7/26. The U.S. Court of Appeals (10thCir) issued its opinion [28 pages in PDF] in La Resolana Architects v. Clay Realtors Angel Fire, a case regarding the registration of works with the Copyright Office (CO). Registration is required before a copyright holder can sue for infringement. The 10th Circuit held that registration does not occur until the CO decides upon an application. Other courts have held that proof of application for registration is sufficient.

The present case involves architectural plans. However, this issue is more critical in the area of online infringement of digital works, where obtaining immediate injunctive relief may be essential. Yet, it takes time to obtain a certificate of registration from the CO.

For example, Napster argued, unsuccessfully, that works with pending registration applications are not entitled to the same rebuttable presumption as registered works.

The plaintiff, La Resolana Architects (LRA) is an architectural firm in Sante Fe, New Mexico. It created some architectural designs for townhouses. It showed these designs to Clay Realtors Angel Fire (Clay). The parties never reached an agreement. However, Clay went on to build townhouses in Angel Fire, New Mexico, which LRA alleges are similar to those depicted in the designs shown to Clay.

LRA applied to register the copyrighted drawings with the CO, by sending the requisite applications, fees, and deposits. The CO confirmed receipt of these materials.

Before the CO issued a certificate of registration, LRA filed a complaint in U.S. District Court (NMex) against Clay and others alleging copyright infringement. More specifically, LRA applied to register its copyright on November 6, 2003. It filed suit on November 20, 2003. On January 22, 2004 the CO approved the registration, with an effective registration date of November 19, 2003. On March 10, 2004, the CO wrote a letter stating this. It did not send LRA a certificate of copyright registration.

The District Court held that the CO letter was inadmissible, and that the copyright had not been registered. It dismissed the complaint.

LRA appealed. The Court of Appeals affirmed.

Registration of a copyrighted work is voluntary. 17 U.S.C § 408(a) provides, in part, that "registration is not a condition of copyright infringement." However, registration is a necessary prerequisite for filing suit, except when the CO refuses to register. 17 U.S.C. § 411 provides, in part, that "no action for infringement of the copyright in any United States work shall be instituted until registration of the copyright claim has been made in accordance with this title." See also, 17 U.S.C. § 410, regarding "Registration of claim and issuance of certificate"

The Court of Appeals held that "registration occurs when the copyright office actually approves or rejects the application".

It wrote that "Registration is satisfied by completing the following steps:
  a. application and payment of fee, § 408;
  b. deposit of a copy of the copyrightable material, § 408;
  c. examination by the Register of Copyrights, § 410;
  d. registration (or refusal to register) by the Register, § 410;
  e. issuance of certificate of registration, § 410.
The plain language of the statute thus requires a series of affirmative steps by both the applicant and the Copyright Office. No language in the Act suggests that registration is accomplished by mere receipt of copyrightable material by the Copyright Office. Instead, the Register of Copyrights must affirmatively determine copyright protection is warranted, § 411, before registration occurs under the Act. And only upon registration or refusal to register is a copyright holder entitled to sue for copyright infringement under § 411. Until those steps are followed and registration is ``made,´´ federal courts lack subject matter jurisdiction over the infringement claim." (Parentheses in original. Footnotes omitted.)

The Court added that "registration is separate from the issuance of a registration certificate and that a court’s jurisdiction does not turn on the existence of a paper certificate, but rather on the fact of registration, however it is demonstrated."

The Court also reviewed the opinions of other courts. Some require that the copyright holder actually receive the certificate of registration. On the other hand, some courts allow suit to be maintained merely by proving payment of the required fee, deposit of the work in question, and receipt by the Copyright Office of a registration application. See, for example, Apple Barrel Productions, Inc. v. Beard, 730 F.2d 384 (5th Cir. 1984). Also, Nimmer on Copyright, at Vol. 2 § 7.16[B][1][a], pages 7-154-56, backs the 5th Circuit approach.

Thus, there exists a split between circuits on this issue.

Perhaps it should also be noted that the Congress enacted the Family Entertainment and Copyright Act of 2005 (FECA) earlier this year. It was S 167. It is now Public Law No. 109-9. See also, story titled "House Approves Copyright Bill" in TLJ Daily E-Mail Alert No. 1,119, April 20, 2005.

