`E-FILED
`
` Wednesday, 30 January, 2013 11:44:04 AM
` Clerk, U.S. District Court, ILCD
`UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF ILLINOIS
`SPRINGFIELD DIVISION
`
`12-cv-3099
`
`
`LEAD IT COPRORATION, an Illinois )
`Corporation,
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`Plaintiff,
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`v.
`
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`REBECCA TALLAPALLI and
`
`)
`ELITE IT SOLUTIONS INC., an
`)
`Illinois Corporation,
`
`
`)
`
`
`
`
`
`
`
`)
`
`Defendants.
`
`
`
`)
`
`
`
`SUE E. MYERSCOUGH, U.S. District Judge:
`
`OPINION
`
`
`
`This matter is before the Court on Defendants’ Motion to
`
`Dismiss Plaintiff’s claim for copyright infringement and Plaintiff’s
`
`prayers for statutory damages and attorney’s fees (d/e 8).
`
`Defendants’ Motion to Dismiss Plaintiff’s infringement claim is
`
`DENIED because Plaintiff received a decision on the application for
`
`copyright registration from the United States Copyright Office which
`
`renders it unnecessary to address Defendants’ argument in support
`
`of this Motion. Defendants’ Motion to Dismiss Plaintiff’s prayers for
`
`statutory damages and attorney’s fees, construed as a Motion to
`
`
`
`3:12-cv-03099-SEM-BGC # 12 Page 2 of 13
`
`
`Strike, is GRANTED because Plaintiff’s statements in the Complaint
`
`preclude an award of such damages.
`
`I. BACKGROUND
`
`
`
`In October 2006, Moon Technologies published a text created
`
`by employee, Rampasad Talluri, on Moon Technologies’ website and
`
`affixed the © symbol as a copyright notice. Compl. ¶ 14. In
`
`December 2009, Plaintiff merged with Moon Technologies and
`
`acquired rights to the text. Compl. ¶ 15.
`
`
`
`On or around January 1, 2010 Plaintiff began publishing the
`
`text under the career tab of Plaintiff’s website and attached the ©
`
`symbol. Comp. ¶¶ 16–17. The text appears as follows:
`
`At Lead IT, you will work with a team of professionals
`committed to the highest standards of client service.
`
`Our employees, like our clients, [sic] are the corner stone
`of our business.
`
`Our own employees’ [sic] commit to managing their own
`career by seeking opportunities, taking responsibility for
`superior client service, and continuously building critical
`professional skills to enhance their development.
`
`We strongly value the distinctly different ideas,
`backgrounds and experiences that our professional bring
`to their positions.
`
`
`
`
`
`2 of 12
`
`
`
`
`
`3:12-cv-03099-SEM-BGC # 12 Page 3 of 13
`
`
`Why Join Lead IT? [sic]
`
`We strive to offer the opportunities you need to achieve
`your highest level of professional performance and to
`develop and refine the skills you will need throughout
`your career.
`
`Our compensation package is among the best in the
`industry and is aimed at not only attracting but also
`retaining the best talent.
`
`If you believe that your needs and ours coincide, we
`might have a win-win situation in the making (always the
`best kind).
`
`Please submit your resume in confidence to:
`hr@leaditgroup.com.
`
`We are an Equal Employment Opportunity & Affirmative
`Action Employer, [sic] and our employees come from a
`wide range of cultural and geographic backgrounds.
`
`
`Compl. ¶ 20.
`
`
`
`Plaintiff states that on or around February 29, 2012,
`
`Defendants reproduced this text verbatim on the career portion of
`
`their website, except for replacing references to Plaintiff’s brand
`
`with Defendants’ own information. Plaintiff avers that Defendants
`
`published the text without permission. Compl. ¶¶ 3, 18, 20.
`
`
`
`On March 29, 2012, Plaintiff submitted an application to the
`
`United States Copyright Office (“Copyright Office”) seeking copyright
`
`
`
`
`3 of 12
`
`
`
`
`
`3:12-cv-03099-SEM-BGC # 12 Page 4 of 13
`
`
`registration of the text. Compl. ¶ 25. Plaintiff’s application
`
`consisted of a completed electronic application form, a deposit of
`
`the text, and a payment of the filing fee. Compl. ¶ 25. Plaintiff then
`
`filed the Complaint on March 30, 2012 alleging copyright
`
`infringement by Defendants. Compl. ¶ 1. Plaintiff seeks statutory
`
`damages, actual damages, attorney’s fees, an injunction,
`
`impoundment and destruction of Defendants’ hardcopies of the
`
`infringing text, and any remedies deemed necessary. Compl. ¶ 30.
