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When copyright registration occurs?

The question this case presents: Has “registration… been made in accordance with Title 17” as soon as the claimant delivers the required application, copies of the work, and fee to the Copyright Office; or has “registration… been made” only after the Copyright Office reviews and registers the copyright?

Fourth Estate is a news organization producing online journalism. Fourth Estate licensed journalism works to respondent Wall-Street, a news website. The license agreement required Wall-Street to remove from its website all content produced by Fourth Estate before canceling the agreement. Wall-Street canceled, but continued to display articles produced by Fourth Estate.

Fourth Estate sued Wall-Street and its owner, Jerrold Burden, for copyright infringement. The complaint alleged that Fourth Estate had filed “applications to register the articles licensed to Wall-Street with the Register of Copyrights.”

Because the Register had not yet acted on Fourth Estate’s applications, the District Court, on Wall-Street and Burden’s motion, dismissed the complaint, and the Eleventh Circuit affirmed. Thereafter, the Register of Copyrights refused registration of the articles Wall-Street had allegedly infringed.

Before pursuing an infringement claim in court, however, a copyright claimant generally must comply with §411(a)’s requirement that “registration of the copyright claim has been made.” §411(a). Therefore, although an owner’s rights exist apart from registration, see §408(a), registration is akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights.

In limited circumstances, copyright owners may file an infringement suit before undertaking registration. If a copyright owner is preparing to distribute a work of a type vulnerable to predistribution infringement – notably, a movie or musical composition – the owner may apply for preregistration.

The Copyright Office will “conduct a limited review” of the application and notify the claimant “upon completion of the preregistration.” Once “preregistration… has been made,” the copyright claimant may institute a suit for infringement. Preregistration, however, serves only as “a preliminary step prior to a full registration.”

An infringement suit brought in reliance on preregistration risks dismissal unless the copyright owner applies for registration promptly after the preregistered work’s publication or infringement.

A copyright owner may also sue for infringement of a live broadcast before “registration… has been made,” but faces dismissal of her suit if she fails to “make registration for the work” within three months of its first transmission. Even in these exceptional scenarios, then, the copyright owner must eventually pursue registration in order to maintain a suit for infringement.

Different approaches

All parties agree that, outside of statutory exceptions, §411(a) bars a copyright owner from suing for infringement until “registration… has been made.” Fourth Estate and Wall-Street disputed, however, whether “registration… has been made” under §411(a) when a copyright owner submits the application, materials, and fee required for registration, or only when the Copyright Office grants registration.

Fourth Estate advances the former view – the “application approach” – while Wall-Street urges the latter reading – the “registration approach.” The registration approach, the court concluded, reflects the only satisfactory reading of §411(a)’s text.

Read together, §411(a)’s opening sentences focus not on the claimant’s act of applying for registration, but on action by the Copyright Office – namely, its registration or refusal to register a copyright claim. If application alone sufficed to “make” registration, §411(a)’s second sentence – allowing suit upon refusal of registration – would be superfluous.

The third and final sentence of §411(a) allows the Register to “become a party to the action with respect to the issue of registrability of the copyright claim.” This allowance would be negated, and the court conducting an infringement suit would lack the benefit of the Register’s assessment, if an infringement suit could be filed and resolved before the Register acted on an application.

 Section 410 confirms that application is discrete from, and precedes, registration. Section 410(d), furthermore, provides that if the Copyright Office registers a claim, or if a court later determines that a refused claim was registrable, the “effective date of the work’s copyright registration is the day on which” the copyright owner made a proper submission to the Copyright Office. There would be no need thus to specify the “effective date of a copyright registration” if submission of the required materials qualified as “registration.”

Section 408(f)’s preregistration option, too, would have little utility if a completed application constituted registration. A copyright owner who fears prepublication infringement would have no reason to apply for preregistration, however, if she could instead simply complete an application for registration and immediately commence an infringement suit.

Fourth Estate believes that, to determine how the statute uses the word “registration” in a particular prescription, one must “look to the specific context” in which the term is used. As was explained the “specific context” of §411(a) permits only one sensible reading: The phrase “registration… has been made” refers to the Copyright Office’s act granting registration, not to the copyright claimant’s request for registration.

In enacting 17 U.S.C. §411(a), Congress both reaffirmed the general rule that registration must precede an infringement suit, and added an exception in that provision’s second sentence to cover instances in which registration is refused.

That exception would have no work to do if, as Fourth Estate urges, Congress intended the 1976 revisions to clarify that a copyright claimant may sue immediately upon applying for registration. A copyright claimant would need no statutory authorization to sue after refusal of her application if she could institute suit as soon as she has filed the application.

 For the reasons stated, the court concluded that “registration… has been made” within the meaning of 17 U. S. C. §411(a) not when an application for registration is filed, but when the Register has registered a copyright after examining a properly filed application. The judgment of the Court of Appeals for the Eleventh Circuit is accordingly Affirmed.

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