Must a creator have a physical Certificate of Registration to bring a lawsuit in federal court?
Under the 1976 Copyright Act, an action for infringement may be instituted if the U.S. Copyright Office has issued a certificate of registration or issued a refusal of a registration. In order to proceed with a lawsuit, it may be necessary to submit an actual copy of the certificate of registration. Upon request, the Copyright Office will provide a certified copy of a certificate of registration or a refusal letter to any member of the public who pays the appropriate fee for this service. For information concerning this service, see
Compendium (Third), Chapter 2400, § 2408.
As a prerequisite to instituting an infringement action on the basis of a refusal of registration by the Office, notice must be served on the Register of Copyrights together with a copy of the complaint. See, 17 U.S.C. § 411(a). The Copyright Act provides the Register of Copyrights with the opportunity to intervene as a party in such actions as a statutory right with respect to the issue of copyrightability.
Some courts have allowed applicants to initiate copyright infringement actions in federal district court upon the submission of an application to the Office under the so-called “Application Rule.” This rule is not only inconsistent with § 411(a), but also clearly at odds with Congress’s 2008 amendment of § 411 that added a new § 411(b), requiring courts to request the Register of Copyright’s advice as to whether inaccurate information on a certificate of registration would have caused the Register of Copyrights to refuse registration. See, The Prioritizing Resources and Organization for Intellectual Property Act of 2008 (“PRO IP Act”), Pub. L. No. 110-403, 122 Stat. 4256, 4257. An application for registration is not the equivalent of either a certificate of registration or a refusal of registration. Moreover, an application for registration received by the Office is frequently incomplete or otherwise fails to meet the statutory requirement that deposit, application, and fee have been delivered in proper form. Unless such a defect is cured by the applicant, the claim will either be closed or refused, depending on the defect. Thus, not only is the Application Rule inconsistent with the law and the legislative history, but can ensure that both the parties and the court in an infringement action are unaware of critical facts relevant to the claim. This rule ignores the role that Congress intended the Office to play in infringement actions by eliminating the evidentiary presumption of a certificate of registration as well as the Register of Copyrights’ statutory right to notice and the opportunity to intervene in infringement actions brought based on a refusal.
For further information, please see COMPENDIUM (THIRD) Compendium (Third) §§ 623 and 625.