UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF TENNESSEE
`NASHVILLE DIVISION
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`Case No. 3:09-0112
`Judge Trauger
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`SPECIFIC SOFTWARE SOLUTIONS, LLC,
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`Plaintiff,
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`v.
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`INSTITUTE OF WORKCOMP ADVISORS, LLC,
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`Defendant.
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`MEMORANDUM
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`Pending before the court is a Motion to Dismiss (Docket No. 5) filed by defendant
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`Institute of WorkComp Advisors (“the Institute”) to which the plaintiff, Specific Software
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`Solutions (“Specific Software”) has responded (Docket No. 12). For the reasons discussed
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`herein, this motion will be granted.
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`FACTUAL AND PROCEDURAL BACKGROUND
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`The plaintiff, Specific Software, is a Tennessee LLC that assists professionals in
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`managing and understanding issues that regularly arise in the field of worker’s compensation.1
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`Specific Software maintains a content-rich website that features topics and information of
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`interest to professionals in the field of worker’s compensation. The defendant, the Institute, is a
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`North Carolina LLC and is comprised of four members, namely, Preston Lee Diamond, Karla
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`Epperson Diamond, Frank M. Pennachio, and Sherry Pennachio. The Institute performs a
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`similar service to that performed by Specific Software and maintains training manuals and
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`1Unless otherwise noted, the facts are drawn from the Complaint (Docket No. 1).
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`1
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`materials with information of interest to professionals in the field of worker’s compensation.
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`The Institute also maintains a website with similar information.
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`The Institute and Specific Software have a history of working well together. Indeed,
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`Specific Software created its website with some input from Mr. Pennachio (of the Institute)
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`pursuant to a 2007 consulting agreement between Mr. Pennachio and Specific Software.
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`Sometime after this agreement was signed, however, Mr. Diamond and Mr. Pennachio (both of
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`the Institute) had a falling out, which negatively affected the good working relationship between
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`the Institute and Specific Software.
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`On November 12, 2008, on behalf of the Institute, Mr. Diamond wrote a cease-and-desist
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`letter to Timothy Coomer (CEO of Specific Software), which alleged that Specific Software,
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`primarily through its website, had generally infringed on the Institute’s copyrights. (Docket No.
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`1 Ex. C.) On November 20, 2008, Specific Software’s counsel responded, seeking specific
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`examples of copyright infringement. (Docket No. 1 Ex. D.) In that letter, among other things,
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`Specific Software’s counsel noted that its search of the records of the United States Copyright
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`Office revealed that the Institute did not have any registered copyrights. (Id.)
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`On December 29, 2008, counsel for the Institute responded, stating that “registration of
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`the copyright is not a precondition for the basic underlying protection. However, in order for a
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`copyright owner to sue for infringement, it must register the copyright or file an application for
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`registration, depending on the circuit in which the suit is filed.” (Docket No. 1 Ex. E.) This
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`letter further advised Specific Software that the Institute had filed four copyright registration
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`applications for “works created by employees of the Institute” and, while “the copyrights
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`associated with those applications have not yet been registered, ... we anticipate registration
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`2
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`shortly.” (Id.) The letter also advised that, if Specific Software sought specific examples of
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`infringement, its representatives should sit down with Mr. Pennachio and compare the materials
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`on Specific Software’s website with the Institute’s materials, which were in Mr. Pennachio’s
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`possession. (Id.)
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`On January 12, 2009, after a discussion between Mr. Pennachio and representatives from
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`Specific Software, Mr. Pennachio wrote Coomer a letter stating that Specific Software’s
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`materials did not infringe on the Institute’s copyrights. (Docket No. 1 Ex. F.) On January 14,
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`2009, Specific Software’s counsel forwarded Mr. Pennachio’s letter to the Institute’s counsel (1)
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`pointing out that a principal from the Institute had just written Specific Software a letter stating
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`that there was no infringement and (2) arguing that, in light of this letter, this matter should be
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`considered closed. (Docket No. 1 Ex. G.) In a January 21, 2009 response, the Institute’s counsel
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`claimed that Mr. Pennachio was not correct, and counsel also claimed that the Institute had
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`identified, through a review of Specific Software’s website, thirty-three specific examples of
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`willful copyright infringement. (Docket No. 1 Ex. H.) The Institute threatened to take
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`“appropriate legal action” if Specific Software did not remove the allegedly offending material
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`from its website within ten days. (Id.)
