                                                                                    [PUBLISH]

                    IN THE UNITED STATES COURT OF APPEALS
                           FOR THE ELEVENTH CIRCUIT
                            __________________________    FILED
                                                                        U.S. COURT OF APPEALS
                                      No. 99-13515                        ELEVENTH CIRCUIT
                                                                              JULY 03 2000
                               __________________________
                                                                           THOMAS K. KAHN
                                                                                CLERK
                            D.C. Docket No. 95-00147-CV-JOF-1


GAIL BREWER-GIORGIO, ARCTIC
CORPORATION, a Georgia Corporation,

                                                                          Plaintiffs-Appellants,

         versus

PRODUCERS VIDEO, INC.,
SYD VINNEDGE, et al.,

                                                                         Defendants-Appellees.

                               __________________________

                        Appeal from the United States District Court
                           for the Northern District of Georgia
                             __________________________
                                      (July 3, 2000)

Before BIRCH, BARKETT and ALARCON*, Circuit Judges.

BARKETT, Circuit Judge:




  *
      Honorable Arthur L. Alarcon, U.S. Circuit Judge for the Ninth Circuit, sitting by designation.
      Gail Brewer-Giorgio and Arctic Corporation appeal the district court’s

denial of their motion, filed pursuant to Federal Rule of Civil Procedure 15, to

amend their complaint. We affirm.

      Gail Brewer-Giorgio alleges that she is the nation’s foremost expert on the

theory that Elvis Presley is still alive. In 1988, she published her first book titled

The Most Incredible Elvis Presley Story Ever Told, which was later renamed Is

Elvis Alive? She published the sequel in 1990, which was titled The Elvis Files.

Both books were copyrighted and the copyrights were assigned to Arctic

Corporation (“Arctic”), Brewer-Giorgio’s privately-held corporation. In 1991,

Brewer-Giorgio filed a copyright application for an unpublished third book about

Elvis, titled Operation Fountain Pen.

      On March 19, 1990, Arctic contracted with Producer’s Video, Inc. (“PVI”)

to produce a home video based on The Elvis Files, which was successfully

completed. Thereafter, in November 1990, Arctic entered into a second agreement

with PVI in which Arctic granted to PVI the “sole, exclusive and perpetual right”

to use “any information in Arctic’s or Brewer-Giorgio’s possession” relating to

Elvis in order to produce a television special “dealing with Elvis from his death to

the present time, and the exploitation and publication” of the special. The

agreement further provided that PVI could “produce any additional production


                                           2
relating to the same subject matter” only after reaching a further agreement with

Arctic.

      In 1991, PVI produced and broadcast nationwide a television special titled

“The Elvis Files.” The program was broadcast in the Atlanta, Georgia area by

WGNX, Inc. Brewer-Giorgio wrote the script for the special and appeared on the

show as a live guest, in a taped interview, and in a dramatized “re-enactment” of a

telephone call she allegedly received from Elvis after his death. All of Brewer-

Giorgio’s rights in the script and her appearances on the program had been

transferred to PVI as part of the second agreement. Because “The Elvis Files” was

extremely successful, PVI, in conjunction with All American Television, Inc. (“All

American”), decided to produce a sequel titled “The Elvis Conspiracy” (“the

sequel”). They approached Brewer-Giorgio, who spent the months preceding the

broadcast assisting in developing the sequel’s script.

      Before the sequel was broadcast, a dispute arose over payments due to

Brewer-Giorgio and Arctic from the first television special, “The Elvis Files.”

Because the parties were unable to settle their dispute, Brewer-Giorgio refused to

sign the proffered written agreement regarding her participation in the sequel and

informed PVI and All American that she would not authorize the broadcast of it.

Notwithstanding Brewer-Giorgio’s warnings, PVI and All American broadcast the


                                          3
show nationally on January 22, 1992. WGNX again aired the show in the Atlanta

area. During the show, Brewer-Giorgio’s name was mentioned and a portion of

the dramatic re-enactment of the phone call from Elvis was replayed from the first

show. At the conclusion of the show, host Bill Bixby stated that he believed that

Elvis had died on August 16, 1977.

       On January 20, 1995, two days before the three-year statute of limitations on

copyright infringements had run on the sequel broadcast, Brewer-Giorgio and

Arctic filed this suit for copyright infringement and various state law torts,

claiming that she was injured by the broadcast of the sequel because it suggested

that she had approved the content of the show, part of which denied the

“plausibility” of her theory that Elvis is alive. Brewer-Giorgio named a number of

defendants, many of whom dropped out of the suit over the course of the

proceedings. Four defendants remain: All American, WGNX, Micki Guzman,1

and Syd Vinnedge.2 The original complaint included twelve counts, half of which

were dismissed by consent of the parties and the district court. The remaining

counts allege 1) United States copyright infringement, 2) foreign copyright



   1
     Brewer-Giorgio alleges that Micki Guzman, who is a major stockholder of PVI, had a major
role in the production and distribution of the sequel.
   2
     Brewer-Giorgio alleges that Syd Vinnedge, who is an officer of All American, permitted the
nationwide broadcast of the sequel.

