The U.S. Copyright Act has certain formalities; one of the simplest and easiest to understand is the so-called “registration requirement.”  This is an important requirement—it governs when a copyright owner can bring a lawsuit for copyright infringement.  Section 411(a)‘s terms are clear and unambiguous: no action for may be instituted until registration has been made or refused by the Copyright Office. 

There have been two general approaches taken by various courts and the two leading commentators (Patry and Nimmer) in interpreting the registration requirement.  The majority approach (or the “registration approach”), endorsed by Patry, requires that the Copyright Office actually issue the certificate of registration (or refuse the application) before a lawsuit can be instituted. Conversely, the minority approach (or the “application approach”), which is endorsed by Nimmer, is that once the completed application and fee had been received by the Copyright Office, the Section 411(a) is satisfied and an infringement action can be filed.  

Earlier this year, two lawyers brought a purported copyright infringement class action against Westlaw and Lexis.  The two lawyers—White and Elan—complained that Westlaw and Lexis unlawfully maintained a database containing briefs and pleadings that were created by plaintiffs.  The lawsuit was commenced in New York, which applies the registration approach.  White sought to be the class representative for lawyers who have obtained copyright registration of their works, and Elan represented sought to represent those who have not registered their works.  The vast majority was therefore represented by Elan. 

According to the Wall Street Journal Law Blog, United States District Court Judge Jed Rakoff engaged in the following exchange with Elan’s counsel:

Judge Rakoff: Well, I mean the place obviously to start is with 17 U.S.C. Section 411(a); “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.” By definition, the sub class that’s at issue here today have not complied with that. So how can they bring a civil action?

Mr. Blue:  Your Honor, obviously in our papers the position we’ve taken is that Mr. Elan, who is not registered, as well as the class that he represents, are entitled to two forms of relief even without registration.  And that would be an injunction and the declaratory judgment.

Judge Rakoff: Yes.  Now these, of course, are remedies. They are not, themselves, a form of action. But even assuming they were, the statute is unequivocal; that compliance with registration or preregistration is a precondition of filing a claim.

Judge Rakoff then dismissed the claims for Mr. Elan. Even when they are lawyers, copyright owners cannot evade the basic substantive and procedural requirements simply because they wish to do so. The registration requirement is plain, and any copyright owner seeking to bring a lawsuit needs to abide by it.