have jurisdiction over a copyright infringement claim based on any copyright that has not been
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`duly registered with the United States Copyright Office. Without denying that section 411(a)
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`requires registration prior to suit, Ms. Honeywood responds that this Court nevertheless may
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`exercise supplemental jurisdiction over her claims because it has original jurisdiction pursuant to
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`28 U.S.C. §§ 1331 and 1338 over Mr. Heilman’s claims. The Court agrees with Houghton
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`Mifflin.
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`“Federal courts are courts of limited jurisdiction. They possess only that power
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`authorized by Constitution and statute.” Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S.
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`375, 378 (1994) (citations omitted). In order for a federal court to exercise subject matter
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`jurisdiction for infringement of federal copyrights, 17 U.S.C § 411(a) requires that the claimant
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`hold either a registered copyright or have preregistered for one.2 In the Tenth Circuit,
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`registration is recognized as the “jurisdictional linchpin to copyright infringement actions” and
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`until registration is sought, federal courts lack subject matter jurisdiction. La Resolana
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`Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1200 (10th Cir. 2005). In this case,
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`there is no dispute that Ms. Honeywood has neither registered nor preregistered her copyrights.
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`Thus, she states no federal claim over which this Court has original subject matter jurisdiction.
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`Ms. Honeywood argues, however, that the Court can exercise supplemental jurisdiction
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`over her claims pursuant to 28 U.S.C. § 1367. This section provides, in pertinent part, that a
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`district court “shall have supplemental jurisdiction over all other claims that are so related to
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`claims in the action within such original jurisdiction that they form part of the same case or
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`controversy under Article III of the Untied States Constitution.” Ms. Honeywood argues that
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`her claims for infringement of unregistered copyrights are the subject of supplemental
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`jurisdiction because they are part of the same case or controversy as Mr. Heilman’s claim for
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`infringement of registered copyrights.3
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`2 Section 411(a) provides that “no civil action for infringement of the copyright in any United
`States work shall be instituted until preregistration or registration of the copyright claim has been made in
`accordance with this title.”
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`3 Ms. Honeywood relies upon Exxon Mobile Corp. v. Allapattah Servs., 545 U.S. 546, 559–60
`(2009) for this proposition. Exxon is factually and procedurally distinguishable. In Exxon, the Supreme
`Court held that, in a diversity class action, supplemental jurisdiction was appropriate over all claims that
`formed the same case or controversy so long as one claim satisfied the amount-in-controversy
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` First, the Court observes that section 1367 authorizes the exercise of supplemental
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`jurisdiction only if jurisdiction is not precluded by another federal statute. Arguably, 17 U.S.C.
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`§411(a) operates in that capacity. Section 411(a) does exactly what section 1367(a)
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`contemplates—it expressly precludes jurisdiction for claims of copyright infringement for
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`unregistered copyrights. See La Resolana, 416 F.3d at 1201. Ms. Honeywood is correct that
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`section 411(a) does not explicitly mention supplemental jurisdiction; however, its clearly
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`expressed terms would be defeated if all that is required for federal court jurisdiction over an
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`infringement claim involving an unregistered copyright is the assertion of a claim for
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`infringement of a registered copyright in the same action.4
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`Even if section 411(a) does not preclude the exercise of supplemental jurisdiction over
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`claims for infringement of unregistered copyrights, section 1367 is not satisfied in this case
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`because Ms. Honeywood’s claim and Mr. Heilman’s claim are not part of the same case or
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`controversy. Claims are part of the “same case or controversy” only if they “derive from a
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`common nucleus of operative fact.” Estate of Harshman v. Jackson Hole Mt. Resort Corp., 379
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`F.3d 1161, 1165 (10th Cir. 2004) (quoting United Mine Workers v. Gibbs, 383 U.S. 715, 725
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`(1966)). Although Ms. Honeywood’s claims for infringement of her unregistered copyrights and
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`requirement. Exxon did not address the situation where the Court has original jurisdiction over a claim by
`one party, but another party states no claim under federal law.
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`4 Ms. Honeywood also argues that an anticipated ruling by the United States Supreme Court in In
`re Literary Works, 509 F.3d 116, 127–28 (2d Cir. 2007), cert. granted sub. nom. Reed Elsevier, Inc. v.
`Muchnick, 129 S.Ct. 1523, 1523 (2009), may resolve this issue. The Supreme Court granted certiorari on
`the issue: “Does 17 U.S.C. § 411(a) restrict the subject matter jurisdiction of the federal courts over
`copyright infringement actions?” The facts and procedural context in Reed Elsevier are different than
`those presented here. However, a decision in Reed Elsevier may alter the state of the law. At this time,
`the Court is constrained by Tenth Circuit precedent. In the event that Reed Elsevier alters the current
`Tenth Circuit precedent with respect to section 411(a), a properly filed motion for reconsideration would
`be entertained.
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`Mr. Heilman’s claims of infringement for his registered copyrights bear some similarities, they
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`do not derive from a “common nucleus of operative fact.” Mr. Heilman’s and Ms. Honeywood’s
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`claims concern different works, different licenses, and different acts of alleged infringement.
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`Thus, apart from the lack of federal registration, Ms. Honeywood’s claims are not sufficiently
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`related to Mr. Heilman’s claims so as to fall under the umbrella of supplemental jurisdiction.
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`B. Rule 12(b)(6) Motion to Dismiss
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`In its second motion to dismiss (#71), Houghton Mifflin seeks dismissal of Ms.
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`Honeywood’s claims pursuant to Fed. R. Civ. P. 12(b)(6), again due to the absence of federal
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`registration of her copyrights. In determining its jurisdiction, based on the allegations in the
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`Complaint, this Court finds that Ms. Honeywood has not stated any federal claim. As to any
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`other claim that she may have, this Court lacks jurisdiction to determine its merits. See Steel Co.
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`v. Citizens for a Better Env’t, 523 U.S. 83, 94 (1998) (quoting Ex parte McCardle, 7 Wall. 506,
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`514 (1868)). Accordingly, the second motion to dismiss must be denied, as moot.
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`IT IS THEREFORE ORDERED that:
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`(1)
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`Defendant Houghton Mifflin Harcourt Publishing Company’s motion to dismiss
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`the claims of Ms. Honeywood for lack of subject matter jurisdiction (# 53) is
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`GRANTED.
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`(2)
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`The claims asserted by Varnette P. Honeywood are DISMISSED WITHOUT
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`PREJUDICE.
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`(3)
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`Defendant Houghton Mifflin Harcourt Publishing Company’s motion to dismiss
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`Case 1:08-cv-00775-MSK-CBS Document 98 Filed 08/26/09 USDC Colorado Page 7 of 7
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`pursuant to Fed. R. Civ. P. 12(b)(6) (#71) is DENIED AS MOOT.
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`Dated this 25th day of August, 2009
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`BY THE COURT:
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`Marcia S. Krieger
`United States District Judge
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