CSS, Inc. v. Herrington et al

Filing 52

MEMORANDUM OPINION & ORDER granting the defendants' 17 MOTION to Dismiss; directing that this case is DISMISSED without prejudice. Signed by Judge Joseph R. Goodwin on 8/18/2016. (cc: counsel of record; any unrepresented party) (published to the court's website at www.wvsd.uscourts.gov) (taq)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF WEST VIRGINIA
CHARLESTON DIVISION
CSS, INC.,
Plaintiff,
v.

CIVIL ACTION NO. 2:16-cv-01762

CHRISTOPHER HERRINGTON, et al.,
Defendants.

MEMORANDUM OPINION & ORDER
Pending before the court is the defendants’ Motion to Dismiss [ECF No. 17].
For the reasons detailed below, the Motion is GRANTED.
I.

Issue Presented
The issue presented is whether the filing of an application for registration of a

work with the Copyright Office is sufficient to allow a party to initiate an
infringement claim in federal court pursuant to the Copyright Act’s mandatory presuit registration provision. The Fourth Circuit has not addressed this question, and
those circuits that have are split between two different approaches. After examining
those circuit decisions, I decide that the mere submission of an application for
registration does not constitute registration under the Copyright Act.

II.

Background
The plaintiff initiated this case by filing its Complaint [ECF No. 1] with the

United States District Court for the Southern District of West Virginia on February
23, 2016. The plaintiff alleges that “[v]enue is proper in the Southern District of West
Virginia as all Defendants reside in Wood County, West Virginia.” Compl. ¶ 9.
According to the plaintiff, “[j]urisdiction is proper as a federal claim is involved
pursuant to the Copyright Act, and the Court has supplemental jurisdiction over all
other claims, which are part of the same case or controversy.” Compl. ¶ 10.
The Complaint alleges eight counts: (1) copyright infringement, (2) breach of
contract, (3) violation of duty of loyalty, (4) tortious interference with existing or
potential business relationships, (5) unjust enrichment, (6) misappropriation of trade
secrets, (7) injunctive relief, and (8) declaratory judgment. The defendants’ Motion
argues that the plaintiff is unable to state a claim for copyright infringement
pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, and because an
alleged violation of the Copyright Act is the sole basis for federal question subject
matter jurisdiction in this case, the defendants argue the court lacks supplemental
jurisdiction over all remaining claims. Defs.’ Mem. Supp. Mot. Dismiss 4 [ECF No.
18]. As the Motion is based only upon issues involving the Copyright Act, I will not
address the plaintiff’s remaining claims.

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III.

Legal Standard
Rule 8(a)(2) of the Federal Rule of Civil Procedure requires that a pleader

provide “a short and plain statement of the claim showing that the pleader is entitled
to relief.” Fed. R. Civ. P. 8(a)(2). Rule 12(b)(6) of the Federal Rules of Civil Procedure
permits a defendant to challenge a complaint when it “fail[s] to state a claim upon
which relief can be granted.” Fed. R. Civ. P. 12(b)(6). Application of the Rule 12(b)(6)
standard requires that I “accept as true all of the factual allegations contained in the
complaint.” Erickson v. Pardus, 551 U.S. 89, 94 (2007) (citing Bell Alt. Corp. v.

Twombly, 550 U.S. 544, 555-56 (2007)). “To survive a motion to dismiss, a complaint
must ‘state a claim to relief that is plausible on its face.’” Andon, LLC v. City of

Newport News, 813 F.3d 510, 513–14 (2016) (quoting Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009)).
IV.

Discussion
“Federal district courts have subject-matter jurisdiction over copyright

infringement actions based on 28 U.S.C. §§ 1331 and 1338.” Reed Elsevier, Inc. v.

Muchnick, 559 U.S. 154, 164–65 (2010). “Subject to certain exceptions, the Copyright
Act . . . requires copyright holders to register their works before suing for copyright
infringement.” Id. at 157. The Supreme Court has held that the Copyright Act’s
registration requirement imposes a type of precondition to suit that “does not
implicate the subject-matter jurisdiction of federal courts.” Id. at 169.

