United States Court of Appeals
For the First Circuit
Nos. 06-2058, 06-2059
FERNANDO TORRES-NEGRÓN,
Plaintiff, Appellant/Cross-Appellee,
v.
J & N RECORDS, LLC,
Defendant, Appellee/Cross-Appellant,
ANTONIO RIVERA, et al.,
Defendants.
APPEALS FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO
[Hon. Héctor M. Laffitte, U.S. District Judge]
Before
Torruella and Lipez, Circuit Judges,
and Stafford,* Senior District Judge.
Carlos G. Dalmau-Ramírez, with whom Carlos Dalmau Law Offices,
Tamara Sosa Pascual, and Pascual Moran & Associates were on brief,
for appellant/cross-appellee.
James B. Sheinbaum, with whom Borstein & Sheinbaum was on
brief, for appellee/cross-appellant.
October 2, 2007
*
Of the Northern District of Florida, sitting by designation.
LIPEZ, Circuit Judge. At the request of a friend who was
looking for new material for his band to play, Fernando Torres-
Negrón wrote the music and lyrics to a song, Noche de Fiesta, in
1993. Torres gave his friend the piece of paper on which he had
written the lyrics, along with a cassette tape containing a
recording of Torres singing the song. The song eventually ended up
on three CDs, distributed both in Puerto Rico and the continental
United States. When Torres first learned of the distribution and
sales of his song in 2001, he submitted an application for
copyright registration with the Copyright Office, and filed this
lawsuit for infringement. Although the case proceeded to trial and
resulted in a jury verdict for Torres, the district court granted
the defendants' motion for judgment as a matter of law.
There is no dispute about the district court's finding
that Torres submitted a reconstruction of his original songs,
created from his memory and without direct reference to his
original works, to the Copyright Office. Because the Copyright Act
requires that a "copy" be submitted along with an application for
copyright registration, and not a reconstruction, Torres failed to
submit a complete application for registration of his copyright.
A complete application is a jurisdictional prerequisite to filing
suit in federal court for copyright infringement.1 Therefore, we
1
The Copyright Act was amended in 2005, after this action was
filed, to add "preregistration" as another method for obtaining
eligibility to file an infringement action. See 17 U.S.C. §
-2-
agree with the district court that it lacked jurisdiction over
Torres' lawsuit. We also conclude that the district court did not
err in denying defendants' motion for attorney's fees.
I.
A. Factual Background
In 1993, Torres was a songwriter living in a rural town
in Puerto Rico when his friend, Rubén Cañuelas, asked him to write
some songs for Cañuelas' band, Tempo Merenguero. The band was
primarily a cover band that played merengue music. To give Torres
a sense of the band's musical style, Cañuelas invited Torres over
to his house and played a cassette tape for him that included songs
that the band frequently played. After listening to the tape,
Torres wrote the song Noche de Fiesta, using a merengue bomba
rhythm, which was similar to the rhythm of some of the songs on the
tape. Torres then gave the lyrics, written on a piece of paper, to
Cañuelas, along with another cassette, on which he had recorded
himself singing the song. Torres understood that the song would be
played in public by Tempo Merenguero. Torres did not, at that
time, make a copy of the lyrics or the cassette for himself and
never saw the originals again.
Cañuelas subsequently joined a different band, Gozadera,
and recorded Noche de Fiesta with that band. The resulting CD,
411(a); La Resolana Architects, PA v. Clay Realtors Angel Fire, 416
F.3d 1195, 1200, 1206-07 (10th Cir. 2005). As the preregistration
option is not at issue here, we do not further discuss it.
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titled Bailando y Gozando con Gozadera, was produced by Antonio
Rivera and released in 1993. Torres had been informed that his
song would be recorded by Gozadera and that their album would be
commercially released. Torres purchased a copy of the record and
registered his song with the American Society of Composers, Authors
and Publishers ("ASCAP"). He also spoke with Rivera about the
recording and was paid nine hundred dollars in royalties, as
compensation for the use of two of his songs on that record.2
Around the same time, Rivera sold the master recording of
Noche de Fiesta to J & N Records Distributor, Inc. ("J & N"). Over
the course of the next six years, the song (as recorded by
Gozadera) was released on three additional CDs: a second version of
Bailando y Gozando con Gozadera was distributed by J & N in 1994;
a compilation record called Merenhits '94 was released by J & N and
EMI later that year, containing Noche de Fiesta; Merenhits '94 was
re-released in 1999. Neither J & N nor the other distributors of
these records contacted Torres to ask his permission for use of his
song on these subsequent records, and he was not paid royalties or
other compensation for that use. Torres' name did appear as the
author or composer of the song on the first three records; his name
was deleted from the credits on the 1999 version of Merenhits '94.
