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Supreme Court Poised to Possibly Decide Important Copyright Registration Issue

June 5, 2018

a blog by Rachel Kim

You may have heard that copyright registration is not required for a work to be protected under copyright law, but that it is required for a copyright owner to take advantage of certain benefits. One benefit is that copyright owners of registered works can sue for copyright infringement. The Copyright Act lays this out in section 411(a), stating:

“. . .  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.”

This means the issue of when a work is registered is crucial since a copyright owner can’t bring an infringement suit until the work is registered. Since the ability to bring an infringement suit in federal court is tied to registration, copyright owners often wonder when the best time to register a work is. But the question of “when is a work actually “registered”? is one that divides the courts. Is a work “registered” when the copyright owner completes the registration application and submits it to the Copyright Office or when the Copyright Office approves the application?

Some federal courts, like the Tenth and Eleventh Circuits, follow what’s called the “registration approach,” which means that the copyright owner must wait until the Copyright Office either accepts or denies an application before filing a complaint for copyright infringement in federal court. Other courts, like the Fifth and Ninth Circuits, follow the “application approach,” which means that as soon as the copyright owner files a complete application with the Copyright Office, he or she can file the complaint.

The Supreme Court is currently considering whether to take on a case regarding this issue, and if it does, we may finally have an answer to this question. The case is Fourth Estate v. Wall-Street.com. Fourth Estate Public Benefit Corporation, an online news producer, licensed some of its articles to Wall-Street.com, a news website. The license agreement required Wall-Street.com to remove any Fourth Estate produced articles once the license expired, but Wall-Street.com declined to do so. Fourth Estate brought a copyright infringement claim against Wall-Street.com—though at the time the lawsuit was initiated, the Copyright Office had not yet accepted or denied Fourth Estate’s registration applications for the articles. The district court followed the “registration approach” and accordingly dismissed the case. Fourth Estate then appealed to the Eleventh Circuit Court of Appeals, which upheld the lower court decision. Fourth Estate subsequently requested that the Supreme Court take the case.

In deciding whether to accept the case or not, the Supreme Court asked the Solicitor General (whose job is it to supervise and conduct government litigation before the Court) for its opinion whether the Court should take the case. In mid-May, the Solicitor General, joined by the U.S. Copyright Office, filed a brief with the Supreme Court agreeing with the Eleventh Circuit on the “registration approach” and urging the Supreme Court to review the case.

In its brief, the government looked at the language of section 411(a)  to support this approach. They argued that:

  • “Registration” in its plain meaning means that something has to actually be entered into an official register, and for copyrighted works to be entered into the official register and for a registration to be made under the Copyright Act, it requires the Register of Copyrights to make a determination.
  • Section 411(a) of the Copyright Act includes an exception where a copyright owner who files a registration application with the proper “deposit, application, and fee” which is then refused by the Register, is “entitled” to initiate an infringement suit if he or she gives a notice of the suit to the Register. The government argued that this exception would be meaningless under the “application approach” since under that approach copyright owners would be “entitled to commence suit as soon as he had submitted the required materials” and would not have to wait for a determination by the Register.
  • Past versions of the Copyright Act allowed copyright owners who were refused registrations to compel the Copyright Office to grant registration for the work before starting an infringement suit which turned into the exception in 411(a) in today’s Copyright Act. The government argued that this history shows that proper registration has always required a determination by the Register.
  • Other parts of the Copyright Act use the phrase “application for registration” to describe the copyright owner’s submission of his/her deposit, application, and fee to the Copyright Office, signaling that the term “registration” by itself has a different meaning.
  • If copyright owners could sue immediately after filing an application, it would make the preregistration process meaningless. Preregistration allows copyright owners of works that are historically prone to immediate infringement to get a truncated examination of the application by the Register in order to “not preclude the copyright owner from obtaining an effective judicial remedy.”

The government highlighted that the “registration approach” would encourage “copyright owners to begin the registration process promptly after publication, rather than waiting until an infringement dispute arises.” Of course, for a copyright owner, there are often other considerations that might be a cause for delay in registering, like how much money it would take to file an application for each copyrighted work they create—especially when large volumes of works are involved or when the copyright owner is a small business or individual creator who may not have the money or resources to file.

Time will tell whether the Supreme Court takes the case and agrees with the U.S. Government. In the meantime, we operate by two different rules— the registration approach and the application approach. Until one rule becomes the law of the land, creators would be wise to know what rule applies to them.

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