EDWIN G. TORRES, United States Magistrate Judge.
On March 31, 2011, we issued a non-final Order granting Defendants Timothy Z. Mosley p/k/a Timbaland and Mosley Music, LLC's ("Defendants") Motion for Summary Judgment [D.E. 137]. [D.E. 227]. The underpinnings of the ruling were our conclusions that Plaintiff's SID file version of "Acid Jazzed Evening" ("AJE") had first been published on the Internet and that that act constituted simultaneous publication in the United States and other nations around the world having Internet service under the Copyright Act of 1976, 17 U.S.C. § 501, et seq. We concluded that Plaintiff's work met the definition of a "United States work" under 17 U.S.C. § 101(1)(C) and that, pursuant to 17 U.S.C. § 411(a), Plaintiff was required to register AJE prior to suing for copyright infringement. As there was no dispute that Plaintiff had failed to obtain a copyright registration for AJE or for any claimed "sound recording" or "composition," we found that Plaintiff had not satisfied a statutory condition precedent to initiating this infringement lawsuit. Accordingly, since Plaintiff could not initiate or maintain this action, we granted summary judgment for Defendants.
Plaintiff immediately moved for reconsideration of our ruling or, alternatively, an abeyance in order to register AJE and amend the complaint to show compliance with § 411(a). [D.E. 230]. Before we could rule on this request, Plaintiff obtained registration for AJE and moved for
Following another thorough review of the record and the legal arguments and analyses presented by the parties, we now affirm our March 31, 2011 ruling. We deny Plaintiff's motion to reconsider to the extent we are asked to reverse our prior ruling. We also deny Plaintiff's motion to amend the complaint. Accordingly, we affirm our grant of summary judgment for Defendants. This determination is final and closes the case.
The action arises from a sound recording of a composition and musical arrangement of "Acidjazzed Evening" created by Glenn Rune Gallefoss ("Gallefoss") in 2002. Gallefoss, a citizen and resident of Norway, created AJE on a Commodore 64 computer in the form of a SID file.
Gallefoss first authorized publication of AJE in an Australian disk magazine called Vandalism News, issue 39, in August 2002. The work was not only displayed but was made available for downloading and copying, with Gallefoss' knowledge and approval. In December 2002, AJE was posted on the High Voltage SID Collection website.
On August 16, 2007, Gallefoss transferred "all transferrable rights" to the sound recording and arrangement of AJE to Plaintiff Kernal Records Oy ("Plaintiff"). Plaintiff alleges that the sound recording and musical arrangement were copied into a new sound recording and composition called "Do It." Defendants are the performers, writers, producers, publishers, record labels, and others associated with "Do It," who wrote, created, copied, published, licensed, distributed, manufactured and/or sold "Do It," or authorized others to do so in various media. Plaintiff is suing for copyright infringement of sound recording, infringement of musical work, and accounting. [D.E. 63; D.E. 108; D.E. 195].
Defendants moved for summary judgment on Plaintiff's infringement claims on the ground that Plaintiff had not obtained copyright registration for its SID file version of AJE or for any claimed "sound recording" or "composition" and therefore had failed to satisfy the statutory preconditions of 17 U.S.C. § 411(a) for filing an infringement suit.
Section 411(a) of the Copyright Act of 1976 provides in relevant part that no suit for copyright infringement of a "United States work" may be instituted until the work has been registered with the United States Copyright Office. 17 U.S.C. § 411(a) ("no 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 in accordance with this title."). For purposes of § 411, a work is a "United States work" only if,
17 U.S.C. § 101.
In 1989, the United States acceded to the Berne Convention ("Convention"), an international copyright treaty that among other things prohibits signatories from imposing copyright formalities as a condition to the protection of works of nationals of other member countries. See generally Christopher Sprigman, Reform(aliz)ing Copyright, 57 Stan. L.Rev. 485, 488 (2004).
Defendants argue (1) that the evidence establishes that AJE was first published on the Internet in Vandalism News # 39 in August 2002 and (2) that publication on the Internet constitutes simultaneous publication all over the world. If both those assertions are correct, then AJE qualifies as a "United States work" under § 101(1)(C) because it was published simultaneously in the United States and (necessarily) in foreign nations that are non-treaty parties.
