Copyright Registration Certificate Must be “In Hand” Before Filing Infringement Suit

by Christina Frangiosa

This article is the first in a series, discussing the Supreme Court’s decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. issued on March 4, 2019.

Resolving a long-standing circuit split over whether copyright owners must have a copyright registration certificate in hand before filing a copyright infringement suit, the U.S. Supreme Court has ruled that it’s not sufficient to have simply filed a completed application, but that the Copyright Office must act on the application, either to grant or to refuse registration, before a copyright owner can commence a lawsuit to combat infringement. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, 2019 WL 1005829 (U.S. Mar. 4, 2019).

Copyright Registration – “Keys to the Courthouse”

Registration of a copyright in a work has long been considered the “keys to the courthouse” for copyright owners – meaning that while creative works written after 1978 were automatically protected by the Copyright Act (Eldred v. Ashcroft, 537 U.S. 186, 195 (2003) (confirming that “federal copyright protection . . . runs from the work’s creation”)), their owners could not sue for infringement until those works were registered with the Copyright Office. 17 U.S.C. § 501(b) (providing a private right of action for infringement of a copyright); id. § 411(a) (requiring registration before copyright owner was permitted to institute suit).

Incentives to Prompt Registration – Before Infringement

The Act provides several additional incentives for owners to apply for registration with the Copyright Office as soon as possible. In particular, if a work that has been registered is later infringed, the rights holder could recover statutory damages of up to $30,000 per work infringed (or up to $150,000 per work if the infringement were proven to be willful) and could recover its reasonable attorneys’ fees incurred in connection with enforcing its rights if it prevails in the case. Id. §§ 504(c), 505. Statutory damages and attorney’s fees are not available unless the work had been registered before the infringement occurred or within three months after first publication of the work. Id. § 412(2).

Prior Circuit Split – “Registration” versus “Application” Approaches

Until now, federal courts were split on the issue of whether a registration certificate was required (the “registration approach”) or whether it was sufficient to have submitted a completed application with the mandatory deposit copies and the correct filing fee to the Copyright Office for consideration (the “application approach”) before filing a complaint in federal court. Fourth Estate, 2019 WL 10055829, ¶ 4 (confirming that certiorari was granted to “resolve a division among U.S. Courts of Appeals on when registration occurs in accordance with § 411(a)); see also Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 615-16 (9th Cir. 2010) (collecting cases and noting circuit split); Zaslow v. Coleman, 103 F. Supp. 3d 657, 663 (E.D. Pa. 2015) (“Courts are divided over whether merely applying to the Copyright Office (the ‘application’ approach), or whether the Office issuing the registration (the ‘registration’ approach), sufficiently satisfies § 411.”).

The Fifth and Seventh Circuits followed the “application approach”, while the Tenth and Eleventh Circuits followed the “registration approach”. Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir. 1984); Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003); La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1202-04 (10th Cir. 2005); M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1489 (11th Cir. 1990).

There was no clear direction from the Third Circuit, and district courts varied in their interpretations of the requirements of § 411(a). See, e.g., Grant Heilman Photography, Inc. v. Houghton Mifflin Harcourt Publ’g Co., No. CV 10-584, 2010 WL 11561106, at *1 (E.D. Pa. Sept. 29, 2010) (“We will follow the majority of authority in this district, which allows a plaintiff to pursue infringement claims once they have completed the application for registration and the Copyright Office has received it.”); R&B, Inc. v. Needa Parts Mfg., Inc., No. Civ. A. 01-1234, 2001 WL 1251211 (E.D. Pa. Aug. 13, 2001) (citing Fifth Circuit precedent, noting “[t]he Court will assume, for purposes of [defendant’s motion for a preliminary injunction], that the Copyright Office has received the plaintiff’s application and that a certificate of registration is forthcoming.”); Sebastian Int’l, Inc. v. Consumer Contact (PTY) Ltd., 664 F. Supp. 909, 912 (D.N.J.1987) (relying on Fifth Circuit precedent, holding that a plaintiff-copyright owner met the requirements of § 411(a) by filing a completed application, together with the requisite fee and completed deposit copy of the work with the Copyright Office), vacated on other grounds, 847 F.2d 1093 (3d. Cir. 1988).