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`On February 4, 2009, Specific Software filed this lawsuit asserting that the Institute had
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`“threatened litigation against Specific Software based on unwarranted assertions that Specific
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`Software has allegedly infringed the Institute’s copyrights.” (Docket No. 1 at 2.) Specific
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`Software’s Complaint seeks multiple declaratory judgments, but all of these proposed judgments
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`would find, for various potential reasons, that Specific Software’s materials did not infringe on
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`3
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`copyrights held by the defendant.2 (Id.) Indeed, Specific Software seeks a judgment that it
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`“does not infringe any of the Institute’s asserted copyrights” and that the copyrights at issue are
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`invalid. (Id. at 6.) On March 24, 2009, the Institute moved to dismiss this case, arguing that,
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`because its copyrights were not “registered,” this court does not have the power to hear this
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`copyright infringement suit.
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`ANALYSIS
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`The defendant has moved to dismiss this declaratory judgment action, because, the
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`defendant argues, the court cannot hear this matter because the copyrights at issue have not been
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`“registered” by the U.S. Copyright Office. While the defendant captions its motion as a Federal
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`Rule of Civil Procedure 12(b)(6) motion to dismiss for failure to state a claim upon which relief
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`can be granted, other district courts in this circuit have indicated that, when the defendant seeks
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`to dismiss a copyright infringement action because the copyrights at issue have not been
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`registered, the proper vehicle is a Rule 12(b)(1) motion to dismiss for lack of subject matter
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`jurisdiction. See Teevee Toons, Inc. v. Overture Records, 501 F. Supp. 2d 964, 967 (E.D. Mich.
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`2 Along with a declaratory judgment of non-infringement, as additional “cause(s) of
`action and ground(s) for relief,” Specific Software seeks a declaratory judgment that the asserted
`copyrights are (1) “invalid” generally; (2) are “invalid for lack of original expression”; and (3)
`are “unenforceable for lack of original expression.” (Id. at 4-5.) Further, Specific Software also
`seeks a declaratory judgment that the materials at issue were not “strikingly similar,” that any
`similarity “is derived from documents in the public domain that did not originate with either
`[party],” that any similarly consists of “titles, names, short phrases, slogans, familiar symbols or
`designs” or “ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or
`devices, as distinguished from a description, explanation, or illustration.” (Id.) Also, Specific
`Software seeks a declaratory judgment that any similarity “consists of information that is
`common property and containing no original authorship taken from public documents or other
`common sources.” (Id.) Finally, Specific Software seeks a declaratory judgment that any
`similarity between the relevant materials is “de minimus.” (Id.) As the defendant puts it, “these
`declarations and the grounds for relief all would be used to establish a defense to a copyright
`infringement suit.” (Docket No. 6 at 1.)
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`4
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`2007); Hawaiian Village Computer, Inc. v. Print Management Partners, Inc., 501 F. Supp. 2d
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`951, 954 (E.D. Mich. 2007). The court agrees with this characterization and, therefore, the court
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`will analyze this issue under the Rule 12(b)(1) standard.
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` I.
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`Motion to Dismiss - Rule 12(b)(1)
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`Federal Rule of Civil Procedure 12(b)(1) governs dismissal of lawsuits for lack of
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`jurisdiction over the subject matter. The “first and fundamental question presented by every case
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`brought to the federal courts is whether it has jurisdiction to hear a case.” Douglas v. E.G.
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`Baldwin & Assoc., Inc, 150 F.3d 604, 606-07 (6th Cir. 1998). When challenging a court’s
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`subject matter jurisdiction under Rule 12(b)(1), a defendant may either facially attack the
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`plaintiff’s complaint by testing the sufficiency of the pleading itself, or the defendant may
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`“factually attack” the complaint, that is, argue that the existence or non-existence of certain facts
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`deprives the court of subject matter jurisdiction. See Smith v. Northwest Airlines, Inc., 141 F.
