Gregory S. Markantone DPM PC v. Podiatric Billing Specialists

NOT PRECEDENTIAL

UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
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No. 14-3097
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GREGORY S. MARKANTONE DPM, P.C;
GREGORY S. MARKANTONE,

Appellants

v.

PODIATRIC BILLING SPECIALISTS, LLC

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On Appeal from the United States District Court
for the Western District of Pennsylvania
(No. 2-14-cv-00215)
Magistrate Judge: Hon. Lisa P. Lenihan
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Submitted Pursuant to Third Circuit L.A.R. 34.1(a)
March 17, 2015

Before: RENDELL, FUENTES, and BARRY, Circuit Judges

(Filed: April 27, 2015)
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OPINION*
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*
This disposition is not an opinion of the full Court and pursuant to I.O.P. 5.7 does not
constitute binding precedent.
FUENTES, Circuit Judge

Gregory Markantone runs a podiatry practice and claims a copyright interest in

certain medical data that he describes as “office procedures, patient information,

operational rules, and related data.” He admittedly has never registered his supposed

copyright. Markantone entered into a licensing agreement with Podiatric Billing

Specialists and, in connection with that agreement, Podiatric Billing came into possession

of the medical data. After the agreement was terminated, Markantone demanded the

return of his medical data, but Podiatric Billing refused unless Markantone paid it two

thousand dollars.

This litigation followed, with Markantone and his medical practice asserting a

claim for copyright infringement and various causes of action under Pennsylvania law.

The District Court dismissed the federal copyright claim and declined to exercise

supplemental jurisdiction over the remaining state-law claims as there is no diversity

among the parties.1

Subject to certain exceptions not applicable here, an action for infringement of a

copyright may not be brought until the copyright is registered. 17 U.S.C. § 411(a); Reed

Elsevier, Inc. v. Muchnick, 559 U.S. 154, 157 (2010) (“Section 411(a)’s registration

requirement is a precondition to filing a claim.”). Acknowledging this requirement,

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The District Court had jurisdiction under 28 U.S.C. § 1331 and we have jurisdiction
under 28 U.S.C. § 1291. We exercise plenary review over a district court’s dismissal
under Rule 12(b)(6). Evancho v. Fisher, 423 F.3d 347, 350 (3d Cir. 2005). We review a
district court’s refusal to exercise supplemental jurisdiction for abuse of discretion.
Elkadrawy v. Vanguard Grp., Inc., 584 F.3d 169, 172 (3d Cir. 2009).
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Markantone argues that “substantial justice” requires that we excuse registration in light

of the purported Catch-22 he finds himself in: he cannot file a lawsuit for copyright

infringement without registering the medical data, but he is unable to register the medical

data because Podiatric Billing refuses to return it to him. Markantone cites no authority

for what amounts to an equitable exception to the mandatory registration requirement.

Nor will we consider such an argument. Markantone could have, as a precautionary

matter, tried to register the medical data before entering into the licensing agreement. He

also could pay the fee demanded by Podiatric Billing for the return of the medical data,

register the copyright, and file suit afterwards if he believes he still has a cause of action.

Additionally, Markantone could sue Podiatric Billing in Pennsylvania court. As we see it,

Markantone’s reliance on his self-described conundrum is a misguided effort to pursue a

state-law breach of contract claim under federal copyright law.

The complaint fails for the additional reason that, assuming he had a valid

copyright, Markantone does not allege that Podiatric Billing violated any of his exclusive

rights in the medical data. Copyright owners have the exclusive right to, among other

things, reproduce, distribute, and publicly perform their works. See 17 U.S.C. § 106; Reed

Elsevier, 559 U.S. at 157; Brownstein v. Lindsay, 742 F.3d 55, 68 (3d Cir. 2014) (“A

copyright is better described as a bundle of rights.”). The closest Markantone comes to

alleging a violation of his exclusive rights is his contention that Podiatric Billing is using

the medical data against his “directive.” But this vague allegation says nothing about how

Podiatric Billing is using the medical data in violation of copyright law. Markantone even

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concedes in his brief that he does “not yet know if [Podiatric Billing] is copying the

medical data, distributing it, performing it, displaying it, etc.” (Appellants’ Br. 17.)

Without any basis for believing that Podiatric Billing is violating one or more of his

exclusive rights, Markantone improperly requests permission to go on a fishing

expedition.

Once the federal copyright claim was dismissed, the District Court declined to

exercise supplemental jurisdiction over the remaining state-law claims. See 28 U.S.C.

§ 1367(c); Elkadrawy, 584 F.3d at 174. Markantone challenges only one aspect of this

issue on appeal. He maintains that one of the dismissed claims is actually based on federal

rather than state law because it seeks a declaration that he may recover the medical data

without violating any of Podiatric Billing’s copyrights. But Markantone cannot create

federal jurisdiction by asserting claims or defenses Podiatric Billing might raise. See

Trent Realty Assocs. v. First Fed. Sav. & Loan Ass’n of Phila., 657 F.2d 29, 32-33 (3d

Cir. 1981). And even if we assume this is a federal claim, it still must be dismissed

because Markantone does not allege any facts showing that Podiatric Billing has

threatened him with a copyright infringement suit.

For all these reasons, we affirm the District Court’s order.

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