Has registration of a copyright claim “been made” under the Copyright Act when the copyright holder delivers the required application, deposit, and fee to the Copyright Office, or is it made only after the Copyright Office acts on that application?
This case asks the Supreme Court to determine the prerequisites for suing to enforce copyright and asks whether a copyright owners can sue after submitting the registration application to the Copyright Office, or if they must wait until after the Copyright Office acts on the application. Fourth Estate Public Benefit Corporation argues that the language, structure, and history of the Copyright Act require only that the copyright owner submit a registration application, deposit, and fee before suing for copyright infringement. Wall-Street.com, however, maintains that the Copyright Act unambiguously requires that the Copyright Office act on the registration application before the copyright owner can sue, and that a change in this law should be made by Congress rather than the Court. The outcome of this case will affect the ability of authors, artists, and other creators to protect their original works against copying, the means by which Congress obtains works and makes them publicly accessible, and the methods used by courts and litigants to resolve copyright infringement disputes.
Questions as Framed for the Court by the Parties
Whether “registration of [a] copyright claim has been made” within the meaning of § 411(a) when the copyright holder delivers the required application, deposit, and fee to the Copyright Office, as the Fifth and Ninth Circuits have held, or only once the Copyright Office acts on that application, as the Tenth Circuit and, in the decision below, the Eleventh Circuit have held.
Fourth Estate Public Benefit Corporation (“Fourth Estate”) is an organization that creates online news articles. Fourth Estate owns copyright in the articles it produces and licenses those articles to other websites. Fourth Estate provided a license to the news site Wall-Street.com (“Wall-Street”) to post Fourth Estate articles. The licensing agreement mandated that Wall-Street remove all of Fourth Estate’s content prior to cancelling their licensing agreement. Eventually, Wall-Street canceled the licensing agreement, but still continued to feature Fourth Estate content on its website.
Subsequently, Fourth Estate sued Wall-Street for copyright infringement under 17 U.S.C. § 501. Fourth Estate claimed that it had satisfied 17 U.S.C. § 411(a), which requires the copyright owner to obtain “registration of the copyright” before filing suit, by applying to register the articles with the Copyright Office. However, Fourth Estate did not claim that the Copyright Office had acted on the applications. Wall-Street moved to dismiss Fourth Estate’s complaint, arguing that § 411(a) permits suit only after the Copyright Office approves or denies the copyright application The District Court agreed with Wall-Street and dismissed the case. Fourth Estate appealed, arguing that “registration of the copyright” only requires that a party file “the deposit, application, and fee required for registration” with the Copyright Office before filing suit.
The Court of Appeals for the Eleventh Circuit affirmed. In its opinion, the court noted a disagreement between circuits on when “registration” occurs under § 411(a). The Tenth Circuit follows the “registration” approach, requiring that the Copyright Office act on the registration application before suit can be filed. In contrast, the Fifth and Ninth Circuits follow the “application” approach, which requires that a party file “the deposit, application, and fee required for registration” with the Copyright Office before filing suit. The Eleventh Circuit adopted the registration approach. The court noted that, under 17 U.S.C. § 410(a), the Copyright Office examines the material in a registration application to determine whether “the material deposited constitutes copyrightable subject matter.” If the subject matter is copyrightable, the Copyright Office “registers the claim”; if the matter cannot be copyrighted, the Copyright Office “refuse[s] registration.” Based on this text, the court concluded that registration requires action by both the copyright owner and the Copyright Office.
