A bill was introduced on Wednesday, July 29, 2015, in the U.S. Senate and House of Representatives by a bipartisan group of senators and representatives that would allow a private right of action for misappropriation of trade secrets under federal law. Currently, federal law only provides criminal relief for the theft of trade secrets and civil relief is left to the laws of each state. This is not the first time that Congress has tried to pass such a law. An attempt approximately one year ago failed. The current bill is title “Defend Trade Secrets Act,” and it would be enacted under the Economic Espionage Act of 1996. Business groups such as the U.S. Chamber of Commerce and dozens of corporations, including IBM, Boeing, General Electric and Nike, support the bill. Trade secrets and the protection of trade secrets are becoming increasingly important as the laws governing patent protection are changing and narrowing. Let’s see if the government gets it done this time.
An interesting copyright question continues to percolate in the Circuit Courts over what “registration” means as a prerequisite for filing a copyright claim in federal court. The Second Circuit, in The A Star Group, Inc. v. Manitoba Hydro, (No. 14-2738) noted the Circuit split on the issue but declined again to weigh in.
Under 17 U.S.C. § 411(a), a copyright holder must register its work before it can initiate a lawsuit against an infringer:
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.
The question is what is sufficient to satisfy the “registration” requirement–is the filing of the application sufficient, or does the application need to be accepted and granted by the Copyright Office?
Currently, the Circuit Courts on split on the issue. The Fifth and Ninth Circuits require only that the copyright holder file the application. See, e.g., Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir. 1984); Cosmetic Ideas Inc. v. IAC/InteractiveCorp, 606 F. 3d 612, (9th Cir. 2010). While the Tenth and Eleventh Circuits require that the Copyright Office grant the application. See, e.g., M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488-89 (11th Cir. 1990) ; La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1202-05 (10th Cir. 2005). The Seventh Circuit appears to have taken conflicting views on this matter. Compare Chicago Bd. of Educ. v. Substance Inc., 354 F.3d 624, 631 (7th Cir. 2003) with Gaiman v. McFarlane,360 F.3d 644, 655 (7th Cir. 2004).
The Second Circuit chose not to wade into this issue and was able to decide the case without having to choose a side. At some point, however, the U.S. Supreme Court will likely need to resolve this dispute as the Circuit split continues. As it stands now, a copyright holder can face very different results depending on where the case is filed, which is not a helpful situation when a national right, such as a copyright, is involved.
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