Before the Patent Trial and Appeal Board ______

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE ______

BEFORE THE PATENT TRIAL AND APPEAL BOARD ______

EASTMAN KODAK COMPANY, AGFA CORPORATION, ESKO SOFTWARE BVBA, and HEIDELBERG, USA Petitioners

CTP INNOVATIONS, LLC Patent Owner ______

Case IPR2014-00788 Patent 6,738,155 ______

PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE

Filed on behalf of CTP Innovations, LLC

By: W. Edward Ramage (Lead Counsel) Reg No. 50,810 Samuel F. Miller (Back-up Counsel) (pending pro hac vice admission) BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ, P.C. Baker Donelson Center 211 Commerce Street, Suite 800 Nashville, Tennessee 37201 Tel: (615) 726-5771 Fax: (615) 744-5771 Email: [email protected] [email protected]

TABLE OF CONTENTS

TABLE OF AUTHORITIES ...... ii

I. INTRODUCTION ...... 1

II. ARGUMENT ...... 3

A. Mr. Suetens’ Declaration Should Be Excluded...... 3

B. The Apogee Reference Should Be Excluded...... 8

III. CONCLUSION ...... 133

CERTIFICATE OF SERVICE ...... 155

TABLE OF AUTHORITIES

CASES PAGE (S) In re Cronyn , 890 F.2d 1158, 1159 (Fed. Cir. 1989) ...... 9

CA, Inc. v. Simple.com, Inc., 780 F. Supp. 2d 196, 307 (E.D.N.Y. 2009) ...... 10, 11

Ex parte Research and Manufacturing Co., Inc., 10 U.S.P.Q.2D (BNA) 1657, 1989 Pat. App. LEXIS 2 ...... 11

Carolina Enters., Inc. v. Coleco Indus., Inc., 211 U.S.P.Q. 479 (D.N.J. 1981) ...... 12

Nordock Inc. v. Sys. Inc , No. 11-C-118, 2013 WL 989864 (E.D. Wis. Mar. 13, 2013) ...... 13

Amini Innovation Corp. v. Anthony Cal., Inc. , No. 03-8749, 2006 WL 6855371 (C.D. Cal. Sept. 21, 2006) ...... 13

STATUTES 17 U.S.C. § 410 ...... 12

17 U.S.C. § 410(c) ...... 11, 12

OTHER AUTHORITIES 37 C.F.R. § 42.62 ...... 1

37 C.F.R. § 42.64 ...... 1

37 C.F.R. § 42.64(b) ...... 1, 2

37 C.F.R. § 42.51(b)(2)(i) ...... 2

37 C.F.R. § 42.24(a)(2) ...... 2

37 C.F.R. § 42.123(b) ...... 2

37 C.F.R. § 42.5(c)(3) ...... 2

37 C.F.R. § 42.5(b) ...... 2

Federal Rule of Evidence 402 ...... 8, 13

Federal Rule of Evidence 403 ...... 13

Federal Rule of Evidence 602 ...... 8

Federal Rule of Evidence 802 ...... 13

Federal Rule of Evidence 803(6) ...... 8

Federal Rule of Evidence 901 ...... 8

MPEP § 2128(II)(A) ...... 10

MPEP § 2128(II)(B)...... 10

Nimmer on Copyright ...... 12

iii

I. INTRODUCTION CTP Innovations, LLC (“Patent Owner”), pursuant to 37 C.F.R. §§ 42.62 and 42.64, moves to exclude the following exhibits from the record in this proceeding: (1) the Declaration of Johan Suetens and attachments (Exhibit 1022), and (2) the AGFA Apogee: The PDF-based Production System brochure

(“Apogee”) (Ex. 1007 and Attachment A to Exhibit 1022).

Petitioners filed the Declaration of Johan Suetens and the Apogee reference with this proceeding’s original petition. Petitioners filed the Suetens Declaration to establish that the Apogee reference was published prior to the subject patent’s earliest effective filing date. See Suetens Decl. (Ex. 1022), at ¶ 6. Petitioners rely upon the Apogee reference to support all of their obviousness assertions.

The Board entered its decisions to institute this proceeding on November 28,

2014. Normally, a patent owner would have had to file an objection to the aforementioned exhibits within ten (10) days of entry of the institution decision.

37 C.F.R. § 42.64(b). However, on the face of the Suetens Declaration and without the benefit of his deposition, there did not appear to be a viable objection to be made. The grounds to object to these exhibits only became known through the long-delayed and recent deposition of Mr. Suetens on March 26, 2015. Mr.

Suetens’ deposition testimony reveals that he completely lacks any personal knowledge of the distribution and public accessibility of the Apogee reference

during the relevant time. Indeed, he testified that he has no knowledge of when a member of the public first or actually received a copy of the Apogee reference or when or if the Apogee reference was made available to anyone outside of Agfa and its subsidiaries. Mr. Suetens’ testimony is directly contrary to the allegations made in his declaration.

Under analogous circumstances, when a party seeks relief outside the limitations of the normally applicable rules, the Board applies an “in the interest of justice” standard. See, e.g. , 37 C.F.R. § 42.51(b)(2)(i) (motion for additional discovery); id. § 42.24(a)(2) (motion to waive page limits); id. § 42.123(b)

(motions to submit supplemental information more than one month after institution date); id. § 42.5(c)(3) (excusal of late action in general). The Board may waive or suspend a requirement under part 42 and may place conditions on the waiver or suspension. Id. § 42.5(b).

Patent Owner submits that the waiver or suspension of 37 C.F.R. §

42.64(b)’s requirements is in the interests of justice under the present circumstances. It was only through the recent deposition testimony of Mr. Suetens that the basis for excluding some or all of his declaration, and, as a result, the

Apogee reference, became known. Patent Owner requested Mr. Suetens’ deposition shortly after the initial conference call in this proceeding in December

2014, and his deposition was originally scheduled by agreement for February 18, 2

2015. See Notice of Deposition of Johan Suetens (Paper _). Subsequently, Mr.

Suetens became unavailable, and Petitioners made him available for deposition on

March 26, 2015. See Ex. 2016

Patent Owner has filed this motion within ten (10) days of the deposition and one day after receiving the deposition transcript. Patent Owner could not have discovered the declaration’s defects except through the deposition. Further, a determination on whether the Apogee reference should be excluded may be dispositive of this matter because the Apogee reference is a critical element in every instituted ground for rejection.

II. ARGUMENT

A. Mr. Suetens’ Declaration Should Be Excluded. Some or all of Mr. Suetens’ declaration (Ex. 1022), and attachments thereto, should be excluded because statements made in the declaration are not accurate and were made without Mr. Suetens’ personal knowledge.

Petitioners filed the Suetens Declaration to establish that the Apogee reference was publically available prior to the earliest effective filing date of the subject patent. See Suetens Decl. (Ex. 1022), at ¶ 6. In his declaration, Mr.

Suetens makes several affirmative statements regarding the Apogee reference’s distribution and availability. He states that Apogee was distributed shortly after the press briefing of March 17, 1998. Id. at ¶ 7. He states that the Apogee

reference was available shortly after that briefing in printed and electronic form and was world-wide distributed through the Agfa sales departments. Id. at ¶ 8. He states that it was available at several seminars, exhibitions and demos of an undefined class of Apogee products to the public. Id. at ¶ 9. He states that the

Agfa marketing-communications department made the Apogee reference available to the public no later than the press briefing of May 28, 1998, and possibly as early as the press briefing of March 17, 1998, as an electronic PDF-file for downloading to the public at the website www.agfahome.com. Id. at ¶ 11. He further states that, based upon the above and the excerpt from the user interface of the database entry in Agfa’s Enterprise Management System (Attachment D to his declaration), the Apogee reference was available to the public no later than the press briefing of

May 28, 1998, and possibly as early as the press briefing of March 17, 1998. Id. at

¶ 11.

Mr. Suetens’ deposition testimony, however, tells a different story. As detailed below, Mr. Suetens’ deposition reveals that he has no actual personal knowledge of when (or even, if) the Apogee reference was distributed to the public, made available to the public, or provided to any member of the public.

As a preliminary matter, Mr. Suetens did not write or create the Apogee reference and does not know who wrote it. Suetens Depo. Tr. (filed simultaneously herewith as Ex. 2016) at p. 25:17-23. He was not involved in its 4

production. Id. at p. 26:23-25. He did not make any decisions on when to make it available to the public. Id. at 35:5-8. Since 1985, he has always been a member of the marketing-communication department of Agfa. Id. at p. 25:11-13.

Further, the marking-communication department of Agfa does not provide documents - including the Apogee reference - directly to the public. Instead, that department made documents available to Agfa subsidiaries. Id. at pp. 23:8-24:10.

According to Mr. Suetens, the sales people at Agfa outside of the marketing- communications department may have firsthand knowledge of the distribution of the Apogee document to a customer or potential customer (if such distribution actually occurred, which is unsupported by the record in this proceeding in light of

Mr. Suetens’ deposition testimony) , but he does not know who that would be. Id. at pp. 34:19-35:8.

Mr. Suetens repeatedly testified that he does not have any firsthand knowledge of the distribution of the Apogee reference to any customer or potential customers - let alone when or even if it was actually distributed outside of Agfa.

Id . at pp. 34:4-18, p. 40:7-41:1. He has never been involved in any face-to-face meeting with customers or potential customers. Id. at p. 25:7-10. He does not have any knowledge of the actual distribution of Apogee to a customer or potential customer at a Seybold conference. Id. at pp. 28:16-25. He has never seen the

Apogee document being handed over to a customer. Id. at p. 29:3-9. Mr. Suetens 5

has no knowledge of any member of the public ordering copies of the Apogee document, or receiving the Apogee document. Id. at p. 52:8-23.

With regard to the Apogee document’s alleged online availability, Mr.

Suetens similarly lacks any personal knowledge. Although he attempts to state that the Apogee reference was on Agfa’s website, his testimony is directly to the contrary. He did not put a PDF of the document up on the Agfa website; he did not see it being put up; he does not know who, if anyone, put it up; and, in fact, he does not remember seeing it on the website. Id. at pp. 48:3- 49:21. He cannot say that it was put up on the website on a particular date, and he admits that there are no attachments to his declaration that shows when the Apogee document would have been posted. Id. at pp. 49:18-50:4. There likewise is not a single document in the record of this proceeding that evidences the display of the Apogee reference on any website.

Mr. Suetens similarly testified that he does not have any personal knowledge of when the printed form would have been distributed to Agfa subsidiaries, other than possibly assisting in preparing packages for shipment to subsidiaries for trade shows and Seybold conferences. Id. at p. 50:5-23. However, he also testified that he does not remember what he put in the shipment for the Seybold conferences, and he does not know if that particular document was included in a shipment to the

Agfa United States subsidiary. Id. at pp. 31:4-32:5. He did not work with any 6

salespeople for the Agfa U.S. subsidiary at the time. Id. at p. 33:6-9. He did not attend the conference, and he has no knowledge of actual distribution of the document to a customer or potential customer in 1998. Id. at pp. 33:22-34:15.

In his declaration, Mr. Suetens references an announcement about the

Apogee system being made at Seybold NYC 97 in New York. Suetens Decl. (Ex.

1022), at ¶ 7. However, he did not attend that Seybold conference, and, in fact, has not attended any Seybold conference. Suetens Depo. Tr. (Ex. 2016), at p. 28:17-

23; p. 39:1-7. He also cannot tell if the product being announced at Seybold NYC

97 was the same product that was reported as being commercially released in June

1998. Id. at pp. 37:8--38:3. No copy of that announcement has been provided, and he does not know what form the announcement would have taken. Id. at p. 39:8-

23.

Attachment D to the declaration does not establish public availability.

Instead, Attachment D is a screen dump from Afga’s SAP system showing that a number of Apogee document pieces were printed for the marketing department and went into the Agfa warehouse in Antwerp. Id. at pp. 42:8-45:18. Documents in this warehouse are not publicly accessible; they are available to Agfa subsidiaries for ordering. Id. at pp. 45:19-46:1. Agfa would, in theory, have a document that would show when the Apogee document was distributed to the various

subsidiaries; however, Mr. Suetens does not have any documentary evidence that shows distribution from the warehouse to the subsidiaries. Id. at pp. 42:12-44:6.

Although the Apogee document contains a copyright notice, Mr. Suetens testified that his department is not responsible for copyright notices, and it does not file copyright registrations. Id. at pp. 46:16-47:6. He does not know if the

Apogee document was ever registered for a copyright, and he does not know if there is a copyright registration certificate. Id. at p. 47:14-21.

The above deposition testimony makes clear that Mr. Suetens lacks any knowledge or basis for making the statements in his declaration concerning the public accessibility of the Apogee reference. At a minimum, paragraphs 6-12 of the declaration, and Attachments A and D thereto, should be excluded as being made without personal knowledge or basis under Federal Rule of Evidence 602, and for failing to properly authenticate or provide foundation for documents relied on by the declarant under Federal Rules of Evidence 803(6) and 901. The remaining paragraphs and attachments do nothing to establish a prior art printed publication date for Apogee, and thus are irrelevant under Federal Rule of

Evidence 402.

B. The Apogee Reference Should Be Excluded. Petitioner requests that the Board exclude the Apogee reference (Ex. 1007) from this Proceeding because Petitioners have failed to establish that it was

distributed outside of Agfa or was otherwise publicly accessible. Petitioners have the burden of establishing that Apogee is a “printed publication” prior to the critical date of the subject patent.

The statutory phrase “printed publication” has been interpreted to

mean that before the critical date the reference must have been

sufficiently accessible to the public interested in the art; dissemination

and public accessibility are the keys to the legal determination

whether a prior art reference was “published.”

In re Cronyn , 890 F.2d 1158, 1159 (Fed. Cir. 1989). This determination involves a case-by-case inquiry into the facts and circumstances of whether the reference was disclosed to members of the public. Id. at 1161.

The deposition testimony of Mr. Suetens demonstrates that there is no evidence in the record of the Apogee reference being distributed beyond Agfa or accessible by the public. At best, his testimony establishes the Apogee reference was printed and stored internally in a warehouse outside the United States and could then be accessed internally by Agfa subsidiaries. There is no evidence that the Apogee reference was ever actually ordered by or distributed to the Agfa subsidiaries, and no evidence that the Agfa subsidiaries thereafter distributed it or made it accessible to the public.

Petitioners cannot rely on the Apogee reference’s alleged electronic publication. “An electronic publication, including an on-line database or Internet publication, is considered to be a ‘printed publication’ . . . provided the publication was accessible to persons concerned with the art to which the document relates.”

MPEP § 2128(II)(A). “Prior art disclosures on the Internet or on an on-line database are considered to be publicly available as of the date the item was publicly posted. Absent evidence of the date that the disclosure was publicly posted, if the publication itself does not include a publication date (or retrieval date), it cannot be relied upon as prior art. . . .” MPEP § 2128(II)(B). As discussed above, there is no actual evidence that the Apogee reference ever was actually posted online.

Although the Agfa document has a copyright notice that states a year without a month, this alone is insufficient to establish a date of publication for prior art purposes. There is nothing in the record to indicate that the Apogee reference was registered with the United States Copyright Office. Indeed, no registration has been submitted.

While a certificate of registration may support a finding of publication for a prior art reference, this is based upon the presumption of validity that attaches to the certificate, which is a government-issued document. In CA, Inc. v. Simple.com,

Inc. , the court found that summary judgment was appropriate for claims where the 10

prior art references had copyright registration certificates available. 780 F. Supp.

2d 196, 307 (E.D.N.Y. 2009). The court explained that a certificate of registration

“shall constitute prima facie evidence . . . of the facts stated therein.” Id. (citing 17

U.S.C. § 410(c)). The justification for this general rule is that the copyright registration must be attested and provide the date of first publication and certifies that the work has been published. 780 F. Supp. 2d at 307 . The court further stated that the copyright registration is self-authenticating under Fed. R. Evid. 902, because it is “issued under the seal of the Copyright office . . .” Id.

Similarly, in Ex parte Research and Manufacturing Co., Inc. , No. 88-3277,

10 U.S.P.Q.2d (BNA) 1657, 1989 Pat. App. LEXIS 2, at *14-15 (Bd. Pat. App. &

Interf., Jan. 31, 1989), the Board of Patent Appeals and Interferences further explained that the “certificate of registration ‘shall be admitted in any court as prima facie evidence of the facts stated therein’, [and] the certificate of registration

. . . is prima facie evidence of the publication thereof. . . . The ‘date of publication’ is defined in 17 USC § 26 (Copyright Act of 1909) as ‘the earliest date when copies of the first authorized edition were placed on sale, sold, or publicly distributed by the proprietor of the copyright or under his authority.’ Thus, the certificate of registration provides prima facie evidence that the [copyrighted document] was a ‘printed publication’ under the provisions of 35 USC 102(b).”

The Board went on to determine that a bulletin’s copyright registration date, which 11

was submitted as a prior art reference, was “inaccurate” as the date of publication and did not constitute prior art, because there was no evidence the bulletin was circulated outside the company.

Under these circumstances, a bare assertion of copyright notice is insufficient to constitute prima facie evidence of publication:

The copyright registration certificate constitutes prima facie evidence of the validity of the copyright and of the facts stated in the certificate. But, under the current Act, unlike the 1909 Act, the registration certificate constitutes such prima facie evidence only if registration is made before or within five years after first publication of the work.

2 Melville B. Nimmer & David Nimmer , Nimmer on Copyright § 7.16[D]

(Matthew Bender, Rev. Ed.) (citing 17 U.S.C. § 410; Carolina Enters., Inc. v.

Coleco Indus., Inc. , 211 U.S.P.Q. 479 (D.N.J. 1981)). See also 17 U.S.C. § 410(c).

The prima facie presumption from the registration certificate applies not only to American works, but even to foreign works exempt from the registration requirement as a prerequisite for instituting suit. ‘[F]oreign authors must also register in order to obtain the important benefits of the presumption of validity and statutory damages.’

Nimmer § 7.16[D] at n. 521(citing 17 U.S.C. § 410(c))(internal citations omitted).

Because Petitioners cannot rely on the copyright date printed on the Apogee promotional materials as prima facie evidence of publication, Petitioners must rely

on specific publication and retrieval dates by the public for Apogee. However, as discussed above, Petitioners have not provided that evidence. Therefore, Apogee is not prior art and should be excluded under Federal Rules of Evidence 402, 403, and 802. See Nordock Inc. v. Sys. Inc. , No. 11-C-118, 2013 WL 989864, at *3

(E.D. Wis. Mar. 13, 2013) (excluding “prior art” references where “insufficient evidence has been presented regarding the dates of the two publications”); Amini

Innovation Corp. v. Anthony Cal., Inc. , No. 03-8749, 2006 WL 6855371, at *7

(C.D. Cal. Sept. 21, 2006) (“Without knowing the publication dates, the documents are not admissible as prior art.”).

III. CONCLUSION For all the foregoing reasons, the Patent Owner, CTP Innovations, LLC, respectfully requests that the Declaration of Johan Suetens and attachments

(Exhibit 1022), and the Apogee reference (Ex. 1007 and Attachment A to Exhibit

1022), be excluded from the record in this proceeding.

Dated: April 2, 2015 Respectfully submitted,

BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ, P.C.

/W. Edward Ramage/ W. Edward Ramage, Reg. No. 50,810 Samuel F. Miller BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ, P.C. Baker Donelson Center 211 Commerce Street, Suite 800 Nashville, Tennessee 37201 Tel: (615) 726-5771 Fax: (615) 744-5771 Email: [email protected] [email protected]

Counsel for Patent Owner CTP Innovations, LLC

CERTIFICATE OF SERVICE The undersigned hereby certifies that, on April 2, 2015, the foregoing

Motion to Excluded (including attachments thereto) was served in its entirety via

U.S. Express Mail, postage prepaid, and electronic mail upon the following:

Scott A. McKeown OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, LLP. 1940 Duke Street Alexandria, VA 22314 Tel: (703) 412-6297 Fax: (703) 413-2220 Email: [email protected] [email protected]

/W. Edward Ramage/ W. Edward Ramage, Reg. No. 50,810

APPENDIX OF AUTHORITIES

Amini Innovation Corp. v. Anthony Cal., Inc. , 2006 WL 6855371 (C.D. Cal. Sept. 21, 2006)

Carolina Enters., Inc. v. Coleco Indus., Inc. , 211 U.S.P.Q. 479 (D.N.J. 1981)

Ex parte Research and Manufacturing Co., Inc. , 10 U.S.P.Q.2D (BNA) 1657, 1989 Pat. App. LEXIS 2 Nordock Inc. v. Sys. Inc , 2013 WL 989864 (E.D. Wis. Mar. 13, 2013)

Nimmer on Copyright § 7.16

Amini Innovation Corp. v. Anthony California Inc., Not Reported in F.Supp.2d (2006) 2006 WL 6855371

who is retained or specially employed to provide expert testimony in the case or whose duties as an employee !""#$%&$#'(()*+ of the party regularly involve giving expert testimony, ,-./$012$%230.45$6704078-$73$69::2-0./$4;47.4<.2= be accompanied by a written report prepared and signed >-702?$@04023$A730:760$B89:0C by the witness. The report shall contain a complete B=A=$B4.7D8:-74= statement of all opinions to be expressed and the basis and reasons therefor; the data or other information EFGHG$GHH,IEJG,H$B,KL= considered by the witness in forming the opinions; any ;= exhibits to be used as a summary of or support for the EHJM,HN$BE&GO,KHGE$GHB= opinions; the qualifications of the witness, including a list of all publications authored by the witness within the H8=$BI$")P'*QR= $S$ @2T0=$!+C$!""#= preceding ten years; the compensation to be paid for the study and testimony; and a listing of any other cases in Named Expert: Daniel L. McConaughy, Shepard Vineburg, which the witness has testified as an expert at trial or by Robert Trout deposition within the preceding four years.” These criticisms are off the mark. Defendants are entitled Attorneys and Law Firms to provide a rebuttal expert under the FRCP, and as Mr. Daniel Miles Cislo , Donald M. Cislo , Mark D. Nielsen , Cislo McConaughy's report and testimony are “intended solely to and Thomas LLP, Santa Monica, CA, for Amini Innovation contradict or rebut” the Plaintiff's report it was not necessary Corp. for Mr. McConaughy to conduct its own damage calculations. FRCP 26(a)(2)(C) . 2 Lisa A. Karczewski , Thomas Tak–Wah Chan , Chan Law Group, Michael Hyungchoon Kim , Michael H. Kim PC, 2 Ronald M. St. Marie , Doll Amir and Eley, Los Angeles, CA, “(C) These disclosures shall be made at the times and for Anthony California Inc. in the sequence directed by the court. In the absence of other directions from the court or stipulation by the parties, the disclosures shall be made at least 90 days before the trial date or the date the case is to be ready PROCEEDINGS (in chambers): for trial or, if the evidence is intended solely to contradict Order re Motions in Limine or rebut evidence on the same subject matter identified by another party under paragraph (2)(B), within 30 days The Honorable S. JAMES OTERO , District Judge. after the disclosure made by the other party. The parties shall supplement these disclosures when required under *1 Victor Paul Cruz, Courtroom Clerk. subdivision (e)(1).” The Court finds upon reviewing the deposition transcripts Plaintiff's Motion in Limine # 1 that Mr. McConaughy did not testify that “he could not Plaintiff moved to exclude the report and testimony of find anything wrong with Plaintiff's ... opinion.”Rather, Mr. Defendants' witness Daniel McConaughy under FRE 702 . McConaughy stated that Plaintiff's opinion was conclusory Mr. McConaughy was offered as a rebuttal expert witness and therefore that it was impossible to determine the under FRCP 26(a)(2) (B) , 1 to explain to the jury flaws with appropriateness of the methods or results contained in the methodology he perceives in Plaintiff's expert reports. Plaintiff's opinion. Plaintiff argues that Mr. McConaughy's report is deficient for failing to contain its own damage calculations, and that While Mr. McConaughy may or may not be an expert in Mr. McConaughy testified that “he could not find anything econometrics, he is an expert in damages calculations. He incorrect with Plaintiff's damages expert['s] ... opinion.” Mot. has testified many times on damages, has a Ph.D. in finance, page 2. Plaintiff further criticizes Mr. McConaughy for not and teaches and publishes on the subject. These amply Daubert. being a specialist in econometrics. demonstrate his qualifications under Plaintiff's argument that an econometrics expert is necessary to critique Plaintiff's expert report assumes that the methodology 1 “(B) Except as otherwise stipulated or directed by the of Plaintiff's report is appropriate for use in damages court, this disclosure shall, with respect to a witness calculations. This very assumption is what Defendants intend

© 2015 Thomson Reuters. No claim to original U.S. Government Works. 1 Amini Innovation Corp. v. Anthony California Inc., Not Reported in F.Supp.2d (2006) 2006 WL 6855371 for the report and testimony of Mr, McConaughy, an expert counsel to preclude a finding of willful infringement waive in damages calculations, to rebut. attorney-client privilege with respect to all communications on that subject matter. In re Echostar, 448 F.3d 1294, 1299 The motion is DENIED. (Fed.Cir.2006) . Those communications must, therefore, be produced if requested.

Plaintiff's Motion in Limine # 2 For this reason, Defendants cannot rely on the defense of Plaintiff moves to preclude Defendants from relying on a advice of counsel at trial. Although requested by Plaintiff, no § 112 patent invalidity defense, which was not specifically such advice of counsel was produced by Defendants during pleaded in the First Amended Answer. Plaintiff implicitly discovery. Under FRCP 37(c)(1) and the rule of Echostar relies on FRCP 12(b) and 15 and FRE 402 . Compared to the advice must have been produced in order to rely on it Defendants' Motion in Limine # 4, the parties' arguments at trial. Zhang v. American Gem Seafoods, Inc., 339 F.3d and their justifications for their actions are mirror images 1020, 1028 (9th Cir.2003) . The Court observes that it appears of each other. Because § 112 defenses were not pled and from Defendants' interrogatory response that no such advice discovery was not conducted, Defendants are precluded from of counsel exists. Therefore, any legal prohibition against the introducing evidence or making arguments referring to § 112. Defendants introducing advice of counsel would appear to be an empty one. The motion is GRANTED. In the present case, it appears that Plaintiff will argue, under the Knorr–Bremse standard, that Defendants should be found Plaintiff's Motion in Limine # 3 to have infringed willfully, based in part on the Defendants' Plaintiff moves to preclude Defendants from relying on an failure to obtain an opinion of counsel. Defendants must be “advice of counsel” defense. Plaintiff implicitly relies on permitted to rebut this argument, for example by arguing FRCP 12(b) and FRE 402 in addition to FRCP 33 and 34 . to the jury that little weight should be put on the absence In response to an interrogatory asking whether Defendants of an. opinion of counsel, or by allowing Defendants to had sought advice of counsel, Defendants answered in the testify why an opinion of counsel was not sought. The negative. Plaintiff asserts, and Defendants do not deny, that LiPlaintiff's motion that Defendants be “barred from referring Defendants have not subsequently produced an opinion of to, presenting any testimony on, or making any argument counsel. In the First Amended Answer, Defendants denied concerning advice of counsel at trial” is over-broad, because infringing willfully but did not set forth reliance on an opinion it would preclude Defendants from rebutting an argument of counsel as an affirmative defense. Vector Research, Inc. concerning the absence of, as well as the presence of advice v. Howard & Howard Attorneys P.C., 76 F.3d 692 (6th of counsel. Cir.1996) .

The motion is therefore GRANTED IN PART, *2 Contrary to what Plaintiff urges through its misplaced WITH RESPECT TO PROVING THE PRESENCE reliance on a Sixth Circuit state law tort case, reliance on the OF ADVICE OF COUNSEL, AND DENIED IN advice of counsel is not an affirmative defense in patent law. PART, WITH RESPECT TO REBUTTING PLAINTIFF'S Rather, it is one factor in determining whether infringement, if WILLFULNESS ARGUMENTS WITH RESPECT TO THE found, is willful. Knorr–Bremse Systeme Fuer Nutzfahrzeuge ABSENCE OF ADVICE OF COUNSEL. GmbH v. Dana Corp., 383 F.3d 1337, 1347 (Fed.Cir.2004) . Therefore, Defendants need not have listed advice of counsel as an affirmative defense in the First Amended Answer in Plaintiff's Motion in Limine # 4 order to raise the issue at trial. Plaintiff moves to exclude as hearsay under FRE 802 Defendants' Exhibits 229 and 328, which according to Questions of privilege and discoverability that arise from Defendants are photographs taken from “published furniture willfulness based on advice of counsel necessarily involve, catalogs and the like.”Opp'n page 4. issues of substantive patent law and are therefore controlled In re Spalding Sports by Federal Circuit precedent. *3 The words appearing with the photographs are hearsay Worldwide, Inc., 203 F.3d 800, 803–804 (Fed.Cir.2000) . for the proposition that they represent “examples of furniture Defendants who announce that they will rely on advice of available in the marketplace.” Mot. page 1. Similarly the

© 2015 Thomson Reuters. No claim to original U.S. Government Works. 2 Amini Innovation Corp. v. Anthony California Inc., Not Reported in F.Supp.2d (2006) 2006 WL 6855371 exhibits are hearsay for proving the truth of any other However, if the exhibits are offered to prove that certain assertion in the exhibits, such as the price or description of designs were published and made known to the public before the goods in the catalogs. the filing of the design patent, the Defendants' offer of authentication is sufficient. Defendants rely on FRE 803(17) as an exception to the hearsay rule: “Market quotations, tabulations, lists, The motion is GRANTED IN PART. THE WORDS directories, or other published compilations, generally used APPEARING ON THE PHOTOGRAPHS ARE TO and relied upon by the publicor by persons in particular BE REDACTED. ASSUMING DEFENDANTS CAN occupations.”The commentary to FRE 803(17) explains ESTABLISH THATTHE CATALOGS WERE ACQUIRED that this exception is intended to allow the admission of BEFORE THE CRITICAL DATA, THEY ARE information from lists of information which are generally ADMISSIBLE TO SHOW THAT PURPORTEDLY reliable and contain information which is hard to prove COPYRIGHTED ELEMENTS WERE IN THE PUBLIC anotherway, such as commodity prices printed in newspapers, DOMAIN. PLAINTIFF MAY OFFER AN INSTRUCTION or telephone numbers printed in telephone directories. TO ESTABLISH THAT THE EXHIBITS ARE RECEIVED Defendants cite no case for the proposition that this rule FOR A LIMITED PURPOSE. The motion is OTHERWISE should be expanded to encompass catalogs of goods for sale. DENIED.

However the photographs may be admissible for other purposes, such as prior for the design patents or to show that Plaintiff's Motion in Limine # 5 certain purportedly copyrighted elements were in the public *4 Plaintiff moves to exclude as hearsay under FRE 802 domain. These uses of the exhibits do not seek the prove the exhibits 239 and 284–286, which “consist of downloaded truth of what is asserted. Thus, so long as foundation is laid internet web pages describing the physical characteristics of and the exhibits are not used for an improper purpose and cat's/lion's paws.”Opp'n page 2. These web pages are hearsay the words appearing with the photographs are redacted, the to prove the statements asserted within, e.g., the physical exhibits are admissible. characteristics of paws.

The key issue in using the photographs as prior art for the Insofar as the web pages could be admissible as prior art, design patents or to show that certain purportedly copyrighted Plaintiff asserts, and Defendants do not deny, that the web elements were in the public domain is proving when the pages are newer than the design patent's filing date and catalogs were published. Defendant Chang presumably can therefore the web pages are not prior art. Similarly, the web testify about when he acquired the catalogs. If he can testify pages are too new to show that certain elements are found in that he acquired the catalogs before the “critical date,” the public domain. and testify how he made the copies from the catalogs, then the photographs are admissible. (If the exhibits are The motion is therefore GRANTED. offered for these limited purposes, it is not important whether the photographs in the catalogs accurately depict anything, Sua Sponte Judicial Notice because a “printed publication” discloses to the public the To dispense with the continuing dispute over whether ideas which are contained within it.) cats have five toes on their forepaws: ADDITIONALLY, UNDER FEDERAL RULE OF EVIDENCE 201 THE Regarding the FRE 901 authentication objection, the issue COURT TAKES JUDICIAL NOTICE THAT MANY again depends on what the exhibits are offered to prove. CATS, INCLUDING LIONS, HAVE FIVE TOES ON THE While the Defendants may be able to authenticate that the FOREPAWS AND FOUR ON THE BACK. One of the five photographs came from the catalogs, they have not offered toes on the forepaw is a “dew claw” not in the same plane as to authenticate that the photographs in the catalog accurately the other four toes. represent what they purport to depict. Thus, the exhibits are not admissible to prove that the photographs accurately IF PARTIES CAN STIPULATE TO ONE OR TWO represent particular pieces of furniture. IMAGES OF LION OR CAT PAW ANATOMY TO SHOW THE JURY, THEY ARE PERMITTED TO DO SO.

See footnote two of summary judgment order. For Arthur Zajonc) (“The lion's front feet have five toes, the back lion toes specifically, see http://natureinstitute.org/txt/ch/ feet four.”). horselion.htm (excerpt from Goethe's Way of Science: A Phenomenology of Nature, edited by David Seamon and

Cat toes visible in photograph at: http://biology.kenyon.edu/ he ithausp/cat-tutorial/forelimb/radius-ulna.htm

test set out in Gorham Co. v. White, 14 Wall. 511, 81 U.S. 511, Plaintiff's Motion in Limine # 6 528, 20 L.Ed. 731 (1871) .See Black & Decker, Inc. v. North Plaintiff moves to exclude certain other photographs, exhibits American Philips Corp., 632 F.Supp. 185, 228 U.S.P.Q. 659, 228 and 261–271 as lacking relevance under FRE 402 661 (D.Conn.1986) . For example, juries are permitted (and in and authentication under FRE 901 . Plaintiff also objects fact required) to view hidden features of the designs, if the to these exhibits based on prejudice under FRE 403 and features are visible at some point in the article's life. Contessa hearsay under FRE 802 . The photographs show details of Food Prods. Inc. v. Conagra, Inc., 282 F.3d 1370, 1379–80 elements in Plaintiff's and Defendants' designs. Plaintiff (Fed.Cir.2000) . This is because the ordinary observer test is argues that an element-by-element comparison is prejudicial based upon normal use, and normal use is not limited to one and irrelevant to a design patent infringement claim, and glance at the time of sale. Rather, normal use extends from therefore photographs of design elements are irrelevant. the time when the article is manufactured to the time when the article is destroyed or lost. Id. Thus, by illuminating features While an element by element comparison of the claimed to the jury which may not be visible at the time of sale, the design and the product which is alleged to be infringing photographs can be useful. would be improper, see Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1372 (Fed.Cir.2006) , detailed *5 Moreover, the comparison photographs can be useful photographs of the elements are not per se improper. Detailed in the design patent case because “even though the court photographs can aid the jury in understanding the similarities compares [the patented item with the alleged infringing and differences between the designs, even as the jury item] through the eyes of the ordinary observer, it must determines infringement under the proper “design as a whole” nevertheless, to find infringement, attribute their similarity to

© 2015 Thomson Reuters. No claim to original U.S. Government Works. 5 Amini Innovation Corp. v. Anthony California Inc., Not Reported in F.Supp.2d (2006) 2006 WL 6855371 the novelty which distinguishes the patented [item] from the appeal. The statement by the Federal Circuit is simply that the prior art.” Lawman Armor v. Winner Int'l, 437 F.3d 1383, 1386 issue was not before the appeals court for review. (Fed.Cir.2006) (quoting Litton Systems v. Whirlpool, 728 F.2d 1423 (Fed.Cir.1984) ). The Federal Circuit indicated in The Court has reviewed Defendants' appellate brief and does this litigation that this is the correct standard for design patent not find support for Plaintiff's unsupported assertion that infringement, when it cited Bernhardt, LLC. v. Collezione Defendant conceded the validity of Amini's copyrights on Europa USA, Inc., 386 F.3d 1371, 1377 (Fed.Cir.2004) appeal. (citing Litton Systems ). Thus, it is necessary to determine the “points of similarity” between the two designs in order to find *6 Regarding Plaintiff's new argument in the reply that design patent infringement, and the photographs can assist in Defendants have failed to exhaust their administrative this respect. remedies before cancelling a copyright, Defendants have not sought to invalidate Plaintiff's copyrights. Rather, Defendants Defendants have offered to authenticate the exhibits, which are seeking to avoid liability by contesting ownership and overcomes Plaintiff's objection of lacking authentication. validity.

Plaintiff concedes that the element by element exhibits may The motion is DENIED. be useful for the copyright infringement claim, especially if many of the elements in Amini's work came from the public domain. Apple Computer, Inc. v. Microsoft Corp., 35 F.3d Plaintiff's Motion in Limine # 8 1435, 1442–43 (9th Cir.1994) . The jury will be instructed Plaintiff moves to exclude Defendants' Exhibits 297 and 305– on the proper standards to apply for finding design patent 325. The exhibits are photocopies of books, mostly in the and copyright infringement, and therefore the use of the personal library of Jack Schmitt, the designer of the ′218 photographs will not prejudice the design patent part of the patent. case. Plaintiff argues thatthe photocopies have not been Assuming proper foundation is laid at trial, the motion authenticated under FRE 901 . However the Defendant has is DENIED. PLAINTIFF MAY SEEK A LIMITING offered to authenticate them. The parties should also stipulate INSTRUCTION. to the authenticity unless Plaintiff has specific reasons to believe they are not authentic. (Initial Standing Order at 15.)

Plaintiff's Motion in Limine # 7 Plaintiff argues, implicitly under FRE 402 and FRCP 12(b) , Plaintiff moves to foreclose Defendants from challenging that Defendants did not make, in either the Answer or the Amini's ownership of the copyrights-in-suit, as well as the First Amended Answer, the affirmative defense of inequitable validity of the copyrights-in-suit, under the “law of the case” conduct before the patent office. 3 Thus, Plaintiff argues, the doctrine. Plaintiff points to the sentence in the appellate exhibits are not admissible to show inequitable conduct. This opinion of this case, “the parties do not disagree that Amini is true. However, the exhibits are admissible for another Amini owns the disputed copyrights and that they are valid.” purpose. Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 1368 (Fed.Cir.2006) . Plaintiff argues that this statement of 3 Inequitable conduct is the intentional concealment from the Federal Circuit means that Amini owns the copyrights the patent office of information material to patentability. and that they are valid, and that the law of the case A finding of inequitable conduct results in the patent doctrine precludes further litigation on the matter. Plaintiff being unenforceable, and often results in the institution further asserts, without offering any support, that Defendants of disciplinary proceedings against the original patent conceded on appeal that Amini owns valid copyrights on the attorney by the patent office. designs. Plaintiff argues that the exhibits are not probative. However, they are probative to novelty. Defendants were able to The statement by the Federal Circuit is not a finding that establish in deposition that the books predated the filing of the Amini owns the disputed copyrights and that they are valid. application of the patent at issue. Although Plaintiff argues Nor could it be, as the issue was not reached by this Court in the summary judgment order, which was the basis for the

© 2015 Thomson Reuters. No claim to original U.S. Government Works. 6 Amini Innovation Corp. v. Anthony California Inc., Not Reported in F.Supp.2d (2006) 2006 WL 6855371 that the books are insufficient to show non-novelty, such an to date from 1998. Exhibit 281 purports to date from 1981. argument appropriately made at trial. Copies of Exhibits 282 and 283 were not provided to the Court in advance. Plaintiff argues that the exhibits are not probative to obviousness, as the Defendants have not shown a motivation These documents are hearsay for their own publication dates. to combine the references. Plaintiff cites several cases Without knowing the publication dates, the documents are not requiring a motivation to combine in order to prove that a admissible as prior art. patent is obvious. Yet it is inappropriate to make exclude obviousness-type evidence before Defendants have had an However, all of these exhibits, according to the Defendants, opportunity to present a motivation to combine. were supplied by Defendant James Chang. He will be able to authenticate these documents at trial. Opp'n page 4. The Court More importantly, a motivation to combine may not be assumes that Defendant Chang will be able to testify that necessary to show non-infringement of the design patent. he acquired these books before the filing date of the patent, (Plaintiff cited cases requiring a motivation to combine for thereby making the books prior art without needing to rely on invalidity of utility patents.) Determining infringement of a the books statements of their own publication dates. design patent involves determining similarity according to an “ordinary observer,” then testing whether the similarity can Accordingly, the court reserves ruling until trial. be attributed to the novelty which distinguishes the patented item from the prior art. Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1377 (Fed.Cir.2004) . Plaintiff's Motion in Limine # 10 According to a unanimous Federal Circuit panel this year, Plaintiff moves to exclude the Defendants' self-prepared a new combination of features found in the prior art is statement of costs as untimely produced under FRCP 37(c) Zhang. not a point of novelty. Lawman Armor Corp. v. Winner (1) and Intern., LLC, 437 F.3d 1383, 1385–86 (Fed.Cir.2006) . Thus, assuming Lawman Armor represents the current state of Plaintiff alleges, and Defendant does not disagree, that the Federal Circuit jurisprudence, Defendants may be able to “profit-loss” summary document attached as Exhibit G to the prove non-infringement with these exhibits, even without Nielsen declaration was produced after the close of discovery. showing a motivation to combine. Compare Lawman Armor Plaintiff requested “all documents relating to profits made Corp. v. Winner Intern., LLC, F.3d 1192, 1194 (Fed.Cir.2006) from sale of the Accused Products,” and Defendant does not (Newman, J., dissenting from denial of petition for rehearing argue that the request was untimely. Therefore, the “profit- See en banc) (there is doubt about Lawman Armor's consistency loss” summary is excluded at trial. Initial Standing Order Zhang v. American Gem Seafoods, Inc., with other Federal Circuit cases). Thus the exhibits are ¶ 15; 339 F.3d 1020, relevant, and therefore admissible. 1028 (9th Cir.2003) .

*7 Plaintiff argues that the exhibits should be excluded as Defendants argue that it had assumed that Plaintiff was prejudicial under FRE 403 , but to the extent there is a danger seeking to recover actual damages, not the profits of the of confusing the jury, an instruction can cure the problem. alleged infringers. However, this imprudent assumption was not verified with the Plaintiff in the form of a letter. Further, Assuming proper foundation is laid at trial, the motion while Defendants stated in their opposition that “Plaintiff is is DENIED. PLAINTIFF MAY SEEK A LIMITING well aware of the language of 17 U.S.C. § 504(b) ” which INSTRUCTION. allows for recovery of the copyright holder's actual damages as well as the infringer's profits, Opp'n page 5, the same is true of the Defendants. As the Defendants also knew of Plaintiff's Motion in Limine # 9 the second theory of recovery, the Defendants cannot claim Plaintiff moves to exclude Exhibits 274–278 and 281–283 on to have limited their discovery production response in good the basis of hearsay under FRE 802 and lack of authentication faith. under FRE 901 . These Exhibits are photocopies from books. Exhibit 274 purports to date from 1957. Exhibit 275 purports Plaintiff's other arguments are moot. to date from 1959. Exhibit 276 purports to date from 2000. Exhibit 277 purports to date from 1997. Exhibit 278 purports The-motion is GRANTED.

the discovery cut-off. Plaintiff apparently had produced the copyright registration, which itself is prima facie evidence of Plaintiff's Motion in Limine # 11 standing, and Defendants do not allege that they had asked Plaintiff moves to exclude the expert reports and opinion of for the assignment during discovery. Thus there was no need Brian Considide, on the grounds of his allegedly not meeting to produce the actual assignment paper before the close of Daubert the standard of qualification of FRE 702 , relying on discovery, either to prove standing or to respond to a request. unauthenticated evidence, and not being relevant under FRE 402 to the copyrights or patent at issue. Defendants argue that the assignment has not been authenticated. That much appears to be true at present. *8 Mr. Considine is qualified to testify, given his However, Mr. Schmitt will undoubtedly testify at trial, and professional experience at the J. Paul Getty Museum in Los he can be asked then if he signed the assignment paper. Angeles. To the extent Plaintiff argues that Mr. Considine The Defendants' reliance on a deposition of Mr. Schmitt to is unqualified for his lack of familiarity with ordinary show that the assignment paper is unauthentic is misplaced. consumers, Plaintiff has the standard backwards. It is the In that deposition, Mr. Schmitt was apparently shown the jury's role to decide as an ordinary observer, and to have an employment agreement and the copyright registration and expert testify in this respect would invade the realm of the asked if he signed any other assignment, to which he said that jury. Conversely, Mr. Considine's testimony will aid the jury he did not recall. This is not the same as showing him the in the aspects of the two part patent test and the two part assignment paper, asking him if that is his signature on the copyright test which require expert testimony, as explained assignment paper, and failing to elicit an affirmative answer. above in reference to Plaintiff's Motion in Limine # 6. Moreover, the parties are to stipulate to authenticity unless the Defendant has specific reasons to believe that the assignment In forming his opinions, Mr. Considine is permitted to is not authentic. (Initial Standing Order at 15.) rely on inadmissible evidence. FRE 703 . Assuming the proper foundation is laid, Mr. Considine can reference the *9 Assuming proper foundation is laid at trial, the motion monographs, surveys, and books he relied on in formulating is DENIED. his opinions that Plaintiff's designs lack originality or novelty. The expert report and attachment, however, will not necessarily be received into evidence. Defendants' Motion in Limine # 2 Defendants move to exclude under FRE 404(a) evidence Plaintiff may reserve its objections for trial. of another infringement suit against Defendants, the “Thomasville litigation.”

Defendants' Motion in Limine # 1 The motion is GRANTED pursuant to FRE 403 and 404(a) . Defendants move to exclude, under FRCP 37(c)(1) and Zhang, an assignment signed by Jack Schmitt, author of the copyrights-in-suit. Defendants allege, and Plaintiff does not Defendants' Motion in Limine # 3 contest, that the only assignment produced before the close of Defendants move to exclude the supplemental damage discovery was an employment agreement, where Mr. Schmitt analysis report and testimony of Robert Trout, produced agreed to assign his copyrights for any designs he created at the deposition of Robert Trout. Plaintiff states that “the to Plaintiff. At the summary judgment stage, after the close supplemental damages analysis they complain about will not of discovery, Defendants argued that Plaintiff did not own be utilized at the trial in this matter.” the copyrights-in-suit, based on the absence of an actual assignment, rather than the mere promise to assign which was Accordingly, the motion is GRANTED. If Plaintiff offers in the employment agreement. In response, Plaintiff provided another report which Defendants wish to exclude, they may an actual assignment, which Plaintiff claims had been found object at trial. at the Long Beach office of counsel for Plaintiff.

