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

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