On Thursday, June 28, 2018, the U.S. Supreme Court granted a petition for writ of certiorari filed by Fourth Estate Public Benefit Corporation in the case of Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC and Jerrold D. Burden. The issue for the Court to decide is one that has long caused division among the U.S. Circuit Courts:
Does the U.S. Copyright Act authorize a copyright owner to sue for copyright infringement: (A) immediately after filing a copyright application; or (B) only after the U.S. Copyright Office (“USCO”) issues (or refuses to issue) a copyright registration certificate?
The Copyright Act
This issue arises from the language of the Copyright Act (the “Act”), which provides that preregistration or registration of a copyright claim is a prerequisite for a civil copyright infringement action, but that the “effective date” of a copyright registration is the application filing date (rather than the date that the USCO issues a copyright registration certificate).
The Act states 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.” 17 U.S.C. § 411(a) (emphasis added). The Act provides that the “effective date of a copyright registration is the day on which an application, deposit, and fee, which are later determined by the Register of Copyrights or by a court of competent jurisdiction to be acceptable for registration, have all been received in the U.S. Copyright Office.” 17 U.S.C. § 410(d) (emphasis added). If the USCO refuses to issue a registration certificate after receipt of a proper copyright application, deposit, and fee, the Act allows the copyright owner to proceed with a civil infringement suit after serving notice on the Register of Copyrights (in which case, the court can assess the registrability of the copyright claim, and the Register has the option to become a party in the action to weigh in on the issue).
Courts have reached different conclusions about whether the Act permits a civil infringement suit to be filed between the dates that the USCO: (A) receives a copyright application; and (B) issues a Certificate of Registration.
Some Circuit courts, including the Eleventh Circuit, follow what is called the “registration approach,” which holds that “registration occurs when the Register of Copyrights registers the claim.” Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC and Jerrold D. Burden, 856 F.3d 1338 (11th Cir. 2017) (quoting in part 17 U.S.C. § 411(a)). Under this interpretation, the Copyright Act precludes copyright owners who have not yet preregistered or received a certificate of registration for their work from the Register of Copyrights from filing an infringement suit. Thus, merely filing a copyright application, in the absence of registration, does not provide grounds for a copyright infringement suit. See M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486 (11th Cir. 1990) (reversing a district court decision awarding damages where the copyright owner had applied for, but not yet received, copyright registration). The Tenth Circuit also requires “actual registration by the Register of Copyrights,” holding that “[u]ntil that happens, an infringement action will not lie in the federal courts.” La Resolona Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1997 (10th Cir. 2005).
In contrast, other Circuit courts have rejected the registration approach in favor of the “application approach,” which only requires a copyright owner to file an application before commencing a lawsuit. For example, the Ninth Circuit has held that “the application approach better fulfills Congress’s purpose of providing broad copyright protection while maintaining a robust federal register.” Cosmetic Ideas, Inc. v. IAC/INTERACTIVECORP, et al, 606 F.3d 612, 618-19 (9th Cir. May 2010). The court in Cosmetic Ideas permitted a copyright infringement suit to proceed because the plaintiff had applied for registration several weeks before filing the action. The Fifth Circuit also follows the application approach, having stated:
In order to bring suit for copyright infringement, it is not necessary to prove possession of a registration certificate. One need only prove payment of the required fee, deposit of the work in question, and receipt by the Copyright Office of a registration application.
Apple Barrel Productions, Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir. 1984). In Apple Barrel, the Fifth Circuit allowed for the prospect of preliminary injunctive relief for copyright infringement where the plaintiff had applied for, but not received, copyright registration.
Until the Supreme Court rules, the conflict between the registration approach and application approach will remain. Therefore, if you are a copyright owner and want to be able to access federal courts to enforce your copyright rights against infringers, you should consider retaining experienced intellectual property counsel to assist in obtaining a copyright registration. If you promptly file a copyright application before infringement commences or within three (3) months after the date of first publication, you may preserve potential claims for statutory damages and attorney fees, but you may risk forfeiting these remedies if you delay registration until after this three-month “grace period” expires.
The Beggs & Lane Intellectual Property Group assists clients with a variety of copyright law issues, including ownership, licensing, assignment, preregistration, registration, enforcement, litigation, alternative dispute resolution (ADR), and Digital Millennium Copyright Act (DMCA) safe harbor protections against copyright infringement liability.