On March 4, 2019, the Supreme Court resolved a circuit split regarding the Copyright Act’s requirement of “registration” of a work prior to bringing an enforcement action against an alleged infringer. In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC (“Fourth Estate”), the Supreme Court unanimously held that a work is not “registered” until the Copyright Office has reviewed and actually registered the work. The Court’s decision provides further incentive to copyright owners to promptly file for registration of their works.
Copyright law protects original works of authorship fixed in a tangible medium from unauthorized exploitation. While the copyright rights vest in the author of the work upon the work’s creation, registration of a work with the Copyright Office provides certain benefits to the owner of the copyright (e.g., statutory damages and attorney fees to the prevailing copyright owner) and, importantly, registration is required in order to bring an enforcement action against an alleged infringer. However, a circuit split developed regarding when a work is “registered” within the meaning of the statute.
In Fourth Estate, the copyright owner, Fourth Estate, was a news organization that produced online journalism and licensed Wall-Street.com to publish Fourth Estate-produced articles on its website. The license agreement required Wall-Street.com to remove all licensed content prior to canceling the agreement; however, Wall-Street.com canceled the agreement without removing the articles. Fourth Estate filed suit for copyright infringement and alleged in its complaint that it had filed applications to register the licensed articles with the Copyright Office, but the district court dismissed the action because the articles were not “registered” as the Copyright Office had not yet reviewed and registered Fourth Estate’s pending applications. The Eleventh Circuit affirmed the dismissal in a decision that created a split amongst the Circuit Courts of Appeals.
The Supreme Court granted certiorari to resolve the circuit split and affirmed the decision of the Eleventh Circuit that required the Copyright Office to review and register the copyright prior to copyright owner bringing an action for infringement. The Court’s construction of the term “registration” focused on the fact that suit under the Copyright Act is permitted (1) if the work was registered or (2) a copyright owner could institute an action and serve notice thereof on the Register of Copyrights if a complete application was submitted and registration was refused. The Court reasoned that reading these two provisions together required action from the Copyright Office with respect to an application prior to the copyright owner bringing suit – either actual registration or refusal – as otherwise the authorization to seek suit after refusal would be superfluous if the applicant could simply file suit after filing an application prior to the Copyright Office taking action.
The Court further noted the Copyright Act’s limited exceptions to filing an infringement suit prior to securing a registration, including preregistration of works vulnerable to pre-distribution infringement (such as movies and music) and infringement of live broadcasts, still required the copyright owner to pursue registration in order to avoid dismissal of the suit.
While the Court recognized that their construction might require copyright owners to wait prior to bringing suit due to an average processing time of seven months at the Copyright Office, the Court was not convinced this lag time was enough to require a different construction because the Copyright Act safeguards the copyright owner by vesting their exclusive rights upon creation of the work and prohibiting infringement from that date. For instance, the Court noted that the average pendency is well within the three-year statute of limitations that apply to copyright infringement claims, and that the copyright owner may still recover damages for infringement that occurred prior to registration, in addition to the infringer’s profits. Furthermore, the Court noted that the Copyright Office also offers expedited processing of copyright applications within five working days for the payment of an additional fee.
The Court’s decision means that copyright owners wary of infringement of their works should take measures to promptly register their works with the Copyright Office. Early registration provides the best possible protection of the work and allows for prompt enforcement upon discovery of infringement. Copyright owners who discover infringement prior to registering their work should consider expedited processing of their work at the Copyright Office if they are considering enforcement of their copyright rights against an infringer.