By Jonathan Wieder1

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.

* * * * *

The Supreme Court will take up the reg­is­tra­tion ver­sus appli­ca­tion debate in the con­text of Fourth Estate Pub­lic Ben­e­fit Cor­po­ra­tion LLC v., 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.

* * * * *

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.



1. 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., 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., 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).

7. Id. at 1341.

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,

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., LLC, 2017 WL 4641783 (U.S.), with Fourth Estate Pub­lic Ben­e­fit Corp. v., 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),

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.