Thursday, July 12, 2007

Plain Meaning and Section 411(a)

My recent post on the Fourth Circuit and architectural works drew two commentators who challenge my plain meaning interpretation of the statute as requiring physical movement in order for the distribution right to be implicated. My interpretation is based on the fact that the statute limits the right to distribution of copies and copies is defined as a physical object; I don't know how you can distribute a physical object without moving it, but readers are pointed to that post to see the debate.

Another area in which I think the plain reading of the statute is crystal clear is Section 411(a) which requires that there be an actual issued registration or denial thereof before an infringement action may be instituted (not "maintained" as in the 1909 Act). A very very few courts, misled by Nimmer's mangling of the statute, have disagreed. The overwhelming majority of courts follow the plain meaning. Here is a new one, from the Court of Federal Claims, Jennette v. United States, 2007 WL 1771998 (Fed. Cl. June 19, 2007):

Lacking any binding authority, this court must look to the statute itself to determine its meaning. The cardinal rule in interpreting a statute is that “courts must presume that a legislature says in a statute what it means and means in a statute what is says there.” Conn. Nat'l Bank v. Germain, 503 U.S. 249, 253-54, 112 S.Ct. 1146, 117 L.Ed.2d 391 (1992). A court begins its inquiry by examining the text of the statute. Lamie v. United States Trustee, 540 U.S. 526, 534, 124 S.Ct. 1023, 157 L.Ed.2d 1024 (2004). “Unless otherwise defined, words will be interpreted as taking their ordinary, contemporary, common meaning” at the time Congress enacted the statute. Perrin v. United States, 444 U.S. 37, 42, 100 S.Ct. 311, 62 L.Ed.2d 199 (1979). When the statutory language is clear, a court's inquiry is complete. Conn. Nat'l Bank, 503 U.S. at 254, 112 S.Ct. 1146.The relevant portion of 17 U.S.C. § 411(a) provides:[N]o action for infringement of the copyright in any United States work shall be instituted until registration of the copyright claim has been made in accordance with this title. 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.As a condition to bringing suit, the plain language of the statute requires either the registration of the copyright or the Copyright Office's refusal to register the copyright. See La Resolana Architects, PA, 416 F.3d at 1200-01. Accordingly, the court holds that actual copyright registration, or the denial of copyright registration, is required prior to bringing suit for copyright infringement.


Christopher Fulmer said...

While I agree with your interpretation of the statute, it seems to be a bad rule. I suggest that the better rule would be that you can initiate your action once you've filed your registration.

The problem is that the Copyright office doesn't do these things overnight -- the FAQ at the office's website lists a 4 month turnaround. And, that just seems to be a trap for the unwary.

When I was clerking with a law firm a few summers back, we had a case which combined copyright and state tort claims, where a delay of 4 months would have put us outside the state statute of limitations. While I wasn't there for the resolution, I'm confident that the client ended up paying more because of this rule.

Anonymous said...

It should be noted that while Bill Patry's interpretation of 411(a)is indisputably the majority rule, the minority rule is settled law in the Fifth Circuit (known as the "Apple Barrel" rule). Thus, far from "very, very few," there are a significant number of district courts that are required to follow the minority rule, at least until the Supreme Court or the Fifth Circuit en banc says differently.

While the Apple Barrel rule does make life easier for copyright plaintiffs, in circuits that follow the majority rule there is a partial solution to the problem Chris identifies. The Copyright Office allows for expedited registration ("special handling")-- so long as you fill out an additional form and pay an extra $685 per registration. In my experience, you generally can get a certificate in less than two weeks in this fashion, and sometimes in a couple of days. Of course, if the case involves hundreds of copyrights in issue (e.g., a commercial piracy case), doing this may not be economically feasible.

Whether 411(a) makes any sense from a policy standpoint, however, is another question entirely. Personally, I think Congress should have ditched the registration requirement when the US joined the Berne Convention. It serves no real purpose (it's essentially impossible to conduct any meaningful "search" of registered copyrighted works in the same fashion as a trademark or patent search), and is a classic elevation of bureaucratic form over substance.

Nevertheless, 411(a) is still on the books, and Bill's reading of it is clearly the majority rule.

LKB in Houston

William Patry said...

