Robbins, Joe v. Svehla, Scott et al

Brief in Reply

W.D. Wis.October 10, 2016

QB\131740.00005\41829111.1 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF WISCONSIN JOE ROBBINS, individually and on behalf of others similarly situated, Plaintiff, v. SCOTT SVEHLA; SCOTT’S BREWERY COLLECTIBLES, LLC; NICHOLAS MARTIN; SPORTS-4-LESS; GERALD MILLER; PHARMACY STATION, INC.; and JOHN DOES 1-10, Defendants. Case No. 3:16-CV-532-jdp REPLY BRIEF IN SUPPORT OF DEFENDANT SCOTT’S BREWERY COLLECTIBLES, LLC’S MOTION TO DISMISS In response to Scott’s Brewery Collectibles LLC’s (“SBC”) motion to dismiss, plaintiff now admits he had no copyright registration prior to filing his lawsuit; indeed, that he still has no copyright registration.1 Plaintiff asserts, however, that 17 U.S.C. § 411(a) does not require registration, but only a filed application. Pl. Mem. at 1. This argument is without merit based on Seventh Circuit decisions and the plain language of the Copyright Act. I. THE “APPLICATION APPROACH” DOES NOT CONTROL IN THE SEVENTH CIRCUIT Plaintiff argues that the mandatory registration requirement in 17 U.S.C. § 411(a) is met simply by filing an application for registration. Pl. Mem. at 2 (“the Seventh Circuit has approved and applied the application approach”), citing Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003). Plaintiff asserts that defendant’s argument to the contrary “rel[ies] entirely on dicta” (id.), but in fact plaintiff’s argument itself relies solely on dicta. See Chicago Bd. 1 See Dkt. 18, Plaintiff’s Memorandum of Law in Opposition to Defendants’ Motions to Dismiss the Complaint (“Pl. Mem.”), at 1 (“Plaintiff does not dispute that the United States Copyright Office has not yet issued a certificate of registration for the photograph at issue in this action.”). Case: 3:16-cv-00532-jdp Document #: 35 Filed: 10/10/16 Page 1 of 6 -2- QB\131740.00005\41829111.1 of Educ., 354 F.3d at 631. Plaintiff’s response is also without merit because registration is required by the express language of the Copyright Act. The issue in Chicago Bd. of Educ. was whether the school board could sue where, while claiming copyright in the entirety of the educational tests at issue, it might not have had an actual copyright interest in each and every question on these tests. 354 F.3d at 631. That’s the point the Seventh Circuit was discussing in the section from which the plaintiff quotes--i.e., “an application for registration must be filed before the copyright can be sued upon.” Id. & Pl. Mem. at 2. This is confirmed by a reading of the case itself. It is also confirmed by subsequent Seventh Circuit decisions that support the need for actual registration , especially Gaiman v. McFarlane, 360 F.3d 644, 654-55 (2004) (“The significance of registration is that it is a prerequisite to a suit to enforce a copyright. More precisely, an application to register must be filed, and either granted or refused, before suit can be brought. 17 U.S.C. § 411(a).”) (italics added).2 See also DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616, 622 (2013) (“As a general matter, and with exceptions not relevant here, the Copyright Act provides that a copyright holder must register its copyright in a work with the United States Copyright Office before filing suit for infringement.”), citing 17 U.S.C. § 411(a) and Reed Elsevier, Inc. v. Irvin Muchnick, 559 U.S. 154 (2010); Neri v. Monroe, 726 F.3d 989, 991-92 (2013) (“Registration is required for litigation but not for the existence of copyright. This implies that registration serves a record-keeping function. It pins down details about what intellectual-property rights have been claimed.”); WIAA v. Gannett Co., Inc., 658 F.3d 614, 620 (7th Cir. 2011) (“One prerequisite to bringing a suit for infringement is that a party register its copyright. 