Boyle v. U.S.
| Decision Date | 11 January 2000 |
| Parties | (Fed. Cir. 2000) JOHN C. BOYLE, Paintiff-Appellant, v. UNITED STATES, Defendant-Appellee. 99-5125 DECIDED: |
| Court | U.S. Court of Appeals — Federal Circuit |
John C. Boyle, of Edison, New Jersey, pro se.
Grace Stewart Karaffa, Attorney, Commercial Litigation Branch, Civil Division, Department of Justice, of Washington, DC, for defendant-appellee. With her on the brief were David W. Ogden, Acting, Assistant Attorney General and Vito J. DiPietro, Director. Of counsel on the brief was Thomas J. Byrnes, Assistant Director.
Before PLAGER, LOURIE, and CLEVENGER, Circuit Judges.
John C. Boyle appeals from the May 28, 1999 decision of the United States Court of Federal Claims denying his motion for summary judgment and granting the United States' motion to dismiss for failure to state a claim upon which relief can be granted. See Boyle v. United States, 44 Fed. Cl. 60 (1999). Because the Court of Federal Claims properly dismissed Boyle's complaint, we affirm.
In 1989, Boyle wrote a pamphlet describing "Moneyfor" mutual fund products that are targeted to different maturity dates depending upon the year the money is desired by the investor. He sent copies of that pamphlet to several money managers, including an executive at Wells Fargo Nikko Investment Advisors. Several years later, Wells Fargo began to market similar products called "Lifepath" funds. In 1994, the United States Patent and Trademark Office (PTO) granted Wells Fargo's application to register the service marks "Lifepath," "Lifepath 2000," and similar words1 on its primary register. See Trademark Reg. Nos. 1,852,611, 1,852,609. In 1997 Boyle registered his pamphlet in the United States Copyright Office. See Copyright Reg. No. TX 4-508-142 (). Immediately thereafter, Boyle sued Wells Fargo and other related persons for copyright infringement, alleging that Wells Fargo's "Lifepath" prospectus, addendum, report, and brochure infringed his copyright. In due course, the district court found that Wells Fargo did not infringe Boyle's copyright. See Boyle v. Stephens, Inc., 1998 WL 80175 (S.D.N.Y. Feb. 25, 1998). It also appears that at some point Boyle wrote a letter to the Patent and Trademark Office requesting that Wells Fargo's marks be canceled.
Boyle, filing pro se, thereafter sought both compensation and injunctive relief in the United States Court of Federal Claims. In his complaint Boyle alleged that the United States "wrongfully allowed" Wells Fargo's "Lifepath" service marks, failed to cancel them, and "effectively destroyed" his copyright, which constituted an "unjust taking." Boyle primarily asserted that "[t]he creative work for Lifepath originates with the copyrighted work of the Plaintiff." Boyle asked the court to cancel the trademarks and to compensate him for his injury.
The court construed his complaint as one for contributory copyright infringement and, inter alia, a taking of his property without just compensation. See Boyle, 44 Fed. Cl. at 62-63. The court granted the United States' motion to dismiss under Rule 12(b)(4) for failure to state a claim upon which relief could be granted. Specifically, the court held that the United States could not be liable for contributory copyright infringement as a matter of law because it had not waived its sovereign immunity to such suits. See id. The court also held that the PTO's registration of a service mark cannot "destroy" a pre-existing copyright because the holder of a service mark can still be found liable for copyright infringement if it infringes that copyright, irrespective of its ownership of that service mark, and similarly that its failure to act upon his written request to cancel the marks could not give rise to a taking. See id. at 63-65. Lastly, the court dismissed Boyle's request for cancellation of Wells Fargo's service mark for lack of jurisdiction. See id. at 65.
Boyle timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(3) (1994).
Whether the Court of Federal Claims properly dismissed Boyle's complaint for lack of jurisdiction and for failure to state a claim upon which relief can be granted are both questions of law that we review de novo. See Moyer v. United States, 190 F.3d 1314, 1317-18 (Fed. Cir. 1999); New York Life Ins. Co. v. United States, 190 F.3d 1372, 1377 (Fed. Cir. 1999). A motion to dismiss under Rule 12(b)(4) for failure to state a claim upon which relief can be granted is appropriate when the facts asserted by the plaintiff do not entitle him to a legal remedy. Id. In reviewing the dismissal, we must accept all well-pleaded factual allegations as true and draw all reasonable inferences in Boyle's favor. See Perez v. United States, 156 F.3d 1366, 1370 (Fed. Cir. 1998). In this case the facts are not in dispute.
Boyle presents essentially the same arguments on appeal as were presented in his complaint. The government responds that it has not waived its sovereign immunity to suits for contributory copyright infringement, and that "[n]o copyright can be 'taken' by the lawful issuance of a service mark registration."
We agree with the government that Boyle has no claim against the United States for Wells Fargo's acts. A claimant has a claim against the United States only when the United States has consented to be sued by means of a waiver of sovereign immunity. Section 1498 of Title 28 of the United States Code provides in relevant part as follows:
Whenever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States, by a corporation owned or controlled by the United States, or by a contractor, subcontractor, or any person, firm, or corporation acting for the Government and with the authorization or consent of the Government, the exclusive remedy of the owner of such copyright shall be by action against the United States in the Court of Federal Claims for the recovery of his reasonable and entire compensation as damages for such infringement. . . .
28 U.S.C. § 1498(b) (1994) (emphasis added). Waivers of sovereign immunity must be explicit, and cannot be implied, see United States v. Testan, 424 U.S. 392, 399 (1976), and any statute that creates a waiver of sovereign immunity must be strictly construed in favor of the government, see United States v. Sherwood, 312 U.S. 584, 590 (1941). The plain language of the statute states that the United States has waived sovereign immunity in three instances: (1) when the United States itself infringes a copyright, (2) when a corporation owned or controlled by the United States infringes, and (3) when a contractor, subcontractor, or any person, firm, or corporation, acting for the Government and with its authorization or consent, infringes. The statute Auerbach v. Sverdrup Corp., 829 F.2d 175, 179 (D.C. Cir. 1987) (emphasis in the original).
The legislative history of Public Law No. 87-726, 74 Stat. 855 (1960), which added paragraph (b) to § 1498, also makes it clear that the government only intends to compensate a copyright owner for a third party's infringement when it authorized or consented to that infringement. The Senate Report states in relevant part that:
The purpose of the proposed legislation, as amended, is to provide a remedy in the Court of Claims for the infringement by the U.S. Government, or by any contractor acting with its consent, of any work protected under the copyright laws of the United States where such infringement was with the authorization or consent of the United States. . . . The language of the bill is to...
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