Supreme Court Clarifies Copyright Act’s Registration Requirement
Miller & Martin PLLC Alerts | March 11, 2019
On March 4th, the Supreme Court held that a potential copyright plaintiff must wait until the Copyright Office “has registered a copyright after examining a properly filed application” before suing for copyright infringement. This decision, Fourth Estate Publishing Benefit Corporation v. Wall-Street.com, LLC, resolved a split among the Courts of Appeal over the definition of when “registration . . . has been made” for the purposes of 17 U.S.C. § 411(a).
Section 411(a) provides that “[n]o 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.” The parties in Fourth Estate agreed that this section barred suit until a work was registered but disagreed on the timing of when “registration . . . has been made.” The plaintiff, following the Fifth and Ninth Circuits’ “application approach,” argued that registration is made when a copyright owner submits an application for registration, and an owner need not wait until that application is considered to file suit. The Court disagreed and affirmed the Eleventh Circuit’s “registration approach,” shared by the Tenth Circuit, which holds that registration is made only when the Copyright Office considers and actually registers the copyright. In this way, registration acts as a kind of administrative exhaustion requirement that a copyright owner must satisfy before suing.
In reaching that conclusion, the Court first noted that § 411(a)’s text focused on the acts of the Copyright Office, rather than a copyright applicant. Further, the Court observed that the application approach would render later provisions in § 411(a) superfluous. That interpretation would remove the need to consider situations where the Copyright Office refused registration and negate the Copyright Office’s ability to become a party to the case on the issue of registrability. Similarly, the application approach would undermine other provisions of the Copyright Act, like the Act’s allowance for preregistration of certain particularly vulnerable kinds of works. Finally, the legislative history surrounding § 411(a) supported the idea that registration is only made when the Copyright Office actually registers the copyright.
While Fourth Estate slows down potential copyright plaintiffs, the Court offered some assurances that this will not hinder copyright enforcement. An author still gains exclusive rights under the Act upon creation of the work, and the author may recover damages and infringer’s profits for acts that occurred before the work is registered. Further, for some kinds of works like movies, musical compositions, or live broadcasts, the Copyright Act provides other methods to protect owners’ rights. The Court also noted that the potential delay caused by waiting for registration is unlikely to be long enough for cause owners to lose their rights to sue. So, while § 411(a) demands a degree of patience with the processes of the Copyright Office, owners should remain able to adequately protect their works against infringement.
As always, should you have questions or if we can be of assistance, please feel free to contact Alex Vey or any other member of our Intellectual Property or Litigation Practices.