Supreme Court Holds That Copyright Claimant Cannot Commence Litigation Until After Copyright Office Registers The Copyright
03/12/2019On Monday, March 4, 2019, the United States Supreme Court issued an opinion affirming a dismissal of the plaintiff’s copyright claim. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. ____ (2019). The Supreme Court held that a copyright plaintiff may not commence a lawsuit until after the Register of Copyrights officially registers the copyright.
17 U.S.C. § 411(a) provides, in relevant part, that:
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. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, but the Register’s failure to become a party shall not deprive the court of jurisdiction to determine that issue
A Circuit split arose as to when “registration” occurs in accordance with the statute. For example, the Ninth Circuit has interpreted the statute to mean that “registration” occurs when the copyright claimant’s “complete application” for registration is received by the Copyright Office. In contrast, the Eleventh Circuit (from which cert was granted) held that “registration” does not occur until the Register of Copyrights takes action on the applications and actually issues a copyright registration.
In the underlying case, Fourth Estate, a news organization that produces online journalism, licensed certain works to Wall-Street.com. The parties’ agreement mandated that all licensed works be removed from the Wall-Street.com website before the agreement was canceled. After canceling, however, Wall-Start.com continued to include Fourth Estate works on the website, and thus, Fourth Estate sued. At the time of filing its complaint, Fourth Estate had filed applications for copyright to the underlying works, but the Register of Copyrights had not acted on the applications. Because of this, the district court dismissed the action, a decision affirmed by the Eleventh Circuit.
In affirming the decision below, the Supreme Court relied primarily on the plain language of Section 411 to hold that “registration” requires action by the Register, not just filing of the application. The first sentence of Section 411 provides that no civil infringement action “shall be instituted until preregistration or registration of the copyright claim has been made.” The second sentence provides an exception: 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.” According to the Supreme Court, if application alone was sufficient to “ma[ke] a registration,” then the second sentence would be rendered superfluous.
The Supreme Court found that third sentence further supports its interpretation. It allows the Register to “become a party to the action with respect to the issue of registrability of the copyright claim.” Thus, interpreting “registration” to mean application would negate this provision, if an infringement suit could be filed and resolved before the Register acted on an application.
Notwithstanding the ability to still potentially recover damages for pre-registration infringement, it becomes increasingly important that a copyright claimant proactively monitor its potential copyrights, and seek, when appropriate, early registration of its works. And, beyond the ability to bring suit itself, there are other incentives to registering early, including, for example, electing statutory damages and seeking attorneys’ fees.