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`Supp. 2d 936, 939-40 (W.D. Tenn. 2001). Because the essential facts are not in dispute,
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`resolving whether the defendant’s motion is a “facial” or “factual” attack is not necessary to
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`decide this case; that said, an argument that the court does not have subject matter jurisdiction
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`because the U.S. Copyright Office has not “registered” the copyrights at issue appears to be a
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`factual attack. In “considering a factual attack upon the court’s jurisdiction, no presumption of
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`truth applies to the plaintiff’s factual allegations, and the court is free to weigh the evidence and
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`resolve factual disputes so as to satisfy itself as to the existence of its power to hear the case.”
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`Giorgadze v. Tennessee Technology Center, 2007 WL 2327034, *2 (E.D. Tenn. Aug. 10, 2007)
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`(citing U.S. v. Ritchie, 15 F.3d 592, 598 (6th Cir. 1994)).
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`5
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`II.
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`The Registration Issue
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`The central dispute in the parties’ briefing is whether the Institute’s copyrights have been
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`“registered.” In pertinent part, the Copyright Act states, “[N]o civil action for infringement of
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`the copyright in any United States work shall be instituted ... until registration of the copyright
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`claim has been made in accordance with this title.” 17 U.S.C. § 411(a). Additionally, the Sixth
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`Circuit has concluded, “[w]ith very limited exceptions ... registration is a prerequisite to filing a
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`copyright infringement suit.” Murray Hill Publications, Inc. v. ABC Communications, Inc., 264
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`F.3d 622, 630 (6th Cir. 2001). Neither party argues that any such limited exception to the
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`jurisdictional requirement of registration is applicable here.
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`Further, there is no dispute that, to obtain “registration,” an entity with something that it
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`believes is copyrightable must send an application, the deposit (the material to be copyrighted),
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`and a fee to the U.S. Copyright Office. 17 U.S.C. § 411(a). The plaintiff argues that, at this
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`point, the material has been “registered,” and, therefore, an infringement action may proceed.
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`(Docket No. 12 at 3.) The defendant argues that registration occurs later, after the Copyright
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`Office has passed (one way or another) on the copyrightability of the material at issue. (Docket
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`No. 6 at 4.) The defendant argues that, here, because the Copyright Office has not passed on the
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`copyrightability of the material at issue, the material has not been registered and a copyright
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`infringement action based on that material cannot be heard by this court. (Id. at 7.)
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`The Sixth Circuit has not decided what constitutes “registration” for purposes of this
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`provision. While there has been a split of opinion amongst district and circuit courts about what
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`constitutes registration in this context, three recent decisions of fellow district courts in the Sixth
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`Circuit have all found that registration is only accomplished once the Copyright Office passes
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`6
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`(one way or another) on the material submitted by the applicant.3 See Teevee Toons, 501 F.
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`Supp. 2d at 967-68; Hawaiian Village Computer, 501 F. Supp. 2d at 954; Ripple Junction Design
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`Co. v. Olaes Enters., 2005 WL 2206220, *3 (S.D. Ohio September 8, 2005). This is known as
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`the “registration” approach, or, as the plaintiff puts it, the “narrow” approach. (Docket No. 12 at
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`13.)
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`These cases (and many others like them) rely primarily on the plain language of the
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`Copyright Act, which, in various provisions, clearly indicates that the jurisdictional prerequisite
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`of registration does not occur until after the Copyright Office has passed (one way or another) on
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`the copyrightability of the material at issue. First, Section 410(a) states, “[w]hen, after
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`examination, the Register of Copyrights determines that, in accordance with the provisions of
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`this title, the material deposited constitutes copyrightable subject matter and that the other legal
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`and formal requirements of this title have been met, the Register shall register the claim and
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`issue to the applicant a certificate of registration under the seal of the Copyright Office.” 17
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`U.S.C. § 410(a) (emphasis added).
