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United States District Court, S.D. Alabama, Southern DivisionFeb 17, 2001
Civil Action No. 01-0111-CB-S (S.D. Ala. Feb. 17, 2001)

Civil Action No. 01-0111-CB-S

February 17, 2001


Pursuant to separate order entered this date granting the motion to dismiss filed by defendant John M. Tyson, Jr, individually and as District Attorney of Mobile County, Alabama, it is hereby ORDERED, ADJUDGED and DECREED that this action be and hereby is DISMISSED without prejudice.


This action was recently transferred from the United States District Court for the Middle District of Alabama with a pending motion to dismiss that has been fully briefed by the parties. Defendant John M. Tyson, Jr. seeks to dismiss this copyright infringement action because, inter alia, the complaint reflects that Plaintiff has not yet registered her copyright claim in the work at issue. Plaintiff argues that registration of the copyright is not required in order to maintain a claim for injunctive relief, as opposed to a claim for damages. For the reasons set forth below, the Court finds that registration of the copyright is a jurisdictional prerequisite to filing suit for either damages or injunctive relief under the Copyright Act, 17 U.S.C. § 101-120. Consequently, defendant's motion is due to be granted.

According to the complaint, Plaintiff is a university professor who, acting as a consultant to the Defendant, prepared "a substantial portion of an application to the Alabama Department of Economic and Community Affairs ("ADECA") for a federally-funded grant." Comp. ¶ 3. Plaintiff alleges that her compensation for preparing the grant proposal was that she was to be named in that proposal as project evaluator. Id. ¶ 5. Before the grant application was submitted to ADECA, plaintiff's name was deleted and another person's name was substituted as project evaluator.Id. ¶ 7. Plaintiff alleges that this amounts to a copyright infringement because Defendant did not use her work under the agreed-upon terms, i.e. with plaintiff named as project evaluator. Id. ¶ 8.

As part of the jurisdictional allegations in her the complaint, plaintiff states:

By this action Plaintiff presently seeks injunctive relief against further infringement of her work by the Defendant as provided by 17 U.S.C. [§] 502(a) . . . Upon issuance of her registered copyright from the United States Copyright Office, Plaintiff will amend her complaint to seek damages, attorney's fees and costs as provided by 17 U.S.C. [§§] 504 and 505.
Id. ¶ 2.

Registration of a copyright is a "jurisdictional prerequisite to an infringement suit." M.G.B. Homes. Inc. v. Ameron Homes. Inc., 903 F.2d 1486, 1488 (11th Cir. 1990). The Act provides that, with certain exceptions not applicable here, "no action for infringement of the copyright in any work shall be instituted until registration of the copyright claim has been made in accordance with this title." 17 U.S.C. § 411 (a). Section 411(a) makes no distinction between actions for injunctive relief and actions for damages.

Relying on 17 U.S.C. § 502 (a) and loose citation to case law Plaintiff contends that, despite the plain language of § 411(a), registration is not required in order to maintain an action for injunctive relief Section 502(a) merely provides that temporary or permanent injunctive relief may be granted as a remedy for an infringement violation. Nothing in § 502(a) implies that actions seeking injunctive relief are exempt from the registration requirement of § 411(a). Neither do the two cases cited by Plaintiff support that proposition. In fact, one of those cases, M.G.B. Homes, is quoted above for the opposite proposition. The district court in M.G.B. Homes dismissed the complaint because the plaintiff in that case had failed to register the copyright before filing suit. Only after it obtained the copyright registration was the plaintiff permitted to maintain an action for copyright infringement. In Pacific Southern Co., Inc. v. Duncan, 744 F.2d 1490 (11th Cir. 1984), the other case cited by Plaintiff, the plaintiff had its copyright registration prior to filing suit. Id. at 1494. Nothing in Duncan provides any basis for claiming an exception to § 411(a)'s requirement that a party obtain a copyright registration before filing an infringement action.

On appeal, the Eleventh Circuit questioned the procedures followed by the district court, which had allowed Plaintiff, once it obtained the necessary registration, to amend the previously dismissed complaint. The appellate court recognized that the district court was "technically without jurisdiction to entertain MGB's motion to amend its complaint" and that "the filing of a new lawsuit would ordinarily have been the proper way for MGB to proceed once it received the registration certificate." M.G.B. Homes, 903 F.2d at 1489. However, the appellate court reached the merits finding that avoiding the merits based on this technicality would "`be contrary to the spirit of citing the spirit of the Federal Rules of Civil Procedure.'" Id. (quoting Foman v. Davis, 371 U.S. 178, 181 (1962)). As the Eleventh Circuit pointed out, the procedures followed by the district court were wrong. That the appellate court nonetheless entertained the appeal does not mean that this court should make the same mistake.

Plaintiff admits in her complaint that she has not registered the copyright claim upon which this infringement action is based. Because Plaintiff has failed to obtain a copyright registration prior to filing this infringement action, the Court is without subject matter jurisdiction. Accordingly, it is ORDERED that the motion to dismiss be and hereby is GRANTED and that this action be DISMISSED without prejudice.