Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 1 of 17
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
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`MAYS & ASSOCIATES INC.
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`Plaintiff,
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`Civil Case No. RDB 05-437
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`ROBIN N. EULER
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`and
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`DAVID R. EULER,
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`Defendants.
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`MEMORANDUM OPINION
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`Pending before this Court is the Motion to Dismiss of the Defendants Robin and David Euler,
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`filed pursuant to Rule 12(b)(1) of the Federal Rules of Civil Procedure, on the basis of lack of subject
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`matter jurisdiction, and pursuant to Rule 12(b)(6), for failure to state a claim upon which relief may be
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`granted. Also pending is Plaintiff Mays & Associates’ Motion for Preliminary Injunction and Motion to
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`Amend its Complaint. This Court must first address Defendants’ Motion to Dismiss as it challenges
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`this Court’s jurisdiction over this action. Plaintiff alleges that this Court has jurisdiction pursuant to 28
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`U.S.C. § 1331,1 based on claims brought under the Copyright Act, 17 U.S.C. §§ 101 et seq. and the
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`Lanham Act, 15 U.S.C. §§ 1051 et seq., and pursuant to 28 U.S.C. § 1338.2 In addition, Plaintiff’s
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`1
`Pursuant to 28 U.S.C. § 1331, a United States District Court has original jurisdiction over
`all civil actions arising under the Constitution, laws, or treaties of the United States.
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`2
`Pursuant to 28 U.S.C. § 1338, a United States District Court has “original jurisdiction of
`any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights
`and trademarks.” 28 U.S.C. § 1338(a). In addition, a United States District Court has “original
`jurisdiction of any civil action asserting a claim of unfair competition when joined with a substantial and
`related claim under the copyright, patent, plant variety protection or trademark laws.” 28 U.S.C. §
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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 2 of 17
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`Complaint contains various state law claims, including unfair competition, misappropriation of trade
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`secrets, conversion, tortious interference with prospective advantage, tortious interference with
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`contractual relations, and breach of fiduciary duty.3 Defendants’ Motion to Dismiss has been fully
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`briefed and, on May 6, 2005, this Court conducted a hearing on that motion. For reasons of efficiency,
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`this Court also addressed Plaintiff’s Motion for Preliminary Injunction in the event that it was
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`determined that there was jurisdiction over this action. For the reasons stated below, Defendants’
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`Motion to Dismiss pursuant to Rule 12(b)(1) and Rule 12(b)(6) is GRANTED and this case shall be
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`DISMISSED.4
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`BACKGROUND
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` This Court reviews the facts of this case in the light most favorable to the Plaintiff. Mays &
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`Associates (“Mays”) is a Maryland based, full service web and print design, marketing and
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`communications company developing high impact creative strategies in print, television, radio,
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`interactive, multi-media, and website design. It is a small company consisting of four full time
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`employees in addition to approximately six strategic partners who work on certain client projects with
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`the company. Robin Euler, one of the Defendants in this case, worked as a graphic designer at Mays
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`until January 5, 2005. While the parties are in dispute over exactly what role Ms. Euler played while
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`employed at Mays, this dispute does not impact the questions before the Court. It is undisputed that
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`1338(b).
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`3
` Although not specifically cited in Plaintiff’s Complaint, pursuant to 28 U.S.C. § 1367, a
`federal court may exercise supplemental jurisdiction over claims that otherwise would not be within its
`jurisdiction when the claims arise from the same set of facts as those claims that are properly before the
`court.
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`4
`As a result, Plaintiff’s Motion for Preliminary Injunction and Motion to Amend its
`Complaint are MOOT.
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`2
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`

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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 3 of 17
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`Ms. Euler was not asked to, nor did she, sign a non-compete agreement or a trade secret agreement
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`with Mays during the entire term of her employment.
