March 6, 2019Client Alert

Supreme Court Says Plaintiffs Must Have Copyright Registrations Before Filing Infringement Actions

On Monday, the U.S. Supreme Court’s unanimous ruling written by Justice Ginsburg in Fourth Estate Public Benefit Corp. v., LLC, resolved a circuit split by holding that a party may sue for copyright infringement only after the Copyright Office officially registers the copyright, or refuses registration. In the past, courts have been split regarding whether the Copyright Act allows a copyright owner to file suit as soon as all of the materials required for an application have been submitted to the Copyright Office (“application approach”), or only after the Copyright Office has acted on the application by either issuing a registration certificate or refusing registration (“registration approach”).

A copyright owner in those jurisdictions following the “application approach” is therefore no longer able to sue for copyright infringement by merely filing an application for registration, except in limited circumstances applicable to certain categories of copyrightable works. For example, the Copyright Act specifically provides that a copyright owner who is preparing to distribute a work that is vulnerable to predistribution infringement such as movie or musical composition may apply to the Copyright Office for preregistration.  A copyright owner may also sue for infringement of a live broadcast prior to registration. Even in these specific instances, however, the copyright owner must eventually pursue registration in order to maintain a suit for infringement.

In the present case, Fourth Estate Public Benefit Corporation (“Fourth Estate”) is a news organization that produces online journalism and licenses articles to websites. (“Wall-Street”) obtained licenses to several articles produced by Fourth Estate. Under the licensing agreement, Wall-Street was required to remove Fourth Estate-produced content from the Wall-Street website before canceling the agreement. However, when Wall-Street canceled the agreement, Wall-Street continued to display the articles. 

When Fourth Estate filed its infringement action against Wall-Street, it had filed applications to register its articles, but the Copyright Office had not yet issued the registrations. Wall-Street sought to dismiss the action, claiming that Section 411(a) of the Copyright Act’s provision of “registration” as a prerequisite to suit meant actual registration and not mere application.  The district court dismissed the action, finding that “registration” required that the Register of Copyrights “register the claim,” not simply that an application be filed. The Eleventh Circuit affirmed this decision.

The Supreme Court agreed. In a unanimous decision, the Court held that registration of a copyright is a prerequisite to filing suit based on the plain text of section 411(a), except in very limited circumstances discussed above. Justice Ginsburg noted that the registration approach “reflects the only satisfactory reading” of the applicable language in the Copyright Act.

The Court considered the possible delay between filing an application and receiving the registration (currently estimated at seven months), but found the delay to be an issue to be resolved by Congress, not by the courts. The Court did confirm, however, that once a copyright is registered, the copyright holder can recover for both pre- and post-registration infringement.

The take-away from this decision is that copyright owners in those jurisdictions allowing the “application approach” as providing a basis to commence an infringement action will now need to factor in the additional time required to secure a copyright registration (or a final ruling on registrability from the Copyright Office) prior to commencing an infringement action.  This decision will not have as large of an impact the Tenth and Eleventh Circuits  which have already chosen to follow the “registration approach.”

As a practical matter, however, copyright owners facing imminent or actual infringement can avail themselves of the Copyright Office’s expedited application review process called “special handling” that results in the Copyright Office evaluating the registrability of a work quickly, typically within five working days. The required elements for “special handling” are an acceptable application, an acceptable deposit, and a nonrefundable filing fee. The filing fee for special handling of qualified applications for registration is $800 per claim. If the work is deemed registrable, the Copyright Office will issue a registration certificate on an expedited basis.

Michael Best’s team of litigation and intellectual property lawyers advise clients on a broad range of copyright protection and enforcement strategies. If you are curious about how to best protect your copyrights within the context of your specific business needs, feel free to reach out to a Michael Best attorney, including the authors listed below.

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