Defendants argue that the assignment was produced late. Defendants' Motion in Limine # 4 However, Defendants have not shown that it was produced Defendants move to exclude a new theory of infringement late in response to a demand for production pre-dating liability based on the assertion that the works are original

© 2015 Thomson Reuters. No claim to original U.S. Government Works. 8 Amini Innovation Corp. v. Anthony California Inc., Not Reported in F.Supp.2d (2006) 2006 WL 6855371 compilations, Such a motion is inappropriate. Motions in legal theory, then Plaintiff had the opportunity at that time limine are used to exclude evidence, not legal theories. to supplement its copyright registration, so that Defendants However, the motion will be understood in the same fashion could be certain about the need to re-open discovery. It as Plaintiff's motion # 2, as a proper motion in limine to appears that Plaintiff has yet to supplement its copyright exclude evidence under FRE 402 and FRCP 12(b) and 15 . registration. Defendants will be prejudiced if Plaintiff is allowed to pursue a new theory of liability. Defendants' citation to Coleman v. Quaker Oats Co., 232 F.3d 1271, 1291–1294 (9th Cir.2000) is apt. In Quaker The motion is GRANTED. Oats, the plaintiffs alleged one legal theory of liability for discrimination, and then added another legal theory of liability at the summary judgment phase after discovery had Defendants' Motion in Limine # 5 closed. The judge held that the lack of notice made it hard, Defendants move to exclude the testimony and report of if not impossible, for Quaker to defend itself, and refused Shepard Vineburg as unqualified, irrelevant, prejudicial, and to allow the defendants to amend their complaint to add the untimely. second legal theory. Thus, the plaintiffs were unable to pursue the second legal theory at summary judgment. The 9th Circuit The Court finds that portions of Mr. Vineburg's reports make affirmed. legal conclusions, invade the role of the jury (specifically, the “ordinary observer” test), or opine on issues irrelevant to the In this case, where the copyright registrations provide notice case. The portions listed below are therefore excluded. about the nature and scope of the copyrights-in-suit, Plaintiff's copyright registrations do not cover original compilations. The Court finds that although Mr. Vineburg's supplemental Thus, at this stage, Plaintiff cannot be allowed to pursue a report was after the deadline set by this Court, the Federal legal theory of liability based on a compilation copyright. As Circuit specifically invited the supplemental report and Defendants point out, compilation copyrights are sufficiently therefore the untimeliness is excused. different that substantial preparation would be required to defend against a new compilation copyright legal theory. Defendants have not alleged that the report is so untimely that Defendants are unable to counter the opinion in the Plaintiff's citation to Open Source Yoga Unity v. Choudhury, report. While this Court would normally exclude the expert 2005 WL 756558, at *2, 2005 U.S. Dist. LEXIS 10440 at testimony for being untimely, the fact remains that the Federal *5–6 (N.D.Cal.2005) is correct insofar as U.S. law allows Circuit specifically invited the report and so the Court will not supplementing copyright registrations to cover material exclude the related testimony in the absence of prejudice. which was previously disclosed in a copyrighted work but not covered by the work's original copyright registration. But the The motion is GRANTED IN PART, EXCLUDING ANY issue raised by the Defendants is not whether Plaintiff can TESTIMONY RELATING TO WHAT IS DISCUSSED: supplement its copyright registration to include a compilation copyright, because of course it can. Rather, the issue is FROM THE EXPERT REPORT: PAGE 5 LINES 13–18, whether, after close of discovery, Plaintiff can pursue a new PAGE 7 LINES 12–17 theory of liability at trial. The answer is no, after Quaker Oats, if prejudice would befall Defendant. FROM THE REBUTTAL REPORT: PAGE 4 LINE 18 TO PAGE 5 LINE 5, PAGE 5 LINES 13–28, PAGE 6 LINES 1–3 *10 Plaintiff's remark that Defendants had time to move to re-open discovery is off the mark, because it reinforces the The motion is OTHERWISE DENIED. point that Plaintiff is attempting to add a legal theory after the close of discovery. It also assumes, rather brashly, that the Defendants' Motion in Limine # 6 Court would have granted the motion to re-open discovery. Defendants move to exclude evidence that Defendants failed See Initial Standing Order ¶ 15. to obtain an opinion of counsel under FRE 402 .

Moreover, if Plaintiff indeed gave notice informally to Knorr–Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Defendants long ago about its plan to pursue an additional Corp., 383 F.3d 1337 (Fed.Cir.2004) sets a totality of the

© 2015 Thomson Reuters. No claim to original U.S. Government Works. 9 Amini Innovation Corp. v. Anthony California Inc., Not Reported in F.Supp.2d (2006) 2006 WL 6855371 circumstances test for willfulness in patent infringement Defendants point out that Mr. Horton's testimony about what cases, where the absence of a letter from counsel is but Ty Dix, a third party furniture dealer, said to Mr. Horton one factor to be considered in determining willfulness, as it at a trade show is hearsay. It is, indeed, hearsay. Plaintiff indicates a lack of due care. attempts to rely on FRE 807 to admit the hearsay testimony, however there are two problems. First, the statement would be Defendants rely on the language of Knorr–Bremse to argue less probative than deposition testimony of Mr. Dix, if such that as there is no longer an adverse presumption from the testimony existed. Yet, as far as the Court can determine, no failure to obtain an opinion letter from counsel, the failure to attempt was made to depose Mr. Dix. Plaintiff merely states obtain an opinion letter is now irrelevant. However, in this that Mr. Dix could not be brought to testify at trial due to reliance Defendants misread Knorr–Bremse. While there is no bienf outside the subpoena power of the Court. Opp'n page longer an adverse inference or an evidentiary presumption 7. But that does not mean that Mr. Dix was incapable of that such an opinion would have been unfavorable, the failure being deposed. Indeed, it appears that the reason Plaintiff did to seek advice of counsel is still a factor in weighing the not depose Mr. Dix is that Plaintiff terminated its relations totality of the circumstances as showing a lack of due care. with Mr. Dix in retaliation for Mr. Dix doing business with Defendants. Exhibit A, page 4. Plaintiff's dissatisfaction *11 Further, Defendants are incorrect in their argument with its own discovery does not justify the admission of that the “far-fetched” nature of the claim of infringement hearsay to the prejudice of Defendants, particularly when the means that the absence of an opinion letter is irrelevant. This inadequacies of Plaintiff's discovery are entirely due to the argument was specifically rejected by the Federal Circuit in improvident past actions of Plaintiff. Knorr–Bremse. Id. at 1347. Second, allowing Plaintiff's sales representative, i.e., Mr. The motion is DENIED. Horton, to testify at trial about what a neutral third party supposedly said at a trade show several years ago cannot be said to serve “the general purposes of [the FRE] and the Defendants' Motion in Limine # 7 interests of justice.” FRE 807 . The risk of bias and self-serving Defendants move to exclude the testimony of Chuck Horton inaccuracy is too great. and Tim Tierney as irrelevant under FRE 402 , hearsay under FRE 802 , and untimely disclosed under FRCP 37(c)(1) and Plaintiff's reliance on FRE 803(3) does not persuade the Zhang. Court.

Plaintiff states that Mr. Tierney will not testify. Thus, this part Mr. Horton's observations of Mr. Dix's non-verbal conduct, of the motion is unopposed and therefore granted. however, are not hearsay. Nonverbal conduct is only hearsay if “it is intended by the person as an assertion.” FRE 801 . Defendants argue that Mr. Horton is an observer of above Mr. Horton's first-hand observations of the furniture are not average perception. Thus, Defendants argue, his testimony hearsay, either. would be irrelevant and prejudicial to the jury, who must decide infringement as an ordinary observer. The Court *12 Regarding the timeliness, Plaintiff asserts that the disagrees. If an observer of above average skill was confused, declaration was produced in the related case CV 04–9369, then it is likely that an ordinary observer would also be which under the July 31, 2006 stipulation entered by the confused. magistrate allows the use in the present case.

Defendants argue that it is error to compare the design of The motion is GRANTED IN PART, WITH RESPECT the patentee's goods with the design of the alleged infringing TO MR. TIERNEY'S TESTIMONY, AS WELL AS WITH goods, rather than the patented design with the design of RESPECT TO MR. HORTON'S TESTIMONY ABOUT the alleged infringing goods. The Federal Circuit has said WHAT MR. DIX PURPORTEDLY SAID TO HIM. The otherwise, when there is no great difference between the motion is OTHERWISE DENIED. design of the patentee's goods and the patented design. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125–26 (Fed.Cir.1993) . Defendants' Motion in Limine # 8

to testify where the data came from and how it was kept. Defendants move to exclude Exhibit 157, pages 11–38, Moreover, as LexisNexis was not the originator of the data, Exhibit 158, and Exhibit 159 as untimely disclosed under there is at least a second layer of hearsay in all of the data FRCP 37(c)(1) and Zhang, unauthenticated under FRE 901 , in the exhibits. To overcome this double hearsay under the hearsay under FRE 802 , and prejudicial under FRE 403 . business records exception, each of the sources of the data to Exhibit 157 is described on the Joint Trial Exhibit List LexisNexis would also have to testify where the data came as “LexisNexis Company Analyzer for Anthony California, from and how it was kept. Plaintiff has not offered to do this, Inc.” Exhibit 158 is described on the Joint Trial Exhibit List as and none of the party witnesses can cure this problem. “LexisNexis Company Analyzer for Chang Properties, LLC.” Exhibit 159 is described on the Joint Trial Exhibit List as All of the exhibits, including Exhibit 159, are prejudicial “Chang Properties LLC and Anthony California, Inc. Lease and thereby excluded under FRE 403 . They essentially Agreement CONFIDENTIAL.” amount to documentation that Defendant Chang is wealthy, which would lead the jury to believe that he is capable of Plaintiff produced Exhibits 157 and 158 in August 2006. paying a multimillion-dollar judgment. The evidence is also Discovery closed in 2004. The exhibits are therefore excluded under FRE 402 . No corporate veil-piercing theory inadmissible as being untimely produced. Zhang v. American was pleaded in the complaint, and so the evidence is entirely Gem Seafoods, Inc., 339 F.3d 1020, 1028 (9th Cir.2003) . irrelevant. Plaintiff's excuse that the LexisNexis Analyzer service was unavailable in 2004 is inadequate, because many, if not all, of the information in the exhibits was publicly available Defendants did not object to some pages of Exhibit 157, but elsewhere in 2004. as Plaintiff points out that these other pages also came from LexisNexis Analyzer (Opp'n page 4) they are also excluded as untimely produced and hearsay. Exhibits 157–159 are Moreover, the documents are hearsay. They are offered to excluded in their entirety, including the portion not objected proof the truth of the assertions contained within them. to by Defendants. Plaintiff has offered to authenticate the documents as having been printed from the LexisNexis service, but this is *13 The motion is GRANTED. insufficient. There is no LexisNexis exception to hearsay. To come in as a business record—as LexisNexis is a business —Plaintiff would need a record custodian from LexisNexis

!" #"$ %"&! %"' %" ! ()

!" # (

''* + $

%&' ()**(

+,& - .//- 0 M1234

,! + "-"./+ -..! '' ","/ ' -23 +.$R$'$.""! , '--" '. 1

+,& - .//- 0 M1234

2 '" ! "' '-"- .$"3$--!." + $,!/"4$! "--5 '. 1 $$ "- !"3" $ 1 /"/! ,!"/ '"- "//'/" "/++ $! "-- '"-. " + "'+ '-"' "5 " !1!+'-"-" ."/ !& ", !

+5,& - .//- 0 M1234

'+ 3''"&" "'"' . ""/+" ''+ ,"$'6+! , '"+ + ""! $.+"/-& ! "'!'"$ ''-$'-' " --'... !/ " *'&)&'6

+,) 7 8.9! :// #8 -0 M1 ;54

% $$$ "'.""/++ '. 1+ .,!+ 3'"' . ""/ "'!"/+ "'. ""- "'" "'7"- '&"/ "'$."- "/. 16 "' . ""/ " !,"-', -.7"& !-/'!'"'. 1 %&' ()**(

+;,& - .//- 0 M1234

$+$!."-!1!+'-"-"," ''-$! "--5 "''-"' "5 $' "'" "++'-"' "5$' "'+" "+ &- + -+ + "' '"+ ,!1! "-$$&, 6"&'"- ! "-"'$""',+"6. ! ""! "&'"$"', $! "--, !" ".$ "- '. 1 '' "'+. "". 1"/-"'"/"- !1!+'-"-" *'&)&'6

+1,//( 0 M1 55 4

# 8 #//$! 8//- 0 M1 3;4

-8//6!- 0 M1 5 4

8 ,"''" "/!1!+'-"-"/.! ," '. 1 "' ' "-"/"/. 1 '/-.! -. 1" $$ " ""- '"-"/ ! "+$" "'. ""-. 1"/,"/' .! - '+ ""! "'- .-$. 16!1!+'- "-",'" -'" $+ , "/+'" "

u)vyhihpv pqvyhihpuf vfqvyhhq4rh puvq2!#'$(($' # ! $ DryyrphyQ r GhSr pr8rr Qhtr !s (

(<'=$*

+ ,- 0 M34

- -$ /+/ " ++.$.$"-& !' "'"$. - &'"-- '"+.

+2,- 0 M34

$ /+"+-$,! "-1+ , -! .-$ /+"-"/." +" ! -& "!'$.$"" "'""( 9-$ /+!

+ ,) # -: .//- 0 M534

#&".'.- & . ---1,$'6-'.""/$ /+ ,! /" ! + "'$"'" ""'&' ! -7$" ++ ""&! 6/" ! -&" !/+'/ &"- ."".+ " "/."- /!'' --" $ # :", !" #"$ %" / "!%"' %" "'2" 2 %"-; "+ .:&! " $ /+"-"/." "'"- .$"'/."-$! "-- & # ," :! "% ! "'<+" <+" ="/>," !!-?1 ? -$! "--

8'1@+. "' " A '"><$$ ,+- 1 -'-"' "

(*>

(?#@ 1" '/ !!

! "-- !" #"$ + !" $ "+ &"/ $! -,""?1

!" '7"&,"+/++ "' "!'"/ -2

-"' "! ""$ "+ &"/ $! -,""?1

-"' "! !'7"&,"+/++ "' "!'"/

! "--1!-- !!/'&! "-+; "+ .: +8' !$ /+; "'+ "- .$";

! "-- !!/+ - "- $! "-- !!/+ +-"' "!+ "! -!! "'+ +4 "-.$! "----'- ! "'!' !'"-', + '. 1O C%# =@#C ?;#P+++ & ''"-"/! .! + ''-+ !!', !" "'+ @%;8;=@#C "' =@#C 88 '. 1

%" ''"!5" "- !!'"'+ C%# =@#C?;# '. 1 !!/', "-"/! .! " $$ "+ ''-+'"&" ""++ !" 5.'.4' &" ! !'"'+ =@#C 88 '. 1

! "-- !!/+ + -+'-"' " !! ' "'!1! "-" "''$"-+ $,! +-/"-+ ! !"/"' . / "'+ .+$! "--

"' +$! "-- !!/+ + -+'-"' "+ &&! '+ "- .$"; ! "-- !!/+ + - ' -+'-"' "'"++"" "'$$-$ "/--+ ! !"'+ C%# =@#C?;# '. 1

2+' $! "-- !!/+ + +-'"$ /+"-"/."-+!+/ $+! ,! $$!'-+" "-+ !

! "--1 ""E"" !!-+"-"/"/$' ' . / ,!' . / "'"!-

2+ + $''" " ! ', ++""-+$ F++ $$! "- $!." "E"" "' -" !"E"""!' ' "' !!,'+" 7!'"/+ 3 ".-' . / "'+ ', +"! .-!', +'-"' ""+.

2+-!!"/"+-"'"/-- "'"!"-! , +"+.

u)vyhihpv pqvyhihpuf vfqvyhhq4rh puvq2!#'$(($' # ! $ Qhtr

!" "'$'+ &,""+ ,"-&- !" '/" . "- "'!!"'#.$ '" . "' '. 1 ! /& - "'/ .- !!1"' "' $ ! ! $! +/++ "' -,+, "'/!

="- !" 5.$$! $'!"+!'"5'"$! &+! + ! ++."'--" ! "'4

!" 5'" &+!+ &," "' +..$ "$ - !" 5& !!$'!"

"/+$ 7 !" + !' $$7. ! /+.!!"'"&+!-& $ "' "/" !! / '' +".,". "- "'!!-'" &+!"+ "' : $ -/!R !" !" !!+'--"'" !+++ &,"7!&! '/"'- /!"' =@#C 88 '. 1 +" -!!&! -' + =@#C 882C%?;#

2+ =@#C 882C%?;#."+-!!"/4*%% =@#C 88A=2?;# ;%22;# =@#C 88 A=2?;# "' #C =@#C 88A=2?;#

!" !!! "" "- !" 5! / !+ " " " "7!&, + .+'"/!R !',' ,&"'+@%;8;=@#C '. 1

%" ) !" '''. 1 '" !++!',7!&! '/"'- "//!2+ , . 1"/"$-+/!R ! '&!$ -.""!1"/ ++!'+ & ""! "!1 "''"& !* " '/" ' "'E'

2+-!!"/!+. "' !"/ +"8+ !,' - . -+ '-$"16-+-" + "'!, "'-"-1 .,! $',!6-+-" "' +! + "' ,/+ !!! "++,$"-++!6- ''"' ! -!+."!.$!." + -.""'!-+ !.$""6 "' ."!.$!." +! -+ !5.$""

%"! ) !" 5$E"/" "'.'!. 1$$ ' .$!- !$ "'/!R ! + &"/+ -.""'/" !!+. "' -2 /" !-!+. !"/ "'$"'+ .$! ""

2+"/" !!+. "' !"/"+ !! &'

%" ! )) !" 5/!R !+ &"/+ -.""'!+. "' !"/7+,'"+ :. "2 8 "?1:/ " +" !/" !!+. "' !"/!!&', + '

: !-+"+ $"-+/" !!+. "' !"/ "" 3' "' , "' " 7!&"+ -.""'/" !!+. "' !"/-+.'.@%; 8;=@#C2C%?;#

!" !'/"'- "" "7!&$ /+'!+/ $+! ,!, $$!'++$$"/ " "$ 1 /"+++.'.@%;8;=@#C2C%?;# !'

%" )) !" !' $$7. ! '!'"-+.'.@%;8;=@#C2C%?;#++/" !! +. "' !"/ "" 2+ !"''-!+ "" 1'- "' , "' "+" 7!&"+!+. "' !"/""! -+.'.&", !- +"! "''. !! "'! /&"

2 ! ) ) "' 9 !-.+. !! .'. "'! /@%;8;=@#C2C%?;# "" ."' $$7. ! '!'" !+! !$- ,'!'

%" ) !" ,/ "!! !!-+.+! /&"- =@#C 882C%?;#++ /" !!+. "' !"/2 ! ) !- !" 5! /&"++/" !!+. "' !"/ ,'!'" !+! !$- ,'!'

%" 9 !" 5 !-. !! .'. "'! /&" =@#C 882C%?;#" '' . !! !" !' ,'!'"-. !!&" !+! !$-&'!''!! !" !' ,'!'""+.'.&" !+! !$-" ! '!''!! !" !' ,'!'"-! /&" !+! !$-" ! '!''!!

%" ! !" !' $$7. ! '!' =@#C 882C%?;#++/" !!+. "' !"/ !+! !$- $$7. ! '!''!!

%" ''" !" 5 9 !-+@%;8;=@#C2C%?;#++/" !!+. "' !"/ ."' " ''" !'!'

2+ !$"' & /"- "$"- !" 5,"

!" !# $ " % %$ !$& $'( (

:'-. !" 5 ) ) "' 9 !/ !" + $,!! 7+,'+ =@#C 882C%?;# ++/" !!'/" "' !"/ & + "'+" "!'"/,"!.'+ :. "2 8 "?1 +:! " 2 + "'+ !! 2 +

!" + 7"&! "'""! '&' =@#C 882C%?;#++/" !!+. "' !"/""$ $ +" +, ' '&"/"'! , $&'"/$ & '&"/ !! "+.%"+! !" + $" $$7. ! G'!'" $ & '&"/ !! " "'' '&"/-+ =@#C 882C%?;# , '$" . " ' "+/" !! $' ""/$"$!2+ .".! $ -+& !! '&"/7$"-+.

:'-.+ -.""'$"1 ,! + !! /" !!+. "' !"/ !" !'/"' - + ! $ 1 /+$$"/" " "' $ /+'!+/ $+! ,!++ $$!'+ +$$"/" "

@+$+!+/ $+! ,! $! "--!' ' 1,!, 1/"' / "+++ !!- $.""! '$! ' ,/+ !!!"/+ $"1!"'$+ '. 1 / "+,! , 1/"' ""+" .!"//!+"'"/ ! "'+!"/ +-

C ! $ !! '$! ++$$"/" "++" "+" .,!' !++ + !+/ $+! ,!- '+". !! ++$$"/" " & !! 1'" ,&+ ++'! "+-!"!+!&"/H .$"/.$ "R !" " ! $ !! "/' !"/'" , 2+-3"! .,!& ! ! "''$! +.' , '" + !" "

! "--, . - /!R !!', !%"'"&.,- 9-"' "! """'+ -25 + '. "- ' /!R!!"/'" !"* + I 9

-"' "$"'." + '&!$' '' "'! ,!-$'"'$"'"-$! "--5 '' "'! ,!

-"' " "'--'." + " .! ,"+ ''-$' "'! ,! ++ -+$! "--"'" ! "'+!-$+ $$" "

2+ ! + ++ + ' "'% ."!+ & !! + - + & " "-"".,-."1 "' ""-"".,- $ + !! +<"/; J"@+ 2+@"'2+ &" "!1! +'-"' "5 ""+. + +'" "'.! ,"$' "'! ,! "'+ -+$! "-- "'"

2+&'""+. ++ ,-., 1"/"+ !- !'-"' "+ ' ! !" !"$" !! + !" ! ,! + !" !/ "'$! "'$"-. " $ ""/+ !" $'

%" ''"+ +-"'+ +'" "'.. "' -+'"+ ! $- !! '' "/ $'++!',"'.$"++$! "-- "'"$ ! =@#C 88!"

%""-+..'-"' ". 1-"O$'$--,!P"',"/ !,"'' #7+, AA

8+.+, " !&'"+ '-"' " "7+ & $'"+. 1$! " +$'-.%"'"/+/ !-+'-"' "*; " 1-'+ + 1"/ + ."" -' ,! + $! "--5$'+ '

:$$ "! '-"' "+ '.$ "/-"" ,+ + '"/+ + ,' $$ -.#7+,AA .. "'.' '* 9 ++-!!"/ $$

O2 " 3" ++"+"! E-'%!'!' Q'-"! R- ".$++$'+ "+. 1$! "'/&. $$ !+$'". - + "'. 1"/"'P

%"$+! C%#2C%?;# ".- !" 5/" !!+." =@#C 88 "' @%;8;=@#C2C%?;#!+ '!, ! $'+-$"1!-+ !,' - . +- $',!!-+-"+ "'!, "'-"-1 .,! ++!-+ +! +,/+ !!!-++,-+ +! ++!-+$$+ -+-"+! "'-+" $ ,"+.! '$1$"-+-"+! "'+,/+ !!!-+.! '$1 $"-+-"+!

%".- !" 5 ''"' ! !"/ !+ '!, ! $'+-!+.

%".- !" 5 .!+ '!, ! $'+- !

!" !# $ " % %$ !$& $'( (

2+& !!& !.$ ," !" 5 =@#C 88 "'@%;8;=@#C2C%?;# "'!5/!R !+ .!'/"'+!+. "' !"/- C%#2C%?;#" '!, .$$ +!+. "' !"/- !" 5 =@#C 88 "'@%;8;=@#C ! "'+, '" !" 5 ,!+' !

:.$ "- !" 5$ /+'!+/ $+! ,! "'+! ,!', !& !+, " ! .! ,"+.!+ '!, ! $'+ .' 1,!, 1/"' / "++!! !!+ $' !"+ .. "" "' "/! !" ''

F $ "/ !" 5/" !!+. -!+. ' ! "' .+!! "-!5 ! "! ,!, " !! '$! ' "'"-"/! .! !" 5! ,!

!+ !$' !" 5,!' !!!"/$" '. 1!+ !, " !! $' "' " '+!?"O !P"/+'"'", " !! + .. "" !" ''

2+& !!& !.$ ," !" 5 "'!5!+/ $+! ,!. 1 ,! + . "'+! '/"'" '!, .$ '" !" 5$ " "'+ =@#C 88 "' @%;8;=@#C2C%?;# "'"-+$,!", "/!5 C%#2C%?;# ++ " !" 5 =@#C 88 "'@%;8;=@#C2C%?;#

"'"/+ +!1! ". !, .$ "', " '! !', -& !'/! "/ + $& -2 ! '" ! "'+! ,! , " !! .!

+, 2+$,! + "-"./+ -..! '' ","/ '++.$R $'$.""! , '--" '. 1 /F$ "&;" /"; , %" ()8'I9( I9 9 )L IL I9"' )OM2N++ '! !1!+'-"-"$ !."/--+"+ " .-+. "- ! ! '$! ' P6@ J.!"&%' !8+"/8! (9 8$$9 I I *"" )L6* ! $*!! %" & $ 98$$(I L 9 () L LI

:!+/+'-"' " + " .! ! '$! ' + -"/"- ""'"/+& !! '" -$'+ -$! "--5%"- +.+', +++" ."&""+-! ! '/""'" ! ++ "'$! F, "/"."'+ /-+. ! "' '-"&'$! -+" .!'".&+"-" '" !!+$, '-"' "R$ - $! "--5 ''@+ &'--"+. , .$$,! "'!',-""3" +!1! ".-+ $-$'"(I -+; "+ .: IL " L $&'"$""$ -!!

O:" $"++ !! --7 $$! ""7 """"+ " /'& " " " " "-/' - !'/" "-/" " - !'$"$" " "!'"/' + .,!"'"/- !! ',$"+ . "'+ !! +/'&" "..OOO+ !!,! ,! &! "OOO, " $"+,!&+ +!1! , ' . /', +- " +- !'$"$" "P

2+2+'+ "'+ & , '! ";5:/!":$$ ! %" &; " ;,! (8'( L 9 ( I' L( "/ -!!

O@-"'"+"/"+!/! &+ -+; "+ .:E- +&+ +".! '! &-7"/! %"'' , -"'" .,/ "+!& "! "/ /"+ ', +$$ -!/! &+ &"-+ + //'+ "/""''!+ " ' %.+ "/+ '-"' &!"/-- !$" "-/'".. "' + /&" , '! -"E'!1! ,"E', +"/+/+!-"+-' ! P

%"+ , +'-"' ". "- "/ "'!!"/ C%# =@#C?;# + ''-++ $ "'"-"/! .! + ''- !" 5 =@#C 88 "'@%;8;=@#C2C%?;#

2+ ''- !" 5 =@#C 88 "'@%;8;=@#C2C%?;#"-"" ! "' !' $" "/" ! "' &'/"2+$ "/-+ ''$" &! "-"(I - +; "+ .:

%" ''" + !, '-"' "- C%# =@#C?;#"" " + ''-++ $ - !" 5.'.&" =@#C 88" " &! "-"(I -+; "+ .:

2+$ "/-+ ''-,+ !" 5$' "'" " ""'''&$+ %" <>8& . + . !; , %" L8' 9LL 9 (I' 9+ '-"' "+ '$'+! "-$! "--5$'%"/ ""/!-"'"(I -+; "+ .: +2+'+!'+ + ; - "- .$" "/"- "! '--"-. "(I -+; "+ .:2+-:$$ ! ' -!!

O2+") -"$&!/'. "'-"'"")( -+C ."

!" !# $ " % %$ !$& $'( (

O "

O ! " O ! O ! # $ %& ' ( ) " # * #!+ ', - . / 0 O1 ' 2 #P $# 45,657,458+9: ;6;,#

$ * 0

O< = 6 #1 6 #> 6 2 #P $# 457,458+9: ;," . / "',* ;7?!#

/ #9 ( #@ #/ A#$ A #

9 #@ #

B 6 #

B 9 #C * * ;?-#,77;7'7;D8+9:'D'? ; * #;D,! * O P #/* O 6 #P$# 7'76'';D8+9: ';#

B + * E #E*##% > *#74D8#+#7;8+9:,;5 ;7?!#

@ / * +EF- * 6 #

/ * * A 9CBG.98--/.$*H*IG#

/ " 0! A " 2 ,! #

$ * 9CBG.98-- C$IB-ICG./.$*H*IG+ A9CBG.98-- #+ * * ( * #

!" !# $ " % %$ !$& $'( (

1 " #/ #1- $##@- . $#,?7-#, DD,8+9:745 ; * #;54!2- B * ##J > *#7'-#,';758+9:D4? ; * #;57! 7'8#+#?74 78+9:;7 ;57!#

$> $ K# ##@# ##9 I #*1 %#;67D? B#%#&#! &I + ,';?4 6 > #+ &I 0

O/ R > ( #- $##+ (9 $# 54D-#, ',?,4'8+9: 7546752- B * ##J > *# 7'-#,';D758+9:D4?DD ; * #;57!2- *##$//* > *#$# ;;8+9:'D', +#B#%#H#;! Q9 R ### R!2G#.#+"F+$## 9 9 I $#;D8+9:D'DDD4 +#B#%#H#;!2J #% * $#77D-#+#,??,;'78+9:7'57D4 +#B#%#H#;,!#1 QJ R #RI+ $##B . $# '?-#+# 54?,4D8+9: 45,# / * +EF- ,458+9: ;,0Q/ %& #N +# D5 !#

1 ( #

$&C $##* * #';-#+#,;,76?;8+9:75;7??67?; G#B#9 #;5! B$##* * #D?-#,54,;;8+9:4D 7 * #;?!2 * " #/* #

$ " ( &C $##* * #

+ * ( ## @J@9*##> 7',-#+#,D,?46?78+9:?,?5 %#B#* #;,! D4'-#,7?78+9:' ; * #;'!#

* ( !9CBG.98--/.$*H*IG+ ! #

! C$IB-ICG./.$*H*IG+ &#*#9#$;?;; ;?4 * ( ! A C$IB-ICG./.$*H*IG &#*#9 !#

/ ( * 9CBG.98--/.$*H*IG C$IB-ICG./.$*H*IG#

C * 9CBG.98-- C$IB-ICG./.$*H*IG+ *9.$%*G++9CG.*H*IG * 9CBG.98--/.$*H*IG+ *9.$%*G++9CG.*H*IG * #% #/- * $##- * 1 77,-#,D7'D7;6'4'8+9:?'??D,6?D7 7 * #;5'!#/ #$# D'4'8+9: D?,#

$ " #1 #1 #

!" !# $ " % %$ !$& $'( ( (

J 66 #@ #% ( #8 ( * #

J B A #- * ##9 B 6 / $#',D-#+#5;747;78+9:7',7D' B#%#&#;!2J%I $##1 @ 9 * #'5-#+#?4'?45;78+9:'?5'??6'?; B#%#&#;5!2/ +#1##9 $ *#?58+9:D'DD'? B#%#&#;D! D,;-#,';D?;8+9:7?D 7* #;5#!/ #- * ##9 B 6/ $# 47;78+9: 7D'#

/ *9.$%*G++9CG.*H*IG * 9CBG.98-- C$IB-ICG./.$*H*IG#1 #*9.$%*G++9CG.*H*IG * 9CBG.98--/.$*H*IG )( *9.$%*G++9CG.*H*IG * 9CBG.98--/.$*H*IG #

* + '7 ! I 1 #1 %& I " * " * #

$* * * * #/ * %& ( I 1 #

$ * 965GG 965-- # * #J ,?8#+#5 ???!#

/ 8 + *+ '4 ! 0

O$ ) #P

* #/* + '4 ! #* " ( #8 1 + * ##+ 7'4 -#+?;;78+9:;4 C#B#9 #;,! D-#,;4'?D8+9:5 7 * # ;D!#

B O R " #P * - $##K J$#7,?-#+#4744775;8+9:'4', +#B#%#H#;!#

/ A J ( G( B6 B6, B G( 'D5 #/ B G( ;47'D5,7 ,'#

1 &C8 1 + * ##+ D-#, ;4??D8+9: ?6;0OG #P

/ ( # 6 #9 9 - #B(/( * #,?4-#,?44,D8+9:',5 ,* # ;54!#

1 8 &C / * 0

!" !# $ " % %$ !$& $'( (

O/ #PD-#, ;4?D8+9: ?#

$ * #/ * #$ * # * * #/ ( #/ #* #/ #

/* # #> #

> #% ( #/* * # /* #

$ I 1 %& 8 * ) J #/* #@ * J #

/) $ #/* $ ( # 6G* 6

* 0OO# # O O(# 6?4467,6477

$++%,D6'' * ',4D/> % 1 $#. ( ( >%1* 9#

!" !# $ " % %$ !$& $'( ( DryyrphyQ r GhSr pr8rr Qhtr s &

!! "! #$$% &!'($)*+!,-& . /0" #$$1&

! " #$%&' () ! 23 00

+%453 *

(" +"

,-.)/01) /22( 22 .) 3 M 4 %5!6*"

+ & & 22 22!)3 M 4

-$56%%%%,%56,7!$O$$6%P:*,!3/ - . 6 7*,*6%%;$5,*,$!7*6%%: $6%** 7!*:*6%%:7% $5*!:$6%* %7 !! 65!!%!-$5,* !! *:*6%%:7%6%*,*-$5,* !! 7%*5$$$%!%,

,-.)/01) /22( 22 .) 3 M 4

22)#22OP)#3 M 9 4

$6%$*%!$!$$!,6%,% 5, $6%%<7%*$!!% *6!% :**$%!! $6%*: 7*7,%$%:**,,! !$7$!!% 6%%5$%<65%< %%:%$7 , !% :%%!6:%*:$6%$,!%%%%57 ,$!<65*% ) )226) #)22 #

3 . = . "% 5,$$ >!% =( * / : #$$%!!%>!%?%)* $5(

)(!$!)*+!,-& $3 . = . #, 0 6% = !% 0. $$%!$5(;!%>!% .*,*= #!!$ ( / ':+": @,* +1#* -%6 *@*, ?- !$$%% ; "!-* A5 B (*! <

% "

u)vyhihpv pqvyhihpuf vfqvyhhq4rh puvq2!#'$(("# # ! $ DryyrphyQ r GhSr pr8rr Intellectual Property Law Resource Center QhtrPage !2sof &7

% '/=Opinion By: A5 (*!Lyddane, examiner-in-chief.

This*$$%!*!%>is a decision on an appeal from the final rejection!% .*,*= of claims 1, 6, 10 through 14, 16, and 21 in *the ($,! 23 . =reexamination proceeding of U.S. Patent No. 3,680,420. .*%%*%,*$These are all the claims remaining in this proceeding.,2No claim is allowed. %%%:

The*6>$$%%subject matter on appeal relates to a microtome!,6%,%*% for sectioning biological tissues or the like under5,cryogenic -% %%7conditions. Claims 1, 12, and 21 are illustrative of!*7:%%$7!*the invention as well as representative of the subject6>matter on $$% !%%:appeal, and read as follows:

-5,<$!*7,$71. Cryogenic equipment for a microtome having a pivoting,!%$,! fulcrum comprising a frame, a container made !%,% !$of insulating material, a microtome knife positioned 7 *$$in said container, an inverted U-shaped specimen *%6%5*!!!%holder assembly mounted on the free end of said fulcrum, *$%,!$*%the spaced legs of said specimen holder 6%5%,:%%!assembly straddling a wall of said container and movable76%$6%5!%5%7* *reciprocably and freely relative thereto, the %,!$*%6%5(outer leg of said specimen holder assembly extending, *%76%5into said container, a tissue holder removably %,$:*mounted on said outer leg in a position where a tissue$*%specimen mounted on said tissue holder is 65*,,! !:*sectioned by the cutting edge of said knife when said!%7*,*!$,fulcrum moves through one of its reciprocating $passes. #!,6%,%12. A microtome for sectioning biological tissues or*% 5,$,the like under cryogenic conditions comprising a ! !%$7%%5! frame, a fulcrum mounted pivotally on said frame, a!%,%!,container of insulating material for accommodatinga <5!5,!%! quantity of cryogenic fluid mounted on said frame, !$ !a microtome knife positioned in said container, first !%!%565$,:%%!means on said fulcrum freely bypassing a wall of said(,*!container and extending into the interior of said *$container, and second means mounted on that portion!*!(,*!of the first means extending into the interior of !$$,$said container for supporting a tissue specimen to 665 !be sectioned by said knife. #!,6%,%21. A microtome for sectioning biological tissues or*% 5,$,the like under cryogenic conditions comprising a ! !%$7%%5! frame, a fulcrum mounted pivotally on said frame, a!%,%!,container of insulating material for accommodatinga <5!5,%<! quantity of cryogenic liquid mounted on said frame, !$ *a microtome knife positioned in said container, the ,,! !6,%6cutting edge of said knife being located in substantially%%5**C%$%*$7$the same horizontal plane as the pivot point!of !% 7 *$$*%said fulcrum, an inverted U-shaped specimen holder 6%5*!!!%assembly mounted on the free end of said fulcrum (,!%57:%%!and extending freely over and around one wall of said *%,!6%5(container, the outer leg of said assembly extending, *! *into the interior of said container, and a tissue holder%*%:$!%,!mounted on the lower portion of said leg for 7,moving $*%%7*a tissue specimen on said holder relative to the cutting,,! !edge of said knife.

The*!!%65*(references of record relied on by the examiner >!*$$%%63/ in rejections of the appealed claims based on 35 USC-. 6102(b) and on 35 USC 103 are as follows: 3/ -.3!%%:

-* O#@5 $DC*Christensen, “A Way To Prepare Frozen Thin Sections Of!D*D'%+$5P 4Fresh Tissue For Election Microscopy”, (June 1968) in Autoradiography of Diffusib/e Substances $,3=3 , (1969), pages 349-362. 7%%$$%5"%%D *!Sorvall Supplementary Bulletin FTS 26-69 (hereafter7%%6%% -$5,*),2#..Sorvall bulletin), Copyright Registration No. A90038,3 #, dated August 29, 1969.

-% >3/ -.Claims 1, 11, and 21 stand rejected under 35 USC 102(b), 6 6,$65*7%%6%%as being anticipated by the Sorvall bulletin.

-% *,*=>3/ -.Claims 12 through 14 stand rejected under 35 USC 102(b) 66,$65*-*%as being anticipated by the Christensen article.

-% . >3/ -.Claims 6, 10, and 16 stand rejected under 35 USC 10336,$6%7*%!*as being unpatentable over the disclosure of the -*%7:!*7%%6%%Christensen article in view of the Sorvall bulletin. 1*(*:%*7667The examiner considers that it would have been obviousto one *7,5 %%*!*having ordinary skill in the art of microtomes to have7 modified*!%%*-*the fulcrum arm disclosed in the Christensen article% to have included an inverted U at the end thereof as disclosed in the Sorvall bulletin. *7%7 **!%*7%%6%%

1#%*,**!*>!%Although the restatement of the rejection of claims . $,/!*(;:6, 10, and 16 on page 5 of the examiner's answer !%%556!*>failed to include any statutory basis for the rejection, :**>!*% we note that the rejection of these claims, $$,$,0!*!%>2appearing at page 7 of the final rejection dated November76 . 0 :*$$20, 1987, was made under the proper 56:*7%5*6statutory basis and we have merely restated this basis!$%for completeness.

@!$,=*,*!*(;We refer to pages 4 through 6 of the examiner's answer:!*!%%!*(;>for the full statement of the examiner's rejections!*of the %$$%claims on appeal.

#$$%%*Appellant has argued, :*$% *,*= **(with respect to claims 12 through 14, that the examiner*$$%5$$%3/ -has not properly applied 35 USC . 6$$%53/ - :*102(b) and not properly construed 35 USC 112 with respect$*OP%#$$%%to the “means” clauses. Appellant cites Pennwa/t Corp. v. Durand-Wayland Inc 33D 3 = 030D-0 ., 833 F.2d 931, 4 USPQ2d 1737 (Fed.Cir. 1987), as ,*stating that not any means is $$%5765OP% 6*properly covered by a “means” clause, but rather only%5O:**$!*!E:“structure . . . which performs that function [which]**F*is the <7%!*%same as or an equivalent of the structure disclosed*$!P6! $,&%in the specification” (brief, page 11). It is also argued*that no ***O *$Pmeans other than the “U-shaped” >Page 1659 $*%6$$%%;$ specimen holder is described in appellant's patent,*$***7!thus no interpretation other than that derived from*$the patent %$$#$$%%%*disclosure is proper. Appellant also contends that 7!*%%,!*% %,,even if the literal meaning of the claim 12 languageO!%5“freely 65$,P65%! *-*bypassing” is considered by itself, in the Christensen%*!%*$article it is the fulcrum arm that penetrates the*container :%% $**!%wall, not a separate means attached to the fulcrum.&**!-*%It is maintained that the arm of Christensen also does not

u)vyhihpv pqvyhihpuf vfqvyhhq4rhhttp://iplaw.bna.corn/iprc/display/batch_print_display.adp?searchid=2485 puvq2!#'$(("#9934 #4/ l/2015 ! $ DryyrphyQ r GhSr pr8rr Qhtr "s &

O65$ 7,*:%%!*P6! $,0**-*% %%*,,*$%!*$7%365$,!*:%%,$%%% %=

#$$%%(,*$$5!*>!% 3/ -. 66, $65*7%%6%%#$$%%,**7%%$$%5"%%D"%% :O$$6%P3/ -. 6#$$%%* !4/ *7%% 6%%:!* ?-*;7*5676! $, 0** !$6% 4 %*$$%!,!%$5,*:!75 !+-%;%<,?-*7:*7%%6%%*5 6!?-*;$+-%;%#$$%%%**!!7!+A, **7%%6%%:!:**$5*%%$:5! 6,C65?-*+A,%**$$*$5,*$$% ***

&!* *O$6%P3/ -. 6O6%*$6%P#$$%% .=D 3/ 3 ==D-!*%,** *C!*!O$$6%P$7$!!*7%6%5 6%5!**$:**:***%#$$%% <:*$O!5 %%*P**-$5,* !!*% (!$5,*, $$,*%65:**$!6> (

#$$%%%*$*$!$5,*$%6$765*-$5,* !!%5 $5,*),% . = %5$$!*C!*: !$, %, 65&*$*:7%6%#$$%%* $*%%*7%6%7,,*7%%6%%*:*%5%:$7 $:*?-* :*:%*,*

#*>$65$$%%:*$*7%%6%%*:$6%%57%6% 6! 6 *!%:**:56!*!%,!*$$%! :***$:**6>*(#$$%%**%!* !!! *B%-%!*-$5,* !!* !! $6 = 0 *!*-$5,* !!*:**$5,*,6:,6: #, $6/ #$$%%** $!$5,* :%5$6%:*$%$5,*,!,:**: !* -$5,* !!6! $,3 #$$%%**(**(:$%* -$5,* !!%,!%%6 6**B%-%**:% (,*: !!$6/ #$$%%* 6 * % : !$6/

#$$%%%%*!!7!*G2*% G!)*-$5,* !! *O!!7P$,!*%, !,*7%%6%% :%% %5*7 *,*%276!**%,$$5:%*76 7%6%%%*

#%*,*$$%%**C*6!+2*%O!!7P *O!!7P :$$%5(6!5$6%*$$$!!%*!6 6O!!7P@**!*!%$$$!% $30-D)G:7 :*7!%%5:,**!+2*% 7%!*!%76!*$$%

#$$%%(,*7!*7%%6%%O$6%P *!%6 $$%%;%7& * *7%%6%%*:O6% 6(P$$ 6:%!& *!*%7:%%56$6%*,**,*#$$%%! ?G,%;%?-*43 0 :;"H $2 I6! $, 30:**$*6 ,5,%%,, *$ $,**!!*7$*$!* 7%% 6%%#$$%%<*:*6>!%6*Q= .$%6 7:*7* %%$?-* ?G,% +A, +)6 %% $ %%* *!!%5*7,$%,!*7

A%5 $$%%,*>!% . 3/ -.36,$6%7 -*7:!*7%%6%%&,% $$%%***, ,, 7!6,*%!*-*%*7%%6%%7$$%%; %6@!$,*,*/!$$%%;6!!*!%%!$$%%; $:*$%%!*>!*%$$%

u)vyhihpv pqvyhihpuf vfqvyhhq4rh puvq2!#'$(("# # ! $ DryyrphyQ r GhSr pr8rr Qhtr #s &

&7,*$$% :*7,7!%*!* ($, $%%5*,$65*$$%%*6!*% *, *,$65*(*: $7%!%%*7 6!* %**7%%6%%O$6%P3/ -. 6 * :7*(;>!% 3/ -. 6 6,$65*7%%6%% :%%*>!% . 3/ -.3 6,$6%7*-*%7:!*7%%6%%G:7 :,:* *(;$:*$*>!% *,*=3/ -. 66, $65*-*% ,!*!%%:

&7:**%<6%7:***7%%6%% O$ $6%P:**,!3/ -. 6*(**$**! !$6%4 %=*$$%!,!%!$5,*

@*0 -" .-$5,*#!.**!!,!$5,*O*%%6 5$!7!*!*P2,*D )+# :**!$ !*!!, *$,*OEF*$$%*%6 6%!*!$6%,7%= *%*!:**(*P A=!*$$%!*!$6%*OE,F7*$%:* $!*$%:!$%% % $6%%56*:*$:* $*%6!:**!$6%P*,7=*! $6%4

,- *!!,O*%%65$!7!*! *P %**!!,!*7%%6%% 7 !*$6%*!4 *O!$6%P!0 -" -$5,*#! .O*%:*$!*!*C:$%% % $6%%5 665*$$!*$5,***5P* *!!,$7 7**7%%6%% :O$$6%P*$7!3/ -. 6

G:7 * 7566657,!%7*5#6% 7 $$%%*$$!%!+-%?-*+5 <,*?-*O7:PO$$%56%%%,*D*4*'7: *!'$P#%!%!?-*+-%4/ ,*?-**O *%65!7,*( $5!*77 %P#*?-*;%$5!:*6*7#%%5 $$%%*$!!!!7!-5BA,$6/ 0 :**+A, *O"%% :$$%5$!!:**$5 P*O"%% :6%$%!&77%% &*P6* 6O%5C765?-*%,*$$!"%% -$ !"%% :*!!*$5:5P+A,%* :* ,*$$%!-$5,*),#..3 **O%%** *%! $$* $$% PO*6!* :%,**4 =! *$$%!,*!$6%!"%% *"%%:7$ 6P

*6!*76! $$**7%%$$%5"%% :%5 6:**$5?-*#%*,**:$$%5$% ?-*;!*6%% ?-*: 7: :**$%5!&77%% & *!*6%%$$%5:7%6*$5$%5@ !*%!?-*+": 43 0 :;"& $2 7!*%*$6:7%%?-*?-**$% $,$**!*OEF5!%,:*7%%:/L5%5%%D%! *!/5#!*/5:$ &*%%!*:*7%%P

* 7:!*76! $$**7%%$$%5"%% :O$% % % $6%%56P0 - *! %5:*4 OP *!$6% 6*7%%$$%5"%% :7O$6%*P*, !*$5,*%:*! :!**7!6* 7!*! =!*$$%!,!%$5,**4 :*! $6%!*7%%$$%5"%%D

*(6%7 :***7%%$$%5"%% :$6%%57%6%6! 6 *%*$$$!***7%%6%%: O$P 6%5:***6%%:O$$6%P*O$$6%P6!3/ - . 6*$$%**7*$6% %,$6%655 /D 3/0 0. 0/-- #0 $ *OEF* :***$6%%%5,*765!*$6%*!!<5P !**OEF,%5 3/ -. 6 %5:*75%65 :*5*

u)vyhihpv pqvyhihpuf vfqvyhhq4rh puvq2!#'$(("# # ! $ DryyrphyQ r GhSr pr8rr Qhtr $s &

,C$6%!*$6%!$ !,!6$6% **65! *$$,*!*56P* $6%63/ -. %,%6%5,!! *! 6$$*656 //D . 0. 0/-- ## $ OEF:%%%*,:**$ $6%63/ -. 6**$6%6%5P*: $ <,O*6%5%*$$!*$6% !$$6%$!* 7 :*7!5*76#7%7*!%<%! (,P :*!,O$$6%P6$6%5

$!5*:,***6*:7%6% *(*$%5 %%*6> (,6% %, %,C$**!*%!*%7 :*!!**($

* : 6*76! :***$!%65$$%%:** $$%!,!%$5,*:!!%56%*$6%$ %% *$<%!5O$$6%P#$$%%%*%!*B%-%!* -$5,* !!7* %*,**(*(:$%*-$5,* !! %,!%%6 *B%-%:%*7O(,* : !P!$6/

@ *!%%:,67:*$*%!?*5* B%-%!* -$5,* !! $6 = 0 :**$*!$6%6%5!*7%% "%% @*$,$*=!*%*

*%,!: ,%,:6%65% !*: % * %*5%!*%%!* A65!-, *$$,!%5*5!* -$5,* !!*$$!7%E 7%%F"%% *76 *5!*-$5,* !! ,$*/* 7%E 7%%F"%% :, !!7*!!%,#, * ,:%*76$6%%57%6%**,6:,* -$5,* !!*,6#..3:,6: #, $6/ *(6% $$%!* , *6$$%*$$$$6%$$7* *7%!<%5%5-$5,* !!(,!%,: ,$* **%,!,#..3:$%*%,!%6* %5*:%,$6/ -:%*76$ !%%%5: %*!5$%: 6#(,* : !:%66% 6*%5*!* ,$**OEF*(!$6%!*-%,!-$5,* !!', ,#..366%**$6%!*-%,,?7%5* *7%,#..3:$6%*0 P

65*#2*% G!*) 7?7!*-$5,* !!! +*//*,*#, *O!!7PEF+5 0%!# $,$*=/ * $!7%%$$%5"%% !%:**$$% !, *% :%*76*$$,% #%( 6*!$6/ :**:$$(%5:*%%*: :**$5!***O!!7PEF(*6"G:7 +2*%** -$5,* !!7!-$%G%%-5%-5 M,#$% *OE!F5* 6!!*7 ::,,$ ,$ ,PG$,$*0*

*%%5!6*!,,% ,,***%7 :% * $66%5*76% :**#% !*6* <*67*+%-% !!7%5$6/* :***%%*:$$ :%*7***%767%6%! 7%%%276$66%5% "*!$7+2*%*O*%,<6$! 6 . P:**:$%*65,* +2*%!!*$ $,$**O:**:$ 6 . :%*7*%, %%276 . $66%5:%%!*P&$,$* +2*%* !%,*!6$%*%,*5! 6 . ! 6!*$6%* *:**! *<:%*76 $65*7?7<*,!%5

u)vyhihpv pqvyhihpuf vfqvyhhq4rh puvq2!#'$(("# # ! $

! "

# $!% % & ' ( & $ )* & ! * " + & ! & & * &* & , -.. & / 0,% O Q R + ' 4P

# $ '+ )* & % * & 6' & & & & 7 O89 " & & " & & P

: , ,4 ,% ,+ & ; & & & & ; * & & / 0 & ; & , O ; &" P < ,4 O & 4P) & * & , & =&4 # & % ,4 ; & O P * & * * / ; & , 4 R & & O & 4 P > * & ,4 R , * < O 04 P

? =.> .=.)!@7<-A> * .B O89 & & C P O & ; P% " D * * & , ,4 % ' * & & * & ; & & & & & " / 0 : , ,4 ,% ,+

/ 0

# / 0 O P -< )*AB#E -<)*AB & / 0 E -<)*- & * / 0

: & / 0 O P * & " E ; & & ( " / 0 6

? & &7 E -<)*AB & * & & &7 < -<)* O P O P O)0 P .--> -7)!@ =-= =-. =-A> * .=B & ? & C ; & ; & & O & P4 & *>* =-

!" !# $ " % %$ !$& $'())*

; F# ; & 8 & 9 & ; &, " -<)* & & & &O P

? *>* E ; & O & P =<> .<<)!@ &<A> * . 7)!@-<A**!==B# O ! P# 6 * A B O & ; & P? ; 6 O P ; > & &-< * ? & 6 & * O & PA &=B: > & * & & A B &-<7

- > &7 &-<< * : & " & ; & O P & & & & & "

6 & * & & " - O & & " P# & & " # ; &. ; 6 A " * &. B " & & " # - *

( " 7 O & & P# * : * & & : & > &7 * : " & * & & ? " & * " => =-.)!@== A> * .

