Opinion
Civil Action No. 3:98CV-669(R)
May 20, 1999.
MEMORANDUM OPINION ORDER
This matter is before the Court on Defendants' motion to dismiss. For the following reasons, the motion is GRANTED to the extent that the claim for copyright infringement is DISMISSED with prejudice. The Court declines to assert supplemental jurisdiction over the remaining state claims which are therefore dismissed without prejudice.
FACTS AND CLAIMS
The Complaint alleges that some or all of the Defendants were responsible for copying and distributing classified advertisements from the March 1996 edition of The Letter, along with a cover letter accusing "homosexuals advertising for sex with children." The copy of the classified advertisements had the terms "boy toy," "boy nudist," and "baby dyke" circled. The cover letter further solicited votes and campaign contributions on behalf of Defendant Michael Dickerson, a candidate for the 12th Ward Alderman, City of Louisville.
Plaintiff filed this suit asserting claims for copyright infringement and defamation. Plaintiff has filed a motion for leave to file an amended complaint which asserts additional claims for false light and the tort of outrageous conduct. Defendants Frank Simon, Freedom's Heritage Forum and American Family Association of Kentucky assert counterclaims for the tort of abuse of process.
I. COPYRIGHT INFRINGEMENT
The two elements of a copyright infringement case under the 1976 Copyright Act, 17 U.S.C. § 101 et. seq., are "ownership of the copyright by the plaintiff and copying by the defendant." Hustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148, 1151 (9th Cir. 1986) (quoting 3 M. Nimmer, Nimmer on Copyright § 13.01 (1985)). For the reasons below, the Court finds both that Plaintiff does not own an enforceable copyright for the classified advertisements at issue in this case, and that Defendants use of the classified advertisements is protected by the "fair use" doctrine.
A. Enforceable Copyright
Defendant asserts that there was no enforceable copyright because there was no notice as required by the copyright statute. Plaintiff responds that every issue of The Letter included a conspicuous notice of copyright.
Under the 1976 Copyright Act, 17 U.S.C. § 101 et. seq., "publication of a work without proper copyright notice tentatively puts the work into the public domain." Harris Custom Builders, Inc. v. Hoffmeyer, 92 F.3d 517, 519 (7th Cir. 1996). However, "to alleviate the harshness of that principle, the law provides cure provisions." Id. "Publication of a work without notice will not extinguish a copyright in the work if registration is made within five years and a reasonable effort is made to add notice to all copies which are distributed to the public in the United States after the lack of notice is discovered." Id. (citing § 405(a)).
Defendants assert that the general copyright notice on the front page of The Letter is insufficient to provide notice for the classified advertisements because every individual advertisement must contain a separate copyright notice. The Copyright Act provides that while contributions to a collective work can be protected by a single copyright notice for the work as a whole, an exception is made for "advertisements inserted on behalf of persons other than the owner of the copyright in the collective work." 17 U.S.C. § 404(a).
In Canfield v. Ponchatoula Times, 759 F.2d 493 (5th Cir. 1985), the Fifth Circuit applied § 404(a) and held that where an advertisement was inserted on behalf of automobile dealership, and no specific copyright notice appeared directly on the advertisement itself, the newspaper could not protect its asserted copyright in advertisement by relying on a general collective work notice of copyright printed on front page of its newspaper under the masthead. The Canfield Court held that the delineation required by § 404(a) is not based on who own the copyright. "It does not matter whether the publisher, advertiser, or another owns the copyright. Separate notice is required for any advertisement inserted on behalf of someone other than the collective work copyright owner." Id. at 496.
In Transwestern Publishing Co. v. Multimedia Marketing Associates, 133 F.3d 773 (10th Cir. 1998), the Tenth Circuit held that "under § 404(a), the existence of a [general] copyright notice on plaintiff's ["yellow pages"] directory is insufficient to prohibit the copying of an advertisement from that directory, absent a copyright notice specific to the advertisement itself." Id. at 781.
Plaintiff does not address the issue of the need for each advertisement to contain its own notice. Plaintiff responds only that Defendants did have notice of the copyright since June 21, 1994, when a letter was sent by the former editor of The Letter to Frank Simon advising him of the copyright. However, the 1994 letter did not specifically reference the classified advertisements. Even had the letter referred to the classified advertisements, the letter was insufficient to meet the requirements of § 404(a), as articulated by the Seventh Circuit in Hoffmeyer. Therefore, the copyright claims must be dismissed.
Defendants also argue that there is no enforceable copyright in this case because the classified advertisements do not warrant copyright protection. It is a close question as to whether the text of the advertisements exhibited a sufficient "modicum of creativity" necessary to warrant copyright protection. Magic Marketing, Inc. v. Mailing Services of Pittsburg, Inc., 634 F. Supp. 769, 771 (W.D. Pa. 1986). However, the Court need not address this issue since dismissal is appropriate based on the issues of notice, and on the doctrine of "fair use," discussed below.
