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Court Says Copyright Application, Not Registration, Is Sufficient to Initiate Infringement Lawsuit in Seventh Circuit

Section 411(a) of the Copyright Act provides that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” Courts are split as to whether this language requires a copyright owner to obtain a copyright registration from the Copyright Office before filing suit for infringement in federal court (the “registration approach”), or whether it permits the copyright owner to sue for infringement after submitting a copyright application but before receiving the registration (the “application approach”). The United States District Court for the Northern District of Illinois recently had occasion to flesh out the Seventh Circuit’s position on this issue.

In that case, Panoramic Stock Images, Ltd. (Panoramic), a business that licenses photographs to publishers, sued McGraw-Hill Companies, Inc. (McGaw-Hill) for copyright infringement, claiming that McGraw-Hill exceeded the scope of its license to use copies of 170 of Panoramic’s photographs. McGraw-Hill moved to dismiss the claims for 49 of those photographs because they were based upon unissued copyright registrations. Thus, McGraw-Hill argued that Section 411(a) requires the court to follow the “registration approach.” After reviewing how other courts in the Seventh Circuit had approached this issue, the court disagreed with McGraw-Hill.

Seventh Circuit precedent appeared to prefer the “application approach,” so the court adopted it here. In supporting this position, the court said, “The application approach is also logical here, where [McGraw-Hill] clearly accepted the validity of [Panoramic’s] claim to all 101 of the disputed photographs…enough to pay [Panoramic] to use them under licensing agreements over a period of more than ten years.”  For these reasons, the court denied McGraw-Hill’s motion to dismiss the copyright infringement claims based upon those 49 photographs.

This decision serves to remind companies, especially those in Indiana, Illinois and Wisconsin, of the importance of protecting their copyrightable works with the U.S. Copyright Office.  In addition to artwork and literature, copyrightable works can include websites, software code, logos, marketing material and sometimes even the products themselves.  A business never knows when its valuable property will be infringed, so proactively protecting this property is key.

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