Rogers v. Better Bus. Bureau of Metro. Hous., Inc., Civil Action No. H–10–3741.

Decision Date15 August 2012
Docket NumberCivil Action No. H–10–3741.
Citation887 F.Supp.2d 722
PartiesBrent ROGERS d/b/a, I–Net Spin.com, Plaintiff, v. The BETTER BUSINESS BUREAU OF METROPOLITAN HOUSTON, INC., Defendant.
CourtU.S. District Court — Southern District of Texas

887 F.Supp.2d 722

Brent ROGERS d/b/a, I–Net Spin.com, Plaintiff,
v.
The BETTER BUSINESS BUREAU OF METROPOLITAN HOUSTON, INC., Defendant.

Civil Action No. H–10–3741.

United States District Court,
S.D. Texas,
Houston Division.

Aug. 15, 2012.


[887 F.Supp.2d 724]


Jonathan C. Day, Paul Stephen Beik, Beik Law Firm PLLC, Houston, TX, for Plaintiff.

Jeffrey R. Elkin, Porter Hedges, L.L.P., Jonathan M. Pierce, Paul Andrew Dyson, Houston, TX, for Defendant.


MEMORANDUM OPINION

NANCY K. JOHNSON, United States Magistrate Judge.

Pending before the court 1 is Defendant's Motion for Partial Summary Judgment (Doc. 69). The court has considered the motion, all relevant filings, and the applicable law. For the reasons set forth below, the court DENIES Defendant's motion.

I. Case Background

Plaintiff filed this copyright action against Defendant alleging that, after terminating a Web Design Agreement with Plaintiff, Defendant directed the intentional, unauthorized copying of content from approximately 2,600 webpages 2 created by Plaintiff.

A. Factual Background

On December 24, 2001, Defendant, a Texas non-profit organization “committed to promoting ethical business practices in the local business community,” 3 contracted with Plaintiff to create webpages for Defendant's member businesses.4 Plaintiff agreed to create individual webpages for the member businesses, to create a website at the uniform resource locator (“URL”) reliabilitymall.com 5 for hosting the webpages, to license the URL to Defendant, and to maintain the URL and

[887 F.Supp.2d 725]

webpages.6 In exchange, Defendant agreed to pay Plaintiff a creation fee per webpage and a renewal and maintenance fee for each of Defendant's members that had a webpage and renewed their organizational membership.7 Defendant passed on the expense of the creation and maintenance of the webpages to the individual member businesses.8

Plaintiff's contract term ran for one year, after which it automatically renewed on a month-to-month basis.9 Either party had the right to terminate the contract by giving thirty days' notice to the other.10 On March 18, 2009, Defendant provided Plaintiff notice of termination of the Web Design Agreement.11

In early 2010, Plaintiff applied for a certificate of copyright registration for www. reliability mall. com as an unpublished, nondramatic literary work, which was issued on January 31, 2010.12

B. Procedural Background

Plaintiff filed this lawsuit in October 2010, alleging copyright infringement, violations of the Digital Millennium Copyright Act,13 and, in the alternative, unfair competition under federal law.14 Shortly thereafter, Defendant filed a motion to dismiss, in part challenging Plaintiff's copyright protection for the individual webpages.15 Plaintiff opposed the motion.16

Two days later, Plaintiff applied to the Copyright Office for supplementary registration of the webpages.17 Plaintiff explained that he sought supplementary registration to add the words “Web Page Collection” to the title of the work and to add information about the nature of authorship and the registration of the collection as unpublished.18 He provided the following additional information about the publication status of the webpage collection:

Claimant created the registered Web pages between 2001–2009 to be displayed online. Each of Claimant's Web pages has a unique “Reliabilitymall.com” URL and was created independently for companies and individuals. Each Web page, or “site,” was displayed on the www. Reliability Mall. com [website] for one year in exchange for an annual licensing fee.

Claimant registers its collection of Web pages as unpublished in light of the legislative history of the 1976 Copyright Act. See H.R.Rep. No. 94–1476 at 53 (“on the other hand, the definition of ‘fixation’ would exclude from the concept purely evanescent of transient reproduction

[887 F.Supp.2d 726]

such as those projected briefly on a screen, shown electronically on a television or other cathode ray tube, or captured momentarily in the ‘memory’ of a computer”), 64 (“the definition [of publication] ... makes plain that any form or dissemination in which a material object does not change hands—performance or displays on television, for example—is not a publication no matter how many people are exposed to the work.”) (1976), 1976 U.S.C.C.A.N. 5659, 5666, 5754; Moberg v. 33T, 666 F.Supp.2d 415, 422 (D.Del.2009) (“the question of whether an Internet posting constitutes publication under U.S. law and the Berne Convention remains unresolved.”). Claimant also adds that the Better Business Bureau of Metropolitan Houston, Inc. acted as an “administration liaison” between the Claimant and the companies or individuals. There was not, however, a ‘group’ of wholesalers or distributors. Rather, the registered Web pages relate only to members of the Houston branch of the Better Business Bureau. 19

Upon review of Plaintiff's application, the Copyright Office issued a certificate of supplementary registration.20

Plaintiff amended in February 2011 and dropped the unfair competition claim. In the present motion, Defendant seeks summary judgment on Plaintiff's copyright infringement claims.

