“Mother May I Sue?” The Fractured Standard for Bringing Copyright Infringement Suits

The 1976 Copyright Act fundamentally changed the way authors acquire rights in their creations, requiring only fixation “in any tangible medium of expression.” In contrast, under the previous 1909 Copyright Act, an author was required to register a work before publication to obtain a copyright.

While registration is not necessary to establish rights in a work, it does determine who can enforce a copyright because under 17 U.S.C. §411(a), “…no civil action for infringement of the copyright in any United States work shall be instituted until…registration of the copyright claim has been made…” However, reasonable minds in federal circuits across the country have differed on what constitutes “registration,” leaving authors and their lawyers with a legal patchwork to navigate when preparing infringement cases. Thus, if a certificate of registration has not yet been received by a plaintiff, this issue should be analyzed before bringing a copyright infringement suit.

“Application” vs. “Registration” Approaches

The application approach is the most flexible approach for copyright infringement plaintiffs because courts following it grant standing to sue based on the Copyright Office’s receipt of the registration application, deposit materials, and fee.

In Apple Barrel Prods., Inc. v. Beard, the court held that possession of a registration certificate is not a prerequisite for bringing suit, stating “one need only prove payment of the required fee, deposit of the work in question, and receipt by the Copyright Office of a registration application.” [1]

 The Ninth Circuit took the same approach in Cosmetic Ideas, Inc. v. IAC/Interactivecorp, a case involving infringement of an artist’s jewelry design. After noting that under Supreme Court precedent failure to register a work was no longer a jurisdictional bar[2], the Cosmetic Ideas court framed the question:

"What does it mean to “register” a copyrighted work? Stated another way, is a copyright registered at the time the copyright holder's application is received by the Copyright Office (the “application approach”), or at the time that the Office acts on the application and issues a certificate of registration (the “registration approach”)?"[3]

However, the court was not persuaded that the plain language of the Act unequivocally supported either the registration or application approach, and instead turned to the legislative history of the 1976 Act, concluding that the application approach “better fulfills Congress's purpose of providing broad copyright protection while maintaining a robust federal register.”[4]

In contrast, the registration approach requires a copyright infringement plaintiff to demonstrate that an application to the Copyright Office has either been approved or rejected before an action can be brought. All circuits except the 5th and 9th follow this approach.[5]

In La Resolana Architects, PA v. Clay Realtors Angel Fire, the plaintiff discovered townhouse designs that were strikingly similar to architectural plans previously shown to the defendant builder. Shortly thereafter the plaintiff filed a registration application for the designs, but filed suit before receiving a certificate of registration.

The court pointed to the plain language of the statute to hold that approval or rejection of a registration application must be received from the Copyright Office, going so far as to say “no language in the Act suggests that registration is accomplished by mere receipt of copyrightable material by the Copyright Office.”[6]

The moral of the story: register your work as early as possible to avoid any hiccups in bringing your copyright infringement case.

[1] 730 F.2d 384, 386–87 (5th Cir.1984), citing Nimmer on Copyright at §7.16[B][1]. In his treatise William Patry decries Nimmer’s analysis, stating that courts permitting infringement actions without a registration in hand “were led astray by Nimmer” based on an interpretation that was a “flagrant disregard of the statute…” (Patry on Copyright §17:78).
[2] Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 130 S.Ct. 1237, 176 L.Ed.2d 17 (2010).
[3] 606 F.3d 612, 615 (9th Cir. 2010).
[4] Id. at 619.
[5] Patry on Copyright §17:78 fn. 10.
[6] 416 F.3d 1195, 1200 (10th Cir. 2005).

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