Tuesday, June 17, 2008

The Fifth Circuit: Section 411(a) Revisited

Alone among the circuits, the Fifth Circuit has chosen to follow Nimmer’s anti-statutory view that actual receipt of a certificate of registration – as opposed to merely sending in an application – complies with the requirement in subject matter jurisdictional requirement of Section 411(a). There are limits, though, even in the Fifth Circuit. For example, you do have to apply before trial. It now appears you have to do more than that. A recent opinion indicates that the requirements may be not as loose as I had previously thought.

In Trill Entertaiment, LLC v. B CD Music Group, 2008 WL 2354424 (M.D.La. June 9, 2008) (Civil Action No. 07-559-JJB-SCR), plaintiff sued over a number of works with descriptive titles such as “Bas Azz Mixtape,” “Streetz is Mine,” and “Gangsta Grillz.” Plaintiff had received certificates for some, but not others, and had amended its complaint indicating receipt of the certificate as to some but not at to others.

In reviewing the state of the case law on section 411(a) in the Fifth Circuit, the court held:

In limited circumstances, the Fifth Circuit has allowed a plaintiff to cure the jurisdictional defect of failing to register a copyright before commencing an action by subsequently amending or supplementing its complaint after registration is completed. Positive Black Talk, Inc. v. Cash Money Recordings, Inc., 394 F.3d 357, 365 (5th Cir.2004) (allowing a plaintiff who filed a copyright action four days before registering with the U.S. Copyright Office to cure the defect). Although the Fifth Circuit made an exception to the statutory filing requirements in Positive Black Talk, this case “is not a blank permission slip for district courts to disregard pleading failures in copyright claims.” The Levingston Corp. v. DeWalyes Ltd. Int., 2008 U.S. Dist. LEXIS 12327, *5 (E.D.La.2008). This jurisdictional defect can only be cured by registering the copyright and amending the complaint. Id . In other words, “Evidence that the Copyright Office has received the application-no matter how reliable-does not substitute or obviate the plaintiff's obligation to amend the pleadings.” Id. Therefore, contrary to the plaintiff's assertion that all that is necessary for the suit to proceed is evidence that the “application, deposit and fee payment have been received by the Copyright Office,” courts in the Fifth Circuit have required the plaintiff to cure this jurisdictional defect by subsequently amending the complaint to reflect registration with the U.S. Copyright Office.

As such, Trill's recent registration of “Streetz is Mine” and “Bad Ass Mixtape” on June 3, 2008, is clearly at odds with the jurisdictional requirements of § 411 and Fifth Circuit jurisprudence on this issue. These recordings should have been registered with the U.S. Copyright Office prior to commencing the instant action, or in the alternative, these jurisdictional defects should have been cured by registration and subsequently amending the complaint. Trill has not amended its complaint to indicate the date of registration, and it has only sent off its registration one week before the scheduled bench trial on June 11, 2008. With respect to recordings “Bad Ass Mixtape” and “Streetz is Mine,” Trill has failed to demonstrate that it has satisfied the jurisdictional requirements necessary to bring an infringement action, and summary judgment in favor of B C D Music Group will be granted for these recordings.


Anonymous said...

I am really learning a lot from your blog. It's one of my daily reads. Your summaries of case law and copyright in general are really helping to focus my I.P. interests. As I start the process of applying to law schools, keeping up with the goings-on in copyright law by reviewing what you've written is helping me to stay motivated. Thanks.

Anonymous said...

Judge Brady is not an expert on copyright law, but he is certainly careful and thoughtful.

In any event, plaintiff's lawyers made a serious lapse in judgment when they decided to wait so long before filing for registration

Anonymous said...

Methinks you read too much into Judge Brady's decision.

The fundamental thrust of CTA5 law on this subject -- that the jurisdictional prerequisite is satisfied if everything is sent in to the Copyright Office in proper form *prior* to filing suit -- was explicitly recognized in the opinion. As I read the opinion, all it did was refuse to expand the Apple Barrel rule to post-filing applications -- which is hardly surprising, given that CTA5 has long required very strict compliance with the Apple Barrel rule if one does not have a certificate of registration.

LKB in Texas

William Patry said...

LKB, well sheeeeee'it, I was trying to keep on the sunny side.