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`Additionally, Section 411(a) states, “where the deposit, application, and fee required for
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`registration have been delivered to the Copyright Office in proper form and registration has been
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`3 For examples of the split of opinion, see Apple Barrel Prod., Inc. v. Beard, 730 F.2d
`384, 386 (5th Cir.1984) (in order to establish standing, plaintiff only need show the payment of a
`fee, deposit of the work in question, and receipt by the Copyright Office of the registration
`application); Iconbazaar, L.L.C. v. America Online, Inc., 308 F.Supp.2d 630, 633-34 (M.D. N.C.
`2004) (same) (collecting cases identifying split of authority); La Resolana Architects, PA v. Clay
`Realtors Angel Fire, 416 F.3d 1195, 1200-01 (10th Cir. 2005) (“[O]nly upon registration or
`refusal to register is a copyright holder entitled to sue for copyright infringement under § 411.”);
`Marshall & Swift v. BS & A Software, 871 F.Supp. 952, 957-58 (W.D. Mich. 1994)(application
`for copyright registration is insufficient to satisfy condition precedent to jurisdiction; plaintiff
`must obtain certificate of registration before filing suit); Loree Rodkin Mmgt. Corp. v. Ross-
`Simons, Inc., 315 F.Supp.2d 1053, 1054-56 (C.D. Cal. 2004) (same).
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`7
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`refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with
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`a copy of the complaint, is served on the Register of Copyrights.” 17 U.S.C. § 411(a) (emphasis
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`added). Further, Section 410(b) states that, in “any case in which the Register of Copyrights
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`determines that, in accordance with the provisions of this title, the material deposited does not
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`constitute copyrightable subject matter or that the claim is invalid for any other reason, the
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`Register shall refuse registration and shall notify the applicant in writing of the reasons for such
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`refusal.” 17 U.S.C. § 410(b) (emphasis added).
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`Based on this framework, the defendant argues that, as a “matter of straightforward
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`statutory construction,” the logical conclusions are that Congress intended to differentiate the
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`application from the “registration,” and that Congress intended for the Copyright Office to have
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`a full opportunity to review the merits of a copyright application before the courts would be
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`allowed to weigh in. (Docket No. 6 at 5 quoting and citing Ripple Junction, 2005 WL 2206220
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`at *3.) As the Ripple Junction court stated, “if a party could file an infringement suit merely
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`upon filing his application for registration, there would be no need to include a provision stating
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`that a suit can be maintained after the application is refused.” 2005 WL 2206220, at *4. In sum,
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`the defendant argues, “Congress did not contemplate the filing of an infringement action while
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`an application was pending, but instead made clear that registration does not occur until the
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`Copyright Office has reviewed and decided the merits of the application.” (Docket No. 6 at 4.)
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`The plaintiff makes two main arguments in response. First, the plaintiff argues that
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`Section 411(a), which requires registration before a “civil action for infringement” may be filed,
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`is “inapplicable to the present case because plaintiff has not alleged copyright infringement.”
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`(Docket No. 12 at 1.) In support of this position, the plaintiff cites two cases in which a court
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`exercised jurisdiction over a declaratory judgment action that sought to resolve the litigants’
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`Copyright Act rights vis a vis copyright material that was unregistered. (Docket No. 12 at 8
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`citing De Sylva v. Ballentine, 351 U.S. 570 (1956); Surbella v. Foley, 2007 WL 641968, *3-4
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`(S.D. Ohio Feb. 23, 2007)).
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`Neither case appears particularly similar to the case before the court. Indeed, De Sylva
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`considered a unique copyright renewal issue, specifically whether an illegitimate “child [of a
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`deceased copyright holder] is entitled to share in the copyrights which come up for renewal
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`during the widow's lifetime.” 351 U.S. at 572. In Surbella, the plaintiffs alleged that their
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`computer system had been “hijacked” by the defendants and that their property (information on
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`the system) had been stolen. The plaintiffs sought a declaratory judgment, under the Copyright
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`Act, that they were entitled to exclusive use of the system. 2007 WL 641968, at *3. The
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`Surbella court concluded that the case could move forward, despite the registration requirements
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`contained in Section 411(a), because of the lack of connection between the allegations and a
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`claim of copyright infringement. Id.
