The Supreme Court issued a unanimous ruling on March 4, 2019 that copyright owners cannot file infringement actions until after the U.S. Copyright Office has registered the subject work. The decision in Fourth Estate Public Benefit Corp. v. Wall-Street[dot]com LLC et al., Case No. 17-571 (2019), resolves the conflict among lower courts about the meaning of the Copyright Act’s requirement for “registration” of the work prior to filing an infringement action based on that work. The decision reinforces the importance of registering copyrights in works of particular importance or value before infringement is a risk.

Registration Requirement 

The Copyright Act (the “Act”) provides the owner of a copyright “exclusive right” in its “original works of authorship” on creation of the work[1]. However, before enforcing those rights in court, Copyright owners must comply with the requirements of Section 411(a) of the Act. It provides: “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” (emphasis added).[2] 

Prior decisions presented a split among appellate Circuits as to whether the registration requirement of the Act is met when a copyright owner files its copyright application with the Copyright Office and submits the registration fee, or if the owner must wait until the registration is actually granted before being able to bring an infringement action based on the copyrighted work. This week the High Court resolved that split.  

The Decision 

Justice Ginsburg, delivering the opinion of a unanimous Supreme Court, noted the language of the Act plainly reads that registration is required for a copyright owner to commence an infringement action, and that mere filing of an application would not suffice unless an exception exists (such as preregistration of certain types of works or bringing infringement actions for live broadcasts before registration).[3]

It is not sufficient for a copyright owner to merely file its application before bringing suit. The Supreme Court explained that any prejudice to copyright owners requiring registration before filing an infringement action was minimal given the existence of specific exceptions, the average copyright processing time of about seven months, and that owners can file expedited applications which would be examined within 5 working days.

Other Registration Benefits

The Fourth Estate decision does not directly affect established statutory and case law holding that a copyright plaintiff may not recover statutory damages or attorney’s fees for copyright violations that pre-date registration[4]. Those rights, which are unavailable until registration, can amount to hundreds of thousands of dollars and be the distinguishing factor between whether litigation by the copyright holder seeking to stop an infringer is economically feasible or not. However, because the Fourth Estate decision now makes clear that no court action can be filed until the registration issues, it means that copyright holders relying on unregistered copyrights will have no legal remedy at all.

Takeaway

Software code, text, videos, photos, websites, and databases are just a few examples of important works that are protectable under copyright law. Although copyrights are intangible intellectual property rights that arise automatically on creation of the work, this U.S. Supreme Court decision makes clear that enforcement can commence only after the copyright registration has issued. The decision underscores the importance of taking into account copyright office processing times and coordinating registrations with IP counsel as early as possible, and before infringement risk arises. Copyright owners should carefully consider the timing and strategy of copyright registration to protect and enforce copyrights in valuable works through infringement actions.

If you have any questions regarding copyright protection, please contact your H&C attorney or a member of the IP Group.

Mitesh Patel
Allonn Levy
Cary Chien
Chiara Portner
Christopher Hohn
Gail Hashimoto
Gideon Korrell
Jason Angell
Jed Dooley
Jeffrey Ratinoff
Jennifer Coleman
John Picone