Case 3:06-cv-01380-TLM Document 199 Filed 10/27/09 Page 1 of 11
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`UNITED STATES DISTRICT COURT
`DISTRICT OF CONNECTICUT
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`CIVIL ACTION NO.
`3:06-cv-1380 (VLB)
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`October 27, 2009
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`RBC NICE BEARINGS, INC. AND
`ROLLER BEARING COMPANY OF
`AMERICA, INC.,
`Plaintiffs,
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`v.
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`PEER BEARING COMPANY,
`Defendant.
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`MEMORANDUM OF DECISION AND ORDER GRANTING THE DEFENDANTS’
`MOTION FOR PARTIAL JUDGEMENT ON THE PLEADINGS [DOC. #141]
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`The Plaintiffs, RBC Nice Bearings, Inc. and Roller Bearing Company of
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`America, Inc. (“Plaintiffs”), brought this case for injunctive relief and damages
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`against Peer Bearing Company (“Defendant” or “Peer”), asserting trademark
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`infringement, unfair competition, advertising injury, and palming off/passing off
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`claims in violation of Section 43(a) of the Lanham Act (15 U.S.C. § 1225(a)), a
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`copyright infringement claim in violation of the Copyright Act (17 U.S.C. §§ 101 et
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`seq.), and Connecticut state law claims for unjust enrichment, unfair competition,
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`and violation of the Connecticut Unfair Trade Practices Act (CUTPA) (Conn. Gen.
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`Stat. §§ 42-110a et seq.) and the Connecticut Unfair Sales Practices Act (CUSPA)
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`(Conn. Gen. Stat. §§ 42-115e et seq.). Presently pending before the Court is the
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`Defendant’s motion for partial judgment on the pleadings seeking dismissal of
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`Plaintiffs’ copyright claim to the extent it relies upon allegations concerning works
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`that were not registered with the United States Copyright Office at the time that
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`Plaintiffs filed this action. For the reasons set forth below, the Defendant’s motion
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`Case 3:06-cv-01380-TLM Document 199 Filed 10/27/09 Page 2 of 11
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`is GRANTED.
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`I. Factual and Procedural Background
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`The pleadings reveal the following facts relevant to the Defendant’s motion
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`for partial judgment on the pleadings. The Plaintiffs, RBC Nice Bearings, Inc. and
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`Roller Bearing Company of America, Inc., are in the business of manufacturing and
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`selling ball bearings. Plaintiffs assign numbers to their bearing products under a
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`system that utilizes the term “Series” preceded by a particular number, such as
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`1600, 7500, 7600, 600 and 6900. These numbers have been used by Plaintiffs to
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`designate their bearings since 1946.
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`The Defendant, Peer, is a competitor of Plaintiffs’ in the manufacture and
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`sale of ball bearings. Peer advertises and marks its bearings with “numbers that
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`correspond to Plaintiffs’ bearing series numbers” and “specific bearing numbers
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`for products that replicate the same bearing numbers on Plaintiffs’ identical
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`bearing products.” Third Amended Complaint, ¶ 12.
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`Both Plaintiffs and Peer market their bearings through the use of catalogs.
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`Plaintiffs’ catalogs identify the Series designations at issue and list the bearing
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`numbers within these Series. Peer’s catalogs include the same Series
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`designations and bearing numbers. Plaintiffs allege that their catalogs “contained
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`original drawings, unique layouts, designs and organization of the information
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`presented on the group of bearings constituting the 1600 Series, and later the 7500
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`and 7600 Series lines of bearings . . . .” Third Amended Complaint, ¶ 36.
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`According to Plaintiffs, Peer has committed copyright infringement by copying the
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`1600, 7500 and 7600 Series designations and bearing numbers within these Series,
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`Case 3:06-cv-01380-TLM Document 199 Filed 10/27/09 Page 3 of 11
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`as well as information relating to these bearings, from Plaintiffs’ catalogs and
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`including these designations and information related thereto in its own catalogs.