2
The record contained another song written by Torres, Bebo
por Ti, which was also litigated at trial. However, Bebo por Ti is
not at issue in this appeal.
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Torres learned of the existence of these three records in
2001. At that point, he began taking steps to protect his rights
to Noche de Fiesta. He submitted an application for registration
of copyright to the Copyright Office, and received a certificate of
copyright on January 31, 2002. Because the application required a
"copy" of the copyrighted work, Torres submitted a typed version of
the lyrics and a cassette tape, on which he had recorded himself
singing the song and clapping the rhythm. He created the tape in
2001, at the time he prepared his application. It is unclear
exactly when Torres first wrote a second set of the lyrics to Noche
de Fiesta, after giving Cañuelas his original version in 1993, but
it was certainly after he learned of the 1993 Gozadera record.
B. Procedural Background
Torres filed a copyright infringement action against
numerous defendants, including J & N and other producers and
distributors of each of the three records, in the District of
Puerto Rico. At trial, the defendants moved for judgment as a
matter of law pursuant to Federal Rule of Civil Procedure 50(a)(1)
after the close of the plaintiff's case. The district court
dismissed the claims against some defendants, but denied the motion
as to J & N Records. At the close of all evidence, the remaining
defendants renewed their motion, but the court reserved judgment
and permitted the case to go to the jury. The jury returned a
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verdict in favor of Torres, finding that J & N had infringed his
copyright on Noche de Fiesta.
Defendant J & N then filed a renewed motion for judgment
as a matter of law, Fed. R. Civ. P. 50(b), on a number of grounds.
J & N argued that the district court lacked subject matter
jurisdiction for two independent reasons: (1) the copy of Noche de
Fiesta submitted to the Copyright Office was an invalid
reconstruction (rather than a "bona fide" copy); and (2) Torres'
application indicated that his song was not a derivative work,
whereas J & N argued that it was an unauthorized derivative of an
earlier merengue song. J & N also argued that the case was barred
by the statute of limitations, that there was insufficient evidence
to support the jury's verdict, and that the damages were
speculative and unjustified.
The district court held that "a copy that is simply
created or reconstructed from memory without directly referring to
the original, known as [a] 'reconstruction,' does not comply with
the deposit requirements of the Copyright Act," and found that
"Torres' deposits constitute impermissible reconstructions."
Torres Negron v. Rivera, 433 F. Supp. 2d 204, 213-14 (D.P.R. 2006).
Therefore, the court concluded that the copyright registration was
invalid, and because "copyright registration is a jurisdictional
prerequisite for maintaining a copyright infringement suit," it
granted J & N's motion for judgment as a matter of law.
-6-
The court alternatively found that the jury verdict could
not stand because "(1) Noche de Fiesta is an unauthorized
derivative work not entitled to copyright protection; (2) Torres
granted [the producer] an implied license to exploit the song[]
Noche de Fiesta . . .; and (3) the amount of damages awarded by the
jury is untenable due to insufficiency of the evidence."
Torres appealed, seeking reinstatement of the jury
verdict. J & N cross-appealed, challenging the district court's
denial of its motion for attorney's fees and costs. We affirm the
district court's judgment dismissing the infringement claims, on
the basis of Torres' failure to satisfy the deposit copy
requirement for copyright registration. We also affirm the
district court's denial of attorney's fees.
II.
We review the district court's dismissal of a case for
lack of subject matter jurisdiction de novo. Gill v. United
States, 471 F.3d 204, 205 (1st Cir. 2006). We review the court's
findings of fact for clear error. Id.
"[N]o 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." 17 U.S.C. § 411(a); see also Data Gen. Corp. v.
Grumman Sys. Support Corp., 36 F.3d 1147, 1160 (1st Cir. 1994)
("[R]egistration of the copyright is a prerequisite to suit under
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the Copyright Act." (citation omitted)). This requirement is often
described as a jurisdictional one. See, e.g., Positive Black Talk
Inc. v. Cash Money Records, Inc., 394 F.3d 357, 365 (5th Cir. 2004)
("17 U.S.C. § 411(a) sets forth [a] jurisdictional prerequisite
. . . ."); Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d
112, 115 (2d Cir. 2003) ("Th[e] registration requirement is
jurisdictional."); Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283
(4th Cir. 2003) ("Copyright registration is a jurisdictional
prerequisite to bringing an action for infringement under the
Copyright Act."); M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903
F.2d 1486, 1488 (11th Cir. 1990) ("The registration requirement is
a jurisdictional prerequisite to an infringement suit."). In order
to complete the registration process, and receive a certificate of
copyright registration, a creator must submit to the Copyright
Office "a complete copy or phonorecord" of the work for which he
seeks registration, often referred to as the "deposit copy." 17
U.S.C. § 408 (b).3 The Copyright Act defines "copies" as "material
objects, other than phonorecords, in which a work is fixed by any
method now known or later developed, and from which the work can be
perceived, reproduced, or otherwise communicated, either directly
or with the aid of a machine or device." Id. § 101.