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`After terminating her employment with Mays on January 5, 2005, Ms. Euler established Red
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`Robin Design, a Carroll County, Maryland graphic and web design boutique that specializes in creating
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`logos, websites, and marketing materials for small to medium-size businesses and individuals. On the
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`Reb Robin Design website (www.redrobindesign.com), Ms. Euler has a section showing her portfolio
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`of work, including website design, logos, print ads, and large format graphics, some of which were
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`projects completed for Mays’ clients while Ms. Euler was an employee at Mays.5 For these works,
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`Ms. Euler has posted the following disclaimer: “Disclaimer: The project shown here was designed and
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`executed by owner, Robin N. Euler, while on staff as Senior Graphic & Web Designer for Mays &
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`Associates, Inc. This image is not intended for sale or distribution, and we do not take the credit for
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`handling this particular account through Red Robin Design. It is only intended to be used as an example
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`of Robin N. Euler's creative work.”
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`On Friday, February 11, 2005, Mays submitted 30 copyright applications to the United States
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`Copyright Office seeking to register certain works created for clients of Mays during Robin Euler’s
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`employment with Mays. On Monday, February 14, 2005, Mays filed its Complaint in this Court and a
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`Motion for Preliminary Injunction. The Complaint alleges the following Counts: Count I - Violation of
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`Copyright Act (17 U.S.C. §§ 101, et seq.); Count II - Unfair Competition in Violation of the Lanham
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`Act (15 U.S.C. § 1125), Count III - Unfair Competition (Common Law); Count IV -
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`5
`As noted above, Defendants contend that Ms. Euler was the exclusive graphic designer
`for Mays, but Plaintiff contends that others in the organization also contributed to the creative design
`process as well as the other aspects necessary to service the needs of Mays’ clients. This dispute as to
`Ms. Euler’s job responsibilities is immaterial to the issues currently before the Court.
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`3
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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 4 of 17
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`Misappropriation of Trade Secrets under the Maryland Trade Secrets Act; Count V - Conversion,
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`Count VI - Tortious Interference with Prospective Advantage, Count VII - Tortious Interference with
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`Contractual Relations; and Count VIII - Breach of Fiduciary Duty.
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`As of the date of the hearing, May 6, 2005, Plaintiff had received four copyright registrations
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`from the United States Copyright Office for certain audio visual works from the thirty applications
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`submitted on February 11, 2005. Subsequent to that hearing, Plaintiff moved for leave to file a
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`supplemental motion noting some additional certificates of registration having been issued.6 There are
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`remaining copyright applications still pending with the Copyright Office. Regardless of the issuance of
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`any certificates or the pendency of any applications, at the hearing before this Court the parties agreed
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`that only two works for which the Plaintiff has applied for copyrights remain at issue in this matter - the
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`website designed for the Young School and a print advertisement created for Vectorworks.7 All of
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`Plaintiff’s claims relate to these two works. It is undisputed that copyright applications for these works
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`have been filed, but the Copyright Office has not issued certificates of registration or denied same with
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`respect to these two works.
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`STANDARD OF REVIEW
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`The burden is on the plaintiff to prove that subject matter jurisdiction properly exists in the
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`6
`While this Court denied this supplemental motion, that disposition had no effect upon this
`Court’s ruling on the jurisdictional question.
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`7
`Defendants have highlighted that the Young School website indicates that the Young
`School, not Mays & Associates, holds a copyright for the work. Plaintiff contends that it has rightfully
`applied for a copyright application for this website because it is applying for copyright protection for the
`underlying computer source code and not the visual images evident from viewing the Young School
`website, which is copyrighted to the Young School. However, as highlighted by the Defendants, Mays’
`copyright application states that the “nature of authorship” sought is for the “text and images” on the
`Young School website. (Compl. Ex. 7.) The Vectorworks print advertisement does not appear to bear a
`copyright notice indicating that Vectorworks owns a copyright for the ad. Mays’ copyright application
`states that the “nature of authorship” sought is for the “text and graphics” on the Vectorworks10 print.
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`4
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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 5 of 17
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`federal court. See Evans v. B.F. Perkins Co., a Div. of Standex Int’l Corp., 166 F.3d 642, 647
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`(4th Cir. 1999). In a 12(b)(1) motion, the court “may consider evidence outside the pleadings” to help
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`determine whether it has jurisdiction over the case before it. Richmond v. Fredericksburg &
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`Potomac R.R. Co. v. U.S., 945 F.2d 765, 768 (4th Cir. 1991). The district court should grant the
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`Rule 12(b)(1) motion to dismiss "only if the material jurisdictional facts are not in dispute and the
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`moving party is entitled to prevail as a matter of law." Evans, 166 F.3d at 647 (quoting Richmond,
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`945 F.2d at 768).