`
`
`
`On May 11, 2012, Defendants filed this Motion (d/e 8),
`
`arguing Plaintiff had not satisfied the registration requirement of 17
`
`U.S.C. § 411(a) before commencing this suit. Defs.’ Mem. at 2–11.
`
`Section 411(a) provides that:
`
`Except for an action brought for a violation of the rights
`of the author under section 106A(a), and subject to the
`provisions of subsection (b), 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. In any case, however, where the deposit,
`application, and fee required for registration have been
`delivered to the Copyright Office in proper form and
`registration has been refused, the applicant is entitled to
`institute a civil action for infringement if notice thereof,
`with a copy of the complaint, is served on the Register of
`Copyrights. The Register may, at his or her option,
`
`
`
`
`4 of 12
`
`
`
`
`
`3:12-cv-03099-SEM-BGC # 12 Page 5 of 13
`
`
`become a party to the action with respect to the issue of
`registrability of the copyright claim by entering an
`appearance within sixty days after such service, but the
`Register's failure to become a party shall not deprive the
`court of jurisdiction to determine that issue.
`
`17 U.S.C. § 411(a).
`
`
`
`Defendants also assert in the Motion that 17 U.S.C. § 412 bars
`
`Plaintiff’s prayers for statutory damages and attorney’s fees. Defs.’
`
`Mem. at 11–14. Section 412 states that:
`
`[N]o award of statutory damages or of attorney's fees, as
`provided by sections 504 and 505, shall be made for--(1)
`any infringement of copyright in an unpublished work
`commenced before the effective date of its registration; or
`(2) any infringement of copyright commenced after first
`publication of the work and before the effective date of its
`registration, unless such registration is made within
`three months after the first publication of the work.
`
`
`17 U.S.C. § 412.
`
`After Plaintiff filed the Response to Defendants’ Motion (d/e
`
`
`
`10), the Copyright Office issued Plaintiff a certificate of copyright
`
`registration. See d/e 11 at ¶ 3. The certificate lists the date of
`
`registration as March 29, 2010. That is also the date Plaintiff
`
`submitted the copyright registration application. Id.
`
`
`
`
`
`
`Once Plaintiff received the certificate, Plaintiff filed a motion
`
`5 of 12
`
`
`
`
`
`3:12-cv-03099-SEM-BGC # 12 Page 6 of 13
`
`
`for leave to supplement the Response to Defendants’ Motion or,
`
`alternatively, to amend the Complaint to include the certificate. See
`
`d/e 11 at ¶¶ 4-5. Defendants did not file a response. On July 2,
`
`2012, Magistrate Judge Byron G. Cudmore granted Plaintiff’s
`
`Motion to Supplement the Response with a copy of the certificate.
`
`Defendants’ Motion to Dismiss Plaintiff’s claim for copyright
`
`infringement and the Motion to Dismiss Plaintiff’s request for
`
`statutory damages and attorney’s fees construed as a Motion to
`
`Strike, are now before the Court.
`
`II. JURISDICTION AND VENUE
`
`
`
`Pursuant to 28 U.S.C. § 1338(a), “the district courts shall have
`
`original jurisdiction of any civil action arising under any Act of
`
`Congress relating to . . . copyrights and trademarks.” Accordingly,
`
`this Court has subject matter jurisdiction over the instant suit
`
`because Plaintiff asserts claims arising under the United States
`
`Copyright Act of 1976, 17 U.S.C. § 101 et seq. (“Copyright Act”).
`
`The Court also has subject matter jurisdiction because the claim
`
`arises under the laws of the United States. See 28 U.S.C. § 1331.
`
`
`
`
`
`
`Further, venue is appropriate because Springfield, Illinois is
`
`6 of 12
`
`
`
`
`
`3:12-cv-03099-SEM-BGC # 12 Page 7 of 13
`
`
`the principal place of business for Plaintiff and Defendants. See 28
`
`U.S.C. §§ 1400(a), 1391(b)–(c).
