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Supreme Court Requires Copyright Registration Before Filing Infringement Suit

by Seth I. Appel (Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP – U.S.A.)

For many years, U.S. courts have been split on whether a plaintiff must own a copyright registration to bring an infringement action, or whether it is sufficient to have a pending copyright application. The Supreme Court finally resolved this issue in March of 2019, holding that a copyright registration is required. Fourth Estate Public Benefit Corporation v, Wall-Street.com, LLC, 139 S.Ct. 881 (2019),

https://www.supremecourt.gov/opinions/18pdf/17-571_e29f.pdf.

The U.S. Copyright Act states that “no action for infringement of the copyright in any United States work shall be instituted until … registration of the copyright claim has been made.” 17 U.S.C. § 411(a). It adds that a copyright applicant can institute an action for infringement once its application has been refused, as long as the application, deposit material and fee have been delivered to the Copyright Office and its serves its complaint upon the Register of Copyrights.

Based on these provisions, some courts have found that a pending copyright application was enough to bring an infringement claim. According to these courts, registration “has been made” once the copyright applicant delivers its complete submission to the Copyright Office. The Supreme Court disagreed, instead siding with the Court of Appeals for the Eleventh Circuit that the Copyright Office must register (or refuse) the work before suit can be filed. Justice Ginsburg, writing for the unanimous Court, explained that the “registration approach … reflects the only satisfactory reading of Section 411(a).

Read together, § 411(a)’s opening sentences focus not on the claimant’s act of applying for registration, but on action by the Copyright Office—namely, its registration or refusal to register a copyright claim.

The Court noted that this interpretation is confirmed by the final sentence of Section 411(a), which permits the Register of Copyrights to become a party to the infringement suit with respect to the issue of registrability.

Other provisions of the Copyright Act also confirm that a registration (or refusal) is required. For example, Section 410(d) states that once a work is registered, the “effective date” of the registration is the day on which the copyright owner filed its application, deposit and fee with the Copyright Office. The Court observed that there would be no need to specify the effective date of registration if submission of the required materials itself qualified as “registration.”

There are limited circumstances where a copyright owner can bring an infringement suit prior to registration, such as infringement of a live broadcast or a work that is subject to “preregistration” (available only for certain types of works vulnerable to predistribution infringement). However, the Court pointed out, preregistration would serve “little utility” if the copyright owner could simply bring suit upon filing its application. The registration requirement of Section 411(a) also does not apply to foreign works, as a result of an amendment to comply with the Berne Convention’s bar on copyright formalities.

In view of Fourth Estate, copyright owners should consider filing copyright applications as soon as possible, because it usually takes at least several months for the Copyright Office to review an application and issue a registration.