Jaburg Wilk

The U.S. Supreme Court has ruled copyright owners must register their copyrights before filing a lawsuit for copyright infringement. The decision resolves a conflict between certain federal appeals courts that held copyright owners merely need apply for copyright registration before filing suit and others that required actual registration to issue.

In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, the Supreme Court was called upon to interpret Section 411(a) of the Copyright Act, which provides, in relevant part –

[N]o 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. 

The decision turned on whether “registration . . . has been made” refers to (a) when a copyright owner submits an application for registration or (b) when the U.S. Copyright Office grants the registration.

Case History 

Fourth Estate Public Benefit Corporation (“Fourth Estate”), a news organization, had licensed numerous articles to Wall-Street.com, LLC for use in an online news repository. Wall-Street.com, LLC (“Wall-Street”) eventually terminated the license but failed to remove the articles as required by the agreement. Fourth Estate applied to register the articles with the Copyright Office and filed a lawsuit against Wall-Street in the U.S. District Court for the Southern District of Florida, alleging copyright infringement for the unauthorized and continued use of its articles. Wall-Street filed a motion to dismiss on grounds Fourth Estate did not yet have copyright registrations for the applicable articles and, thus, was ineligible to file a lawsuit for copyright infringement.

Looking to Section 411(a) of the Copyright Act, Fourth Estate advocated for the “application approach,” which had been adopted by both the Ninth Circuit (which includes federal courts in Cal., Ariz., Wash., Ore., Nev., Alaska, and Haw.) and the Fifth Circuit (which includes federal courts in Tex., Miss., and La.). Fourth Estate argued the language “registration . . . has been made” suggested action by the copyright owner—namely, submission of materials to the Copyright Office for registration. It argued that requiring a copyright owner to obtain registration before suit forced the owner either to sustain significant damage waiting for the registration or to incur the substantial cost of expedited filing fees—which would be particularly onerous where many works are at issue (as was the case in Fourth Estate).

Wall-Street, on the other hand, advanced the “registration approach,” which had been adopted by the Tenth Circuit (including federal courts in Colo., Kan., N.M., Okla., Utah, and Wyo.) and various district courts across the country. The registration approach deems registration to occur at the time the Copyright Office grants registration of a copyright. Wall-Street argued the plain language of the statute requires registration before filing a lawsuit.

The Florida district court found the registration approach more compelling and dismissed the case for Fourth Estate’s failure to obtain registration before suit. The Eleventh Circuit affirmed, joining the circuit split on the side of registration-approach proponents.

The Supreme Court's Decision 

The Supreme Court accepted the case to resolve the circuit split. Adopting the registration approach, the Court held the only sensible reading of the statute required copyright owners to obtain a final registration before filing suit. The Court reviewed the language of the statute in context of other provisions in the Copyright Act, noting that the proffered application approach would render these other provisions inoperable. The Court remarked that Congress had resisted efforts to remove Section 411(a) in years past, indicating its intent that the provision remain in effect and in harmony with all other provisions of the Act. 

The Copyright Act provides limited exceptions where a copyright owner may file a lawsuit before registration issues. Such circumstances exist where a copyright owner is preparing to distribute a work of the type vulnerable to pre-distribution infringement, including movies and musical compositions. In those instances, the Copyright Act allows the copyright owner to apply for preregistration and file a lawsuit, subject to obtaining registration upon publication of the work. The Act also authorizes a copyright owner to sue for infringement of a live broadcast prior to registration of the work. But, absent these limited exceptions, copyright owners must now obtain final registration before filing a lawsuit for copyright infringement.

The Fourth Estate decision is a major change to copyright litigation in the Ninth and Fifth Circuits, where copyright owners who have not yet registered their copyrights must now wait to enforce their rights until the Copyright Office issues registration. The Copyright Office generally takes about seven months to issue registration after an application is filed, though it can sometimes take longer. Copyright owners may file applications requesting expedited consideration for an additional fee. But, as Fourth Estate argued, those fees can become oppressive when many different works are at issue. And, of course, any additional delay—particularly where the infringer is causing serious harm—can be extremely detrimental to the value of the work. 

Practical Implications 

Copyright registration is relatively inexpensive. It is now more important than ever to register copyrights early to ensure the ability to enforce the copyrights in a timely and effective manner. If a copyright owner discovers an infringer before registering the infringed work, the owner has only two options: (1) wait the approximate seven-month period for registration to issue, or (2) pay a much higher fee to expedite the processing. For certain works that are vulnerable to pre-distribution infringement (such as movies and musical compositions), the copyright owner may be able to file a lawsuit by first filing for preregistration. An exception also exists for filing an infringement lawsuit for live broadcasts.

Notably, the Supreme Court’s decision did not alter existing law that allows copyright owners to recover additional types of damages and attorney fees if registration is obtained within three months of publication or prior to the infringement. This, along with the Fourth Estate decision, is a compelling reason to not delay seeking registration. It is particularly important to register any works that may have market value or that are important to business operations. As indicated above, registration grants the owner numerous benefits, including the ability to immediately enforce its rights in court.