`
`III. LEGAL STANDARD
`
`
`
`A motion under Rule 12(b)(6) challenges the sufficiency of the
`
`complaint. Christensen v. Cnty. of Boone, 483 F.3d 454, 458 (7th
`
`Cir. 2007). Under the federal notice pleading standards, “a
`
`plaintiff's complaint need only provide a short and plain statement
`
`of the claim showing that the pleader is entitled to relief, sufficient
`
`to provide the defendant with fair notice of the claim and its basis.”
`
`Tamayo v. Blagojevich, 526 F.3d 1074, 1081 (7th Cir. 2008)
`
`(internal quotations omitted). When considering a motion to
`
`dismiss under Rule 12(b)(6), the complaint is construed in the light
`
`most favorable to the plaintiff; all well-pleaded factual allegations
`
`are accepted as true; and all reasonable inferences are construed in
`
`the plaintiff's favor. Id. However, a complaint must allege “enough
`
`facts to state a claim to relief that is plausible on its face” to survive
`
`a motion to dismiss. Bell Atlantic Corp. v. Twombly, 550 U.S. 544,
`
`547, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). For a claim to have
`
`facial plausibility, a plaintiff must plead “factual content that allows
`
`
`
`
`7 of 12
`
`
`
`
`
`3:12-cv-03099-SEM-BGC # 12 Page 8 of 13
`
`
`the court to draw the reasonable inference that the defendant is
`
`liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662,
`
`129 S.Ct. 1937, 1949, 173 L.Ed.2d 868 (2009). “[T]hreadbare
`
`recitals of the elements of a cause of action, supported by mere
`
`conclusory statements, do not suffice.” Id. Further, the amount of
`
`factual allegations required to state a plausible claim for relief
`
`depends on the complexity of the legal theory alleged. Limestone
`
`Dev. Corp. v. Vill. of Lemont, 520 F.3d 797, 803 (7th Cir. 2008).
`
`IV. ANALYSIS
`
`To state a claim for copyright infringement, a plaintiff must
`
`claim (1) ownership of a valid copyright in a work, and (2) the
`
`copying of elements of the work that are original. Feist Publ'ns, Inc.
`
`v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113
`
`L.Ed.2d 358 (1991). Additionally, § 411(a) of the Copyright Act
`
`“requires copyright holders to register their works before suing for
`
`copyright infringement.” Reed Elsevier, Inc. v. Muchnick, –––U.S. ––
`
`––, ––––, 130 S.Ct. 1237, 1241, 176 L.Ed.2d 18 (2010) (citing 17
`
`U.S.C. § 411(a)).
`
`The meaning of “registration” under § 411(a), however, has led
`
`
`
`
`8 of 12
`
`
`
`
`
`3:12-cv-03099-SEM-BGC # 12 Page 9 of 13
`
`
`to a circuit split. The Tenth and Eleventh Circuits find § 411(a)’s
`
`plain meaning requires the Copyright Office to decide whether to
`
`issue or deny a certificate of registration before a plaintiff can
`
`commence an action for copyright infringement. See e.g., La
`
`Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195,
`
`1207 (10th Cir. 2005); M.G.B. Homes, Inc. v. Ameron Homes, Inc.,
`
`903 F.2d 1486, 1488-89 (11th Cir. 1990). Courts call this the
`
`“Registration Approach.”
`
`Alternatively, under the “Application Approach,” a plaintiff can
`
`bring a claim for copyright infringement immediately after
`
`submitting the appropriate application materials to the Copyright
`
`Office under the “Application Approach.” See e.g., Cosmetic Ideas,
`
`Inc. v. IAC/InteractiveCorp, 606 F.3d 612, 621 (9th Cir. 2010);
`
`Apple Barrel Productions, Inc. v. Beard, 730 F.2d 384, 386-87 (5th
`
`Cir. 1984). The Seventh Circuit, however, has not directly
`
`addressed § 411(a)’s registration requirement.
`
`9 of 12
`
`
`
`
`
`
`
`
`
`
`3:12-cv-03099-SEM-BGC # 12 Page 10 of 13
`
`
`A. Plaintiff Received a Certificate of Registration Which
`Renders it Unnecessary to Determine Whether the
`Application or Registration Approach Should Apply in
`Cases for Copyright Infringement
`
`Defendants urge the Court to adopt the Registration
`
`Approach because § 411(a)’s plain language requires actual
`
`registration of the copyright, or the refusal of such by the Copyright
`
`Office, before a plaintiff may file a copyright infringement claim.
