U.S. Supreme Court's Ruling on Copyright Registration

[Editor's Note: News organization Fourth Estate sued alleging Wall-Street.com was distributing Fourth Estate articles after a license to do so expired. The Eleventh Circuit dismissed the lawsuit because the Copyright Office hadn't yet approved Fourth Estate's copyright registration application.]

The registration requirement is set forth in the first sentence of §411(a), which 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.” An exception to that requirement is set forth in the second sentence of §411(a), which states: “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.” The third sentence of §411(a) permits the Register “at his or her option, [to] become a party to the action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, … .”

Other exceptions to the registration requirement are provided in §408(f) and the regulations thereunder, which permit commencement of an infringement action based upon preregistration of certain types of works before distribution, provided that actual registration is made soon after publication.

In Fourth Estate, Justice Ginsburg summarized the statutory provisions and regulations pertaining to preregistration are as follows: “In limited circumstances, copyright owners may file an infringement suit before undertaking registration. If a copyright owner is preparing to distribute a work of a type vulnerable to predistribution infringement — notably, a movie or musical composition — the owner may apply for preregistration. §408(f)(2); 37 CFR §202.16(b)(1) (2018). The Copyright Office will 'conduct a limited review' of the application and notify the claimant '[u]pon completion of the preregistration.' §202.16(c)(7), (c)(10). Once 'preregistration … has been made,' the copyright claimant may institute a suit for infringement. 17 U.S.C. §411(a). Preregistration, however, serves only as 'a preliminary step prior to a full registration.' Preregistration of Certain Unpublished Copyright Claims, 70 Fed. Reg. 42286 (2005). An infringement suit brought in reliance on preregistration risks dismissal unless the copyright owner applies for registration promptly after the preregistered work's publication or infringement. §408(f)(3)-(4). A copyright owner may also sue for infringement of a live broadcast before 'registration … has been made,' but faces dismissal of her suit if she fails to 'make registration for the work' within three months of its first transmission. §411(c). Even in these exceptional scenarios, then, the copyright owner must eventually pursue registration in order to maintain a suit for infringement.”

Although the role of the Copyright Office in reviewing applications is limited and the originality requirement for copyright protection is minimal, neither is nonexistent. The Register's responsibilities in examining applications for registration and in issuing (or denying) registration certificates are set forth in sections 410(a) and (b) of the Copyright Act:

“(a) 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. The certificate shall contain the information given in the application, together with the number and effective date of the registration.

(b) In any case in which the Register of Copyrights determines that, in accordance with the provisions of this title, the material deposited does not constitute copyrightable subject matter or that the claim is invalid for any other reason, the Register shall refuse registration and shall notify the applicant in writing of the reasons for such refusal. Thus, the statute clearly contemplates some review by the Register, and anticipates that some applications will not be entitled to registration, whether, for example, due to a lack of any originality in the claimed work; a failure to provide a proper deposit copy; or a defect in completing the application form, such as, in the case of a derivative work, a failure to specify the pre-existing material on which the claimed derivative work is based.”

Although a reasonable reader might have inferred from the first sentence of §411(a) that an actual copyright registration had to be issued by the Copyright Office before an infringement action could be commenced, the appellant in Fourth Estate argued that completion of the application, providing the deposit copy and paying the application fee should collectively be deemed the equivalent of “registration” for this purpose. In support of this argument, the petitioner cited decisions of the U.S. Court of Appeals for the Ninth Circuit, Cosmetic Ideas v. IAC/Interactivecorp., 606 F.3d 612 (9th Cir. 2010), and the Fifth Circuit, Positive Black Talk v. Cash Money Records, 394 F.3d 357, (5th Cir. 2004). On the other side of the split, the Eleventh and Tenth Circuits required actual registration.

Notwithstanding the contrary opinions in the Fifth and Ninth Circuits, Justice Ginsburg considered the application approach to require a tortured and unsupportable reading of the statutory language and scheme. Although the language of the first sentence of §411(a) is arguably clear enough to end the discussion, Justice Ginsburg nevertheless examined that sentence in comparison with the second and third sentences of §411(a) and the entire statutory scheme for registration and preregistration, which, together, compelled the conclusion that actual registration must generally precede commencement of the infringement action. In particular, she considered the exceptions for applications that were refused registration, and for preregistration of cinematic and musical works prone to pre-distribution infringement and the live broadcasts exception, to confirm the general registration requirement. Justice Ginsburg reasoned that there would be no need for these specific exceptions if a civil action could generally be commenced upon mere application.

Justice Ginsburg also rejected the arguments for the application approach based upon harm to a copyright owner's rights caused by undue delay in the processing of registration applications in the Copyright Office. For example, the petitioner argued that an applicant's claim could become barred by the statute of limitations during the several months it was awaiting action on its application. Justice Ginsburg viewed this concern as “overstated, as the average processing time for registration applications is currently seven months, leaving ample time to sue after the Register's decision, even for infringement that began before submission of an application.” The Supreme Court also observed in a footnote 6 that expedited registration may be obtained within a matter of days, in connection with prospective litigation, upon payment of an additional filing fee.

Conclusion

In view of the clarity of the statutory language and scheme, Justice Ginsburg considered the petitioner's policy arguments and concerns to be for Congress and beyond the capacity of courts to cure. Thus, as an aside, she observed Congress could alleviate some of the backlog of pending applications through increased funding for the Copyright Office. In any event, henceforth, copyright plaintiffs throughout the land must obtain a registration or preregister their works in order to commence infringement actions.

*****

Robert J. Bernstein practices law in The Law Office of Robert J. Bernstein in New York City. Robert W. Clarida is a partner at Reitler, Kailas & Rosenblatt in New York City and author of Copyright Law Deskbook (BNA).