3
If the work for which the creator seeks protection is
unpublished, he must submit one complete copy to the Copyright
Office. If the work is published, he must submit two complete
copies. 17 U.S.C. § 408(b)(1), (2).
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It is undisputed that the written lyrics and tape that
Torres submitted as his deposit copy were not the originals — that
is, they were not the exact tape or piece of paper on which he
first recorded the music or wrote the lyrics of the song. Indeed,
the parties agree that Torres gave both the original lyrics and the
first recording of the song to Cañuelas. By the time he submitted
his copyright registration application, he no longer had access to
either the original writing of the lyrics or the tape recording of
the song. Thus, in order to comply with the requirement that a
"copy" of the song be submitted with the application, Torres
reconstructed his original work from memory by singing the song,
while clapping the rhythm, into a tape recorder. It was the
reconstruction, made in 2001, that he submitted to the Copyright
Office.
A. The Deposit Copy Requirement
The question before us is whether that reconstruction is
a "copy" within the meaning of 17 U.S.C. § 408(b). The statutory
definition of "copy" provides little guidance. It neither
distinguishes between copies and reconstructions, nor specifies
whether a copy must be made from an original. However, dictionary
definitions highlight the difference between a "copy" and a
"reconstruction." Black's Law Dictionary defines a "copy" as an
"imitation or reproduction of an original." Black's Law Dictionary
360 (8th ed. 2004). To "reconstruct" something is "to construct
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again; rebuild; make over," or to "re-create in the mind from given
or available information." Random House Webster's Unabridged
Dictionary 1612 (2d ed. 1997). Given these definitions, a
reconstruction is not a copy; a reconstruction is created without
an original, whereas a copy is made from an original. Congress
specified that a registration had to be accompanied by a "copy."
See Conn. Nat'l Bank v. Germain, 503 U.S. 249, 253-54 (1992) ("We
have stated time and again that courts must presume that a
legislature says in a statute what it means and means in a statute
what it says there."). Therefore, we agree with the district court
that a reconstruction, created without access to or reliance on the
original work, cannot constitute a "copy," as that term is used in
17 U.S.C. § 408.
The only other circuit courts that have addressed this
question have arrived at the same conclusion. In Kodadek v. MTV
Networks, Inc., 152 F.3d 1209, 1212 (9th Cir. 1998), the Ninth
Circuit held that a "bona fide copy" is one that is "virtually
identical to the original and . . . produced by directly referring
to the original." Thus, reconstructions created from memory,
without access to the original work, could not serve as valid
copies for registration purposes. Id.4
4
The Kodadek decision relied heavily on a prior Ninth Circuit
decision. In Seiler v. Lucasfile, Ltd., 808 F.2d 1316, 1322 (9th
Cir. 1986), the court held that a copyright registration was
invalid unless accompanied by a "bona fide copy" of the work, and
that a reconstruction from memory could not qualify as a bona fide
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The Sixth Circuit adopted the same rule in Coles v.
Wonder, 283 F.3d 798, 802 (6th Cir. 2002). There, the plaintiff
claimed that he had written the song "For Your Love" in 1982 and
sued Stevie Wonder, alleging copyright infringement, after Wonder
recorded and distributed a song of the same name in 1995. The
plaintiff registered his song in 1990 and submitted a recording of
the song, as his deposit copy, that had been recorded earlier that
same year. He claimed that he no longer possessed an original
(i.e., 1982) recording of the song. Wonder argued that the
plaintiff's registration was invalid because the deposit copy was
not a bona fide copy, but rather a recreation from memory. The
Sixth Circuit agreed, following the reasoning of Kodadek, and
concluded that the deposit copy would be valid only if it had been
created from an original recording of the song. Id. at 802 ("[H]ad
[the plaintiff] been able to establish that he made the 1990
recording after listening to an audio copy of his 1982 rendition of
For Your Love, he could have met the deposit requirement and his
copyright would be valid from the date listed on his application.
Likewise, had he made his 1990 recording after reviewing a tear
sheet or other written summary that dated from 1982, he could have
satisfied the deposit requirement."). The court also explained
that a strict application of the word "copy" would serve to protect
the rights of artists by encouraging prompt registration and
copy.
-11-
preventing fraudulent claims filed after the commercial success of
a work. Id.
