Before filing a lawsuit for copyright infringement, the infringed work must be registered with the Copyright Office. 17 U.S.C. § 411(a). Although this requirement sounds relatively straightforward, the meaning of “registered” has caused confusion in the courts and even resulted in a circuit split.

Some circuits apply the “application approach,” which views a work as being registered once a copyright owner files the deposit, application, and required fee with the Copyright Office. Other circuits apply the “registration approach” which considers a work to be registered only after the Register of Copyrights has either accepted or denied the application.

This difference stems from disagreement on how to interpret the wording of the Copyright Act. Specifically, the courts focus on language in sections 410(a) and 411(a).

Section 410(a) states that “[w]hen after examination, the Register of Copyrights determines that, in accordance with the provisions of this title, the material deposited constitutes copyrightable subject matter and that the other legal and formal requirements of this title have been met, the Register shall register the claim and issue to the applicant a certificate of registration under the seal of the Copyright Office.”

Section 411(a) states that “[i]n any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, 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.”

These sections suggest that the Register of Copyrights has to take affirmative steps before the work is considered registered. It has to examine the application and then determine whether the requirements of the Act are met.

According to the Eleventh Circuit in Fourth Estate Public Benefit Corporation v. Wall-Street.com, the language is clear that a work is not registered until after the Register has taken action. In that case, the plaintiff had its case dismissed because it had only alleged in the Complaint that it had filed an application.

Courts that come down on the other side of the debate don’t find the language of the Act as clear cut. In Cosmetic Ideas, Inc. v. IAC/Interactivecorp, the Ninth Circuit recognized that sections 410 and 411 suggest that the Register must take action for registration to be effective. However, it also noted that §408 states that “the owner of a copyright or of any exclusive right in the work may obtain registration . . . by delivering to the Copyright Office the deposit specified by this section, together with the application and fee specified . . . .”

This section seems to imply that filing the appropriate materials is all that is needed for registration.

The Ninth Circuit decided that the statutory language was ambiguous so that it was necessary to look at the purpose behind the Copyright Act. It explained that Congress chose to encourage copyright holders to register works with the Office of Copyright through various incentives. One of these incentives is not being able to file suit until after registration.

The Ninth Circuit concluded that the application approach better suits Congress’s goals.  It encourages an owner to have a work registered, but allows an owner to initiate litigation without having to wait for the Copyright Office to act on the application. The idea that a party has to await the Copyright Office’s “acceptance or rejection, despite knowing that a suit may proceed in either event,” creates a waiting period that amount to a “needless formality.” It would be a waste of judicial resources to have a case dismissed, which would likely be refiled in a matter of weeks, “simply because the Copyright Office has not made a decision that will have no substantive impact on whether the litigant can proceed.”

Interestingly, the courts haven’t commented on the Copyright Office’s own take on the issue, which seems to support the registration approach.

Unhappy with the Court’s ruling, the Plaintiff in Fourth Estate recently filed a petition for certiorari with the Supreme Court.

The Supreme Court has yet to rule on the petition, but the fact that there is a circuit split and that the Court has asked the Solicitor General to weigh in by filing a brief with the Court suggests that it is seriously considering whether to grant the petition. Stay tuned to see how this issue plays out.

Ultimately, the safest course of action is for a copyright owner to file the application, deposit, and fee as soon as possible. If necessary, the Copyright Office offers expedited registration for a fee.

If you are considering bringing a copyright infringement lawsuit, Astrachan Gunst Thomas, P.C. can help. Contact Jim Astrachan at jastrachan@agtlawyers.com or 410-783-3550.