Supreme Court Disallows Filing for Infringement Before Copyright Registration

Supreme Court holds that copyright owners must wait for a copyright application to be approved before they may file a lawsuit for copyright infringement.

** LEGAL UPDATE **

One of the primary benefits of registering a work with the U.S. Copyright Office is that the copyright owner can sue for infringement in federal court. But when, exactly, does the right to sue commence? The U.S. Supreme Court answered that question in Fourth Estate Public Benefit Corp. v. Wall-Street.com (2019).

Why the Fourth Estate Lawsuit Began

Fourth Estate Public Benefit Corporation is a news organization that produces online content and also licenses that content to websites while retaining the underlying copyright.

Wall-Street.com purchased licenses to several pieces produced by Fourth Estate. Under the license agreement, Wall-Street was supposed to remove all of content produced by Fourth Estate from its website at the conclusion of the license term if and when they chose not to renew. However, Wall-Street continued to host Fourth Estate's content even after it stopped paying the licensing fees.

In response, Fourth Estate sued Wall-Street for copyright infringement in the U.S. District Court for the Southern District of Florida. However, at the time of its lawsuit, it had only filed an application to register those pieces of content with the Copyright Office; no formal registration had been given. The district court therefore dismissed the lawsuit, finding that there had been no "registration" yet within the meaning of 17 U.S.C. § 411(a)—a prerequisite to litigation. On appeal, the U.S. Court of Appeals for the Eleventh Circuit agreed with and thus affirmed the trial court's decision.

Because the federal circuit courts were divided on the question of whether registration occurs when an owner files an application to register a copyright or when the Copyright Office formally registers the copyright, the U.S. Supreme Court agreed to review the case. The question brought to the Supreme Court was whether “registration of [a] copyright claim” is complete under 17 U.S.C. § 411(a) when the copyright holder delivers the required application to the U.S. Copyright Office, or only once the copyright office has acted on that application.

Supreme Court's Decision in Fourth Estate Case

In a unanimous decision authored by Justice Ruth Bader Ginsburg, the Court affirmed the judgment of the Eleventh Circuit. It said that copyright "registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright."

Upon registration of the copyright, the Court held that a copyright owner can recover for infringement that occurred both before and after registration—in other words, the owner can obtain retroactive damages.

The Court made clear that the mere filing of an application for copyright registration with the Copyright Office is not enough. For the registration to be effective, the Copyright Office must actually process the application and formally register the copyright.

Consequently, Fourth Estate's attempt to register the copyrights that had allegedly been infringed was not yet complete under 17 U.S.C. § 411(a) and would not allow it to initiate an infringement lawsuit. An application alone does not constitute a registration.

Under the Copyright Act, the creator of an original work gains certain “exclusive rights” in the work immediately upon the work’s creation. A copyright owner may institute a civil lawsuit for infringement of those exclusive rights—but only after complying with the requirement to actually obtain registration.

Impact and Conclusion of Fourth Estate Case

The practical implication of Fourth Estate is that copyright owners cannot race to the courthouse from the moment that they file a registration application with the Copyright Office. Rather, they must wait for the application to actually get approved.

While this distinction might seem trivial, it can matter a great deal to would-be copyright holders who wish to sue as quickly as possible—particularly given that it can take many months, as a practical matter, for an application to gain approval by the Copyright Office.

Effective Date: March 4, 2019