Tenth Circuit.
LA RESOLANA ARCHITECTS, PA, a New Mexico
Professional Association, Plaintiff-Appellant,
v.
CLAY REALTORS ANGEL FIRE, a New Mexico corporation, Lance K. Clay, an
individual, Gary Plante, an individual, and Angel
Fire Home Design, a New Mexico corporation, Defendants-Appellees.
July 26, 2005.
TYMKOVICH, Circuit Judge.
The Copyright Act of 1976 requires authors to register their works
with the federal Copyright Office in order to be entitled to the Act's
protections against copyright infringement. Two conflicting interpretations of
the Act's registration requirement have been upheld by circuit courts: 1)
registration occurs when the copyright owner submits an application for
registration to the copyright office, or, conversely 2) registration occurs
when the copyright office actually approves or rejects the application. We hold
that the second interpretation is correct. The Copyright Office must approve or
reject the application before registration occurs or a copyright infringement action
can be brought.
Plaintiff-Appellant, La Resolana Architects, PA (La Resolana),
appeals the dismissal of its copyright infringement suit against Defendants-Appellees, Clay Realtors Angel Fire, Lance K. Clay, Gary Plante, and Angel Fire Home Design (Clay Realtors). We take
jurisdiction pursuant to 28
U.S.C. § 1291, and, finding La Resolana's
application for copyright registration had not yet been approved when the
litigation commenced, we affirm.
I. BACKGROUND
In late 1996 and early 1997, a
representative of La Resolana, a
In October 2003, a La Resolana representative familiar with the drawings was in
Angel Fire,
Shortly thereafter, on November 6,
2003, La Resolana applied to register the copyrighted
drawings with the Copyright Office. La Resolana sent
the requisite applications, fees, and deposits to the Copyright Office. Upon
receiving confirmation that the Copyright Office had received their materials,
but before receiving confirmation that the Copyright Office registered the
copyrights, La Resolana sued Clay Realtors for
copyright infringement. The suit was docketed on November 20, 2003.
On March 8, 2004, Clay Realtors moved
to dismiss the complaint arguing that La Resolana
could not sue for copyright infringement until it obtained a certificate of
copyright registration from the Copyright Office. La Resolana
responded by attaching a March 10, 2004 letter from the Copyright Office
indicating that all necessary materials had been received, the copyrights had
been approved for registration on January 22, 2004, and the effective
registration*1198 date was November 19, 2003.
However, the Copyright Office had not yet issued La Resolana
a certificate of copyright registration.
Finding the March 10 letter was not admissible evidence, the
district court concluded that the drawings were not registered. Since the court
therefore lacked jurisdiction over the copyright infringement action, it
dismissed the case without prejudice.
II. ANALYSIS
[1] 
[2] [3] Federal courts have exclusive
jurisdiction over disputes arising under the Copyright Act of 1976. See28
U.S.C. § 1338(a). As with any federal statute, Congress
controls if and when courts attain subject matter jurisdiction in a dispute. It
is axiomatic that subject matter jurisdiction, which gives courts the power to
adjudicate cases, cannot be waived. Radil v. Sanborn W. Camps, Inc., 384 F.3d
1220, 1224 (10th Cir.2004). “Where a party
attacks the factual basis for subject matter jurisdiction, the court does not
presume the truthfulness of factual allegations in the complaint, but may
consider evidence to resolve disputed jurisdictional facts.” Id. We review de novo the district court's
subject matter jurisdiction as well as its grant of a motion to dismiss. See
Montgomery v. City of Ardmore, 365 F.3d 926, 935 (10th Cir.2004).
A. Copyright Law
Our review in this case starts with the
statutory scheme created by the Copyright Act of 1976, and its legislative
history found at 1976 U.S.C.C.A.N. (90 Stat.) 2541 (codified at 17
U.S.C. §§ 101, et seq.) (the
Act or Title
17).
1. Historical Background
The Constitution authorizes Congress to
regulate copyright protection. U.S. Const. art I, § 8.
