By Tamar Duvdevani and Matthew Ganas (with contributions from Michael Varrige)

The Copyright Act (the “Act”) permits copyright holders to bring civil infringement actions in federal district courts to enforce the exclusive rights provided under the Act, namely, the rights to reproduce, distribute, display, publicly perform, and create derivatives of an original work of authorship.  However, an infringement action cannot be brought for a “United States work” until preregistration or registration of the copyright “has been made in accordance with [the Act].”  17 U.S.C. § 411.  Due to differing interpretations of this provision, United States courts are currently split over whether a plaintiff in a copyright action is required to have an issued copyright registration before suing for infringement of a domestic work, or if all that is necessary in order to commence a federal litigation is the filing with the United States Copyright Office of a copyright application.

In particular, U.S. Circuit Courts of Appeal disagree on when a copyright registration “has been made” in order to the satisfy the Act’s pre-suit registration requirement.  The Fifth and Ninth Circuits interpret the Act to require only that an application be on file with the Copyright Office prior to commencement of litigation (“the application approach”).  The Tenth and Eleventh Circuits, in contrast, maintain that a copyright must first be registered (“the registration approach”).  The Seventh Circuit has expressed conflicting views on the applicable approach, and the First, Second, Third, Fourth, Sixth and Eighth Circuits have yet to directly address this issue.  Whether this provision requires a completed registration or merely an application before filing suit is directly at issue in Fourth Estate Public Benefit Corp. v. LLC (“Fourth Estate”), a case currently making its way up through the federal appeals process, most recently by a cert. petition that was filed with the U.S. Supreme Court.

The practical distinction between the differing approaches is the timing of the filing of a federal copyright action.  Unlike the submission of a copyright application which can be done quickly, registration requires the Copyright Office to examine an application and certify that the applied-for work qualifies for protection, a process that generally takes several months.  Thus, Fourth Estate raises statutory and procedural issues potentially critical to U.S. copyright holders seeking to enforce their exclusive rights expeditiously, in any available forum.

The Fourth Estate case involves copyright infringement claims for “United States works,” thereby triggering the Act’s registration requirement.[1]  Plaintiff Fourth Estate Public Benefit (FEPB) sued defendant, asserting infringement of copyrights in articles posted on defendant’s website after its license from FEPB allegedly lapsed.  Although FEPB had filed applications for registration for the allegedly infringed works with the U.S. Copyright Office, it did not receive certificates of registration before filing suit.  The Florida district court thus dismissed the action, reasoning that FEPB failed to comply with the Act’s registration requirement.  In May 2017, the Eleventh Circuit Court of Appeals affirmed the dismissal, holding that merely filing an application is insufficient to satisfy the Act’s registration requirement.

In October 2017, FEPB petitioned the U.S. Supreme Court for review of the Eleventh Circuit’s decision.  FEPB asks the Court resolve the current circuit split in favor of the more lenient, and plaintiff-friendly, application approach.  In response, advocates for the stricter registration approach, relying on the Act’s statutory text and contending that this approach better serves the Act’s underlying policy goal of encouraging registration.

Most recently, on January 8, 2018, the Supreme Court invited the U.S. Solicitor General (SG) to file a brief expressing the U.S. government’s views on this issue.  The SG was not given any deadline to file its brief, and thus there is currently no definitive timeline for when the Supreme Court may decide FEPB’s petition.  However, the Court’s request for the SG’s view is an indication of serious interest in the petition.  If the SG recommends granting FEPB’s petition, then there is a strong chance that the Court may weigh in to resolve the current discrepancy among the lower courts.

Should the Supreme Court grant cert., this is a case all content owners should be watching.  A holding in favor of the registration approach could create greater incentives for copyright owners to promptly register their works in order to guarantee that any subsequent litigation is filed within the Act’s three year statute of limitations.  Such a holding would also have the added effect of increasing the opportunity for plaintiffs to seek statutory damages, which are generally only available if a copyright registration is filed prior to an infringing act.  Alternately, a holding in favor of the application approach will eliminate a defense previously available in district courts around the country, and allow serial copyright litigants to relentlessly commence federal actions without waiting to see if the Copyright Office issues a registration in connection with the applied-for work.

[1] The Act’s pre-suit registration requirement only applies to “United States works.”  Generally, works first published outside of the U.S. are exempt, so that owners of non-U.S. works can sue for domestic acts of infringement without ever applying for copyright registration.  This exemption arises from the United States’ ratification and enactment of the Berne Convention, an international agreement that encourages uniform processes for the enforcement of copyrights in any party member jurisdiction.  To protect against infringing activities abroad, copyright holders from Berne Convention member states need not adhere to administrative formalities, like registration, specific to the jurisdiction where an infringement action is brought.  That being said, U.S. copyright registration can provide certain benefits for non-U.S. copyright owners in the litigation context.  Registered copyrights enjoy a presumption of validity, for example, and copyright registration is still required to recover statutory damages and attorney’s fees, when available, for successful infringement suits.