Application, registration, or somewhere in between? When do copyright owners have standing to bring an infringement suit?

Post authored by Brett Manchel

The Copyright Act, 17 U.S.C. 101 et seq. (“the Act”) provides that “no civil action for infringement of [a] copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.” 17 U.S.C. § 411(a) (2008). Surprisingly, determining when, according to the Act, the registration has been made is ambiguous. There are two prevailing interpretations: (1) registration is made when the copyright holder delivers the required application, deposit, and fee to the Copyright Office; and (2) registration made only once the Copyright Office acts on an application.

The Fifth and Ninth Circuits have adopted the former approach, called the “Application” approach. The Tenth and Eleventh Circuits follow the latter, called the “Registration” approach. The Seventh Circuit has issued contradictory statements in dicta without squarely picking a side.

But, this question is close to being resolving once and for all. The Supreme Court of the United States granted certiorari in Fourth Estate Public Benefit Corporation v., LLC, et al. 17-571. Fourth Estate is an independent news organization that creates and licenses articles to another online news organization, AHN. AHN, in turn, licenses the works to others, while Fourth Estate retains the copyrights. (“Wall-Street”) licensed Fourth Estate’s works through AHN but then canceled its account. Upon termination, Wall-Street’s AHN license required it to stop displaying the Fourth Estate works. But, Wall-Street did not stop.

In light of this, Fourth Estate filed copyright registration applications with the Copyright Office for the works Wall-Street left on its site. Then, with the applications submitted and pending, Fourth Estate sued Wall-Street. Wall-Street moved to dismiss the case under 17 USC § 411(a), arguing–concurrent with the Registration approach in that circuit–that Fourth Estate could not litigate until the Register of Copyrights acted on the application. The district court granted the motion to dismiss and Fourth Estate appealed. The Eleventh Circuit Court of Appeals rejected Fourth Estate’s arguments and held the text of the Act required dismissal, affirming the district court.

The arguments for and against each approach both have support in the law and under a plain reading of the Act. The Application approach favors copyright holders, by allowing litigation sooner. So long as the applicant correctly filed the application, even if the application is ultimately rejected, the copyright owner can file suit. Proponents of the Application approach argue that requiring action by the Register to complete registration adds an additional requirement to copyright protection. The Application approach avoids a worst-case scenario in which infringement occurs and the copyright owner has not registered and received a certificate of registration before the Act’s statute of limitations runs, potentially leaving a copyright owner with no remedy against an infringer.

Proponents of the Registration approach note that it encourages timely–but prompt–registration, lest the statute of limitations runs before the certificate is issued. However, since the statute of limitations runs separately for each violation and/or does not begin running until the end of ongoing infringement, the owner is not always denied all remedies (and the worst-case scenario above is avoided). Further, the owner can apply for special handling to expedite the Register’s review and action on the application. While petitioners and application approach supporters argue that the $800 is cost prohibitive, to some owners, it is far less costly than initiating litigation. Finally, proponents of the Registration approach note it is more in line with a stated purpose of the Act, to build the Library of Congress’s collection of works and make it easier for the public to find copyright owners.

Both approaches have a sound basis in law and policy – but soon, the exact approach to take will be known.

About the Author:

brett manchelBrett Manchel helps clients protect and enforce their copyrights and trademarks; form business entities and litigate disputes. Representative clients include musicians and record labels, start-up CEO’s, filmmakers, and well-established companies. To Brett, the practice of law is customer service, and he strives to work aggressively and efficiently for clients. Prior to joining Jayaram Law, Brett gained litigation experience, spending four years as a trial attorney representing individuals and families in state and federal courts. A Michigan native, Brett earned his BA from the University of Michigan, and his JD, cum laude, from Michigan State University College of Law.  In law school, Brett founded the Media, Entertainment, Technology & Arts Law Society, competed in a national copyright moot court competition, and wrote on many technology-related legal issues. Throughout law school, Brett gained practical legal experience in a variety of settings: as an intern for a Federal judge, with the public defender in Ann Arbor, MI, and as a law clerk helping people in their property, estate planning, and business affairs.  After graduation from law school, the tall buildings, music scene, and great restaurants lured him to Chicago.


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