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`Here, unlike in De Sylva and Surbella, the issue of copyright infringement is central to
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`the plaintiff’s declaratory judgment action, and, therefore, these cases are not particularly useful
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`to the court in analyzing the issues. Helpfully, the defendant points to the Stuart Weitzman, LLC
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`v. Microcomputer Res. Inc., 542 F.3d 859 (11th Cir. 2008) case, which is much more on point.
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`At issue in Weitzman was whether the plaintiff’s use of a computer program infringed on the
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`defendant’s copyrights. Id. at 861. There was no dispute that the copyrights at issue had not
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`been registered (no applications had been submitted). Id. at 863. The plaintiff sought a
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`declaratory judgment that it was the rightful owner of its computer program, and that it could
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`use, maintain and modify the software without infringing the defendant’s copyrights. Id. at 861.
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`The Weitzman court concluded that, because there had been no registration of the
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`copyrights at issue, the defendant would not be able to maintain a copyright infringement action
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`against the plaintiff. Id. at 863. It followed, the court concluded, that if the defendant could not
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`maintain a Copyright Act action for infringement, the plaintiff could not assert a Declaratory
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`Judgment Act claim of “non-infringement.” Indeed, the court stated, “because the Declaratory
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`Judgment Act cannot, of itself, confer jurisdiction upon the federal courts, and because [the
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`defendant] could not sustain an infringement action in federal court, we hold that such a
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`hypothetical coercive action cannot provide the district court with subject matter jurisdiction
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`over [the plaintiff’s] declaratory suit.” Id. In sum, the Weitzman court concluded that, where the
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`“most logical reading” of the plaintiff’s declaratory judgment complaint would reveal that the
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`plaintiff “anticipates a copyright infringement suit,” the declaratory judgment suit is governed by
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`the jurisdictional prerequisite of registration to the same extent as if the defendant had asserted a
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`claim of copyright infringement. Id. at 863.
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`Plainly, as discussed above, this declaratory judgment action was filed because the
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`plaintiff “anticipates a copyright infringement suit.” Indeed, Specific Software filed this lawsuit
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`asserting that the Institute had “threatened litigation against Specific Software based on
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`unwarranted assertions that Specific Software has allegedly infringed the Institute’s copyrights.”
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`(Docket No. 1 at 2.) The logic of Weitzman is sound and commands the fair result, which is that
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`neither side can sue to resolve the issue of infringement until the relevant materials have been
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`registered consistent with Section 411(a) of the Copyright Act. Therefore, the fact that the
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`plaintiff seeks a declaratory judgment does not remove this case from the purview of Section
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`411(a).
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`The plaintiff’s next argument, appropriately, assumes that Section 411(a) is applicable,
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`but it argues that “registration” occurs when the applicant submits the fee, deposit and
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`application. (Docket No. 12 at 2.) The plaintiff correctly points out that there is no binding
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`Sixth Circuit precedent as to how “registration” under Section 411(a) should be defined. (Id.)
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`The plaintiff encourages the court to “adopt sound policy” and embrace what it terms the
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`“broad” approach, also known in the case law as the “application approach,” which concludes
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`that registration is complete (and the court has jurisdiction over a copyright infringement action)
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`once the application, fee, and deposit are submitted to the Copyright Office. (Id. at 3.)
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`The plaintiff argues that the analysis in Hawaiian Village and in other similar cases that
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`adopt the “narrow” approach is “flawed.” (Docket No. 12 at 11.) In support of this position, the
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`plaintiff points to Section 410(d), which states that the “effective date of a copyright registration
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`is the day on which an application, deposit, and fee, which are later determined by the Register
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`of Copyrights or by a court of competent jurisdiction to be acceptable for registration, have all
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`been received in the Copyright Office.” (Id. citing 17 U.S.C. § 410(d)). Under the plaintiff’s
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`view, Section 410(d) indicates that registration is complete with the filing of the fee, application,
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`and deposit, and Section 410(d) empowers the court to proceed with the case after the copyright
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`applicant makes the basic submission. (Docket No. 12 at 3.)