B. "Fair Use"
Defendant asserts that even if Plaintiff held an enforceable copyright for the advertisements, Defendants' use of the advertisements constituted "fair use." The Copyright Act allows the "fair use" of a copyrighted work "for purposes such as criticism, comment, news reporting, teaching . . . scholarship or research." 17 U.S.C. § 107. The statute provides that the factors to be considered in determining whether the use of a work is "fair use" include "(1) the purpose and character of the use, including whether such use is of a commercial nature or for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work." Id.
The Sixth Circuit has held that an interest group made "fair use" of information compiled by one interest group where it copied the information and used it in a mailing to its own members. National Rifle Assoc. of America v. Handgun Control Federation of Ohio, 15 F.3d 559, 561 (6th Cir. 1994). In the case, the gun control group copied and sent to its own members a list of state legislators that the NRA had sent to its members to urge its members to contact in opposition to gun control.
The Court held that the "four factors enumerated [by § 107] are especially relevant to the determination of whether fair use occurred, but they are not meant to exhaust the possible considerations." National Rifle Assoc. of America v. Handgun Control Federation of Ohio, 15 F.3d 559, 561 (6th Cir. 1994) (citing Harper Row Publishers v. Nation Enter, 471 U.S. 539, 560 105 S.Ct. 2218, 2230, 85 L.Ed.2d 588 (1985). "Though not conclusive, the fourth factor — dealing with effect on market share — is `the single most important element of fair use.'" National Rifle Assoc. at 561 (quoting Harper Row Publishers at 566). "This factor is generally demonstrated by a showing that the purpose or character of the use was commercial." National Rifle Assoc. at 561 (citing Sony Corp. v. Universal City Studios, 464 U.S. 417, 451, 104 S.Ct. 774, 793, 78 L.Ed.2d 574 (1984)).
In Hustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148 (1986), the Ninth Circuit held that the Moral Majority's use of an advertisement parody from Hustler Magazine for fund raising purposes constituted fair use under § 107.
Plaintiff asserts that Defendants' activities did not constitute "fair use" because Defendants materially altered the advertisements and alleged that the advertisements were soliciting illegal behavior. Plaintiff cites no authority to support their argument and does not address the arguments based on the reasoning of Harper Row, National Rifle Association, and Hustler Magazine. Plaintiff's response to the "fair use" argument is relevant only to the defamation claim and not to the copyright infringement claim.
While Defendants allegedly used the classified advertisements to raise money, the advertisements were not used in competition with Plaintiff and were used in the process of political debate. Therefore, Defendants' use of the advertisements constituted "fair use" and the copyright claims must be dismissed.
C. Real Party in Interest
It is also questionable whether Plaintiff is the actual owner of the alleged copyright for the classified advertisements. Defendants argue that the copyright owner of the classified advertisements are the individuals who purchased the advertisements. Plaintiff presents evidence that it is the sole owner of the copyright for the "March 1996 issue of The Letter." Plaintiff fails to address the issue of whether the copyright for the classified advertisements is owned by the newspaper or the advertiser.
The Copyright Act, provides that copyright ownership "vests initially in the author or authors of the work." 17 U.S.C. § 201(a). The Supreme Court has held that "the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection." Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737, 109 S.Ct. 2166, 2171, 104 L.Ed.2d 811 (1989). However, "[i]f the work is for hire, `the employer or other person for whom the work was prepared is considered the author' and owns the copyright unless there is a written agreement to the contrary." Reid, 490 U.S. at 737 (quoting 17 U.S.C. § 201(b)).
There is no indication in the current record whether the language used in the classified advertisements was drafted by the advertiser or by Plaintiff. If prepared by the advertiser, Plaintiff could not own the copyright absent some contractual agreement with the advertiser. If Plaintiff drafted the advertisements, the copyright might still be owned by the advertiser under the "work made for hire" provision of the Copyright Act. However, there is insufficient evidence to determine this issue on the current record.
The Court need not determine since dismissal is appropriate based on the issues of notice and "fair use."
II. REMAINING STATE TORT CLAIMS
Federal jurisdiction in this case was based on the federal copyright infringement claim. Jurisdiction for the remaining state tort claims was based on supplemental jurisdiction. If all federal claims are dismissed, federal courts have the discretion to maintain supplemental jurisdiction over the remaining state claims. United Mine Workers v. Gibbs, 383 U.S. 715, 726, 86 S. Ct. 1130, 1139, 16 L. Ed.2d 218 (1966). This discretion should be based on "considerations of judicial economy, convenience and fairness to litigants." Id. "Certainly, if the federal claims are dismissed before trial, even though not insubstantial in a jurisdictional sense, the state claims should be dismissed as well." Id.
Given the early stage of this proceeding that the federal claim has been dismissed, the parties would not be prejudiced by litigating this matter in a Kentucky state court. Therefore, the Court declines to exercise supplemental jurisdiction over the remaining state tort claims.
THEREFORE, IT IS ORDERED:
Defendants' motion to dismiss is GRANTED; the claims based on copyright infringement under 17 U.S.C. § 101 et. seq. are DISMISSED WITH PREJUDICE; the remaining state tort claims are DISMISSED WITHOUT PREJUDICE.