Prior to the passage of the Act, copyright law consisted of a confusing mix of
federal and state laws that differed greatly depending on the state and whether
a work was published or unpublished. SeeH. Rep. No. 94-1476, at 129, reprinted in 1976 U.S.C.C.A.N. 5659, 5744. A
primary purpose of the Act was to improve this state of affairs. Thus, “[i]nstead of a dual system of
‘common law copyright’ for unpublished works and statutory copyright for
published works, [Congress] adopt[ed][in 1976] a single system of Federal
statutory copyright from creation.”
In its effort to simplify copyright
law, Congress made it easier to obtain copyright protection by recognizing that
a copyright exists the moment an original idea leaves the mind and finds
expression in a tangible medium, be it words on a page, images on a screen, or
paint on a canvass. See17 U.S.C. § 102(a) (“Copyright protection subsists ··· in
original works of authorship fixed in a tangible medium”).
Congress's streamlining of copyright law did not end at the
creation of copyrights, though. In addition to eliminating statutory
formalities in obtaining a copyright, Congress also created a single,
centralized, federal registration system.
Under the Act, registering a copyright
is a relatively simple and inexpensive process.FN1 Registering a copyright requires the
submission of three items to the copyright office: 1) a deposit (i.e.,
photocopy) of the work to be copyrighted, 17
U.S.C. § 408(b); 2) an application to register a
copyright, 17
U.S.C. § 409(1)-(11); and 3) a fee, 17
U.S.C. § 708. Once a copyright owner files the
requisite deposit, application, and fee, the Register of Copyrights examines
the work to determine copyrightability:
FN1. Copyright registration fees range from $1 to $100. See37 C.F.R. § 201.4.
(a) When, after examination, the
Register of Copyrights determines that ··· the material deposited constitutes
copyrightable subject matter ···, the Register shall register the claim
and issue to the applicant a certificate of registration.
(b) In any case in which the Register
of Copyrights determines that ··· the material deposited does not constitute
copyrightable subject matter or that the claim is invalid for any other reason,
the Register shall refuse registration····
17
U.S.C. § 410(a), (b) (emphasis added).
Congress made sure, however, that the
registration system did not extinguish the automatic creation and recognition
of copyrights. In fact, 17
U.S.C § 408(a) explicitly states that “registration
is not a condition of copyright infringement.” In addition, the registration
system is completely voluntary. See id. (“[T]he owner of copyright ··· may
obtain registration of the copyright”) (emphasis
added).
3. Remedies
[4] [5] Although Congress established a
voluntary registration system, it created incentives for copyright owners to
register their copyrights. To this end, certain benefits flow only to those who
register their copyright. The most significant benefit to registering
copyrights under the Act is the issue raised in this appeal-the right to
enforce a copyright in federal court in an infringement suit. 17 U.S.C. § 411(a).FN2
FN2. Although the Act preempts state copyright law, it does not eliminate all state law actions. For example, conduct that may give rise to a federal suit for copyright infringement may also give rise to a state law claim in tort for unfair competition, tortious interference, or breach of contract. However, 17 U.S.C. § 301(a) preempts such claims if “1) the work is within the scope of the ‘subject matter of copyright’ as specified in 17 U.S.C. 102 and 103; and 2) the rights granted under state law are equivalent to any exclusive rights within the scope of federal copyright as set out in 17 U.S.C. 106.” Gates Rubber Co. v. Bando Chem. Indus., 9 F.3d 823, 847 (10th Cir.1993). On the other hand, if “a state cause of action requires an extra element, beyond mere copying, preparation of derivative works, performance, distribution or display, then the state cause of action is qualitatively different from, and not subsumed within, a copyright infringement claim.” Id.
Infringement suits
are the mechanism through which other important incentives and remedies created
by Title 17 operate. For example, when actual damages are
difficult to ascertain or a work has seemingly little extrinsic value,
statutory damages are available under 17 U.S.C. § 504. Equally important in the litigation context,
under § 410 a certificate of registration is prima facie evidence
of the validity of the copyright. For copyright owners hesitant to engage in
the long and expensive process of litigation, attorney's fees for prevailing
parties are also recoverable under *1200 17 U.S.C. § 505. Finally, and perhaps most important, a registrant
can obtain an injunction against an infringer under 17 U.S.C. § 502. To obtain these remedies, though, a federal
court must have jurisdiction to hear a suit for infringement.
