`In the Supreme Court of the United States
`
`
`
`FOURTH ESTATE PUBLIC BENEFIT CORPORATION,
`PETITIONER
`v.
`WALL-STREET.COM, LLC, ET AL.
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE ELEVENTH CIRCUIT
`
`
`BRIEF FOR THE UNITED STATES AS AMICUS CURIAE
`
`
` NOEL J. FRANCISCO
`Solicitor General
`Counsel of Record
`CHAD A. READLER
`Acting Assistant Attorney
`General
`MALCOLM L. STEWART
`Deputy Solicitor General
`JONATHAN Y. ELLIS
`Assistant to the Solicitor
`General
`MARK R. FREEMAN
`DENNIS FAN
`Attorneys
`Department of Justice
`Washington, D.C. 20530-0001
`SupremeCtBriefs@usdoj.gov
`(202) 514-2217
`
`SARANG VIJAY DAMLE
`General Counsel and
`Associate Register of
`Copyrights
`REGAN A. SMITH
`Deputy General Counsel
`JASON E. SLOAN
`Attorney Advisor
`United States Copyright
` Office
`Washington, D.C. 20540
`
`
`
`
`
`
`QUESTION PRESENTED
`Section 411(a) of the Copyright Act provides that “no
`civil action for infringement of the copyright in any
`United States work shall be instituted until” either
`(1) “registration of the copyright claim has been made
`in accordance with this title,” or (2) “the deposit, appli-
`cation, and fee required for registration have been de-
`livered to the Copyright Office in proper form and reg-
`istration has been refused.” 17 U.S.C. 411(a). The ques-
`tion presented is as follows:
`Whether a copyright owner may commence an in-
`fringement suit after delivering the proper deposit, ap-
`plication, and fee to the Copyright Office, but before the
`Register of Copyrights has acted on the application for
`registration.
`
`
`(I)
`
`
`
`TABLE OF CONTENTS
`
`Page
`Interest of the United States....................................................... 1
`Statement ...................................................................................... 1
`Discussion ...................................................................................... 8
`A. The question presented is the subject of an
`entrenched circuit conflict that warrants resolution
`by this Court ...................................................................... 9
`B. Under Section 411(a), a copyright-infringement
`suit may not be filed until the Register of
`Copyrights has either approved or refused
`registration of the work .................................................. 12
`Conclusion ................................................................................... 23
`Appendix A — United States Copyright Office
` letter to William Brown (Apr. 4, 2016) ...... 1a
`Appendix B — United States Copyright Office
` letter to William Brown (Aug. 4, 2017) ..... 3a
`
`TABLE OF AUTHORITIES
`
`
`
`Cases:
`Action Tapes, Inc. v. Mattson, 462 F.3d 1010
`(8th Cir. 2006) ........................................................................ 9
`Algonquin Music, Inc. v. Mills Music, Inc.,
`93 F. Supp. 268 (S.D.N.Y. 1950) ........................................ 18
`Alicea v. Machete Music, 744 F.3d 773 (1st Cir. 2014) ..... 10
`Brooks-Ngwenya v. Indianapolis Pub. Sch.,
`564 F.3d 804 (7th Cir. 2009) ............................................... 10
`Clark v. Rameker, 134 S. Ct. 2242 (2014) ............................ 16
`Cosmetic Ideas, Inc. v. IAC/Interactivecorp,
`606 F.3d 612 (9th Cir.), cert. denied, 562 U.S. 1062
`(2010) .................................................................................. 7, 9
`Hall v. United States, 566 U.S. 506 (2012) .......................... 20
`Kernel Records Oy v. Mosley, 694 F.3d 1294
`(11th Cir. 2012), cert. denied, 569 U.S. 919 (2013) ............. 7
`
`(III)
`
`
`
`IV
`
`Page
`
`Cases—Continued:
`La Resolana Architects, PA v. Clay Realtors Angel
`Fire, 416 F.3d 1195 (10th Cir. 2005), abrogated on
`other grounds by Reed Elsevier, Inc. v. Muchnick,
`559 U.S. 154 (2010)...................................................... 6, 9, 10
`Lumiere v. Pathe Exch., Inc., 275 F. 428
`(2d Cir. 1921) ....................................................................... 17
`Mellouli v. Lynch, 135 S. Ct. 1980 (2015) ........................... 16
