by Jonathan Wieder*
Should the Copyright Office be able to vet copyright applications before any action for copyright infringement is instituted? This term, in the upcoming case Fourth Estate, the Supreme Court will consider whether “registration” within the meaning of the United States Copyright Act merely mean that the components of the application need to be submitted to the Copyright Office (the “application” approach) or that the Copyright Office has affirmatively approved or refused the application (the “registration” approach). In this Contribution, Jonathan Wieder (’19) discusses the textual and legislative origins and consequences of each approach and the differing circuit interpretations that led to the grant of certiorari in Fourth Estate. Ultimately, this Contribution argues that the registration approach better effectuates congressional policy of vesting the Copyright Office with discretion over copyrightability and balancing protections for all parties to a copyright dispute.
The Supreme Court in June 2018 granted certiorari to decide the longstanding debate about a copyright owner’s obligations prior to filing an action for copyright infringement.2 Under Section 411(a) of the United States Copyright Act, “[n]o civil action for infringement of the copyright in any United States work shall be instituted until pre-registration or registration of the copyright claim has been made in accordance with this title.”3 The circuits have split in defining “registration” within the meaning of the statute. At stake in that definition is the ability of the Copyright Office to vet copyright applications in advance of costly litigation.
In many ways, the circuit split on this issue traces the well-worn debate between the plain meaning of a statute and the underlying congressional purpose. Courts adopting the registration approach, including the Tenth and Eleventh Circuits, hold that that the text of the statute unambiguously requires either an affirmative approval or refusal of a copyright application by the Copyright Office, even though that determination can take several months.4 Courts adopting the application approach, including the Ninth Circuit, hold that the text is ambiguous and that “registration” is complete once the components of a copyright application are submitted.5 Ultimately, proponents of the application approach claim superiority based on the underlying purposes of U.S. copyright law.6
This Contribution will argue that the courts have it backwards. Though the statute is far more ambiguous than has been discussed by the courts to date, the registration approach better effectuates congressional policy of vesting the Copyright Office with discretion over copyrightability and balancing protections for all parties to a copyright dispute.
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The Supreme Court will take up the registration versus application debate in the context of Fourth Estate Public Benefit Corporation LLC v. Wall-Street.com, LLC, 856 F.3d 1338 (11th Cir. 2017). The Eleventh Circuit adopted the registration approach, holding that “registration” requires that an application for registration of a copyright must be either granted or refused by the Copyright Office—that is registration does not occur without affirmative action by the Copyright Office.7 The court held that the plain language of the statute is inconsistent with the application approach because it would render some of the language in the statute superfluous.8 For instance, the statute directs that the Copyright Office “shall refuse registration” if they determine that an application is deficient, and that the Copyright Office’s determination should take place “after examination.”9 Why specify that the determination should be made “after examination,” the argument goes, and how can the Copyright Office “refuse registration” if registration is complete at the time the owner submits an application, months before the Office is in a position to make their evaluation? The Court concluded its analysis, however, after analyzing only section 410 of the statute, one of five consecutive provisions to address the topic of registration.10
Those other provisions lend strong support for the application approach. First, section 408(a) of the statute provides that “[t]he owner of the copyright . . . may obtain registration by delivering to the Copyright Office a deposit as specified by this section, together with an application and fee … Such registration is not a condition of copyright protection.”11 The language of “such registration” suggests that registration is defined by the three items previously listed—an application, deposit, and fee. Second, section 411(c) provides that where the first fixation of a copyright is simultaneous with the first transmission, the copyright owner can sue as long as they provide notice to the Copyright Office and “make[] registration for the work within three months after its first transmission.”12 Registering within three months is generally impossible under the registration approach since the Copyright Office takes eight to ten months to make their decision.13 The copyright owner would therefore be forced to employ “Special Handling,” which involves paying an increased fee in exchange for an expedited decision.14 That fee might be reasonable for the few copyrighted works arising under section 411(c), but the time-period of three months is noteworthy because it parallels the time period discussed in section 408(f) in regards to preregistered works.15 Moreover, the statute in section 408(f) specifies that the three-month period relates to the “consequences of an untimely application” for registration.16 Since the three month limitation in section 408(f) relates to the application, it is reasonable to suggest that the same three-month limitation in section 411(c) also relates to the application, rather than obliquely demanding that the copyright owner use Special Handling.17 Moreover, the parallel between the language of “makes registration” in section 411(c) and “registration has been made” in the operative provision of section 411(a) opens the possibility that registration in the context of section 411(a) also refers to the application.
