SCOTUS to hear case on copyright registration requirements
July 10, 2018
Copyright law is quirky. On one hand, you have a copyright the instant you fix your work in a tangible medium of expression. You do not need to do anything else. Copyright protection attaches right away. Yet to actually enforce that copyright against potential infringement requires that the copyright owner take steps to register the copyrighted work with the Copyright Office. That is right – a prerequisite to any lawsuit is registration. This is an added step which requires lawyers and application filing fees. The legal system always seems to be set up to make sure it gets paid first. Funny how that works.
Some states and circuits, however, have operated under a “if the application to register is on file; that is good enough” policy. The Fifth Circuit, which includes Texas, is an example of this policy. Strictly speaking, the Fifth Circuit “requires only that the Copyright Office actually receive the application, deposit, and fee before a plaintiff files an infringement action.” For now.
Why is this important? Well, on June 28, 2018, the United States Supreme Court granted certiorari in the case Fourth Estate Public Benefit Corp. v. Wall-Street.com, to resolve this perceived “split” amongst the circuit courts for what is required to file a copyright infringement lawsuit in the United States. This issue will be heard by SCOTUS during the next term. The result will likely impact the strategies of copyright lawyers, including me.
The mechanics of copyright protection and enforcement
As mentioned, the moment you “fix” your copyrighted work in a “tangible medium of expression” – you have a copyright. This gives you a valid, existing, enforceable copyright that lasts for the rest of your life. Plus another 70 years thereafter. Examples include any drawing, video, painting, dance choreography, book, novel, essay, song, or sculpture. Copyright also attaches to any photo you take with your cell phone, too (so long as the person actually taking the photo is a human being). We have discussed that before here.
Copyright is simple that way. No lawyers are needed to acquire a copyright. No paperwork needs to be filed to say “I have a copyright.” How elegant.
Unfortunately, if someone steals your work, uses it without your permission, or flat out infringes your work of art for commercial gain or otherwise – the law requires certain bits of proof before a judge and jury will hear your case. This is the “registration” step. Registration is relatively painless and is often seen as a mere formality (most applications are eventually approved), but it is still a necessary step. The application fees for a single copyrighted work range from $35 to $85 as of this writing. If you hire a lawyer, there are likely added fees for that too.
The problem with this registration step is that it is slow. Painfully slow. The Copyright Office itself is intentionally vague in giving a time frame, but it can usually take upwards of six to eight months for the Copyright Office to process your application and issue the registration certificate. That is a long time. If you know someone is infringing your work or is likely to infringe your work, an eight month wait can have severe negative consequences.
The Copyright Office recognizes this dilemma to some extent. It therefore offers what is known as an “expedited” registration process. It is also known as “special handling.” To the surprise of no one reading this, the fees are substantially higher for this option. In excess of $800 per claim.
Thus, if you have $800 or more to burn on an expedited copyright registration, the issue of whether you can file a lawsuit without an actual registration already in hand is trivial. Most litigants, however, are more budget-conscious. What happens if the Supreme Court requires you to have an actual registration before you file suit?
Potential outcomes if complete registration is a prerequisite
The pertinent statutory language requiring registration states that “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 should be noted that “preregistration” does not mean merely filing an application. It is a separate procedure for registration of a work that has not yet been published or released for commercial distribution. The most common example is a major motion picture that has yet to be released to theaters but is ripe for infringement on release day. Most copyright holders do not anticipate infringement, which makes preregistration unlikely to be a consideration.
What should concern the average person is how to protect a singular copyrighted work from unexpected infringement. A painting. Graphical art to be displayed on the internet. A song that has yet to be finished. A collection of short essays that is not being published through a large distribution network. Works such as these are more common than the next Star Wars.
Unfortunately, copyright protection is tricky. The true deterrent for copyright infringement is the threat of monetary damages, including statutory damages, which can be immense. Statutory damages can range from no less than $750 to in excess of $30,000 per work. This range is determined by what the court may consider to be “just.” These damages can increase to $150,000 per work if the infringement is deemed “willful.” Alas, these statutory damages only apply to infringements that take place “before the effective date of [the] registration.” This means that if you own an unregistered work and learn of someone infringing that work, any statutory damages would not kick in until after you have gone through the process of registration.
If SCOTUS decides that you absolutely need a registration in hand before you can file a lawsuit, this only adds to a copyright owner’s burden. Not only are statutory damages unavailable for unregistered works, but the actual incentive to file a lawsuit is now lessened in that scenario. For lesser known works of moderate value, this reduces the deterrent to would-be infringers. Not only are statutory damages unlikely, but now the copyright owner has yet another obstacle to clear in protecting and enforcing the copyrighted work.
This actually feels counter to what the Founding Fathers put in the Constitution.
To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.
By adding administrative red tape to the existing burdens for these authors in protecting such exclusive rights, any decision to require a full registration before the simple act of filing a lawsuit just strikes me as wrong. Even if the language of the Copyright Act states that registration is a prerequisite. Striking such requirements would not be the first time a Court determined that statutory language regarding fundamental intellectual property rights was unconstitutional. If anything, it is a common trend at SCOTUS.
Nevertheless, assuming that the Supreme Court does enforce the registration requirement, this result may include a surge in copyright applications that are filed. In turn, this would only add to the backlog and increase the already lengthy wait times for acquiring registrations. It might also require the Copyright Office to hire more examiners. This would likely result in increased fees for filing applications to register these copyrighted works. It creates a vicious feedback loop of negative consequences.
Hopefully the Supreme Court adopts the policy currently in effect in the Fifth Circuit. A copyright owner should be able to file a lawsuit the moment it learns of infringing activity, so long as an application to register the work is at least on file with the Copyright Office (even if the application is filed concurrently with the lawsuit). To require more would incentivize infringement and add unnecessary burdens to artists, authors, and creators.
The law should never be so knowingly backwards.
 17 U.S.C. § 102(a).
 17 U.S.C. § 411(a).
 See Positive Black Talk, Inc. v. Cash Money Records, Inc., 394 F.3d 357, 365 (5th Cir. 2004) and Lakedreams v. Taylor, 932 F.2d 1103, 1108 (5th Cir. 1991).
 17 U.S.C. § 411.
 17 U.S.C. § 504(c)
 17 U.S.C. § 412.
 U.S. Constitution, Art. I, § 8.