`Petrella v. Metro-Goldwyn-Mayer, Inc.,
`134 S. Ct. 1962 (2014) ......................................................... 14
`Positive Black Talk Inc. v. Cash Money Records
`Inc., 394 F.3d 357 (5th Cir. 2004), abrogated on
`other grounds by Reed Elsevier, Inc. v. Muchnick,
`559 U.S. 154 (2010)............................................................ 7, 9
`Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120
`(2d Cir. 2014) ....................................................................... 10
`Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154
`(2010) ............................................................................ 4, 7, 13
`Rosedale v. News Syndicate Co., 39 F. Supp. 357
`(S.D.N.Y. 1941) ................................................................... 18
`Star Athletica, L.L.C. v. Varsity Brands, Inc.,
`137 S. Ct. 1002 (2017) ......................................................... 12
`Vacheron & Constatin-Le Coultre Watches, Inc. v.
`Benrus Watch Co., 260 F.2d 637 (2d Cir. 1958) ............... 18
`
`Statutes and regulations:
`Act of May 31, 1790, ch. 15, 1 Stat. 124 .................................. 2
`§ 3, 1 Stat. 125 .................................................................... 2
`Act of Mar. 4, 1909, ch. 320, § 12, 35 Stat. 1078 .................. 17
`Copyright Act of 1976, Pub. L. No. 94-553,
`§ 101, 90 Stat. 2541 (17 U.S.C. 101 et seq.) ................... 1, 18
`17 U.S.C. 101 ...................................................................... 4
`17 U.S.C. 102(a) ................................................................. 1
`
`
`
`
`
`V
`
`Page
`Statutes and regulations—Continued:
`17 U.S.C. 106 ...................................................................... 1
`17 U.S.C. 205(c) ............................................................... 21
`17 U.S.C. 406(a) ............................................................... 21
`17 U.S.C. 408 .................................................................... 14
`17 U.S.C. 408(a) ................................................................. 2
`17 U.S.C. 408(b) ................................................................. 2
`17 U.S.C. 408(c)(3) ........................................................... 20
`17 U.S.C. 408(e) ............................................................... 20
`17 U.S.C. 408(f ) .......................................................... 16, 22
`17 U.S.C. 408(f )(2) ........................................................... 17
`17 U.S.C. 408(f )(3) ........................................................... 16
`17 U.S.C. 409 ................................................................ 2, 14
`17 U.S.C. 410 ...................................................................... 2
`17 U.S.C. 410(a) ................................................... 2, 3, 7, 14
`17 U.S.C. 410(b) ................................................................. 3
`17 U.S.C. 410(c) ................................................................. 5
`17 U.S.C. 410(d) ..................................................... 4, 14, 16
`17 U.S.C. 411 ...................................................................... 4
`17 U.S.C. 411(a) (§ 101, 90 Stat. 2583) .................. passim
`17 U.S.C. 411(b) ........................................................... 4, 14
`17 U.S.C. 411(c) ......................................................... 20, 22
`17 U.S.C. 412 ................................................................ 5, 22
`17 U.S.C. 412(2) ............................................................... 20
`17 U.S.C. 501(a) ................................................................. 1
`17 U.S.C. 502 ...................................................................... 1
`17 U.S.C. 503 ...................................................................... 1
`17 U.S.C. 504 ...................................................................... 1
`17 U.S.C. 504(c) ................................................................. 5
