Register Your Copyright Without Delay

Column Editor:  Bruce Strauch  (The Citadel)


This is about that oddity of the author having copyright when the work is fixed in a tangible medium but having to register before suit can be brought.

La Resolana Architects met with Clay Realtors to discuss building townhouses at the famous Angel Fire, New Mexico ski resort.  Architectural drawings were shown that were done specifically for the site, but no agreement was reached.  This was in 1996-97.

In 2003, an architect from La Resolana was at the site and noticed a very similar set of townhouses being sold by Clay.  Teeing up for a lawsuit, La Res applied to register their copyright, sent in apps, fees, etc. Before confirmation of the registration, La Res filed suit.

Clay moved for dismissal because La Res lacked a certificate of copyright registration. La Res replied all the stuff had been received, and copyright was approved for registration on Jan. 22, 2004.

Why do lawyers do these kind of delaying things?  Do they imagine the other side will get bored and go away?

The district court held for Clay.  And up we go to the Tenth Circuit.

So which is it?

Subject matter jurisdiction gives a court power to adjudicate a case.  The 1976 Copyright Act merged a confusing mix of state and federal law into a single and exclusive Federal system.  All state law was preempted.

Protection was made easier by granting it the moment an original idea “leaves the mind” and is put into a tangible medium.  See 17 U.S.C. § 102(a) (“Copyright protection subsists … in original works of authorship fixed in a tangible medium”).


Registration is simple.  Provide a copy of the work, an application and a fee.  The Register of Copyrights then checks the work to determine if it is copyrightable.  If it is, then “the Register shall register the claim and issue to the applicant a certificate of registration.”  17 U.S.C. § 410(a).

But the protection is always there from that moment of tangible medium.  “[R]egistration is not a condition of copyright infringement.”  17 U.S.C. § 408(a).  In fact, registering is entirely voluntary.

But if you want to sue …?

The big benefit of registering is you are allowed to sue in federal court for infringement. 17 U.S.C. § 411(a).  And the certificate of registration serves as prima facie evidence of the copyright’s validity.

Now, about our case …

“[N]o action for infringement of the copyright … shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.”

And even if the registration has been refused, you may still sue with a copy of the complaint served on the Register of Copyrights.  Id. 411(a).

The word “preregistration” was added in 2005.  But this was not part of the statute when this action was filed.

Nothing in the language even suggests that receipt by the Copyright Office is sufficient.  Registration is not automatic.  It can be refused. You must have registration or refusal before filing suit.  And you’re trying to establish your prima facie case for copyright.

But despite the plain language …

Gosh darn it, the courts are divided between the “Registration approach” and the “Application approach.”  The Registration approach can be found in Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637, 640-41 (2d Cir. 1958).  And there’s the nice “the examination would be meaningless if filing and registration were synonymous.”  Robinson v. Princeton Review, Inc., 1996 U.S. Dist. LEXIS 16932.

But Mel Nimmer and various courts think application is sufficient.  After all, the owner can sue whether the application is rejected or not.  See Melville B. Nimmer, Nimmer on Copyright, Vol. 2 § 7.16[B][1][a], p. 7-154-56. See also, Lakedreams v. Taylor, 932 F.2d 1103, 1108 (5th Cir. 1991).

They note that an infringer can run amok while the Copyright Office sifts through piles of applications.  The owner can sue and move towards a court date while waiting for the certificate.

And yet …

Do you really need a paper certificate to sue? The fact of registration can exist before the certificate goes out. And it’s the fact of registration that gives the court jurisdiction.

Nonetheless …

The Tenth Circuit sticks with the registration requirement.  The creative soul ought to get busy and register without waiting for someone to infringe.  Plus you could have the odd circumstance of presumption of validity upon application, then have the certificate refused, and the presumption flips back.

And they affirm the dismissal of the complaint.

And the billable hours go up for lawyers.

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