FOURTH ESTATE PUBLIC BENEFIT CORPORATION, Plaintiff - Appellant,
WALL-STREET.COM, LLC, JERROLD D. BURBEN, Defendants-Appellees.
from the United States District Court for the Southern
District of Florida D.C. Docket No. 0:16-cv-60497-RNS
WILLIAM PRYOR, MARTIN, and BOGGS, [*] Circuit Judges.
WILLIAM PRYOR, CIRCUIT JUDGE
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 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.
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 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.
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
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.
STANDARD OF REVIEW
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).
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).
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 ...