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Case 5:06-cv-00297-C Document 56 Filed 09/25/06 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF OKLAHOMA
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`))
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`))
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`))
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`)
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`) Case Number CIV-06-297-C
`)
`(1) BORDERS GROUP, INC., a Michigan )
`Corporation; (2) EDWARDS BROTHERS, )
`INC.,
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`GALEN BERRY, an Individual,
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`Plaintiff,
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`vs.
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`Defendants.
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`MEMORANDUM OPINION AND ORDER OF DISMISSAL
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`Plaintiff filed the present action asserting violations of the Copyright Act and the
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`Lanham Act.1 Plaintiff alleged that Defendants violated Plaintiff’s copyright protection for
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`two pieces of his original artwork by putting Plaintiff’s artwork on the covers of journals and
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`sketchbooks sold at Borders-owned retail stores. (Compl., Dkt. No. 1., ¶¶ 1, 3, 10-16.)
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`Plaintiff also alleged that Defendants engaged in unfair competition and false
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`misrepresentation of origin in violation of the Lanham Act. (Compl. ¶¶ 17-21.) In response
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`to Defendants’ motion for summary judgment (Defs.’ Mot. Summ. J., Dkt. No. 42), Plaintiff
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`filed a motion to stay or strike the Court’s ruling, wherein he admits that the “the artwork for
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`which [he] secured federal copyright registrations [was] not the identical artwork which
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`1 Originally Plaintiff also asserted state law claims against Defendant, but these have all
`been either voluntarily withdrawn or dismissed by the Court in its Order of July 13, 2006. (Dkt. No.
`39.)
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`

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`Case 5:06-cv-00297-C Document 56 Filed 09/25/06 Page 2 of 11
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`rightfully forms the basis for the instant suit.” (Pl.’s Mot., Dkt. No. 44, at 1.)2 In response,
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`Defendants contended that Plaintiff’s admission demonstrates that the Court lacks subject
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`matter jurisdiction under the Copyright Act and so their motion for summary judgment
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`should be granted. (Defs.’ Mem., Dkt. No. 46, at 4.) Defendants also filed a motion for a
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`protective order suspending discovery. (Defs.’ Mot., Dkt. No. 47.)
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`The Court issued a Memorandum Opinion and Order construing Defendants’ response
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`as a Fed. R. Civ. P. 12(b)(1) motion to dismiss that mounted a factual attack questioning the
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`existence of subject matter jurisdiction itself. (Order, Dkt. No. 48.) This Order directed
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`Plaintiff to file a response to the 12(b)(1) motion and to show cause why the Court should
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`not dismiss the instant action. Plaintiff filed a response stating that he has now submitted the
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`subject artwork for copyright protection and seeking leave to amend his Complaint to cure
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`any jurisdictional defects. (Pl.’s Resp., Dkt. No. 49.) Defendants filed a memorandum
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`opposing Plaintiff’s motion to amend, and Plaintiff has filed a surreply.
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`I. COPYRIGHT ACT CLAIMS
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`A. Standard of Review
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`The standard of review for motions to dismiss pursuant to Fed. R. Civ. P. 12(b)(1) is
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`set forth in Holt v. United States, 46 F.3d 1000 (10th Cir. 1995).
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`First, a facial attack on the complaint’s allegations as to subject matter
`jurisdiction questions the sufficiency of the complaint. In reviewing a facial
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`2 Plaintiff states that the Court, during the status and scheduling conference, directed him
`to file an amended complaint. To the contrary, the Court suggested that the filing of a motion for
`leave to file an amended complaint was the appropriate procedural device to raise the issue.
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`2
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`

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`Case 5:06-cv-00297-C Document 56 Filed 09/25/06 Page 3 of 11
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`attack on the complaint, a district court must accept the allegations in the
`complaint as true.
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`Second, a party may go beyond allegations contained in the complaint
`and challenge the facts upon which subject matter jurisdiction depends. When
`reviewing a factual attack on subject matter jurisdiction, a district court may
`not presume the truthfulness of the complaint’s factual allegations. A court
`has wide discretion to allow affidavits, other documents, and a limited
`evidentiary hearing to resolve disputed jurisdictional facts under Rule 12(b)(1).
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`Id. at 1002-03 (citations omitted).
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`“Whenever it appears by suggestion of the parties or otherwise that the court lacks
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`jurisdiction of the subject matter, the court shall dismiss the action.” Fed. R. Civ. P. 12(h)(3).
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`“Without jurisdiction the court cannot proceed at all in any cause. Jurisdiction is power to
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`declare the law, and when it ceases to exist, the only function remaining to the court is that
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`of announcing the fact and dismissing the cause.” Ex parte McCardle, 74 U.S. 506, 514
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`(1868). “[L]ack of jurisdiction cannot be waived and jurisdiction cannot be conferred upon
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`a federal court by consent, inaction or stipulation.” Basso v. Utah Power & Light Co., 495
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`F.2d 906, 909 (10th Cir. 1974).
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`In this case, Defendants challenge the facts upon which the Court’s subject matter
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`jurisdiction exists. Therefore, the Court has wide discretion to consider documents outside
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`the complaint when resolving the jurisdictional question without converting the motion to
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`dismiss to a Rule 56 summary judgment motion. Holt, 46 F.3d at 1002-03. Furthermore, the
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`Court need not convert the motion into one under Federal Rules of Civil Procedure 12(b)(6)
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`or 56 as the jurisdictional question is not intertwined with the merits of Berry’s action. Holt,
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`46 F.3d at 1002-03; see La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d
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`3
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`

