SCOTUS Watch: Registration Required Before Infringement Action

On March 4, 2019, the U.S. Supreme Court issued a pair of copyright decisions that will affect copyright owners’ ability to sue and recover in federal court. The first, Fourth Estate Public Benefit Corp. v. Wall-Sreet.com, LLC,¹ settles a split in the appellate circuits concerning when a copyright owner may sue for copyright infringement – either after the application has been filed with the U.S. Copyright Office, or only after the U.S. Copyright office has registered, or acted upon, the copyright.

Fourth Estate is an online news organization which licensed its works to Wall-Sreet.com, a news website. One clause in the licensing agreement required the licensee to remove all licensed content from its website upon termination of the licensing agreement. However, upon canceling its licensing agreement with Fourth Estate, Wall-Sreet.com continued to maintain the licensed works on its site. Fourth Estate had filed copyright applications on the licensed works, but were registrations were not perfected by the U.S. Copyright Office when the copyright infringement complaint was filed. As a result, Wall-Sreet.com moved to dismiss, which the district court granted. The Eleventh Circuit affirmed judgment.

Justice Ginsburg wrote the opinion for a unanimous Court. 17 U.S.C. §102(a) states federal copyright protections attach to original works of authorship fixed in a tangible medium of expression. Further, copyright owners are entitled to sue for damages for copyright infringement in federal court, under 17 U.S.C. §501(b). Prior to that, however, 17 U.S.C. §411(a) requires the copyright owner to have a “registration of the copyright claim.” Justice Ginsburg notes that registration is similar to “administrative exhaustion” that a “copyright owner must satisfy before suing to enforce ownership rights.”

17 U.S.C. §411(a) specifically reads:

Except for an action brought for a violation of the rights of the author under section 106A(a), and subject to the provisions of subsection (b), 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.

(Emphasis added.)

As noted by Justice Ginsburg, the two parties factually disagreed when “registration” occurred. Fourth Estate had argued that “registration” was merely when the application papers were filed with the Copyright Office, or the “application approach.” Wall-Street.com argued that “registration” occurred when the Copyright Office issued the registration, or at least, acted upon the application, known as the “registration approach.” The federal appellate circuits themselves were completely split on this issue, with the Eighth and Ninth Circuits favoring the “application approach,” while the Fifth, Tenth, and Eleventh Circuits favoring the “registration approach,” with the First, Second, and Seventh Circuits unclear as to either.² Justice Ginsburg held for the registration approach, deeming it the most “satisfactory” reading of §411(a). She wrote:

If application alone sufficed to “ma[ke]” registration, §411(a)’s second sentence – allowing suit upon refusal of registration – would be superfluous. What utility would that allowance have if a copyright claimant could sue for infringement immediately after applying for registration without awaiting the Register’s decision on her application?

She supported her position with other statutes within the Copyright Act which are worded “after registration” or “after examination,” denoting that registration follows the application, and that these are two discrete elements in the copyright registration process.

Justice Ginsburg further noted that while administrative backlog has resulted in registration delays from one to two weeks in 1956, to seven months in 2019, this is not a basis for judicial revision of §411(a)’s “congressionally composed text.”

While the practical takeaway of Fourth Estate may seem to make it harder for copyright owners to sue for infringement, it actually makes it somewhat easier, since there is now clarity among the federal circuits as to when the infringement action may be sought – that is, after registration by the Copyright Office.

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Footnotes

1. 586 U.S.___ (2019), aff’g 856 F.3d 1338 (11th Cir. 2017), cert. granted, 138 S. Ct. 2707 (2018). ↩

2. See Hayley Sipes, Registration Approach vs. Application Approach: Section 411(a)’s Copyright Registration Requirement [Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 856 F.3d 1338 (11th Cir. 2017)], 58 WSJ Online 11 (Oct. 4, 2018), fn. 27. ↩