Nathan Potter, Associate Member, University of Cincinnati Law Review
The Supreme Court of the United States (SCOTUS) has unanimously concluded that a copyright must be registered by the Copyright Office before an infringement action can be brought.[1] This guidance resolves a long-standing split among U.S. Circuit Courts. Some courts considered a copyright as “registered” once the application was filed with the U.S. Copyright Office, while other courts determined that the copyright was not registered until it was approved by said office. SCOTUS relies on the text of 17 U.S.C. § 411(a) as the basis of their decision, writing: “[the statute] states that ‘no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.’”[2] This quoted portion of the statute appears to plainly state that registration must occur before any civil action for infringement upon the copyrighted work. How could circuit courts have misinterpreted such an unambiguous statute? The possibility seems almost silly.
The answer may reside in the omitted portion of SCOTUS’s quote from 17 U.S.C. 411(a). “[N]o 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.”[3] “Preregistration” is omitted because it does not mean “time prior to registration,” but is its own application with the Copyright Office. It is meant to be a placeholder for applicants who are concerned with pre-release infringement.[4] And no, “preregistration” is not a reason some courts do not require action by the Copyright Office prior to bringing an infringement claim. However, it is an interesting pitfall for those unaware of “preregistration’s” meaning.
Justice Ginsberg’s opinion focuses on reading 17 U.S.C. § 411(a) as a whole, instead of individual pieces having different requirements for the grant of rights.[5] Overall, the opinion heavily emphasizes the way that Congress wrote the statute. 17 U.S.C. § 411(a) focuses on actions taken by the Copyright Office; it does not dictate that the applicant is granting their own right by mere submission of a document to the Copyright Office. This premise is reinforced in 17 U.S.C. § 411(b), which states that the Copyright Office will review the information presented in the application and has the right to refuse registration based upon inaccuracies. The requirement of completed registration by the Copyright Office was previously considered to be the “Registration Approach.” The other ideology was referred to as the “Application Approach.” Even though the Application Approach has been invalidated by SCOTUS, it is still worthwhile to understand the rationales of its followers.[6]
The Application Approach
Cosmetic Ideas, Inc. v. IAC, et al., which has been overruled due to SCOTUS’s holding in Fourth Estate, provides the rationale behind the Application Approach.[7] In Cosmetic Ideas, the plaintiff asserted that it had fulfilled its obligations under 17 U.S.C. § 411(a) because the plaintiff had submitted a completed application for registration with the Copyright Office.[8] The Ninth Circuit pondered the question of “what it means to ‘register’ a copyrighted work?”[9] And, referring back to the Supreme Court’s decision in Reed Elsevier, Inc. v. Muchnick, the Ninth Circuit stated that the Supreme Court did not intend for a lack of a completed registration to be a subject-matter jurisdiction bar to a federal court.[10] And, the Ninth Circuit assumed that if it has jurisdiction, then the plaintiff must have a valid complaint even with an incomplete registration. The Ninth Circuit also points out that several other circuits, including the Fifth and Seventh Circuits, have adopted this Application Approach.[11] All like-minded circuits state that the application to the Copyright Office is enough to create standing to bring a claim because the Copyright Office will perform the gatekeeping function of removing invalid copyrights.[12]
The Registration Approach
The Registration Approach resolves the glaring problem of the Application Approach. Specifically, it stops a plaintiff from asserting a claim and then having the plaintiff’s copyrighted work be denied by the Copyright Office. This results in a protection for defendants against frivolous litigation and expenses. It also provides the courts with the confirmation from the Copyright Office’s that the plaintiff holds a valid copyright.[13]
Additionally, as Justice Ginsberg pointed out in Fourth Estate, the text of 17 U.S.C. § 411(a) focuses on the actions of the Copyright Office, not the actions of the applicant.[14] To hold otherwise would mean that Congress used the term “registration” in the context of two different meanings within consecutive sentences: (1) the applicants act of filing an application; and (2) the Copyright Office’s review of an application.[15] Justice Ginsberg also points out that if the Application Approach was the correct approach, then there would be no reason for an applicant who fears prepublication infringement to apply for preregistration.[16] Doing so would be a wasted effort because the applicant could simply apply for registration and commence with the claim of infringement.
