SUPREME COURT DECISION PLACES PREMIUM ON EARLY COPYRIGHT REGISTRATION

In the United States, copyright “registration” is a prerequisite to most suits for infringement of a US-origin work. Timely registration is also a prerequisite to the important remedies of statutory damages and attorneys’ fees. But what does “registration” mean? Circuit Courts of Appeals were split on the question of whether “registration” means filing an application for registration or actually obtaining the registration from the Copyright Office. Under current practices, this can make a difference of seven months on average – an eternity in the case of a serious infringement for which injunctive relief would be sought.

On March 4, 2019, in a unanimous decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, 2019 U.S. LEXIS 1730, the U.S. Supreme Court ruled that a copyright owner is not permitted to commence a suit for copyright infringement until the Copyright Office has actually registered the work.

At issue was the requirement in Section 411(a) of the Copyright Act which 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.” (emphasis added).

Prior to this ruling delivered by Justice Ruth Bader Ginsburg, the courts had been divided as to whether the statutory requirement in the Copyright Act that “registration… has been made” meant that a party simply needed to submit the necessary application and fee with the Copyright Office or that the Copyright Office needed to have approved the application before such party could bring suit. The Fourth Estate ruling settled the debate and clarified that merely submitting an application and fee is not enough – the Copyright Office must have approved the application.

While acknowledging that “the statutory scheme has not worked as Congress likely envisioned” and that processing times for registration by the Copyright Office have increased exponentially over the last several decades from an average of one to two weeks to an average of seven months, Justice Ginsburg wrote that this was a problem that the courts cannot cure, stating, “Unfortunate as the current administrative lag may be, that factor does not allow us to revise Section 411(a)’s congressionally composed text.” Fourth Estate Public Benefit Corp. at *21.

Citing the Copyright Act’s three-year statute of limitations in which to sue, the Court stated that fears that a processing delay of several months by the Copyright Office may deprive the copyright owner from its ability to bring a suit for infringement is “overstated” (“Fourth Estate’s fear is overstated, as the average processing time for registration applications is currently seven months, leaving ample time to sue after the Register’s decision, even for infringement that began before submission of an application.” Fourth Estate Public Benefit Corp. at *20).

Moreover, the substantive rights of any copyright owner are not affected by any delays at the Copyright Office since a copyright owner would still recover damages for infringement that occurred before or after the date of registration. This decision only clarifies that the owner must now wait to receive the Copyright Office’s approval of copyright registration prior to bringing suit instead of filing suit immediately upon submitting an application to the Copyright Office.

Practice Notes

• Do not wait for an infringement before registering your copyrights. Registration is simple and inexpensive ($55 filing fee). Remedies for copyright infringement, especially attorneys’ fees, are highly valuable not only for film, TV and books, but also for all forms of computer software. Delay in registering may jeopardize your ability to obtain maximum remedies from infringers.
o For published works, register within three (3) months of first publication.
o For unpublished works, register prior to first commercialization.
o For frequently updated works such as computer software, register each major version.

• If there is an infringement of an unregistered copyright, consider expedited processing. The Copyright Office offers a process for expedited review of applications for copyright registration that (presently) usually results in a decision within a few days. This expedited review is available for a fee of $800.

Please contact Tom Hemnes at themnes@gtclawgroup.com or Grace Lee at glee@gtclawgroup.com if you would like to pursue registration. Thank you.

This material is provided for your convenience and does not constitute legal advice or create an attorney-client relationship. Prior results do not guarantee similar outcomes. Attorney Advertising.