In an important decision with implications for protecting all copyrighted works, of businesses and individuals, this month the U.S. Supreme Court (“SCOTUS”) unanimously held that, under § 411(a) of the Copyright Act, a claimant may not file a lawsuit for copyright infringement of a given work until an application to register the work with the Copyright Office has either been granted or refused. See Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. In this case, the claimant did not pre-register the work before filing suit. Consequently, SCOTUS affirmed the dismissal of the copyright infringement suit based on non-compliance with § 411(a). Henceforth, protecting copyright in works of authorship (e.g., books, computer programs, articles, and business publications) requires a new strategy for businesses and individuals who wish to protect their works.
This case will require changes in current practice in most states, including within the Western United States under Ninth Circuit jurisdiction. Henceforth, copyright claimants must now wait for action by the Copyright Office before filing a lawsuit. Sometimes the Office is slower in acting on applications than business exigencies permit or the applicable statute of limitations allow. Thus, claimants should consider requesting expedited review by the U.S. Copyright Office upon filing a pre-litigation application for registration. Fortunately, the case appears not to affect the remedies available to a copyright infringement plaintiff. SCOTUS held that, while commencement of suit must await action on an application by the Copyright Office, the plaintiff, once the lawsuit is filed, may still recover for acts of infringement that occur before the application ripens into an actual copyright registration.
Owners of works that are protectable by Copyright law that may wish to reserve the right to sue for infringement of copyright my also want to consider registering the work as part of a routine practice to protect intellectual property and not wait for the need to bring suit.
DISCUSSON OF CASE BACKGROUND:
In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, and Fourth Estate licensed certain journalistic articles to Wall-Street.com for publication of the articles on its website. Although Wall-Street terminated its license, it nonetheless continued to publish the licensed articles on its website. The articles had not been registered with the Copyright Office. Thus, Fourth Estate filed applications to register the offending articles and promptly filed suit in federal district court in the Southern District of Florida. Because the Copyright Office had not issued a registration at time of suit, the court dismissed the lawsuit. An appeal to the Eleventh Circuit by Fourth Estate followed.
At the time of the suit, Section 411(a) of the Copyright Act required plaintiffs to procure a registration from the Copyright Office before filing suit for copyright infringement of the work at issue. Specifically, the statute bared suit before “registration of the copyright claim has been made in accordance with this title.” At the time, the circuit courts of appeal (the Ninth, Fifth, Tenth and Eleventh) were divided regarding what was required to establish “registration of the copyright claim” (e.g., submission of application materials to the Copyright Office, actual registration, or something in between). In this case, the Eleventh held that actual issuance of a registration is the only interpretation of the language of § 411(a) that was consistent with the text of the statute. Accordingly, the Eleventh Circuit affirmed the district court’s dismissal.
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