Although a work is automatically protected by copyright when it is fixed in a tangible medium of expression, under the Copyright Act, an owner must register her works with the federal Copyright Office to benefit from the Act’s protections. One such protection is against copyright infringement. Thus, before an owner can file a lawsuit for copyright infringement, the work in question must be “registered.”
But what exactly does it mean to be “registered?” This question has been debated for years and has left the circuit courts split. The Copyright Act outlines the process for registration as: (1) filing an application and paying a fee; (2) depositing a copy of the copyrightable material; (3) an examination of the application by the Register of Copyrights; (4) registration or refusal of registration of the application by the Register; and (5) issuance of a certificate of registration.
Some circuit courts have held that a work is “registered” and the copyright owner can sue an infringer as soon as the applicant files the application, deposits a copy of the work and pays a fee. This is known as the “application” approach. Other circuit courts follow the “registration” approach which requires the Copyright Office to act on the application—by examining it and either approving or refusing it—before the copyright owner may file suit.
So, which approach is correct? We should soon have an answer as the United States Supreme Court has agreed to hear Fourth Estate Public Benefit Corporation v Wall-Street.com, LLC to resolve this issue and finally decide what it means to be “registered.”
Background of Fourth Estate
Fourth Estate Public Benefit Corporation is a news organization that produces articles online. It licenses its articles to other websites while retaining the copyrights. Wall-Street.com obtained licenses to a variety of articles produced by Fourth Estate. Eventually, Wall-Street.com cancelled its account and under the license agreement it was required to remove all content produced by Fourth Estate from its website. However, Wall-Street.com continued to display the articles produced by Fourth Estate after cancelling its account.
Fourth Estate then filed this lawsuit against Wall-Street.com alleging copyright infringement. The district court held that the Copyright Act permits a suit for copyright infringement only after the Register of Copyrights approves or denies an application to register a copyright and dismissed the complaint without prejudice. The Court of Appeals affirmed the “registration” approach—as it had previously endorsed in M.G.B. Homes, Inc. v. Ameron Homes, Inc and Kernel Records Oy v. Mosley—and rejected the “application” approach.
The “Registration” Approach
The Eleventh Circuit in Fourth Estate made several assertions in support of the “registration” approach based on a “plain reading” of the text of the Copyright Act. For instance, 17 U.S.C. § 411(a) reads:
[N]o 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. 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 a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.
(*Note: Preregistration is not applicable here because it is permitted for a limited class of works that have a history of infringement prior to authorized commercial distribution. This includes movies and sound recordings.)
Under the Eleventh Circuit’s decision in M.G.B Homes and Kernel Records, registration of a copyright has not been made in accordance with §§410(a) and 411(a) of the Copyright Act until the Register registers the claim. Filing an application does not amount to registration because registration requires action from both the copyright owner and the Copyright Office. Thus, filing for infringement is premature after merely filing the application.
The court further relies on §410(a) as proof that an application alone is not sufficient for registration. Section 410(a) reads:
When, after examination, the Register of Copyrights determines that, in accordance with the provisions of this title, the material deposited constitutes copyrightable subject matter and that the other legal and formal requirements of this title have been met, the Register shall register the claim and issue to the applicant a certificate of registration under the seal of the Copyright Office.
Citing the definition for “after,” the court determined that the examination must occur “later in time than” or “subsequent to” the filing of the application.
Further, §410(b), which deals with refusal of a copyright by the Copyright Office, also supports that registration can only occur after an examination. If merely filing the application were sufficient, there would be no opportunity for the Register of Copyrights to refuse registration which would render this power moot.
Lastly, section 410(d) indicates that, although the registration date relates back to the date that the owner files an application, the registration only occurs after the Register of Copyrights has deemed the application “acceptable.” This can only happen after the application has been examined.
The “Application” Approach
Courts following the “application” approach interpret the Copyright Act using a policy-based methodology in the interest of promoting justice and judicial economy. For one thing, because a copyright owner can sue for infringement regardless of the application ultimately being granted or rejected, it is nonsensical to delay the date the owner can sue to until after the examination of the application: The suit can proceed in either event. This delay could permit an infringing party to continue to profit from its wrongful acts or cause the owner to miss the three-year statute of limitations for copyright infringement actions.
Lastly, courts following the “application” approach rely on §408 which states that registration is not a condition of copyright protection and implies that the only requirement for registration is the delivery of the appropriate documents and fees. Further, §410(d) adds that once a copyright is registered, the effective date of the registration relates back to the date the Copyright Office received the last of the filing materials (the application, deposit and fee). And if an owner were to file an application before the statutory deadline but not receive the registration certificate until after the deadline, §410(d) would be moot.
Why does this split matter?
Circuit splits occur when circuits of the U.S. Courts of Appeals do not resolve the same legal question congruently. Splits can occur because of geographical, political or ideological differences, and can cause some circuits to develop reputations for being more conservative—like the Fourth Circuit—or more liberal than other circuits—like the Ninth Circuit. These splits perpetuate because, generally, under stare decisis federal judges will rule the way a previous court in its circuit ruled on the same issue. And federal judges in one circuit are not bound by the rulings in other circuits, although these rulings may be persuasive, helpful, or instructive. This means that federal law is not similarly applied across the nation and the parties in the various jurisdictions are treated differently.
Here, with the circuits split on which approach to follow, parties can bring, or be prevented from bringing, a lawsuit for copyright infringement at different points of the registration process depending on where the lawsuit is filed. The difference can cost an owner extra time and expense: an owner who brings suit in a “registration” approach jurisdiction cannot sue until the Copyright Office takes an action on the application. This can take several months especially if the owner does not pay additional fees for expedited processing. If the three-year statute of limitations for bringing a copyright infringement claim is nearing, timing may be an issue.
As noted above in Fourth Estate, which was brought in Florida district court, the Eleventh Circuit follows the “registration approach.” The Tenth Circuit held like-mindedly in La Resolana Architects, PA v Clay Realtors Angel Fire, which was brought in a New Mexico jurisdiction.
Brought in a Louisiana district court and following the “application” approach, the Fifth Circuit held in Positive Black Talk, Inc. v Cash Money Records, Inc. that a pleading need only show the copyright owner applied for a registration. In the California district court case Cosmetic Ideas, Inc. v IAC/Interactivecorp, the Ninth Circuit also followed the application approach. The Eighth Circuit has also leaned towards the application approach as demonstrated in the Minnesota case Action Tapes Inc. v. Mattson.
The First and Second Circuits have acknowledged the split in the circuit courts but neither have made a formal commitment to either approach as can be seen in Alicea v. Machete Music (Massachusetts) and Psihoyos v. John Wiley & Sons Inc (New York).
Proponents of both approaches make valid points. Each one seems to satisfy the requirements of the Copyright Act, ensure the broad copyright protection that the Act was enacted to provide, and accomplish the central purpose of registration, which is to compile a robust national register of existing copyrights. Both attempt to avoid unfairness and wasting judicial resources. It will not be an easy decision, but whatever the Supreme Court decides, it will certainly require some circuits to make adjustments in their views of the registration process.