The Supreme Court ruled against copyright owners this week in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571 (Mar. 4, 2019), holding that, for purposes of the statutory requirement that a party suing for copyright infringement must show that the copyright has been registered, “registration” means that the Copyright Office has actually granted the registration. The decision resolves a split in the Circuit Courts of Appeals, some of which had held that the mere act of filing for registration was sufficient to meet the registration requirement. The court showed little interest in possible policy justifications for the more lenient interpretation, an interpretation known as the “application approach,” and instead adhered to a purely textual analysis of the statute.

The text in question in Fourth Estate was 17 U.S.C. Sec. 411(a). While copyright registration is generally voluntary, under section 411 it is a mandatory condition to filing suit for infringement. Section 411(a) provides that, except in certain limited situations, “no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made . . . .” The question in Fourth Estate was what “registration” under 411(a) means. Some courts had interpreted the registration requirement to be met when the owner submits the application for registration, a/k/a “the application approach.” Fourth Estate, slip op. at 4. “[T]he application approach avoids unnecessary delay in copyright infringement litigation.” Cosmetic Ideas, Inc. v. IAC/Interactive Corp., 606 F.3d 612, 619 (9th Cir. 2010). The Supreme Court, though, unanimously ruled that the “certificate approach” — under which “registration” is deemed to occur only when the Copyright Office actually grants the registration and issues a certificate of registration — is the correct reading of the statute. As the Court noted (Fourth Estate, slip op. at 7), “registration has been made” is written in the passive voice; however, the structure of section 411 and the usage of “registration” in other copyright statutes strongly indicates that “registration” in section 411(a) refers to the Copyright Office’s actual grant of a certificate of registration, rather than the applicant’s submission of the necessary paperwork for registration. Id. at 5-8.

Interestingly, the Court did not articulate a policy justification for the “certificate” approach. In fact, it is difficult to justify. For instance, obtaining a certification of registration is not necessary to create the copyright itself. In contrast to patent rights, the other intellectual property rights referenced in the Article I of the Constitution, which are government-granted monopolies and are issued only by government agency in the U.S. (the United States Patent & Trademark Office), copyright springs into being the moment the work is created and “fixed” in a “tangible” medium of expression (print, audio recording, film, and so on) (17 U.S.C. Sec. 102(a)). The copyright statutes expressly provide that copyright exists regardless of registration, 17 U.S.C. Sec. 408(a), and that, in a lawsuit, compensatory damages may be recovered from the date infringement began, regardless of whether the copyright had yet been granted registration on that date, 17 U.S.C. Secs. 412, 504(b).

The Court in Fourth Estate said “registration is akin to an administrative exhaustion requirement,” slip op. at 3, but that analogy is unhelpful. Administrative exhaustion usually refers to resorting first to administrative procedures that can provide a remedy, before the aggrieved party seeks relief through the court system. The relief sought in a copyright infringement suit (damages, injunction) cannot be provided by the Copyright Office.

A potential justification for the certificate approach might be that delaying the lawsuit until grant or denial of the application for registration is desirable from the standpoint of judicial economy, if denial mooted litigation; however, it does not. Section 411(a) provides that, even if the Copyright Office refuses to grant a certificate, the lawsuit nevertheless proceeds. The statute then allows the Register of Copyrights “at his or her option,” to become a party to the action, in order to challenge registrability of the copyright claim, an option rarely used. (When, in 2018, I had occasion to research how rare it is, the research, which included a review of PACER, showed that the most recent instance of a Register joining infringement litigation pursuant to section 411(a) occurred in 2002.)

Also, regardless of whether registration is refused, the court independently determines whether the copyright is valid. The Register’s views are entitled to some deference if persuasive and well-reasoned, but they are not binding on the court. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 478-80 (6th Cir. 2015).

Moreover, delaying the litigation until the grant of registration is also decidedly undesirable from a policy standpoint because, in theory, if the Copyright Office sat on an application long enough, the three-year statute of limitations for infringement could run. (The Court hand-waved this problem away by noting that “the average processing time for registration applications is currently seven months.” Fourth Estate, slip op. at 11.)

The examination process is also not particularly valuable as a gatekeeper for improper copyright claims. The examination consists of confirming that formal requirements have been met (literally, that the proper form has been used; also, there are deposit (providing a copy of the work) and fee requirements with which the applicant must comply), and that the work appears to contain the “minimal degree of creativity” required for copyright protection, Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991), which level of creativity is “extremely low,” id. Again in contrast to patent practice, where the U.S. Patent & Trademark Office rigorously compares patent applications to the “prior art” (i.e., known prior technology) to determine whether the statutory requirements for inventiveness have been met, the Copyright Office lacks a mechanism for determining the originality of a novel, song, sculpture, or any other work, compared to its predecessors. The amicus brief in favor of the copyright owners filed by the American Bar Association in Fourth Estate noted (p. 20n.15) that about 99% of applications for copyright registration are granted, and, as noted above, even if the copyright claim involved in litigation falls into the other 1%, the suit will proceed anyway.

Lastly, from a broad policy standpoint, while a certificate requirement for litigation certainly incents copyright owners to register, is an anachronism in copyright law. Beginning with significant revisions in the Copyright Act of 1976, U.S. copyright law has tended to align itself more and more with international norms, which have removed most technical and procedural barriers to enforcement of copyright. For example, the 1976 Act removed the requirement that to be copyrighted a work needed to be published. Also, beginning in 1989, in accordance with Congress’ adoption of the Berne Convention Implementation Act of 1988, it was no longer required, to be entitled to copyright protection, to mark a work with the copyright symbol. The delay imposed by the court’s interpretation of section 411 in Fourth Estate on a party suing to enforce its copyright is inconsistent with the trend of removing procedural hurdles to copyright protection.

The bottom line, though, is that, now that the Supreme Court has spoken, only Congress can remove the hurdle imposed by the certificate requirement. Also, as a practical matter, the adoption of the certificate approach in Fourth Estate means that clients are well-advised to register “early and often” any works of possible commercial value, to avoid the delay in litigation if they wait until after infringement occurs to register.