B. Federal Court Jurisdiction Under Title 17
1. The Plain Language of the Statutes
[6] Turning to the question of federal
jurisdiction under the Copyright Act, we start with the language of the
statute. If the statutory language is not ambiguous, and the “statutory scheme
is coherent and consistent,” our inquiry ends. Barnhart v. Sigmon Coal
Co., 534 U.S. 438, 450, 122 S.Ct.
941, 151 L.Ed.2d 908 (2002). Section
411(a) is the jurisdictional linchpin to
copyright infringement actions:
no action for infringement of
the copyright in any
(emphasis
added). On its face, §
411 allows an “action for infringement” to
be “instituted” only when “registration” has been “made in accordance” with the
Act. Congress amended §
411 on April 27, 2005 by adding the term “preregistration or” before “registration.” FN3 Congress tasked the Copyright Office
with defining which class of copyrights would be eligible for “preregistration.” Since preregistration
was not possible when this suit commenced, the new language does not control
the outcome of this appeal. We discuss this amendment in more detail below.
FN3. See II(B)(3)(b) infra discussing the Family Entertainment and Copyright Act of 2005, P.L. 109-9 (FECA)
The most important step necessary before instituting an
infringement action is registering one's copyright. Registration is satisfied
by completing the following steps:
a. application and payment of fee, §
408;
b. deposit of a copy of the
copyrightable material, §
408;
c. examination by the Register of
Copyrights, §
410;
d. registration (or refusal to
register) by the Register, §
410;
e. issuance of certificate of registration,
§
410.
The plain language of the statute thus
requires a series of affirmative steps by both the applicant and the Copyright
Office. No language in the Act suggests that registration is accomplished by
mere receipt of copyrightable material by the Copyright Office. Instead, the
Register of Copyrights must affirmatively determine copyright protection is
warranted, §
411, before registration occurs under the
Act.FN4 And only upon registration or refusal
to *1201 register is a copyright
holder entitled to sue for copyright infringement under §
411.FN5 Until those steps are followed and
registration is “made,” federal courts lack subject matter jurisdiction over
the infringement claim.
FN4. The Act, unfortunately, gives little guidance on how to construe the term “registration.” See§ 101 (definitions) (“registration ··· means a registration of a claim in the original or the renewed and extended term of copyright”).
FN5. As we discuss below,
the Act makes an exception for works covered by the Berne Convention.
Our interpretation of the Act is
bolstered by other provisions pertaining to the registration process. Section
410(a), for example, provides:
When, after examination, the
Register of Copyrights determines that ··· the material deposited constitutes
copyrightable subject matter ···, the Register shall register the claim
and issue to the applicant a certificate of registration.
(emphasis added). This language requires the following affirmative acts by
the Register-to “examin[e],” to “register,” and then
to “issue” the certificate of registration. Nothing in this process suggests
that the filing of an application alone would be sufficient to register the
work.
The language of §
410(b) is similarly instructive:
In any case in which the Register of
Copyrights determines that ··· the material deposited does not constitute
copyrightable subject matter or that the claim is invalid for any other reason,
the Register shall refuse registration····
This section is the flip side to the
requirement that the material be examined before registration. Upon
examination, this provision allows the Register either to “register the claim”
or “refuse registration”-in any event, requiring an affirmative act by the
Copyright Office disallowing registration if the Register believes the material
is not an original copyrightable work under §
102.
Section
408 supports our view that registration is
not automatic:
the owner of copyright ··· may
obtain registration of the copyright claim by delivering to the Copyright
Office the deposit specified by this section, together with the application and
fee specified by sections
409 and 708.
(emphasis
added). This provision, like the others, envisions substantive review of the
material by the Register of Copyrights. If it were otherwise, “the verb would
be ‘shall obtain’ ” instead of “may obtain.” Corbis Corp. v. UGO Networks, Inc., 322
F.Supp.2d 520, 522 (S.D.N.Y.2004).
A final provision of the Act
underscores our view of the statutory scheme. Section 501(b), establishing
remedies under the Act, states that “[t]he legal or beneficial owner of ··· a copyright
is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular
right.” (emphasis added). This statutory language
clearly instructs that a copyright owner can sue for infringement only after
the copyright is registered, or registration is refused.
