I was attending the recent annual meeting of the Copyright Society of the USA and listening to a presentation by the always eloquent Maria Pallante, the Register of Copyrights, when she made a comment that startled me regarding a controversial issue. The issue being whether one must have a registration or simply a pending application for registration in order to meet the prerequisite to file a federal copyright infringement lawsuit. This has been an ongoing issue, with a split amongst courts, and the difference has had significant implications.
Obtaining a Certificate of Registration can take anywhere from six weeks to over a year, depending on the nature of the material for which the registration is sought, the method of filing, and/or U.S. Copyright Office backlog. In most instances, upon discovery of an infringement, a person wishes to get into court fairly quickly and having to wait six weeks to a year is unacceptable. Unfortunately, most people do not register their copyrights on an ongoing basis (which they should) so they are confronted with the dilemma of hustling to get a registration in place so they can file a lawsuit.
We have always advocated to our friends and clients, in as strong a fashion as we could, that they file an application for registration prior to any copyrightable material going into the market, if only because almost all of the benefits that accrue to one who has filed a copyright only apply if the application is filed prior to an infringement (i.e., statutory damages and attorneys’ fees). Unfortunately, many clients often ignore this advice.
One can request an expedited filing from the U.S. Copyright Office (which is not always granted), however, even on an expedited basis, a filing will take up to two weeks to complete, and costs approximately $800 per item being registered. If a number of items are at issue, it can easily mount up into the thousands of dollars in fees in order to expedite the registration and there is still somewhat of a delay.
Until now, the courts have been evenly split on whether an application is enough or if a registration is necessary for purposes of filing a copyright infringement lawsuit. Circuits have reached different conclusions, district courts have gone different ways, and even district courts in the same district have come out on opposite sides of the issue. The issue has never reached the Supreme Court, even though there is a split in the circuits in part because of the nature of the problem. Usually, even when a case is filed in a jurisdiction that requires registration and a motion to dismiss for lacking registration is ordered, the copyright owner can turn around and expedite the registration and re-file. As such, these cases have rarely gone up to courts of appeals and never to the Supreme Court. As a result, the split has continued for years. However, it does seem, according to the Register of Copyrights, and after my reread of the Raging Bull case, that this question may have been resolved.
When I initially read the Raging Bull case, I was looking at it for the substantive issues that it was meant to address: specifically, whether the laches defense could be raised in a copyright case. I had not focused on Judge Ginsberg’s offhand comments on “certificates” in her dicta. Ms. Pallante, however, noted these comments and in her speech, quoted from the case:
The registration mechanism, we further note, reduces the need for extrinsic evidence. Although registration is “permissive” both the certificate and the original work must be on file with the copyright office before a copyright owner can sue for infringement. §408 (b), 401(a). Key evidence in the litigation, then, will be the certificate, the original work, and the allegedly infringing work.
Paula Petrella v. Metro-Goldwyn-Meyer, Inc., 134 S.Ct. 896 (2014). (Emphasis added.)
Though it is unclear whether Justice Ginsberg intended to rule on a divisive issue and resolve the wide split in the courts, with briefing on the discussion of the actual issue of application versus registration in her opinion, she specifically states that before the copyright owner can sue, there will be a “certificate of registration.” She makes no reference to an application. So, at least for now, unless this matter is subsequently cleared up by the Court, it would seem that the issue may have been resolved.
This case provides all the more reason why each and every person who wants to protect their copyrights in their works should register early and often. Registration can be completed online for a relatively nominal fee of $35 to $55 per application. Individuals often file simple registrations on their own, while more complicated matters should probably be handled by an attorney. Furthermore, works do not necessarily need to be registered individually; in fact, if you know how, one can register hundreds of photographs and unpublished collections under one application. As such, the benefits to registration far outweigh the costs.