La Resolana Architects, PA v. Clay Realtors Angel Fire

F I L E D
United States Court of Appeals
Tenth Circuit
PUBLISH
July 26, 2005
UNITED STATES COURT OF APPEALS
PATRICK FISHER
Clerk
TENTH CIRCUIT

LA RESOLANA ARCHITECTS, PA,
a New Mexico Professional
Association,

Plaintiff-Appellant,
v. No. 04-2127
CLAY REALTORS ANGEL FIRE, a
New Mexico corporation, LANCE K.
CLAY, an individual, GARY
PLANTE, an individual, and ANGEL
FIRE HOME DESIGN, a New Mexico
corporation,

Defendants-Appellees.

APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW MEXICO
(D.C. NO. CIV-03-1337-ACT/RHS)

Kevin Lynn Wildenstein, Southwest Intellectual Property Services, LLC,
Albuquerque, New Mexico, for Plaintiff-Appellant.

Randy S. Bartell, Montgomery & Andrews PA, Santa Fe, New Mexico, for
Defendant-Appellee Angel Fire Design (Daniel J. Behles, Albuquerque, New
Mexico, for Defendants-Appellees Lance K. Clay, Gary Plante, and Clay Realtors
Angel Fire, with him on the brief).
Before LUCERO and TYMKOVICH , Circuit Judges, and BLACKBURN, *

District Judge.

TYMKOVICH , Circuit Judge.

The Copyright Act of 1976 requires authors to register their works with the

federal Copyright Office in order to be entitled to the Act’s protections against

requirement have been upheld by circuit courts: 1) registration occurs when the

conversely 2) registration occurs when the copyright office actually approves or

rejects the application. We hold that the second interpretation is correct. The

or a copyright infringement action can be brought.

Plaintiff-Appellant, La Resolana Architects, PA (La Resolana), appeals the

dismissal of its copyright infringement suit against Defendants-Appellees, Clay

Realtors Angel Fire, Lance K. Clay, Gary Plante, and Angel Fire Home Design

(Clay Realtors). We take jurisdiction pursuant to 28 U.S.C. § 1291, and, finding

*
Robert E. Blackburn, District Judge, United States District Court for the
District of Colorado, sitting by designation.

-2-
La Resolana’s application for copyright registration had not yet been approved

when the litigation commenced, we affirm.

I. BACKGROUND

In late 1996 and early 1997, a representative of La Resolana, a Santa Fe

architecture firm, met with representatives from Clay Realtors about developing

townhouses in Angel Fire, New Mexico. The La Resolana representative

allegedly showed Clay Realtors some architectural drawings and plans La

Resolana had created specifically for the Angel Fire project. Ultimately,

however, the parties never reached an agreement regarding the drawings, never

contracted to do business together, and went their separate ways.

In October 2003, a La Resolana representative familiar with the drawings

was in Angel Fire, New Mexico, visiting another building site. While there, he

saw townhouses being sold by Clay Realtors that looked strikingly similar to

those depicted in the architectural drawings developed by La Resolana in 1997.

Shortly thereafter, on November 6, 2003, La Resolana applied to register

the copyrighted drawings with the Copyright Office. La Resolana sent the

requisite applications, fees, and deposits to the Copyright Office. Upon receiving

confirmation that the Copyright Office had received their materials, but before

receiving confirmation that the Copyright Office registered the copyrights, La

-3-
Resolana sued Clay Realtors for copyright infringement. The suit was docketed

on November 20, 2003.

On March 8, 2004, Clay Realtors moved to dismiss the complaint arguing

that La Resolana could not sue for copyright infringement until it obtained a

certificate of copyright registration from the Copyright Office. La Resolana

responded by attaching a March 10, 2004 letter from the Copyright Office

indicating that all necessary materials had been received, the copyrights had been

approved for registration on January 22, 2004, and the effective registration date

was November 19, 2003. However, the Copyright Office had not yet issued La

Resolana a certificate of copyright registration.

Finding the March 10 letter was not admissible evidence, the district court

concluded that the drawings were not registered. Since the court therefore lacked

jurisdiction over the copyright infringement action, it dismissed the case without

prejudice.

