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“Registration” of a copyright occurs when the Register of Copyrights registers the claim

Whether registration occurs when an owner files an application to register the copyright or when the Register of Copyrights registers the copyright? Fourth Estate Public Benefit Corporation filed a suit for infringement against and Jerrold Burden. The complaint alleged that Fourth Estate had filed an application to register its allegedly infringed copyrights, but that the Copyright Office had not registered its claims. The district court dismissed the action because Fourth Estate failed to plead compliance with the registration requirement.

Fourth Estate Public Benefit Corporation is a news organization that produces online journalism. It licenses articles to websites but retains the copyright to the articles., a news website, obtained licenses to a number of articles produced by Fourth Estate. The license agreement required Wall-Street to remove all of the content produced by Fourth Estate from its website before Wall-Street cancelled its account. But when Wall-Street cancelled its account, it continued to display the articles produced by Fourth Estate.

Fourth Estate filed a complaint for copyright infringement against Wall-Street and its owner, Jerrold Burden. The complaint alleged that Fourth Estate had filed “applications to register the articles with the Register of Copyrights.” But the complaint did not allege that the Register of Copyrights had yet acted on the application. Wall-Street and Burden moved to dismiss the complaint. They argued that the Copyright Act permits a suit for copyright infringement only after the Register of Copyrights approves or denies an application to register a copyright. The district court agreed and dismissed the complaint without prejudice.

In Reed Elsevier, Inc. v. Muchnick, the Supreme Court held that the “registration requirement is a precondition to filing a claim that does not restrict a federal court’s subject-matter jurisdiction”. The question when registration occurs has split the circuits.

The Tenth Circuit follows the “registration” approach to section 411(a), which requires a copyright owner to plead that the Register of Copyrights has acted on the application – either by approving or denying it – before a copyright owner can file an infringement action. In contrast, the Ninth and Fifth Circuits follow the “application” approach, which requires a copyright owner to plead that he has filed “the deposit, application, and fee required for registration,” before filing a suit for infringement. The Eighth Circuit, in dicta, also endorsed the application approach.

The caselaw of the Seventh Circuit contains conflicting dicta on whether it follows the application approach, (“An application for registration must be filed before the copyright can be sued upon.”), or the registration approach, (“An application to register must be filed, and either granted or refused, before suit can be brought.”), or whether it has even decided this question. And both the First and Second Circuits have acknowledged the circuit split but have declined to decide whether to adopt the application approach or the registration approach.

Filing an application does not amount to registration. The Copyright Act defines registration as a process that requires action by both the copyright owner and the Copyright Office. A copyright owner must first deposit a copy of the material with the Copyright Office, file an application, and pay a fee. The Register of Copyrights then examines the material and determines whether “the material deposited constitutes copyrightable subject matter.” If the material is copyrightable “the Register shall register the claim and issue to the applicant a certificate of registration.” If “the material deposited does not constitute copyrightable subject matter…, the Register shall refuse registration and shall notify the applicant in writing of the reasons for such refusal.”

Fourth Estate argued that section 408(a) supports the application approach because it fails to mention the certificate of registration, but the court disagreed. Section 408(a) states, “The owner of copyright… may obtain registration of the copyright claim by delivering to the Copyright Office the deposit specified by this section, together with the application and fee specified by sections 409 and 708.” This section states only the conditions a copyright owner must satisfy to obtain registration. It does not speak to the timing of registration or the obligation of the Register of Copyrights to examine and approve or refuse an application.

Section 410(d) also supports the registration approach. That section 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.” Section 410(d) makes evident that registration occurs only after the Register of Copyrights deems an application “to be acceptable.” Like other provisions of Title 17, section 410(d) establishes that registration occurs only after review and approval by the Register of Copyrights.

Fourth Estate has not alleged infringement of any registered work. And appeal did not involve the ongoing creation of original works, or potential future infringement of works not yet created. The court affirmed dismissal of the complaint filed by Fourth Estate.