January 07, 2015 Articles

Filing a Copyright Complaint When the Application Is Pending

The circuit courts are split on whether filing an application provides sufficient basis for a copyright infringement claim

By W. George Wailes

Can you bring a copyright infringement lawsuit if you have only filed an application to register the copyright, but the application has not yet been granted? Like the response to many good legal questions, the answer is, "It depends." It depends on whether you file the lawsuit in a circuit that follows the "application approach" or one that follows the "registration approach." Some federal courts, including the Fifth, Seventh, and Ninth Circuit Courts of Appeal, follow the "application approach" and hold that filing an application provides sufficient basis for a copyright infringement claim. Other federal courts, including the Tenth and Eleventh Circuit Courts of Appeal, follow the "registration approach" and hold that the applicant needs actual copyright registration to sue for copyright infringement; an application for copyright registration is not sufficient. If your client has only filed an application that the Copyright Office has not yet acted to accept or reject, you need to determine which approach the court in which you intend to sue is likely to follow. If your intended court follows the registration approach, you may be forced to sue in a court in a different circuit (provided that court has jurisdiction over the defendant) or wait for the Copyright Office to grant the registration in order to avoid having the claim rejected outright.

First, the issue. Section 411(a) of the 1976 Copyright Act requires registration of a copyright to institute an infringement action:

Except for an action brought for a violation of the rights of the author under section 106A(a) [moral rights], and subject to the provisions of subsection (b), 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.

17 U.S.C. ยง 411(a). The question is whether the "registration" required by the statute before filing an infringement action is satisfied by filing an application with the Copyright Office. For more than 10 years, the circuit courts have split on this issue, with some adopting the application approach and others the registration approach.

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