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In its Complaint, the plaintiff states that it “has numerous pending copyright
applications on file with the United States Copyright Office for its computer
programs.” Compl. ¶ 12. The defendants squarely challenge the plaintiff’s copyright
infringement action on the grounds that the plaintiff has not registered its software
programs, but it has merely filed an application for registration.
The Fifth, Seventh, and Ninth Circuits have taken the “application approach,”
ruling that a party’s filing of an application with the Copyright Office constitutes
“registration” under the Act. See Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384,
386–87 (5th Cir. 1984); Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631
(7th Cir. 2003); Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 621 (9th
Cir. 2010). The Tenth and Eleventh Circuits follow the “registration approach,” and
they have ruled that the Register of Copyrights must affirmatively determine
whether copyright protection is warranted before registration may occur under the
Act. See La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1201–
02 (10th Cir. 2005), abrogated on other grounds by Muchnick, 559 U.S. 154; M.G.B.

Homes, Inc. v. Ameron Homes, Inc. 903 F.2d 1486, 1489 (11th Cir. 1990)
(acknowledging that dismissal was appropriate because the Copyright Office had not
issued a registration certificate prior to the initiation of the suit).
The Copyright Act’s pre-suit registration requirement is located at 17 U.S.C. §
411(a). In pertinent part, the statute states the following:
[N]o civil action for infringement of the copyright in any United States
work shall be instituted until preregistration or registration of the
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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.
17 U.S.C. § 411(a).1 The statutory definition of the term “registration” is unhelpful
in determining what constitutes registration for the purpose of § 411(a)’s pre-suit
registration requirement: “‘Registration’ . . . means a registration of a claim in the
original or the renewed and extended term of copyright.” 17 U.S.C. § 101. Even so,
other provisions within the Copyright Act are informative.
Section 408(a) of the Copyright Act states that “the owner of copyright or of
any exclusive right in the work may obtain registration of the copyright claim by
delivering to the Copyright Office the deposit specified by this section, together with
the application and fee.” 17 U.S.C. § 408(a). Section 410 states that “[w]hen, after

examination, the Register of Copyrights determines that, in accordance with the
provisions of this title, the material deposited constitutes copyrightable subject
matter, . . . the Register shall register the claim and issue to the applicant a certificate
of registration.” 17 U.S.C. § 410(a) (emphasis added). The statute goes on to state that
“[i]n any case in which the Register of Copyrights determines that . . . the material
deposited does not constitute copyrightable subject matter or that the claim is invalid
for any other reason, the Register shall refuse registration.” 17 U.S.C. § 410(b)
(emphasis added). Further, the statute dictates that, “[t]he effective date of a

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The Copyright Act’s “preregistration” provisions are not implicated in this case.

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copyright registration is the day on which an application, deposit, and fee, which are

later determined by the Register of Copyrights or by a court of competent jurisdiction
to be acceptable for registration, have all been received in the Copyright Office.” 17
U.S.C. § 410(d) (emphasis added).
As always in deciding questions of statutory interpretation, I begin with the
text of the statute. See Othi v. Holder, 734 F.3d 259, 265 (4th Cir. 2013). “Unless
Congress indicates otherwise, ‘we give statutory terms their ordinary, contemporary,
and common meaning.’” Id. (quoting United States v. Powell, 680 F.3d 350, 355 (4th
Cir. 2012)). “To determine a statute’s plain meaning, we not only look to the language
itself, but also the specific context in which that language is used, and the broader
context of the statute as a whole.” Country Vintner of N.C., LLC v. E. & J. Gallo

