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