IP Law Daily High Court delves into meaning of ‘registration’ as prerequisite for copyright infringement suit
Tuesday, January 8, 2019

High Court delves into meaning of ‘registration’ as prerequisite for copyright infringement suit

By Thomas Long, J.D.

The U.S. Supreme Court today heard oral arguments in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, in which news publisher Fourth Estate asks the Court to resolve a circuit split regarding whether a plaintiff must obtain a copyright registration before bringing a claim for copyright infringement under the Copyright Act. While the Justices seemed reluctant to depart from the apparently clear language of the prerequisite for filing suit contained in 17 U.S.C. §411(a), they also appeared to leave open the possibility that there could be some flexibility to the meaning of "registration," based on the way the term is used in other sections of the Copyright Act.

Fourth Estate Public Benefit Corporation produced online news content and licensed its articles to participating websites. News website operator Wall-Street.com, LLC, obtained licenses to multiple articles that were produced by Fourth Estate. The license agreement between Wall-Street and Fourth Estate required Wall-Street to remove all licensed content from its website before cancelling its account with Fourth Estate. Fourth Estate sued Wall-Street because Wall-Street continued to display licensed articles after cancelling its account with Fourth Estate. Wall-Street and an individual co-defendant sought dismissal on the ground that the Copyright Act allowed infringement suits only if the Register of Copyrights had approved or denied an application to register the copyright at issue.

Although a copyright in a work "subsists from its creation," pursuant to Section 302(a) of the Copyright Act, Section 411(a) of the Act provides that "no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title." In interpreting Section 411(a)’s requirement of a registration prior to bringing an infringing suit, some circuits have adopted the so-called "registration approach," making an issued registration a prerequisite to an infringement suit. Other circuits have followed the "application approach," which requires copyright owners to plead only that they had applied for copyright registration by the time the alleged infringement took place. Fourth Estate is seeking review of a decision of the U.S. Court of Appeals in Atlanta, in which the Eleventh Circuit, affirming a district court decision dismissing Fourth Estate’s complaint, concluded that the registration approach was more consistent with the language and intent of the Copyright Act.

Fourth Estate’s petition asks whether "registration of [a] copyright claim has been made within the meaning of § 411(a) when the copyright holder delivers the required application, deposit, and fee to the Copyright Office, as the Fifth and Ninth Circuits have held, or only once the Copyright Office acts on that application, as the Tenth Circuit and, in the decision below, the Eleventh Circuit have held."

Petitioner’s argument. Aaron R. Panner, of Kellogg, Hansen, Todd, Figel & Frederick, PLLC, appeared on behalf of petitioner Fourth Estate Public Benefit Corporation. Panner argued that Section 411(a)’s registration requirement referred to the copyright owner’s compliance with the registration requirement of Section 408(a). Section 408 sets forth the general requirements for registration, and Section 408(a) states that registration is not a condition of copyright protection. Chief Justice Roberts asked Panner whether he considered Section 410(d) of the ask "superfluous." That substation states that "The effective date of a copyright registration is the day on which an application, deposit, and fee, which are later determined by the Register of Copyrights or by a court of competent jurisdiction to be acceptable for registration, have all been received in the Copyright Office." Panner stated that he did not because of the second portion of the subsection, which provides that the registration is deemed effective when the application fee and deposit have been received in a form that is acceptable for registration as later determined by the Office or by a court. In Panner’s view, Section 410(d) supported the petitioner’s contention that in a case in which the Register has not yet acted with respect to an application, a court could determine whether the necessary steps have been taken for registration to be effective. Panner stated that the petitioner’s point was that the text of the Act made it clear that registration was made upon submission of the required materials.

Justice Sotomayor pointed out that a registration was not made public until it was granted by the Office, and opined that "it seems illogical to think that you're going to get rights against the third-party who's not on notice that your copyright has been registered because it's not public." Panner responded that nothing in the Act states that notice is required before a copyright holder has substantive rights. Chief Justice Roberts asked whether a copyright holder could assert the benefits of registration—such as filing an infringement suit—before the application for registration had been accepted by the Register. In response, Panner said, "Section 410(d) says the effective date of registration is the date on which the required application, deposit, and fee have been received in a form acceptable for registration," and argued that most of the time registration is essentially a ministerial question of submission of those materials. Panner also point out that "everyone agrees that" Section 412(2)—which provides that registration is a prerequisite for seeking statutory damages and attorney fees—has the same meaning.

