The Eleventh Circuit decided to follow what is called the “registration” approach to Section 411(a), also adopted by the Tenth Circuit in La Resolana Architects v. Clay Realtors. This approach relies on a “plain language” reading of the statute: “Registration” is not “made” until your application is accepted and you get your registration certificate, so until you get that piece of paper, you can’t sue because you haven’t registered.
Essentially, the philosophy of the registration approach is that it takes two to tango. The registrant sends in the application, and then the Register of Copyrights determines whether the material is eligible for registration. Only then, after both parties have played their parts, is a registration certificate issued, usually many months down the line. The mere act of filing a complete application, although part of the registration process, is not the “registration” required before filing suit.
In fact, the Eleventh Circuit had previously come to the same conclusion in M.G.B. Homes, Inc. v. Ameron Homes . But that was before the Supreme Court had determined, in Reed Elsevier v. Muchnick , that registration is not a prerequisite to a Court’s jurisdiction over a copyright suit. Here, the Eleventh Circuit affirmed its earlier ruling and determined that Muchnick did not erode the rationale for following the registration approach.
The Application Approach
Who is on the other side of the split? In Cosmetic Ideas, Inc. v. IAC/Interactive , the Ninth Circuit came to the opposite conclusion and adopted the “application” approach. According to the Ninth Circuit, the statute’s definition of “registration” is ambiguous because some sections (e.g., Section 408) indicate that there are no prerequisites to registration other than a completed application. Moreover, the Ninth Circuit felt that the application approach is more efficient: even if the application is rejected, the plaintiff is going to get to sue anyway, so why wait around just to engage in the kind of “needless formality” that the 1976 Copyright Act was supposed to eliminate?
Finally, the Court observed that the date listed on a copyright certificate is backdated to the date of the application, which under Section 410 becomes the effective “registration” date. Therefore, under the application approach, the registration date is the date on which you apply to get a registration certificate, not the date on which the registration certificate takes physical form. To paraphrase the Buddha: If you believe you will become registered, then you are registered.
In taking this approach, the Ninth Circuit followed the Fifth Circuit’s decision in Positive Black Talk v. Cash Money Records , as well as some dicta by the Eighth Circuit. The Seventh Circuit has issued opinions suggesting support for both approaches, while the First and Second Circuits have expressly refused to decide one way or the other (thus leaving individual District Court judges to their own devices until some persistent litigant forces the issue). Finally, it should be noted that one of the judges on the Eleventh Circuit panel in Fourth Estate was sitting by designation from the Sixth Circuit, so perhaps we should pencil them in on team “registration.”
The Benefits of Registration
If you are a copyright owner and you want to be able to sue register. Sure, you might be located in a jurisdiction that follows the application approach, but you will not always be able to control where you are litigating, and the registration requirement applies to copyright counterclaims too. If you get stuck on the verge of litigation and haven’t registered, consider using the Copyright Office’s Special Handling process to speed things up.
There are other benefits to
as well. The registration establishes a public record of your copyright claim and the certificate can serve as prima facie evidence of validity in court, but only if you register within five years after publication. You can also record the registration with the U.S. Customs Service, which can use the information to identify and ban the importation of pirated or counterfeit copies. Perhaps most importantly, registration has to be made prior to the commencement of the infringement, or within three months of the first publication, in order to entitle the owner to statutory damages and attorneys’ fees.
You are asking two things here, but most people don't know that.
"Will I get sued if I do the following?"
"Will I win the lawsuit if I do the following?"
The answer to the first one is that, yes, there is (barely) grounds to file a lawsuit without considering any other factors. That bar is pretty low. Of course, a reasonable client that listens to a wise lawyer won't initiate a lawsuit unless they have a reasonable chance of proving their case in their favour. Which brings us to the second question.
In this general scenario, the likelihood that you are doing nothing wrong depends on a few factors you did not outline:
- Did the fiction book's publisher/author trademark the name of the concept?
- Are they using that name for any other business or product that overlaps with your proposed business? Or is it just in the book and nowhere else?
- Does your usage appear to trade off of the association of that name in an unfair manner? Are people clear that you are not a related business?
- If there is no chance that a reasonable person would be confused between your business and the fictional concept name, you are pretty much in the clear, even if it is trademarked. But if you appear to be making a business based on something that appears to be licensed from the book, but without licensing the rights, you'll get sued.
If the name and the description of the item are connected with your business, then we are in copyright infringement territory. But here you said you were using the name only.
So let's look at an example. Heinlein has a concept in Stranger in a Strange Land for which he coined a word: Grok. As far as we know, it's not trademarked. It does not refer to a place, person or object from the book, just a concept.
It would be pretty hard to say that you are trying to unfairly gain the association that a consumer would make, confusing your "Grok Business" with the word from the book, since we are only talking names here and not full descriptions (which are copyrighted). So clearly this can be done properly.
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