Weighing in on an issue that has split the federal courts, a District of New Jersey judge says a copyright infringement suit cannot be brought without an existing copyright registration. A pending application will not suffice.
The Jan. 4 ruling, in North Jersey Media Group v. Sasson, 12-cv-3568, is a setback for the owner of The Record of Hackensack in its suit alleging a former reporter infringed on its copyrights in an article and three photographs.
One of the photos is an iconic image taken on Sept. 11, 2001, by Record photographer Thomas Franklin, showing three, dust-covered firefighters raising the American flag at Ground Zero, against the backdrop of the World Trade Center wreckage.
North Jersey Media alleges that in October 2009, Victor Sasson posted the image on Eye on the Record — a blog that is highly critical of the newspaper — without permission or copyright notice and without mentioning Franklin, The Record or North Jersey Media.
The newspaper sent Sasson a cease-and-desist letter, to which Sasson responded the same day with a promise that he would limit his blog entries to critiques of Record articles, according to the complaint.
Three other works were allegedly posted on the blog, on May 17, 2012: a news story reporting the misconduct and fraud conviction of Hackensack Police Chief Ken Zisa one day earlier, and accompanying photos of Zisa and his former girlfriend, Kathleen Tiernan, who was convicted at the same trial of filing a false insurance report.
North Jersey Media sued on June 13, seeking injunctive relief and statutory damages, plus legal fees and costs.
It claimed Sasson used its Ground Zero photo “to attract and sustain attention to his blog” and his actions irreparably damaged it and would continue to do so, absent an injunction.
On July 10, Sasson moved to dismiss the claims about the Zisa article and related photographs.
Unlike the Ground Zero photograph, for which the Record had a registered copyright, a copyright application was still pending for those works.
In his ruling, U.S. District Judge William Martini discussed the split among courts over what rule should govern infringement actions: the “application approach,” under which a pending copyright application provides a basis for suit, or the “registration approach,” under which a certificate of registration from the U.S. Copyright Office is a prerequisite.
Sasson cited the U.S. Court of Appeals for the Third Circuit’s ruling in Dawes-Lloyd v. Publish America, No. 10-3781 (2011), which affirmed dismissal of a copyright suit over a children’s book because the plaintiff author presented no evidence of copyright registration.
But Martini said Dawes-Lloyd did not squarely address the question, noting the plaintiff there apparently never attempted to register her copyright.
In opting for the registration approach, Martini relied on Patrick Collins v. Doe, 1-26, 11-cv-7247, decided by U.S. District Judge Legrome Davis in the Eastern District of Pennsylvania on Dec. 30, 2011.
Davis read Dawes-Lloyd as suggesting that the Third Circuit would adopt the registration approach.
He also construed the language of 17 U.S.C. § 411(a), which says no copyright infringement suit shall be instituted “until preregistration or registration of the copyright claim has been made” but also allows it where a properly filed application has been refused.
Davis reasoned that the reference to a refused application would be rendered “nonsensical” if a suit were allowed without registration.
He wrote, “If mere submission of a complete copyright application constituted registration under § 411(a), then logic tells us that the Copyright Office could never ‘refuse’ registration of such an application — registration would be automatic.”
Agreeing with Davis’ construction, Martini dismissed without prejudice the three infringement counts relating to Zisa, stating that until North Jersey Media holds a certificate of copyright registration for them, it cannot state a prima facie case of copyright infringement. Once it does, it can file an amended complaint, he said.
North Jersey Media’s lawyers, in-house counsel Jennifer Borg and William Dunnegan of Dunnegan & Scileppi in New York, did not return calls. Neither did Sasson’s attorney, Joshua Weiner of Weiner & Weiner in Morristown.
It is not known when North Jersey Media applied for copyright on the Zisa materials or how soon the application process will be concluded.
The Copyright Office website indicates that processing times vary and that the current average is 5.6 months, but only 2.5 months for electronically filed applications.
Sasson’s blog posts were an issue in prior litigation, his age-discrimination suit over his termination in 2008, at age 63, after 28 years at The Record.
The trial judge allowed North Jersey Media lawyers to use two blog entries in cross-examining him and during summation, a ruling upheld by a state appeals court in Sasson v. North Jersey Media Group, No. A-4024-09.