Jarrell v. Law Office of Sidney D. Torres, III, APLC

Filing 24

ORDER denying 13 Motion to Dismiss for Failure to State a Claim. Signed by Judge Jay C. Zainey on 6/21/12. (jrc, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
DAVID C. JARRELL

CIVIL ACTION

VERSUS

NO: 12-510

LAW OFFICE OF SIDNEY D.
TORRES, III, APLC

SECTION: "A" (2)

ORDER AND REASONS
Before the Court is a Motion for Partial Dismissal of
Plaintiff’s Complaint for Failure To State a Claim Upon Which
Relief Can Be Granted (Rec. Doc. 13) filed by defendant, Law
Offices of Sidney D. Torres, III, APLC.
Jarrell, opposes the motion.

Plaintiff, David C.

The motion, set for submission on

June 20, 2012, is before the Court on the briefs without oral
argument.
This case arises out of a claim against the Law Offices of
Sidney D. Torres, III, APLC, for the alleged copyright
infringement of a legal case management software system developed
and owned by plaintiff, David C. Jarrell.
4).

Prior to July 1, 2011, Defendant used the system under a

licensing agreement with Jarrell.
1).

(Amended Complaint ¶

(Opposition, Rec. Doc. 15, at

Therefore, the infringement at issue in this case pertains

to use that occurred on and after July 1, 2011.
Complaint ¶ 6).

(Amended

The effective dates on Jarrell’s copyright

registrations range from August 3, 2011, to August 9, 2011.
1

(Complaint, Rec. Docs. 1-2 & 1-2).

Jarrell initiated this

lawsuit to recover all damages sustained as a result of the
infringement and to enjoin Defendant from further infringement.
The original complaint also included a claim for attorney’s fees
pursuant to 17 U.S.C. § 505.1
Via the instant motion Defendant moves to dismiss the § 505
attorney’s fee claim.

Defendant argues that dismissal is

appropriate because the effective date of the registrations is
more than three months after the alleged publication date listed
on each certificate, and because the alleged infringement
occurred before the registrations became effective.2
1

Remedies for infringement: Costs and attorney’s fees.
In any civil action under this title, the court in its
discretion may allow the recovery of full costs by or
against any party other than the United States or an
officer thereof. Except as otherwise provided by this
title, the court may also award a reasonable attorney's
fee to the prevailing party as part of the costs.
17 U.S.C.A. § 505 (West 2005).
2

Registration as prerequisite to certain remedies for
infringement. In any action under this title, other than
an action brought for a violation of the rights of the
author under section 106A(a), an action for infringement
of the copyright of a work that has been preregistered
under section 408(f) before the commencement of the
infringement and that has an effective date of
registration not later than the earlier of 3 months after
the first publication of the work or 1 month after the
copyright owner has learned of the infringement, or an
action instituted under section 411(c), no award of
statutory damages or of attorney's fees, as provided by
sections 504 and 505, shall be made for-2

Shortly after Defendant filed its motion, Plaintiff moved to
amend his complaint to withdraw the request for § 505 attorney’s
fees.

Therefore, Defendant’s motion is moot as to this point.

However, Defendant requests its own attorney’s fees in
conjunction with filing the instant motion and asserts that the
dismissal should be with prejudice.
Defendant’s motion is moot as to the § 505 claim for
attorney’s fees.3

The Court will not award Defendant its own

attorney’s fees in conjunction with filing this motion.

Assuming

that Defendant is a “prevailing party,” the Court declines to
exercise its discretion to award fees at this juncture.

While it

is true that Defendant would not have filed the instant motion
but for Jarrell’s unsupported § 505 claim, it also stands true
that Jarrell would not have filed his original complaint at all
but for the alleged infringement that forms the basis of this

(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.A. § 412 (West 2005 & Supp. 2012).
3

It is undisputed that Plaintiff properly amended his
complaint in conformance with the Federal Rules.
3

lawsuit.

If the trier of fact ultimately finds no merit to

Jarrell’s infringement claims then as a prevailing party
Defendant can move for its attorney’s fees pursuant to § 505.
Moreover, Defendant might have avoided filing the instant motion
by requesting that Jarrell withdraw the § 505 claim but it is not
clear to the Court that this occurred and that Jarrell simply
balked.
Further, the Court sees no basis for a dismissal with
prejudice.

Because Jarrell is conceding Defendant’s argument

with respect to the specific infringement dates alleged, there is
no danger of the § 505 claim being resurrected on the facts
currently alleged.

But Defendant has yet to even answer the

complaint and discovery is in its infancy in this case.

As

Plaintiff points out in his opposition, discovery may very well
lead to other infringement dates, which while not currently pled,
would surely form the basis for an amended complaint.

The Court

agrees that it is simply too early to completely foreclose the
possibility of a § 505 claim by dismissing it with prejudice.4
Accordingly, and for the foregoing reasons;
IT IS ORDERED that the Motion for Partial Dismissal of

4

It also occurs to the Court that the debate over whether
the dismissal should be with or without prejudice is essentially
meaningless. Until a final judgment issues in the case all
dismissals are in effect without prejudice because this Court
always has discretion to revisit a prior ruling while the case
remains pending.
4

Plaintiff’s Complaint for Failure To State a Claim Upon Which
Relief Can Be Granted (Rec. Doc. 13) filed by defendant, Law
Offices of Sidney D. Torres, III, APLC is DENIED.
June 21, 2012
JAY C. ZAINEY
UNITED STATES DISTRICT JUDGE

5