Plausible Claim or Greedy Plaintiff: Frivolous Infringement in the First Circuit

Ever wonder what sort of protections are available for people and businesses that create marketing materials for others? The simple answer to this question is that a creator is granted automatic “copyrights” to any creation with certain limitations. (17 U.S.C. §104 (a)) However, enforcing these rights has certain prerequisites imposed by federal law, namely applying for registration of the creation or “work” with the U.S. Copyright Office. (17 U.S.C.§ 411(a)) The language of the statute provides that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” Such registration comes with the added benefit of recovering statutory damages for each instance of infringement with potential multipliers. (17 U.S.C. §504(c))


The Supreme Court unanimously decided that §411(a) relies on the Copyright Office’s action on a given application, whether it be accepted or rejected. (See Fourth Estate Pub. Benefit Corp. v. Wall-Street.com LLC 139 S.Ct. 881(2019)) While that case was pending before the Supreme Court, a graphic designer brought an infringement claim in the United States District Court for the District of Massachusetts against a business whom she had designed a brochure for over a decade earlier. In Foss v. Marvic, Inc., the plaintiff alleged that the defendant, a former client, had wrongfully modified the brochure she designed resulting in substantial damages. In addition to the copyright infringement claim, plaintiff alleged tortious interference with advantageous business relations, conversion, unfair and deceptive business practices, breach of contract, and fraud. Throughout the proceedings, plaintiff appeared both pro se and with counsel, but when the defendant sent a discovery request for admissions pursuant to Rule 36(a) of the Federal Rules of Civil Procedure, plaintiff’s counsel failed to respond within the time prescribed, striking a fatal blow to plaintiff’s claims.


On appeal, plaintiff sought reversal of the lower court’s order dismissing the copyright infringement claim and order granting summary judgment for defendant, as well as “reconsideration” of the order deeming certain facts admitted due to the failure to respond to defendant’s request for admissions. In addition to misrepresenting the registration status of her copyright application, plaintiff offered no proof of the terms of the underlying contract which would support her claims in either the lower court or the First Circuit Court of Appeal. The First Circuit did not agree with plaintiff’s arguments: (1) that her copyright action should have been stayed pending her application for registration rather than dismissed; and (2) that her registration should be deemed effective as of a date prior to the order of dismissal. Finally, the First Circuit also found that the district court did not err by granting defendant’s motion for summary judgment where certain statements deemed admitted in the defendant’s request for admissions served to prohibit recovery on plaintiff’s claims. Accordingly, the First Circuit affirmed the decision of the lower court and awarded costs to the defendant.


Plaintiff's counsel before the district court withdrew from his representation following being suspended from the practice of law in Massachusetts for misconduct in other matters. Furthermore, plaintiff's other claims are dependent upon a contract that was executed more than a decade earlier and of which no writing exists. Despite this, plaintiff sought to hold the defendant responsible under terms which could not reasonably be proven after dragging out the prosecution of her claims. The record also stated plaintiff's limited role in creating the brochure merely involved "arranging" materials provided by the defendant. Does the record here support a determination that plaintiff's lawyers fulfilled their duties under Rule 3.1 of the Massachusetts Rules of Professional Conduct? More specifically, were plaintiff's claims supported by a basis in law and in fact or was she simply after undue compensation? Can the same also be said of her attorneys who likely predicted such an outcome absent some miracle? Or perhaps the attorneys approached their duty under Rule 2.1 to provide an "honest assessment" in a carefree manner?