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`A Rule 12(b)(6) motion to dismiss should be granted only if, after accepting the plaintiff’s well-
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`pleaded allegations as true, it appears certain that the plaintiff can prove no set of facts in support of his
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`claim entitling him to relief. Marketing Prods. Mgmt., LLC v. Healthandbeautydirect.com, Inc.,
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`333 F. Supp. 2d 418, 420 (D. Md. 2004); (quoting Edwards v. City of Goldsboro, 178 F.3d 231,
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`244 (4th Cir. 1999)). In reviewing the complaint, the court accepts all well-pled allegations of the
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`complaint as true and construes the facts and reasonable inferences derived therefrom in the light most
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`favorable to the plaintiff. Ibarra v. United States, 120 F.3d 472, 473 (4th Cir. 1997); Mylan Labs.,
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`Inc. v. Matkari, 7 F.3d 1130, 1134 (4th Cir. 1993).
`DISCUSSION
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`As noted above, Plaintiff alleges that this Court has jurisdiction pursuant to 28 U.S.C. § 1331,
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`based on claims brought under the Copyright Act, 17 U.S.C. §§ 101 et seq., and the Lanham Act, 15
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`U.S.C. §§ 1051 et seq., and pursuant to 28 U.S.C. § 1338.8 Plaintiff alleges that Defendants violated
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`the Copyright Act by using certain graphic works on the Red Robin Design website that belong to
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`8
` In addition, Plaintiff alleges various state law claims, which include unfair competition,
`misappropriation of trade secrets, conversion, tortious interference with prospective advantage, tortious
`interference with contractual relations, and breach of fiduciary duty.
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`5
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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 6 of 17
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`Mays without its authorization. Plaintiff also alleges that Defendants violated the Lanham Act because
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`of Red Robin Design’s use of these images have caused, or are likely to cause, confusion, mistake or to
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`deceive others in the marketplace as to the origin, sponsorship, or approval of the services or
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`commercial activities being offered by the Defendants. Defendants argue in their Motion to Dismiss that
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`this Court lacks subject matter jurisdiction over Plaintiff’s Copyright Act claim because Plaintiff has
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`merely applied for a copyright, on the eve of filing this suit, but has not actually received a registered
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`copyright for either of the two works that Defendants are allegedly currently infringing. Defendants
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`further claim that Plaintiff’s Lanham Act claim cannot be maintained because it is preempted by
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`copyright law and does not state a claim upon which relief can be granted. The Court will address each
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`of these assertions in turn.
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`1.
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`Plaintiff’s Copyright Act Claim Pursuant to 17 U.S.C. § 411(a) (Count I)
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`It is axiomatic that copyright registration is a jurisdictional prerequisite to bringing an action for
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`infringement under the Copyright Act. See 17 U.S.C. §§ 101 et seq.; Trandes Corp. v. Guy F.
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`Atkinson Co., 996 F.2d 655, 658 (4th Cir. 1993); Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283
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`(4th Cir. 2003). In both of these cases the Fourth Circuit noted the precise language of the Copyright
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`Act, which provides:
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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 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 an 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, 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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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 7 of 17
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` 17 U.S.C. § 411(a) (emphasis added). In this action, the United States Copyright Office has not
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`issued registrations for the two copyrights currently at issue (i.e. the Young School website or
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`Vectorworks print ad), nor has it refused registration.
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`The precise issue posed in this case is defining when a work is actually registered under
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`copyright law. Defendants contend that the Plaintiff’s last minute copyright applications are insufficient
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`to confer federal subject matter jurisdiction because an actual copyright registration, issued by the
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`United States Copyright Office, is required to provide jurisdiction under the Copyright Act. Plaintiff
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`contends that a copyright application is sufficient and requiring registration to confer jurisdiction under
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`the Copyright Act would harm an applicant’s ability to protect its intellectual property rights.
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`The United States District Court for the Middle District of North Carolina recently addressed
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`this same issue in Iconbazaar, L.L.C. v. America Online, Inc., 308 F. Supp. 2d 630 (M.D.N.C.