II. ANALYSIS

Federal courts have exclusive jurisdiction over disputes arising under the

Congress controls if and when courts attain subject matter jurisdiction in a

dispute. It is axiomatic that subject matter jurisdiction, which gives courts the

power to adjudicate cases, cannot be waived. Radil v. Sanborn W. Camps, Inc.,

-4-
384 F.3d 1220, 1224 (10th Cir. 2004). “Where a party attacks the factual basis

for subject matter jurisdiction, the court does not presume the truthfulness of

factual allegations in the complaint, but may consider evidence to resolve

disputed jurisdictional facts.” Id. We review de novo the district court’s subject

matter jurisdiction as well as its grant of a motion to dismiss. See Montgomery v.

City of Ardmore , 365 F.3d 926, 935 (10th Cir. 2004).

A. Copyright Law

Our review in this case starts with the statutory scheme created by the

Stat.) 2541 (codified at 17 U.S.C. §§ 101, et seq.) (the Act or Title 17).

1. Historical Background

The Constitution authorizes Congress to regulate copyright protection. U.S.

Const. art I, § 8. Prior to the passage of the Act, copyright law consisted of a

confusing mix of federal and state laws that differed greatly depending on the

state and whether a work was published or unpublished. See H. Rep. No. 94-

1476, at 129, reprinted in 1976 U.S.C.C.A.N. 5659, 5744. A primary purpose of

the Act was to improve this state of affairs. Thus, “[i]nstead of a dual system of

‘common law copyright’ for unpublished works and statutory copyright for

published works, [Congress] adopt[ed][in 1976] a single system of Federal

statutory copyright from creation.” Id. As a result of the Copyright Act of 1976,

-5-
“all legal . . . rights within the general scope of copyright [law] . . . [became]

governed exclusively” by Title 17 of the United States Code. 17 U.S.C. § 301(a).

By creating a new, single federal system, Congress preempted all state copyright

law. See H. Rep. No. 94-1476, at 130, reprinted in 1976 U.S.C.C.A.N. 5659,

5746 (“The intention of section 301 is to preempt and abolish any rights under

common law or statutes of a State that are equivalent to copyright”).

In its effort to simplify copyright law, Congress made it easier to obtain

idea leaves the mind and finds expression in a tangible medium, be it words on a

page, images on a screen, or paint on a canvass. See 17 U.S.C. § 102(a)

(“Copyright protection subsists . . . in original works of authorship fixed in a

tangible medium”).

Congress’s streamlining of copyright law did not end at the creation of

copyrights, though. In addition to eliminating statutory formalities in obtaining a

2. Registration

Under the Act, registering a copyright is a relatively simple and

inexpensive process. 1
Registering a copyright requires the submission of three

items to the copyright office: 1) a deposit (i.e., photocopy) of the work to be

1
Copyright registration fees range from $1 to $100. See 37 C.F.R. § 201.4.

-6-
copyrighted, 17 U.S.C. § 408(b); 2) an application to register a copyright, 17

U.S.C. § 409(1) – (11); and 3) a fee, 17 U.S.C. § 708. Once a copyright owner

files the requisite deposit, application, and fee, the Register of Copyrights

examines the work to determine copyrightability:

(a) When, after examination , the Register of Copyrights determines
that . . . the material deposited constitutes copyrightable subject
matter . . . , the Register shall register the claim and issue to the
applicant a certificate of registration.

(b) In any case in which the Register of Copyrights determines
that . . . the material deposited does not constitute copyrightable
subject matter or that the claim is invalid for any other reason, the
Register shall refuse registration . . . .

17 U.S.C. § 410(a), (b) (emphasis added).

Congress made sure, however, that the registration system did not

extinguish the automatic creation and recognition of copyrights. In fact, 17 U.S.C

§ 408(a) explicitly states that “registration is not a condition of copyright

infringement.” In addition, the registration system is completely voluntary. See

id. (“[T]he owner of copyright . . . may obtain registration of the copyright”)

(emphasis added).

3. Remedies

Although Congress established a voluntary registration system, it created

incentives for copyright owners to register their copyrights. To this end, certain

benefits flow only to those who register their copyright. The most significant

-7-
benefit to registering copyrights under the Act is the issue raised in this

appeal—the right to enforce a copyright in federal court in an infringement suit.

