I was attending the recent annual meeting of the Copyright Society of the USA and listening to a presentation by the always eloquent Maria Palantes, the Registrar of Copyrights, when she made a comment that startled me regarding a controversial issue.
There has been an ongoing conflict as to the prerequisite for filing lawsuits and requesting damages in a copyright case. The issue was whether you simply had to have filed the application, deposit material and fees or if you, in fact, had to have an actual final registration issued by the copyright office in hand before filing a lawsuit. The difference has had significant implications.
Obtaining a Certificate of Registration can take anywhere from six weeks to over a year depending on the nature of the material for which the registration is sought, the method of filing, and/or U.S. Copyright Office backlog. In most instances, upon discovery of an infringement, a person wishes to get into court fairly quickly and having to wait 6 weeks to a year is unacceptable. Unfortunately, most people do not register their copyrights on an ongoing basis (which they should) therefore, they are confronted with a dilemma of hustling to get a registration in place so they can file a law suit.
We have always advocated to our friends and clients, in as strong a fashion as we could, that they file an application for registration prior to any copyrightable material going into the market. If only due to the fact that almost all of the benefits that accrue to one who has filed a copyright registration only apply if the application is filed prior to an infringement (i.e., statutory damages and attorney's fees) or to get a quick injunction.
One can request an expedited filing from the U.S. Copyright Office (which is not always granted), however, even on an expedited basis a filing will take up to two weeks to complete, and costs approximately $800 per item being registered. If a number of items are at issue, the fees can easily mount up into the thousands of dollars in order to expedite the registration and there is still somewhat of a delay.
Until now, the courts have been evenly split on whether or not an application is enough or a registration certificate is necessary for purposes of filing a copyright infringement lawsuit. Circuits have reached different conclusions, district courts have gone different ways, and even district courts in the same district have come out on opposite sides of the issue. The issue has rarely reached the Circuits and never the Supreme Court, even though there is a split in the Circuits, due to the practical solution to the problem. Usually, it is resolved, if one is in registration jurisdiction and they lose on a Motion to Dismiss, they file for an expedited registration and re-file or simply file for a registration once the Motion to Dismiss is filed and hope they get the registration before a negative ruling comes down. As such, the split has continued for years. However, it does seem, according to the Registrar of Copyrights, and after my re-read of the Raging Bull case, that this question may have been resolved.
When I initially read the Raging Bull case, I was looking at it for the substantive issues that it was meant to address. Specifically, whether the laches defense could be raised in a copyright case. I had not focused on Judge Ginsberg's offhand comments on "certificates" in her dicta. Ms. Palantes apparently had (as I have not seen any published articles or comments on this point it seems as if this important part of the ruling has generally gone unnoticed) . In her speech, Ms. Palantes quoted from the case:
"The registration mechanism, we further note, reduces the need for extrinsic evidence. Although registration is "permissive" both the certificate and the original work must be on file with the copyright office before a copyright owner can sue for infringement. §408 (b), 401(a). Key evidence in the litigation, then, will be the certificate, the original work, and the allegedly infringing work." Paula Petrella v. Metro-Goldwyn-Meyer, Inc., 134 S.Ct. 896 (2014). (emphasis added)
While Justice Ginsberg may not have intended to rule on this divisive issue and resolve the wide split in the courts in this manner, without discussion of the actual application versus registration debate in her opinion, she specifically stated that before the copyright owner can sue, there will be a "certificate." She makes no reference to an application. So, at least for now, unless this matter is subsequently cleared up by the Court, it would seem that the issue may have been resolved whereby you now need a Copyright Registration to get into court and not merely filing an application with the Copyright Office.
This case provides all the more reason that each and every person who wants to protect their copyrights in their works, register early and often. Registration can be completed online for a relatively nominal fee of $35 to $55, per application. Individuals often file simple registrations on their own, while more complicated matters should probably be handled by an attorney. Also, if you know how one can register scores and even hundreds of photographs and unpublished collections under one application.
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