Copyright Registration: Why the U.s. Should Berne the Registration Requirement

JurisdictionUnited States,Federal
Publication year2020
CitationVol. 36 No. 3

Copyright Registration: Why the U.S. Should Berne the Registration Requirement

David R. Carducci

Georgia State University College of Law,

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David R. Carducci*


In the United States, registration is not a requirement to obtain copyright protection.1 Rather, copyright arises automatically in "original works of authorship" the moment they are created and "fixed in a tangible medium of expression."2 However, copyrights are not self-enforcing.3 In fact, a copyright would be of no value

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without the ability to sue for infringement to protect the owner's exclusive rights.4

Despite its permissive nature, registration with the United States Copyright Office (Copyright Office) "establishes a claim to copyright" while offering domestic copyright owners certain benefits that are not available to unregistered works.5 First, a copyright owner cannot bring a civil action for infringement unless he registers the work with the Copyright Office.6 Additionally, the owner is not eligible to receive statutory damages or attorney's fees unless the work was registered prior to the infringement or within three months of the work's publication.7 Moreover, registration creates prima facie evidence of the copyright's validity, while also allowing the owner to further register the work with the United States Customs and Border Protection to guard against the importation of infringing copies.8

Though it is undisputed that registration is required to obtain the above benefits, the United States Circuit Courts of Appeals were divided in their determination of what constituted "registration"

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under the Copyright Act of 1976 (Copyright Act).9 This circuit split raised the issue of whether registration—sufficient to sue for infringement per § 411 of the Copyright Act—occurs when the Copyright Office receives the work's application (the "application approach"), or whether the Copyright Office must issue the certificate of registration prior to the plaintiff filing suit (the "registration approach").10 On June 28, 2018, the United States Supreme Court granted certiorari to an Eleventh Circuit case, Fourth Estate Public Benefit Corp. v., LLC, to decide the issue and provide clarity to the circuit courts.11

When examining congressional intent regarding the point at which registration tolls, one wonders what the practical basis is for the

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requirement. Under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention), registration is a formality that is not required in any instance.12 In fact, Article 5(2) of the Berne Convention states, "[t]he enjoyment and the exercise of [the copyright owner's] rights shall not be subject to any formality . . . ."13 As the United States is a Berne Convention member, one would think that it should follow the standard on formalities set forth by the Berne Convention in the same manner as the other 175 Berne member states.14

The following note discusses the registration requirement under the Copyright Act and its interplay with the Berne Convention's prohibition of formalities. Part I explains the recent division between the United States Circuit Courts of Appeals and provides an in-depth analysis of the application and registration approaches. Part II details the Supreme Court's adoption of the registration approach in Fourth Estate Public Benefit Corp. v., LLC. Part III gives a brief history of the Berne Convention and examines registration under Berne as a nonessential formality. Finally, Part IV offers a proposed long-term solution to amend the Copyright Act by making registration a truly permissive formality and eliminating registration as a prerequisite to file suit for the infringement of United States works.

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I. A Split in the Circuits

A. Registration as a Prerequisite to Bring a Civil Suit for Copyright Infringement

The question of timely registration becomes relevant when an unregistered work has been infringed and the copyright owner seeks to file suit.15 When this occurs, courts are concerned with the points at which the "plaintiff seeks to register; the Copyright Office issues the certificate; and the lawsuit commences."16 Courts will dismiss an infringement suit if the plaintiff has filed a complaint before registering the copyright with the Copyright Office.17

Section 410(d) of the Copyright Act states, "[t]he effective date of a copyright registration is the day on which an application, deposit, and fee . . . have all been received in the Copyright Office."18 Legislative history further provides, "[w]here the three necessary elements are received at different times the date of receipt of the last of them is controlling, regardless of when the Copyright Office acts on the claim."19 Unfortunately, the Copyright Act gives a circular definition of "registration," which provides little clarity regarding what it means to effectively register a work.20 As such, controversies arise in determining the "effective date" of registration so that a plaintiff may initiate an infringement suit. Before Fourth Estate, two views existed on this matter: (1) registration does not occur until the Register of Copyrights issues the registration certificate (the registration approach), and (2) the registration requirement is met when the Copyright Office receives the completed application, deposit, and fee (the application approach).21

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1. The Registration Approach

Circuit courts that adopted the registration approach applied a formalistic reading of the Copyright Act's plain language.22 As its name suggests, this approach "tends towards hyper-technical application, in which the paper certificate is required as a condition to suit."23 Beyond the approach's plain reading of the Copyright Act, the Tenth Circuit gave credence to the registration approach by citing the oft-quoted Judge Learned Hand:

[T]he text of the [statute] denies the right to sue for infringement "until the provisions of this title with respect to the deposit of copies and registration of such work shall have been complied with[]" . . . . Since the owner must submit an application and pay the required fees in order to make a deposit, we can think of no other added condition for "registration" but acceptance by the Register.24

The Tenth Circuit also relied on a history of statutory interpretation—dating back to the Copyright Act of 1909—that similarly requires registration to be completed prior to filing suit25 More recently, in 2017, the Eleventh Circuit found in Fourth Estate

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that "the text of the Copyright Act makes clear the registration approach . . . is correct."26 After examining the registration process put forth in §§ 408 and 410, the Eleventh Circuit concluded "[the Copyright Act] establishes that registration can occur only after application and examination."27

2. The Application Approach

Opposite the registration approach is the application approach. Under the application approach, § 411's registration requirement is met when the Copyright Office receives a work's completed application, deposit, and fee.28 The Fifth and Ninth Circuits officially adopted the application approach prior to the Supreme Court's decision in Fourth Estate.29 Although the Eighth Circuit did not formally employ this approach, it endorsed it in dictum.30 Additionally, the Seventh Circuit has self-contradicting dicta as to which approach best comports with the statute.31

When examining these two "interpretive camp[s]," the Tenth Circuit noted that the application approach uses a "policy-based methodology":

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Looking to the Act, courts adopting the Application approach conclude that because a copyright owner can sue regardless of whether an application for registration is ultimately granted or rejected, delaying the date on which a copyright owner can sue is a senseless formality. These courts also rely on the language of § 408, that registration is not a condition of copyright protection, and § 410(d), that once a copyright is registered, the effective date of the registration relates back to the date the Copyright Office received the last of the filing materials (i.e., the deposit, fee, and application).

Finally, these courts look to the date of the application for registration as a condition to filing an infringement action, [but] issuance of a registration certificate is a condition to statutory damages and other statutory remedies. Thus, the argument goes, a copyright owner can get into court without being held hostage by the vagaries of the Copyright Office in its ministerial act of issuing the certificate.32

Further, some argue that the application approach helps ensure infringement filings are not delayed for months, if not longer, thereby allowing plaintiffs to sue without fearing that the statute of limitations will expire.33 An amicus brief submitted to the Supreme Court on behalf of Fourth Estate Public Benefit Corporation noted that "delays of a year or more are not uncommon," and processing time for some works "is so long that it exceeds the Copyright Act's three-year limitations period for infringement suits."34

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B. Circuits Applying the Registration Approach

The Eleventh Circuit Court of Appeals recently weighed the two approaches and opted for the registration approach in Fourth Estate Public Benefit Corp. v., LLC—the case in which the Supreme Court ultimately resolved the circuit split.35 In this case, continued to display online articles produced by Fourth Estate Public Benefit Corporation despite termination of the parties' licensing agreement.36 Though Fourth Estate filed an application to register the works at issue, the Copyright Office had not yet registered the copyrights at the time Fourth Estate filed suit against for...

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