Reading the statute as a whole, there is ample support for the application approach.18 Conversely, while the strength of the textual reading in support of the application approach has been understated, the policy arguments marshalled by its supporters have been vastly overstated.
Application approach arguments about congressional purpose center on two overlapping contentions, neither of which ultimately holds up to scrutiny. First, forcing the copyright owner to wait for a determination from the Copyright Office threatens to deprive the copyright owner of the ability to protect their copyright. Second, because a copyright owner can institute an action for infringement even if their registration is rejected, registration is a needless formality in contravention of the Berne Convention, an international agreement to facilitate copyright protections across borders by eliminating localized regulations that make it difficult for foreigners to grasp how to acquire copyright protection.19 These ideas are crystallized in the oft-cited quotation from Professor Nimmer that the registration approach puts the copyright owner in “legal limbo,” prejudicing his rights even though the Copyright Office’s determination will not ultimately affect his ability to sue.20 More problematically, even courts which adopt the registration approach have conceded that this procedure is “odd” or “peculiar.”21
But there is nothing odd or peculiar about this requirement. In fact, it is similar to many other areas of law in which there is an administrative exhaustion requirement. For example, a prisoner that wants to sue the United States government for injuries must first exhaust administrative remedies, even though a rejection of the claim by the administrative process does not prevent the prisoner from subsequently filing a claim in district court.22 Such requirements, however controversial, are common and delegate a vetting function to administrative agencies with the proper institutional knowledge and experience to weed out frivolous claims and protect court dockets. That vetting function is especially significant in the copyright context, because part of the Copyright Office’s responsibility is to ensure that the materials in the application are copyrightable, a determination that can have tremendous consequences when novel forms of copyright are introduced.23 The Copyright Office’s decision in this regard is reviewed for abuse of discretion, a relatively high standard of review.24
Indeed, this function of the Copyright Office has been repeatedly affirmed in the Congressional Record. A report of the Register of Copyrights on the general revision of the copyright law emphasized that, “[s]ince the registration process identifies unfounded claims and assists the courts in establishing presumptive facts and applying the law, we believe the requirement of registration before suit should be maintained.”25 Similarly, a panel reviewing the statute suggested that “suits have been kept out of court by the necessity of . . . registration and by the unwillingness of potential plaintiffs . . . following the refusal to register because of the unfavorable light in which a judge might view the refusal to register.”26 Courts too have observed the policy benefits of the registration approach as a hurdle to a plaintiff making burdensome discovery demands.27
Nor, under the registration approach, is the statute indifferent to protecting meritorious plaintiffs. Contrary to what various courts have opined, in the vast majority of cases, no claims or significant monetary damages will be lost by requiring the Copyright Office to take affirmative action on a registration before the owner can file an infringement lawsuit. To hold otherwise effectively ignores protections from the statute itself, from other regulations of the Copyright Office, and from background principles of common law.
The copyright statute itself contains specific carve-outs to ameliorate particular injuries that might result from delay. For instance, section 408(f) allows for pre-registration of particular claims where delay in obtaining registration is most likely to cause irreparable harm, provided that the owner later seeks actual copyright registration.28 The exception, as ever, proves the rule. Congress legislated deviations from the normal registration process only in specific instances where there is a history of infringement for that class of works, suggesting that Congress countenanced the delay in other instances. Furthermore, section 410(d) backdates the certificate of registration which defines the time period in which a copyright owner can seek statutory damages to the time at which the application of copyright was delivered to the Copyright Office.29 In addition to these statutory protections, the Copyright Office also offers Special Handling, a form of expedited review.30 For eight hundred dollars, the Copyright Office can issue a certificate of registration within a matter of days.31 Finally, the three-year statute of limitations is entirely sufficient because the overwhelming majority of courts only start tolling the statute of limitations from the day on which infringement is first discovered or with due diligence should have been discovered, and that period starts anew for every successive infringing act.32 Therefore, time should not prevent a sufficiently motivated copyright owner from being able to protect his or her copyright.
