In Fourth Estate Public Benefit Corp. v. Wallstreet.com, LLC, et al. (March 4, 2019)(Copy of opinion available here), the Supreme Court decided a split of authority among the U.S. Courts of Appeals as to whether a copyright registration is needed to file a copyright infringement lawsuit. The Supreme Court found that it a copyright registration is required and held registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright. A copyright owner can recover for infringement that occurred both before and after registration.
Petitioner Fourth Estate Public Benefit Corporation (Fourth Estate), a news organization, licensed works to respondent Wall-Street.com, LLC (Wall-Street), a news website. After the parties’ license agreement was cancelled, Wall-Street failed to remove the licensed articles from its website. Fourth Estate sued Wall-Street. Fourth Estate had filed applications to register the articles with the Copyright Office, but the Register of Copyrights had not acted on those applications.
Title 17 U. S. C. §411(a) 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.” The District Court dismissed the complaint, and the Eleventh Circuit affirmed, holding that “registration . . . has [not] been made” under §411(a) until the Copyright Office registers a copyright.
What was deemed “registration” under Section 411 was split into two theories: (1) the filing of an application and (2) the issuance of the registration. The issue was has “registration . . . been made in accordance with [Title 17]” as soon as the claimant delivers the required application, copies of the work, and fee to the Copyright Office; or has “registration . . . been made” only after the Copyright Office reviews and registers the copyright. There was a division among U.S. Courts of Appeals on when registration occurs in accordance with §411(a).
The Supreme Court found that its reading of the registration requirement was confirmed by Section 411 and the other portions of the Copyright Act. Section 411 discusses filing suit after refusal of the application and allows the Register to become a party to the action with respect to the issue of registrability of the copyright claim. These provisions imply registration is a prerequisite to filing suit. Section 410 confirms that application is discrete from, and precedes, registration. Section 408’s preregistration allows enforcement of exclusive rights in court before obtaining registration or refusal thereof.