& ; E & &7 -<)*AB ! ; E & -<)*AB E & -<)*-

-=*>'-A B " &

#$$% & #%' 0+ * 0

* FGG G G ; 0.0-=0--

:4<=077 * &'<#/ 4 : ' ; ; /4* &!

!" !# $ " % %$ !$& $'())* Nordock Inc. v. Systems Inc., Slip Copy (2013) 2013 WL 989864

trials. Luce v. United States, 469 U.S. 38, 41 n. 4, 105 S.Ct. 460, 83 L.Ed.2d 443 (1984) . Judges have broad discretion !"#$%&'%()()*+ when ruling on motions in limine. See Jenkins v. Chrysler ,-./%012%&230.45%6704078-%73%69::2-0./%4;47.4<.2= Motors Corp., 316 F.3d 663, 664 (7th Cir.2002) . Regardless >-702?%@04023%A730:760%B89:0C of a court's initial ruling on a motion in limine, the court may D=A=%&7368-37-= adjust a motion in limine during the course of a trial. Farfaras E,FA,BG%HEB=C%I.47-07JJK v. Citizens Bank & Trust of Chi., 433 F.3d 558, 565 (7th Luce, See also, Luce, B89-02:6.47LKA2J2-?4-0C Cir.2006) (citing 469 U.S. at 41–42). 469 ;= U.S. at 41–42 (“Indeed even if nothing unexpected happens at trial, the district judge is free, in the exercise of sound judicial @M@NDO@%HEB=C%A2J2-?4-0KB89-02:6.47L4-0= discretion, to alter a previous in limine ruling.”). In addition, if in limine E8=%##KBK##)= %P% O4:61%#$C%!"#$= the procedural environment makes it too difficult to evaluate an evidentiary issue, it is appropriate to defer ruling Attorneys and Law Firms until trial. See Jonasson v. Lutheran Child & Family Servs., 115 F.3d 436, 440 (7th Cir.1997) (delaying until trial may Gregory W. Lyons , O'Neil Cannon Hollman DeJong & Laing afford the judge a better opportunity to estimate the evidence's SC, Jeffrey S. Sokol , Sokol Law Office, Milwaukee, WI, for impact on the jury). Plaintiff–Counterclaim–Defendant.

Philip P. Mann , Mann Law Group, Seattle, WA, David A. Affeldt , Affeldt Law Offices, West Allis, WI, John Motion in Limine to Exclude Whitaker , Whitaker Law Group, Seattle, WA, for Defendant– the Testimony of Norbert Hahn Counterclaimant. Nordock requests an order exclude the testimony of Norbert Hahn (“Hahn”) (ECF No. 129). Citing Rule 403 of the Federal Rules of Evidence , Nordock asserts that Hahn's recollection DECISION AND ORDER of events that took place over 20 years ago is so unreliable RUDOLPH T. RANDA , District Judge. that it should be excluded because it will not assist the jury and presents a substantial danger of confusing the jury. *1 This Decision and Order addresses the motions in limine filed by the Plaintiff and the Counterclaim– Rule 403 provides: “The court may exclude relevant evidence Defendant, Nordock Inc., (“Nordock”) and the Defendant– if its probative value is substantially outweighed by a danger Counterclaimant, Systems Inc. (“Systems”), rivals in the of one or more of the following: unfair prejudice, confusing loading dock device industry. Also addressed is Nordock's the issues, misleading the jury, undue delay, wasting time, motion to seal. or needlessly presenting cumulative evidence.” Rule 403 requires the Court to balance the probative value of the This action involves claims and counterclaims regarding evidence at issue against any potential harm its admission Nordock's design patent, United States Design Patent might cause. United States v. Taylor, 701 F.3d 1166, 1172 Number D 579,754 (the “#754 patent”) and Nordock's (7th Cir.2012) .Rule 601 of the Federal Rules of Evidence unfair competition claims. Familiarity with the basic facts provides that every person is competent to be a witness. is presumed, and therefore minimal factual background is provided. Regional circuit law applies to evidentiary rulings *2 At trial, Systems will be calling Hahn, who has 38 years in patent cases. See Pozen Inc. v. Par Pharm., Inc., 696 F.3d in the loading dock industry, as a fact witness. Although 1151, 1161 (Fed.Cir.2012) . Hahn has been deposed, neither Nordock nor this Court know the subjects about which Hahn will be called to testify. The A motion in limine is a motion “at the outset” or one made pretrial context provides insufficient context to evaluate the “preliminarily.” Black's Law Dictionary, 803 (8th ed.2004). admissibility of Hahn's testimony. See Jonasson, 115 F.3d at Although not explicitly authorized by the Federal Rules of 440 . At this juncture of the proceedings, Nordock's motion to Evidence, in limine rulings have developed pursuant to the exclude Hahn's testimony is denied. inherent authority of district courts to manage the course of

the AIA will be relevant to any issue at trial. Therefore, the motion is granted, without prejudice. If Systems believes any Motion in Limine to Establish the portion of the AIA is applicable at trial, it should bring the Priority Date of the ′754 Design Patent matter to the attention of Nordock and the Court. Nordock seeks an order establishing a December 23, 2002, priority date for the ′754 design patent . (ECF No. 131.) Systems contends that the priority date is a contested factual Motion in Limine to Preclude Systems from Using issue that must be determined by the jury. Asserted Cost Savings to Attempt to Show Invalidity

Determination of a priority date is purely a question of law Nordock seeks an order precluding Systems from using if the facts underlying that determination are undisputed. asserted cost savings to attempt to show invalidity at trial. Bradford Co. v. Conteyor N. Am., Inc., 603 F.3d 1262, 1268 (ECF No. 135.) Nordock states the motion is conditioned (Fed.Cir.2010) . Because the underlying facts are contested, on the Court's denial of Nordock's motion to compel the the Court cannot rule as a matter of law on the issue. production of the Bero report with post-October 2011 profit Nordock's motion to establish a priority date is denied. information and the production of timely requested financial information.

*3 On February 19, 2013, the Court granted Nordock's Motion in Limine for an Order that the motion to compel as to the production of timely requested America Invents Act (“AIA”) Does Not Apply financial information and denied it to the remainder of the Nordock requests a ruling that the America Invents Act motion. ( See ECF No. 137.) Systems states it has produced (“AIA”) does not apply to this case and must not be all the financial documents upon which Systems' damages presented to the jury at trial. (ECF No. 133.) It maintains expert relied and it will be immediately producing the updated that, because the ′754 Design Patent was filed May 31, 2007, financial data reflecting Systems' ongoing sales. and issued November 4, 2008, the AIA does not apply to it. Systems contends the motion is premature or irrelevant Based on the foregoing, Nordock has not presented a basis because Nordock has not identified any evidence that would to exclude Systems' evidence of cost savings. The motion is be affected by its motion or any issue that may arise at trial. denied without prejudice.

Section 35 of the AIA provides: Motion in Limine to Exclude “Undated” and Except as otherwise provided in this “Unpublished” References from Entry into Evidence Act, the provisions of this Act shall as Asserted “Prior Art” References at Trial take effect upon the expiration of the 1–year period beginning on the date Nordock seeks to exclude “undated” and “unpublished” of the enactment of this Act and shall references from entry into evidence as asserted “prior art” apply to any patent issued on or after references at trial. (ECF No. 141). Nordock refers to the that effective date. Crawford Door N.V. (“Crawford”) brochure and Combursa 1 Leahy–Smith America Invents Act, 112 Pub.L. No. 112– drawings, and asserts they should be excluded as evidence 29, § 35, 125 Stat. 284 (2011). The AIA was enacted on of “prior art” references applicable to the ′754 Design Patent September 16, 2011, and unless otherwise provided the at trial. provisions of AIA took effect on September 16, 2012. See e.g., Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1 These documents were discussed at pages 42 through 45 1367, 1370 n. 4 (Fed.Cir.2012) . of the Court's February 26, 2013, Decision and Order. (See ECF No. 143.) Whether a particular portion of the AIA governs any of Systems indicates that the evidence is relevant to its defense the facts or legal issues in this action is an issue-by-issue of the unfair competition claims and it will be able to establish question. However, at this time, there is no indication that

© 2015 Thomson Reuters. No claim to original U.S. Government Works. 2 Nordock Inc. v. Systems Inc., Slip Copy (2013) 2013 WL 989864 a proper foundation for the two documents. However, it does not contend that either document is admissible as prior art.

Motion to Seal Profit Data for Systems' Because insufficient evidence has been presented regarding Accused Levelers in Nordock's Opposition the dates of the two publications, they are not admissible to Systems' Motion to Strike Nordock as prior art and Nordock's motion to exclude “undated” and Experts, and Financial Data in Exhibit A “unpublished” references from evidence as asserted “prior art” references is granted. This ruling does not bar the Pursuant to General Local Rule 79(d), Nordock filed a motion introduction of the documents as evidence regarding the to seal profit data for Systems' accused levelers on page unfair competition claims. four of its Nordock's opposition to Systems' motion to strike Nordock experts, and financial data in exhibit A thereto. (ECF No. 148.) Having reviewed the relevant papers, the Court Motion in Limine to Preclude Testimony finds good cause to seal portions of those papers because of Systems' Newly Added Lay Witnesses they contain the parties' sensitive financial information not generally available to the public. See County Materials Corp. Nordock seeks to exclude the testimony of Systems' newly v. Allan Block Corp., 502 F.3d 730, 740 (7th Cir.2007) . The added lay witnesses. (ECF No. 144.) Nordock maintains sealing order will expressly provide that any party and any that Systems added eight new lay witnesses for the first interested member of the public may challenge the sealing of time in its final pretrial report. These witnesses include those papers. Id. five European residents, Brian Fulton (“Fulton”), and two Systems employees. Nordock maintains that Systems failed to timely disclose these witnesses as required by the Court's Systems' Motions in Limine July 21, 2011, Scheduling Order, denying Nordock the opportunity to depose them. By its motions in limine (ECF No. 140), Systems seeks an order barring Nordock from offering any expert testimony, Systems responds that its final pretrial report was filed opinion, or evidence on Nordock's unfair competition prior to the issuance of the Court's February 26, 2013, claims, and specifically as to secondary meaning. Systems claim construction and summary judgment decision, and in also asserts that pursuant to Daubert v. Merrell Dow the wake of those rulings it intends to call only two of Pharmaceuticals, Inc., 509 U.S. 579, 113 S.Ct. 2786, 125 those eight witnesses—Mark Lobel (“Lobel”), and Steve L.Ed.2d 469 (1993) , the Court should exclude both expert Robbins (“Robbins”). Systems states that both witnesses reports and any testimony by Prof. Stan V. Smith (“Smith”) were disclosed on October 11, 2011, in response Nordock's regarding Nordock's purported damages in this action. second interrogatory requesting the identification of persons involved in developing the lip securing mechanism for each of Systems' accused dock levelers. Technical Expert Testimony on Non–Patent Issues

With respect to Lobel and Robbins, Systems did not Systems maintains that Nordock failed to identify any supplement its Rule 26(b)(1) disclosures and it did not technical expert or to serve an expert report on any non- provide any indication as to the expected testimony of either patent issues and should be barred from offering any expert witnesses as required by Rule 26. Noncompliance with Rule evidence regarding non-patent issues. Nordock concedes 26(a) generally precludes testimony of undisclosed witnesses. the motion as to its technical expert, Steven Carl Visser Systems does not assert that the omission is either harmless (“Visser”), not testifying as to secondary meaning. However, or justified. Systems waited until too long to identify the it asserts that Visser should be allowed regarding common additional lay witnesses and has not offered any justification elements to design patent and product configuration trade or established that its non-disclosure is harmless. dress validity and infringement, such as the ornamental functional dichotomy and the distinctiveness of a design *4 Nordock has established that the eight lay witnesses were relative to existing and prior art designs. not previously disclosed as required by Rule 26(b)(1) and, therefore, its motion is granted.

Under Rule 26(a)(2), a party that intends to rely upon an expert witness's testimony is required to furnish by a A witness who is qualified as an expert by knowledge, skill, date set by the district court a report containing, among experience, training, or education may testify in the form other information, “a complete statement of all opinions” of an opinion or otherwise if: the retained expert will provide, “and the basis and reasons (a) the expert's scientific, technical, or other specialized for them.” Ciomber v. Coop. Plus, Inc., 527 F.3d 635, 641 knowledge will help the trier of fact to understand the (7th Cir.2008) (citing Fed.R.Civ.P. 26(a)(2)(B)(I), (a)(2)(C) ). evidence or to determine a fact in issue; Failure to comply with Rule 26(a)(2) 's requirements results in sanction: the offending party is not allowed to introduce (b) the testimony is based on sufficient facts or data; the expert witness's testimony as “evidence on a motion, at a hearing, or at a trial.” Id. (citing Fed.R.Civ.P. 37(c)(1) ). (c) the testimony is the product of reliable principles and This sanction is “ ‘automatic and mandatory’ “ unless the methods; and offending party can establish “ ‘that its violation of Rule 26(a) (d) the expert has reliably applied the principles and (2) was either justified or harmless.’ “ Id. methods to the facts of the case.

*5 The parties' combined joint status report and discovery Regional circuit law governs the decision whether to admit initial [e]xpert reports on plan states “The parties agree that expert testimony in a patent case. See Micro Chem., Inc. v. matters for which the parties bear the burden of proof will Lextron, Inc. ., 317 F.3d 1387, 1390–91 (Fed.Cir.2003) . be served by June 20, 2012, that rebuttal expert reports shall be served by July 20, 2012, and that expert discovery shall The Court engages in a three-step analysis for determining be completed by August 20, 2012.”(emphasis added.) (ECF whether the expert testimony is both relevant and reliable: No. 12.) While there are overlapping elements of trade dress “[T]he witness must be qualified ‘as an expert by knowledge, and patent infringement, Nordock did not disclose any expert skill, experience, training, or education,’ Fed.R.Evid. 702 ; the on trade dress. Nordock vigorously emphasized that point at expert's reasoning or methodology underlying the testimony pages two, three, and eleven of its memorandum in support of must be scientifically reliable, Daubert, 509 U.S. at 592– its motion to strike Brookman as an expert witness on trade 93, ...; and the testimony must assist the trier of fact to dress and unfair competition. (ECF No. 53.) Nordock does understand the evidence or to determine a fact in issue. not assert that the omission is either harmless or justified. Fed.R.Evid. 702 .” Ervin v. Johnson & Johnson, Inc., 492 F.3d Nordock apparently made a tactical decision and it is too close 901, 904 (7th Cir.2007) . to trial to change that approach. Therefore, Systems' motion to exclude any technical expert evidence on behalf of Nordock In determining reliability, courts are to consider the following on any non-patent issues is granted. non-exhaustive list of guideposts: “(1) whether the scientific theory can be or has been tested; (2) whether the theory has been subjected to peer review and publication; (3) whether Damages Expert Testimony the theory has been generally accepted in the scientific community.” Ervin, 492 F.3d at 904 (citing Daubert, 509 U.S. Systems asserts that Smith's damages opinion and report at 593–94). “The proponent of the expert bears the burden must be excluded as being far-fetched, and based on faulty of demonstrating that the expert's testimony satisfies the factual and legal analysis that render it “fatally” unreliable. Daubert standard,” by the preponderance of the evidence. Nordock states that Systems' criticisms of the Smith report Lewis v. CITGO Petroleum Corp., 561 F.3d 698, 705 (7th on Nordock's lost profits are without merit, and notes that Cir.2009) . The weight and credibility of an expert's testimony Systems' motion does not directly address Smith's damages may be challenged through “[v]igorous cross examination, calculations under 35 U.S.C. § 289 , or Smith's November 5, presentation of contrary evidence, and careful instruction on 2012, supplemental report. the burden of proof.” Daubert, 509 U.S. at 596 .

Rule 702 of the Federal Rules of Evidence governs the *6 Although Smith's qualifications are not challenged, admissibility of expert testimony. Daubert, 509 U.S. at 588 . the Court notes Smith has a Bachelor's Degree from Rule 702 provides as follows: Cornell University, and a Master's Degree and a Ph.D. in Economics from the University of Chicago. (June 12, 2012,

Smith Report, 1.) (ECF No. 86–4.) He has worked as an to the patented feature. LaserDynamics, Inc., 694 F.3d at 67– economic and financial consultant since 1972. His experience 68 . included authoring the first textbook on economic damages; creating and teaching the first course in forensic economics nationwide as an adjunct professor at DePaul University Lost Profits in Chicago; performing economic loss analysis since the early 1980s in several thousand cases throughout the county, *7 Systems states that Smith first analyzes the apparent including business valuation, financial analysis, antitrust, value of gross revenue that Nordock would have realized contract losses, class actions, employment discrimination, if it had sold the same number of Nordock dock levelers and intellectual property valuations including evaluations as Systems sold of Systems' dock levelers and that he of reasonable royalty. The Court concludes Smith has did not conduct the requisite “but for” analysis required specialized training and experience as an economist to enable when calculating lost profits damages. See Rite–Hite Corp. him to assist the jury on the issue of damages in this action. v. Kelley Co., Inc., 56 F.3d 1538, 1555 (Fed.Cir.1995) (“To recover lost profits damages, the patentee must show Next, the Court must consider whether the methodology a reasonable probability that, ‘but for’ the infringement, underlying Smith's expert reports of June 20, and November it would have made the sales that were made by the 5, 2012, is reliable. Smith indicates his opinions are in infringer.”) Nordock can establish this “but for” causation accordance with the generally accepted standards within the by proving: (1) a demand for the patented product; (2) field of economics and are expressed to a reasonable degree the absence of acceptable noninfringing substitutes; (3) the of economic certainty. He also maintains that it is reasonable manufacturing and marketing capacity to exploit the demand; for experts in the field of economics to rely on the type of and (4) the amount of profit it would have made absent materials that he has in this case. Thus, the Court concludes System's infringement. See Panduit Corp. v. Stahlin Bros. that, in general, Smith's methodology is reliable. Fibre Works, Inc., 575 F.2d 1152, 1156 (6th Cir.1978) . The “Panduit test” is a useful, but non-exclusive way for a patent The next question is whether Smith's reports and testimony holder to establish entitlement to lost profits damages. Rite– will assist the trier of fact in understanding evidence or in Hite, 56 F.3d at 1545 . determining a fact in issue. In a patent infringement action, a plaintiff may recover “damages adequate to compensate Smith's report began by calculating loss sales revenue. for the infringement, but in no event less than a reasonable Because Systems had not provided sales revenue data from royalty for the use made of the invention by the infringer, the infringing models, ( see Smith Report, 4), Smith used the together with interest and costs as fixed by the court.” 35 number of dock levelers sold by Systems and the revenue data U.S.C. § 284 (2006) . The statute authorizes two categories provided by Nordock for comparable models. Calculating lost of infringement compensation: lost profits and reasonable sales revenue was the first step in Smith's two-part analysis, royalty damages. Lucent Techs., Inc. v. Gateway, Inc., the second portion of that section addresses lost profits. The 580 F.3d 1301, 1324 (Fed.Cir.2009) . Damages for design “but for” element of Smith's analysis is added at pages four patent infringement may include lost profits, a reasonable and five of his November 5, 2012, supplemental report. (ECF royalty, or infringer's profits. See 35 U.S.C. § 289 . An No. 147–3.) Smith's supplemental report also adjusts his lost expert's damages theory must be based on “sound economic profits opinion based on information Systems disclosed in the and factual predicates.” LaserDynamics, Inc. v. Quanta report of its damages expert, Richard Bero. Computer, Inc., 694 F.3d 51, 67 (Fed.Cir.2012) (quoting Riles v. Shell Exploration & Prod. Co., 298 F.3d 1302, 1311 Systems states that Smith never addressed the impact of (Fed.Cir.2002) ); IP Innovation LLC v. Red Hat, Inc., 705 non-infringing alternatives on his lost profits analysis, and F.Supp.2d 687, 689–91 (E.D.Tex.2010) (rejecting damage that Smith's opinion regarding price erosion 2 is so devoid expert's report because he relied upon irrelevant unreliable of actual analysis that it can “barely be believed.” Such evidence and failed to account for economic realities). In any concerns are more properly viewed as addressing the weight case involving multi-component products, patentees may not of Smith's anticipated testimony rather than its admissibility. calculate damages based on sales of the entire product, as The Court's role is not to determine whether an expert's opposed to the smallest salable patent-practicing unit, without testimony is correct, but only whether it falls “outside the showing that the demand for the entire product is attributable range where experts might reasonably differ.” Daubert, 509

U.S. at 596 . “Vigorous cross examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking Reasonable Royalties shaky but admissible evidence.” Id. “ ‘[A] reasonable royalty analysis requires a court to 2 To recover price erosion damages, a patent-holder must hypothesize, not to speculate.... [T]he trial court must show that the infringing conduct affected retail prices. carefully tie proof of damages to the claimed invention's See Crystal Semiconductor Corp. v. Tritech Microelecs. footprint in the market place.’ “ Laser Dynamics, Inc., 694 Int'l, Inc., 246 F.3d 1336, 1357 (Fed.Cir.2001) (stating F.3d at 67 (quoting ResQNet.com, Inc. v. Lansa, Inc., 594 that to recover price erosion damages, a patent-holder F.3d 860, 869 (Fed.Cir.2010) ). By statute, reasonable royalty must show that “ ‘but-for infringement, it would have damages are deemed the minimum amount of infringement sold its product at higher prices”).“A patentee's price damages “adequate to compensate for the infringement.” Id. erosion theory must account for the nature, or definition, (citing 35 U.S.C. § 284 ). Such damages must be awarded “for of the market, similarities between any benchmark the use made of the invention by the infringer.” Id. market and the market in which price erosion is alleged, and the effect of the hypothetically increased price on the likely number of sales at that price in that market.” Id. “A ‘reasonable royalty’ derives from a hypothetical negotiation between the patentee and the infringer when the Systems also states that Smith's calculation of additional infringement began.” ResQNet.com, Inc. v. Lansa, Inc., 594 damages based on “loss of marginal profit from the sale of F.3d 860, 868 (Fed.Cir.2010) .“The hypothetical negotiation accessory items that could have been made by Nordock if not tries, as best as possible, to recreate the ex ante licensing for Systems' infringement,” Smith June 20, 2012, Report at 8, negotiation scenario and to describe the resulting agreement. and was rejected in Rite–Hite Corp., 56 F.3d at 1550 . In other words, if infringement had not occurred, willing parties would have executed a license agreement specifying Systems overstates the Rite–Hite holding. In Rite–Hite, a certain royalty payment scheme.” Lucent Techs., Inc., 56 F.3d at 1550–51, lost profits were awarded for the 580 F.3d at 1325 . (Emphasis added.) To determine a patentee's lost sales of truck restraints, a device which holds reasonably royalty, courts apply an “unprioritized and a vehicle to a loading dock, (even though protected only often overlapping,” ResQNet.com, 594 F.3d at 869, list under an unasserted patent), and lost profits were denied on of fifteen relevant factors found in Georgia–Pacific Corp. “convoyed” sales of a loading dock leveler. King Instruments v. United States Plywood Corp., 318 F.Supp. 1116, 1120 Corp. v. Perego, 65 F.3d 941, 951 (Fed.Cir.1995) , states (S.D.N.Y.1970) . A reasonable royalty should be based upon that when a patent holder seeks damages on an entire the amount that a willing licensor and a willing licensee would machine where its patent covers only a patented component have agreed upon during a hypothetical negotiation at the time or damages for lost sales of unpatented goods sold along the infringement began, if both parties had been reasonably with a patented device (“convoyed” sales), the patent holder and voluntarily trying to reach an agreement. 318 F.Supp. at must satisfy the entire market value rule, requiring that the 1120 . patent holder prove that the patent-related feature is the basis for customer demand for the unpatented parts to which Systems states that Smith's assertion that “my opinion of a it seeks to extend its damages. Id. In Rite–Hite, the court reasonable royalty on sales of dock levelers would be 100 reaffirmed the viability of the entire market value rule and percent of Nordock's lost sales as calculated above,” (citing imposed a further limitation that “convoyed” sales must bear Smith Report, 11), is incredible and should be sufficient to a functional relationship with the patented goods. Id. disqualify Smith as an expert. In so contending, Systems states even using a 25% royalty rate is generally thought to *8 Rite–Hite is likely to preclude Nordock from recovering be unreasonable in view of recent Supreme Court decisions, any losses on lost profits from truck restraints. It may also citing LaserDynamics, 694 F.3d at 69 (quoting Uniloc USA, preclude claims of lost profits on door seals and shelters. Inc. v. Microsoft Corp., 632 F.3d 1292, 1318 (Fed.Cir.2011) ). However, disposition of those issues are dependant on factual (The use of 25% royalty rate fails to pass muster under issues that will be resolved at trial. Thus, at this juncture. it Daubert ). would be premature to decide whether Smith may testify as to loss of marginal profit from the sale of accessories.

Nordock's motion for an order precluding Systems from using Smith cites the Georgia Pacific factors, generally used to asserted cost savings to attempt to show invalidity at trial evaluate reasonable royalties, and states he relies on factors (ECF No. 135) is DENIED; four through eight. However, Smith states that “the patents owned by Nordock provide valuable product differentiation Nordock's motion to exclude “undated” and “unpublished” in the market, so Nordock management would never have references from entry into evidence as asserted “prior art” been willing to license its patents.”(Smith June 20, 2012, references at trial (ECF No. 141) is GRANTED and this Report, 11.) (Emphasis added.) A reasonable royalty requires ruling does not bar the introduction of the documents as willing parties and a balancing of their interests. Smith's evidence regarding the unfair competition claims; reliance on the 100% royalty figure does not reflect Nordock being a willing party or that he engaged in any balancing Nordock's motion to exclude undisclosed lay witness (ECF of the parties' interests. His opinion as to the “reasonable No. 144) is GRANTED; royalty” is unreliable and excluded under Daubert and Rule 702 . See id. Nordock's motion to seal (ECF No. 148) profit data for Systems' accused levelers on page four of its Nordock's *9 NOW, THEREFORE, BASED ON THE opposition to Systems' motion to strike Nordock experts, and FOREGOING, IT IS HEREBY ORDERED THAT: financial data in exhibit A thereto is GRANTED and any party and any interested member of the public may challenge Nordock's motion for an order precluding Hahn's testimony the sealing of those papers; (ECF No. 129) is DENIED;

Systems' motions in limine (ECF No. 140), as to an Nordock's motion for an order establishing the December 23, order barring Nordock from offering any technical expert 2002, priority date of the ′754 design patent (ECF No. 131) testimony, opinion, or evidence on its unfair competition is DENIED; claims is GRANTED; and as to an order barring Smith's reports and testimony is GRANTED with respect to Nordock's motion for a ruling that the America Invents Act reasonable royalties and DENIED in all other respects. does not apply to this case and must not be presented to the jury at trial (ECF No. 133) is GRANTED; At trial, if a party believes evidence is being introduced in violation of these rulings, the party must object at that time.

1 of 1 DOCUMENT

Nimmer on Copyright

CHAPTER 7 Statutory Formalities PART II REGISTRATION AND DEPOSIT

2 Nimmer on Copyright § 7.16

§ 7.16 The Significance of Registration

[A] Registration as a Condition to Copyright

[1] Works Created on or after January 1, 1978. It is clear that, as to works created on and after January 1, 1978, the effective date of the current Copyright Act, registration is not a condition to obtaining copyright. n1 Instead, copyright automatically inheres in a work the moment it is "created," n2 which is to say "when it is fixed in a copy or phonorecord for the first time." n3 Notwithstanding that proposition, some courts still imprecisely refer to a work being "copyrighted" rather than "registered." n4

Nonetheless, as to decennial works, n5 registration may constitute a condition to the continued existence of copyright after more than a relatively small number n6 of copies or phonorecords of the work has been published without the required copyright notice. n7 In such circumstances, the copyright will be injected into the public domain, unless registration has occurred prior to such publication, or within five years thereafter. n8

The foregoing rule governing decennial works has no application to works from the Berne era. n9 Whereas previous law on the subject had been conditional (as noted in the preceding paragraph), the BCIA specifies absolutely that "registration is not a condition of copyright protection." n10 Therefore, as to works published from January 1978 through February 1989, registration is required only to cure an antecedent unnoticed publication during that timeframe; as to works first published on or after March 1, 1989, no circumstances can arise in which failure to register would inject the work into the public domain. n11

[2] Works Created prior to January 1, 1978

[a] Works Protected by Common Law Copyright until 1978. Works created prior to January 1, 1978, but protected by common law copyright until that date, automatically acquired statutory copyright on January 1, 1978. n12 Therefore, as to such works, registration was not a condition to copyright. n13

[b] Pre-1978 Statutory Copyright in Published Works. Pre-1978 works could have obtained statutory copyright under the 1909 Act, without the necessity of registration, simply by the act of publishing copies of the work bearing a proper copyright notice. n14 As to such works, registration did not create the copyright, n14.1 but merely recorded it. Page 2 2 Nimmer on Copyright § 7.16

n15 But there was a requirement under Section 13 of the 1909 Act that once copyright had been obtained by publication with notice, "there shall be promptly deposited" the required copies n16 and registration claim. This language raised the question as to what "promptly" meant in this context. That is, how long a period might elapse after publication of the work with proper notice before the copyright owner had to deposit and register the work with the Copyright Office? n17 This question remains relevant under the current Act because, if a copyright owner failed to comply with this "promptly" deposit and registration requirement under the 1909 Act, it might be claimed that the work was thereby injected into the public domain, and hence would be ineligible for copyright under the present Act. n18

The "promptly" deposit and registration requirement of the 1909 Act represented a change from the preceding copyright law, under which deposit was required not later than the date of first publication. The House Committee that reported out the 1909 Act regarded the former practice as undesirable because it could result in loss of copyright due to an accident or mistake in failing to make deposit prior to, or simultaneously with, publication. n19 Accordingly, the provision for prompt deposit and registration after publication was adopted. But what were the consequences of failure to promptly deposit and register the work after publication? The Supreme Court, in Washingtonian Publishing Co. v. Pearson , n20 held that the words "promptly deposited" in Section 13 might not be read as a condition subsequent that, if not satisfied, would result in destruction of the copyright. The deposit (and accompanying registration) requirement was (as it still is) n21 a condition precedent to the right to bring an infringement action, n21.1 but such deposit and registration, under the 1909 Act, could be made at any time after publication, as long as it occurred prior to filing the infringement action. Washingtonian indicated that the only context in which the requirement of prompt deposit might become meaningful was in connection with a demand by the Register for deposit of copies. n22 This demand, under the 1909 Act, could be made only if there had been a failure to deposit voluntarily and promptly.

It was further clear from Washingtonian that, once registration and deposit have been made, a subsequent infringement action could be brought for acts occurring prior to, as well as subsequent to, such registration and deposit. n23 It follows, then, that under the 1909 Act (as construed in Washingtonian ), absent a demand by the Register for deposit, n24 no amount of delay in depositing and registering would destroy the right to sue, as long as registration and deposit were made prior to filing the infringement action. n25 In Washingtonian itself, the delay between publication and deposit was 14 months. Other cases have applied the Washingtonian rule when the delay was for substantially longer periods, in one case, n26 for as long as 27 years. Nevertheless, when there was a failure to promptly register and deposit, under the 1909 Act, some questions as to the viability of the copyright might be raised. n26.1 An intent to abandon the copyright n27 might be inferred from such failure to promptly register and deposit over a long period of time. n28 Moreover, it is arguable that the Washingtonian rule was repealed by subsequent legislation. n29

[c] Pre-1978 Statutory Copyright in Unpublished Works

[i] Registration as a Condition to Statutory Copyright. The one circumstance under the 1909 Act in which registration was a condition precedent to statutory copyright was when the work was unpublished. Section 12 of the 1909 Act provided for copyright protection for "works not reproduced for sale." This phrase was construed to refer to unpublished works. n30 In order to obtain copyright under Section 12, the 1909 Act required registration as a necessary condition.

Although Section 12 did not expressly limit its scope to any particular types of works, it did expressly provide for deposit and registration of only the following: lectures and similar productions, dramatic compositions, musical compositions, dramatico-musical compositions, motion pictures photoplays, motion pictures other than photoplays, photographs, works of art and plastic works and drawings. Despite the absence of such an express limitation, the implication of Section 12, adhered to by the Copyright Office n31 and never challenged by the courts, was that only those works above enumerated were eligible for statutory copyright as unpublished works. Therefore, statutory copyright protection was not available under the 1909 Act for unpublished books, periodicals, maps, reproductions of works of art, prints and labels, and sound recordings. n32 Page 3 2 Nimmer on Copyright § 7.16

[ii ] The Impact of Registration upon Common Law Copyright. Although statutory copyright protection for unpublished works could be claimed under the 1909 Act only by registration and deposit under Section 12, failure to register and deposit an unpublished work did not leave the work without protection--common law copyright in the work remained available. That Section 12 was merely an optional--not a mandatory--form of protection for unpublished works was made clear by Section 2 of the 1909 Act, n33 which provided, "Nothing in this title shall be construed to annul or limit the right of the author or proprietor of an unpublished work, at common law or in equity, to prevent the copying, publication, or use of such unpublished work without his consent, and to obtain damages therefor."

The more difficult question was whether Section 2 preserved common law copyright in unpublished works, even after statutory copyright had been obtained under Section 12. This question remains relevant under the current Act, given that the term of protection for a work varies depending on whether, as of December 31, 1977, the work was protected by common law or statutory copyright. n34 A literal application of Section 2 might mean that an author who registered under Section 12 might thereafter (as long as his work remained unpublished) claim both common-law and statutory copyright as alternative remedies.

The California Supreme Court rejected this position, in part by holding that a Section 12 registration deprived the author of his common law rights and required him to look exclusively to the 1909 Act, at least with respect to the right to control performances by others. n35 However, the same decision suggested that a Section 12 registration did not necessarily deprive an author of his common law right of first publication.

Nevertheless, most courts regarded a Section 12 registration as a complete divestment of common law rights, adhering to the view that Section 2 "is intended only to indicate that the statute does not displace the common law right" n36 but that "whoever elects to avail himself of the statute ... must be held to have abandoned his common law right." n37

[d] Publication of Pre-1978 Works on or after January 1, 1978. As indicated above, registration of works created pre-1978 was a condition to copyright only as to a pre-1978 statutory copyright for unpublished works. However, with respect to all works created pre-1978, like decennial works created on or after January 1, 1978, registration may be significant to the continued existence of such copyright. That is, if, after January 1, 1978, but before March 1, 1989, n38 more than a relatively small number n39 of copies or phonorecords were published without the required copyright notice, the work will have been injected into the public domain, unless registration had occurred prior to such publication, or within five years thereafter. n40

[B] Registration as a Condition to an Infringement Action

An elaborate scheme applies to registration as a prerequisite to suit for copyright infringement. More than just about any other area of copyright law, this arena has been completely revamped over time. Accordingly, the discussion below commences with current law and then concludes with an historical retrospective--which is necessary for a critique of the current regime. Along the way, it confronts other pertinent issues, including whether registration ranks as a jurisdictional requirement.

[1] The General Rule

[a] Requirement of Registration. The Copyright Act provides that "no civil n41 action for infringement of the copyright in any United States work shall be instituted until registration of the copyright claim has been made" with the Copyright Office. n42 Thus, subject to the exceptions to be canvassed below, n43 registration is a condition precedent for an infringement case to move forward in federal court. n44

The Act's reference to an "action for copyright infringement" extends to all such actions, including counterclaims, n45 even if the only relief sought is an injunction. n46 (The comparable language of the 1909 Act n47 was construed to include an application for destruction of imported works as well.) n48 Once registration takes place, a subsequent infringement action may address infringing acts that occurred either after or before that registration, provided that the Page 4 2 Nimmer on Copyright § 7.16

filing of the infringement action occurs within the time-frame set forth in the statute of limitations. n49

[b] Exceptions

[i] In General. The registration requirement is inapplicable under various circumstances. First, the statute exempts violation of artists' rights n50 from registration as a condition for instituting suit. n51 Second, because a suit under the Digital Millennium Copyright Act is not an "action for copyright infringement," n52 it would seem that there is no registration pre-requisite to bringing a claim thereunder. n53 Third, although registration was unconditionally mandatory under the 1909 Act, n54 the current Act contains an explicit exemption allowing suit to go forward even when the Copyright Office deliberately refuses to register a given work (for instance, because it views the subject matter as lying outside protection of the statute). n55 That particular feature implicates a welter of additional considerations, and so is accorded plenary discussion below. n56 Fourth, when the cause of action is not for infringement, but rather for a declaration of ownership, it has been held that registration is not required for suit to proceed. n56.1

In addition, the statute incorporates other exceptions. Inasmuch as some can become quite elaborate, they are accorded separate sub-sections below.

[ii ] Limitation to United States Works. The requirement to apply for registration is limited to "the copyright in any United States work." n57 Accordingly, the claimant of a copyright in any other work may file suit in a United States district court without first trying to register the work in the Copyright Office.

To give content to this distinction, we must define "United States work." In brief, it exempts foreigners from compliance with U.S. registration provisions. n58 The Digital Millennium Copyright Act n59 amended U.S. copyright law to define the term depending on publication status. For published works, it refers to those first published in the United States n60 or "simultaneously in the United States and a foreign nation that is not a treaty party." n61 What about publication in the U.S. and a treaty party at the same time? The Act also defines as a "United States work" one that is published "simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States." n62 Consequently, publication in the U.S. and simultaneously in another country that provides a shorter term of protection renders the work outside this category, so that its registration is no longer necessary.

Additionally, it is possible for a work authored by Americans to be published in an out-of-the-way locale outside the framework of international copyright treaties. n63 As long as all the authors of the work are nationals, domiciliaries, or habitual residents of the United States, then its publication "in a foreign nation that is not a treaty party" still renders it a "United States work" as to which registration is required. n64 Moreover, in the case of an audiovisual work, the same applies as long as all its authors are "legal entities with headquarters in" the U.S. n65

Moving to the unpublished side of the ledger, the moniker of "United States work" also applies as long as "all the authors of the work are nationals, domiciliaries, or habitual residents of the United States." n66 The same applies as well to unpublished films authored by legal entities with headquarters in the United States. n67

Finally, a special rule applies to "a pictorial, graphic, or sculptural work incorporated in a building or structure." n68 As to this type of work, it is a "United States work" if that building or structure is located in the United States. n69

Though the legislative history for the Digital Millennium Copyright Act does not so comment, the scope of the foregoing concerns--published works, unpublished works, and works incorporated into buildings, with special rules for audiovisual works depending on headquarters--stems from the Berne Convention. n70 But, unlike that treaty's 30-day leeway in the matter of publication, n71 the references in this portion of U.S. law n72 to "first" and "simultaneous" publication are unadorned. Apparently, therefore, "first" means first --although, one imagines, publication on a given day in two different countries qualifies as "simultaneous," without regard to the hour of the day or any time differences Page 5 2 Nimmer on Copyright § 7.16

between the two locales. n73

As to how well the scheme created by the Digital Millennium Copyright Act functions, it is first necessary to understand the background against which that amendment operates. Accordingly, the discussion below reverts to that theme, after fully ventilating the historical progression. n74 It also tackles the vexing question of whether a work posted abroad on the Internet qualifies as simultaneously first published domestically, thereby qualifying it as a "United States work." n74.1

[iii ] Works Consisting of Sounds or Images. The statute contains one exception applicable generally to U.S. citizens and foreigners alike. n75 Section 411(c) provides that no application to register is required prior to the institution of an infringement action when the work in question consists of sounds, images, or both, n76 if and to the extent such works are first fixed simultaneously n77 with their transmission. n78 To redress infringement of such works, an action may be filed not only prior to registration of the work, but prior even to the time of its first fixation. It is only required that the copyright owner register the work within three months after its first transmission n79--and even that requirement is inapplicable n80 to foreign claimants. n81 But both U.S. and foreign copyright owners must serve "notice upon the infringer, not less than 48 hours before such fixation, identifying the work and the specific time and source of its first transmission, and declaring an intention to secure copyright in the work." n82

This strange provision contemplates an infringement action not only before registration, but even before copyright is obtained (by fixation) and before the act of infringement has occurred. How is it possible to serve notice upon "the infringer" before any infringement has taken place? Even if reference is intended to a potential infringer, it would be generally (although not always) n83 impossible to identify that person for the purpose of serving a notice upon him prior to his infringing act. The legislative history for the 1976 Act reveals only that this provision "is intended to deal with the special situation presented by works that are being transmitted 'live' at the same time they are being fixed in tangible form for the first time." n84

More details are provided in a 1997 technical amendment. n85 The purpose of that enactment was to shorten to 48 hours the lead time required for service of notice in advance of fixation, from the ten days originally specified in the Copyright Act at its passage. n86 In that context, the legislative history explains, "This provision has proven problematic when applied to a number of sporting events, especially elimination play-offs. In many instances the teams and the times of the games are not known 10 days in advance. Therefore, this notice provision is amended to provide for notice of not less than 48 hours." n87

The question arises whether Section 411(c) n88 is mandatory or merely permissive. That is, in the case of a work that is fixed simultaneously with its transmission, if the copyright owner elects not to bring an infringement action until after the work has been fixed and registered, is he nevertheless required to have served the above-described notice upon the defendant within the specified number of days prior to fixation as a condition to bringing the action? Read literally, Section 411(c) would seem to require such advance notice, regardless of whether the infringement action is brought "before or after such fixation" or before or after registration. It seems clear, however, that such a literal reading was not intended. Section 411(c) exists so that "where the infringer has been given advance notice, an injunction could be obtained to prevent the unauthorized use of the material included in the 'live' transmission." n89 Such an injunction, obtained prior to the transmission and therefore prior to the fixation of the work, necessarily envisages an action prior to registration, because registration is not possible without the deposit of copies, n90 and copies cannot exist prior to fixation. n91 In these unusual circumstances, without prior registration, it was thought that an injunction might be obtained only if the defendant has been given advance notice not to engage in the practice that is the subject of the injunction. But, to the extent that plaintiff does not seek an injunction in advance, and instead waits until after the transmission-fixation, then registers the copyright, and only thereafter brings an infringement action, it would seem that he may proceed under the general features of Section 411(a). n92 In those circumstances, no purpose is served by requiring compliance with the difficult advance notice provisions of Section 411(c) n92.1--regardless whether the infringing acts occur at the moment of transmission-fixation or at a later time. n93 Page 6 2 Nimmer on Copyright § 7.16

[iv ] Pre-Registration of Impending Releases. When Congress passed the ART Act in 2005, n94 it added criminal penalties to the Copyright Act for infringing soon-to-be-released works. n95 To effectuate that goal, it defined under the Act what qualified as a "work being prepared for commercial distribution." n96 That definition serves an additional function in the context of registration, allowing impending releases n97 to be pre-registered sufficiently both to allow suit to proceed and, as described below, to afford full remedies. n98

In terms of satisfying the prerequisite for allowing suit to proceed, the ART Act amends antecedent copyright law to provide that "no action for infringement n99 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." n100 How does one satisfy the condition of pre-registration? The ART Act creates a mechanism for the Register of Copyrights to "issue regulations to establish procedures for pre-registration of a work that is being prepared for commercial distribution and has not been published." n101 As to qualifying works, n102 the process of pre-registration must later be perfected through actual registration, which is accomplished by filing the requisite application (together with the applicable fee and deposit) no later than three months "after the first publication of a work" that has been validly pre-registered. n103 Presumably, the effect of failure to effectuate registration within three months after publication of the pre-registered work is to render that pre-registration a nullity. Conceptually, therefore, a pre-registration immediately becomes a legally efficacious instrument, but subject to the condition subsequent that the work to which it relates must be fully registered within three months of that work's first publication, in order to remain valid thereafter.

If an infringement action proceeds based on pre-registration, it is subject to dismissal unless the Copyright Office receives all of those ingredients for valid registration by the earlier of one month after the copyright owner has learned of the infringement n104 or three months after the first publication of the work. n105 This entire procedure is only applicable, however, "in a case in which the infringement commenced no later than 2 months after the first publication of the work." n106 As to infringements commencing over two months after the work's first publication, by contrast, although this provision is mute, n107 it would seem that the pre-registration will entirely cease to exert operative effect, n108 for the reasons explored above, within a few weeks, at which point the regular registration process becomes operative. n109

[2] Ranking. The next question arises how to rank the registration requirement. Resolution of that issue emerged only at the end of the first decade of the twenty-first century.

