In this 2018-19 term, the United States Supreme Court will hear arguments on an issue that has long divided copyright attorneys and the courts that hear their cases. Under the Copyright Law, Section 411(a), a copyright owner may not bring an infringement lawsuit until the copyright owner has registered the copyright with the U.S. Copyright Office. In Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, the Court of Appeals for the 11th Circuit affirmed a lower court’s dismissal of a copyright infringement suit on grounds that the Copyright Office had not yet granted registration to the copyright in question, whose application was still pending.

This was consistent with the way in which both the 10th and 11th Circuits have treated this issue. However, the 5th and 9th Circuits have held for some years now that having filed an application to register one’s copyright is sufficient to enable the copyright owner to bring an action and a federal court to exercise subject-matter jurisdiction. The Supreme Court will resolve this circuit split during the new term, and copyright practitioners are already laying bets on how the court will rule. Meanwhile, the American Bar Association last month filed an Amicus brief with the Supreme Court that raises issues and eyebrows by urging affirmation of the “Application approach” adopted by the 5th and 9th Circuits.

The Statute and Its Interpretations
Section 411(a) of the Copyright Act says, “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.” It would appear that the plain language of the statute means that the copyright has to be registered before the lawsuit can be commenced. But at what point is a registration “made”?

The section goes on to provide that a copyright infringement plaintiff may still file an action even if the Copyright Office refuses registration. So to some interpreters, since it doesn’t matter whether the Copyright Office registers the copyright or not, the mere act of filing the application should be sufficient to confer subject-matter jurisdiction on the court.

In this light, the Application approach makes some sense—especially since the time between filing an application and obtaining a Certificate of Registration, once a matter of weeks, has now ballooned to double-digit months and sometimes more than a year. But if the aim of the Application approach is solely to provide relief for litigants and courts by speeding up judicial process, surely it’s up to Congress, not the courts, to amend the law to accommodate this concern.

If, as is frequently said, the only reason for Section 411(a) is to encourage copyright owners to register their copyrights, since registration is not mandatory, then the Application approach again makes sense, because the mere filing of a registration application is sufficient to achieve the goal. And indeed the Supreme Court has so held in the case of Reed Elsevier, Inc. v. Muchnik. However, if 411(a) also has something to do with the role of the Copyright Office in determining the strength and protectability of the copyrighted work, then it makes more sense for a court not to exercise jurisdiction over the matter until the Copyright Office has made its determination on that issue.

The “Registration approach” of the 10th and 11th Circuits is essentially “the law means what it says”: registration doesn’t occur until the Copyright Office makes a decision and issues either a Certificate of Registration or a notice of refusal to do so. But the recently-filed ABA brief makes some interesting and occasionally provocative arguments to the contrary.

The ABA Brief
Writing as amicus, the ABA urges the court to regard registration as having occurred “when the copyright holder acts by delivering her application, deposit copy, and fee to the Copyright Office”—as the Court held in the different context of the Reed Elsevier case. But can this be the definition of “registration” when the Copyright Office can’t make a determination of whether the subject matter is registrable until after the application is on file? This may not matter, since the plaintiff can still file its lawsuit regardless of whether the Office issues or refuses registration. The ABA urges that “the Copyright Office’s views with respect to copyrightability do not dictate the existence, scope, or validity of copyrights.” But those views may have some advisory value in guiding an infringement court’s assessment of the relative protectability of the plaintiff’s work, which would seem to justify a need to wait until the Office has acted.

In the ABA’s view, “the act of registration … is different from the issuance of a certificate of registration.” Seen this way, registration occurs upon the filing of the application, and the Copyright does nothing more than decide whether or not to issue a certificate. But that suggests that any work that is applied for registration is registered regardless of whether the Office issues a certificate. If that were the case, why would Section 411(a) make provision for the instance in which the Office “refuses registration”? Why indeed would the Copyright Act have provided for registration at all if the role of the Office in determining the registrability and protectability of the work made no difference to the court’s jurisdiction or its assessment and final judgment regarding the strength of that work as against an alleged infringement?

Another of the ABA’s arguments supporting the Application approach is that it would level the playing field between U.S. and foreign copyright owners in U.S. courts. Under the Registration approach, a U.S. copyright owner must have obtained either a certificate of U.S. copyright registration or a refusal of registration in order to bring an infringement action, while a foreign copyright owner may bring an action without registering. This is because the Berne Convention—the international treaty on copyright to which most countries subscribe—provides that no author may be compelled to comply with a government procedural formality in order to be a copyright owner; copyright is a natural consequence and a natural right of authorship. The accession of the United States to the Berne Convention in the 1970s was the chief reason that the U.S. dropped its longstanding mandatory registration requirement, and why it exempted foreign copyright owners from 411(a). But the fact that for the last forty years copyright in the U.S. has arisen automatically upon creation and fixation of an original work did not prevent the U.S. from burdening copyright infringement plaintiffs with the procedural requirement of 411(a). That would be effectively undone if the Supreme Court adopts the Application approach come next spring.

These heady questions and compelling debates will have to wait until spring for a resolution.