II. Summary Judgment Standard

Summary judgment is warranted when the evidence reveals that no genuine dispute exists regarding any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Brown v. City of Houston, Tex., 337 F.3d 539, 540–41 (5th Cir.2003). A material fact is a fact that is identified by applicable substantive law as critical to the outcome of the suit. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Ameristar Jet Charter, Inc. v. Signal Composites, Inc., 271 F.3d 624, 626 (5th Cir.2001). To be genuine, the dispute regarding a material fact must be supported by evidence such that a reasonable jury could resolve the issue in favor of either party. Anderson, 477 U.S. at 250, 106 S.Ct. 2505;TIG Ins. Co. v. Sedgwick James of Wash., 276 F.3d 754, 759 (5th Cir.2002).

The movant must inform the court of the basis for the summary judgment motion and must point to relevant excerpts from pleadings, depositions, answers to interrogatories, admissions, or affidavits that demonstrate the absence of genuine factual issues. Celotex Corp., 477 U.S. at 323, 106 S.Ct. 2548;Topalian v. Ehrman, 954 F.2d 1125, 1131 (5th Cir.1992). If the moving party can show that the facts are not in dispute, the party opposing summary judgment must go beyond the pleadings and proffer evidence demonstrating that genuine issues of material fact do exist that must be resolved at trial. See Celotex Corp., 477 U.S. at 324, 106 S.Ct. 2548.

When considering the evidence, “[d]oubts are to be resolved in favor of the nonmoving party, and any reasonable inferences are to be drawn in favor of that party.” Evans v. City of Houston, 246 F.3d 344, 348 (5th Cir.2001); see also Boston Old Colony Ins. Co. v. Tiner Assocs. Inc., 288 F.3d 222, 227 (5th Cir.2002). The court should not “weigh evidence, assess credibility, or determine the most reasonable inference to be drawn from the evidence.” Honore v. Douglas, 833 F.2d 565, 567 (5th Cir.1987).

[887 F.Supp.2d 727]

III. Analysis

Defendant requests summary judgment on Plaintiff's copyright infringement cause of action, arguing that “Plaintiff's works are not registered” because Plaintiff represented to the Register of Copyrights that the websites were unpublished.21 Plaintiff argues in response, in addition to his assertion that the websites were unpublished, that Defendant's challenge should be considered pursuant to the instructions in 17 U.S.C. § (“Section”) 411(b), which applies to certificates that contain “inaccurate information.”

A. A Certificate of Registration Raises a Presumption of Copyright Validity

In order to succeed on a copyright infringement action, a plaintiff must prove ownership of a valid copyright, actionable copying, and substantial similarity. Armour v. Knowles, 512 F.3d 147, 152 (5th Cir.2007). Ownership of a valid copyright encompasses originality, copyrightability, and compliance with statutory formalities. Compaq Computer Corp. v. Ergonome Inc., 387 F.3d 403, 407–08 (5th Cir.2004). Before a plaintiff may bring a civil action for copyright infringement, he must register the copyright with the U.S. Copyright Office (“Copyright Office”). 17 U.S.C. § 411(a).

The Copyright Act requires that courts recognize a timely obtained certificate of copyright registration as “prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” 17 U.S.C. § 410(c); see also Gen. Universal Sys., Inc. v. Lee, 379 F.3d 131, 141 (5th Cir.2004); Lenert v. Duck Head Apparel Co., No. 95–31122, 99 F.3d 1136, 1996 WL 595691, at *3 (5th Cir. Sept. 25, 1996) (unpublished); Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45, 47 (5th Cir.1995); Lakedreams v. Taylor, 932 F.2d 1103, 1108 n. 10 (5th Cir.1991). Even if the certificate contains “any inaccurate information,” it satisfies the registration requirement, unless the applicant included the information with knowledge that it was inaccurate and the Register of Copyrights would have refused registration had she known of the inaccuracy. 17 U.S.C. § 411(b). Section 411(b), which was added in October 2008, also instructs courts to refer any case in which such inaccurate information is alleged to the Register of Copyrights for advice as to whether the information would have caused the refusal of registration. Id.

The presumption of validity afforded a registrant is not irrebuttable, but it shifts the burden to the defendant to prove invalidity. Lenert, 1996 WL 595691, at *3;Norma Ribbon & Trimming, Inc., 51 F.3d at 47 (citing Lakedreams, 932 F.2d at 1108 n. 10);Entm't Research v. Genesis Creative Group, 122 F.3d 1211, 1217 (9th Cir.1997); Masquerade Novelty, Inc. v. Unique...

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