Sometimes a Registration Is Just a Registration and an Application Is Just an Application: the District of Minnesota in Asche & Spencer Music, Inc. v. Principato-young Entertainment, Inc. Correctly Held That a Copyright Is Only Registered or Denied When the Copyright Office Registers or Denies the Claim

• Publication year: 2022

51 Creighton L. Rev. 455. SOMETIMES A REGISTRATION IS JUST A REGISTRATION AND AN APPLICATION IS JUST AN APPLICATION: THE DISTRICT OF MINNESOTA IN ASCHE & SPENCER MUSIC, INC. V. PRINCIPATO-YOUNG ENTERTAINMENT, INC. CORRECTLY HELD THAT A COPYRIGHT IS ONLY REGISTERED OR DENIED WHEN THE COPYRIGHT OFFICE REGISTERS OR DENIES THE CLAIM

SOMETIMES A REGISTRATION IS JUST A REGISTRATION AND AN APPLICATION IS JUST AN APPLICATION: THE DISTRICT OF MINNESOTA IN ASCHE & SPENCER MUSIC, INC. V. PRINCIPATO-YOUNG ENTERTAINMENT, INC. CORRECTLY HELD THAT A COPYRIGHT IS ONLY REGISTERED OR DENIED WHEN THE COPYRIGHT OFFICE REGISTERS OR DENIES THE CLAIM

-Matthew Wurstner '18

I. INTRODUCTION

Under § 411(a) of the 1976 Copyright Act (fn1) ("Act"), no civil action for copyright infringement may be brought until registration of the copyright has been made or refused by the Copyright Office.(fn2) The Act grants to an author a copyright in the work of authorship at the moment of its creation.(fn3) Congress sought, however, to provide a robust catalog of copyrighted works, and thus provided an incentive to register copyright claims.(fn4) One who registers his or her copyright may sue for infringement, receive statutory damages, and receive attorney's fees from the infringer.(fn5) Further, possession of a certificate of registration is prima facie evidence of a valid copyright, an essential element of an infringement action.(fn6) Registration of a copyright remains a voluntary choice by the owner.(fn7)

Circuits are generally split into two camps concerning when registration of a copyright actually occurs: those following the registration approach and those following the application approach.(fn8) Courts that use the registration approach argue that, under the Act, registration does not occur until the Register of Copyrights has actually approved or denied the applicant's copyright claim.(fn9) Courts using the application approach, however, argue that registration occurs when the applicant submits an application, copies of the work at issue, and the application fee.(fn10)

In Asche & Spencer Music, Inc. v. Principato-Young Entertainment, Inc.,(fn11) the United States District Court for the District of Minnesota analyzed the timing of registration in an infringement action.(fn12) The district court noted that the plaintiff's copyright claim had not yet been registered and dismissed the infringement suit.(fn13) The court adopted the registration approach and reasoned that § 411(a) of the Act required action by the Copyright Office before a claim for infringement could proceed.(fn14)

This Note will first review the facts and holding of Asche & Spencer Music.(fn15) This Note will then discuss the general requirements for registration under the Act and review the circuit split that currently exists regarding when registration occurs.(fn16) Then, this Note will argue that the district court correctly required a determination by the Copyright Office before a claim is registered.(fn17) Lastly, this Note will predict a future shrinking of the circuit split and propose changing the name of the registration approach.(fn18)

II. FACTS AND HOLDING

In Asche & Spencer Music, Inc. v. Principato-Young Entertainment, Inc.,(fn19) Asche & Spencer Music brought a copyright infringement claim before the United States District Court for the District of Minnesota.(fn20) Asche & Spencer Music composed, wrote, and produced its own music, which it used to create an online library available for li-cense.(fn21) Principato initially contacted Asche & Spencer Music intending to secure a license to use its music in a web series.(fn22) Asche & Spencer Music soon discovered that Principato had already been using its music without license.(fn23) Asche & Spencer Music alleged that Principato used approximately twenty of its works for a total of over four hundred allegedly unauthorized uses.(fn24) Then, Asche & Spencer Music submitted its application materials to the Copyright Office seeking registration of copyrights in the disputed works.(fn25) Before the Copyright Office issued a determination regarding the claims, Asche & Spencer Music filed its infringement complaint before the district court.(fn26) Principato then moved to dismiss and claimed that without an actual registration or denial from the Copyright Office, Asche & Spencer Music could not maintain a cause of action for infringe-ment.(fn27) The district court dismissed the complaint, stating that using the registration approach, § 411(a) of the Act required a determination from the Copyright Office before a claim for infringement could proceed.(fn28)