The United States Supreme Court granted Fourth Estate certiorari on June 28, 2018. ,
TEXTUAL ANALYSIS OF 17 U.S.C. § 411(a)
Fourth Estate argues that, under the text of the Copyright Act (the “Act”), registration is made when a copyright owner submits his registration deposit, application, and fee. Accordingly, registration does not depend on the actions of the Copyright Office and the Register. In support of its position, Fourth Estate emphasizes that statutory interpretation typically requires giving identical phrases within the same statute the same meaning. The phrases used within § 411, Fourth Estate notes, make the copyright owner the relevant actor. For example, Fourth Estate asserts, a copyright owner’s right to sue for infringement depends upon his own compliance with registration procedures. Fourth Estate additionally points to phrases within § 412, which provides copyright owners with remedies if their claim is registered within a three-month deadline. This provision, Fourth Estate maintains, most logically requires copyright owners to make registration because the Copyright Office often takes longer than three months to act. Similarly, Fourth Estate argues, § 408 of the Act states that a renewal registration may be made when an application and fee are filed, and that copyright owners may obtain registration by delivering a deposit, application, and fee to the Copyright Office.
Fourth Estate does admit that, in § 708(a), the phrase “registration is made” refers to the Copyright Office’s action. However, it contends that this single usage provides no guidance for interpretation of the rest of the statute because it was not included in the Act’s original language and was added six years after § 411’s enactment. Further, Fourth Estate recognizes that there are other parts of the Act that use the word “registration” to refer to the Copyright Office’s action. Fourth Estate contends that the mere fact that the Copyright Office sometimes “registers” does not preclude copyright holders from “registering” in other contexts, like § 411(a).
Additionally, Fourth Estate argues that because § 411 provides that a copyright owner may still bring an infringement action even if the Register refuses to register the claim, it follows that “making registration” does not depend upon the Register’s action. Fourth Estate asserts that the Register’s refusal to register a copyright does not mean that registration has not been made; rather, refusal imposes an additional procedural requirement (serving notice on the Register) on these copyright owners who wish to initiate an action.
Wall-Street agrees with Fourth Estate that a textual analysis is appropriate to determine § 411’s meaning—but counters that Fourth Estate ignores critical parts of the statute’s language. To begin, Wall-Street contends that the ordinary meaning of the word “registration” connotes official governmental action, indicating that the statute requires the Register to approve and record a copyright holder’s claim in an official register. Under Wall-Street’s view, the copyright owner’s preceding submission of his deposit, application, and fee are merely earlier steps in the overarching registration process.
Wall-Street also contends that, even though § 411 allows copyright owners to bring infringement actions when the Register refused to register the claim, registration is not made by the copyright owner’s actions. Instead, Wall-Street asserts, the statute provides an exception that allows copyright owners to pursue an infringement suit although registration was not made. Wall-Street further argues that if registration is synonymous with delivering a deposit, application, and fee, this exception would make little sense. Moreover, Fourth Estate’s interpretation, Wall-Street contends, would lead § 411 to dictate that in any case where the Copyright Office denies a copyright application, the copyright holder is entitled to institute an infringement action by providing notice. But, Wall-Street holds, registration cannot be both made and refused, and it further cannot be refused after it has been made.
Wall-Street argues that a better interpretation of § 411 is that a copyright holder cannot initiate suit until the Register has “made” or “refused” registration. Wall-Street contends that this understanding of § 411 is consistent with other provisions of the Copyright Act. For example, the statute contains a registration date relation-back provision and a preregistration remedy system; Wall-Street argues both are only given practical effect if registration is understood to require action by the Register. Additionally, Wall-Street notes that in other provisions of the Act, Congress textually distinguishes between applying for registration and registration itself; Wall-Street contends that this demonstrates Congress’s deliberate decision to not have § 411 apply to copyright holders’ actions. Wall-Street further argues that Fourth Estate’s references to statutes that purportedly exclusively require the copyright owner’s actions for registration fail to address the “plain text of those provisions.” Wall-Street maintains that the Copyright Act’s text plainly makes registration dependent upon the action of the Register.
