               Case: 16-13726       Date Filed: 05/18/2017       Page: 1 of 11


                                                                                 [PUBLISH]

                  IN THE UNITED STATES COURT OF APPEALS

                            FOR THE ELEVENTH CIRCUIT
                              ________________________

                                     No. 16-13726
                               ________________________

                          D.C. Docket No. 0:16-cv-60497-RNS

FOURTH ESTATE PUBLIC BENEFIT CORPORATION,

                                                                        Plaintiff - Appellant,

                                            versus

WALL-STREET.COM, LLC,
JERROLD D. BURBEN,

                                                                    Defendants - Appellees.
                               ________________________

                      Appeal from the United States District Court
                          for the Southern District of Florida
                            ________________________

                                       (May 18, 2017)

Before WILLIAM PRYOR, MARTIN, and BOGGS, * Circuit Judges.

WILLIAM PRYOR, Circuit Judge:

       “Registration” of a copyright is a precondition to filing suit for copyright

infringement. 17 U.S.C. § 411(a). This appeal requires us to decide an issue that

*
 Honorable Danny J. Boggs, United States Circuit Judge for the Sixth Circuit, sitting by
designation.
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has divided the circuits: whether registration occurs when an owner files an

application to register the copyright or when the Register of Copyrights registers

the copyright. Compare Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612,

619 (9th Cir. 2010) (concluding that registration occurs when the owner files an

application), with La Resolana Architects, PA v. Clay Realtors Angel Fire, 416

F.3d 1195, 1197 (10th Cir. 2005) (concluding that registration occurs when the

Register approves an application), abrogated in part by Reed Elsevier, Inc. v.

Muchnick, 559 U.S. 154, 157 (2010). Fourth Estate Public Benefit Corporation

filed a suit for infringement against Wall-Street.com and Jerrold Burden. The

complaint alleged that Fourth Estate had filed an application to register its

allegedly infringed copyrights, but that the Copyright Office had not registered its

claims. The district court dismissed the action because Fourth Estate failed to plead

compliance with the registration requirement, 17 U.S.C. § 411(a). Because

registration occurs when the Register of Copyrights “register[s] the claim,” id.

§ 410(a), we affirm.

                            I.   BACKGROUND

      Fourth Estate Public Benefit Corporation is a news organization that

produces online journalism. It licenses articles to websites but retains the copyright

to the articles. Wall-Street.com, a news website, obtained licenses to a number of

articles produced by Fourth Estate. The license agreement required Wall-Street to


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remove all of the content produced by Fourth Estate from its website before Wall-

Street cancelled its account. But when Wall-Street cancelled its account, it

continued to display the articles produced by Fourth Estate.

      Fourth Estate filed a complaint for copyright infringement, 17 U.S.C. § 501,

against Wall-Street and its owner, Jerrold Burden. The complaint alleged that

Fourth Estate had filed “applications to register [the] articles with the Register of

Copyrights.” But the complaint did not allege that the Register of Copyrights had

yet acted on the application.

      Wall-Street and Burden moved to dismiss the complaint. They argued that

the Copyright Act, id. § 411(a), permits a suit for copyright infringement only after

the Register of Copyrights approves or denies an application to register a

copyright. The district court agreed and dismissed the complaint without prejudice.

                        II.     STANDARD OF REVIEW

      “We review de novo the district court’s grant of a motion to dismiss under

[Federal Rule of Civil Procedure] 12(b)(6) for failure to state a claim, accepting the

factual allegations in the complaint as true and construing them in the light most

favorable to the plaintiff.” Glover v. Liggett Grp., Inc., 459 F.3d 1304, 1308 (11th

Cir. 2006) (emphasis added).




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                            III.     DISCUSSION

      As a preliminary matter, the issue presented does not involve jurisdiction.

Until 2010, our precedent held that registration was a jurisdictional prerequisite to

filing an action for infringement. M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903

F.2d 1486, 1488 (11th Cir. 1990). But in Reed Elsevier, Inc. v. Muchnick, the

Supreme Court held that the “registration requirement is a precondition to filing a

claim that does not restrict a federal court’s subject-matter jurisdiction.” 559 U.S.

154, 157 (2010).

      Although registration is voluntary under the Copyright Act, Congress

created several incentives for a copyright owner to register his copyright, Kernel

Records Oy v. Mosley, 694 F.3d 1294, 1301 (11th Cir. 2012), one of which is the

right to enforce a copyright in an infringement action:

      [N]o 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. In any
      case, however, 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 if notice thereof, with a copy
      of the complaint, is served on the Register of Copyrights.