Plaintiff hotly disputes Defendants' assertion that AJE was first published on the Internet. Plaintiff insists that when Gallefoss testified AJE was first published on a "disk magazine," he was referring to a "computer disk containing a magazine," i.e., a physical computer disk. [D.E. 172
Plaintiff also disagrees that Internet publication equates to simultaneous worldwide publication. Plaintiff urges us to follow Moberg v. 33T LLC, 666 F.Supp.2d 415 (D.Del.2009), a decision from the District of Delaware that is the only other published opinion that has addressed this particular issue. Judge Hillman held in that case that publication of photographs posted on a German website did not amount to simultaneous publication in the United States and Germany and therefore, because the photos did not qualify as "United States works," the plaintiff did not have to satisfy U.S. registration requirements before suing for copyright infringement. 666 F.Supp.2d at 422, 424.
The issues presented for our determination in this case are (1) whether AJE was first published on the Internet and if so, (2) whether that act constituted simultaneous worldwide publication which would make AJE a "United States work" subject to § 411(a)'s registration requirements. We answer both questions in the affirmative.
Defendants argue that AJE was first published on the Internet. Plaintiff claims first publication was on a physical computer disk. At the very least, Plaintiff posits that if we view the evidence in the light most favorable to Plaintiff as the non-moving party, we must find that there are material facts in dispute with regard to this issue.
We disagree and affirm our prior ruling. We have thoroughly reviewed the evidence and conclude the evidence shows that first publication was on the Internet. Moreover, Plaintiff has not offered any credible evidence that creates a dispute about this.
Defendants requested in discovery that Plaintiff produce all documents that evidenced the date, manner and place of first publication of AJE. In response, Plaintiff produced a printout of a computer screen showing the online image of Vandalism News # 39. [D.E. 201-1]. The top of the printout displays the following tabs: "Log In," "Register," "Browse," "Help," "Statistics," "Forums," "RSS," and "Donate." The printout displays other interactive features including "User rating," "SIDS used in this release" (listing Gallefoss' Acid Jazz SID), "Download," and "User Comment." The printout indicates a "Release Date" of August 10, 2002.
The printout was the only evidence Plaintiff produced in response to the defense's specific request for all proof of first publication. Plaintiff did not produce a physical copy of a magazine or computer disk, explain why it could not produce any physical evidence after all these years, or provide any tangible evidence suggesting that what appeared to be an online publication was in fact not.
Importantly, Gallefoss confirmed in his February 2010 deposition that Vandalism News was an online magazine:
[D.E. 138-1 at 8 (emphasis supplied) ].
Plaintiff claims that based on this limited exchange, the record is unclear as to whether Vandalism News was an online magazine. Plaintiff complains that defense counsel never asked obvious follow-up questions such as "what is a disk magazine?" and "was the disk magazine published online in 2002?"
But we find Gallefoss' testimony clear enough. He agreed with defense counsel that the first publication of AJE was posted on an online magazine. If the testimony were inaccurate or unclear, it was incumbent upon Plaintiff's counsel to clarify the witness' testimony on this important point.
Plaintiff has attempted to create an issue of fact with Gallefoss' sworn declaration from May 2010 (a few months after his deposition), submitted in opposition to Defendant's motion for summary judgment. There, Gallefoss stated in relevant part: "I authorized publication of my version of [AJE] in a magazine published on a computer disk in Australia called Vandalism News, issue 19, in August 2002." [D.E. 143-4 at 4 ¶ 23 (emphasis supplied) ].
Plaintiff asserts this statement is consistent with and clarifies Gallefoss' earlier deposition testimony regarding the manner of first publication. But significantly, Gallefoss failed to explain in his declaration why he admitted in deposition that AJE was first published online. Nor did he explain in the declaration how "disk magazine" could be synonymous with "computer disk" when in deposition he had been discussing an online magazine.