17 U.S.C. § 411(a). 2

Infringement suits are the mechanism through which other important

incentives and remedies created by Title 17 operate. For example, when actual

damages are difficult to ascertain or a work has seemingly little extrinsic value,

statutory damages are available under 17 U.S.C. § 504. Equally important in the

litigation context, under § 410 a certificate of registration is prima facie evidence

of the validity of the copyright. For copyright owners hesitant to engage in the

long and expensive process of litigation, attorney’s fees for prevailing parties are

also recoverable under 17 U.S.C. § 505. Finally, and perhaps most important, a

registrant can obtain an injunction against an infringer under 17 U.S.C. § 502. To

2
Although the Act preempts state copyright law, it does not eliminate all
state law actions. For example, conduct that may give rise to a federal suit for
copyright infringement may also give rise to a state law claim in tort for unfair
competition, tortious interference, or breach of contract. However, 17 U.S.C.
§ 301(a) preempts such claims if “1) the work is within the scope of the 'subject
matter of copyright' as specified in 17 U.S.C. 102 and 103; and 2) the rights
granted under state law are equivalent to any exclusive rights within the scope of
federal copyright as set out in 17 U.S.C. 106.” Gates Rubber Co. v. Bando Chem.
Indus., 9 F.3d 823, 847 (10th Cir. 1993). On the other hand, if “a state cause of
action requires an extra element, beyond mere copying, preparation of derivative
works, performance, distribution or display, then the state cause of action is
qualitatively different from, and not subsumed within, a copyright infringement
claim.” Id.

-8-
obtain these remedies, though, a federal court must have jurisdiction to hear a suit

for infringement.

B. Federal Court Jurisdiction Under Title 17

1. The Plain Language of the Statutes

Turning to the question of federal jurisdiction under the Copyright Act, we

start with the language of the statute. If the statutory language is not ambiguous,

and the “statutory scheme is coherent and consistent,” our inquiry ends. Barnhart

v. Sigmon Coal Co. , 534 U.S. 438, 450 (2002). Section 411(a) is the

jurisdictional linchpin to copyright infringement actions:

no 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. In any case, however, where the
deposit, application, and fee required for registration have been delivered to
the Copyright Office in proper form and registration has been refused, the
applicant is entitled to institute an action for infringement if notice thereof,
with a copy of the complaint, is served on the register of Copyrights.

(emphasis added). On its face, § 411 allows an “action for infringement” to be

“instituted” only when “registration” has been “made in accordance” with the Act.

Congress amended § 411 on April 27, 2005 by adding the term “preregistration

or” before “registration.” 3 Congress tasked the Copyright Office with defining

which class of copyrights would be eligible for “preregistration.” Since

3
See II(B)(3)(b) infra discussing the Family Entertainment and Copyright
Act of 2005, P.L. 109-9 (FECA)

-9-
preregistration was not possible when this suit commenced, the new language

does not control the outcome of this appeal. We discuss this amendment in more

detail below.

The most important step necessary before instituting an infringement action

is registering one’s copyright. 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

determine copyright protection is warranted, § 411, before registration occurs

under the Act. 4
And only upon registration or refusal to register is a copyright

4
The Act, unfortunately, gives little guidance on how to construe the term
“registration.” See § 101 (definitions) (“registration . . . means a registration of a
claim in the original or the renewed and extended term of copyright”).

-10-
holder entitled to sue for copyright infringement under § 411. 5
Until those steps

are followed and registration is “made,” federal courts lack subject matter

jurisdiction over the infringement claim.

Our interpretation of the Act is bolstered by other provisions pertaining to

the registration process. Section 410(a), for example, provides:

When, after examination , the Register of Copyrights determines that
. . . the material deposited constitutes copyrightable subject
matter . . ., the Register shall register the claim and issue to the
applicant a certificate of registration.

(emphasis added). This language requires the following affirmative acts by the

registration. Nothing in this process suggests that the filing of an application

alone would be sufficient to register the work.

The language of § 410(b) is similarly instructive:

In any case in which the Register of Copyrights determines that . . .
the material deposited does not constitute copyrightable subject
matter or that the claim is invalid for any other reason, the Register
shall refuse registration . . . .