`17 U.S.C. 505 .................................................................. 1, 5
`17 U.S.C. 705 ................................................................ 3, 21
`
`
`
`
`
`VI
`
`Regulations—Continued:
`37 C.F.R.:
`Section 201.3(d)(7) ............................................................. 4
`Section 202.16(b)(1) ......................................................... 17
`Section 202.16(c) .............................................................. 17
`
`Page
`
`Miscellaneous:
`Black’s Law Dictionary:
`revised 4th ed. 1968 ................................................... 13, 16
`10th ed. 2014 .................................................................... 13
`H.R. Rep. No. 1476, 94th Cong., 2d Sess. (1976) .......... 18, 19
`Prof. Benjamin Kaplan, Study No. 17: The Registra-
`tion of Copyright (Aug. 1958), reprinted in Sub-
`comm. on Patents, Trademarks, and Copyrights,
`Senate Comm. on the Judiciary, 86th Cong., 2d
`Sess., Copyright Law Revision: Studies Prepared
`Pursuant to S. Res. 240, Studies 17-19
`(Comm. Print 1960) .............................................................. 2
`2 Melville B. Nimmer & David Nimmer, Nimmer on
`Copyright (2018) ................................................................. 10
`5 William F. Patry, Patry on Copyright (2017) .................. 10
`U.S. Copyright Office:
`Compendium of U.S. Copyright Office Practices
`(3d ed. 2017) ............................................. 3, 4, 6, 13, 22
`Public Catalog, http://cocatalog.loc.gov .......................... 3
`Webster’s Third New International
`Dictionary (1966)................................................................ 13
`
`
`
`
`
`In the Supreme Court of the United States
`
`
`
`No. 17-571
`FOURTH ESTATE PUBLIC BENEFIT CORPORATION,
`PETITIONER
`v.
`WALL-STREET.COM, LLC, ET AL.
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE ELEVENTH CIRCUIT
`
`
`BRIEF FOR THE UNITED STATES AS AMICUS CURIAE
`
`
`INTEREST OF THE UNITED STATES
`This brief is submitted in response to the Court’s or-
`der inviting the Solicitor General to express the views
`of the United States. In the view of the United States,
`the petition for a writ of certiorari should be granted.
`STATEMENT
`1. The Copyright Act of 1976, 17 U.S.C. 101 et seq.,
`grants copyright protection to “original works of au-
`thorship fixed in any tangible medium of expression.”
`17 U.S.C. 102(a). Among other rights and benefits, cop-
`yright protection confers on owners the exclusive rights
`to copy, distribute, and perform the works. 17 U.S.C.
`106. Anyone who violates these rights is “an infringer
`of the copyright” and may be liable for actual or statu-
`tory damages, injunctive relief, and attorney’s fees and
`costs. 17 U.S.C. 501(a), 502, 503, 504, 505.
`
`(1)
`
`
`
`2
`
`Since the initial Copyright Act of 1790, Act of May
`31, 1790, ch. 15, 1 Stat. 124, Congress has provided for
`the official registration of copyrighted works. See gen-
`erally Prof. Benjamin Kaplan, Study No. 17: The Reg-
`istration of Copyright (Aug. 1958), reprinted in Sub-
`comm. on Patents, Trademarks, and Copyrights, Sen-
`ate Comm. on the Judiciary, 86th Cong., 2d Sess., Cop-
`yright Law Revisions: Studies Prepared Pursuant to
`S. Res. 240, Studies 17-19, at 9-27 (Comm. Print 1960).
`Initially, each author was required, as a condition of
`copyright protection, to deposit a copy of his work in the
`clerk’s office of the district court where the author re-
`sided so that the clerk could “record the same forthwith,
`in a book to be kept by him for that purpose.” § 3,
`1 Stat. 125. Under current law, the responsibility for
`registration rests with the Register of Copyrights as di-
`rector of the Copyright Office. 17 U.S.C. 408(a), 410.
`“Such registration is not a condition of copyright pro-
`tection.” 17 U.S.C. 408(a). As described below, how-
`ever, an author generally must register his work in or-
`der to commence an action for infringement or to obtain
`certain statutory remedies and evidentiary benefits.
