Summary
On Monday, March 4, 2019, the U.S. Supreme Court held in a unanimous decision that, under § 411(a) of the Copyright Act, a claimant may not bring suit for copyright infringement until the Copyright Office has either granted or refused the copyright claimant’s application for registration. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. The Court’s decision affirmed the dismissal of a copyright suit on the grounds that the plaintiff did not comply with § 411(a) prior to filing the suit.
Background of the Case
Fourth Estate licensed a number of journalistic articles to the website Wall-Street.com. Wall-Street canceled its license but continued to display the articles on its website. In response, Fourth Estate submitted copyright applications for the articles and filed suit in the United State District Court for the Southern District of Florida. The district court dismissed the lawsuit because the Copyright Office had not granted Fourth Estate’s applications for the copyright registrations. Fourth Estate appealed to the Eleventh Circuit.
Section 411(a) of the Copyright Act prohibits copyright claimants from bringing infringement claims until “registration of the copyright claim has been made in accordance with this title.” The Circuit Courts are split on what is sufficient to show “registration of the copyright claim.” The Fifth Circuit and Ninth Circuit hold that registration “has been made” when a copyright claimant submits all the proper materials to the Copyright Office in an application for registration (the “application approach”). In contrast, the Tenth Circuit holds that registration “has been made” only when the Copyright Office either grants or denies registration of the work (the “registration approach”). Here, the Eleventh Circuit joined with the Tenth Circuit, holding that the registration approach is the only plausible interpretation of the plain language of § 411(a). Thus, the Eleventh Circuit affirmed the district court’s dismissal.
Fourth Estate petitioned the Supreme Court for review, arguing that other sections of the Copyright Act use the phrase “make registration” to refer to actions and submissions of the copyright claimant. Fourth Estate also argued that a claimant should not have to wait for the Copyright Office to act on the registration because the Copyright Act permits the claimant to bring suit even if the Copyright Office refuses registration.
Decision
In a unanimous decision, the Supreme Court held that the correct reading of § 411(a) is the registration approach. Indeed, the second sentence of § 411(a), which sets out an exception to the rule, states that a claimant may bring an infringement suit even if the application is refused by the Copyright Office.
The Court acknowledged that copyright claimants are limited to a three-year statute of limitations and that this statute could “run out” prior to the Copyright Office acting on the application. However, the Court noted that the average processing time for a copyright application is seven months, leaving sufficient time for a claimant to file suit once the Copyright Office issues a decision. The Court also noted that claimants may apply for 5-day expedited processing of their applications for an $800 fee.
Observations
This ruling will change current practice in the Ninth Circuit and require claimants to wait for action by the Copyright Office before bringing suit. In view of this development, claimants may wish to request expedited review by the Copyright Office when filing an application in anticipation of filing suit. The ruling does not appear to affect the remedies available to a copyright claimant who brings a claim for copyright infringement. The Supreme Court held that, even though a copyright claimant may not sue until the Copyright Office acts on the application, the claimant nonetheless may recover for infringements occurring prior to registration.
