The Supreme Court ruled on March 4, 2019 that a copyright owner must obtain a registration certificate from the Copyright Office prior to filing an infringement lawsuit. The unanimous decision in Fourth Estate Public Benefit Corp. v. Wall-Street.Com, LLC was authored by Justice Ruth Bader Ginsburg. The Court’s ruling resolves a split among the circuit courts of appeals and has important implications for copyright owners.
The Fourth Estate Public Benefit Corp. (Fourth Estate) licensed content to the Wall-Street.com (Wall-Street) to upload to their news website. Wall-Street continued to display the content on the website after the license was no longer valid, thus breaching the licensing agreement. Fourth Estate, which had yet to register its content with the Copyright Office, simultaneously filed applications to register the content with the Copyright Office and filed suit against Wall-Street for Copyright infringement.
There was disagreement between the Eleventh and Ninth Circuit over the language in Section 411(a) of the Copyright Act. The act reads “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.” The Eleventh Circuit interpreted that registration is “made” when an application is filed and the Copyright Office issues a registration certificate. In contrast, the Ninth Circuit interpreted that registration is “made” when the application is filed. The Ninth Circuit approach was seen as more realistic given the average seven months it takes to receive a registration certificate from the Copyright Office. This delay increases the risk of copyright owners losing their ability to enforce their rights because they only have three years to act on the statute of limitations under the Copyright Act.
The Supreme Court supported the Eleventh Circuit reading of the statute. In Justice Ginsburg’s opinion, the “phrase ‘registration … has been made’ refers to the Copyright Office’s act of granting registration, not to the copyright claimant’s request for registration.” Although the Court acknowledged the increase in administrative lag for obtaining a Copyright Certificate, this delay does not allow the Court to revise Section 411. Thus, copyright owners must obtain the certificate from the Copyright Office prior to filing a copyright infringement lawsuit.
Future copyright claimants must apply and receive a decision from the Copyright Office prior to pursuing an infringement claim in court. The Supreme Court’s ruling gives copyright owners even more incentive to register their works with the Copyright Office in advance. Registering sooner rather than later will enable copyright owners to utilize the protections of registration from statutes, avoid additional fees for expediting registration prior to a lawsuit, and register with the U.S. Customs Service who can track pirated or counterfeited copies.
If you have questions about filing a copyright application or how to obtain a copyright registration, give Saper Law a call: 312.527.400