Registration Approach v. Application Approach – Registration Wins!

By Robert Feinland

On March 4, 2019, the Supreme Court in Fourth Estate Public Benefit Corp. v., LLC, 586 U.S. __ (2019) resolved a hotly debated circuit split as to whether a copyright owner can file an infringement lawsuit without a copyright registration. The high court unanimously ruled in favor of the registration approach instead of the application approach. Under this approach, a copyright owner cannot file an infringement action until the U.S. Copyright Office has issued a registration for a work. However, upon receiving a registration for a copyright, the owner can recover damages for infringement that occurred before and after registration.

The registration and application approach arose from different circuit court’s interpretation of Section 411(a) of the Copyright Act. Section 411(a) 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.”

Some circuit courts, such as the Seventh Circuit, had issued opinions supporting both approaches, while others, such as the First and Second Circuits, had refused to decide one way or the other. The Ninth, Fifth, and Eighth Circuits had followed the application approach in determining when a copyright owner can file an infringement action. The application approach allowed a copyright owner to file an infringement action after filing a copyright application (including the delivery of the deposit and fees to the Copyright Office), but prior to obtaining a copyright registration. The circuit courts’ reasoning behind this approach was focused on the ambiguity of the definition of “registration” in other sections of the Copyright Act. These courts found that various sections such as Section 408 did not disclose any prerequisites to registration other than a completed application.

On the other side is the registration approach, which will be the approach moving forward as a result of the Supreme Court’s decision. The registration approach, followed by the Eleventh Circuit, relies on a “plain language” reading of the statute. Essentially, registration is not made until one’s application is reviewed and approved by the Copyright Office and the owner receives a registration certificate. Under this approach, the mere act of filing a complete application, which is part of the registration process, is not the “registration” required before commencing an infringement action.

In Fourth Estate, the petitioner, Fourth Estate Public Benefit Corporation (“Fourth Estate”) was a news organization that licensed works to respondent, LLC (“Wall-Street”). Fourth Estate sued Wall-Street for copyright infringement for failing to take down the works after the cancelling of a license agreement. Fourth Estate had filed copyright applications to register the works, but had not received registrations yet. As a result, the district court dismissed the case under the registration approach.Affirming the dismissal, the Eleventh Circuit explained that “filing an application does not amount to registration.”

In Justice Ginsberg’s decision, she explained that “[b]efore pursuing an infringement claim in court….a copyright claimant generally must comply with §411(a)’s requirement that ‘registration of the copyright claim has been made.’ §411(a). Therefore, although an owner’s rights exist apart from registration….registration is akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights….” In limited circumstances, such as movie or musical compositions (works vulnerable to pre-distribution infringement), a copyright owner may file an infringement action before obtaining a registration. However, this is not the case for the majority of works copyright owners seek to register and enforce. The Court also noted that other provisions of the Copyright Act align with its interpretation of “registration” as used in Section 411(a). For example, Section 410 confirms that an application for copyright is discrete from, and precedes, registration.

Moreover, the Supreme Court rejected Fourth Estate’s argument that as “‘registration is not a condition of copyright protection’….§411(a) should not be read to bar a copyright claimant from enforcing that protection in court once she has submitted a proper application for registration.” Justice Ginsberg explained that the Copyright Act protects copyright owners, regardless of registration, by granting them exclusive rights in their works upon creation and enforcing its right against infringers moving forward. Further, Justice Ginsberg stated that “[i]f infringement occurs before a copyright owner applies for registration, that owner may eventually recover damages for the past infringement, as well as the infringer’s profits.” Upon receiving a registration, a copyright owner can also get equitable relief (e.g. injunction) from the court.

In view of the Supreme Court decision in Fourth Estate, copyright owners must consider promptly filing for copyright protection upon completion of their work instead of waiting for an infringement to occur. If an infringement arises prior to filing an application for copyright, the Copyright Office does provide an option to expedite the processing of an application through its “Special Handling” service. A copyright owner can select this service if there is an ongoing or threatening infringement. Upon selection of “Special Handling” and the payment of a higher fee ($855 compared to $55 for a non-“Special Handling” application), the Copyright Office shortens the processing time of an application to approximately five business days. To determine the best strategy for protecting your intellectual property rights, please feel free to reach out to one of our experienced attorneys.