To the extent that, despite these safeguards, certain remedies are forfeited, this represents Congress’ intent to encourage prompt registration. As the Ninth Circuit noted in Cosmetic Ideas, Inc. v. IAC/InteractiveCorp, Congress sought to create “incentives” to register in the hopes of creating a robust national register.33 The application approach does not incentivize registration. Rather, copyright owners are unlikely to register until the moment that they want to sue for copyright infringement. The “robust national register” would be reduced to those works for which a copyright owner has an infringement claim. In contrast, because of the acknowledged delay in receiving a proper copyright registration, the registration approach “incentivizes” copyright owners to apply for registration promptly in case someone tries to infringe on their copyright in the near or distant future.
The application approach is therefore needlessly perturbed by the consequences for a plaintiff in a prospective copyright action. But this analysis also focuses too narrowly on the plaintiff in a copyright infringement suit. The application approach might incentivize strike-suits by enabling a plaintiff to begin expensive and lengthy litigation before the Copyright Office has an opportunity to fulfill its proper role. Indeed, the Copyright Office’s determination on registration offers valuable input to a litigant as to whether to settle or continue the case in court, and the intervention of the Copyright Office can save an innocent defendant considerable expense if that intervention dissuades a plaintiff from bringing suit altogether. The registration approach balances protections for a plaintiff with protections for the defendant in such an action.
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Under the registration approach, registration is far from a needless formality. It is a delicate balancing of the interests of a plaintiff and defendant in a prospective copyright infringement action. This explains why the registration requirement has survived multiple amendments to the statute, even as Congress removed other “formalities” like the notice requirement to comply with the Berne Convention.34 Congress’ decision to maintain the registration requirement should be viewed as deliberate.35 In contrast, the application approach makes registration a needless formality by reducing the requirement to the mere filing of an application.
The Supreme Court will soon hear arguments in Fourth Estate. To prevail in favor of the registration approach, an argument ignoring the strong textual support for the application approach would be unwise. Instead, advocates of the registration approach should reconceptualize registration as a vetting function which achieves the proper balance between protections for plaintiffs and protections for defendants in a copyright suit.
* Jonathan Wieder is a 3L at New York University School of Law. This piece is a commentary on the 2018 Problem at the BMI Moot Court Competition held at Cardozo Law School in New York City. This issue in the problem dealt with whether a UPS Notice of Receipt of a Copyright Application, along with a deposit and proper fee was sufficient under the “registration” requirement of 17 U.S.C. § 411(a) (2008). I am indebted to Professor Sprigman of NYU School of Law who, during a critique of a practice moot, suggested the initial concept for this article.
2. Fourth Estate Pub. Ben. Corp. v. Wall-Street.com, LLC, 138 S. Ct. 2707 (2018).
3. 17 U.S.C. § 411(a) (2008).
4. La Resolana Architects v. Clay Realtors Angel Fire, 416 F.3d 1195, 1197 (10th Cir. 2005) (abrogated on other grounds by Reed Elsevier v. Muchnick, 559 U.S. 154 (2010)); Fourth Estate Pub. Ben. Corp. v. Wall-Street.com, LLC, 856 F.3d 1338, 1341 (11th Cir. 2017).
5. Cosmetic Ideas, Inc. v. IAC/InteractiveCorp, 606 F.3d 612, 619, (9th Cir. 2010).
6. The Seventh and Fifth Circuits are also often cited as following the “application approach,” but they have not consistently done so. Compare Gaiman v. McFarlane, 360 F.3d 644, 654 (7th Cir. 2004) (adopting registration approach), with Panoramic Stock Images, Ltd. v. John Wiley & Sons, Inc., 963 F. Supp. 2d 842, 849 (N.D. Ill. 2013) (adopting the application approach in the absence of controlling authority in the Seventh Circuit); 1-6 Associate’s Guide to the Practice of Copyright Law § 6.18 (collecting cases and noting that although the Fifth Circuit continues to be cited as following the application approach, recent decisions have adopted the registration approach).
8. Fourth Estate, 856 F.3d at 1341.
9. 17 U.S.C. § 410.