Plaintiff also contends that Gallefoss' declaration that publication was on a computer disk is consistent with his deposition testimony regarding the small size of the SID file. Gallefoss testified that in creating AJE, he attempted "to make this sound, this musical composition as small as possible, ..., so it would fit in the disk magazine demonstration." [D.E. 171-1 at 14]. Plaintiff argues that the size of the file would have mattered to Gallefoss only if the file were intended for inclusion on a
To the extent that Gallefoss' declaration conflicts with his prior deposition testimony on this issue, we will not consider it. The deposition testimony was clear that first publication was online; Plaintiff's counsel could have questioned Gallefoss to clarify his position on this important point but did not; Gallefoss never intimated during the deposition that the disk magazine was a physical computer disk; and the only tangible evidence produced by Plaintiff in direct response to a discovery request on the issue of first publication supports the deposition testimony that it was online. "[W]hen a party has given clear answers to unambiguous questions which negate the existence of any genuine issue of material fact, that party cannot thereafter create such an issue with an affidavit that merely contradicts, without explanation, previously given clear testimony." Delaware Valley Floral Group, Inc. v. Shaw Rose Nets, LLC, 597 F.3d 1374, 1381 (11th Cir.2010); see also Van T. Junkins & Assocs., Inc. v. U.S. Indus., Inc., 736 F.2d 656, 658-59 (11th Cir.1984) (affirming the district court's grant of summary judgment for the defendants upon a finding that the plaintiff's affidavit was a sham and did not serve to create a genuine issue of material fact as to require submission to a jury).
Based on the foregoing, we conclude that Defendants have established that AJE was first published on the Internet while Plaintiff has failed to present any competent evidence to the contrary that might to create a genuine issue of fact. We have not weighed the evidence for there was none to weigh. Accordingly, we affirm our prior ruling on this point.
We also ruled in the March 31, 2011 Order that Plaintiff's posting of AJE on the Internet constituted a "publication" under § 101 and that publication on the Internet constituted simultaneous publication in the United States and other nations around the world that have Internet service. Thus, we concluded that AJE, which was first published on a website in Australia, was also simultaneously published in the United States and other nations with Internet service that are not treaty nations, making AJE a "United States work" under § 101.
Plaintiff urges us to follow Moberg in which Judge Hillman held that "as a matter of U.S. statutory law," photographs posted on a website in German "were not published simultaneously in the United States." 666 F.Supp.2d at 422.
In Moberg, a plaintiff-photographer living in Sweden created a series of photographs that were first published on a German website, blaugallery.com, an online art shop that offered copies of the works for sale. 666 F.Supp.2d at 417-418. A few years later several of the photographs were posted on a few U.S. websites. Id. at 418. The plaintiff sued in United States district court, alleging infringement under U.S. copyright law. Id.
The plaintiff had not registered his photographs in accordance with the provisions of the Copyright Act. Id. at 419. The defendants contended, as they do in our case, that the plaintiff's works were "United States works" because, although they were created outside the United States,
Judge Hillman rejected the notion that posting a photograph on a foreign country's website results in publication simultaneously in the United States so as to transform it into a "United States work." Id. at 419-420. He opined that an acceptance of the defendants' position would "overextend and pervert the United States copyright law, and would be contrary to the Berne Convention." Id. at 420. In analyzing these issues of first impression, Judge Hillman found highly persuasive Professor Thomas Cotter's law journal article, Toward a Functional Definition of Publication in Copyright Law, 92 Minn. L.Rev. 1724 (2008), which examined the interrelation between the Copyright Act, the Convention, and the Internet, and what constitutes "publication." Id.
Judge Hillman did not, however, decide whether posting a work on the Internet constituted publication under § 101. He deemed it unnecessary "to delve into yet another unsettled issue[] because[,] even assuming that the German website `published' plaintiff's photographs, [] as a matter of U.S. statutory law the photographs were not published simultaneously in the United States." Id.
We must address the issue, however. Defendants contend and we agree that posting AJE on the Internet was a publication under § 101. [D.E. 137 at 5-6]. Plaintiff disagrees, reiterating that the issue is unsettled and citing to Moberg and Professor Cotter's article. [D.E. 172 at 10-11].
