Vondran Legal® Copyright Law Essentials - Having a registered copyright to file an infringement lawsuit.  Call us at (877) 276-5084 for legal representation.

Introduction

In order to file a copyright infringement lawsuit in federal court, the artist, designer, filmmaker, author, musician, or creator of the original Work must make sure it is first REGISTERED by the United States Copyright Office in Washington, D.C. If not, the court may dismiss your lawsuit.  This blog discusses how this standard originated in the Fourth Estate case, and a recent case from a California federal court that interpreted this case, where a plaintiff sought to use an exception to the rule relating to Moral Rights, but was unsuccessful.

Holding of the Fourth Estate case

This was a United States Supreme Court case that settled a pending copyright legal issue of whether merely filing a copyright application with the copyright office was sufficient to confer standing to file a federal court lawsuit, or whether the copyright office had to actually REGISTER the creative Work before a lawsuit could be filed.  The issue in this case was thus:

Is “registration of [a] copyright claim” complete under 17 U.S.C. § 411(a) when the copyright holder delivers the required application, fees, and materials to the copyright office, or only once the copyright office has acted on that application?

The holding in the case was very straightforward (a unanimous decision by the Supreme Court of the United States).

Additional case law

Here is a recent case from the Central District of California

Facts of the case

Plaintiff Leszczynski invented an object, a measuring cube (“Cube”) which combines various measuring volumes into a single cubical structure.

On December 1, 2017, Leszczynski posted the Cube design and 3D print files under the name “iomaa” on Thingiverse.com (“Thingiverse”), the largest site for 3D print objects. 

On January 3, 2018, Leszczynski uploaded an updated file “cube_ver3.STL.” (the “Cube file”), which is
version 3 of the Cube, available at https://www.thingiverse.com/thing:2676324 (“Leszczynski's
Thingiverse page”).

Here is what the cube looks like:

The Cube file was provided under a Creative Commons, non-commercial, no derivatives license (“Creative Commons license”), which was stated on the page. 

This type of Creative Commons license prohibits any commercial use or creation of derivative
works based on the Cube design. Leszczynski shared the Cube file free of charge for
individuals to print and use at home. The Cube gained over 150,000 downloads in the first 2
years.

Leszczynski filed suit in this Court on September 13, 2023.

The Complaint asserts three causes of action against all Defendants:

(1) copyright infringement under 17 U.S.C. §501; 

(2) violation of Creative Commons license terms;

and

(3) false advertising and misrepresentation under 15 U.S.C. § 1125(a).

The copyright issue - moral rights exception to registration sought

Defendant filed a motion to dismiss, arguing that Plaintiff had not obtained a federally registered copyright before filing the lawsuit, and his claims must be dismissed for this reason. Leszczynski merely alleges that he filed an application for copyright registration for the Cube. 

In his Oppositions, Plaintiff admits he has not yet obtained registration by the Copyright
Office, but he still opposes the Motions on two grounds:

(1) The Fourth Est. Pub. Benefit Corp. case allows the filing of copyright infringement claim once the application for registration is filed;

and

(2) An exception under 17 U.S.C. § 411(a) which allows a civil action for a violation of the rights under 17 USC §106A(a) applies to this case because the Cube falls into “works of visual art.”. 

The Court disagreed and held:

First, in Fourth Est. Pub. Benefit Corp., the Supreme Court clearly held that merely filing an
application to the United States Copyright Office does not satisfy the registration element under 17
U.S.C. § 411(a). Fourth Est. Pub. Benefit Corp.,139 S. Ct. at 892. Therefore, Leszczynski's first
argument fails.

Second, the exception for 17 U.S.C. § 410(a) does not apply to this case because Leszczynski
argues that Defendants infringed his exclusive copyright under Section 106, not his rights of the
author to attribution and integrity under Section 106A(a). 

17 U.S.C. § 106A(a) sets forth five rights of attribution and integrity that “the author of a
work of visual art” shall have: 

[1] the right . . . to claim authorship of that work . . .
[2] [the right] to prevent the use of his or her name as the author of any work of visual
art which he or she did not create . . .
[3] the right to prevent the use of his or her name as the author of the work of visual art
in the event of a distortion, mutilation, or other modification of the work which would
be prejudicial to his or her honor or reputation . . .
[4] the right . . . to prevent any intentional distortion, mutilation, or other modification
of that work which would be prejudicial to his or her honor or reputation, and any
intentional distortion, mutilation, or modification of that work is a violation of that right,
and
(5) [the right] to prevent any destruction of a work of recognized stature, and any
intentional or grossly negligent destruction of that work is a violation of that right.

The purpose of 17 U.S.C. § 106A is to protect two ‘moral rights' of artists—the rights of ‘integrity' and ‘attribution.' See Cheffins v. Stewart, 825 F.3d 588, 592 (9th Cir. 2016) (citing Cort v. St.
Paul Fire & Marine Ins. Cos., 311 F.3d 979, 984–85 (9th Cir. 2002)) “The right of integrity allows
the [artist] to prevent any deforming or mutilating changes to his work, even after the title in the
work has been transferred”  “The right of attribution allows the artist to be recognized by name as the creator of a work.” However, here, Leszczynski brought the copyright infringement claim under 17 U.S.C. § 106, a different section, alleging that Defendants reproduced, distributed, and created derivative works for the Cube.

Furthermore, in his Oppositions, although he argues that the Cube falls into “works of visual arts,” he does not argue that Defendants violated his moral rights as an author—the rights of ‘integrity' and ‘attribution.'
Accordingly, the exception of 17 U.S.C. § 411(a) does not apply to this lawsuit, and the Court need not further analyze whether the Cube falls into “works of visual arts” or not. Therefore, Leszczynski did not obtain copyright registration for the Cube before filing this lawsuit which is a prerequisite for civil action under 14 U.S.C. 411(a). The Motions are GRANTED.

The district Court did not grant leave to amend:

"A district court should generally grant leave to amend freely. Cervantes v. Countrywide
Home Loans, Inc., 656 F.3d 1034, 1041 (9th Cir. 2011). However, “a district court may dismiss
without leave where a plaintiff's proposed amendments would fail to cure the pleading deficiencies
and amendment would be futile.”

Attorney Steve® Tip

A litigant should always make sure their copyright is registered with the United States Copyright Office BEFORE filing a federal court lawsuit.  The one exception is if moral rights are alleged, and at issue.  At any rate, a second consideration would be to file the case in the United States Copyright Small Court ("Copyright Claims Board) wherein you can register your copyright SIMULTANEOUSLY with the filing of a small claims copyright infringement case.  You can learn more about the Copyright Claims Board in this video by Steve Vondran.

Contact a Copyright Infringement Dispute Resolution Firm

We have handled several hundred federal copyright infringement cases since our founding in 2004.  Copyright claims have dealt with Strike 3 Holdings file-sharing lawsuits, jewelry infringement, mobile application infringement, DMCA video infringement and fair use matters, Etsy and Amazon copyright issues and more.  Call us at (877) 276-5084 for more information or fill out our contact form.