The opinion of the court was delivered by: Joyner, C.J.
Before this Court are Defendants' Motion for Partial Summary Judgment (ECF No. 15), Plaintiff's Response in opposition thereto (ECF No. 17), Defendants' Reply in further support thereof (ECF No.. 21), and Plaintiff's Surreply in further support of the Motion (ECF No. 24). For the reasons set forth in this Memorandum, the Defendants' Motion is GRANTED in part and DENIED in part.*fn1
Richard C. Ackourey, Jr. doing business as Graphic Styles/Styles International LLC, ("Plaintiff") "produces, displays, and distributes stylebooks containing copyrighted drawings and graphic representations of men's and women's clothing styles." (Compl. ¶ 3-4.) In 2004, Plaintiff obtained from Graphic Fashions, Inc. rights to reproduce, display, distribute and create derivatives of all copyrighted work owned by Graphic Fashions, Inc. In 2006, Plaintiff published the "Styles International Best of Seasons 2006" stylebook ("2006 Stylebook"), containing 160 to 260 drawings. Of these drawings, some were reproduced from at least 27 prior stylebooks published by Graphic Fashions, Inc. and other drawings were original. The 2006 Stylebook was registered with the United States Copyright Office ("Copyright Office") under registration number TX 6-956-762, effective January 30, 2009. (Def.'s Mot. Summ. J. Ex. B). By 2007, Graphics Fashions, Inc. assigned all of its ownership rights in its copyrights to Plaintiff.
Mike Ramchandani is president of Mohan's Custom Tailors, Inc. (collectively "Defendants"). In March or April of 2006, Defendants received a copy of the 2006 Stylebook and in 2008, Defendants created and printed 1000 copies of Mohan's Custom Tailors Catalog ("Catalog"). In 2009, Plaintiff received a copy of the Catalog and subsequently filed suit alleging that Defendants violated the Copyright Act of 1976, 17 U.S.C. §§ 101-810 ("Copyright Act") by publishing the Catalog with 123 images copied directly from the 2006 Stylebook without authorization. Plaintiff is seeking, amongst other relief, statutory damages and attorney's fees and costs. See 17 U.S.C. §§ 504(c), 505.
Upon considering a motion for summary judgment, the Court shall grant the motion "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." FED. R. CIV. P. 56(a). In making a determination, "inferences to be drawn from the underlying facts . . . must be viewed in the light most favorable to the party opposing the motion." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (alteration in original) (internal quotation marks omitted). "[T]here is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). "The party opposing summary judgment "may not rest upon the mere allegations or denials of the . . . pleading; its response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial." Saldana v. Kmart Corp., 260 F.3d 228, 232 (3d Cir. 2001) (alteration in original) (internal quotation marks omitted).
Defendants seek summary judgment on the issue of Plaintiff's claims for statutory damages and attorney's fees. Defendants contend that because their alleged copyright infringement is based solely on material copied from Plaintiff's 2006 Stylebook and the copyright to the stylebook was not timely registered (i.e. not within 3 months of first publication) but registered after the alleged infringement commenced, statutory damages and attorney's fees are barred by 17 U.S.C. § 412. Plaintiff counters that the 2006 Stylebook contains images reproduced from numerous stylebooks previously copyrighted by Graphic Fashions, Inc.---works registered well before Defendants' infringement commenced--and entitling Plaintiff to statutory damage awards for each of those infringed stylebooks. A decision on Defendants' motion requires an analysis of sections 412 and 504 of the Copyright Act.
A. Copyright Registration as a Prerequisite to Statutory Damages under 17 U.S.C. § 412.
The Copyright Act affords plaintiffs two types of relief against a copyright infringer. The copyright owner may elect to either: (a) recoup his or her actual damages and the infringer's profits attributable to the infringement or (b) collect special statutory damages. 17 U.S.C. §§ 504(a)-(b). The copyright holder may choose "at any time before final judgment is rendered" to recover statutory damages in lieu of actual damages and profits. Id. § 504(c)(1). However, in two instances, the owner of a work must first register his copyright with the Copyright Office to recover statutory damages. Section 412 reads in relevant part:
[N]o award of statutory damages or of attorney's fees, as provided by sections 504 and 505, shall be made for-(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or (2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.
Id. § 412. Although § 412 establishes a prerequisite to awarding statutory damages, it is no hindrance to a claimant's pursuit of actual damages and profits.
Defendants argue that because any infringement of the 2006 Stylebook occurred after its first publication and before its registration's effective date, Plaintiff must be denied statutory damages and attorney's fees. Plaintiff first published the 2006 Stylebook on May 1, 2006 and the registration (Reg. No. TX 6-956-762) became effective on January 30, 2009. (Def.'s Mot. Summ. J. Ex. B.) Defendants' alleged infringement commenced when they produced the Catalog in 2008. Thus, Plaintiff is clearly precluded from seeking statutory damages or attorney's fees for infringement of copyright TX 6-956-762. See On Davis v. The Gap, Inc., 246 F.3d 152, 158 n.1 (2d Cir. 2001); Ackourey v. La Rukico Custom Tailor, No. 11-CV-2401, 2011 WL 2790271, at *4 (E.D. Pa. July 15, 2011); Schiffer Publ'g, Ltd. v. Chronicle Books, LLC, ...