Application Is Not Registration: U.S. Supreme Court Resolves Circuit Split on Copyright Act Section 411(a) Registration Requirement

AuthorE. Scott Johnson - Julius Bodie
PositionE. Scott Johnson is a shareholder with Baker Donelson in Baltimore, Maryland. He is cochair of the Copyright, Media and Entertainment Group. He can be reached at johnson@ Julius Bodie is an associate with Baker Donelson in Washington, D.C. He is a member of the firm's Global Business Team as well as the Copyright, Media and ...
©2019. Published in Landslide®, Vol. 11, No. 6, July/August 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in
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U.S. Supreme Court Resolves
Circuit Split on Copyright Act Section
411(a) Registration Requirement
By E. Scott Johnson and Julius Bodie
On March 4, 2019, in a unanimous decision, the U.S.
Supreme Court held that copyright owners must wait
for the U.S. Copyright Ofce to take action on an
application for registration before commencing an
infringement suit. The holding in Fourth Estate Pub-
lic Benet Corp. v., LLC1 settled a
long-standing circuit split on the interpretation of the registra-
tion requirement in § 411(a) of the U.S. Copyright Act.
Copyright protection subsists from the moment an original
work of authorship is xed in a tangible medium of expres-
sion. A copyright owner may, but is not required to, register
copyright at any time during the very long term of copyright
protection. Registering a copyright provides several legal
advantages to a copyright owner, but is a prerequisite for ling
a copyright infringement lawsuit. That seems simple enough,
but courts have long grappled with how the registration
requirement can be satised by a plaintiff seeking to le a law-
suit for copyright infringement. Two conicting interpretations
of § 411(a)’s registration requirement had emerged: (1) the
“application approach,” which allows copyright owners to sue
for infringement upon submission to the Copyright Ofce of an
application, deposit materials, and application fee; and (2) the
“registration approach,” which allows copyright owners to le
suit only after the Copyright Ofce has acted on an application
by issuing a registration certicate or rejecting the application.
In upholding the registration approach, the Court removed
uncertainty from a requirement that should be, and now is,
quite easy to understand.
The United States has a long, checkered history of impos-
ing burdensome requirements, called formalities, on those
seeking to secure, maintain, or enforce copyrights. Such for-
malities have included registration, notice, renewal, deposit,
and manufacturing requirements, with draconian penalties
for noncompliance, usually forfeiture of copyright. For many
years, failure to renew a U.S. copyright registration during
the last year of its initial copyright term injected the work
into the public domain. The notice requirement was even
worse. Works published without a proper copyright notice
lost copyright protection immediately upon publication.
When the U.S. joined the Berne Convention in 1989, it was
required to accord national treatment to works of other Berne
member countries, and to eliminate formalities as barriers to
protection. Although most formalities have been eliminated
or defanged, some persist, and the most notable surviving for-
mality in U.S. copyright law is the registration requirement.
Compared to the harsh formalities that long distinguished
U.S. copyright law, registration is a “soft” formality. Reg-
istration can be secured at any time during the life of the
copyright, and on an expedited basis if required for litigation.
The Berne Convention Implementation Act of 1988 amended
the U.S. Copyright Act to eliminate formalities, at least as
applicable to works from other Berne member countries, for
which the U.S. registration requirement is waived. Foreign
authors can sue for copyright infringement in U.S. federal
courts without a copyright registration.

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