Winery, Inc., 718 F.3d 249, 258 (4th Cir. 2013).
In order to seek registration of a copyrightable work, § 408 requires a person
to (1) submit an application, (2) deposit a copy of the work with the Copyright Office,
and (3) pay a fee. 17 U.S.C. § 408(a). Once these requirements are met, the Copyright
Act states that the Register will examine the submissions to determine if the work is
proper for registration. 17 U.S.C. § 410(a). If the Register determines that all of the
legal requirements are met, the statute states that “the Register shall register the
claim and issue to the applicant a certificate of registration.” Id. In other words, the
plain meaning of § 410(a) is that registration under the Copyright Act occurs once the
Register independently decides to “register the claim and issue to the applicant a
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certificate of registration” based upon a review of the submitted materials. See id.
Further, the statute states that the Register shall refuse registration if he or she
determines that the work is not copyrightable or the application is otherwise
defective. 17 U.S.C. § 410(b). Even so, a party may initiate a copyright infringement
action once the Register refuses to register a work. 17 U.S.C. § 411(a) (“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.”). The plain
meaning of these provisions is that the Copyright Office should take some action—
whether to accept or refuse an application—before a party may bring a copyright
infringement suit.
Courts applying the application approach—that is, deeming the mere
submission of an application to the Copyright Office to satisfy the registration
requirement under § 411(a)—have nonetheless determined that the statute is
ambiguous. The Ninth Circuit succinctly explains the rationale supporting the
application approach:
[Section] 408 blurs the line between application and registration and
favors the application approach. In setting forth the permissive
registration requirements, § 408 states: “[T]he owner of a copyright or
any exclusive right in the work may obtain registration . . . by delivering
to the Copyright Office the deposit specified by this section, together
with the application and fee specified. This section implies that the sole
requirement for obtaining registration is delivery of the appropriate
documents and fee.

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One final relevant subsection of the Act, § 410(d), could be read as
supporting either the application or registration approach. . . . Because
this subsection dates a later-approved registration as of the date of its
application, it supports the interpretation that application is the critical
event. However, because this back-dating does not occur until after the
Copyright Office or a court has deemed the registration acceptable, the
statute could be read to require action by the Register to effect
registration.
We are not persuaded that the plain language of the Act unequivocally
supports either the registration or application approach.

Cosmetic Ideas, Inc., 606 F.3d at 617–18 (citations omitted).
I, however, disagree with the reasoning for the application approach. Instead,
I agree with the learned Judge Richard D. Bennett’s decision from the the United
States District Court for the District of Maryland:
This Court finds that 17 U.S.C. § 411(a) when read to give the words
their ordinary, contemporary, and common meaning, clearly evidences
Congress’ intent to require something more than application for a
copyright prior to filing suit. Section 411(a) specifically states that
preregistration or registration are required to file an action for
infringement. In fact, the term application is used in the same section
and is clearly something separate and apart from registration. Congress
also specifically described the process of seeking registration . . . without
labeling this process as registration for purposes of Section 411(a). This
Section evidences Congress’ intent for the United States Copyright
Office to be able to apply its expertise to review applications to
determine whether registration is warranted and specifically provides
for a course of action to allow suit when the Copyright Office takes action
and denies an applicant’s registration. This process reflects
understandable public policy.

Mays & Assocs., Inc. v. Euler, 370 F. Supp. 2d 362, 368–69 (D. Md. 2005) (Bennett,
J.). Further, the Supreme Court, in dicta, has indicated that the mere submission of
an application for registration is not enough: “Although registration is ‘permissive,’
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both the certificate [of registration] and the original work must be on file with the
Copyright Office before a copyright owner can sue for infringement.” Petrella v.

Metro-Goldwin-Mayer, Inc., 134 S. Ct. 1962, 1977 (2014) (citing 17 U.S.C. §§ 408(b),
411(a)).
Importantly, the Copyright Office, which is tasked with interpreting and
applying the Act, agrees that simply submitting an application does not satisfy the
pre-suit registration requirement under § 411(a). On October 2, 2015, the Associate
Register of Copyrights and Director of Registration Policy and Practice for the U.S.
Copyright Office, Robert J. Kasunic, Esq., gave a keynote address at Columbia Law
School. Mr. Kasunic had this to say about the application approach:
I would also like to mention an area of enormous concern to the Office
and the Register’s statutory authority. As I said, under the
congressional design of the statute, the Office is placed in an
intermediary position to the courts. As a prerequisite to bringing a
copyright infringement suit, sections 410 and 411(a) require the
Register to determine whether to register or refuse a claim in copyright
of a work. Some courts have interpreted this to mean that a creator or
owner must simply have filed an application for registration with the
Office, the so-called “Application Rule.” However, under any
interpretation of the Act, an application for registration is not the same
thing as the issuance of a certificate of registration or a refusal by the
Office.
...
[T]here are other reasons why the Application Rule is inappropriate.
First, any applicant in litigation can request, for a fee, “special
handling,” which expedites the examination of a claim in litigation to
five business days. Second, if the court moves forward with a case in
which the Register has not made a decision, not only does the court lose
the benefit of the Office’s findings with respect to the legal and formal
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requirements of the Copyright Act, . . . but the court deprives the
Register of a clear statutory right in cases that result in refusal.
Congress clearly intended this mediation as an important benefit to the
courts by making it a prerequisite to filing an action for infringement. .
. . [T]he Application Rule not only violates the congressional scheme, but
does a disservice to the legal process and the intended benefit that the
Office was intended to provide to the courts.2
Robert Kasunic, Copyright From Inside the Box: A View from The U.S. Copyright