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`Case 5:06-cv-00297-C Document 56 Filed 09/25/06 Page 4 of 11
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`1195, 1208 (10th Cir. 2005) (affirming trial court’s Rule 12(b)(1) dismissal of Copyright Act
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`claim for lack of subject matter jurisdiction). At issue is whether Plaintiff has satisfied the
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`jurisdictional prerequisites for bringing suit in this Court. Thus, in resolving Defendants’
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`motion, it is not necessary to consider the merits of Plaintiff’s claim.
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`B. Copyright Act Jurisdiction
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`Federal courts have exclusive jurisdiction over disputes arising under the Copyright
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`Act. See 28 U.S.C. § 1338(a). Under 17 U.S.C. § 411(a), no person can begin an action for
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`infringement of a copyright “until preregistration or registration of the copyright claim has
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`been made in accordance with this title,”3 or, alternatively, until the registration has been
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`refused and the applicant serves a copy of its complaint on the Register of Complaints. For
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`Plaintiff to prevail on his copyright infringement claim, he is required to establish: “(1) that
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`[he] possesses a valid copyright and (2) that Defendants ‘copied’ protectable elements of the
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`copyrighted work.” Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 (10th
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`Cir. 1996) (footnote omitted).
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`Plaintiff has admitted that when he filed his original Complaint on March 22, 2006,
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`he had not received statutory copyright protection for the contested artwork nor even
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`submitted the items to the U.S. Copyright Office. Thus, it would appear that Defendants are
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`3 The “preregistration” language was added to § 411(a) on April 27, 2005, so it has not yet
`been thoroughly addressed in case law. However, the new categorization is not relevant here.
`Preregistration is available under 17 U.S.C. § 408(f) to those works that have “a history of
`infringement prior to authorized distribution,” including motion pictures, sound recordings, and
`other works being prepared for commercial distribution. 37 C.F.R. § 202.16(b)(1)-(2). Plaintiff’s
`designs are not eligible for preregistration. Id. § 202.16(b)(3).
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`4
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`

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`Case 5:06-cv-00297-C Document 56 Filed 09/25/06 Page 5 of 11
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`correct in asserting that the Court lacks subject matter jurisdiction for a Copyright Act claim.
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`Plaintiff, however, requests leave to amend his Complaint to reflect two subsequent
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`transactions. On July 7, 2006, Plaintiff submitted two works of art to the Copyright Office.
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`And on August 24, 2006, Plaintiff received a confirmatory e-mail indicating that the
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`Copyright Office was currently processing the works – a four- to six-month process – and
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`that “registration is effective . . . on the date of receipt of the submission.” (Pl.’s Resp., Ex.
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`6, Dkt. No. 49.)
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`Plaintiff argues that under the Tenth Circuit’s “registration” approach to examining
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`effective copyright protection, these recent communications entitle him to bring suit under
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`the Copyright Act, and he should be allowed to amend his Complaint to reflect that subject
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`matter jurisdiction now exists. Despite his recent interaction with the Copyright Office,
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`however, his Copyright Act claims are still subject to dismissal for lack of subject matter
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`jurisdiction.
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`First, it is clear that Plaintiff’s original complaint did not satisfy the jurisdictional
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`requirements for his action to continue. Regardless of the intricacies of defining
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`“registration,” as of March 22, 2006, when Plaintiff filed his complaint, he had not made any
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`contact with the Copyright Office regarding the allegedly infringed works. The Copyright
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`Office had issued nothing to indicate that Plaintiff’s works would be protected under the
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`Copyright Act. Any copyrights Plaintiff holds for his other works are irrelevant to the case
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`at hand. Therefore, no “registration of the copyright claim ha[d] been made in accordance
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`5
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`

