In the heady days of Berne adherence in 1988, the air was full of anti-formality sentiment. Maybe, the sentiment went, U.S. law was finally moving toward the formality-free approach taken on the Continent. Maybe, we would at long last be able to hold our heads high whilst walking along the Seine to attend yet another profound WIPO symposium. Maybe, we could at long last engage in all that fancy-schmanzy natural rights theorizing so beloved by Europeans, without worrying that behind our backs we were being laughed at for our colonial attachment to formalities.
There was no basis for such optimism. The 1990 VARA has a numbering and marking requirement, a true non sequitur for a moral rights provision. In 1992, the Copyright Office and book publishers fought efforts to repeal Section 412 (which conditions an award of attorneys fees and statutory damages on a pre-infringement registration) as if their very lives were at stake. The 1998 DMCA's copyright management information provisions have resurrected mandatory notice provisions, but with a reverse twist: it is users who have to worry, not copyright owners.
Formalities have always been an important part of U.S. copyright law and seem destined to remain so. The policy debates on them are well-known, and I don't want to take sides. Instead, since they exist, I want to point out one consequence: the importance of having the right kind of registration for "United States" works as a jurisdictional prerequisite to the bringing of an infringement action, a requirement expressed in Section 411(a).
Contrary to Nimmer's blatant misreading of the statute (he asserts one need only have sent in the check, the deposit copy, and the completed application), one must have either the issued registration or a rejection in hand. Failure to do so results in the court not having subject matter jurisdiction and thus having to dismiss the matter (without prejudice).
Claims of infringement in derivative works pose special problems. There are two scenarios, but each share this common fact: a work has gone through a number of iterations, but there is only one registration and plaintiff seeks to use that one registration to satisfy Section 411(a).
In scenario one, the registration is for the first, original version. No subsequent registration has been made for later versions. I call this a "forward-looking" registration. In scenario two, the registration is for the most recent version. No registrations have been obtained for earlier versions. I call this a "backward-looking" registration.
While backward-looking registrations satisfy Section 411(a), Murray Hill Publications v. ABC Communications, Inc., 264 F.3d 622 (6th Cir. 2001); Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739 (2d Cir. 1998), forward-looking ones don't, Johnson v. Gordon, 2005 U.S. App. LEXIS 9902 (1st Cir. May 31, 2005); Well-Made Toy Mfg. Corp. v. Goffa, 354 F.3d 112 (2d Cir. 2003).
The reasoning behind the distinction is fairly straightforward: with backward-looking registrations, the material in which copyright is claimed has been examined by the Copyright Office and is on public file. With forward-looking registrations, the Copyright Office has not examined the claim and the material is not on public file.