Register Your Work Sooner Rather Than Later: The Supreme Court Clarifies the Copyright Registration Requirement
On March 4, 2019, the Supreme Court decided Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, settling a long-standing dispute over the Copyright Act’s registration requirement. Under the Copyright Act, a copyright owner generally may not institute a copyright infringement action until the work at issue has been registered in accordance with 17 U.S.C. § 411(a). Prior to the Court’s decision, the U.S. Courts of Appeals were split over the point at which “registration . . . has been made.” Some circuit courts endorsed the “application approach,” concluding that registration occurs once the copyright owner delivers the registration application, a deposit of the work, and the filing fee to the Copyright Office. Conversely, other circuit courts espoused a “registration approach,” determining that formal action by the Copyright Office was required. In a unanimous decision, the Supreme Court endorsed the “registration approach,” holding that registration occurs, and a copyright holder may file a copyright infringement suit, once the Copyright Office registers the copyrighted work. Petitioner Fourth Estate Public Benefit Corporation (“Fourth Estate”), a news organization, sued respondent Wall-Street.com, LLC (“Wall-Street”), a news website, for copyright infringement. The dispute arose when Wall-Street terminated the parties’ license agreement but continued to display Fourth Estate’s articles on its website. The District Court dismissed the complaint, and the Eleventh Circuit later affirmed, finding that § 411(a) prevented Fourth Estate from instituting an infringement action until the Copyright Office acted on its registration applications for the articles at issue. Fourth Estate then petitioned for certiorari, urging the Court to adopt the “application approach.” Justice Ginsburg, writing for the Court, held that the Copyright Act’s registration requirement is satisfied once the Copyright Office registers the work and, relatedly, that once the work is registered, its owner may recover for infringement that occurred both before and after registration. The Court reasoned that the “registration approach” represents the only acceptable reading of the phrase “registration . . . has been made.” In reaching this conclusion, it rejected the “application approach” primarily because it violates a basic statutory interpretation principle that a law should be construed so that all of its provisions are given effect. To illustrate this point, the Court turned to the second and third sentences of § 411(a). It explained that the second sentence, which authorizes the copyright owner to file suit after rejection of his or her application, would be “superfluous” if the owner was able to sue immediately after submitting an application. Moreover, the third sentence, which allows the Register of Copyrights to become a party to an infringement action in regard to the copyrighted work’s registrability, would serve little purpose if a lawsuit could be instituted and resolved before the Copyright Office even issued its decision. The Court also found that the “application approach” has a similar effect on other provisions of the Copyright Act. For example, the Court noted that the preregistration option in § 408(f), which allows certain owners of works vulnerable to prepublication infringement to file a lawsuit prior to obtaining registration, would be of little utility if qualifying owners could simply submit an application and then immediately file suit. The Court’s decision in Fourth Estate will likely have a profound effect on copyright holders’ ability to enforce their ownership rights in court. As the Court noted in its opinion, the Copyright Office’s registration processing times are currently averaging seven months. This waiting period will probably increase as more copyright owners rush to register their works, which, in turn, will delay the time when an owner may commence an infringement action. Given the strong likelihood of longer processing times in conjunction with the Copyright Act’s three-year statute of limitations, it is important that copyright holders register their creative works sooner rather than later. If litigation is imminent and the work is not registered, the copyright holder may have to opt for expedited processing, which requires the payment of a hefty fee ($800) in order to get a decision by the Copyright Office within approximately one week. Even that expedited response time could be delayed if more owners take advantage of this option. While clarifying the meaning of “registration,” the Court’s ruling has left lower courts with a plethora of new questions to address. One is how to handle pending copyright infringement actions that were properly filed in “application approach” jurisdictions before the copyrighted works were registered. Courts will have to decide whether these cases should be dismissed and refiled when registration is obtained or whether they may proceed as long as an amended complaint is filed once the Copyright Office renders its decision. Another unanswered question concerns the availability of statutory damages and attorney’s fees. Under § 412 of the Copyright Act, certain copyright holders must register their works before infringement occurs in order to obtain statutory damages and attorney’s fees. Although the Court stated that owners may obtain monetary relief for infringement that occurs prior to registration, it was silent as to whether owners who filed lawsuits in “application approach” jurisdictions for copyrighted works that were not registered prior to infringement are entitled to statutory damages and attorney’s fees. This gray area is especially important because statutory damages are the typical remedy sought in copyright infringement actions.