The FECA does not address the issue in this case. However, it may have contributed to the lack of clarity of the law regarding registration. The FECA contains a provision that requires the Register of Copyrights to "establish procedures for preregistration of a work that is being prepared for commercial distribution and has not been published ... for any work that is in a class of works that the Register determines has had a history of infringement prior to authorized commercial distribution". It also provides that infringement actions may be based upon these preregistrations.

The CO is in the process of writing implementing regulations. See also, story titled "Copyright Office Commences Rulemaking on Preregistration of Unpublished Works" in TLJ Daily E-Mail Alert No. 1,181, July 25, 2005.

Judge Timothy Tymkovich wrote the opinion of the Appeals Court. Tymkovich, who probably lacks substantial experience in dealing with the Copyright Office (see, biography), also wrote that "registering a copyright is a relatively simple and inexpensive process".

This case is La Resolana Architects v. Clay Realtors Angel Fire, et al., U.S. Court of Appeals for the 10th Circuit, App. Ct. No. 04-2127, an appeal from the U.S. District Court for the District of New Mexico, D.C. No. CIV-03-1337-ACT/RHS. Judge Tymkovich wrote the opinion of the Court of Appeals, in which Judges Lucero and Blackburn joined.

7/26. The U.S. Court of Appeals (10thCir) issued its opinion [22 pages in PDF] in Yanaki v. Iomed, a Section 1983 case involving the search of the residence, and seizure of computer equipment, of a former employee of a pharmaceutical company that accused him of misappropriation of trade secrets and breach of a confidentiality agreement. The Court of Appeals affirmed the District Court's dismissal of the complaint for failure to state a claim.

Jamal Yanaki previously worked for Iomed, Inc., a pharmaceutical company based in Salt Lake City, Utah. Iomed filed a complaint in state court in Utah against Yanaki. It also obtained an ex parte order directing local police, with the assistance of Iomed, to execute a search of Yanaki’s residence.

A state court issued the orders regarding the search. State police officers searched Yanaki's home. But, Yanaki does not challenge the constitutionality of the state laws upon which the orders were based.

Yanaki then filed a complaint in U.S. District Court (DUtah) agaisnt Iomed and some of its employees and lawyers, alleging violation of 42 U.S.C. § 1983. He alleged deprivation of his 4th Amendment right to be free from unreasonable searches and seizures, among other things.

Section 1983 provides, in part, that "Every person who, under color of any statute, ordinance, regulation, custom, or usage, of any State or Territory or the District of Columbia, subjects, or causes to be subjected, any citizen of the United States or other person within the jurisdiction thereof to the deprivation of any rights, privileges, or immunities secured by the Constitution and laws, shall be liable to the party injured in an action at law, suit in equity, or other proper proceeding for redress, except that in any action brought against a judicial officer for an act or omission taken in such officer’s judicial capacity, injunctive relief shall not be granted unless a declaratory decree was violated or declaratory relief was unavailable."

The Court of Appeals held that Yanaki failed to plead the "under color of any statute" element of a Section 1983 claim. It held that Yanaki merely asserts private misuse of a state laws, which is not actionable under Section 1983.

This case is Jamal Yanaki, et al. v. Iomed, Inc., et al., U.S. Court of Appeals for the 10th Circuit, App. Ct. No. 04-4061, an appeal from the U.S. District Court for the District of Utah, D.C. No. 2:03-CV-345-DB. Judge Murphy wrote the opinion of the Court of Appeals, in which Judges Holloway and Briscoe joined.

Tech Law Journal publishes a free access web site and subscription e-mail alert. The basic rate for a subscription to the TLJ Daily E-Mail Alert is $250 per year. However, there are discounts for subscribers with multiple recipients. Free one month trial subscriptions are available. Also, free subscriptions are available for journalists, federal elected officials, and employees of the Congress, courts, and executive branch. The TLJ web site is free access. However, copies of the TLJ Daily E-Mail Alert are not published in the web site until one month after writing. See, subscription information page.

Contact: 202-364-8882.
P.O. Box 4851, Washington DC, 20008.

Privacy Policy
Notices & Disclaimers
Copyright 1998 - 2005 David Carney, dba Tech Law Journal. All rights reserved.

The House will not meet on Monday, August 1 through Monday, September 5. See, House calendar and Republican Whip Notice.

The Senate will not meet on Monday, August 1 through Monday, September 5. See, Senate calendar.

The Supreme Court is between terms. The opening conference of its October 2005 Term will be held on September 26, 2005.

