Register Early and Often or at Least Try to: Preparing for Copyright Enforcement
Unlike other intellectual property rights, copyright automatically exists when an original work of authorship is fixed in a tangible form of expression. So, while copyright owners may choose to register a copyright claim with the United States Copyright Office, they are not required to do so. Registration is essential for copyright enforcement, however.
Under 17 U.S.C. § 411, copyright owners cannot bring a civil action for copyright infringement in federal district court until the copyright is preregistered, registered, or an application for registration is refused by the Copyright Office. As only federal courts (and not state courts) can adjudicate civil infringement actions, the § 411 requirement is significant.
Before filing an action in a particular forum, however, copyright owners should consider that court’s interpretation of § 411. Courts are generally divided into two interpretations of the statute. Some courts follow the so-called “registration approach” and require actual registration or refusal of the copyright. Other courts follow the so-called “application approach” and only require that a complete application for registration be filed. These two approaches have led to a split among United States Courts of Appeals as well as splits within United States District Courts. There is a pending petition for a writ of certiorari to the United States Supreme Court to resolve the split.
In addition to § 411, copyright owners should also consider how the timing of filing an application or registering a copyright can impact other aspects of an infringement action. For example, while a copyright can be registered at any time during its existence, the statute of limitations for a civil action is three years after the infringement claim accrues. Further, in an infringement action, a certificate of registration made within five years of first publication of the work is prima facie evidence of the validity of the copyright. The evidentiary weight of a certificate made after five years of first publication is within the discretion of the district court.
In this article, we will describe registration and preregistration, courts’ two primary interpretations of § 411, and the impact on the time to register or file an application on the statute of limitations. Copyright owners should take these issues into account when developing a program to regularly identify copyrightable works in their organizations and how to take steps to register them. As discussed below, each of these issues support copyright owners seeking registration early and often.
Registration and Preregistration
For registration, a copyright owner must submit an application, a filing fee, and a deposit copy of the work to the Copyright Office. A registration specialist from the Office examines the application to determine if the work constitutes copyrightable subject matter. If it does, the Office will issue a certificate of registration to the copyright owner. If it does not, the Office will issue a letter to the copyright owner explaining the Office’s reasons for refusal of registration.
The Copyright Office’s initial refusal of registration is not a final decision. Rather, the copyright owner may submit up to two requests for reconsideration to the Office. These requests for reconsideration usually take the form of letter briefs that present additional arguments and evidence in support of registration. The first request for reconsideration is reviewed by a staff attorney from the Office, and the second request for reconsideration is reviewed by a three-member Review Board of the Office. Following a request for reconsideration, the Office may issue a certificate of registration or again refuse registration.
The Review Board’s refusal of registration constitutes a final agency action. Under the Administrative Procedures Act, the copyright owner may then challenge the Copyright Office’s refusal in district court. However, the Office’s decision receives considerable deference in court and is reviewed for an abuse of discretion.
In 2016 alone, the Copyright Office registered over 414,000 copyright claims. The Office estimates that examination of an application can take between six and ten months. Further, the Office will respond to a first request for reconsideration within four months of filing of the request. It may take the Office at least four months to respond to a second request for reconsideration as well. Thus, it may take well over one year for a copyright owner to obtain a registration certificate.
In some situations, including pending or prospective litigation, the Copyright Office may grant special handling to an application. If special handling is granted, the Office will attempt to examine the application within five working days. But there are no guarantees that every application will be registered or refused in that time period. Further, special handling does not apply to requests for reconsideration. So, expedited consideration of the application ends once the application is initially refused. Finally, the $800 fee for special handling is significantly higher than the $55 filing fee for basic registration.
Copyrights for certain classes of works may be preregistered if the work is unpublished and is being prepared for commercial distribution and a portion of the work is fixed. Preregistration is not a substitute for registration, however. Once the copyright is preregistered, the copyright owner must still register the copyright within the earlier of three months after first publication of the work or one month after discovering infringement.
With the registration process possibly taking over one year to complete, copyright owners should consider reviewing their copyrightable works and filing applications for registration on a regular basis. In preparing for copyright enforcement, copyright owners should also consider using special handling or preregistration.
17 U.S.C. § 411: Registration Approach Versus Application Approach
The Supreme Court has explained that although § 411 is not a jurisdictional requirement, it is a precondition that must be met before bringing an action for copyright infringement. Specifically, § 411(a) states:
[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.
