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Supreme Court to Resolve Copyright Registration Circuit Split

July 2, 2018

Supreme Court to Resolve Copyright Registration Circuit Split

July 2, 2018

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On June 28, the Supreme Court announced that it will address the long-standing circuit split regarding the Copyright Act’s prerequisite for copyright infringement suits.

Although a copyright registration is not required for valid copyright ownership, the Copyright Act stipulates that a work must be “registered” before the copyright owner can file an infringement suit. Specifically, Section 411(a) provides that “no civil action for infringement of [a] copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.” The circuits are currently divided as to when “registration” has been “made” for purposes of Section 411(a):

The “Application Approach”

The Fifth and Ninth Circuits adhere to the “application approach.” Under this approach, if a copyright owner files an application, deposits a copy of the work, and pays the required fee, as required by Section 408(a) of the Copyright Act, the owner has “made” the required “registration” within the meaning of Section 411(a), regardless of whether the Copyright Office has acted on the application.

The “Registration Approach”

The Tenth and the Eleventh Circuits adhere to the “registration approach.” Under this approach, a copyright owner has not “made” the required “registration” within the meaning of Section 411(a) until the Copyright Office has acted on the application, i.e., by registering or refusing to register the work.

Other circuits, including the First and Second Circuits, have declined to take a position on the matter, which has resulted in conflicting decisions among district courts. Due to the large number of copyright infringement suits that come before it, this is particularly problematic in the Second Circuit, which has repeatedly sidestepped the issue. Of course, a circuit split such as this one also raises concerns of forum shopping.

From a practical perspective, copyright owners and their attorneys have been left wondering whether and when they can commence an infringement suit. Because the Copyright Office typically takes several months to act on an application, copyright owners are forced to choose among filing suit and risking dismissal, allowing the infringement of their works to continue, and paying a hefty fee for expedited service.

The Supreme Court’s attention to this issue results from Fourth Estate Public Benefit Corp. v., LLC, from which the plaintiff successfully petitioned for a writ of certiorari after the Eleventh Circuit affirmed a district court’s dismissal of Fourth Estate’s copyright infringement suit, because the Copyright Office had not yet acted on its pending copyright application at the time the complaint was filed. We are optimistic that the Supreme Court’s decision will resolve the circuit split and provide much-desired clarity for copyright owners and attorneys alike.

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.

Blog Authors

Kerrijane John | Associate

Kerrijane focuses her practice on trademark and copyright matters, both domestically and internationally. Her clients span multiple industries and range from emerging artists and startups to multinational corporations. She has extensive knowledge of China and its culture after spending several years studying Mandarin and living in Beijing and...

Fish & Richardson attorney Kristen McCallion
Kristen McCallion | Principal

Kristen McCallion is a principal in the New York office of Fish & Richardson P.C. and chair of the firm’s copyright group. Ms. McCallion represents businesses in the consumer products, internet, media, and interactive entertainment industries in copyright, trademark, false advertising, trade dress, and unfair competition litigation in...