When Is a Copyright "Registered"—at the Time of Application, or When the Copyright Office Issues the Certificate of Registration?

What happens if the copyright owner applies for copyright registration before the statute of limitations has run but the Copyright Office does not issue a certificate of registration until after the statute of limitations has run? That issue is scheduled to be argued before the United States Supreme Court on January 8, 2019.
David A. Sergenian

David A. Sergenian

Co-founder and partner of Sergenian Ashby LLP
Formerly an attorney with Quinn Emanuel Urquhart & Sullivan LLP; Glaser Weil Fink Howard Avchen & Shapiro LLP; and Gradstein, Luskin & Van Dalsem PC
J.D. from the University of Virginia School of Law

The statute of limitations for copyright infringement is three years from the date of infringement. Copyright protection applies when the original work is fixed in a tangible medium (e.g., when a sound recording of a musical performance is made). But with limited exceptions, a copyright owner cannot sue for infringement until she has registered her work with the United States Copyright Office. What happens if the copyright owner applies for copyright registration before the statute of limitations has run but the Copyright Office does not issue a certificate of registration until after the statute of limitations has run? That issue is scheduled to be argued before the United States Supreme Court on January 8, 2019, in the case of Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et al.

The Copyright Act requires “registration” of a work to be made before suit may be filed, but the Act does not define “registration.” 17 U.S.C. § 411. Specifically, the Act requires that registration of the copyright claim “has been made” or “has been refused.” Clearly, “refused” refers to an action by the Copyright Office, but who “makes” a copyright registration, the applicant (at the time the application is made) or the Copyright Office (at the time the work is registered)?

In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et al., plaintiff/appellant Fourth Estate argues that “registration” refers to a copyright applicant filing an application, depositing the work with the Copyright Office, and paying the application fee (i.e., application). This interpretation has been endorsed by the Fifth, Seventh, and Ninth Circuit Courts of Appeal. Fourth Estate makes several arguments based on the interplay of the various provisions of the Copyright Act, but its most persuasive authority can be found in a single instance of legislative history which states that a copyright plaintiff “cannot enforce his rights in the courts until he has made registration,” implying that an applicant can “make registration” by applying for copyright registration.

Conversely, the respondents in Fourth Estate argue that the Copyright Act is clear on its face: the copyright owner applies for a copyright; the Copyright Office is the entity that actually registers a copyright. This view is supported by the plain language of the statute, as well as other provisions of the Act, which respondents argue would be rendered meaningless or incoherent if Fourth Estate’s interpretation were accepted. Respondents’ view is endorsed by the Tenth and Eleventh Circuit Courts of Appeal.

The respondents appear to have the stronger argument. In one striking example, respondents point out that if Fourth Estate’s interpretation of the Copyright Act were accepted, it would effectively lead to a nonsensical interpretation of the Act: [I]f petitioner were correct that ‘making’ registration is the same as ‘delivering the deposit, application, and fee required for registration,’ then the second sentence of Section 411(a) would effectively read: ‘In any case, however, where registration has been made and registration has been refused, [suit may be filed].’”

To be sure, the interpretation that respondents are pursuing would lead to situations in which a copyright plaintiff is unable to timely file a lawsuit because the Copyright Office delays in registering a copyright claim. According to Fourth Estate, the average processing time for copyright claims in 2009 was 309 days (although respondents claim that this statistic has been cherry picked). However, as respondents concede, when the Copyright Act was enacted in the 1970s, Congress likely envisioned an application process of only a few weeks. Accordingly, the Copyright Office’s ability to do its work in a timely manner appears to have been compromised by a massive increase in copyright claims over the years.

This situation puts a copyright plaintiff in peril if she fails to timely register her claim with the Copyright Office. The Eleventh Circuit has pointed out that although this reality may penalize a copyright owner, it is also beneficial because it will incentivize copyright owners to avoid delaying registration. Furthermore, as respondents argue, the problems that arise due to a protracted application process are best remedied by Congress, either by earmarking additional funds for the Copyright Office so it can process copyright claims more expeditiously, or by explicitly addressing the scenario of a copyright plaintiff being deprived of the right to bring suit due to delay by the Copyright Office through additional legislation.