Thursday, October 04, 2007

Deficit Deposit Requirements and Subject Matter Jurisdiction

My criticism of Nimmer's wholly incorrect view that to satisfy the subject matter jurisdictional requirement of Section 411(a) have been discussed in this blog before and I won't bore readers with my reasoning again. Nimmer's erroneous view is that one need only submit an application, deposit and fee; one need not receive and actual certificate of registration or rejection. One reason for my disagreement is he plain words of the statute, but another is practical: what is the Copyright Office would reject, later, the application, because it learned that the deposit was not an actual copy of the work, but a reconstruction? This scenario has been played out in a number of circuit cases, most recently Tuesday by the First Circuit in Torres-Negron v. J&N Records, 2007 WL 2846117, which held that a reconstruction did not comply with Section 411(a) and therefore that the court lacked subject matter jurisdiction. Here is an edited version of the relevant discussion:

At the request of a friend who was looking for new material for his band to play, Fernando Torres-Negron wrote the music and lyrics to a song, Noche de Fiesta, in 1993. Torres gave his friend the piece of paper on which he had written the lyrics, along with a cassette tape containing a recording of Torres singing the song. The song eventually ended up on three CDs, distributed both in Puerto Rico and the continental United States. When Torres first learned of the distribution and sales of his song in 2001, he submitted an application for copyright registration with the Copyright Office, and filed this lawsuit for infringement. Although the case proceeded to trial and resulted in a jury verdict for Torres, the district court granted the defendants' motion for judgment as a matter of law.

There is no dispute about the district court's finding that Torres submitted a reconstruction of his original songs, created from his memory and without direct reference to his original works, to the Copyright Office. Because the Copyright Act requires that a “copy” be submitted along with an application for copyright registration, and not a reconstruction, Torres failed to submit a complete application for registration of his copyright. A complete application is a jurisdictional prerequisite to filing suit in federal court for copyright infringement. Therefore, we agree with the district court that it lacked jurisdiction over Torres' lawsuit. We also conclude that the district court did not err in denying defendants' motion for attorney's fees.

I.

Torres filed a copyright infringement action against numerous defendants, including J & N and other producers and distributors of each of the three records, in the District of Puerto Rico. At trial, the defendants moved for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50(a)(1) after the close of the plaintiff's case. The district court dismissed the claims against some defendants, but denied the motion as to J & N Records. At the close of all evidence, the remaining defendants renewed their motion, but the court reserved judgment and permitted the case to go to the jury. The jury returned a verdict in favor of Torres, finding that J & N had infringed his copyright on Noche de Fiesta.

Defendant J & N then filed a renewed motion for judgment as a matter of law, Fed.R.Civ.P. 50(b), on a number of grounds. J & N argued that the district court lacked subject matter jurisdiction for two independent reasons: (1) the copy of Noche de Fiesta submitted to the Copyright Office was an invalid reconstruction (rather than a “bona fide” copy); and (2) Torres' application indicated that his song was not a derivative work, whereas J & N argued that it was an unauthorized derivative of an earlier merengue song. J & N also argued that the case was barred by the statute of limitations, that there was insufficient evidence to support the jury's verdict, and that the damages were speculative and unjustified.

The district court held that “a copy that is simply created or reconstructed from memory without directly referring to the original, known as [a] ‘reconstruction,’ does not comply with the deposit requirements of the Copyright Act,” and found that “Torres' deposits constitute impermissible reconstructions.” Torres Negron v. Rivera, 433 F.Supp.2d 204, 213-14 (D.P.R.2006). Therefore, the court concluded that the copyright registration was invalid, and because “copyright registration is a jurisdictional prerequisite for maintaining a copyright infringement suit,” it granted J & N's motion for judgment as a matter of law.

The court alternatively found that the jury verdict could not stand because “(1) Noche de Fiesta is an unauthorized derivative work not entitled to copyright protection; (2) Torres granted [the producer] an implied license to exploit the song[ ] Noche de Fiesta ...; and (3) the amount of damages awarded by the jury is untenable due to insufficiency of the evidence.”

Torres appealed, seeking reinstatement of the jury verdict. J & N cross-appealed, challenging the district court's denial of its motion for attorney's fees and costs. We affirm the district court's judgment dismissing the infringement claims, on the basis of Torres' failure to satisfy the deposit copy requirement for copyright registration. We also affirm the district court's denial of attorney's fees.


II.

