Supreme Court to Clarify When Copyright Owners Can Sue for Copyright Infringement
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Supreme Court to Clarify When Copyright Owners Can Sue for Copyright Infringement

SCOTUS to Consider Circuit Split Regarding Whether Copyright Owners Must Fully Register Their Works Before Filing a Copyright Infringement Lawsuit

With the justices headed to summer break, attention is turning to the U.S. Supreme Court’s next term, which begins in October. There are several important cases already on the docket involving intellectual property rights, including Fourth Estate Public Benefit Corp. v. LLC. The case should resolve over circuit split regarding whether copyright owners must fully register their works before filing a copyright infringement lawsuit.

Copyright Registration under the Copyright Act

The Copyright Act requires a copyright holder to register the work with the Copyright Office before suing 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."

As Fourth Estate Public Benefit Corp. (Fourth Estate) noted in its petition for certiorari, the right to proceed with litigation does not depend on whether the registration is granted, though a certificate of registration obtained before or promptly after publication is advantageous when bringing a copyright infringement suit. Notably, if a plaintiff has a certificate of a registration “made before or within five years after first publication of the work,” the certificate “shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” The “evidentiary weight to be accorded” a certificate granted thereafter is left to the court’s discretion.

Circuit Split Over Section 411(a)

Fourth Estate owns the copyrights in those journalists’ works and licenses them to a cloud-based news organization called AHN Feed Syndicate. AHN Feed Syndicate subsequently licensed the content to other organizations, including, LLC (Wall- Street).

Under that license, if Wall-Street canceled its account with AHN Feed Syndicate, Wall-Street was to “stop display of all Feed Syndicate provided content and permanently take down, remove and/or delete all cached, saved, archived, stored or data- based content or data.” Wall-Street canceled its account but continued to copy and distribute 244 of Fourth Estate’s works.

In March 2016, Fourth Estate sued Wall-Street, seeking an injunction and damages. Before it did so, it filed its application for registration with the Copyright Office; it did not wait for the Office to act on that application. Nineteen months later, more than half the length of the Copyright Act’s statute of limitations, the application remains pending.

Wall-Street moved to dismiss, arguing that § 411(a) bars Fourth Estate from suing until after the Register of Copyrights acts on its application. The district court granted the motion, and the Eleventh Circuit Court of Appeals affirmed. It reasoned that the Act “defines registration as a process that requires action by both the copyright owner and the Copyright Office.” It further concluded that the use of the phrase “after examination” in § 410(a) – which describes the procedure that the Register must follow in registering a claim – “makes explicit that an application alone is insufficient for registration.” In further support of its decision, the Eleventh Circuit noted that § 410(b) authorizes the Register to “refuse registration,” reasoning that, if “registration occurred as soon as an application was filed, then the Register of Copyrights would have no power to ‘refuse registration.’”

Citing the growing circuit split about the meaning of the statutory phrase “registration . . . has been made” in § 411(a), Fourth Estate appealed to the U.S. Supreme Court. The United States Solicitor General filed an Amicus Curiae brief in support of the writ of certiorari in view of the circuit split on this issue.  On June 28, 2018, the justices agreed to consider the following question:

Whether "registration of [a] copyright claim has been made" within the meaning of§ 411 (a) when the copyright holder delivers the required application, deposit, and fee to the Copyright Office, as the Fifth and Ninth Circuits have held, or only once the Copyright Office acts on that application, as the Tenth Circuit and, in the decision below, the Eleventh Circuit have held.

While the Court has not yet scheduled oral arguments in Fourth Estate Public Benefit Corp. v. LLC., our copyright attorneys will continue to track its progress and post updates as they become available.

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, Jason A. LaBerteaux, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

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