Supreme Court: Copyright Registration Required to Bring Suit

What to Know

Even though copyright protection begins the moment an original work of authorship is fixed in a tangible medium of expression, because copyright is the exclusive subject matter of federal courts, the Court interpreted the Copyright Act to mandate registration (or the highly undesirable denial of registration) in order to sue for infringement.

From a practical standpoint, the decision is cause for some concern as the US Copyright Office is currently operating on average with a seven month time period to process and examine applications (in rare cases this time period may span up to 37 months).[1] As a result, owners seeking to take action against infringements of their unregistered works will either have to first:

1. Wait out the lengthy examination period (and hope that the three year statute of limitations for copyright infringement claims does not expire in the meantime); or
2. Request expedited review of their application for a fee (currently $800)

Although a request for expedited review does dramatically reduce the examination time period, this ruling may increase the number of such requests and, in turn, create delay.

Going forward, copyright rights owners who do not regularly file applications for new works would be wise to revamp their strategies to do so. By filing copyright applications early, rights owners can best ensure that they will have prompt access to the federal courts should infringements arise. This filing approach has the added benefit of ensuring access to the Copyright Act’s robust provisions for statutory damages and attorney’s fees, which, as noted below, continue to be limited by statute to rights owners who seek early registration of their protectable works.

Deeper Analysis

The Supreme Court in a unanimous opinion authored by Justice Ginsberg recently altered the landscape of copyright litigation and registration practices. The Court held that a copyright owner may not institute a civil action for copyright infringement until the US Copyright Office issues a registration or denial of registration for the at-issue work, save for a few narrow statutory exceptions to that rule.

The decision resolves a long-standing circuit split over whether rights owners can sue for copyright infringement upon the filing of an application or only upon the Office’s issuance of a registration. Courts, including those in the Ninth and Fifth Circuits, had applied the more generous “application rule,” allowing owners with duly filed copyright applications (together with a deposit and fee) to initiate infringement lawsuits related to that work and maintain them so long as a registration or denial of registration ultimately issued prior to judgment or trial. But under the more onerous “registration rule,” now adopted by the Supreme Court as the law of the land, rights owners cannot file suit until the US Copyright Office issues a registration or refusal to register the work.

The Facts and Procedural Posture

The underlying dispute in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC arose between Fourth Estate Public Benefit Corp., a news article licensor and international public benefit membership organization, and Wall-Street.com, LLC, its former licensee, upon the termination of their licensing agreement and relationship. Specifically, Fourth Estate alleged that Wall-Street was liable for copyright infringement because it continued to display articles on its website that it had previously licensed from Fourth Estate after the parties’ license agreement ended.

Although publication of an article in a manner that exceeds the scope of a license, or that continues after such a license is terminated, can give rise to claims of copyright infringement, the case took a circuitous path away from the merits because Fourth Estate was seeking to enforce applied-for but not-yet-registered works. First, the district court embraced the registration rule and dismissed the action without prejudice shortly after the complaint was filed on this basis. Then, on appeal, the Eleventh Circuit affirmed the lower court decision and joined the Tenth Circuit in adopting the registration rule and holding that registration, not merely the filing of an application, is a pre-requisite to filing a copyright infringement lawsuit. Fourth Estate then sought Supreme Court review of the decision and the Court granted its petition for a writ of certiorari.

The Supreme Court’s Decision and Adoption of the Registration Rule

This Court’s decision involved the proper interpretation of the word “registration” in the first sentence of 17 U.S.C. § 411(a) of the Copyright Act. Section 411(a) states in relevant part:

[N]o 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. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, but the Register’s failure to become a party shall not deprive the court of jurisdiction to determine that issue.

