Tri-Marketing, Inc. v. Mainstream Marketing Services, Inc., et al.

District court holds that plaintiff, who applied for copyright registration but did not receive certificate of registration before filing copyright infringement action, can proceed and denies defendant’s motion to dismiss

Plaintiff and defendant are both engaged in the telemarketing industry. Plaintiff claimed that defendant copied portions of its 2004 and 2007 web sites. Plaintiff filed suit for copyright infringement of its web site after properly applying for copyright registration but before receiving a certificate of registration (or denial of registration) from the Copyright Office.

Section 411(a) of the Copyright Act provides that “no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title,” but also provides that, even where the Copyright Office has refused registration, the applicant is entitled to institute an action if proper notice is served on the Registrar of Copyrights. Defendant moved to dismiss, asserting that the court lacked subject matter jurisdiction because plaintiff did not have a certificate of registration for its alleged copyrights.

The district court observed that courts have taken two approaches on the issue of jurisdiction in a case where a party files a copyright infringement action after it has duly submitted all of the necessary application materials to the Copyright Office but before the Office has either issued a certificate or denied the issuance of a certificate. The “narrow approach” takes the view that a certificate of registration is a jurisdictional pre-requisite. This approach has been adopted by the Tenth and Eleventh Circuits, and various district courts. The “broad approach” or “application approach” takes the view that fully complying with the application requirements for registration satisfies subject matter jurisdiction requirements. This approach has been adopted by the Fifth Circuit, various district courts, and the widely cited treatise Nimmer on Copyright.

In this case, plaintiff urged the district court to adopt the application approach, citing Action Tapes, Inc. v. Mattson, 462 F.3d 1010 (8th Cir. 2006), in which the Eighth Circuit said “the copyright owner may not sue for infringement under the federal Copyright Act until the owner has delivered ‘the deposit, application, and fee required for registration’ to the United States Copyright Office, a branch of the Library of Congress.” Defendant urged the court to adopt the narrow approach and cited to several district court decisions that had adopted that approach.

The district court ultimately adopted the broad, application approach and denied defendant’s motion to dismiss. While observing that Action Tapes was not binding because that case did not involve the precise jurisdictional issue as the present matter, the district court nevertheless concluded that the language used by the Eighth Circuit in Action Tapes case suggests that it would adopt the application approach. The district court also stated that the application approach promotes the interests of justice and judicial economy.