On March 4, 2019, the Supreme Court issued a unanimous decision that copyright registration legally occurs—and thus a copyright claimant may commence an infringement suit based on that registration—when the U.S. Copyright Office officially registers the copyright. The Supreme Court’s decision establishes a bright-line rule that reconciles a circuit split in which some lower courts allowed plaintiffs in copyright suits to commence litigation upon the filing of an application to register, as opposed to being granted the registration certificate itself. The Supreme Court sided with the Tenth and Eleventh Circuits in holding that an application by itself is insufficient to afford standing to sue for copyright infringement. No longer will copyright claimants be able to rely on the ability to swiftly file suit following the submission of the required materials to apply for a federally registered copyright. Rather, claimants must wait for the administrative approval of the Copyright Office before suing for infringement of their copyrights.
The Supreme Court’s ruling affirmed the Eleventh Circuit’s 2017 decision in Fourth Estate Public Benefit Corporation v Wall-Street.com. Fourth Estate is an online news-production organization that licensed certain of its articles to the website Wall-Street.com, with the agreed condition that Wall-Street.com would no longer be licensed to use Fourth Estate’s articles upon cancellation of the license. The license was cancelled, but Wall-Street.com nonetheless continued to publish Fourth Estate’s articles. Fourth Estate sued Wall-Street.com for infringing its copyrights in its articles, which it had applied to be registered with the Copyright Office. The Eleventh Circuit affirmed the district court’s dismissal of Fourth Estate’s complaint, however, because although Fourth Estate had applied to register the works at issue, Fourth Estate initiated suit before being granted a registration by the Copyright Office for any of those works. The Supreme Court found that Fourth Estate did not comply with the Copyright Act’s “registration” requirement for filing a lawsuit for copyright infringement.
Title 17 U. S. C. §411(a) 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 in accordance with this title.” In affirming the Eleventh Circuit’s decision, the Supreme Court rejected the “application approach” previously applied by other lower courts, including the Fifth and Ninth Circuits, which held that a registration “has been made” upon submission of the application to the Copyright Office. The rationale for this “application approach” had been that once the Copyright Office processes the claimant’s application, the effective date of the Copyright Office’s determination of whether to grant the registration or not is the date on which the application was filed, so lawsuits should be allowed from the date that the application was secured. Additionally, because the claimant has no idea how quickly the Copyright Office will process its application, and the only prerequisite to registration for works that are copyrightable is a completed application, an application date is sufficient.
The Supreme Court, though, agreed with the Tenth and Eleventh Circuits in holding that the registration “has been made” when the Copyright Office grants the registration, finding that a contrary reading of the statute would render the exceptions to the rule against filing before registration superfluous.
So, what is the takeaway from this decision? In order to have protect themselves and their works, claimants need to register their works quickly! To begin a lawsuit—and therefore to generally establish the timeline for computation of actual damages and disgorgeable profits—a plaintiff in a copyright suit must have a duly issued registration. Although the Supreme Court held that the registration requirement does not foreclose a claimant from recovering damages for infringements occurring both before and after registration, the effective “window” of recoverable damages may be shifted as a result of the time it takes to process an application for the copyright registration. The difference between a standard application and an expedited application typically amounts to both many months of wait time and thousands of dollars in fees. If a claimant doesn’t have the luxury of either waiting around to enforce its rights or to spend a great deal to expedite its application, the Supreme Court’s registration requirement will assuredly affect when the claimant can file suit, and the ultimate amount of damages recoverable in that suit. Moving forward, copyright claimants must be even more diligent in properly and speedily registering their works in order to garner the highest degree of protection in the courts.
Trevor W. Barrett is a senior associate at Doniger / Burroughs APC in Venice, California.
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