The Copyright Act expressly states that a copyright owner may not commence a lawsuit for copyright infringement until the underlying work is registered with the Copyright Office or such registration is refused. A recent decision in the U.S. District Court for the Southern District of New York recently expounded on this subject.

          The case, Greene v. Columbia Records/Sony Music Entertainment, Inc., involved allegations of infringement in the music industry, but the rulings apply equally as well to photography. The plaintiff, James Anthony Greene, who represented himself and did not have an attorney, brought an action for copyright infringement, alleging that the defendant used his original music composition in an album without his authorization and without payment.

          After resolution of various procedural issues, Columbia Records moved to dismiss the complaint because the plaintiff had failed to register, or even allege that he had registered, his copyright with the Copyright Office. The Court granted the plaintiff time to amend his complaint to allege the necessary elements of registration, without which the Court does not have jurisdiction to hear the case.

          Plaintiff did file an amended complaint but only alleged that he had initiated the process - that he had filed the application and paid the fee. He failed to allege that the Copyright Office had acted on his application. By the time the Court heard the motion to dismiss, more months had passed and plaintiff still had not indicated whether the Copyright Office had taken any action.

          The Court did acknowledge that there are other cases which hold that the mere filing of an application is sufficient for the Court to obtain jurisdiction because the Court eventually has such jurisdiction whether the Copyright Office accepts or rejects the application. The Court, however, declined to follow that approach. In discussing the law, it held that since the statutory language requires the Copyright Office to act on an application and not just receive it, the better reading of the statute was to require registration or a refusal to register in order for the Court to maintain jurisdiction to hear the case.

          The Court, therefore, dismissed the complaint without prejudice. This means that the plaintiff can sue again once he has gotten, or been refused, a certificate of registration. What are the lessons of the case? First, carefully check all statutory requirements before suing, and make sure you comply. Second, if the Judge (or anyone else) gives you a roadmap (i.e. he tells you why the original complaint was deficient), make sure you follow it!

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq@aol.com.

           

Tommy Thompson

Kerry Kolb

Jon Saban

Jake Nelson