Circuit Split Widens After 11th Circuit Copyright Registration Ruling

As previously reported in this blog, federal circuits are badly split on when registration of a copyright occurs, which is an issue that ultimately determines whether a plaintiff can sue for infringement. The Eleventh Circuit in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC reaffirmed the “registration approach,” under which an actual certificate of registration must be issued from the Copyright Office before infringement litigation can begin.

The Circuit Split

In contrast, the Fifth and Ninth Circuits follow the “application approach,” which allows copyright infringement litigation to begin upon filing of an application and submission of the required fee and deposit materials. The Eighth Circuit nominally follows the application approach, while the First, Second, and Seventh Circuits are conflicted about which approach to follow.

The Eleventh Circuit’s Approach

The plaintiff in Fourth Estate Public Benefit Corporation was an online journalism site that licenses articles to other websites but retains the copyright to the articles. At issue were articles licensed to the defendant Wall-Street.com, another news website, which retained the plaintiff’s articles on its site after cancelling its account in violation of the license agreement.

Wall-Street moved for dismissal for failure to state a claim, citing the plaintiff’s complaint which alleged that “applications to register [the] articles with the Register of Copyrights” had been filed, but failed to assert that the Register had acted on the application. The district court dismissed the complaint without prejudice, citing 17 U.S.C. §411(a), which permits a suit for copyright infringement only after an application to register a copyright has been approved or denied.

The Eleventh Circuit court agreed, but based its holding on the plain language of the statute and not jurisdictional concerns or its own precedent. The court considered §411(a) in light of §408(a), which requires affirmative steps from the applicant, and §410(a), in which use of the phrase “after examination” “makes explicit that an application alone is insufficient for registration.” The court also did not consider the plaintiff’s legislative history arguments that Congress intended to promulgate the application approach, finding that “[w]hen…the words of a statute are unambiguous, then ... judicial inquiry is complete.”

Lessons to Learn

The overriding lesson is one for content creators and owners: when copyright protection is warranted, file a copyright registration application as soon as possible for your work. Following this advice will make moot questions about where to bring a copyright infringement suit based on uncertainty about whether the registration or application approach is followed. For practitioners, if there are statute of limitations or injunctive considerations involved, no certificate has issued, and you must bring suit in a registration-approach jurisdiction, consider the Copyright Office’s expedited “special handling” option. Although expensive ($800 per claim), special handling shortens the normal registration processing time of four to six months down to one to three weeks generally.

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