[Federal Register: April 13, 2001 (Volume 66, Number 72)]

[Rules and Regulations]               

[Page 19094-19095]

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LIBRARY OF CONGRESS



Copyright Office



37 CFR Part 205



[Docket No. RM 2001-1]



 

Service of Notice of Institution of Action for Infringement and 

Service of Complaint in Infringement Action on the Register of 

Copyrights



AGENCY: Copyright Office, Library of Congress.



ACTION: Final rule.



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SUMMARY: This document publishes the procedures for proper service on 

the Register of Copyrights when a registration applicant whose 

application for registration has been refused institutes an 

infringement action. Service under such circumstances is required under 

title 17, United States Code, section 411(a).



EFFECTIVE DATE: Effective May 14, 2001.



FOR FURTHER INFORMATION CONTACT: Marilyn J. Kretsinger, Assistant 

General Counsel, or Patricia L. Sinn, Senior Attorney, Copyright GC/

I&R, P.O. Box 70400, Southwest Station, Washington, D.C. 20024. 

Telephone: (202) 707-8380. Telefax: (202) 707-8366.



SUPPLEMENTARY INFORMATION: Under title 17, United States Code, the 

copyright law allows a copyright owner to sue for infringement of 

exclusive rights provided under 17 U.S.C. 106, as long as the work(s) 

at issue have been registered with the Copyright Office. In addition, 

under section 411(a), a registration applicant whose application for 

registration has been refused by the Office may institute an 

infringement action under certain circumstances. It states:



    Except for an action brought for a violation of the rights of 

the author under section 106A(a), and subject to the provisions of 

subsection (b), 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. 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. The 

Register may, at his or her option, become a party to the action 

with respect to the issue of registrability of the copyright claim 

by entering an appearance within sixty days after such service, but 

the Register's failure to become a party shall not deprive the court 

of jurisdiction to determine that case.



17 U.S.C. 411(a).

    The purpose of the statutory provision is to enable the Register to 

become a party to an action, if he or she chooses, with respect to the 

issue of registrability of the copyright claim, and, thereby explain 

the Office's rejection of an application or clarify the Office's 

registration practices and procedures. The Register has sixty days 

after service of complaint to intervene in the case. In order for this 

to occur, service must be proper and timely.

    Unfortunately, the statute does not give specific instructions 

about service on the Register when registration has been refused, and 

in practice such service has not been uniform. Despite the Copyright 

Office's publication of an address where these complaints should be 

directed, See 59 FR 17401 (April 12, 1994), they continue to be 

misdirected. A number of them have been delivered to the wrong section 

of the Copyright Office and held for over 60 days before being 

forwarded to the appropriate Copyright Office official. Such delays 

make it impossible for the Office to enter the case. Therefore, the 

Office is publishing in its regulations the procedures whereby notice 

of institution of lawsuits and complaints in cases where registration 

has been refused must be served directly upon the appropriate officials 

responsible for determining Office participation in such cases. Service 

that does not comply with these procedures will not be considered 

proper.

    Service on the Register of notice that an action has been 

instituted for infringement of a work for which registration has been 

refused will be satisfied by either sending by first class mail notice 

of the institution of the action in the form of a cover letter 

addressed to the Register of Copyrights, along with a copy of the 

complaint to the General Counsel of the Copyright Office at Copyright 

GC/I&R, P.O. Box 70400, Southwest Station, Washington, D.C. 20024 or by 

hand delivery of the same material to the General Counsel. If delivered 

by hand, the cover letter and complaint must be delivered to the 

Copyright Office General Counsel's Office at the James Madison Memorial 

Building, Room LM-403, First and Independence Avenue, SE, Washington, 

D.C. A copy of the cover letter and complaint should also be sent to 

the Department of Justice by first class mail, addressed to the 

Director of Intellectual Property Staff, Commercial Litigation Branch, 

Civil Division, Department of Justice, Washington, D.C. 20530.

    This final rule is being published without opportunity for notice 

and comment because it is a rule of agency practice and procedure. 

Moreover, the Office finds that there is good cause to conclude that 

providing the opportunity for notice and comment would be 

impracticable, unnecessary and contrary to the public interest because 

this rule simply advises parties of the address to which the notice 

required by section 411(a) must be sent. See 5 U.S.C. 553(b)(A) and 

(B).



List of Subjects in 37 CFR Part 205



    Copyright, Service of process.



Final Regulation



    In consideration of the foregoing, the Copyright Office is amending 

37 CFR Chapter II by adding part 205 consisting of subpart A to read as 

follows:



PART 205--PRODUCTION OF LEGAL DOCUMENTS AND OFFICIAL TESTIMONY



    Authority: 17 U.S.C. 411, 17 U.S.C. 702.





Sec. 205.1  Complaints served on the Register of Copyright pursuant to 

17 U.S.C. 411(a)



    When an action has been instituted pursuant to 17 U.S.C. 411(a) for 

infringement of the copyright of a work for which registration has been 

refused, notice of the institution of the action and a copy of the 

complaint must be served on the Register of Copyrights by delivering 

such documents by first class mail to the General Counsel of the 

Copyright Office, GC/I&R, P.O. Box 70400, Southwest Station, 

Washington, D.C. 20024, or delivery by hand to the General Counsel of 

the Copyright Office, James Madison Memorial Building, Room LM-403, 

First and Independence Avenue, SE, Washington, D.C. A second copy 

should be delivered by first class mail to the United States Department 

of Justice, directed to the Director of Intellectual Property Staff, 

Commercial



[[Page 19095]]



Litigation Branch, Civil Division, Department of Justice, Washington, 

D.C. 20530.



    Dated: April 3, 2001.

Marybeth Peters,

Register of Copyrights.



James H. Billington,

Librarian of Congress.

[FR Doc. 01-9236 Filed 4-12-01; 8:45 am]

BILLING CODE 1410-30-P