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Lois B. MORRIS, Plaintiff,

BUSINESS CONCEPTS, INC., James J. Maher, Petra H. Maher, Defendants.

No. 99 Civ. 59 RCC.

United States District Court, S.D. New York.

March 28, 2000.

Opinion and Order

CASEY, J.

*1 Plaintiff initiated this action for copy infringement under the Copyright Act of 1976, 17 U.S.C. §§ 101 et. seq, and section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Plaintiff, the author and creator of a column published in Allure Magazine, alleges that defendants copied and published twenty four articles that she had previously authored for Allure Magazine without her authorization and without crediting her with authorship of the articles.

Defendants have moved for summary judgment under Federal Rule of Civil Procedure 56, asserting that the Court lacks jurisdiction because plaintiff has not obtained valid copyright registrations for these articles. Defendants also assert that plaintiff's second claim for a violation of the Lanham Act should be dismissed because plaintiff has not met the public confusion requirement for such a claim. For the reasons set forth below the motion is granted.

I. BACKGROUND

Plaintiff Lois B. Morris is the author and creator of a monthly column entitled "Mood News" for Allure Magazine ("Allure" ), a publication of Conde Nast, Inc. ("Conde Nast"). Compl. at p. 3, ¶ 13. The column is comprised of short articles bearing their own titles and dealing with health, psychology and fitness issues (the "Articles"). Pursuant to annual agreements (the "Agreements") between Morris and Conde Nast, from the period of January 15, 1992 to February 28, 1999, Conde Nast commissioned Morris to write twelve articles a year for the Column in Allure. In turn, Morris granted Conde Nast, inter alia, the exclusive first right to publish the Articles for ninety days from the United States on‑sale date of the issue and, from 1993 on, the non‑ exclusive right to republish, reprint and re‑use the Articles for the full term of copyright. Oppenheim Affirm., Exh. D. Morris, however, retained ownership of the copyright in the Articles. Compl. at p. 3, ¶ 17. Conde Nast applied for and received separate Certificates of Registration from the Register of Copyrights for each monthly issue of Allure (the "Conde Nast Registrations"). Compl., Exh. A. It is undisputed that the Conde Nast Registrations cover each issue of Allure as a collective work and the contents of the issue are not listed separately.

Defendants James J. Maher and Petrea H. Maher are the co‑owners and publisher and editor in chief, respectively, of Business Concepts, Inc., a California based corporation. Business Concepts publishes a newsletter entitled Psychology and Health Update ("Health Update" ) at least four times a year. [FN1] Compl. at p. 3, ¶ 9.

FN1. The parties do not agree whether Health Update is a newsletter or magazine and whether it is published quarterly or six times a year. For purposes of this motion, however, the distinction is irrelevant.

Morris alleges that over the course of a four year period from January of 1994 to May of 1998, defendants copied and published twenty four of the Articles without her authorization and without crediting her with authorship. Compl. at pp. 4‑7, ¶¶ 23‑42. Of the twenty four copied articles, at least thirteen were published within ninety days after their first publication in Allure. See id .

*2 Counsel for Conde Nast contacted defendants on four different occasions, by letters dated on or about April 3, 1998, April 20, 1998, May 11, 1998 and June 18, 1998, demanding that defendants cease and desist from their infringingconduct and pay appropriate damages. Compl. at p. 7, ¶ 45; Compl., Exh. W. Counsel for Morris also contacted defendants by letter dated on or about October 27, 1998, demanding the same. Compl. at p. 7, ¶ 46; Compl., Exh. W. Although it is unclear from the pleadings whether defendants responded to the Conde Nast cease and desist letter, defendants did respond to the Morris letter by their own letter dated November 3, 1998. Compl. at p. 7, ¶ 47; Compl., Exh. X. In their letter, defendants acknowledged that they were attempting to prevent a recurrence of the "unauthorized usage ... of Ms. Morris' works." Compl., Exh. X. Defendants have refused to compensate Morris for their unauthorized use of the Articles. Compl. at p. 7, ¶ 48.

