Monday, August 01, 2005

Registration Issues

The continuing relevance of registration with the Copyright Office was displayed in the last week or so in two different fora, the 10th Circuit (construing Section 411(a)) and the Copyright Office, which issued proposed rules for preregistration of unpublished works.

1. Section 411(a)

The 10th Circuit opinion, issued on July 26th by Judge Timothy Tymkovich in La Resonalana Architects, PA v. Clay Realtors Angel Fire, is an outstanding effort. Plaintiff had sued for infringement after only submitting (but not receiving) a certificate of registration or a rejection. Defendant, citing the plain language of Section 411(a), filed a motion to dismiss for lack of subject matter jurisdiction. The district court granted the motion and the circuit affirmed. This was the correct result.

As discussed in a June 7th posting, Section 411(a) states, simply and clearly, that no action for infringement shall be instituted until registration of the copyright claim has be made. Like Horton the elephant sitting on the egg, this passage means what it says and says what it means, 100%. Virtually all courts have read it plainly. The Fifth is the sole appellate exception (there are wild hairs in a few district courts like Rhode Island).

The errant courts have all been led astray by Nimmer, for whom, in my opinion, the statute is at best a secondary source to be ignored at will. Nimmer on Copyright reflects an approach of the treatise writer as colossus, striding the legal world and telling courts what the law is regardless of what the law is; a bit like country singer Willie Nelson's lyrics about being caught in flagrante delicto by a wife and saying to her "Who are you going to believe, your eyes or me"? Judge Tymkovich's opinion is thorough and methodical in showing why Nimmer is wrong, why the emperor (like Willie Nelson) has no clothes.

When a complaint is dismissed for failure to comply with Section 411(a), the dismissal is without prejudice, so after receiving the registration (or rejection), the suit may be refiled if still within the statute of limitations. Sometimes, though, dismissal will mean refiling will be outside the limitations period either for the copyright claim or for a pendent state claim. That problem was addressed in a July 22 opinion, Kenny v. Ryan Web Solution, 2005 U.S. Dist. LEXIS 14863 (S.D.N.Y.)(Batts, J.), where the time had run on a state privacy claim appended to the original complaint. Taking pity on the hapless plaintiff, Judge Batts reversed a previous dismissal order and allowed plaintiff to file an amended coomplaint. Others may not be so lucky.

2. Preregistration

On July 22, the Copyright Office published in the Federal Register a Notice of Proposed Rulemaking. This rule makes seeks to implement the ART Act (effective April 27, 2005), which, in part, amended Sections 408 and 411(a) to allow what is called "preregistration" for unpublished works that are being prepared for commercial distribution. The regulations must be in place by October 24, 2005. Preregistration is available only for the classes of works that the Register determines have had a history of infringement prior to unauthorized distribution. This lamentable imposition of responsibility hearkens back to the DMCA with its problems on identifying classes of exempt works. I wish Congress would do the work and figure out what it wants to exempt or include and not delegate such vague problems to an administrative agency.

Preregistration doesn't mean you don't have to eventually really register, you do, within one month of becoming aware of an infringement, but in no event later than three months from publication. That grace period is copied from the current statute, which permits statutory damages to be awarded even if infringement occurred before registration if in the case of a published work it is registered within three months of publication. And it is statutory damages and attorney's fees that are the motivation behind preregistration.

The House of Representatives tried to do away with the effects Section 412 in 1993 and 1994 passing a bill twice, but after Chairman Hughes became a lame duck, the quacks of cooperation stopped immediately, and given Senator DeConcini's lame duck status too, no bill got through the Senate. It has now been resurrected in a much smaller form, but in an Orwellian twist, it will benefit almost entirely corporations since only they will typically have the ability to comply.

I support corporations benefiting from statutory damages and attorneys fees against pirates, but I continue to think that individual authors must benefit too. And in that respect the ART Act is artless.


Anonymous said...

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).

William Patry said...


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).

Anonymous said...

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.

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 must do one of these two things, and AFAIK, can't change the effective date of the Registration.

So, in my opinion, the "plain meaning" requires an absurd result. Namely, the copyright holder can't bring suit after the effective date of his registration. He must wait for the application to be processed, which will the confer the earlier effective date.

That's some catch, Catch-22.

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.

Also, let's pause for a moment to think about what this does to the statute of limitations.

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.

William Patry said...


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.

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.

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.

Anonymous said...

Thanks for the great discussion, as always Professor.

There is no effective date until the Office decides to "pass" (as they call it) the application.

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.

The Office rejects Author's Application, but Author has complied with the statutory formalities.

Author can bring suit now, but must serve the Office. Can Author get statutory damages if her suit is successful?

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.

----research occurs---

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.

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.

Please tell me if I am missing something. Thanks.

Anonymous said...

Thanks for the cites.

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).

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.

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.

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.

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.

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.

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.



Anonymous said...


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.

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.

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.

I am vanquished.

William Patry said...

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.

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.

Anonymous said...


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.

Please elucidate. Thanks again.

William Patry said...

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 Patry said...

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).