Business Law Journal

In Fourth Estate Public Benefit Corporation v. Wall-Streeet.com, LLC, et al., Case No. 17-571 (U.S. 2019), the Supreme Court held that a copyright claimant cannot institute a civil action for copyright infringement until after the Copyright Office registers the copyright.  The Court’s decision turned on the meaning of the phrase “registration . . . has been made” in Section 411(a) of the Copyright Act.  The Court ruled that “‘registration . . . has been made,’ and a copyright owner may sue for infringement, when the Copyright Office registers a copyright.”

Notably, the Fourth Estate decision overturns prior Ninth Circuit law, which previously interpreted Section 411(a) to allow a copyright holder to institute an enforcement action immediately upon the filing of the copyright application.  For nearly a decade, federal courts in the Ninth Circuit, such as those in California, have followed the Ninth Circuit Court of Appeal’s ruling that “receipt by the Copyright Office of a complete application satisfies the registration requirement of § 411(a).”  Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612, 621 (9th Cir. 2010). 

But the Supreme Court specifically rejected this “application approach” in favor of the “registration approach.”  The Court in Fourth Estate made clear 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.”  The Court reasoned that this “registration approach” “reflects the only satisfactory reading of §411(a)’s text.”

Justice Ginsberg, writing for a unanimous Court, noted that, although the Copyright Act grants an author “‘exclusive rights’ in their work immediately upon the work’s creation” and “entitles a copyright owner to institute a civil action for infringement of those rights,” Section 411(a) requires the copyright owner to register their work with the Copyright Office before suing to enforce ownership rights.  Thus, the mere filing of a copyright application and payment of filing fees is no longer enough to institute a civil action for copyright infringement.

Now, unless a work qualifies under a specific exception to the Act for live broadcasts or works especially susceptible to prepublication infringement—such as a movie or musical composition—a copyright owner must wait until their application is processed and the copyright is registered by the Copyright Office before instituting a civil action.  Based on the Copyright Office’s latest reported processing times, the average processing time for all copyright claims is seven months, and actual processing times for electronic copyright claims can range from as little as two months to more than one year.

It is now more important than ever for copyright owners to register their works.  Although the Fourth Estate decision does not affect a copyright’s owner’s ability to recover damages for preregistration infringement, a copyright owner who does not immediately register their copyrights may now be forced to wait several months before seeking an injunction to stop infringement of their unregistered work—creating delay that could have been easily avoided.  Plus, registration before infringement has the added benefit of making available additional remedies for the infringement, including recovery of statutory damages and attorneys’ fees.

AALRR has a dedicated group of lawyers on its Intellectual Property Team who can assist you with registration of your works with the Copyright Office.  Attorneys on the Firm’s Intellectual Property Team also have the copyright litigation experience and expertise to vigorously enforce your copyrights in court or defend your organization against claims of copyright infringement.