The Copyright Act states that a plaintiff may not file suit for copyright
infringement until the Copyright Office issues or refuses a registration. 17 U.S.C.
§ 411(a). Villa does not allege that either of these events have occurred. He states only
that he applied for registration of his copyright in UNONE Piece 20 and acknowledges
that he has received no response from the Copyright Office regarding his application.
However, Villa argues that he need not wait for the Copyright Office to make its
decision; rather, he claims the requirements of § 411 are satisfied once the Copyright
Office has received his copyright application, deposited work, and fee payment. Some
courts, most notably the Fifth Circuit Court of Appeals, have adopted this view. Apple

Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386-87 (Sth Cir. 1984). However, even these

cases do not assume receipt but require some form of proof that the application reached

its destination. See, e.g., Lakedreams v. Taylor, 932 F.2d 1103, 1108 (Sth Cir. 1991)

(cashed fee check); Wilson v. Mr. Tee’s, 855 F. Supp. 679, 682 (D.N.J. 1994) (postal

receipt). Villa offers no such proof.

In any event, the law of our circuit does not track the Fifth Circuit’s liberal
interpretation of the requirements of 17 U.S.C. § 411. The Seventh Circuit recognizes
only the two events explicitly laid out in the statute as triggers for federal jurisdiction
over an infringement suit. Pickett _v. Prince, 207 F.3d 402, 404 (7th Cir. 2000).
Therefore, the registration of a copyright is a jurisdictional requirement that a plaintiff

must satisfy before his copyright infringement claim will be heard. Id.; see also

Sassafras Enterprises, Inc. v. Roshco, Inc., 889 F. Supp. 343, 347 n.5 (N.D. Ill. 1995);

-4.


A defendant may move to dismiss claims over which the federal court lacks
subject matter jurisdiction. Federal courts are not courts of general jurisdiction, their
power must be authorized by the Constitution or by federal statutes. Kokkonen v.
Guardian Life Ins. Co. of America, 114 S.Ct. 1673, 1675 (1994). When jurisdictional
allegations are questioned, the party asserting jurisdiction has the burden ofproving that
the jurisdictional requirements have been met. Jd.; Del Vecchio v. Conseco, 230 F.3d
974, 979 (7th Cir. 2000). With these principles in mind, we address the motion
before us.

DISCUSSION

Brady has attacked the sufficiency of all of the claims advanced in the complaint,
arguing jurisdictional problems with the copyright claim and preemption of the state law
claims, as well as lack of required legal specificity of various of the state law claims.
Because Villa has asserted only one claim rooted in federal law, we must initially focus
our attention on allegations of copyright infringement. If this claim does not withstand
Brady’s motion to dismiss, we have no jurisdiction to consider Villa’s remaining claims,

which all rest on state law.'

'We note that Villa has alleged unfair competition, a cause of action that can
arise from the Lanham Acct, a federal statute. However, it is clear from the contents of
the complaint and Villa’s response to the instant motion that he does not, and cannot,
make a claim of unfair competition under 15 U.S.C. § 1125(a). Such a claim requires
the plaintiff to allege a protectable mark whose use by the defendant is likely to cause
confusion among consumers. CAE, Inc. v. Clean Air Engineering, Inc., 267 F.3d 660,
673-74 (7th Cir. 2001). Villa clearly alleges likelihood of confusion, but he makes no
allegation that his artwork is a protectable mark as required under § 1125(a).

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Health o meter, Inc. v. Terraillon Corp., 873 F. Supp. 1160, 1168 (N.D. Ill. 1995); Store

Decor v. Stylex Worldwide Industries, 767 F, Supp. 181, 184 (N.D. IIL. 1991). As stated

earlier, as the party asserting jurisdiction, Villa has the burden to prove that all
jurisdictional requirements have been met. To satisfy this burden, he contends that the
Copyright Office’s normal mailing procedures have been disrupted and that we should
therefore conclude that the requirements of § 411 were satisfied upon the dispatch of his
application. Indeed, he offers to resend them so there is no mistake that they have been
sent. Whatever the reason for the delay in the response from the Copyright Office, the
statute and Seventh Circuit case law are clear. A putative copyright owner cannot meet
the statutory prerequisites by merely sending registration materials, regardless of the
number of times they are posted. We are without authority to hear Villa’s copyright
claim.

We therefore conclude that we lack subject matter jurisdiction over the only
federal claim in this action. As such, we need not and do not address Brady’s arguments
regarding preemption and the legal sufficiency of the remaining state law claims.

CONCLUSION

For the foregoing reasons, we dismiss Villa’s complaint in its entirety.