Taken together, these statutory
provisions stand for the proposition that registration, or its refusal,
requires more than the simple receipt of materials submitted by an author, and
does not occur until the Register of Copyrights takes action.
2. Interpretations of the Plain Language of the Statutes
Despite the Act's seemingly plain
language, courts construing these provisions *1202 are split
into two competing interpretive camps: The “Registration approach,” which we
have adopted, and the “Application approach.”
a. The Registration Approach
Courts employing the Registration
approach interpret the Act using the plain language of Title 17, as we have done. We are in good company. Indeed,
even well before the 1976 Act, Judge Learned Hand concluded that the plain
language of Title 17 allows copyright owners to sue for infringement only
after a copyright is actually registered by the Copyright Office. See Vacheron & Constantin-Le Coultre Watches,
Inc. v. Benrus Watch Co., 260 F.2d 637, 640-41
(2d Cir.1958) (“the text of the [statute] denies the right to sue for
infringement ‘until the provisions of this title with respect to the deposit of
copies and registration of such work shall have been complied with’···· Since
the owner must submit an application and pay the required fees in order to make
a deposit, 17 U.S.C. § 202.3(b) (1952 ed. Supplement V), we can think of no
other added condition for ‘registration’ but acceptance by the Register.”).
A number of courts have found this approach the better reading of
the Act. For example, the Eleventh Circuit in M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d
1486, 1488 (11th Cir.1990), held, in dismissing an infringement
action as premature, that the “registration requirement is a jurisdictional
prerequisite to an infringement suit.” While this is the only circuit court
decision to reach the issue, a number of district courts have adopted the
Registration approach. For example, in Mays & Assocs. v. Euler, 370
F.Supp.2d 362, 368 (D.Md.2005), the district court agreed in construing §
411 that actual registration is a
jurisdictional prerequisite, because the “term application is used in the same
section [as the term registration] and is clearly something separate and apart
from registration.” Another district court, focusing on a different provision
of the Act, recognized that “Section §
410(a)'s requirement of ‘examination’ would
be meaningless if filing and registration were synonymous.” Robinson v. Princeton Review, Inc., 1996 WL
663880, *7 (S.D.N.Y.1996). Lastly, the district
court in Loree Rodkin Mgmt. Corp. v. Ross-Simons, Inc., 315
F.Supp.2d 1053, 1056 (C.D.Cal.2004), found that the Register's discretion to refuse copyright
registration “drives an iron wedge” between mere “application” and actual
“registration” as the sine qua non of registration.FN6
FN6. Other courts adopting this approach include: Goebel v. Manis, 39 F.Supp.2d 1318, 1320 (D.Kan.1999); Miller v. CP Chems., Inc., 808 F.Supp. 1238, 1241 (D.S.C.1992); and Demetriades v. Kaufmann, 680 F.Supp. 658, 661 (S.D.N.Y.1988).
[7] While we generally agree with these
courts in construing the Act, we have one minor disagreement concerning the
issuance of the certificate. A few courts have held that the Act requires an
applicant to first obtain the paper certificate from the Copyright Office as a
prerequisite to filing an infringement action. See, e.g., Strategy Source, Inc. v. Lee, 233
F.Supp.2d 1, 3-4 (D.D.C.2002) (finding copyright owners cannot sue for infringement until they
receive a certificate of registration from the copyright office); Loree Rodkin Mgmt. Corp., 315
F.Supp.2d at 1055 (same). In our view, however, the
language of the foregoing sections demonstrates that registration is separate
from the issuance of a registration certificate and that a court's jurisdiction
does not *1203 turn on the existence of a
paper certificate, but rather on the fact of registration, however it is
demonstrated. We believe that statutory language commands this result for two
reasons.
First, § 410(a) says after the “Register of Copyrights determines
that ··· the material constitutes copyrightable subject matter” it “shall
register the claim and issue a certificate.” The “and issue a certificate”
phrase in § 410(a) highlights the fact that registration does not occur
upon issuance of a certificate of registration, but rather independently of,
and before, the issuance of a certificate. The paper certificate does play an
important role in judicial proceedings, however. Under § 410(c), the certificate is prima facie evidence of the
validity of the copyright, a considerable benefit to a plaintiff in an
infringement action, but it is not required for registration to occur.
