DMCA Timing Restrictions Do Not Excuse Failure to Register Works in a Timely Manner

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By Anandashankar Mazumdar

Nov. 12 --The timing constraints of the Digital Millennium Copyright Acts notice-and-takedown provisions do not excuse a copyright infringement plaintiff from the requirement of obtaining a copyright registration certificate before filing a claim in federal court, the U.S. District Court for the Middle District of Tennessee ruled Nov. 7 (Schenck v. Orosz, M.D. Tenn., No. 3:13-cv-00294, 11/7/13).

Granting in part a defendant's motion to dismiss claims regarding works whose registration applications were still being processed by the Copyright Office, the court acknowledged that there is a significant split in the circuits between those who follow the “registration approach” and those that follow the “application approach.”

Nevertheless, the court determined that it would continue to follow its prior reasoning and reject infringement actions with respect to works for which a plaintiff had filed applications to register the respective copyright interests, but the Copyright Office had not yet issued a registration certificate.

Dispute Between Online Novelty Retailers
Russell Schenck and Bethany Primrose d/b/a Insomniac Arts of Nashville, Tenn., create designs that they apply to novelty items like cases for mobile electronics, mugs and shirts. Cale Orosz of Las Vegas is the principal of Case Doodle LLC, which operates websites such as Squiggle Case of Grandville, Mich., another online retailer of novelty goods.

In November 2012, Insomniac's most popular items were no longer selling and it discovered that “Ecello Electronics,” being operated by Orosz directly or through Case Doodle, was selling identical items and had, according to the court “essentially copied the vast majority of Insomniac's seller pages wholesale, including product titles, product descriptions, and the Product Images.”

In April 2013, Insomniac Arts sued Case Doodle, alleging that it had infringed its copyright interest in its Web pages, product designs and products. Earlier, in March, Insomniac Arts had also submitted a notice to Squiggle Case's internet service provider, LLC of Houston, directing it to take down the offending Web pages.

Insomniac filed a motion for registration determination and restraint of further infringement as well as a motion for a preliminary injunction. The first motion sought to have certain pending copyright registrations declared as being registered under the Copyright Act and also would bar Case Doodle from putting back up the websites taken down by Hostgator.

Case Doodle moved for dismissal, arguing that the alleged copyright interests had not been registered as required by the Copyright Act, and that the infringement claims had been inadequately pleaded.

Court Cannot 'Declare” Unregistered Works as Registered
Judge Aleta Arthur Trauger first declined to declare as registered any works whose copyright registrations were pending at the Copyright Office. The court directed Insomniac to seek a determination from the Copyright Office regarding such instances. Regarding the remainder of the motion for registration determination and restraint of further infringement, the court found it moot in light of Insomniac's motion for a preliminary injunction.

The court then turned to the remaining motions, which put forth the question of whether, even if the works could not be declared as registered, a pending registration was sufficient to satisfy Section 411(a) of the Copyright Act, which requires registration before a claim of copyright infringement can be made.

La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 75 U.S.P.Q.2d 1496 (10th Cir. 2005) (148 PTD, 8/3/05), and M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 15 U.S.P.Q.2d 1282 (11th Cir. 1990), followed the “registration approach,” holding that Section 411(a) is satisfied only when the Copyright Office actually issues a registration certificate.

However, decisions by other federal appeals courts have followed the “application approach,” holding that Section 411(a) is satisfied when a plaintiff has submitted the appropriate application for registration with the Copyright Office. Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 222 U.S.P.Q. 956 (5th Cir. 1984); Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 69 U.S.P.Q.2d 1447 (7th Cir. 2003) (07 PTD, 1/13/04); Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612, 94 U.S.P.Q.2d 1735 (9th Cir. 2010) (109 PTD, 6/9/10).

'Registration Approach' Followed
The Middle District of Tennessee has followed the registration approach in cases such as Specific Software Solutions, LLC v. Inst. of Workcomp Advisors, 615 F. Supp. 2d 708, 92 U.S.P.Q.2d 1208 (M.D. Tenn. 2009), as have other district courts. SeeTeevee Toons, Inc. v. Overture Records, 501 F. Supp. 2d 964 (E.D. Mich. 2007); Hawaiian Village Computer, Inc. v. Print Mgmt. Partners, Inc., 501 F. Supp. 2d 951 (E.D. Mich. 2007); Ripple Junction Design Co. v. Olaes Enters., No. 1:05-CV-43 (S.D. Ohio Sept. 8, 2005).

The court then noted that the Digital Millennium Copyright Act's notice-and-takedown provisions require that a copyright holder “substantially” comply with the statutory requirements of the Copyright Act. In this case, Insomniac argued that its application should be considered “substantial” compliance because of the timing requirements of the DMCA; that is, the DMCA requires that a copyright holder file an infringement action within 14 days or else the ISP could re-post the material.

However, the court said that considering the particulars of this case, the timing problems were caused by Insomniac's own choice not to register the works when they were first published. This was particularly true given that in many other cases, Insomniac did not delay in seeking registration.

Thus, the court concluded that under Rule 12(b)(6), the complaint must be dismissed with respect to works that have not been properly registered. However, there were several works at issue whose registration process had been complete at the time the claims were filed. Thus, those claims were not dismissed.

Turning to the motion for a preliminary injunction, the court found that an injunction was warranted with respect to the works that were fully registered at the time of the initiation of the complaint and also for which Insomniac has adequately alleged infringement by Case Doodle.

However, the court issued a temporary restraining order barring Hostgator from re-posting any such material, deferring an injunction order until Insomniac file a proposed injunction. The court also gave leave to Insomniac to amend its complaint once the Copyright Office finishes processing any pending registrations.

Insomniac Arts was represented by Anjlee Khurana and James Harold Harris III of Harris Martin Jones P.A., Nashville, Tenn. Case Doodle was represented by Christopher J. McGeehan of Chicago.


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To contact the reporter on this story: Anandashankar Mazumdar in Washington at

To contact the editor responsible for this story: Naresh Sritharan at

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