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`Plaintiffs further allege that Peer copied their “engineering drawings” for bearings
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`in the 1600, 7500 and 7600 Series in order to manufacture them. Third Amended
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`Complaint, ¶¶ 42-43.
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`Plaintiffs filed their initial Complaint in this action on September 5, 2006.
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`The initial Complaint did not contain any reference to copyrights. On October 6,
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`2006, Plaintiffs filed an Amended Complaint, which introduced a claim for copyright
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`infringement and identified two copyright registrations, TX 6-088-981 and TX 6-084-
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`494. On December 19, 2006, Peer filed a Motion for a More Definite Statement,
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`arguing that the copyright allegations in the Amended Complaint failed to
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`adequately identify the works in which Plaintiffs claimed copyrights, and which of
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`Peer’s materials infringed these works. On January 4, 2007, this Court denied
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`Peer’s Motion for a More Definite Statement based on Plaintiffs’ representation that
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`they would file a Second Amended Complaint that would address Peer’s concerns.
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`Plaintiffs filed their Second Amended Complaint on January 12, 2007, in
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`which they expanded their copyright allegations to include a reference to NICE Ball
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`Bearings Catalog 240A (“Catalog 240A”), as well as other unspecified catalogs and
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`engineering drawings of ball bearings. The copyright registration numbers that
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`appeared in the first Amended Complaint were removed, and no registration
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`numbers were listed.
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`On June 1, 2007, Plaintiffs filed a motion to amend their pleadings again.
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`This Court granted leave to amend on July 3, 2007. Plaintiffs’ Third Amended
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`Case 3:06-cv-01380-TLM Document 199 Filed 10/27/09 Page 4 of 11
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`Complaint was filed on July 6, 2007. The copyright allegations are substantially the
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`same as those in the Second Amended Complaint, except that Plaintiffs specifically
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`identified the NICE Ball Bearings Catalog 240 (“Catalog 240") as registered under
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`Copyright Registration No. A 882-029. All references to Catalog 240A were deleted
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`from the Third Amended Complaint. The Third Amended Complaint refers to other
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`“catalogs” and “bearing drawings” that Peer allegedly infringed, but fails to
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`specifically identify these catalogs and drawings and fails to allege that they were
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`registered with the United States Copyright Office.
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`Plaintiffs concede that they did not have registrations for any of the
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`catalogs or drawings that Peer allegedly infringed other than Catalog 240 at the
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`time they filed this action. However, Plaintiffs allege that they did register four
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`additional catalogs and that they provided Peer with notice of these registrations
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`over a year before the instant motion was filed. Specifically, Peer’s Interrogatory
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`Number 8 stated as follows:
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`Identify in detail all facts and conclusions upon which any Plaintiff
`believes Defendant has infringed a valid and enforceable copyright
`which has been properly registered and is currently owned by Plaintiffs.
`Please identify all copyright registrations and renewals which Plaintiffs
`believe cover works that Plaintiffs contend Defendant has infringed.
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`Plaintiffs supplemented their response to Interrogatory Number 8 on March
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`28, 2008, and provided the following information regarding their copyright
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`registrations:
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`1) Catalog 240 - Copyright Registration No. A 882-029 (RBC 977
`- RBC 1121);
`2) Catalog 240A - Copyright Registration effective September
`20, 2007 (RBC 1844 - RBC 2007);
`3) Catalog 240B - Copyright Registration effective December
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`Case 3:06-cv-01380-TLM Document 199 Filed 10/27/09 Page 5 of 11
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`12, 2007 (RBC 261 - RBC 301; RBC 2050 - RBC 2097);
`4) 1997 Catalog - Copyright Registration effective September
`17, 2007 (RBC 1781 - RBC 1843); and
`5) 1999 Catalog - Copyright Registration TX-6-594-961 (RBC
`1733 - RBC 1780).