...
“[N]o 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.” 17 U.S.C. § 411(a); see also Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1160 (1st Cir.1994) (“[R]egistration of the copyright is a prerequisite to suit under the Copyright Act.” (citation omitted)). This requirement is often described as a jurisdictional one. See, e.g., Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 365 (5th Cir.2004) (“17 U.S.C. § 411(a) sets forth [a] jurisdictional prerequisite....”); Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115 (2d Cir.2003) (“Th[e] registration requirement is jurisdictional.”); Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283 (4th Cir.2003) (“Copyright registration is a jurisdictional prerequisite to bringing an action for infringement under the Copyright Act.”); M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 (11th Cir.1990) (“The registration requirement is a jurisdictional prerequisite to an infringement suit.”). In order to complete the registration process, and receive a certificate of copyright registration, a creator must submit to the Copyright Office “a complete copy or phonorecord” of the work for which he seeks registration, often referred to as the “deposit copy.” 17 U.S.C. § 408(b). The Copyright Act defines “copies” as “material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” Id. § 101

It is undisputed that the written lyrics and tape that Torres submitted as his deposit copy were not the originals that is, they were not the exact tape or piece of paper on which he first recorded the music or wrote the lyrics of the song. Indeed, the parties agree that Torres gave both the original lyrics and the first recording of the song to Cauelas. By the time he submitted his copyright registration application, he no longer had access to either the original writing of the lyrics or the tape recording of the song. Thus, in order to comply with the requirement that a “copy” of the song be submitted with the application, Torres reconstructed his original work from memory by singing the song, while clapping the rhythm, into a tape recorder. It was the reconstruction, made in 2001, that he submitted to the Copyright Office.

A. The Deposit Copy Requirement

The question before us is whether that reconstruction is a “copy” within the meaning of 17 U.S.C. § 408(b). The statutory definition of “copy” provides little guidance. It neither distinguishes between copies and reconstructions, nor specifies whether a copy must be made from an original. However, dictionary definitions highlight the difference between a “copy” and a “reconstruction.” Black's Law Dictionary defines a “copy” as an “imitation or reproduction of an original.” Black's Law Dictionary 360 (8th ed.2004). To “reconstruct” something is “to construct again; rebuild; make over,” or to “re-create in the mind from given or available information.” Random House Webster's Unabridged Dictionary 1612 (2d ed.1997). Given these definitions, a reconstruction is not a copy; a reconstruction is created without an original, whereas a copy is made from an original. Congress specified that a registration had to be accompanied by a “copy.” See Conn. Nat'l Bank v. Germain, 503 U.S. 249, 253-54 (1992) (“We have stated time and again that courts must presume that a legislature says in a statute what it means and means in a statute what it says there.”). Therefore, we agree with the district court that a reconstruction, created without access to or reliance on the original work, cannot constitute a “copy,” as that term is used in 17 U.S.C. § 408.

The only other circuit courts that have addressed this question have arrived at the same conclusion. In Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1212 (9th Cir.1998), the Ninth Circuit held that a “bona fide copy” is one that is “virtually identical to the original and ... produced by directly referring to the original.” Thus, reconstructions created from memory, without access to the original work, could not serve as valid copies for registration purposes. Id.
The Sixth Circuit adopted the same rule in Coles v. Wonder, 283 F.3d 798, 802 (6th Cir.2002). There, the plaintiff claimed that he had written the song “For Your Love” in 1982 and sued Stevie Wonder, alleging copyright infringement, after Wonder recorded and distributed a song of the same name in 1995. The plaintiff registered his song in 1990 and submitted a recording of the song, as his deposit copy, that had been recorded earlier that same year. He claimed that he no longer possessed an original (i.e., 1982) recording of the song. Wonder argued that the plaintiff's registration was invalid because the deposit copy was not a bona fide copy, but rather a recreation from memory. The Sixth Circuit agreed, following the reasoning of Kodadek, and concluded that the deposit copy would be valid only if it had been created from an original recording of the song. Id. at 802 (“[H]ad [the plaintiff] been able to establish that he made the 1990 recording after listening to an audio copy of his 1982 rendition of For Your Love, he could have met the deposit requirement and his copyright would be valid from the date listed on his application. Likewise, had he made his 1990 recording after reviewing a tear sheet or other written summary that dated from 1982, he could have satisfied the deposit requirement.”). The court also explained that a strict application of the word “copy” would serve to protect the rights of artists by encouraging prompt registration and preventing fraudulent claims filed after the commercial success of a work. Id.