[a] Tacit Assumption of "Jurisdictional." For many decades, courts referred to the registration requirement before suit may be instituted as "jurisdictional." n110 But that usage is suspect, inasmuch as the jurisdiction of federal courts to entertain copyright infringement suits is spelled out in a distinct provision of the United States Code. n111 Moreover, the instant requirement was enacted at a different point in time than those jurisdictional features, thus further differentiating them. n112

Notwithstanding those divergences, scores of courts enunciated the moniker that registration serves as a "jurisdictional" prerequisite. But, around the turn of the millennium, the Supreme Court brought new clarity to what the term "jurisdictional" actually means. It articulated "a critical difference between a rule governing subject-matter jurisdiction and an inflexible claim-processing rule," n113 "Clarity would be facilitated," the Court instructed in 2004, "if courts and litigants used the label 'jurisdictional' not for claim-processing rules, but only for prescriptions delineating the classes of cases (subject-matter jurisdiction) and the persons (personal jurisdiction) falling within a court's adjudicatory authority." n114 Around this time, the Supreme Court also chided previous decisions--its own included n115--for using that label too loosely. n116

The question thus arose whether the scores of previous cases qualified as actual jurisdictional holdings. Because those cases did not squarely present the issue whether registration truly delineated the classes of cases that invoked the court's adjudicatory authority, they did not illuminate its true ranking. Page 7 2 Nimmer on Copyright § 7.16

[b] Tasini Revisited . The first case to raise the issue of ranking to the fore occurred in a tangled procedural posture. n117 Freelance writers filed four class actions seeking the royalties due them under New York Times Co. v. Tasini n118 for works repurposed electronically without their permission. n119 Following three years of "often heated" negotiations, all parties (save a few holdouts) agreed on a settlement formula. n120 The problem arose in that a large percentage of the freelancers' works had never been registered in the records of the U.S. Copyright Office--and those writers would stand to recover nothing to the extent that the costs of all claims exceeded $18 million. n121

The Second Circuit therefore had to determine whether the Copyright Act's registration requirement was jurisdictional and, if so, whether each claim within the certified class had to satisfy that requirement. The latter question concerns the rules applicable to class action litigation, and hence lies beyond the scope of this treatise. n122 It is the former question that joins the issue with which this subsection opened: Properly characterized, does the mandate that suit be filed only after registration constitute "a rule governing subject-matter jurisdiction" or only "an inflexible claim-processing rule"? n123

Turning to the freelancers' copyright class action, Judge Walker indicated that, "because Congress passed § 411(a) to facilitate the enforcement of copyrights, I conclude that compliance with § 411(a) is a mandatory prerequisite to the accrual of a cause of action for damages, but not a prerequisite to the possession of constitutional standing." n124 In support of that viewpoint, he noted that the statute itself does not speak in jurisdictional terms. n125 It also allows suit to proceed regardless of whether the Copyright Office ultimately accepts or rejects the claimant's request for issuance of a certificate, n126 meaning that "the registration requirement appears simply to be a procedural or administrative prerequisite to ensure that the 'deposit, application, and fee ... have been delivered to the Copyright Office in proper form.' " n127 Further, the statutory scheme is "riddled with jurisdictionally recognized exceptions," n128 a status more consonant with claims-processing than subject matter jurisdiction. For all these reasons, he considered the requirement of registration to be an enforcement mechanism, not a rights-creating statute, and hence to fall on the claims-processing side of the line. n129

Those considerations seem eminently sensible. Yet Judge Walker wrote in dissent. n130 The majority n131 rejected in lengthy footnotes Judge Walker's constructions. n132 But in terms of affirmatively slotting copyright's registration requirement into the 2004 dichotomy between subject-matter jurisdiction and an inflexible claim-processing rule, its opinion is sparse. Indeed, its rationale seems to boil down to language from pre-2004 Second Circuit cases, labeling registration "jurisdictional." n133 That reasoning cannot stand, inasmuch as the Supreme Court--when formulating its new approach in 2004--chided itself for improper invocation of that term in the past. n134 All the less convincing, therefore, is language in old cases that happens to use the label "jurisdictional" when not addressing the distinction between that status, strictly speaking, and claims-processing rules that could exert the same impact under given circumstances. n135 Indeed, as the Second Circuit previously recognized in a non-copyright case, the high court, in its 2004 ruling, "admonished lower courts to more carefully distinguish between jurisdictional rules and mandatory claims-processing rules." n136 Following 2004, therefore, the focus must be on substance rather than label. n137 The majority essentially ignores that substance. n138

[c] Registration Is A Claims Processing Rule, Not Jurisdictional. To bring further clarity to its confusing jurisprudence about the proper bounds of jurisdiction, the Supreme Court granted certiorari to review that Second Circuit ruling. In Reed Elsevier, Inc. v. Muchnick , n139 it unanimously reversed, n140 thereby vindicating Judge Walker's Second Circuit dissent.

The Court initially observed that the pertinent provision of the Copyright Act fails the test of "clearly stating" that registration qualifies as jurisdictional. n141 Most significantly, Justice Thomas' opinion pointed out that the registration requirement is riddled with holes, n142 noting that it "would be at least unusual to ascribe jurisdictional significance to a condition subject to these sorts of exceptions." n143 Based on its lack of a jurisdictional label, its location in a provision afield from those actually according jurisdiction over copyright causes of action, n144 and its numerous exceptions, "Section 411(a) thus imposes a type of precondition to suit that supports nonjurisdictional treatment under Page 8 2 Nimmer on Copyright § 7.16

our precedents," the Court held. n145 Although over 200 cases had previously labeled registration as "jurisdictional," the concurrence derided the vast majority as " 'drive-by jurisdictional rulings' that should be accorded 'no precedential effect.' " n146

It remains to inquire as to the significance of that ranking--if registration is a precondition to suit, what does it matter that it lacks the "jurisdictional" label? In many cases, the distinction will lack any significance. After all, whether denominated a requirement for subject-matter jurisdiction or a rule required to process the claim, plaintiff must comply or face dismissal. The major difference, presumably, is that the latter requirement falls away if not challenged, whereas the former can never be waived--lack of subject-matter jurisdiction can even be brought up sua sponte in the court of appeals, for example. n147 That difference ordained dismissal of the freelancers' class action by the Second Circuit panel; having construed registration as a jurisdictional requirement, the appellate court dismissed the settlement reached in a case lacking jurisdiction (to the extent that it included unregistered plaintiffs as part of the settling class). Accordingly, no matter how fervently the parties wanted the case to proceed, the court felt itself without power to adjudicate it, so the parties' agreement fell apart, with no way to resuscitate it. n148

As Judge Walker's Second Circuit dissent observed, the result was to render non-registered copyrights worthless. n149 But the Supreme Court's reversal revived that settlement. One could hope, therefore, that it had prevented the nominally prevailing freelancers' rights that were recognized in New York Times Co. v. Tasini from unceremoniously ending with a whimper. n150

Unfortunately, however, later developments largely dashed even that modest hope. On remand, the same Second Circuit panel reconsidered the district court's settlement. Again, the panel rejected it, this time with Judge Walker writing the majority opinion. n150.1 Dealing with issues of class action litigation, he determined that separate counsel should have represented the interests of the class of unregistered plaintiffs, on the basis of conflicts between their interests and those of the other plaintiffs. n150.2 The appellate court thereupon vacated the decision below once again. This time, a different dissenting judge remonstrated that, by breaking the litigation "into numerous and unnecessary subclasses," the result would be to "stall mediation proceedings and lead to protracted litigation." n150.3

In any event, it is hard to imagine that the direct results of Reed Elsevier v. Muchnick will reverberate widely. For, regardless of whether the ranking of registration is jurisdictional or mandatory claims processing, defendants are likely to raise the absence of registration as a potent defense in all cases except the type of class action settlement exemplified by this very case. What is clear is that, when defendants do not object and the matter proceeds through trial, it is no longer timely on appeal to raise the absence of registration (as it no longer may be viewed as a jurisdictional deficit). If the matter is still pending before the district court but the defendant has not raised it, it remains unsettled n151 whether district courts should raise the issue on their own. n152 But a judge's timely suggestion to defendant that it might wish to raise the absence of registration as an objection should moot that aspect. Again, apart from settlement of a class action, it is hard to foresee direct application of this ruling. n153

Nonetheless, its indirect consequences may prove more sweeping. n154 To appreciate these aspects, it is first necessary to delve into another aspect of registration as a condition for suit to go forward. n154.1 Before getting there, one might add that the distinction foreclosed some very wrong-headed claims by a losing plaintiff, n154.2 who had filed pro se claims alleging infringement of his sound recording--and kept the case active for four years after learning not only that he had neglected to register it but that it was initially recorded before 1972, n154.3 making it ineligible for federal copyright protection in the first place. n154.4 On the eve of losing summary judgment, plaintiff sought to amend his complaint to one arising under state law; n154.5 the district court denied that ploy, given the prejudice it would cause defendant by reopening discovery under new legal theories. n154.6 After plaintiff lost his federal case, he promptly filed the same cause of action in state court, claiming that there could be no res judicata from the first case n154.7 inasmuch as the federal court lacked initial subject matter jurisdiction over his claim in any event. n154.8 He failed in that endeavor, on the strength of Reed Elsevier 's holding that any initial defect was non-jurisdictional in nature. n154.9 Page 9 2 Nimmer on Copyright § 7.16

[3] Interface Between Timing of Registration and Filing of Suit

[a] Requirement to Apply for Certificate, Not for Its Issuance . Sometimes, the copyright owner registers the subject work years before infringement commences. Under those circumstances, filing suit later based on the registration certificate is straightforward. On other occasions, by contrast, infringement occurs as to an unregistered work. The copyright owner may then register the work and immediately seek judicial redress. At that stage, the sequence becomes relevant in which the following events occur: plaintiff seeks to register; the Copyright Office issues the certificate; and the lawsuit commences.

The statute provides that "[t]he effective date of a copyright registration is the day on which an application, deposit, and fee, n155 which are later determined by the Register of Copyrights or by a court of competent jurisdiction to be acceptable for registration, have all been received n155.1 in the Copyright Office." n156 The legislative history explains that "[w]here the three necessary elements [of application, deposit and fee] are received at different times, the date of receipt of the last of them is controlling ... ." n157

How does that provision interact with the claims-processing prerequisite of registration for suit to proceed? n158 Despite the seemingly mandatory nature of the statutory language just quoted--"no civil action for infringement of the copyright ... shall be instituted until registration of the copyright claim has been made" n159--the current Act n160 itself contains an important exception:

[Once] the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, n161 the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. n162

By virtue of that language, a party who seeks to register may proceed to litigate the claim, regardless whether the Copyright Office ultimately issues the certificate or denies it. n163 The only requirement is, assuming denial of registration, to serve the resulting complaint on the general counsel of the Copyright Office by registered or certified mail. n164 Accordingly, it makes sense under the 1976 Act to refer to application for registration as a condition to filing an infringement action, n165 whereas issuance of a registration certificate n166 is a condition to statutory damages, prima facie presumption, constructive notice, and the other consequences discussed below. n167

To the contrary, however, one court concluded that an application alone suffices for a prima facie presumption to arise. n168 It is submitted that its summary determination was incorrect. For, in contrast to the registration requirement to initiate suit, which the statutory provision quoted above confers even if the Copyright Office ultimately rejects the copyright application, the prima facie presumption of validity cannot arise from a rejected application, but only from a "certificate of a registration." n169 Such a certificate results only when the Copyright Office actually accepts an application, not when it rejects one. n170 That situation stands in stark contrast to the Act's allowing the claimant whose application has been rejected "to institute a civil action for infringement." n171 Therefore, better than this court's expedient of according a presumption that might later evaporate is to accord a presumption only at such time as the certificate actually issues.

[b] Suit Filed Before Office Action. What happens if suit is filed during the interval after the copyright owner has duly submitted all the necessary ingredients to the Copyright Office, but before that Office has issued the certificate or denied its issuance? A welter of litigation has arisen at this juncture. n171.1

[i] Registration Approach. Without elaborating on the animating rationale, many decisions simply dismiss actions in that posture. n172 For instance, one case n173 reaches that result by quoting a previous case's conclusion, "District courts are without subject matter jurisdiction to hear claims for federal copyright infringement unless a party asserts in his pleadings that he has received an actual certificate of registration or its denial from the Copyright Office." n174 Nothing in those decisions offers any rationale why the postulated standard makes sense--or why the Act requires it. Page 10 2 Nimmer on Copyright § 7.16

Moreover, their reference to "subject matter jurisdiction" no longer pertains, after the Supreme Court's rejection of such a "drive by" formulation. n175

Nonetheless, not all such holdings are bereft of logical grounding. One case reaches its conclusion through analyzing the statutory scheme:

Apparently Congress concluded when it enacted section 411(a) that vetting by the Copyright Office of claims that materials are entitled to copyright protection was a necessary prerequisite to federal courts exercising jurisdiction over such claims. Presumably Congress concluded that the expert wisdom of the Copyright Office justified this result. Therefore, the Court is in agreement with those courts that take the view that a certificate of registration is a jurisdictional prerequisite n176 to filing an infringement suit in this Court, the only exception being where the Copyright Office has refused to issue the certificate of registration. n177

That formulation has the virtue of providing a coherent explanation accounting for the divergent elements of Section 411. It is a sensible statement of what can be termed the "registration approach." n178

Unfortunately, the registration approach tends towards hyper-technical application, in which the actual paper certificate is required as a condition to suit. n179 In one Tenth Circuit case, the district court initially applied just such hyper-technical reasoning. In particular, plaintiff filed suit on March 8, 2004. It tendered to the district court a letter from the Copyright Office, dated March 10, 2004, indicating that the Register had approved the registration effective as of 2003, and that the certificate would duly issue. n180 The district court rejected the letter as admissible evidence; the Court of Appeals affirmed, n181 but added in dictum that "registration is separate from the issuance of a registration certificate and that a court's jurisdiction does not turn on the existence of a paper certificate, but rather on the fact of registration, however it is demonstrated." n182 The court coyly expressed no opinion, as to the two-day gap at issue in this case, "whether the jurisdictional defect could be cured after commencement of the infringement action." n183 Another court confronting a two-day gap--in this instance between filing of suit and the Copyright Office's rejection of the claim--dismissed the case outright. n184 In contrast, it has been held that a plaintiff not in possession of a certificate at the time the complaint was filed can later show that it timely registered the work before suit was instituted. n185 Another decision held that an Internet printout from the Copyright Office can substitute for an actual registration certificate. n185.1

[ii ] Application Approach. On the opposite face of the coin, many other cases allow suits in that same posture to proceed. n186 This construction is called the "application approach." Although the question is certainly not free from doubt, it is submitted that this broad approach to registration better comports with the statutory structure. n187 For, in contrast to the prima facie presumption of validity, which the statute limits to " certificate of a registration," n188 the claims processing provision requires only that " registration of the copyright claim has been made in accordance with this title ." n189 Given that "this title" elsewhere specifies that the "effective date of a copyright registration is the day on which an application, deposit, and fee, which are later determined by the Register of Copyrights or by a court of competent jurisdiction to be acceptable for registration, have all been received in the Copyright Office," n190 there would seem to be no bar on the "court of competent jurisdiction" before which the copyright infringement action is pending from proceeding to adjudicate the adequacy of the submission to the Copyright Office. n191

Given that the claimant who has submitted an application that has yet to be acted upon at that juncture has done all that she can do, and will ultimately be allowed to proceed regardless of how the Copyright Office treats her application, n192 it makes little sense to create a period of "legal limbo" in which suit is barred. n193 In the words of one court, n194 the application approach "best effectuate[s] the interests of justice and promote[s] judicial economy." n195 These considerations become especially apropos when one reflects that the Copyright Office typically registers about 99 percent of the claims submitted to it. n196 Indeed, some courts that follow the registration approach concede that it yields "an inefficient and peculiar result." n197 Page 11 2 Nimmer on Copyright § 7.16

[iii ] Intermediate Resolution. The conflict between the registration and application approaches has been long-standing. n198 The Fifth Circuit adopted the latter early on. n199 Shortly before the Supreme Court's decision in Reed Elsevier v. Muchnick , n199.1 the Tenth Circuit went in the opposite direction. n200 In some circuits, the issue remains open. n200.1

The discussion below will re-evaluate the issue in the wake of that Supreme Court decision. n201 But, before doing so, it is worth considering previous decisions that managed to find a compromise between the two extremes.

Some courts allow a plaintiff, subsequent to its initial filing of a complaint, to register and deposit the work and thereafter appropriately amend its complaint, n202 without the necessity of filing a new action. n203 The Fifth Circuit has even allowed plaintiff's case to go forward without a formal amendment to the complaint. n204 These courts follow an ameliorative approach even though, strictly speaking, if the court had dismissed the complaint in its entirety, then the proper course would seem to be to file a new complaint, rather than an amended complaint. n205 Nonetheless, absent prejudice to the defendant, n206 the Eleventh Circuit has held that particular technical distinction to be without substance. n207

One court following the registration approach denies the invidious effects of the legal limbo invoked above, n208 maintaining that there is no prejudice to applicants by being unable to file suit while the Copyright Office processes the application, inasmuch as the certificate will ultimately be backdated. n209 It posits that damages for wrongful use of a registered copyright will alleviate any concern. n210 But, given that belated registration will not allow recovery of statutory damages for infringement that commenced before its effective date, n211 and given further a three-year statute of limitations for recovery of all damages caused by copyright infringement, n212 the registration approach may indeed occasion complete inability n213 to recover damages n214--especially in its hyper-technical instantiation. n215 One way to avoid that result, however, is to follow the example of another court that avoided the need to take sides, holding that a newly-filed complaint based on an issued certificate would be deemed to relate back to the original filing date of the complaint based on an application, for purposes of computing the statute of limitations. n216

[iv ] More Questions of Timing. Many fact patterns have been litigated regarding registration sequence. It has been held that a registration, invalid at the time it was claimed because the claimant was not at that time the "owner," n217 could nonetheless satisfy the registration requirement if that party later became the owner. n218 This line of cases reasons by analogy to the unexceptional proposition that the Copyright Act's "statute of frauds" n219 can be satisfied by an oral assignment that is later confirmed by a written memorandum of the transfer. n220 But the policy rationale of that statute of frauds would appear wholly distinct from the requirement of registration, which takes effect only on " the day on which an application, deposit, and fee , which are later determined by the Register of Copyrights or by a court of competent jurisdiction to be acceptable for registration , have all been received in the Copyright Office." n221 If a claimant files on day 1, when it is ineligible to register because it only has an oral grant, and then on a later day receives a written ratification of that earlier grant, the result is that its registration was not acceptable for registration on day 1, meaning that it should be retroactively disallowed.

Of course, that same claimant can still validly register the work on the later day and proceed to judgment based on the newly issued certificate. n222 But, insofar as the foregoing line of cases validates the original certificate, it would seem to demand a more thorough analysis before being accepted. n223 After all, it has long been copyright doctrine that a renewal certificate is invalid if subscribed by a party who, on the date of its filing, lacked standing to renew the work in question, even if that same party later obtained the requisite status. n224 That juxtaposition highlights the need for careful investigation before reaching a contrary rule with respect to the validity of a registration certificate. n225

Further questions arise in terms of timing. It has been held that the date of registration is measured from the time of the original registration, even if that registration contained an incorrect classification and therefore required a revised registration to be filed after commencement of the action. n226 One court confronted a situation in which plaintiff had a certificate at the time he filed suit, but it was later canceled for non-payment when the bank dishonored his check. n227 Page 12 2 Nimmer on Copyright § 7.16

The court validated default judgment against defendants, who "failed to cite any case law that stands for the proposition that a District Court is divested of subject matter jurisdiction during the prosecution of a lawsuit, where it had subject matter jurisdiction at the commencement of the lawsuit, but where the copyright registration has lapsed during the prosecution of that suit." n228 Notwithstanding that holding, first principles validate the opposite ruling, as defendants urged. n229 For, as noted above, the Copyright Act commands that "[t]he effective date of a copyright registration is the day on which an application, deposit, and fee , which are later determined by the Register of Copyrights or by a court of competent jurisdiction to be acceptable for registration, have all been received in the Copyright Office." n230 Notwithstanding issuance of a certificate by the Copyright Office based on a proffered check that looked valid on its face, when a court of competent jurisdiction later determines that the essential ingredient of the requisite fee was actually missing as of that date insofar as the check did not have sufficient funds to back it, then that court should determine that the materials were not, in fact, acceptable for registration as of the date of tender and, on that basis, determine that the mandatory claims-processing requisites have not been satisfied. n231

We have seen above how some courts allow an amended complaint based on an issued certificate to relate back to the original complaint filed based on a pending application, for purposes of the statute of limitations. n232 Those cases dealt with but a single registration, at its various stages from application to issuance of a certificate. By contrast, another case n233 holds that an amended complaint based on a new registration (for an architectural work) does not relate back, for statute of limitations purposes, to the original complaint filed based on a separate registration (covering blueprints for the same building). n234 But much of the court's logic was mired in the outmoded view of registration as jurisdictional. n235 A later decision allowed an architectural infringement claim to relate back to the original date of filing. n235.1

[v] Reassessment of Disparate Approaches in Light of Clarification of Ranking. Prior to 2010, about 200 decisions had labeled the registration requirement jurisdictional, n236 but the Supreme Court soundly rejected that construction in Reed Elsevier v. Muchnick . The Court's determination does not directly map onto the instant dispute between the registration and application approaches. Nonetheless, it can be indicative in various circumstances.

Consider one of the cases that Reed Elsevier v. Muchnick explicitly rejected. n237 In that instance, plaintiff applied to register its drawings with the Copyright Office on November 6, 2003; filed a complaint on November 20, 2003; received defendant's motion to dismiss for lack of an issued certificate on March 8, 2004; responded by proffering to the court a letter from the Copyright Office dated March 10, 2004, "indicating that all necessary materials had been received, the copyrights had been approved for registration on January 22, 2004, and the effective registration date was November 19, 2003." n238 The district court rejected that letter as inadmissible evidence and held that it lacked jurisdiction to hear plaintiff's action for copyright infringement. n239 The Tenth Circuit affirmed on the basis that there was no jurisdiction over the case at the moment that the complaint was filed, n240 and based further on plaintiff's failure to appeal the evidentiary ruling. n241 It expressed "no opinion as to whether the jurisdictional defect could be cured after commencement of the infringement action." n242 But other cases have denied the permissibility of such a cure. n243

To the extent that registration ranked as jurisdictional, that sort of strictness could be justified. But, given the later unambiguous holding that registration is instead a claims-processing requirement, such reasoning collapses. As of the time that defendant moved to dismiss, all the requisite processing had been accomplished. n244 Accordingly, the Tenth Circuit's strict application of the registration approach is no longer tenable.

To be sure, it does not follow that all other applications of the registration approach must likewise ineluctably fail. It could be that a court, applying the proper task of ranking registration as non-jurisdictional, might still determine that it does not wish to proceed with the case until such time as the Copyright Office finishes processing the claim and either issues or denies a registration certificate. But that analysis would need to unfold in a different environment from the one under which all the various cases operated before Reed Elsevier v. Muchnick . Page 13 2 Nimmer on Copyright § 7.16

Another case that cannot survive the Supreme Court's ruling is Stuart Weitzman, LLC v. Microcomputer Resources, Inc. n245 Weitzman hired MCR to create software for its fashion business; after a dispute, Weitzman filed suit for a declaration that it owned the copy of the software that it had purchased from MCR and had the right to modify that software for its own business needs. n246 The Eleventh Circuit construed the complaint as suggesting that Weitzman anticipated that MCR would sue it for copyright infringement. n247 It reasoned, based on the fact that MCR had never applied to register the software at issue, that "the district court would lack subject matter jurisdiction if MCR brought an infringement suit against Weitzman" and, given that the Declaratory Relief Act does not independently furnish jurisdiction, the case had to be dismissed. n248 Recognizing that its ruling would place Weitzman in "an awkward position" that was "unfortunate," n249 it still felt constrained to hew to the consensus that registration is jurisdictional. n250 With the explosion of that consensus, the basis for the ruling now evaporates. n251 Moreover, even without Reed Elsevier v. Muchnick's clarification of ranking, the Eleventh Circuit's reasoning still seems plainly wrong, n252 given that the registration requirement set forth in the statute explicitly applies only to "an action for infringement of the copyright," not to a declaration of rights under the Copyright Act. n253 In line with that sentiment, another decision appropriately allows declaratory relief to proceed in this posture. n254

In Cosmetic Ideas, Inc. v. IAC/Interactivecorp , n254.1 an appellate court revisited this issue n254.2 in the wake of Reed Elsevier v. Muchnick . n254.3 The Ninth Circuit first carefully sketched the two possible interpretations that rendered the statutory scheme ambiguous. n254.4 Given that ambiguity, it reached beyond the plain language of the statute to inquire which approach better carries out the statutory purpose. n254.5 Quoting extensively from the analysis set forth above, n254.6 the opinion noted that the application approach "avoids unnecessary delay in copyright infringement litigation, which could permit an infringing party to continue to profit from its wrongful acts"; n254.7 it avoids injecting the copyright owner into an unnecessary "legal limbo"; n254.8 it avoids delay without impairing the central goal of securing copyright registration for affected works; n254.9 and it avoids "the type of needless formality Congress generally worked to eliminate in the 1976 Act." n254.10 This opinion's holding that "receipt by the Copyright Office of a complete application satisfies the registration requirement of § 411(a)" n254.11 sets the standard for the post- Reed Elsevier era. n254.12

In some sense, the dispute between the registration and application approaches is a tempest in a teapot. For even when the registration approach was followed, plaintiffs could always avoid dismissal of their case by filing a new application for registration with the Copyright Office on an expedited basis. The resulting certificate (or denial) emerges from the Copyright Office within a matter of days, n255 thereby eliding the entire imbroglio (albeit only upon payment of a stiff charge for such special handling). Nonetheless, that solution cannot satisfy everyone. For many claimants prefer not to file suit based on such a belated certificate, n256 given that it could entail loss of vital remedies, thereby rendering their suit pointless. n257 Other claimants still manage to lose by pursuing their litigation in strange postures, rather than unambiguously registering the work in question. n257.1

The temperature can be turned down even further, such that the teapot will essentially never boil over. To do so requires sensitivity to the various policy concerns implicated by this domain. The next subsection offers an approach that draws from the best elements of both the registration and application approaches, in a manner consistent with the ruling of Reed Elsevier v. Muchnick ranking registration as a claims-processing requirement.

[vi ] Harmonized Solution. To reach the optimal resolution of all cases presenting these timing issues, one must first consider that a wide spectrum of cases may arise. Consider the following poles:

Case A. Plaintiff files suit, based on infringement of her 20-page short story, 100-page screenplay, or 300-page novel. In these instances, there may be no reasonable dispute whether plaintiff owns a copyright in her work. Instead, defendant will interpose a defense of lack of access, n258 or of substantial similarity, n259 or laches, n260 or otherwise. n261 Page 14 2 Nimmer on Copyright § 7.16

Case B. Plaintiff files suit, based on infringement of his graphical work consisting of a single geometric shape, or his sphere composed of elastomeric filaments radiating from a core. In these instances, the dispute as to whether plaintiff's work is copyrightable lies at the core. n262

In both instances, let us imagine that plaintiff tenders the requisite fee, deposit, and application to the Copyright Office on March 1, files suit on April 1, and the first court hearing in the matter is scheduled for September 1. Now, let us consider two variations of Office action, depending on the applicable backlog--the certificate issues on August 1 or is long delayed. How are those cases to unfold?

Under a strict application of the registration approach, the issuance of the certificate even on August 1 cannot validate the complaint, which lacked jurisdiction upon filing. n263 But, as described above, Reed Elsevier v. Muchnick invalidates that punitive construction. To this extent, the registration approach is no longer tenable.

The question remains whether, given continuing delay over issuance of the certificate, a court could dismiss the case as of September 1. As to Case A , such a resolution makes no sense. To the extent defendant interposes the defense of non-registration, it is not because a live issue exists as to the work's registrability. n264 Instead, the motion to dismiss is simply a litigation "gotcha!" n265 Though the ranking of registration as jurisdictional validates such stalling tactics, there is no residual excuse for them after the ranking has been clarified to lack jurisdictional force. n265.1

By contrast, Case B occupies a wholly different posture. Here, the question as to copyrightabilty forms the core of the dispute between the parties. n266 On that question, input from the Copyright Office--the governmental agency that possesses special expertise in determining the bounds of copyright protection--could be of great value to the court (particularly to a judge lacking previous exposure to higher copyright doctrine). n267

In sum, when Case A -type matters arise, courts should not be waylaid into inquiries regarding registrability. It is non-controversial that courts which previously followed the application approach should continue to adjudicate those cases. The post- Muchnick wisdom is that courts which previously followed the registration approach should no longer follow that course of action, given the fall of any jurisdictional barrier to their consideration of the case. Inasmuch as the only residual matter is claims-processing, and given no actual dispute whether the Copyright Office will process the claim in due course, no impediment exists to move the case forward. n268

Correlatively, when Case B -type matters arise, then courts should not immediately proceed to judgment, but should instead stay proceedings to allow the Copyright Office to weigh in with its special expertise regarding copyrightability of plaintiff's work. In this instance, it is non-controversial that courts which previously followed the registration approach would wish to postpone adjudication. The post- Muchnick wisdom here is that courts which previously followed the application approach should no longer proceed willy-nilly to final judgment, given that nothing about the application approach frowns on receiving expert guidance from the Copyright Office in instances when it would prove helpful. Instead, proceedings can be stayed in those courts as well. How long the stay lasts is up to plaintiff; as previously remarked, a determined plaintiff can receive expedited action from the Copyright Office in a matter of days, if willing to pay the heightened fees for special handling. n269

The question remains how courts can conveniently pigeon-hole a given piece of litigation into its proper status as Case A or Case B . In practice, the matter can be easily placed into defendant's lap. A defendant who claims that the matter in suit is not subject to copyright protection--not that plaintiff has failed to obtain a registration certificate, but that the work itself falls outside of copyright protection, and therefore should never be subject to registration--has, by that action, advanced the claim that the matter qualifies in the form of Case B . Courts may take defendants at their word. But, for that position to arise in good faith, defendant must be prepared to follow through with it. If, after the certificate eventually issues, defendant drops its claim regarding protectibilty and maintains solely that the two works lack substantial similarity or that its usage qualifies as fair use, then the matter actually is of the form of Case A ; n270 under Page 15 2 Nimmer on Copyright § 7.16

those circumstances, defendant's original defense should be scrutinized in light of Rule 11, with an eye towards having defendant pay for the litigation costs and delay ancillary to its stalling tactic. n271

The posture advocated above fits in well with the ruling of Paul Morelli Design, Inc. v. Tiffany & Co. n272 that a determination denying registration is entitled to "some deference." In that case, the Copyright Office "denied the applications on the ground that the jewelry did not contain a sufficient amount of original artistic or sculptural authorship to support copyright registration." n273 The Register appeared in court to defend her decision. n274 The court concluded that neither the extreme of de novo review nor of absolute deference could square with the statutory scheme of allowing suit to proceed in the absence of registration and allowing the Register to participate in the case. It accordingly concluded that "some deference" was appropriate. n275 In order to make that deference a reality, there must be a resolution from the Copyright Office to which to defer.

Other resolutions are also possible. Given the pace of litigation, it may not be necessary to stay proceedings completely; instead, the court, in its discretion, may determine how best to proceed. Because lawsuits typically drag over many months, the Copyright Office will normally have granted or refused registration during the suit's pendency. n276 Therefore, as in Morelli v. Tiffany , the Register typically will not be deprived of her opportunity, in due course, to appear in the litigation, even if the case proceeds in the interim before the application has been accepted or rejected. n276.1 Nonetheless, as a safeguard against cases in which compressed timing might prejudice the Register's right to appear, a prudent course, at a minimum, would require plaintiff to notify the Copyright Office about the pendency of litigation, so that the Register, if she chooses, could expedite treatment of the application and, if she denies issuance of a certificate, could appear in the litigation to defend her determination.

Still, the question becomes live if jurisdiction is recognized for a plaintiff with a pending application who seeks immediate relief, such as a temporary restraining order. n277 In that posture, the court must indeed proceed in the absence of input whether the Copyright Office considers the subject matter of the claim copyrightable. n278 It would seem, however, that plaintiff proceeds at its peril under those circumstances. In other words, at that juncture, plaintiff will not have the benefit of the prima facie presumption of validity, n279 meaning that it will face the burden of tendering sufficient evidence to convince the court that its copyright is valid. n280 One decision carved out a middle ground--allowing suit to go forward, but only for injunctive relief, during the interval after submission to the Copyright Office but before it issued the certificate. n281 That posture represents a misreading of prior cases. n282

[c] No Ability to Proceed Absent Even Application to Register. Absent issuance of a certificate and in the absence of the copyright owner even having sent the requisite application (together with deposit and fee) to the Copyright Office, there is, under all viewpoints, a defect under the statute n283 (with respect to United States works that require such registration). n283.1 As an absolute limit, if the Copyright Office has failed to receive the necessary elements to issue a registration certificate prior to the time that the court is called upon to issue final judgment, the action must be dismissed. n284 Given the lax standards involved, however, that requirement will never thwart a determined plaintiff n285--unless it is determined to avoid registration. n285.1

[4] Application to Renewed and Restored Works. With respect to works in their renewal term, n286 the question arises whether the registration prerequisite is satisfied by a certificate for the original term or a certificate for the renewal term, or two separate certificates (one for each term). As to works published prior to 1964, the issue is not presented: As a condition to the subsistence of the renewal term, both registrations were required. n287 But, by virtue of the Copyright Renewal Act of 1992, n288 different considerations govern works from 1964 through 1977: Their renewal term subsists automatically, even if neither an original nor a renewal application has ever been filed with the Copyright Office. n289 As to a work from that time period, to the extent that it had been registered during the original term of copyright, but no renewal application had ever been filed, the original application n290 suffices to satisfy the claims-processing prerequisite for filing a suit alleging infringement that occurred during the renewal term. n291

To the extent that a work first published in 1964 through 1977 had not been registered during its original copyright Page 16 2 Nimmer on Copyright § 7.16

term, once the renewal term commences it is too late to register the original term; however, renewal registration is permitted through the entire renewal term. n292 Once renewal registration is effectuated, n293 the renewal certificate standing alone is adequate to allow the case to proceed. n294

In 1994, the Uruguay Round Agreements Act created the possibility that works of qualifying foreign origin could be resurrected out of the public domain. n295 Claimants to such restored copyrights are generally n296 exempted from the necessity of registering their works as a condition to filing suit. n297 Nonetheless, they are still obligated to register their works as a condition to obtaining heightened remedies. n298

[5] Separate Registration of a Pre-existing Work Contained in a Derivative or Collective Work. When underlying and derivative works are involved, it can be significant that some are registered, whereas others are not. The situation can unfold in several postures, with varying ramifications.

[a] Significance. Given that registration can be effectuated at any time--even after infringement has occurred--the instant inquiry may at first seem academic. After all, if there is a defect in proceeding based solely on registration in a derivative work, n299 for example, n300 one can simply belatedly register the underlying work. n301

The problem is that this cure of the claims-processing defect comes at the cost of foregoing the ability to recover attorney's fees and statutory damages, n302 as there can be no recovery of those remedies to the extent that the case proceeds based on the post-infringement registration of the underlying work. n303 For that reason, plaintiffs often attempt to piggy-back on the antecedent registration. For instance, if infringement took place solely with respect to the underlying work, but only the collective work in which it later appeared has been registered, the temptation is to try to proceed based on that existing registration, and to seek heightened recovery of attorney's fees and statutory damages in the process. n304 Depending on the circumstances, that attempt can run into the roadblock of the cases discussed below. n305

[b] Registration Only of Underlying Work. What if the only registration n306 relates to an underlying work, but its copyright owner has also authorized creation of a derivative work, which latter was never registered? Can registration of the underlying work alone satisfy the claims-processing necessary to bring suit for unauthorized reproduction of the derivative work? Given that a derivative work by definition consists of matter that would be infringing if it had been derived from the pre-existing work without the copyright proprietor's consent, n307 it follows analytically that the owner of a registered underlying work, in that capacity alone, should be able to maintain such a suit. n308 So long as the infringement relates to material common to both the underlying and derivative work, the copyright owner can simply allege violation of the former.

But a different dynamic could unfold under particular circumstances. Let us imagine that the materials copied from the derivative work consist only of the newly added components. Under that circumstance, registration of the underlying work alone cannot suffice to support a complaint against copying of only those separate elements that went into creation of the derivative work. n309 To the extent that the copyright owner of a United States work n310 brings suit for infringement of the derivative work per se but has not registered that derivative work, the need remains for it to be registered belatedly, n311 an act which carries the concomitant inability to recover heightened remedies. n312

A good illustration of this principle comes from Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp. n313 Plaintiff registered its 20-inch rag doll, but not its 48-inch grown-up version. Judge Weinstein held, "Judgment for defendant is required because small dolls, like humans, grow up with substantially changed proportions." n314 In other words, because the larger doll was altered with "artistic discretion" to replicate more adult features (given that a mechanical enlargement of the smaller doll would have produced a "fat, very klutzy looking doll"), n315 even though defendant admittedly copied plaintiff's larger doll n316 its copying related only to the derivative elements, n317 meaning that plaintiff could not proceed to judgment. n318 The Second Circuit affirmed. n319 Other courts follow n320 this well-reasoned opinion. n321 Sometimes, they reach the same destination via different paths. n321.1 Page 17 2 Nimmer on Copyright § 7.16

[c] Registration Only of Derivative or Collective Work. What if, by contrast, the only registration n322 relates to a derivative or collective work? n323 If the defendant copied from that derivative or collective work the pre-existing work contained therein (as opposed to the original material newly contributed to the derivative or collective work), can suit proceed? Or is it necessary first to register separately the pre-existing work, even though the defendant copied such pre-existing work from the derivative or collective work?

On principle, plaintiffs alleging infringement of United States works n324 would seem obligated to apply for a separate registration relating to the pre-existing work, inasmuch as that copyright is the one infringed, even though the defendant copied directly from the derivative or collective work. n325 The copyright owner of a derivative or collective work does not in such capacity obtain copyright in any pre-existing work, even though it may be licensed to incorporate such material into the derivative or collective work. n326

A good example of this principle emerges from Morris v. Business Concepts, Inc. , n327 in which the Second Circuit disallowed suit for infringement of an article when the only registration related to the magazine in which it was published. n328 The court followed the general rule that registration of the collective work is inadequate to allow suit to proceed for infringement of an underlying work, n329 applying that rule strictly. n330

Now, let us alter the supposition such that the copyright owner of the derivative or collective work is not merely a licensee of the pre-existing work, but is itself also the copyright owner thereof. n331 This alteration would seem to produce the contrary result, validating the registration solely of the derivative or collective work as sufficient to permit maintenance of an infringement action n332 of the type just described. n333 At least one court n334 reached that result based on the language of the 1909 Act. n335 Although there is no comparable language in the current Act, the same rule should be followed. n336 As the Fourth Circuit puts it, n337 when the same party owns the derivative or collective work plus the underlying elements incorporated therein, its registration of the former is "sufficient to permit an infringement action on the underlying parts, whether they be new or preexisting." n338 That rule is consistent moreover with the current provision that, for the purpose of computing statutory damages, "all the parts of a compilation or derivative work constitute one work." n339

An even more straightforward application of the same principle emerges to the extent that the facts are altered further, such that a registration for a collective work consisting of multiple components deals not with pre-existing components, but with wholly original material. This situation could emerge, for example, by virtue of producing a record album that collects not old songs, but instead entirely original compositions. In that circumstance, plaintiff's registration of the entire album suffices to protect each of plaintiff's songs included therein, n340 notwithstanding that not every song title may be listed in the registration certificate. n341 One court holds that the registration of sound recordings does not cover the artwork contained on the record album cover, n342 in a questionable departure from the previous logic. n343

On the other hand, some limits have been imposed here. One court refused to entertain a case based on copying that allegedly occurred before the deposited version of the work even existed. n343.1 It held that plaintiff could not be allowed "to register and sue on a version of a software program that was created after the version that Defendants allegedly copied," n343.2 based on the need to safeguard against fraud. n343.3

[6] Historical Progression Regarding Exemption from Registration of Foreign Works. It has been noted above that several exceptions exist to the claims-processing requirement of registration prior to instituting suit, among them when the subject matter of the infringement is not a "United States work." n344 That particular provision came into the statute incident to the Digital Millennium Copyright Act. A host of different considerations applied under previous law. The discussion below sketches those developments.

[a] 1909 Act. The 1909 Act set up the scheme in which registration was a condition precedent to the filing n345 of an infringement action, n346 which is still generally followed today. n347 As under current law, that requirement applied whether the infringement predated or followed the registration. n348 Page 18 2 Nimmer on Copyright § 7.16

In certain respects, however, its scheme differed from current law. Under the 1909 Act, failure to obtain a registration certificate from the Copyright Office was fatal. n349 By contrast, the current Act n350 allows "a court of competent jurisdiction" n351 to hold that the refusal of the Copyright Office to issue such a certificate was erroneous. n352 Under the 1909 Act, the effective date of registration was not upon actual receipt by the Copyright Office, n353 but apparently (as under the current Act) instead was the date of mailing by the copyright claimant. n354

Under the 1909 Act, even if a work had originally been registered and copyrighted as an unpublished work, n355 if the work were subsequently published prior to the occurrence of an infringement, failure to deposit and register the work anew as a published work barred an action based upon such infringement. n356 The current Act alters that rule. Although it remains possible to obtain a second registration for a published work previously registered as an unpublished work, n357 that course is now permissive, not mandatory. Under the current Act, there is "no need to make a second registration for the published edition unless it contains sufficient added material to be considered a 'derivative work' or 'compilation' ... ." n358

[b] Decennial Causes of Action. The current Act was designed such that Section 411(a) "restates" n359 the law as it existed under the 1909 Act, n360 subject to the important modification previously noted that the case may proceed even if the Register refuses to register the work. n361 That situation remained applicable throughout the decennial era. n362

[c] Berne Modification. At the inauguration of the Berne era in 1989, n363 Congress modified the decennial scheme to draw a distinction between works of Berne origin, which it exempted from the registration requirements, and other works (those of U.S. origin or of foreign origin apart from the Berne Convention), which remained subject to the prerequisite of an application for registration. n364 Although this change will be seen to be minimal, it resulted from an extensive legislative debate, appreciation of which is essential to understanding the registration scheme enacted by the Berne Convention Implementation Act of 1988.

As introduced on the floors of the two chambers, the primary difference between the House and Senate bills of the BCIA concerned mandatory registration as a prerequisite to an infringement suit. On the one hand, registration is a formality that Berne forbids as a condition for copyright protection. For that reason, the Senate bill would have altered Section 411(a) of the Act to read: "Registration is not a prerequisite to the institution of a civil action for infringement of copyright." n365 On the other hand, as noted above, n366 even before amendment by the BCIA, the current Act did not treat registration as a condition to securing copyright protection, except in the narrow circumstance of curing unnoticed publication. n367 Rather, it required registration only for the purpose of various evidentiary, procedural, and remedial purposes, notably filing an infringement action. Given that the Berne Convention does not bar formalities that accord procedural advantages (such as statutory damages), n368 the House--in line with its minimalist approach to implementation of the Berne Convention n369--would have left Section 411(a) fully intact. n370

Analytically, the House approach is the sounder. n371 As noted by the House Report to the BCIA, "loss of copyright" is the standard for gauging whether a prohibited formality exists. n372 Given that failure to register does not cause loss of a United States copyright, n373 registration appears not to be a proscribed formality. This conclusion is bolstered by the fact that, even when the Copyright Office refuses to register a work, Section 411(a) allows the copyright claimant to file suit thereon nonetheless. n374 Moreover, Section 411(a) can be viewed along the lines of a court filing requirement, much like the fees that must be paid to file a complaint in a United States district court. Given that, even under the Senate bill, a Danish author who wished to sue for infringement of her copyright in Los Angeles, in 1988, for instance, had to pay $120 to the Clerk for the Central District of California for the privilege of instituting suit in that court, the question arises why the Senate bill believed it necessary to relieve that Danish author of the further small burden of spending an additional $10 n375 and sending a form to the Copyright Office in Washington, D.C. n376

Although analytically sounder, the House resolution may nonetheless be charged with hypertechnical casuistry. n377 Page 19 2 Nimmer on Copyright § 7.16

Notwithstanding that the remedy of statutory damages may depend on a formality without offending Berne, n378 it strains common sense to maintain further that all remedies, all relief, and even the ability to maintain an action may, consistent with Berne, depend on a copyright formality, given Berne's declaration that "the enjoyment and the exercise of [copyright] shall not be subject to any formality." n379 A copyright that cannot be enforced in any way exists in a kind of netherworld that presumably falls far short of "the enjoyment" that Berne envisions. n380 For that reason, the House/Senate conferees worked out new language for this provision, which represents the crucial compromise of the BCIA that was ultimately enacted into law.

Having established absolutely that "registration is not a condition of copyright protection," n381 the BCIA added an exception to the registration requirement "for actions for infringement of copyright in Berne Convention works whose country of origin n382 is not the United States." n383 Thus, the historic compromise n384 between the Senate n385 and the House, n386 reached in 1988 to pave the way for Berne accession the following year, was to create two classes of works n387 vis-a-vis registration: n388 non-U.S. Berne works and all others. As to the latter (consisting primarily of American works), n389 the old registration strictures continued; as to the former, however, the 1988 law granted n390 a dispensation n391 solely from this formality. n392 In this way, although United States citizens were somewhat disadvantaged by Congress's action, n393 at least no non-U.S. Berne claimants could contend that the United States was setting up impermissible formal roadblocks to the protection of their copyrights. n394

In terms of technical implementation, the BCIA added to the Copyright Act special definitions for "Berne Convention works" and for "country of origin" as the United States or otherwise. n395 Given that those provisions were only rarely construed in the courts, n396 and have since been replaced, n397 further elaboration is unnecessary.

[d] Evaluation. With the benefit of the foregoing historical presentation, we can now appreciate the requirement in current U.S. law n398 that domestic claimants attempt to register their works as a prerequisite for filing an infringement action. The upshot is that foreigners are exempt from that requirement imposed on U.S. claimants. n399 Imagine an unregistered work authored by a Belgian in 1970, published in Belgium with proper copyright notice, and infringed in the United States today--the claimant may file suit without ever needing to register the work. n400 The same work, if first published in Biloxi, must be tendered for registration as a condition for suit to be filed. n401

However, it must be borne in mind that the benefits to foreigners of avoiding United States registration--saving a few dollars n402 as well as some logistical headaches n403--are meager, whereas the costs associated with that course of action--notably, giving up attorney's fees, statutory damages, n404 and the prima facie presumption of copyright validity n405--are comparatively massive. n406 It may be doubted, therefore, whether many n406.1 copyright claimants will wish to wend their way through the statutory thicket to avoid registration. n407

A curious aspect of the historical progression charted above is that, along the path, Congress lost sight of the goal. As set up in both the 1909 Act and during the decennial period, registration (or at least an application to register) was a requirement that applied across the board. n408 Incident to U.S. accession to the Berne Convention, Congress relaxed that requirement solely with respect to Berne claimants, in order to avoid falling afoul of the anti-formal thrust of that treaty. n409 Later, when the Digital Millennium Copyright Act expanded the no-registration-required zone, it reversed the direction of the inquiry:

The amendments ... reframe the registration requirement in the affirmative--essentially the converse of the current section 411(a). In other words, the provision would state affirmatively that "United States works" must be registered before suit. Rather than frame an exemption from that requirement for certain works whose origin is not the United States, section 411(a) would, as amended by this subsection, merely limit the requirement of registration as a precondition to suit to those works whose country of origin is the United States. n410

The rationale was to exempt from U.S. registration requirements "works from members of the two new WIPO Treaties." Page 20 2 Nimmer on Copyright § 7.16

n411 But its implementation reaches more broadly. n412

Consider the state of affairs legislated in 1988. n413 When implemented in 1989, books by U.S. citizens and sculptures by Ghanaians (non-Berne nationals at that time) had to be registered to support an infringement action. But movies by Germans and computer programs by Uruguayans (both Berne nationals) could proceed to suit in the U.S. even without any application to register the subject works. Now, switch to 1998. Works by U.S. citizens remain subject to the registration requirement. But all others are released--including, for example, an unpublished painting by two Nepalese, notwithstanding that Nepal neither is a Berne member nor enjoys any copyright relations with the United States, and hence cannot claim under international law that works by its citizens deserve protection at all, let alone protection without formalities. n414

The 1988 compromise was narrowly crafted, so as to largely preserve copyright registrations in order to create a useful public record and the deposit of copyrighted works ancillary to registration in order to ensure an efficient acquisition program for the Library of Congress. n415 The 1998 amendment, by contrast, undermines that goal. n415.1 But given that scenarios such as suits based on unpublished paintings by Nepalese are presumably rare in the extreme, that defect might not be the cause of much alarm.

