Overview
On March 4, 2019, in a unanimous decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, the US Supreme Court resolved a longstanding circuit split on whether a copyright claimant must have registered with US Copyright Office before filing an infringement action in federal court. The Court held that that copyright registration occurs—and thus, an infringement action can be brought—only after the US Copyright Office registers the copyright.
In Depth
On March 4, 2019, in a unanimous decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, the US Supreme Court resolved a longstanding circuit split on whether a copyright claimant must have registered with US Copyright Office before filing an infringement action in federal court. The Court held that that copyright registration occurs—and thus, an infringement action can be brought—only after the US Copyright Office registers the copyright.
Background
The Copyright Act 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[.]” 17 USC § 411. Despite this straightforward language, courts have been divided on the interpretation of “registration.” Some courts, such as the Eleventh Circuit, held that the statute means that the US Copyright Office must register the copyright before the copyright owner can commence a lawsuit. Other courts, such as the Ninth Circuit, adopted what is commonly referred to as the application approach, ruling that a copyright owner need only submit his application, deposit his work, and pay the necessary fees to the US Copyright Office before he may file an infringement lawsuit. District courts outside of these circuits were similarly divided on this issue.
In this case, Fourth Estate sued Wall-Street.com and its owner, Jerrold Burden (collectively, “Wall-Street”), for copyright infringement based on Wall-Street’s failure to comply with the terms of the parties’ license agreement. Fourth Estate alleged that Wall-Street had failed to remove Fourth Estate’s articles from Wall-Street’s website, which the license agreement required Wall-Street to do after the license was cancelled. At the time it filed its lawsuit, Fourth Estate had filed applications to register its copyrights in these articles, but the US Copyright Office had not yet registered them. The District Court dismissed Fourth Estate’s complaint because of Fourth Estate’s failure to comply with § 411. Fourth Estate appealed to the Eleventh Circuit, which affirmed the District Court’s decision. The Supreme Court accepted cert and has now affirmed the Eleventh Circuit’s decision. Fourth Estate v. Wall Street.com Case No. 17-571 (US, March 4, 2019) (Ginsburg, Justice).
In Depth
The issue presented was whether “registration … has been made” when the copyright holder delivers the required application, deposit, and fee to the US Copyright Office, as the Ninth Circuit had held, or only once the US Copyright Office registers the copyright, as the Eleventh Circuit had held. Reviewing the language of § 411, Justice Ginsburg explained that while an author has rights in his work immediately upon creation, and is entitled to recover for infringements both before and after registration, the author must satisfy the registration requirement of § 411 before instituting a copyright infringement action. The Court equated the need for registration to an “administrative exhaustion requirement.” Justice Ginsburg recognized that the Copyright Act does have limited exceptions to this rule, such as a copyright owner who is preparing to distribute a work of a type vulnerable to predistribution infringement or a live broadcast, but even under those exceptions, the Court reasoned, the author must eventually obtain registration of his copyright.
In resolving the circuit split, the Court found that the “registration approach” was the “only satisfactory reading of § 411(a)’s text.” The Court reasoned that the “application approach” would render language—namely, that a copyright owner could file an infringement lawsuit after registration had been refused—superfluous. “Registration” has the same meaning throughout the Copyright Act: action taken by the Register of Copyrights (i.e., the US Copyright Office). The “application approach” is directly at odds with this meaning, effectively removing the US Copyright Office from the equation.
Fourth Estate argued that “registration” meant “submission of a completed application,” based in part on the use of “make” (“make registration”) or “made” (“registration has been made”) in § 411(a). The use of “make” or “made” with “registration,” Fourth Estate contended, referred to actions taken by the applicant, not the Register.
The Supreme Court disagreed, explaining that “registration” means “registration,” noting that Congress has amended the Copyright Act several times since § 411(a) was enacted in 1976 and has rejected attempts to remove the registration requirement in this provision.
While Justice Ginsburg sympathized with the potential problems the registration approach may cause due to delays at the US Copyright Office, she said that only “Congress can alleviate” those problems; it is not the job of the courts to try to “cure” them.
Practice Note: In the wake of this opinion, the US Copyright Office will likely see an increase in the number of expedited applications, and, given the current lag, will continue to struggle to promptly review applications unless further resources and more efficient processes become available.