tag:blogger.com,1999:blog-12505562.post112285631411694561..comments2024-03-15T11:42:21.265-04:00Comments on The Patry Copyright Blog: Registration IssuesWilliam Patryhttp://www.blogger.com/profile/12987498082479617363noreply@blogger.comBlogger11125tag:blogger.com,1999:blog-12505562.post-1122945787097735292005-08-01T21:23:00.000-04:002005-08-01T21:23:00.000-04:00Note: I revised the original posting slightly to i...Note: I revised the original posting slightly to include a case I had meant to mention that explains one consequence of failure to comply with 411(a).William Patryhttps://www.blogger.com/profile/12987498082479617363noreply@blogger.comtag:blogger.com,1999:blog-12505562.post-1122945261935983292005-08-01T21:14:00.000-04:002005-08-01T21:14:00.000-04:00Tom:Maybe I was imprecise. If there has been a reg...Tom:<BR/>Maybe I was imprecise. If there has been a regsitration three months and one day after publication and someone infringed within that period there is no statutory damages as to that infringer. But you can get them in the future against others who subsequently infringe.William Patryhttps://www.blogger.com/profile/12987498082479617363noreply@blogger.comtag:blogger.com,1999:blog-12505562.post-1122923535157432302005-08-01T15:12:00.000-04:002005-08-01T15:12:00.000-04:00Professor:I guess I am incorrect. I thought that ...Professor:<BR/><BR/>I guess I am incorrect. I thought that as long as the infringement was post registration, statutory damages were available. The three month clause of § 412(2), I read as a safe harbor, meaning that within three months of publication, one can get statutory damages even if the effective date of registration is after infringement occurs.<BR/><BR/>Please elucidate. Thanks again.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-12505562.post-1122919178327759082005-08-01T13:59:00.000-04:002005-08-01T13:59:00.000-04:00On Tom's question about statutory damages where th...On Tom's question about statutory damages where the application is filed a day after 3 months, my view is that they are not available, but not because of anything the Office did or didn't do, but because of the applicant's delay. The fact that the application is rejected doesn't change that, so I don't think there is an asburdity in the sense he is referring to.<BR/><BR/>In Tomas's hypo, the Office decides registrability, but not copyrightability; that issue is up to the Courts. So in his pending case, the Court is free to reexamine its position but since it is not bound by the Office's view that fact that the Office has a different view is not dispositive. In my experience, Courts will give "deference" to the Office's determinations only when they agree with that determination. Otherwise they point out that they are the final arbiters.William Patryhttps://www.blogger.com/profile/12987498082479617363noreply@blogger.comtag:blogger.com,1999:blog-12505562.post-1122917720469332522005-08-01T13:35:00.000-04:002005-08-01T13:35:00.000-04:00Tomas--I think you're hypos a good one, but maybe ...Tomas--<BR/><BR/>I think you're hypos a good one, but maybe for a different reason. The Court and not the Office is the final authority on registrability. Thus, once the Court rules, the Office's opinion doesn't really matter. <BR/><BR/>That being said, your hypo does point out that the Office is allowed to litigate the non-registerability of a work if it chooses to do so. <BR/><BR/>My point the whole time is that the interpretation of that provision is inconsistent with the Copyright Act as a whole, namely the effective date. I think you've shown that, at least with respect to the Office intervening, it's perfectly consistent. <BR/><BR/>I am vanquished.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-12505562.post-1122915901224032952005-08-01T13:05:00.000-04:002005-08-01T13:05:00.000-04:00Thanks for the cites. Long ago I thought about th...Thanks for the cites. <BR/><BR/>Long ago I thought about this issue (for a case) and recall this hypo which suggests that the literal approach is not as absurd as Tom suggests it is. (I think I made this hypo up, but I may have read it somewhere).<BR/><BR/>Imagine a scenario where a registration application is pending and the case nevertheless proceeds under the "application" approach. Unless the applicant has asked for expedited processing, it might take 6 months or longer for an answer from the Copyright Office.<BR/><BR/>Now imagine that the case passes through motions for summary judgment on issues related to copyrightability, and the Court finds that the copyright is valid.<BR/><BR/>Unbeknown to the parties and the Court, however, the Copyright Office was on the verge of denying the application for non-copyrightability. And when the registration application comes back, the action shows it was denied.<BR/><BR/>So you have a situtation where the Court has in effect ruled "against" the Office without the Office's statutorily granted opportunity to litigate the issue of validity/registrability. If anything, that would seem absurd.<BR/><BR/>I am not sure how often this would happen, but if I were the defendant's lawyer, and the judge allowed the case to proceed on the "application" alone, I would move as quickly as possible for MSJ, primarily because without the certificate of registration in hand the plaintiff would not be entitled to all those presumptions. <BR/><BR/>Also, I suppose the Court could reconsider it position on the MSJ after receiving notice that the application was rejected. But this seems a bit out of the way.<BR/><BR/>Regards,<BR/><BR/>TomasAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-12505562.post-1122913601248903912005-08-01T12:26:00.000-04:002005-08-01T12:26:00.000-04:00Thanks for the great discussion, as always Profess...Thanks for the great discussion, as always Professor. <BR/><BR/><I> There is no effective date until the Office decides to "pass" (as they call it) the application.