Unregistered Complaints.

AuthorDavik, Christine Suzanne

TABLE OF CONTENTS ABSTRACT 357 I. INTRODUCTION 360 II. CONTINUAL CONGRESSIONAL CHANGE TO SECTION 411(A) 363 A. Promulgating Section 411(a) of the 1976 Copyright Act 363 B. Berne Convention Implementation Act of1988 366 C. Copyright Reform Act of1993 370 D. Family Entertainment and Copyright Act of 2005 372 III. CONFLICTING JUDICIAL OPINIONS 374 A. The "Application Approach" 377 B. The "Registration Approach" 380 C. The U.S. Supreme Court's Approach 382 IV. DISPENSING WITH THE REGISTRATION PREREQUISITE FOR INFRINGEMENT ACTIONS 385 A. Purported Need to Incentivize Copyright Registration 385 1. More Important Incentives Remain 386 i. Prima Facie Validity 387 ii. Statutory Damages and Attorney's Fees 388 iii. Questionable Impact 389 2. Acquisition of Materials for the Library of Congress 389 i. Section 407: Mandatory Deposit and Major Exemptions 390 ii. Section 408: Deposits of Questionable Utility 392 iii. Section 704: Deposit and Destroy 394 iv. Arguable Inequities Associated with "Library Building" 395 B. Copyright Office as "Gatekeeper" 396 C. Independent Justifications for the Elimination of Section (411) (a)'s Registration Requirement 400 1. Copyright Enforcement 400 2. Inconsistencies: Inside and Out 403 3. Intersection Between Trademarks and Copyrights 404 D. Formalities: Back to the Future 405 V. CONCLUSION 408 On March 4, 2019, the U.S. Supreme Court handed down its decision in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC(1) This much-anticipated opinion resolved the split among U.S. Courts of Appeals concerning the point in time when a copyright owner is first able to file suit against an alleged infringer. (2) Unlike most areas of law, U.S. copyright owners cannot simply seek relief immediately upon detecting infringement of their work. Instead, copyright owners must ensure that they have first complied with a peculiarity of copyright law, namely registering the work with the U.S. Copyright Office. (3)

Unfortunately, the registration process can take months and in some cases years to complete, (4) thereby significantly delaying the ability of copyright owners to stop infringement, despite federal copyright protection existing automatically upon creation of the work. (5) As such, the author of an unregistered work is left with a right to prevent copyright infringement but an inability to do so. (6) Adding to the inequities of this situation is the fact that owners of foreign works do not have to comply with this registration prerequisite; instead, they can proceed directly to federal court to protect their work. (7)

This incongruent treatment is the result of changes made to the Copyright Act by Congress some thirty years ago in order to comply with the United States' foreign treaty obligations created by the decision to become a member of the Berne Convention ("Berne"), the premier international copyright agreement. (8) More specifically, Berne provides that "the enjoyment and the exercise of [copyright] shall not be subject to any formalities," and the U.S. Copyright Act's registration requirement found in Section 411(a) was regarded as violating this principle. (9) Instead of simply repealing the provision, Congress amended it to apply only to owners of U.S. works, thereby creating an unfortunate double standard. (10)

For years, many federal courts attempted to ameliorate the unfairness of Congress' decision to place this additional obstacle only upon owners of U.S. works seeking protection from copyright infringement. (11) To accomplish this, federal courts interpreted the language "no civil action for infringement of the copyright in any United States work shall be instituted until... registration of the copyright claim has been made in accordance with this title" to be met as soon as a complete application was submitted to the U.S. Copyright Office. (12) The aptly named "application approach," allowed copyright owners of U.S. works to effectively apply for federal copyright registration and file a copyright infringement lawsuit on the same day. Accordingly, federal courts adopting this approach largely equalized the ability of all copyright owners to access the federal court system, regardless of whether the work allegedly infringed was a U.S. work or a foreign work.

Nonetheless, not all federal courts subscribed to this line of reasoning. (13) Others held that apart from the narrowly defined categories of works exempt from Section 411(a)'s mandate, the statute was not fulfilled until the Register of Copyrights actually registered the work. (14) Consequently, courts following the so-called "registration approach" would not allow a copyright infringement case involving a U.S. work to proceed unless there was proof of a federal copyright registration.