I agree with Chris on the policy issue, and tried for two years in 1993 and 1994 to make reforms that would level the playing field for individual authors. But alas, depsite passing the House twice, the legislation never made it out of the Senate, so it died, and is still with us. Being still with it, I believe we have an obligation to be faithful to the statute, even in a case like this where I disagree with the policy.

I fear my friend LKB is suffering from Stockholm Syndrome, living as he does in Houston, within the 5th Circuit. By my count, there is one one circuit out of 12 that follows the Nimmer approach.I think that is very very few. District courts in DC are split on the issue and there are some in the Third Circuit that agree and some that follow my approach; some district courts in the Fourth Circuit follow Nimmer, but they are inconsistent with the court of appeals holding on point, but that's it.

The following court of appeals have spoken on the issue and agree with me: Second, Fourth, Sixth, Seventh, Eighth, Ninth, Tenth, Eleventh, as well as the Court of Claims. Within the First Circuit, 5 of the 6 district courts to have adressed the issue agree with me. I stick by my assessment.

Anonymous said...

One question that I've been curious about: what's the backstory on why the Senate blocked the elimination of the registration requirement in '93-'94?

Other than the employees of the Copyright Office, nobody seems to think that the registration prerequisite is anything but a meaningless waste of time. I've never understood why the Senate didn't go along with the House on it.

LKB in Houston

William Patry said...

Dear LKB in Stockhom. The back story is that while the Copyright Office was opposed early and vigorously, a deal had been worked out. It was the book publishers who were vehemently imposed, in my opinion because they could have it both ways: they register so can get statutory damages and attonrey's fees, but individuals don't, so they wanted the requirement to stay in so they could effectively avoid being sued. Nevertheless, we beat them in the House, twice. But, then DeConcini, who was chair of the Senate IP subcommittee announced his retirement, followed shortly by my boss, Congressman Hughes announcing his retirement. Lame duck-itis quickly made its effects felt, and that was it.

Anonymous said...

Yorn desh born, der ritt de gitt der gue,
Orn desh, dee born desh, de umn bork! bork! bork!


PS: thanks for the backstory explanation

William Patry said...

For those not familiar with the Swedish Chef muppet parody referred to in LKB's last comment, see this link:

Anonymous said...

I know that I venture into Bill's lofty spaces at my peril, but, as the former Register of Copyrights, I assume that risk in order to make one point on the 411(a) requirement. Bill is of course correct about the politics and the back story, but the perceived needs of the national library also deserve mention. Without the 411(a) registration requirement, some creators, even some commercial giants, would not routinely register their works in the Copyright Office at the time of publication, and the Library of Congress would not get, automatically and timely, its two free copies of popular works. If the Library did not get those free copies, it would have to buy them, and Congress would have to appropriate funds for their purchase. Hence, Congress included 411(a) and 412 in the 1976 Act to ensure the continued use of the registration and deposit system in the United States as we moved ever closer to the formality-free world of the Berne Convention. The Librarian of Congress (who obviously has influential allies in Congress) is institutionally commited to preserving both incentives going forward as vital to the collections of the world's greatest library. We fought this battle in 1988 during Berne Implementation, and we struck the compromise that still holds today--maintain the requirememnt for U.S. authors, but exempt foreign Berne authors. Chris' example of hardship inflicted by 411(a) serves as a strong argument for those who think that, even in a small way, it continues to encourage timely registration.

Ralph Oman
Dechert LLP

William Patry said...

It is a great honor to have my friend and former boss Ralph Oman comment. During his tenure as register, Ralph was stalwart in his efforts to ensure that the Library's invaluable collection was not adversely affected, and we all owe him our gratitude.

Anonymous said...

I am confused and seeking enlightenment.

Surely you are right in interpreting section 411(a) to say that registration is a prerequisite to litigation. However, section 102 says that "copyright protection subsists subsists... in original works of authorship fixed in any tangible medium of expression."

So, what protection is then awarded for fixing my expression in a tangible medium if I do not register it?

References to other explanatory sources would be most appreciated.


William Patry said...

I leave to New Age gurus enlightenment. There is a big difference between the existence of copyright and remedies for it versus an administrative prerequisite for enforcement which is all 4119a) is; I would look at 17 US.C. sections 102(a), 106, and chapter 5 thereof.