Second, the conspicuous absence of the words “certificate” or
“certification” in §
411 dictate that registration is separate
from the issuance of a certificate of registration. If the opposite were true, §
411 would prevent copyright owners from
suing until they received their paper certificate, which seems contrary to the
overall thrust of the provision. FN7 As we noted, although the paper
certificate has evidentiary value, it does not drive the existence of federal
jurisdiction. Therefore, suits for infringement can be brought when a copyright
is registered, and such registration occurs when the Copyright Office approves
the application.
FN7. Such a rule is hard to imagine considering the fact that a certificate could easily be lost. In addition, delays could arise between the registration of the copyright and the receipt of a certificate. See http://www.copyright.gov/help/faq/faq-what.html# certificate (last visited July 25, 2005) (stating that certificates are issued typically between four to five months after submission).
b. The Application Approach
The second interpretive camp rejects
the Registration approach. The Application approach interprets Title
17 using a policy-based methodology. A
representative case is from the Fifth Circuit. In Apple Barrel Productions, Inc. v. Beard, 730 F.2d
384, 386-87 (5th Cir.1984), the court, without much elaboration,
held that federal jurisdiction is satisfied merely by proving “payment of the
required fee, deposit of the work in question, and receipt by the Copyright
Office of a registration application.” See also Lakedreams v.
Taylor, 932 F.2d 1103, 1108 (5th Cir.1991) (same). These courts are also in good company. According to one
of the leading treatises on copyright law, this is the preferable approach
since it most efficaciously facilitates the judicial protection of copyrights
through infringement actions. See Melville B. Nimmer,
Nimmer on Copyright, Vol. 2 § 7.16[B][1][a], p. 7-154-56.
Looking to the Act, courts adopting the
Application approach conclude that because a copyright owner can sue regardless
of whether an application for registration is ultimately granted or rejected,
delaying the date on which a copyright owner can sue is a senseless formality. See
Nimmer, § 7.16[B][1][a] [i];
Apple Barrel Prod., Inc., 730 F.2d
at 386-87 (citing Nimmer); Foraste v. Brown
Univ., 248 F.Supp.2d 71, 77 n. 10 (D.R.I.2003) (discussing rationale for Application approach). These courts
also rely on the language of §
408, that registration is not a condition
of copyright protection, and §
410(d), that once a copyright is registered, the
effective date of the registration relates back to the date the Copyright
Office received the last of the filing materials (i.e., the deposit, fee, and
application).*1204 See17
U.S.C. § 410(d); Foraste, 248
F.Supp.2d at 77 n. 10.
Finally, these courts look to the date
of the application for registration as “a condition to filing an infringement
action, [but] issuance of a registration certificate is a condition to
statutory damages” and other statutory remedies. Nimmer,
§ 7.16[B][1][a][i]. Thus,
the argument goes, a copyright owner can get into court without being held
hostage by the vagaries of the Copyright Office in its ministerial act of
issuing the certificate. See International Kitchen Exhaust Cleaning Ass'n
v. Power Washers of N. Am., 81 F.Supp.2d 70, 72 (D.D.C.2000) (adopting
the Application approach because it “best effectuate[s] the interests of
justice and promote[s] judicial economy”).FN8
FN8. Other courts that have adopted the Application approach include: Well-Made Toy Mfg. v. Goffa Int'l., 210 F.Supp.2d 147, 157 (E.D.N.Y.2002); and Havens v. Time Warner, Inc., 896 F.Supp. 141, 142-43 (S.D.N.Y.1995).
The Application approach, at first
glance, has some appeal. Indeed, as discussed above, it is odd that one can
possess a copyright but be unable to file suit until it is “voluntarily”
registered by the copyright holder. What is more, the scheme allows an
infringer to dilute a copyright until a government official is able to sift
through and approve what is surely a large stack of copyright registration
applications.FN9 Courts adopting the Application
approach plausibly claim that their approach provides a sort of rough justice
because it allows copyright owners to file suit while still maintaining the
requirement that an owner obtain a certificate before a court can invoke the
remedies contained in Title
17. See Nimmer,
§ 7.16[B][1][a].
