The Supreme Court Clarifies Pre-Suit Copyright Registration Requirement
03/18/2019In a unanimous decision earlier this month, the Supreme Court resolved a debate that impacts would-be copyright infringement litigants.
The case, Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U. S. ____ (Mar. 4, 2019), dealt with the federal copyright statute’s requirement that, with limited exceptions, a plaintiff may not initiate a suit for copyright infringement until “registration of the copyright claim has been made in accordance with” Title 17 of the United States Code. See 17 U.S.C. § 411. In particular, the case raised the question of how this requirement is satisfied: is it sufficient for the claimant to deliver the required application materials to the Copyright Office? Or has “registration… been made” only after the Copyright Office actually reviews the application and registers the copyright? The Court held that the latter is the correct reading, and that merely submitting one’s application for registration is not sufficient.
For years, there has been a so-called “circuit split” on this issue, meaning that some of the intermediate federal appellate courts had reached differing conclusions on the question. The Supreme Court agrees to decide only a small percentage of the cases where litigants seek to appeal to the nation’s highest court, but the Supreme Court is more likely to weigh in on topics where the circuit courts are in disagreement and need guidance to ensure consistency across the federal court system. On the topic of copyright registration, the Fifth and Ninth Circuits had taken the “application approach,” holding that a plaintiff need only show that they have properly submitted an application for registration, while the Tenth and Eleventh Circuits had taken the position that the Copyright Office must have actually issued the registration before a plaintiff can sue. In still other circuits, the appellate courts had not definitively weighed in, leaving district courts to answer the question. (New York’s federal district courts had generally taken the “registration approach.”)
The Court’s decision, authored by Justice Ginsburg, affirms the “registration approach” after parsing the text of § 411 as well as looking at how other parts of the Copyright Act speak of registration. The Court concludes that in § 411, registration has “been made” only when the Copyright Office has acted on the application. Several industry groups aligned with creators of copyrighted works (including the National Music Publishers’ Association and the Authors Guild) submitted amicus curiae briefs arguing in favor of the application approach, while others, including the Copyright Office itself, submitted amicus briefs arguing for the registration approach.
The Court’s decision acknowledges that the “average processing time for registration applications is currently seven months,” but the Court opines that this still leaves “ample time” for litigants to sue after receiving the Register’s decision without running afoul of the Copyright Act’s three-year statute of limitations. (The Court also notes that the Copyright Office entertains requests for special handling of applications where litigation is looming.) The Court further observed that its role is only to interpret statutory language; it is the role of Congress, not the courts, to revise that language or take steps to alleviate the slow processing times.
The Fourth Estate decision will permit federal courts to reach more uniform decisions on this issue, and should deter litigants from forum-shopping; before this case was decided, a copyright plaintiff wishing to sue as soon as possible might be tempted to find a way to file in an “application approach” jurisdiction instead of having to wait for the Copyright Office to act on an application. (The Fourth Estate case did not, however, provide guidance on what should be done with cases that are already underway based on pending copyright registrations that were adequate under the “application approach” but would be inadequate under the newly-announced rule.)
Most importantly, the case underscores that, now more than ever, it will behoove copyright owners to register their works promptly, perhaps at the time of or even before publication, rather than waiting to register until an infringement problem arises. (Note that there are other important benefits to prompt copyright registration. As we’ve observed on several occasions—see here, here, and here for examples—copyright plaintiffs may be entitled to “statutory damages” for copyright infringement if they registered their work before it was infringed; but if they register after the infringement begins, their recovery is often limited to their actual damages, which can sometimes be difficult to prove.) Artists and other owners of creative intellectual property should consider making copyright registration part of their regular business practices, to ensure that they can effectively—and speedily—protect their rights in the event of infringement.
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