The evolution from 1988 to 1998 closed one gap and opened another. Consider first the former. Under the earlier approach, the loophole available to all works of Berne Convention origin meant that even Americans, by judicious publication in Berne nations not later than publication in the United States, could qualify their works, thereby avoiding the necessity of registration. n416 Today, by contrast, a work authored by a U.S. citizen qualifies as a "United States work" (subject to mandatory registration) regardless of where published, so that device is no longer available. n417

Turning to the latter, the provision of the Berne Convention from which both the 1988 and the 1998 language was drawn n418 defines "country of origin" by reference to simultaneous publication. n419 That treaty further provides that "[a] work shall be considered as having been published simultaneously in several countries if it has been published in two or more countries within thirty days of its first publication." n420 The 1988 amendment contained a definition of "Berne Convention work" with a similar 30-day leeway. n421 The 1998 amendment eliminated that defined term. Its replacement provision lacks the grace period for publication within 30 days. n422 It therefore appears that the terms "first" and "simultaneous" publication should be construed rigidly. n423

[e] Internet Overlay. A Swede enlisted a German art gallery to market his photographs; the gallery advertised the sale of those photographs by posting an image of each photo on the Internet. When an American company allegedly copied those images and posted them on its own domestic website, Moberg v. 33T LLC posed the question whether registration was required for suit to proceed in the United States. n423.1

Defendant argued for dismissal based on a mathematical series of propositions: The images were first published by being uploaded to the German art gallery's website; n423.2 it is "well settled that Internet publications are published everywhere simultaneously, regardless of the location of the server hosting the website"; n423.3 a work first published simultaneously abroad and domestically is a "United States work"; n423.4 the Copyright Act requires registration for a suit alleging infringement of a United States work; n423.5 therefore, plaintiff's complaint based on non-registered works could not proceed. n423.6

Turning to this question of first impression, n423.7 the court quoted a scholarly article's conclusion, "On balance, despite some common-sense appeal to the notion that works transmitted over the Internet are necessarily published, and despite a plausible textual basis for reaching this result, it is hardly obvious that this result would be desirable." n423.8 That article opens the way to topple one of the defense's pillars. If such collapse were to occur of the "well settled" proposition that publication of the work occurred in Germany via its Internet posting, the above syllogism would no longer guarantee victory for defendant. Page 21 2 Nimmer on Copyright § 7.16

But Moberg rejected that option. Instead, it ruled that, "even assuming that the German website 'published' plaintiff's photographs, the Court holds that as a matter of U.S. statutory law the photographs were not published simultaneously in the United States." n423.9 How did the court go about construing domestic legislation to reach that construction? Surprisingly, not by looking to the text of the Copyright Act or its legislative history; instead, it relied on secondary commentary about the purpose of the Berne Convention. n423.10 The court invoked functionalist considerations to reason that

if the publishing of plaintiff's photographs on the German website simultaneously caused them to be published in the United States, and such publication transformed the work into a United States work, plaintiff would be subjected to the very formalities that the Berne Convention eschews. To hold otherwise would require an artist to survey all the copyright laws throughout the world, determine what requirements exist as preconditions to suits in those countries should one of its citizens infringe on the artist's rights, and comply with those formalities, all prior to posting any copyrighted image on the Internet. The Berne Convention was formed, in part, to prevent exactly this result. n423.11

The court construed the law to protect foreign works "without requiring the artists to undertake any formalities in the United States" and concluded that "adoption of defendants' point of view would be contrary to that law." n423.12 The opinion concluded that the defense argument "would flout United States law and the international union the U.S. has joined voluntarily." n423.13

In contrast to that ruling, the analytically sounder approach (as set forth above) is to conclude that no violation of the Berne Convention occurs to the extent that U.S. law requires a Swede to register his work as a condition to filing suit in district court. n423.14 The formal requirements for filing suit in the District of Delaware are sufficiently technical that adding on the processing of an application to the Copyright Office does not meaningfully alter the situation. n423.15 In short, the violation of international law on which Moberg built its foundation would seem to be chimerical.

Separately, another defect in the court's reasoning is its reference to the supposed need "to survey all the copyright laws throughout the world, ... all prior to posting any copyrighted image on the Internet." n423.16 Given that registration is emphatically not a pre-requisite to copyright protection before publication, but only necessary as a prelude to later instituting litigation in a targeted jurisdiction, such an onerous survey n423.17 is also a fiction. n423.18

In addition, Congress passed the Berne Convention Implementation Act of 1988 with explicit direction to courts that they should apply the law that it drafted, not look to vindicate propositions of the Berne Convention directly. n423.19 By proceeding to the contrary, Moberg swims against the tide of other cases construing the Copyright Act. n423.20

For that reason, a subsequent district court case followed the instant critique and parted ways with Moberg . n423.20a It concluded that posting matter on the Internet constitutes publication and thereby qualifies the subject material as a "United States work." n423.20b The Eleventh Circuit affirmed on different grounds, based on a wholly different construction of the facts in the record. n423.20c In brief, it concluded that the subject work had not been posted on the Internet, meaning that the district court erred in concluding that simultaneous publication in this country rendered the product a "United States work." n423.20d At the same time, though, its scouring of the record failed to unearth any evidence that the work had been published abroad, meaning that plaintiff's claim to be exempt from the registration requirement failed. n423.20e It therefore declined to remand for further factfinding, effectively ending plaintiff's infringement claim. n423.20f

The considerations set forth above debunk this opinion's functionalist methodology of first asking what international law requires, and then backing into a construction of U.S. law designed to serve those ends. But it leaves unaddressed the proper conclusion under the statute. As noted above, one scholar questions the leg of the defense argument that "works transmitted over the Internet are necessarily published." The remaining task is to investigate publication, to determine whether the photographs in question were first published in Germany and simultaneously published in the Page 22 2 Nimmer on Copyright § 7.16

United States, given the implicated technologies. Because those inquiries formed no part of the subject opinion, they remain open. Another case might harmonize with Moberg 's ruling in plaintiff's favor, based on a searching inquiry into the requisites of publication in the Internet era. n423.21 Or it may conclude to the contrary.

[C] Registration as a Condition to Statutory Damages and Attorney's Fees

[1] Current Application

[a] Registration Before Commencement of Infringement. By reason of Section 412, in order for a copyright owner to be entitled to recover statutory damages n424 and attorney's fees, n425 the work n426 must have been registered prior to commencement of the infringement for which such remedies are sought n427 (or within the grace period described below). n428 A number of issues arise in that regard.

[i] Defining "Commencement." Commencement of the infringement means "the time when the first act of infringement in a series of ongoing discrete infringements occur." n429 Thus, if the infringement on which suit is based commenced prior to registration, n429.1 enhanced damages are barred even if the infringement continues past the date of registration. n430 Although one plaintiff derided this rule as a "license to steal," n431 courts are inhospitable to that lament. n431.1

When the allegation is that defendant exceeded the scope of a license, some exploitation of the copyrighted work might be deemed consensual, whilst other exploitation of the identical work is deemed actionable. Under those circumstances, minute parsing may be required to determine when infringement "commenced." n432 When plaintiff contended that infringement of its architectural work "commenced" only when the offending structure was completed, the court concluded that, under the standards of the architectural cases, n433 infringement occurs by such preliminary steps as tracing plans. n434

To illustrate the methodology of determining commencement, consider a case arising out of the bible for annual bicycle races held in the New Mexico desert. n434.1 Plaintiff worked for the organization as Race Director through 2002, donating his intellectual property through that date. n434.2 He later claimed infringement based on subsequent usage of his material, which he registered in 2005. n434.3 To collect statutory damages, he maintained that infringement commenced in 2005; but when the organizers distributed his text without license in conjunction with the 2003 race, that earlier time marked the "commencement" of infringement. n434.4 His registration was therefore untimely. n434.5

One unusual case held that defendant's commencement of infringement before plaintiff's registration of its original product barred recovery of statutory damages altogether-- i.e. , even as to plaintiff's later-created derivative works--but it barred recovery of attorney's fees only as to plaintiff's underlying work, not as to its later-created derivative works. n435 The court reached this conclusion based on an explicit statutory provision that all the parts of a compilation or derivative work constitute one work for computation of statutory damages, n436 and the lack of any statutory counterpart in the attorney's fees provision. n437 Inasmuch as the timing of registration vis-a-vis remedy is actually specified in a separate provision of the Copyright Act, n438 that distinction may be overly fine.

[ii ] Defining "Registration." The statute conditions recovery of these remedies for a work on "the effective date of its registration," n439 not on the identity of the party registering it. Thus, it suffices that the work has been timely registered, whether by the precise plaintiff in court or by her predecessor in interest. One court recognized that proposition but drew a distinction, stating in dictum that "a co-owner of a copyright cannot rely on the registration of a different interest to comply with the Copyright Act." n440 There would appear to be no substance to that point of view.

For works first published from 1964 through 1977, the registration can be either for the original term or for the renewal term, n441 or for both. n442 For domestic works published before 1964, n443 their current subsistence requires both an original and renewal certificate. n444 For domestic works published since 1978, there is no longer a bifurcated term, n445 meaning that only one certificate will be available. Page 23 2 Nimmer on Copyright § 7.16

[iii ] Limited To Prevailing Plaintiffs. This prerequisite applies to a prevailing plaintiff who establishes infringement; as to a prevailing defendant who successfully negates a claim of infringement, the statute places no comparable disability from recovering fees. n446 Because statutory damages may often constitute the only meaningful remedy available to a copyright owner for infringement of his work, n447 Section 412 represents a powerful incentive to register, even though nonregistration does not result in invalidation of the copyright. n448

[iv ] Applicable to Foreigners and U.S. Claimants Alike. The loss of remedies under Section 412 due to failure to register is applicable to works of foreign origin n449 as well as to domestic works. n450 Given further that even foreign works must be registered to take advantage of this remedy, foreigners' nominal exemption from registration as a prerequisite to filing suit holds only a hollow advantage. n451

This registration requirement for attorney's fees and statutory damages is particularly burdensome as regards foreign authors, who can hardly be expected to be either conversant with the formalities of American copyright law or concerned with the American need for a public record. Still, the fact that foreign authors may find this provision particularly onerous does not constitute a violation of the "national treatment" requirement n452 under the multilateral treaties, n453 given that American nationals are subjected to the same requirement. n454 Moreover, it arguably does not represent a lower standard of protection than foreign copyright owners may obtain under their own domestic copyright laws, although such laws do not require registration. n455 In any event, the benefit from registration applies both to works of U.S. origin n456 and to foreign works that, although technically exempt from the registration requirement as a prerequisite for filing suit, have nonetheless been voluntarily registered. n457

When technicality is piled atop technicality, odd results may emerge. In particular, there is one exception to the loss of remedies under Section 412 due to failure to register, solely with respect to works of foreign origin. We have previously seen that works consisting of sounds and images are immune from the claims-processing requirement of registration, provided that the requisite advance notice is supplied. n458 It has even been held that foreign copyright holders may recover statutory damages in those instances, despite never having registered the subject works. n459 Thus, the one instance in which statutory damages are available for infringement of unregistered works applies to (a) works consisting of sounds and images; (b) for which advance notice is supplied 48 hours in advance; (c) to the extent owned by foreign claimants. n460

[b] Grace Period For Published Works . Mention has been made above concerning a grace period, which the statute makes applicable when "registration is made within three months after the first publication of the work." n461 That grace period comes into play only when infringement commenced after first publication. n462 Thus, as to published works, there is no limitation on remedies, even if the infringement occurred prior to registration as long as registration occurs within three months after first publication of the work. n463 Basically, its purpose is "to take care of newsworthy or suddenly popular works which may be infringed almost as soon as they are published, before the copyright owner has had a reasonable opportunity to register his claim." n464 It has been held n465 that publication abroad qualifies here, n466 so as to afford the three-month grace period for registration. n467

To illustrate the timing of the grace period, consider a case in which the copyright owner published material on May 4, 2007, which a third party began to infringe on July 6, 2007. Had the owner registered before August 4, 2007, it could have recovered statutory damages and attorney's fees; in fact, though, its belated registration on September 10, 2007, forfeited those heightened remedies. n468 On the other hand, had the infringement commenced on May 1 (based ex hypothesi on access to an unpublished work), then no grace period would apply. n469 Alternatively, had the work remained unpublished when the infringement commenced on July 6, 2007, then its belated registration on September 10, 2007, would have been equally fruitless to revive those heightened remedies. n470

Even if registration does not occur within three months of first publication, n471 statutory damages and attorney's fees are not absolutely precluded pursuant to this provision. So long as registration occurs prior to commencement of the infringement, the heightened remedies are fully available. Alternatively, the failure to register some works within the Page 24 2 Nimmer on Copyright § 7.16

grace period does not bar recovery for infringement of other works that were timely registered. n471.1

For current purposes, the act of publication that furnishes the measuring date apparently refers to general rather than limited publication. n472 Thus, registration--even if effectuated within three months--that follows a limited (as opposed to a general) publication cannot fulfill the grace period to support the award of statutory damages. n473 For these purposes, the technical definitions of publication canvassed above must be consulted. n474 For example, the act by defendant alleged to constitute infringement cannot simultaneously be the "publication" on which plaintiff relies, inasmuch as an ingredient of "publication" n475 is authorized dissemination. n476

[c] Exceptions. The requirement of registration to obtain the benefit of attorney's fees and statutory damages is subject to two exceptions. First, as regards infringements of works consisting of sounds, images, or both, first fixed simultaneously with their transmission, n477 there is no such limitation on statutory damages and attorney's fees. n478 Second, there is no prerequisite of registration to recover statutory damages and attorney's fees for violations of artists' rights, given that those are distinct from copyright ownership. n479

The bar on awarding heightened damages applies even if one of several defendants n480 did not start to infringe until after registration, n481 or even if the sole defendant, after registration, engaged in a different type of infringement from its pre-registration conduct. n482 Nonetheless, a contrary argument arises n483 to the extent that qualitatively new infringement occurs after registration, particularly given a large lapse of time between the first bout of infringement and its post-registration successor. Imagine, for instance, that defendant infringes by public performance in 1990 through 1995, plaintiff registers the subject work in 1991, and then defendant begins a new course of infringing conduct via reproduction in 2004, which attracts suit in 2007. The difference in kind between the earlier course of performance n484 and the later acts of reproduction gives rise to a reasonable position that the actionable infringement only "commenced" in 2004, meaning that it therefore can support the award of statutory damages and attorney's fees.

[2] Comparison with Prior Law. As regards unpublished works, the foregoing scheme does not constitute a meaningful departure from the law as it existed prior to the current Act. Insofar as a work was protected by common law copyright, n485 there could be, in any event, no recovery of either statutory damages or attorney's fees. It is true that, under the 1909 Act, statutory damages and attorney's fees might be available for unpublished works that had become the subject of statutory copyright, but registration was required in order to obtain statutory copyright for unpublished works. n486 Therefore, this aspect of Section 412 was at least equally applicable under the 1909 Act. When the vast body of works formerly protected by common law copyright were brought within the federal domain under the current Act, it was reasoned that the remedies formerly applicable under common law copyright should not be increased "unless the owner has, by registration, made a public record of his copyright claim." n487

But Section 412 does involve a substantial expansion of the registration requirement as regards published works. The House Report explained the Section 412 registration requirement for published works as follows: "Copyright registration for published works, which is useful and important to users and the public at large, would [under the current Act] no longer be compulsory, and should therefore be induced in some practical way." n488 This is somewhat misleading. Under the 1909 Act, registration was not compulsory, absent a demand for registration and deposit made by the Register of Copyrights. n489 Such a demand was frequently not made despite publication of a work. In its absence, registration was only required then (as now) prior to the filing of an infringement action, n490 and, in such an action, there might be a recovery (including, under the 1909 Act, statutory damages and attorney's fees) with respect to infringing acts that occurred prior to, as well as after, registration. n491

Registration has, then, assumed a new importance under the current Act. In order not to be precluded from the opportunity to obtain statutory damages and attorney's fees in any future infringement actions, copyright owners--both American and foreign--are well-advised to register their works as soon as possible. As to works that have not as yet been registered, but that have been published for more than three months, it is not possible to take advantage of the grace period. n492 Nevertheless, registration, even for such works, will preserve the remedies of statutory damages and Page 25 2 Nimmer on Copyright § 7.16

attorney's fee as to infringements commencing after such registration. Therefore, works that obtained statutory copyright by publication under the 1909 Act, but that were not registered prior to January 1, 1978, should be registered with dispatch. Works that were registered under the 1909 Act need not be re-registered in order to comply with the registration requirements of the current Act. n493

[3] Inapplicability of Registration as Condition to Other Remedies. As described above, Section 412 of the Copyright Act explicitly labels registration a "prerequisite to certain remedies for infringement," n494 viz ., the remedies of attorney's fees and statutory damages. The inescapable conclusion from that language is that registration is not a prerequisite to the imposition of unenumerated remedies, such as the equitable imposition of an injunction or seizure. n495 As a consequence, any court hearing a copyright action n496--whether through submission of an appropriate registration certificate or under any of the various situations in which no such certificate is required n497--may order remedies such as seizure n498 or injunction n499 as permitted by statute, without reference to when the registration was filed, or even whether the precise items seized or enjoined are covered by a registration certificate. n500

One court briefly adopted a contrary construction, holding that the scope of an injunction is limited to registered works. Cable News Network, Inc. v. Video Monitoring Services of America, Inc. n501 expressly held that injunctions, even issued by courts enjoying appropriate jurisdiction, cannot extend to future or unregistered works. n502 Until the ruling was vacated by the entire circuit sitting en banc , n503 that construction would have required CNN--which had been victorious below against a company whose systematic policy was to infringe the entire CNN cablecast--to file a new lawsuit every day for the infringement of that day's work, as the previous injunctions could not reach conduct respecting a work that had been "future" at the time of their issuance. n504 Such a result not only ran afoul of judicial economy, but also contradicted the holdings of every circuit to confront analogous circumstances. n505 Those analogous cases followed the contours of the statute explicated above and enjoined infringement, under appropriate circumstances, even beyond the scope of the registration certificates tendered to the district court. n506 Given that United States law is moving towards harmony with international standards by lessening the significance of copyright formalities, n507 it is to be hoped that exaltations of the registration formality (as exemplified by CNN v. VMS ), beyond its application in previous cases and contrary to the statutory language, will not recur.

[4] Effect of Pre-Registration. It has been described above how, for the benefits of registration to flow to plaintiff, the act of registration must precede the commencement of infringement, except that there is a three-month grace period following first publication within which to register. n508 That statutory scheme contains a hole--to the extent that the defendant is able to infringe the work before its first publication, then a victorious plaintiff cannot recover statutory damages or attorney's fees, even if the work is registered promptly upon its first publication. To avoid that pitfall, the plaintiff would need to register the work prior to its first publication, early enough to precede any potential poaching by unknown defendants. n509

In the decades after adoption of the 1976 Act, that loophole seldom proved bothersome. With the turn of the millennium, however, a new dynamic took hold, n510 with a raft of pre-release infringement involving motion pictures, sound recordings, business software, videogame software, and books. n511 "Obviously, the increasingly frequent situation of copyrighted works being distributed illegally via the Internet before they are even made available for sale to the public severely undercuts the ability of copyright holders to receive fair and adequate compensation for their works." n512

Congress passed the ART Act to plug that hole. n513 It amends the statute to allow full remedies in any "action for infringement of the copyright" of a work that has been pre-registered n514 in the manner described above. n515 That provision applies so long as pre-registration took place before the infringement commenced. n516 In addition, for the plaintiff to recover full remedies, the work itself further must be fully registered by the time judgment is entered. n517 Moreover, that registration must have an effective date n518 "not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement." n519 Page 26 2 Nimmer on Copyright § 7.16

[D] Registration as a Condition to Prima Facie Evidence of Copyright Validity

As discussed more fully below, n520 the copyright registration certificate constitutes prima facie evidence of the validity of the copyright and of the facts stated in the certificate. n521 But, under the current Act, unlike the 1909 Act, the registration certificate constitutes such prima facie evidence only if registration is made before or within five years after first publication of the work. n522 This, then, constitutes an additional incentive to registration that did not exist under the 1909 Act.

What of a work for which statutory copyright was obtained under the 1909 Act, but that either was not registered at all prior to January 1, 1978, or was registered prior thereto, but not within five years after first publication? Will the copyright owner of such a work be entitled to claim the prima facie evidence benefit upon registration? If the work was not registered prior to 1978, and more than five years elapsed between its first publication and its registration under the current Act, it would appear that it may not claim this benefit. n523

By contrast, if the work was registered prior to January 1, 1978, but more than five years elapsed between its first publication and its registration, it would still seem to be entitled to the benefit of the prima facie evidence provisions of Section 410(c), although the issue is not free from doubt. Such a result may occur by reason of Section 109 of the Transitional and Supplementary Provisions of the current Act, n524 as construed in the House Report: "Several provisions of the bill, including sections 205(c)(2), 205(d), n525 405(a)(2), 406(a)(1), 406(a)(2), 411, and 412, prescribe registration or recordation as a prerequisite for certain purposes. Where the work involved is covered by a subsisting copyright when the new law becomes effective, it is intended that any registration or recordation made under the present [1909] law would satisfy these provisions." n526 This could mean that "any" registration made under the 1909 Act, not just one made within five years of first publication, will satisfy the provision for prima facie validity. One difficulty with this conclusion is that Section 410(c) is not explicitly mentioned in the House Report's above quoted enumeration of applicable sections. Yet, Section 410(c) clearly is one of "several provisions of the bill ... [that] prescribe registration ... as a prerequisite for certain purposes." If Section 109 of the Transitional and Supplementary Provisions is to be given this effect in regard to other provisions, certainly nothing in the text of Section 109 justifies the exclusion of Section 410(c). Moreover, the enumeration in the House Report that excludes Section 410(c) is preceded by the word "including." That word in the Act itself is defined as being "illustrative and not limitative." n527 It, therefore, appears that Section 410(c) is encompassed within the Section 109 rule, so that a registration effected at any time under the 1909 Act will trigger the prima facie evidence effect of Section 410(c). n528

[E] Registration as a Condition to Constructive Notice of Recordation

Under certain circumstances, recordation of a transfer of copyright, or of other documents relating to a copyright in a work constitutes constructive notice to all persons of the facts stated in the recorded document. n529 One of the conditions to such constructive notice is that the work to which the document pertains be registered. n530 It would appear that, for these purposes, registration may be effected at any time, but that there is constructive notice only after registration of the work (as well as recordation of the document) has occurred. Thus, although an instrument of transfer to a first purchaser may be recorded prior to the time that the copyright owner purports to sell the same copyright interest to a bona fide subsequent purchaser, the latter does not have constructive notice of the first purchase if the work has not been registered at the time the subsequent purchaser acquired his interest.

No such registration requirement existed in order to effectuate constructive notice of transfers under the recordation provisions of the 1909 Act. n531 Suppose that, under the 1909 Act, a subsequent purchaser had constructive (but not actual) notice of a prior transfer of an unregistered work. Is such constructive notice vitiated after January 1, 1978? A later registration would not cure the defect, inasmuch as registration for these purposes must occur, if at all, prior to the time the second purchaser acquired his interest. His later notice, constructive or actual, will not affect his bona fides . This raises a difficult question of retroactivity. Can the first purchaser be deprived of his "property" under the 1909 Act on the ground that the second purchaser did not have constructive notice of the first purchase (due to non-registration of Page 27 2 Nimmer on Copyright § 7.16

the work) when at the time of the second purchase the subsequent buyer did have constructive notice notwithstanding a failure to register the work? The answer is not clear. n532

[F] Registration as a Condition to a Defense for Innocent Infringers Where Proper Copyright Notice Is Omitted

It has been noted above that, where a proper copyright notice is omitted from more than a relatively small number of published copies or phonorecords, registration may be a condition to the continued existence of copyright in the work. n533 Registration within five years after the publication without notice is required in order to preserve the copyright in these circumstances. n534 But, even if the copyright has not been lost because the five-year period has not yet elapsed, registration within that period may be significant in determining whether an innocent infringer has either a complete defense n535 or a defense as to statutory damages and attorney's fees. n536

[G] Registration as a Condition to Customs Remedies

In order to record a copyright with the United States Customs Service, an "additional certificate" from the Copyright Office must be filed with the Customs Service. n537 Upon recordation, Customs will bar the importation of piratical copies or phonorecords of the registered work. n538

In related fashion, copyright registration is a prerequisite for securing relief from the International Trade Commission. n539 For relief before that agency, mask work registration is also pertinent. n540

[H] Permissive Registration

In addition to the purposes described above, a registration certificate has significance in the context of burdens of proof in an infringement action. n541 It was also relevant to the now-defunct manufacturing clause. n542 Even if registration is not required or desired to satisfy any of those or the previously encountered conditions, it is still useful as a means of giving actual notice of copyright to those who search the Copyright Office records. n543 More generally, it can assist in facilitating the marketability of a work.

Registration may be accomplished at any time during the subsistence of copyright in any published or unpublished n544 work. n545 Under an amendment effectuated by the Copyright Renewal Act of 1992, registration for the original term of a pre-1978 work must be made during the original term; after its expiration, only a renewal registration will be accepted. n546

[I] Uruguayan Repercussions

The end of 1994 saw the commencement of the Uruguayan phase of the Berne era. n547 The primary changes wrought by the Uruguay Round Agreements Act n548 are to restore qualifying foreign works from the public domain n549 and to confer an antibootlegging right on musical performances. n550

Incident to those changes, Congress did not amend existing registration jurisprudence, most notably the prerequisite of pre-infringement registration for recovery of attorney's fees and statutory damages. n551 At least one Senator objected that a change should have been implemented, maintaining that existing law on the subject was Berne-incompatible and, hence, created the possibility of an adverse ruling by a WTO panel. n552 If such a panel ruling were to eventuate in the future, Congress would need to revisit its decision. n553

Now that antibootlegging and restoration are part of the Copyright Act, what registration changes follow? As to antibootlegging, protection can attach even absent any fixation whatsoever. n554 Unless previous practice is significantly revised, such unfixed productions will not be subject to registration. n555 But, given that the antibootlegging right is analytically distinct from traditional copyright protection, that disparity does not demand Page 28 2 Nimmer on Copyright § 7.16

legislative redress. n556

As to restored copyrights, the 1994 amendment created the new formality of a notice of intent to enforce a restored copyright. n557 Although the addition of that new formality to United States copyright law moves the United States away from Berne Convention ideals, n558 at least Congress provided that proper filing of that notice simultaneously serves to register the subject work. n559

FOOTNOTES: (n1)Footnote 1. Family Dollar Stores, Inc. v. United Fabrics Int'l, Inc., 896 F. Supp. 2d 223, 229 (S.D.N.Y. 2012) (Treatise quoted) ; BUC Int'l Corp. v. International Yacht Council Ltd., 489 F.3d 1129, 1142 (11th Cir. 2007) (Treatise cited) ; Morgan, Inc. v. White Rock Distilleries, Inc., 230 F. Supp. 2d 104, 107 (D. Me. 2002) (Treatise cited) ; Cameron v. Graphic Mgmt. Assocs., Inc., 817 F. Supp. 19, 23 (E.D. Pa. 1992) . See 17 U.S.C. § 408(a) .

(n2)Footnote 2. Montgomery v. Noga, 168 F.3d 1282, 1288 (11th Cir. 1999) (Treatise cited) ; Granger v. Acme Abstract Co., 900 F. Supp. 2d 419, 422 (D.N.J. 2012) (Treatise cited) ; Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 210 F. Supp. 2d 147, 157 (E.D.N.Y. 2002) (Treatise cited) , aff'd , 354 F.3d 112 (2d Cir. 2003) ; Chere Amie, Inc. v. Windstar Apparel, Corp., 191 F. Supp. 2d 343, 350 (S.D.N.Y. 2001) ; Don Post Studios, Inc. v. Cinema Secrets, Inc., 124 F. Supp. 2d 311, 313 n.3 (E.D. Pa. 2000) (Treatise cited) . See § 9.10[A][1][a] infra .

(n3)Footnote 3. 17 U.S.C. § 101 (definition of "created"). See Family Dollar Stores, Inc. v. United Fabrics Int'l, Inc., 896 F. Supp. 2d 223, 229 (S.D.N.Y. 2012) (Treatise quoted) ; Arthur Rutenberg Homes, Inc. v. Drew Homes, Inc., 29 F.3d 1529, 1531 (11th Cir. 1994) (Treatise cited) .

(n4)Footnote 4. Family Dollar Stores, Inc. v. United Fabrics Int'l, Inc., 896 F. Supp. 2d 223, 229 (S.D.N.Y. 2012) (Treatise quoted) . See Sturgis v. Target Corp., 630 F. Supp. 2d 776, 778 (E.D. Mich. 2009) .

(n5)Footnote 5. See Overview supra .

(n6)Footnote 6. See § 7.13[A] supra .

(n7)Footnote 7. As to the required notice, see Part I supra.

(n8)Footnote 8. See § 7.13[B] supra . Registration will preserve the copyright in such circumstances, only if the publication without notice occurred on or after January 1, 1978.

(n9)Footnote 9. For the meaning of these terms, see Overview supra .

(n10)Footnote 10. 17 U.S.C. § 408(a) . Cf. 17 U.S.C. § 408(a) (pre-BCIA) (" Subject to the provisions of section 405(a ), such registration is not a condition of copyright protection.") (emphasis added).

(n11)Footnote 11. Nonetheless, it is still highly advisable to register such works. See §§ 7.16[C] -7.16[G] infra .

(n12)Footnote 12. See § 9.09[A] infra .

(n13)Footnote 13. Common law copyright likewise was automatic upon creation, not requiring registration or any other formalities. See § 2.02 supra .

(n14)Footnote 14. Washingtonian Publ'g Co. v. Pearson, 306 U.S. 30, 59 S. Ct. 397, 83 L. Ed. 470 (1939) ; United States v. Backer, 134 F.2d 533 (2d Cir. 1943) . See 17 U.S.C. § 10 (1909 Act) .

(n15)Footnote 14.1. Siegel v. Warner Bros. Entm't Inc., 542 F. Supp. 2d 1098, 1129 (C.D. Cal. 2008) (Treatise quoted) . That 2008 case is part of a long series of opinions painstakingly analyzing what the Second Circuit (and other courts) had previously concluded about Superman . See § 11.10[C][1] supra . See also Siegel v. Time Warner Inc., 496 Page 29 2 Nimmer on Copyright § 7.16

F. Supp. 2d 1111, 1137 (C.D. Cal. 2007) (Treatise cited) .

(n16)Footnote 15. Epoch Producing Corp. v. Killiam Shows, Inc., 522 F.2d 737 (2d Cir. 1975) , cert. denied , 424 U.S. 955, 96 S. Ct. 1429, 47 L. Ed. 2d 360 (1976) ; Krafft v. Cohen, 117 F.2d 579 (3d Cir. 1941) ; Rexnord, Inc. v. Modern Handling Sys., Inc., 379 F. Supp. 1190 (D. Del. 1974) .

(n17)Footnote 16. See § 7.17[E] infra .

(n18)Footnote 17. This aspect should be distinguished from the question of how long a period might elapse between the time when a work was created and the time when statutory copyright might be claimed under the 1909 Act by publication or by registration of the unpublished work. On this latter question, it was clear that as long as a work remained unpublished, there was no limit whatsoever on this period. Baron v. Leo Feist, Inc., 78 F. Supp. 686 (S.D.N.Y. 1948) , aff'd , 173 F.2d 288 (2d Cir. 1949) .

(n19)Footnote 18. See § 2.03[G] supra . That type of formal defect would have lasting significance primarily with respect to works of domestic origin, as qualifying foreign works would be eligible for copyright restoration even after having been injected into the U.S. public domain. See § 9A.04 infra .

(n20)Footnote 19. H.R. Rep. No. 2222, 60th Cong., 2d Sess. p. 11.

(n21)Footnote 20. 306 U.S. 30, 59 S. Ct. 397, 83 L. Ed. 470 (1939) .

(n22)Footnote 21. See § 7.16[B] infra (subject to enumerated exceptions).

(n23)Footnote 21.1. Siegel v. Warner Bros. Entm't Inc., 542 F. Supp. 2d 1098, 1118-1121 (C.D. Cal. 2008) (Treatise quoted)

(n24)Footnote 22. See § 7.17[B] infra .

(n25)Footnote 23. Twentieth Century-Fox Film Corp. v. Dunnahoo, 637 F.2d 1338 (9th Cir. 1981) ; Pittway Corp. v. Reliable Alarms Mfg. Corp., 164 U.S.P.Q. 379 (E.D.N.Y. 1969) ; Primcot Fabrics v. Kleinfab Corp., 368 F. Supp. 482 (S.D.N.Y. 1974) .

(n26)Footnote 24. See § 7.17[B] infra .

(n27)Footnote 25. Twentieth Century-Fox Film Corp. v. Dunnahoo, 637 F.2d 1338 (9th Cir. 1981) ; Dan Kasoff, Inc. v. Palmer Jewelry Mfg. Co., 171 F. Supp. 603 (S.D.N.Y. 1959) ; Silvers v. Russell, 113 F. Supp. 119 (S.D. Cal. 1953) ; Ziegelheim v. Flohr, 119 F. Supp. 324 (E.D.N.Y. 1954) ; Key West Hand Print Fabrics, Inc. v. Serbin, Inc., 244 F. Supp. 287 (S.D. Fla. 1965) ; Frederick Chusid & Co. v. Marshall Leeman & Co., 326 F. Supp. 1043 (S.D.N.Y. 1971) ; Rexnord, Inc. v. Modern Handling Sys., Inc., 379 F. Supp. 1190 (D. Del. 1974) ; cf. Egner v. E.C. Schirmer Music Co., 48 F. Supp. 187 (D. Mass. 1942) , aff'd on narrower grounds , 139 F.2d 398 (1st Cir. 1943) , cert. denied , 322 U.S. 730, 64 S. Ct. 947, 88 L. Ed. 1565 (1944) . One case makes the plainly erroneous statement that deposit must occur within three months of publication. S.C. Johnson & Son, Inc. v. Drop Dead Co., 210 F. Supp. 816 (S.D. Cal. 1962) .

(n28)Footnote 26. Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d 406 (2d Cir. 1946) , cert. denied , 331 U.S. 820, 67 S. Ct. 1310, 91 L. Ed. 1837 (1947) .

(n29)Footnote 26.1 . Siegel v. Warner Bros. Entm't Inc., 542 F. Supp. 2d 1098, 1121 (C.D. Cal. 2008) (Treatise quoted) .

(n30)Footnote 27. See § 13.06 infra .

(n31)Footnote 28. Klasmer v. Baltimore Football, Inc., 200 F. Supp. 255 (N.D. Md. 1961) . See Monogram Page 30 2 Nimmer on Copyright § 7.16

Models, Inc. v. Industro Motive Corp., 448 F.2d 284 (6th Cir. 1971) (two-year interval between first publication and filing of registration certificate said to raise question whether copies were published without notice "and if so was there an abandonment to the public domain"). But cf. later opinion on appeal after remand, 492 F.2d 1281 (6th Cir. 1974) . Cf. Rexnord, Inc. v. Modern Handling Sys., Inc., 379 F. Supp. 1190 (D. Del. 1974) . See also the suggestion in Kontes Glass Co. v. Lab Glass, Inc., 250 F. Supp. 193 (D.N.J. 1966) , aff'd , 373 F.2d 319 (3d Cir. 1967) , to the effect that delay in registration may create a defense of "laches." See also Samet & Wells, Inc. v. Shalom Toy Co., 185 U.S.P.Q. 36 (E.D.N.Y. 1975) ("the delay in filing the copyright notice may prevent plaintiff from complaining of any turtles which were sold [prior to filing]").

(n32)Footnote 29. One might argue that Section 9(c)(2) of the 1909 Act, 68 Stat. 1030 , enacted subsequent to Washingtonian , implies an intent to repeal Washingtonian , as otherwise, its express exemption for U.C.C. claimants from "the obligatory deposit requirements of the first sentence of section 13" becomes meaningless. But courts have rejected that imputation. Pritikin v. Liberation Publ'ns, Inc., 83 F. Supp. 2d 920 (N.D. Ill. 1999) (Treatise cited) ("no court of appeals has followed Nimmer's hint"). Perhaps the statutory language was simply inserted out of an abundance of caution, to protect the rights of U.C.C. claimants in case the law took a subsequent turn away from Washingtonian .

(n33)Footnote 30. Hirshon v. United Artists Corp., 243 F.2d 640 (D.C. Cir. 1957) . See 17 U.S.C. § 214 (1909 Act) .

(n34)Footnote 31. Letter to the Librarian of Congress Concerning Certain Aspects of the Copyright Act of March 4, 1909, as quoted in Strauss, "Protection of Unpublished Works," Copyright Office Study No. 29 , p. 6, n.53.

(n35)Footnote 32. As to this limitation regarding sound recordings under the 1909 Act, see Pub. L. No. 92-140 , Sec. 3, 85 Stat. 391 .

(n36)Footnote 33. "Section 2 of the Copyright Act expressly preserves the common law right in unpublished works against any implication that the field is pre-empted by the Federal statute." Hemingway v. Random House, Inc., 23 N.Y.2d 341, 296 N.Y.S.2d 771, 244 N.E.2d 250 (1969) ; Hearst Corp. v. Shopping Ctr. Network, Inc., 307 F. Supp. 551 (S.D.N.Y. 1969) (Treatise quoted) . Cf. Rosette v. Rainbo Record Mfg. Corp., 354 F. Supp. 1183 (S.D.N.Y. 1973) , aff'd , 546 F.2d 461 (2d Cir. 1976) (common law recording rights limited).

(n37)Footnote 34. Compare §§ 9.08 , 9.09[A] infra .

(n38)Footnote 35. Loew's, Inc. v. Superior Court, 18 Cal. 2d 419, 115 P.2d 983 (1941) .

(n39)Footnote 36. Photo-Drama Motion Picture Co. v. Social Uplift Film Corp., 220 F. 448, 450 (2d Cir. 1915) . See Tams-Witmark Music Library, Inc. v. New Opera Co., 298 N.Y. 163, 81 N.E.2d 70 (1948) ; Stone v. Hutchison, 272 S.W.2d 424 (Tex. Ct. of Civ. App. 1954); Leven v. Schulman, 178 Misc. 763, 36 N.Y.S.2d 547 (Sup. Ct. New York County 1942) ; Young v. J.M. Hickerson, Inc., 9 Misc. 2d 932, 170 N.Y.S.2d 168 (1st Dep't 1957) ; Hearst Corp. v. Shopping Ctr. Network, Inc., 307 F. Supp. 551 (S.D.N.Y. 1969) . Cf. Warner Bros. v. Columbia Broad. Sys., Inc., 216 F.2d 945 (9th Cir. 1954) , cert. denied , 348 U.S. 971, 75 S. Ct. 532, 99 L. Ed. 756 (1955) .

(n40)Footnote 37. See Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc., 944 F.2d 1446, 1451 n.2 (9th Cir. 1991) (Treatise cited) . Cf. Roy Export Co. Establishment v. Columbia Broad. Sys., Inc., 672 F.2d 1095 (2d Cir. 1982) , cert. denied, 459 U.S. 826, 103 S. Ct. 60, 74 L. Ed. 2d 63 (1982) , which approved the principle stated in the text but, nevertheless, held that common law copyright was preserved in an underlying work, even after it was incorporated in a derivative work for which statutory copyright as an unpublished work was obtained. Id. at 1101 n.13 .

(n41)Footnote 38. See Overview supra .

(n42)Footnote 39. See § 7.13[A] supra . Page 31 2 Nimmer on Copyright § 7.16

(n43)Footnote 40. See § 7.13[B] supra . For the same rule as to decennial works created on or after January 1, 1978, see § 7.16[A][1] supra .

(n44)Footnote 41. The PRO IP Act added that word in 2008, to clarify that this section has no application to criminal prosecutions. See § 15.07[C][1] infra .

(n45)Footnote 42. 17 U.S.C. § 411(a) . For non-infringement claims, see § 7.16[B][1][b] infra . It has been held that failure to include the copyright registration number in the complaint is no basis for dismissal. See Lyons v. Gillette, 882 F. Supp. 2d 217, 229-230 (D. Mass. 2012) . Albeit unnecessary to that holding, plaintiff subsequently notified the court of that missing number. Id.

(n46)Footnote 43. See § 7.16[B][1][b] infra .

(n47)Footnote 44. Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003) (Treatise cited) , cert. denied , 543 U.S. 816, 125 S. Ct. 54, 160 L. Ed. 2d 23 (2004) . See Lennon v. Seaman, 63 F. Supp. 2d 428, 432 (S.D.N.Y. 1999) (no jurisdiction over "claims of infringement of copyrights in items the existence of which [plaintiff] has not yet discovered"). One court refused to carve out an exception to the registration requirement when the failure to register stemmed from defendant's retention of the only copy of plaintiff's manuscript. Dodd v. Fort Smith Special Sch. Dist. No. 100, 666 F. Supp. 1278, 1282 (W.D. Ark. 1987) . Although this case granted plaintiff relief on another basis, query whether a court could invoke a judicial exception to the registration requirement in such unusual circumstances analogous to the recordation exception described in § 12.08 infra .

(n48)Footnote 45. See Tuff-N-Rumble Mgmt., Inc. v. Sugarhill Music Publ'g Inc., 49 F. Supp. 2d 673, 677 (S.D.N.Y. 1999) ; 75 F. Supp. 2d 242, 245 (S.D.N.Y. 1999) . The oddity of that holding denying jurisdiction is that the court had just listed the registration number for the composition on which plaintiff premised suit, which was apparently the same one about which defendant counter-complained! 49 F. Supp. 2d at 677 . Evidently, that particular certificate was a forgery. 99 F. Supp. 2d 450, 454 (S.D.N.Y. 2000) .

(n49)Footnote 46. Healthcare Affiliated Servs., Inc. v. Lippany, 701 F. Supp. 1142, 1150 n.1 (W.D. Pa. 1988) (Treatise cited) ; New York Times Co. v. Star Co., 195 F. 110 (S.D.N.Y. 1912) ; New York Times Co. v. Sun Printing & Publ'g Ass'n, 204 F. 586 (2d Cir. 1913) , cert. denied , 234 U.S. 758, 34 S. Ct. 676, 58 L. Ed. 1579 (1914) . But cf. Association of Am. Medical Colls. v. Carey, 482 F. Supp. 1358 (N.D.N.Y. 1980) , holding that infringement of unregistered works may be enjoined where equity so requires.

(n50)Footnote 47. Section 13 of the 1909 Act required registration before "an action or proceeding ... for infringement of copyright." See § 7.16[B][6][a] infra .

(n51)Footnote 48. Ebeling & Reuss, Inc. v. A. Raymond Raff, 28 U.S.P.Q. 366 (E.D. Pa. 1934) . See § 15.04 infra .

(n52)Footnote 49. See H. Rep., p. 157; Reg. Supp. Rep., p. 124.

(n53)Footnote 50. See § 8D.06[A][2] infra .

(n54)Footnote 51. See 17 U.S.C. § 411(a) . One court denied as untimely plaintiff's attempt to avoid registration through belatedly pleading violation of these artists' rights. See Giddings v. Vision House Prod., Inc., 584 F. Supp. 2d 1222, 1226 (D. Ariz. 2008) .

(n55)Footnote 52. See § 12A.18[B] infra .

(n56)Footnote 53. Assuming the contrary is DSMC, Inc. v. Convera Corp., 273 F. Supp. 2d 14, 24 (D.D.C. 2002) , rev'd on other grounds , 349 F.3d 679 (D.C. Cir. 2003) .

(n57)Footnote 54. See § 7.16[B][6][a] infra . Page 32 2 Nimmer on Copyright § 7.16

(n58)Footnote 55. 17 U.S.C. § 411(a) .

(n59)Footnote 56. See § 7.16[B][3] infra .

(n60)Footnote 56.1. See Corwin v. Quinonez, 858 F. Supp. 2d 903, 908 (N.D. Ohio 2012) ; Woodfords Family Servs., Inc. v. Casey, 832 F. Supp. 2d 88, 94 (D. Me. 2011) . The statutory command is limited to any "civil action for infringement of the copyright ..." 17 U.S.C. § 411(a) . See § 7.16[A][1][a] supra .

(n61)Footnote 57. 17 U.S.C. § 411(a) (1998) .

(n62)Footnote 58. Because all foreign works are exempt from the registration requirement, the dictum is erroneous that non-registration can be invoked only by Berne Convention claimants. See Kuklachev v. Gelfman, 600 F. Supp. 2d 437, 473 (E.D.N.Y. 2009) . Defendant in that case reasoned that the materials copied must qualify as "United States works," given that "their only opportunity to copy plaintiffs' works was in the United States." Id. at 474 . The court properly rejected that construction as without support in law or logic. Id .

(n63)Footnote 59. See § 12A.02 infra .

(n64)Footnote 60. 17 U.S.C. § 101 (definition of "United States work"), P 1(A).

(n65)Footnote 61. Id . P 1(C). On the definition of "treaty party" concurrently added by the Digital Millennium Copyright Act, see § 5.07[B] supra .

(n66)Footnote 62. 17 U.S.C. § 101 , P 1(B).

(n67)Footnote 63. See Appendix 20 infra .

(n68)Footnote 64. 17 U.S.C. § 101 , P 1(D).

(n69)Footnote 65. Id .

(n70)Footnote 66. Id . P 2.

(n71)Footnote 67. Id .

(n72)Footnote 68. Id . P 3.

(n73)Footnote 69. Id .

(n74)Footnote 70. See Berne Convention (Paris text), art. 5(4) (defining "country of origin"), reproduced at § 5.08[B] N. 22 supra .

(n75)Footnote 71. "A work shall be considered as having been published simultaneously in several countries if it has been published in two or more countries within thirty days of its first publication." Berne Convention (Paris text), art. 3(4).

(n76)Footnote 72. Elsewhere, U.S. copyright law follows Berne norms by likewise affording a 30-day grace period. See §§ 5.08[A] -5.08[B] supra .

(n77)Footnote 73. See § 9A.04[A][2] N. 109 infra . For more on this theme, see § 7.16[B][6][d] infra .

(n78)Footnote 74. See § 7.16[B][6][d] infra . As noted there, an earlier version of this provision incorporated an explicit 30-day leeway. Page 33 2 Nimmer on Copyright § 7.16

(n79)Footnote 74.1. See § 7.16[B][6][e] infra .

(n80)Footnote 75. This situation stands in contrast to § 7.16[B][1][b][ii] supra .

(n81)Footnote 76. The terminology is peculiar in that nowhere else does the Copyright Act classify works in this manner. A sound recording is defined as the fixation of "sounds" (see § 2.10[A] supra ), but what of a musical work, or, indeed, even a literary work, that is capable of being read aloud? Those too may be said to consist of sounds. An audiovisual work (including motion pictures) is defined as consisting of "a series of related images" (see § 2.09[A] supra ), but what of pictorial, graphic and sculptural works, and pantomimes and choreographic works, that may also be said to consist of images?