This section is the flip side to the requirement that the material be

examined before registration. Upon examination, this provision allows the

As we discuss below, the Act makes an exception for works covered by
5

the Berne Convention.

-11-
requiring an affirmative act by the Copyright Office disallowing registration if the

Section 408 supports our view that registration is not automatic:

the owner of copyright . . . may obtain registration of the copyright
claim by delivering to the Copyright Office the deposit specified by
this section, together with the application and fee specified by
sections 409 and 708.

(emphasis added). This provision, like the others, envisions substantive review of

the material by the Register of Copyrights. If it were otherwise, “the verb would

be ‘shall obtain’” instead of “may obtain.” Corbis Corp. v. UGO Networks, Inc. ,

322 F. Supp. 2d 520, 522 (S.D.N.Y. 2004).

A final provision of the Act underscores our view of the statutory scheme.

Section 501(b), establishing remedies under the Act, states that “[t]he legal or

beneficial owner of . . . a copyright is entitled, subject to the requirements of

section 411 , to institute an action for any infringement of that particular right.”

(emphasis added). This statutory language clearly instructs that a copyright

owner can sue for infringement only after the copyright is registered, or

registration is refused.

Taken together, these statutory provisions stand for the proposition that

registration, or its refusal, requires more than the simple receipt of materials

submitted by an author, and does not occur until the Register of Copyrights takes

action.

-12-
2. Interpretations of the Plain Language of the Statutes

Despite the Act’s seemingly plain language, courts construing these

provisions are split into two competing interpretive camps: The “Registration

approach,” which we have adopted, and the “Application approach.”

a. The Registration Approach

Courts employing the Registration approach interpret the Act using the

plain language of Title 17, as we have done. We are in good company. Indeed,

even well before the 1976 Act, Judge Learned Hand concluded that the plain

language of Title 17 allows copyright owners to sue for infringement only after a

Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637, 640-41

(2d Cir. 1958) (“the text of the [statute] denies the right to sue for infringement

'until the provisions of this title with respect to the deposit of copies and

registration of such work shall have been complied with' . . . . Since the owner

must submit an application and pay the required fees in order to make a deposit,

17 U.S.C. § 202.3(b) (1952 ed. Supplement V), we can think of no other added

condition for 'registration' but acceptance by the Register.”).

A number of courts have found this approach the better reading of the Act.

For example, the Eleventh Circuit in M.G.B. Homes, Inc. v. Ameron Homes, Inc. ,

903 F.2d 1486, 1488 (11th Cir. 1990), held, in dismissing an infringement action

-13-
as premature, that the “registration requirement is a jurisdictional prerequisite to

an infringement suit.” While this is the only circuit court decision to reach the

issue, a number of district courts have adopted the Registration approach. For

example, in Mays & Assocs. v. Euler , 370 F. Supp. 2d 362, 368 (D. Md. 2005),

the district court agreed in construing § 411 that actual registration is a

jurisdictional prerequisite, because the “term application is used in the same

section [as the term registration] and is clearly something separate and apart from

registration.” Another district court, focusing on a different provision of the Act,

recognized that “Section § 410(a)’s requirement of ‘examination’ would be

meaningless if filing and registration were synonymous.” Robinson v. Princeton

Review, Inc. , No. 96-CIV-4859, 1996 WL 663880, *7 (S.D.N.Y. 1996). Lastly,

the district court in Loree Rodkin Mgmt. Corp. v. Ross-Simons, Inc., 315 F. Supp.

2d 1053, 1056 (C.D. Cal. 2004), found that the Register’s discretion to refuse

actual “registration” as the sine qua non of registration. 6

While we generally agree with these courts in construing the Act, we have

one minor disagreement concerning the issuance of the certificate. A few courts

Other courts adopting this approach include: Goebel v. Manis, 39 F.
6

Supp. 2d 1318, 1320 (D. Kan. 1999); Miller v. CP Chems., Inc., 808 F. Supp.
1238, 1241 (D.S.C. 1992); and Demetriades v. Kaufmann, 680 F. Supp. 658, 661
(S.D.N.Y. 1988).

-14-
have held that the Act requires an applicant to first obtain the paper certificate

from the Copyright Office as a prerequisite to filing an infringement action. See,

e.g., Strategy Source, Inc. v. Lee , 233 F. Supp. 2d 1, 3-4 (D.D.C. 2002) (finding

registration from the copyright office); Loree Rodkin Mgmt. Corp , 315 F. Supp.

