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The Fifth Circuit: Section 411(a) Revisited

By Senior Copyright Counsel, Google Inc.

Alone among the circuits, the Fifth Circuit has chosen to follow Nimmer?s anti-statutory view that actual receipt of a certificate of registration ? as opposed to merely sending in an application ? complies with the requirement in subject matter jurisdictional requirement of Section 411(a). There are limits, though, even in the Fifth Circuit. For example, you do have to apply before trial. It now appears you have to do more than that. A recent opinion indicates that the requirements may be not as loose as I had previously thought.

In Trill Entertaiment, LLC v. B CD Music Group, 2008 WL 2354424 (M.D.La. June 9, 2008) (Civil Action No. 07-559-JJB-SCR), plaintiff sued over a number of works with descriptive titles such as ?Bas Azz Mixtape,? ?Streetz is Mine,? and ?Gangsta Grillz.? Plaintiff had received certificates for some, but not others, and had amended its complaint indicating receipt of the certificate as to some but not at to others.

In reviewing the state of the case law on section 411(a) in the Fifth Circuit, the court held:

In limited circumstances, the Fifth Circuit has allowed a plaintiff to cure the jurisdictional defect of failing to register a copyright before commencing an action by subsequently amending or supplementing its complaint after registration is completed. Positive Black Talk, Inc. v. Cash Money Recordings, Inc., 394 F.3d 357, 365 (5th Cir.2004) (allowing a plaintiff who filed a copyright action four days before registering with the U.S. Copyright Office to cure the defect). Although the Fifth Circuit made an exception to the statutory filing requirements in Positive Black Talk, this case ?is not a blank permission slip for district courts to disregard pleading failures in copyright claims.? The Levingston Corp. v. DeWalyes Ltd. Int., 2008 U.S. Dist. LEXIS 12327, *5 (E.D.La.2008). This jurisdictional defect can only be cured by registering the copyright and amending the complaint. Id . In other words, ?Evidence that the Copyright Office has received the application-no matter how reliable-does not substitute or obviate the plaintiff's obligation to amend the pleadings.? Id. Therefore, contrary to the plaintiff's assertion that all that is necessary for the suit to proceed is evidence that the ?application, deposit and fee payment have been received by the Copyright Office,? courts in the Fifth Circuit have required the plaintiff to cure this jurisdictional defect by subsequently amending the complaint to reflect registration with the U.S. Copyright Office.

As such, Trill's recent registration of ?Streetz is Mine? and ?Bad Ass Mixtape? on June 3, 2008, is clearly at odds with the jurisdictional requirements of § 411 and Fifth Circuit jurisprudence on this issue. These recordings should have been registered with the U.S. Copyright Office prior to commencing the instant action, or in the alternative, these jurisdictional defects should have been cured by registration and subsequently amending the complaint. Trill has not amended its complaint to indicate the date of registration, and it has only sent off its registration one week before the scheduled bench trial on June 11, 2008. With respect to recordings ?Bad Ass Mixtape? and ?Streetz is Mine,? Trill has failed to demonstrate that it has satisfied the jurisdictional requirements necessary to bring an infringement action, and summary judgment in favor of B C D Music Group will be granted for these recordings.

Full post as published by The Patry Copyright Blog on June 17, 2008 (boomark / email).