Torres argues that Kodadek and Coles are distinguishable because each of those cases involved a dispute about who first authored the work and, therefore, who was the valid owner of the copyright. He further argues that the definition of “copy” adopted in those cases should, at most, be limited to cases involving disputes about authorship. Torres has cited no support for this argument. That is not surprising. It makes no sense to interpret the statutory requirement of a deposit copy differently depending on what factual issues are disputed in a given case. There is no valid reason, in our view, to assume that the legislature intended the word “copy” to be a chameleon, taking on different meanings depending on the context of the litigation.

21 comments:

J. Michael Monahan said...

The jurisdictional threshold of registration certainly can be perilous. But the "plain language of the statute" does support Nimmer's view. Specifically, the copyright law states:

(d) The effective date of a copyright registration is the day on which an application, deposit, and fee, which are later determined by the Register of Copyrights or by a court of competent jurisdiction to be acceptable for registration, have all been received in the Copyright Office.

17 U.S.C. § 410(d). To postpone a litigant's standing until he receives the certificate several months later would be inconsistent, especially since the 3-year limitations period (reducing the damage amount) would not toll. As a depositary registration (unlike substantive review involved in registering trademarks or obtaining patents), the completeness of the application is all that is necessary. Of course, an infringement plaintiff who files suit on an application that the Copyright Office later finds to be insufficient does present a jurisdictional problem – i.e., there is none unless the applicant also provided the Copyright Office with notice of the suit:

In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute an action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.

17 U.S.C. § 411(a). If the jurisdictional threshold hinged on receipt of the certificate, then this part of the statute would be unnecessary. Moreover, I submit that the jurisdictional question is not whether the Copyright Office "would have rejected the application" because that would convert every defense of fraud on the Copyright Office into a 12(b)1 issue that could be asserted at any time, even on appeal. Instead, the Copyright Office can affect jurisdiction either (a) by rejecting the application outright; or (b) by intervening in the suit in response to notice of the suit under 17 U.S.C. § 411(a). Otherwise, the court can review a challenge to a registration and might consequently reject its non-jurisdictional effect on the litigation (e.g., eliminate its prima facie value, perhaps deny statutory damages and attorneys' fees). For the court to do more than that, it would wander in to a pretty deep logic snafu in which it exercises subject matter jurisdiction to determine substantive issues that retroactively destroy that jurisidiction. Unlike diversity, which generally can be assessed separately from the merits of a claim, these attacks on a registration are typically inextricable from the guts of an infringement case.

In any event, the situation in Torres does not seem to fall in the registration gap. From the portions of the case that you present, the Copyright Office does not appear to have rejected Torres' application. If so, then he did hold a registration to satisfy the jurisdictional requirement, but that registration itself was flawed, either because it was for the wrong work (his later recreation and not the original work) or because the disjoint between the deposit and the facts set forth in the application were fraud on the Copyright Office. That is a defense against infringement and possibly a criminal violation, but it should not topple the jurisdictional requirement.

I am also puzzled by another part of the Torres opinion and your observations. Torres' deposit copy was improper. But the court suggests that Torres should have deposited the original tape and lyrics (which he did not possess). The facts, however, indicate that Torres should have deposited one of the CDs that defendant published, as that would be the "best edition" of the work. Had Torres submitted the application that the court and you contemplate, the Copyright Office might well have rejected it on its face for failure to provide a "best edition."

William Patry said...

Oy, Nimmer wouldn't know the plain language of a statute if it asked him on a date. The effective date of a registration is a totally different issue from Section 411(a). In any case, in Torres case, the point is that he never presented a correct deposit therefore there could be no registration or rejection. In effect, the court was saying start over.

Mac the Knife said...

Here are a few examples of why I think this court's decision is problematic:

(1) I write a poem, short (maybe 3-4 lines) but meeting the originality requirements of Feist, using pencil and paper, and send it off in the mail to a friend. Not 5 seconds after I drop the letter in the mailbox, I decide, "hmm, this might be worth something; let me register it with the U.S. Copyright Office." I happen to have a scrap of paper, an application for registration, an envelope, stamp, and a check for $45 in the glove compartment; I write the poem down again (it being short enough to remember), and without leaving the vicinity of the mailbox, send my registration materials in. Are you telling me that if I find an unauthorized copy in a famous book of poems somewhere that I can't sue for copyright infringement because I "reconstructed" the poem?