HISTORICAL ANALYSIS OF 17 U.S.C. § 411(a)
Fourth Estate contends that, in light of the 1909 Copyright Act, the current statute makes registration dependent upon the action of the copyright owner. Fourth Estate maintains that the 1909 Act produced conflicting interpretations about which party’s actions determined registration because it barred a civil action until there was both a “deposit of copies and registration of such work”—suggesting that actions must be taken by both the copyright holder and the Register. But Fourth Estate argues that Congress squarely rejected this inference when it eliminated the separate reference to a “deposit” in the current Act, confirming that registration only requires action by the copyright owner. This is also consistent, Fourth Estate argues, with the goal of ensuring that copyright owners do not encounter long delays when pursuing copyright infringement suits. Fourth Estate posits that it would make little sense for the statute to mean that, where the Register denied a copyright owner’s application, the owner would need to then pursue an independent action to compel registration before its infringement proceeding—a process that would not only be expensive, but would also further aggravate the copyright holder’s injury.
In contrast, Wall-Street argues that Congress enacted the Copyright Act of 1976 to ensure that a copyright holder cannot bring an infringement suit before the Register takes action. Prior to the Act, Wall-Street maintains, a copyright owner’s only recourse when the Register refused to register his claim was to bring a mandamus action against the Register, and then sue for infringement. Wall-Street argues that Congress enacted § 411 to clarify that an infringement suit necessitates prior action by the Register. Further, Wall-Street contends that if the Register refused a proper application, then the copyright owner need only serve notice on the Register in order to initiate an infringement suit. The Register’s decision, Wall-Street maintains, is critical in screening out unfounded claims and, when registration has been refused, providing the court with information that will help it establish key facts and apply the law in the infringement suit. Wall-Street states that § 411 demonstrates that Congress settled the debate by requiring registration, not mere application, prior to suit.
RIGHTS AND REMEDIES UNDER THE COPYRIGHT ACT
Fourth Estate contends that the rights and remedies provided by the Copyright Act favor finding that copyright owners’ ability to proceed with their lawsuits depends only upon the owners’ compliance with the statute’s requirements. Under the Act, Fourth Estate argues, a copyright owner’s rights dependent solely upon his own actions; for example, a copyright is created as soon as a work is fixed in a tangible medium of expression, without any grant by the Copyright Office. Fourth Estate notes that since the Act explicitly provides that registration is not a condition to copyright protection, the logical reading of § 411 is that the requirement of “making registration” is merely a procedural burden—a requirement that can always be satisfied. Additionally, Fourth Estate argues that making copyright holders’ right to seek injunctive relief dependent upon action by the Copyright Office would create perverse results: intellectual property thieves would be able to infringe copyright owners’ rights for extended periods of time, and copyright owners may be precluded from enforcing their rights if the Copyright Office fails to process the registrations before the Act’s statute of limitations lapses.
Wall-Street counters that the Act’s remedies support its position that registration requires action by the Register. It contends that the Act provides a “narrow but powerful exception” to the prerequisite of registration that allows a claimant to pursue an injunction without first obtaining registration as long as he does so within three months of transmission. Wall-Street suggests that even though the Copyright Office is often delayed in processing its decisions, this lag was not anticipated by Congress when it first enacted the Act. Wall-Street also argues that Fourth Estate’s argument improperly hinges upon the Copyright Office’s typical delays in processing claims: interpretation of § 411 cannot be based on legislative concerns like congressional funding. Further, Wall-Street maintains that copyright owners who diligently seek registration can enjoy substantial protection of their rights. In support of this position, Wall-Street notes that even without registration, the Act provides copyright owners with several avenues to protect their property rights from harm, such as injunctions and “special handling” procedures.
BALANCING THE INTERESTS OF AUTHORS WITH THE INTERESTS OF CONGRESS
The American Bar Association, in support of Fourth Estate, argues that the application approach surpasses the registration approach in giving copyright owners more effective and efficient redress when their copyrighted works are infringed. The ABA notes that copyright owners frequently must stop unauthorized use of their copyrighted material immediately to avoid irreparable injury, as when the unauthorized sale of a copyrighted work cuts into the demand for a yet-to-be-released original. The ABA argues that the application approach allows copyright owners to quickly stop infringing activity through a lawsuit without waiting for the Copyright Office to either allow or deny registration. The ABA goes on to note that the Copyright Office can take two or more years to issue a registration decision, which may prevent a copyright owner from complying with the three-year deadline for filing a lawsuit after infringement occurs. The ABA further argues that the expedited review process fails to cure the problems of the registration approach, since it applies only in limited circumstances and is prohibitively expensive for many copyright owners.