`
`
`
`The registration issue, however, need not be decided here
`
`because Plaintiff received a certificate of registration back-dated
`
`March 29, 2012. (d/e 11). Accordingly, Plaintiff may now state a
`
`claim for copyright infringement regardless of whether the
`
`Application or Registration Approach applies.
`
`
`
`Moreover, Plaintiff need not refile the Complaint for the sake of
`
`commencing this action after receiving a decision from the
`
`Copyright Office. See Woollen, Molzan and Partners, Inc. v.
`
`Indianapolis-Marion Cnty., 2006 WL 2135819, at *3 (S.D. Ind. Jul.
`
`28, 2006) (declining to require refiling of a copyright infringement
`
`claim after the Copyright Office decision rendered it unnecessary to
`
`address the registration issue). Instead, the case may go forward
`
`
`
`
`10 of 12
`
`
`
`
`
`3:12-cv-03099-SEM-BGC # 12 Page 11 of 13
`
`
`focusing on the substantive merits of the copyright infringement
`
`claim. See Grumhaus v. Comerica Secs., Inc., 223 F.3d 648, 652
`
`(7th Cir. 2000) (discussing that notice pleading focuses on the
`
`merits rather than technical aspects of pleading).
`
`B. Section 412(2) Precludes Awards of Statutory Damages or
`Attorney’s Fees in this Case
`
`
`
`Defendants also move to dismiss Plaintiff’s prayers for
`
`statutory damages and attorney’s fees because 17 U.S.C. § 412
`
`precludes such awards in this case. Defendants’ argument is
`
`construed as a Motion to Strike immaterial and impertinent matter
`
`from the complaint. Fed.R.Civ.P. 12(f).
`
`
`
`
`
`Section 504 of the Copyright Act allows statutory damages,
`
`and section 505 gives courts discretion to award reasonable
`
`attorney’s fees. 17 U.S.C. §§ 504-05. However, section 412
`
`precludes such awards if “any infringement of copyright
`
`commenced after first publication of the work and before the
`
`effective date of its registration . . . .” 17 U.S.C. § 412(2).
`
`
`
`Here, Moon Technologies published the disputed text as early
`
`as October 2006. Plaintiff acquired Moon Technologies in
`
`
`
`
`11 of 12
`
`
`
`
`
`3:12-cv-03099-SEM-BGC # 12 Page 12 of 13
`
`
`December 2009, and published the same text on Plaintiff’s website
`
`on or around January 1, 2010. Plaintiff avers that Defendants
`
`published the same material on or around February 29, 2012.
`
`Plaintiff received the certificate of registration dated March 29,
`
`2012, and commenced this action one day later.
`
`
`
`Based on this chronology, Plaintiff alleges infringement
`
`commenced after first publication, but before the effective date of
`
`registration. See 17 U.S.C. § 412(2). This precludes awards of
`
`statutory damages or attorney’s fees under sections 504 and 505.
`
`Therefore, Plaintiff’s prayers for such relief are stricken.
`
`V. CONCLUSION
`
`
`
`Defendants’ Motion to Dismiss Plaintiff’s claim for copyright
`
`infringement is DENIED because Plaintiff received a certificate of
`
`registration from the Copyright Office that renders it unnecessary to
`
`address Defendants’ arguments in this Motion. Defendants’ Motion
`
`to Strike Plaintiff’s prayers for statutory damages and attorney’s
`
`fees is GRANTED because section 412 of the Copyright Act
`
`precludes awarding such damages in this case.
`
`IT IS SO ORDERED.
`
`
`
`
`12 of 12
`
`
`
`
`
`3:12-cv-03099-SEM-BGC # 12 Page 13 of 13
`
`
`ENTER: January 29, 2013
`
`FOR THE COURT:
`
`
`
`
`
`
`
`
`
`
`
`
`
` s/ Sue E. Myerscough
`
` SUE E. MYERSCOUGH
`
`UNITED STATES DISTRICT JUDGE
`
`
`
`13 of 12