This article appeared in The Intellectual Property Strategist, an ALM/Law Journal Newsletters publication that provides a practical source of both business and litigation tactics in the fast-changing area of intellectual property law, including litigating IP rights, patent damages, venue and infringement issues, inter partes review, trademarks on social media – and more.
It is hard to imagine the current U.S. Supreme Court agreeing on something as simple as their lunch order in a time when 5-4 decisions feel like the norm. So, when it unanimously agrees, one might conclude that the question at hand was not very difficult. Not so here. In Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, No. 17-571 (March 4, 2019), the Supreme Court resolved a circuit split decades in the making by holding that a copyright is not “registered” within the meaning of the Copyright Act unless and until a registration certificate actually has issued. The Supreme Court’s short opinion upheld an Eleventh Circuit decision, and undertook no more than a simple statutory construction analysis, finding that the plain language of the Copyright Act cannot be ignored because of hypothetical ill effects, especially ones fully within the purview of Congress to fix. A plaintiff cannot sue for copyright infringement until registration has issued, or been denied by the Copyright Office; a mere pending application will not suffice.
The Circuit Split
The statutory language that caused the circuit split comes from 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.” That language may seem clear, but practice questions and pragmatism muddled the seemingly clear language.
The vexing situation is as follows: your client, a copyright owner, wants to sue for copyright infringement and wants to sue quickly — after all, each day its work is infringed it is losing money. You, the lawyer, inform your client that the good news is registration is not required for copyright protection. “Great,” your client responds, “Let’s file suit!” “Hold on,” you counsel. “You do not need a registration for protection, but you do need one to file suit, and if we apply to register today, the average wait time for a registration to issue is several months. Will that work?” Your client is less than elated.
It is a common situation, and one that made several courts rethink what “registration” must mean. Prior to the Supreme Court’s Fourth Estate decision, the Tenth and Eleventh Circuits interpreted Section 411(a) of the Copyright Act literally, requiring that copyright plaintiffs have their registrations in hand before filing suit. See, e.g., La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005) (holding that registration occurs when the Register of Copyrights approves an application); M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486 (11th Cir. 1990) (same). These courts were said to follow the “registration approach,” and copyright lawsuits filed in these jurisdictions without the proper foundation of a copyright registration were subject to dismissal without prejudice.
Those in favor of the registration approach had strong ground to stand on, and indeed, the Supreme Court came down on their side. Not only does the plain language of the statute use the word “registration,” but Congress clearly made a conscious choice to require a registration to issue prior to suit. Congress not only gave the Copyright Office the power to refuse registration, it included exceptions to the registration requirement that would be meaningless if registration were not the default prerequisite for filing suit.
Other circuits — specifically, the Fifth and Ninth Circuits — took the opposite approach, influenced by another passage in Section 411(a), namely, “[i]n 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.” In the view of those courts, a properly-completed application was tantamount to registration, and they allowed suit to proceed upon pleading that an application has been filed. See, e.g., Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612 (9th Cir. 2010); Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384 (5th Cir. 1984). These jurisdictions were often characterized as followers of the “application approach.” Proponents of this approach cited to the language of Section 410(d) of the Act, which states: “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 Copyright Office.”
Pragmatic Considerations for Both Approaches
Although registration can take many months, there is an expediting mechanism whereby for $800, a copyright claimant can ask for special handling and expect to receive a registration (if one is to issue) within five working days under normal circumstances. Application approach advocates, however, argued that this cost is unfair and unduly burdensome — copyright protection should not be only for the rich — and what of the claimant with hundreds of works infringed? Without paying the increased fee, the three-year statute of limitations could run prior to the Copyright Office issuing registration. As Professor Nimmer succinctly explained, “Given that the claimant who has submitted an application that has yet to be acted upon at that juncture has done all that she can do, and will ultimately be allowed to proceed regardless of how the Copyright Office treats her application, it makes little sense to create a period of ‘legal limbo’ in which suit is barred.” 2 Nimmer on Copyright, §7.16[B][b][ii] (2018).
These pragmatic arguments failed to win the day, but there are pragmatic arguments for the registration approach too. First, as noted by the Eleventh Circuit in Fourth Estate, it is consistent with the Copyright Act’s policy goal of incentivizing early registration to require registration to issue prior to suit. Second, the registration approach ensures that no litigation may be filed on a copyright before the Copyright Office has the chance to weigh in on the work’s eligibility for copyright protection; this can be particularly useful in cases involving a work with thin originality or a work that may be ineligible for protection due to the useful article doctrine or some other consideration. Third, the registration approach makes it possible for defendants to more easily obtain deposit materials associated with the registration in order to evaluate the asserted work; it is difficult to obtain information from the Copyright Office about pending copyright applications. Right or wrong, we now have a clear answer to the question of what is required to file suit: all applicants must wait in a “legal limbo” until their registration issues (or is denied), and then they may sue.
The Supreme Court’s Analysis
From the face of the Supreme Court’s opinion, it does not seem that pragmatic or practical points from either side moved the Court toward its decision. Instead, it all came down to statutory construction, and basic statutory construction at that. All parties agreed that registration is required for suit, the only question was what “registration” means. It turns out … it means registration.
Section 411(a) provides that no civil infringement action “shall be instituted until preregistration or registration of the copyright claim has been made,” and the next sentence provides that where all preliminary requirements are met and registration is refused, a claimant may institute a civil action. Thus, the Court held that interpreting “registration” to mean “application” would render the second sentence “superfluous.” What “utility” would refusing a registration have, the Court wondered, if a claimant could sue immediately upon applying for registration. “Read together, §411(a)’s opening sentences focus not on the claimant’s act of applying for registration, but on action by the Copyright Office — namely, its registration or refusal to register a copyright claim,” the Court explained.
The Court also focused on the statutory construction rule that a term should be read the same way across a statute — and as Section 410(a) states that the Register “shall register the claim and issue to the applicant a certificate of registration” only “after examination,” registration must refer to something different from, and subsequent to, application. Congress also must have considered this issue, the Court found, because it put in place a preregistration mechanism whereby in certain situations, a claimant can sue prior to registration. That provision too would have “little utility” if a completed application equaled a registration.
The remainder of the Court’s opinion briefly touched on whether the 1976 revisions to the Copyright Act changed the registration requirement, and whether a copyright owner could lose its ability to enforce rights while waiting for a registration to issue. The Court was unmoved by any argument regarding the 1976 revisions, finding that the enactment of Section 411(a) specifically reaffirmed the general rule that registration “must precede an infringement suit.” Congress could have removed this requirement in the 1976 revisions or at multiple points thereafter; it has not. And though the Court acknowledged that registration processing times have jumped from a couple weeks on average in 1956 to multiple months, it found that the three-year statute of limitations for copyright claims more than accommodates that lag time. “Unfortunate as the current administrative lag may be, that factor does not allow us to revise §411(a)’s congressionally composed text.”
Perhaps it was not obvious all along, and perhaps it is not fair, but the Court now has spoken: registration means registration.
James A. Trigg is a Partner in the Intellectual Property Group at Kilpatrick Townsend & Stockton LLP, specializing in trademark, copyright and entertainment law. He can be reached at firstname.lastname@example.org. Bethany Nelson is an Associate with the firm, specializing in trademark and copyright law. She can be reached at email@example.com.