Is filing an application for a copyright sufficient basis for filing a copyright infringement lawsuit?  The answer depends on where the copyright applicant files the case.  Some federal courts, including the Ninth and Seventh Circuit Courts of Appeals, hold that filing an application is sufficient to provide the basis for a copyright infringement claim.  Other federal courts, including district courts in the Third and Fourth Circuit Courts of Appeals, hold that an application for copyright registration is not sufficient; rather the applicant needs a completed copyright registration to sue for infringement of the applicant’s copyright.  A prospective claimant without a completed registration will first want to determine which rule the court follows in the court in which the claimant intends to file the lawsuit and may decide to sue in another court provided that court has jurisdiction over the defendant.

In a recent order issued in Panaoramic Stock Images, Ltd. v. McGraw-Hill Companies, Inc., a case pending in the Northern District of Illinois, the judge determined that the Seventh Circuit follows the so-called application rule.  Panoramic provides photographs to publishers under license.  McGraw-Hill licensed numerous photographs from Panoramic under licenses that permitted limited use of the photographs.  Panoramic sued McGraw-Hill for infringement, claiming that McGraw-Hill had exceeded the scope of its licenses by publishing the photographs in additonal publications outside the license.  One of McGraw-Hill’s defenses was that since Panoramic merely had applications pending for copyright on some of the photographs it could not sue for infringement, basing its defense in the language of 17 U.S.C. §411(a), which provides in relevant part:

411 . Registration and civil infringement actions

(a) Except for an action brought for a violation of the rights of the author under section 106A(a), and subject to the provisions of subsection (b), no civil 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.

The Panoramic court began by discussing the split in the way courts handle the question, explaining that courts that adopt the registration approach base their decision in the plain language of the statute.  The courts that adopt the application approach deal with the statutory language by determining it is ambiguous and that the application approach “better carries out the purpose of the statute by providing broad copyright protection without undue delay.”

The Panoramic court then discussed the apparent split in the district courts within the Seventh Circuit, but concluded that the Seventh Circuit has adopted the application approach, citing  Chicago Bd. of Educ. v. Substance Inc. 354 F.ed, 624, 631 (7^th Cir. 2003), which in turn cites 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 7.16[B][1][a] (2003).

Panoramic illustrates  the analysis that a copyright applicant must make before filing an infringement action.  Counsel should be careful to determine which approach is followed in the court in which the copyright applicant wants to file an infringement action to ensure success.

Another caveat: given the split between the Circuit Courts, the Supreme Court may ultimately resolve the issue.  We will keep you informed.

If you have any questions, please contact George Wailes at gwailes@carr-mcclellan.com or at (650) 342-9600.