Ex©lusive Rights

The Washington Post ran an article on Tuesday detailing the registration backlog at the Copyright Office. Apparently, the Office is struggling with the implementation of its relatively new electronic system, and the processing time for paper registration has tripled from six to 18 months. The Office plans to encourage electronic filing by raising the fees for paper registration from $45 to $65, while holding the fees for electronic registration steady at $35. I hope the tactic ameliorates the situation because there are a few cases popping up that may (or may not) be a sign that the registration backlog is beginning to cause troubles in the courts.

Case in point, Specific Software Solutions, LLC v. Institute of Workcomp Advisors, LLC,  2009 WL 1393331 (M.D. Tenn. 2009).

Specific Software and the Institute of Workcomp Advisors both ran consulting businesses that advised on workers compensation issues. The the two companies had an amicable relationship but then suffered a fallout, eventually leading to the Institute of Workcomp Advisors sending Specific Software Solutions a cease-and-desist alleging infringement of its website. A couple months after the cease-and-desist was received, Specific Software Solutions filed a complaint seeking a declaratory judgment that the Institute of Workcomp Advisor’s copyright was invalid or, in the alternative, a finding of non-infringement.

The problem? Institute of Workcomp Advisors’ copyright registration application wasn’t yet reviewed by the Copyright Office. The Institute filed a motion to dismiss, arguing that the court didn’t have jurisdiction over the claim because its application wasn’t processed. Now, we should pause here for moment to discuss this litigation tactic. One might expect that both parties would want to litigate the copyright issue.  A likely explanation for the move is that the Institute of Worcomp Advisors, a North Carolina corporation, wanted to litigate closer to home.

The plaintiff made two arguments in regards to copyright registration: [1] that registration wasn’t required in a declaratory judgment proceeding; and [2] registration should be interpreted to have occurred on filing, not on a determination by the Copyright Office. Judge Aleta A. Trauger rejected both arguments and granted the Institute of Workcomp Advisor’s motion to dismiss. The Court’s analysis of whether registration should be interpreted as occurring on filing, as argued by Nimmer, or after Copyright Office review is interesting:

Plainly, from a statutory interpretation perspective, the defendant has the better of the argument. Sections 411(a), 410(a), and 410(b) all show a clear congressional intent to have the Copyright Office review the materials submitted and pass judgment on their copyrightability before those materials are considered “registered” for purposes of the jurisdictional requirements of Section 411(a). Section 410(d) deals with the “effective date” of a registration, not what it takes for a registration to occur, and multiple provisions of this title clearly demonstrate that registration occurs after a Copyright Office review, not simply by the applicant submitting materials.

That said, numerous courts and the widely cited treatise Nimmer on Copyright, take the opposite view, concluding that the court has jurisdiction over an infringement action following the submission of the fee, deposit, and application. See e.g. Apple Barrel, 730 F.2d at 386; Int’l Kitchen Exhaust Cleaning Assoc. v. Power Washers of N. Am., 81 F.Supp.2d 70, 72 (D.D.C.2000); Iconbazaar, 308 F.Supp.2d at 633-34. Using Section 410(d) as their statutory foundation, the side favoring this “broad,” or “application,” approach argue that “policy considerations” support their position because, “given that the claimant [after application] has done all that it can do, and will ultimately be allowed to proceed regardless of how the Copyright Office treats the application, it makes little sense to create a period of legal limbo in which suit is barred.” (Docket No. 12 at 3, quoting Nimmer on Copyright § 7.16(B)(1)(a)(i)).

Indeed, in Int’l Kitchen, after noting that courts had come out differently on the issue, the court cited Section 410(d) and Nimmer and simply stated that “judicial economy” favored not dismissing the case simply because the plaintiff did not have a registration certificate from the Copyright Office. 81 F.Supp.2d at 72. A similar approach, that is, discounting the language of Sections 410(a), 410(b), and 411(a), focusing on Section 410(d) and arguing that the registration process is of little import because the “owner of the work may bring suit even if his copyright application is denied” is also found in the Iconbazaar case, along with most cases taking this “broad” view. 308 F.Supp.2d at 634.

To the court, the recent decisions of other district courts in this circuit are more soundly reasoned and should be followed. Plainly, the courts in Int’l Kitchen and Iconbazaar have correctly recognized that there is something “uneconomic” about dismissing a complaint simply because the plaintiff does not have a certificate of registration, especially when the plaintiff, under Section 411(a), will be allowed to sue even if the Copyright Office denies the registration and refuses to issue the certificate. But, as the courts of this circuit have recognized, it is the role of the courts to “interpret a statute to give effect to each clause, sentence, and word so that none is rendered superfluous or surplusage.” Ripple Junction, 2005 WL 2206220, at * 4 (citing U.S. v. Perry, 360 F.3d 519, 537 (6th Cir.2004)). To read the statute to mean that registration occurs when the applicant files his materials would be to misread and render superfluous numerous provisions of the Copyright Act, perhaps most notably Section 411(a), which provides the procedure for how a lawsuit may still be filed even if registration is refused by the Copyright Office. Id .

A couple of quick comments:

• Nimmer’s view that registration should be interpreted as occurring on filing is particularly troublesome in the context of websites. The Court’s comments to the contrary, judicial economy doesn’t favor interpreting registration as occurring on filing in this circumstance. Websites are unique in that they are constantly being amended, and the two parties and the court have to know which version of the site is being litigated to effectively handle the dispute. We saw this issue last week in Facebook v. Power Ventures.

• There’s a missing fact from the decision that I find troublesome. The Court in an otherwise thorough factual rundown failed to mention when the Institute of Workcomp Advisors filed its registration. This popped a red flag for me. Was it two months ago? six months ago? 16 months ago? The Court may have omitted this detail to lessen the possibility of being overturned on appeal. The fact that the Court didn’t mention the date would hint that it may be on the higher end of the spectrum.