(n82)Footnote 77. See § 1.08[C][2] supra .

(n83)Footnote 78. 17 U.S.C. § 411(c) .

(n84)Footnote 79. 17 U.S.C. § 411(c)(2) .

(n85)Footnote 80. 17 U.S.C. § 411(c)(2) . See § 7.16[B][1][b][ii] supra . Until its amendment in 1988 (carried through by the later amendment in 1998), the obligation to register within three months was absolute as to all claimants, foreign and domestic alike. See § 7.16[B][6][b] supra . Although the Senate bill of the BCIA would have eliminated the general registration requirement as a prerequisite to filing suit, that bill left intact the instant section dealing with works consisting of sound and images, albeit altering the registration requirement to one of notice upon the infringer according to regulations to be promulgated by the Register of Copyrights. S. 1301, § 9(b)(1); S. Rep. (BCIA), pp. 30-38. Given the Senate's belief that registration is a proscribed formality, it is unclear why the Senate believed that notice pursuant to regulation would pass muster under the Berne Convention. See S. Rep. (BCIA), p. 46.

(n86)Footnote 81. Football Ass'n Premier League v. YouTube, Inc., 633 F. Supp. 2d 159, 165 (S.D.N.Y. 2009) (Treatise cited) . This case holds that those foreigners may even recover statutory damages without the necessity to register their works. See § 7.16[C][1][a][iv] infra .

(n87)Footnote 82. 17 U.S.C. § 411(b)(1) . See 37 C.F.R. § 201.22 . Note that the 48-hour requirement represents a 1997 liberalization, as explained in the text below.

(n88)Footnote 83. See Orth-O-Vision, Inc. v. Home Box Office, 474 F. Supp. 672 (S.D.N.Y. 1979) ; National Football League v. Cousin Hugo's, Inc., 600 F. Supp. 84 (E.D. Mo. 1984) (preliminary injunction); National Football League v. Rondor, Inc., 840 F. Supp. 1160 (N.D. Ohio 1993) ; Pacific & S. Co. v. Satellite Broad. Networks, Inc., 694 F. Supp. 1565, 1568 (N.D. Ga. 1988) , rev'd , 940 F.2d 1467 (11th Cir. 1991) ; Pacific & S. Co. v. Duncan, 220 U.S.P.Q. 859 P 25,421 (N.D. Ga. 1982) ; Georgia Television Co. v. TV News Clips, Inc., 718 F. Supp. 939, 944 & n.2 (N.D. Ga. 1989) .

(n89)Footnote 84. H. Rep., p. 157. For an analysis of this provision, see Yeldell, Copyright Protection for Live Sports Broadcasts: New Statutory Weapons with Constitutional Problems , 31 Fed. Comm. L.J. 277 (1981) .

(n90)Footnote 85. Act of Nov. 13, 1997, Pub. L. 105-80 , Sec. 6, 111 Stat. 1529 , amending 17 U.S.C. § 411(b)(1) . Note that, in 2008, a later amendment recodified 17 U.S.C. § 411(b)(1) as 17 U.S.C. § 411(c)(1) . See § 15.07[C][1] infra .

(n91)Footnote 86. See 17 U.S.C. § 411(b)(1) (1976) ("not less than ten days or more than thirty days before such fixation").

(n92)Footnote 87. H.R. Rep. No. 105-25, 105th Cong., 1st Sess. 16 (1997).

(n93)Footnote 88. Until passage of the PRO IP Act in 2008, the provision in question was 17 U.S.C. § 411(b) . See Page 34 2 Nimmer on Copyright § 7.16

§ 15.07[C][1] infra . All references herein have been altered, in order to avoid confusion with the new 17 U.S.C. § 411(b) added by that 2008 amendment. See § 7.20[B][2] supra .

(n94)Footnote 89. H. Rep., p. 157.

(n95)Footnote 90. See § 7.17[E][2] infra .

(n96)Footnote 91. See § 2.03[B] supra . Unfixed musical performances are protected by something akin to copyright. See § 8E.03[B][2] infra . To the extent that a vehicle develops to register those performances, it could be crafted to extend to the instant posture as well. See § 7.16[I] infra .

(n97)Footnote 92. See § 7.16[B][1][a] supra . See also § 7.16[C][1][c] infra .

(n98)Footnote 92.1. See National Football League v. McBee & Bruno's, Inc., 792 F.2d 726, 732-733 (8th Cir. 1986) ("it would subvert the Congressional goal" to treat Section 411(c) as mandatory). Some cases have applied the Section 411(c) notice requirement despite the fact that the action was filed after the transmission fixation--but only on the issue whether plaintiff could invoke the Section 411(c) exception to the Section 412(1) provision that statutory damages may be awarded only if registration occurs prior to infringement. See Pacific & S. Co. v. Duncan, 572 F. Supp. 1186 (N.D. Ga. 1983) , aff'd , 744 F.2d 1490 (11th Cir. 1984) , cert. denied , 471 U.S. 1004, 105 S. Ct. 1867, 85 L. Ed. 2d 161 (1985) ; NBC Subsidiary (KCNC-TV), Inc. v. Broadcast Info. Servs., Inc., 717 F. Supp. 1449, 1453-1454 (D. Colo. 1988) .

(n99)Footnote 93. Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 808 F. Supp. 2d 634, 640 (S.D.N.Y. 2011) (previous paragraph of Treatise quoted).

(n100)Footnote 94. Act of April 27, 2005, Pub. L. 109-9, 119 Stat. 218 , Sec. 101.

(n101)Footnote 95. See § 15.06[B] infra .

(n102)Footnote 96. 17 U.S.C. § 506(a)(3) . See § 15.06[B][2] infra .

(n103)Footnote 97.

For example, today, any basement can become a top-of-the-line recording studio, so the law and Copyright Office regulations must reflect the realities of the fast-paced creative entertainment businesses. Unauthorized prereleases are unfair to an artist because his or her song is circulating even before it is in its final form. Just as we edit letters and speeches, we must allow songwriters to tweak and refine their works. They deserve to have the tools to penalize those who thrive on the ability to leak a song or CD before it is available in stores or other legitimate avenues of commerce. 151 Cong. Rec. H2114 (daily ed. Apr. 19, 2005) (Statement of Rep. Berman).

(n104)Footnote 98. See § 7.16[C][4] infra .

(n105)Footnote 99. As subsequently amended by the PRO IP Act, the phrase now refers to "no civil action for infringement ... . " See § 15.07[C][1] infra .

(n106)Footnote 100. 17 U.S.C. § 411(a) (2005) (emphasis added).

(n107)Footnote 101. 17 U.S.C. § 408(f)(1) (2005) .

(n108)Footnote 102. Those regulations are designed to "permit preregistration for any work that is in a class of works that the Register determines has had a history of infringement prior to authorized commercial distribution." 17 U.S.C. § 408(f)(2) (2005) . "The Committee believes that a class of work with only a few instances of infringement prior Page 35 2 Nimmer on Copyright § 7.16

to authorized commercial distribution do [sic] not meet the test of a 'history of infringement,' but otherwise leaves the decision to the discretion of the Register." H. Rep. (FECA) p. 4.

(n109)Footnote 103. 17 U.S.C. § 408(f)(3) (2005) .

(n110)Footnote 104. 17 U.S.C. § 408(f)(4)(B) (2005) .

(n111)Footnote 105. 17 U.S.C. § 408(f)(4)(A) (2005) .

(n112)Footnote 106. 17 U.S.C. § 408(f)(4) (2005) .

(n113)Footnote 107.

By its express terms, the prohibition on infringement suits contained in § 408(f)(4) does not apply to suits concerning infringements commencing later than 2 months after first publication of a copyrighted work that had been preregistered with the Copyright Office. Therefore, notwithstanding a failure to meet the deadlines set forth in § 408(f)(4)(A) and (B), a copyright owner of a preregistered work can register his or her work under current law and bring infringement actions for infringements occurring more than 2 months after first publication. H. Rep. (FECA) p.5.

(n114)Footnote 108. According to one legislator, "The civil enforcement said [sic] of the pre-release provision imposes a statute of limitations on certain copyright lawsuits. Because it imposes the limit only for infringements that occur no more than two months after pre-registered content is first distributed, it is clear that the bill does not impose any time limit on filing lawsuits for infringements that occur more than two months after distribution." 151 Cong. Rec. H2119 (daily ed. Apr. 19, 2005) (Statement of Rep. Conyers).

(n115)Footnote 109. 17 U.S.C. § 408(f)(3) (2005) . The legislative history makes the further point that "a preregistration of a sound recording does not by itself constitute preregistration of the musical works embodied in the sound recording. Accordingly, a later infringement of a musical work contained in a preregistered sound recording would not be subject to the dismissal provision in § 408(f)(4) based on the preregistration of the sound recording." H. Rep. (FECA) p.5. That perspective is in tension with the statutory provision that it is irrelevant under which category a copyrightable work is registered. 17 U.S.C. § 408(c)(1) . See §§ 2.03[F] supra , 7.18[C][3] infra . Query whether the differences between pre-registration and actual registration suffice to dissipate any contradiction.

(n116)Footnote 110. One of the last ones is SimplexGrinnell, LP v. Integrated Sys. & Power, Inc., 642 F. Supp. 2d 167, 188 (S.D.N.Y. 2009) , recons. denied on point , 642 F. Supp. 2d 206, 208-209 (S.D.N.Y. 2009) , which relies on Second Circuit authority later reversed by the Supreme Court. See § 7.16[B][2][c] infra .

(n117)Footnote 111. 28 U.S.C. § 1338(a) . See § 12.01[A][1] infra .

(n118)Footnote 112. See Appendix 9 infra .

(n119)Footnote 113. Kontrick v. Ryan, 540 U.S. 443, 456, 124 S. Ct. 906, 157 L. Ed. 2d 867 (2004) . This case ruled that defenses made available by the time limitations of federal bankruptcy rules may be forfeited. Id. at 458-460 . It concluded that those rules may be "unalterable on a party's application" but "can nonetheless be forfeited if the party asserting the rule waits too long to raise the point." Id . As such, the Court determined them to be inflexible claim-processing rules rather than pre-requisites to subject-matter jurisdiction.

(n120)Footnote 114. Id. at 455 . The problem is compounded inasmuch as courts "have more than occasionally used the term 'jurisdictional' to describe emphatic time prescriptions in rules of court." Id. at 454 .

(n121)Footnote 115. The Supreme Court has copped to being "less than meticulous" in its use of the word Page 36 2 Nimmer on Copyright § 7.16

"jurisdictional." Id. at 454 , citing United States v. Robinson, 361 U.S. 220, 80 S. Ct. 282, 4 L. Ed. 2d 259 (1960) .

(n122)Footnote 116. The evocative language is to condemn "drive-by jurisdictional rulings." Steel Co. v. Citizens for Better Environment, 523 U.S. 83, 91, 118 S. Ct. 1003, 140 L. Ed. 2d 210 (1998) . The Court has determined that such rulings "should be accorded no precedential effect." Arbaugh v. Y & H Corp., 546 U.S. 500, 511, 126 S. Ct. 1235, 163 L. Ed. 2d 1097 (2006) .

(n123)Footnote 117. The Supreme Court attempted to provide further clarity to "jurisdiction" in Eberhart v. United States, 546 U.S. 12, 126 S. Ct. 403, 163 L. Ed. 2d 14 (2005) (per curiam ), but the disputing judges in the Second Circuit copyright case to be treated momentarily derived contradictory lessons from it.

(n124)Footnote 118. 533 U.S. 483, 519, 121 S. Ct. 2381, 150 L. Ed. 2d 500 (2001) .

(n125)Footnote 119. See § 10.02[D][2] infra .

(n126)Footnote 120. In re Literary Works in Elec. Databases Copyright Litig., 509 F.3d 116, 119 (2d Cir. 2007) . For the Supreme Court's later reversal, see § 7.16[B][2][c] infra .

(n127)Footnote 121. Id. at 120 . A certain number of freelancers opposed the settlement. Those Objectors maintained that the class did not adequately represent their interests, as evidenced by the fact that they might recover zero out of the settlement. At that point, the remaining plaintiffs, together with defendants, made the argument that raised the purported jurisdictional defect to the fore:

Defendants responded that Category C claimants [those with unregistered or belatedly registered works] were adequately represented and treated fairly because their claims were essentially worthless. In justifying the C-reduction, defendants renewed their jurisdictional argument, urging that Category C claims mainly concerned "works in which [the] copyright had never been registered, and which were not, therefore, within the court's subject matter jurisdiction." Somewhat similarly, plaintiffs maintained that "freelance authors typically did not register their works and thus lacked standing to bring an infringement action."

509 F.3d at 120 .

(n128)Footnote 122. Implicated here would be such questions as whether, to certify a class, it is sufficient that the named plaintiffs satisfy the registration requirement; whether different standards govern certification of a class for settlement than for pursuing litigation; and whether, as long as there is subject matter jurisdiction over the claims brought by the named plaintiffs via registration, then supplemental jurisdiction exists over the rest of the class members.

(n129)Footnote 123. The issue concerns only American freelancers, inasmuch as the registration pre-requisite is limited to domestic copyright holders. See § 7.16[B][1][b][ii] supra . Therefore, foreign freelancers may join the class action under any view of the law. 509 F.3d at 121 n.1 .

(n130)Footnote 124. 509 F.3d at 129 (Walker, J., dissenting) (emphasis original).

(n131)Footnote 125. Id. at 129-130 . The provision in question states that "no 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." 17 U.S.C. § 411(a) .

(n132)Footnote 126. See § 7.16[B][3][a] infra .

(n133)Footnote 127. 509 F.3d at 130 , quoting 17 U.S.C. § 411(a) (quotation marks omitted). "Indeed, under § 411(a), district courts' jurisdiction is not disturbed by the denial of registration or by the Register's failure, in that event, Page 37 2 Nimmer on Copyright § 7.16

to become a party to the litigation." 509 F.3d at 130 .

(n134)Footnote 128. Id. at 132 . See § 7.16[B][1][b] supra .

(n135)Footnote 129. 509 F.3d at 130 .

(n136)Footnote 130. Further clouding the procedural posture is that both Judge Walker and one member of the majority, Judge Winter, realized midway through the proceedings that, as authors of law review articles and the like, they formed part of the plaintiff class. Accordingly, they inquired of the Committee on Codes of Conduct of the Judicial Conference of the United States whether they should recuse themselves. That Committee recommended such recusal. Nonetheless, in an opinion published directly following the copyright opinion in the bound volume, both judges decided to remain on the case. In re Literary Works in Elec. Databases Copyright Litig., 509 F.3d 136, 139 n.1 (2d Cir. 2007) . Given that the two ended up canceling out each other's votes, it scarcely seems that any prejudice could have resulted. Later, however, things got even stranger with this panel's ruling. See In re Literary Works in Elec. Databases Copyright Litig., 654 F.3d 242 (2d Cir. 2011) , discussed in § 7.16[B][2][c] supra .

(n137)Footnote 131. Neither opinion adopted the parties' position that "§ 411(a) is merely the plaintiff's ticket to court, that once stamped, allows him to raise all sorts of claims arising from unregistered copyrights." 509 F.3d. at 123 (internal quotation marks omitted). Arguably, a footnote from another circuit's opinion supports that construction: "Once a court has jurisdiction over an action for copyright infringement under section 411, the court may grant injunctive relief to restrain infringement of any copyright, whether registered or unregistered." Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1154 n.1 (9th Cir. 2007) . Assuming that snippet to represent a broad approach, the Second Circuit expressly declined to follow it. See 509 F.3d at 123 (referencing identical language from earlier superseded version, 487 F.3d 701, 710 n.1 (9th Cir. 2007) ).

(n138)Footnote 132. 509 F.3d at 124 n.5 , 125 n.6.

(n139)Footnote 133. "Whether this requirement is jurisdictional is not up for debate in this Circuit. On two recent occasions, we have squarely held that it is." Id. at 121 , citing Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 114, 115 (2d Cir. 2003) ; Morris v. Bus. Concepts, Inc., 259 F.3d 65, 72, 73 (2d Cir. 2001) .

(n140)Footnote 134. See N. 115 supra . Here is another example: " 'Jurisdiction,' this Court has observed, 'is a word of many, too many, meanings.' This Court, no less than other courts, has sometimes been profligate in its use of the term." Arbaugh v. Y & H Corp., 546 U.S. 500, 510, 126 S. Ct. 1235, 163 L. Ed. 2d 1097 (2006) .

(n141)Footnote 135. It is to be noted that both Well-Made Toy and Morris pre-date 2004.

(n142)Footnote 136. Coleman v. Newburgh Enlarged City Sch. Dist., 503 F.3d 198, 203 (2d Cir. 2007) . The author of that opinion was the dissenter in the current copyright case.

(n143)Footnote 137. Admittedly, the "critical difference between a rule governing subject-matter jurisdiction and an inflexible claim-processing rule" is scarcely self-defining. Still, the registration pre-requisite for suit to proceed, with its multiple twists and turns catalogued above, does seem far closer to a processing rule than a "prescription delineating the classes of cases ... falling within a court's adjudicatory authority," which is how the Supreme Court characterizes "subject-matter jurisdiction." See § 7.16[B][2][a] supra .

(n144)Footnote 138. Quoting from one of the Supreme Court cases referenced above, another court from the same era notes: "If the Legislature clearly states that a threshold limitation on a statute's scope shall count as jurisdictional, then courts and litigants will be duly instructed and will not be left to wrestle with the issue. But when Congress does not rank a statutory limitation on coverage as jurisdictional, courts should treat the restriction as nonjurisdictional in character." Litecubes, LLC v. N. Light Prods., 523 F.3d 1353, 1362 (Fed. Cir.) , cert. denied , 555 U.S. 1013, 129 S. Ct. 578, 172 L. Ed. 2d 432 (2008) . Page 38 2 Nimmer on Copyright § 7.16

(n145)Footnote 139. __ U.S. __, 130 S. Ct. 1237, 176 L. Ed. 2d 18 (2010) . Disclosure should be made that this writer served as co-counsel before the Supreme Court on behalf of the prevailing petitioner.

(n146)Footnote 140. Justice Sotomayor, who had issued the original Tasini decision while sitting as a district court judge, did not participate in the later Supreme Court ruling. There were therefore five justices in the majority, and three concurring. The concurrence primarily addresses tension between the Court's previous jurisdictional holdings, in an aim "to stave off continuing controversy over what qualifies as 'jurisdictional' ..." Id. at 1250 (Ginsburg, J., concurring).

(n147)Footnote 141. Granted, the second sentence contains that term in passing:

The Register may, at his or her option, become a party to the [copyright infringement] action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, but the Register's failure to become a party shall not deprive the court of jurisdiction to determine that issue."

17 U.S.C. § 411(a) (emphasis added). But the Court explained that Congress added that sentence only to clarify

that a federal court can determine "the issue of registrability of the copyright claim" even if the Register does not appear in the infringement suit. That clarification was necessary because courts had interpreted § 411(a)'s precursor provision, which imposed a similar registration requirement, as prohibiting copyright owners who had been refused registration by the Register of Copyrights from suing for infringement until the owners first sought mandamus against the Register. See Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637, 640-641 (2d Cir. 1958) (construing § 411(a)'s precursor). The 1976 amendment made it clear that a federal court plainly has adjudicatory authority to determine " that issue," § 411(a) (emphasis added)-- i.e ., the issue of registrability --regardless of whether the Register is a party to the infringement suit. The word "jurisdiction," as used here, thus says nothing about whether a federal court has subject-matter jurisdiction to adjudicate claims for infringement of unregistered works.

130 S. Ct. at 1245 (emphases original, footnote omitted).

(n148)Footnote 142. See § 7.16[B][1][b] supra .

(n149)Footnote 143. 130 S. Ct. at 1246 .

(n150)Footnote 144. 28 U.S.C. § 1338(a) . See § 12.01[A][1] infra .

(n151)Footnote 145. 130 S. Ct. at 1247 . The opinion singles out for disapproval eight decisions that affixed the jurisdictional label to copyright registration. Id. at 1243 & n.2: Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 114-115 (2d Cir. 2003) ; Morris v. Business Concepts, Inc., 259 F.3d 65, 72-73 (2d Cir. 2001) ; La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1200-1201 (10th Cir. 2005) ; Positive Black Talk Inc. v. Cash Money Records Inc., 394 F.3d 357, 365 (5th Cir. 2004) ; Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283 (4th Cir. 2003) ; Murray Hill Publications, Inc. v. ABC Communications, Inc., 264 F.3d 622, 630 & n. 1 (6th Cir. 2001) ; Brewer-Giorgio v. Producers Video, Inc., 216 F.3d 1281, 1285 (11th Cir. 2000) ; Data Gen. Corp. v. Grumman Systems Support Corp., 36 F.3d 1147, 1163 (1st Cir. 1994) .

(n152)Footnote 146. 130 S. Ct. at 1251 (Ginsburg, J., concurring). See § 17.16[B][2][a] N. 116 supra .

(n153)Footnote 147. See § 12.01[A] infra . Page 39 2 Nimmer on Copyright § 7.16

(n154)Footnote 148. Of course, one option was to register the unregistered works. But, given the magnitude of works involved, such registration could be a massive undertaking, not financially warranted even by a multi-million dollar settlement.

(n155)Footnote 149. 509 F.3d at 136 n.5 (Walker, J., dissenting).

(n156)Footnote 150. The Court's earlier ruling seems to have contemplated the type of global settlement that the Second Circuit majority later threw out: "The parties (Authors and Publishers) may enter into an agreement allowing continued electronic reproduction of the Authors' works; they, and if necessary the courts and Congress, may draw on numerous models for distributing copyrighted works and remunerating authors for their distribution." Tasini, 533 U.S. at 505 .

(n157)Footnote 150.1. See In re Literary Works in Elec. Databases Copyright Litig., 654 F.3d 242 (2d Cir. 2011) .

(n158)Footnote 150.2.

We agree with objectors that the interests of class members who hold only Category C claims fundamentally conflict with those of class members who hold Category A and B claims. Although all class members share an interest in maximizing the collective recovery, their interests diverge as to the distribution of that recovery because each category of claim is of different strength and therefore commands a different settlement value. Named plaintiffs who hold other combinations of claims had no incentive to maximize the recovery for Category C-only plaintiffs, whose claims were lowest in settlement value but eclipsed all others in quantity. The interests of Category C-only plaintiffs could be protected only by the formation of a subclass and the advocacy of independent counsel. Id. at 254 .

(n159)Footnote 150.3. Id. at 267 (Straub, J., dissenting in part, concurring in part). The settling class consisted 99% of unregistered works, the so-called "Category C claims." Id. at 262 . Because unregistered claimants may not maintain an infringement suit, even after Muchnick , the precondition for their moving forward was "to expend energy to complete the registration process as well as pay $30 to properly register each of their unregistered works." Id. Their belated registration would not entitle them to the presumptions that flow from timely registration, meaning that, "at trial, claimants holding unregistered works would have to prove originality, copyrightability, and compliance with statutory formalities--a costly, and perhaps losing, exercise that other claimants could forego." Id. See § 7.16[D] infra .

(n160)Footnote 151. "We also decline to address whether § 411(a)'s registration requirement is a mandatory precondition to suit that ... district courts may or should enforce sua sponte by dismissing copyright infringement claims involving unregistered works." Reed Elsevier, 130 S. Ct. at 1249 .

(n161)Footnote 152. One opinion, issued after the grant of certiorari in Reed Elsevier v. Muchnick but before the decision issued, remarked that "courts enforce mandatory (though nonjurisdictional) rules--even if the parties do not raise them--in a variety of ways." Brooks-Ngwenya v. Indianapolis Pub. Schs., 564 F.3d 804, 808 (7th Cir. 2009) .

(n162)Footnote 153. If the case is by a single plaintiff, then no issue of ranking arises. To the extent that she has registered the work, suit may proceed; to the extent that she has not even applied to register, then suit may not proceed, even if the requirement is only one of mandatory claims processing (not jurisdiction). The same considerations apply to suit by a group of plaintiffs.

It is only when we reach the class action posture that the instant dimensions unfold. Each of the named plaintiffs may possess registered copyrights, but the class as a whole may include unregistered works. The question thus arises whether the district court's jurisdiction extends to the claims of all. If registration is viewed as jurisdictional, then the class fails. But the Court's decision in Reed Elsevier v. Muchnick forestalls that result. Page 40 2 Nimmer on Copyright § 7.16

(n163)Footnote 154. See § 7.16[B][3][b][v] infra .

(n164)Footnote 154.1. See § 7.16[B][3] supra .

(n165)Footnote 154.2. See Johnson v. Cypress Hill, 641 F.3d 867 (7th Cir. 2011) .

(n166)Footnote 154.3. Id. at 870 .

(n167)Footnote 154.4. See § 2.10[B] supra . Nonetheless, plaintiff asked for "a staggering $29,000,000 in relief." 641 F.3d at 870 .

(n168)Footnote 154.5. See § 8C.03 infra .

(n169)Footnote 154.6. 641 F.3d at 872 . Affirming that procedural ruling, the Seventh Circuit called plaintiff's request "the sort of switcheroo we have counseled against." Id. at 873 .

(n170)Footnote 154.7. See § 12.07 infra .

(n171)Footnote 154.8. 641 F.3d at 874 . He urged the same position in maintaining that the district court had no jurisdiction to award attorney's fees against him under the Copyright Act, again without success. Id. at 873

(n172)Footnote 154.9. Specifically, after plaintiff filed his state complaint, defendant removed the matter to federal court--which dismissed the case as a re-litigation of the same facts. Id. at 874 .

(n173)Footnote 155. See § 7.18[E] infra .

(n174)Footnote 155.1. See Aurora World, Inc. v. Ty Inc., 719 F. Supp. 2d 1115, 1130 & n.35 (C.D. Cal. 2009) (not enough to show placing of elements in the mail).

(n175)Footnote 156. 17 U.S.C. § 410(d) . See § 7.18[E] infra . Note that, after the anthrax scare which punctuated 9/11, "the Copyright Office enacted regulations to address the situation when postal or other communication services are disrupted, requiring backdating the date of receipt of applications to the date on which they otherwise would have been received." Iconbazaar, L.L.C. v. America Online, Inc., 308 F. Supp. 2d 630, 634 n.4 (M.D.N.C. 2004) , citing 37 C.F.R. § 201.8 .

(n176)Footnote 157. H. Rep., p. 157.

(n177)Footnote 158. See § 7.16[B][1][a] supra .

(n178)Footnote 159. 17 U.S.C. § 411(a) .

(n179)Footnote 160. For the comparable feature under the 1909 Act, see § 7.16[B][6][a] N. 345 infra .

(n180)Footnote 161. By contrast to such refusal, if the Register consents to issue a certificate, but does so under an applicant's false pretenses as to a material fact, then the infringement action may be barred on a different basis. See § 7.20[B] infra . This result stems from the doctrine that a plaintiff seeking relief must come to court with clean hands. See § 13.09[B] infra .

(n181)Footnote 162. 17 U.S.C. § 411(a) . It continues: "The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, but the Register's failure to become a party shall not deprive the court of jurisdiction to determine that issue." Id . Page 41 2 Nimmer on Copyright § 7.16

In one case, the Register refused to grant a certificate for individual prices, at which point plaintiff withdrew the application and registered instead a database of all prices. New York Mercantile Exch., Inc. v. IntercontinentalExchange, Inc., 389 F. Supp. 2d 527, 538-539 (S.D.N.Y. 2005) . Plaintiff argued that it did not need to supply notice to the Register on the basis that its initial application was withdrawn, not refused. Id. at 539 n.9 . That issue dropped out of the case, however, by stipulation of the parties--at which point plaintiff lost on the merits. See § 3.04[B][2][c] supra (individual numbers not copyrightable). The Second Circuit later affirmed the defense judgment, based on the merger doctrine. 497 F.3d 109, 118 (2d Cir. 2007) , cert. denied , 552 U.S. 1259, 128 S. Ct. 1669, 170 L. Ed. 2d 357 (2008) .

(n182)Footnote 163. In re Literary Works in Elec. Databases Copyright Litig., 509 F.3d 116, 131 n.1 (2d Cir. 2007) (Walker, J., dissenting) (Treatise quoted), rev'd sub nom . Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 130 S. Ct. 1237, 176 L. Ed. 2d 18 (2010) ; Precision Automation, Inc. v. Technical Servs., Inc., 628 F. Supp. 2d 1244, 1247 (D. Or. 2008) (Treatise quoted) .

(n183)Footnote 164. 37 C.F.R. § 205.13 . See Brooks-Ngwenya v. Indianapolis Pub. Schs., 564 F.3d 804, 807 (7th Cir. 2009) . In that case, the Register did not intervene in the case, but granted the plaintiff's renewed application Id. at 808 . Nonetheless, the court ruled that there had been no appropriation of plaintiff's protected expression. Id .

(n184)Footnote 165. Prunte v. Universal Music Group, 484 F. Supp. 2d 32, 40 (D.D.C. 2007) (Treatise quoted) .

(n185)Footnote 166. Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090, 1112 (W.D. Wash. 2004) (Treatise quoted) .

(n186)Footnote 167. See §§ 7.16[C] -7.16[G] infra .

(n187)Footnote 168. In re Napster, Inc. Copyright Litig., 191 F. Supp. 2d 1087, 1101 (N.D. Cal. 2002) .

(n188)Footnote 169. 17 U.S.C. § 410(c) (emphasis added). See La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1203 (10th Cir. 2005) .

(n189)Footnote 170. 17 U.S.C. § 410(a) .

(n190)Footnote 171. 17 U.S.C. § 411(a) . Note that this language was amended in 2008 via the PRO IP Act, which added the word "civil." See § 15.07[C][1] infra .

(n191)Footnote 171.1. Pan-American Products & Holdings, LLC v. R.T.G. Furniture Corp., 825 F. Supp. 2d 664, 701 n.19 (M.D.N.C. 2011) (Treatise quoted) .

(n192)Footnote 172. See Berry v. Penguin Group (USA), Inc., 448 F. Supp. 2d 1202, 1203 (W.D. Wash. 2006) ; Stanislawski v. Jordan, 337 F. Supp. 2d 1103, 1110 (E.D. Wis. 2004) ; Capitol Records, Inc. v. Wings Digital Corp., 218 F. Supp. 2d 280, 284 (E.D.N.Y. 2002) ; Westport Historical Soc'y v. Lee, 43 U.S.P.Q.2d 1858, 1860 (D. Kan. 1997) .

(n193)Footnote 173. U-Neek, Inc. v. Wal-Mart Stores, Inc., 147 F. Supp. 2d 158, 169-170 (S.D.N.Y. 2001) .

(n194)Footnote 174. Tuff-N-Rumble v. Sugarhill Music Publ'g Inc., 49 F. Supp. 2d 673, 677 (S.D.N.Y. 1999) .

(n195)Footnote 175. See § 7.16[B][2][c] supra .

(n196)Footnote 176. Again, this aspect of the court's logic can no longer stand. See § 7.16[B][2][c] supra .

(n197)Footnote 177. Strategy Source v. Lee, 233 F. Supp. 2d 1, 4 (D.D.C. 2002) . Page 42 2 Nimmer on Copyright § 7.16

(n198)Footnote 178. Other cases have concluded, on balance, to follow the registration approach. See KEMA, Inc. v. Koperwhats, 658 F. Supp. 2d 1022, 1028 (N.D. Cal. 2009) ; Lewinson v. Henry Holt and Co., LLC, 659 F. Supp. 2d 547, 559 (S.D.N.Y. 2009) ; Hawaiian Village Computer, Inc. v. Print Mgmt. Partners, 501 F. Supp. 2d 951, 954 (E.D. Mich. 2007) ; Teevee Toons, Inc. v. Overture Records, 501 F. Supp. 2d 964, 967-968 (E.D. Mich. 2007) ; Corbis Corp. v. UGO Networks, Inc., 322 F. Supp. 2d 520, 521 (S.D.N.Y. 2004) ; Loree Rodkin Mgmt. Corp. v. Ross-Simons, Inc., 315 F. Supp. 2d 1053, 1055 (C.D. Cal. 2004) (Treatise cited) ; Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090, 1112 (W.D. Wash. 2004) (Treatise cited) .

(n199)Footnote 179. See Strategy Source v. Lee, 233 F. Supp. 2d 1, 3-4 (D.D.C. 2002) .

(n200)Footnote 180. La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1197-1198 (10th Cir. 2005) .

(n201)Footnote 181. Id. at 1208 . The Tenth Circuit allowed that extrinsic evidence could prove jurisdiction, so that, had plaintiff appealed the evidentiary ruling excluding the Copyright Office's letter as inadmissible hearsay, the case might have gone the opposite way. Id .

(n202)Footnote 182. Id. at 1202-1203 . See RDF Media Ltd. v. Fox Broad. Co., 372 F. Supp. 2d 556, 562 (C.D. Cal. 2005) (district court accepted declaration from counsel that Copyright Office had issued requisite certificates).

(n203)Footnote 183. 416 F.3d at 1208 .

(n204)Footnote 184. Stanislawski v. Jordan, 337 F. Supp. 2d 1103, 1110 (E.D. Wis. 2004) ; DO Denim, LLC v. Fried Denim, Inc., 634 F. Supp. 2d 403, 406 (S.D.N.Y. 2009) .

(n205)Footnote 185. Telerep Caribe, Inc. v. Zambrano, 146 F. Supp. 2d 134, 144 (D.P.R. 2001) . One default case allowed the case to proceed based on an allegation of registration, without providing a copy of the certificate to the court. See EMI April Music Inc. v. Jet Rumeurs, Inc., 632 F. Supp. 2d 619, 622-623 (N.D. Tex. 2008) .

(n206)Footnote 185.1. See Johnson v. Hill, 619 F. Supp. 2d 537, 543 (N.D. Ill. 2008) , aff'd on other grounds , 641 F.3d 867 (7th Cir. 2011) .

(n207)Footnote 186. See Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 387 (5th Cir. 1984) (Treatise cited) ; Iconbazaar, L.L.C. v. America Online, Inc., 308 F. Supp. 2d 630, 633 (M.D.N.C. 2004) (Treatise cited) ; Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 210 F. Supp. 2d 147, 157 (E.D.N.Y. 2002) (Treatise cited) , aff'd , 354 F.3d 112 (2d Cir. 2003) ; Mist-On Sys., Inc. v. Gilley's European Tan Spa, 303 F. Supp. 2d 974, 977 (W.D. Wis. 2002) (Treatise cited) ; Lennon v. Seaman, 63 F. Supp. 2d 428, 432 (S.D.N.Y. 1999) (Treatise cited) ; Dielsi v. Falk, 916 F. Supp. 985, 994 n.6 (C.D. Cal. 1996) (Treatise cited) ; Sebastian Int'l, Inc. v. Consumer Contact Ltd., 664 F. Supp. 909, 912 (D.N.J. 1987) (Treatise cited) , vac'd on other grounds , 847 F.2d 1093 (3d Cir. 1988) ; Wilson v. Mr. Tee's, 855 F. Supp. 679, 682-683 (D.N.J. 1994) (Treatise cited) . See Salerno v. City Univ. of N.Y., 191 F. Supp. 2d 352, 356 (S.D.N.Y. 2001) ; SportsMEDIA Tech, Corp. v. Upchurch, 839 F. Supp. 8, 9 (D. Del. 1993) .

(n208)Footnote 187. Following this view as that of "the leading copyright treatise" is Prunte v. Universal Music Group, 484 F. Supp. 2d 32, 39-40 (D.D.C. 2007) (Treatise cited) .

(n209)Footnote 188. See text accompanying § 7.16[B][3][a] N. 169 supra .

(n210)Footnote 189. 17 U.S.C. § 411(a) (emphases added).

(n211)Footnote 190. 17 U.S.C. § 410(d) (emphasis added). See § 7.18[E] infra .

(n212)Footnote 191. Phoenix Renovation Corp. v. Rodriguez, 403 F. Supp. 2d 510, 514 (E.D. Va. 2005) (Treatise cited) . See § 7.16[B][3][b][vi] infra . Page 43 2 Nimmer on Copyright § 7.16

(n213)Footnote 192. Prunte v. Universal Music Group, 484 F. Supp. 2d 32, 40 (D.D.C. 2007) (Treatise quoted) . See § 7.16[B][3][a] supra .

(n214)Footnote 193. Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 620 (9th Cir. 2010) (Treatise quoted) ; Panoramic Stock Images, Ltd. v. John Wiley & Sons, Inc., 963 F. Supp. 2d 842, 850 (N.D. Ill. 2013) (Treatise quoted) ; Panoramic Stock Images, Ltd. v. McGraw-Hill Cos., 961 F. Supp. 2d 918, 927 (N.D. Ill. 2013) (Treatise cited) . See Phoenix Renovation Corp. v. Rodriguez, 403 F. Supp. 2d 510, 514 (E.D. Va. 2005) .

(n215)Footnote 194. Another court analogizes an application to pre-registration. Penpower Tech. Ltd. v. S.P.C. Tech., 627 F. Supp. 2d 1083, 1091 (N.D. Cal. 2008) . See § 7.16[B][1][b][iv] supra .

(n216)Footnote 195. International Kitchen Exhaust Cleaning Ass'n v. Power Washers of N. Am., 81 F. Supp. 2d 70, 72 & n.17 (D.D.C. 2000) (Treatise cited) . See Pure Country Weavers, Inc. v. Bristar, Inc., 410 F. Supp. 2d 439, 445 (W.D.N.C. 2006) (same result "in the interest of substantial justice and judicial efficiency").

(n217)Footnote 196. Brief of the United States, Reid Elsevier v. Muchnick 4 n.2 (United States Supreme Court, filed June 8, 2009). It makes little sense to delay all cases for the sake of the 1 percent.

(n218)Footnote 197. Loree Rodkin Mgmt. Corp. v. Ross-Simons, Inc., 315 F. Supp. 2d 1053, 1057 (C.D. Cal. 2004) . One case holding that the statute itself "absolutely forecloses" the application approach nonetheless acknowledges the "strong, largely meritorious policy considerations" that weigh in its favor. Patrick Collins, Inc. v. Does 1-26, 843 F. Supp. 2d 565, 568-569 (E.D. Pa. 2011) (Treatise cited) . But it also points out policy considerations cutting in the opposite direction. Id. at 570-571 . The decision is odd, inasmuch as plaintiff in that case failed to satisfy either test, thus rendering moot any need to choose between them. Id. at 570 ("nothing Collins provided indicates that Collins property paid the filing fee or submitted the requisite number of copies of the work" to the Copyright Office).

(n219)Footnote 198. La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1202-1203 (10th Cir. 2005) . See Derminer v. Kramer, 386 F. Supp. 2d 905, 911 (E.D. Mich. 2005) (plaintiff failed to allege jurisdiction under either approach), reh. denied , 406 F. Supp. 2d 756 (E.D. Mich. 2005) .

(n220)Footnote 199. See Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 387 (5th Cir. 1984) .

(n221)Footnote 199.1. 559 U.S. 154, 130 S. Ct. 1237, 176 L. Ed. 2d 18 (2010) .

(n222)Footnote 200. La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005) . The court notes that both camps "are in good company." Id. at 1202-1203 (Treatise cited) . It concedes that the registration approach, "at first glance, has some appeal." Id. at 1204 (Treatise cited) . Nonetheless, it ultimately swings the other way on the admittedly difficult question of what is the best resolution. The opinion notes that Congress' later pre-registration scheme, if made generally applicable, would have solved the current conundrum. Id. at 1206 . See § 7.16[B][1][b][iv] infra .

(n223)Footnote 200.1. See Latin Am. Music Co. v. Media Power Group, Inc., 705 F.3d 34, 43 n.11 (1st Cir. 2013) . This case holds that a certificate of recordation of transfer cannot serve as a substitute for actual registration, as such "recordation of an instrument relating to a work does not indicate that the work itself has been registered ... ." Id. at 43 . See § 7.16[E] infra .

(n224)Footnote 201. See § 7.16[B][3][b][v] infra .

(n225)Footnote 202. See ISC-Bunker Ramo Corp. v. Altech, Inc., 765 F. Supp. 1308, 1309 (N.D. Ill. 1990) .

(n226)Footnote 203. Frankel v. Stein & Day, Inc., 470 F. Supp. 209 (S.D.N.Y. 1979) ; Haan Crafts Corp. v. Craft Masters, Inc., 683 F. Supp. 1234, 1242 (N.D. Ind. 1988) ; Schuchart & Assocs. v. Solo Serve Corp., 1983 Copyright L. Page 44 2 Nimmer on Copyright § 7.16

Rep. (CCH) P 25,593 (W.D. Tex. 1983). See Demetriades v. Kaufmann, 680 F. Supp. 658, 661 (S.D.N.Y. 1988) ; Wales Indus., Inc. v. Hasbro Bradley, Inc., 612 F. Supp. 510, 514 (S.D.N.Y. 1985) ; Joseph J. Legat Architects v. United States Dev. Corp., 601 F. Supp. 673 (N.D. Ill. 1985) .

(n227)Footnote 204. Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 366-367 (5th Cir. 2004) .

(n228)Footnote 205. See Damiano v. Sony Music Entm't, 975 F. Supp. 623, 634-635 (D.N.J. 1996) (refusing to consider belated registration after complaint had been previously dismissed).

(n229)Footnote 206. Query whether subjecting it to a timely complaint, rather than to one barred by the statute of limitations, constitutes such prejudice to defendant. See N. 213 infra .

(n230)Footnote 207. M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1489 & n.6 (11th Cir. 1990) . In Arthur Rutenberg Homes, Inc. v. Drew Homes, Inc., 829 F. Supp. 1314, 1319 (M.D. Fla. 1993) , the court threw out an apparently meritorious claim by a plaintiff who admittedly owned the copyright, but whose rights arose only following registration. The Eleventh Circuit vacated that ruling, adopting the more lenient construction that a party could register based on an unenforceable oral grant, if later cured by a valid writing (even if such cure took place following registration). 29 F.3d 1529, 1532-1533 (11th Cir. 1994) . See Tooker v. Copley, 3 U.S.P.Q.2d (BNA) 1396, 1397 (S.D.N.Y. 1987) . See also N. 218 infra .

(n231)Footnote 208. See § 7.16[B][3][b][ii] supra .

(n232)Footnote 209. Mays & Assocs., Inc. v. Euler, 370 F. Supp. 2d 362, 369 (D. Md. 2005) . See § 7.16[B][3][b][vi] N. 278 infra .

(n233)Footnote 210. 370 F. Supp. 2d at 370 .

(n234)Footnote 211. See § 7.16[C][1] infra .

(n235)Footnote 212. See § 12.05 infra .

(n236)Footnote 213. Imagine that an infringing film is in theatrical release from February-June 2001, but that the aggrieved copyright owner of the underlying novel only acts sometime later. If she applies for registration and concurrently is allowed to file a complaint at the start of 2004, it will be timely to recover actual damages for the full period of theatrical release (albeit too late to recover any statutory damages). By contrast, if she is forced to wait months until the Copyright Office issues a certificate (or denies its issuance), the limitations period may have already lapsed, thus barring any recovery. However, this result could be avoided by the approach of those courts that allow a later complaint to relate back to the date of the earlier, dismissed complaint. See discussion in the text below.

(n237)Footnote 214. Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612 (9th Cir. 2010) (Treatise quoted) . See Iconbazaar, L.L.C. v. America Online, Inc., 308 F. Supp. 2d 630, 634 (M.D.N.C. 2004) . Moreover, in some cases, a preliminary injunction is of the essence. See § 14.06[A] infra . Belated registration could effectively squelch that remedy, too.

(n238)Footnote 215. See § 7.16[B][3][b][i] supra . The Tenth Circuit, when adopting the registration approach, acknowledged that the backlog at the Copyright Office was such that "the paper certificate could be delayed for up to six months." La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1208 (10th Cir. 2005) . It therefore adopted the view that the certificate itself was not required, contrary to those hyper-technical cases adopting the registration approach that treat the piece of paper itself as a necessity. Id. at 1202-1203 . See § 7.16[B][3][b][i] supra . Page 45 2 Nimmer on Copyright § 7.16

(n239)Footnote 216. Gerig v. Krause Publ'ns, Inc., 33 F. Supp. 2d 1304, 1306 (D. Kan. 1999) .

(n240)Footnote 217. See 17 U.S.C. § 408(a) .

(n241)Footnote 218. At the time of filing, there was only an oral transfer to the claimant rather than one in writing. See § 10.03[A] infra . Later, a written note or memorandum of the transfer validated the registration, hence allowing suit to proceed. See Wales Indus., Inc. v. Hasbro Bradley, Inc., 612 F. Supp. 510, 515-516 (S.D.N.Y. 1985) ; Dan-Dee Imports, Inc. v. Well-Made Toy Mfg. Corp., 524 F. Supp. 615 (E.D.N.Y. 1981) . See also N. 207 supra .

(n242)Footnote 219. 17 U.S.C. § 204(a) . See § 10.03[A][3] infra (describing how it is in fact analytically distinct from state statutes of fraud).

(n243)Footnote 220. See Arthur Rutenberg Homes, Inc. v. Drew Homes, Inc., 29 F.3d 1529, 1532-1533 (11th Cir. 1994) , relying on Dan-Dee Imports, Inc. v. Well-Made Toy Mfg. Corp., 524 F. Supp. 615 (E.D.N.Y.1981) .

(n244)Footnote 221. 17 U.S.C. § 410(d) (emphases added). See § 7.18[E] infra .

(n245)Footnote 222. Correspondence may be necessary with the Copyright Office, explaining that the first certificate was filed in error, and should be replaced by the belated one.

(n246)Footnote 223. To revert to the cases cited in N. 220 supra , Arthur Rutenberg approves the following reasoning from Dan-Dee Imports :

Furthermore, the regulations respecting registration do not clearly preclude issuance of a copyright to an applicant who has only received oral assignment prior to the registration since a "claimant" includes "a person or organization that has obtained ... the contractual right to claim legal title to the copyright in an application for copyright registration." 37 C.F.R. § 202.3(a)(3)(ii) n.1 (emphasis added).

29 F.3d at 1532-1533 , quoting 524 F. Supp. at 618-619 . The italicized phrase, found in a footnote to the subject regulation, cannot refer to a contractual right founded in an oral contract, as it has been held that such oral grants--no matter how binding they might be as a matter of state law--create no claim to legal title in a federal copyright. Library Publ'ns, Inc. v. Medical Econs. Co., 548 F. Supp. 1231 (E.D. Pa. 1982) . See § 1.01[B][3][a] supra . Accordingly, the entire chain of logic is deficient.

(n247)Footnote 224. Yardley v. Houghton Mifflin Co., 25 F. Supp. 361 (S.D.N.Y. 1938) , aff'd , 108 F.2d 28 (2d Cir. 1939) . See § 9.05[D][1] infra .

(n248)Footnote 225. Note that, for works which obtained copyright protection through 1963, failure to timely renew injected the work into the public domain. See § 9.05[B][1] infra . By contrast, the instant examination is far less pointed--it simply concerns whether (with respect to post-1963 works) a claimant who registered on day 1 must return to effectuate registration anew on day 25 (or day 1025, whenever it succeeds to the subject rights).

(n249)Footnote 226. Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970) .

(n250)Footnote 227. Macklin v. Mueck, 373 F. Supp. 2d 1334, 1335 (S.D. Fla. 2005) .

(n251)Footnote 228. Id. at 1336 . The case is also an outlier in awarding the maximum award of $300,000 in statutory damages for willful infringement of two poems. See § 14.04[B][3] infra . The award, moreover, went to a pro se litigant.

(n252)Footnote 229. Of course, the court's reference to "jurisdiction" has been rendered inapposite by subsequent construction of the ranking of registration. See § 7.16[B][2][c] supra . Page 46 2 Nimmer on Copyright § 7.16

(n253)Footnote 230. 17 U.S.C. § 410(d) (emphasis added). See § 7.18[E] infra .

