Dastar case applied to dismiss suit against web developer

The U.S. District Court for the District of Maryland has dismissed a copyright infringement and Lanham Act suit against a web developer for using in her online portfolio work done for a previous employer. The court held that it was without subject matter jurisdiction to hear the case where the plaintiff had not obtained copyright registrations over the works in issue, and that Section 43(a) of the Lanham Act could not apply to cover an alleged misappropriation of the “idea, concept or communication” embodied in the works at issue.

On January 5, 2005, Robin Euler left her job as a senior graphic and web designer for Mays & Associates (“Mays”), a “Maryland based, full service web and print design, marketing and communications company.” She then set up shop on her own using the name Red Robin Design [www.redrobindesign.com]. On her new company’s website, Euler placed a portfolio of her work, which included websites and print advertisements she had designed while working for Mays.

On February 11, 2005, Mays filed applications with the U.S. Copyright Office, seeking to register its copyrights in the websites and brochures Euler was using in her portfolio. Three days later, Mays filed suit in federal court in Maryland, alleging copyright infringement, unfair competition under Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)), and various state law claims. Euler moved to dismiss on the basis of lack of subject matter jurisdiction and for failure to state a claim upon which relief may be granted. The court granted Euler’s motion and dismissed the case.

Euler’s motion was based on two principal arguments: (1) that the court was without subject matter jurisdiction over the copyright claim, as Mays had not yet received registrations at the time of suit, and (2) that Mays’s cause of action under Section 43(a) of the Lanham Act was preempted by copyright law as called for in the U.S. Supreme Court case of Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041 (2003).

In ruling in favor of Euler’s motion on the subject matter jurisdiction issue, the court held that Section 411 of the Copyright Act (17 U.S.C. § 411) requires a plaintiff to have actually received copyright registrations for the works at issue before filing suit. The court looked to the “ordinary, contemporary, and common meaning” of the words in Section 411(a) to determine that Congress intended to require “something more than application for a copyright prior to filing suit.” Because Mays had only applied for copyright protection and had not yet received registrations, the court was without subject matter jurisdiction.

On the Section 43(a) issue, the court held that Euler’s use on the Red Robin site of work she had done while employed by Mays could not constitute a false designation of origin. The court noted that under Dastar, Section 43(a) does not cover “any idea, concept, or communication” embodied in goods (and presumably services) offered for sale. Any misappropriation or other wrongdoing in this context would be covered by copyright law.

Mays & Associates Inc. v. Euler, — F.Supp.2d —, 2005 WL 1172326 (D.Md. May 18, 2005).