More recently, however, a district court in the Third Circuit concluded that the “registration” approach was likely more favored. In Zaslow v. Coleman, the District Court for the Eastern District of Pennsylvania explained:

The Third Circuit has not definitively addressed this issue. Nevertheless, in light of the case of Dawes–Lloyd v. Publish America, LLLP, 441 Fed. Appx. 956, 957 (3d Cir. 2011) (per curiam), which holds that a plaintiff could not establish prima facie case of infringement because it did not hold a registered copyright, we concur with the well-reasoned Opinion of our colleague Judge Davis that the Third Circuit would adopt the “registration” approach.

Zaslow, 103 F. Supp. 3d at 662-63. Interestingly, the Dawes-Lloyd decision cited did not address the legal differences between holding a certificate of registration and simply submitting the completed application to the Copyright Office. Instead, that case dealt with a plaintiff who conceded that she filed her application for registration with “a ‘creative registry’ that explicitly stated that it does not provide a formal copyright” and did not send anything to the Copyright Office at all. Dawes-Lloyd, 441 Fed. Appx. at 957. One might argue that this opinion did not shed any light on the “application” versus “registration” approaches splitting the circuit courts.

Impact of Decision

Now that the Supreme Court has spoken, however, copyright owners should take care to protect their valuable creative works as early as possible by applying for registration of these works with the Copyright Office on a more routine basis. Not only will the receipt of the registration certificate from the Copyright Office be required before a complaint in federal court can be filed, but also copyright owners can place themselves in better positions to seek statutory damages (particularly useful if the loss resulting from an infringement is hard to quantify) and the recovery of their attorney’s fees if they prevail in the case.

Given this decision, however, we are likely to see several things happening in the copyright space:

  • Copyright owners’ routine costs for protecting their copyrights will increase because of the need to file preemptively for registration of any work that could conceivably be infringed. This increased cost may be particularly notable to small businesses or independent artists who may not have a significant budget for protecting their valuable works.
  • The Copyright Office is likely to become inundated with an increased number of applications for copyright registration that it must examine to decide whether registration should issue. See Fourth Estate, 2019 WL 1005829, ¶ 20 (“[T]he average processing time for registration applications is currently seven months…”), ¶ 21 (“Registration processing times have increased from one or two weeks in 1956 to many months today.”).
  • In the short term, the Copyright Office may see a jump in applications that seek expedited treatment because litigation may be pending or anticipated. See Copyright Office, Special Handling, Circular No. 10 (discussing the expedited processing available in situations where there is pending or prospective litigation, in customs matters or where contract or publishing deadlines necessitating expedited issuance of a certificate).
    • The Copyright Office has already predicted that it may not be able to provide a determination within the five working days suggested by the Compendium. Circ. No. 10 (“Once a request for special handling is approved, the Office will make every effort to complete its examination of the claim or document within five working days, although it cannot guarantee that every claim will be registered or recorded within this time frame.”) (emphasis added); see also Special Handling, Compendium of U.S. Copyright Office Practices § 207 and § 623 (3d ed., Sept. 29, 2017).

A Final Note on Processing Speed of the Copyright Office 

The Copyright Office published its pendency statistics as of October 2, 2018, summarizing its processing times for applications submitted in the normal course (not submitted on an expedited basis). Registration Processing Times, Oct. 2, 2018. This report notes that as long as the Copyright Office did not need to correspond with the copyright claimant, claims submitted online can be processed between two and ten months, with an average time of six months. Id. In contrast, applications submitted by mail can take between one and twenty-six months to achieve registration, with an average of thirteen months. Id.

For those claims requiring the Office to correspond with the claimants, processing times are increased: between two and fifteen months (with an average of nine months) for online applications and between three and thirty-seven months (with an average of 20 months) for applications submitted by mail. Id.

Given the three-year statute of limitations on filing copyright infringement actions, submitting an application to the Copyright Office using its online forms is the most cautious approach and more likely to result in the receipt of a registration certificate (or a refusal to register) before the statute of limitations expires. If one is anticipating specific litigation (for instance, if an owner believes his work has already been infringed by a specific potential defendant) then seeking expedited treatment, or “special handling” may be warranted.

For more on the potential concerns regarding the three-year statute of limitations applicable to copyright cases, stay tuned for the second post in this series, to be published shortly.