The term "publication" is defined in the Copyright Act as:
17 U.S.C. § 101 (emphasis supplied). "[A] sine qua non of publication should be the acquisition by members of the public of a possessory interest in tangible copies of the work in question." 1 Nimmer on Copyright § 4.07[A], at 4-43.
This principle was explored in Getaped.com, Inc. v. Cangemi, 188 F.Supp.2d 398 (S.D.N.Y.2002). There, the court held that the source code for the plaintiff's website was "published" for copyright purposes when the website went "live." Id. at 402. The court cited with favor several decisions in which the posting of music files, software, and photographs on webpages was found to have violated the copyright holders' exclusive distribution rights under 17 U.S.C. § 106 and, by implication, amounted to publication. Id. at 401 (citing e.g., A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1014 (9th Cir.2001) (Napster users who uploaded music files to the Internet for others to copy violated the copyright holder's exclusive distribution right); Playboy Enters., Inc. v. Chuckleberry Publ'g, Inc., 939 F.Supp. 1032, 1039 (S.D.N.Y.1996) (defendant's unauthorized uploading of copyrighted pictorial images to a website, from which images were downloaded to and stored on the computers of subscribers to the defendant's internet service, constituted distribution); Playboy Enters., Inc. v. Frena, 839 F.Supp. 1552, 1556 (M.D.Fla.1993) (defendant's unauthorized uploading of copyrighted images to a subscription bulletin board from which the images were downloaded by bulletin board subscribers constituted
The determinative factor in those cases, Getaped.com explained, was "the ability of the Internet user to download a file containing copyrighted work and thereby gain control of it, that is, gain a proprietary or possessory interest in the copyrighted work." Id. (citing Nimmer on Copyright). The Getaped.com court thus differentiated between viewing a painting or watching a play on the one hand, and accessing a webpage on the other: in the latter, the user not only viewed the webpage but could also view and copy the code used to create it. Id. at 402. The court reasoned:
Id.
We think the same rationale applies here. AJE was not merely viewable (audible) on the Internet (as was the case with the photographs in Moberg), it was also available for downloading and copying (which was not a factor in Moberg). Gallefoss knew that anyone who accessed Vandalism News #39 would be able to download and copy his work, and he did not object. From the moment it was posted online, AJE could be reproduced, distributed, or otherwise manipulated. Gallefoss lost the ability to control his work as members of the public acquired (or in theory had the ability to acquire) a possessory interest in AJE.
In posting AJE online where it could be downloaded and copied, Gallefoss was distributing or offering to distribute his work to the public. See 1 Nimmer on Copyright § 4.07[A], at 4-43 ("[I]t would then seem proper to conclude that ... no publication should be held to occur unless the public obtain a possessory right in tangible copies of the work for only then are significant economic rewards [to the author] attainable.... [U]nless members of the public are able to obtain such a possessory right, the author has not lost the physical ability to control the dissemination and enjoyment of his work, and hence, the work has not, in a meaningful sense, been acquired by the public."). This constituted "publication" as defined in § 101.
We next concluded that publishing AJE on a website in Australia was an act tantamount to global and simultaneous dissemination
Judge Hillman articulated three reasons for rejecting the proposition that publishing a work on the Internet "automatically, instantaneously, and simultaneously causes that work to be published everywhere in the world." Moberg, 666 F.Supp.2d at 422-23.
First, he concluded that such a result would subject every copyright holder to the formalities of the copyright laws of every country that has such laws which "is contrary to the purpose of the Berne Convention." 666 F.Supp.2d at 422. Next, Judge Hillman reasoned that transforming the plaintiff's photographs into "United States works" "simply by posting them on the internet would allow American citizens to infringe on foreign copyrighted works without fear of legal retribution, since the majority of foreign works are never registered in America." Id. at 423. This would be contrary to the Convention's stated purpose of forming "a Union for the protection of the rights of authors in their literary and artistic works." Id. (citing Berne Conv. Art. 1). Finally, Judge Hillman determined that U.S. copyright laws, in accord with the Convention, currently protect foreign works in the United States "without requiring the artists to undertake any formalities in the United States." Id. He concluded that requiring artists who posted their work on a foreign country's website to comply with U.S. copyright formalities would be contrary to that law. Id.
