2d Circuit Punts on Copyright Registration Question Again

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. (Robert Wagner on G+)

An interesting copyright question continues to percolate in the Circuit Courts over what “registration” means as a prerequisite for filing a copyright claim in federal court. The Second Circuit, in The A Star Group, Inc. v. Manitoba Hydro, (No. 14-2738) noted the Circuit split on the issue but declined again to weigh in.

Under 17 U.S.C. § 411(a), a copyright holder must register its work before it can initiate a lawsuit against an infringer:

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.

The question is what is sufficient to satisfy the “registration” requirement–is the filing of the application sufficient, or does the application need to be accepted and granted by the Copyright Office?

Currently, the Circuit Courts on split on the issue. The Fifth and Ninth Circuits require only that the copyright holder file the application. See, e.g., Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir. 1984); Cosmetic Ideas Inc. v. IAC/InteractiveCorp,  606 F. 3d 612, (9th Cir. 2010). While the Tenth and Eleventh Circuits require that the Copyright Office grant the application. See, e.g., M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488-89 (11th Cir. 1990) ;  La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1202-05 (10th Cir. 2005). The Seventh Circuit appears to have taken conflicting views on this matter. Compare Chicago Bd. of Educ. v. Substance Inc., 354 F.3d 624, 631 (7th Cir. 2003) with Gaiman v. McFarlane, 360 F.3d 644, 655 (7th Cir. 2004).

The Second Circuit chose not to wade into this issue and was able to decide the case without having to choose a side. At some point, however, the U.S. Supreme Court will likely need to resolve this dispute as the Circuit split continues. As it stands now, a copyright holder can face very different results depending on where the case is filed, which is not a helpful situation when a national right, such as a copyright, is involved.