8.08.2006

S.D. Ind. Comments on Split Re Whether Copyright Statute Makes Registration a Jurisdictional Prerequisite to Filing Suit

Per Woollen, Molzan and Partners, Inc. v. Indianapolis-Marion County Public Library, Slip Copy, 2006 WL 2135819 (S.D. Ind. Jul 28, 2006):

Under 17 U.S.C. § 411(a), no person can begin an action for infringement of a copyright until "registration of the copyright claim has been made" or, alternatively, until the registration has been refused and the applicant serves a copy of its complaint on the Register of the Copyrights. 17 U.S.C. § 411(a). The Library argues that this statute requires this court to dismiss Woollen Molzan's infringement claim. (Def.'s Mot. Dismiss 2). Either the court lacked jurisdiction to hear the complaint, or, in the alternative, Woollen Molzan did not have a claim to bring until the copyright was registered. (Id.) As the Library correctly noted, if this court dismissed the infringement claim for lack of subject matter jurisdiction, then it would have no basis for acquiring supplemental jurisdiction over the state law claims under 28 U.S.C. § 1367. See Rifkin v. Bear Stearns & Co., 248 F.3d 628, 634 (7th Cir.2001).

The jurisdictional issue regarding the requirements of § 411(a) is not a simple one. First, the circuits have divided between the "registration approach," in which a plaintiff must await the Copyright Office's actual registration before filing suit, and the "application approach," in which the plaintiff has a cause of action upon filing a copyright application, along with the appropriate fee and deposit of material to be protected. See La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1202-04 (10th Cir.2005) (describing, in relatively neutral terms, the arguments in support of each approach); see also 17 U .S.C. 410(d) (defining the effective date of copyright registration as "the day on which an application, deposit, and fee ... have all been received in the Copyright Office"). The Seventh Circuit has not yet addressed this issue directly, although one decision suggests that this circuit may favor the "application approach." See Chi. Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir.2003) (noting that "[a]though a copyright no longer need be registered with the Copyright Office to be valid, an application for registration must be filed before the copyright can be sued upon"). The comment in Chicago Board of Education, however, was made in passing, directed at the plaintiff's claim that the registered copyright was invalid. Id.

Secondly, the parties in this case argue over whether § 411(a) is a condition precedent to filing a lawsuit or a requirement for jurisdiction. If the former, then the court would still have jurisdiction even if the precondition was not met and the plaintiff could not prevail. See, e.g., Batesville Servs., Inc. v. Funeral Depot, Inc., 2004 WL 2750253 at *3 (S.D.Ind. Nov. 10, 2004) (discussing the difference between a condition precedent and jurisdictional requirement in a challenge to the validity of a copyright). But see Foraste v. Brown Univ., 248 F.Supp.2d 71, 76 (D.R.I.2003) (holding that copyright registration is a condition precedent and a jurisdictional requirement). The Seventh Circuit has not yet addressed this issue squarely, either.

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