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`II. Discussion
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`Peer seeks partial judgement on the pleadings as to Plaintiffs’ claim for
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`copyright infringement on the basis that certain works referred to in the Third
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`Amended Complaint were unregistered at the time that this action was filed.
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`In the Third Amended Complaint, Plaintiffs allege that Peer infringed their
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`registered copyright in Catalog 240, which Plaintiffs attach to the Complaint. The
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`Third Amended Complaint also refers to other “catalogs” and “bearing drawings”
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`that Peer allegedly infringed, but fails to specifically identify these catalogs and
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`drawings and fails to allege that they were registered. Plaintiffs concede that in
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`fact these works were not registered at the time that this action was filed, but
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`claim, at least with respect to four of the catalogs, that they have since obtained
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`registrations and that Peer was on sufficient notice of their intent to allege
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`copyright claims based upon infringement of these catalogs because they were
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`identified to Peer during discovery. 1
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`“The standard for granting a Rule 12(c) motion is identical to that of a Rule
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`12(b)(6) motion for failure to state a claim.” Patel v. Contemporary Classics of
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`Beverly Hills, 259 F.3d 123, 126 (2d Cir. 2001). “Under Federal Rule of Civil
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` The catalogs at issue are Catalog 240A, Catalog 240B, 1997 Catalog, and
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`1999 Catalog, which were identified in Plaintiffs’ supplemental Interrogatory
`Responses dated March 28, 2008.
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`Case 3:06-cv-01380-TLM Document 199 Filed 10/27/09 Page 6 of 11
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`Procedure 8(a)(2), a pleading must contain a ‘short and plain statement of the
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`claim showing that the pleader is entitled to relief.’” Ashcroft v. Iqbal, 129 S. Ct.
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`1937, 1949 (2009). While Rule 8 does not require detailed factual allegations, “[a]
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`pleading that offers labels and conclusions or a formulaic recitation of the
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`elements of a cause of action will not do. Nor does a complaint suffice if it
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`tenders ‘naked assertion[s]’ devoid of ‘further factual enhancement.’ To survive a
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`motion to dismiss, a complaint must contain sufficient factual matter, accepted as
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`true, to ‘state a claim to relief that is plausible on its face.’ A claim has facial
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`plausibility when the plaintiff pleads factual content that allows the court to draw
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`the reasonable inference that the defendant is liable for the misconduct alleged.”
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`Id. (internal citations omitted). Furthermore, when applying Rule 8(a) to copyright
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`infringement actions, certain facts must be alleged with specificity, including (1)
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`which specific works are the subject of the claim, (2) that the plaintiff owns the
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`copyrights in these works, (3) that the copyrights in question have been registered
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`in compliance with the Copyright Act, and (4) by what acts and during what time
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`the defendant infringed the copyright. DiMaggio v. Int’l Sports Ltd., No. 97 Civ.
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`7767, 1998 WL 549690, at *1 (S.D.N.Y. Aug. 31, 1998).
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`The Copyright Act provides that “no action for infringement of the copyright
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`in any United States work shall be instituted until preregistration or registration of
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`the copyright has been made in accordance with this title.” 17 U.S.C. § 411(a).
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`The Second Circuit has interpreted this provision to be jurisdictional, and
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`therefore held that district courts lack subject matter jurisdiction over
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`infringement claims arising from unregistered copyrights. See In re Literary
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`Case 3:06-cv-01380-TLM Document 199 Filed 10/27/09 Page 7 of 11
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`Works in Electronic Databases Copyright Litigation, 509 F.3d 116, 121-22 (2d Cir.
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`2007). This is the well-established law of this Circuit and of numerous others.
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`See id. (“Whether [section 411(a)] is jurisdictional is not up for debate in this
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`Circuit. On two recent occasions, we have squarely held that it is. We are far from
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`alone in this regard; there is widespread agreement among the circuits that
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`section 411(a) is jurisdictional. Given our own binding precedent, not to mention
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`the persuasive authority of our sister circuits, we again conclude that section
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`411(a)’s registration requirement limits a district court’s subject matter jurisdiction
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`to claims arising from registered copyrights only.”) (internal citations omitted).