2d at 1055 (same). In our view, however, the language of the foregoing sections

demonstrates 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. We

believe that statutory language commands this result for two reasons.

First, § 410(a) says after the “Register of Copyrights determines that . . .

the material constitutes copyrightable subject matter” it “shall register the claim

and issue a certificate.” The “and issue a certificate” phrase in § 410(a)

highlights the fact that registration does not occur upon issuance of a certificate

of registration, but rather independently of, and before, the issuance of a

certificate. The paper certificate does play an important role in judicial

proceedings, however. Under § 410(c), the certificate is prima facie evidence of

the validity of the copyright, a considerable benefit to a plaintiff in an

infringement action, but it is not required for registration to occur.

-15-
Second, the conspicuous absence of the words “certificate” or

“certification” in § 411 dictate that registration is separate from the issuance of a

certificate of registration. If the opposite were true, § 411 would prevent

seems contrary to the overall thrust of the provision. 7
As we noted, although the

paper certificate has evidentiary value, it does not drive the existence of federal

jurisdiction. Therefore, suits for infringement can be brought when a copyright is

registered, and such registration occurs when the Copyright Office approves the

application.

b. The Application Approach

The second interpretive camp rejects the Registration approach. The

Application approach interprets Title 17 using a policy-based methodology.

A representative case is from the Fifth Circuit. In Apple Barrel Productions, Inc.

v. Beard , 730 F.2d 384, 386-87 (5th Cir. 1984), the court, without much

elaboration, held that federal jurisdiction is satisfied 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 also Lakedreams v. Taylor, 932 F.2d

7
Such a rule is hard to imagine considering the fact that a certificate could
easily be lost. In addition, delays could arise between the registration of the
copyright and the receipt of a certificate. See http://www.copyright.gov/help/
faq/faq-what.html#certificate (last visited July 25, 2005) (stating that certificates
are issued typically between four to five months after submission).

-16-
1103, 1108 (5th Cir. 1991) (same). These courts are also in good company.

According to one of the leading treatises on copyright law, this is the preferable

approach since it most efficaciously facilitates the judicial protection of

copyrights through infringement actions. See Melville B. Nimmer, Nimmer on

Looking to the Act, courts adopting the Application approach conclude that

because a copyright owner can sue regardless of whether an application for

registration is ultimately granted or rejected, delaying the date on which a

Apple Barrel Prod., Inc. , 730 F.2d at 386-87 (citing Nimmer); Foraste v. Brown

Univ. , 248 F. Supp. 2d 71, 77 n.10 (D.R.I. 2003) (discussing rationale for

Application approach). These courts also rely on the language of § 408, that

registration is not a condition of copyright protection, and § 410(d), that once a

date the Copyright Office received the last of the filing materials (i.e., the

deposit, fee, and application). See 17 U.S.C. § 410(d); Foraste , 248 F. Supp. 2d

at 77 n.10.

Finally, these courts look to the date of the application for registration as “a

condition to filing an infringement action, [but] issuance of a registration

certificate is a condition to statutory damages” and other statutory remedies.

-17-
Nimmer, § 7.16[B][1][a][i]. Thus, the argument goes, a copyright owner can get

into court without being held hostage by the vagaries of the Copyright Office in

its ministerial act of issuing the certificate. See International Kitchen Exhaust

Cleaning Ass’n v. Power Washers of N. Am. , 81 F. Supp. 2d 70, 72 (D.D.C. 2000)