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`2004). The court in Iconbazaar adopted the position that filing a copyright application meets the
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`registration requirement in 17 U.S.C. § 411(a) and, therefore, subject matter jurisdiction existed for the
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`plaintiff’s copyright claim. See id. at 634. In Iconbazaar, the defendant moved to dismiss the
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`plaintiff’s copyright claim based on lack of subject matter jurisdiction asserting that the plaintiff had not
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`registered the computer icon file at issue. See id. at 632. The court aptly noted that “[t]he dispute boils
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`down to the issue of when a work is considered ‘registered’ for purposes of copyright law.” Id. While
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`the plaintiff, Iconbazaar, contended that registration was complete upon sending an application to the
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`United States Copyright Office, the defendant, AOL, contended that registration was not complete until
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`a party has received, or has been denied, a registration certificate. Id.
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`In a very thorough review of case authority, the court in Iconbazaar noted that there is a split of
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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 8 of 17
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`authority on when a copyright is registered for purposes of 17 U.S.C. § 411(a)9 and that the Fourth
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`Circuit has not directly addressed this issue. See id. at 633. The North Carolina district court noted
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`the opinion of this Court in Berlyn, Inc. v. The Gazette Newspapers, Inc., 157 F. Supp. 2d 609 (D.
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`Md. 2001) and that of the United States District Court for the Eastern District of Virginia in Secure
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`Servs. Tech., Inc. v. Time & Space Processing, Inc., 722 F. Supp. 1354 (E.D. Va. 1989)10 as
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`examples of district courts within the Fourth Circuit that have found registration upon application for a
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`copyright. This Court, however, respectfully disagrees with the North Carolina district court in its
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`apparent conclusion that this Court’s opinion in the Berlyn case supports the registration upon
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`application theory.
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`On several occasions this Court has approached the precise question posed in this case. In
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`Berlyn, Inc. v. The Gazette Newspapers, Inc., 157 F. Supp. 2d 609 (D. Md. 2001), Lowery
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`Reports, Inc. v. Legg Mason, Inc., 271 F. Supp. 2d 737 (D. Md. 2003), and Glynn Interactive,
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`9
`The court noted a number of jurisdictions that have found that a copyright is registered
`upon filing a completed application with the United States Copyright Office. See e.g., Well-Made Toy
`Mfg. Corp. v. Goffa Intern. Corp. 210 F. Supp. 2d 147, 157 (E.D.N.Y. 2002); Int'l Kitchen Exhaust
`Cleaning Ass'n v. Power Washers of N. Am., 81 F. Supp. 2d 70 (D.D.C. 2000); Havens v. Time
`Warner, Inc., 896 F. Supp. 141, 142-43 (S.D.N.Y. 1995); Tabra Inc. v. Treasures de Paradise
`Designs Inc., 20 U.S.P.Q.2d 1313, 1318 (N.D. Cal. 1992); Apple Barrel Prods., Inc. v. Beard, 730
`F.2d 384, 387-87 (5th Cir. 1984) (citing Nimmer on Copyright). The court also noted that a number of
`jurisdictions require a plaintiff to show receipt, or denial, of a copyright registration certificate before
`bringing suit. See e.g., Goebel v. Manis, 39 F. Supp. 2d 1318, 1320 (D. Kan. 1999); Miller v. CP
`Chems., Inc., 808 F. Supp. 1238, 1241 (D.S.C. 1992); Demetriades v. Kaufmann, 680 F. Supp. 658, 661
`(S.D.N.Y. 1988). See also, M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 n.4 (11th
`Cir. 1990) (discussing the requirement of "registration" and including a footnote citing, among others,
`several cases requiring registration certificates).
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`10
`Both Secure Servs. Tech., Inc. and Iconbazaar cite Eltra Corp. v. Ringer, 579 F.2d
`294 (4th Cir. 1978) to support that no registration finding by the United States Copyright Office is needed
`prior to filing suit in federal court. However, Eltra was addressing the situation of the United States
`Copyright Office rejecting an application for registration. See Eltra Corp., 579 F.2d at 269 n.4. Section
`411(a), as outlined above, specifically provides procedures for cases in which the United States Copyright
`Office has rejected an application for registration, which is not the case in this instant matter.
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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 9 of 17
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`Inc. v. iTelehealth, Inc., 2004 WL 439236 (D. Md. 2004) (unpublished) this Court has declined to
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`specifically uphold the registration upon application approach ratified by the North Carolina district
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`court in Iconbazaar.
