The opinion of the court was delivered by: Bartle, United States District Judge.
This is an action for copyright infringement under 17 U.S.C. § 101
et seq., as well as for unfair competition under federal and state law.
Plaintiffs are Paul Morelli, a Philadelphia jewelry designer, and Paul
Morelli Design, Inc.,*fn1 his corporation of which he is an employee and
the sole shareholder. They allege that defendant, Tiffany and Company
("Tiffany"), has copied creative jewelry designs originating with Paul
Morelli. Tiffany has moved to dismiss the copyright claim for lack of
subject matter jurisdiction.
In order to institute a copyright infringement action, a party
must either (1) have obtained a registration of the copyright from
the Register of Copyrights in the Library of Congress or (2) have
applied for a registration and had the registration refused by the
Register. 17 U.S.C. § 411(a). Accordingly, an applicant does not
have to be successful before the Copyright Office. Rather one must
simply have made a proper attempt at registration. In this regard,
§ 411 of the Copyright Act provides in relevant part:
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 if
notice thereof, with a copy of the complaint, is
served on the Register of Copyrights.
17 U.S.C. § 411(a). The Copyright Office refused registration of
Paul Morelli's work.
It is undisputed that in June, 1999, prior to the commencement of this
lawsuit, Paul Morelli filed 18 applications for registration of certain
jewelry designs. He was listed as the "author" of the works as well as
the claimant.*fn2 The Copyright Office instructions which accompanied
the application define an author as "the individual who actually created
the work" except where the work was "made for hire." Under the latter
circumstance, "the employee or other person for whom the work was
prepared is considered the author." On the application form, the applicant
must check a box indicating whether the work for which a copyright is
being sought is a "work made for hire." In this case, the "no" box was
checked in each instance.
The Copyright Act provides that if a work has been created by an
employee during the scope of his employment, the copyright belongs
to the employer who is considered the author unless the employer
and its employee have signed a written agreement to the contrary.
17 U.S.C. § 201(b). Paul Morelli has no such agreement with Paul
Morelli Design, Inc.
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
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; ...