(adopting the Application approach because it “best effectuate[s] the interests of

justice and promote[s] judicial economy”). 8

The Application approach, at first glance, has some appeal. Indeed, as

discussed above, it is odd that one can possess a copyright but be unable to file

suit until it is “voluntarily” registered by the copyright holder. What is more, the

scheme allows an infringer to dilute a copyright until a government official is

able to sift through and approve what is surely a large stack of copyright

registration applications. 9
Courts adopting the Application approach plausibly

claim that their approach provides a sort of rough justice because it allows

Other courts that have adopted the Application approach include: Well-
8

Made Toy Mfg. v. Goffa Int’l., 210 F. Supp. 2d 147, 157 (E.D.N.Y. 2002); and
Havens v. Time Warner, Inc., 896 F. Supp. 141, 142-43 (S.D.N.Y. 1995).
9
Since copyright is automatic upon publication, § 408, and the effective
date of registration relates back to the date of application, § 410(d), other courts
have read the Act to make application the jurisdictionally critical event. In our
view, the existence of the copyright by itself does not speak to the Act’s
otherwise specific grant of federal court jurisdiction upon registration. As to the
relation-back effect of registration, the effective date serves other purposes under
the Act, such as the term of registration. It is not logical to assume that the
relation-back provision subsumes the explicit requirements of § 411 and § 410(a).

-18-
obtain a certificate before a court can invoke the remedies contained in Title 17.

See Nimmer, § 7.16[B][1][a].

Whatever the practical force of this argument, we cannot ignore the plain

meaning of the statute, nor change the legislative scheme. See Strategy Source,

Inc. , 233 F. Supp. 2d at 4 (“To conclude that registration or the refusal of

registration . . . are not jurisdictional prerequisites is to disregard the plain

language of these statutes and to in effect re-write them.”). There are three

reasons we think the Application courts’ statutory analysis is wrong. First, this

approach requires a topsy-turvy reading of Title 17. Title 17’s language does not

convey certain remedies and benefits upon application and other remedies and

benefits upon registration. The remedies are part of a single package.

Second, the argument that copyright holders are left without a remedy until

registration begs the question. Congress created significant incentives for

registration under the Act. Every remedy outlined in Title 17, including

injunctions, is conditioned upon a copyright owner having registered the

have met “the requirements of section 411, to institute an action for []

infringement”). It is not illogical for Congress to condition the remedies of the

Act to those who register under the Act. Congress could very reasonably have

concluded that these rights and remedies are the “carrot” to induce registration

-19-
and the “stick” is the lack of federal court jurisdiction until registration is

accomplished.

Finally, the Application approach allows for shifting legal entitlements. If,

for example, an applicant could obtain the advantage of the presumption that the

examination the Register of Copyrights determined the material is not

copyrightable, the presumption of validity would swing back and forth. 10
Such a

predicament would generate uncertainty in copyright litigation that the Act was

designed to moderate.

In conclusion, we reject the proposition that § 411 confers federal court

jurisdiction for an infringement action upon mere submission of a copyright

application to the Copyright Office. In our view, the statute requires more:

actual registration by the Register of Copyrights. Until that happens, an

infringement action will not lie in the federal courts.

10
For example, in In re Napster, Inc. Copyright Litig., 191 F. Supp. 2d
1087, 1101 (N.D. Cal. 2002), “Napster argue[d] that . . . works with pending
registration applications are not entitled to the same rebuttable presumption as
registered works . . . . [However,] 17 U.S.C. section 410(d), states that ‘[t]he
effective date of a copyright registration is the day on which an application . . .
[is] received in the Copyright Office.’ Hence, works with pending registrations
will be given the benefit of the presumption of ownership.”

-20-
3. Subsequent Acts of Congress

Our interpretation of the Act is also supported by two of Congress’s

changes to the statute—one in 1988, and the other in April 2005.

a. 1988 Amendments.

In 1988, Congress considered the Berne Convention Implementation Act

(Berne Act), which sought to ally the United States with a set of international

rules and regulations, known as the Berne Convention, that protects intellectual

property in the global marketplace and is adhered to by much of the global

community. The Berne Convention eliminates most, if not all, formalities that are

required to obtain and enforce copyrights. See Berne Convention for the

Protection of Literary and Artistic Works, Art. 5(2) (“The enjoyment and the

exercise of these rights shall not be subject to any formality”).

As Congress considered the Berne Act, a report issued by the Senate

Judiciary Committee expressed concern that § 411(a)’s registration requirement

was a “formality” incompatible with the text of the Berne Convention. See S.

Rep. No. 100-352, at 14, reprinted in 1988 U.S.C.A.A.N. 3706, 3719 (“the

committee has concluded that section 411(a) . . . is incompatible with Article 5(2)

of Berne.”). The Senate Judiciary Committee proposed to alleviate this

incompatibility by changing § 411(a) to read “registration is not a prerequisite to

-21-
the institution of a civil action for infringement of copyright.” Id. at 46, 3743.

