Locke Lord QuickStudy: Register Before You Sue: SCOTUS Affirms Registration by Copyright Office as a Prerequisite to Infringement Litigation

Locke Lord LLP
March 5, 2019

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. ‎ LLC. 586 U.S. ___ (2019). Fourth Estate Public Benefit Corporation (“Fourth ‎Estate”) had granted a license to publish Fourth Estate’s news articles on Wall-‎’s website. After the license terminated, continued publishing the ‎articles. Fourth Estate applied to register the copyrights in certain articles, and then filed a ‎copyright infringement suit against 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. 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.‎