In a unanimous opinion resolving a circuit split, the U.S. Supreme Court held that copyright owners must wait to file an infringement lawsuit until a copyright registration has been issued.
News organization Fourth Estate Public Benefit Corporation licensed its works to Wall-Street.com, a news website. Wall-Street later canceled the license agreement between the parties but continued to display articles produced by Fourth Estate. Fourth Estate sued for copyright infringement, alleging that it had filed applications to register the articles with the Register of Copyrights.
The Copyright Act, 17 U.S.C. §411(a), states that “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.” Wall-Street moved to dismiss the case, arguing that the Register had yet to act on Fourth Estate’s copyright applications.
A district court and the U.S. Court of Appeals for the Eleventh Circuit held that registration occurs when the Register of Copyrights registers a copyright, while the Ninth Circuit held that registration occurs when a complete application is received at the Copyright Office. The Supreme Court granted certiorari to consider the issue in light of a split among the federal appellate courts.
Fourth Estate told the justices that “registration … has been made” under §411(a) when a copyright owner submits the application, materials and fee required for registration, while Wall-Street advocated for an approach that required a grant of registration from the Copyright Office.
Rejecting Fourth Estate’s “application approach,” the Court held that the “registration approach” reflects “the only satisfactory reading of §411(a)’s text.”
“Section 411(a)’s first sentence provides that no civil infringement action ‘shall be instituted until preregistration or registration of the copyright claim has been made,’” Justice Ruth Bader Ginsburg wrote for the Court. “The section’s next sentence sets out an exception to this rule: When the required ‘deposit, application and fee … have been delivered to the Copyright Office in proper form and registration has been refused,’ the claimant ‘[may] institute a civil action, if notice thereof … is served on the Register.’”
Read together, these two sentences “focus not on the claimant’s act of applying for registration, but on action by the Copyright Office—namely, its registration or refusal to register a copyright claim,” the justices held. “If application alone sufficed to ‘ma[ke]’ registration, §411(a)’s second sentence—allowing suit upon refusal of registration—would be superfluous.”
The statute’s preregistration option provided additional support for the Court’s understanding of “registration” by the Register. The option permits a copyright owner concerned about prepublication infringement to enforce her rights in court before obtaining registration or refusal.
“A copyright owner who fears prepublication infringement would have no reason to apply for preregistration, however, if she could instead simply complete an application for registration and immediately commence an infringement suit,” Justice Ginsburg pointed out.
The Court recognized that registration processing times have increased to last “many months,” likely longer than Congress envisioned when it passed the Copyright Act. But the Copyright Office allows claimants to seek expedited processing of a claim for an additional fee, the justices noted, and “[u]nfortunate as the current administrative lag may be, that factor does not allow us to revise §411(a)’s congressionally composed text.”
To read the opinion in Fourth Estate Public Benefit Corp. v. Wall-Street.com, click here.
Why it matters: The Supreme Court decision provides certainty for parties involved in copyright infringement litigation, declaring that a copyright claimant may commence an infringement suit when the Copyright Office registers a copyright. Upon registration, however, a copyright owner can recover for infringement that occurred both before and after registration.