FN9. Since copyright is automatic upon publication, § 408, and the effective date of registration relates back to the date of application, § 410(d), other courts have read the Act to make application the jurisdictionally critical event. In our view, the existence of the copyright by itself does not speak to the Act's otherwise specific grant of federal court jurisdiction upon registration. As to the relation-back effect of registration, the effective date serves other purposes under the Act, such as the term of registration. It is not logical to assume that the relation-back provision subsumes the explicit requirements of § 411 and § 410(a).
Whatever the practical force of this argument, we cannot ignore
the plain meaning of the statute, nor change the legislative scheme. See Strategy Source, Inc., 233 F.Supp.2d at 4 (“To conclude that registration or the refusal of registration
··· are not jurisdictional prerequisites is to disregard the plain language of
these statutes and to in effect re-write them.”). There are three reasons we
think the Application courts' statutory analysis is wrong. First, this approach
requires a topsy-turvy reading of Title
17. Title
17's language does not convey certain
remedies and benefits upon application and other remedies and benefits upon
registration. The remedies are part of a single package.
Second, the argument that copyright
holders are left without a remedy until registration begs the question.
Congress created significant incentives for registration under the Act. Every
remedy outlined in Title
17, including injunctions, is conditioned
upon a copyright owner having registered the copyright. See17
U.S.C. § 501 (permitting only those copyright
owners who have met “the requirements of section
411, to institute an action for [ ]
infringement”). It is not illogical for Congress to condition the remedies of
the Act to those who register under the Act. Congress could very reasonably
have concluded that *1205 these rights and remedies are
the “carrot” to induce registration and the “stick” is the lack of federal
court jurisdiction until registration is accomplished.
Finally, the Application approach
allows for shifting legal entitlements. If, for example, an applicant could
obtain the advantage of the presumption that the copyright is valid upon application,
see17
U.S.C. § 408(c), but then, after examination the
Register of Copyrights determined the material is not copyrightable, the
presumption of validity would swing back and forth. FN10 Such a predicament would generate
uncertainty in copyright litigation that the Act was designed to moderate.
FN10. For example, in In re Napster, Inc. Copyright Litig., 191 F.Supp.2d 1087, 1101 (N.D.Cal.2002), “Napster argue[d] that ··· works with pending registration applications are not entitled to the same rebuttable presumption as registered works···· [However,] 17 U.S.C. section 410(d), states that ‘[t]he effective date of a copyright registration is the day on which an application ··· [is] received in the Copyright Office.’ Hence, works with pending registrations will be given the benefit of the presumption of ownership.”
In conclusion, we
reject the proposition that § 411 confers federal court jurisdiction for an infringement
action upon mere submission of a copyright application to the Copyright Office.
In our view, the statute requires more: actual registration by the Register of
Copyrights. Until that happens, an infringement action will not lie in the
federal courts.
3. Subsequent Acts of Congress
Our interpretation of the Act is also supported by two of
Congress's changes to the statute-one in 1988, and the other in April 2005.
a. 1988 Amendments.
In 1988, Congress considered the Berne
Convention Implementation Act (Berne Act), which sought to ally the
As Congress considered the Berne Act, a
report issued by the Senate Judiciary Committee expressed concern that §
411(a)'s registration requirement was a
“formality” incompatible with the text of the Berne Convention. SeeS.Rep. No. 100-352, at 14, reprinted in 1988 U.S.C.A.A.N. 3706, 3719 (“the
committee has concluded that section
411(a) ··· is incompatible with Article 5(2)
of
[r]egistration
··· [while] not, technically speaking, a condition for the existence of
copyright, ··· is, however a precondition for the exercise of any of the ···
rights conferred by copyright···· This metaphysical distinction between the
existence of a right ··· and the exercise of that right [is not] maintainable
under ··· our legal tradition which disfavors ··· rights without remedies.
*1206 S.
