ELEVENTH CIRCUIT WEIGHS IN ON CIRCUIT SPLIT DEFINING COPYRIGHT REGISTRATION

Registration of a copyright is a precondition to a suit for copyright infringement. The Eleventh Circuit joined the minority of circuits to have addressed whether registration occurs when an owner files an application to register the copyright or when the Register of Copyrights registers the copyright in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 2017 WL 2191243 (11th Cir. May 18, 2017). The Ninth, Fifth, and Eight Circuits have chosen the more lenient “application” approach, which requires a copyright owner to plead that he has filed the deposit, application, and required fee before filing a suit for infringement, but the Eleventh Circuit followed the Tenth Circuit’s stricter “registration” approach, which requires a copyright owner to plead that the Register of Copyrights has acted on the application.

The plaintiff was a news organization that produces online journalism and licenses articles to websites, retaining the copyright to the articles. The defendant was a news website that obtains licenses to articles produced by the plaintiff. The licensing agreement between the parties required the defendant to remove all of the plaintiff’s content from its website before canceling its account. When it failed to do so, the plaintiff filed suit for copyright infringement, alleging that the defendant filed applications to register the articles but not that the Register of Copyrights had yet acted on the application.

In choosing which approach to follow, the Eleventh Circuit asserted that the text of the Copyright Act was clear: “Registration [occurs when] the Register . . . register[s] the claim.” 17 U.S.C. § 411(a). Instead of occurring when an application is filed, registration requires an act by both the copyright owner and the Copyright Office. Registration occurs “after examination” of an application according to § 410(a), meaning that it necessarily cannot occur concurrently with the application. This conclusion was further supported by § 410(b), which allows the Register to refuse registration after the filing of an application. This was so despite § 410(d)’s provision that the time of registration is traced back to the date of the application. Having chosen the “registration” approach, the Eleventh Circuit affirmed the district court’s dismissal of the complaint for failure to plead any registration by the Copyright Office.

Though the court did not mention it, the Copyright Office’s own publication appears to endorse the registration approach. United States Copyright Office, “Copyright Office Fees,” https://www.copyright.gov/circs/circ04.pdf, at 4 (Nov. 2016) (“[T]he Copyright Office must have acted on your application before you can file a suit for copyright infringement.”).

Despite the Eleventh Circuit’s decision to apply the more stringent “registration” approach, potential plaintiffs are not entirely without recourse. Paying an $800 fee enables applicants to receive expedited handling of the application, typically within five business days. See id. at 3; United States Copyright Office, “Special Handling,” https://www.copyright.gov/circs/circ10.pdf, at 1 (Feb. 2013).

Because this ruling aligns with the minority on the circuit split, it is possible that the plaintiff will petition for a writ of certiorari in the Supreme Court. Certiorari was unsuccessfully sought in the Ninth Circuit case, Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612 (9th Cir.), cert denied, 562 U.S. 1062 (2010), but not in any of the other cases deciding the question. The Supreme Court may now give the split a closer look.

Posted by Keith Emanuel and Anna Halsey.

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