The district court first examined the plain language of § 411(a) and emphasized how the statute stated that an action for infringement cannot be instituted until registration had been made or re-fused.(fn29) The court then noted that the statute showed the Copyright Office has the burden of registering a copyright and reasoned that the word registration refers to the Copyright Office's determination with respect to the work.(fn30) This proposition, the court asserted, squared with the Act's back-dating provision, § 410(d), which contrasts the date of application with the date of registration.(fn31) The court also noted how the Copyright Office itself uses the registration approach.(fn32)

Asche & Spencer Music argued that use of the registration approach would lead to absurd results, most notably that regardless of registration or denial, Asche & Spencer Music would still be able to bring the claim in the future.(fn33) The court explained that this argument missed the point because allowing a plaintiff to bring a claim without a registered copyright would frustrate Congress's intent to allow the Copyright Office to comment on a copyright.(fn34) Further, Asche & Spencer Music claimed that adoption of the registration approach could potentially allow the statute of limitations to pass while waiting for a decision from the Copyright Office.(fn35) The district court reasoned that because the statute of limitations for infringement actions is three years after discovery of infringement, and processing a copyright claim takes the Copyright Office eight to thirteen months with expedited processing available, this argument was unfounded.(fn36) Asche & Spencer Music also argued that the registration approach would allow an infringer to continue his or her infringement while the owner waited for a decision from the Copyright Office.(fn37) This argument was cast aside quickly, as the court noted that the infringer would still be liable for this infringement.(fn38) The court disagreed with Asche & Spencer Music's labeling of registration as a senseless formality and reasoned that Congress sought a robust catalog of copyrighted material, and thus provided incentives to copyright registration.(fn39) The court also explained that the registration approach would provide clarity to litigation because registration of a copyright changes the evidentiary burden on Asche & Spencer Music.(fn40) Accordingly, because Asche & Spencer Music did not have a registered or denied copyright claim, the district court granted Principato's motion to dismiss.(fn41) On January 18, 2017, Asche & Spencer Music re-filed its complaint and this time alleged that the Copyright Office had issued a certificate of registration.(fn42)

III. BACKGROUND

A. THE 1976 COPYRIGHT ACT: CONGRESS MAKES REGISTRATION

VOLUNTARY BUT PROVIDES INCENTIVES FOR THOSE WHO REGISTER

Under Article I, Section 8, Clause 8 of the United States Constitution, Congress is empowered to promote progress of the arts through creation of copyrights in authors' works.(fn43) With the passage of the 1976 Copyright Act, an author is deemed to have a copyright in his or her work immediately upon its creation.(fn44) No further condition is placed for protection; once the work exists, an infringer can be liable for unauthorized use.(fn45) Congress, seeking a large catalog of copyrighted material, initially made copyright registration compulsory but reversed course and made it voluntary under the Act.(fn46) To incentivize authors to register their works, Congress provides numerous benefits to those who register.(fn47) Owners of registered copyrights can receive attorney's fees and statutory damages.(fn48) Also, possession of the copyright is considered prima facie evidence of a valid copyright in an infringement trial.(fn49) Most importantly, registration (or denial) of a copyright is required before the owner can bring a claim for infringement.(fn50)

Registration of a copyright requires the owner submit copies of his or her work, an application, and fees to the Copyright Office.(fn51) Upon examination, the Register of Copyrights ("Register") determines if a work is copyrightable, enters the work into the register, and issues a certificate to the applicant.(fn52) Should the Register deny the claim, the author may still bring suit for infringement, but the Copyright Office has the statutory right to intervene in the suit.(fn53)

A circuit split has developed over when a claim is registered under the Act.(fn54) There are two major approaches to the statutory scheme: the registration approach and the application approach.(fn55) Courts following the registration approach reason that under the Act, a claim is registered when it is formally registered or denied by the Copyright Office.(fn56) Courts adopting the application approach reason that a claim is...