Ambrosetti v. Or. Catholic Press

458 F.Supp.3d 1013

Vincent A. AMBROSETTI, individually and as trustee of King's Ministrels Charitable Trust also known as International Liturgy Publications, Plaintiff,

v.OREGON CATHOLIC PRESS, Bernadette Farrell, Defendant.

Case No. 3:19-cv-00682-JD-MGG

United States District Court, N.D. Indiana, South Bend Division.

Signed May 7, 2020

Donald J. Schmid, Law Offices of Donald J. Schmid LLC, South Bend, IN, for Plaintiff.

Kathy L. Osborn, Matthew R. Kinsman, Ryan M. Hurley, Faegre Drinker Biddle & Reath LLP, Indianapolis, IN, Leonard D. DuBoff, PHV, Pro Hac Vice, The DuBoff Law Group, Portland, OR, for Defendant Oregon Catholic Press.

Leonard D. DuBoff, PHV, Pro Hac Vice, The DuBoff Law Group, Portland, OR, Matthew R. Kinsman, Faegre Drinker Biddle & Reath LLP, Indianapolis, IN, for Defendant Bernadette Farrell.

OPINION & ORDER

JON E. DEGUILIO, Judge Plaintiff Vincent Ambrosetti, individually and also as a trustee of The King's Ministrels Charitable Trust also known as International Liturgy Publications ("ILP"), filed a complaint against Defendants Oregon Catholic Press and Bernadette Farrell (the "Defendants") for copyright infringement in violation of the Copyright Act, 17 U.S.C. §§ 106 and 501. [DE 1]. This matter is before the Court on Defendant Oregon Catholic Press’ ("OCP") motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6). [DE 7]. For the reasons stated herein, the Court will grant the motion and dismiss the complaint without prejudice.

I. FACTUAL BACKGROUND

Mr. Ambrosetti is a musical artist and songwriter that authored the musical composition entitled "Emmanuel." OCP is a corporation that acquires and controls licenses to musical compositions and sells and distributes music publications. "Emmanuel" was first published in 1980 in a book entitled "Singing Holy." "Emmanuel" has been a top selling musical composition of Mr. Ambrosetti and within the ILP musical catalogue. In 1985, "Emmanuel" was also published in a collection of works entitled "I Will Sing." A copyright registration for "I will Sing," including "Emmanuel," was obtained on April 1, 1991, with a registration number of PA0000525379. [DE 8-1]. ILP and Pauline Krystal Music are listed as copyright claimants on the registration and Mr. Ambrosetti is listed as the author.

Defendant Bernadette Farrell composed a musical work titled "Christ Be Our Light," which was first published in 1993. OCP obtained the right from Ms. Farrell to sell, market, distribute, and license "Christ Be Our Light." Mr. Ambrosetti alleges that the Defendants’ composition "Christ Be Our Light" infringes "Emmanuel" due to the "striking similarity" between the two musical pieces.

On August 12, 2019, Mr. Ambrosetti filed an application for copyright registration with the U.S. Copyright Office for the individual piece "Emmanuel." At the time of filing the complaint, the application was still in process. On March 4, 2020, a Certificate of Registration was issued for "Emmanuel" listing Mr. Ambrosetti as both the copyright claimant and author, with a registration number of PA 2-231-246. Mr. Ambrosetti filed the registration with this Court on March 22, 2020 requesting it take judicial notice of the registration. [DE 17]. On September 3, 2019, a week after the instant case was filed, OCP filed a complaint in the District of Oregon ("Oregon Suit") seeking a declaratory judgment stating the Oregon Suit was first to file because the instant suit was improperly filed and "Christ Be Our Light" does not infringe "Emmanuel." Case No. 3:19-cv-01397-AC.

II. STANDARD OF REVIEW

In reviewing a motion to dismiss for failure to state a claim upon which relief can be granted under Federal Rule of Civil Procedure 12(b)(6), the Court construes the complaint in the light most favorable to the plaintiff, accepts the factual allegations as true, and draws all reasonable inferences in the plaintiff's favor. Reynolds v. CB Sports Bar, Inc. , 623 F.3d 1143, 1146 (7th Cir. 2010). A complaint must contain only a "short and plain statement of the claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a)(2). That statement must contain sufficient factual matter, accepted as true, to state a claim for relief that is plausible on its face, Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009), and raise a right to relief above the speculative level. Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). However, a plaintiff's claim need only be plausible, not probable. Indep. Trust Corp. v. Stewart Info. Servs. Corp. , 665 F.3d 930, 935 (7th Cir. 2012). Evaluating whether a plaintiff's claim is sufficiently plausible to survive a motion to dismiss is " ‘a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.’ " McCauley v. City of Chicago , 671 F.3d 611, 616 (7th Cir. 2011) (quoting Iqbal , 556 U.S. at 678, 129 S.Ct. 1937 ).

