A couple of weeks ago, I attended an end of the year Continuing Legal Education seminar which featured two respected Nashville attorneys, Jim Harris and Richard G. Sanders discussing an ongoing copyright infringement case they were involved in. The case was a bit technical and the discussion initially focused on aspects of the Digital Millennium Copyright Act. I was about to fall victim to one of those mid‑afternoon slumps when the discussion suddenly turned to the dreaded Section 411(a) of the Copyright Act.
I was surprised to discover that the plaintiff’s attorney in this case had fallen victim to the same procedural problem I had recently faced. Section 411(a) of the Copyright Act states that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” Thus, as we constantly tell our clients and students, while your copyright exists from the moment the work is first fixed in a tangible medium of expression, you can’t protect it (i.e. you can’t get into court) until the work is actually registered.
What does this actually mean? There is a split in the federal circuits as to what it takes to satisfy the registration requirement. In the 9th Circuit, the registration requirement is met once the owner files the application to register the work with the copyright office. Unfortunately our circuit, the 6th Circuit currently follows the narrower approach, which requires the actual completion of the registration process before a plaintiff is allowed to proceed with his or her lawsuit.
The odd part of this whole scenario is that Section 411(a) allows a party to go forward with a lawsuit even if the registration is refused. Many commentators, including Nimmer have pointed out that if such is the case, the 9th Circuit approach makes the most sense.
The problem of course is that the registration process can take a long time (especially in this era of government shutdowns and sequesters) and the damage caused by an infringer can be potentially fatal while the applicant waits for his registration certificate. (There is an expedited registration process but many would find the fee $760.00 to be cost prohibitive.)
I guess the policy argument here is that Congress intended to encourage registration by making it a prerequisite to filing an infringement lawsuit but it appears that many copyright owners choose not to register their work – or in some cases are not even aware that their work is protected by copyright until an actual infringement has occurred.
In the case I was involved in, the court initially dismissed our complaint for infringement without prejudice. (this means that we could refile the lawsuit as soon as we received the registration certidicate). I filed a motion to reconsider and while the court was considering this motion my registration certificate magically appeared, allowing the case to proceed to a successful conclusion. Nonetheless I think that the requirement of actual registration under Section 411(a) is an outdated unworkable restriction which has the unintended consequence of causing harm to many plaintiffs. In this context, the 9th Circuit position seems much more fair. Congress should amend this section of the Copyright Act.