Getting the timing right on copyright registrations

Originally posted 2009-09-10 21:42:19. Republished by Blog Post Promoter

Marty Schwimmer:

IDEA v PETA (SDNY August 298 2009): Plaintiff, no doubt aware that statutory damages are only available for post-registration copyright infringements that are not part of a continuing, ongoing series of infringing acts of the same kind as those engaged by defendant prior to the effective date of registration, alleged in its amended complaint that “Upon information and belief, PETA has commenced new infringements, and prepared and exploited new and materially different Infringing Materials since the effective date of registration of copyright in the Work…”

There were no factual allegations to support this conclusory assertion, and thus dismissed plaintiff’s claim for statutory damages and fees. Note that had plaintiff come up with some factual allegations pre-motion, it may have been granted leave to amend, but didn’t, so wasn’t.

My comment:  I had this issue in a case in the SDNY where we did an expedited copyright registration prior to filing… and it was BOUNCED for lack of originality! That doesn’t happen every day. Other side moved to dismiss; we opposed, natch, as set forth here.  Judge Rakoff agreed with us and denied the motion to dismiss.

Originally posted as a comment
by Ron_Coleman
on The Trademark Blog using DISQUS.

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9 Responses to “Getting the timing right on copyright registrations”

  1. Joel MacMull
    September 11, 2009 at 2:01 am #

    Ya' know, it still irks me a little that we were deprived of arguing this point in Jaslow. But that's fine, let the landscape develop in our favor in the interim.

  2. September 11, 2009 at 2:12 am #

    Wow… I am humbled that you got a copyright application refused. I have yet been able to achieve such success…or something.

  3. September 11, 2009 at 3:32 am #

    I didn't create the sculptures! I just fills in the blanks. It was a copyright application!

    Obviously we were prepared to seek a ruling from the District Court that the Copyright Office was in error. We got a nifty settlement instead.

    I am sure, however, you have other reasons to be humbled.

  4. Tal Benschar
    November 10, 2010 at 1:48 pm #

    The district court ruling, IMHO, is downright silly.

    First of all, the general rule in federal litigation is that, unless a party defaults, the court should award whatever remedy is appropriate WHETHER OR NOT REQUESTED IN THE COMPLAINT. So, other than default cases, it makes no difference whether you ask for statutory damages or not, if you qualify you can elect them.

    Second, whether a remedy is appropriate is usually decided after liability is determined. I assume IDEA stated a claim for copyright infringement. Let them prove that first, and if they do, then they can get whatever remedy they are entitled to.

    Third, where does it say in the federal rules that a plaintiff has to to state facts that qualify it for a particular remedy? If you state a claim on liability, that should be enough. Whether you qualify for this or that remedy is determined on the evidence adduced at trial, not on what is in your pleadings. All Rule 8 requries is “a demand for relief,” not particularized pleadings as to why the plaintiff is qualified or entitled to this or that remedy. (If I ask for an injunction, do I have to plead in detail the four factors a court considers as per eBay v. MercExchange? If I request money damages, do I have to itemize my damages?)

  5. Tal Benschar
    November 10, 2010 at 2:01 pm #

    I just read the district court opinion, and I remain convinced that it is simply wrong as a matter of procedural law. The opinion treats the motion as a motion to dismiss for failure to state a claim under Rule 12(b)(6), and applies the standard in Ashcroft v. Iqbal. In my view that is completely wrong.

    Rule 8(a) provides:

    “A pleading that states a claim for relief must contain:

    (1) a short and plain statement of the grounds for the court’s jurisdiction, unless the court already has jurisdiction and the claim needs no new jurisdictional support;

    (2) a short and plain statement of the claim showing that the pleader is entitled to relief; and

    (3) a demand for the relief sought, which may include relief in the alternative or different types of relief.”

    Rule 12(b) provides for various motions to dismiss, including for “failure to state a claim upon which relief can be granted.” Rule 12(b)(6).

    It is apparent that 12(b)(6) motions are addressed to subsection 12(a)(2), that is whether a “claim” — meaning a cause of action — has been made out. Whether it entitles one to a particular type of relief is not the subject of a 12(b)(6) motion.

    In the IDEA v. PETA case, PETA never claimed that the plaintiff had properly pleaded a copyright claim, which if proven it would entitle it to some relief. That is all you need to do under Rule 8(a).

Trackbacks/Pingbacks

  1. Ron Coleman - September 10, 2009

    LIKELY / CONFUSION Commented on “The Trademark Blog”: Marty Schwimmer:
    IDEA v PETA.. http://bit.ly/HBtRV

  2. Ron Coleman - September 10, 2009

    LIKELY / CONFUSION Commented on “The Trademark Blog”: Marty Schwimmer:
    IDEA v PETA.. http://bit.ly/HBtRV

  3. PostRank – Law - September 11, 2009

    Commented on “The Trademark Blog” http://bit.ly/16CeCH #postrank #law

  4. blogs of the world - March 23, 2011

    My comment: I had this issue in a case in the SDNY where we did an expedited copyright reg… http://reduce.li/383g7u #commented

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