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Argument preview: When has registration of a copyright claim “been made”?

Fourth Estate v. is one of two copyright cases on the Supreme Court’s January argument calendar. (The other case, Rimini Street v. Oracle, will be argued on January 14.) Both cases pose narrow questions of statutory interpretation. Fourth Estate gives the court the opportunity to resolve a longstanding conflict in authority over the meaning of the phrase “registration of the copyright claim has been made” in Section 411(a) of the copyright statute.

Copyright protection is automatic, and is independent of registration. A copyright owner may, but need not, register a copyright claim any time during the copyright term. Over the years, Congress has significantly relaxed the formalities required for copyright protection, but it has retained registration as a key part of the legal regime. An accurate and complete registry of copyrighted works carries important public benefits, and the Copyright Office makes registration records publicly available. When Congress decided to make copyright registration optional, it included in the statute a number of provisions designed to encourage prompt registration. One of those provisions requires a copyright owner to register its copyright before filing a copyright infringement suit.

To register a copyright claim, an applicant submits a copy of the copyrighted work with a form that identifies the author and the original authorship on which the copyright claim is based, and pays the prescribed fee. If the claimant is not the author, the form details how the claimant came to own its copyright interest. The Copyright Office examines both the form and the work, in order to determine whether the applicant has complied with statutory requirements for copyright protection, before issuing a certificate of registration. The examination is not merely ministerial, but the substantive standards are modest, and the office registers the vast majority of copyright claims that it receives. Typically, the process takes several months. An applicant who is in a hurry can pay a $800 processing fee for expedited consideration, which usually takes only one to two weeks. Sometimes the copyright examiners have questions or concerns that may lead an applicant to revise its application – in that event, the process may drag on for a longer period. If the Copyright Office denies the registration application, the applicant may, if it chooses, file an appeal.

Section 411(a) of the copyright statute provides:

[N]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.

Courts have disagreed over whether a prospective plaintiff who submits an application to register its copyright may proceed immediately to file suit, or whether Section 411(a) requires the copyright owner to wait until the Register has either registered the owner’s claim or denied registration. The U.S. Courts of Appeals for the 10th and 11th Circuits read Section 411(a) to allow suit only after the Register has acted to register or refuse the claim. The U.S. Courts of Appeals for the 5th and 9th Circuits have endorsed an “application” approach, permitting suit as soon as the application is filed. District courts in the remaining circuits have reached conflicting results. The authors of major copyright treatises disagree vehemently over which is the correct interpretation.

This section of the statute came before the Supreme Court eight years ago in Reed Elsevier v. Muchnick, a case challenging federal court jurisdiction to approve a copyright settlement involving both registered and unregistered works. The court construed this language as imposing a precondition to filing a copyright infringement suit, but concluded that the precondition did not limit the federal courts’ jurisdiction. But Muchnick didn’t answer the question posed by this case: May a prospective plaintiff file suit once it has applied to register its copyright, or must it delay litigation until the Copyright Office has acted on its application?

Fourth Estate is a membership organization that seeks to promote a healthy free press. As part of its mission, Fourth Estate licenses news articles written by its journalists to online sites, and claims to own the copyrights to those articles. The license terms require subscribing websites to remove any Fourth Estate articles upon cancelling their subscriptions. subscribed for a time and posted Fourth Estate articles on its website. It then cancelled its subscription but continued to display those articles.

Fourth Estate filed an application seeking to register the copyrights in 244 articles. A few days later, it filed a copyright infringement suit against The district court dismissed the complaint without prejudice on the ground that the plaintiff had failed to obtain registration for the works prior to initiating suit. The 11th Circuit affirmed. Ultimately, the Register of Copyrights rejected Fourth Estate’s copyright registration application.

Fourth Estate petitioned for certiorari. The Supreme Court called for the views of the United States. The solicitor general urged the court to grant certiorari and affirm the judgment below. The SG explained that the case had been correctly decided, but that “[t]here is no realistic possibility that the circuit conflict will be eliminated without this Court’s intervention.”

In their briefs, both parties claim that the plain meaning of the statute supports their position. argues that the plain text of Section 411(a) permits a claimant to file suit only after the Register has either registered the claim or refused to do so. Reading the phrase “registration has been made” to mean that the claimant has merely filed an application would make the second sentence of the section, permitting suit if the Register refuses registration, incoherent. The friend-of-the-court brief filed by the solicitor general on behalf of the United States agrees, emphasizing that the term “registration” denotes the entry of a copyright claim into the official register. The SG’s brief stresses the value to the courts of the Register’s initial determination of the validity of a claim, and Congress’ purpose to encourage prompt copyright registration for the benefit of the public.

Fourth Estate insists that the plain meaning of the statute better supports its different reading of the language. It argues that the actor implicitly referenced by the passive phrase “registration of the copyright claim has been made” is the copyright owner rather than the Register, and that the subsection therefore speaks of acts the copyright owner must perform in order to register its claim, but does not require any action by the Copyright Office. Once the copyright owner has sought registration by submitting the application, the fee, and a copy of the work, it has, under this interpretation, made registration of its copyright claim for the purposes of Section 411(a). A contrary reading, Fourth Estate argues, would make the Register of Copyrights the gatekeeper to the courthouse, would penalize copyright owners for administrative delays, and would undermine the enforcement of the owners’ rights.

Several friend-of-the-court briefs make arguments based largely on policy. Briefs supporting stress both the value of a public registry of copyright claims and the importance of the examination process in weeding out or narrowing false claims. Briefs supporting Fourth Estate focus on the burden to copyright owners of being unable to enforce their valuable rights until the Register has acted.

The conflict in authority itself imposes significant costs. A copyright owner who guesses wrong about the meaning of the language risks wasting both money and time. If the owner’s suit is dismissed because the Copyright Office has yet to act, it will face the expense and delay of refiling once the work is registered or registration is denied. Courts that barge ahead to try infringement suits before the Copyright Office has ruled may discover that the office has determined that work does not reflect enough original authorship to support a copyright or that the claimant is not the owner of the rights.

The Supreme Court has granted the solicitor general’s request to participate in oral argument. Whichever way the court rules, it is expected to resolve the circuit conflict.

Recommended Citation: Jessica Litman, Argument preview: When has registration of a copyright claim “been made”?, SCOTUSblog (Jan. 3, 2019, 10:10 AM),