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`Case 5:06-cv-00297-C Document 56 Filed 09/25/06 Page 6 of 11
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`with [17 U.S.C. § 411(a)],” and Plaintiff could not bring suit in federal court via his original
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`complaint under the provisions of the Copyright Act.
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`Second, even assuming the Court were to grant Plaintiff leave to amend his Complaint
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`to reflect his recent submissions to the Copyright Office, the Court would not maintain
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`subject matter jurisdiction over the instant action. In the Tenth Circuit, it is clear that courts
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`apply the “registration approach” to determine whether a plaintiff has a protected copyright
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`under the Copyright Act provisions. La Resolana Architects, 416 F.3d at 1202. Under this
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`approach, a federal court lacks jurisdiction over a copyright infringement claim until the
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`Copyright Office takes action on the copyright application. Id. at 1201. Although this action
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`does not have to consist of Plaintiff’s receipt of a paper certificate of registration, id. at 1202,
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`the “Register of Copyrights must affirmatively determine copyright protection is warranted,
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`§ 411, before registration occurs under the Act.” Id. at 1200. Although some circuits do
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`follow the “application approach,” where jurisdiction is satisfied by the applicant merely
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`depositing his work with the Copyright Office and paying the required fee, the Tenth Circuit
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`has definitively rejected such an approach. Id. at 1203-08. In the Tenth Circuit, “suits for
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`infringement can be brought when a copyright is registered, and such registration occurs
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`when the Copyright Office approves the application.” Id. at 1203 (emphasis added).
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`Plaintiff’s argument that because his confirmatory e-mail contains the words
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`“registration is complete” his submitted works are “registered” under § 411, is ultimately
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`unpersuasive. Though the e-mail is potentially misleading, it is clear from its context that
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`this missive was sent solely to confirm that the Copyright Office had received Plaintiff’s
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`6
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`

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`Case 5:06-cv-00297-C Document 56 Filed 09/25/06 Page 7 of 11
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`artwork and that the works are “currently in process.” The e-mail was sent at the request of
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`Plaintiff’s attorney, and it contains no indication as to whether Plaintiff’s works will
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`ultimately be granted copyright protection. The Tenth Circuit has noted that “[n]o language
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`in the Act suggests that registration is accomplished by mere receipt of copyrightable
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`material by the Copyright Office. . . . [O]nly upon registration or refusal to register is a
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`copyright holder entitled to sue for copyright infringement under § 411.” Id. at 1200-01.
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`Thus, allowing Plaintiff to amend his complaint as requested would not cure its jurisdictional
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`defects.
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`As a result, it appears that Berry’s action is premature and that the Court never
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`maintained subject matter jurisdiction over the copyright claims. La Resolana Architects,
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`416 F.3d at 1199-1205. Because the Court lacks power to rule on a substantive motion or
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`enter judgment, it may only announce its lack of subject matter jurisdiction and dismiss the
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`action. Cunningham v. BHP Petroleum Great Britain PLC, 427 F.3d 1238, 1245 (10th Cir.
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`2005); Shikles v. Sprint/United Mgmt. Co., 426 F.3d 1304, 1317-18 (10th Cir. 2005).
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`II. LANHAM ACT CLAIM
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`Plaintiff’s remaining federal claim lies under § 43(a) of the Lanham Act, 15 U.S.C.
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`§ 1125(a). Plaintiff alleged that Defendants engaged in unfair competition by falsely
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`misrepresenting the origin of the designs (allegedly created by Plaintiff) on the products they
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`manufactured and sold for retail. (Compl. ¶¶ 17-21.) Defendants filed for summary
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`judgment on this claim, and Plaintiff filed a response. Defendants entered a reply and
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`7
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`

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`Case 5:06-cv-00297-C Document 56 Filed 09/25/06 Page 8 of 11
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`Plaintiff then entered a surreply, although the latter three pleadings addressed the Copyright
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`Act claims rather than the Lanham Act claim. The motion is now ripe for disposition.
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`A. Summary Judgment Standard
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`A motion for summary judgment should be granted “if the pleadings, depositions,
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`answers to interrogatories, and admissions on file, together with the affidavits, if any, show
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`that there is no genuine issue as to any material fact and that the moving party is entitled to
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`a judgment as a matter of law.” Fed. R. Civ. P. 56(c). The movant bears the initial burden
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`of demonstrating the absence of material fact requiring judgment as a matter of law. Celotex
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`Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). A fact is material if it is essential to the
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`proper disposition of the claim. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
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`If the movant carries this initial burden, the nonmovant must then set forth “specific facts”
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`outside the pleadings and admissible into evidence which would convince a rational trier of
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`fact to find for the nonmovant. Fed. R. Civ. P. 56(e). These specific facts may be shown “by
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`any of the kinds of evidentiary materials listed in Rule 56(c), except the mere pleadings
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`themselves.” Celotex, 477 U.S. at 324. “The burden is not an onerous one for the
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`nonmoving party in each case, but does not at any point shift from the nonmovant to the
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`district court.” Adler v. Wal-Mart Stores, Inc., 144 F.3d 664, 672 (10th Cir. 1998). All facts
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`and reasonable inferences therefrom are construed in the light most favorable to the
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`nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587
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`(1986).
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`8
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`

