On June 28, 2018, the Supreme Court granted certiorari in Fourth Estate Public Benefit Corp. v. Wall-Street.com to resolve a Circuit Split over what constitutes “registration” for purposes of filing a copyright infringement lawsuit. Fourth Estate is a news organization that licenses online articles. After the license between Fourth Estate and Wall-Street.com terminated, Wall-Street.com continued to display Fourth Estate articles, so Fourth Estate sued Wall-Street.com for copyright infringement.
Under the Copyright Act of 1976, “[N]o civil action for infringement of the copyright in any United States work shall be instituted until pre-registration or registration of the copyright claim has been made in accordance with this title,” see 17 U.S.C. § 411(a), with “registration” defined as “a registration of a claim in the original or the renewed and extended term of copyright,” see id. § 101. Based on this language, two approaches have developed to determine when a work is “registered.” In jurisdictions following the “application approach,” a copyright owner can file a copyright infringement lawsuit after the Copyright Office receives a completed application and the owner pays the required fee and deposits the work. Under the “registration approach,” a copyright owner can only file a copyright infringement lawsuit once the Copyright Office either approves or rejects the application. If the Copyright Office rejects the application, “the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.” Id. § 411(a). The Ninth and Fifth Circuits follow the application approach, and the Tenth and Eleventh Circuits follow the registration approach.
Proponents of the application approach believe the Copyright Act is ambiguous as to what is meant by “registration,” and therefore look to legislative history to discern the statute’s purpose. Circuits following the application approach believe this approach best effectuates Congress’s goal to remove the Copyright Act of 1909’s administrative hurdles to copyright protection. Followers of the registration approach see no ambiguity in the statutory definition of “registration” and argue that the plain meaning of the statute requires the Copyright Office to take action on the application before a plaintiff can file a copyright infringement lawsuit. In Fourth Estate v. Wall-Street.com, the Eleventh Circuit affirmed the dismissal of Fourth Estate’s complaint for copyright infringement because the complaint did not state the Copyright Office had acted on Fourth Estate’s copyright applications for the articles at issue.
Because the Copyright Office takes anywhere from six to 15 months to issue registrations, resolving this Circuit Split will provide better guidance on the timing of filing a copyright infringement lawsuit. Copyright owners should file copyright applications early to avoid any waiting period before filing a copyright infringement lawsuit and to take advantage of the Copyright Act’s statutory damages and attorneys’ fees provisions for a work registered either within three months of publication or prior to its infringement.