`a. A copyright owner “may obtain registration of the
`copyright claim by delivering to the Copyright Office”
`generally two copies of the work, along with an applica-
`tion containing information about the work and the ap-
`plication fee. 17 U.S.C. 408(a) and (b), 409. Upon re-
`ceiving the copies, a compliant application, and the ap-
`propriate fee, the Register “examin[es]” the “material
`deposited” to determine whether the work “constitutes
`copyrightable subject matter” and whether “other legal
`and formal requirements of [the Copyright Act] have
`been met.” 17 U.S.C. 410(a).
`
`
`
`
`
`3
`
`If “after examination” the Register determines that
`the legal and formal requirements are satisfied, “the
`Register shall register the claim and issue to the appli-
`cant a certificate of registration under the seal of the
`Copyright Office.” 17 U.S.C. 410(a). The Office also en-
`ters the registration into its records catalog, creating an
`official public record of the work and of its copyrighted
`status. See 17 U.S.C. 705; U.S. Copyright Office, Com-
`pendium of U.S. Copyright Office Practices § 209 (3d
`ed. 2017) (Compendium). Records of post-1977 regis-
`tered works are available on the Internet to be searched
`by the public. See U.S. Copyright Office, Public Cata-
`log, http://cocatalog.loc.gov. If the Register instead
`finds that “the material deposited does not constitute
`copyrightable subject matter or that the claim is invalid
`for any other reason, the Register shall refuse registra-
`tion” and shall notify the applicant of that refusal.
`17 U.S.C. 410(b).
`This examination process often involves a dialogue
`between the Copyright Office and the applicant. For
`example, an examiner may “discover[] that the appli-
`cant failed to provide sufficient information in a partic-
`ular field or space of the application or elsewhere in the
`registration materials, or [that] the applicant otherwise
`failed to meet the registration requirements.” Compen-
`dium § 605.3(B). In the course of such correspondence,
`an owner can clarify the scope of his application or
`may withdraw or otherwise abandon his claim. Id.
`§§ 605.3(B), 605.7, 605.9.
`Depending on the necessary correspondence and the
`complexity of the legal issues presented, the time to
`complete this process varies, but the average time for
`the Office to resolve a registration application is ap-
`
`
`
`
`
`4
`
`proximately eight months. Applicants may request ex-
`pedited processing of their claims at any time, however,
`and for an additional fee “the Office will make every at-
`tempt to examine the application or the document
`within five working days.” Compendium § 623.4; see id.
`§ 623.6. 1 If the Register ultimately grants registration
`of a work, the effective date of that registration is the
`date on which the Copyright Office first received a proper
`application, deposit, and fee. See 17 U.S.C. 410(d).
`b. Although registration is no longer a condition of
`copyright protection, the Copyright Act continues to
`provide a number of incentives for copyright owners to
`seek registration promptly.
`As most relevant here, Section 411(a) provides that
`“no civil action for infringement of the copyright in any
`United States work shall be instituted until * * * reg-
`istration of the copyright claim has been made in ac-
`cordance with this title.” 17 U.S.C. 411(a); see Reed
`Elsevier, Inc. v. Muchnick, 559 U.S. 154, 157 (2010)
`(explaining that Section 411(a) establishes a non-
`jurisdictional precondition to suit).2 Absent an allega-
`tion that the owner knowingly submitted an inaccurate
`application, the Register’s issued certificate of registra-
`tion “satisfies the requirements of ” Section 411.
`17 U.S.C. 411(b). Section 411(a) further provides that,
`“[i]n any case * * * where the deposit, application, and
`fee required for registration have been delivered to the
`Copyright Office in proper form and registration has
`been refused, the applicant is entitled to institute a civil
`action for infringement,” as long as “notice thereof, with
`
`1 The current fee for expedited processing is $800. 37 C.F.R.
`201.3(d)(7).
`2 In general, “United States work[s]” are works created in the
`United States or exclusively by domestic authors. 17 U.S.C. 101.
