By Katherine Soule. A member of our Litigation Practice Group
Section 411(a) of the Copyright Act provides that “no civil action for infringement of . . . copyright . . . shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.” A split among the circuits had developed as to whether registration, for the purposes of Section 411(a), occurs when an owner properly files an application to register the copyright or only when the Register of Copyrights actually registers the copyright.
On March 4, the Supreme Court unanimously held that a copyright owner may not commence an infringement suit, until the Copyright Office registers the copyright. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC.
Fourth Estate, a news organization producing online articles, licensed works to Wall-Street.com, an online news outlet. The license required Wall-Street to remove Fourth Estate’s content from Wall-Street’s website upon canceling the agreement. However, Wall-Street continued to display articles produced by Fourth Estate after canceling the agreement. While Fourth Estate had filed applications to register the relevant copyrights with the Copyright Office when it initiated its copyright infringement action against Wall-Street, the Register of Copyrights had not yet acted on the applications.
Affirming the Eleventh Circuit’s decision to uphold the trial court’s dismissal, the Supreme Court held that “registration…has been made” within the meaning of Section 411(a) only when the Register of Copyrights registers a copyright, not when an application for registration is filed. Fourth Estate brought its infringement claims prematurely, before registration of its copyrights (which were ultimately refused registration).
The Court grounded its decision in statutory interpretation. For example, because the second half of Section 411(a) permits a civil infringement suit upon refusal of registration by the Register of Copyrights, the court reasoned that registration must occur when the Register of Copyrights acts on an application. The provision would be unnecessary if registration occurred upon filing a copyright application.
Similarly, Section 408(f) of the Copyright Act permits preregistration in limited, specific circumstances and allows a copyright claimant to institute a suit for infringement once preregistration has been made. Preregistration “would have little utility if a completed application constituted registration.”
The Court dismissed Fourth Estate’s concern that a copyright owner may lose the ability to enforce his or her rights if the Copyright Act’s three-year statute of limitations expires before the Copyright Office acts on an application. The Court characterized the fear as “overstated” because the average processing time for registration of an application is currently seven months, well within the three-year statute of limitations period. Upon registration of a copyright, the owner can recover for infringement that occurred both before and after registration, thus alleviating concerns regarding the scope of remedies available.
Noting that current processing times for copyright registration are not ideal, the Court emphasized that the lag is primarily attributable to staffing and budgetary shortages, which are issues for Congress, not the courts, to resolve.
The central lesson from Fourth Estate is clear: Except in limited, statutorily articulated circumstances, do not file a claim of copyright infringement until the Register of Copyrights makes a determination regarding your application for registration. If you wish to preserve the possibility of quick injunctive relief, file copyright registrations when the work is published without waiting for infringement to occur. Doing so has the extra advantage of entitling you to statutory damages.