Angela Brooks-Ngwenya v. Indianapolis Public ( 2009 )

In the
United States Court of Appeals
For the Seventh Circuit
No. 08-1973
A NGELA E. B ROOKS-N GWENYA,
Plaintiff-Appellant,
v.
INDIANAPOLIS P UBLIC S CHOOLS,
Defendant-Appellee.
Appeal from the United States District Court
for the Southern District of Indiana, Indianapolis Division.
No. 1:07-CV-00067-SEB-JMS—Sarah Evans Barker, Judge.
S UBMITTED F EBRUARY 11, 2009—D ECIDED A PRIL 15, 2009
Before P OSNER, W ILLIAMS, and T INDER, Circuit Judges.
P ER C URIAM. Angela Brooks-Ngwenya claims that the
Indianapolis Public Schools infringed a copyrighted
educational program that she had developed while work-
ing for the school system. She also accuses the school
system of employment discrimination. The district court
granted summary judgment for IPS.
She had been promoted in October 2002 to classroom
assistant at Gambold Middle School. During that school
2 No. 08-1973
year she developed “TIRS”—Transitioning Into Responsi-
ble Students—to assist underachievers at Gambold.
According to Brooks-Ngwenya, IPS promised to buy
TIRS and hire her as a permanent classroom coordinator
if the program proved successful. But IPS did not buy
TIRS or give Brooks-Ngwenya a permanent job, and yet,
she says, the school system continued to use the program
after she was terminated in October 2003.
In December 2004 she sued IPS, alleging racial discrimi-
nation. That suit settled and was dismissed, and as part
of the settlement she relinquished all claims of employ-
ment discrimination arising under federal law in connec-
tion with her tenure at IPS. Brooks-Ngwenya v. Indianapolis
Public Schools, No. 1:04-CV-01980 SEB-VSS (S.D. Ind. July 6,
2005). Some months later she sued IPS in state court,
claiming that the school system had infringed her copy-
right in TIRS. She added a trademark claim and state-
law claims for tort and breach of contract. The suit
was removed to federal court, and the district court
dismissed with prejudice the federal claims and one of
the tort claims and relinquished jurisdiction over the
remaining state-law claims. Brooks-Ngwenya v. Thompson,
No. 1:05-CV-1469-LJM-WTL (S.D. Ind. Mar. 3, 2006).
Brooks-Ngwenya appealed, and in October 2006
we modified the dismissal of the copyright claim to be
without prejudice but otherwise affirmed the judgment.
Brooks-Ngwenya v. Thompson, 202 F. App’x 125 (7th Cir.
2006).
She returned to the district court in January 2007, re-
newing her copyright claim and resurrecting claims of
employment discrimination that had been raised and
No. 08-1973 3
settled in her first lawsuit. The district court granted
summary judgment for IPS, ruling that she could not
prevail on her copyright claim because, in the court’s
view, registration is a prerequisite to suit and she had
conceded that her application to register TIRS had been
rejected by the Copyright Office. The court added that
she had no evidence that TIRS qualifies for copyright
protection and that the employment-discrimination
claims were precluded by the settlement of her first
lawsuit.
Compliance with the registration requirements of 17
U.S.C. § 411(a) is not a condition of copyright protection
but is a prerequisite to suing for infringement. 17 U.S.C.
§ 411(a); Automation By Design, Inc. v. Raybestos Prods. Co.,
463 F.3d 749, 752 n.1 (7th Cir. 2006). The circuits have
split over whether registration is complete when an
application is made or only after the Copyright Office has
acted on the application. Compare Action Tapes, Inc. v.
Mattson, 462 F.3d 1010, 1013 (8th Cir. 2006) (application is
sufficient), and Positive Black Talk Inc. v. Cash Money
Records, Inc., 394 F.3d 357, 365 (5th Cir. 2004) (same), with
Jennette v. United States, 77 Fed. Cl. 126, 131 (2007) (action
on application is required); La Resolana Architects, PA v.
Clay Realtors Angel Fire, 416 F.3d 1195, 1201 (10th Cir. 2005)
(same); cf. Chicago Board of Education v. Substance, Inc., 354
F.3d 624, 631 (7th Cir. 2003) (“an application for registra-
tion must be filed before the copyright can be sued upon”).