RESCHEDULED FROM THURSDAY, AUGUST 4. 9:30 AM. The Federal Communications Commission (FCC) will hold a meeting. See, agenda [PDF]. The event will be webcast by the FCC. Location: FCC, 445 12th Street, SW, Room TW-C05 (Commission Meeting Room).

1:00 - 4:00 PM. The DC Bar Association will host a continuing legal education (CLE) seminar titled "The USA Patriot Act: A Primer". The speakers will be Sharie Brown (Foley & Lardner) and others. The price to attend ranges from $80-$125. For more information, call 202-626-3488. See, notice. Location: D.C. Bar Conference Center, 1250 H Street NW, B-1 Level.

Deadline to submit comments to the U.S. Patent and Trademark Office (USPTO) regarding its document titled "Green Paper", which describes and evaluates four options to reform restriction practice. The USPTO plans to draft a "White Paper" that includes proposed legislation reforming restriction practice. See, notice in the Federal Register, June 6, 2005, Vol. 70, No. 107, at Pages 32761 - 32762.

Extended deadline to submit initial comments to the Federal Communications Commission (FCC) in response to its notice of second further proposed rulemaking regarding horizontal and vertical cable ownership limits. The FCC adopted this Second Further NPRM on May 13, 2005, and released it on May 17, 2005. This item is FCC 05-96 in MM Docket No. 92-264. See, original notice in the Federal Register, June 8, 2005, Vol. 70, No. 109, at Pages 33679 - 33687. See also, notice of extension of deadlines, in the Federal Register, July 6, 2005, Vol. 70, No. 128, at Pages 38848 - 38849.

EXTENDED TO SEPTEMBER 7. Deadline to submit initial comments to the Federal Communications Commission (FCC) in response to it notice of proposed rulemaking (NPRM) regarding low power FM rules. The FCC adopted its order and NPRM on March 16, 2005, and released it on March 17, 2005. It is FCC 05-75 in MM Docket No. 99-25. See, notice in the Federal Register, July 7, 2005, Vol. 70, No. 129, at Pages 39217 - 39227. See also, FCC notice [PDF] extending the deadlines.

2:00 - 4:00 PM. The Federal Communications Commission's (FCC) Informal Working Group 3: IMT-2000 and 2.5 GHz Sharing Issues will meet. See, FCC notice [PDF]. Location: FCC, 445 12th Street, SW, 6th Floor South Conference Room (6-B516).

6:00 - 9:15 PM. The DC Bar Association will host a the first part of a continuing legal education (CLE) seminar titled "Software Patent Primer: Acquisition, Exploitation, Enforcement and Defense". The speakers will be Stephen Parker (Novak Druce), Brian Rosenbloom (Rothwell Figg Ernst & Manbeck), David Temeles (Temeles & Temeles), and Martin Zoltick (Rothwell Figg). The price to attend ranges from $95-$170. For more information, call 202-626-3488. See, notice. Location: D.C. Bar Conference Center, 1250 H Street NW, B-1 Level.

3:05 PM. The Department of Homeland Security's (DHS) Homeland Security Advisory Council (HSAC) will meet by teleconference. The agenda includes receiving final report from the HSAC Private Sector Information Sharing Task Force. See, notice in the Federal Register, July 25, 2005, Vol. 70, No. 141, at Page 42583.

6:00 - 9:15 PM. The DC Bar Association will host a the second part of a continuing legal education (CLE) seminar titled "Software Patent Primer: Acquisition, Exploitation, Enforcement and Defense". The speakers will be Stephen Parker (Novak Druce), Brian Rosenbloom (Rothwell Figg Ernst & Manbeck), David Temeles (Temeles & Temeles), and Martin Zoltick (Rothwell Figg). The price to attend ranges from $95-$170. For more information, call 202-626-3488. See, notice. Location: D.C. Bar Conference Center, 1250 H Street NW, B-1 Level.

