United States: Supreme Court Grants Certiorari In Fourth Estate To Resolve Circuit Split On Copyright Registration Prerequisite To Suit

The Supreme Court recently granted certiorari in Fourth Estate Public Benefit Corporation v. Wall-Street.com to settle a longstanding circuit split on the registration prerequisite to a copyright infringement suit. 

Fourth Estate licensed news articles to Wall-Street.com, and when Fourth Estate cancelled its account, Wall-Street.com failed to remove those articles as their agreement required.  After applying to register its copyrights in the articles—but before the Copyright Office acted—Fourth Estate sued Wall-Street.com for infringement.  The district court dismissed Fourth Estate's case, and the Eleventh Circuit affirmed, relying on the plain meaning of 17 U.S.C. § 411 in concluding that copyright "registration," a precondition to a copyright infringement claim, "can occur only after application and examination."  Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 856 F.3d 1338, 1341 (11th Cir. 2017).

While the ordinary meaning of "registration" would seem to encompass the copyright's issuance, the courts of appeals have split on what the "registration" condition in section 411(a) requires.  Courts applying the "application approach" have held that the condition is met when a copyright owner applies to register a work.  On the other hand, courts applying the "registration approach" have held that it is met only when the Office has made its decision.

Because copyright ownership arises from the creation (not registration) of a tangible work, registration is permissive—i.e., unnecessary for copyright ownership.  Yet Congress encouraged registration when it passed section 411, which requires that "registration" be "made" or "refused" before an infringement suit can be brought. 

Courts favoring the application approach have focused on this legislative purpose, reasoning that the incentive to register works in section 411 is just as strong where "registration" only requires the applicant to apply before suing.  This was the reasoning in Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612, 614 (9th Cir. 2010), where the Ninth circuit adopted the "application approach" just two months after Reed Elsevier v. Muchnick, 559 U.S. 154 (2010), was decided.  In Reed Elsevier, the Supreme Court found the registration requirement of section 411 was not jurisdictional but rather a "substantive ingredient" of an infringement claim.  Id. at 162.  Thus, the Ninth Circuit in Cosmetic Ideas found that the district court's dismissal of plaintiff's claim on jurisdictional grounds "was error." 606 F.3d at 614-15. But the Ninth Circuit then addressed a question unanswered in Reed Elsevier—what it means to "register" a copyrighted work—and adopted the "application approach."  Notably, the court conceded that section 411(a) "could be read" the other way—"to require acceptance or refusal by the Register, not mere delivery."  Id. at 617.  Yet it found section 411(a) ambiguous in the context of two other statutory provisions—sections 408(a) and 410(d).  Accordingly, it looked to "the broader context of the statute as a whole" and concluded that "the application approach better fulfills Congress' purpose of providing broad copyright protection while maintaining a robust federal register."  Id. at 618-19.  Moreover, the court noted two particular problems with the "registration approach."  First, it simply delays suit for no reason (since suit can be filed whether registration is granted or denied), thus amounting to a "needless formality."  Id. at 619-20.  And second, the required delay might, because of the three-year statute of limitations, "cause a party to lose its ability to sue."  Id. at 620. 

While the Fifth and Ninth Circuits have adopted this "application approach," the Tenth and Eleventh Circuits have adopted the "registration approach."  The Solicitor General's Office favors the "registration approach," which it advocated in an amicus brief urging the Supreme Court to grant certiorari to resolve this longstanding circuit split.  That brief relied in particular on the text of section 411(a), as well as the structure of the Copyright Act, as "the best indication of the balance between competing objectives that Congress sought to draw," rejecting the policy-oriented approach exemplified by Cosmetic Ideas.  Beyond relying on the dictionary definition of "registration" in section 411, the amicus brief also relied on the use of "registration" elsewhere in Title 17, including in the constructive notice provision in 17 U.S.C. 205(c), where "registration" can only refer to the Office's issuance of a registration. 

While it remains to be seen how the Supreme Court will resolve this longstanding circuit split, the decision is likely to have lasting implications.  If the Court finds that "registration" in section 411 conditions infringement suits on a Copyright Office determination on an application, it may encourage copyright owners to act more quickly in registering their works.

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