We respectfully decline to follow the reasoning of Moberg. As indicated in our prior Order, Judge Hillman's contextual and policy-driven analysis is reasonable and sound but is, in our opinion, wholly untethered to the actual statutory and treaty language that governs this dispute. We need not spend much time examining the interrelationship between U.S. copyright law and the Berne Convention because a simpler approach is available and dispositive.
We begin our analysis with the copyright statute. "[T]he starting point for interpreting a statute is the language of the statute itself." Consumer Product Safety Comm'n v. GTE Sylvania, Inc., 447 U.S. 102, 108, 100 S.Ct. 2051, 64 L.Ed.2d 766 (1980). "As a basic rule of statutory interpretation, we read the statute using the normal meanings of its words." Consolidated Bank, N.A. v. Office of Comptroller of Currency, 118 F.3d 1461, 1463 (11th Cir.1997). We "must assume that Congress intended the ordinary meaning of the words it used, and absent a clearly expressed legislative intent to the contrary, that language is generally dispositive." Id. We look beyond the plain language of a statute only when it is unclear or ambiguous, when Congress has clearly expressed a legislative intent to the contrary, or when an absurd result would ensue from adopting the plain language interpretation. Id. at 1463-64. See also, Grabein v. Jupiterimages Corp., No. 07-22288-CIV, 2008 WL 2704451, at *4 (S.D.Fla. July 7, 2008) ("When the import of words Congress has used is clear ... we need not resort to legislative history, and we certainly should not do so to undermine the plain meaning of the statutory language"), aff'd and adopted, No. 07-22288-CIV-GRAHAM/TORRES, 2008 WL 2906866 (S.D.Fla. July 25, 2008).
A "United States work" is defined in the copyright statute as a work that "was first published ... simultaneously in the United States and a foreign nation that is not a treaty party." 17 U.S.C. § 101(1)(c). We have already determined that AJE was "published" on the Internet in Australia. Was it published simultaneously in the United States and elsewhere?
"Simultaneous" is defined in relevant part as "existing or occurring at the same time: exactly coincident." Merriam-Webster Dictionary online, http://www. merriam-webster.com/dictionary/ simultaneous (June 1, 2011). Absent evidence of Congressional intent to the contrary, the term "simultaneously" should be given its ordinary and plain meaning.
There can be little dispute that posting material on the Internet makes it available at the same time—simultaneously—to anyone with access to the Internet.
If Congress had intended to exclude works published on the Internet from the definitions of "United States work" or "publication" in § 101, it easily could have done so. See, e.g., Consumer Product Safety Comm'n, 447 U.S. at 109, 100 S.Ct. 2051 (Congress could have included the disclosure of information in response to a FOIA request in the list of exceptions set out in the Consumer Product Safety Act, but it did not). The copyright provisions at issue here were modified in 1998 as part of the Digital Millennium Copyright Act. See Pub.L. 105-304, 112 Stat. 2860, § 102(a)(2) (1998) (amending the definition of "United States work" to its current form) & § 102(d) (same for registration requirements for foreign works). We must presume that Congress was fully aware of the Berne Convention and other
Judge Hillman's objections to the proposition that publication on the Internet constitutes simultaneous global publication for copyright purposes are policy-driven. They reflect a deference to certain goals of the Berne Convention at the expense of clear statutory language. But "Congress passed the Berne Convention Implementation Act of 1998 with explicit direction to courts that they should apply the law that it drafted, not look to vindicate propositions of the Berne Convention directly." 2 Nimmer on Copyright § 7.16[B][6][e], at 7-190.8(2) (criticizing the decisional approach taken in Moberg; 1 Nimmer on Copyright § 1.12[A], at 1-167-1-169 (discussing and citing to provisions in the Berne Convention Implementation Act, Pub.L. 100-568, 102 Stat. 2853, that were designed to forestall treaty self-execution)). See also Football Ass'n, 633 F.Supp.2d at 162-64 (rejecting the plaintiff's claim that 17 U.S.C. § 412 excuses foreign works from the registration requirement in order to obtain statutory damages; there is no exception for foreign works in the statute, Congress did not intend an exception, requiring foreign works to meet this requirement would not violate international copyright and intellectual property treaties to which the United States is bound, and "[e]ven if Section 412 were in conflict with the Berne Convention, Section 412 would be binding ... [b]ecause the Berne Convention has no effect on U.S. law unless Congress so provides..."). When the statute is clear, as it is here, we need go no further in our analysis.
