Registration is Fundamental

IP Theory Volume 8 | Issue 1 Article 1 2018 Registration is Fundamental Nicole Pottinger University of Kentucky College of Law, Brian L. Frye University of Kentucky College of Law, Follow this and additional works at: https://www.repository.law.indiana.edu/ipt Part of the Intellectual Property Law Commons, and the Science and Technology Law Commons Recommended Citation Pottinger, Nicole and Frye, Brian L. (2018) "Registration is Fundamental," IP Theory: Vol. 8 : Iss. 1 , Article 1. Available at: https://www.repository.law.indiana.edu/ipt/vol8/iss1/1 This Article is brought to you for free and open access by the Law School Journals at Digital Repository @ Maurer Law. It has been accepted for inclusion in IP Theory by an authorized editor of Digital Repository @ Maurer Law. For more information, please contact . Registration is Fundamental NICOLE E. POTTINGER & BRIAN L. FRYE† ABSTRACT Under the Copyright Act, copyright owners can file infringement actions only if registration of their copyright claim with the Copyright Office “has been made” or “has been refused.” The United States Supreme Court recently granted certiorari in Fourth Estate v. Wall-Street.com, in order to decide whether registration is “made” when a claimant files a registration application or when the Copyright Office registers the claim. This article argues that the Court should hold that registration occurs when the Copyright Office registers the claim, in order to ensure that federal courts can benefit from the expertise of the Copyright Office. The Copyright Office recently began publishing the opinions of Copyright Office Review Board. This article uses those administrative opinions to show how the Copyright Office has developed the concepts of "originality" and "creativity" in ways that are helpful to the federal courts. It concludes with an Appendix listing the Copyright Office Review Board opinions addressing originality and explaining the basis for each decision. INTRODUCTION In the United States, copyright ownership has always involved registration. Initially, it required registration with a district court. Later, it required registration with the Copyright Office. Eventually, registration became largely optional. Today, copyright ownership does not require registration at all. But registration is still important, at least in part because it is a prerequisite for filing a copyright infringement action. And yet, it is surprisingly unclear when registration actually occurs. Some circuits have held that registration occurs when the Copyright Office decides whether to register a work or reject the registration application. But others have held that a work is registered as soon as the copyright owner files a registration application. The former rely primarily on the text of the Copyright Act, and the latter rely primarily on the unfairness of making the copyright owner wait for the Copyright Office to act. On June 28, 2018, the United States Supreme Court granted certiorari in Fourth Estate v. Wall-Street.com, in order to resolve the disagreement.1 The Court will probably conclude that registration occurs when the Copyright Office either registers or refuses to register a copyright claim. After all, the Copyright Act provides that  Candidate for J.D. 2019, University of Kentucky College of Law; B.A. Centre College, 2016. Spears-Gilbert Associate Professor of Law, University of Kentucky College of Law. J.D., New York University School of Law, 2005; M.F.A., San Francisco Art Institute, 1997; B.A, University of California, Berkeley, 1995. 1 Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, 2018 WL 3148286, at *1 (U.S. June 28, 2018). † 2 IP THEORY [Vol. 8:1 a copyright owner cannot file a copyright infringement action until registration “has been made” or “has been refused” by the Copyright Office. 2 The Court tends to rely on statutory text whenever possible, and the most natural reading of the Copyright Act requires Copyright Office action before a copyright owner can file an infringement action. While it is inconvenient for copyright owners to wait for the Copyright Office to decide their registration applications, it also provides an incentive for them to register early and often. But waiting for the Copyright Office is also good policy. While eligibility for registration is an issue for only a tiny minority of works, the Copyright Office has extensive experience in determining whether works qualify for registration. Courts do not. Of course, courts need not defer to the Copyright Office’s registration decisions. But they can benefit from its 148 years of expertise in evaluating copyrightable subject matter. 3 In particular, courts can and should consider the Copyright Office’s gloss on the concepts of “originality” and “creativity,” because courts rarely address those questions, but the Copyright Office decides them every day. As the Third Circuit observed in Southco v. Kanebridge, “the practice of the Copyright Office ‘reflects a body of experience and informed judgment to which courts and litigants may properly resort for guidance."4 This Article argues that “registration is fundamental” because the considered opinions of the Copyright Office help courts better understand and decide questions of copyrightable subject matter. It begins by briefly explaining the history of copyright registration and its role in copyright ownership, culminating in Fourth Estate v. Wall-Street.com. Then it explains the registration process, focusing on the originality, independent creation, and creativity requirements for copyrightable subject matter. It observes that if registration occurs when a copyright owner files a registration application, then rational copyright owners will not bother to register until they want to file an infringement action, and courts will lose the benefit of the Copyright Office’s insight. And then it demonstrates the value of that insight by providing a survey of selected Copyright Office Review Board Letters. The Appendix provides a table of all published Review Board letters, including a brief summary of the grounds for the Board’s decision. THE HISTORY OF COPYRIGHT REGISTRATION When the United States created federal copyright protection, it also created federal copyright registration.5 Under the Copyright Act of 1790, federal copyright protection required 2 17 U.S.C.A. § 411(a) (Westlaw through Pub. L. No. 115-223). In 1870, the Library of Congress created a Copyright Department, which was the predecessor of the Copyright Office. Copyright Act of 1870, ch. 230, 16 Stat. 198, § 85 (1870). 4 Southco, Inc. v. Kanebridge Corp., 390 F.3d 276, 286 n.5 (3d Cir. 2004) (quoting Yates v. Hendon, 541 U.S. 1, 4 (2004)). 5 See U.S. COPYRIGHT OFFICE, COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES § 101.1 (3d ed. 2017) (hereinafter COMPENDIUM (THIRD)). See generally Zvi S. Rosen & Richard Schwinn, An Empirical Study of 225 Years of Copyright Registrations ( (...truncated)