Bean v. McDougal Littell
| Decision Date | 28 July 2008 |
| Docket Number | No. 07-8063-PCT-JAT.,07-8063-PCT-JAT. |
| Citation | 669 F.Supp.2d 1031 |
| Parties | Tom BEAN, Plaintiff, v. McDOUGAL LITTELL, a division of Houghton Mifflin Company, and R.R. Donnelley & Sons Company, Defendants. |
| Court | U.S. District Court — District of Arizona |
Christopher Seidman, Maurice James Harmon, Harmon & Seidman LLC, Grand Junction, CO, for Plaintiff.
Amy Marla Gardner, Christina M. Tchen, David R. Pehlke, Skadden Arps Slate Meagher & Flom LLP, Chicago, IL, Charles S. Sims, Proskauer Rose LLP, New York, NY, David Jeremy Bodney, Peter Shawn Kozinets, Steptoe & Johnson LLP, Phoenix, AZ, for Defendants.
Pending before the Court is Defendants' Motion to Dismiss Complaint for Lack of Subject Matter Jurisdiction in Fact (Doc. # 37). Plaintiff has filed an Opposition to Defendants' Motion (Doc. # 40), and Defendants have filed a Reply (Doc. # 41). The Court has considered these motions, and will now rule on the matter.
Defendant McDougal Littel, a division of Houghton Mifflin Company ("McDougal"), is a textbook publisher. Defendant R.R. Donnelley and Sons Company ("R.R. Donnelley") is a printer of textbooks. Plaintiff Tom Bean ("Bean") is a professional photographer who created and owns a photograph entitled, "Ruins of Anasazi Granaries at Nankoweep above the Colorado River, Grand Canyon National Park" ("the photograph"). In 1998, Bean sold McDougal limited licenses to copy and print 45,000 total copies of the photograph for use in three of McDougal's textbooks.
In 2007, Bean brought suit against McDougal and R.R. Donnelley for copyright infringement and against McDougal for fraud. Bean alleges that McDougal exceeded its license to print 45,000 copies of the photograph and used the photograph in a new textbook edition without obtaining Bean's permission. Bean claims that R.R. Donnelley infringed on his copyright as well by printing the textbooks in excess of the licensed amount. Defendants counter that this Court does not have subject matter jurisdiction over Bean's copyright claims because the copyright in the photograph was improperly registered.
"Federal courts are courts of limited jurisdiction." Ins. Corp. of Ireland, Ltd. v. Compagnie des Bauxites de Guinee, 456 U.S. 694, 701, 102 S.Ct. 2099, 72 L.Ed.2d 492 (1982). Federal subject matter jurisdiction must be authorized by both the Constitution and by Congressional statute. Id. Federal courts must "scrupulously confine their own jurisdiction to the precise limits which (a federal) statute has defined." Victory Carriers, Inc. v. Law, 404 U.S. 202, 212, 92 S.Ct. 418, 30 L.Ed.2d 383 (1971) (parentheses in original) (quoting Healy v. Ratta, 292 U.S. 263, 270, 54 S.Ct. 700, 78 L.Ed. 1248 (1934)).
"The party asserting jurisdiction has the burden of proving all jurisdictional facts." Indus. Tectonics, Inc. v. Aero Alloy, 912 F.2d 1090, 1092 (9th Cir.1990) (citing McNutt v. Gen. Motors Acceptance Corp., 298 U.S. 178, 189, 56 S.Ct. 780, 80 L.Ed. 1135 (1936)). In effect, the court presumes lack of jurisdiction until the plaintiff proves otherwise. Stock West, Inc. v. Confederated Tribes, 873 F.2d 1221, 1225 (9th Cir.1989). The defense of lack of subject matter jurisdiction may be raised at any time by the parties or the court. See Fed.R.Civ.P. 12(h)(3).
A motion to dismiss for lack of subject matter jurisdiction under Rule 12(b)(1) may take the form of a "facial attack" or of a "factual attack." Safe Air for Everyone v. Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004). A facial attack contends that the allegations of the complaint are insufficient "on their face" to confer federal jurisdiction. Id. A factual attack, on the other hand, "disputes the truth of the allegations that, by themselves, would otherwise invoke federal jurisdiction." Id. A moving party "convert[s] the motion to dismiss into a factual motion by presenting affidavits or other evidence properly brought before the court." Savage v. Glendale Union High Sch., 343 F.3d 1036, 1039 n. 2 (9th Cir.2003) (internal citations omitted). Having already filed an unsuccessful facial attack, Defendants now submit a factual attack on subject matter jurisdiction.