In preparing for copyright enforcement in a particular forum, however, copyright owners should consider that court’s interpretation of § 411. The Eleventh and Tenth Circuits, for example, have adopted the registration approach. These courts have explained that the plain language of § 411 requires registration or refusal of an application for registration before the copyright owner can bring an action.
By contrast, the Ninth and Fifth Circuits have adopted the application approach. The Ninth Circuit has explained that § 411 is unclear and that allowing the copyright owner “to proceed with an infringement suit as soon as he has taken all of the necessary steps to register the copyright at issue” “better fulfills Congress’s purpose of providing broad copyright protection while maintaining a robust federal register.” To the Ninth Circuit, requiring the copyright owner to wait to bring an action until the Copyright Office acts on a complete application is “little more than just the type of needless formality Congress generally worked to eliminate . . . .”
Other Circuits’ position on what § 411 requires is less clear. The Eighth Circuit has case law supporting the application approach, the Seventh Circuit has case law supporting both approaches, and the First and Second Circuits have acknowledged the two approaches but have not yet adopted one. District courts are also divided. In the Northern District of Illinois, for example, some courts have applied the application approach and other courts have applied the registration approach.
Absent clear authority to the contrary in a particular jurisdiction, copyright owners should consider conservatively assuming that the registration approach to § 411 applies and obtaining registration before bringing an action there. With this assumption, copyright owners can avoid dismissal of their actions for not complying with § 411. Given § 411 and several courts applying the registration approach to the statute, copyright owners should consider reviewing their copyrightable works and filing applications for registration on a regular basis.
On October 13, 2017, the copyright owner from the Eleventh Circuit’s decision in Fourth Estate filed a petition for a writ of certiorari to the Supreme Court. The Supreme Court has requested a response by December 4, 2017. It will be interesting to see if the Supreme Court takes the case and adopts either the registration or application approach to § 411.
17 U.S.C. § 507(b): Statute of Limitations
Under 17 U.S.C. § 507(b), the statute of limitations for a civil action is three years after the infringement claim accrued. The Supreme Court has explained that § 507(b) provides a “separate-accrual rule” so that “each infringing act starts a new limitations period.” Further, most Circuits apply a discovery rule to determine when an infringement claim accrues. Under the discovery rule, accrual occurs when the copyright owner “discovers, or with due diligence should have discovered, the infringement.” The Seventh Circuit has explained that while actual and constructive discovery of infringement starts the limitations period, “inquiry notice” of infringement does not.
In preparing for copyright enforcement, copyright owners should consider the impact on the statute of limitations of (i) the time required to obtain a certificate of registration or at least (ii) the time required to file an application for registration. To mitigate the chance of an infringement claim being barred under § 507(b), copyright owners should consider reviewing their copyrightable works and filing applications for registration on a regular basis. Regularly filing applications for registration to reduce the risk of an infringement claim being barred under § 507(b) is particularly important in jurisdictions that apply the registration approach to § 411.
In summary, considering the current judicial climate, we advise that copyright owners consider developing a program to regularly identify copyrightable works in their organizations and to register them. Such a program will help to prepare copyright owners for enforcing their copyrights in district court. Furthermore, the registration process, courts’ approaches to § 411, and the impact on the time to register or file an application on the statute of limitations, all support copyright owners seeking registration early and often.
 17 U.S.C. § 102(a).
 Id. § 408.
 Id. § 411(a).
 28 U.S.C. § 1338(a). Copyright infringement can also be the subject of an investigation of the United States International Trade Commission (“ITC”) and criminal action in district court. 19 U.S.C. § 1337(a); 17 U.S.C. § 506(a). ITC investigations and criminal actions related to copyright infringement are beyond the scope of this article.
 Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 856 F.3d 1338 (11th Cir. 2017).
 Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612 (9th Cir. 2010).
 Infra notes 32, 34, and 35-38.
 Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, Case No. 17-571 (filed Oct. 13, 2017). The Court has requested a response, which is due December 4, 2017.
 17 U.S.C. § 507(b).
 Id. § 410(c).
 37 C.F.R. § 202.3; U.S. Copyright Office, Compendium of U.S. Copyright Office Practices § 204 (3d ed. 2017) (hereafter “Compendium”).
 Compendium § 206.
 17 U.S.C. § 410(a); Compendium § 209.
 Compendium § 211.
 37 C.F.R. § 202.5.
 Compendium §§ 1703-1704
 37 C.F.R. § 202.5(g).
 See, e.g., Atari Games Corp. v. Oman, 888 F.2d 878 (D.C. Cir. 1989).
