Over an Apple Barrel: Copyright Lawsuits Must Satisfy Registration Approach

By James Carlson

In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571 (2019) (hereinafter “Fourth Estate decision”), the Supreme Court of the United States ended a split between the regional circuits over whether a copyright holder must first obtain a copyright registration from the United States Copyright Office (hereinafter “Copyright Office”), or if the act of filing an application for copyright registration was sufficient to bring suit in federal court.  The Supreme Court held that “registration” under 17 U.S.C. § 411(a) means the Register of Copyrights (hereinafter “Register”) registered a copyright after examining a properly filed application, thus requiring a completed registration prior to a copyright owner enforcing a copyright in federal courts.[1]

Historically, § 411(a)’s predecessor statute provided that “[n]o action or proceeding shall be maintained for infringement of copyright in any work until . . . the deposit of copies and registration of such work shall have been complied with.”  See 17 U.S.C. § 13 (1970 ed.).  Following Congress’ 1976 revision of the registration requirement, several regional circuits interpreted the new statute to advance an “application approach” where registration occurs where a copyright owner submits a proper application to the Copyright Office.  For example, the United States Court of Appeals for the Fifth Circuit found in Apple Barrel Productions, Inc. v. Beard, 730 F. 2d 384, 386-387 (5th Cir. 1984) that “[i]n order to bring suit for copyright infringement, it is not necessary to prove possession of a registration certificate” but that “one need only prove payment of the required fee, deposit of the work in question, and receipt by the Copyright Office of a registration application.”  In the United States, the Ninth Circuit followed the Fifth Circuit’s example, while the Tenth Circuit used a registration approach based on the plain language of § 411(a) to require registration prior to commencement of a copyright lawsuit.  Other regional circuits had not firmly addressed the registration requirement issue.

Turning to the factual and legal issues in the Fourth Estate decision, Fourth Estate Public Benefit Corporation (hereinafter “Fourth Estate”) is a news organization that produces online journalism.  Wall-Street.com, LLC (hereinafter “Wall-Street) operates a news website that licensed content produced by Fourth Estate.  However, after cancelling the license agreement, Wall-Street continued to display articles produced by Fourth Estate, and Fourth Estate subsequently sued Wall-Street for copyright infringement.  Because the Register had not yet acted on Fourth Estates’ applications for registration of the allegedly infringed articles, the District Court dismissed Fourth Estates’ lawsuit.   At the appellate level, the Eleventh Circuit decided to follow the registration approach of the Tenth Circuit and affirmed the dismissal.

Consequently, the Supreme Court held the registration approach to reflect “the only satisfactory reading of § 411(a)’s text” and affirmed the Eleventh Circuit’s decision.  Specifically, the Supreme Court reasoned that allowing the application approach would render § 411(a)’s refusal by the Register requirement “superfluous” and negate the Register’s ability to become a party where the copyright lawsuit could be filed and resolved before the Register acted on an application.  Likewise, various preregistration options of § 408(f) would have little value where a copyright owner could complete an application for registration and “immediately commence an infringement suit.”  Moreover, none of Fourth Estates’ arguments regarding “the specter that a copyright owner may lose the ability to enforce her rights” could sway the Supreme Court.

In conclusion, copyright owners are advised to be diligent in obtaining registrations on their copyrightable intellectual property.  The amount of time between filing an application for registration and obtaining the registration continues to grow at the Copyright Office.  Therefore, if a copyright owner waits until the statute of limitations deadline approaches, the copyright owner may be forced to use the Copyright Office’s special handling procedures to expedite the required applications for registration or face certain dismissal in federal court.

[1] A copyright lawsuit may also be filed where the Copyright Office refuses registration and where notice of the lawsuit is served on the Register.