`
`
`
`
`5
`
`a copy of the complaint, is served on the Register of
`Copyrights.” 17 U.S.C. 411(a). Within the 60-day pe-
`riod after such notice has been served, the Register may
`intervene “with respect to the issue of registrability of
`the copyright claim.” Ibid.
`The Copyright Act provides additional incentives for
`prompt submission of applications to register authors’
`works. The Act authorizes awards of statutory dam-
`ages, costs, and attorney’s fees to prevailing copyright
`owners. 17 U.S.C. 504(c), 505. Those remedies gener-
`ally are available, however, only for acts of infringement
`that occur after the effective date of registration. See
`17 U.S.C. 412. In addition, a “certificate of a registra-
`tion made before or within five years after first publica-
`tion of the work shall constitute prima facie evidence of
`the validity of the copyright and of the facts stated in
`the certificate.” 17 U.S.C. 410(c).
`2. Petitioner Fourth Estate Public Benefit Corpora-
`tion generates news articles, which it licenses to various
`websites while retaining ownership of the copyrights.
`Pet. App. 2a. Respondents Wall-Street.com and its owner
`initially published petitioner’s articles online pursuant to
`such a licensing agreement. Ibid. Petitioner alleges, how-
`ever, that after respondents cancelled the agreement,
`they continued to display the articles on their website
`without petitioner’s permission. Ibid.
`In early March 2016, petitioner deposited a number
`of those articles with the Copyright Office and submit-
`ted an application and fee for registration of a computer
`database. See App., infra, 3a-4a. “For purposes of cop-
`yright registration, a database is defined as a compila-
`tion of digital information” where the “selection, coordi-
`nation, and/or arrangement of data or other component
`elements within the database is sufficiently creative to
`
`
`
`
`
`6
`
`warrant registration.” Compendium §§ 1117.1, 1117.2.
`Petitioner did not request expedited processing of its
`claim.
`Days later, before the Register had acted on the ap-
`plication, petitioner filed this copyright infringement
`suit. Pet. App. 15a-22a. The Copyright Office subse-
`quently informed petitioner that its initial check for the
`application fee could not be processed. App., infra, 1a-
`2a. On April 11, 2016, the Copyright Office received a
`collectable fee and commenced examining petitioner’s
`application materials. See id. at 3a-4a.
`3. a. While petitioner’s application for registration
`remained pending, the district court dismissed the com-
`plaint without prejudice. Pet. App. 11a-14a. The court
`explained that, although Section 411(a)’s registration
`requirement “is no longer a jurisdictional requirement”
`for a copyright-infringement suit, “it is nonetheless a
`procedural bar to infringement claims.” Id. at 12a. The
`court rejected petitioner’s argument that having “an ap-
`plication to register * * * pending at the time of the suit”
`was “sufficient to survive a motion to dismiss.” Ibid.
`b. The court of appeals affirmed. Pet. App. 1a-10a.
`The court recognized that the question presented here
`has “split the circuits.” Id. at 4a. The court explained
`that the Tenth Circuit “follows the ‘registration’ ap-
`proach * * * , which requires a copyright owner to
`plead that the Register of Copyrights has acted on the
`application [for registration]—either by approving or
`denying it—before a copyright owner can file an in-
`fringement action.” Ibid. (citing La Resolana Archi-
`tects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195,
`1197 (10th Cir. 2005), abrogated on other grounds by
`Reed Elsevier, supra). On the other hand, the court ob-
`
`
`
`
`
`7
`
`served, the Fifth and Ninth Circuits “follow the ‘appli-
`cation’ approach, which requires a copyright owner to
`plead that he has filed ‘the deposit, application, and fee
`required for registration,’ 17 U.S.C. § 411(a), before fil-
`ing a suit for infringement.” Ibid. (citing Cosmetic
`Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 619
`(9th Cir.), cert. denied, 562 U.S. 1062 (2010); Positive
`Black Talk Inc. v. Cash Money Records Inc., 394 F.3d
`357, 365 (5th Cir. 2004), abrogated on other grounds by
`Reed Elsevier, supra).