Rep. 100-352, at 18, 3723. However, the House of
Representatives did not agree and rejected the Senate's proposed modification. See
134 Cong. Rec.
In the end, Congress passed a narrower
amendment. The amendment added the language to § 411 excepting certain foreign works from the registration
requirement-registration is necessary “[e]xcept for
actions for infringement of copyright in Berne Convention works whose country
of origin is not the United States.” 17 U.S.C. § 411. The legislative compromise created “a
two-tier solution···· Registration is continued as a prerequisite to suit by domestic
authors. Only foreign origin works are excepted from
the registration requirement.” 134 Cong. Rec. H. at 10095 (emphasis added).FN11 The result confirms our view of the Act: copyrights
that originate in the
FN11. This compromise was made possible by the fact that the Berne Convention “does not forbid its members [from] impos[ing] formalities on works first published in its own territory.” S. Rep. 100-352, at 18, 3723.
At first glance,
this bifurcated scheme seems illogical. However, when one considers the reasons
for the scheme, it gains merit. The passage of the Copyright Act of 1976
created myriad incentives for copyright owners to register their copyrights, as
discussed above. These incentives ensure that most “significant work[s][are] registered” and
that the Library of Congress receives copies of these works. S. Rep. 100-352, at 20, 3725. While the most obvious incentive is that one cannot sue for
infringement unless the copyright is registered, see17 U.S.C. § 411(a), many of the incentives discussed
above provide “sound business reasons for registration wholly apart from the
prospect of infringement litigation.” S. Rep. 100-352, at 20, 3725. Thus, it is clear that in passing the original Copyright Act of
1976 and the Berne Act in 1988, Congress sought to create and retain the
incentives to registration, make certain benefits available only to
registrants, and, in fact, condition federal court intervention on registration
of the copyright. The
It is also worth noting that in 1993
Congress again took up the question of whether to eliminate registration as a
prerequisite to filing suit for infringement. See Copyright Reform Act
of 1993, H.R. 897, 103d Congress (1993). The 1993 proposal went so far as to
completely rewrite 17 U.S.C. §§ 410 and 411 so that registration was not a
requirement to file an infringement suit. See id. Congress did not adopt
the proposal.
b. 2005 Amendments.
On April 27, 2005 Congress amended
portions of Title 17 through the Family Entertainment and
Copyright Act of 2005, P.L. 109-9 (FECA). Specifically, FECA amended § 411 to allow a copyright owner to sue for
infringement if the copyright is either “registered” or “preregistered.”
*1207 FECA also amended 17 U.S.C. § 408 to require the Register to further
define preregistration FN12 As a result of this amendment, an
additional class of works pending registration will support an infringement
action.
FN12. (f) Preregistration of works being prepared for commercial
distribution.
(1) Rulemaking. Not later than 180 days after the date of enactment of this
subsection [enacted April 27, 2005], the Register of Copyrights shall issue
regulations to establish procedures for preregistration
of a work that is being prepared for commercial distribution and has not been
published.
(2) Class of works. The regulations established under paragraph (1) shall
permit preregistration for any work that is in a
class of works that the Register determines has had a history of infringement
prior to authorized commercial distribution.
(3) Application for registration. Not later than 3 months after the first
publication of a work preregistered under this
subsection, the applicant shall submit to the Copyright Office-
(A) an application for registration of the work;
(B) a deposit; and
(C) the applicable fee.
(4) Effect of untimely application. An action under this chapter [17 USCS §§ 401 et seq.] for infringement of a work preregistered
under this subsection, in a case in which the infringement commenced no later
than 2 months after the first publication of the work, shall be dismissed if
the items described in paragraph (3) are not submitted to the Copyright Office
in proper form within the earlier of-
(A) 3 months after the first publication of the work; or
(B) 1 month after the copyright owner has learned of the infringement.
The Register of
Copyrights has yet to issue regulations or guidance regarding preregistration. We thus are not at a point to determine
whether the works at issue in this case are eligible for preregistration.
We note, however, that FECA was concerned, in large part, with the piracy of
movies and the subsequent sale and distribution of illegal copies of movies.
Whatever the Register of Copyrights eventually determines, however, the
adoption of FECA further confirms our statutory analysis. Indeed, the
availability of a preregistration scheme would in
whole or in part address the problem presented by this case: the need to sue
for infringement to prevent dilution of a copyright but the inability to do so
without completed registration.