As one senator said in arguing in favor of the amendment:

[r]egistration . . . [while] not, technically speaking, a condition
for the existence of copyright, . . . is, however a precondition
for the exercise of any of the . . . rights conferred by copyright
. . . . This metaphysical distinction between the existence of a
right . . . and the exercise of that right [is not] maintainable
under . . . our legal tradition which disfavors . . . rights
without remedies.

S. Rep. 100-352, at 18, 3723. However, the House of Representatives did not

agree and rejected the Senate’s proposed modification. See 134 Cong. Rec. H.

10091, 10095 (“The House passed bill left current law intact, finding that current

recordation and registration are not formalities prohibited by Berne.”).

In the end, Congress passed a narrower amendment. The amendment added

the language to § 411 excepting certain foreign works from the registration

requirement—registration is necessary “[e]xcept for actions for infringement of

States.” 17 U.S.C. § 411. The legislative compromise created “a two-tier

solution . . . . Registration is continued as a prerequisite to suit by domestic

authors. Only foreign origin works are excepted from the registration

requirement.” 134 Cong. Rec. H. at 10095 (emphasis added). 11
The result

This compromise was made possible by the fact that the Berne
11

Convention “does not forbid its members [from] impos[ing] formalities on works
(continued...)

-22-
confirms our view of the Act: copyrights that originate in the United States must

be registered before the owner can sue for infringement. See 17 U.S.C. § 411(a).

Foreign copyrights, on the other hand, are enforceable at fixation.

At first glance, this bifurcated scheme seems illogical. However, when one

considers the reasons for the scheme, it gains merit. The passage of the

their copyrights, as discussed above. These incentives ensure that most

“significant work[s] [are] registered” and that the Library of Congress receives

copies of these works. S. Rep. 100-352, at 20, 3725. While the most obvious

incentive is that one cannot sue for infringement unless the copyright is

registered, see 17 U.S.C. § 411(a), many of the incentives discussed above

provide “sound business reasons for registration wholly apart from the prospect of

infringement litigation.” S. Rep. 100-352, at 20, 3725. Thus, it is clear that in

sought to create and retain the incentives to registration, make certain benefits

available only to registrants, and, in fact, condition federal court intervention on

registration of the copyright. The Berne amendments carve out an exception for

11
(...continued)
first published in its own territory.” S. Rep. 100-352, at 18, 3723.

-23-
foreign works that accommodate treaty concerns without compromising the

essential jurisdictional requirements for domestic works.

It is also worth noting that in 1993 Congress again took up the question of

whether to eliminate registration as a prerequisite to filing suit for infringement.

proposal went so far as to completely rewrite 17 U.S.C. §§ 410 and 411 so that

registration was not a requirement to file an infringement suit. See id. Congress

did not adopt the proposal.

b. 2005 Amendments.

On April 27, 2005 Congress amended portions of Title 17 through the

Specifically, FECA amended § 411 to allow a copyright owner to sue for

infringement if the copyright is either “registered” or “preregistered.” FECA also

amended 17 U.S.C. § 408 to require the Register to further define preregistration 12

12
(f) Preregistration of works being prepared for commercial distribution.

(1) Rulemaking. Not later than 180 days after the date of enactment of this
subsection [enacted April 27, 2005], the Register of Copyrights shall issue
regulations to establish procedures for preregistration of a work that is being
prepared for commercial distribution and has not been published.

(2) Class of works. The regulations established under paragraph (1) shall
permit preregistration for any work that is in a class of works that the Register
determines has had a history of infringement prior to authorized commercial
(continued...)

-24-
As a result of this amendment, an additional class of works pending registration

will support an infringement action.

The Register of Copyrights has yet to issue regulations or guidance

regarding preregistration. We thus are not at a point to determine whether the

works at issue in this case are eligible for preregistration. We note, however, that

FECA was concerned, in large part, with the piracy of movies and the subsequent

sale and distribution of illegal copies of movies. Whatever the Register of

Copyrights eventually determines, however, the adoption of FECA further

12
(...continued)
distribution.