`The court of appeals noted that its own circuit prec-
`edent had previously endorsed the registration ap-
`proach. Pet. App. 6a (citing Kernel Records Oy v. Mos-
`ley, 694 F.3d 1294 (11th Cir. 2012), cert. denied, 569 U.S.
`919 (2013)). Petitioner argued that this Court’s decision
`in Reed Elsevier, supra, holding that Section 411(a)
`does not establish a jurisdictional requirement, had
`“eroded the rationale for following the registration ap-
`proach.” Pet. App. 6a. The court reexamined the ques-
`tion, however, and reaffirmed its view that Section
`411(a) bars a copyright owner from instituting an in-
`fringement action until the Register has either ap-
`proved or refused registration. Id. at 6a-9a.
`The court of appeals concluded that, under the Cop-
`yright Act, “ ‘registration of a copyright . . . has not
`been made in accordance with . . . title 17’ * * * until
`‘the Register . . . registers the claim.’ ” Pet. App. 6a
`(quoting 17 U.S.C. 410(a), 411(a)) (alterations omitted).
`The court explained that “[t]he Copyright Act defines
`registration as a process that requires action by both
`the copyright owner and the Copyright Office.” Ibid.
`Although the Act requires the owner to commence the
`registration process by submitting a deposit, applica-
`tion, and fee, it directs that Office to “examine[]” the
`
`
`
`
`
`8
`
`submissions and to “determine[]” whether the work is
`copyrightable before approving or refusing registra-
`tion. Ibid. Under the Act’s plain meaning, the court
`concluded, “[f ]iling an application does not amount to
`registration.” Ibid. The court rejected petitioner’s ar-
`guments regarding “legislative history and policy” as
`insufficient to overcome that plain meaning. Id. at 9a.
`4. In August 2017, after the court of appeals’ man-
`date had issued, the Copyright Office notified petitioner
`that the Register had refused registration. App., infra,
`3a-9a; cf. Pet. Reply Br. 2 n.1. Noting that petitioner
`had sought registration on the ground that its articles
`comprised a database, the Copyright Office explained
`that the registrability of a database, like that of a com-
`pilation, depends on whether the selection and arrange-
`ment of those elements qualifies as a work of author-
`ship. App., infra, 7a. Among other grounds for rejec-
`tion, the Office concluded that the selection and ar-
`rangement of petitioner’s database, in which individual
`articles were arranged in chronological order, lacked
`sufficient originality to warrant registration. Id. at 7a-
`8a. The Office further noted that, because the check
`that petitioner had initially tendered with its applica-
`tion was uncollectable, the effective date of registration
`would have been April 11, 2016, when the proper fee was
`received. Id. at 3a-4a.
`DISCUSSION
`Section 411(a) of the Copyright Act provides that “no
`civil action for infringement of the copyright in any
`United States work shall be instituted until” either
`(1) “registration of the copyright claim has been made
`in accordance with” Title 17, or (2) the required deposit,
`application, and fee have been “delivered to the Copy-
`right Office in proper form” and “registration has been
`
`
`
`
`9
`
`refused.” 17 U.S.C. 411(a). The court of appeals cor-
`rectly affirmed the dismissal of petitioner’s copyright-
`infringement suit because petitioner had filed its com-
`plaint before the Register of Copyrights had either ap-
`proved or refused petitioner’s application for registra-
`tion. This Court’s review is warranted, however, be-
`cause the decision below implicates a longstanding cir-
`cuit conflict on an important and recurring question of
`copyright law. The petition for a writ of certiorari
`therefore should be granted.