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`Case 5:06-cv-00297-C Document 56 Filed 09/25/06 Page 9 of 11
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`B. The Lanham Act
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`Section 43(a) of the Lanham Act creates a federal remedy for a plaintiff against
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`[a]ny 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.
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`15 U.S.C. § 1125(a). Section 43(a) encompasses both “passing off,” where a producer
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`misrepresents his goods or services as those of someone else, and “reverse” passing (or
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`palming) off, where a person “misrepresents someone else’s goods or services as his own.”
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`Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 27 n.1 (2003). Several
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`Circuits have noted that
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`[i]n order to recover on a Lanham Act claim for “reverse palming off,” a
`plaintiff must prove:
`(1) that the work at issue originated with the plaintiff;
`(2) that origin of the work was falsely designated by the defendant;
`(3) that the false designation of origin was likely to cause consumer
`confusion; and
`(4) that the plaintiff was harmed by the defendant’s false designation
`of origin.
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`Syngenta Seeds, Inc. v. Delta Cotton Co-op., Inc., 457 F.3d 1269, 1277 (Fed. Cir. 2006)
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`(citing Lipton v. Nature Co., 71 F.3d 464, 473 (2d Cir. 1995)).
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`9
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`

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`Case 5:06-cv-00297-C Document 56 Filed 09/25/06 Page 10 of 11
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`C. Analysis of Lanham Act Claim
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`Plaintiff’s complaint attempts to state a claim for “reverse passing off” because it
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`alleges that Defendants misrepresented Plaintiff’s works (the “goods”) as their own. Hence,
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`under § 43(a) Plaintiff must show that Defendants’ actions were likely to cause confusion,
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`mistake, or deception regarding the “origin” of the goods Defendants offered for sale – the
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`journals and sketchbooks. Defendants filed for summary judgment, contending that the
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`allegations in Plaintiff’s complaint cannot state a claim for reverse passing off in light of the
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`Supreme Court’s definition of “origin” under § 43(a). Although Plaintiff timely filed a
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`response to the motion for summary judgment, he has offered no specific facts showing any
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`genuine issue of material fact in that response or in any subsequent pleading. The Court
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`finds Defendants’ Dastar analogy to be sound, and Plaintiff has not attempted to controvert
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`this argument.
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`Even assuming that Plaintiff is indeed the creator of the artwork on the covers of
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`Defendants’ products, Plaintiff himself is not the “origin” of the tangible product. In Dastar,
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`the Supreme Court determined that “the most natural understanding of the ‘origin’ of
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`‘goods’–the source of wares–is the producer of the tangible product sold in the marketplace.”
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`Dastar, 539 U.S. at 31 (emphasis added). According to the Supreme Court, “the phrase
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`‘origin of goods’ is in our view incapable of connoting the person or entity that originated
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`the ideas or communications that ‘goods’ embody or contain.” Id. at 32. Plaintiff admitted
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`that he is not the manufacturer of journals or sketchbooks that feature the contested artwork.
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`(Defs.’ Mot. Summ. J., Dkt. No. 42, Ex. 2, at 12.) Under Dastar, “origin of goods” in the
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`10
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`

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`Case 5:06-cv-00297-C Document 56 Filed 09/25/06 Page 11 of 11
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`Lanham Act means “the producer of the tangible goods that are offered for sale”
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`(Defendants); it does not refer to “the author of any idea, concept, or communication
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`embodied in those goods” (allegedly, Plaintiff). Dastar, 539 U.S. at 37. Thus, Defendants
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`are entitled to judgment as a matter of law on Plaintiff’s Lanham Act claim.
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`III. CONCLUSION
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`The Court lacks subject matter jurisdiction over the Plaintiff’s Copyright Act claims.
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`Therefore, Plaintiff’s Motion to Stay or Strike (Dkt. No. 44) is denied; Defendants’ Motion
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`to Dismiss (Dkt. No. 46) is GRANTED as to those claims and Plaintiff’s Copyright Act
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`claims are DISMISSED without prejudice for lack of subject matter jurisdiction. All prior
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`orders relating to the Copyright Act claims are vacated.
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`Defendants’ Motion for Summary Judgment (Dkt. No. 42) is GRANTED as to
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`Plaintiff’s Lanham Act claim. Judgment will be entered accordingly. Defendants filed a
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`motion for entry of a protective order suspending discovery in this case on August 7, 2006.
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`(Dkt. No. 47.) The disposition of this Order renders Defendants’ claims in that motion
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`MOOT.
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`IT IS SO ORDERED this 25th day of September, 2006.
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`
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`11

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