RiBe fleen,

Charles P. Kocoras
United States District Judge

Dated: May 1, 2002


Minute Order Form (06/97)

Y

United States District Court, Northern District of Illinois

Name of Assigned Judge Sitting Judge if Other
or Magistrate Judge Charles P. Kocoras than Assigned Judge
CASE NUMBER 02 C 570 DATE 5/1/2002
CASE Villa vs. Brady Publishing
TITLE
[In the following box (a) indicate the party filing the motion, c.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.)
DOCKET ENTRY:
(1) Oo Filed motion of [ use listing in “Motion” box above.]
(2) a Brief in support of motion due
(3) i) Answer brief to motion due. . Reply to answer brief due.
(4) oO Ruling/Hearing on set for at
(5) a Status hearing[held/continued to] [set for/re-set for] on set for at
(6) Do Pretrial conference{held/continued to] [set for/re-set for] on set for at .
(7) QO Trial[set for/re-set for} on at
(8) Oo [BenclyJury trial] [Hearing] held/continued to at
(9) a This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
OCOFRCP4(m) OGeneral Rule 21 OO FRCP41(a\(1) O FRCP41(a)(2).
(ao) «=x [Other docket entry] Ruling held. ENTER MEMORANDUM OPINION: Defendant’s motion
(Doc 4-1) to dismiss is granted. We dismiss Villa’s complaint in its entirety.
ald [For further detail see order attached to the original minute order.]
No notices required, advised in open court. Document.
No notices required Nember
‘0 notices required, umber of notices
Notices mailed by judge's staff,
Notified counsel by telephone.
V | Docketing to mail notices.
| Mail AO 450 form. sa 0
Copy to juge/magist te judge.
Ve date mailed notice
courtroom were
scT deputy’s
initials — —
(i 1... Dateltime received in
a central Clerk’s Office ‘mailing deputy initals



UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
HIRAM VILLA, )
)
Plaintiff, )
)
vs. ) 02 C570

)
BRADY PUBLISHING, an imprint of )
Macmillian USA, part of Pearson PLC, )

) *

Defendant. ) ge

PW, 58:
MEMORANDUM OPINION ys yr

CHARLES P. KOCORAS, District Judge:

This matter comes before the court on a motion to dismiss pursuant to Federal
Rules of Civil Procedure 8, 10, and 12 by Defendant Brady Publishing. For the reasons
set forth below, we grant the motion to dismiss.

BACKGROUND

The complaint contains the following factual allegations which we must accept
as true for purposes of this motion to dismiss. See Bontkowski v. First National Bank
of Cicero, 998 F.2d 459, 461 (7th Cir. 1993). Plaintiff Hiram Villa (“Villa”) is an artist
who paints wall murals and is known by his fans by the name UNONE. Many of Villa’s
works consist of stylized letters spelling UNONE. One of Villa’s wall paintings is
entitled “UNONE Piece 20.” Villa owns the copyright in UNONE Piece 20. Defendant

Brady Publishing (“Brady”) published a book entitled Tony Hawk’s Pro Skater 2

0


Official Strategy Guide (the “Book”). In the Book, Brady published a repainted
reproduction of UNONE Piece 20 without Villa’s permission.

On December 14, 2001, Villa alleges that he applied for registration of his
copyright in UNONE Piece 20 by sending a copyright registration application to the
Copyright Office. On January 24, 2002, before the Copyright Office issued or refused
Villa’s registration, Villa commenced this lawsuit. The complaint alleges copyright
infringement, unfair competition, invasion of privacy, and appropriation. Brady now
moves to dismiss Villa’s complaint pursuant to Fed. R. Civ. Proc. 8, 10, and 12.

LEGAL STANDARD

The purpose of a motion to dismiss under Rule 12(b)(6) is to test the legal
sufficiency ofa complaint. Triad Associates, Inc. v. Chicago Hous. Auth., 892 F.2d 583,
586 (7th Cir. 1989). In ruling on a motion to dismiss, the court must construe the
allegations of the complaint in the light most favorable to the plaintiff, and all
well-pleaded facts and allegations in the complaint must be accepted as true.
Bontkowski v. First Nat’] Bank of Cicero, 998 F.2d 459, 461 (7th Cir. 1993).

The allegations of a complaint should not be dismissed for failure to state a claim
“unless it appears beyond a doubt that the plaintiff can prove no set of facts in support
of his claim which would entitle him to relief.” Conley v. Gibson, 355 US. 41, 45-46
(1957). Nonetheless, in order to withstand a motion to dismiss, a complaint must allege

facts sufficiently setting forth the essential elements of the cause of action. Lucien v.

Preiner, 967 F.2d 1166, 1168 (7th Cir. 1992).

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