Turning to Moberg, we respectfully disagree with some of the premises on which Judge Hillman's analysis appears to have been based. For instance, he stated that this country's copyright laws, in accord with the Convention, protect foreign works "without requiring the artists to undertake any formalities in the United States." 666 F.Supp.2d at 423. But not all formalities for foreign authors have been dispensed with. While registration of foreign works as a precondition to bringing an infringement suit is no longer required, registration is still required for foreign authors to gain the procedural benefits of a prima facie presumption of the validity of a copyright, statutory damages, and attorney's fees under the Act. See 2 Nimmer on Copyright § 7.01[B], at 7-11-7-12; 17 U.S.C. § 410(c) (registration required for presumption of validity); 17 U.S.C. § 412 (registration required for award of statutory damages and attorney's fees); see also, e.g., Football Ass'n, 633 F.Supp.2d at 162 (17 U.S.C. § 412 requires registration before party can obtain statutory damages for both domestic and foreign works). And of course, a foreign author wishing to avail himself of U.S. copyright laws must comply with various requirements for filing a lawsuit in federal court.
Judge Hillman also opined that transforming Internet-posted works into "United States works" would allow American citizens to infringe on foreign-copyrighted works with impunity, since the majority of foreign works are not registered in this country. 666 F.Supp.2d at 423. But "registration is not a condition of copyright protection." 17 U.S.C. § 408(a). There is no loss of copyrights by virtue of publishing a work on the Internet, irrespective of registration. Registration is simply a prerequisite to bringing a claim after infringing activity has occurred. 17 U.S.C. § 411(a); Reed Elsevier, Inc. v. Muchnick, ___ U.S. ___, 130 S.Ct. 1237, 1241-42, 176 L.Ed.2d 18 (2010).
We hold that publishing AJE on a website in Australia was an act tantamount to global and simultaneous publication of the work, bringing AJE within the definition of a "United States work" under § 101(1)(C) and subject to § 411(a)'s registration requirement. Gallefoss elected to publish AJE on the Internet and the legal consequences of that decision must apply. Plaintiff was therefore required to register AJE prior to seeking judicial enforcement of its copyright rights.
Having now obtained copyright registration for the sound recording and musical composition of AJE, Plaintiff moves to amend the complaint to add this allegation. As stated earlier, Plaintiff applied for and then obtained registration after March 31, 2011, after we determined that AJE was subject to § 411(a)'s registration requirement, a precondition precedent to filing suit that Plaintiff failed to meet. Plaintiff claims the proposed amendment does not change any facts or legal theories or add a new cause of action. Plaintiff maintains that amendment should be allowed in the interest of justice, particularly here where Plaintiff was under a good faith (though mistaken) belief that registration was not required.
When amendment to a complaint is sought after the deadline established in a scheduling order, as is the case here,
Plaintiff claims it has demonstrated diligence and established good cause for the amendment. First, Plaintiff states there is no information it could have obtained prior to filing the complaint or during discovery that would have made this amendment necessary. From the beginning of the case, Plaintiff has taken the position that AJE was not a "United States work" and therefore not subject to § 411(a)'s registration requirement. [D.E. 1; D.E. 63]. Meanwhile, Plaintiff complains, Defendants did not raise the issue of lack of copyright registration until late in the case, in their Answers which were filed after several motions to dismiss had been resolved, after the close of discovery, and just days before the summary judgment deadline.
Plaintiff also argues that the information on which it bases its amendment—our determination that AJE was first published on the Internet simultaneously in the United States and around the world—was not available until March 31, 2011. Plaintiff states that once we ruled, it immediately applied for registration and thereafter, immediately upon receiving its registration certification, filed the pending motion to amend.
