“Let’s Get Ready to Register!” Or not. Supreme Court Entertains Oral Argument Rumble on Copyright Circuit Split

Foley Hoag LLP - Trademark, Copyright & Unfair Competition

Is copyright registration required before you can bring a copyright infringement suit?  Everyone agrees that the answer is yes.  But not everyone agrees on the definition of “registration.” That’s the question that will be under consideration by the Supreme Court at oral argument on January 8, 2019, in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC.

Registration is not required for valid copyright ownership, but it is required if you want to bring an infringement lawsuit. Section 411(a) of the Copyright Act provides 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.

Some courts, including the Eleventh Circuit in the underlying case of Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, interpret this language as providing that “registration” has not occurred until the Copyright Office has acted on a copyright application, by either granting it or rejecting it. This is called the “registration approach” (and sometimes the “certificate approach”).

Other courts, notably the Ninth Circuit in cases like Cosmetic Ideas, Inc. v. IAC/Interactive, follow the “application approach,” which argues that registration is complete as soon as the copyright holder delivers the required application papers and fee to the Copyright Office. In other words, you can sue for infringement right after you apply to register your copyright. There are good arguments on both sides, some of which we recounted here in an earlier post.

This dispute may seem pretty arcane, but the outcome will affect every creative industry (music, photography, film, etc.) and every potential infringer of those industries’ output. In other words, it will affect everybody. If the Supreme Court follows the “registration approach,” copyright owners will practically be required to register, as soon as possible, every work that might be pirated, lest they forfeit the ability to act quickly to stop infringement. This will be a new, expensive and time-consuming burden for many. On the other side of the equation, if the “application approach” carries the day, copyright owners (including both the legit ones and the trolls with frivolous claims) will have more leverage when making pre-litigation demands, because there will be fewer obstacles to carrying through on the threat to sue.

Not surprisingly, amicus briefs in favor of the “application approach” have been lobbed in by industry groups whose members are or represent IP owners, including the American Bar Association, the Copyright Alliance, the National Music Publishers’ Association, the Authors Guild, and the International Trademark Association. Among those on the other side of the argument are the Office of the Solicitor General and the Copyright Office, which submitted an amicus brief arguing for the “registration approach.” The Solicitor General has been granted leave to appear at oral argument.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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