Ninth Circuit Punts on Issue of Validity of Copyright

Author:Ms Lisa Stone
Profession:McDermott Will & Emery

Applying the doctrine of "primary jurisdiction, the U.S. Court of Appeals for the Ninth Circuit has refused to determine the validity of a copyright registration raised in a declaratory judgment suit," insisting the issue should be first considered by the U.S. Copyright Office. Syntek Semiconductor Co., Ltd. v. Microchip Technology Inc., 285 F.3d 857 (9th Cir. 2002)

Syntek and Microchip both design, manufacture and sell microcontrollers, i.e., integrated circuits used to control a system or process in an electronic product. The operation of microcontrollers is dictated by microcodes, which are low-level programming instructions. Syntek filed a lawsuit seeking declaratory judgment that Microchip's copyright registration in its microcode is invalid since, when Microchip registered its copyright in the microcode with the Copyright Office, it did not supply the Copyright Office with the original source code. Rather, Microchip deposited source code that it had regenerated or "decompiled" from object code. Syntek argued that the Copyright Office should not have registered the code because the decompiled source code was not a bona fide copy of the original source code. The district court granted summary judgment to Microchip and Syntek appealed.

The Ninth Circuit reversed, holding that the doctrine of primary jurisdiction requires referral of the action to the Register of Copyrights. The Court instructed that, in determining the desirability of applying the primary jurisdiction doctrine, it must consider the best way to resolve an issue that has been placed by Congress within the jurisdiction of an administrative body having regulatory authority pursuant to a statute that subjects an industry or activity to a comprehensive regulatory authority and that requires expertise or uniformity in administration. The Ninth Circuit determined that, on the facts of this case, application of the doctrine of primary jurisdiction was desirable because Congress clearly intended to establish national uniformity in copyrights; the question of whether...

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