The Supreme Court May Decide Whether Registration Is Required To File A Copyright Lawsuit

By Dave Rein

We at the Owners, Borrowers & Thieves 2.0 are big enough to admit to our mistakes when, after an exhaustive search, we can't find anyone else to blame.  Not finding anyone to blame other than the sheer height of the stack labeled:  "Interesting Things I May Never Have Time To Read", I'll have to confess that if you were interested in the post about the Dr. Jekyll and Mr. Hyde approach that the courts have taken on the issue of copyright registration, there is even more to the story. 

The issue of whether you need to register your copyright before filing a lawsuit may very well have floated up to the Supreme Court after all.  In March, the Supreme Court accepted certiorari in Reed Elsevier v. Muchnick which might resolve the copyright registration issue.  Then again, it might not.

Shourin Sen., who writes the Exclusive Rights blog, has an great post walking through the case.  For those who think these issues sound like a good substitute for a sleep aide, another commentator says oh contraire -- these issues are "sexy"!

I'm not ready to say that the issue is "sexy".  At the same time, while none of the briefs filed in the case will find their way into your local bookstore, they do make for an interesting read.  I was especially absorbed in the United States' brief filed three days ago which takes a nuanced approach to the issue.

For those who don't care to immerse themselves in reading the briefs, the take away is that even though the Petition for Certiorari focused on a couple of narrow issues, the Court ultimately asked the parties to brief a broader issue:  "Does 17 U.S.C. § 411(a) restrict the subject matter jurisdiction of the federal courts over copyright infringement actions?" 

So, although the Court could still avoid ruling on the issue directly, it is looking more and more hopeful that we will get that long-awaited guidance from the Supreme Court after all! 

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?