The Supreme Court has granted certiorari to decide
whether compliance with the registration requirements
is a precondition to the subject-matter jurisdiction of the
federal courts. In re Literary Works in Electronic Databases
4 No. 08-1973
Copyright Litigation, 509 F.3d 116 (2d Cir. 2007), cert.
granted (U.S. Mar. 2, 2009) (No. 08-103). But however that
issue is resolved, the Copyright Office had acted on
Brooks-Ngwenya’s application before she filed this lawsuit,
and section 411(a) is explicit that an applicant refused
registration may still sue for infringement. 17 U.S.C.
§ 411(a); Gaiman v. McFarlane, 360 F.3d 644, 655 (7th Cir.
2004); Torres-Negrón v. J & N Records, LLC, 504 F.3d 151,
160 (1st Cir. 2007).
But the applicant must notify the Register of Copyrights.
For 17 U.S.C. § 411(a) provides (emphasis added) that
in any case . . . 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 a civil
action for infringement if notice thereof, with a copy
of the complaint, is served on the Register of Copy-
rights. The Register may, at his or her option, become
a party to the action with respect to the issue of
registrability of the copyright claim by entering an
appearance within sixty days after such service, but
the Register’s failure to become a party shall not
deprive the court of jurisdiction to determine that
issue.
The notification requirement is undemanding: the com-
plaint must merely be sent by registered or certified mail
to the general counsel of the Copyright Office. Complaints
Served on the Register of Copyrights Pursuant to 17
U.S.C. § 411(a), 37 C.F.R. § 205.13. The requirement “merely
provides that the Office must be accorded a second op-
No. 08-1973 5
portunity to express its views on the claim’s validity after
suit is filed if it has refused to recognize the claim before
the suit is filed. Of course, the court is not bound by the
views expressed by the Register in a case in which suit
is filed despite his refusal to register the claim.” S. R EP .
N O . 100-352, at 14 n. 2 (1988), 1988 U.S.C.C.A.N. 3706,
3719 n. 2.
There is no evidence that Brooks-Ngwenya gave notice
of her suit to the Register of Copyrights. So if serving
notice on the Register is a jurisdictional requirement, we
must enforce it even if the parties and the district court
ignored it. Arizonans for Official English v. Arizona, 520 U.S.
43, 73 (1997); United States v. Smith, 438 F.3d 796, 799 (7th
Cir. 2006). If instead it is simply a case-processing rule,
we still must decide whether the district court should
have insisted on strict compliance. Korsunskiy v. Gonzales,
461 F.3d 847, 849 (7th Cir. 2006).
The Supreme Court has cautioned that “jurisdiction” is
a word with “ ‘many, too many, meanings,’ ” Steel Co. v.
Citizens for a Better Environment, 523 U.S. 83, 90 (1998)
(quoting United States v. Vanness, 85 F.3d 661, 663, n.2 (D.C.
Cir. 1996)), and admonished litigants and courts alike not
to describe every mandatory rule as “jurisdictional.”
Kontrick v. Ryan, 540 U.S. 443, 455 (2004). “The law is full
of rules that are mandatory in the sense that courts must
enforce them punctiliously if a litigant insists. Rules are
not jurisdictional, however, no matter how unyielding
they may be, unless they set limits on the federal courts’
adjudicatory competence.” Farzana K. v. Indiana Department
of Education, 473 F.3d 703, 705 (7th Cir. 2007).
6 No. 08-1973
The federal courts have exclusive jurisdiction of copy-
right cases, 28 U.S.C. § 1338(a); I.A.E., Inc. v. Shaver, 74
F.3d 768, 774 n.4 (7th Cir. 1996), and section 411(a) simply
prescribes the manner in which courts exercise that
jurisdiction. Moreover, “the Register’s failure to become
a party shall not deprive the court of jurisdiction to deter-
mine that issue.” 17 U.S.C. § 411(a). The suit proceeds
with or without his participation and therefore the statu-
tory notification provision does not prescribe what class
of cases the court may hear.
Even though nonjurisdictional, the notification require-
ment is a prerequisite to suit. Congress wanted to
ensure that the Copyright Office could intervene and
defend its refusal to register a work, In re Literary Works,
509 F.3d at 131 (dissenting opinion); S. R EP. N O . 100-352, at
14 n. 2, 1988 U.S.C.C.A.N. 3706, 3719 n. 2, as in other
statutes that require notification of and an opportunity for
intervention in a private suit. Examples are qui tam
actions under the False Claims Act, United States ex rel.
