Client Alerts | 03/05/2019

U.S. Supreme Court Rules Copyright Registration Required to Sue for Infringement


The U.S. Supreme Court ruled yesterday that a copyright owner must first obtain a copyright registration from the Copyright Office prior to filing a complaint for infringement of that work. This resolves a long-standing federal circuit court split regarding whether the Copyright Office must grant copyright registration before a copyright owner can bring an infringement action. Previously, some circuits allowed a copyright owner to file a copyright infringement claim based only on a filed application for copyright registration. Others, including the Eleventh Circuit, required a copyright owner to obtain a registration issued by the Copyright Office, interpreting the plain language of the Copyright Act to mean that “registration” occurs only when the Copyright Office acts on the application by registering the work.

Yesterday, in a unanimous decision in an opinion written by Justice Ginsburg, the Supreme Court agreed with the Eleventh Circuit’s application of 17 U. S. C. §411(a). Copyright owners will be required to have a registered work to sue for infringement of that work. Fourth Estate Public Benefit Corp. v. LLC et al., case number 17-571, 586 U. S. ____ (2019). The opinion states that:

“[t]o recover for such infringement, copyright owners must simply apply for registration and await the Register’s decision. Further, Congress has authorized preregistration infringement suits with respect to works vulnerable to predistribution infringement, and Fourth Estate’s fear that a copyright owner might lose the ability to enforce her rights entirely is overstated.” Id. at 3. In response to Fourth Estate’s arguments that registration may take months, delaying copyright owners’ ability to seek relief, “unfortunate as the current administrative lag may be, that factor does not allow this Court to revise §411(a)’s congressionally composed text.”  Id. at 12.

Under the Copyright Act, a copyright author gains exclusive rights in his or her work immediately upon the work’s creation. 17 U. S. C. §106. A copyright owner may file a copyright infringement action to enforce those exclusive rights under §501(b), but generally only after complying with §411(a)’s requirement that “registration . . . has been made.” There are limited statutory exceptions that allow a copyright owner to sue prior to registration. Section 411(a) also permits a copyright owner to sue for infringement based on a refused copyright registration application. In addition, the Copyright Office allows copyright owners to file expedited “special handling” copyright applications in limited circumstances, such as pending or prospective litigation. The Supreme Court reasoned that it was the intent of congress to require “registration” of a work before a copyright owner may file suit. It observed that, otherwise, these exceptions and accommodations would be unnecessary.

In yesterday’s decision, the Supreme Court upheld that “registration” means an action performed by the Copyright Office, not the copyright owner. The Court refused to override the plain meaning of §411(a) to remedy any alleged harm to the copyright owner caused by administrative delays in the registration process. Upon registration of the copyright, a copyright owner can still recover for infringement that occurred both before and after registration.

The Court’s decision is not surprising, but it will likely have immediate consequences. First, any pending copyright litigation where a copyright application was asserted in the action may need to be amended to only assert remaining registered works or dismissed altogether. Second, it may cause an increase in copyright applications, particularly expedited “Special Handling” applications, which could add to the backlog and administrative delays already plaguing the Copyright Office. Since copyright owners must commence lawsuits “within three years after the claim accrued” under 17 U.S.C. §507(b), these consequences will likely have significant impacts on copyright owners’ claims for damages. Now, more than ever, it is important for copyright owners to identify and protect important works by filing copyright applications early and often.

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