(3) Application for registration. Not later than 3 months after the first
publication of a work preregistered under this subsection, the applicant shall
submit to te Copyright Office–

(A) an application for registration of the work;

(B) a deposit; and

(4) Effect of untimely application. An action under this chapter [17 USCS §§
401 et seq.] for infringement of a work preregistered under this subsection, in a
case in which the infringement commenced no later than 2 months after the first
publication of the work, shall be dismissed if the items described in paragraph (3)
are not submitted to the Copyright Office in proper form within the earlier of–

(A) 3 months after the first publication of the work; or

(B) 1 month after the copyright owner has learned of the infringement.

-25-
confirms our statutory analysis. Indeed, the availability of a preregistration

scheme would in whole or in part address the problem presented by this case: the

need to sue for infringement to prevent dilution of a copyright but the inability to

do so without completed registration.

C. Registration and the Question of Proof

Our conclusion that suits for infringement can be brought only when the

to a court that a copyright is registered? While 17 U.S.C. § 410(c) states that “the

certificate of registration . . . shall constitute prima facie evidence of the validity

of the copyright,” it does not prohibit the use of other evidence to demonstrate

validity. 13
A party may file suit, for example, alleging a registered copyright, and,

like any other jurisdiction allegation, it may be challenged in a motion to dismiss

or summary judgment. Adequate proof may come in the form of a certificate of

registration from the copyright office. If such a certificate is presented, the

forth in 17 U.S.C. § 410(c). Even if the copyright owner cannot present a

certificate, the owner can still attempt to prove registration through other means,

We will not speculate what evidence a litigant could present or what
13

weight that evidence might or should carry. However, we acknowledge that this
evidence could be a letter similar to the one presented by La Resolana in the case
before us or perhaps an affidavit from a person with first-hand knowledge of a
copyright’s registration.

-26-
such as testimony or other evidence from the copyright office. Such other

evidence, however, does not entitle a copyright owner to the presumption of

validity that § 410 confers on a certificate. Upon proof of registration the

jurisdiction and the infringement suit can go forward.

In the present case, La Resolana’s copyright was not registered nor did it

possess a certificate of registration when suit was filed. Sometime after Clay

Realtors’ filed its motion to dismiss, La Resolana attempted to prove registration

with a letter from the copyright office. [Aplt. App. 76] The letter stated, among

other things, the copyright office approved the architectural drawings for

registration on January 22, 2004 (with a backdated effective date of November 19,

2003), but that the paper certificate could be delayed for up to six months.

Ordinarily, in our view, that should have been sufficient evidence of

registration. The district court, however, rejected La Resolana’s offer of proof,

finding the letter to be unauthenticated hearsay. La Resolana has not appealed the

court’s evidentiary ruling, so we must accept the determination that registration

had not occurred at the time the court entered its order of dismissal. As La

Resolana argues, and we agree, the better practice for the court in examining its

subject matter jurisdiction is to review the jurisdictional facts, relying on extrinsic

-27-
evidence if necessary. See Radil v. Sanborn W. Camps, Inc. , 384 F.3d 1220, 1224

(10th Cir. 2004); Cunningham v. BHP Petroleum Great Britain PLC , – F.3d –,

No. 03-1356, slip op. (10th Cir. July 5, 2005). In light of its evidentiary ruling,

however, on the record before the district court, La Resolana had not asserted

actual registration of its drawings. Thus, the district court concluded it lacked

jurisdiction under § 411. We express no opinion as to whether the jurisdictional

defect could be cured after commencement of the infringement action. 14

III. CONCLUSION

A suit for copyright infringement cannot be brought unless and until the

a variety of ways and the adequacy of such proof will vary. Presentation of a

La Resolana’s architectural drawings were not registered at the time this suit was

brought, the district court properly dismissed the complaint. Therefore, we

AFFIRM.

14
Some courts faced with a similar situation have found that a litigant can
cure a jurisdictionally defective complaint by amending it. See, e.g., M.G.B.
Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488-89 (11th Cir. 1990)
(allowing amended complaint to satisfy subject matter jurisdiction requirement);
Positive Black Talk, Inc. v. Cash Money Records, Inc, Nos. 03-30625, 03-30702,
2004 WL 2915340, *3 (5th Cir. Dec. 17, 2004) (same).

-28-