Torres argues that Kodadek and Coles are distinguishable
because each of those cases involved a dispute about who first
authored the work and, therefore, who was the valid owner of the
copyright. He further argues that the definition of "copy" adopted
in those cases should, at most, be limited to cases involving
disputes about authorship. Torres has cited no support for this
argument. That is not surprising. It makes no sense to interpret
the statutory requirement of a deposit copy differently depending
on what factual issues are disputed in a given case. There is no
valid reason, in our view, to assume that the legislature intended
the word "copy" to be a chameleon, taking on different meanings
depending on the context of the litigation.
B. The Immaterial Mistakes Rule
Torres resists the logic of Kodadek and Coles on another
ground, arguing that the statutory requirement of a deposit "copy"
should be construed with considerable flexibility, as other
components of the registration process are. See Data Gen. Corp.,
36 F.3d at 1161 ("It is well established that immaterial,
inadvertent errors in an application for copyright registration do
not jeopardize the validity of the registration."); see also Billy-
Bob Teeth, Inc. v. Novelty, Inc., 329 F.3d 586, 591 (7th Cir.
2003). We have defined "immaterial" errors as those that are "not
-12-
likely to have led the Copyright Office to refuse the application."
Data Gen. Corp., 36 F.3d at 1161. Mistakes such as an incorrect
date of creation or failure to list all co-authors easily qualify
as immaterial because the Copyright Office's decision to issue a
certificate would not be affected by them. See id. at 1163
(stating that inadvertent failures to list preexisting works or
coauthors are encompassed by the rule excusing immaterial
mistakes). However, submission of something other than a "copy" to
satisfy the deposit copy requirement cannot be classified as an
"immaterial" mistake because the failure to submit a valid copy
would affect the Copyright Office's issuance of a certificate. Cf.
Syntek Semiconductor Co. v. Microchip Tech. Inc., 307 F.3d 775, 781
(9th Cir. 2002) ("The applicable regulations provide that the
Copyright Office will 'cancel a completed registration' if the
'deposit material does not meet the requirements of the law and
Copyright Office regulations, and the Office is unable to get the
defect corrected.'" (quoting 37 C.F.R. § 201.7(b))); 2-7 M. Nimmer
& D. Nimmer, Nimmer on Copyright § 7.20[B] ("If the claimant
wilfully misstates or fails to state a fact that, if known, might
have caused the Copyright Office to reject the application, then
the registration may be ruled invalid." (footnote omitted)); id. §
7.17[2][b] ("It has been held on occasion that the deposit failed
to satisfy the registration requirements. The result in those
-13-
circumstances is to disallow the registering party from filing suit
for infringement.").
Torres cites Three Boys Music Corp. v. Bolton, 212 F.3d
477 (9th Cir. 2000), in support of his argument that "mistakes" in
the deposit copy (as opposed to the registration application)
should be treated as inconsequential. Claiming that the
plaintiff's copyright registration was invalid for incompleteness,
the defendant in that case said that the deposit copy included
sheet music that differed from the recorded version and different
"musical elements" than the recorded version (that is, the version
that the plaintiff claimed had been infringed). Id. at 486. The
court rejected this claim, finding that the "definition of a
'complete copy' is broad and deferential." Id.
Three Boys does not bolster Torres' claim. First, it was
decided by the Ninth Circuit, the same court that decided Kodadek.
Given that Kodadek arose from facts largely similar to the facts
here, and addressed the same issue, it is more relevant to our
decision than Three Boys. The Three Boys court did not cite to
Kodadek, suggesting that it viewed the incompleteness at issue in
Three Boys as falling under the rule excusing immaterial mistakes
rather than the independent rule that failure to comply with
statutorily mandated application procedures will invalidate the
registration.
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Importantly, there was no dispute in Three Boys that the
deposit copy was a "bona fide" or valid copy of the song. Instead,
the dispute was over minor discrepancies between the deposit copy
and the particular version of the song on which the infringement
allegations were based. Here, the deposit copy was not produced
directly from the original work, as Torres testified that he no
long had possession of, or access to, the original work when he
created the deposit copy. The Ninth Circuit's willingness to
tolerate minor discrepancies in the deposit copy, like minor errors
in the registration application, does not challenge the distinction
we have drawn between a copy and a reconstruction. A failure to
include a valid copy with a registration application, as required
by the statute, is necessarily a material omission and cannot be
evaluated under the "inadvertent and immaterial mistakes" rule
articulated in Data General Corp., 36 F.3d at 1161.
C. Deposit Copy As a Jurisdictional Requirement
Torres argues, alternatively, that even if his
"reconstruction" does not satisfy the deposit copy requirement,
that defect is not jurisdictional.5 He cites to Shady Records,
Inc. v. Source Enters., Inc., No. 03 Civ. 9944 (GEL), 2005 WL
5
Subject matter jurisdiction means that the court has the
power to hear and adjudicate the case. See United States v.
Cotton, 535 U.S. 625, 630 (2002) ("[S]ubject matter jurisdiction
. . . involves a court's power to hear a case . . . ."); Prou v.
