Opinion
Civil Action No. AW-00-1571
April 20, 2001
MEMORANDUM OPINION
This case arises from the alleged unauthorized use of photographs taken by Plaintiff, Sahle Araya. Plaintiff's three-count complaint seeks relief for copyright infringement, unfair competition, and breach of contract. Currently pending before the Court are Defendants Latino Publishing and Segundo Morillo's joint motion to dismiss Plaintiff's complaint for failure to state a claim [18-1] and joint motion to dismiss the cross claim of co-defendant David Fuster [19-1]. No hearing is deemed necessary. See Local Rule 105.6. Upon consideration of the arguments made in support of, and opposition to, the respective motions, the Court makes the following determinations.
I. FACTUAL BACKGROUND
Plaintiff is a dentist practicing in Maryland. Defendant David Fuster is also a dentist practicing in Maryland. Both dentists placed advertisements for their services in a business directory published by Defendant Latino Publishing, Inc. ("Latino Publishing"). Defendant Segundo Morillo is the President of Latino Publishing.
In 1998, Plaintiff performed orthodontics work on a client of his practice. With his client's permission, Plaintiff took pictures of the client's teeth before the procedure and afterwards. In September 1999, Plaintiff entered into an advertising contract with Latino Publishing. Plaintiff gave two pictures to Latino Publishing for placement in his advertisement. According to Mr. Fuster, Latino Publishing had solicited his business by offering a free advertisement in the directory. Defendant Fuster maintains that he supplied Latino Publishing with photographs of his own work that were not used in his advertisement. In March 2000, Latino Publishing published and disseminated the directory. According to Plaintiff, after receiving a published copy, he noticed that his pictures were also used in an advertisement for Defendant Fuster, a competing dentist.
On April 3, 2000, Plaintiff, by his attorneys, notified Latino Publishing that they were infringing on his copyright to the photographs. According to Defendants, the directory has ceased publication of the photographs in the allegedly infringing manner. On April 28, 2000, Plaintiff applied for copyright registration. (See Compl. Ex.3). On May 31, 2000, Plaintiff instituted the instant litigation.
II. DISCUSSION
A. Motion to Dismiss Count I (Copyright Infringement)
Infringement is defined in 17 U.S.C. § 501 as the substantial unauthorized copying of protected material from a copyrighted work. In order to bring a lawsuit for copyright infringement, a plaintiff must show (1) ownership of a copyright, (2) registration in compliance with 17 U.S.C. § 411, (3) violation of the copyright, and (4) proper jurisdiction.
Generally, photographs are copyrightable and fall within the classification of "pictorial, graphic, and sculptural works" delineated in Section 102(a)(5). Plaintiff alleges that he took the photos of a dental client's teeth in his office. The allegations suffice to show that the photograph was the product of Mr. Araya's "personal choice of subject matter, angle, lighting, and determination of the precise time when the photograph [was] to be taken" and, thus, ownership of original material subject to copyright protections. Melville B. Nimmer David Nimmer, 1 Nimmer on Copyright § 2.08[E][1], at 2-130 (1996); see Los Angeles News Serv. v. Tullo, 973 F.2d 791, 794 (9th Cir. 1992); Gentieu v. John Muller Co., 712 F. Supp. 740, 742 (W.D.Mo. 1989). Plaintiff alleges that Defendants copied his photos to use in the advertisement of a competitor. The unauthorized reproduction of a copyright-protected photograph is sufficient to constitute infringement. See Rogers v. Koons, 751 F. Supp. 474, 478 (S.D.N.Y. 1990), aff'd, 960 F.2d 301 (2d Cir. 1992).