                                              4
infringement, 3) invasion of privacy, 4) misappropriation of right of publicity, 5)

constructive trust, and 6) fraudulent conveyance.

      The individual defendants, Micki Guzman and Syd Vinnedge, filed motions

to dismiss for lack of personal jurisdiction, which were denied on March 28, 1996.

The court’s scheduling order as to All American and WGNX, which answered the

complaint, was filed on March 10, 1995, and stated that the time for filing

amendments to the complaint would expire on June 9, 1995. Discovery ended on

November 15, 1995. On December 15, 1995, All American, WGNX, Guzman, and

Vinnedge moved for summary judgment. On February 6, 1996, Brewer-Giorgio

filed a motion to amend the complaint in order to include additional allegations of

copyright infringement. While the original complaint had alleged that the

broadcast of the second Elvis special infringed the copyrights in her books,

Brewer-Giorgio sought through amendment to add allegations that the broadcast

had also infringed copyrights in a draft script that she had been working on and in

the final script of the show.

      Brewer-Giorgio asserted that she was entitled as a matter of right to amend

under Federal Rule of Civil Procedure 15(a) as to the individual defendants,

Guzman and Vinnedge, who had not yet filed an answer to the complaint and

sought leave of the court to likewise amend as to All American and WGNX.


                                          5
Although the district court agreed that she had a right to amend as to Guzman and

Vinnedge under Rule 15(a), the court refused to allow the amendment because it

found that the new claims were barred by the statute of limitations. As to WGNX

and All American, both of whom had answered the complaint, the district court

refused to allow the amendment, finding that such an amendment was filed after

undue delay, would cause undue prejudice to the defendants, and was futile

because the statute of limitations had run. The court also granted the motions of

WGNX, All American, Vinnedge, and Guzman for summary judgment as to the

copyright infringement claims and dismissed the state law claims without

prejudice. The fraudulent conveyance claim was dismissed with consent of the

parties. Brewer-Giorgio and Arctic appeal only the district court’s denial of their

motion to amend the complaint. We review the district court’s refusal to allow the

proposed amendment for abuse of discretion. Sosa v. Airprint Sys., Inc., 133 F.3d

1417, 1418 (11th Cir. 1998).

                                   DISCUSSION

      Where a plaintiff seeks to amend its complaint after the defendant has

answered, it may do so “only by leave of court or by written consent of the adverse

party.” Fed. R. Civ. P. 15(a). Although “[l]eave to amend shall be freely given

when justice so requires,” a motion to amend may be denied on “numerous


                                          6
grounds” such as “undue delay, undue prejudice to the defendants, and futility of

the amendment.” Abramson v. Gonzalez, 949 F.2d 1567, 1581 (11th Cir. 1992).

As to the responding defendants in this case, All American and WGNX, we find no

abuse of discretion in the district court’s refusal to allow Brewer-Giorgio to amend

her complaint. She moved to amend over a year after she filed her original

complaint and eight months after the time for filing amendments provided by the

scheduling order had passed, and she has failed to demonstrate good cause for that

delay. The district court’s determination that her delay was undue was not an

abuse of discretion, and we thus affirm its decision as to All American and

WGNX. See Sosa, 133 F.3d at 1419 (finding no abuse of discretion where plaintiff

had filed amendment after time provided by court’s scheduling order and had

failed to demonstrate good cause for the delay).

      Guzman and Vinnedge, however, had not yet answered the complaint at the

time Brewer-Giorgio moved to amend her complaint. Under Federal Rule of Civil

Procedure 15(a), a party has the right to amend a pleading without leave of the

court so long as they do so before a responsive pleading is served. For the

purposes of this Rule, the term “responsive pleading” does not include such filings

as a motion to dismiss or a motion for summary judgment. Burns v. Lawther, 53

F.3d 1237, 1241 (11th Cir. 1995). The court, however, nonetheless denied


                                         7
Brewer-Giorgio’s motion to amend as to Guzman and Vinnedge on the ground that

the amendment presented a new claim that was barred by the statute of limitations

and, therefore, permitting the amendment would be a futile act.3 Brewer-Giorgio

argued that the amendment did not constitute a new claim, but rather related back

to her original complaint,4 and because the original claim was filed before the

expiration of the statute of limitations, the amended claim would not be barred.

The district court rejected this argument, concluding that the claims Brewer-

Giorgio sought to add did not relate back to the filing of the original complaint

because an “infringement of a copyright on a script is an entirely new and different

claim than an infringement of a copyright on a book, and it does not arise out of the

same conduct, transaction, or occurrence.”