United States, 199 F.3d 37, 45 (1st Cir. 1999) ("The requirement of
subject matter jurisdiction relates directly to the constitutional
power of a federal court to entertain a cause of action.").
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14920, at *8 (S.D.N.Y. Jan. 3, 2005), for the proposition that a
defective application for copyright registration affects only the
presumption of validity6 and not the court's subject matter
jurisdiction over the case. In that case, the defendants
challenged the validity of the plaintiff's registration because the
deposit copies contained only portions of the original sound
recording and the application contained an inaccurate list of co-
authors. (One song, as originally recorded, was four minutes and
forty-six seconds long, while only four minutes and thirty-five
seconds were included in the deposit copy. The second song was
over thirteen minutes long, but the deposit copy consisted of only
thirty-six seconds.) The district court found that the copyright
registration, and resulting presumption of validity, attached only
to the portions that were submitted along with the registration,
but that the decision to register less than the complete work did
not render the registration (of those portions) invalid. Id. at
*13. The defendants also argued that the defects in the
application (such as failure to name all of the co-authors of the
song) eliminated the court's subject matter jurisdiction.
6
A plaintiff alleging copyright infringement who obtained a
certificate of copyright registration within five years of the
first publication of the work has the benefit of a presumption
(although a rebuttable one) of the validity of the copyright. 17
U.S.C. § 410(c). If a plaintiff received a certificate of
registration more than five years after the work was initially
published, the trial court has the discretion to determine the
evidentiary weight of the certificate. Id.
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The court rejected that claim, explaining that
"certificates of copyright registration create a rebuttable
presumption of validity, and any such rebuttal is routinely
adjudicated by the factfinder as potentially negating the first
element of a copyright infringement suit, not as a jurisdictional
issue to be decided by the Court." Id. at *8 n.7 (internal
citations omitted). The court reasoned that because even a
rejected application for registration may be sufficient to create
federal jurisdiction, a defect in an application could not strip
the court's jurisdiction. Id. at *8.
While it is true that an author whose application for
copyright registration has been rejected may still enforce his
rights in federal court, he may do so only if he has actually
submitted an application and a deposit copy. See 17 U.S.C. §
411(a) ("In any case, however, where the deposit, application, and
fee required for registration have been delivered to the Copyright
Office in proper form and registration has been refused, the
applicant is entitled to institute an action for infringement
. . . ."). Thus, federal jurisdiction in the face of a rejected
application is contingent upon a complete application.7 The
7
The Shady Records court also acknowledged and endorsed the
rule articulated in Kodadek and Coles, stating that the deposit
copies submitted in that case were valid because they had been
created directly from either an original or a bona fide copy but
recognizing that "[w]hat is not permissible is reconstruction of
works without any reference at all to the original version, i.e.,
reconstruction from memory." 2005 WL 14920, at *14 (citing Coles,
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reasoning of the Shady Records court is inapplicable to a situation
where the particular defect in a registration application is the
failure to submit a complete application. Furthermore, there is no
dispute that an immaterial defect in an application (such as the
failure to list all co-authors) does not render the registration
invalid, and thus does not affect jurisdiction. All of the defects
at issue in Shady Records fell within this rule, as they were not
the sort of mistakes or omissions that would be "material" to the
Copyright Office's issuance of the registration certificate.
Therefore, the Shady Records decision is unhelpful to Torres.
The predominant rule is that an invalid registration
(involving material errors, fraud, or an incomplete application)
nullifies the federal court's subject matter jurisdiction. Both
the Coles and Kodadek courts dismissed the plaintiffs' claims after
determining that their copyright registrations were invalid,
without any discussion of their merits, because they deemed the
copyright claims "foreclosed." See Coles, 283 F.3d at 802;
Kodadek, 152 F.3d at 1212. In light of the statutory requirement
that "no action for infringement . . . shall be instituted until .
. . registration of the copyright claim has been made in accordance
with this title," 17 U.S.C. § 411(a), the decision that those
copyright claims were "foreclosed" amounts to a finding of no
283 F.3d at 802; Kodadek, 152 F.3d at 1212; Seiler, 808 F.2d at
132-22).
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subject matter jurisdiction. If, as the Shady Records court
suggested, an invalid registration simply meant that the merits of
the infringement (or ownership) claim would be evaluated without
the presumption of validity, each of those courts would have been
required to address the merits. That they did not demonstrates
that they treated the registration validity question as
jurisdictional.
