United States: Registration V. Application: A Copyright Circuit Split

Last Updated: June 8 2017
Article by David A. Kluft

Registration is not required for valid copyright ownership, but it is required before you can bring a copyright infringement lawsuit. Section 411(a) of the Copyright Act provides that:

No civil action for infringement of the copyright in any United States work shall be instituted until . . . 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.

Read the paragraph above again. Now let's have a pop quiz: Do you need to be registered (or be refused registration) prior to filing a copyright infringement action?  The answer: It depends on when you think registration occurs.

Earlier this month the Eleventh Circuit was confronted with this question in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC. The plaintiff in that case had licensed certain syndicated news stories to the defendant. But when the license ran out, the defendant didn't take them down from its website. The plaintiff hadn't yet registered the stories with the Copyright Office, but it didn't want to wait to sue, so it applied to the Copyright Office and simultaneously filed a copyright infringement complaint, in which it alleged that it had filed "applications to register" the copyrights in question.

Was that good enough?  No, said the Eleventh Circuit, which affirmed dismissal of the claim.

The Registration Approach

The Eleventh Circuit decided to follow what is called the "registration" approach to Section 411(a), also adopted by the Tenth Circuit in La Resolana Architects v. Clay Realtors. This approach relies on a "plain language" reading of the statute: "Registration" is not "made" until your application is accepted and you get your registration certificate, so until you get that piece of paper, you can't sue because you haven't registered.

Essentially, the philosophy of the registration approach is that it takes two to tango.  The registrant sends in the application, and then the Register of Copyrights determines whether the material is eligible for registration. Only then, after both parties have played their parts, is a registration certificate issued, usually many months down the line. The mere act of filing a complete application, although part of the registration process, is not the "registration" required before filing suit.

In fact, the Eleventh Circuit had previously come to the same conclusion in M.G.B. Homes, Inc. v. Ameron Homes. But that was before the Supreme Court had determined, in Reed Elsevier v. Muchnick, that registration is not a prerequisite to a Court's jurisdiction over a copyright suit. Here, the Eleventh Circuit affirmed its earlier ruling and determined that Muchnick did not erode the rationale for following the registration approach.

The Application Approach

Who is on the other side of the split? In Cosmetic Ideas, Inc. v. IAC/Interactive, the Ninth Circuit came to the opposite conclusion and adopted the "application" approach. According to the Ninth Circuit, the statute's definition of "registration" is ambiguous because some sections (e.g., Section 408) indicate that there are no prerequisites to registration other than a completed application. Moreover, the Ninth Circuit felt that the application approach is more efficient: even if the application is rejected, the plaintiff is going to get to sue anyway, so why wait around just to engage in the kind of "needless formality" that the 1976 Copyright Act was supposed to eliminate?

Finally, the Court observed that the date listed on a copyright certificate is backdated to the date of the application, which under Section 410 becomes the effective "registration" date. Therefore, under the application approach, the registration date is the date on which you apply to get a registration certificate, not the date on which the registration certificate takes physical form. To paraphrase the Buddha: If you believe you will become registered, then you are registered.

In taking this approach, the Ninth Circuit followed the Fifth Circuit's decision in Positive Black Talk v. Cash Money Records, as well as some dicta by the Eighth Circuit. The Seventh Circuit has issued opinions suggesting support for both approaches, while the First and Second Circuits have expressly refused to decide one way or the other (thus leaving individual District Court judges to their own devices until some persistent litigant forces the issue). Finally, it should be noted that one of the judges on the Eleventh Circuit panel in Fourth Estate was sitting by designation from the Sixth Circuit, so perhaps we should pencil them in on team "registration."

The Benefits of Registration

What's the lesson? If you are a copyright owner and you want to be able to sue, register. Sure, you might be located in a jurisdiction that follows the application approach, but you will not always be able to control where you are litigating, and the registration requirement applies to copyright counterclaims too. If you get stuck on the verge of litigation and haven't registered, consider using the Copyright Office's Special Handling process to speed things up.

There are other benefits to registration as well. The registration establishes a public record of your copyright claim and the certificate can serve as prima facie evidence of validity in court, but only if you register within five years after publication. You can also record the registration with the U.S. Customs Service, which can use the information to identify and bar the importation of pirated or counterfeit copies. Perhaps most importantly, registration has to be made prior to commencement of the infringement, or within three months of the first publication, in order to entitle the owner to statutory damages and attorneys' fees.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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