The specific question before the Court was “[h]as ‘registration … been made in accordance with [Title 17]’ as soon as the claimant delivers the required application, copies of the work, and fee to the Copyright Office; or has ‘registration … been made’ only after the Copyright Office reviews and registers the copyright?” It is particularly notable that the Court agreed to take on this issue, when just nine years earlier it expressly declined to decide the question in Reed Elsevier, Inc. v. Muchnick, 599 US 154 (2010), a case where it reversed a Second Circuit decision and found that Section 411(a)’s registration requirement is a precondition to filing a copyright infringement action, and not a jurisdictional rule. (The Reed Elsevier decision effectively meant that the failure to register a copyright would not restrict federal courts from having subject matter jurisdiction over infringement claims for unregistered copyrighted works). Presumably, the ever-growing division among district and appellate courts on the registration question is what led the Court to revisit the issue less than a decade later.

The Court made its decision in Fourth Estate against the backdrop of party briefs and close to one dozen amicus briefs on file supporting varied positions, including those from the US Solicitor General, the International Trademark Association, the American Bar Association, the Copyright Alliance, and the National Music Publishers’ Association. After consideration of the diversity of opinions and arguments among the parties and amici, the Court ultimately held “that registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright.” In an apparent effort to quell the fears of owners of unregistered works and some of the amici, the Court’s opinion went on to reaffirm that “[u]pon registration of the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration.”

Supreme Court’s Statutory Construction and Rationale for Adopting the Registration Rule

The rationale behind the Court’s decision rested on principled statutory analysis and review of legislative history and unsuccessful previously proposed amendments to Section 411(a). Together, these points led it to conclude that adoption of the registration rule is the “only satisfactory reading” of Section 411(a).

As to statutory construction, the Court was particularly troubled by the fact that the term “registration” appears in both the first and second sentences of Section 411(a)[2] and that adoption of the application rule would mean that Congress meant for the term “registration” to mean two different things in the context of continuous sentences within a single statutory provision (filing of an application together with a deposit and fee in the first sentence, and the Office’s issuance of a registration in the second sentence). According to Justice Ginsberg, this was an “implausible assumption.” The Court did acknowledge the application rule proponents’ argument that the term “registration” is used throughout the Copyright Act and Digital Millennium Copyright Act, at times to different effects. However, rather than attempt to stitch together and make sense of all these varying uses (an unenviable and potentially impossible task), Justice Ginsberg simply flipped the tables, pointing to this argument as the proponents’ concession that at least sometimes the term “registration” does refer to the Office’s issuance of a registration. With the tables as clean as they could be, the Court then concluded that to resolve the issue it needed to focus not on the language of the Act as a whole, but rather on the “specific context” of the use of “registration” in Section 411(a) to reach a conclusion. Under this “specific context” approach, the Court concluded that the registration rule is the only sensible reading for the plain text of Section 411(a) to have meaning, without any internal contradiction or superfluous words.

Regarding legislative history, the Court was also significantly influenced by the fact that since Section 411(a) was adopted in 1976, Congress has on at least three occasions considered and declined to amend the provision to embrace an application rule or to remove the registration requirement altogether.

As to policy concerns, the Court reaffirmed that the Copyright Act expressly provides that upon filing suit, rights owners can recover damages for past infringements, as well as the infringer’s profits, even those before a registration issues. The Court also acknowledged that the Copyright Office’s time period for examining and processing copyright applications has dramatically increased from one or two weeks in 1956 to an average of seven months. But, instead of embracing an application rule as a means to cure the potential prejudice that this examination delay may cause to applicants, the Court passed the buck to Congress and noted that these delays appear to be attributable to staffing and budgetary shortages that Congress can cure with more funds. Whether Congress takes heed, either by increasing funding to the Copyright Office, or superseding the decision by legislation, remains to be seen.