17 U.S.C. § 411(a); see also id. § 408(f) (explaining that the Register “shall permit

preregistration” for a limited class of works that have “a history of infringement

prior to authorized commercial distribution”); 37 C.F.R. § 202.16(b)(1) (defining

the limited class of works capable of preregistration to include material such as
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movies and sound recordings not at issue in this appeal). The question we must

decide is when registration occurs.

      The question when registration occurs has split the circuits. The Tenth

Circuit follows the “registration” approach to section 411(a), which requires a

copyright owner to plead that the Register of Copyrights has acted on the

application—either by approving or denying it—before a copyright owner can file

an infringement action. La Resolana, 416 F.3d at 1197–1203. In contrast, the Ninth

and Fifth Circuits follow the “application” 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 filing a suit for infringement. Cosmetic

Ideas, 606 F.3d at 618–19; Positive Black Talk Inc. v. Cash Money Records Inc.,

394 F.3d 357, 365 (5th Cir. 2004), abrogated in part by Muchnick, 559 U.S. 154;

Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386–87 (5th Cir. 1984); see also

Melville B. Nimmer, et al., 2 Nimmer on Copyright § 7.16[B][3][b][v] (2016). The

Eighth Circuit, in dicta, also endorsed the application approach. Action Tapes, Inc.

v. Mattson, 462 F.3d 1010, 1013 (8th Cir. 2006). The caselaw of the Seventh

Circuit contains conflicting dicta on whether it follows the application approach,

Chi. Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003) (“[A]n

application for registration must be filed before the copyright can be sued upon.”),

or the registration approach, Gaiman v. McFarlane, 360 F.3d 644, 655 (7th Cir.


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2004) (“[A]n application to register must be filed, and either granted or refused,

before suit can be brought.”), or whether it has even decided this question, Brooks-

Ngwenya v. Indianapolis Pub. Sch., 564 F.3d 804, 806 (7th Cir. 2009). And both

the First and Second Circuits have acknowledged the circuit split but have declined

to decide whether to adopt the application approach or the registration approach.

Alicea v. Machete Music, 744 F.3d 773, 779 (1st Cir. 2014); Psihoyos v. John

Wiley & Sons, Inc., 748 F.3d 120, 125 (2d Cir. 2014).

      The parties dispute whether our precedents bind us to follow either

approach. Wall-Street argues that our Circuit has adopted the registration approach

and cites M.G.B. Homes, where we stated that a “lawsuit for copyright

infringement cannot be filed unless plaintiff has a registered copyright.” M.G.B.

Homes, 903 F.2d at 1488 n.4 (quoting Haan Crafts Corp. v. Craft Masters, Inc.,

683 F. Supp. 1234, 1242 (N.D. Ind. 1988)); see also Kernel Records, 694 F.3d at

1302 n.8 (stating that “[w]e adopted the ‘registration’ approach in M.G.B.

Homes.”). Fourth Estate counters that we are not bound by M.G.B. Homes because

Muchnick eroded the rationale for following the registration approach.

      We need not decide this dispute about our precedents because the text of the

Copyright Act makes clear that the registration approach that we endorsed in

M.G.B. Homes and Kernel Records is correct. “[R]egistration of [a] copyright . . .

has [not] been made in accordance with . . . title [17],”17 U.S.C. § 411(a), until


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“the Register . . . register[s] the claim,” id. § 410(a). Filing an application does not

amount to registration.

      The Copyright Act defines registration as a process that requires action by

both the copyright owner and the Copyright Office. A copyright owner must first

deposit a copy of the material with the Copyright Office, file an application, and

pay a fee. Id. § 408(a). The Register of Copyrights then examines the material and

determines whether “the material deposited constitutes copyrightable subject

matter.” Id. § 410(a). If the material is copyrightable “the Register shall register the

claim and issue to the applicant a certificate of registration.” Id. If “the material

deposited does not constitute copyrightable subject matter . . . , the Register shall

refuse registration and shall notify the applicant in writing of the reasons for such

refusal.” Id. § 410(b).

      The use of the phrase “after examination” in section 410(a) makes explicit

that an application alone is insufficient for registration:

      When, after examination, the Register of Copyrights determines that,
      in accordance with the provisions of this title, the material deposited
      constitutes copyrightable subject matter and that the other legal and
      formal requirements of this title have been met, the Register shall
      register the claim and issue to the applicant a certificate of registration
      under the seal of the Copyright Office.

