The Court of Appeals for the Eleventh Circuit, following the Court of Appeals for the Tenth Circuit, held that the owner of a copyright in a work must register the work with the Copyright Office prior to filing suit and a failure to do so results in dismissal of the action. Fourth Estate Public Benefit Corp. V. Wall-Street.com LLC, Case No. 16-13726 (11th Cir. May 18, 2017) (pdf available here).The Court of Appeals for the Eleventh Circuit, following the Court of Appeals for the Tenth Circuit, held that the owner of a copyright in a work must register the work with the Copyright Office prior to filing suit and a failure to do so results in dismissal of the action. Fourth Estate Public Benefit Corp. V. Wall-Street.com LLC, Case No. 16-13726 (11th Cir. May 18, 2017) (Available Here).
As noted below, the Circuit Courts of Appeals are split on whether or not the owner of a copyrighted work is required, as a precondition, to register the work with the Copyright Office. “‘Registration’ of a copyright is a precondition to filing suit for copyright infringement. 17 U.S.C. § 41 l(a). This appeal requires us to decide an issue that has divided the circuits: whether registration occurs when an owner files an application to register the copyright or when the Register of Copyrights registers the copyright. Compare Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 619 (9th Cir. 2010) (concluding that registration occurs when the owner files an application), with La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1197 (10th Cir. 2005) (concluding that registration occurs when the Register approves an application), abrogated in part by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 157 (2010).”
Fourth Estate Public Benefit Corporation filed a suit for infringement against Wall-Street.com and Jerrold Burden. The complaint alleged that Fourth Estate had filed an application to register its allegedly infringed copyrights, but that the Copyright Office had not registered its claims. The district court dismissed the action. The complaint did not allege that the Register of Copyrights had yet acted on the application. Wall-Street and Burden moved to dismiss the complaint.
The Copyright Act, 17 U.S.C. § 41 l(a), provides “[N]o 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. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.”
“The Tenth Circuit follows the ‘’registration’ approach to section 41 l(a), which requires a copyright owner to plead that the Register of Copyrights has acted on the application-either by approving or denying it-before a copyright owner can file an infringement action. La Resolana, 416 F.3d at 1197-1203. In contrast, the Ninth and Fifth Circuits follow the ‘application’ approach, which requires a copyright owner to plead that he has filed ‘the deposit, application, and fee required forregistration,’ 17 U.S.C. § 41 l(a), before filing a suit for infringement. Cosmetic Ideas, 606 F.3d at 618-19; Positive Black Talk Inc. v. Cash Money Records Inc., 394 F.3d 357, 365 (5th Cir. 2004), abrogated in part by Muchnick, 559 U.S. 154; Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386–87 (5th Cir. 1984); see also Melville B. Nimmer, et al., 2 Nimmer on Copyright§ 7.16[B][b][v] (2016). The Eighth Circuit, in dicta, also endorsed the application approach. Action Tapes, Inc. v. Mattson, 462 F.3d 1010, 1013 (8th Cir. 2006).”
“The caselaw of the Seventh Circuit contains conflicting dicta on whether it follows the application approach, Chi. Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003) (‘[A]n application for registration must be filed before the copyright can be sued upon.’), or the registration approach, Gaiman v. McFarlane, 360 F.3d 644, 655 (7th Cir. 2004) (‘[A ]n application to register must be filed, and either granted or refused, before suit can be brought.’), or whether it has even decided this question, BrooksNgwenya v. Indianapolis Pub. Sch., 564 F.3d 804, 806 (7th Cir. 2009). And both the First and Second Circuits have acknowledged the circuit split but have declined to decide whether to adopt the application approach or the registration approach. Alicea v. Machete Music, 744 F.3d 773, 779 (1st Cir. 2014); Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120, 125 (2d Cir. 2014).”
The 11th Circuit did not consider 5th Circuit precedents and simply held that “because the text of the Copyright Act makes clear that the registration approach that we endorsed in MG.B. Homes and Kernel Records is correct. ‘[R]egistration of [a] copyright … has [not] been made in accordance with … 17 U.S.C. § 41 l(a), until the Register … register[s] the claim,’§ 410(a). Filing an application does not amount to registration.”