“Registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright. Upon registration of the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration.” – Justice Ginsburg
Justice Ruth Bader Ginsburg delivered the opinion for a unanimous Supreme Court in Fourth Estate v. Wallstreet.com, et. al. Monday morning, March 4, holding that copyright registration occurs—and thus, an infringement action can only be brought—once the Copyright Office officially registers a copyright.
The case considered whether “registration of [a] copyright claim has been made” within the meaning of Section 411(a) of the Copyright Act “when the copyright holder delivers the required application, deposit, and fee to the Copyright Office, as the Fifth and Ninth Circuits have held, or only once the Copyright Office acts on that application, as the Tenth Circuit and, in the decision below, the Eleventh Circuit have held.”
Fourth Estate is an appeal from the Eleventh Circuit, which in 2017 affirmed a district court’s dismissal of Fourth Estate’s copyright claim against Wall-Street.com on the ground that Fourth Estate sued before the Copyright Office actually registered the copyright. During oral argument at the Supreme Court in January this year, the justices considered the construction of the text of the statute and the long term practical and policy implications of holdings for either party, but there was no clear indication as to which side was favored.
In the end, the Court unanimously agreed that registration is a requirement to commence suit, but, once granted, the copyright owner can sue for infringement that occurred both before and after registration. The Court said:
Registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright. Upon registration of the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration. Pp. 3–12. (a) Under the Copyright Act of 1976, as amended, a copyright author gains “exclusive rights” in her work immediately upon the work’s creation. 17 U. S. C. §106. A copyright owner may institute a civil action for infringement of those exclusive rights, §501(b), but generally only after complying with §411(a)’s requirement that “registration . . . has been made.” Registration is thus akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights.
The holding further clarified that there are some circumstances in which a copyright claimant may still sue prior to registration:
In limited circumstances, copyright owners may file an infringement suit before undertaking registration. For example, a copyright owner who is preparing to distribute a work of a type vulnerable to predistribution infringement—e.g., a movie or musical composition—may apply to the Copyright Office for preregistration. §408(f)(2). A copyright owner may also sue for infringement of a live broadcast before “registration . . . has been made.” §411(c). Outside of statutory exceptions not applicable here, however, §411(a) bars a copyright owner from suing for infringement until “registration . . . has been made.” Fourth Estate advances the “application approach” to this provision, arguing that registration occurs when a copyright owner submits a proper application for registration.
While the Court sympathized with the potential problems such an approach may cause due to delays at the Copyright Office, it said that is a problem cause by staffing and budgetary shortages that only “Congress can alleviate” and “courts cannot cure,” and does not change the fact that “the registration approach reflects the only satisfactory reading of §411(a)’s text.”
Bruce Ewing, head of the Trial Department and Co-Chair of Dorsey & Whitney’s Intellectual Property Litigation Practice Group, said that, while the decision “will have some impact” in circuits that allowed claims to be initiated upon filing on a copyright application, copyright plaintiffs should still be able to effectively enforce rights by using the Copyright Office’s expedited issuance procedures:
“Because the Copyright Office allows for the expedited issuance of a registration upon the payment of additional fees when a lawsuit is contemplated—an alternative that can shave months off the standard time it takes for a copyright registration to issue—copyright plaintiffs with well-founded claims still have the ability to initiate legal action promptly, notwithstanding today’s holding. And, they still have the ability to recover compensatory damages incurred before and after the registration issues.”
Proskauer partner Alex Kaplan said that, despite the welcome clarity, delays at the Copyright Office will present challenges:
“While providing certainty and uniformity across the circuits, which is generally a good thing, the Supreme Court’s decision now puts the onus on the Copyright Office to speed up the processing time for copyright registration applications. The decision observes the average current processing time is seven months, during which time all copyright plaintiffs now must wait to file suit.
Theoretically, at least, the decision promotes the policy behind Section 411, to encourage copyright owners to register their works with the copyright office once created.”
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