March 06, 2019

In 9-0 Decision, Supreme Court Holds Copyright Registration Required for Litigation

3 min

For years, courts have been split as to whether a pending copyright application satisfied the "copyright registration" requirement for pursuing copyright litigation. At long last, on Monday, the Supreme Court resolved the application/registration split, determining that a registration certificate issued by the Copyright Office – as opposed to a pending application for registration – is required before filing federal copyright litigation.

The case arose when Fourth Estate, a news organization, sued Wall-Street and its owner for copyright infringement of news articles that Wall-Street failed to remove from its website after canceling the parties' license agreement. Fourth Estate had filed applications for copyright registration, but before the registrations were issued, it filed its litigation. While copyright exists as soon as a work is fixed in a tangible means of expression, the Copyright Act states that "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." 17 U.S.C. §411(a).

The District Court dismissed the complaint, and the Eleventh Circuit affirmed, holding that "registration . . . has [not] been made" under §411(a) until the Copyright Office registers a copyright. Other courts, including the Ninth Circuit, had long followed the "application approach" that a pending application for registration was sufficient to meet the registration requirement.

To resolve this Circuit split, the Supreme Court granted certiorari. Writing for a unanimous Court, Justice Ginsburg addressed each of the petitioner's arguments and ultimately affirmed the Eleventh Circuit's determination that "registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright," not merely when an applicant files for registration of its copyright.

Fourth Estate and supporting amicus briefs made strong policy arguments for the application approach, including the implication that a registration approach imposes undue burden on copyright owners, will cause delay, and restricts the ability to seek preliminary injunctions. However, the statutory construction arguments made by Wall-Street won out, and the Supreme Court determined that it was Congress's intent that "it is the Register's action that triggers a copyright owner's entitlement to sue."

The Copyright Office typically issues registrations within six months to a year, and offers a special handling option to speed up the process to approximately two weeks for an additional fee of $800. Thus an aggrieved copyright owner's ability to file litigation for infringement of a U.S. copyright work, and to seek preliminary injunctive relief if deemed necessary, will be delayed if the copyright owner has not already registered its work in a timely manner. Even to parties willing to pay the expedited fees, the two-week period could feel like an eternity to some faced with a business threat related to the infringement of their copyright.

Copyright registrations already offer many benefits, including the ability to collect statutory damages and to seek recovery of attorneys' fees if they are filed before infringement commences. This Supreme Court decision adds yet another crucial benefit: the ability to immediately file copyright litigation.