Eleventh Circuit Affirms that a Copyright Registration is a Prerequisite to an Infringement Suit

Last week, the United States Court of Appeals for the Eleventh Circuit (“Eleventh Circuit”) affirmed that in order to bring a copyright infringement lawsuit the Plaintiff must have first obtained a copyright registration.[1] As discussed in a previous blog article, registration is required prior to a copyright owner bringing a lawsuit in court for copyright infringement. The dispute to be resolved by the Eleventh Circuit in Fourth Estate was whether the term “registration” means when the copyright owner files an application to register the copyright with the United States Copyright Office (“Copyright Office”) or when the copyright is registered.[2] The Eleventh Circuit highlighted that this is a dispute that has been resolved differently among the different District Court of Appeals.[3] Some Circuits (such as the Fifth, Eighth and Ninth) have found that registration occurs upon the filing of an application.[4] Other Circuits (such as the Tenth) have found that the Register of Copyrights must have first acted on the application by either approving or denying it prior to the lawsuit being filed.[5] While other Circuit (such as the First, Second and Seventh) have not yet resolved the dispute.[6]

The Eleventh Circuit examined the text of the Copyright Act and found that registration does not occur until “‘the Register . . . register[s] the claim.”[7] Further, the Eleventh Circuit found that filing an application alone is insufficient because the Copyright Act states that “registration can occur only after application and examination.”[8] However, it should be noted that a copyright owner who files for an application which has been refused has the ability to file a copyright infringement lawsuit.[9]

The ruling from this case teaches an important lesson. It is essential to register copyrights as soon as it is known that the copyright owner’s work is going to be published or released. Seeking registration after infringement has already occurred has several pitfalls.  For example, a copyright owner waives the right to collect statutory damages and attorneys’ fees under the Copyright Act if the work was not registered prior to the commencement of the infringing activity.  Registration also affords the registrant certain protections and advantages outside the United States, pursuant to some international intellectual property treaties. Thus, it is important to contact an experienced and knowledgeable attorney for any questions regarding copyright protection.

Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.

[1] See, Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et. al., 2017 WL 2191243 (11th Cir. May. 18, 2017).
[2] Id. at 2017 WL 2191243.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id. (internal quotations omitted).
[8] Id.
[9] Id.

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