Outcomes of Fourth Estate v. Wallstreet.com
Fourth Estate’s holding does not prevent a plaintiff from recovering damages prior to the Copyright Office’s receipt of the plaintiff’s application or the office’s grant of the plaintiff’s copyright. If infringement occurs before a plaintiff’s application to the Copyright Office or before a grant from that office, the plaintiff may still recover damages for the past infringement; he may also recover the infringer’s profits.[17] Section 504 of the Copyright Act relaxes the need for an expedient application and grant of a copyright. This section also means that the Application Approach is about the plaintiff’s judicial expediency and has little bearing on remedies for infringement. However, Congress has recognized that there are some mediums, susceptible to prepublication infringement, which may need to file an infringement claim prior to registration. One example is live broadcasts, which have an exception to the registration requirement of 17 U.S.C. § 411(a).[18] The conclusion may be drawn that the Application Approach lacks practical merit and it only serves to expedite the judicial process for the plaintiff, while potentially resulting in a refused copyright and thousands of dollars of legal work (and the court’s time).
Fourth Estate could cause the floodgates to open at the Copyright Office. In the aftermath of Fourth Estate, it is possible there will be a surge of applicants either seeking to receive a copyright registration for the purpose of infringement proceedings or in preparation of anticipated infringement. No doubt, there will also be creators of copyrightable works who seek legal advice, and that advice will almost always be to file as soon as possible.[19] According to the Copyright Office’s statistics, copyright registration is currently taking an average of sixth months for copyright claims without correspondence through internet filing and hardcopy filing is taking an average of thirteen months without correspondence.[20] Claims which require correspondence between the office and the application take an average fifty percent longer (nine months for internet filing and twenty months for hardcopy filing).[21] The question that needs to be asked isn’t if Fourth Estate will increase the processing time of a copyright application, the proper question is how much this ruling will increase the processing time. Justice Ginsberg even noted that this issue is bound to occur; however, she asserted that delays in the Copyright Office are due to staffing and budgetary shortages and that Congress, not the courts, are the proper avenue of alleviating this burden.[22] This statement is true; however, it is very likely that Congress will be unable to address the surge of copyright applications swiftly enough to prevent a large growth in the processing time required by the office.
Conclusion
The Application Approach has been invalidated by the holding in Fourth Estate. Congress wrote the Copyright Act in such a way that they intended for registration to be granted before a plaintiff may bring a copyright infringement suit. The inclusion of the ability for a plaintiff to recover damages prior to their grant of registration and for the infringer’s profits supports this conclusion. Additionally, Congress has already addressed the issue of copyrighted works, such as live broadcasts, which are highly susceptible to prepublication infringement in 17 U.S.C. § 411(c). It currently takes an average of six to nine months for internet filing and thirteen to twenty months for hardcopy filing; these times will go up in the wake of Fourth Estate. If a client anticipates infringement of an unregistered copyright, it would probably be best for the client to file as soon as practicable.
[1] Fourth Estate Public Benefit Corp. v. Wallstreet.com, LLC, 586 U.S. *12 (Mar. 4, 2019).
[2] Id. at 1 (omissions in the original).
[3] 17 U.S.C. § 411(a) (Emphasis added).
[4] Preregistration, Copyright.gov, https://www.copyright.gov/help/faq/faq-prereg.html (accessed Mar. 14, 2019).
[5] Fourth Estate, No. 586 U.S. *4.
[6] Id.
[7] 606 F.3d 612 (9th Cir. 2010).
[8] Id. at 613.
[9] Id. at 615.
[10] Id.
[11] Id.
[12] See generally Chi. Bd. of Educ. v. Substance, Inc., 354 F.3d 624 (7th Cir. 2003); Apple Barrel Prods. v. Beard, 730 F.2d 384 (5th Cir. 1984).
[13] Fourth Estate, 586 U.S. at 6.
[14] Id. at 5.
[15] Id.
[16] Id. at 7.
[17] 17 U.S.C. § 504(b).
[18] 17 U.S.C. § 411(c).
[19] Genevieve E Charlton & Philip A. Jones, U.S. Supreme Court Rulings Impact Two Critical Copyright Issues: Application not Sufficient to Bring a Claim and Meaning of ‘Full Costs’ to a Prevailing Party, Lexicology, https://www.lexology.com/library/detail.aspx?g=ec9b869e-8b68-42d7-ae10-c9812d7fb246 (Mar. 12, 2019).
[20] Registration Processing Times, U.S. Copyright Office, https://www.copyright.gov/registration/docs/processing-times-faqs.pdf (accessed Mar. 14, 2019).
[21] Id.
[22] Fourth Estate, 586 U.S. at *12.
