The Reconcilable Conflict Over Copyright Registration – A Proposal

Last month, the Supreme Court resolved a circuit split, holding that under the Copyright Act, the Copyright Office must have granted registration to the plaintiff’s copyright before the plaintiff can sue. Fourth Estate Pub. Benefit Corp. v. The Fourth Estate decision was neither ground-breaking nor surprising. It was a reasonable interpretation of 17 U.S.C. §411, which requires registration of a copyright before a plaintiff can sue. It’s hardly a radical shift in the status quo. If the Fourth Estate decision is disappointing, the real problem is the requirement itself. While some argue that copyright registration is necessary because courts rely on the Copyright Office’s guidance, others argue that it’s an unnecessary obstacle for copyright holders. Although I tend to support the latter view, I propose some changes that might satisfy the opposing sides of this issue.

Under the Copyright Act, a copyright must be registered before bringing a lawsuit (or paradoxically, the Copyright Act refuses registration). 17 U.S.C. §411(a). But hold it – doesn’t copyright exists at the time of creation? That’s right. The copyright itself doesn’t depend on registration, because it exists at the time someone creates the work and fixes it in a tangible form. But in the United States, you have to register the copyright before you can sue for its infringement. If it’s not registered, the defendant can have your case dismissed. Remember, this doesn’t mean your copyright isn’t any good, just that you didn’t satisfy a filing requirement. Most likely, a case is dismissed without prejudice, meaning you can try again.

If you’re lucky enough to be a foreign author, or more specifically the creator of a non-United States work, you are exempt from this requirement.

In Fourth Estate the Supreme Court held that the Copyright Office must have either registered the copyright or denied the registration before the Plaintiff could sue. Before that, some courts allowed a party to bring the lawsuit after submitting the proper materials to the Copyright Office, a date which remains the “effective registration date”. A registration can take at least six months up to a year, and there’s no sign that this will improve. For copyright holders that need to sue more immediately, they have the option of a “special handling” application which costs $800 more and can take just a few days.

Copyright registration acts as sticks and carrots. The tastiest carrot is the possibility of statutory damages and attorney’s fees if the plaintiffs win in court. These are available only if the copyright was registered before the infringement (the registration measured by the “effective registration date”, not the date the Copyright Office acts), or within three months of the work’s “publication.” Copyright registration also means a presumption that the copyright is valid, although in practice that presumption isn’t worth much. A court will typically do its own thorough review if the defendant challenges.

The stick is, of course, that a copyright holder can’t sue without the registration. But that’s not all. The copyright registration process tends to be frustrating and confusing for copyright holders, enough that many are discouraged from the process and only register when they want to sue. The challenges in the registration lead to disputes in litigation over the validity of the copyright registration. Courts disagree over what kind of inaccuracies in an application should result in the dismissal of a copyright infringement claim. The Copyright Act says that the registration doesn’t meet the requirement if:

1) the applicant knew the information submitted was inaccurate; and

2) the inaccuracy of the information would have caused the Copyright Office to refuse registration. 17 U.S.C. §411(b)(, The court can get the opinion of the Copyright Office as to whether it would have refused registration. 17 U.S.C. §411(b)(2).

Some courts hold that applicant’s knowledge of incorrect information requires an intent to defraud.

In LLC v. Ugly Pools Arizona, there really wasn’t much of an issue over whether the defendant stole the code for plaintiff’s website and used it as its own. But there was an issue involving the plaintiff’s difficulty in registering the proper version of the website, made more complicated by the reality that websites change on a daily basis and each new version is merely a “derivative work” of the preexisting version. So when the defendant found out that a newer version was registered because the plaintiff didn’t have a version of the earlier one, but had backdated the “publication date” to reflect the earlier version, the defendant used that opportunity to have the case tossed out based on the invalidity of the registration. But none of that has anything to do with whether the plaintiff had a valid copyright in the website, and whether the defendant infringed it.

In Roberts (a.k.a. Rick Ross) v. Gordy, a district court found that rapper Rick Ross’s copyright registration was invalid because, among other reasons, it failed to include the “publication” of promotional records that were sent to deejays. There were other errors, but none of them affected what was undisputed – the actual authors of the song. I don’t necessarily agree that sending promos to deejays is “publication” if the record wasn’t meant for sale, but fortunately, the 11th Circuit Court of Appeals found that the incorrect information wasn’t sufficient to dismiss the copyright action. (Mark J’s side note: this is a preposterously weak claim[M1]  that LMFAO’s lyrics “every day I’m shufflin’” infringes on Rick Ross’s “every day I’m hustlin’”, but it shouldn’t have been dismissed based on the copyright registration.) 

In order for me to propose solutions I need to establish some ground rules. Proponents of the status quo insist that the system benefits from the guidance of the Copyright Office in determining the validity of copyrights, and from the samples that the copyright holder must deposit to the Office. My proposal takes it on good faith that proponents really believe that. Unfortunately, I think many supporters of the registration requirement like it because it’s frustrating. They see it as a deterrent to bringing lawsuits. If that’s the real reason you support the requirement, I might not be able to reach a fair middle ground with you.

The other rule is to acknowledge that it’s not the registration itself that makes it so problematic, nor is it the cost. It’s the costly and unnecessary litigation battles over registration that have nothing to do with the validity of the copyright itself.  

Okay here we go:

First of all, the Copyright Office can still register copyrights. You can still submit your copyrights for registration. It need not ask when and if the copyright was “published”. It would be preferable if we lose the publication definition in its entirety. The distinction between a published work and an unpublished work doesn’t serve much of a purpose, and the confusion acts as an unnecessary deterrent for copyright holders. In some circumstances, it might be useful to note that a copyrighted work was not meant to be released to the public, or just secret or confidential. That’s a factor that can be addressed in litigation when necessary. But no one needs to stress over whether, for instance, their display of photographs online or their use of promotional records for deejays is or isn’t a “publication.”

Second, any challenges to registration are limited to issues that affect the validity of the copyright only. That means that, even if the published/non-published distinction remains, an improper characterization isn’t grounds for dismissal. An improper date of first publication, or date of creation, or date of assignment, isn’t grounds for dismissal. Does that make challenging these aspects of the registration pointless? I’m fine with that.

Third, a successful challenge to registration doesn’t result in dismissal of the case. It means either that the applicant must resubmit the proper information, or that that the plaintiff loses its statutory presumption of validity. Perhaps, in cases where the errors are particularly egregious, the plaintiff might also lose entitlement to statutory damages and attorneys’ fees. But whatever the remedy, a plaintiff’s case won’t be dismissed if a defendant doesn’t establish the plaintiff doesn’t own a valid copyright they are legally entitled to enforce.

These proposals are merely springboards for debate, but I think we need to discuss how can we resolve issues with copyright registration. I’m sure that many practitioners and creators would be content to remove the registration requirement in its entirety, and I wouldn’t object to that it. But at the same time, I think it’s possible to reach common ground on some of the problems.

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Mark Jaffe

Mark focuses on the needs of start-up businesses and creative professionals, from the inception of their companies and throughout each phase of their development. He advises clients regarding their copyrights, trademarks, right of publicity, advertising, brand protection, the Digital Millennium Copyright Act, regulatory compliance, labor law, and service contracts. Mark also litigates on behalf of his clients when the need arises. Mark is licensed in New York and California.

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