Morris filed this action on January 6, 1999, claiming copyright infringement under the Copyright Act of 1976 (the "Copyright Act") and a violation of section 43(a) of the Lanham Act. Defendants have moved for summary judgment under Federal Rule of Civil Procedure 56, asserting that the Court lacks jurisdiction in this matter because Morris failed to register copyrights in the Articles. In addition, defendants argue that Morris' second claim for violation of the Lanham Act also should be dismissed because plaintiff has failed to state a valid claim, given that there have been no false representations by defendant creating a likelihood of confusion. Therefore, defendants assert that Morris' second claim constitutes an improper attempt to restate a copyright infringement claim under the Lanham Act and should be dismissed.

II. DISCUSSION

SUMMARY JUDGMENT

Under Federal Rule of Civil Procedure 56(c), summary judgment is appropriate where the "pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact." Fed.R.Civ.P. 56(c); see Anderson v. Liberty Lobby, 477 U.S. 242, 250, 106 S.Ct. 2505 (1986). In reaching this determination, the Court resolves all ambiguities and draws all reasonable inferences against the moving party. Celotex Corp. v. Catrett, 477 U.S. 317, 322‑23, 106 S.Ct. 2548 (1986); Gant v. Wallingford Bd. of Educ., 195 F.3d 134, 139 (2d Cir.1999). Once the moving party meets its initial burden, the burden then shifts to the non‑moving party to advance specific facts to show that there is a genuine issue for trial. See Fed.R.Civ.P. 56(e). This requires more than mere "metaphysical doubt, conjecture or surmise concerning the facts." Halpern v. F.B.I., 181 F.3d 279, 287 (2d Cir.1999). Only where the record taken as a whole could not lead a rational trier of fact to find for the non‑moving party, is summary judgment warranted. See Matsushita Elec. Indus. Co., Inc. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348 (1986); Gallo v. Prudential Residential Serv., Ltd. Partnership, 22 F.3d 1219, 1223 (2d Cir.1994).

*3 It is undisputed that Morris is the author and creator of the articles that are the subject of her copyright infringement claim. As such, plaintiff is the owner of the copyrights in the Articles. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282 (1991) (stating that the "sine qua non of copyright is originality") (citation omitted); Acuff‑ Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 143 (2d Cir.1998) (quoting Feist, 499 U.S. at 345). Accordingly, if a party copies a copyrighted work independently created by another party, it is an infringement of copyright. See Feist, 499 U.S. at 346. To establish a claim for infringement of a copyright the plaintiff must demonstrate both ownership of a valid copyright and that the defendant copied the protected material without authorization. See Feist, 499 U.S. at 361 (citing Harper & Row Publishers, Inc. v. Nation Enter., 471 U.S. 539, 548, 105 S.Ct. 2218 (1985)); Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir.1997) (citations omitted). In the absenceof a valid copyright registration, however, the Court lacks subject matter jurisdiction in an action to enforce a copyright. See Yurman Design Inc. v. Chaindom Enter., Inc., 1999 WL 1075942 at *5 (S.D.N.Y. Nov. 29, 1999) (quoting Tuff‑n‑Rumble Management, Inc. v. Sugarhill Music Publ'g Inc., 49 F.Supp.2d 673, 677 (S.D.N.Y.1999)). Absent this prerequisite, a plaintiff cannot institute an action for copyright infringement. See 17 U.S.C. § 411(a) (1995) ("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").

Defendants assert, and Morris acknowledges, that Morris has not registered her own copyrights in the Articles with the Register of Copyrights. Instead, plaintiff argues that she possesses valid copyright registrations by virtue of the Conde Nast Registrations. This argument is erroneous. The individual issues of Allure are considered collective works under the Copyright Act. See 17 U.S.C. § 101 (1995) ("a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole"). And a collective work is considered a form of a compilation. See id. ("[t]he term 'compilation' includes collective works"). Moreover, the copyright in a compilation "is independent of and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material." 17 U.S.C. § 103(b) (1995). This language indicates that the copyright protection afforded a compilation is distinct from that afforded to the discrete works that comprise the compilation. Therefore, the Conde Nast Registrations afford copyright protection only to the particular issues of Allure being registered. This protection does not extend to the individual and independent works within the magazine as distinct works in and of themselves.