The U.S. Supreme Court granted certiorari in Fourth Estate to ascertain when registration occurs under the Copyright Act and thereby settle the dispute among U.S. Courts of Appeals on this issue. (15) Ultimately, the Court decided Section 411(a) requires more than the submission of application materials for federal copyright registration. According to the Court, "registration" does not take place until the Copyright Office has decided whether a given work is entitled to registration, thus adopting the "registration approach." (16) While the Court appears to have decided this case correctly from a statutory interpretation standpoint, the result is exceptionally problematic.

The U.S. Supreme Court's decision in Fourth Estate serves as a clarion call for much-needed amendments to the Copyright Act. Further, it is not enough to simply redefine "registration" to include the act of filing for a federal copyright registration. In order to properly account for technological changes in the methods and speed by which copyrightable works are now created, reproduced, and distributed, all copyright owners should be able to access the courthouse without delay. Removal of this antiquated requirement will level the proverbial playing field between U.S. works and foreign works, while also adding much needed international harmonization to an area of law that Congress has repeatedly amended in previous attempts to meet this stated objective. (17) Ironically, in advocating for the repeal of Section 411(a), this Article stands in contrast to the recent scholarly trend in the field of copyright law advocating for more, not fewer, formalities. (18)

This Article begins in Part I by reviewing relevant provisions of the Copyright Act and examining earlier, unsuccessful legislative attempts to eliminate Section 411(a)'s registration prerequisite. Next, Part II discusses the federal circuit court split leading to the Supreme Court's decision. Additionally, this section considers the unanimous opinion issued by Justice Ruth Bader Ginsburg, including her acknowledgment that the current situation is "unfortunate" and "has not worked as Congress likely envisioned." (19) Part III analyzes the numerous arguments in support of and in opposition to the repeal of the registration requirement. Ultimately, this Article concludes the overwhelming advantages to amending Section 411(a) outweigh any perceived or actual drawbacks.


    The Copyright Act of 1976 protects "original works of authorship fixed in any tangible medium of expression." (20) The types of works covered by copyright law are exceptionally broad and include photographs, computer programs, musical compositions, and architectural works. (21) As mentioned above, copyright protection exists instantly upon creation of the work and automatically provides the owner with a comprehensive set of exclusive rights such as reproduction, distribution, and public performance or display. (22) Consequently, anyone who violates these rights is an infringer of the copyright. (23) Nevertheless, the Copyright Act does not allow the copyright owner to immediately enforce these rights. (24)

    1. Promulgating Section 411(a) of the 1976 Copyright Act

      In connection with the enactment of the Copyright Act of 1976, Congress made several changes to earlier law concerning the ability of a copyright owner to bring suit for infringement. However, eliminating the necessity of a federal registration was not one of them. As the House Report accompanying the 1976 revisions affirmed:

      The first sentence of Section 411(a) restates the present statutory requirement that registration must be made before a suit for copyright infringement is instituted. Under the bill, as under the law now in effect, a copyright owner who has not registered his claim can have a valid cause of action against someone who has infringed his copyright, but he cannot enforce his rights in the courts until he has made registration. (25) Instead, the changes were largely limited to issues surrounding the procedures for filing a copyright infringement suit in cases where the owner of a work had attempted to register it, but the application was eventually denied by the Register of Copyrights. (26) Many courts interpreted the precursor to Section 411(a) as still requiring the owner to obtain the registration certificate, and this entailed bringing a mandamus action against the Registrar. (27) Only after this step was complete could the owner of the refused work proceed with the lawsuit. (28) To alleviate the continued need to follow such a convoluted practice, Section 411(a) also incorporated the following language: "[If] registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights." (29) Moreover, additional language was included to clarify that the presence or absence of the Register of Copyright in a particular suit would not impact the ability of the case to go forward. (30)

      Notwithstanding Section 411(a) of the 1976 Copyright Act, many of the more progressive modifications were made...

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