`A. The Question Presented Is The Subject Of An
`Entrenched Circuit Conflict That Warrants Resolution
`By This Court
`1. In construing Section 411(a), the Eleventh and
`Tenth Circuits have adopted the “registration ap-
`proach,” under which the Register must approve or re-
`fuse registration before a copyright owner may com-
`mence an infringement suit. See Pet. App. 1a-10a; La
`Resolana Architects, PA v. Clay Realtors Angel Fire,
`416 F.3d 1195 (10th Cir. 2005), abrogated on other
`grounds by Reed Elsevier, Inc. v. Muchnick, 559 U.S.
`154 (2010). The Fifth and Ninth Circuits, by contrast,
`have taken the “application approach” advocated by pe-
`titioner, under which “receipt by the Copyright Office
`of a complete application satisfies the registration re-
`quirement of § 411(a).” Cosmetic Ideas, Inc. v. IAC/
`InteractiveCorp, 606 F.3d 612, 621 (9th Cir.), cert. de-
`nied, 562 U.S. 1062 (2010); see Positive Black Talk, Inc.
`v. Cash Money Records Inc., 394 F.3d 357, 365 (5th Cir.
`2004), abrogated on other grounds by Reed Elsevier, su-
`pra; see also Action Tapes, Inc. v. Mattson, 462 F.3d
`1010, 1013 (8th Cir. 2006) (indicating that delivery of de-
`posit, application, and fee is necessary for suit, without
`specifying that it is alone sufficient). The existence of
`
`
`
`
`10
`
`that circuit split has been widely recognized by courts
`of appeals, see, e.g., Psihoyos v. John Wiley & Sons,
`Inc., 748 F.3d 120, 125 (2d Cir. 2014); Alicea v. Machete
`Music, 744 F.3d 773, 779 (1st Cir. 2014); Brooks-
`Ngwenya v. Indianapolis Pub. Sch., 564 F.3d 804, 806
`(7th Cir. 2009) (per curiam); La Resolana, 416 F.3d at
`1201-1202, and the competing views have been analyzed
`at length by the two leading copyright treatises, com-
`pare 5 William F. Patry, Patry on Copyright § 17:78
`(2017) (Patry) (advocating the registration approach),
`with 2 Melville B. Nimmer & David Nimmer, Nimmer
`on Copyright § 7.16[B][3] (2018) (proposing a variant of
`the application approach).
`2. The question presented warrants this Court’s re-
`view. The issue has arisen frequently in the lower
`courts, including in numerous reported court of appeals
`decisions over the past several years. See pp. 9-10, su-
`pra; Patry § 17:78 nn.10-12 (collecting decisions ad-
`dressing the issue from every circuit). There is no real-
`istic possibility that the circuit conflict will be elimi-
`nated without this Court’s intervention. In the court of
`appeals, petitioner argued that the Court’s decision in
`Reed Elsevier cast doubt on the Eleventh Circuit’s prior
`analysis of the question. The court below rejected that
`argument, however, and we are aware of no court that
`has understood Reed Elsevier in the manner that peti-
`tioner advocates. See Patry § 17:78, at 17-232 & n.13.60
`(“Courts have continued to reject the application ap-
`proach after the Supreme Court’s Reed Elsevier opin-
`ion.”) (collecting cases).
`3. This case is a suitable vehicle for resolving the
`question presented. The district court dismissed peti-
`tioner’s suit based solely on petitioner’s acknowledg-
`
`
`
`
`
`11
`
`ment that it had not obtained a registration determina-
`tion from the Register of Copyrights. Pet. App. 11a-
`14a. The court of appeals affirmed on that basis alone.
`Id. at 3a-6a.
`Although the Register completed her examination
`process and refused petitioner’s application for regis-
`tration after the court of appeals issued its decision, see
`App., infra, 3a-9a; p. 8, supra, the case continues to pre-
`sent a live controversy. Section 411(a) specifies that a
`copyright owner may not “institute a civil action for in-
`fringement” until the statutory prerequisites have been
`satisfied. 17 U.S.C. 411(a). Under the registration ap-
`proach adopted by the court of appeals, the district
`court was correct to dismiss the complaint without prej-
`udice because petitioner had not secured a registration
`determination before filing the complaint. To be sure,
`under either of the competing views of Section 411(a),
`the Register’s refusal of registration leaves petitioner
`free to commence a new copyright-infringement suit.