(n254)Footnote 231. Public policy as well would seem to weigh against rewarding, with massive damages, deadbeats who pass bad checks to the Copyright Office.

(n255)Footnote 232. See § 7.16[B][3][b][iii] supra .

(n256)Footnote 233. Morgan v. Hanna Holdings, Inc., 635 F. Supp. 2d 404, 409 (W.D. Pa. 2009) (Treatise cited) .

(n257)Footnote 234. The distinction is critical, inasmuch as the copyright in an architectural work can bar construction of an infringing building, whereas the copyright in plans has no such vitality. Id. at 408 & n.1 (Treatise cited). See § 2.20 supra . By the time plaintiff filed his new complaint, the statute of limitations had already run on the allegedly infringing conduct. 635 F. Supp. 2d at 410 .

(n258)Footnote 235. Id. at 411 . See § 7.16[B][2][c] supra .

(n259)Footnote 235.1. Initially, the court dismissed the case on jurisdictional grounds. See Charles F. Vatterott Constr. Co. v. Esteem Custom Homes, LLP, 686 F. Supp. 2d 934 (E.D. Mo. 2010) (That opinion paid its respects to the application approach as "endorsed by an influential treatise." Id. at 938 n.1 (Treatise cited) .) After Reed Elsevier , the court granted reconsideration, withdrawing its earlier opinion. 713 F. Supp. 2d 844 (E.D. Mo. 2010) . By allowing the new complaint to relate back, the court no longer needed to address the application approach. Id. at 848 .

(n260)Footnote 236. See § 7.16[B][2][a] supra .

(n261)Footnote 237. 559 U.S. at 160 n.2 . See § 7.16[B][2][c] infra .

(n262)Footnote 238. La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1197-1198 (10th Cir. 2005) .

(n263)Footnote 239. Id. at 1198 .

(n264)Footnote 240. "Because La Resolana's architectural drawings were not registered at the time this suit was brought, the district court properly dismissed the complaint." Id. at 1208 .

(n265)Footnote 241. Id. at 1208 .

(n266)Footnote 242. Id. at 1208 .

(n267)Footnote 243. In one case, plaintiff filed a complaint, defendant objected that the work had not been registered, the court stayed proceedings while plaintiff applied to register, the Copyright Office duly registered the work, and plaintiff filed a supplemental complaint. Walton v. United States, 80 Fed. Cl. 251, 257 (2008) , aff'd , 551 F.3d 1367 (Fed. Cir. 2009) . The court commented, "The consensus among federal appellate courts is that the provisions of 17 U.S.C. § 411(a) are jurisdictional." Id. at 260 . It then inquired whether "plaintiff's postcomplaint copyright registration has cured the initial jurisdictional defect." Id. at 262 . It determined that plaintiff's amended complaint could not provide the cure. Id. at 265 . But it did treat the new filing as "a de facto supplemental complaint" that could properly allege ongoing copyright infringement. Id. at 266 .

In that case, plaintiff who brought suit was a federal prisoner. The court ultimately denied jurisdiction as a matter of sovereign immunity. See § 12.01[E][1] infra . Interestingly, it was only in that context that it grappled with "drive-by jurisdictional decisions." 80 Fed. Cl. at 269 . See § 7.16[B][2][a] N. 116 supra .

(n268)Footnote 244. The facts in that case showed that the Copyright Office backlog was such that the paper certificate could be delayed for up to six months. Id. at 1208 . But the Tenth Circuit did not believe that the paper Page 47 2 Nimmer on Copyright § 7.16

certificate itself was the only way to prove that registration had been consummated. Id .

(n269)Footnote 245. 542 F.3d 859 (11th Cir. 2008) .

(n270)Footnote 246. Id. at 861 . See § 8.08[B] infra .

(n271)Footnote 247. 542 F.3d at 862 .

(n272)Footnote 248. Id. at 863 .

(n273)Footnote 249. Id. at 867 .

(n274)Footnote 250. Id. at 863 .

(n275)Footnote 251. A later Eleventh Circuit opinion repeats this case's characterization of registration as jurisdictional, but addresses a different aspect of registration practice that arises independently, and hence did not need to wait for the Supreme Court's resolution of Reed Elsevier v. Muchnick . St. Luke's Cataract & Laser Inst., P.A. v. Sanderson, 573 F.3d 1186, 1201 & n.21 (11th Cir. 2009) . See § 7.20[B][1] infra .

(n276)Footnote 252. Nonetheless, other decisions have followed suit. See Specific Software Solutions, LLC v. Institute of WorkComp Advisors, LLC, 615 F. Supp. 2d 708, 714 (M.D. Tenn. 2009) .

(n277)Footnote 253. 17 U.S.C. § 411(a) . For a parallel distinction, see § 7.16[C][1][a][iii] infra .

(n278)Footnote 254. See Sportsmans Warehouse, Inc. v. Fair, 576 F. Supp. 2d 1175, 1183 (D. Colo. 2008) .

(n279)Footnote 254.1. 606 F.3d 612 (9th Cir. 2010) .

(n280)Footnote 254.2. In the meanwhile, the Copyright Office had issued the certificate for the particular work at issue in this case. Id. at 614 n.1 . Nonetheless, the Ninth Circuit decided to confront head-on the conflict between the application and registration approaches, "because it is an unsettled issue of law in this Circuit, and because it is an issue capable of repetition yet evading review if the Copyright Office acts on the application during litigation." Id. at 616 (internal quotation marks omitted).

(n281)Footnote 254.3. The parties withdrew initial submission of the case, to reargue its status after the Supreme Court handed down its Reed Elsevier ruling. Id. at 614 n.2 .

(n282)Footnote 254.4. Id. at 617-618 .

(n283)Footnote 254.5. Id. at 618 .

(n284)Footnote 254.6. Id. at 620 (Treatise quoted), at 621 (Treatise quoted as "leading treatise on copyright").

(n285)Footnote 254.7. Id. at 619 .

(n286)Footnote 254.8. Id. at 620 . See § 7.16[B][3][b][ii] supra .

(n287)Footnote 254.9. 606 F.3d at 620 (both the registration and application approaches require "a party to submit the information necessary to add the copyright to the federal registry"). The decision equally rejected the argument "that Congress structured the Act to require the Register's approval or rejection of registration before suit because it wanted the Register to determine the propriety of granting copyright registration in the first instance." Id. at 621 . See § 7.16[B][3][b][vi] infra . It noted, inter alia , that "the Register's decision of whether or not to grant a registration certificate is largely perfunctory, and is ultimately reviewable by the courts." 606 F.3d at 621 . Page 48 2 Nimmer on Copyright § 7.16

(n288)Footnote 254.10. Id. at 620 .

On this point, it is telling that even many courts adopting the registration approach have recognized that "construing the statute this way leads to an inefficient and peculiar result." We agree. It makes little sense to dismiss a case (which will likely be refiled in a matter of weeks or months) simply because the Copyright Office has not made a prompt decision that will have no substantive impact on whether or not a litigant can ultimately proceed.

Id . (citations omitted). Given its operation with the statute of limitations, the registration approach, in the worst-case scenario, could even cause a copyright owner to lose the ability to sue altogether. Id . See § 7.16[B][3][b][iii] supra .

(n289)Footnote 254.11. 606 F.3d at 621 .

(n290)Footnote 254.12. Pan-American Products & Holdings, LLC v. R.T.G. Furniture Corp., 825 F. Supp. 2d 664, 701 n.19 (M.D.N.C. 2011) (Treatise cited) . See Alicea v. LT's Benjamin Records, 762 F. Supp. 2d 299, 305-306 (D. Mass. 2011) (refusing to dismiss complaint that attached evidence of registrations in process).

(n291)Footnote 255. Because the processing of applications for registration was subject to delays in the course of implementation of a new business process system, the Copyright Office published an interim rule temporarily waiving the fee for conversion of applications for registration to special handling status when the application has been pending for more than six months without action by the Copyright Office. Applicants had to satisfy the Office that special handling status is needed because the applicant is about to file suit for copyright infringement. By its terms, the rule expired on July 1, 2012. 74 Fed. Reg. 39899 (Aug. 10, 2009) ; 76 Fed. Reg. 38306 (June 30, 2011) . See Copyright Office Circular 10.

(n292)Footnote 256. Another potential solution is to ask the Copyright Office to rule on the existing application on an expedited basis. To the extent that the claimant can obtain such special handling, it may solve all the problems canvassed herein.

(n293)Footnote 257. See § 7.16[B][5][a] infra . In brief, plaintiff may need to recover statutory damages and attorney's fees to make suit worthwhile. See La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1199 (10th Cir. 2005) (reason that Copyright Act provides for recovery of attorney's fees for registered works is for the sake of "copyright owners hesitant to engage in the long and expensive process of litigation"). Those remedies accrue only if the subject registration was made before infringement commenced. See § 7.16[C] supra . Accordingly, plaintiff may deem it worthwhile to litigate based on an early application for registration, but not based on a later one.

(n294)Footnote 257.1. For instance, one plaintiff submitted a certificate of recordation of transfer, rather than an actual registration certificate. Its claim thereupon failed, as such "recordation of an instrument relating to a work does not indicate that the work itself has been registered ... ." Latin Am. Music Co. v. Media Power Group, Inc., 705 F.3d 34, 43 (1st Cir. 2013) . See § 7.16[E] infra . Another party registered a website, but failed to prove that the three literary works on which suit was premised were themselves incorporated into that website at the time of registration. See Obodai v. YouTube LLC, 840 F. Supp. 2d 714, 716 (S.D.N.Y. 2011) .

(n295)Footnote 258. See § 13.02 infra .

(n296)Footnote 259. See § 13.03 infra .

(n297)Footnote 260. Since 2014, that defense can prevail only in extraordinary circumstances--even then, it leaves the remedy of damages unaffected. See § 12.06[B][3][c][i] infra .

(n298)Footnote 261. Examples are legion. See, e.g. , Randolph v. Dimension Films, 630 F. Supp. 2d 741, 746 (S.D. Page 49 2 Nimmer on Copyright § 7.16

Tex. 2009) .

(n299)Footnote 262. The issue could equally arise in other guises. For instance, in another instance plaintiff could be Afghani, having published her work in Iran. The work may lie outside of United States copyright protection based on ineligible nationality. See § 5.07 supra .

(n300)Footnote 263. See § 7.16[B][3][b][i] supra .

(n301)Footnote 264. Even if plaintiff is a plagiarist who copied the entire 300-page novel from William Faulkner, that circumstance would not stop the Copyright Office from issuing a valid certificate. For the Office does not engage in a prior art search, and therefore does not evaluate originality. See § 2.01[A] supra .

(n302)Footnote 265. Illustrative here is the case previously adduced as one that the Supreme Court explicitly rejected. See § 7.16[B][3][b][v] N. 238 supra . In La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005) , the defendant won dismissal of plaintiff's complaint based on registration defects. But, when the case was refiled, the issue of copyrightability was not even on the table. Instead, defendant prevailed based on plaintiff's inability to prove access. La Resolana Architects, PA v. Reno, Inc., 555 F.3d 1171, 1177-1180 (10th Cir. 2009) .

(n303)Footnote 265.1. See Levine v. Landy, 832 F. Supp. 2d 176, 183 (N.D.N.Y. 2011) (after filing of complaint and briefing of motion to dismiss, plaintiff received registration certificates; court thereupon denied defense motion).

(n304)Footnote 266. An example is R.W. Beck, Inc. v. E3 Consulting, LLC, 577 F.3d 1133, 1143 (10th Cir. 2009) (Treatise cited) . After winnowing out unprotected elements, defendant claimed that it had no liability as to the remainder. Id .

(n305)Footnote 267. See § 7.26 infra .

(n306)Footnote 268. See Ns. 264-265 supra .

(n307)Footnote 269. See § 7.16[B][3][b][v] supra .

(n308)Footnote 270. Many cases legitimately present both issues. See Brooks-Ngwenya v. Indianapolis Pub. Schs., 564 F.3d 804, 808 (7th Cir. 2009) (Copyright Office initially refused registration, then belatedly granted it; but court determined substantial similarity to be lacking). See also N. 266 supra . As to those, the defendant has every right to treat them as Case B , and then if it fails to prevail, also to bring arguments along the lines of Case A .

(n309)Footnote 271. See § 12.09[C][1] infra .

(n310)Footnote 272. 200 F. Supp. 2d 482, 485-486 (E.D. Pa. 2002) .

(n311)Footnote 273. Id. at 484 .

(n312)Footnote 274. Id .

(n313)Footnote 275. Id. at 486 ("we explained to the jury the reason given by the Copyright Office for refusal of registration and further noted that the examiner never saw the Morelli jewelry itself but only pictures of it. The charge gave the jury the appropriate latitude to differ from the Copyright Office without totally ignoring its decision refusing registration.").

(n314)Footnote 276. Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 621 (9th Cir. 2010) (Treatise quoted) . See, e.g ., Phoenix Renovation Corp. v. Rodriguez, 403 F. Supp. 2d 510, 514 n.1 (E.D. Va. 2005) .

(n315)Footnote 276.1. Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 621 (9th Cir. 2010) (Treatise Page 50 2 Nimmer on Copyright § 7.16

cited) .

(n316)Footnote 277. See § 14.06[A][1][a] infra .

(n317)Footnote 278. This was the posture of Mays & Assocs., Inc. v. Euler, 370 F. Supp. 2d 362, 369 (D. Md. 2005) , in which the court adopted the registration approach to deny jurisdiction. It claimed that the contrary approach would place the court in "limbo."

(n318)Footnote 279. This consideration avoids the specter of "shifting legal entitlements" invoked by La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1205 (10th Cir. 2005) . See Sungard Data Sys. Inc. v. Devlin, 37 U.S.P.Q.2d 1190, 1194 (E.D. Pa. 1995) ("there is nothing on the application proving that the Copyright Office received the application, that the required number of copies of the work were filed, or that the fee was filed in proper form").

(n319)Footnote 280. See text accompanying § 7.16[B][3][a] N. 169 supra .

(n320)Footnote 281. Foraste v. Brown Univ., 248 F. Supp. 2d 71, 76-78 (D.R.I. 2003) . This case allowed damages for the future, when the works would be "fully registered." Id. at 78 . Yet, the statute creates no such category of "full" registration as opposed to conditional registration after the application is filed. Note, however, that Congress subsequently created the category of "pre-registration." See § 7.16[B][1][b][iv] supra .

(n321)Footnote 282. Foraste relied on Olan Mills, Inc. v. Linn Photo Co., 23 F.3d 1345, 1349 (8th Cir. 1994) . But Olan Mills dealt not with the question of standing during the interval between submission to the Copyright Office and issuance of the certificate; instead, it dealt with whether, after standing has been established, an injunction can extend beyond the registered works in suit. See § 7.16[C][3] N. 500 infra . Another case construed Olan Mills to stand for the proposition that a plaintiff had standing to pursue injunctive relief absent even an attempt to register the subject work. See Walker Mfg., Inc. v. Hoffmann, Inc., 220 F. Supp. 2d 1024, 1039 (N.D. Iowa 2002) . That ruling also appears erroneous.

(n322)Footnote 283. Broadcast Music, Inc. v. Rockingham Venture, Inc., 909 F. Supp. 38, 42 n.3 (D.N.H. 1995) (Treatise cited) . See, e.g. , Jennette v. United States, 77 Fed. Cl. 126, 132 (2007), 77 Fed. Cl. 132, 137 (2007) ; Harvard Apparatus, Inc. v. Cohen, 130 F. Supp. 2d 161, 164 (D. Mass. 2001) ; Toms v. Pizzo, 4 F. Supp. 2d 178, 185 (W.D.N.Y. 1998) , aff'd mem ., 172 F.3d 38 (2d Cir.1999) ; Geritrex Corp. v. Dermarite Indus., LLC, 910 F. Supp. 955, 966 (S.D.N.Y. 1996) ; McCormick v. Fugerson, 34 U.S.P.Q.2d 1735, 1736 (E.D. Pa. 1995) .

(n323)Footnote 283.1. See § 7.16[B][1][b][ii] supra .

(n324)Footnote 284. Kernel Records Oy v. Mosley, 694 F.3d 1294, 1302 (11th Cir. 2012) (Treatise quoted) , cert. denied , ___ U.S. ___, 133 S. Ct. 1810, 185 L. Ed. 2d 812 (2013) ; Goebel v. Manis, 39 F. Supp. 2d 1318, 1319 n.2 (D. Kan. 1999) (Treatise quoted) . See International Trade Mgmt., Inc. v. United States, 553 F. Supp. 402, 1 Cl. Ct. 39 (Cl. Ct. 1982) (Kozinski, C.J.); Ashlar Inc. v. Structural Dynamics Research Corp., 36 U.S.P.Q.2d 1402, 1405-1406 (N.D. Cal. 1995) .

(n325)Footnote 285. Kernel Records Oy v. Mosley, 694 F.3d 1294, 1302 (11th Cir. 2012) (Treatise quoted) , cert. denied , ___ U.S. ___, 133 S. Ct. 1810, 185 L. Ed. 2d 812 (2013) . It can, however, doom an infringement action brought by a dilatory claimant. See, e.g. , Miller v. CP Chems., Inc., 808 F. Supp. 1238, 1242 (D.S.C. 1992) .

(n326)Footnote 285.1. In one case, the party in question, "despite being a determined plaintiff, nonetheless failed to apply for registration prior to calling on the district court to issue final judgment." Kernel Records Oy v. Mosley, 694 F.3d 1294, 1303 (11th Cir. 2012) (Treatise quoted) , cert. denied , ___ U.S. ___, 133 S. Ct. 1810, 185 L. Ed. 2d 812 (2013) . The parties filed cross-motions for summary judgment, without the work ever having been registered. Only when filing the reply to its motion for reconsideration did plaintiff finally tell the district court that it had belatedly Page 51 2 Nimmer on Copyright § 7.16

registered the work. Id. at 1299 . That gesture was too late, and thus prevented neither the district court from dismissing the complaint nor the Court of Appeals from affirming.

(n327)Footnote 286. See Chap. 9 infra .

(n328)Footnote 287. See § 9.05[B][1] infra .

(n329)Footnote 288. See § 9.05[A][2] infra .

(n330)Footnote 289. See § 9.05[B][2] infra .

(n331)Footnote 290. Alternatively, no application is required, to the extent that the work is exempt because of foreign origin or for other reasons. See § 7.16[B][1][b] supra .

(n332)Footnote 291. 17 U.S.C. § 411(a) , which is not modified by the 1992 amendments, simply requires that "registration of the copyright claim has been made in accordance with this title." The 1992 amendments clarify that, for purposes of § 411, the term "registration" is defined as "a registration of a claim in the original or the renewed and extended term of copyright." 17 U.S.C. § 101 .

(n333)Footnote 292. See § 9.05[B][2] infra .

(n334)Footnote 293. Note that "registration" is defined to include specifically "the renewed and extended term of copyright." 17 U.S.C. § 101 (definition of "registration" added in 1992). The identical considerations should therefore apply whether renewal is effectuated during the 28-year renewal term, during the following 19-year extension added by the 1976 Act, or during the additional 20-year extension added by the Sonny Bono Copyright Term Extension Act. See § 9.11 infra .

(n335)Footnote 294. See 138 Cong. Rec. H4134 (daily ed. June 4, 1992) (statement of Rep. Hughes). As noted above, 17 U.S.C. § 411(a) simply requires that "registration of the copyright claim has been made in accordance with this title," and the 1992 amendment defined "registration" as "a registration of a claim in the original or the renewed and extended term of copyright." See N. 291 supra . The contrary conclusion would be untenable, as it would mean that works in their renewal term that had not been registered in the 28th year would be impossible ever to protect. Congress expressly rejected an earlier version of the 1992 amendment that limited the rights to unregistered works in their renewal term. See § 9.05[A][2] N. 22 infra . See generally § 9.05[B][2] infra .

(n336)Footnote 295. See § 9A.04 infra .

(n337)Footnote 296. The only exception would occur if the sequence of publication somehow qualified the subject matter as a "United States work." See § 7.16[B][1][b][ii] supra .

(n338)Footnote 297. In this way, foreign nationals are nominally advantaged over Americans. See § 7.16[B][6][c] N. 394 infra . The entire enterprise of copyright restoration disadvantages Americans over foreigners in several particulars. See § 9A.04[A][4] N. 123 infra .

(n339)Footnote 298. See §§ 7.01[B] supra , 7.16[C][1] infra . In addition, full relief comes to such restored copyrights only upon undertaking the formalities added in 1994. See § 9A.04[C][2][a] infra (filing notice of intent to enforce restored copyright serves simultaneously to register the work). Such claimants of restored works are therefore hardly liberated from the headache of U.S. copyright formalities.

(n340)Footnote 299. See § 7.16[B][5][c] infra .

(n341)Footnote 300. Conversely, if there is a defect in proceeding based solely on registration in the underlying work, one can simply register the derivative work belatedly. See § 7.16[B][5][b] infra . Page 52 2 Nimmer on Copyright § 7.16

(n342)Footnote 301. See § 7.16[B][3][b][v] supra .

(n343)Footnote 302. See § 7.16[C] infra .

(n344)Footnote 303. But if a new infringer arises after such registration takes place (as opposed to continuation of infringement by the same party), then those remedies will lie against that new infringer. Morris v. Business Concepts, Inc., 259 F.3d 65, 73 (2d Cir. 2001) , reh'g denied , 283 F.3d 502 (2d Cir. 2002) .

(n345)Footnote 304. Morris v. Business Concepts, Inc., 259 F.3d 65, 68 n.1 (2d Cir. 2001) , reh'g denied , 283 F.3d 502 (2d Cir. 2002) .

(n346)Footnote 305. See §§ 7.16[B][5][b] -7.16[B][5][c] infra .

(n347)Footnote 306. For these purposes, an application to register suffices, even if it is refused. See § 7.16[B][3][a] supra .

(n348)Footnote 307. See § 3.01 supra .

(n349)Footnote 308. Montgomery v. Noga, 168 F.3d 1282, 1293 (11th Cir. 1999) (Treatise cited) ; SimplexGrinnell, LP v. Integrated Sys. & Power, Inc., 642 F. Supp. 2d 206, 214 (S.D.N.Y. 2009) (Treatise quoted) ; Video Pipeline, Inc. v. Buena Vista Home Entm't, Inc., 275 F. Supp. 2d 543, 556 (D.N.J. 2003) (Treatise cited) ; Liu v. Price Waterhouse LLP, 182 F. Supp. 2d 666, 675 (N.D. Ill. 2001) (Treatise cited) , aff'd , 302 F.3d 749 (7th Cir. 2002) , cert. denied , 539 U.S. 958, 123 S. Ct. 2640, 156 L. Ed. 2d 656 (2003) ; Mattel, Inc. v. Robarb's, Inc., 139 F. Supp. 2d 487, 497-498 (S.D.N.Y. 2001) (Treatise cited) ; Janel Russell Designs, Inc. v. Mendelson & Assocs., 114 F. Supp. 2d 856, 864 (D. Minn. 2000) ; United States v. Washington Mint, LLC, 115 F. Supp. 2d 1089, 1099 (D. Minn. 2000) .

(n350)Footnote 309. Johnson v. Gordon, 409 F.3d 12, 20 (1st Cir. 2005) (Treatise cited) ; Offbeat Inc. v. Cager, 35 U.S.P.Q.2d 1565, 1567 (E.D. La.) , aff'd mem., 77 F.3d 473 (1995) .

(n351)Footnote 310. See § 7.16[B][1][b][ii] supra . Eligible foreign claimants, albeit exempt from the registration requirement, to the extent that they take advantage of that status (by not bothering to register) simultaneously forfeit the ability to heighten remedies. See § 7.16[B][6][d] infra .

(n352)Footnote 311. Murray Hill Publ'ns, Inc. v. ABC Communications, Inc., 264 F.3d 622, 632 (6th Cir. 2001) .

(n353)Footnote 312. See § 7.16[B][3][b][v] supra .

(n354)Footnote 313. 210 F. Supp. 2d 147, 158 (E.D.N.Y. 2002) (Treatise cited) , aff'd , 354 F.3d 112 (2d Cir. 2003) .

(n355)Footnote 314. Id. at 153 .

(n356)Footnote 315. Id. at 154 . The smaller "sweet and cuddlesome" doll thereby became an "attractive, perky looking" one. Id .

(n357)Footnote 316. Id. at 155 ("the alleged infringing 48 inch doll looks like a slightly less alert and attractive relative of plaintiff's 48 inch doll, but definitely not like a twin of either the 20 or 48 incher"); at 167 ("the court finds that defendant actually copied large parts of plaintiff's 48 inch ... doll").

(n358)Footnote 317. Id. at 167 ("defendant's 48 incher makes further changes from plaintiff's so that it differs substantially from plaintiff's 20 inch doll. Not having registered its 48 inch doll, plaintiff cannot sue in this court for a resemblance to that doll."). Although commenting "Size matters," the court would have found liability if defendant's 48-inch doll was simply a mechanical scale increase of plaintiff's 20-inch doll. Id. at 169 . Page 53 2 Nimmer on Copyright § 7.16

(n359)Footnote 318. "[W]here the preexisting work is registered, but the derivative work is not, a suit for infringement may be maintained as to any protected element contained in the registered preexisting work, but not as to any element original to the unregistered derivative work." Id. at 158 (Treatise cited) .

(n360)Footnote 319. 354 F.3d 112 (2d Cir. 2003) (Treatise cited) . The court deliberately declined to adopt the mirror image of the rule, to be confronted in § 7.16[B][5][c] infra , that registration of a derivative work suffices to bring suit for infringement of the underlying elements incorporated therein. Id. at 115-116 .

(n361)Footnote 320. However, one defendant's reliance on it proved unavailing--plaintiff filed suit for infringement of the elements it owned in a registered work, and was not required to re-register a new version stripped of non-copyrightable elements. See Orange County Choppers, Inc. v. Olaes Enters., 497 F. Supp. 2d 541, 553 & n.16 (S.D.N.Y. 2007) .

(n362)Footnote 321. See Lewinson v. Henry Holt and Co., LLC, 659 F. Supp. 2d 547, 562-563, 569 n.7 (S.D.N.Y. 2009) ; I.M.S. Inquiry Mgmt. Sys., Ltd. v. Berkshire Info. Sys., Inc., 307 F. Supp. 2d 521, 528-529 (S.D.N.Y. 2004) ; Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218 (11th Cir. 2008) (following I.M.S. Inquiry ).

(n363)Footnote 321.1. In one case, plaintiff had registered software in 1981, 1984, and 1988--but its only proof related to an unregistered 2009 version. On that basis, it lost its copyright claim. See Airframe Sys., Inc. v. L-3 Communications Corp., 658 F.3d 100, 106-107 (1st Cir. 2011) . The court did not invoke the instant line of cases. Instead, it invoked its previous resolution of "this precise issue" in Unistrut Corp. v. Power, 280 F.2d 18 (1st Cir. 1960) , and a "similar situation" in Bridgmon v. Array Sys. Corp., 325 F.3d 572 (5th Cir. 2003) .

(n364)Footnote 322. Again, an application to register likewise suffices. See § 7.16[B][3][a] supra .

(n365)Footnote 323. See Chap. 3 supra . For these purposes, it is unnecessary to consider all compilations, because only those compilations that constitute collective works contain pre-existing works that themselves are the subject of copyright. See § 3.02 supra .

(n366)Footnote 324. See § 7.16[B][5][b] N. 310 supra .

(n367)Footnote 325. Cf. Morita v. Omni Publ'ns Int'l, Ltd., 741 F. Supp. 1107, 1110-1111 (S.D.N.Y. 1990) , vacated , 760 F. Supp. 45 (S.D.N.Y. 1991) .

(n368)Footnote 326. Roy Export Co. Establishment v. Columbia Broad. Sys., Inc., 503 F. Supp. 1137 (S.D.N.Y. 1980) (Treatise quoted) , aff'd , 672 F.2d 1095 (2d Cir. 1982) . See Conan Props., Inc. v. Mattel, Inc., 601 F. Supp. 1179 (S.D.N.Y. 1984) . See § 3.04 supra .

(n369)Footnote 327. 259 F.3d 65 (2d Cir. 2001) .

(n370)Footnote 328. Given that the articles' author granted Conde Nast "exclusive worldwide publication rights for ninety days after their publication in Allure ," it is arguable that Conde Nast had the right during that time to register the articles as well as its own magazine. Id. at 67 . But because the certificate it actually filed related to Allure alone and failed to list the author's name, address, or nationality, or the titles of the articles, the court initially concluded that this certificate failed to cover the subject articles. Id. at 71-72 . It later modified the opinion--but reaffirmed this aspect of the holding. 283 F.3d 502, 506 (2d Cir. 2002) ("we hold that unless the copyright owner of a collective work also owns all the rights in a constituent part, a collective work registration will not extend to a constituent part"). A later case distinguished Morris , in which the authors granted all rights to the publisher--reserving for themselves only non-exclusive rights for scholarly purposes. See Elsevier B.V. v. UnitedHealth Grp., Inc., 784 F. Supp. 2d 286, 295 (S.D.N.Y. 2011) (that reservation "did not disrupt the transfer of all of the copyrights in the Articles to Elsevier").

(n371)Footnote 329. For further discussion, see § 10.02[C][2] infra . Morris expresses itself "not without sympathy Page 54 2 Nimmer on Copyright § 7.16

for the burden § 411(a)'s registration requirement places on journalists such as Morris, as well as on all those for whom registering copyrights is an overwhelming financial and temporal commitment ... ." Id. at 73 . But it concludes that the role of the court is not to second-guess Congress in this regard, id. at 73 --as opposed to carving an exception to the "judge-made rule" at issue in Goodis v. United Artists Television, Inc., 425 F.2d 397, 400 (2d Cir. 1970) , discussed in § 10.01[B] infra .

(n372)Footnote 330. Initially, the Second Circuit held that the copyright owner of the derivative or collective work cannot be a licensee of the pre-existing work, even an exclusive licensee. 259 F.3d at 69-71 . The opinion quotes from N. 331 infra , and then embroiders on it: "Being 'regarded' as an owner and actually being an owner are, of course, two separate things." Id. at 70 . On petition for rehearing, the court removed that entire section from its opinion "because it might significantly affect some future case." 283 F.3d 502, 503 (2d Cir. 2002) .

(n373)Footnote 331. Note that, under the current Act, an exclusive licensee may be regarded as the copyright owner of the rights thus licensed. See § 10.02[C] infra . See also N. 330 supra .

(n374)Footnote 332. The assumption is that the derivative work that is registered embodies all the features of the underlying work on which suit is premised. Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218 (11th Cir. 2008) (Treatise quoted) . In the event of a disconnect, by contrast, then the situation becomes like that confronted above in Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 210 F. Supp. 2d 147 (E.D.N.Y. 2002) , aff'd , 354 F.3d 112 (2d Cir. 2003) . See § 7.16[B][5][b] supra .

(n375)Footnote 333. Howard v. Sterchi, 725 F. Supp. 1572, 1575 & n.7 (N.D. Ga. 1989) (Treatise quoted) .

(n376)Footnote 334. Rexnord, Inc. v. Modern Handling Sys., Inc., 379 F. Supp. 1190 (D. Del. 1974) . See also Williams Prods., Inc. v. Construction Gaskets, Inc., 206 U.S.P.Q. 622 (E.D. Mich. 1977) . See also § 12.09[A][1] infra .

(n377)Footnote 335. "The copyright provided by this title shall protect all the copyrightable component parts of the work copyrighted, and all matter in which copyright is already subsisting , but without extending the duration or scope of such copyright." 17 U.S.C. § 3 (1909 Act) (emphasis added).

(n378)Footnote 336. Christopher Phelps & Assocs. v. Galloway, 492 F.3d 532, 539 (4th Cir. 2007) (Treatise cited) ; Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 747 (2d Cir. 1998) (Treatise cited) ; In re Independent Services Organizations Antitrust Litigation, 964 F. Supp. 1469, 1473, 1474 (D. Kan. 1997) (Treatise cited as "leading commentator"); Richmond Homes Mgmt. v. Raintree, Inc., 862 F. Supp. 1517, 1525 (W.D. Va. 1994) (Treatise cited) , aff'd in part, rev'd in part , 66 F.3d 316 (4th Cir. 1995) ; TransWestern Publ'g Co. LP v. Multimedia Mktg Assocs., Inc., 133 F.3d 773, 782 (10th Cir. 1998) (Briscoe, J., concurring) ("These cases are supported by the leading treatise on copyright law") (Treatise cited). See Computer Assoc. Int'l v. Altai, Inc., 775 F. Supp. 544, 556 (E.D.N.Y. 1991) (Treatise cited) , aff'd in part, vacated in part , 982 F.2d 693 (2d Cir. 1992) ; Rand McNally & Co. v. Fleet Management Sys., Inc., 591 F. Supp. 726 (N.D. Ill. 1983) . But see Shaw v. Lindheim, 809 F. Supp. 1393, 1404 (C.D. Cal. 1992) (implying opposite in dictum ).

(n379)Footnote 337. Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 284 (4th Cir.) , cert. denied , 540 U.S. 879, 124 S. Ct. 303, 157 L. Ed. 2d 143 (2003) . Inconsistently, though, the court then added that it did not conclude that registration of the former "constituted an effective registration of the underlying preexisting work." Id. at 284 n.5 .

(n380)Footnote 338. Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218, 1229 (11th Cir. 2008) (Treatise quoted) ; Salestraq America, LLC v. Zyskowski, 635 F. Supp. 2d 1178, 1181 (D. Nev. 2009) (Treatise quoted) .

(n381)Footnote 339. 17 U.S.C. § 504(c)(1) . See § 14.04[C][1] infra . The entire preceding section of text is quoted and followed in Greenwich Film Prods., S.A. v. DRG Records, Inc., 833 F. Supp. 248, 251 (S.D.N.Y. 1993) (registration of movie encompasses music on sound track). Accord , Eastern Am. Trio Prods., Inc. v. Tang Elec. Corp., 97 F. Supp. 2d 395, 416-417 (S.D.N.Y. 2000) . Page 55 2 Nimmer on Copyright § 7.16

(n382)Footnote 340. Assuming that plaintiff composed the songs, arranged the music, and produced the sound recordings at issue, one registration covers all these species of copyrightable material. See § 7.18[C][3] infra .

(n383)Footnote 341. Szabo v. Errisson, 68 F.3d 940 (5th Cir. 1995) . See Ocasio v. Alfano, 592 F. Supp. 2d 242, 245 (D.P.R. 2008) ; King Records, Inc. v. Bennett, 438 F. Supp. 2d 812, 841, 842 n.12 (M.D. Tenn. 2006) . Note that King Records rejects a fanciful argument to the contrary, based on the wording of a stray line in the Supreme Court's Dastar opinion. Id. at 842-843 . See § 8D.03[A][2][b] infra (discussing Dastar ).

(n384)Footnote 342. Jefferson Airplane v. Berkeley Sys., Inc., 886 F. Supp. 713 (N.D. Cal. 1994) . In support of its ruling, the court cited testimony from the Register of Copyrights that Class N registrations under the 1909 Act did not extend past the sound recordings themselves. Id. at 716 . Nonetheless, the classification of registration should not be dispositive. See § 2.03[F] supra . Moreover, the subject artwork was published in 1971 with a valid copyright notice on the album, and therefore should be subject to subsisting copyright protection. 886 F. Supp. at 714 . See Chap. 9 infra (noticed works from that era protected for 75 years; renewal automatic in 1999). For that reason, the court's dismissal of the copyright count was unwarranted. Id. at 717 . At most, belated registration of the jacket artwork should have been permitted and the case allowed to proceed, albeit with a potential impact on the award of attorney's fees and statutory damages. See § 7.16[C][1] infra .

(n385)Footnote 343. See U-Neek, Inc. v. Wal-Mart Stores, Inc., 147 F. Supp. 2d 158, 167-168 & n.4 (S.D.N.Y. 2001) (distinguishing Jefferson Airplane v. Berkeley Systems ).

(n386)Footnote 343.1. Oskar Sys., LLC v. Club Speed, Inc., 745 F. Supp. 2d 1155, 1163 (C.D. Cal. 2010) .

(n387)Footnote 343.2. Id. at 1163 (emphasis original).

(n388)Footnote 343.3. See § 12.11[A][4] infra .

(n389)Footnote 344. See § 7.16[B][1][b][ii] supra .

(n390)Footnote 345. Note that, whereas Section 411(a) (pre-BCIA) required registration as a condition precedent to an infringement action being "instituted," the comparable provision under former law provided that "no action or proceeding shall be maintained without registration and deposit." 17 U.S.C. § 13 (1909 Act) (emphasis added). That provision was construed to prevent the institution as well as the maintenance of an infringement action in the absence of such procedural preliminaries. New York Times Co. v. Sun Printing & Publ'g Ass'n, 204 F. 586 (2d Cir. 1913) , cert. denied , 234 U.S. 758, 34 S. Ct. 676, 58 L. Ed. 1579 (1914) ; Rudolf Lesch Fine Arts, Inc. v. Metal, 51 F. Supp. 69 (S.D.N.Y. 1943) . But the "cases appear to be divided" on this question. Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970) . See Rosedale v. News Syndicate Co., 39 F. Supp. 357 (S.D.N.Y. 1941) ; G.R.I. Corp. v. Golden Fifty Pharm. Co., 185 U.S.P.Q. 674 (N.D. Ill. 1975) (Treatise cited) .

(n391)Footnote 346. 17 U.S.C. § 13 (1909 Act) . See Rosedale v. News Syndicate Co., 39 F. Supp. 357 (S.D.N.Y. 1941) ; Guild v. Thompson's Indus., Inc., 84 U.S.P.Q. 224 (D. Mass. 1950) ; Imperial Toy Corp. v. Ben Cooper, Inc., 185 U.S.P.Q. 453 (E.D. Cal. 1975) .

(n392)Footnote 347. See § 7.16[B][1][a] supra .

(n393)Footnote 348. See Pittway Corp. v. Reliable Alarms Mfg. Corp., 164 U.S.P.Q. 379 (E.D.N.Y. 1969) ; Primcot Fabrics v. Kleinfab Corp., 368 F. Supp. 482 (S.D.N.Y. 1974) .

(n394)Footnote 349. Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637 (2d Cir. 1958) ; Loomskill, Inc. v. Rubin Levin & Co., 159 U.S.P.Q. 676 (S.D.N.Y. 1968) (Treatise cited) ; Algonquin Music, Inc. v. Mills Music, Inc., 93 F. Supp. 268 (S.D.N.Y. 1950) ; Rosedale v. News Syndicate Co., 39 F. Supp. 357 (S.D.N.Y. 1941) . Page 56 2 Nimmer on Copyright § 7.16

(n395)Footnote 350. Note that the Supreme Court has singled out this change from the Vacheron regime. See § 7.16[B][2][c] N. 141 supra .

(n396)Footnote 351. 17 U.S.C. § 410(d) . See § 7.21[B] infra .

(n397)Footnote 352. See § 7.16[B][3][a] supra .

(n398)Footnote 353. See § 7.16[B][3][a] supra .

(n399)Footnote 354. See Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970) ; Maddux v. Grey, 43 F.2d 441 (S.D. Cal. 1930) .

(n400)Footnote 355. See § 7.16[A][2][c][i] supra .

(n401)Footnote 356. Lumiere v. Pathe Exch., Inc., 275 F. 428 (2d Cir. 1921) ; Hub Floral Corp. v. Royal Brass Corp., 454 F.2d 1226 (2d Cir. 1972) .

(n402)Footnote 357. 17 U.S.C. § 408(e) . See Fantasy, Inc. v. Fogerty, 664 F. Supp. 1345, 1350 (N.D. Cal. 1987) , aff'd , 984 F.2d 1524 (9th Cir. 1993) , rev'd on other grounds , 510 U.S. 517, 114 S. Ct. 1023, 127 L. Ed. 2d 455 (1994) .

(n403)Footnote 358. H. Rep., p. 155. See § 7.16[B][5][c] supra . In addition, there is no need to make a second registration even for derivative works or compilations that are of foreign origin. See § 7.16[B][1][b][ii] supra .

(n404)Footnote 359. H. Rep., p. 157. See Chuck Blore & Don Richman, Inc. v. 20/ 20 Adver. Inc., 674 F. Supp. 671, 673 n.1 (D. Minn. 1987) (Treatise cited) ; International Trade Mgmt., Inc. v. United States, 553 F. Supp. 402, 1 Cl. Ct. 39 (Cl. Ct. 1982) (Treatise cited) .

(n405)Footnote 360. Burns v. Rockwood Distrib. Co., 481 F. Supp. 841 (N.D. Ill. 1979) ; Strout Realty, Inc. v. Country 22 Real Estate Corp., 493 F. Supp. 997 (W.D. Mo. 1980) ; Conan Props., Inc. v. Mattel, Inc., 601 F. Supp. 1179 (S.D.N.Y. 1984) ; International Trade Mgmt., Inc. v. United States, 553 F. Supp. 402, 1 Cl. Ct. 39 (Cl. Ct. 1982) ; Jones v. Virgin Records, Ltd., 643 F. Supp. 1153, 1160 (S.D.N.Y. 1986) . See Pristine Indus., Inc. v. Hallmark Cards, Inc., 753 F. Supp. 140, 148 (S.D.N.Y. 1990) .

(n406)Footnote 361. See § 7.16[B][3][a] supra .

(n407)Footnote 362. That period applied from January 1, 1978, through March 1, 1989. See Overview supra .

(n408)Footnote 363. For the definition of these time periods, see Overview supra .

(n409)Footnote 364. One case denied standing to a plaintiff who sought to challenge this discrimination against Americans under the Equal Protection Clause of the Fourteenth Amendment to the United States Constitution . Hoopla Sports & Entm't, Inc. v. Nike, Inc., 947 F. Supp. 347, 355 (N.D. Ill. 1996) .

(n410)Footnote 365. S. 1301, § 9(b)(1), S. Rep. (BCIA), pp. 30-38.

(n411)Footnote 366. See text accompanying § 7.16[B][1][a][i] N. 49 supra .

(n412)Footnote 367. See § 7.16[A][1] supra .

(n413)Footnote 368. See § 17.01[B][1] infra .

(n414)Footnote 369. See Overview N. 34 supra . Page 57 2 Nimmer on Copyright § 7.16

(n415)Footnote 370. H. Rep. (BCIA), p. 41. Prior to the enactment of the BCIA, the first sentence of Section 411(a) read as follows: "Subject to the provisions of subsection (b), no action for infringement of the copyright in any work shall be instituted until registration of the copyright claim has been made in accordance with this title." The BCIA revised that sentence, substituting "Except for actions for infringement of copyright in Berne Convention works whose country of origin is not the United States, and subject" for "Subject."

(n416)Footnote 371. The Copyright Office agreed with the House's approach, the World Intellectual Property Organization (which administers the Berne Convention) with the Senate's. S. Rep. (BCIA), p. 15.

(n417)Footnote 372. H. Rep. (BCIA), p. 41 n.93, citing W.I.P.O. Guide to the Berne Convention for the Protection of Literary Works (Paris Act 1971 ) 33.

(n418)Footnote 373. In terms of the impermissibility even of the contingent requirement that registration be effectuated to cure unnoticed publications, the House bill would have eliminated such concomitant with its prospective elimination of mandatory notice. See H.R. 4262, §§ 9, 11; H. Rep. (BCIA), pp. 2-6.

(n419)Footnote 374. Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 366 n.6 (5th Cir. 2004) (Treatise cited) . See § 7.16[B][3][a] supra . The different rule that pertained under the 1909 Act means that that earlier law failed to comply with Berne standards. See § 7.16[B][6][a] supra .

(n420)Footnote 375. Subsequently, the fee for registration has risen from its 1988 level. See § 7.24 infra .

(n421)Footnote 376. As a matter of international politics, the Senate offers the rationale that foreign nations may seize on the U.S. registration requirement, which is exercised apolitically, to institute their own registration requirements, which they may exercise in an anti-American manner. S. Rep. (BCIA), pp. 17-18 ("This scenario ... is far from speculative.").

(n422)Footnote 377. See S. Rep. (BCIA), p. 17 ("more 'metaphysical' than real").

(n423)Footnote 378. See FMC Corp. v. Control Solutions, Inc., 369 F. Supp. 2d 539, 548 (E.D. Pa. 2005) (Treatise quoted) .

(n424)Footnote 379. Berne Convention (Paris text), art. 5(2). See S. Stewart, International Copyright and Neighbouring Rights 106 (1983).

(n425)Footnote 380. S. Rep. (BCIA), p. 16. In addition, to effect the formality of registration, it is necessary to deposit copies of the work with the Library of Congress. 17 U.S.C. § 408(b) . Thus, at stake is not simply registration, but rather the process of filling out a registration form, sending it to Washington, D.C., paying a fee, depositing copies, and awaiting official action. That scenario seems far afield of Berne's anti-formal approach.

(n426)Footnote 381. See § 7.16[A][1] supra .

(n427)Footnote 382. See § 5.08[B] supra .

(n428)Footnote 383. 17 U.S.C. § 411(a) (1988) . That language was subsequently repealed. For the current text, see § 7.16[B][1][b][ii] supra .

(n429)Footnote 384. The 1988 compromise provisions, which were added to the BCIA as ultimately enacted and formed no part of either the original House or Senate bills, serve only to define the registration requirement as a prerequisite to filing an infringement suit. Senate Joint Explanatory Statement on Amendment to S. 1301, contained in 134 Cong. Rec. S14555 (daily ed. Oct. 5, 1988). Nonetheless, even though the Copyright Act as amended by the BCIA made no other use of the resulting definitions, one could conceive of their having an operative effect apart from their intended consequence, if: (a) the United States were charged with failing to honor a Berne minimum standard, see § Page 58 2 Nimmer on Copyright § 7.16

17.01[B][1] infra ; (b) the Berne Convention were deemed to be at least partially self-executing under U.S. law, see § 1.12[A] supra ; and (c) the court on that basis gave effect to that Berne minimum standard, but only to non-American Berne claimants, see § 17.01[B][1] N. 29 infra . Thus, for example, a court confronting a claim that the United States must accord copyright protection to a work 28 years after its initial publication, even though no renewal certificate has been registered, could have upheld that claim, finding that the renewal registration requirement is a barred formality as to Berne claimants. See § 9.05[F] infra (noting that, given subsequent amendments in 1992 and 1994, this argument currently applies only to works that were unrenewed in calendar years 1989-1991 and that are not otherwise eligible for copyright restoration). Such a hypothetical ruling would be limited to Berne Convention works whose country of origin is not the United States, as defined in the 1988 amendment. See also § 7.17[E][2][c] N. 83 infra .

(n430)Footnote 385. See Senate Joint Explanatory Statement on Amendment to S. 1301, contained in 134 Cong. Rec. S14554-14555 (daily ed. Oct. 5, 1988) (ascribing four important goals to this compromise); 134 Cong. Rec. S14566 (daily ed. Oct. 5, 1988) (statement of Sen. Leahy).

(n431)Footnote 386. The House Joint Explanatory Statement Incorporated In Senate Amendment to H.R. 4262, contained in 134 Cong. Rec. H10096-10097 (daily ed. Oct. 12, 1988), goes to great length to specify that the House, although acceding to the Senate language, still does not concede this change to be necessary for Berne compliance, and thus leaves the door open to reinstituting the House version. But future experience abandoned the House approach, going even further than the Senate desired in 1989. See § 7.16[B][6][d] infra .

(n432)Footnote 387. Although the content has changed via subsequent amendment, the division into two classes continues through the present. See § 7.16[B][1][b][ii] supra .

(n433)Footnote 388. The Senate Joint Explanatory Statement to S. 1301, contained in 134 Cong. Rec. S14555 (daily ed. Oct. 5, 1988), takes pains to note that this two-tier approach is not intended to create a precedent for areas of copyright law apart from registration. But see N. 384 supra .

