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Someone has infringed your copyright. Can you immediately file a copyright infringement lawsuit? Well, that depends. Specifically, it depends on whether you have registered your copyright with the U.S. Copyright Office. Under Section 411(a) of the Copyright Act (with limited exceptions) “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.” 17 U.S.C. § 411(a) (Emphasis added). In Reed Elsevier, Inc. v. Muchnick, the Supreme Court held that Section 411(a) is a precondition, but not a jurisdictional requirement. 559 U.S. 154 (2010).
What, however, does it mean to “register” your work? What if you’ve applied for copyright registration, and you’re waiting—often for six months or more—for the Copyright Office to act? Is that enough? Can you file suit while you await the Copyright Office’s decision? Until this month, that depended on where you filed suit. Circuit Courts interpreted the “registration” requirement differently. The Circuit Courts’ approaches fell into one of three categories: (1) the “registration” approach, under which a plaintiff must have obtained a registration prior to filing suit; (2) the “application” approach, under which a plaintiff could file suit so long as the plaintiff had filed an application with the Copyright Office to register the copyright, along with a deposit copy and filing fee; and (3) undecided. “Registration” approach Circuits included the Tenth Circuit, while “application” approach Circuits included the Fifth and Ninth Circuits. See, e.g., La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005); Positive Black Talk Inc. v. Cash Money Records Inc., 394 F.3d 357 (5th Cir. 2004); Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612 (9th Cir. 2010). Undecided Circuits included the First, Second, Third, Fourth, Sixth, and Eighth Circuits.
This Circuit Court split has lingered for years. On March 4, 2019, however, the Supreme Court finally resolved the longstanding split in deciding Fourth Estate Public Benefit Corporation v. Wall-Street.com LLC. 586 U.S. ___ (2019). Fourth Estate Public Benefit Corporation (“Fourth Estate”) had granted Wall-Street.com a license to publish Fourth Estate’s news articles on Wall-Street.com’s website. After the license terminated, Wall-Street.com continued publishing the articles. Fourth Estate applied to register the copyrights in certain articles, and then filed a copyright infringement suit against Wall-Street.com while awaiting registration. The District Court dismissed Fourth Estate’s claim on the basis that Fourth Estate had not satisfied the registration precondition to filing suit, and the Eleventh Circuit affirmed. Fourth Estate Public Benefit Corporation v. Wall-Street.com LLC 856 F.3d 1138 (2017).
Applying a straight reading of the statute and strict statutory construction, the Supreme Court affirmed the Eleventh Circuit’s decision, thus adopting the “registration” approach nationwide. The unanimous court stated that “registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright.” This, the court concluded, “reflects the only satisfactory reading of § 411(a)’s text.” The “application” approach would render the statutory exceptions to the registration requirement—including the right to sue for infringement after the Copyright Office refuses an application—superfluous. Moreover, interpreting “registration” in § 411(a) to mean “application” would be inconsistent with the clear use of that term elsewhere in the Copyright Act, where “registration” can only come as a result of action from the Copyright Office.
So from now on, if you want to file a copyright infringement lawsuit, you will need to obtain a registration (or a registration refusal) from the Copyright Office before doing so. The bottom line is this: If your copyrighted work will be worth protecting through litigation, register the copyright early, before any infringement occurs.