March 8, 2019
A copyright holder generally must register its copyright before bringing an infringement action. But can the copyright holder bring suit immediately upon applying for registration, or does it have to wait until the U.S. Copyright Office has issued the registration, which may be several months later? Appellate courts have been split on this question. On March 4, in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, the U.S. Supreme Court resolved the split, holding that the copyright holder may bring suit only after registration; merely having applied for registration is not sufficient.
Fourth Estate, a news organization, had entered into an agreement to license certain journalism works to Wall-Street.com, a news website. Upon cancellation of the agreement, Wall-Street continued to display Fourth Estate’s articles on its site.
Fourth Estate sued for copyright infringement, alleging that it had filed applications to register the disputed content with the Copyright Office. The district court dismissed the complaint, finding that the Copyright Office had not acted on Fourth Estate’s applications as required to file an infringement lawsuit. The Eleventh Circuit Court of Appeals affirmed, holding that merely applying for registration is not sufficient. The Supreme Court granted Fourth Estate’s petition for a writ of certiorari to resolve a circuit split on this question.
According to 17 U.S.C. § 411(a), with some exceptions, “no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.” Fourth Estate argued for an “application approach” to registration, asserting that the statute allowed a copyright owner to file suit once it applies for registration. Wall-Street conversely advocated the “registration approach” and asserted that a party may file suit only after the Copyright Office grants registration.
The Court rejected Fourth Estate’s “application approach,” finding support for Wall-Street’s “registration approach” in the plain language, congressional intent, and legislative history of section 411(a). First, the Court noted that the statute provides an exception that allows a copyright owner to bring suit if the Copyright Office has refused registration and is given the option to join the lawsuit. If Fourth Estate were correct, then such provision would be superfluous because a copyright owner would already be able to bring suit immediately upon submission of an application.
Additionally, the third sentence of section 411(a) states that the Register may “become a party to the action with respect to the issue of registrability of the copyright claim.” Again, the Court determined that if an infringement suit could be filed and resolved prior to the Register acting on an application, the aforementioned sentence would not be necessary.
The Court then observed that the statute contained several exceptions allowing copyright holders to bring suit without registration, including for live broadcasts and certain works with a history of infringement prior to authorized commercial distribution. These exceptions highlight the need for registration more generally.
The Court also found registration to be consistent with the underlying congressional intent of the statute. An earlier Second Circuit case, Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., had concluded that a copyright owner had to obtain a registration certificate prior to suing for infringement. A dissenting opinion in that case observed that the Copyright Office had refused registration, leaving the copyright owner with no remedy in court in such instance. Congress subsequently enacted section 411(a), which required registration but addressed the dissenting opinion’s concerns by providing a remedy for instances where registration is refused. Such an exception would be unnecessary if a copyright owner could simply sue for infringement upon submitting an application.
Moreover, despite proposals to eliminate the registration requirement, Congress repeatedly rejected efforts to adopt a scheme in which owners could file suit upon submission of a registration application. To address concerns about predistribution infringement, Congress made the aforementioned preregistration exceptions available in 2005 instead of eliminating the registration requirement altogether.
The Court then rejected Fourth Estate’s argument that a registration requirement deprives a copyright holder of its exclusive rights. Section 504 of the Copyright Act allows copyright owners to recover preregistration damages, and section 502 allows the copyright owners to seek an injunction against infringers. The registration requirement therefore does not deprive the copyright owner of its legal remedies.
Lastly, Fourth Estate raised the concern that the registration requirement might lose its ability to bring suit if the statute of limitations for bringing suit were to expire before the Copyright Office acts on the registration. Rejecting these concerns, the Court noted that the average processing time for copyrights was a period of months, and also stated that it is ultimately up to Congress to resolve such issues through a revision of the statute. Notably, copyright owners should be aware of the registration requirement and should move quickly to register any copyrights that might be the subject of a future lawsuit lest any delays in registration carry past the applicable statute of limitations.
In addition to clarifying the pre-suit registration requirement, the Supreme Court’s decision instructs that a copyright owner who has not registered its copyright should do so promptly.
For more information on this decision, please contact Fitch Even attorney Kerianne A. Strachan, author of this alert.
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