        We review the district court’s application of Rule 15(c) for an abuse of

discretion. Powers v. Graff, 148 F.3d 1223, 1226 (11th Cir. 1998). We find no

error in the district court’s decision that an amendment would have been futile



   3
     The district court also denied the motion to amend as to the non-answering defendants based
on undue delay and undue prejudice, in addition to futility. Such a decision is reviewed subject to
an abuse of discretion standard. Because we find that the motion to amend was properly denied as
futile, we do not address whether Brewer-Giorgio’s conduct constituted undue delay or whether
allowing the amendment would have unduly prejudiced the answering defendants.
  4
    Under Federal Rule of Civil Procedure 15(c), “[a]n amendment of a pleading relates back to the
date of the original pleading when . . . the claim . . . asserted in the amended pleading arose out of
the conduct, transaction, or occurrence set forth or attempted to be set forth in the original pleading.”

                                                   8
because Brewer-Giorgio’s claim would be barred regardless of whether it related

back or not.

       If the claims in the amendment do not relate back to the original claims, then

the new claims are indeed time-barred. The broadcast of the offending Elvis

special aired on January 22, 1992. Thus, the three-year copyright statute of

limitation ran on January 22, 1995. The amendment was filed on February 6,

1996, over one year after the limitations period had run.

       Even if the claims do relate back, we find no abuse of discretion. If the new

claims relate back to the original claims, we must consider the new claims as

having been filed at the time of the original claims. NLRB v. Atlanta Metallic

Casket Co., 205 F.2d 931, 937 (5th Cir. 1953).5 In this case, had Brewer-Giorgio

filed a claim for the infringement of the scripts on January 20, 1995, when she

originally brought this lawsuit, the district court would not have had jurisdiction

because before a plaintiff may institute a copyright infringement suit, she must

register the copyright. 17 U.S.C. § 411 (“no action for infringement of the

copyright in any work shall be instituted until registration of the copyright claim

has been made”). At the time the original suit was filed, Brewer-Giorgio had not



   5
     This Court is bound by decisions of the Fifth Circuit that were handed down on or before
September 30, 1981. Bonner v. Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981) (en banc).

                                             9
registered copyrights in the scripts at issue. The statute of limitations expired two

days later, and the record is clear that, as of the expiration of the statute of

limitations, Brewer-Giorgio still had not registered her copyrights in the scripts, as

is required for a court to have jurisdiction. It is well settled in this Court that “[t]he

registration requirement is a jurisdictional prerequisite to an infringement suit.”

M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 (11th Cir.

1990). Although a copyright need not have been registered in all cases before it

may be infringed, the owner of that copyright must register the copyright before a

federal court can entertain an infringement suit.6 Thus, even if the new claims

relate back to the original claims, they may not be added because the district court

did not have jurisdiction to hear the new claims at the time the original claims were

filed.7 See Reynolds v. United States, 748 F.2d 291, 293 (5th Cir. 1984) (holding

  6
   Brewer-Giorgio argues that she filed applications to register her copyrights in the scripts at issue
on January 26, 1996, before she filed her amendment to the complaint. Thus, she argues that she
met the jurisdictional requirement of 17 U.S.C. § 411. Her argument, however, is misplaced.
Although this argument would have viability had the statute of limitations not expired, as we noted
above, the statute of limitations on copyrights infringements stemming from the broadcast had
expired a year earlier.
      7
     During oral argument, counsel for Brewer-Giorgio, relying on Goldlawr, Inc. v. Heiman, 369
U.S. 463 (1962), suggested that the filing of a lawsuit tolls a statute of limitations even where the
court lacks jurisdiction to hear that suit. We find Goldlawr inapplicable to the instant situation.
Goldlawr concerned a suit that was filed within the statute of limitations, albeit in an improper
venue. The case was thereafter transferred from the court in which it had been filed to a court of
proper venue, in accordance with 28 U.S.C. § 1406(a). The Court reasoned that Congress clearly
intended by enacting Section 1406(a) that a case filed in an improper venue should be transferred
rather than dismissed, because dismissal would have precluded re-filing when the statute of
limitations had expired. Id. at 467. In this case, the claim pertaining to the scripts had not been filed

                                                   10
that it is proper to disallow an amendment which was filed “on a date on which the

court lacked jurisdiction” and “related back to a date on which the court also

lacked jurisdiction”).

       Because Brewer-Giorgio did not meet the jurisdictional prerequisite of

registering her copyright in the scripts before the expiration of the statute of

limitations, she may not now add those claims because they would be barred either

by the jurisdictional requirements of 17 U.S.C. § 411 or by the statute of

limitations in 17 U.S.C. § 507(b).

AFFIRMED.




within the statute of limitations period in any court. Thus, Goldlawr is not applicable where the
plaintiff did not timely misfile in an improper venue but failed to meet statutory jurisdictional
prerequisites. Unlike in the case of venue, Congress has not enacted a statute allowing courts to
compensate for such a failure.

                                               11