Additionally, in cases where a plaintiff's copyright
registration has been invalidated because of a finding of fraud or
intentional misrepresentation on the registration application,
numerous district courts and the Second Circuit have concluded that
the plaintiff's copyright is simply "unenforceable" and have
dismissed the claims without discussion of the merits — again
indicating that a valid registration is necessary for federal
jurisdiction. See Whimsicality, Inc. v. Rubie's Costume Co., 891
F.2d 452, 456 (2d Cir. 1989) ("It is the law of this Circuit that
the 'knowing failure to advise the Copyright Office of facts which
might have occasioned a rejection of the application constitute[s]
reason for holding the registration invalid and thus incapable of
supporting an infringement action.' Faced as we are with that
exact situation in the instant case, we hold that [the plaintiff],
because of its misrepresentations, does not have valid copyrights
capable of enforcement." (internal citations omitted) (quoting
Eckes v. Card Prices Update, 736 F.2d 859, 861-62 (2d Cir. 1984)));
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GB Mktg. USA Inc. v. Gerolsteiner Brunnen GmbH & Co., 782 F. Supp.
763, 776 (W.D.N.Y. 1991); Russ Berrie & Co. v. Jerry Elsner Co.,
482 F. Supp. 980, 988 (D.C.N.Y. 1980); Vogue Ring Creations, Inc.
v. Hardman, 410 F. Supp. 609, 616 (D.R.I. 1976). The Third Circuit
has also endorsed this rule, albeit in dicta. See Masquerade
Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 667 (3d Cir.
1990) ("It has been consistently held that a plaintiff's knowing
failure to advise the Copyright Office of facts which might have
led to the rejection of a registration application constitutes
grounds for holding the registration invalid and incapable of
supporting an infringement action." (citing Whimsicality, 891 F.2d
at 456; Eckes, 736 F.2d at 861-62)). Although these cases involved
copyright registrations invalidated by fraudulent applications,
rather than invalid deposit copies, their rationale applies equally
here.
The Second Circuit decision, Whimsicality, 891 F.2d at
456, quoted and relied on the reasoning of Russ Berrie, 482 F.
Supp. at 988, in which the court explained that the registration
could not take legal effect (meaning it could not confer
jurisdiction on a federal court or give rise to the presumption of
a valid copyright) where the "Copyright Office had no opportunity
to pass on plaintiff's claim accurately presented." In other
words, where the registration was approved because the Copyright
Office believed that it had accurate information, but the
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information contained in the application was, in reality, untrue,
the plaintiff was put in a position legally equivalent to someone
who had never submitted a complete application for copyright
registration.
The Fifth Circuit adopted the same approach in a case
where the plaintiff submitted an incomplete deposit copy of the
software it sought to protect through a copyright infringement
action. Geoscan, Inc. v. Geotrace Techs., Inc., 226 F.3d 387, 393
(5th Cir. 2000). There, the court concluded that where a copyright
registration application did not include a complete and bona fide
copy of the original work, the plaintiff "had not fulfilled all the
statutory formalities necessary to register its copyright and have
'ownership' in its software for purposes of a copyright
infringement claim." Id. It therefore affirmed the district
court's entry of summary judgment for the defendant.
One purpose of the registration requirement is to allow
the Copyright Office to make an initial judgment about the validity
of copyrights, based on its experience and expertise, and to reduce
the burdens of litigation by giving that judgment some weight in
subsequent litigation. See Russ Berrie, 482 F. Supp. at 988
("Where . . . the question of originality is a close one, a
decision to grant or deny protection made in the first instance by
the agency charged with administering the copyright laws would have
been highly persuasive evidence of copyright validity. The
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presumption of validity attaching to copyright registration is of
course a function of judicial deference to the agency's expertise."
(citation omitted)); see also Data Gen. Corp., 36 F.3d at 1161-62
("A second apparent aim of Section 408(b) is to furnish the
Copyright Office with an opportunity to assess the copyrightability
of the applicant's work. . . . [I]t appears that Congress viewed
the deposit requirement as a means of collecting information that
the Copyright Office may use in resolving the question of
copyrightability for the purposes of Section 410."). That purpose
would be undermined if a fraudulent or invalid application could
provide a plaintiff entree to the federal courts and, once the
defect was discovered, the litigation was allowed to continue
without the benefit of the Copyright Office's expertise and
consideration.
In light of the plain statutory language and the purpose
of the registration requirement, we conclude that omission of a
proper deposit copy with a copyright application renders the
registration invalid and eliminates the federal courts' subject
matter jurisdiction over an infringement claim. As we have
previously recognized, most errors or mistakes in a copyright
registration application will be inadvertent or immaterial, and
thus will not invalidate the application (or any resulting
certificate). Data Gen. Corp., 36 F.3d at 1161. In the rare
instances where a plaintiff's registration was procured through
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fraud or in the absence of a bona fide copy, such as occurred here,
the registration becomes invalid and the federal courts lack
jurisdiction over the case.