C. Registration and the Question of Proof
[8] Our conclusion that suits for
infringement can be brought only when the copyright is registered leaves open
one question: how does a litigant demonstrate to a court that a copyright is
registered? While 17 U.S.C. § 410(c) states that “the certificate of
registration ··· shall constitute prima facie evidence of the validity of the
copyright,” it does not prohibit the use of other evidence to demonstrate
validity.FN13 A party may file suit, for example,
alleging a registered copyright, and, like any other jurisdiction allegation,
it may be challenged in a motion to dismiss or summary judgment. Adequate proof
may come in the form of a certificate of registration from the copyright
office. If such a certificate is presented, the copyright owner is entitled to
a presumption that the copyright is valid, as set forth in 17 U.S.C. § 410(c). Even if the copyright owner cannot
present a certificate, the owner can still attempt to prove registration
through other means, such as testimony or other *1208 evidence
from the copyright office. Such other evidence, however, does not entitle a
copyright owner to the presumption of validity that § 410 confers on a
certificate. Upon proof of registration the copyright is valid and subject to
the remedies set forth in Title 17. Once a copyright owner proves
registration, absent other defects, the court has jurisdiction and the
infringement suit can go forward.
FN13. We will not speculate what evidence a litigant could present or what weight that evidence might or should carry. However, we acknowledge that this evidence could be a letter similar to the one presented by La Resolana in the case before us or perhaps an affidavit from a person with first-hand knowledge of a copyright's registration.
In the present case, La Resolana's
copyright was not registered nor did it possess a certificate of registration
when suit was filed. Sometime after Clay Realtors' filed its motion to dismiss,
La Resolana attempted to prove registration with a
letter from the copyright office. [Aplt.App. 76] The letter stated, among other things, the copyright office
approved the architectural drawings for registration on January 22, 2004 (with
a backdated effective date of November 19, 2003), but that the paper
certificate could be delayed for up to six months.
Ordinarily, in our view, that should
have been sufficient evidence of registration. The district court, however,
rejected La Resolana's offer of proof, finding the
letter to be unauthenticated hearsay. La Resolana has
not appealed the court's evidentiary ruling, so we must accept the
determination that registration had not occurred at the time the court entered
its order of dismissal. As La Resolana argues, and we
agree, the better practice for the court in examining its subject matter
jurisdiction is to review the jurisdictional facts, relying on extrinsic
evidence if necessary. See Radil v. Sanborn W. Camps,
Inc., 384 F.3d 1220, 1224 (10th Cir.2004); Cunningham v. BHP Petroleum Great Britain PLC, 414 F.3d
1169, (10th Cir. July 5, 2005). In light of its evidentiary ruling,
however, on the record before the district court, La Resolana
had not asserted actual registration of its drawings. Thus, the district court
concluded it lacked jurisdiction under § 411. We express no opinion as to whether the jurisdictional
defect could be cured after commencement of the infringement action.FN14
FN14. Some courts faced with a similar situation have found that a litigant can cure a jurisdictionally defective complaint by amending it. See, e.g., M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488-89 (11th Cir.1990) (allowing amended complaint to satisfy subject matter jurisdiction requirement); Positive Black Talk, Inc. v. Cash Money Records, Inc., 394 F.3d 357, 366, 2004 WL 2915340, *3 (5th Cir. Dec.17, 2004) (same).
III. CONCLUSION
A suit for
copyright infringement cannot be brought unless and until the copyright is
registered. Proving a copyright is registered can be accomplished in a variety
of ways and the adequacy of such proof will vary. Presentation of a copyright
certificate, though, is not required to demonstrate registration. Because La Resolana's architectural drawings were not registered at
the time this suit was brought, the district court properly dismissed the
complaint. Therefore, we AFFIRM.
C.A.10 (N.M.),2005.
La Resolana Architects, PA v. Clay
Realtors Angel Fire
416 F.3d 1195, 75 U.S.P.Q.2d 1496, 2005 Copr.L.Dec.
P 29,021
Briefs and Other Related Documents (Back
to top)
• 04-2127 (Docket) (Jun. 08, 2004)
• 2004 WL 2084998 (Appellate Brief) Appellees'
Joint Brief (Jan. 01, 2004) Original
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