*4 The limited scope of registering the copyright in a compilation is reflected in the express language of the copyright registration form [FN2] distributed by the Copyright Office, which indicates that:

FN2. The copyright for a compilation is registered under the heading of "Serials." The form is titled "Copyright Registration for Serials on Form SE." Copyright Office Circular No. 62.

[t]he claimant registering a serial may claim copyright not only in the collective‑work authorship for which the claimant is responsible but also in any independently authored contributions in which all rights have been transferred to the claimant by the contributors.

If the serial issue includes any independently authored contributions in which all rights have not been transferred by the contributor to the claimant for the serial issue as a whole, those contributions are not included in the claim being registered, because the claimant in these contributions is different from the claimant in the entire serial issue.

A separately authored contribution can, however, be registered for copyright independently. To register such a contribution, the contributor should file a separate claim using Form TX or other appropriate application form.

Copyright Registration for Serials at p. 5, "The Claimant and the Extent of the Claim." The Articles constitute "separate and independent works" for purposes of a copyright infringement claim, as evidenced by the Agreements and plaintiff's admission that she owns their copyrights. (Compl. At p. 3, ¶ 17). Conde Nast's registering of the issues of Allure is not commensurate with Morris registering her own copyrights in the Articles. Undoubtedly, Conde Nast could bring suit against defendants for their recent infringing conduct. See 17 U.S.C. § 507(b) (1995) (no civil action shall be maintained unless it is commenced within three years after claim accrued). Had Morris registered her own copyrights in the Articles, she still could maintain an action for copyright infringement of the Articles falling within the applicable time limitations period. See 17 U.S.C. § 411(a); 17 U.S.C. § 507(b); see also 17 U.S.C. § 410(c) (1982) (certificate of registration made before or within five years after first publication of the work constitutes prima facie evidence of validity of the copyright). Thus, Morris should have registered copyrights in the Articles separately under Form TX.

The cases Morris cites in support of her contention that she can rely on the Conde Nast Registrations as the basis for a copyright infringement claim are inapposite. These cases are not controlling because they were interpreted under the Copyright Act of 1909, whereas this action arises under the Copyright Act of 1976. The Copyright Act of 1909 has been superceded by the Copyright Act of 1976. See 17 U.S.C. § 301(a) (1995). The statutory language clearly indicates that the Copyright Act is applicable to works published after its enactment on January 1, 1978. See id. (all legal and equitable rights within scope of copyright, in works of authorship fixed in a tangible medium of expression are governed exclusively by this title). The legislative history of 17 U.S.C. § 301 also illustrates the Congressional intent to preempt prior law and establish a universally applicable federal statute. See H.R.Rep. No. 94‑1476, 94th Cong., 2d Sess. 129 (1976), reprinted in [1976] U.S.Code Cong. & Ad. News 5659, 5745 (bill adopts a single system of Federal statutory copyright from creation, replacing the existing anachronistic, uncertain, impractical, and highly complicated dual system). The courts in the cases Morris cites determined that the publishers' copyrights in the magazine issues provided the authors with an implicit copyright in their individual works because holding otherwise would have forced a "harsh forfeiture" upon the authors, who had not intended to donate their works to the public domain. See Sanga Music Inc. v. EMI Blackwood Music Inc., 55 F.3d 756 (2d Cir.1995); Goodis v. United Artists Television, Inc., 425 F.2d 397 (2d Cir.1970); Abend v. MCA, Inc ., 863 F.2d 1465 (9th Cir.1988), aff'd on other grounds, 485 U .S. 207 (1990); Dauman v. The Andy Warhol Foundation, 1997 WL 337488 (S.D.N.Y. Jun. 19, 1997). These holdings are inapposite here because under the Copyright Act of 1909, copyright in a work vested in the author only upon publication with proper notice. Hence, if an author's work were published with improper copyright notice, the work would be considered in the public domain and the author would lose his copyright in the work. Thus, a "harsh forfeiture" would work against the author, who had no intention of releasing his work to the public domain. Under the Copyright Act of 1976, this "harsh forfeiture" is no longer an issue because copyright in a work now vests automatically in the author once the work is "fixed in a tangible medium of expression." 17 U.S.C. § 301(a). Nevertheless, under the Copyright Act of 1976, a copyright owner must still register his or her copyright in order to have standing to sue for copyright infringement. [FN3] 17 U.S.C. § 411(a).

