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June 30, 2015 Practice Points

Form over Substance: The Bizarre Tyranny of the Copyright Registration Certificate

A United States copyright registration certificate is a peculiar document, and one whose import has been elevated to a level that greatly exceeds its intended function.

By Stephen M. Doniger and Scott Alan Burroughs

A United States copyright registration certificate is a peculiar document, and one whose import has been elevated to a level that greatly exceeds its intended function. It was long thought of as a jurisdictional prerequisite to bringing and maintaining a copyright infringement based on 17 U.S.C. section 411, which states 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." But in 2010, the U.S. Supreme Court in Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237, 1248 (2010) clarified that "section 411(a)'s registration requirement is nonjurisdictional, notwithstanding its prior jurisdictional treatment" and that it does no more than "impose[s] a precondition to filing a claim. Id. at 1247 (emphasis added).

Despite Muchnick's holding, alleged infringers still attempt to capitalize on the confusion between "copyright" and "copyright registration" by challenging the validity of the registration (not the copyright) at issue and arguing that a valid registration is required to prevail on a claim of infringement. Thus, if the registration is found invalid, the case should be dismissed for lack of jurisdiction. This is wrong.  

An author holds a copyright in his or her protectable expression the moment that expression is created, i.e., "fixed in a tangible medium." Registration, on the other hand, is completely distinct from the copyright to which it pertains. The registration scheme was enacted to provide a quid pro quo—the artist submits a registration that includes a copy of their work to be indexed in the Copyright Office's capacious library. See U.S. Copyright Office, Annual Report of the Register of Copyrights, Fiscal Year Ending September 30, 2007, at 13–14, 16 (Sept. 30, 2007); Library of Congress, Annual Report of the Librarian of Congress for the Fiscal Year Ending September 30, 2007, at 25 (2008) ("Each year, the Copyright Office registers more than 500,000 claims and transfers more than 1 million copyrighted works to the Library's collection through the copyright deposit system."). The artist in return is given a presumption of ownership and the right to seek statutory damages and attorneys' fees against anyone that infringes the artist's rights in that registered work. An artist who has not registered his work at the time it is infringed is not just denied these valuable rights, but is denied access to the court until registration is at least attempted—thus enriching our national archives in the Library of Congress.

A "valid registration" is not required by the Act to prevail on an infringement claim. 17 USC section 411 expressly states that the registration is necessary to "initiate" an action, not to maintain or prevail in one. So, by the plain language of the statute, a registration obtained prior to the filing of the case should support a civil action, even where there is a later finding that the registration has an error or is "invalid." Similarly, a copyright claimant is authorized to file suit where a registration application is denied so long as notice of the action is provided to the Copyright Office. Thus, defense arguments of "invalid registration" are specious.

All relevant Supreme Court authority compels the same conclusion. A copyright holder seeking to prove infringement must prove: "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original."  Feist Publications v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); see also Swirsky v. Carey, 376 F.3d 841, 844 (9th Cir.2004). Importantly, the case law states that a "valid copyright" and not a "valid copyright registration" is required to prevail. Yet arguments over the validity of copyright registrations have consumed many billable and court hours as defendants advance such arguments in an attempt to evade liability for infringement.

Focusing on the "validity" of a registration is bizarre because such an approach ignores both the letter and the spirit of the Copyright Act. Indeed, 17 U.S.C. section 501, the section of the Copyright Act titled "Infringement of Copyright," does not even mention the words "registration" or "certificate," instead stating that infringement affects the "exclusive rights of the copyright owner as provided by sections 106 through 122." 17 U.S.C. § 501 (emphasis added). And 17 U.S.C. section 106 states that the exclusive rights are granted to an "owner of copyright" and makes no mention of any rights being confined to a copyright holder who is also an owner of a copyright registration. Elsewhere, the Act is even more direct, stating that registration "is not a condition of copyright protection." 17 U.S.C. § 408(a).

The inclusion of a requirement in one section of the Act, coupled with an omission in another section, makes clear the statutory construction: Congress's inclusion of the word "registration" in section 411 and omission of this word from sections 501 and 106 establish that a registration is required only at the time of filing, and not thereafter. See Stewart v. Ragland, 934 F.2d 1033, 1041 (9th Cir.1991) ("When certain statutory provisions contain a requirement and others do not, we should assume that the legislature intended both the inclusion and the exclusion of the requirement."). So, if a court finds a copyright owner's registration to contain an error, and invalidates it on that basis, this invalidation should not affect the copyright holder's ability to maintain the prosecution of its case (though it may affect its presumption of ownership and ability to seek statutory damages and attorneys' fees).

At most, section 411 requires a copyright claimant to hold a registration only to "institute" an infringement claim. There is no requirement that this claimant must hold a "valid" registration throughout the pendency of the litigation, and any efforts to defeat otherwise meritorious copyright infringement claims by challenging the registration should always be rebuffed. 

Keywords: intellectual property, litigation, copyright infringement, copyright registration, Copyright Act, copyright certificate

Stephen M. Doniger and Scott Alan Burroughs are with Doniger / Burroughs in Venice, California.

Copyright © 2015, American Bar Association. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or downloaded or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. The views expressed in this article are those of the author(s) and do not necessarily reflect the positions or policies of the American Bar Association, the Section of Litigation, this committee, or the employer(s) of the author(s).

Stephen M. Doniger and Scott Alan Burroughs – June 30, 2015