United States: United States Supreme Court To Tackle Copyright Registration Debate

On June 28, 2018, the United States Supreme Court granted a petition for writ of certiorari in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, 856 F.3d 1338 (11th Cir. 2017), to address what constitutes "registration" of a copyrighted work. The Copyright Act makes "registration" a prerequisite to a suit for infringement. 17 U.S.C. § 411(a). Circuit courts have interpreted this seemingly straightforward term in two conflicting ways. The Fifth and Ninth Circuits follow the "application" approach, which permits a copyright holder to bring an infringement suit upon submitting an application to the Copyright Office. The Tenth and Eleventh Circuits follow the "registration" approach, under which the Copyright Office must first act on an application before suit may be brought, and the Solicitor General has filed an amicus brief favoring this approach. The Supreme Court's decision in Fourth Estate stands to have great practical significance for copyright holders, as it will affect the timing of infringement actions, along with the availability of preliminary relief and the applicability of defenses such as the statute of limitations.

Legal Background

The Copyright Act of 1976 (the Act) grants protection to all "original works of authorship fixed in any tangible medium of expression."1 While a copyright arises automatically, the Act requires registration with the Copyright Office before the copyright holder may institute an infringement action. Section 411(a) provides that "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."2 Neither Section 411(a) nor any other provision of the Act defines "registration" for these purposes, and a circuit split has arisen concerning the meaning of this term.3

The Fifth and Ninth Circuits have adopted the "application" approach, under which a copyright holder satisfies Section 411(a) by submitting the application, deposit, and fee to the Copyright Office.4 The Fifth and Ninth Circuits found support for this rule in the context and purpose of the statute, and agreed with Professor Nimmer that the rule promotes both judicial efficiency and copyright owners' substantive rights.5

In contrast, the Tenth and Eleventh Circuits follow the "registration" approach, under which a copyright holder must both submit an application and obtain registration by the Copyright Office before suing.6 The Tenth Circuit reasoned: "[n]o language in the Act suggests that registration is accomplished by mere receipt of copyrightable material by the Copyright Office."7

The First and Second Circuits have declined to adopt a specific approach,8 while the Seventh Circuit has taken differing positions in dicta.9

Case Summary

Plaintiff Fourth Estate Public Benefit Corporation is a news organization that produces online content and articles, which it licenses to other websites. While Defendants Wall-Street.com and its owner initially published Fourth Estate's articles online pursuant to a license, Fourth Estate alleged that Wall-Street.com continued to display articles on its website without permission after cancelling its account. In March 2016, Fourth Estate sued Wall-Street in the Southern District of Florida, seeking an injunction and damages. Before doing so, Fourth Estate filed a copyright registration application, but did not wait for the Copyright Office to act on that application, nor did it request expedited processing of its claim. With the application still pending, the district court applied the "registration" approach and dismissed the complaint for failure to meet the requirements of Section 411(a).

The Eleventh Circuit affirmed. Holding the statutory language to be clear, the Circuit held that the Copyright Office must first act upon an application before suit may be filed, and thus filing an application "does not amount to registration." Aligning with the Tenth Circuit, the court concluded that "registration" refers to the registration, memorialized by a certificate, that is granted by the Register after examination.

In its petition for certiorari, Fourth Estate argued that the Eleventh Circuit erred because the statutory phrase "registration . . . has been made" refers to actions of the copyright holder in following the procedures to register a claim. Fourth Estate also asserted that the Eleventh Circuit's holding was inconsistent with the Act's scheme of rights and remedies, under which copyright owners' rights do not derive from an affirmative government grant.

The Supreme Court invited a response from the Solicitor General, who urged the Court to adopt the Eleventh Circuit's interpretation.


A decision by the Supreme Court on what constitutes "registration" under Section 411(a) stands to have great practical significance for copyright holders and the courts. A decision will not just create a single standard nationwide concerning when infringement actions may be brought, it will also impact the substantive rights and defenses available in such actions.

For instance, if the Supreme Court were to side with the Eleventh Circuit, content owners could experience a time lag in their ability to bring a suit for infringement. The Solicitor General's brief notes that the average time for the Copyright Office to process an application is approximately eight months. Fourth Estate's petition for certiorari notes that the Copyright Office still has not acted on its application, nineteen months after submission. If the "registration" approach were to prevail, argued Fourth Estate, copyright holders could find themselves in a state of limbo, and be unable to seek preliminary remedies. And, if a combination of delay in submitting the application and action by the Copyright Office were to exceed the three-year statute of limitations, a copyright owner could conceivably lose his remedies altogether. This would provide a strong incentive toward prompt and even preemptive registration of copyrighted works. For urgent cases, the Copyright Office offers an expedited registration process called "special handling" for an additional $800 per claim, which is many times the standard registration fee. For copyright owners with limited financial resources or a large number of works to register, this option could prove cost-prohibitive. Given the relative ease of creating copyrightable works, and the speed with which infringing works can be propagated in the digital age, such an outcome could prove detrimental to content holders' ability to enforce their rights.

In contrast, if the Supreme Court were to adopt the Fifth and Ninth Circuit's "application" approach, this would allow infringement actions to be filed nationwide, and preliminary remedies to be sought, without first awaiting action by the Copyright Office. However, it could remove an incentive to copyright holders promptly and proactively registering their works prior to becoming aware of infringing acts. Such a rule could also lead to greater uncertainty in litigation about the validity of some registrations, where litigation proceeds without the benefit of the Copyright Office's conclusion as to registrability.

It bears repeating that the case will turn on the interpretation of the statutory term "registration" under Section 411(a) of the Copyright Act. If Congress were dissatisfied with the Supreme Court's ultimate ruling, it could present an opportunity for amending the statute and providing clarity concerning when, and under what circumstances, Congress intends for copyright infringement actions to proceed, and how best to effectuate the various objectives of the Copyright Act.

*Marcia Valente contributed to this Advisory. Ms. Valente is a graduate of Benjamin N. Cardozo School of Law and is employed at Arnold & Porter Kaye Scholer LLP's San Francisco office. Ms. Valente is not admitted to the practice of law in California.


1 17 U.S.C. § 102(a).

2 17 U.S.C. § 411(a). Preregistration is available for "any work that is in a class of works that the Register determines has had a history of infringement prior to authorized commercial distribution." 17 U.S.C. § 408(f)(2).

3 See Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612, 616-17 (9th Cir. 2010) (holding that § 411(a) "gives no guidance in interpreting the meaning of 'registration,'" and finding the "language of the statute as a whole" to be ambiguous).

4 See Positive Black Talk Inc. v. Cash Money Records Inc., 394 F.3d 357, 365 (5th Cir. 2004), abrogated in part on other grounds by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 160 n.2 (2010); Lakedreams v. Taylor, 932 F.2d 1103, 1108 (5th Cir. 1991); Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir. 1984); Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612, 621 (9th Cir. 2010).

5 See Apple Barrel, 730 F.2d at 386-87 (citing 2 Nimmer on Copyright § 7.16{B}{1} (2013)).

6 La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1200-01 (10th Cir. 2005). In the event the Copyright Office refuses registration, an applicant may at that point commence an infringement action so long as notice thereof is served on the Register of Copyrights. 17 U.S.C. § 411(a).

7 Id. at 1200.

8 See Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120, 125 (2d Cir. 2014); Alicea v. Machete Music, 744 F.3d 773, 779 & n.7 (1st Cir. 2014).

9 See Brooks-Ngwenya v. Indianapolis Pub. Sch., 564 F.3d 804, 806 (7th Cir. 2009) (per curiam).

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions