Snapshot of Trademark and Copyright Suits Filed and Closed in the Eastern District of Virginia

Ever wonder about the five-year trend for the number of trademark and copyright actions filed in the U.S. District Court for the Eastern District of Virginia (the “Rocket Docket”), and what the numbers may say about the state of trademark and copyright litigation.  Mod Law did. 

Here are the annual numbers for trademark or copyright infringement actions filed in the Eastern District of Virginia during the period January 1 through June 8 and the percentage of those same cases that were closed by June 8 of the same year:

YEAR	Cases Filed by 6/8	Same Cases Closed by 6/8 (%)
2006	54	30
2007	53	21
2008	32	28
2009	53	15
2010	38	16

On average, the numbers show that 2010 was fairly low in terms of the number of cases filed.  Not a big surprise.  The numbers also show that, of those cases filed by June 8, significantly less cases were closed by June 8, 2010.  Hmm.  One reasonable interpretation of the data may be that trademark and copyright owners are choosing their battles more carefully.  Another, non-exclusive interpretation may be that legal battles involving trademark and copyright issues are more important to both plaintiffs and defendants, and thus both sides are less willing to lose or settle.  Perhaps less is more during the first half of 2010. 

Ninth Circuit Holds Copyrights “Registered” When Copyright Office Receives Completed Application, Widening Circuit Split

For some time, copyright owners have had to struggle with the requisite issue of whether a copyright is “registered,” for purposes of filing a copyright infringement suit, at the time the Copyright Office receives a copyright holder’s application (the “application approach”), or at the time the Copyright Office acts on the application and issues a certificate of registration (the “registration approach”).  The Court of Appeals for the Ninth Circuit recently addressed this issue in Cosmetic Ideas, Inc. v. IAC/InteractiveCorp, No. 08-56079, slip. op. (May 25, 2010), making it easier for copyright plaintiffs to advance their case in that jurisdiction.  In other jurisdictions, a split of authority exists: the Fifth and Seventh Circuits apply the application approach, the Tenth and Eleventh Circuits apply the registration approach, and district courts within other circuits apply both approaches. 

Is copyright registration a jurisdictional prerequisite to suit?

As an initial matter, the court quickly dismissed the notion that copyright registration is a jurisdictional prerequisite to suit.  The Ninth Circuit relied on the recent Supreme Court decision in, Reed Elsevier, Inc. v. Muchnick, No. 08-103, slip. op., _ U.S. _, 130 S. Ct. 1237 (2010), which held that a copyright holder’s failure to comply with Section 411(a)’s registration requirement does not restrict a federal court’s subject matter jurisdiction over infringement claims involving unregistered works.  (The Reed Elsevier decision is discussed in a prior Mod Law post.)

Is copyright registration an element of a copyright infringement claim?

Section 411(a) of the Copyright Act states, in relevant part, that “no civil action for infringement of the copyright in any United States work shall be instituted until pre-registration or registration of the copyright claim has been made in accordance with this title.”  17 U.S.C. § 411(a).   Unfortunately, the Copyright Act’s definition of the term “registration” in Section 101 does not shed any light on its meaning within the context of Section 411(a).  Moreover, the Ninth Circuit found that analyzing the language of the statute as a whole did not resolve the issue of whether a copyright should be considered “registered” under the application or registration approach.  The Ninth Circuit thus went beyond the plain meaning of the Copyright Act to determine which approach better carried out the purpose of the statute. 

The Ninth Circuit held that “receipt by the Copyright Office of a complete application satisfies the registration requirement of § 411(a),” based on the following findings: (1) the application approach avoids delay in litigation which could eventually proceed under the Act regardless of whether the Copyright Act accepts or rejects the application; (2) the application approach does not impair the goal of copyright registration to maintain a robust national register of copyrights; (3) the additional delay under the registration approach has a greater potential of causing a party to lose its ability to sue, due to the statute of limitations for copyright infringement actions; and (4) the application approach permits the processes of registration approval and litigation to proceed without any prejudice to the litigants or the Copyright Office, which may still have an opportunity to voice its opinion as to the registrability of a work during litigation. 

Perhaps one day, an authority higher than the Ninth Circuit will provide clarity on the issue for all litigants.  For now, copyright owners in the Ninth Circuit have one less obstacle to prosecuting their infringement actions without delay; other copyright owners still need to check the state of the law of jurisdictions in which an infringement suit is contemplated.