When resolving a factual attack under Rule 12(b)(1), the court "may review evidence beyond the complaint without converting the motion to dismiss into a motion for summary judgment." Safe Air, 373 F.3d at 1039 (citing Savage, 343 F.3d at 1039 n. 2). A plaintiff's allegations are not presumed to be true, and he must furnish evidence to satisfy his burden of establishing jurisdiction. Id. (internal citations omitted). However, the court must hold an evidentiary hearing before resolving issues of credibility or genuinely disputed material facts. See Federal Civil Procedure Before Trial § 9:85.1, at 9-21. The court has the discretion to order an evidentiary hearing before trial or postpone the motion until trial. See id.
"28 U.S.C. § 1338 confers [federal court] subject matter jurisdiction over copyright actions." Richlin v. Metro-Goldwyn-Mayer Pictures, 531 F.3d 962, 966 (9th Cir.2008). However, the United States Code stipulates 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." 17 U.S.C. § 411(a). Thus, a federal court must dismiss a copyright infringement claim for lack of subject matter jurisdiction when the copyright at issue was not validly registered. See, e.g., Morris v. Bus. Concepts, Inc., 259 F.3d 65, 73 (2d Cir.2001), modified and reh'g denied, 283 F.3d 502 (2d Cir.2002).
Defendants allege that the copyright to Bean's photograph was improperly registered for two reasons: (1) the copyright was not registered by an entity that owned "all rights under the copyright;" and (2) the registration was not for a copyrightable work. The Court will examine these two points in turn.
Bean relies on copyright registration VA 863-783 ("the registration") to satisfy the copyright registration requirement for suit. Bean, however, is not the named claimant1 on this form. The registration is for a collection of photographs, and Corbis Corporation ("Corbis") is the listed as the claimant. Bean and 127 other photographers had signed legal title to their images over to Corbis prior to registration. Corbis then registered all of these images as a collection of photographs in Corbis's own name, and subsequently transferred title in the individual images back to the original photographers.2
The contract signed by Bean granting legal title to Corbis reads as follows:
Copyright Registration Agreement
The undersigned hereby grants to Corbis Corporation ("Corbis") legal title in the undersigned's images selected and digitized by Corbis and included in the Corbis digital collection (the "Images") solely for the purpose of copyright registration.
Corbis agrees that it will promptly reassign legal title to the undersigned with respect to the undersigned's registered original film images upon Corbis' receipt of a Certificate of Registration from the U.S. Copyright Office covering such images.
In any event and for any reason, Corbis agrees that it will promptly reassign legal title to the undersigned with respect to the undersigned's original film images upon written request by the undersigned.
(emphasis in original).
When a claimant registers a collective work, the copyright protection can also extend to each constituent part of that work. See Szabo v. Errisson, 68 F.3d 940, 943 (5th Cir.1995); see also Blue Fish Clothing, Inc. v. Kat Prints, 1991 WL 71113 at *3 (E.D.Pa.1991). However, this protection extends only when the registrant of the collective work would have been a valid "claimant" for purposes of registering the constituent part. See Morris, 283 F.3d at 506. Thus, if Corbis would not have been a proper claimant for purposes of registering the Bean photograph, then Corbis's registration of the collection would not extend to that photograph. When Corbis transferred the photograph back to Bean, the copyright would not have been registered, and Bean would not be able to enforce the present infringement claim in federal court.
37 C.F.R. § 202.33 establishes the criteria that must be met in order for a copyright to be properly registered. In discussing the requirements for valid claimants, 37 C.F.R. § 202.3(a)(3) provides that:
(3) For the purposes of this section, a copyright claimant is either:
(i) The author of a work;
(ii) A person or organization that has obtained ownership of all rights under the copyright initially belonging to the author. [n1]
[n1] This category includes a person or organization that has obtained, from the author or from an entity that has obtained ownership of all rights under the copyright initially belonging to the author, the contractual right to claim legal title to the copyright in an application for copyright registration.
Since it is uncontested that Corbis is not the "author" of the photograph, it follows from this regulation that if Corbis had less than "all the rights under the copyright initially belonging to the author" at the time of registration, it would not have been a valid claimant for registration purposes. Indeed, Morris confirms this: "the copyright `claimant' for purposes of copyright registration is the author of the work for which registration is sought or a person or organization that has obtained ownership of all rights under the copyright initially belonging to the author." 283 F.3d at 506 (emphasis in original) (internal quotations and citations omitted).
Bean argues that Corbis did in fact have "all rights under the copyright." The...
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