The Copyright Act requires the “registration” of a copyright with the Register of Copyrights before a copyright infringement suit can be filed. 17 USC 411(a). Despite the presence of the word “registration” in the statute, courts are divided on whether registration occurs when an owner (1) files an application to register the copyright or (2) only when the Register of Copyrights registers the copyright. The 11th Circuit followed the “registration approach” and held a registration occurs when the Register of Copyrights registers the copyright claim, in the case of Fourth Estate Pub. Ben. Corp. v. Wall-Street.com, LLC, 2017 U.S. App. LEXIS 8766, No. 16-13726 (11th Cir. May 18, 2017).
This matters, under the registration approach, because if a copyright owner does not have a registration at the time infringement occurs, the owner will not only need to file an application, but will need to wait for the Register of Copyrights to act on the application before the owner can sue for copyright infringement under the registration approach. The Copyright Office’s website currently provides that it could take 6 to 8 months for the office to act on a new electronically filed copyright application. That’s a long time to wait to file suit in the face of ongoing copyright infringement.
Therefore, unregistered copyright plaintiffs clearly prefer the “application approach,” which allows a copyright owner to file suit a soon as they file an application to register the copyright.
The statute at issue, 17 USC 411(a), provides, in part, “[N]o civil action for infringement of the copyright in any United States work shall be instituted until … registration of the copyright claim has been made in accordance with this title.”
As explained in the Fourth Estate case, the Fifth and Ninth Circuit follow the application approach. The Eighth Circuit likely also follows the application approach. The Tenth, and now, the Eleventh Circuits follow the registration approach. The First and Second Circuits acknowledge the split on the issue but have not adopted either approach.
The caselaw of the Seventh Circuit includes conflicting dicta on which approach it follows, or whether the question is decided, 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.”), 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.”), Ngwenya v. Indianapolis Pub. Sch., 564 F.3d 804, 806 (7th Cir. 2009).
As recently as 2016, the District Court for the Western District of Wisconsin noted that district courts within the Seventh Circuit (which covers Illinois, Wisconsin, and Indiana [PDF Map]) are also split, some following the registration approach and some following the application approach. See Robbins v. Svehla, 2016 U.S. Dist. LEXIS 162064, 4-5 (W.D. Wis. Nov. 22, 2016).
Even if the copyright owner is located in a circuit that follows the application approach, a circumstance could arise where the owner needs to file suit in a circuit that follows the registration approach. Therefore, the safest approach is to file an application to register a copyright early before infringement occurs, so that the copyright right can be enforced when the need/desire arises.