(2) The converse: I write a short poem, mail it off to the Copyright Office. Then I think it may be worth something, so I rewrite the poem on my scrap of paper, send it to a friend. If I find an unauthorized reproduction in a book of poems, I suppose I could sue for copyright infringement. But what then? The book publisher's defense is, well, it's only infringement if you reproduce the work in "copies," and I didn't make a "copy" of the work you registered with the copyright office, I made a "copy" of your "reconstruction" of the work.

(3) Better yet: I write two "copies" (as the court uses the word), send one of them in to be registered, and another one to a publisher; the book is published (under authorization) and becomes famous. Later, I find the same poem, allegedly written by another author, in another book, and bring a copyright infringement suit. The author doesn't remember ever reading my poem, but as it is so famous he could have seen it or heard it read somewhere (a la Three Boys v. Bolton). I can prove access, and substantial (maybe literal) similarity, but the problem is that the reproduction is not "in copies" but rather a mere "reconstruction" of the work. Do I get nothing?

The problem I have with the court's distinction between a copy and a reconstruction (which is not in the statute) is that it makes mincemeat of the distinction between a work and a material object in which a work is fixed (which is in the statute). The court's definition of "copy" doesn't pass the "come on now" test in any of my three examples above, and if it is to stand it is precisely because the court has turned "copy" into a "chameleon," changing meanings depending on the context of the litigation. In Coles and Vodadek, where authorship is at issue, the fact that the work sent into the copyright office was a reconstruction of a work, and in particular the time between the "original" and its reconstruction, may be relevant in getting past the presumption of validity of the facts in the copyright certificate. This is how I think courts should be handling reconstruction issues. Otherwise, the copy/reconstruction distinction comes off as anywhere from unfair at best to ludicrous at worst.

On the other hand, as a former copyright examiner, I agree with your take on Nimmer's reading of Section 411(a). Nimmer seems to base his argument on the assumption that, once you mail in your application, deposit, and fee, nothing can change the effective date of registration because the Office has only the option of registering the work or refusal to register. There is a third option--say the examiner sends a letter requesting more information (for example, "you name a corporation as the author of the work but check 'no' to the for-hire question."). The applicant has only a certain amount of time to respond. After this time, the application and deposit are returned, the fee is kept as an administrative expense, and it is as if the applicant had never sent in his/her materials.

Chris said...

This is an interesting chain of thought. So, effectively, if you don't retain a copy of your work, you can't sue somebody for infringement?

I recognize it's not quite that easy -- presumably if the infringement was of the reproduction right, the copyright holder could register using one of those copies. But, if the infringement is, say a translation or a significantly altered derivative work, the owner could be without a remedy.

J. Michael Monahan said...

But the Torres case would not have a different result under your take on the jurisdictional registration requirement.

Notwithstanding the deposit problem, Torres did obtain a copyright registration certificate. Indeed, the 1st Circuit opinion notes that least some of the registrations issued before he filed suit.

"Torres learned of the existence of these three records in 2001. At that point, he began taking steps to protect his rights to Noche de Fiesta.He submitted an application for registration of copyright to the Copyright Office, and received a certificate of copyright on January 31, 2002."

2007 WL 2846117, at *2. This is not entirely clear, though, because the district court states that "Torres later received a copyright certificate dated January 25, 2006." 433 F.Supp.2d 204, 210.

Either way, the Copyright Office did not reject Torres' application, even though that application was invalid as the court found.

Assuming the worst timeline (i.e., no registration until January 2006), the Torres case does not demonstrate the "practical reason" behind your disagreement with Nimmer. Had Torres waited until he received the certificate, his registration would enjoy no greater validity (because of the improper deposit).

Thus, even if the court properly ruled that Torres must "start over," that ruling would be no different under either Nimmer's or your interpretation of when the requirements of 411(a) are satisfied.

J. Michael Monahan said...

Mac said:

"There is a third option--say the examiner sends a letter requesting more information (for example, "you name a corporation as the author of the work but check 'no' to the for-hire question."). The applicant has only a certain amount of time to respond. After this time, the application and deposit are returned, the fee is kept as an administrative expense, and it is as if the applicant had never sent in his/her materials."

Even this option works under Nimmer's view (though badly for the plaintiff). If the application is revised, then the effective date is adjusted to the revision date (i.e., when the Office received a complete application, deposit and fee). If that date is after suit is filed, no jurisdiction under 411(a). Conversely, if the plaintiff lets the application lapse, then he never satisfied 411(a) and, again, no jurisdiction.

