James Creedon
Photo by   Claire Anderson

Photo by Claire Anderson

This morning, copyright attorneys, applicants, registrants, and common law owners were finally given definitive judicial guidance on a concept that has been in dispute for years—whether a copyright owner must have an official federal copyright registration in order to file a copyright infringement suit. Turns out the answer is “yes.” 

The issue has long depended on the definition and application of the word “registration” in Section 411(a) of the Copyright Act, which 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.” There are two distinct camps of interpretation pertaining to this section of the Copyright Act—the “registration approach” and the “application approach.”

The Tenth and Eleventh Circuits have maintained the “registration approach” to Section 411(a), which relies on a plain language reading of the statute that “registration” is not “made” until a copyright application is accepted and a registration certificate is issued. Thus, merely filing a copyright application is not the “registration” required prior to filing suit. The Ninth and Fifth Circuits have maintained the “application approach,” which is much more sympathetic to copyright owners who may not have had a chance to procure a copyright registration prior to their works being infringed upon. Courts following the “application approach” argue that the Section 411(a) definition of “registration” is ambiguous because some sections of the Copyright Act indicate there are no prerequisites to registration other than a completed application. These courts have held that, as long as a common law copyright owner took the necessary steps to procure a copyright registration (submitting the copyright application, the work, and the necessary fees to the U.S. Copyright Office), the copyright owner should not be precluded from initiating a copyright infringement suit. In fact, the effective “registration” date listed on a copyright certificate is not the date that the U.S. Copyright Office accepts and registers the work, but the date the applicant filed the application. The other Circuits have either supported both approaches, stayed silent on the matter, or have expressly refused to decide one way or the other. This circuit split has long plagued the U.S. judicial system and frustrated artists hoping to grasp their works back from infringers.

Perhaps to the dismay of unregistered copyright owners and pending applicants, the split is no more.

This morning, the U.S. Supreme Court stepped in to settle the matter—officially adopting the “registration approach.” Justice Ruth Bader Ginsburg delivered the unanimous opinion in Fourth Estate v., et. al., holding that copyright registration occurs—and thus, a plaintiff can only bring a copyright infringement action—once the U.S. Copyright Office issues an official registration. Additionally, after such registration has been granted, a copyright owner can sue for infringement that occurred both before and after registration. The Court held:

Registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright. Upon registration of the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration. Pp. 3–12. (a) Under the Copyright Act of 1976, as amended, a copyright author gains “exclusive rights” in her work immediately upon the work’s creation. 17 U. S. C. §106. A copyright owner may institute a civil action for infringement of those exclusive rights, §501(b), but generally only after complying with §411(a)’s requirement that “registration . . . has been made.” Registration is thus akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights.

Notwithstanding, the Court recognized there were limited circumstances where a copyright claimant could bring an infringement suit prior to registration, such as a copyright owner who is preparing to distribute a type of work particularly vulnerable to predistribution infringement—e.g., a movie or musical composition—or a copyright owner of a live broadcast. 17 U.S.C. §§ 408(f)(2), 411(c).

This ruling means that copyright claimants must wait a longer period of time prior to bringing a valid copyright infringement suit, for the administrative process of copyright examination can take months to complete. Nonetheless, the U.S. Copyright Office gives copyright applicants the option of paying a substantially higher copyright application fee to expedite an application’s examination procedure through the Special Handling process. Copyright claimants still have the ability to recover compensatory damages incurred before and after the registration issues, so this process is, at worst, merely a procedural annoyance.

The lesson here is not a new one—anything of actual worth should be protected. Copyright owners seeking to protect their work from infringement should consider registering their work with the U.S. Copyright Office. Registration can establish a public record of a copyright claim and a registration certificate may be offered as prima facie (accepted as correct until proven otherwise) evidence of the validity of a copyright registration. Further, copyright registrations can be recorded with the U.S. Customs Service to prevent the importation of counterfeit copies. Lastly, if a work is registered prior to commencement of an infringement (or within three months of the first publication of the infringement), a litigant may be entitled to attorneys’ fees and statutory damages.

Read the Court’s full opinion here.

For more information on this article and this topic, contact Charles Wallace.

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