Key Takeaways for Rights Owners and Creators

The case has significant consequences for intellectual property portfolio development and litigation strategies alike. Although registration is still technically voluntary under the Copyright Act, the Court’s decision underscores the importance of filing applications to register copyrightable works often and as early as possible. Key takeaways include:

1. Before filing a lawsuit in federal court over infringement of a US copyrighted work, the rights owner must obtain a registration (or receive notice from the US Copyright Office of its refusal to register the work). Save for the narrow statutory exceptions,[3] any infringement claims filed over unregistered works or works subject to pending applications will be dismissed.
2. Rights creators and owners would be wise to routinize copyright application filing processes and procedures to ensure that all important works are filed as early as possible—either before or within three months of publication.
3. Rights owners relying on contracts or assignments to secure ownership of copyrights should, as always, secure executed agreements as early as possible, to avoid a scenario where an ownership dispute delays the registration process and in the interim effectively bars the rights owner from filing suit for infringement until that dispute is resolved.
4. Copyright plaintiffs seeking to enforce duly-filed-but-not-yet-registered works will no longer have the ability to forum shop for jurisdictions favorable to an application rule approach.
5. Given the Copyright Office’s current queue of on average seven months (and up to thirty seven months) to process and examine an application for registration, we expect to see the number of applications filed with expedited special handling pre-litigation requests for review to increase. This in turn will likely increase the waiting period for even expedited review applications further off from the Office’s goal of five working days.
6. Rights owners unwilling or unable to pay the fee to expedite an application will need to keep the Copyright Office’s application processing delays in mind to ensure that the delay does not lead to their filing copyright infringement complaints outside of the federal statute of limitations period for claims, which is currently “three years after the claim accrued.” Judicial or legislative intervention may be required to establish equitable tolling exceptions for the rare scenario where, due to processing or examination issues, the Copyright Office is unable to register or affirmatively refuse a copyright application within a three year time period.
7. We may see an increased number of filings requesting reconsideration of refusals to register copyrights, as well as more frequent litigation with the Copyright Office for denied applications. According to data published by the Copyright Office, between April 2016 and mid-March 2019, only 162 refusals to register were even fully pursued through a final denial at the Copyright Office (the reversal rate is currently just shy of 17 percent).[4] Appeals of those denials to federal court are exceedingly rare. However, those numbers are likely to significantly increase, especially if the Copyright Office’s low 17 percent reversal rate holds steady.    

A Reminder About the Added Benefits for Early Registration of Copyrights

The Fourth Estate decision underscores the need for creators and rights owners to apply to register their copyrights often and as early as possible. While the Court’s decision did not discuss other key provisions of the Copyright Act that provide additional protections and rights to owners of registered works, we want to remind you of the most pressing ones here:

• registrations for published works that are duly filed within three months of the first publication of the work, or for unpublished works that are duly filed before the infringement begins, entitle the owner to statutory damages (in lieu of actual damages or the infringer’s profits) and attorney’s fees if successful in the suit; and [5]
• a registration establishes prima facia evidence of validity of the copyright and facts stated within the registration certificate, if the registration is made within five years of the first publication of the work.

[1] Registration Processing Times, US Copyright Office (last visited March 5, 2019).

[2] Sentence one reads: “… . 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.” Sentence two reads: “In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.”

[3] Section 411(a) of the Copyright Act expressly allows courts to adjudicate infringement claims for unregistered works in three circumstances: (1) where the work at-issue is not a “United States work”; (2) where infringement claims concern rights of attribution and integrity under the Visual Artists Rights Act (Section 106A); and (3) where the owner attempted to register the work but the US Copyright Office refused registration. Two other exceptions to the registration rule also arise in the following narrow contexts, provided that certain pre-registration and perfection of claim requirements are met: (1) works of live transmission where the work is not fixed in tangible format until it is transmitted and published, pursuant to Section 411(c); and (2) works that have a history of infringement prior to authorized commercial distribution (e.g. movies and albums), pursuant to Section 408(f).

[4] Review Board Letters Database, US Copyright Office.
 

[5] This provision is also subject to some narrow exceptions for the categories of works identified in the above footnote 3.