D. Procedure for Evaluating the Deposit Copy Requirement
We recognize that there will be cases where determining
whether the deposit copy was a bona fide copy or an impermissible
reconstruction will depend on disputed facts. This is not the only
context in which factual disputes may be critical in evaluating
subject matter jurisdiction, and the procedures for dealing with
such disputes are well-established. There are two types of
challenges to a court's subject matter jurisdiction: facial
challenges and factual challenges. "Facial attacks on a complaint
'require the court merely to look and see if the plaintiff has
sufficiently alleged a basis of subject matter jurisdiction, and
the allegations in [plaintiff's] complaint are taken as true for
purposes of the motion.'" Scarfo v. Ginsberg, 175 F.3d 957, 960
(11th Cir. 1999) (quoting Lawrence v. Dunbar, 919 F.2d 1525, 1529
(11th Cir. 1990)). However, when a motion to dismiss for lack of
subject matter jurisdiction under Fed. R. Civ. P. 12(b)(1) involves
factual questions,8 the court engages in a two-part inquiry.
8
In some instances, it may be unclear whether the defendant's
motion to dismiss presents a facial or factual challenge to the
court's subject matter jurisdiction.
The general rule . . . is that a pleading's allegations
of jurisdiction are taken as true unless denied or
controverted by the movant. Thus, if the movant fails to
contradict the pleader's allegation of subject matter
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First, the court must determine whether the relevant
facts, which would determine the court's jurisdiction, also
implicate elements of the plaintiff's cause of action. See Garcia
v. Copenhave, Bell & Assocs., 104 F.3d 1256, 1261 (11th Cir. 1997)
("On a factual attack of subject matter jurisdiction, a court's
power to make findings of fact and to weigh the evidence depends on
whether the factual attack on jurisdiction also implicates the
merits of the plaintiff's cause of action."). "[W]here . . . 'the
jurisdictional issue and substantive claims are so intertwined the
resolution of the jurisdictional question is dependent on factual
issues going to the merits, the district court should employ the
standard applicable to a motion for summary judgment.'" Autery v.
United States, 424 F.3d 944, 956 (9th Cir. 2005) (quoting Rosales
v. United States, 824 F.2d 799, 803 (9th Cir. 1987)). Thus, where
the relevant facts are dispositive of both the 12(b)(1) motion and
portions of the merits, the trial court should grant the motion to
dismiss "'only if the material jurisdictional facts are not in
jurisdiction in his motion to dismiss [for lack of
subject matter jurisdiction], then he is presumed to be
challenging the pleading's sufficiency under Rule
8(a)(1), and the allegations of the pleading pertaining
to jurisdiction are taken as true. But if the movant,
either in his motion or in any supporting materials,
denies or controverts the pleader's allegations of
jurisdiction, then he is deemed to be challenging the
actual existence of subject matter jurisdiction, and the
allegations of the complaint are not controlling.
5 C. Wright & A. Miller, Federal Practice and Procedure, § 1363, at
653-54 (1969).
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dispute and the moving party is entitled to prevail as a matter of
law.'" Trentacosta v. Frontier Pac. Aircraft Indus., Inc., 813
F.2d 1553, 1558 (9th Cir. 1987) (quoting Augustine v. United
States, 704 F.2d 1074, 1077 (9th Cir. 1983)); see also Richmond,
Fredericksburg & Potomac R.R. Co. v. United States, 945 F.2d 765,
768 (4th Cir. 1991). If the plaintiff presents sufficient evidence
to create a genuine dispute of material (jurisdictional) facts,
then the case proceeds to trial, so that the factfinder can
determine the facts, and the jurisdictional dispute will be
reevaluated at that point.
Second, if the facts relevant to the jurisdictional
inquiry are not intertwined with the merits of the plaintiff's
claim, "the trial court may proceed as it never could under
12(b)(6) or [Federal Rule of Civil Procedure 56]. Because at issue
in a factual 12(b)(1) motion is the trial court's jurisdiction —
its very power to hear the case — there is substantial authority
that the trial court is free to weigh the evidence and satisfy
itself as to the existence of its power to hear the case." Lawrence
v. Dunbar, 919 F.2d 1525, 1529 (11th Cir. 1990); see also Scarfo
175 F.3d at 961 (holding that whether the defendants in an
employment discrimination case constituted an employer under Title
VII was not an element of the cause of action, and thus the
district court should weigh the evidence and find the facts
necessary to resolve the 12(b)(1) motion).
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In cases like this one, then, where the defendant makes
a 12(b)(1) motion to dismiss, the parties should submit evidence,
much as they would for a summary judgment motion, and the court
should determine whether the dispute over the origins and validity
of the deposit copy implicates the merits of the plaintiff's claim.