17 U.S.C. § 411(a). Though that rule is not jurisdictional, see Reed Elsevier, Inc. v. Muchnick, 559 2 Notably, after the Seventh Circuit panel made this statement in Gaiman, it went on to reference Chicago Bd. of Educ., stating: “There is an interesting question, left open in our recent decision in [Chicago Bd. of Educ.], and unnecessary to decide in this case either, whether if registration is granted by mistake the registrant may nonetheless sue.” 360 F.3d at 655. Nothing in Gaiman suggests that the Court thought Chicago Bd. of Educ. holds that only an application is for registration is needed. Case: 3:16-cv-00532-jdp Document #: 35 Filed: 10/10/16 Page 2 of 6 -3- QB\131740.00005\41829111.1 U.S. 154, 130 S.Ct. 1237, 176 L.Ed.2d 18 (2010), it still reflects an important case-processing principle, and it is notable that neither WIAA or Gannett has registered anything here.”). Plaintiff’s brief also contradicts any claim that Chicago Bd. of Educ. is dispositive. After arguing that this case “holds” that nothing more than an application for registration is required, plaintiff goes on to discuss numerous cases that do not rely on or even cite to Chicago Bd. of Educ. when discussing this point. Pl. Mem. at 3-7. Plaintiff asserts that the majority of district courts in this Circuit have taken the “application” approach, yet there are many well-reasoned cases that take the “registration” position also. Dkt. #16, Brief in Support of Defendant Scott’s Brewery Collectibles LLC’s Motion to Dismiss, at 3-4; Furstperson, Inc. v. Iscopia Software, Inc., Case No. 09 C 1814, 2009 WL 2949777, *3 (N.D. Ill. 2009) (“We conclude that the mere application for a copyright registration is not sufficient to support a copyright infringement claim.”). In granting a recent motion to dismiss on similar facts (pending application, no actual registration), Judge J.P. Stadtmueller in the Eastern District of Wisconsin stated: Finally, Johnson [defendant] maintains that Poblocki [plaintiff] has failed to register its copyright, a necessary precondition to an infringement lawsuit. This third point is dispositive. A plaintiff claiming copyright infringement must register their copyright prior to initiating litigation. See 17 U.S.C. § 411(a) (“[N]o 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[.]”); Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 166 (2010) (“Section 411(a) imposes a precondition to filing a claim[.]”); DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616, 622 (7th Cir. 2013) (“[T]he Copyright Act provides that a copyright holder must register its copyright in a work with the United States Copyright Office before filing suit for infringement.”); Neri v. Monroe, 726 F.3d 989, 991 (7th Cir. 2013). Prior Seventh Circuit precedent held that “an application to register must be filed, and either granted or refused, before suit can be brought.” Gaiman v. McFarlane, 360 F.3d 644, 6754-55 (7th Cir. 2004). Though it is unclear whether Gaiman reflects a firm, final stance by the Court of Appeals on the issue, the quoted holding has not been called into question. It is irrelevant for the Court’s purposes here; Poblocki has failed to allege that it completed registration or that its application was refused. Because it Case: 3:16-cv-00532-jdp Document #: 35 Filed: 10/10/16 Page 3 of 6 -4- QB\131740.00005\41829111.1 merely alleges that “[sic] Federal Copyright protection for the CRM has been sought by application,” and the Database is an “applied-for copyright work,” Section 411(a) bars Poblocki’s infringement claim. . . . Johnson’s motion to dismiss Count One of the amended complaint will be granted.” Poblocki Paving Corp. v. Johnson & Sons Paving, LLC, 2016 WL 1700390, *2 (E.D. Wis. April 27, 2016) (emphasis added). II. THE PLAIN LANGUAGE OF THE COPYRIGHT ACT REQUIRES ACTUAL REGISTRATION To the extent case law in this Circuit is ambiguous on the point, dismissal is also required by the plain language of the Copyright Act. The Copyright Act provides that “no 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” or registration has been refused. 17 U.S.C. § 411(a). Since it is the Copyright Office that “makes” the registration, or refuses to register the copyright after examination, see 17 U.S.C. § 410; the requirement for actual registration is clear. This point was cogently stated by the U.S. Solicitor General in briefing to the U.S. Supreme Court:3 Section 411(a) requires the plaintiff to possess a registration certificate, to have been refused registration, or to have preregistered, at the time the suit is commenced. Although some courts have held that Section 411(a)’s precondition to suit is satisfied by simply filing an application for registration, see, e.g., Apple Barrel Prods., Inc. v. Beard, 730 F.3d 384, 386-87 (5th Cir. 1984), those decisions are contrary to Section 411(a)’s plain test, and therefore incorrect. Section 411(a) unambiguously states that registration must have been “made in accordance with this title”--i.e., granted by the Copyright Office-- before a suit may be filed. See, e.g., La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1203-1205 (10th Cir. 2005). And although