Registration Approach Wins a Round in the Suit Filing Timing Debate

Can a copyright holder file a civil action for copyright infringement if it has filed a copyright registration application (Application Approach) or must the copyright holder wait until the Copyright Office has made a decision on the registration application (Registration Approach.)?

Music creator Asche & Spencer (Asche) discovered that the hosts of the web series “Reluctantly Healthy” used a number of Asche’s works without obtaining a license from Asche.  Asche filed a copyright registration application for the allegedly infringed works.  Asche sued Reluctantly Healthy’s hosts, Principato-Young Entertainment, Inc., Kids At Play, LLC, and Electus, LLC, for copyright infringement before receiving a response to its registration application from the Copyright Office.  The defendants brought a motion to dismiss. 

The district court noted that its circuit, the Eight Circuit, has not determined whether the Application Approach or the Registration Approach should apply.  The Fifth, Seventh, and Ninth Circuits have adopted the Application Approach, while the Tenth and Eleventh Circuits have adopted the Registration Approach.  The district court decided that the Registration Approach is more consistent with the relevant statutory language and dismissed Asche’s complaint.

17 U.S.C. §411(a) states in part that

no 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.

According to the district court,

The first sentence of § 411(a) establishes that a plaintiff must have registered its copyright before it can initiate a civil action for infringement of the copyright. The second sentence provides that the Copyright Office bears the active burden of registering a copyright or refusing such registration. In other words, ‘registration’ refers not to the act of application for registration, but rather the Copyright Office’s determination as to whether the subject matter is copyrightable.

(Opinion pdf page 5).

The district court indicated that its decision is supported by §§410(a) and 410(d), which distinguish application and registration as separate acts. 

The court also notes that the Copyright Office has explicitly adopted the Registration Approach:

The mere submission of an application to the U.S. Copyright Office does not amount to a registration.  The statute and the legislative history, when read together, clearly evince Congress’s intention that the Register of Copyrights must either issue a certificate of registration or refuse an application for registration prior to filing a suit for copyright infringement.

(Opinion pdf page 6).

The district court further determined that Congress provided incentives, such as statutory damages, to encourage copyright holders to register their works soon after publication, rather than waiting until their works were infringed.  The Copyright Act also gives the Copyright Office an opportunity to weigh in on the protectability of a particular work.  Finally, the Copyright Office’s decision on which compositions will be registered defines the scope of the litigation.  These consideration all support the Registration Approach.

Copyright holders can take advantage of the Copyright Office’s Special Handling expedited registration process to prevent the statute of limitations from expiring while the copyright holder waits for a registration decision from the Copyright Office. 

The district court dismissed Asche’s complaint, but encouraged Asche to file a motion to reopen the case once Asche has heard from the Copyright Office.

This case is Asche & Spencer Music, Inc. v. Principato-Young Entm’t, Inc., Civil No. 15-3305(DSD/HB), U.S. District Court, District of Minnesota.

Leave a Reply

Your email address will not be published. Required fields are marked *