Litigating Copyrights: Is Registration required to get into Court?

Copyrights, like patents, arise out of the U.S. Constitution, Article 1, Section 8, Clause 8.  A copyright grants protection to authors for their original works of authorship fixed in a tangible medium of expression.  While the United States used to require works of authorship to be registered, now a work gains copyright protection the moment it is created and tangibly fixed.

Because copyrights arise naturally, a registration is not required in order for a copyright to exist, or to be infringed.  Registration is also not automatic – it can take several months for an application to be reviewed and granted. However, registering a copyright provides some important benefits. For example, registration is required for access to the federal court system, and can provide access to increased statutory damages.

However, while registration is required in order to file a lawsuit for copyright in federal court, there is currently a circuit split with regard to what part of the process must be complete in order to meet the “registration” standard.  According to 17 U.S.C. §411(b), “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.”  The question that circuit courts seem to be divided on is whether “registration” is satisfied when a Copyright Registration is received, or when an application has been filed. On June 28, 2018, the Supreme Court agreed to weigh in. The case at issue is Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, which arises out of the Eleventh Circuit.

There have been two traditional approaches to interpreting the registration requirement.  Circuits 10 and 11 take the “registration” approach, requiring a registration be granted prior to a case being filed in federal court.  The reasoning behind this approach is that the registration process is not prohibitively expensive – only $35 per claim for a normal online application, with an expedited application process costing $800 to deliver a decision within five business days.  Courts using this standard note that the statutory language is clear, with the language “registration” implying an actual registration is required prior to institution of a federal action.

However, the Fifth and Ninth Circuits take a different approach.  With the entry of the US into the Berne Convention, there are no longer any formal requirements for a copyright to be granted  under federal law.  Proponents of the application approach respond to the “registration” language in §411 by noting that copyright registration is supposed to be voluntary, and not required under federal law.  Additionally, for at least some plaintiffs, the cost to expedite an application is prohibitive.

Currently, the other Circuit courts have not issued binding decisions, but district courts in Circuits Six and Seven have used both standards.

The case at issue involves Fourth Estate, a news organization that retains copyrights to articles but produces online journalism.  Wall-Street.com obtained licenses from Fourth Estate to several of these articles, and the license agreement required the removal of all Fourth Estate content before cancellation of its account.  Fourth Estate filed a lawsuit when, after cancellation, Wall-Street.com kept the articles displayed.  Wall-Street moved for dismissal using the argument that an application to register the copyright alone is not enough to allow a suit to proceed in federal court.  The district court agreed and dismissed the complaint.  The Eleventh Circuit Court of Appeals affirmed.

In an amicus curiae brief filed before the Supreme Court on May 16, 2018, the Solicitor General agreed with the registration approach, arguing that a copyright-infringement suit cannot be field until the Registrar of Copyrights has approved or refused registration of the work (federal court relief is available, under §411, for infringement, so long as a copy of the complaint, and notice of the civil action, is served on the Register of Copyrights).  The Solicitor General argues, on page 14 of the brief, that Registration only occurs once an examination of the application submission has been conducted, and the application has been accepted.  Only at that point is the claim registered and a certificate of registration issued.

The Petitioners filed a Petition for Certiorari, arguing instead, on page 17, that the Copyright Act is ambiguous in its use of the term “registration” – referring both to actions by the Copyright Office as well as the procedure to be followed by a copyright owner.  Additionally, on page 22 of the Petition, the argument is made that the remedies provided under the Copyright Act require the application approach.  Since exclusive rights are granted as soon as an original work is fixed, and not after examination by the Copyright Office, it seems only appropriate that remedies for infringement are also then made available.

A decision by the Supreme Court this term will likely resolve the circuit split and reduce forum shopping in the future.  Since Copyright cases often arise in different circuits based on industry, consistent requirements for filing will ensure consistent treatment of copyright plaintiffs going forward.