Deadline for every interconnected voice over internet protocol (VOIP) service provider to submit a report to the Federal Communications Commission (FCC) regarding the status of its obtaining from every one of its subscribers an acknowledgment of receipt of the FCC mandated statement regarding E911, and regarding the status of its distribution of the FCC mandated VOIP warning stickers. See, the order contained in the FCC's document titled "First Report and Order and Notice of Proposed Rulemaking" [90 pages in PDF], numbered FCC 05-116, adopted on May 19, 2005, and released on June 3, 2005. See also, the order contained in the FCC's document titled "Public Notice' [PDF], numbered DA 05-2085, and released on July 26, 2005. These orders were issued in FCC proceedings regarding extending elements of the regulatory regime for communications to internet protocol based services: "In the Matter of IP-Enabled Services", numbered WC Docket No. 04-36, and "E911 Requirements for IP-Enabled Service Providers", numbered WC Docket No. 05-196.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its Further Notice of Proposed Rule Making (FNPRM) regarding advancing the date on which all new television receiving equipment must include the capability to receive over the air DTV broadcast signals from July 1, 2007, to a date no later than December 31, 2006. The FCC adopted and released this item on June 9, 2005. This item is FCC 05-121 in ET Docket No. 05-24. See, notice in the Federal Register, July 6, 2005, Vol. 70, No. 128, at Pages 38845 - 38848. See also, story titled "FCC Adopts Order and NPRM Regarding Its Digital Tuner Rules" in TLJ Daily E-Mail Alert No. 1,153, June 14, 2005.

Extended deadline to submit reply comments to the Federal Communications Commission (FCC) in its airborne cellular proceeding. The FCC adopted its notice of proposed rulemaking (NPRM) back on December 15, 2004. It is FCC 04-288 in WT Docket No. 04-435. See, story titled "FCC Announces NPRM on Cellphones in Airplanes" in TLJ Daily E-Mail Alert No. 1,039, December 16, 2004. The FCC extended the reply comment deadline by order numbered DA 05-1712, and dated June 23, 2005. See also, notice in the Federal Register, Volume 70, No. 133, at Pages 40276 - 40277.

Effective date of the Federal Communications Commission's (FCC) final rules implementing Section 207 of the Satellite Home Viewer Extension and Reauthorization Act of 2004. The FCC adopted its Report and Order on June 6, 2005, and released on June 7, 2005. It is FCC 05-119 in MB Docket No. 05-89. See, notice in the Federal Register, July 13, 2005, Vol. 70, No. 133, at Pages 40216 - 40225.

8/4. Chris Cox was sworn in a Chairman of the Securities and Exchange Commission (SEC) on August 3. See, SEC release. The SEC published an August 4 statement by Cox to SEC employees. He stated that the investors get information online. He said that "When a young worker starts putting away money for her retirement, and goes online to compare mutual funds -- should she have to be a detective in order to see how much the funds pay in brokerage fees each year? Or should she be able to comparison shop on the basis of clearly expressed and reliable information written in a language people actually speak?" Much of the current securities regulation regime dates back to 1933 and 1934, when communications were on paper, and investors were a small subset of the population. Perhaps Cox implies that securities regulation should take into consideration internet communications, and investment related use of the internet by a large group of individuals.

7/28. The Office of Management and Budget (OMB) sent a memorandum [PDF] to chief information officers at  executive departments and agencies that contains instructions for agency annual reporting under the E-Government Act of 2002.

8/2. The National Institute of Standards and Technology's (NIST) Computer Security Division released its draft [52 pages in PDF] of Special Publication 800-18, Revision 1, titled "Guide for Developing Security Plans for Federal Information Systems". The deadline to submit comments on this draft is September 12, 2005.

8/1. The National Institute of Standards and Technology (NIST) announced that it has "decided to recommend the Galois Counter Mode (GCM) in an upcoming draft special publication, SP 800-38D. GCM is a parallelizable mode of the Advanced Encryption Standard (AES) algorithm that combines Counter mode encryption with authentication that is based on a universal hash algorithm. In light of public comments on GCM, NIST intends to restrict the tag sizes for the authentication service to larger values. GCM is intended for high-throughput applications that can take advantage of the parallelizability while tolerating the tag size restrictions. Information about the ongoing development effort for block cipher modes of operation, including the GCM submission documentation and public comments, is available through the modes home page."

7/27. The National Institute of Standards and Technology (NIST) Computer Security Division released NIST Special Publication (SP) 800-79 [59 pages in PDF' titled "Guidelines for the Certification and Accreditation of PIV Card Issuing Organizations". PIV is personal identity verification. The guidelines in this document are for use by federal departments and agencies issuing, or preparing to issue, PIV cards that comply with Federal Information Processing Standard (FIPS) 201 to their federal employees and/or federal contractor employees.