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`In Berlyn, this Court dismissed the plaintiff’s Copyright Act claim because the court lacked
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`subject matter jurisdiction over it. See Berlyn, Inc., 157 F. Supp. 2d at 623. This Court noted that
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`courts have construed the statutory language of 17 U.S.C. § 411(a) to require copyright registration as
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`a jurisdictional prerequisite to bringing an action under the Copyright Act. See id. (citing CACI
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`International, Inc. v. Pentagen Techs. Int'l, Ltd., 70 F.3d 111, 1995 WL 679952, at *3 (4th Cir.
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`1995) (unpublished opinion); Araya v. Latino Publ'g, Inc., 2001 WL 436155, at *2 (D. Md. 2001);
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`Brewer-Giorgio v. Producers Video, Inc., 216 F.3d 1281, 1285 (11th Cir. 2000); Trandes Corp. v.
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`Guy F. Atkinson Co., 996 F.2d 655, 658 (4th Cir. 1993)). However, in contrast to the instant case,
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`the plaintiff had not even applied for a copyright for the works at issue, as was noted by the Court when
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`it dismissed the Copyright Act claim. Therefore, Berlyn did not reach the issue currently before this
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`Court. While dicta in Berlyn may have suggested a registration upon application approach, two
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`subsequent opinions of this Court have declined to adopt that principle.
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` Lowery Reports, Inc. v. Legg Mason, Inc., 271 F. Supp. 2d 737 (D. Md. 2003) is
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`instructive, but distinguishable from the case sub judice because the plaintiff sought relief under the
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`Copyright Act only for its registered copyrights and presented certificates of copyright registration for
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`the works at issue as proof of ownership. Id. at 744. Similarly, in Glynn Interactive, Inc. v.
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`iTelehealth, Inc., 2004 WL 439236 (D. Md. 2004) the plaintiff had apparently applied for a
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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 10 of 17
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`copyright, but had not presented to the court a certificate of copyright registration. See id. at *4.11
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`This Court noted that “[w]hile some courts have held that submission of registration materials suffices to
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`maintain a copyright infringement claim, others require either the issuance of a registration or an official
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`refusal to do so.” Id.
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`As noted by the North Carolina district court in the Inconbazaar case, the goal of statutory
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`interpretation is always to ascertain and implement the intent of Congress. Scott v. U.S., 328 F.3d
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`132, 138 (4th Cir. 2003). “The first step of this process is to determine whether the statutory language
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`has a plain and unambiguous meaning. If the statute is unambiguous and if the statutory scheme is
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`coherent and consistent, our inquiry ends there.” Id. at 139; see also U.S. v. Akinkoye, 185 F.3d
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`192, 200 (4th Cir. 1999) (stating that only when the statute is ambiguous should a court look beyond
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`the language of the statute); Kofa v. U.S. I.N.S., 60 F.3d 1084, 1094 (4th Cir. 1995) (courts should
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`strive to give effect to every word in the statute). When examining statutory language, the court should
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`generally give words their ordinary, contemporary, and common meaning. Scott, 328 F.3d at 139
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`(citing Williams v. Taylor, 529 U.S. 420, 431 (2000)).
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`This Court finds that 17 U.S.C. § 411(a) when read to give the words their ordinary,
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`contemporary, and common meaning, clearly evidences Congress’ intent to require something more
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`than application for a copyright prior to filing suit. Section 411(a) specifically states that
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`preregistration or registration are required to file an action for infringement. In fact, the term
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`application is used in the same section and is clearly something separate and apart from registration.
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`Congress also specifically described the process of seeking registration (“ . . . the deposit, application,
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`11
`In Glynn, this Court granted partial summary judgment in favor of the defendant on the
`plaintiff’s copyright infringement claim finding that plaintiff could not seek statutory damages or attorney's
`fees on this claim. See id. at *4.
