Any work that is entitled to copyright protection automatically receives protection when it is fixed in a tangible medium of expression. However, in order to benefit from the Copyright Act, the owner must “register” his or her work with the United States Copyright Office. Put another way, in order to protect against copyright infringement, the owner must register the work. So, for purposes of the Copyright Act, what does that mean?
To be clear, there is no right answer. Not yet at least. In fact, the definition of “registered” has been debated for years and the federal circuit courts are split on the definition. The Copyright Act describes the registration process as (1) filing an application and paying a fee; (2) depositing a copy of the copyrightable material with the Copyright Office; (3) an examination of the application by the Register of Copyrights; (4) registration or refusal of registration of the application by the Register; and (5) issuance of a certificate of registration. The circuit courts have split on when the mark should be deemed “registered” for purposes of the Copyright Act.
The two approaches are known as the “application” approach and the “registration” approach. The courts following the “application” approach hold that a work is “registered” and the copyright owner can sue an infringer as soon as the applicant files the application, deposits the copy of the work, and pays the fee. The courts following the “registration” approach hold that a work is not “registered” until the Copyright Office has acted on the application by approving or refusing it, and as such, the owner cannot file suit until the Copyright Office has acted.
For years, the split remained intact, but the Supreme Court of the United States will finally resolve the dispute in an action known as Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC. In that case, Fourth Estate Public Benefit Corporation, a news organization publishing articles online, licensed certain articles to Wall-Street.com. Eventually, Wall-Street.com cancelled its account with Fourth Estate, and under the license agreement, it was required to remove all licensed content from its site. But Wall-Street.com refused to do so, prompting Fourth Estate to file suit for copyright infringement on unregistered works, advocating for the Court to apply the “application” approach. The District Court refused, adopting the “registration” approach and dismissing the action without prejudice.
The Eleventh Circuit affirmed the District Court’s ruling, citing its prior decision in M.G.B. Homes and Kernel Records, where it held, in short, that filing an application does not amount to registration for purposes of the Copyright Act. Registration requires action from both the copyright owner and the Copyright Office. Accordingly, the Eleventh Circuit held that filing for infringement is premature after merely filing the application. Accordingly, Fourth Estate petitioned the Supreme Court for review, which was ultimately granted.
The courts favoring the “application” approach have adopted a more pragmatic and policy-driven position. Those courts have argued that the “application” approach serves justice and judicial economy. After all, if a copyright owner can sue for infringement regardless of the application ultimately being granted or rejected by the Copyright Office, what’s the point of making the party wait to bring suit? It doesn’t seem to make sense. Moreover, these courts point to section 408 of the Copyright Act, which states that registration is not a condition of copyright protection and implies that the only requirement for registration is the delivery of the appropriate documents and fees. Additionally, Section 410 states that the effective date of the registration relates back to the date the Copyright Office receives the filing materials. For these reasons, among a few others, certain circuit courts, including the Fifth and Ninth Circuits, apply the “application” approach.
So, why does the circuit split matter? Generally speaking, the split among the circuit courts results in the courts applying federal law in a dissimilar manner depending upon their location, rather than uniformly throughout the nation. This is problematic because it results in parties bringing, or being prevented from bringing, lawsuits for infringement at different points in the registration process depending on where the action is filed. This can, at times, create statute of limitations problems, and in other instances, permit the infringing party to continue to profit from his or her wrongdoing for a longer period of time. Given that copyright law is exclusively within the jurisdiction of the federal courts, the law should be applied uniformly throughout the nation. Unfortunately, that is not happening, but with the Supreme Court granting certiorari, there will soon be a clear answer regarding what constitutes “registered” for purposes of the Copyright Act.