Supreme Court Says Copyright Owners Cannot Sue Until After Registration
V&E IP Insights, March 05, 2019
In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. __ (2019), the Supreme Court of the United States held that a suit for copyright infringement cannot commence until after the Copyright Office has granted registration of a copyright. Upon registration, however, a copyright owner may request injunctive relief and recover damages for infringement that occurred both before and after registration.
News organization Fourth Estate Public Benefit Corporation (“Fourth Estate”) licensed articles to news website Wall-Street.com, LLC (“Wall-Street”). However, after Wall-Street canceled the license agreement, it failed to remove all content produced by Fourth Estate, as required under the license agreement. In its complaint for copyright infringement, Fourth Estate stated that it had filed “applications to register [the] articles with the Register of Copyrights.” But because the Register had yet to act on the applications, the District Court dismissed the complaint, and the Eleventh Circuit affirmed. Thereafter, the Register refused registration of the articles Wall-Street had allegedly infringed.
The Supreme Court granted certiorari to resolve a circuit split on when registration is deemed to have occurred under Title 17 U.S.C. § 411(a). This statute states that “no civil action for infringement . . . shall be instituted until preregistration or registration of the copyright claim has been made. . . .” 17 U.S.C. § 411(a). Fourth Estate, raising precedent from the Ninth Circuit, argued that a copyright “registration” is made as soon as the “complete application” is delivered to the Copyright Office, saying that the words “make registration” and its passive-voice counterpart “registration has been made” focus on the submission actions of the copyright applicant.
In a unanimous decision authored by Justice Ginsburg, however, the Supreme Court affirmed the Eleventh Circuit. The Court noted that the second sentence of Section 411(a) carves out an exception to the rule. This sentence states that “[w]hen the required deposit, application, and fee . . . have been delivered . . . and registration has been refused,” the claimant “[may] institute a civil action, if notice . . . is served on the register.” The Court stated that if application alone were enough to register a copyright, this second sentence would be superfluous.
In addition, the third and final sentence of Section 411(a) allows the Register to be a party to a copyright action “with respect to the issue of registrability.” The Court noted that, if suit could be filed before the Register had acted on an application, the Register’s analysis would bestow no benefit to a court. Read together, the Court held that Section 411(a) focuses not on the act of applying for the registration, but requires the actions of the Copyright Office. Registration by the Copyright Office must be complete before a copyright infringement action can be filed.
What This Means for You
As the Supreme Court noted, 17 U.S.C. § 411 is meant to “impel[ ]” the “prompt registration of copyright claims.” The Court noted that registration processing times have increased from one to two weeks in 1956 to an average of seven months today. While the copyright registration process could be arduous, the Court noted that this was a problem for Congress and not the courts to fix.
In addition, for copyright claimants who are especially susceptible to prepublication infringement, such as live broadcasters, the Court noted that Sections 408(f) and 411(c) of the Copyright Act carve out a “preregistration exception” such that owners of such works can institute suit before the Copyright Office has granted or refused registration.
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