William Patry said...

Well, one difference in the result is this. With an invalid registration, there can be no subject matter jurisdiuction, whereas with a rejected one there is. With an invalid registration there can be no statutory damages or attorneys fees, whereas for a rejected application there can be if the court finds the work protected. The need to present a correctr deposit to the Office serves a number of purposes, including giving the Office the chance to accurately examine and to create an accurate public record. The danger for courts with reconstructions is obvious too; after the fact efforts to distort the substantial similarity analysis.

josh wattles said...

If the "reconstruction" filed as a copy is in fact a copy of the work made by the author it makes no difference if it is the original copy or the twentieth xerox of that copy (assuming no degradation in quality of any significance). This court offers a silly rule that if the author/artist parts with the one and only original copy in which the work was first fixed (such as a letter)he or she can never register for copyright and never protect that copyright - - although he or she would remain the copyright owner of the work embodied in the original.

You were around for this 1976 law, Bill. Is that what everyone had in mind as they sought to eliminate the abuses and forfeitures from technical errors in publication and registration? Is the "need to present a correct copy" to the Copyright Office that particular? Not if its a unique work of visual art for which they have special rules; not for motion pictures; not for architectural works (let's be sure to deposit the whole structure.........). The registration is a presumption of validity. The presumption can be contested by walking in to court with the original!

Crosbie Fitch said...

The thing is, by the definition of 'copy', all copies are strictly speaking derivatives.

It's just that a copy these days is not only a good replica, but indistinguishable from its parent. In the digital domain they are mathematically congruent. Only the law insists that the lineage, even of binary digits, must be observed to determine whether a copy has occurred - even for indistinguishable works.

And so it goes, to obtain copyright's protection, one must submit an ancestor of a published work. Even a sibling is probably insufficient.

Unsurprisingly, copying is not considered to occur back up the lineage.

However, the moment you slip a foot in the door of verisimilitude for the purposes of establishing copyright infringement you have left the realm of copying and entered the realm of 'expression patent'.

That would probably be a very useful demarcation to make between intellectual property rights and commercial reproduction monopolies.

Violation of privacy requires evidence of copying (as per copyright).

Infringement of an expression patent requires a subjective judgement as to similarity. The owner is of course first to file.

At least then we can distinguish between the natural rights of IP and the unnatural privilege of patent.

William Patry said...

Hi Josh, just back from a grueling delayed flight from SFO to JFK; sorry for not responding sooner. For me the problem is, that he created the copy from his memory and without direct reference to his original works. If there was no version of the original work -- regardless of whether it is a tape of the song song by someone else -- then one does confront the problem that his memory is not only deficient, but deficient in a way that will create similarities that didn't exist. That may be unfortunate but as plaintiff he had the burden of proving what his work actually was.
I think this is quite different from a situation where there in no question about the content of the work: defendant has the only copy. In Salinger, that was the case and Salinger ended up using defendant's copy for the registration. In the case of visual work, you don't deposit the actual painting anyway, only a photo and I assume most artists do make photos of their works.

josh wattles said...

There are parts of the copyright law designed to serve the particular needs of users (DMCA/ISPs)(restaurants with background music)(teachers and their classrooms) and there are parts of the copyright law - - one would hope most of the copyright law but that's not true - - designed to accommodate artists and authors. The relaxation of deposit requirements and the relaxation of formalities in the 1976 Act were such.

You say, Bill, your problem is that "he created the copy from his memory and without direct reference to his original works..." But as intellectual property, and particularly as a performing art extension of intellectual property in the form of a musical work, the original is in the artist's mind. The fixation is just a transitory version and frequently not the "best" version when registered. That's a fact of the music world pre-dating Mozart. The court should have given deference to the artist's reality and not to some sort of "gotcha" legal gamesmanship which leaves the artist powerless as a matter of law.

William Patry said...

Hi Josh, did you just return from a trip to France by chance? (Nice rhyme, eh?). Fixation is of course a requirement in the U.S. and for more than a transitory period. I think the problem is really one of proof and not an attempt to keep artists barefoot and in the kitchen making croissants: there was no doubt plaintiff created the work, but originally in what form?

joshua wattles said...

Bien sur fixation is required aux Etats-Unis! This guy did fix the work but is still sans chance! Is this trickster mentality to application of our copyright laws some kind Brer Rabbit artifact from turn of the former century law? He fixed it when he should have and then copied it from memory when he needed it later for some officious ministerial thing. I think I'm being the practical American here. Proof is up to the jury. This guy can't even get into the courthouse.