III. DISCUSSION

To state a claim for direct copyright infringement, Plaintiff must plead sufficient facts to plausibly suggest "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Peters v. West , 692 F.3d 629, 632 (7th Cir. 2012) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co. , 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358, (1991) ). Here, OCP argues dismissal is warranted because Mr. Ambrosetti has failed to allege that the copyright at issue has been successfully registered in accordance with 17 U.S.C. § 411 of the Copyright Act.

Section 411(a) of the Copyright Act provides that "no civil action for infringement of the copyright in any United States work shall be instituted until ... registration of the copyright claim has been made in accordance with" Title 17 of the United States Code. 17 U.S.C. § 411. Compliance with the registration requirements of 17 U.S.C. § 411(a) is not a condition of copyright protection but is a prerequisite to suing for infringement. Brooks-Ngwenya v. Indianapolis Pub. Sch. , 564 F.3d 804, 806 (7th Cir. 2009). This prerequisite does not restrict a federal court's subject-matter jurisdiction with respect to infringement suits involving unregistered works. Reed Elsevier, Inc. v. Muchnick , 559 U.S. 154, 166, 130 S.Ct. 1237, 176 L.Ed.2d 18 (2010). The Supreme Court has decided that " ‘registration ... has been made’ within the meaning of 17 U.S.C. § 411(a) not when an application for registration is filed, but when the Register has registered a copyright after examining a properly filed application." Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC , ––– U.S. ––––, 139 S. Ct. 881, 892, 203 L.Ed.2d 147 (2019). Although an owner's rights exist apart from registration, a copyright "[r]egistration is akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights." Id. at 887.

The Court first addresses OCP's second argument that Mr. Ambrosetti's filing of a copyright registration application for "Emmanuel" does not satisfy the infringement action prerequisite required by Section 411(a). [DE 8 at 6]. It is undisputed, even alleged by Mr. Ambrosetti in his complaint, that the registration application for the individual song "Emmanuel" was submitted two weeks prior to the filing of this action and a decision from the U.S. Copyright Office had not yet been administered. [DE 1 ¶ 10]. On March 4, 2020, the Copyright Office issued a registration for "Emmanuel," nearly 7 months after this action was filed. [DE 17-1].¹ Therefore, the Court finds that, consistent with Section 411(a) and the Supreme Court's holding in Fourth Estate , the registration application filing for the individual song "Emmanuel" does not satisfy the requirements necessary to file an infringement action.

The Court's analysis does not stop there, however. In the complaint, it is alleged that the infringed work "Emmanuel" was registered with the U.S. Copyright Office in April 1991 as part of the "I Will Sing" songbook collection registration and Mr. Ambrosetti argues the motion to dismiss should be denied because he properly alleged that "Emmanuel" was registered prior to filing the complaint. [DE 1 ¶ 9; DE 11 at 5]. OCP argues that the registration of the collective work does not extend to the individual, component part. The registration for "I Will Sing" lists Mr. Ambrosetti as the author and Pauline Krystal Music and ILP as the copyright claimants. [DE 8-1]. Mr. Ambrosetti argues that "Emmanuel's" registration is a factual allegation that must be accepted as true when considering the motion to dismiss. [DE 11 at 6]. However, whether the registration extends from the compilation "I Will Sing" to the individual work "Emmanuel" is a legal issue with factual underpinnings. For the following reasons, the Court finds "Emmanuel" does not gain the benefit of the registration of "I Will Sing."

The relevant Copyright Office regulations, guidance, and caselaw establish that the collective work "I Will Sing" registration does not provide the individual work "Emmanuel" the registration required by Section 411(a). The Copyright Act defines a "collective work" as "a work, such as a periodical issues, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole." 17 U.S.C. § 101. It also defines a "compilation" as "a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term ‘compilation’ includes collective works." Id. The Copyright Act establishes a default presumption that the copyright owner in a collective work has acquired only the privilege of reproducing and distributing the collective work, not the individual, separate contributions. 17 U.S.C. § 201(c) ("Copyright in each...