`The choice between those two interpretations, however,
`remains relevant to the determination whether peti-
`tioner’s current suit can go forward.
`The Register’s decision also does not counsel against
`further review in this case as a prudential matter. The
`question presented here concerns the proper disposi-
`tion of an infringement suit that is brought after the
`copyright owner has applied for registration, but before
`the Copyright Office has approved or rejected that ap-
`plication. Given the relative speed with which registra-
`tion decisions are rendered compared to the pace of fed-
`eral litigation, this Court likely could not resolve that
`question in any future case before the Copyright Office
`has acted on the relevant application for registration.
`
`
`
`
`
`12
`
`The fact that the Copyright Office initially could not
`process petitioner’s fee (see App., infra, 1a-2a) likewise
`would not prevent this Court from resolving the circuit
`conflict. The question presented (Pet. i) is whether the
`owner’s action of delivering the “required application,
`deposit, and fee to the Copyright Office” constitutes
`“registration of the copyright claim” within the mean-
`ing of Section 411(a). The district court and court of ap-
`peals decided the case on the assumption that, at the
`time the suit was commenced, petitioner had delivered
`those materials to the Copyright Office, but the Regis-
`ter had not yet approved or refused the application for
`registration. 17 U.S.C. 411(a). Because this case was
`resolved on a motion to dismiss, the district court was
`required to accept as true petitioner’s allegations to
`that effect. Pet. App. 18a. This Court may review the
`court of appeals’ decision on the same assumption.
`B. Under Section 411(a), A Copyright-Infringement Suit
`May Not Be Filed Until The Register Of Copyrights Has
`Either Approved Or Refused Registration Of The Work
`The text, structure, and history of the Copyright Act
`confirm that the Register must have acted on an appli-
`cation for copyright registration—either by approving
`or refusing registration—before the copyright owner
`may institute a copyright-infringement suit. Peti-
`tioner’s contrary arguments are unavailing.
`1. In construing Section 411(a), the Court should
`begin its “inquiry with the text, giving each word its or-
`dinary, contemporary, common meaning,” and should
`“look to the provisions of the whole law to determine
`[the section’s] meaning.” Star Athletica, L.L.C. v. Var-
`sity Brands, Inc., 137 S. Ct. 1002, 1010 (2017) (citations
`and internal quotation marks omitted). Section 411(a)
`
`
`
`
`
`13
`
`states that “no civil action for infringement of the copy-
`right in any United States work shall be instituted un-
`til” either (1) “registration of the copyright claim has
`been made in accordance with this title,” or (2) “the de-
`posit, application, and fee required for registration have
`been delivered to the Copyright Office in proper form
`and registration has been refused.” 17 U.S.C. 411(a).
`Although Section 411(a)’s requirements are not juris-
`dictional, the provision “imposes a precondition to filing
`a claim” of infringement. Reed Elsevier, 559 U.S. at
`166. Several aspects of Section 411(a) itself, and of the
`larger statutory scheme, support the court of appeals’
`conclusion that “registration of [a] copyright claim has
`been made,” 17 U.S.C. 411(a), only when the Register
`has approved an application.
`a. The term “registration” in Section 411(a) is most
`naturally read to refer to the Copyright Office’s official
`recording of an accepted copyright claim. Both at the
`time of Section 411(a)’s enactment and today, the term
`“registration” signified (and signifies) an authoritative
`act of “[r]ecording” or “inserting in an official register.”
`Black’s Law Dictionary 1449 (revised 4th ed. 1968); see
`Webster’s Third New International Dictionary 1912
`(1966) (“something registered” or “an entry in a regis-
`ter”); see also Black’s Law Dictionary 1474 (10th ed.
`2014) (“The act of record