Last week, a federal court in Michigan (E.D. Mich., Case No. 14cv12933) determined that a plaintiff that had not yet obtained registration, but was awaiting a registration decision from the Register, was not able to bring a copyright infringement claim because there was not yet a registration. In determining that it is not enough to merely apply for a copyright registration, the Michigan court joins the Tenth and Eleventh Circuit in holding that "registration" means registration and not mere application. By contrast, the Fifth, Seventh and Ninth Circuits have determined that mere application, without any final decision on registration by the Register, is adequate to permit the filing of an infringement lawsuit.
As mentioned, one would think that this very basic precondition to filing a lawsuit would have become settled by now. Indeed, the 1909 Copyright act, in Sec. 12, required registration as a precondition to filing a lawsuit (" No action or proceeding shall be maintained for infringement of copyright in any work until the provisions of this Act with respect to the deposit of copies and registration of such work shall have been complied with."). And the 1909 Act, in Sec. 6 added in 1939, provided that the Register "is charged with the registration of claims." In other words, the Register had to do something in order to effect registration under the 1909 law. It was not enough that an application was filed in order to complete an act of registration. The Register was charged with registration, not the applicant.
In its 2010 decision in Reed Elsevier v. Muchnick, the Supreme Court confirmed that standard practice under the 1909 copyright law required the Register to grant registration as a precondition to filing an infringement lawsuit. And if the Register refused, then the applicant would need to seek mandamus. Indeed, the Reed Elsevier court cited with approval the 1958 decision of Learned Hand in Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., emphasizing that "we can think of no other added condition for 'registration' but acceptance by the Register."
Section 411 of the present 1976 Copyright Act is the focus of the discord between the "application means registration" courts and the "registration means registration" courts. This section emphasizes that the Register must do something in order to effect registration. Section 411(a) requires as a precondition for filing a lawsuit that "preregistration or registration of the copyright claim has been made." Only if registration has been refused by the Register can the applicant file a lawsuit.
* * * 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.
17 U.S.C. Sec. 411(a).
Section 410(a) allows the Register to refuse registration if the applicant's deposit material does not constitute copyrightable subject matter or the copyright claim is otherwise determined by the Register to be invalid. As such, mere delivery of the application to the Register does not constitute registration. The Register must affirmatively allow registration.
While the "registration means registration" approach may be inefficient, particularly when one considers that the denied applicant can sue anyway following rejection of registration, the obligation of a court to apply the statute as written remains important. Indeed, a court's adherence to the restrictions contained in Congressional enactments respects the role of Congress in ascribing the benefit and the burden imposed by statutes.
As observed by the Michigan court last week, the language of the statute should be the starting point in determining its meaning, and should also be the ending point when the meaning is clear. It is tragic that after 224 years into this country's copyright regimen there exists a core dispute as to what condition must exist permitting the filing of a copyright lawsuit.