Id. § 410(a) (emphasis added). That registration occurs only after examination of

an application necessarily means that registration occurs “[l]ater in time than” or



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“subsequent to” the filing of the application for registration. After, Webster’s New

International Dictionary 45 (2d ed. 1961).

      Section 410(b) also establishes that registration can occur only after

application and examination. That section states, “In any case in which the

Register of Copyrights determines that . . . the material deposited does not

constitute copyrightable subject matter . . . the Register shall refuse registration.”

17 U.S.C. § 410(b). And section 411(a) allows a copyright holder who filed an

application for registration to file an infringement suit if “registration has been

refused.” Id. § 411(a). If registration occurred as soon as an application was filed,

then the Register of Copyrights would have no power to “refuse registration.” Id.

§ 410(b).

      Fourth Estate argues that section 408(a) supports the application approach

because it fails to mention the certificate of registration, but we disagree. Section

408(a) states, “[T]he owner of copyright . . . may obtain registration of the

copyright claim by delivering to the Copyright Office the deposit specified by this

section, together with the application and fee specified by sections 409 and 708.”

Id. § 408(a). This section states only the conditions a copyright owner must satisfy

to obtain registration. It does not speak to the timing of registration or the

obligation of the Register of Copyrights to examine and approve or refuse an

application.


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       Section 410(d) also supports the registration approach, notwithstanding the

argument of Fourth Estate to the contrary. That section states that “[t]he effective

date of a copyright registration is the day on which an application, deposit, and fee,

which are later determined by the Register of Copyrights or by a court of

competent jurisdiction to be acceptable for registration, have all been received in

the Copyright Office.” § 410(d). To be sure, section 410(d) relates registration

back to the date that the owner files an application, but section 410(d) also makes

evident that registration occurs only after the Register of Copyrights deems an

application “to be acceptable.” Id. Like other provisions of Title 17, section 410(d)

establishes that registration occurs only after review and approval by the Register

of Copyrights.

      Fourth Estate argues that the three-year statute of limitations for

infringement suits, id. § 507(b), supports the application approach, but we

disagree. Considered together, the registration requirement and the three-year

statute of limitations reflect a statutory plan to encourage registration. See La

Resolana, 416 F.3d at 1199 (“Although Congress established a voluntary

registration system, it created incentives for copyright owners to register their

copyrights.”). True, an owner who files an application late in the statute of

limitations period risks losing the right to enforce his copyright in an infringement

action because of the time needed to review an application. But this potential loss


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encourages an owner to register his copyright soon after he obtains the copyright

and before infringement occurs. And section 507(b) is not the only provision of the

Copyright Act that favors prompt registration. See 17 U.S.C. § 410(c)

(“[R]egistration made before or within five years after first publication of the work

shall constitute prima facie evidence of the validity of the copyright and of the

facts stated in the certificate.” (emphasis added)). That is, far from undermining the

registration approach, the three-year statute of limitations further evidences that the

Copyright Act encourages registration.

      Fourth Estate devotes its remaining statutory arguments to legislative history

and policy, but “[w]hen,” as here, “the words of a statute are unambiguous, then

. . . judicial inquiry is complete.” Villarreal v. R.J. Reynolds Tobacco Co., 839

F.3d 958, 969 (11th Cir. 2016) (en banc) (internal quotation marks omitted)

(quoting Conn. Nat’l Bank v. Germain, 503 U.S. 249, 254 (1992)). Indeed, “[e]ven

if a statute’s legislative history evinces an intent contrary to its straightforward

statutory command, we do not resort to legislative history to cloud a statutory text

that is clear.” Id. (internal quotation marks omitted) (quoting Harry v. Marchant,

291 F.3d 767, 772 (11th Cir. 2002) (en banc)).

      Finally, this appeal is not akin to the “unusual circumstance” presented by

Pacific & Southern Co. v. Duncan, 744 F.2d 1490 (11th Cir. 1984), in which we

“allowed injunctive relief to be sought prior to registration” where there was


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“infringement of a registered work, a continuing series of original works created

with predictable regularity, and a substantial likelihood of future infringements.”

Stuart Weitzman, LLC v. Microcomputer Res., Inc., 542 F.3d 859, 865 n.6 (11th

Cir. 2008) (citing Pacific, 744 F.2d at 1499 & n.17). As explained, Fourth Estate

has not alleged infringement of any registered work. And this appeal, unlike

Pacific, does not involve the ongoing creation of original works, or potential future

infringement of works not yet created.

                             IV.   CONCLUSION

      We AFFIRM dismissal of the complaint filed by Fourth Estate.




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