Supreme Court: Copyright Owners Must Register with U.S. Copyright Office Before Filing Suit

Author: Joni Flaherty

In a unanimous decision authored by Justice Ginsburg, the Supreme Court has held that copyright owners must register with the U.S. Copyright Office before commencing a lawsuit to enforce their rights. In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. ___ (2019), the Supreme Court found that the Copyright Act of 1976 requires that the Copyright Office issue a certificate of registration, and that application for the certificate was not enough prior to commencing suit. The decision resolves a split among circuit courts, favoring the “registration approach” followed by the Tenth and Eleventh Circuits, under which registration by the Copyright Office was required to proceed, and rejecting the “application approach” followed by the Fifth and Ninth Circuit courts. The result turned on the interpretation of the phrase “registration of the copyright claim has been made” in Section 411(a) of the Copyright Act. That section reads:

[N]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim.

Fourth Estate, a public benefit online news producer, licensed articles to Wall-Street.com, a news website. When the license expired and Wall-Street.com failed to remove the articles from its website, Fourth Estate brought a trademark infringement claim. Wall-Street moved to dismiss the claims on the grounds that Fourth Estate had applied for, but had not yet registered, copyrights in its articles. Interpreting Section 411(a) of the Copyright Act, the District Court for the Southern District of Florida granted Wall-Street’s motion to dismiss, and that decision was affirmed by the Court of Appeals for the Eleventh Circuit.

The Supreme Court affirmed, citing the practical implications of litigating prior to the Copyright Office’s grant or denial of registration. The Court found that Fourth Estate’s concerns about depriving copyright owners of the ability to timely enforce their rights was “overstated,” and given that the average registration process takes several months (seven months, on average), there was little danger that a diligent copyright owner would be barred by the three-year statute of limitations. The Court also acknowledged exceptions to the rule, and the opportunity for copyright owners to pay an additional fee to rush their copyright application.

As a practical matter, the decision may encourage some copyright owners to promptly register their creative works. The decision may also cause a delay in some infringement suits or lead to more early dismissals of claims, and may also prevent eager litigants from adding a peripheral infringement claim for an applied-for but not yet registered copyright to a complaint.

About the author: Joni Flaherty is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property and Commercial Litigation Practice Groups. Her practice focuses on intellectual property and business litigation, with an emphasis on unfair business practices, trademark claims, and contractual disputes. Ms. Flaherty’s biography can be found here.