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`Plainly, from a statutory interpretation perspective, the defendant has the better of the
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`argument. Sections 411(a), 410(a), and 410(b) all show a clear congressional intent to have the
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`Copyright Office review the materials submitted and pass judgment on their copyrightability
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`before those materials are considered “registered” for purposes of the jurisdictional requirements
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`11
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`of Section 411(a). Section 410(d) deals with the “effective date” of a registration, not what it
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`takes for a registration to occur, and multiple provisions of this title clearly demonstrate that
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`registration occurs after a Copyright Office review, not simply by the applicant submitting
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`materials.4
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`That said, numerous courts and the widely cited treatise Nimmer on Copyright, take the
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`opposite view, concluding that the court has jurisdiction over an infringement action following
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`the submission of the fee, deposit, and application. See e.g. Apple Barrel, 730 F.2d at 386; Int’l
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`Kitchen Exhaust Cleaning Assoc. v. Power Washers of N. Am., 81 F. Supp. 2d 70, 72 (D.D.C.
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`2000); Iconbazaar, 308 F. Supp. 2d at 633-34. Using Section 410(d) as their statutory
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`foundation, the side favoring this “broad,” or “application,” approach argue that “policy
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`considerations” support their position because, “given that the claimant [after application] has
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`done all that it can do, and will ultimately be allowed to proceed regardless of how the Copyright
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`Office treats the application, it makes little sense to create a period of legal limbo in which suit is
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`barred.” (Docket No. 12 at 3, quoting Nimmer on Copyright § 7.16(B)(1)(a)(i)).
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`Indeed, in Int’l Kitchen, after noting that courts had come out differently on the issue, the
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`court cited Section 410(d) and Nimmer and simply stated that “judicial economy” favored not
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`dismissing the case simply because the plaintiff did not have a registration certificate from the
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`Copyright Office. 81 F. Supp. 2d at 72. A similar approach, that is, discounting the language of
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`Sections 410(a), 410(b), and 411(a), focusing on Section 410(d) and arguing that the registration
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`4Further, it would be inappropriate to conclude that Section 410(d) indicates that this
`court is “a court of competent jurisdiction” with the power to register copyright materials, as that
`is simply inconsistent with the copyright registration scheme established by the Copyright Act,
`in which the applicant submits materials to the Copyright Office, which registers the copyright
`or rejects registration.
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`process is of little import because the “owner of the work may bring suit even if his copyright
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`application is denied” is also found in the Iconbazaar case, along with most cases taking this
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`“broad” view. 308 F. Supp. 2d at 634.
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`To the court, the recent decisions of other district courts in this circuit are more soundly
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`reasoned and should be followed. Plainly, the courts in Int’l Kitchen and Iconbazaar have
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`correctly recognized that there is something “uneconomic” about dismissing a complaint simply
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`because the plaintiff does not have a certificate of registration, especially when the plaintiff,
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`under Section 411(a), will be allowed to sue even if the Copyright Office denies the registration
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`and refuses to issue the certificate. But, as the courts of this circuit have recognized, it is the role
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`of the courts to “interpret a statute to give effect to each clause, sentence, and word so that none
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`is rendered superfluous or surplusage.” Ripple Junction, 2005 WL 2206220, at * 4 (citing U.S.
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`v. Perry, 360 F.3d 519, 537 (6th Cir. 2004)). To read the statute to mean that registration occurs
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`when the applicant files his materials would be to misread and render superfluous numerous
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`provisions of the Copyright Act, perhaps most notably Section 411(a), which provides the
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`procedure for how a lawsuit may still be filed even if registration is refused by the Copyright
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`Office. Id.
