Register Those Copyrights!! But the Circuits Differ on When "Registration" Occurs

You are barred from filing a copyright lawsuit without a copyright registration. Statutory damages, meaning that the copyright owner does not have to prove damages, but receives a fixed amount ($750 to $28,000 per infringement) and a chance to double that for willfulness, are available with registration. But, that registration must be completed before the first infringement. Probably more important is the right to attorney's fees, which also requires registration.

It takes some number of months from the time of application until the U.S. Copyright Office issues a registration certificate. With an expedited registration, for which you pay more, the process takes weeks.

Courts have recently decided that the statute requiring "registration" means a registration that has been issued by the Copyright Office, rather than a mere application. But, a federal court in Illinois recently decided that the completed application, and not the Copyright Office issuance, satisfied this requirment.

One blog reports that five of the thirteen federal circuits have decisions holding that a completed application is sufficient to confer jurisdiction for filing a lawsuit. [First, Third, Fifth, Seventh, and Eighth Circuits. Foraste v. Brown Univ., 248 F. Supp. 2d 71, 77 n.10 (D.R.I 2003); Wilson v. Mr. Tee’s, 855 F. Supp. 679, 682-683 (D.N.J. 1994) and SportsMEDIA Tech, Corp. v. Upchurch, 839 F. Supp. 8, 9 (D. Del. 1993); Lakedreams v. Taylor, 932 F.2d 1103, 1108 (5th Cir. 1991); Chicago Bd. of Education v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003) and see Goss Int’l Ams., Inc. v. A-Am. Mach. & Assembly Co., 2007 U.S. Dist. LEXIS 88382, 2007 WL 4294744 (N.D. Ill. Nov. 30, 2007); Action Tapes, Inc. v. Mattson, 462 F.3d 1010, 1013 (8th Cir. 2006).]

The blog further reports that the Sixth, Tenth, and Eleventh Circuits follow the other approach and require the issuance of a registration. Hawaiian Village Computer, Inc. v. Print Management Partners, Inc., 501 F. Supp. 2d 951, 2007 U.S. Dist. LEXIS 7910, 2007 WL 431017 (E.D. Mich. 2007); La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005); M.G.B Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 n.4 (11th Cir. 1990).

The Second, Fourth, Ninth, and DC Circuits have yet to issue an opinion, but their district courts have adopted contrasting approaches. Compare Capitol Records, Inc. v. wings Digital Corp., 218 F. Supp. 2d 280 (E.D.N.Y. 2002) (complete registration) with Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 210 F. Supp. 2d 147 (E.D.N.Y. 2002) (complete application); Compare Mays & Assocs., Inc. v. Euler, 370 F. Supp. 2d 362 (D. Md. 2005) (application and registration have distinct meanings) with Iconbazaar, L.L.C. v. Am. Online, Inc., 308 F. Supp. 2d 630, 633 (M.D.N.C. 2004) (application approach); Compare Loree Rodkin Management Corp., 315 F. Supp. 2d 1053 (C.D. Cal. 2004) (certificate approach) with Tabra Inc. v. Treasures de Paradise Designs Inc., 20 U.S.P.Q.2d 1313 (N.D. Cal. 1992) (application approach); Compare Strategy Source Inc. v. Lee, 233 F. Supp. 2d 1 (D.D.C. 2002) (complete registration) with International Kitchen Exhaust Cleaning Ass’n v. Power Washers of N. Am., 81 F. Supp. 2d 70 (D.D.C. 2000) (application approach).

I found this research on Lexology, in an article by Alan J. Haus of Lewis Brisbois Bisgaard & Smith LLP. Thank you Alan; very nicely done.