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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 11 of 17
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`and fee required for registration have been delivered to the Copyright Office . . .”) without labeling this
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`process as registration for purposes of Section 411(a). This Section evidences Congress’ intent for
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`the Unites States Copyright Office to be able to apply its expertise to review applications to determine
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`whether registration is warranted and specifically provides for a course of action to allow suit when
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`the Copyright Office takes action and denies an applicant’s registration. This process reflects
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`understandable public policy. The receipt of an actual certificate of registration or denial of same is a
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`jurisdictional prerequisite as this Court should not exercise its jurisdiction prematurely and “prejudge” a
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`determination to be made by the Copyright Office. See Goebel v. Manis, 39 F. Supp. 2d 1319, 1320
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`(D. Kan. 1999); Demetriades v. Kaufmann, 680 F. Supp. 658, 661 (S.D.N.Y. 1988). “The
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`rationale for the requirement is consistent with the obligation of the Copyright Office to determine in the
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`first instance the validity of a copyright request.” Demetriades, 680 F. Supp. at 661.
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`In Secure Servs. Tech., Inc. v. Time & Space Processing, Inc., 722 F. Supp. 1354 (E.D.
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`Va. 1989), the Virginia district court suggested that the approach adopted by this Court would leave
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`“the owner of a copyright . . . in legal limbo while the Copyright Office considers whether he qualifies
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`for a certification of registration.” Id. at 1364. Indeed, the facts of this case illustrate that the
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`registration upon application approach adopted by Plaintiff would place this Court in “limbo.” Plaintiff
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`filed 30 copyright applications on a Friday and immediately, on the following Monday, sought injunctive
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`relief in this Court. To permit the imposition of jurisdiction upon this Court in this fashion would cause
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`this Court to “prejudge” determinations of the Copyright Office prior to its exercise of its expertise in
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`the review of these applications. It should be noted that the United States District Court for the District
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`of South Carolina in Miller v. CP Chems. Inc., 808 F. Supp. 1238 (D.S.C. 1992) noted the “two
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`jurisdictional prerequisites” to a copyright infringement action, to wit: registration or denial. Id. at 1241.
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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 12 of 17
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` Indeed, the South Carolina district court suggested that in the event of a denial of a copyright
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`application, the plaintiff would be “required to join the copyright office as a defendant.” Id.12
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`In Iconbazaar the court appears concerned that “[t]he process of processing and evaluating a
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`copyright application could be a lengthy one, during which time an infringing use may continue
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`unchallenged if the owner is not allowed to begin suit.” Iconbazaar, 308 F. Supp. 2d at 634. First, the
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`timeliness concern must also be balanced against the ability of any litigant to assert federal jurisdiction
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`by applying for a copyright registration on the eve of filing suit. Second, Congress certainly considered
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`issues of potential prejudice to a copyright applicant when enacting the Copyright Act and including the
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`statute of limitations section, located at 17 U.S.C. § 410(d), which essentially “backdates” registration
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`to the day when the Copyright Office received a complete application for purposes of the statute of
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`limitations. See 17 U.S.C. § 410(d) (“The effective date of a copyright registration is the day on which
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`an application, deposit, and fee, which are later determined by the Register of Copyrights or by a court
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`of competent jurisdiction to be acceptable for registration, have all been received in the Copyright
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`Office.”). As a result, an applicant who is granted a registration is not unfairly prejudiced by the time it
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`takes the Copyright Office to process its application. Lastly, the assessment of an appropriate damage
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`award for wrongful use of a registered copyright should alleviate concern over the time period during
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`which an infringing use may continue unchallenged while the Copyright Office utilizes its expertise to
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`make a registration determination.
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`This Court finds that the plain language of the Copyright Act, reflecting sound public policy,
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`12
`As stated in 17 U.S.C. § 411(a), when a plaintiff is refused registration by the Copyright
`Office, he must notify the Copyright Office that he is instituting suit. However, it is within the Register of
`Copyright’s discretion to become a party to the plaintiff’s infringement action and the Register's failure to
`become a party does not deprive the federal court of jurisdiction.
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`12
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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 13 of 17
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`requires registration of a copyright or denial of same as jurisdictional prerequisites to instituting an action
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`for copyright infringement. The Copyright Office has yet to register or deny copyrights for the two
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`works in question - the website designed for the Young School and a print advertisement created for
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`Vectorworks. Accordingly, this Court presently lacks jurisdiction with respect to the copyright
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`infringement claim. Therefore, Defendants’ Motion to Dismiss pursuant to Rule 12(b)(1) is GRANTED
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`as to Plaintiff’s Copyright Act claim and Count I of Plaintiff’s Complaint shall be DISMISSED without
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`prejudice.