Justice Kagan, while acknowledging that she understood the policy arguments being made by the petitioner—particularly with respect to the potential for delay in obtaining an issued registration and the copyright holder’s inability during that time to obtain injunctive relief against an infringer—questioned whether the statutory text could be read that way. Returning to the language of Section 411(a), which contains two sentences—the first referring to registration having been made, and the second referring to the copyright holder’s rights when registration has been refused by the Register, which the sentences separated by the word "however"—Justice Kagan expressed the view that the only way to consistently read these sentences was to read the first sentence as requiring registration to have been made by the Register. Although the word "register" had some flexibility in meaning in the Copyright Act in general, Justice Kagan doubted whether this flexibility applied to Section 411(a).

Respondent’s argument. Peter K. Stris, of Stris & Maher LLP, appeared for respondent Wall-Street.com, LLC. According to Stris, the statutory text is plain and means that the Register of Copyrights must make a registration determination before an applicant can sue for infringement. In support of this argument, Stris pointed out that Section 410 indicated that whether registration is granted or refused, the Register is the one who is acting. Justice Breyer asked Stris whether the effective date provision of Section 410(d) had an effect on this argument, and whether it meant that "registration" took place when the necessary documents were received, as long as the application were approved later. Stris answered by stating that the effective date provision requires a determination by someone—either the Register or a court—before there is an effective date of registration.

Replying to a question from Justice Gorsuch about the problem of delay in seeking injunctive relief, Stris called it "a solution in search of a problem," because Congress had provided for the opportunity to obtain emergency injunctive relief under certain circumstances, such as in cases of pre-registration of works. Justice Sotomayor asked whether there might be a delay problem with approval of pre-registrations as well, to which Stris responded that pre-registration was a completely different, streamlined process that only requires copyright holders to describe the work at issue—which need not even be finished—and explain to the Office why it falls within a category of works that have historically been infringed before first commercialization. According to Stris, these limited opportunities to obtain a temporary restraining order indicated that the need for injunctive relief on a time-critical basis was rare. With respect to damages, Stris pointed out that the Copyright Act contained a rolling three-year statute of limitations running from discovery of infringement, meaning that it was highly unlikely that the statute of limitations would run before a registration was issued. Stris also argued that, although the vast majority of applications were ultimately granted (sometimes with amendments made to overcome objections by the Office), a non-trivial number of them were rejected, so the registration requirement was not a mere formality, but was necessary to prevent unwarranted litigation over invalid or deficient copyright claims.

Government’s views. Johnathan Y. Ellis, Assistant to the Solicitor General, appeared for the United States, as amicus curiae for the respondent. Ellis reiterated the argument that the second sentence of Section 411(a)—referring to the refusal to register—meant that the first sentence also must refer to an act by the Register. In Ellis’s opinion, this was the key point in interpreting the statutory language. Ellis also pointed out that if the first sentence of Section 411(a) were interpreted in the petitioner’s manner, the exception contained in the second sentence would not logically be necessary. Several Justices seemed skeptical of this premise, with Justice Kagan stating, "I believe Mr. Panner says that the function of the second sentence is to require an additional act, that notice be given to the Register." According to Justice Kavanaugh, the textual argument made by Ellis was "weighty," but he asked Ellis about the "real world" problems that could be created by this construction. In Ellis’s view, the problems described by the petitioner were overstated and that the Copyright Office and Congress had both taken several steps to reduce delays in issuing registrations.

This case is Dkt. No. 17-571.

Attorneys: Aaron M. Panner (Kellogg, Hansen, Todd, Figel & Frederick, PLLC) for Fourth Estate Public Benefit Corp. Peter K. Stris (Stris & Maher LLP) for Wall-Street.com, LLC. Johnathan Y. Ellis, Assistant to the Solicitor General, for the United States.

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