• Nancy J. Mertzel

Why Should You Register Copyright? Lessons Learned From the Supreme Court Fourth Estate Decision

In March, the United States Supreme Court issued a unanimous decision in that has important implications for copyright ownersThe case concerned whether a copyright plaintiff can file suit immediately after filing a copyright application, or must wait for the Copyright Office to either issue or refuse the registration.The Supreme Court held that Section 411 of the Copyright Act requires a plaintiff to wait for the Copyright Office to issue a registration, or refuse the application, before filing a lawsuit.This article will briefly summarize the decision and provide a short list of best practices for copyright owners.

The Fourth Estate Case

The facts of the case were straightforward.Fourth Estate claimed that Wall-Street.com violated its rights by continuing to display its articles after Wall-Street.com’s license agreement expired.Fourth Estate filed suit after filing an application for registration with the Copyright Office, but before the Register of Copyrights had acted on the application.The district court granted Wall-Street.com’s motion to dismiss the case under Section 411(a) of the Copyright Act, and the Eleventh Circuit affirmed.

Section 411(a) provides that no action for infringement of copyright shall be instituted until “registration of a copyright claim has been made.” The section reads:

[N]o civil action for infringement of the copyright in any United States work shall be instituted until pre-registration 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.

17 U.S.C. § 411(a).

The Supreme Court accepted the case to resolve a split between the circuits.Some courts of appeals interpreted this language as allowing suit to be commenced after an application, deposit and fee were submitted, while others required issuance or refusal of the registration by the Copyright Office.The parties argued about the proper interpretation of Section 411(a), but the briefing also reflected a more fundamental disagreement as to whether requiring registration before filing suit is the best policy.

The decision, authored by Justice Ginsburg, resolves the circuit split, holding that the statute requires issuance of a registration or a refusal by the Copyright Office.The Supreme Court noted that a copyright author gains exclusive rights when the work is created, but must obtain a registration (or refusal) prior to commencing litigation.The Court explained that “although an owner’s rights exist apart from registration, registration is akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights.”

The Court interpreted the phrase “registration … has been made” by viewing Section 411(a) in its entirety.In particular, the Court emphasized that the second sentence, which allows suit upon refusal of registration, would be superfluous if a copyright plaintiff could file suit immediately following submission of an application.In doing so, the Court rejected Fourth Estate’s argument that the phrase “makes registration” and the passive voice construction “registration has been made” refer to activities by the applicant, finding that the Copyright Act uses the term registration consistently to mean acts by the Copyright Office.

The Court also relied, in part, on the fact that even when Congress revised the Copyright Act to remove “formalities” for foreign copyright owners in order to comply with an international treaty known as the Berne Convention, it continued to require registration (or refusal) as a prerequisite for United States copyright owners to pursue infringement claims.

This decision results in a significant change in some jurisdictions, such as the Fifth and Ninth Circuits, where copyright plaintiffs can no longer go directly to court after submitting an application, deposit and fee.Instead, they must wait for the Copyright Office to grant or refuse the registration, as the Tenth and Eleventh Circuits required.Applicants may seek expedited processing by paying the substantially higher fee required for Special Handling, but they must wait for the Copyright Office to act because, according to the Court, Congress intentionally retained the registration requirement as a prerequisite to filing a lawsuit.

Best Practices for Copyright Registration and Managing Risk

The Supreme Court’s decision in is a wake-up call on the importance of timely copyright registration. The next question is how to decide which works to register. Generally, if the works are important and at risk of being infringed, then you should consider registering them.

Here is a summary of the key benefits of prompt copyright registration:

  • As the Supreme Court explained, registration of copyright, or a refusal of registration, is a pre-requisite to filing a suit for infringement (except for foreign copyright owners).

  • Timely registration is required to recover attorney’s fees and statutory damages, which are powerful remedies that can provide significant leverage in negotiating a settlement. In order to take full advantage of those provisions, registration must be made within three months of first publication of a work.

  • A timely registration is prima facie evidence of the validity of the copyright and the facts stated in the application, which can also be helpful in an infringement situation. Note that the registration must be made within five years of publication for this provision to apply.

Here are some additional tips for protecting copyrightable works and avoiding risk of infringement:

  • Consider recording your copyright registrations with US Customs and Border Patrol to help avoid unlawful imports.

  • Train company personnel on clearance procedures to avoid infringing third party rights. Be especially vigilant regarding use of third party photographs, images, screen shots, songs, videos and brand names. In addition to traditional advertising, be sure to clear third party material used on social media.

  • When negotiating contracts, take care to address copyright issues in assignments, license grants, representations, warranties, and work-for-hire clauses.

Copyright litigation is a growing area with its own form of “troll” litigation. Experienced copyright counsel can help you develop a strategy for both protecting your works and minimizing the risk of infringing third party works.

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