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Specific Software Solutions, LLC v. Institute of WorkComp Advisors, LLC

District court holds copyright registration is a pre-requisite for a declaratory action for non-infringement, and holds “registration” requires either issuance of certificate of registration, or denial of application for registration, by the Copyright Office; court grants motion to dismiss because defendant applied for but had not received certificate of registration

Plaintiff and defendant are companies that consult in the area of worker’s compensation. Defendant sent a cease-and-desist letter to plaintiff, claiming that plaintiff, primarily through its web site, was infringing defendant’s copyrights.

Plaintiff filed a declaratory action seeking a declaration of non-infringement and invalidity of defendant’s copyrights. Defendant moved to dismiss, arguing that the district court could not hear the matter because the copyrights at issue had not yet been “registered” by the U.S. Copyright Office (even though defendant applied for registration). Plaintiff responded that (1) a copyright registration is not required for a declaratory action, and (2) even if registration were required, the registration requirement was met because defendant properly applied for copyright registration.

Analyzing the motion as a motion to dismiss for lack of subject matter jurisdiction, the district court first held that copyright registration consistent with Section 411(a) of the Copyright Act is a pre-requisite for a declaratory action for non-infringement.

The District Court then turned to the issue of whether defendant’s copyright was “registered,” observing a split of opinion amongst district and circuit courts about what constitutes “registration” sufficient to give a district court subject matter jurisdiction over a copyright infringement dispute under Section 411(a) of the Copyright Act. The district court observed that the Sixth Circuit had not yet decided what constitutes “registration” for purposes of Section 411(a), though three recent decisions of district courts in the Sixth Circuit had adopted the so-called “registration” or “narrow” approach, holding that registration is only accomplished once the Copyright Office passes (one way or another) on material submitted by the applicant. The district court also recognized, however, that numerous other courts, and the widely cited treatise Nimmer on Copyright, had adopted the “broad” or “application” approach, which holds that registration occurs, and that a court has jurisdiction over an infringement action, once an entity submits an application, the deposit and a fee to the Copyright Office.

The district court rejected the application approach and held that registration requires that the Copyright Office either issues a certificate of registration or denies the application for registration. “To read the statute to mean that registration occurs when the applicant files his materials would be to misread and render superfluous numerous provisions of the Copyright Act, perhaps most notably Section 411(a), which provides the procedure for how a lawsuit may still be filed even if registration is refused by the Copyright Office. Plainly, Congress intended a scheme in which, before an entity could sue on a claim of copyright infringement, the Copyright Office would be entitled to pass, in an essentially nonbinding manner, on the vitality of the copyright.” The district court acknowledged that this system will cause some delays in litigation, but “Congress apparently felt those delays were worth the benefit of the Copyright Office having an initial chance to pass judgment.”

Accordingly, the district court dismissed plaintiff’s declaratory judgment action for lack of subject matter jurisdiction.