While copyright protection for an original work of authorship is automatic once the work is fixed in a tangible medium of expression, a copyright owner must obtain a registration for the work or a registration refusal from the U.S. Copyright Office before proceeding with a copyright infringement suit against an infringer … or is it that simply filing an application is an adequate prerequisite for proceeding with an infringement suit?  For years there has been a growing split between the various circuits of the U.S. Courts of Appeals regarding this issue.  Fortunately, the U.S. Supreme Court recently agreed to hear the case Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC, which will finally resolve this circuit split and hopefully bring clarity to exactly when a copyright owner can proceed with a copyright infringement suit.

Under 17 U.S. Code § 411 of the U.S. Copyright Act, subject to a few exceptions, “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 any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and 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.”

 This statute has been interpreted by the Tenth and Eleventh Circuits as requiring that the U.S. Copyright Office must actually issue a copyright registration or registration refusal before an infringement suit can proceed (“registration / refusal approach”). The Fifth and the Ninth Circuits only require that an application for a copyright registration merely be filed with the Copyright Office before a suit can proceed (“application approach”). The First, Second, Third, Fourth, Sixth, and Eighth Circuits have never directly addressed this issue.  

 The difference between when an infringement suit can proceed created by this circuit split can be critical, since unless a copyright owner pays an $800 fee for expedited processing, it usually takes many months or even more than a year in some cases for the Copyright Office to issue a registration or registration refusal. During this time period, under the registration approach tremendous and perhaps even irreversible damage can be done to one’s business, goodwill, and reputation due to ongoing, unabated infringement. No preliminary relief is available during this time period and the delay in being able to bring suit also significantly prolongs when a final decision on the merits will be made.

 While the interests of unregistered copyright claimants would clearly be better served if the Supreme Court adopts the application approach, there is also a compelling argument that a plain reading of the statute supports the registration / refusal approach.  It will be interesting to see which side the Supreme Court takes in this circuit split.  

It is noted that this decision will apply to registration requirements for US works.  Registration is not required for foreign works (unless required by the laws of the foreign jurisdiction). Thus, a foreign copyright holder may bring an action in U.S. Federal Court for copyright infringement.  However, while a remedy is afforded, the unavailability of statutory damages and attorney’s fees (absent U.S. Registration) eliminates significant advantages and incentives for the foreign rights holder.

Regardless of the Supreme Court’s decision, it is in the best interest of copyright owners to consult with an attorney experienced in copyright law and to apply for registration with the Copyright Office as soon as it is possible to do so. This will help to ensure that a registration is already in hand and all legal and equitable remedies are available at the outset of an infringement dispute.