On June 28, 2018, the U.S. Supreme Court granted review in the case of Fourth Estate Pub. Ben. Corp. v. Wall-Street.com, LLC, 856 F.3d 1338 (11th Cir. 2017). The case should resolve the split that exists among the circuits as to whether a submitted (and pending) application for a copyright registration is sufficient to file a copyright infringement lawsuit, or, alternatively, whether a plaintiff must have a returned registration certificate from the Copyright Office in order to file such a case.
The Eleventh Circuit and the Tenth Circuit follow the “registration” approach, interpreting the registration requirement of Section 411(a) of the Copyright Act to mean that the work must actually be registered by the Copyright Office before filing suit, and that proof of submission of an application alone is insufficient. However, other circuits, including the Fifth and Ninth Circuits, follow the “application approach.” Under the “application” approach, the plaintiff need only plead that he or she has filed the deposit copy of the work, the application for registration, and the required fee. According to the Ninth Circuit, this approach better fulfills Congress’s purpose of providing broad copyright protection, while maintaining a robust Federal Register1.
In Fourth Estate, the Eleventh Circuit confirmed that it subscribes to the “registration” approach, affirming the dismissal of an infringement suit on the ground that the plaintiff had alleged only that it had filed proper applications to register its copyright, but had failed to plead that it had received the actual registrations from the Copyright Office. The court found that the plain language of the Copyright Act provides that the prerequisite for filing a copyright suit has not been achieved in accordance with Section 411(a) until the Register of Copyrights actually registers the claim, and that filing an application does not amount to registration2.
In so holding, the court in Fourth Estate observed that registration is defined in Sections 408(a) and 410(a) of the Copyright Act as requiring action by both the copyright owner and the Copyright Office. The court found it particularly compelling that Section 410(a) used the phrase “after examination,” which the court concluded made it explicit that an application alone was insufficient for registration.
If the Supreme Court agrees with the registration approach/requirement that was applied by the Eleventh Circuit in Fourth Estate, a copyright owner who has discovered that his or her work has been infringed, but has yet to register his or her work at the time of infringement, will suffer substantial delay, if not more substantial adverse effects. A potential plaintiff who has not already registered his or her work would have to wait until the Copyright Office issues a registration before filing an infringement suit – a process which, according to the current information available on the website of the U.S. Copyright Office, can take anywhere from 7 to 16 months. Such a delay could be devastating to a potential litigant who is up against an impending statute of limitations.
Although a prospective litigant has the option of seeking an expedited registration, this comes at a substantial cost – $800.00 vs. the regular fee of $35.00 – and even with a costly expedited registration, there is no guarantee that the registration will be delivered even within five business days.
Although registration of a copyright is not required for ownership of that copyright, it is always wise to register one’s work with the Copyright Office as a matter of course at the time of creation. However, there are many reasons for which such registration at the time of creation might not be practical.
For instance, photographers are continuously creating thousands of new, protectable works. For those who create those works on a daily basis, it would be extremely burdensome and costly to file a copyright registration for every new work upon its creation. Often times a photographer will, of necessity, wait until his or her copyright is infringed to register the work with the Copyright Office.
Another example would be works that are intimate, and intended to be private. Our firm has stopped the release of four separate sex tapes that had been made by celebrity clients. In each of those four instances, the tapes were meant to be private recordings, between two consenting adults. In each case, the recording had not been registered, and for obvious reasons. First, the tapes were never intended to be exploited, meaning distributed or sold. Second, the tapes were meant to be private, for nobody’s viewing, and submission of the tapes to the Copyright Office could definitely jeopardize that desire.
Particularly to the extent that, after 1977, the copyright to all works are owned by the author from the moment of creation, irrespective of whether or not the work is ever registered, it does not make sense to require actual registration, rather than the filing of an application for registration, in order to file a lawsuit to protect the work. Given that there are many reasons for which an author might not want to register the work at the time of creation, some of which are privacy related, and some of which are financially related, those individuals should not be penalized by forcing them to pay for an expedited registration just to pursue their rights against infringers.
1 See Cosmetic Ideas, Inc. v. IAC/Interactive Corp., 606 F.3d 612, 619 (9th Cir. 2010).
2 Fourth Estate Pub. Ben. Corp. v. Wall-Street.com, LLC, 856 F.3d at 1340 (emphasis added).