On March 4, 2019, in Fourth Estate Pub. Benefit Corp. v. Wall Street.com, (No. 17-571), a unanimous Supreme Court decided that copyright registration is necessary before bringing an infringement action in a U.S. district court. Opinion here and oral argument here courtesy SCOTUS blog. Justice Ginsburg, the opinion's author, was in the hospital during the oral argument.
Fourth Estate sued Wall Street.com for copyright infringement shortly after applying to the Copyright Office for a copyright registration, rather than waiting the estimated seven months for the Copyright Office to issue a registration certificate. In some parts of the country, courts permitted a plaintiff to commence a lawsuit where an application to register a copyright claim had been filed with the Copyright Office - the "application approach." In other jurisdictions, including in the Second Circuit, federal judges dismissed cases where a plaintiff could not show a copyright registration certificate (or a refusal of the Register to issue a registration) prior to the lawsuit's commencement - the "registration approach."
Fourth Estate resolves a rather unsexy issue dividing the federal courts since I wrote Copyright Litigation Handbook over a decade ago. The case is important to lawyers and copyright owners commencing copyright infringement lawsuits in federal court, but is not likely of interest to a broader audience. The case relates only to a narrow administrative issue: how and when to sue in federal court in light of administrative delays in registration at the Copyright Office that have grown from one to two weeks in 1956 to seven months today. Because many federal courts had already required action by the Register as a precondition of suit, as a practical matter this decision, will only change things for copyright owners in a hurry to sue in parts of the United States where Circuit Courts had adopted the "application approach." For years, copyright owners in "registration approach" jurisdictions have been well-advised to use the Copyright Office's "Special Handling" procedure that is available in cases involving potential litigation. Special Handling has, according to the Copyright Office, a five-day turnaround (I would allow a few extra days). Unfortunately, the Special Handling procedure comes with an $800 fee. By comparision, a basic electronic copyright registration runs $35-55 according to the latest Copyright Office Circular 4.
The Supreme Court's decision turned on the language of Section 411(a) of the Copyright Act:
(a) Except for an action brought for a violation of the rights of the author under section 106A(a), and subject to the provisions of subsection (b),[1] no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, but the Register’s failure to become a party shall not deprive the court of jurisdiction to determine that issue.
A unanimous Supreme Court concluded that "registration ...has been made" "when the Register has registered a copyright after examining a properly filed application." under 17 U.S.C. 411(a). The opinion noted that copyright "registration is akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights." In practical terms, this means that a copyright owner suing for infringement must have a copyright registration certificate in hand before commencing an action in federal court (or a refusal of registration by the Register).
Paying an $800 fee for Special Handling is an unfair annoyance. This case means that, in emergency situations where litigation is necessary, copyright owners throughout the nation will have to obtain a copyright registration certificate (or a refusal) following the Special Handling procedure where waiting for the Copyright Office to issue a registration certificate is not an option.
Oral argument in the case contains a lot of interesting information on copyright registration history, policy and arguments relating to how many registrations are rejected and how many involve correspondence with the Copyright Office. A footnote to the decision notes that Fourth Estate's check to the Copyright Office bounced. During oral argument it was argued that Congress had recently increased staffing budgets by 60% to reduce the registration time lag. In the end, the Supreme Court found the administrative time lag to be "unfortunate" but that the lag did not justify a rewrite of Section 411's requirement of registration by the Register of Copyrights prior to commencement of a lawsuit.
www.dunnington.comCopyright law, fine art and navigating the courts. Attorney and AuthorCopyright Litigation Handbook (Thomson Reuters Westlaw 2018-2019) by Raymond J. Dowd
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