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Copyright Owners Must Register Copyright Prior to Suit


March 20, 2019
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Supreme Court of United States Rules Copyright Owners Must Register Copyright Prior to Suit

You may have heard, the U.S. Supreme Court ruled that a copyright owner can’t file an infringement lawsuit until the U.S. Copyright Office has granted a copyright registration for the subject work of concern. Once it has done so, a copyright owner may recover for copyright infringement that occurred both before and after registration.

Circuit Split Over Copyright Act Interpretation

The Copyright Act requires a copyright holder to register the work with the U.S. Copyright Office prior to bringing suit for copyright infringement. Specifically, Section 411(a) of the Copyright Act provides (with qualifications) that “no civil action for infringement of [a] 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.”

Prior to the Supreme Court’s recent decision, the federal courts of appeals were divided regarding whether “registration . . . has been made” when a copyright owner submits the application, materials, and fee required for registration, or only when the Copyright Office grants registration.

In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. __ (2019), Fourth Estate Public Benefit Corporation (Fourth Estate) argued that a copyright “registration” is made as soon as the “complete application” is delivered to the Copyright Office, citing Ninth Circuit precedent in support. The news organization licensed works to respondent Wall-Street.com, LLC (Wall-Street), a news website. Fourth Estate sued Wall-Street and its owner for copyright infringement of news articles that Wall-Street failed to remove from its website after canceling the parties’ license agreement.

Fourth Estate had filed applications to register the articles with the Copyright Office, but the Register of Copyrights had not yet acted on those applications. The District Court dismissed the complaint, and the Eleventh Circuit Court of Appeals affirmed. It held that “registration . . . has [not] been made” under §411(a) until the Copyright Office registers a copyright.

Supreme Court’s Decision in Fourth Estate

The U.S. Supreme Court affirmed. “We hold, in accord with the United States Court of Appeals for the Eleventh Circuit, that registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright,” Justice Ruth Bader Ginsburg wrote on behalf of the unanimous Court. “Upon registration of the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration.”

In reaching its decision, the Court cited the plain language of the Copyright Act. As Justice Ginsburg explained:

If application alone sufficed to “ma[ke]” registration, §411(a)’s second sentence—allowing suit upon refusal of registration—would be superfluous. What utility would that allowance have if a copyright claimant could sue for infringement immediately after applying for registration without awaiting the Register’s decision on her application? Proponents of the application approach urge that §411(a)’s second sentence serves merely to require a copy- right claimant to serve “notice [of an infringement suit] . . . on the Register.” This reading, however, requires the implausible assumption that Congress gave “registration” different meanings in consecutive, related sentences within a single statutory provision.

The Court noted that the registration approach reading of §411(a) is supported by other provisions of the Copyright Act. According to the Court, §410 confirms that application is discrete from, and precedes, registration, while §408(f)’s preregistration option would have little utility if a completed application sufficed to make registration.

The Court went on to reject Fourth Estate’s alternative interpretation, including the argument that, because “registration is not a condition of copyright protection,” §411(a) should not bar a copyright claimant from enforcing that protection in court once the owner has applied for registration. Justice Ginsburg wrote:

[T]he Copyright Act safeguards copyright owners, irrespective of registration, by vesting them with exclusive rights upon creation of their works and prohibiting infringement from that point forward. If infringement occurs before a copyright owner applies for registration, that owner may eventually recover damages for the past infringement, as well as the infringer’s profits. §504. She must simply apply for registration and receive the Copyright Office’s decision on her application before instituting suit.

The Supreme Court also noted that there are limited exceptions to the registration requirement. For example, a copyright owner who is preparing to distribute a work of a type vulnerable to predistribution infringement—e.g., a movie or musical composition—may apply to the Copyright Office for preregistration. A copyright owner may also sue for infringement of a live broadcast before “registration . . . has been made.”

Finally, while the Court acknowledged that registration processing times have increased from one to two weeks in 1956 to many months today, it concluded that such delays do not allow the Court to revise §411(a)’s congressionally composed text.

Key Takeaway for Copyright Owners

In light of the Supreme Court’s decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, copyright owners must be expeditious in pursuing registration with the Copyright Office. When time is of the essence due to ongoing or threatening infringement, copyright owners may want to explore the Copyright Office’s “Special Handling” service, which can expedite the processing of a copyright application in the event of pending or prospective litigation. The shorter time frame of approximately five working days is certainly faster but does come at a cost of $800. To determine your best course of action, we always encourage consultation with an experienced intellectual property attorney.

If you have any questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, William R. Samuels, at 201-806-3364.