10. Fourth Estate, 856 F.3d at 1341-42; In La Resolana, 416 F.3d 1195 (10th Cir. 2005), similar arguments were made for why section 411(a) also cannot be read to support the application approach. Specifically, the court noted the ability of a copyright owner that is refused registration to begin a copyright infringement action despite the refusal so long as they provide notice to the Copyright Office. That notice requirement may be practically meaningless if the copyright owner was able to start the action months before the refusal is made. However, that the copyright owner could start an action earlier does not mean that he or she will do so, so the notice provision would still be important in certain situations.
11. 17 U.S.C. § 408(a).
12. 17 U.S.C. § 411(c).
13. See Frequently Asked Questions About Copyright, Copyright.Gov, https://www.copyright.gov/help/faq/index.html.
14. U.S. Copyright Office, Special Handling (Circular 10), at 2 (Sept. 2017).
15. 7 U.S.C. § 408(f)
16. Id. (emphasis added).
17. Petitioner and Respondent sparred over this reading of section 411(c) in their briefs in support of, and opposition to, writ of certiorari in Fourth Estate. Compare Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 2017 WL 4641783 (U.S.), with Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 2017 WL 5989992 (U.S.). But neither noted the similarity of the three-month time frame to section 408(f).
18. Even if this reading results in some inconsistency in the definition of registration, “the presumption [of consistent use] is not rigid and readily yields whenever there is such variation in the connection in which the words are used as reasonably to warrant the conclusion that they were employed in different parts of the act with different intent.” Gen. Dynamics Land Sys. v. Cline, 540 U.S. 581, 595 (2004).
19. See generally The Berne Convention: Its History And Its Key Role In The Future, 3 J.L. & Tech. 1, 2 (1988).
20. See, e.g., Cosmetic Ideas, 606 F.3d at 620 (citing 2 Nimmer on Copyright §7.16(B)(3)(b)(ii)(2013)).
21. La Resolana, 416 F.3d at 1204; Ryan v. Carl Corp., No. C 97-3873 FMS, 1998 U.S. Dist. LEXIS 9012, at *8 (N.D. Cal. June 15, 1998).
22. Ross v. Blake, 136 S. Ct. 1850, 1855 (2016).
23. See for example the ongoing saga of Oracle against Google about copyrighting an API computer code. E.g., Oracle Am., Inc. v. Google, Inc.,750 F.3d 1339 (Fed. Cir. 2014).
24. John Muller & Co. v. N.Y. Arrows Soccer Team, Inc., 802 F.2d 989, 990 (8th Cir. 1986).
25. Report of the Register of Copyrights on the General Revisions of the U.S. Copyright Law, 87th Cong., 1st Sess. 75 (1861).
26. Id. (quoting H.R. Rep. No. 609, 100th Cong., 2d Sess. 41-42 (1988)).
27. See, e.g., Patrick Collins, Inc. v. Doe, 843 F. Supp. 2d 565, 568 (E.D. Pa. 2011) (declining to subpoena twenty-six ISPsuntil plaintiff could at least provide proof that the Copyright Office would end up registering the copyright).
28. 7 U.S.C. § 408(f)(2)-(3).
29. The inclusion of this backdating provision is also cited as a textual support for the application approach because submitting the application is the critical step in “registration.” However, that support should not be overstated because the application time period is not overly-determinative of the copyright owner’s rights. The copyright owner can still seek actual damages even before the effective date of copyright. Gerig v. Krause Publs., Inc., 58 F Supp 2d 1261 (D. Kan. 1999).
30. U.S. Copyright Office, Special Handling (Circular 10), at 2 (Sept. 2017).
31. See U.S. Copyright Office, Special Handling (Circular 10), at 2 (Sept. 2017), https://www.copyright.gov/circs/circ10.pdf.
32. Patrella v. Goldwyn-Mayer, Inc., 134 S. Ct. 1962, 1969 n.4 (2014).
33. 606 F.3d at 620 (quoting H.R. Rep. No. 94–1476, at 158 (1976)).
34. La Resolana, 416 F.3d at 1205-06.
35. Id. at 1206. Any discussion of the importance of registration, however, must contend with the fact that Congress excused foreign copyrights from this requirement. This may have been a necessary sacrifice in order to become a member of the Berne Convention, but need not suggest that Congress wanted to shrink the registration requirement any more than absolutely necessary.