The Washington Legal Foundation (“WLF”), in support of Wall-Street, argues that the registration approach serves the interests of Congress better than the application approach. The WLF says that the registration approach ensures the existence of a publicly accessible repository of both infringed and uninfringed works by incentivizing copyright owners to obtain registration before suing for copyright infringement. The WLF argues that the application approach would transform the repository into a collection of mostly infringed works because it provides no incentive for pre-lawsuit registration. The WLF further asserts that pre-lawsuit registration is an important means for the Library of Congress to obtain copies of copyrighted works. The WLF also says that injured copyright owners who delay suit until obtaining registration may still receive adequate compensation in the form of damages, fees, and costs incurred during the registration process. The WLF dismisses concerns over the timing of registration, noting that timely registration before suit is manageable with a lawyer’s assistance. The WLF similarly dismisses concerns over the three-year deadline for filing a lawsuit after infringement, emphasizing that the deadline period begins to run only when the owner discovers the infringement and resets every time somebody infringes the copyright. The United States, in support of Wall-Street, further argues that the registration approach enables the Copyright Office to keep an updated database of copyright claims, which serves “as a valuable resource for persons who seek to use copyrighted works lawfully.” ,
HELPING COURTS AND LITIGANTS RESOLVE COPYRIGHT INFRINGEMENT DISPUTES
The Copyright Alliance, in support of Fourth Estate, argues that the application approach does not prevent courts from obtaining useful advice from the Copyright Office when they decide copyright infringement cases. The Copyright Alliance admits that registration decisions are useful to courts, but notes that courts may utilize the Copyright Office’s expertise in other ways—such as staying a case until the Copyright Office issues a registration decision or directly asking the Copyright Office for advice. However, the Copyright Alliance emphasizes that copyright registration decisions may not significantly benefit courts since courts ultimately make their own assessment of the copyrighted work. The Copyright Alliance also points to other aspects of copyright infringement cases that diminish the value of the registration approach: the requirement that plaintiffs notify the Copyright Office when they sue; the infrequency of the Copyright Office actually advising courts; and the longer average duration of copyright infringement suits compared to registration processing times, which indicates that a registration decision will usually be available for the court to consider before the court issues a final judgment.
Authors and Educators (“Authors”), in support of Wall-Street, argue that the registration approach produces fairer outcomes in copyright infringement cases because it ensures that courts have the results of registration examinations during decision making. The Authors note that the registration process has evolved from a review of copyright formalities to a comprehensive and rigorous examination of copyright claims that promotes copyright quality. The Authors argue that the registration approach ensures that judges, lawyers, and copyright owners have access to this examination when they resolve copyright infringement disputes. The Authors further state that copyright examinations conserve judicial resources by reducing the need for other evidence of copyright quality. Moreover, the Authors argue that the registration approach would help frequent targets of copyright infringement suits like artists and educators resist meritless claims. The Authors note that such people often lack the legal expertise to independently appraise the strength of a copyright claim, and thus settle meritless lawsuits or engage in unnecessary self-censorship. The Authors argue that the registration approach would enable laypersons to assert their rights by demanding a certificate of registration from the complaining party, as well as deter malicious parties from asserting meritless copyright claims.
- Scott Alan Burroughs, Breaking the Wall: Copyright Conflict Reaches the Supreme Court, Above the Law (July 18, 2018).
- Anandashanka Mazumdar, High Court Could Give Copyright Lawyers’ Advice Extra Strength, Bloomberg BNA (July 31, 2018).