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`Just as the Second Circuit declined to overrule the precedent of another panel of
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`this Circuit, this District Court declines to do so here. As stated by the Second
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`Circuit in Literary Works:
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`Under the copyrights laws, copyright protection . . . is entirely distinct
`from whether a copyright holder is permitted to institute an action in
`federal court. On that score, the legislative history of the Copyright Act
`and its amendments is crystal clear: Congress intended section 411(a)
`to prevent courts from hearing the claims of copyright holders who do
`not first file for registration. The House Report to the 1976 amendments
`to the Act, for example, notes that “The first sentence of section 411(a)
`restates the present statutory requirement that registration must be
`made before a suit for copyright infringement is instituted.” H.R. Rep.
`No. 94-1476 at 157 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5773. The
`Report goes on to note that “a copyright owner who has not registered
`his claim . . . cannot enforce his rights in the courts until he has made
`registration.” Id. The Senate, in its consideration of the 1988
`amendments to the Act, pointed out that “As a result of Section 411(a),
`compliance with copyright registration procedures is a statutory
`prerequisite to the right of an author or other copyright proprietor to
`seek any redress, whether by injunction, damages or both, for
`infringement of the work,” and that without registration, “judicial
`enforcement of the claim to copyright cannot be obtained.” S. Rep. No.
`100-352 at 13-14 (1988), reprinted in 1988 U.S.C.C.A.N. 3706, 3718-19;
`see also id. at 19, reprinted in 1988 U.S.C.C.A.N. at 3724 (“[C]opyright
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`Case 3:06-cv-01380-TLM Document 199 Filed 10/27/09 Page 8 of 11
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`claims in an unregistered work cannot be judicially enforced.”).
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`509 F.3d at 125 n.6. Although, as Plaintiffs point out, the Supreme Court has
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`granted certiorari in Reed Elsevier, v. Muchnick, 129 S.Ct. 1523 (2009) to address
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`whether Section 411(a) restricts the subject matter of federal courts over copyright
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`infringement actions, Literary Works remains binding law at this time and
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`therefore mandates the dismissal of Plaintiffs’ claims based upon unregistered
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`copyrights.
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`Plaintiffs also suggest that, even if the Court finds that it lacks jurisdiction
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`over its copyright claims for monetary damages based on unregistered copyrights,
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`the Court should enjoin Peer’s infringement of such copyrights. However, the
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`Second Circuit has “never held that a district court may enjoin the infringement of
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`unregistered copyrights so long as the underlying action arises from a registered
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`copyright held by the same party.” Literary Works, 509 F.3d at 123. The Second
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`Circuit in Literary Works further stated that “even if injunctive relief against
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`infringement of an unregistered copyright is available, that relief is properly
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`limited to situations . . . where a defendant has engaged in a pattern of
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`infringement of a plaintiff’s registered copyrights and can be expected to continue
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`to infringe new copyrighted material emanating in the future from the plaintiff.” Id.
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`(citing Olan Mills, Inc. v. Linn Photo Co., 23 F.3d 1345, 1349 (8th Cir. 1994); Pac.
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`and S. Co. v. Duncan, 744 F.2d 1490, 1499 (11th Cir. 1984)). In the present case, it
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`is not alleged that Peer engaged in a pattern of infringement of Plaintiffs’
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`registered copyrights. Therefore, the Court declines to grant the injunctive relief
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`requested by Plaintiffs.