(n434)Footnote 389. The only works besides those of U.S. origin to fit into this class are those authored by nationals of, or published in, nations that have treaty relations with the United States but do not adhere to the Berne Convention. See § 17.01 infra .

(n435)Footnote 390. The burden is on the plaintiff to plead and prove that its work is of foreign Berne origin. House Joint Explanatory Statement on House-Senate Compromise Incorporated in Senate Amendment to H.R. 4262, contained in 134 Cong. Rec. H10096 (daily ed. Oct. 12, 1988); Senate Joint Explanatory Statement on Amendment to S. 1301, contained in 134 Cong. Rec. S14554 (daily ed. Oct. 5, 1988).

(n436)Footnote 391. The exemption for foreign works is permissive, not mandatory; Berne Convention claimants may still register their copyrights, and indeed stand to benefit from registration even under the BCIA. See § 7.16[C][1][a][iv] infra .

(n437)Footnote 392. See Itar-Tass Russian News Agency v. Russian Kurier, Inc., 886 F. Supp. 1120, 1125 n.7, 1126 (S.D.N.Y. 1995) (Treatise cited) . For the later opinion in that case, see § 17.05[B] infra .

(n438)Footnote 393. But note the following contention from the House's legislative history: "There is no real discrimination against American authors because foreign authors must also register in order to obtain the important benefits of the presumption of validity and statutory damages. In essence, all authors are treated equally ." House Joint Explanatory Statement on House-Senate Compromise Incorporated in Senate Amendment to H.R. 4262, contained in 134 Cong. Rec. H10097 (daily ed. Oct. 12, 1988) (emphasis added). Though one may understand the motivation of the House to minimize the significance of the point that it lost, the italicized language goes too far in attempting to portray the House-Senate compromise as meaningless.

(n439)Footnote 394. See 134 Cong. Rec. S14559 (daily ed. Oct. 5, 1988) (statement of Sen. Hatch). Berne does Page 59 2 Nimmer on Copyright § 7.16

not bar a legislature from imposing formalities on works by its own citizens, but rather applies to works emanating from other Berne nations. See § 17.01[B][1] infra .

(n440)Footnote 395. See § 5.09[B][1] N. 29 supra .

(n441)Footnote 396. See Pepe (U.K.) Ltd. v. Ocean View Factory Outlet Corp., 770 F. Supp. 754, 761-762 (D.P.R. 1991) .

(n442)Footnote 397. See § 7.16[B][1][b][ii] supra .

(n443)Footnote 398. The touchstone for which law to apply--whether the current or a predecessor version--is determined by looking to when the infringement commenced, not when the subject work was first published, notwithstanding dictum assuming the opposite in Greenwich Film Prods. S.A. v. DRG Records Inc., 25 U.S.P.Q.2d 1435, 1438 (S.D.N.Y. 1992) .

(n444)Footnote 399. Dielsi v. Falk, 916 F. Supp. 985, 993 n.5 (C.D. Cal. 1996) (Treatise cited) ; General Motors Corp. v. Ignacio Lopez de Arriortua, 948 F. Supp. 684, 691 (E.D. Mich. 1996) .

(n445)Footnote 400. See Vergara Hermosilla v. The Coca-Cola Co., 717 F. Supp. 2d 1297, 1304 (S.D. Fla. 2010) , aff'd mem. , 419 Fed. Appx. 917 (11th Cir. 2011) . If first published in 1970, then the work gained statutory copyright under the 1909 Act; if first published in 1980, then under the current Act. In either event, the work achieved U.S. copyright at publication by virtue of the U.C.C., to which both the United States and Belgium adhered in both 1970 and 1980. Although never registered, that fact does not detract from its U.S. copyright status. As of 1989, the work qualified as a "Berne Convention work" whose country of origin is not the United States. See § 5.09[B][1] supra . As of today, it emanates from a "treaty party." In any event, the Belgian author currently may file suit without the necessity of registering the work.

(n446)Footnote 401. See § 7.16[B][1][a] supra .

(n447)Footnote 402. See § 7.16[B][6][c] N. 375 supra .

(n448)Footnote 403. See text accompanying § 7.16[B][6][c] N. 376 supra .

(n449)Footnote 404. See § 7.16[C][1][a][iv] infra .

(n450)Footnote 405. See § 7.16[D] infra . Note the parallel phenomenon under the Copyright Renewal Act of 1992. See § 9.05[D][2] infra .

(n451)Footnote 406. See Rudnicki v. WPNA 1490 AM, 580 F. Supp. 2d 690, 692 (N.D. Ill. 2008) (Treatise cited) ; Latin Am. Music Co. v. Archdiocese of San Juan of the Roman Catholic & Apostolic Church, 135 F. Supp. 2d 284, 293 (D.P.R. 2001) (Treatise cited) , superseded , 194 F. Supp. 2d 30, 39 (D.P.R. 2001) (Treatise cited) , aff'd in part, rev'd in part , 499 F.3d 32 (1st Cir. 2007) , cert. denied , 552 U.S. 1182, 128 S. Ct. 1232, 170 L. Ed. 2d 64 (2008) .

(n452)Footnote 406.1. One example, however, is Moberg v. 33T LLC, 666 F. Supp. 2d 415 (D. Del. 2009) . See § 7.16[B][6][e] infra .

(n453)Footnote 407. Given the complexity of the above scheme, a foreigner wishing to safeguard his rights under U.S. copyright law is better advised to register the work for $10 (since raised to $35 for electronic registration, $50 for paper) and be absolutely safe, rather than consulting an expert on American copyright law (whose fee might be anticipated to exceed $35 or $50) to apply the foregoing elaborate rules to the circumstances of his particular case (requiring an inquiry into such matters as whether the work was published "simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States."). Such a result is ironic, to say the least, in light of the fact that U.S. adherence to Page 60 2 Nimmer on Copyright § 7.16

Berne was designed to forestall formalistic requirements. See § 17.01[C][2][b] infra .

(n454)Footnote 408. See § 7.16[B][6][a]-[b] supra .

(n455)Footnote 409. See § 7.16[B][6][c] supra .

(n456)Footnote 410. S. Rep. (DMCA), p.27. See H. Rep. (DMCA), p. 16.

(n457)Footnote 411. H. Rep. (DMCA), p.16. On those treaties, see § 17.01[B][1][b] infra .

(n458)Footnote 412. See § 7.16[B][1][b][ii] supra .

(n459)Footnote 413. See § 7.16[B][6][c] supra .

(n460)Footnote 414. As of 1998, there were no copyright relations between the United States and Nepal. See Appendix 20 infra . Note that unpublished works by Nepalese are nonetheless subject to copyright protection within the U.S. See § 5.06 supra .

(n461)Footnote 415. See Senate Joint Explanatory Statement on Amendment to S. 1301, contained in 134 Cong. Rec. S14554-55 (daily ed. Oct. 5, 1988).

(n462)Footnote 415.1. One case, decided by a magistrate on default judgment, neglected to advert to the progression of the law. Plaintiff filed suit for infringement of its unregistered watches and other items that were first offered for sale outside the United States, and hence were not "United States works." See § 7.16[B][1][b][ii] supra . The court dismissed, based on plaintiff's failure to allege the precise country of the Berne Convention in which they were first offered for sale. See Montblanc-Simplo GmbH v. Colibri Corp., 692 F. Supp. 2d 245, 257 & n.5 (E.D.N.Y. 2010) . For that proposition, it cited three unpublished decisions--all of which dealt with infringement that occurred before October 28, 1998, when U.S. law indeed incorporated the distinction between a "Berne Convention work" and all others. Id. at 257 . See § 7.16[B][6][c] supra . Given the intervening amendment to the law, that proposition no longer constituted good law by 2010, when this case was decided. See § 7.16[B][1][b][ii] supra . The holding is therefore in error. But see 692 F. Supp. 2d at 249 (judge entered magistrate's recommendation, absent objection from parties).

(n463)Footnote 416. See 17 U.S.C. § 101 , definition of "country of origin" P 1(B) (1989). One way to qualify under that now-repealed language would be to first publish a movie of U.S. origin in Italy, which at that time accorded a shorter term than did the U.S. To the extent that any party wished to use such a device, this modified "back door to Berne" was available under the BCIA, see § 17.01[C][1][b] infra , before its modification on this score by the DMCA, see § 7.16[B][6][c] supra .

(n464)Footnote 417. Nonetheless, by choosing a co-author who is not an American, and by first publishing the work in a non-treaty nation, the work can be brought out of the definition, and hence exempted from the registration requirement. That result follows inasmuch as the pertinent definition encompasses works first published "in a foreign nation that is not a treaty party, and all of the authors of the work are nationals, domiciliaries, or habitual residents of ... the United States." 17 U.S.C. § 101 , definition of "United States work" P 1(D) (emphasis added). See § 7.16[B][1][b][ii] supra .

(n465)Footnote 418. See § 7.16[B][1][b][ii] N. 70 supra .

(n466)Footnote 419. See Berne Convention (Paris text), art. 5(4), reproduced at § 5.08[B] N. 22 supra .

(n467)Footnote 420. Berne Convention (Paris text), art. 3(4). See § 4.01[C] N. 81 supra.

(n468)Footnote 421. 17 U.S.C. § 101 (1988) ("a work is considered to have been simultaneously published in two or more nations if its dates of publication are within 30 days of one another"). Page 61 2 Nimmer on Copyright § 7.16

(n469)Footnote 422. The 1998 amendment added the 30-day grace period in a different portion of the statute. See §§ 5.08[A] -5.08[B] supra .

(n470)Footnote 423. See § 7.16[B][1][b][ii] supra .

(n471)Footnote 423.1. 666 F. Supp. 2d 415 (D. Del. 2009) .

(n472)Footnote 423.2. The photos were taken in 1993 "but never 'published' prior to their posting on the German website in 2004." Id. at 422 n.12 . See Chap. 4 supra .

(n473)Footnote 423.3. 666 F. Supp. 2d at 419 .

(n474)Footnote 423.4. See § 7.16[B][1][b][ii] supra .

(n475)Footnote 423.5. 666 F. Supp. 2d at 419 .

(n476)Footnote 423.6. Id. at 419-420 .

(n477)Footnote 423.7. Id. at 419 .

(n478)Footnote 423.8. Id. at 422 , quoting Thomas Cotter, Toward a Functional Definition of Publication in Copyright Law , 92 Minn. L. Rev. 1724, 1749 (2008) .

(n479)Footnote 423.9. 666 F. Supp. 2d at 422 .

(n480)Footnote 423.10.

"The overarching purpose of the Berne Convention is to provide protection to authors whose works will be published in many countries." Christopher Sprigman, Reform(aliz)ing Copyright , 57 Stan. L. Rev. 485, 544 (2004) . "Berne's proscription of mandatory formalities is a rational response to the difficulty of complying (and maintaining compliance) with differently administered formalities that may have been, absent the Convention, imposed in dozens of national systems, some with registries, some without, and none of which shares information." Id . (explaining that "[e]vidence for this view can be found in the origins of the Berne Convention"). 666 F. Supp. 2d at 422 .

(n481)Footnote 423.11. Id. at 422-423 .

(n482)Footnote 423.12. Id. at 423 . In support, the opinion cites, inter alia , the Second Circuit's Muchnick decision, which the Supreme Court later reversed. See § 7.16[B][2][b] infra .

(n483)Footnote 423.13. 666 F. Supp. 2d at 424 .

(n484)Footnote 423.14. See § 7.16[B][6][c] supra . That discussion also concludes that, as a political matter, Congress was wise not to rely on such hypertechnical constructions in its general approach to the BCIA. Id . But the instant concern is not what is the ideal legislative choice, but rather how to construe the language that Congress actually passed.

(n485)Footnote 423.15. Id . In addition, regardless of how this particular case fares, the structure of U.S. law counsels foreign copyright owners to register their works whenever feasible, to obtain heightened relief. See § 7.16[B][6][d] supra .

(n486)Footnote 423.16. See the block quote above. Page 62 2 Nimmer on Copyright § 7.16

(n487)Footnote 423.17. In other words, far from requiring "an artist to survey all the copyright laws throughout the world ... prior to posting any copyrighted image on the Internet," Section 411 simply requires a Swede, such as plaintiff in this suit, once he has identified infringement that occurred in the United States and decided to redress it in Delaware, to comply with all the requirements to process his claim there. Among those requirements are payment of the requisite fee to the clerk of the court; hiring counsel licensed to practice before that jurisdiction; compliance with the font, page limits, and other indicia applicable to pleadings in that court; registration of the copyright with the United States Copyright Office; and so on.

(n488)Footnote 423.18. Kernal Records Oy v. Mosley, 794 F. Supp. 2d 1355, 1367 (S.D. Fla. 2011) , aff'd on other grounds, 694 F.3d 1294 (11th Cir. 2011) , cert. denied, ___ U.S. ___, 133 S. Ct. 1810, 185 L. Ed. 2d 812 (2013) . See § 7.16[A][1] supra . Moreover, the Supreme Court's subsequent rejection of part of the authority cited by this decision also undermines its conclusion. See N. 423.12 supra .

(n489)Footnote 423.19. About a third of that amendment's sections are designed to forestall treaty self-execution. See § 1.12[A] N. 5 supra .

(n490)Footnote 423.20. See id . N. 26.2 supra .

(n491)Footnote 423.20a. Kernal Records Oy v. Mosley, 794 F. Supp. 2d 1355, 1367 (S.D. Fla. 2011) (Treatise cited) . That opinion rejected Moberg 's "policy-driven analysis" as "wholly untethered to the actual statutory and treaty language." Id. at 1365 .

(n492)Footnote 423.20b. Id. at 1366 . As found by the district court, unlike in Moberg , the subject work was available for downloading and copying. Id. at 1364 . But note the very different gloss of the facts on appeal.

(n493)Footnote 423.20c. 694 F.3d 1294 (11th Cir. 2012) , cert. denied , ___ U.S. ___, 133 S. Ct. 1810, 185 L. Ed. 2d 812 (2013) .

(n494)Footnote 423.20d. Id. at 1309 . See § 4.07[B] supra .

(n495)Footnote 423.20e. 694 F.3d at 1311 .

(n496)Footnote 423.20f. One irony of this case is that plaintiff lost at both levels, despite the fact that the work in question was actually registered before the district court proceedings finished. Id. at 1299 . The problem is that plaintiff engaged in gamesmanship, only belatedly registering the work after fully litigating its entitlement to proceed absent registration. See § 7.16[B][3][c] supra .

(n497)Footnote 423.21. See Chap. 4 supra .

(n498)Footnote 424. See § 14.04 infra .

(n499)Footnote 425. See § 14.10[B][2] infra . An award of attorney's fees is not mandatory, but rather within the discretion of the court, even if registration has been accomplished prior to infringement. Id.

(n500)Footnote 426. It has been held that previous registration of a collective work in which the subject of suit appeared suffices for these purposes. Curtis v. General Dynamics Corp., 18 U.S.P.Q.2d (BNA) 1608, 1610 (W.D. Wash. 1990) ; Hilliard v. Mac's Place Inc., 30 U.S.P.Q.2d (BNA) 1559, 1560 (W.D. Wash. 1994) . See § 7.16[B][5][c] supra .

(n501)Footnote 427. Olander Enters., Inc. v. Spencer Gifts, LLC, 812 F. Supp. 2d 1070, 1077 (C.D. Cal. 2011) (Treatise cited) ; Berlyn, Inc. v. Gazette Newspapers, Inc., 157 F. Supp. 2d 609, 624 (D. Md. 2001) (Treatise cited) ; M & D Int'l Corp. v. Chan, 901 F. Supp. 1502, 1517 (D. Haw. 1995) (Treatise quoted) . See Evans Newton, Inc. v. Chicago Sys. Software, 793 F.2d 889, 896-897 (7th Cir.) , cert. denied , 479 U.S. 949, 107 S. Ct. 434, 93 L. Ed. 2d 383 Page 63 2 Nimmer on Copyright § 7.16

(1986) ; Shapiro & Son Bedspread Corp. v. Royal Mills Assoc., 764 F.2d 69, 73 n.4 (2d Cir. 1985) (Treatise quoted). See Medisim Ltd. v. BestMed LLC, 910 F. Supp. 2d 591, 619-620 (S.D.N.Y. 2012) ; Thomas v. Pansy Ellen Prods., Inc., 672 F. Supp. 237 (W.D.N.C. 1987) ; Oddo v. Ries, 743 F.2d 630 (9th Cir. 1984) ; Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27 (2d Cir. 1982) ; Streeter v. Rolfe, 491 F. Supp. 416 (W.D. La. 1980) ; Aitken v. Empire Constr. Co., 542 F. Supp. 252 (D. Neb. 1982) .

(n502)Footnote 428. See § 7.16[C][1][b] infra .

(n503)Footnote 429. Johnson v. Jones, 149 F.3d 494, 505-506 (6th Cir. 1998) ; Mason v. Montgomery Data, Inc., 741 F. Supp. 1282 (S.D. Tex. 1990) , aff'd , 967 F.2d 135, 143-144 (5th Cir. 1992) . See Ez-Tixz, Inc. v. Hit-Tix, Inc., 919 F. Supp. 728, 736 (S.D.N.Y. 1996) ; Parfums Givenchy, Inc. v. C & C Beauty Sales, Inc., 832 F. Supp. 1378, 1393 (C.D. Cal. 1993) ; Singh v. Famous Overseas, Inc., 680 F. Supp. 533, 535-536 (E.D.N.Y. 1988) ; Johnson v. University of Va., 606 F. Supp. 321, 325 (D. Va. 1985) ; Cd Law v. Lawworks, Inc., 35 U.S.P.Q.2d 1352, 1358 (W.D. Wash. 1994) ; Tannock v. Review Trading Corp., 231 U.S.P.Q. 798 (D.N.J. 1986) . For a very specialized application of this doctrine in the context of architectural works, see Robert R. Jones Assoc., Inc. v. Nino Homes, 858 F.2d 274, 281 (6th Cir. 1988) (discussed in § 2.08[D][2][a] supra ); Great S. Homes, Inc. v. Johnson & Thompson Realtors, 797 F. Supp. 609 (M.D. Tenn. 1992) (same).

(n504)Footnote 429.1. One case held that distribution of a 2008 manual constituted the "commencement" of infringement, thereby refusing to consider distribution of the 2009 manual a new infringing act. See B2B CFO Partners, LLC v. Kaufman, 787 F. Supp. 2d 1002, 1011-1013 (D. Ariz. 2011) .

(n505)Footnote 430. Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696, 700-701 (9th Cir. 2008) ; Amador v. McDonald's Corp., 601 F. Supp. 2d 403, 410-411 (D.P.R. 2009) ; Fournier v. Erickson, 202 F. Supp. 2d 290, 297-298 (S.D.N.Y. 2002) ; Ushodaya Enters., Ltd. v. V.R.S. Int'l, Inc., 64 F. Supp. 2d 352, 353 (S.D.N.Y. 1999) ; Innovative Networks, Inc. v. Young, 978 F. Supp. 167, 175 (S.D.N.Y. 1997) .

(n506)Footnote 431. Teevee Toons, Inc. v. Overture Records, 501 F. Supp. 2d 964, 967 (E.D. Mich. 2007) .

(n507)Footnote 431.1. Another case followed the above ruling. See City of Carlsbad v. Shah, 850 F. Supp. 2d 1087, 1102-1103, 1116 (S.D. Cal. 2012) . But it threw plaintiff a bone when denying its request for attorney's fees under the Copyright Act, by granting an apportioned percentage of the fees that it incurred in pursuing a coordinate claim under the Anticybersquatting Consumer Protection Act. Id. at 1118 .

(n508)Footnote 432. See Greenfield v. Twin Vision Graphics, Inc., 268 F. Supp. 2d 358, 386 (D.N.J. 2003) .

(n509)Footnote 433. See § 2.20 supra .

(n510)Footnote 434. See Cornerstone Home Builders, Inc. v. McAllister, 311 F. Supp. 2d 1351, 1352 (M.D. Fla. 2004) (denying statutory damages).

(n511)Footnote 434.1. See Wilson v. Brennan, 666 F. Supp. 2d 1242 (D.N.M. 2009) .

(n512)Footnote 434.2. Id. at 1251 .

(n513)Footnote 434.3. Id. at 1254 .

(n514)Footnote 434.4. Id. at 1254 .

(n515)Footnote 434.5. Because he failed to register within three months of first publication, he could not take advantage of the applicable grace period. Id. at 1254 . See § 7.16[C][1][b] infra .

(n516)Footnote 435. Data Gen. Corp. v. Grumman Sys. Support Corp., 795 F. Supp. 501, 504 (D. Mass. 1992) . Page 64 2 Nimmer on Copyright § 7.16

See later opinions reaffirming this award, 825 F. Supp. 340, 347 (D. Mass. 1993) , and particular computations, 825 F. Supp. 361 (D. Mass. 1993) . Without confronting this precise issue, the Court of Appeals affirmed the awards, including fees. 36 F.3d 1147, 1178 (1st Cir. 1994) .

(n517)Footnote 436. 17 U.S.C. § 504(c) . See § 14.04[E][1] infra .

(n518)Footnote 437. 17 U.S.C. § 505 .

(n519)Footnote 438. 17 U.S.C. § 412 . This provision refers to both "sections 504 and 505," without drawing any distinction between them, as did Data General .

(n520)Footnote 439. 17 U.S.C. §§ 412(1) , 412(2) .

(n521)Footnote 440. Hustlers, Inc. v. Thomasson, 253 F. Supp. 2d 1285, 1291 (ND. Ga. 2002) .

(n522)Footnote 441. See § 7.16[B][4] supra .

(n523)Footnote 442. 138 Cong. Rec. H4134 (daily ed. June 4, 1992) (statement of Rep. Hughes) ("the requirements of Section 412 apply in pari materia to original registrations and to situations where only a renewal registration is obtained"). See S. Rep. No. 102-194, 102d Cong., 1st Sess. 22 (1991).

(n524)Footnote 443. As to foreign works, see § 7.16[C][1][a][iv] infra .

(n525)Footnote 444. See § 9.05[B][1] infra .

(n526)Footnote 445. See § 9.08 infra .

(n527)Footnote 446. See §§ 14.10[B][2] , 14.10[D][2][b] infra .

(n528)Footnote 447. See § 14.04 infra .

(n529)Footnote 448. Query whether a party who breaches a duty to register, resulting in a later plaintiff's inability to recover these remedies, could be required to pay those forgone awards as part of the damages for breach of contract. See Flack v. Friends of Queen Catherine Inc., 139 F. Supp. 2d 526, 537 (S.D.N.Y. 2001) .

(n530)Footnote 449. An exception is discussed in the text below.

(n531)Footnote 450. Football Ass'n Premier League v. YouTube, Inc., 633 F. Supp. 2d 159, 162 (S.D.N.Y. 2009) (Treatise quoted) . See H. Rep., p. 158.

(n532)Footnote 451. Kernel Records Oy v. Mosley, 694 F.3d 1294, 1302 (11th Cir. 2012) (Treatise cited) , cert. denied , ___ U.S. ___, 133 S. Ct. 1810, 185 L. Ed. 2d 812 (2013) . See § 7.16[B][6][d] supra .

(n533)Footnote 452. See § 17.01[B] infra . "Awards of statutory damages and attorney's fees are not generally provided for under foreign copyright statutes, and the remaining remedies recoverable under the bill for infringements of unregistered copyrights are fully comparable to those granted under the laws of other countries. Statutory damages and attorney's fees would represent a bonus given for registration." Reg. Supp. Rep., p. 127.

(n534)Footnote 453. One case rejects arguments that this provision violates the Berne Convention, TRIPs, and the Digital Millennium Copyright Act. Football Ass'n Premier League v. YouTube, Inc., 633 F. Supp. 2d 159, 163-167 (S.D.N.Y. 2009) . See § 18.06[B][2] infra . It also rejects the back-up argument that punitive damages thereby become available to foreign claimants. 633 F. Supp. 2d at 167 n.6 . See § 14.02[C][2] infra .

(n535)Footnote 454. See Rudnicki v. WPNA 1490 AM, 580 F. Supp. 2d 690, 694 (N.D. Ill. 2008) (Treatise cited) . Page 65 2 Nimmer on Copyright § 7.16

Subsequently, the Acting Register of Copyrights characterized this provision as a violation of the Berne Convention. Senator Hatch later cited that opinion as a basis for urging elimination of this provision incident to the Uruguay Round Agreements Act. Hearings on GATT Intellectual Property Provisions at 87 (quoting Barbara Ringer). Nonetheless, this feature survived that 1994 amendment. See § 7.16[I] infra .

(n536)Footnote 455. See generally Chap. 17 infra .

(n537)Footnote 456. See § 7.16[B][1][b][ii] supra .

(n538)Footnote 457. "[F]oreign authors must also register in order to obtain the important benefits of the presumption of validity and statutory damages." House Joint Explanatory Statement on House-Senate Compromise Incorporated in Senate Amendment to H.R. 4262, contained in 134 Cong. Rec. H10097 (daily ed. Oct. 12, 1988).

(n539)Footnote 458. See § 7.16[B][1][b][iii] supra .

(n540)Footnote 459. See Football Ass'n Premier League v. YouTube, Inc., 633 F. Supp. 2d 159, 165-166 (S.D.N.Y. 2009) .

(n541)Footnote 460. The subject statutory provision does indeed contemplate registration, by requiring the copyright owner to make "registration for the work, if required by subsection (a), within three months after its first transmission." 17 U.S.C. § 411(c)(2) . The wrinkle here is that subsection (a) itself is limited to "any United States work." 17 U.S.C. § 411(a) . See § 7.16[B][1][b][ii] supra . The upshot is that foreigners need never register their sounds and images as a condition for recovering statutory damages.

(n542)Footnote 461. 17 U.S.C. § 412(2) .

(n543)Footnote 462. See Getaped.com, Inc. v. Cangemi, 188 F. Supp. 2d 398, 400 (S.D.N.Y. 2002) , discussed in § 4.07[B] N. 15 supra .

(n544)Footnote 463. 17 U.S.C. § 412(2) .

(n545)Footnote 464. H. Rep., p. 158.

(n546)Footnote 465. See ABC, Inc. v. PrimeTime 24, Joint Venture, 67 F. Supp. 2d 558 (M.D.N.C. 1999) .

(n547)Footnote 466. In that case, plaintiff broadcasted episodes and on that same day offered to distribute them in Canada. Id. at 561-562 . Although broadcast does not constitute publication, the offer to distribute does. See § 4.11[B] supra . The court held that the extraterritorial nature of the distribution did not detract from its qualification as "publication." See § 4.01[C][1] supra .

(n548)Footnote 467. For the grace period to apply, infringement must follow publication. 17 U.S.C. § 412(2) . Given that PrimeTime presumably copied the copyrighted material upon broadcast, ABC's evidence that it offered to distribute them on the date of broadcast, standing alone, should have been deemed inadequate, unless it were further proven that that offer occurred earlier in the day than the broadcast itself.

(n549)Footnote 468. See Homes & Land Affiliates, LLC v. Homes & Loans Magazine, LLC, 598 F. Supp. 2d 1248 (M.D. Fla. 2009) .

(n550)Footnote 469. Under that variant, the copyright owner could have obtained the heightened remedies of statutory damages and attorney's fees only if it had registered the work by April 30, 2007.

(n551)Footnote 470. The fact that such registration would have taken place within three months of infringement is of no moment; the three-month grace period only extends from publication, and only saves forfeiture of the heightened Page 66 2 Nimmer on Copyright § 7.16

remedies when infringement commenced after first publication (not when it infringes a then-unpublished work). Under the current variant, the copyright owner could have obtained the heightened remedies of statutory damages and attorney's fees only if it had registered the work before the infringement commenced on July 6, 2007.

(n552)Footnote 471. See Gerig v. Krause Publ'ns, Inc., 58 F. Supp. 2d 1261, 1268-1269 (D. Kan. 1999) .

(n553)Footnote 471.1. See Wallenfang v. Havel, 707 F. Supp. 2d 800, 810 (E.D. Wis. 2010) .

(n554)Footnote 472. See Aitken v. Empire Constr. Co., 542 F. Supp. 252 (D. Neb. 1982) .

(n555)Footnote 473. RPM Mgmt., Inc. v. Apple, 943 F. Supp. 837, 842 (S.D. Ohio 1996) (Treatise cited) . See Aerospace Servs. Int'l v. LPA Group, Inc., 57 F.3d 1002, 1003-1004 (11th Cir. 1995) (per curiam ), superseding , 49 F.3d 719 (11th Cir. 1995) (per curiam ).

(n556)Footnote 474. Johnson v. Jones, 921 F. Supp. 1573, 1585 (E.D. Mich. 1996) . See § 4.13[B] supra .

(n557)Footnote 475. See § 4.03[B] supra .

(n558)Footnote 476. Zito v. Steeplechase Films, Inc., 267 F. Supp. 2d 1022 (N.D. Cal. 2003) (Treatise cited) . See Bouchat v. Champion Prods., Inc., 327 F. Supp. 2d 537, 549, 551 (D. Md. 2003) (dictum ), aff'd on other grounds , 506 F.3d 315 (4th Cir. 2007) , cert. denied , 553 U.S. 1014, 128 S. Ct. 2054, 170 L. Ed. 2d 810 (2008) .

(n559)Footnote 477. See § 7.16[B][1][b][iii] supra .

(n560)Footnote 478. 17 U.S.C. § 412 .

(n561)Footnote 479. See § 8D.06[A][2] infra . Cf. § 7.16[B][1][b][i] supra .

(n562)Footnote 480. For a further wrinkle, imagine that a defendant in suit 1 commenced infringement prior to registration, but that defendant in an entirely different lawsuit 2 commenced infringement only after registration. To make matters even more complicated, imagine that defendants in suit 1 and suit 2 are jointly and severally liable. Those facts correspond to Bouchat v. Bon-Ton Dep't. Stores, Inc., 506 F.3d 315 (4th Cir. 2007) , discussed in § 14.04[E][2][e] infra .

(n563)Footnote 481. See Love v. New York City, 13 U.S.P.Q.2d 1988, 1989 (S.D.N.Y. 1989) .

(n564)Footnote 482. See Qualey v. Caring Ctr. of Slidell, 942 F. Supp. 1074, 1076-1077 (E.D. La. 1996) .

(n565)Footnote 483. One court indicated that the "defendants may have the better of the argument," but nonetheless, declined to dismiss the prayer for statutory damages and attorney's fees under these circumstances. Guillot-Vogt Assocs., Inc. v. Holly & Smith, 848 F. Supp. 682, 691 (E.D. La. 1994) (registration occurred after infringement by reproduction, but before infringement by distribution). See § 14.04[E][2] infra .

(n566)Footnote 484. Note that, as of 2008, the conduct that ended in 1995 is also substantively barred by the statute of limitations. See § 12.05 infra .

(n567)Footnote 485. Common law copyright was largely pre-empted under the current Act. See §§ 1.01[B] , 2.02 supra .

(n568)Footnote 486. See § 7.16[A][2][c][i] supra . Moreover, not all unpublished works were subject to statutory copyright via registration under the 1909 Act. Id .

(n569)Footnote 487. H. Rep., p. 158. Page 67 2 Nimmer on Copyright § 7.16

(n570)Footnote 488. H. Rep., p. 158.

(n571)Footnote 489. See §§ 7.16[A][2][b] supra , 7.17[B] infra .

(n572)Footnote 490. Today, the requirement is inapplicable to foreigners and subject to other exemptions. See § 7.16[B][1][b] supra .

(n573)Footnote 491. See § 7.16[A][2][b] supra .

(n574)Footnote 492. See § 7.16[C][1][b] supra .

(n575)Footnote 493. H. Rep., p. 182.

(n576)Footnote 494. 17 U.S.C. § 412 (caption). It is an established rule of statutory construction that the caption that Congress affixes to a section of law may be used in construing the body of the section. 28 N. J. Singer, Sutherland Statutory Construction § 54.07, at 267 (5th ed. 1992).

(n577)Footnote 495. Dielsi v. Falk, 916 F. Supp. 985, 994 n.6 (C.D. Cal. 1996) (Treatise cited) . When Congress wishes to condition a broad range of remedies on the formality of registration, it knows how to draft legislative explicitly so providing. See § 9.05[A][2] N. 22 infra .

(n578)Footnote 496. On the other hand, there is no validity to the notion that an action for injunctive relief alone can automatically proceed, even absent an application to register the copyright. Berlyn, Inc. v. Gazette Newspapers, Inc., 157 F. Supp. 2d 609, 624 (D. Md. 2001) (Treatise cited) . See Rene Perez & Assocs. Inc v. Almeida, 39 U.S.P.Q.2d 2010 (S.D. Fla. 1996) . See generally § 7.16[B][1] supra .

(n579)Footnote 497. See § 7.16[B][1][b] supra .

(n580)Footnote 498. 17 U.S.C. § 503(a)(1) ("[a]t any time while an action under this title is pending, the court may order the impounding"). See §§ 14.07 -14.08 infra .

(n581)Footnote 499. 17 U.S.C. § 502 ("[a]ny court having jurisdiction of a civil action arising under this title may ... grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright"). See § 14.06 infra .

(n582)Footnote 500. The contrary ruling of Olan Mills, Inc. v. Linn Photo Co., 795 F. Supp. 1423 (N.D. Iowa 1991) (no declaratory judgment to copyright owner regarding infringement of unregistered copyright) was appropriately reversed on appeal. 23 F.3d 1345, 1349 (8th Cir. 1994) ("The power to grant injunctive relief is not limited to registered copyrights, or even to those copyrights which give rise to an infringement action.").

(n583)Footnote 501. 940 F.2d 1471 (11th Cir. 1991) . Note also the erroneous dictum from another opinion issued around the same time by a different panel of the same court: "Trademark protection accrues with use, while copyright protection begins with registration." Bauer Lamp Co. v. Shaffer, 941 F.2d 1165, 1171 (11th Cir. 1991) (emphasis added). See § 7.16[A][1] supra .

(n584)Footnote 502. 940 F.2d at 1480-1484 . The panel relied on extensive quotations from the House Report on the Berne Convention Implementation Act of 1988, which concluded that the registration requirements of 17 U.S.C. § 411(a) should remain unchanged following treaty adherence. The problem with such reliance is that the full Congress subsequently rejected the House approach. See § 7.16[B][6][c] supra . Accordingly, the panel built its conclusion on legislative history that the legislature ultimately rejected.

(n585)Footnote 503. 949 F.2d 378 (11th Cir. 1991) , appeal dismissed en banc , 959 F.2d 188 (11th Cir. 1992) . The procedural history of this case is discussed further in § 3.04[B][2][b] supra . Disclosure should be made that, after Page 68 2 Nimmer on Copyright § 7.16

the panel opinion was handed down, CNN retained this writer to argue the rehearing en banc . See also Forms 46-11, 46-29 infra .

(n586)Footnote 504. The Eleventh Circuit had previously commented on the need for injunctive relief in a prior case also involving video news monitoring: "Each infringement action would yield a rather small damage recovery. This is a classic case, then, of a past infringement and a substantial likelihood of future infringements which would normally entitle the copyright holder to a permanent injunction against the infringer pursuant to 17 U.S.C. § 502(a) (1977) ." Pacific & S. Co. v. Duncan, 744 F.2d 1490, 1499 (11th Cir. 1984) , cert. denied , 471 U.S. 1004, 105 S. Ct. 1867, 85 L. Ed. 2d 161 (1985) , later opinion , 792 F.2d 1013 (11th Cir. 1986) .

(n587)Footnote 505. See, e.g. , Walt Disney Co. v. Powell, 897 F.2d 565, 567-568 (D.C. Cir. 1990) (affirming order enjoining infringement of cartoon characters not at issue in suit); National Football League v. McBee & Bruno's, Inc., 792 F.2d 726, 732 (8th Cir. 1986) (affirming grant of permanent injunction regarding future broadcasts of "works not yet in existence"); A&M Records, Inc. v. A.L.W., Ltd., 855 F.2d 368, 370 (7th Cir. 1988) (holding defendant in contempt who, after injunction entered by trial court, thereafter rented "recently released" records, i.e. , works not created or published at the time the order was originally entered); Cross Keys Publ'g Co. v. Wee, Inc., 921 F. Supp. 479, 481 (W.D. Mich. 1995) ; Marvin Music Co. v. BHC Ltd. P'ship, 830 F. Supp. 651, 657 (D. Mass. 1993) ; Columbia Pictures Indus., Inc. v. Aveco, Inc., 800 F.2d 59, 61 n.1 (3d Cir. 1986) (approving permanent injunction enjoining defendants from performing copyrighted motion pictures owned by plaintiffs); MCA, Inc. v. Parks, 796 F.2d 200, 202 (6th Cir. 1986) (affirming order enjoining skating rink operator "from further use of the jukebox in their establishment until they obtained an ASCAP license"); Sailor Music v. Gap Stores, Inc., 668 F.2d 84, 86 (2d Cir.) , cert. denied , 456 U.S. 945, 102 S. Ct. 2012, 72 L. Ed. 2d 468 (1982) (affirming order sought by 7 ASCAP plaintiffs permanently enjoining clothing store from "rendering any public performances by means of radio broadcasts over loudspeakers which would infringe plaintiff's copyrighted musical compositions"); Fame Publ'g Co. v. Alabama Custom Tape, Inc., 507 F.2d 667, 669 (5th Cir.) , cert. denied , 423 U.S. 841, 96 S. Ct. 73, 46 L. Ed. 2d 61 (1975) (affirming order permanently enjoining defendant "from continued infringement of plaintiffs' copyrights in musical compositions"). Like the injunction sought by CNN, the foregoing injunctions apply across the board, rather than solely to the works for which registration certificates are appended to plaintiff's complaint.

See also Encyclopedia Britannica Educ. Corp. v. Crooks, 542 F. Supp. 1156, 1187 (W.D.N.Y. 1982) (granting permanent injunction enjoining defendant from copying future works); Southwestern Bell Tel. Co. v. Nationwide Indep. Directory Serv., Inc., 371 F. Supp. 900, 911 (W.D. Ark. 1974) (granting permanent injunction against infringing "plaintiff's copyrights in its directories heretofore published or which may be published in the future"); Paramount Pictures Corp. v. Labus, 16 U.S.P.Q.2d 1142, 1143-1144 (W.D. Wis. 1990) (granting permanent injunction enjoining future infringement of works presently owned by plaintiffs or which may be owned by plaintiffs in the future); Orth-O-Vision Inc. v. Home Box Office, 474 F. Supp. 672, 685-686 (S.D.N.Y. 1979) (enjoining infringement of "future" works "not yet published or copyrighted"). A few district court cases long predating the current Act ruled to the contrary. See Massapequa Publ'g Co. v. Observer, Inc., 126 U.S.P.Q. 229 (E.D.N.Y. 1960) ; Metro-Goldwyn-Mayer Distrib. Corp. v. Fisher, 10 F. Supp. 745 (D. Md. 1935) ; Sweet v. G. W. Bromley & Co., 154 F. 754 (C.C. Pa. 1907) .

One court offers a pithy summary of the significance of registration, characterizing it as "merely the plaintiff's 'ticket' to court; the protection of the copyright arises at the time of the creation of the work." PRC Realty Sys., Inc. v. National Ass'n of Realtors, Inc., 766 F. Supp. 453, 461 (E.D. Va. 1991) . A further discussion appears below in the context of injunctive relief. See § 14.06[C][2][c] infra .

(n588)Footnote 506. It is not clear from the opinion how many registrations CNN had effectuated for its works. What is clear is that CNN tendered to the district court only one such certificate, in reliance on the approval of precisely that posture in a previous Eleventh Circuit case raising identical issues. See N. 504 supra .

(n589)Footnote 507. See § 7.01 supra . Page 69 2 Nimmer on Copyright § 7.16

(n590)Footnote 508. See § 7.16[C][1][b] supra .

(n591)Footnote 509. "Since works are generally not formally copyrighted until they are in final form and ready for distribution to the public, civil remedies for the distribution of pre-release works are lacking." H. Rep. (FECA) p.4. (Presumably, that Report imprecisely uses the phrase "formally copyrighted" to mean "registered.")

(n592)Footnote 510. "The success of copyrighted content, however is also its Achilles' Heel. People now camcord movies in theaters to sell online or in DVD format. They obtain pre-release copies of content and sell it online." 151 Cong. Rec. H2119 (daily ed. Apr. 19, 2005) (Statement of Rep. Conyers).

(n593)Footnote 511. H. Rep. (FECA) p. 4. See § 15.06[A] infra .

(n594)Footnote 512. 151 Cong. Rec. S494-495 (daily ed. Jan. 25, 2005) (Statement of Sen. Hatch).

(n595)Footnote 513. Act of April 27, 2005, Pub. L. 109-9, 119 Stat. 218 , Sec. 104.

(n596)Footnote 514. 17 U.S.C. § 412 (2005) .

(n597)Footnote 515. See § 7.16[B][1][b][iv] supra .

(n598)Footnote 516. 17 U.S.C. § 412 (2005) . Accordingly, a residuary loophole could still trap copyright owners. Imagine an impending theatrical release of a motion picture due to take place on June 6. Out of abundant caution, the studio pre-registers the work on April 24. Nonetheless, if someone had managed to acquire an even earlier pre-release version and began to exploit it on April 1, then the pre-registration would fail to satisfy the requisite condition of having been effectuated "before the commencement of the infringement." Id . Under those circumstances, the copyright owner would forfeit the ability to recover statutory damages and attorney's fees. The incentive therefore arises to pre-register as early as possible.

(n599)Footnote 517. See § 7.18 infra . Thus, if one imagines a "rocket docket" in which final judgment is entered scant months after suit is filed and before the work itself has been published, the work itself might not yet be subject to the statutory necessity of perfection of the pre-registration via final registration. In those instances, the plaintiff will forego statutory damages and attorney's fees unless it either delays the court proceedings or accelerates the registration process.

(n600)Footnote 518. That date refers not to when the Copyright Office issues the subject certificate, but rather to when "an application, deposit, and fee, which are later determined by the Register of Copyrights or by a court of competent jurisdiction to be acceptable for registration, have all been received in the Copyright Office." 17 U.S.C. § 410(d) . See § 7.18[E] infra .

(n601)Footnote 519. 17 U.S.C. § 412 (2005) . Accordingly, the copyright proprietor might have pre-registered the work before infringement commenced, and also might have a valid registration certificate in hand before final judgment is entered; nonetheless, the proprietor will not be able to recover statutory damages and attorney's fees to the extent that that certificate issued over three months after the work's first publication. The same deficit applies even if the certificate issued within three months of the work's first publication, to the extent that it was delayed for over a month after the copyright owner learned of the infringement.

(n602)Footnote 520. See §§ 12.11[A] -12.11[B] infra .

(n603)Footnote 521. 17 U.S.C. § 410(c) . The prima facie presumption from the registration certificate applies not only to American works, but even to foreign works exempt from the registration requirement as a prerequisite for instituting suit. See §§ 7.16[B][1][b][ii] , 7.16[B][6][d] supra . "[F]oreign authors must also register in order to obtain the important benefits of the presumption of validity and statutory damages." House Joint Explanatory Statement on Page 70 2 Nimmer on Copyright § 7.16

House-Senate Compromise Incorporated in Senate Amendment to H.R. 4262, contained in 134 Cong. Rec. H10097 (daily ed. Oct. 12, 1988).

(n604)Footnote 522. Id . See Carolina Enters., Inc. v. Coleco Indus., Inc., 211 U.S.P.Q. 479 (D.N.J. 1981) .

(n605)Footnote 523. See Eisenman Chem. Co. v. NL Indus., Inc., 595 F. Supp. 141 (D. Nev. 1984) . As to the issue of retroactivity in this context, see § 1.11 supra .

(n606)Footnote 524. 17 U.S.C., Trans. Supp. Prov., Sec. 109.

(n607)Footnote 525. This provision has since been eliminated by the BCIA. For its text, see Appendix 2A.

(n608)Footnote 526. H. Rep., pp. 181-182. See Latin Am. Music Co. v. Archdiocese of San Juan of the Roman Catholic & Apostolic Church, 194 F. Supp. 2d 30, 39 (D.P.R. 2001) (Treatise quoted) , aff'd in part, rev'd in part , 499 F.3d 32 (1st Cir. 2007) , cert. denied , 552 U.S. 1182, 128 S. Ct. 1232, 170 L. Ed. 2d 64 (2008) .

(n609)Footnote 527. 17 U.S.C. § 101 .

(n610)Footnote 528. But see § 12.11[A][1] infra . In Tempo Music, Inc. v. Famous Music Corp., 838 F. Supp. 162, 165 n.5 (S.D.N.Y. 1993) , the court applied the 1909 Act presumption to an old registration, albeit on the basis of Section 112 of the Transitional and Supplementary Provisions, which would seem inapplicable to a case filed after January 1, 1978. See § 1.01[C] supra .

(n611)Footnote 529. Tempo Music, Inc. v. Famous Music Corp., 838 F. Supp. 162, 166 (S.D.N.Y. 1993) (Treatise cited) . See § 10.07 infra . See also § 7.14[B][2][e] supra .

(n612)Footnote 530. 17 U.S.C. § 205(c)(2) .

(n613)Footnote 531. See § 10.07 infra .

(n614)Footnote 532. See § 1.11 supra .

(n615)Footnote 533. See § 7.13[B] supra . See also § 7.16[A] supra .

(n616)Footnote 534. 17 U.S.C. § 405(a)(2) . For a further condition in these circumstances to the preservation of the copyright, see § 7.13[B] supra .

(n617)Footnote 535. See § 7.14[B][2][e] supra .

(n618)Footnote 536. See § 7.16[C] supra .

(n619)Footnote 537. 19 C.F.R. § 133.33(a)(1) .

(n620)Footnote 538. See § 18.02 infra .

(n621)Footnote 539. See § 18.03[A] N. 21 infra .

(n622)Footnote 540. See § 8A.05 infra .

(n623)Footnote 541. See §§ 12.11[A] -12.11[B] infra .

(n624)Footnote 542. 17 U.S.C. § 601(b)(2) , (d)(3) . See § 7.22 infra .

(n625)Footnote 543. Recordation of transfers (as distinguished from registration) as a required formality is Page 71 2 Nimmer on Copyright § 7.16

discussed at § 10.07 infra .

(n626)Footnote 544. Under the 1909 Act, only certain types of unpublished works could be registered. See § 7.16[A][2][c] supra .

(n627)Footnote 545. 17 U.S.C. § 408(a) .

(n628)Footnote 546. See §§ 7.16[B][4] supra , 9.05[A][2] infra .

(n629)Footnote 547. See Overview supra .

(n630)Footnote 548. See § 18.06[C] infra .

(n631)Footnote 549. See § 9A.04 infra .

(n632)Footnote 550. See § 8E.03 infra .

(n633)Footnote 551. See § 7.16[C][1] supra . To the contrary, when Congress added restored copyright protection under this bill (discussed below), it perpetuated the discrimination in recovery of attorney's fees and statutory damages, disallowing those remedies for these unregistered works. See § 9A.04[C][3][b] infra .

(n634)Footnote 552. See § 18.06[B][3] infra .

(n635)Footnote 553. Hearings on GATT Intellectual Property Provisions at 87 (statement of Sen. Hatch) ("I do not understand why, and regret that, the bill we are today considering is defective in this regard"). See § 18.08[B] N. 39 infra .

(n636)Footnote 554. See § 8E.03[A][2] infra .

(n637)Footnote 555. The same considerations are explored above in the context of works consisting of sounds and images. See § 7.16[B][1][b][iii] supra .

(n638)Footnote 556. See § 8E.01[B][2][a] infra .

(n639)Footnote 557. See § 9A.04[C][2] infra .

(n640)Footnote 558. See § 17.01[B][1] infra .

(n641)Footnote 559. 17 U.S.C. § 104A(e)(1)(D)(ii) . See § 9A.04[C][2][a] infra .