registered his material before he brought this lawsuit, he has not violated § 411(a).
GMA's position is that in spite of 17 U.S.C. §§ 408(a), 411(a), Cameron's copyright is invalid because Cameron did not obtain registration within five years of the date of first publication. To support this contention, GMA looks to 17 U.S.C. § 410(c). 17 U.S.C. § 410(c) states: "In any judicial proceeding the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. The evidentiary weight to be accorded the certificate of registration made thereafter shall be within the discretion of the court." GMA's reliance on 17 U.S.C. § 410(c) is wholly misplaced.
17 U.S.C. § 410(c) does not pertain to the validity of the copyright. Instead, it deals with the evidentiary weight to be given to the certificate of registration in a copyright case. In a copyright infringement action, as in any other civil action, the burden of proof is on the plaintiff to establish its prima facie case. Thus, Cameron must establish that (1) he has valid copyright protection and (2) GMA has infringed on this protection. See Masquerade Novelty, Inc. v. Unique Industries, Inc., 912 F.2d 663, 667 (3d Cir. 1990) (quoting Whimsicality, Inc. v. Rubie's Costume Co., Inc., 891 F.2d 452, 455 (2d Cir. 1989)). § 410(c) is relevant to the first prong of the copyright infringement test to the extent that it allocates the burden of proof. See 3 M Nimmer & D. Nimmer, Nimmer on Copyright § 12.11[A-B], pp. 12-146 - 12-148.2 (1992). It merely states that if Cameron had registered his software with the Copyright Office within five years of its first publication, a rebuttable presumption would exist that Cameron's copyright is valid. Since the presumption would be rebuttable, the burden of proof would shift to GMA to prove that the plaintiff's copyrights are invalid. See Masquerade Novelty, 912 F.2d at 668.
On the other hand, failure to obtain registration within five years would not render Cameron's copyright invalid. Rather, § 410(c) simply says that Cameron would not be automatically entitled to the prima facie presumption of copyright validity. It should be noted that even though the registration certificate is dated more than five years after the date of first publication, this court under Section 410(c) could nevertheless give it the weight of prima facie evidence. See Telerate Systems, Inc. v. Caro, 689 F. Supp. 221, 227 n.7 (S.D.N.Y. 1988). If this court opted not to give any evidentiary weight to the certificate of registration because the certificate was obtained more than five years after the date of first publication, then the burden would be on Cameron to establish that the copyright is valid. Whether or not Cameron could actually meet that burden is an issue that this court need not decide.
In sum, 17 U.S.C. § 410(c) deals with the allocation of the burden of proof in a copyright infringement claim. It does not render a copyright invalid because a party failed to register its copyrightable material within five years. This court has been unable to find any case law which supports GMA's interpretation of § 410(c). Indeed, neither GMA's Memorandum of Law in Opposition to Plaintiff's Motion for Reconsideration nor its original Memorandum of Law in Opposition to Plaintiff's Motion to Strike Defenses cites a single case which supports its position. Accordingly, GMA's Eighth Affirmative Defense is legally insufficient, and thus will be stricken.
For the foregoing reasons, the plaintiff's Motion for Reconsideration will be granted. An appropriate order follows.
/s/ Edward N. Cahn
AND NOW, this 21st day of September, 1992, upon consideration of the plaintiff's Motion for Reconsideration, IT IS ORDERED that:
1. The plaintiff's Motion for Reconsideration is GRANTED;
2. The defendant's Counterclaim for Abuse of Process is DISMISSED; and
3. The defendant's Eighth Affirmative Defense is STRICKEN.
BY THE COURT:
Edward N. Cahn, J.
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