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`2.
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`Plaintiff’s Lanham Act Claim Under § 43(a) (Count II)
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`Plaintiff claims that Defendants’ actions constitute unfair competition under § 43(a) of the
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`Lanham Act, 15 U.S.C. § 1125.13 The Lanham Act was intended to make “actionable the deceptive
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`and misleading use of marks,” and “to protect persons engaged in . . . commerce against unfair
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`competition.” 15 U.S.C. § 1127. However, Defendants argue that the Lanham Act claim cannot be
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`asserted in this case, as it is preempted by copyright law.
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`In support of their position that Plaintiff’s Lanham Act claim is preempted by copyright law,
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`13
`15 U.S.C. § 1125(a), entitled “Civil action” states:
`1) Any person who, on or in connection with any goods or services, or any container for goods, uses in
`commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation
`of origin, false or misleading description of fact, or false or misleading representation of fact, which--
`(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,
`connection, or association of such person with another person, or as to the origin,
`sponsorship, or approval of his or her goods, services, or commercial activities by another
`person, or
`(B) in commercial advertising or promotion, misrepresents the nature, characteristics,
`qualities, or geographic origin of his or her or another person's goods, services, or
`commercial activities, shall be liable in a civil action by any person who believes that he or
`she is or is likely to be damaged by such act.
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`13
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`

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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 14 of 17
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`Defendants cite the unanimous14 Supreme Court opinion in Dastar Corp. v. Twentieth Century Fox
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`Film Corp., 539 U.S. 23 (2003). In Dastar, Twentieth Century Fox Film Corp. (“Twentieth Century
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`Fox”) obtained exclusive rights to produce a television series based on General Dwight D.
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`Eisenhower’s book Crusade in Europe, detailing the allied campaign in Europe during World War II.
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`See id. at 25-26. The original Crusade in Europe television series aired in 1949 and the copyright of
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`that series expired in 1977. Id. at 26. In 1988, Twentieth Century Fox reacquired the television series
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`rights to Crusade in Europe, including the exclusive rights to distribute the series in video. Id. In 1995,
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`Dastar Corp. (“Dastar”) released a video titled World War II Campaigns in Europe, which was an
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`edited version of the original version of the Crusade television series that was in the public domain. Id.
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`Twentieth Century Fox brought suit against Dastar for copyright infringement and alleged “that Dastar’s
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`sale of Campaigns ‘without proper credit’ to the Crusade television series constitutes ‘reverse passing
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`off’ in violation of § 43(a) of the Lanham Act, 15 U.S.C. §1125(a) . . . .” Id. at 27.
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`The Supreme Court stated that “ . . . the gravamen of respondents’ claim is that, in marketing
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`and selling Campaigns as its own product without acknowledging its nearly wholesale reliance on the
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`Crusade television series, Dastar has made a false designation of origin, false or misleading description
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`of fact, or false or misleading representation of fact, which . . . is likely to cause confusion . . . as to the
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`origin . . . of his or her goods.” Id. at 31 (internal quotations omitted). The Supreme Court noted:
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` . . . as used in the Lanham Act, the phrase "origin of goods" is in our view incapable of
`connoting the person or entity that originated the ideas or communications that "goods" embody
`or contain. Such an extension would not only stretch the text, but it would be out of accord with
`the history and purpose of the Lanham Act and inconsistent with precedent.
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`14
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`Justice Breyer did not take part in the consideration or decision of this case.
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`14
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`Case 1:05-cv-00437-RDB Document 30 Filed 05/18/05 Page 15 of 17
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`Id. at 31-32. The Court noted that “. . . in construing the Lanham Act, we have been careful to caution
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`against misuse or over-extension of trademark and related protections into areas traditionally occupied
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`by patent or copyright.” Id. at 34 (internal citation and quotations omitted). The Court found that “. . .
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`reading the phrase ‘origin of goods’ in the Lanham Act in accordance with the Act's common-law
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`foundations (which were not designed to protect originality or creativity), and in light of the copyright
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`and patent laws (which were), we conclude that the phrase refers to the producer