March 6, 2019
The U.S. Supreme Court has now ruled that a copyright owner can only file a complaint for copyright infringement after the Copyright Office has registered the work at issue, putting an end to a split among the federal circuit appellate courts on that issue. As I previously reported, while the federal district courts in New York and several circuit courts had generally read the Copyright Act to require that an actual copyright registration be obtained from the Copyright Office before an infringement suit can be filed, several circuits had found that simply filing the copyright application with the Copyright Office was sufficient. This was illustrated in the Alfonso Ribeiro “Carlton” litigation, where Ribeiro and others—particularly within the Ninth Circuit Court of Appeals, which required only filing of an application—filed their federal copyright infringement litigations even before the Copyright Office registered their copyrights.
Under the Copyright Act of 1976, a copyright author gains “exclusive rights” in their work immediately upon the work’s creation. 17 U.S.C. §106. A copyright owner may institute a civil action for infringement of those exclusive rights, §501(b), but generally only after complying with §411(a)’s requirement that “registration . . . has been made.” Section 17 U.S.C. §411(a) (“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.”) Based on this statute, the federal district court had dismissed a copyright complaint where an application was filed but no registration had issued. The Eleventh Circuit affirmed, holding that “registration . . . has [not] been made” under §411(a) until the Copyright Office registers a copyright.
Writing for a unanimous Court in Fourth Estate Public Benefit Corp. v. Wallstreet.com, LLC, No 17-571, Justice Ruth Bader Ginsburg affirmed the Eleventh Circuit’s holding, finding that the Copyright Act’s requirement that a work be “registered” before a lawsuit is filed means the agency has actually taken action, not that only that the application has been filed. The Court concluded that this “registration approach” reflects the only satisfactory reading of §411(a)’s text. In so ruling, the Court rejected claims that delaying cases would harm authors and artists who might find their claims barred by the Copyright Act’s three year statute of limitations if they were made to wait. Justice Ginsburg found not only that such a “fear is overstated, as the average processing time for registration applications is currently seven months, leaving ample time to sue after the register’s decision,” but also that such a concern could not overcome Congress’ clear language requiring actual registration.
At the end of the day, now more than ever, those with potential copyright claims should obtain qualified copyright counsel and proceed with all deliberate speed to enforce intellectual property rights, among other things, to ensure that they don’t find their claim barred by the statute of limitations because the Copyright Office has not acted on their application.
This article is intended only as a general discussion of these issues. It is not considered to be legal advice or relied upon. If you have a question regarding copyright matters, Larry Brocchini would be pleased to consider providing additional details or advice about specific situations.