We reject Plaintiff's argument that it could not have anticipated a possible need for registration prior to our March 31, 2011 ruling. Plaintiff was on notice nearly a year earlier that copyright registration (or lack thereof) was an issue in the case. Specifically, in May 2010 Defendants raised lack of copyright registration as a defense in their Answers. [D.E. 127 at 10]. Defendants then argued in their summary judgment papers, also filed in May 2010, that AJE was published online, was a "United States work" subject to the § 411(a) precondition for filing suit, and that Moberg should not control our resolution of the issue. [D.E. 137 at 2-12]. Even if registration was not an issue in the case before May 2010, these filings injected it front and center. Plaintiff had ample opportunity between May 2010 and March 2011 to seek registration and amendment to the complaint.
We do not put much stock in Plaintiff's claim that it could not possibly have anticipated that we might rule differently than Judge Hillman did in Moberg. The issues raised in our two cases was and remains unsettled. Judge Hillman noted the issues were of first impression. Moberg, 666
Finally, and significantly, Moberg, the sole published decision on this issue, is from a district court in another circuit and clearly not binding on us. Plaintiff's claim that it could not have anticipated we would reach a different conclusion than Judge Hillman rings hollow.
Consequently, we find that Plaintiff has not identified any facts or new information it could not otherwise have discovered that justify an amendment of the complaint at this late stage in the proceedings. We will not ascribe bad faith to Plaintiff for failing to seek registration earlier in the case. Plaintiff made a calculated decision not to do so even though the issue was contested. Plaintiff's decision to hedge its bet supports our conclusion that Plaintiff has not met the good cause standard under Rule 16(b)(4) for a tardy amendment of the pleadings.
Even if Plaintiff could demonstrate good cause for seeking this amendment after summary judgment was granted, it still must satisfy Rule 15 which permits amendment by leave of court or by written consent of the adverse party. Fed.R.Civ.P. 15(a)(2). As consent has not been granted, Plaintiff seeks leave of court.
Rule 15(a) provides that leave to amend shall be "freely given when justice so requires." Foman v. Davis, 371 U.S. 178, 182, 83 S.Ct. 227, 9 L.Ed.2d 222 (1962) ("this mandate is to be heeded"). Factors to consider when evaluating a motion to amend include undue delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the opposing party, and the futility of the amendment. Id. Although a district court has discretion to grant an amendment, "outright refusal to grant the leave without any justifying reason appearing for the denial is not an exercise of discretion." Id.
Plaintiff cites a number of copyright infringement cases in which a plaintiff who failed to meet the § 411(a) registration requirement prior to suing for infringement, but then subsequently obtained registration for the infringed work, was granted leave to amend the complaint accordingly. None of those cases are persuasive. None display a fact pattern similar to ours, where Plaintiff is attempting to amend the complaint to allege copyright registration when registration was not even sought until after summary judgment was granted for Defendants on the issue.
For instance, Plaintiff cites M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488-89 (11th Cir.1990), where a plaintiff applied for copyright registration but two months later sued for infringement even though the registration
The Eleventh Circuit concluded that the trial court had erred in allowing the amendment because at that juncture the court was without jurisdiction to do so. Id. The proper way to proceed would have been for the plaintiff to file a new lawsuit as contemplated by the trial court which had expressly dismissed the complaint without prejudice so that the plaintiff could re-file once registration was obtained. Id. However, the Eleventh Circuit concluded that it was "too late in the day and entirely contrary to the spirit of the Federal Rules of Civil Procedure for decisions on the merits to be avoided on the basis of such mere technicalities." Id. (internal citation omitted). "Except for the technical distinction between filing a new complaint and filing an amended complaint, the case would have been properly filed." Id. Additionally, the court noted that the defendant was not prejudiced by the error. Id.
We are well past the stage of the case at which the M.G.B. Homes judge allowed the amendment. There, the plaintiff's claims were dismissed shortly after the action was filed. Registration had been sought two months prior to filing suit, and registration was obtained shortly after the case was dismissed. Further, when the court dismissed the case, it anticipated a refiling. That scenario is in stark contrast with ours, where summary judgment motions were briefed, argued, and ruled upon, and only then did Plaintiff apply for and obtain registration.
