17 U.S.C. § 411(a) — Pre-Suit Copyright Registration


On January 4, 2013, District of New Jersey Judge William Martini dismissed, without prejudice, a plaintiff’s copyright infringement claims on the ground that the plaintiff’s pending application for copyright registration was insufficient to satisfy the requirements of 17 U.S.C. § 411(a).  See North Jersey Media Group v. Sasson, 12-cv-3568, 2013 U.S. Dist. Lexis 1536, at *1 (D.N.J. Jan. 4, 2013).

Section 411(a) states that “no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made” or, subject to certain conditions, “registration has been refused.” 17 U.S.C. § 411(a).  Section 411(a) is silent, however, on the question of whether the act of filing an application for registration alone is enough to satisfy the requirements of that section, and courts have reached conflicting conclusions on that issue.  See  Cosmetic Ideas, Inc. v. IAC/InteractiveCorp., 606 F.3d 612, 615-16 (9th Cir. 2010) (noting a split among the circuit courts that have addressed the issue).

Courts that have held an application for registration to be sufficient take the view that, because registration is characterized under the Copyright Act as the submission of a completed application for registration (17 U.S.C. § 408(a)) and the effective date of any copyright registration under the Act is the date “on which an application, deposit and fee . . . have all been received by the Copyright Office” (17 U.S.C. § 410(d)), it is proper to treat submission of an application for copyright registration as satisfying the registration requirement of section 411(a).  See, e.g., Prunte v. Universal Music Group, 484 F. Supp. 2d. 32, 40 (D.D.C. 2007); Phoenix Renovation Corp. v. Rodriguez, 403 F. Supp. 2d 510, 514 (E.D. Va. 2005).  Another rationale that has been offered in support of this approach is that, upon submission of a proper application for registration, it becomes inevitable that the requirements of section 411(a) will be met, either by reason of registration issuing or the refusal of registration, so it would not make sense to require a plaintiff to wait until one of those events occurs.  See Prunte, 484 F. Supp. 2d at 39-40 (and authorities cited therein).

In contrast, courts that hold that an application for registration is not sufficient reject the view that registration is to be deemed final upon filing for the purposes of section 411(a).  One basis offered for that view is that, if an application were all that is required to comply with section 411(a), then the reference to refusal of registration in that section would be superfluous, since registration for the purposes of 411(a) would be deemed complete upon filing the appropriate paperwork regardless of whether the registration is ultimately refused.  See Patrick Collins, Inc. v. Doe, 843 F. Supp. 2d 565, 569 (E.D. Pa. 2011) (“If mere submission of a complete copyright application constituted registration under § 411(a), then logic tells us that the Copyright Office could never ‘refuse’ registration of such an application — registration would be automatic.  However, § 411(a) explicitly acknowledges that the Copyright Office may refuse registration of an application submitted in proper form. . . .  [A]dopting the application approach would render the ‘registration has been refused’ language in § 411(a) entirely nonsensical”).

In dismissing the plaintiff’s copyright claims, the Sasson court relied on Patrick Collins, among other cases, to support its decision to adopt what it termed the “registration approach.”  See Sasson, 2013 U.S. Dist. Lexis 1536, at *5-6.  Consistent with the Supreme Court’s holding in Reed Elsevier, Inc. v Muchnick, 130 S. Ct. 1237 (2010), that the requirements of section 411(a) are not jurisdictional in nature, the court’s dismissal in Sasson was without prejudice and left the door open for the plaintiff to file an Amended Complaint once action has been taken on its application for registration of the works at issue.

If Sasson reflects the approach that other judges in the District of New Jersey will take on this issue, the ruling could have significant implications for both plaintiffs and defendants in infringement actions.  For instance, owners of unregistered works may face delays in their ability to avail themselves of judicial remedies, such as injunctive relief or discovery to identify John Doe defendants. Those delays could have ramifications with respect to the ability of such copyright owners to protect their interests.  Accordingly, copyright owners should register their works to ensure prompt access to the courts.

Defendants in infringement actions, on the other hand, should be aware of the Sasson ruling and employ it in furtherance of their defenses when applicable.  The delays that could result from the application of Sasson may have implications both with respect to a defendant’s legal strategy and its leverage in pre-suit settlement discussions.  
Authored by Jason B. Lattimore

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