On March 4, 2019, the Supreme Court came out with what may seem to be a minor copyright law ruling, but one that removes a minority view within certain federal circuits.

Under the Copyright Act of 1976, as amended, a copyright owner has “exclusive rights” in its “original works of authorship” immediately upon creation.  However, a copyright owner must generally comply with the requirements of §411(a) of the Copyright Act before filing suit to enforce those rights.  There are limited exceptions to the requirements in §411(a), which are provided for in the Copyright Act, wherein a copyright owner can pursue an infringement claim before registration, including in cases where a work is vulnerable to pre-distribution infringement (e.g., movies and music).  In those cases, the owner can apply for “preregistration,” and then institute an infringement lawsuit. However, even in these limited circumstances, the copyright owner must eventually pursue registration in order to maintain its infringement lawsuit.⁸

Let’s take a look at the relevant provision of the Copyright Act – Section 411(a).

17 U.S.C § 411(a) requires, in part:

[N]o civil action for infringement of the copyright of any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.

That seems to be very clear. (Let’s ignore what preregistration is for the moment, as registration is still required.)

However, there had been a split in the circuit courts. This division among U. S. Courts of Appeals had been about when registration occurs in accordance with §411(a). Comparing the case of Fourth Estate Pub. Benefit Corp. v. Wall-Street.com 856 F. 3d, at 1341 (in which the Circuit Court declared that registration has been made under §411(a) when the Register of Copyrights registers a copyright), with, Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F. 3d 612, 621 (CA9 2010) (in which the Circuit Court declared that registration has been made under §411(a) when the copyright claimant’s “complete application” for registration is received by the Copyright Office).

The parties argued over the verbiage “registration … has been made.” Is registration “made” once you’ve properly submitted your copyright application? Or is registration only “made” once the U.S. Copyright Office issues a registration certificate? Unlike the Ninth and Fifth Circuits, which had adopted the application approach, the Eleventh Circuit (where Fourth Estate filed suit) adopted the registration approach and determined that Fourth Estate could not proceed without the certificate in hand. The Circuit Court in Fourth Estate is the majority view – the copyright registration must be recorded. The minority view was always that filing an application at the Library of Congress’ Copyright Office was attained for purposes of the Copyright Act once the fee is paid to the Copyright office.

The Supreme Court (Justice Ginsburg writing for the unanimous court) stated that in the Copyright Act, “it is the Register’s action that triggers a copyright owner’s entitlement to sue. In enacting 17 U. S. C. §411(a), Congress both reaffirmed the general rule that registration must precede an infringement suit, and added an exception in that provision’s second sentence to cover instances in which registration is refused. See H. R. Rep. No. 94-1476, p. 157 (1976). That exception would have no work to do if, as Fourth Estate urges, Congress intended the 1976 revisions to clarify that a copyright claimant may sue immediately upon applying for registration. A copyright claimant would need no statutory authorization to sue after refusal of her application if she could institute suit as soon as she has filed the application.”

Thoughts on this ruling? Admittedly, I have used the minority view in the past to file a copyright infringement lawsuit before the registration is approved and granted. This move used to help getting a suit in front of a judge and trying to see if a matter could be settled before parties would be forced to file a motion to dismiss (which is a common tactic made in today’s litigation, anyway).

FILE YOUR COPYRIGHTS

• Be proactive. Verna Law has experience in applying for copyright protection covering all types of creative works. Let us help you navigate the U.S. Copyright Office’s rules on deposit copies, publication requirements, etc. Filing applications to protect your copyrightable material before disputes arise provides you with the required registration (or official refusal) you need so that you can act swiftly when an infringer surfaces.
• Expedite your application if needed. If you think litigation might be imminent, consider filing an expedited copyright application. Verna Law is experienced in filing applications for expedited processing. While the fee to expedite an application is $800, an applicant typically has a copyright registration (and, therefore, the ability to file a lawsuit) in hand within a week.
• Damages are important. If infringement happens after registration of the copyright, the copyright owner is entitled to damages such as statutory damages, attorney fees, and costs – not just lost profits. This ruling emphasizes the need to register a copyright.