 Id. at 881.
 Library of Congress Office of the Inspector General Semiannual Report to the Congress, at 2 (Mar. 2017).
 Frequently Asked Questions about Copyright, https://www.copyright.gov/help/faq/ (last visited Oct. 11, 2017)
 37 C.F.R. § 202.5(b)(4).
 Compendium § 623.
 Id. at § 623.4.
 Id. at § 623.2.
 Circular 4, Copyright Office Fees (Sep. 2017). The filing fee for basic registration can be as low as $35 for a work created by one author.
 37 C.F.R. § 202.16; Compendium § 1603. The classes of works that are eligible for preregistration include motion pictures, sound recordings, musical compositions, literary works being prepared for publication in book form, computer programs, and advertising or marketing photographs.
 Compendium § 1604.1.
 Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 166 (2010).
 17 U.S.C. § 411(a). Section 411(a) does not apply to non-U.S. works. Cosmetic Ideas, 606 F.3d at 619 n.12.
 Fourth Estate, 856 F.3d at 1340; La Resolana Architects, PA v. Clay Relators Angel Fire, 416 F.3d 1195, 1200-1203 (10th Cir. 2005), abrogated on other grounds by 505 U.S. 154.
 It is important to note that for purposes of § 411(a) it is not entirely clear when refusal occurs. The Office has explained that the copyright owner does not need to appeal a refusal to court under the APA to bring an action. Compendium § 1706. One copyright treatise, citing § 1706, states that the copyright owner also does not need to file requests for reconsideration in the Office before bringing an action. 5 Paltry on Copyright, §§ 17.96-97 (2017). However, one court has explained that “[t]he term ‘refused’ as used in Section 411(a) contemplates a final decision by the Copyright Office on the merits of the registerability of the plaintiff’s submission.” Paul G. Poulx v. Hennepin Tech. Centers District No. 287, 1981 WL 1397, at *6 (D. Minn. Dec. 7, 1981).
 Cosmetic Ideas, 606 F.3d at 612; Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357 (5th Cir. 2004), abrogated on other grounds by 505 U.S. 154.
 Cosmetic Ideas, 606 F.3d at 619.
 Id. at 620.
 Action Tapes, Inc. v. Mattson, 462 F.3d 1010, 1013 (8th Cir. 2006).
 Compare Gaiman v. McFarlane, 360 F.3d 644, 655 (7th Cir. 2004) (registration approach), with Chi Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003) (application 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).
 Compare Panoramic Stock Images, Ltd. v. John Wiley & Sons, Inc., 963 F. Supp. 2d 842 (N.D. Ill. 2013) (application approach), with TriTeq Lock & Sec. LLC v. Innovative Secured Sols., LLC, 10-cv-1304, 2012 WL 394229 (N.D. Ill. Feb. 1, 2012) (registration approach).
 Fourth Estate, Case No. 17-571.
 Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962, 1969 (2014).
 Psihoyos, 748 F.3d at 124-25; Diversey v. Schimidly, 738 F.3d 1196, 1200 (10th Cir. 2013); William A. Graham Co. v. Haughey, 568 F.3d 425, 437 (3d Cir. 2009); Warren Freedenfeld Assocs., Inc. v. McTigue, 531 F.3d 38, 44-46 (1st Cir. 2008); Comcast of Illinois v. Multi–Vision Elecs., Inc., 491 F.3d 938, 944 (8th Cir. 2007); Roger Miller Music, Inc. v. Sony/ATV Publ’g, LLC, 477 F.3d 383, 390 (6th Cir. 2007); Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 705-07 (9th Cir. 2004); Gaiman v. McFarlane, 360 F.3d 644, 653 (7th Cir. 2004); Lyons P’ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 796 (4th Cir. 2001). The Supreme Court noted in Petrella that it “had not passed on the question” of accrual under § 507(b) and acknowledged that several Circuits have adopted the discovery rule. 134 S. Ct. at 1969 n.4. The Court explained that the discovery rule is alternative to the injury rule, i.e., accrual occurs when the infringing act occurs. Id.
 Psihoyos, 748 F.3d at 124.
 Chi. Bldg. Design, P.C. v. Mongolian House, Inc., 770 F.3d 610, 616 (7th Cir. 2014) (defining “inquiry notice” as “knowledge that would have led a reasonable person to start investigating the possibility that his rights had been violated”). In Chicago Building Design, the Seventh Circuit asked the parties on remand to “address whether Petrella abrogates the discovery rule in copyright cases.” Id. at 618.
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