In this case, Cynthia Foss (a graphic designer) sued Marvic, Inc. (sunroom contractors) for copyright infringement. In 2006, Foss created a marketing brochure for Marvic, and was paid for the work. In 2018, Foss brought a copyright infringement suit to district court, claiming that she discovered in 2016 that Marvic had modified the brochure she created and was using the modified brochure in print and online for their business, without her permission. In 2017, Foss sent Marvic a letter alleging copyright infringement, and an invoice demanding payment for lost wages. Marvic ignored the invoice, and in 2018, Foss filed a suit in court, representing herself. At first instance, Foss’s case was dismissed for what I would summarize as a lack of diligent prosecution of the case, even though there were other substantive issues working against her case (I’ll get into those later in this article). The case was reopened in 2018, and this time Foss had the support of legal counsel who entered an appearance on her behalf. This time the court dismissed her claim for copyright infringement but retained the breach of contract claim. 

In the US, a copyright holder must register their copyright before they can bring a copyright infringement claim to court. Registration occurs when the Register has registered a copyright after examining a properly filed application, not when an application for registration is filed. Unfortunately, Foss only filed an application to register her copyright after she had instituted a claim in court, even though she claimed that she had registered the copyright.

Again, in 2019, the district court found in favor of Marvic citing several reasons including the fact that Foss did not inform Marvic that she owned all rights to the graphic images or that Marvic needed her permission to modify the work. 

I think it is also important to mention that although legal counsel had made an appearance on Foss’s behalf, legal counsel withdrew from the case, leaving Foss to wade through the maze of litigation procedure at the district court on her own.

Foss appealed the decision of the district court and retained legal counsel who made an appearance on her behalf in 2020. Foss’s arguments on appeal were that the district court was wrong in dismissing her copyright claim because she had begun the process of registering the work with the Copyright office. Foss argued that the district court should have held off on making a judgment on that claim even though she never asked the court to do so. On appeal, the circuit court said that such reliefs which might have been available at the trial court, which in this case was the district court, and were not sought there, could not be sought on appeal. The courts will only allow legal theories which should have been argued in trial to be raised on appeal in extraordinary circumstances. The circuit court dismissed the appeal.

Lessons from the Case

1. In the US, you can only file a claim in court for copyright infringement if your work is registered by the Copyright Office. A work is not registered until the Copyright Office issues a registration certificate. Mere filing for registration does not satisfy the registration prerequisite.
2. When you become aware of a possible infringement of your rights, it is important to act immediately. In both the district court and the circuit court, the courts took notice of the fact that Foss waited twelve years from when she first did the work for Marvic to bring a suit to court. Foss argued that she only became aware of the alleged breach ten years after but that didn’t satisfy the courts because by her admission, after she became aware of the alleged infringement, she waited another two years to take action. 
3. It is important to have a lawyer look over your contracts to protect your interests. As a creative person, ownership of intellectual property is a key term that must be included in work contracts to establish what rights, if any, are being retained by the creator of the work. Here, both the district and circuit courts affirmed that there was no evidence that Foss reserved any rights in the work. If there was an agreement that she was producing the work for limited use, there was nothing in the contract to guide the courts to that conclusion. Use a lawyer who understands and has experience in your business sector.
4. In legal proceedings, have a lawyer represent you. Foss was clearly lost in the maze of civil litigation procedure. There’s a volley of notices, requests, discovery, and other processes with accompanying deadlines that takes place between the litigating parties in a lawsuit. Lawyers are paid to know how to respond to these things. Failure to prosecute your case within the bounds of the court’s procedure means that you could lose, even with what you think is a good case.