</I><BR/><BR/>I will research this, but it's possible you know already. Let's assume that Author applies to register her copyright three months and one day after publication. One day after the office receives the application, Infringer begins infringing. <BR/><BR/>The Office rejects Author's Application, but Author has complied with the statutory formalities. <BR/><BR/>Author can bring suit now, but must serve the Office. Can Author get statutory damages if her suit is successful?<BR/><BR/>If not, then the acceptance or rejection of the Application does confirm substantive remedies and (rightly or wrongly) means something. If she can, I think we're back to the absurd result I mentioned before. <BR/><BR/>----research occurs---<BR/><BR/>Looking at §410(d), it looks to me like the answer is statutory damages are available. If a Court disagree with the Office about the registerability of a work, the effective date will be the date the materials were received-- thus infringement occured after the effective date of registration and statutory damages are available.<BR/><BR/>My over-arching point is that, if a work is registerable, the effective date will be the filing date, rejected by the office or not. <BR/><BR/>Please tell me if I am missing something. Thanks.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-12505562.post-1122911243644372322005-08-01T11:47:00.000-04:002005-08-01T11:47:00.000-04:00Tom:I think you are assuming into the analysis som...Tom:<BR/><BR/>I think you are assuming into the analysis something that only occurs at the end. There is no effective date until the Office decides to "pass" (as they call it) the application. If the Office rejects the application there is no effective date. And, the whole purpose for having an Examining Division is to evaluate applications. <BR/><BR/>Congress could of course have said that effective date is the date the application is accepted, and there would be no analytical gap, but didn't because it is impossible to achieve same day processing. About 600,000 applications are received per year,and with less than 100 examiners, there will be back log. <BR/><BR/>I don't view the inherent back log as a flaw but as an inevitable consequence of not wanting to have the expense of 1,000 examiners.William Patryhttps://www.blogger.com/profile/12987498082479617363noreply@blogger.comtag:blogger.com,1999:blog-12505562.post-1122907382257776132005-08-01T10:43:00.000-04:002005-08-01T10:43:00.000-04:00I mentioned this last time this discussion came up...I mentioned this last time this discussion came up, but no one bit, if I recall correctly, so let me try again. Citations omitted this time. <BR/><BR/>The effective date of the registration is the date the copyright office receives the materials. The Office can do one of two things: stamp the application or reject it, neither of which affects the substantive rights of the copyright holder, as the rights holder can bring suit either way. The Office <B>must</B> do one of these two things, and AFAIK, can't change the effective date of the Registration. <BR/><BR/>So, in my opinion, the "plain meaning" requires an absurd result. Namely, the copyright holder can't bring suit after the <I>effective</I> date of his registration. He must wait for the application to be processed, which will the confer the earlier effective date. <BR/><BR/>That's some catch, Catch-22. <BR/><BR/>Why even have an effective date, lest the copyright office own a time machine, which is really in the purview of the PTO anyway? In my opinion, the entire reason for having the effective date be the filing date is to correct for Office delay. <BR/><BR/>Also, let's pause for a moment to think about what this does to the statute of limitations. <BR/><BR/>Finally, one could say, "Just file an expedited application." Sure, but, in the words of the award winning british group The Streets, a grand don't come for free. I could throw more money at the problem, but if I have 50 works involved in a suit, I'd be paying $25,000 in filing fee alone. That's a nice up front charge in my litigation, essentially to correct delay at the Office.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-12505562.post-1122905511551664792005-08-01T10:11:00.000-04:002005-08-01T10:11:00.000-04:00Tomas:Getting the original version of L'anza isn't...Tomas:<BR/><BR/>Getting the original version of L'anza isn't easy, as I at least can't get it online given that it was withdrawn. Our doesn't keep hard copy either, so awhile back I tracked down a hard copy of it. S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081,1085 (9th Cir. 1989) is cited by the many district courts in the circuit which hold that an actual registration is required. Recent California district court cases saying so include RDF Media Ltd. v. Fox Broadcasting Co., 372 F. Supp.2d 556, 562 (C.D. Cal. May 2005)(although issue mooted by receipt) and Goodwin v. Best Plan, Int'l, Ltd., 2004 U.S. Dist. LEXIS 17823, *3 (N.D. Cal. Aug. 30, 2004).William Patryhttps://www.blogger.com/profile/12987498082479617363noreply@blogger.comtag:blogger.com,1999:blog-12505562.post-1122874493291760802005-08-01T01:34:00.000-04:002005-08-01T01:34:00.000-04:00The Ninth Circuit seems to side with the Fifth Cir...The Ninth Circuit seems to side with the Fifth Circuit. See L’Anza Research Int’l, Inc. v. Quality King Distributors, Inc., 98 F.3d 1109, 1119 (CA9 1996), vacated on other grounds, 143 F.3d 525 (CA9 1998). But Judge Kozinski, when he was on the Court of Claims, took the literal approach. See International Trade Mg’mt, Inc. v. United States, 553 F. Supp. 402, 403 (Cl. Ct. 1982) (J., Kozinski).Anonymousnoreply@blogger.com