FN3. Plaintiff also cites two Western District of Washington cases holding that "registration by the publisher of a periodical is effective registration to protect the author of a contribution to the periodical because 'the important considerations ... are the intention of the parties to obtain copyright and the adequacy of notice to the public." ' Curtis v. General Dynamics Corp., 1990 WL 303664 at *1 (W.D.Wash.1990); see also, Hilliard v. Mac's Place Inc., 1994 WL 323961 (W.D.Wash.1994) (holding copyright registration of magazine in which plaintiff's photograph was published met requirements of 17 U.S.C. § 411). These cases also are inapposite because the plaintiffs there had also registered their own copyrights to the works in question. These cases also rely upon the reasoning of Abend, which was decided under the now superceded Copyright Act of 1909.

Furthermore, the holding in Leibovitz v. Paramount Pictures Corp., 948 F.Supp. 1214 (S.D.N.Y.1996), aff'd, 137 F.3d 109 (2d Cir.1998), does not lend credence to Morris' argument because the issue there did not involve jurisdiction and whether or not plaintiff possessed a valid copyright registration in her work.

*5 Finally, plaintiff asserts that she also is entitled to bring a copyright infringement claim on the basis of her status as a beneficial owner of the copyrights in the Articles. Morris relies upon section 501(b) of the Copyright Act, which states that a "legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it." 17 U.S.C. § 501(b) (1995). A beneficial owner would include "an author who had parted with legal title to the copyright in exchange for percentage royalties...." H.R.Rep. No. 1476 94th Cong., 2nd Sess. 159, reprinted in 1976 U.S.Code Cong. & Ad. News 5659, 5775; see also Cortner v. Israel, 732 F.2d 267, 271 (2d Cir.1984) (adopting explanation of beneficial owner in legislative history of Copyright Act). Here, plaintiff clearly has attempted to maintain virtually all of her rights to exploit the copyright in her articles. She has retained legal title to the copyright and has not transferred any rights to Conde Nast in exchange for royalties or any other continuing economic interest giving her standing to sue for infringement as a beneficial owner. See Marina B. Creation, S.A. v.. De Maurier, 685 F.Supp. 910 (S.D.N.Y.1988).

Defendants' conduct in reproducing the Articles, verbatim or nearly verbatim, is both abject and reprehensible. Nevertheless, plaintiff has failed to protect her own rights because she failed to obtain valid copyright registrations in the Articles. Although Morris had the foresight to contractually protect her ability to exploit her work for profit, she neglected to protect her ability to prevent others from doing the same. Because plaintiff has failed to show a genuine issue of material fact for trial, defendants' motion for summary judgment is granted with respect to her first claim for copyright infringement.

LANHAM ACT VIOLATION

Summary judgment also is warranted with respect to Morris' second claim for a violation of section 43(a) of the Lanham Act because Morris does not object to dismissal of this claim.

III. CONCLUSION

The Court reiterates its disdain for defendants' egregious conduct in exploiting Morris' creative endeavors for their own gain. However, lacking jurisdiction in this action, the Court is without power to redress this inequity. Therefore, for the aforementioned reasons, defendants' motion for summary judgment is granted and plaintiff's claims for copyright infringement and a violation of the Lanham Act are dismissed.

END OF DOCUMENT