Copyright Registration After Fourth Estate

Fenwick & West LLP

Fenwick & West LLP

In Fourth Estate Public Benefit Corporation v., a unanimous U.S. Supreme Court held in March of this year that a copyright claimant can only commence an infringement suit, unless a limited exception applies, after the Copyright Office has taken action and registered a copyright under 17 U.S.C. § 411(a). That section of the statute states “no 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.” Despite this language, different courts around the country, like the parties in this dispute, interpreted this language to mean different things.

In this case, Fourth Estate, a news organization, sued Wall-Street, a news website, for copyright infringement when Wall-Street failed to take down Fourth Estate’s news articles after a license between the parties expired. Fourth Estate filed its complaint after submitting applications to the Register of Copyrights, but the Register had yet to act on the applications. Because Fourth Estate did not have a registration, the district court dismissed the complaint and the Eleventh Circuit affirmed.

Before the Supreme Court, Fourth Estate argued that the best interpretation of § 411(a) was the “application approach,” where a claimant is permitted to file suit once they submit the application, materials and fees to the Register. Wall-Street contended that the only approach that made sense was the “registration approach,” where a “registration…has been made” and the Register has given a registration to a claimant. The Supreme Court agreed with Wall-Street, saying the registration approach “reflects the only satisfactory reading of § 411(a)’s text.”

The Court reasoned that registration means “action by the Register” because the alternative reading proposed by Fourth Estate would have made subsequent sentences in the same part of the statute — allowing suit upon refusal of application and allowing the Register to become a party to a suit where registrability is in dispute — superfluous. It found that other provisions of the Copyright Act and various actions by Congress maintaining registration as a prerequisite to suit also supported this reading. The Court was not persuaded by Fourth Estate’s argument that a copyright owner may not be able to adequately enforce her rights, even potentially being barred by a statute of limitations, if she has to wait for the Register’s review period. It explained that Congress addressed these concerns when they made carveouts to § 411(a) and that otherwise the seven-month processing time for an application still leaves ample time for a copyright owner to sue after a decision even for infringement that began before the application was submitted.

This was a straightforward ruling, but it will have a significant impact on all authors that maintain and enforce a copyright portfolio. Although the option was limited to certain jurisdictions, authors could previously apply for a registration when a dispute arose. They will now need to develop and implement a process to proactively apply for copyright registrations if they don’t want to wait seven months to take action (or pay for special handling to expedite registration) should a dispute arise later. This ruling can and should have a significant impact on how businesses that maintain significant copyright portfolios but are less vulnerable to preregistration infringement, such as the news organizations in this suit, approach their copyright registration practices.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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