Office, 39 Colum. J.L. & Arts 311, 319–20 (2016).
In addition to my examination of the plain meaning of the relevant statutory
provisions, I consider the interpretation of the Copyright Act by a senior official at
the U.S. Copyright Office to be highly persuasive. Accordingly, I FIND that an owner
of a copyright is entitled to sue for copyright infringement under § 411(a) only upon
the decision of the Copyright Office to register or refuse to register the owner’s
copyright claim.
Turning now to the specific allegations of this case, the Complaint’s singular
reference to the Copyright Act’s registration process states that “Plaintiff has
numerous pending copyright applications on file with the United States Copyright
Office for its computer programs.” Comp. ¶ 12. Nothing in the Complaint suggests
that the Copyright Office has taken any action regarding the plaintiff’s pending
applications. Accordingly, I FIND that the plaintiff has failed to present sufficient

It is worth noting that the Copyright Office does not create an online public record or assign a record
number for any protected work until after the Register issues a certificate of registration. U.S.
Copyright Office, Compendium of U.S. Copyright Office Practices § 209 (3d ed. 2014).
2

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facts to allege that it has satisfied the mandatory pre-suit conditions established by
17 U.S.C. § 411(a), and thus the plaintiff is unable to pursue its present copyright
infringement claim at this time.
According to the defendant, once I determine that the plaintiff’s infringement
claim must be dismissed, the remaining claims must also be dismissed. Mem. Supp.
Mot. 4 (“As Plaintiff no longer satisfies federal question jurisdiction, this Court no
longer has supplemental jurisdiction over Plaintiff’s other claims.”). The court’s
supplemental jurisdiction derives from statute:
[I]n any civil action of which the district courts have original
jurisdiction, the district courts shall have supplemental jurisdiction over
all other claims that are so related to claim in the action within such
original jurisdiction that they form part of the same case or controversy
under Article III of the United States Constitution.
28 U.S.C. § 1367(a). Under § 1367(c), the court may decline to exercise supplemental
jurisdiction over a claim if the court “has dismissed all claims over which it has
original jurisdiction.” 28 U.S.C. § 1367(c)(3). Thus, the defendants are incorrect in
stating that a district court lacks supplemental jurisdiction simply because a court
dismisses the underlying claim that triggered the court’s original jurisdiction. 13D
Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 3567.3 (3d
ed. 1998) (“The fact that dismissal under § 1367(c) is discretionary—and not
jurisdictional—is now absolutely clear.” (citing Carlsbad Tech., Inc. v. HIF Bio, Inc.,
556 U.S. 635, 639 (2009) (“A district court’s decision whether to exercise

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[supplemental] jurisdiction after dismissing every claim over which it had original
jurisdiction is purely discretionary.”))).
Even though I have jurisdiction over the plaintiff’s remaining claims, I note
that the plaintiff has remained completely silent on the issue of whether I should
grant the defendants’ Motion with regard to exercising my discretion under § 1367(c)
to dismiss the plaintiff’s residual claims. Absent any advocacy from the plaintiff, I am
not inclined to separate the remaining claims from the copyright claim. Accordingly,
I FIND that the remaining claims should be dismissed.
V.

Conclusion
For the reasons given above, the defendants’ Motion to Dismiss [ECF No. 17]

is GRANTED. The court ORDERS that this case is DISMISSED without prejudice.
The court DIRECTS the Clerk to send a copy of this Order to counsel of record
and any unrepresented party. The court further DIRECTS the Clerk to post a copy of
this published opinion on the court’s website, www.wvsd.uscourts.gov.
ENTER:

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August 18, 2016