Re: timing of filing a lawsuit

On 2/22/99, Carol Cricow <carol[_at_]yujean.com> wrote:
>
> A friend recently pointed out the following language in a
> June '98 court ruling:
>
> "This article states, referring to Ryan v. Carl Corp, 1998 U.S. Dist.
> >LEXIS 9012 (C.D. Cal. June 16, 1998): '...the issuance of a
> certificate--and not merely the filing of an application--is required
> to create federal subject matter jurisdiction in a copyright action.'"
>
> I had understood that to sue, one must have sent in/filed the
> registration, not that the certificate had to have already issued.
> Does this decision change that or am I missing something?

For works first published in the U.S.:

Under the '76 Act, while "registration is not a condition of copyright protection," 17 U.S.C. sec. 408(a), "no action for infringement of the copyright in any work shall be instituted until registration of the copyright claim has been made in accordance with this title." 17 U.S.C. sec. 411(a). Indeed, an allegation in the Complaint of compliance with the statutory registration and deposit requirements has been held to be jurisdictionally required. Frederick Fell Publishers, Inc. v. Lorayne, 422 F.Supp. 808 (SDNY 1976).

There is authority in at least one Circuit for the notion that a court may permit a party to cure its failure to register its copyright prior to filing suit by registering and then filing an amended complaint (to avoid the waste inherent in dismissing the action, obtaining registration, and commencing a new action), see, e.g.,, Frankel v. Stein & Day, Inc., 470 F.Supp. 209, 212-13 n. 2 (SDNY 1979), aff'd, 646 F.2d 560 (2d Cir. 1980), I personally think it's a stretch to believe that a court would grant relief on, e.g., a motion for a preliminary injunction or TRO in the absence of a valid, registered copyright, and in the absence of the jurisdictional predicate for doing so. See, e.g., Geritrex v. Dermarite, 910 F. Supp. 955 (SDNY 1996); McCormick v. Fugerson, 34 USPQ2d 1735 (DC EPa 1995) (in absence of registration, court lacks subject matter jurisdiction over copyright dispute.)

A plaintiff may also proceed if it applies for registration and is refused: "where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute an action for infringement ..." 17 U.S.C.A. sec. 411(b). In such a case, though, I think the plaintiff would have to demonstrate to the court that the copyright office was wrong to refuse to issue the registration.

Ari Kahan
<akahan[_at_]netcom.com>