William Patry said...

Quel dommage Monsieur Lop:

http://www.petplanet.co.uk/petplanet/breeds/Rabbit_-_French_Lop.htm

FlaIPLawyer said...

quote: This is an interesting chain of thought. So, effectively, if you don't retain a copy of your work, you can't sue somebody for infringement?

That is exactly what it means. And I can understand why courts got there in, for example, the Beavis and Butthead and Star Wars cases, though reading those facts it seems fairly transparent that those were pretty bogus plaintiffs who probably didn't come up with anything original that was infringed to begin with.

Where I have a problem with this, though, is in types of works where there are many layers of derivatives -- software, websites, etc. And the authors don't necessarily know to preserve each and every version. Courts seem to be saying if you look at the derivative and strip it back down to the original, too bad, that's an impermissible reconstruction. Why not just register the derivative? Because the derivative was a work made for hire and the original was done by an independent contractor who was suing the former employer. The derivative used, by the way, was made within a few months of the original, by the same individual who was the original author, and the code and a contemporaneous memo made clear what changes were made from the first version to the second.

In July 06 the Copyright Office changed Circular 61 to deal with this issue and allow for a special examination of a later version of software, but the older version of the Circular didn't have any such provision and it's nowhere in the rules. Plaintiff's registration was mailed two weeks before the new circular was posted. If Plaintiff had registered the derivative, he would have lost on the work for hire issue.

Long story short: no way to obtain subject matter jurisdiction for that work. Which just doesn't seem like the right result. The Court should have subject matter jurisdiction to evaluate the extent of the work and the claimed authorship on the merits -- admittedly with a skeptical eye in this kind of situation -- rather than just saying too bad, you're done.

FlaIPLawyer said...

And to go back to the original question, if there was a rejection because it was a reconstruction, at least there would be subject matter jurisdiction to sort out the mess. That is why the issue of reconstruction should be dealt with as an issue of the validity of the claimed copyright itself, not as an issue of whether the Court has subject matter jurisdiction.

William Patry said...

I agree a rejection is the most efficient approach, but with a public record of the reasons.

Anonymous said...

I still don't understand why a problem with the deposit material effects subject matter jurisdiction. Isn't the distinction between reconstruction and copy one of fact? Let's alter the Torres situation and say that he made the deposit materials within a day (or even minutes) before giving up his originals. In that case, his memory might serve just fine to faithfully represent the originals. What if the deposit was provided prior to alleged infringement? There is no evidence of fraud, so why should this question ("copy" v. "reconstruction") not go to a jury? Why shouldn't we treat this defect like the multitude of other defects in registration that do not effect jurisdiction?

William Patry said...

The technical answer to why it is a subject matter jurisdiction issue is that in order for the court to have subject matter jurisdiction over any claim of infringement, there must be a valid registration. There may be a factual inquiry into whether there is a valid registration, but that inquiry is incident to any examination by a court of its jurisdiction, including those for other things on a certificate like authorship status.

Court have though let the question of whether the deposit was genuine go to a jury, which puts the jurisdictional horse before the court since juries can't decide jurisdiction.

Anonymous said...

One of my concerns about the Torres Negron case is the issue of why defendants were not ordered to produce the original to Torres during discovery. That way, Torres could have used the original to register if there were a concern that it was somehow different from the infringing work. In civil rights litigation, the plaintiff frequently does not know who the defendants, say police officers, even are. The result is not to dismiss the case for lack of jurisdiction, but an order to the police department to identify what officers were on duty in that area and who intervened with the plaintiff.

Moreover, am I correct to understand that when a composer's heirs are suing for the infringement of the decedent's work, they have to have the original rather than a recording. Would the same rule apply to works created before 1978?

FlaIPLawyer said...

The realist answer is that treating it as an issue of subject matter jurisdiction lets the judge throw it out, whereas treating it as an issue of the validity of copyright itself has the potential to drag on more.

I disagree that it makes sense to treat it as subject matter jurisdiction. If there is a registration, and the registration isn't just clearly on its face fraudulent, then the factfinder should determine what the infringed work is, not boot the whole case based upon a trip up of the registration requirement. This is particularly maddening when there is little doubt that the plaintiff wrote something, but there is some doubt about the scope of the infringeed work versus other versions of the work. This approach throws out the baby with the bath water.