Acceptance of Application for Copyright Registration is Necessary for Instituting Infringement Suit: ED Michigan | Practical Law

Acceptance of Application for Copyright Registration is Necessary for Instituting Infringement Suit: ED Michigan | Practical Law

In Doyle Homes, Inc. v. Signatures Group of Livingston, Inc., the US District Court for the Eastern District of Michigan granted several defendants' motions to dismiss for failure to state a claim because plaintiff failed to register its copyright before bringing the infringement action, as required by 17 USC § 411(a).

Acceptance of Application for Copyright Registration is Necessary for Instituting Infringement Suit: ED Michigan

by Practical Law Intellectual Property & Technology
Published on 25 Nov 2014 • USA (National/Federal)
In Doyle Homes, Inc. v. Signatures Group of Livingston, Inc., the US District Court for the Eastern District of Michigan granted several defendants' motions to dismiss for failure to state a claim because plaintiff failed to register its copyright before bringing the infringement action, as required by 17 USC § 411(a).
On November 19, 2014, in Doyle Homes, Inc. v. Signatures Group of Livingston, Inc., the US District Court for the Eastern District of Michigan granted several defendants' motions to dismiss for failure to state a claim, holding that Doyle Homes, Inc. had not alleged copyright registration within the meaning of Section 411(a) of the Copyright Act, a requirement for instituting a copyright infringement suit (17 USC § 411(a)) (No. 14-12933, (E.D. Mich. Nov. 19, 2014)).
At the time of filing suit, Doyle Homes had applied for a copyright registration on an architectural plan, but the registration had not issued. In deciding whether this met the registration requirement of 17 USC § 411(a), the district court noted that federal appellate courts were split on the applicable standard. The court explained that there were two approaches to interpreting Section 411(a)'s registration requirement:
  • The application approach, adopted by the US Courts of Appeals for the Ninth, Fifth and Seventh Circuits, deems a copyright registered at the time the copyright holder's application is received by the Copyright Office.
  • The registration approach, adopted by the Tenth and Eleventh Circuits, deems a copyright registered at the time the Copyright Office acts on the application (but issuance of a certificate is not required).
The district court noted that the Sixth Circuit, the circuit in which the district court sits, had not yet weighed in on the issue. The district court determined that the registration approach was the correct one in part for the following reasons:
  • The plain meaning of the term "registration" supports the registration approach.
  • The fact that Congress uses the term "application…for registration" elsewhere within 17 USC § 411(a) suggests that its use of the term "registration" in Section 411(a) is deliberate.
  • Adopting the application approach would cause the word "registration" to have different meanings within the same statute.