On the issue of registration, section 411 of the Federal Copyright Act provides that "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." 17 U.S.C. § 411(a). Although recognizing that "[s]ection § 411(a) merely requires a copyright owner to register its copyright before filing an action for copyright infringement," the Fourth Circuit has not directly spoken on the evidentiary requirements of proving compliance with § 411(a). Cf. Trandes Corp. v. Guy F. Atkinson Co.,996 F.2d 655, 658 (4th Cir. 1995). Some courts have adopted a strict compliance requirement and have ruled that "[w]ithout the copyright certificates, the plaintiff has no prima facie evidence of registration, and thus has no standing to sue for copyright infringement." Miller v. CP Chemicals, Inc., 808 F. Supp. 1238, 1241 (D.S.C. 1992); see Goebel v. Manis, 39 F. Supp.2d 1318, 1320-21 (D.Kan. 1999). Other courts have determined that the requirements of section 411 are satisfied when the plaintiff proves "payment of the required fee, deposit of the work in question, and receipt by the Copyright Office of a registration application." Apple Barrel Productions, Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir. 1984); Secure Services Technology, Inc. v. Time and Space Processing Inc., 722 F. Supp. 1354, 1364 (E.D.Va. 1989). Under this standard, one court has accepted copies of the copyright application and deposits submitted to the Copyright Office together with a receipt from the Copyright Office indicating that it received the application, fee and deposit as sufficient to satisfy the registration requirement even though actual proof of issuance of the registration certificate was lacking. Wilson v. Mr. Tee's, 855 F. Supp. 679, 682 (D.N.J. 1994). One court has found that evidence of the Copyright Office's receipt of the application for registration is sufficient to satisfy the registration requirement of Section 411. SportsMEDIA Technology Corp. v. Upchurch, 839 F. Supp. 8, 9 (D.Del. 1993). However, in SportsMEDIA Technology Corp., the plaintiff subsequently submitted the actual registration certificate to the court. Id. at 9. In this case, Plaintiff's only proof of registration is a stamped returned receipt from the Copyright Office. It provides no indication of what the Copyright Office received. Plaintiff failed to submit a copy of the registration application, any proof of payment of the application fees or deposit of the subject works, or a copy of the registration certificate. Even under the more liberal interpretation of § 411, the copy of the postal return receipt alone is insufficient as a matter of law to satisfy the registration requirement. Without proof of registration, the Court lacks subject matter jurisdiction and will not address the merits of Defendants' alternative grounds for dismissal.
The Court also recognizes that its current disposition eliminates the only federal claim in the action. In absence of the federal claim, continued jurisdiction over the remaining state law claims cannot be based upon diversity jurisdiction. Although Plaintiff pleads over $75,000 in damages satisfying the requisite amount-in-controversy requirement, it appears from the face of the complaint that both Plaintiff and Defendant Fuster are citizens of Maryland. Plaintiff's residence is listed in Hyattsville, Maryland and Defendant Fuster's address is located in Bethesda, Maryland. As such, complete diversity does not exist between the parties, thereby depriving this Court of diversity jurisdiction. See Strawbridge v. Curtiss, 7 U.S. 267 (1806).
From the face of the pleading, it does not appear to a legal certainty that the claims are really for less than the jurisdictional amount. See Maryland Nat'l Bank v Nolan, 666 F. Supp. 797 (D.Md. 1987).
Similarly, there is no basis to support the exercise of diversity jurisdiction over Fuster's cross-claim. Fuster's cross-claim alleges negligence by Latino Publishing in substituting the photos and seeks contribution or indemnification to the extent that he is found liable to the Plaintiff. Even though the parties are diverse, Mr. Fuster does not plead the requisite amount-in-controversy of $75,000 to support diversity jurisdiction.
Given the dismissal of the only claim over which it had original jurisdiction, the Court declines to exercise supplemental jurisdiction over the remaining state law claims. See 13 U.S.C. § 1367(c)(3). "[U]nder the authority of 28 U.S.C. § 1367(c), authorizing a federal court to decline to exercise supplemental jurisdiction, a district court has inherent power to dismiss the case . . . provided the conditions set forth in § 1367(c) for declining to exercise supplemental jurisdiction have been met." Hinson v. Norwest Financial South Carolina, Inc., 239 F.3d 611, 617 (4th Cir. 2001). Furthermore, the Court finds no overriding interests of judicial economy, convenience or fairness to warrant retention of Plaintiff's state law claims and Fuster's cross claim under its power of supplemental jurisdiction. See Jackson v. DDD Co., 3 F. Supp.2d 666, 667 (D.Md. 1998); Cruz v. City of Washington, 814 F. Supp. 405 (D.Del. 1993).
For the above stated reasons, the Court will grant the Defendants' motions and dismiss Plaintiff's complaint and Defendant Fuster's cross-claim for lack of subject matter jurisdiction. An Order consistent with this Opinion will follow.
ORDER
For the reasons stated in the accompanying Memorandum Opinion dated April 20, 2001, IT IS this 20th day of April, 2001 by the United States District Court for the District of Maryland, hereby ORDERED:
1. That Defendants Latino Publishing and Segundo Morillo's Motion to Dismiss Plaintiff's complaint [18-1] BE, and the same hereby IS, GRANTED for lack of subject matter jurisdiction;
2. That Defendants Latino Publishing and Segundo Morillo's Motion to Dismiss the Cross Claim of Co-defendant David Fuster [19-1] BE, and the same hereby IS, GRANTED for lack of subject matter jurisdiction;
3. That the above captioned case BE, and the same hereby IS, CLOSED; and
4. That the Clerk of the Court mail copies of this order to all counsel of record.