Tri-Marketing, Inc. v. Mainstream Marketing Services, Inc., 2009 WL 1408741 (D. Minn. 2009)

I’ve spent a couple of posts over the past few weeks discussing how courts are dealing with the registration backlog at the Copyright Office. To briefly review, due to what appear to be temporary troubles implementing a new electronic registration system, the backlog for paper registration at the Copyright Office has grown from six to eighteen months. There was a decision issued on May 19 by Judge Donovan W. Frank from the federal district court in St. Paul that adeptly dealt with this issue. Tri-Marketing and Mainstream Marketing are telemarketing companies that generate leads for the insurance industry.  Tri-Marketing alleged that Mainstream infringed its copyright in its website. Here’s the relevant passage dealing with the registration backlog (emphasis mine):

TRI operates a website that provides information about its business and allows for the purchase of its services. TRI updated its website in both 2004 and 2007. On April 3, 2008, TRI sought copyright registration for both the 2004 and 2007 websites by delivering a deposit of both websites, two corresponding Form TX applications, and two $45 fees to the Copyright Office. Bolder Calls updated its website in November 2005 and again in December 2007. According to TRI, Bolder Calls copied elements of TRI’s 2004 and 2007 websites. TRI notified Bolder Calls of its alleged infringement on February 19, 2008.

Why is this paragraph particularly notable? As we encountered in Facebook v. Power Ventures, the primary situation where a court risks running into a mudstorm by allowing a case to proceed after a copyright registration is filed, but before the Copyright Office has issued a ruling on the registration, occurs when there is a dispute about what rendition of a work is underlying an infringement claim.  This situation seems to me to arise most often with websites, where a plaintiff can make many amendments in a short period of time. To give a hypo for this problem, let’s say around the time a copyright holder files a registration for a website, she makes twenty different changes to the website. All of the versions of the website would of course be granted copyright, but the copyright owner can only bring suit for the portions of the work that she has registered. Without being able to resort to a copyright registration to see exactly what rendition of the website is underlying the claim, there is no way for the litigants or the tribunal to be sure of the boundaries of the suit.

So back to Tri-Marketing, Inc v. Mainstream Marketing Services: The Plaintiff claimed infringement of a website, the type of work that may cause trouble if the Court were to allow the case to proceed before the Copyright Office has issued a decision. By noting that all of the versions of the website were included in the registration application, the Court discounted the possibility that the suit would proceed without the parties being sure of the breadth of the copyright claim.

A second reason I like the above paragraph is that the Court didn’t shy away from the fact that the registration was filed thirteen months prior to the decision.  This is an important piece of information, I think, if this case were to head for appeal. The Court found that since there was no Eighth Circuit precedent directly on point, the interests of justice and judicial economy favored letting the litigation proceed sans Copyright Office determination:

The Court recognizes the split of authority on this issue and notes that it is aware of no Eighth Circuit case directly on point. After reviewing the relevant and persuasive case law and the reasons supporting the two separate approaches, this Court endorses the “application approach” to federal jurisdiction over copyright claims. First, the language used in Action Tapes by the Eighth Circuit suggests that it would adopt the application approach. See Action Tapes, 462 F.2d at 1013 (“However, the copyright owner may not sue for infringement under the federal Copyright Act until the owner has delivered ‘the deposit, application, and fee required for registration …’ ”). Second, the application approach promotes the interests of justice and judicial economy. See, e.g., Int’l Kitchen Exhaust Cleaning Assoc., 81 F.Supp.2d at 72. Because TRI alleges that it has properly delivered the deposit, application, and fee required for the registration of the asserted copyrights, the court finds that it has subject matter jurisdiction over TRI’s copyright claims.

In related news

The Copyright Office this past Friday issued a press release concerning its processing time.  This strikes me as a prudent move that allows courts to take judicial notice of an official release when determining whether to allow a claim to proceed without a copyright office determination.

Copyright Office Improves Processing Time and Service

A recent Washington Post article focused on the lengthy processing times the Copyright Office is experiencing in wake of its transition from a paper-based to an electronic processing environment. The Copyright Office is working diligently to improve processing times and service to the public in general. To clarify, current processing times by filing method are as follows:

• E-Service with Electronic Deposit:  5 months for 90% to be completed; 33% completed in 2.5 months
• E-Service with Physical Deposit: 6.5 months for 90% to be completed; 33% completed in 3 months
• Paper Claims: 18 months for 90% to be completed; 33% completed in 12 months

You can save money and time and help us improve our services by filing claims online via eCO. Please visit www.copyright.gov for more information.