M.G.B Homes and the other infringement cases cited by Plaintiff involve plaintiffs who obtained their registrations before the courts had issued their final rulings on the pleadings. See, e.g., Positive Black Talk Inc. v. Cash Money Records Inc., 394 F.3d 357, 363-64 (5th Cir. 2004) (plaintiff filed an infringement action four days before the Copyright Office received its application, deposit, and fee, all of which the plaintiff had mailed on the same day it filed suit
In a broader sense, there is ample caselaw justifying the denial of a motion to amend that is filed after summary judgment has been granted for the defendant. E.g., Diersen v. Chicago Car Exchange, 110 F.3d 481, 489 (7th Cir.1997) (district court did not abuse its discretion in denying motion for leave to amend complaint where motion was not filed until after the court had granted the defendant's motion for summary judgment; the proposed amendment could and should have been suggested much earlier in the case, and allowing the amendment would have prolonged the litigation); Key Airlines, Inc. v. National Mediation Bd., 745 F.Supp. 749, 751-52 (D.D.C.1990) (denial of leave to amend that post-dated summary judgment was justified where the plaintiff made a tactical decision not to present the newly asserted claim at an earlier, more appropriate stage of the litigation). As the Tenth Circuit stated in Pallottino v. City of Rio Rancho, 31 F.3d 1023 (10th Cir. 1994), where the plaintiff attempted to amend his complaint in order to advance a new theory after his primary theory had been dismissed:
Id. at 1027 (citation omitted). Cf. Oravec, 527 F.3d at 1231-32 (plaintiff failed to show the requisite level of diligence in pursuing infringement claim when he moved to amend 20 months after the original complaint was filed, more than a year after expiration of the deadline for amending the pleadings, and six weeks before trial; although plaintiff claimed he was not aware of a jurisdictional issue concerning his copyrights until the trial court raised the issue at a summary judgment hearing, "the fact that Oravec or his counsel misunderstood the scope of legal protection
We also find that Defendants would be prejudiced by allowing an amendment to the complaint at this juncture. Having obtained summary judgment in their favor, Defendants have a right for this litigation to end. Moreover, allowing this amendment exposes Defendants to approximately two years' worth of damages that they might otherwise avoid under the statute of limitations, if the case is dismissed and Plaintiff files a new action.
Finally, we think that denying the motion to amend makes practical sense from the perspective of judicial economy. The most appropriate forum in which to litigate this case is New York. Significantly, in July 2010, we dismissed Defendant Nelstar Publishing, Inc. ("Nelstar") from the case after concluding we could not exercise personal jurisdiction over that particular Defendant. [D.E. 195]. We also determined that Nelstar was a necessary and indispensable party to this action and that Plaintiff could not proceed on Count 4, a claim for permanent injunction based on the composition "Do It," against all Defendants in Nelstar's absence. Accordingly, we dismissed Count 4 without prejudice. New York is the only jurisdiction in which Plaintiff may bring the composition claim against Nelstar and the other Defendants. Moreover, all Defendants in this case have stipulated to jurisdiction there. [Id. at 27, 33]. If Plaintiff re-files the matter in New York, it may pursue a claim that cannot be heard in our court.
These facts militate against allowing the amendment. Under the circumstances, justice does not require it. For the aforementioned reasons, we deny Plaintiff's request to amend the complaint.
For the foregoing reasons, it is hereby
1) We reaffirm our March 31, 2011 ruling and
2) Plaintiff's Motion for Reconsideration or, in the Alternative, to Hold Entry of Final Order Briefly in Abeyance
3) Plaintiff's Motion for Leave to Amend the Complaint
4)
[D.E. 202-1 at 3-4 (emphasis supplied) ].
Id. at 831 (emphasis supplied).
The most well-known category of communication over the Internet, the "World Wide Web," "is a series of documents stored in different computers all over the Internet." Id. at 836. Most documents on the Web contain "links" which are short sections of text or image that refer to another document. Id. "[L]inks from one computer to another, from one document to another across the Internet, are what unify the Web into a single body of knowledge, and what makes the Web unique. The Web was designed with a maximum target time to follow a link of one tenth of a second." Id. at 836-37 (emphasis supplied).