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`Plainly, Congress intended a scheme in which, before an entity could sue on a claim of
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`copyright infringement, the Copyright Office would be entitled to pass, in an essentially non-
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`binding manner, on the vitality of the copyright.5 Obviously such a system will cause some
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`5 Courts that adopt the “registration,” or “narrow,” approach do not agree as to when
`exactly “registration” occurs. See La Resolana Architects, 416 F.3d at 1202-03 (discussing that
`some courts find that “registration” occurs when the certificate of registration is obtained by the
`applicant, and others find that registration occurs whenever the Copyright Office passes on the
`copyrightability of the materials, “however [the registration] is demonstrated.”) It is not
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`inevitable delays in litigation, but Congress apparently felt those delays were worth the benefit
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`of the Copyright Office having an initial chance to pass judgment.6
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`Where the court is called upon to interpret the language of a statute, and that language is
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`clear, as it is here, it is simply the role of the courts to enforce that language. Hoge v. Honda of
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`Am. Manufacturing, Inc., 384 F.3d 238, 247 (6th Cir. 2004). Because the defendant’s copyrights
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`have not been “registered” as that term is used in the Copyright Act, the court does not have
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`jurisdiction over copyright infringement claims related to those copyrights, and that includes the
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`“anticipatory” declaratory judgment action advanced here by the plaintiff. Therefore, the
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`plaintiff’s Complaint will be dismissed. It is therefore not necessary to consider the parties’
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`arguments regarding whether declaratory relief is generally appropriate in this case, under the
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`standard provided in Grand Trunk Western Railroad Co. v. Consolidated Rail Corp., 746 F.2d
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`323, 326 (6th Cir. 1984)7
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`necessary to resolve this issue here, because there is no dispute that the Copyright Office has not
`passed on the copyrightability of the materials.
`
`6The plaintiff argues that this interpretation places it in “legal limbo, uncertain whether
`continued hosting of its website will subject plaintiff to actual and exceptional damages for the
`‘willful’ infringement defendant complains about in its demand letters. ... Further, although
`defendant takes the narrow approach now, there is nothing ... that would have prevented
`defendant from taking the broad approach and suing first. Plaintiff truly was stuck between a
`rock and a hard place.” (Docket No. 12 at 3-4.) The plaintiff is not the only party in “legal
`limbo”; rather, as dictated by the case law discussed herein, both sides are precluded from suing
`until the Copyright Office passes on the defendant’s submissions. Plainly, both sides bear the
`costs of this scheme.
`
`7 In its brief in support of its motion to dismiss, the defendant states “this suit should be
`dismissed and a hearing should be set to determine an award of reasonable attorney’s fees
`pursuant to 17 U.S.C. § 505.” (Docket No. 6 at 1.) Section 505 of the Copyright Act provides
`that “the court may also award a reasonable attorney’s fee to the prevailing party as part of the
`costs.” 17 U.S.C. § 505. While the court has discretion to award such fees to the prevailing
`party, those fees are only properly awarded to a defendant where the claim asserted is
`
`14
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`Case 3:09-cv-00112 Document 16 Filed 05/18/09 Page 14 of 15 PageID #: 411
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`

`
`CONCLUSION
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`For the reasons discussed herein, the Institute’s Motion to Dismiss will be granted and
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`this case will be dismissed (without prejudice) for lack of subject matter jurisdiction.
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`An appropriate order will enter.
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`_______________________
`
`ALETA A. TRAUGER
`United States District Judge
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`“frivolous,” driven by improper motives, or “objectively unreasonable.” Fogerty v. MGM
`Holdings Group Corp., Inc., 379 F.3d 348, 357 (6th Cir. 2004). Under this standard, attorney’s
`fees for the defendant are plainly not appropriate. As discussed herein, courts have split on the
`definition of “registration,” and there is no controlling Sixth Circuit precedent. Further, there is
`scant case law on whether an accused infringer can proceed with a declaratory judgment action
`absent registration. For the plaintiff to assert this claim was hardly “frivolous” or “objectively
`unreasonable.”
`
`15
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`Case 3:09-cv-00112 Document 16 Filed 05/18/09 Page 15 of 15 PageID #: 412