More Chaos On Whether Registration Is Required To File A Copyright Infringement Case

By Dave Rein

Forum shopping in not just for patent and securities attorneys although their shopping habits have a greater tendency to get picked up by the Wall Street Journal law bloggers.  Even in the copyright world, crossing state lines to a different circuit or district court can mean the difference between winning and losing.

The Copyright Act requires authors to register their works with the Copyright office before filing a lawsuit.  Does this requirement mean that the copyright owner has to wait until the Copyright Office actually issues a registration or is it enough that the owner applied for the copyright registration?  Even though the language of 17 U.S.C. § 411(a) uses the same words in New York as it does in Texas, the courts are horribly split on this issue.  It is not getting any better.

The recent district court decision in Minnesota, Tri-Marketing, Inc. v. Mainstream Marketing Services, Inc., highlights that the split is not just among the circuit courts.  With the new decision, the Eighth Circuit now has:

  1. two Minnesota district courts reaching opposite conclusions;
  2. dicta from an Eighth Circuit court decision suggesting one conclusion; and
  3. a district court in Nebraska saying that suggestion is a bunch of baloney. 

Don't blame this mess on the drinking water in the Eighth Circuit.  The D.C. courts have reached opposite conclusions as have district courts in New York and elsewhere. It appears that the district courts are running in random directions in those circuits which have not weighed in yet. The recent decision from Minnesota just reminded me how much we need the circuit courts to take these cases.  It may take the Supreme Court to straighten this out, but it will take more circuit courts accusing the others of an inability to read English to get the Supreme Court's attention.

Is this stuff that only a law professor could love?  Hardly.  Consider the example of an architect who learns that plans which show promise of launching his career suddenly appeared on the Internet or a photographer who discovers her images will be used in a political campaign without her permission and against her own wishes.  The common thread in both is that each will want an immediate injunction to shut down the infringer.  

In a circuit or district court that requires registration first, the court won't issue an injunction based on copyright infringement -- at least not until you file for an expedited registration to try and jump in front of the incredible backlog at the Copyright Office.   Yet, cross a state line and the outcome may be entirely different.  The court may or may not grant the injunction, but at least the court will listen to you.  All this leads to forum shopping and races to the courthouse -- which just increases the cost of litigation that is already too expensive for many.

The American Bar Association has been studying the issue and may try to get Congress to clarify the law rather than waiting for the process to slowly play its way through the courts.  Then again, it may not.  What do you think?  Is this a "who cares" issue?  If it is worth our attention, what is the solution?

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Gary Pierson - June 7, 2009 10:06 PM

Definitely a big issue. Hard to give a client the advice they need in the kinds of situations you describe right now. Should they pay for an expedited registration or not? Unless you know which judge you are going to draw, and that judge happens to have expressed an opinion, in many places it seems like a "coin flip" right now.

Robin Schneider - March 19, 2010 1:05 PM

Interesting... in one example above (the architect) its possible he wouldn't know that his plans had been "stolen" and published on the Internet for years. And then he CAN'T register his copyright within 3 months of publication. Does that mean the architect cannot get statutory damages and attys fees? This is obviously a separate question from whether or not the architect can sue...

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