Middle District of Tennessee adopts Narrow Approach to Copyright Registration -- for the Time Being

A split exists among the various federal circuits in the United States over what is required before a plaintiff may file a lawsuit asserting copyright infringement.  Recently, the Middle District of Tennessee issued a reported decision that adopted the “narrow approach.” Specific Software Solutions, LLC v. Institute of Workcomp Advisors, LLC, 615 F. Supp. 2d 708 (M.D. Tenn. 2009).  Thus, for the present time, copyright owners in the 32 counties comprising Middle Tennessee must actually have received a determination from the Copyright Office as to the registrability of their works before they may sue another party for infringement in this judicial district.

The question before the court in Specific Software was, “What constitutes registration?”  The Copyright Act states at 17 U.S.C. Section 411(a), and the Sixth Circuit has held, that registration is a prerequisite to filing a copyright infringement suit.  But the Sixth Circuit has not decided what constitutes “registration” under this provision of the Copyright Act, and courts across the country have reached different conclusions.

The “narrow approach” holds that registration is not considered complete until the Copyright Office reaches a determination on the merits of the application and either accepts it or rejects it.  Some of the courts that follow the narrow approach include: the Western District of Michigan, the Central District of California and, for now, the Middle District of Tennessee.

The “broad approach” holds that registration is not dependent upon any consideration or action by the Copyright Office.  Instead, courts following the broad approach generally consider the registration requirement to be satisfied upon the plaintiff’s submission of the following to the Copyright Office: an application, deposit copy of the work and required fee.  These courts note that the Copyright Office’s eventual acceptance or rejection of the application has no bearing since the Copyright Act explicitly allows a plaintiff to initiate suit for infringement even when the application has been rejected.  Some of the courts that follow the broad approach include the District Court for the District of Columbia, the Middle District of North Carolina, the Fifth Circuit and the 10th Circuit.

In adopting the narrow approach, the Specific Software Court noted that those courts adopting the broad approach have “correctly recognized that there is something ‘uneconomical’” about dismissing a complaint simply because a plaintiff does not yet have a certificate of registration, especially since the plaintiff is allowed to sue even if the Copyright Office ultimately rejects the application and denies registration.  615 F. Supp. 2d at 715-16.  But the court was constrained by its interpretation of the Copyright Act, as currently worded, and settled on the narrow approach.  Id. at 716.

Across the country, this issue is far from settled.  Presently pending before the Supreme Court is the case Reed Elsevier, Inc. v. Muchnick, which, among other issues, raises the question of how “registration” should be defined under the Copyright Act in relation to initiating a suit for infringement.  It is set for oral argument on October 7, 2009.  Expect to see more clashes among the circuits until the Supreme Court issues a decision in that case.  Depending on how the Supreme Court comes out on that issue, the holding in Specific Software may or may not be overruled.

In my own role as Vice Chair of the American Bar Association’s Copyright Litigation Committee, I am helping lead a working group that has examined this precise issue.  For a number of reasons, we are recommending that the Copyright Act be amended to adopt the broad approach.  Among other reasons, the broad approach is consistent with the fact that, under the Copyright Act, copyright owners enjoy protection from the moment they create their work, regardless of whether they ever register their work.  Amending the Copyright Act to adopt the broad approach would also put the United States on equal footing with other Berne Convention countries, and abolish the higher burden currently placed on United States works, as compared with non-United States works. 

For the present time, plaintiffs who need to sue for copyright infringement but who have not yet obtained either registration or rejection from the Copyright Office should consider suing in one of the courts that has adopted the broad approach.  Many times, plaintiffs have a choice in where they file suit.  They can sue either where the defendant resides or has its principal place of business.  But they can also sue where the transaction giving rise to the lawsuit occurred.  These are often two different states.  And as I discussed in my last post, many courts will exercise personal jurisdiction over defendants who make significant and repeated sales into a specific state, even through the Internet.  For now, plaintiffs who do not yet have a determination from the Copyright Office in hand should weigh all their options and bring suit in one of the states following the broad approach.