Section 411 of the Copyright 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.” It sounds straightforward enough, but various U.S. Circuit Courts of Appeal have disagreed over what that actually means.
The Fifth and Ninth Circuits have held that registration occurs when the U.S. Copyright Office receives the owner’s application, deposit (two copies of the published work), and registration fee. The Tenth and Eleventh Circuits have held that registration occurs when the Register of Copyrights approves the application.
The U.S. Supreme Court resolved the circuit split in March in Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC, 586 U.S. (2019). The Court analyzed 17 U.S.C. § 411 and upheld the Eleventh Circuit’s “registration approach,” finding that “registration is akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights.”
Fourth Estate Case Background
Fourth Estate had entered into a limited, non-exclusive license agreement that allowed Wall-Street.com to use Fourth Estate’s news articles and other content for a limited period of time. In May 2016, the news organization filed a copyright infringement suit in the Southern District of Florida, alleging that Wall-Street.com continued to display Fourth Estate’s articles on its website after the license expired.
In the complaint, Fourth Estate stated that it had filed an application to register the articles three months prior to filing suit. The company noted that the registration certificate, when issued, would bear the date that the application, deposit, and fee were received by the U.S. Copyright Office, pursuant to 17 U.S.C. § 410. Nevertheless, U.S. District Judge Robert N. Scola, Jr., granted the defendant’s motion to dismiss because the articles had not been registered.
Fourth Estate appealed to the Eleventh Circuit, arguing that the court’s precedent in M.G.B. Homes Inc. v. Ameron Homes Inc., 903 F.2d 1486 (11th Cir. 1990), was no longer binding due to the Supreme Court’s decision in Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010). In M.G.B. Homes, the Eleventh Circuit held that registration “is a jurisdictional prerequisite to an infringement suit,” while in Reed Elsevier the Supreme Court found that registration “is a precondition to filing a claim that does not restrict a federal court’s subject-matter jurisdiction.”
In its decision affirming dismissal of the complaint, the Eleventh Circuit declined to address the effect of Reed Elsevier on M.G.B. Homes. Instead, the court looked at the Copyright Act and determined that “filing an application does not amount to registration.” Fourth Estate appealed to the Supreme Court, which granted certiorari to resolve the circuit split.
Supreme Court Analysis
In analyzing 17 U.S.C. § 411, the Court broke down the statute into its component parts. The second sentence states that if “registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof … is served on the Register of Copyrights.” The Court noted that the word “registration” in this context refers to the action of the Copyright Office, so that meaning must be applied to the entire statute. Also, if an application were sufficient for filing a lawsuit, the second sentence would be unnecessary.
The Court then looked at the third sentence: “The Register may … become a party to the action with respect to the issue of registrability … by entering an appearance within sixty days after such service.” If the Register had not acted on the application before the lawsuit was filed, the case could be resolved before registrability had been assessed.
The legislative history of § 411 further supported the registration approach, the Court said. Congress removed the registration requirement for foreign works in 1988 to comply with the Berne Convention for the Protection of Literary and Artistic Works, but left in place the requirement for U.S. works. In 2005, Congress added the “preregistration” option for works, such as movies, at risk of infringement prior to publication.
Fourth Estate argued that the processing time for copyright applications delays an owner’s ability to protect her rights. Furthermore, the Copyright Office approves virtually all applications, so registration could be presumed for the purposes of the lawsuit. The Court held that administrative delays cannot alter the meaning of the statute. Furthermore, if “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.”
Practical Effects of Fourth Estate
The registration requirement creates a burden for copyright owners, particularly those with a large body of work that is publicly available on the Internet. The process can be completed online, but owners must consider whether registering a particular work is worth the fee. The Copyright Office does offer a “Group Registration” option for up to 10 works by the same author or authors, or up to 750 photographs.
Owners who are concerned about prepublication infringement should take advantage of the preregistration option. Additionally, the Copyright Office offers expedited processing of applications, although the special handling fee is substantial.
Under 17 U.S.C. § 102, “original works of authorship fixed in any tangible medium of expression” are automatically entitled to copyright protection. Owners can affix the copyright symbol to their work, and send a “cease-and-desist” letter to someone who uses their work without permission. Without formal registration, however, copyright owners cannot prove original authorship. The Copyright Act requires that owners register their works if they are to enforce their rights in a court of law.
Learn More About Copyright Law
If you’d like to learn more about copyright law and how to protect your works, visit the U.S. Copyright Office. You will also find copyright law awareness and education content on the site of the Copyright Society of the USA.
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