To qualify for copyright protection a work must be original to its
author and possess a minimal degree of creativity. Feist Publ'ns, Inc.
v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). The Copyright Office
refused the registrations on the ground that the jewelry did "not contain
a sufficient amount of original artistic or sculptural authorship." Paul
Morelli's administrative appeal within the Copyright Office was
As noted above, the rejection of the applications, in and of itself,
did not prevent Paul Morelli from suing Tiffany for infringement, and
this action followed. During discovery, Paul Morelli testified that he
created the jewelry in issue as an employee of Paul Morelli Design, Inc.
He now concedes that his corporation is the author of the jewelry in
issue and that the applications as submitted in 1999 were incorrect in
The gravamen of Tiffany's motion to dismiss is quite simple. It argues
that under § 411 only the applicant for an unsuccessful registration
may file an infringement action. Since admittedly Paul Morelli was not
the proper applicant, he cannot sue for infringement. Likewise, because
Paul Morelli Design, Inc., the author under the copyright law, was not
the applicant, Tiffany asserts it is also barred from bringing this
action. Plaintiffs maintain that the error is inconsequential and that
the infringement claim should be allowed to proceed in the name of Paul
Morelli Design, Inc.
The court held a hearing to allow the parties to adduce additional
evidence, beyond the above undisputed facts, which the parties consider
relevant on the jurisdictional question. Tiffany called three witnesses:
Robert McCarthy, Esquire, Robert Zielinski, Esquire, and the plaintiff
Paul Morelli. In January, 1999, Mr. McCarthy, along with another attorney
in his office, prepared and submitted an application for registration for
a piece of jewelry naming Paul Morelli Design, Inc. as the author and
stating that it was "a work made for hire." Six months later, in June,
1999, the applications for the jewelry designs in issue were filed,
identifying as the author Paul Morelli individually and not Paul Morelli
Design, Inc. These applications were prepared and filed by a different
attorney, Robert Zielinski, Esquire, a partner of Wolf, Block, Schorr &
Solis-Cohen, who practices copyright law with that firm.
Based on the testimony of Mr. McCarthy, Mr. Zielinski, and Mr.
Morelli, we find that Mr. Morelli, a jewelry designer, has little
or no knowledge or sophistication in the nuances of copyright law.
While he read and signed all the applications, they were filled
out by the lawyers after discussion with him. For his part, Mr.
Zielinski concentrated on the dates when the works were created.
He knew that Mr. Morelli owned Paul Morelli Design, Inc. but did
not ask Mr. Morelli much about it. Mr. Zielinski thought it was
simply a marketing company and testified that even if he had known
more, it may not have changed the way he prepared the applications
because in his view the "work for hire" concept is blurred when a
creator of a work is the sole owner of a company which employs
him. It appears that Mr. Zielinski, on whom Mr. Morelli relied,
was not as careful or thorough as he should have been in
completing the forms. Nonetheless, the court finds that neither
Mr. Zielinski nor Mr. Morelli engaged in any wilful effort to
mislead the Copyright Office. Their conduct at most may have been
negligent, but it clearly was neither in bad faith nor intentional
It is generally established that inadvertent and immaterial
misstatements on an application do not invalidate a copyright
registration. See 2 Melvin B. Nimmer & David Nimmer, Nimmer on Copyright
§ 7.20[B]. As our Court of Appeals observed, "[the] view that an
inadvertent omission from a registration application will render a
plaintiff's copyright incapable of supporting an infringement action has
not gained acceptance with the courts." Masquerade Novelty, Inc. v.
Unique Indus. Inc., 912 F.2d 663, 668 n. 5 (3d Cir. 1990); see Urantia
Found. v. Maaherra, 114 F.3d 955, 963 (9th Cir. 1997); Data General
Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1161 (1st Cir. 1994).
The misstatements here were inadvertent. Accordingly, we now turn
to the question whether they were material. "In general, an error
is immaterial if its discovery is not likely to have led the
Copyright Office to refuse the application." Data General, 36 F.3d
at 1161; see Eckes v. Card Prices Update, 736 F.2d 859, 861-62 (2d
Unlike the above actions, the copyright registrations here were
refused, not granted. The basis of the Copyright Office's decision
was the jewelry's lack of creativity. Thus, the question must be
phrased slightly differently than in Data General. Instead, we
must decide whether the misstatements about authorship would have
made it likely that the Copyright Office would have rejected the
applications if it would otherwise have granted the registrations.
There is no dispute that Paul Morelli was the actual creator of the
works in question. It is also undisputed that he was and is the sole
shareholder of Paul Morelli Design, Inc. For all present practical
purposes, he and Paul Morelli Design, Inc. are one and the same. In Thomas
Wilson & Co. v. Irving J. Dorfman Co., 433 F.2d 409 (2d Cir. 1970), the
plaintiff corporation's president was improperly named as the author in a
registration application instead of the corporation. Apparently, that
case, like this one, involved a work for hire. See id. at 412 n. 7. The
court rejected defendant's attempt to defeat the copyright based on the
misstatement. It explained, "the . . . error was minor, was made in good
faith, and could not have affected the action taken by the Copyright
Office." Id. at 412 Likewise, the error here was inadvertent, minor, and
in good faith. It was not material. Significantly, the Register of
Copyrights, who is an intervening defendant in this action, has not
asserted that the designation of Paul Morelli rather than Paul Morelli
Design, Inc. would have negatively influenced any decision made by her
Section 411 of the Copyright Act also requires that an application
be filed in proper form. Tiffany argues that Paul Morelli's 1999
applications were not in proper form and that as a result
plaintiffs are barred from suing for infringement. Tiffany relies
on the "supplementary" applications recently submitted bu Paul
Morelli Design, Inc. which seek to correct the author and dates of
creation and to identify some of the works as derivative. The
Copyright Office, while seeking to uphold its position that the
jewelry is not copyrightable, rejects the notion that the 1999
applications were not in proper form. According to the Copyright
Office, if the deposit and fee are paid and the application is not
deficient on its face, it is in proper form and will be reviewed.
We agree. On their face, the applications were complete and in
order. No one contends that the deposit and fee were not paid.
Thus, the form of the 1999 applications is not a basis for
dismissing the infringement claim. Cf. Proulx v. Hennepin Tech.
Ctrs., District No. 287, Civ. No. 4-79-637, 1981 WL 1397 (D.Minn.
Dec. 7, 1981).
The motion of Tiffany to dismiss the copyright infringement claim
Morelli Design, Inc. will be denied and the motion to dismiss the
copyright infringement claim of Paul Morelli will be granted.
AND NOW, this day of February, 2002, for the reasons set forth in
the accompanying Memorandum, it is hereby ORDERED that:
(1) the motion of defendant Tiffany and Company to
dismiss the copyright infringement claim of plaintiff
Paul Morelli Design, Inc. is DENIED; and
(2) the motion of defendant Tiffany and Company to
dismiss the copyright infringement claim of plaintiff
Paul Morelli is GRANTED.