Hampton IP

Supreme Court Resolved Circuit Split of When a Copyright Owner May Commence an Infringement Lawsuit

In a March 4, 2019 decision, the Supreme Court granted certiorari in a copyright dispute between Fourth Estate Public Benefit Corp. and Wall-Street.com, LLC to resolve a long-standing circuit split on when copyright registration occurs in accordance with Title 17 U. S. C. §411 (i.e. the requirement for a copyright owner to obtain a copyright registration before filing an infringement suit).

Fourth Estate, a news organization, sued Wall-Street, a news website, for copyright infringement of news articles that Wall-Street failed to remove from its website after canceling the license agreement between the parties. Fourth Estate filed applications to register its copyrights but the Copyright Office had not acted on the applications. The District Court dismissed the case and the Eleventh Circuit affirmed stating that registration had not been made under Title 17 U. S. C. §411(a) which 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.”

The Supreme Court clarified that although a copyright author gains exclusive rights to their work immediately upon the work’s creation, actual copyright registration (not just an application) is required before pursing an infringement claim in court.

Under the Copyright Act of 1976, as amended, copyright protection attaches to “original works of authorship”—prominent among them, literary, musical, and dramatic works— “fixed in any tangible medium of expression.” 17 U. S. C. §102(a). Any author gains “exclusive rights” in her work immediately upon the work’s creation, including rights of reproduction, distribution and display.

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Before pursuing an infringement claim in court, however, a copyright claimant generally must comply with §411(a)’s requirement that “registration of the copyright claim has been made.” §411(a). Therefore, although, an owner’s rights exist apart from registration, see §408(a), registration is akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights, see Tr. Of Oral Arg. 35.

The Supreme Court also affirmed that if infringement occurs before a copyright owner applies for registration, the owner may eventually recover damages for past infringement once the owner registers the copyright.

If infringement occurs before a copyright owner applies for registration, that owner may eventually recover damages for the past infringement, as well as the infringer’s profits. §504. She must simply apply for registration and receive the Copyright Office’s decision on her application before instituting suit. Once the Register grants or refuses registration, the copyright owner may also seek an injunction barring the infringer from continued violation of her exclusive rights and an order requiring the infringer to destroy infringing materials.

The Supreme Court also addressed Fourth Estate’s concern that a copyright owner may lose the ability to enforce their rights if the Copyright Act’s three-year statue of limitation runs out before the copyright owner is granted registration.

Fourth Estate’s fear is overstated, as the average processing time for registration applications is currently seven months, leaving ample time to sue after the Register’s decision, even for infringement that began before submission of an application.

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Further, in addition to the Act’s provisions for preregistration suit, the Copyright Office allows copyright claimants to seek expedited processing of a claim for an additional $800 fee.

The Supreme Court concluded its order by affirming the judgement of the Court of Appeals for the Eleventh Circuit.

For the reasons stated, we conclude that “registration…has been made” within the meaning of 17 U. S. C. §411(a) not when an application for registration is filed, but when the Register has registered a copyright after examining a properly filed application.

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