DMCA Deadlines May Not Trump Registration Requirement for Copyright Infringement

Before bringing an action for Copyright infringement in Federal Court, a Copyright holder must first register their Copyright with the U.S. Copyright Office. See 17 U.S.C. § 411. This is true even though a Copyrighted work is automatically entitled to Copyright protection upon creation. See 17 U.S.C. § 102(a). However, whether registration has occurred for the purposes of complying with 17 U.S.C. § 411 is a point of disagreement amongst the U.S. Circuit Courts of Appeal. Some Circuits follow the “application approach,” holding that receipt of an application for registration by the Copyright office is sufficient. Others follow the more stringent “registration approach,” requiring that the Copyright Office issue a certificate of registration prior to filing suit.

A recent decision of the Middle District Court in Tennessee, Schenk v. Orosz, Case No. 3:13-CV-0294, 2013 U.S. Dist. LEXIS 160690 (M.D. Tenn. Nov. 7, 2013), demonstrates the importance of knowing which approach applies in a particular jurisdiction, and makes clear that statutes that otherwise impose deadlines for filing a Copyright infringement suit, such as the Digital Millennium Copyright Act (DMCA) won’t otherwise excuse the “registration” requirement.

The Court in Schenk adopted the “registration approach” and dismissed claims for Copyright infringement over 21 works whose applications for registration were still pending before the Copyright office, consistent with other decisions of district courts within the Sixth Circuit. The Court applied this approach despite the fact that provisions of the DMCA effectively forced the plaintiff to file suit before certificates of registration issued for these works.

The defendant in Schenk was accused of displaying and selling a variety of goods on a website copyrighted by the plaintiff. The plaintiff served a takedown request on the defendant’s internet service provider (ISP) to remove the content pursuant to the DMCA. In response, the defendant served a counter-notice in an attempt to have the content reinstated, triggering a 14 day period for the plaintiff to file a Copyright infringement suit. Otherwise, the ISP would make the accused content available once again.  See 17 U.S.C. § 512. Plaintiff then filed suit within 14 days.

While the court noted that the notice-and-takedown provisions of the DMCA required plaintiffs to bring the copyright infringement action within 14 days of receiving the counter-notice, the Court held that this constraint did not excuse the failure to obtain Copyright registration prior to filing.

The Schenk decision serves as an important reminder of the importance of the registration requirement across different jurisdictions, and that additional restrictions on filing suit (such as deadlines under the DMCA) may not otherwise excuse compliance with the registration requirement. Practitioners considering engaging in the notice-and-takedown process under the DMCA should consider whether the jurisdiction in which they foresee filing suit applies the application approach or the registration approach, and determine to what extent works should be registered prior to serving a takedown request.