Lujan v. Hughes Aircraft Co., 67 F.3d 242, 245 (9th Cir. 1995),
and a federal employee’s obligation to notify the Equal Em-
ployment Opportunity Commission before bring a suit
for employment discrimination. Forester v. Chertoff, 500
F.3d 920, 928 (9th Cir. 2007). While not “strictly jurisdic-
tional” these requirements are nevertheless “mandatory.”
Hallstrom v. Tillamook County, 493 U.S. 20, 31 (1989).
But courts enforce mandatory (though nonjurisdictional)
rules—even if the parties do not raise them—in a variety
of ways. If the failure to follow the statutory procedure has
caused irreparable harm, the suit should be dismissed.
No. 08-1973 7
United States ex rel. Pilon v. Martin Marietta Corp., 60 F.3d
995, 1000 (2d Cir. 1995). If not, no sanction may be neces-
sary. United States ex rel. Lujan v. Hughes Aircraft Co., supra,
67 F.3d at 245. Similarly, if the attorney general was not
notified of a constitutional challenge to a statute, belated
notification might satisfy the requirement of notification.
Tonya K. ex rel. Diane K. v. Board of Education, 847 F.2d 1243,
1247 (7th Cir. 1988); In re Young, 82 F.3d 1407, 1412 (8th
Cir. 1996).
The district court should have insisted on Brooks-
Ngwenya’s compliance with the requirement that she
notify the Copyright Office about her lawsuit. Otherwise
the Register would have no opportunity to choose to
defend the decision to deny registration. But the point is
now academic, because the Register did weigh in during
the litigation, not by intervening but by granting Brooks-
Ngwenya’s renewed application. Copyright Catalog,
http://cocatalog.loc.gov. We are free to recognize that
fact even though the district court was incorrectly per-
suaded by IPS that it could not. Island Software & Computer
Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir.
2005) (concluding that court may take judicial notice of
registry). The purpose of the notification requirement
having been fulfilled, we can proceed to the merits.
The record includes documents related to TIRS—a
proposal for the program, for example, and documents
explaining how the program is designed to work. The
proposal and the other documents are copyrightable, as
the Copyright Office ultimately concluded. But the in-
fringement claim fails nevertheless because Brooks-
8 No. 08-1973
Ngwenya did not prove or try to prove that IPS copied any
of the materials protected by her copyright. Her complaint
is that IPS copied her ideas for better educating stu-
dents—that is, copied the TIRS program, which is a
system of rewards and recognition for students. Copyright
protection does not “extend to any idea, procedure,
process, system, method of operation, concept, principle,
or discovery, regardless of the form in which it is de-
scribed, explained, illustrated, or embodied in such work.”
17 U.S.C § 102(b); see Publications Int’l, Ltd. v. Meredith
Corp., 88 F.3d 473, 479 (7th Cir. 1996); Wildlife Express Corp.
v. Carol Wright Sales, Inc., 18 F.3d 502, 507 (7th Cir. 1994). It
is not the idea that is protected, but rather the original
expression of the idea. Because Brooks-Ngwenya has not
shown that the form of words in which she embodied her
ideas was copied, she cannot prevail in an infringement
action. Mag Jewelry Co. v. Cherokee, Inc., 496 F.3d 108, 114
(1st Cir. 2007); Mid American Title Co. v. Kirk, 59 F.3d 719,
721 (7th Cir. 1995).
As for employment discrimination, Brooks-Ngwenya’s
claims, which are based on Title VII of the Civil Rights
Act of 1964, 42 U.S.C. §§ 2000e to 2000e-17, and on the
Equal Pay Act of 1963, 29 U.S.C. § 206(d), were raised in
her first suit, Brooks-Ngwenya v. Indianapolis Public
Schools, No. 1:04-CV-1980-SEB-VSS (S.D. Ind. July 6,
2005). When the parties settled that suit, they stipulated
to a dismissal with prejudice. Such a dismissal is a final
judgment for purposes of claim preclusion (collateral
estoppel, in an older vocabulary) and so bars the present
suit. Cole v. Board of Trustees, 497 F.3d 770, 773 (7th
No. 08-1973 9
Cir. 2007); Golden v. Barenborg, 53 F.3d 866, 871 (7th Cir.
1995).
A FFIRMED.
4-15-09