One area I haven’t spent as much time on as I should is the issue of copyright registration verse copyright application in regards to copyright infringement law suits. It is an area that has some differing opinions from various courts. Thank you RAUL for passing this along. I will do a little analysis and try to highlight key points.
The document is a 30 Dec 11, Court Order denying the Trolls/Plaintiff’s (Fiore & Barber, LLC/Patrick Collins) Motion for Leave to Serve Third Party Subpoenas on ISPs. Case # 2:11-cv-07247, Patrick Collins Inc., v. John Does 1-26. Complaint. The main issue Judge Legrome D. Davis had, was the movie in question (Asa Akira is Insatiable 2) did not have a copyright registration, only an application for one from the U.S. Copyright Office.
The judge stated for copyright infringement cases such as this one, the court will use a variety of factors to determine if issuing a subpoena for subscriber information is warranted against 1st Amendment interests. One of these factors is the concrete establishment of a “Prima Facie” claim of actionable harm.
This rule makes good sense, both as a matter of policy and constitutional law. If a copyright infringement plaintiff cannot even make a prima facie showing of actionable harm by the defendants, then we see no good reason to force an ISP to turn over the defendants’ identities. Such a rule serves a screening function of sorts, ensuring that courts (and litigants) give due deference to an individual’s First Amendment right to disseminate information anonymously, see McIntyre v. Ohio Elections Comm’n, 514 U.S. 334, 342 (1995) (holding that the First Amendment protects an author’s decision to remain anonymous), and constitutional right to privacy, see Whalen v. Roe, 429 U.S. 589, 598-600 (1977) (noting that right to privacy encompasses “the individual interest in avoiding disclosure of personal matters.”). Although not absolute, these rights should not give way without a compelling reason.
Here, Plaintiff’s complaint does not allege a viable copyright infringement claim properly before the Court because the work in question, “Asa Akira is Insatiable 2,” has not yet been registered with the United States Copyright Office. Under 17 U.S.C. § 411(a), absent certain circumstances not applicable here, one cannot bring a copyright infringement action until the copyright is registered. It follows that “a party may not state a prima facie case of copyright infringement where the party does not hold a registered copyright in accordance with 17 U.S.C. § 411(a).” Telebrands Corp. v. Exceptional Prods. Inc., No. 11–CV–2252, 2011 WL 6029402, at *3 (D.N.J. Dec. 5, 2011) (citation omitted).
The court noted there are different opinions on the copyright registration verse copyright application debate, but as the law is written (17 U.S.C. § 411(a)), a claim of copyright infringement cannot be made until the copyright is registered.
Judge Davis also had a nice comment on the general nature of Copyright Troll cases,
We see some value in the registration approach’s potential to reduce the frequency of coercive settlements of meritless copyright infringement claims. See SBO Pictures, Inc. v. Does 1-3036, No. 11–4220, 2011 WL 6002620, at *3-4 (N.D. Cal. Nov. 30, 2011) (observing that “[t]he vast majority of these mass copyright infringement suits are resolved through settlement once the plaintiff secures the information identifying the Does,” and “plaintiffs appear[ed] content to force settlements without incurring any of the burdens involved in proving their cases.”) (citations omitted).
The court then went on to comment that even if they accepted the “Application Approach” to this issue, Plaintiff has not shown the court it completed all the application requirements. To properly make a copyright application, Plaintiff must (1) submit the required paperwork, (2) provide the required numbers of copies of the work, and (3) pay the required application fee. Plaintiff has only shown the court submitted the application and not the remaining requirements.
In its last point, the court addresses Counts 3 & 4 to the complaint (Not used to support the Motion to Subpoena ISP subscriber data), in which Plaintiff make trademark infringement claims against the Does. The court dismisses this claim also,
However, the complaint lacks any specific factual allegations that John Doe Defendants sold, distributed, or advertised any goods, much less goods bearing Plaintiff’s trademarks; or that Defendants have used Plaintiff’s trademarks “in commerce.” Instead, the facts alleged in the complaint show, at most, that all twenty-six (26) John Doe Defendants participated in a BitTorrent swarm to obtain a copy of Plaintiff’s movie. We harbor some doubt that these facts, even if true, support a claim of trademark infringement. See Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (“Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements” will not survive a motion to dismiss). As such, Collins’ trademark infringement claims do not give us good cause to permit Collins to subpoena John Doe Defendants’ ISPs.
I expect the Troll will file a response to this order, but as the court was following the letter of the law, I don’t think they will have much luck in getting the court to change its ruling. It also doesn’t bode well for the Troll that the court considers these types of cases to be focused on obtaining “…coercive settlements of meritless copyright infringement claims.”
Well done Judge Davis. Well done.