It depends on what court you are in. In the Western District of Wisconsin, you have to have the registration certificate in hand.
Plaintiff photographer sued defendant sports memorabilia dealers for infringement of the copyright in a photo of Green Bay Packers quarterback Aaron Rodgers. Certain defendants moved to dismiss for failure to state a claim, arguing that since he had not obtained a copyright registration certificate before filing suit, plaintiff had not satisfied this required precondition for making a copyright infringement claim.
The court granted the motion, holding that under 17 USC 411(a)‘s plain meaning, it is not sufficient for a plaintiff to simply allege it has filed an application to register the infringed copyright before filing suit. Instead, the statute’s language requires that a registration “has been made”.
Copyright litigants should note that there currently exists a circuit split on this issue — whether an application or actual registration –- is sufficient to meet the precondition for bringing an infringement action. And even district courts within the same circuit have differed on the reading of Section 411(a) (this is the case in the Seventh Circuit). The issue even splits well known copyright commentators William Patry and (the late) Melville Nimmer. Patry reads the statute to require registration certificate in hand, while Nimmer would read it to require only that an application has been filed.
The safer route, absent guidance from an authoritative appellate court, a Supreme Court decision, or a clarifying amendment to the Copyright Act, a plaintiff should make sure it has a registration certificate in hand before filing suit. The Copyright Office, for a fee, will process applications on an expedited basis. That extra fee is certainly more affordable than having the litigation matter hung up and possibly dismissed.
Robbins v. Svehla, 2016 WL 6900719 (W.D. Wis. November 22, 2016)
About the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.