Pattishall IP Blog

May 22, 2017

11th Circuit Requires Copyright Registration Certificate in Hand to File Infringement Action, Deepening Circuit Split

Filed under: Copyright — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:13 pm

By Jason Koransky

The Copyright Act sets what seems to be a straightforward threshold for a plaintiff to bring an infringement claim — “preregistration or registration of the copyright claim.” 17 U.S.C. § 411(a). This seemingly simple requirement, however, has led to a significant circuit split on whether “registration” occurs upon merely filing an application with the Copyright Office or when the Copyright Office actually issues a registration certificate. This split only deepened on May 18, 2017, when the Eleventh Circuit ruled in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC (Case No. 16-13726) that a plaintiff must have a registration certificate in order to bring a claim.[1]

The Eleventh Circuit detailed the existing circuit split, and sided with the Tenth Circuit to adopt the registration requirement. In contrast, the Ninth and Fifth Circuits have both held a plaintiff needs only to have filed an application for the asserted copyright in order to bring a suit. This approach assumes that the registration itself eventually issues in due course.  The “application” rule was approved by the Eighth Circuit in dicta, while the Seventh Circuit has endorsed — also in dicta — both approaches in separate matters. Further, the First and Second Circuits have discussed this split, yet neither court has expressly endorsed an approach.

Considering the potentially long delays in obtaining a registration after filing an application with the Copyright Office, the Eleventh Circuit’s decision in Fourth Estate emphasizes that copyright owners should be diligent in filing copyright applications in a timely manner. Otherwise, if the proper venue for an infringement claim is the Eleventh Circuit, a party could be left with no recourse in court while waiting . . . and waiting . . . to obtain a copyright registration.

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[1] The decision is available for download at the court’s website, http://media.ca11.uscourts.gov/opinions/pub/files/201613726.pdf.

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

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