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`Case 3:06-cv-01380-TLM Document 199 Filed 10/27/09 Page 9 of 11
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`Furthermore, even if the Court had jurisdiction over Plaintiffs’ claims based
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`on unregistered copyrights, these claims must still be dismissed because the
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`Third Amended Complaint fails to allege with specificity which works are the
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`subject of their claims. See DiMaggio, 1998 WL 549690 at *1-*2. Instead, the Third
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`Amended Complaint merely refers to other “catalogs” and “bearing drawings” that
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`Peer allegedly infringed without elaboration. Plaintiffs contend that Peer had
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`notice of the specific copyrights that they allege were infringed based upon their
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`supplemental answer to an interrogatory in March 2008 that provided registration
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`information for four other catalogs in addition to Catalog 240. However, Plaintiffs
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`provide no justification for their failure to amend their pleadings to include
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`allegations based upon these other catalogs. Notably, Plaintiffs’ Second Amended
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`Complaint specifically referenced Catalog 240A as having been infringed by Peer,
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`but Plaintiffs removed any reference to Catalog 240A in their Third Amended
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`Complaint. In these circumstances, Peer was entitled to assume that Plaintiffs
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`made a strategic decision to only pursue their copyright claim based on Catalog
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`240, and that Plaintiffs were not asserting claims based on other works.
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`Finally, Plaintiffs argue that they should be granted leave to amend their
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`Third Amended Complaint to include allegations based on the four catalogs at
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`issue. The determination of whether leave to amend should be granted is within
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`the discretion of the trial court, and a number of factors may be considered,
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`including undue delay, bad faith, previous amendments, and undue prejudice to
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`the opposing party. Forman v. Davis, 371 U.S. 178, 182 (1962). Here, the catalogs
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`that Plaintiffs seek leave to add to their Complaint were published in 1966, 1975,
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`Case 3:06-cv-01380-TLM Document 199 Filed 10/27/09 Page 10 of 11
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`1997 and 1999. Again, Plaintiffs provide no justification for their failure to seek
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`registrations for these catalogs until years or decades after they were published,
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`and indeed, until after they filed this action. Nor do they explain why they failed to
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`mention three of the catalogs in their pleadings despite amending their Complaint
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`on three occasions, or why they deleted any reference to Catalog 240A upon
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`amending their Complaint for the third time. Thus, the Court finds Plaintiffs’
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`belated attempt to amend their Complaint yet again to assert claims based upon
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`these catalogs, two years and eight months after Plaintiffs commenced this action,
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`to constitute undue delay. The Court further finds that Peer would be unduly
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`prejudiced by permitting amendment at this late stage of the litigation because
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`they have relied upon Plaintiffs’ pleadings to conduct extensive discovery,
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`develop a defense, and prepare their dispositive motions.
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`Moreover, courts in this Circuit have held that permitting leave to file an
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`amended complaint alleging newly registered copyrights that would relate back to
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`the commencement of the action is not appropriate where the plaintiff attempted
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`to correct the jurisdictional defect only after the three-year statute of limitations
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`governing copyright infringement claims had elapsed. See Country Road Music,
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`Inc. v. MP3.com, Inc., 279 F. Supp. 2d 325, 332-33 (S.D.N.Y. 2003). In this case,
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`Plaintiffs contend that Peer’s 2005 Catalog infringes their prior catalogs, and thus
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`Plaintiffs’ copyright infringement claims based upon the four catalogs at issue
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`have now expired. See id. (dismissing copyright claims based upon belatedly
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`registered copyrights where plaintiffs offered no explanation for their undue delay
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`in waiting until after defendant moved for summary judgment to seek leave to
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`Case 3:06-cv-01380-TLM Document 199 Filed 10/27/09 Page 11 of 11
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`amend, thereby prejudicing defendant in preparation for upcoming trial).
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`Accordingly, Plaintiffs’ copyright claims based upon all works that were
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`unregistered at the time they filed suit are dismissed.
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`III. Conclusion
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`Based on the above reasoning, the Defendant’s motion for partial judgment
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`on the pleadings is GRANTED. Plaintiffs’ copyright claim is dismissed to the
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`extent it relies upon allegations concerning works that were not registered with
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`the United States Copyright Office at the time that they filed this action.
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`IT IS SO ORDERED.
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` /s/
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`Vanessa L. Bryant
`United States District Judge
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`Dated at Hartford, Connecticut: October 27, 2009.
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