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September 05, 2019
Patterson Thuente IP

SCOTUS clarifies copyright infringement lawsuit prerequisite

Authors of work obtain exclusive rights — copyrights — in their works immediately on creation of the work. But they generally can’t file a civil lawsuit for infringement of those rights until they register the work with the U.S. Copyright Office.

The federal courts of appeal have split, however, as to when a copyright infringement suit could be filed — on filing the application for copyright registration with the Copyright Office or on grant of the copyright registration by that office. Now, in a unanimous decision, the U.S. Supreme Court has resolved the issue once and for all.Stack of newspapers

News brief

Fourth Estate Public Benefit Corporation, a news organization, licensed works to Wall-Street.com, a news website. After the licensing agreement was canceled, Wall-Street failed to remove Fourth Estate articles from its website, as required by the agreement.

Fourth Estate subsequently sued Wall-Street for copyright infringement. At the time it filed the lawsuit, Fourth Estate had filed applications to register the articles with the Copyright Office, but that office had not acted on the applications. Under the U.S. Copyright Act, a copyright holder can’t bring a civil action for infringement until the registration “has been made.”

The district court dismissed the complaint because of the lack of registration. The U.S. Court of Appeals for the Eleventh Circuit affirmed, holding that registration doesn’t occur until the Copyright Office grants a registration. Fourth Estate turned to the Supreme Court for relief.

Opinion piece

As the high court explained, copyright owners must have a registration before filing an infringement action, except in limited circumstances. For example, an owner who’s preparing to distribute a work vulnerable to predistribution infringement (for example, a movie or song) can apply to the Copyright Office for preregistration. Once preregistration has been made, the applicant can bring a lawsuit. A copyright owner also may sue for infringement of a live broadcast before registration. In both scenarios, the owner eventually must pursue registration to maintain a suit for infringement.

Fourth Estate didn’t claim one of these exceptions, though. Instead, it focused on the question of when registration actually occurs, arguing that the language “has been made” means when a copyright owner submits the applications, materials, and fee required for registration. Wall-Street, on the other hand, advocated the “registration approach,” which recognizes registration only once the Copyright Office grants registration of a copyright.

The Supreme Court came down firmly on the side of the registration approach, finding it reflects the only satisfactory reading of the relevant statutory text. It cited one provision, for example, that confirms that application is separate from, and precedes, registration.

The Court noted, too, that the provision regarding the preregistration option would have little use if a complete application sufficed to make registration. The copyright owner who fears prepublication infringement would have no reason to apply for preregistration if he or she could simply apply for registration and then immediately file an infringement lawsuit.

The takeaway

The lesson to be learned from the Supreme Court’s ruling is clear: Creators should file copyright applications for works with economic value as soon as possible. Otherwise, they might not be able to pursue infringement-related litigation — whether for damages or to obtain a preliminary injunction before extensive damage is done — in a timely manner.

Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, Jan. 8, 2019, U.S.S.C.

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