In most cases involving a dispute as to the bona fide nature of the
deposit copy, as is true here, the jurisdictional question should
not implicate the merits because the physical process by which that
copy was created is distinct and independent from the creative
content and originality of the work (the questions underlying
copyrightability). Nonetheless, the district court did not err by
allowing the case to proceed to trial before concluding that the
evidence overwhelmingly showed that Torres submitted a
reconstruction rather than a bona fide copy to the Copyright
Office.
E. Summary
In sum, we conclude that a reconstruction, created
without first-hand access to the original, cannot constitute a
"copy" sufficient to satisfy the deposit copy requirement in 17
U.S.C. § 408(b). Submission of a reconstruction with a copyright
registration application results in an incomplete application, thus
rendering the federal courts without jurisdiction over a copyright
infringement claim. Where the parties dispute whether the deposit
copy was bona fide, or was an impermissible reconstruction, the
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district court should first determine whether that question
implicates the merits of the case. If it does not, the court
should weigh the evidence that is submitted and make a factual
finding on the copy/reconstruction issue. If the jurisdictional
facts and merits are intertwined, the court should treat a 12(b)(1)
motion as a summary judgment motion and resolve it accordingly.
Although the defendants could have filed a 12(b)(1) motion and the
district court could have resolved the disputed facts and dismissed
the claims earlier, its ruling after trial was correct in light of
the evidence presented.
III.
J & N has cross-appealed, arguing that the district court
abused its discretion when it denied an award of attorney's fees to
J & N. See 17 U.S.C. § 505 (allowing a court to award "a
reasonable attorney's fee to the prevailing party" in a copyright
action). The district court ordered judgment for J & N "without
imposition of costs or attorneys' fees," but did not explain the
reasons for its denial of fees. We affirm the district court's
decision.
The Supreme Court has defined a "prevailing party" as one
who has "prevailed on the merits of at least some claims,"
Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep't of Health & Human
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Res., 532 U.S. 598, 603-05 (2001).9 J & N cannot qualify as a
prevailing party because it has not received a judgment on the
merits. See 4-14 M. Nimmer & D. Nimmer, Nimmer on Copyright §
14.10[B] ("[S]ince the Supreme Court's decision in [Buckhannon], it
has been held that a prevailing party can only be one who
'secure[d] a judgment on the merits or a court-ordered consent
decree.'" (quoting Chambers v. Time Warner, Inc., 279 F. Supp. 2d
362, 365 (S.D.N.Y. 2003))); see also Wages v. IRS, 915 F.2d 1230,
1234 (9th Cir. 1990) ("A jurisdictional dismissal is not a judgment
on the merits." (citation omitted)); GHK Exploration Co. v. Tenneco
Oil Co., 857 F.2d 1388, 1392 (10th Cir. 1988) ("[A] court-ordered
dismissal for lack of subject matter jurisdiction is also not a
decision on the merits . . . ."); cf. Davila v. Delta Air Lines,
Inc., 326 F.3d 1183, 1188 (1st Cir. 2003) (stating that a dismissal
for lack of subject matter jurisdiction "plainly is not an
adjudication on the merits that would give rise to a viable res
judicata defense"). Our decision, as described above, affirms the
9
Buckhannon involved claims under the Fair Housing Amendments
Act and the Americans with Disabilities Act, each of which has a
fee-shifting provision allowing the "prevailing party" to collect
attorney's fees. 532 U.S. at 601. Despite the significant
differences between the Copyright Act's fee-shifting provision, 17
U.S.C. § 505, and similar provisions in a variety of civil rights
statutes, see 42 U.S.C. § 3613(c)(2) (FHAA), id. § 12205 (ADA), id.
§2000e-5(k) (Civil Rights Act of 1964), id. § 1973l(e) (Voting
Rights Act), id. § 1988 (Civil Rights Attorney's Fees Awards Act of
1976), the Court's definition of "prevailing party," based
primarily on the Black's Law Dictionary definition of the term,
applies in both contexts. See Chambers v. Time Warner, Inc., 279
F. Supp. 2d 362, 365 (S.D.N.Y. 2003).
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district court's entry of judgment solely on the basis of Torres'
failure to comply with a statutory formality implicating the
subject matter jurisdiction of the court. We have made no ruling
on Torres' claims of infringement. Therefore, J & N has not
prevailed on the merits of the copyright infringement allegations
and is not entitled to a fee award under the statute.10
IV.
For the reasons described above, we affirm both the
judgment for J & N Records and the district court's denial of
defendants' motion for fees and costs.
So ordered.
10
In any event, J & N could not have prevailed in its
challenge to the district court's ruling on attorney's fees. Such
an award is discretionary, and although the court did not
articulate the basis for its denial of fees, we can easily infer
that fees were deemed inappropriate because of the difficult nature
of the issues being litigated. Indeed, the reconstruction/copy
issue was a question of first impression in this circuit.
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