Section 411(a) allows the putative copyright owner to sue even if his registration application is denied, the statute clearly contemplates that the plaintiff will commence the suit only after the Copyright Office has acted on the application. See 17 U.S.C. 411(a) (providing that, where a properly submitted registration application 3 This brief was filed in connection with Reed Elsevier, Inc. v. Irvin Muchnick, 559 U.S. 154 (2010). When deciding that case, the Supreme Court held that registration was a statutory prerequisite to suit, not a jurisdictional requirement, but did not decide whether this prerequisite could be met by an application only, prior to registration. Case: 3:16-cv-00532-jdp Document #: 35 Filed: 10/10/16 Page 4 of 6 -5- QB\131740.00005\41829111.1 “has been refused, the applicant is entitled to institute an action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights”). Moreover, if the district court were to adjudicate an infringement suit on the merits while the plaintiff’s application suit was pending before the Copyright Office, the court would be deprived of the Register’s views on such issues as copyrightability. See 5 Patry on Copyright § 17:78 (Sept. 2016 Update), quoting Brief of the United States, Reed Elsevier, Inc. v. Muchnick, No. 08-103, at pages 24-25 n. 14, 2009 WL 1603031, *24 n.14 (filed June 8, 2009).4 Plaintiff’s argument that only a pending application is required also ignores the public policy goals behind the registration requirement. Here again, the Solicitor General’s brief is informative: Section 411(a)’s registration requirement serves important purposes beyond protecting the interests of the parties in an individual suit. See H.R. Rep. No. 7083, 59th Cong., 2d Sess. 8 (1907) (registration requirement in the 1909 Copyright Act was enacted “[f]or the protection of the public itself”). The requirement encourages authors to deposit their creative works with the Copyright Office, thereby providing the Library of Congress with an important source of its acquisitions. See H.R. Rep. No. 609, supra, at 42 (emphasizing importance of this cost-free method of acquisition); Copyright Report 13 (“Copyright deposits form the core of the Library’s Americana’ collections and serve as the primary record of American creativity.”). In addition, registration enables the Copyright Office to compile a record of copyrighted works, which serves as a valuable resource for those seeking to use copyrighted works lawfully. See id. at 12. Id. (Brief of the United States in Reed Elsevier, Inc. v. Muchnick, No. 08-103, 2009 WL 1601031, *23 (2009).). 4 Preregistration is a procedure for certain categories of works having “a history of infringement prior to authorized commercial distribution,” which, therefore, may be registered prior to completion. 17 U.S.C. § 408(f)(2); 37 C.F.R. § 202.16(b)(1). The plaintiff does not allege preregistration, but even if he did preregistration is not a substitute for actual registration. See 17 U.S.C. § 408(f)(3) (requiring copyright owner to submit an application for registration within 3 months after the work is published); Id. § 408(f)(4) (if infringement of a preregistered work occurs within 2 months after the date of first publication, infringement suit must be dismissed unless the copyright owner applies for registration no later than one month after discovering the infringement, or within 3 months after publication, whichever is earlier). Case: 3:16-cv-00532-jdp Document #: 35 Filed: 10/10/16 Page 5 of 6 -6- QB\131740.00005\41829111.1 III. CONCLUSION The law requires the plaintiff to have a copyright registration in hand prior to filing suit. Plaintiff’s attempt to avoid this mandatory requirement should be rejected. Defendant, therefore, respectfully requests that the Court dismiss the pending complaint. Dated this 7th day of October, 2016. QUARLES & BRADY LLP /s/ Gregory T. Everts Gregory T. Everts, SBN 1001636 33 East Main Street, Suite 900 Madison, WI 53703 608-283-2460 gregory.everts@quarles.com Attorneys for Scott’s Brewery Collectibles, LLC CERTIFICATE OF SERVICE I hereby certify that on October 7, 2016, I caused to be electronically filed the foregoing Reply Brief in Support of Defendant Scott’s Brewery Collectibles, LLC’s Motion to Dismiss with the Clerk of Court using the Court’s CM/ECF system, which will send notification of such filing to all counsel of record. /s/ Gregory T. Everts Gregory T. Everts Case: 3:16-cv-00532-jdp Document #: 35 Filed: 10/10/16 Page 6 of 6