Tuesday, 5 March 2019

US Supreme Court: Copyright Registration Occurs When Copyright Office Registers Copyright


It is not often that the US Supreme Court hands down a copyright-related decision, an unanimous one to boot, and so yesterday was quite a day for US copyright owners and IP practitioners.

The US Copyright Act, 17 U.S.C. § 411(a), states that “registration" of a copyright is a precondition to filing suit for copyright infringement.  Some courts of appeal interpreted “registration” as meaning “filing an application to register the copyright” while others interpreted it as “the Register of Copyrights registers the copyright.”
On March 4, 2019, the US Supreme Court resolved the circuit courts split and ruled that registration occurs when the Copyright Office registers the copyright.  Only after that may a plaintiff file a copyright infringement suit. However, once the copyright is registered, the owner can recover for infringement which occurred both before and after the registration.

The case is Fourth Estate Public Benefit Corp. v. Wall Street LLC.

Justice Ginzburg, who wrote the opinion, noted that registration is not necessary to obtain copyright protection under §408(a) of the Copyright Act.

Justice Ginsburg then wrote about the statutory exemptions to registration before filing suit, such as §408(f)(2) of the Copyright Act, which provides limited circumstances where copyright owners can file an infringement suit before registration. This section was enacted to protect the owners of works having a history of infringement prior to authorized commercial distribution, such as movies or musical compositions. They can file a preregistration no later than 3 months after the first publication.  

Justice Ginzburg wrote that Section 408(f)’s preregistration option, too, “would have little utility if a completed application constituted registration” and that a “copyright owner who fears prepublication infringement would have no reason to apply for preregistration if she could instead simply complete an application for registration and immediately commence an infringement suit. “

§411(c) of the Copyright Act provides the owner of a work which is fixed and broadcasted simultaneously the right to file a copyright infringement suit either before or after the work has been thus fixed.

The Court reasoned that “[i]f application alone sufficed to “ma[ke]” registration, §411(a)’s second sentence—allowing suit upon refusal of registration—would be superfluous.” It states that:

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.”

The Court also found the final sentence of §411(a) to be persuasive as it requires the Register to act before a copyright infringement suit can be filed if the work is not registered: it allows the Register to “become a party to the action with respect to the issue of registrability of the copyright claim.”  Justice Ginsburg wrote that “[t]his allowance would be negated, and the court conducting an infringement suit would lack the benefit of the Register’s assessment, if an infringement suit could be filed and resolved before the Register acted on an application.”

The Petitioner had argued that a copyright owner may not be able to enforce her rights if the Copyright Act’s three-year statute of limitations runs out before the Copyright Office acts on her application for registration. Justice Ginzburg wrote that such “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, even for infringement that began before submission of an application. See U. S. Copyright Office, Registration Processing Times (Oct. 2, 2018).

This case is likely to stimulate a flurry of copyright registrations, which in turn, may slow down the copyright registration process.

Image is courtesy of Flickr user Tony Webster under a CC BY 2.0 license.

1 comment:

William Patry said...

Thanks for the report on the opinion by Justice Ginsburg (no "z" in her name). I doubt there will be a flurry of applications and that such a flurry would slow down the registration process. Those who haven't filed but would now due to the decision would be limited to those who are contemplating suing: the number of such suits filed is not large enough to be a flurry. But beyond that the Copyright Office has been hiring examiners and by the end of the year should be able to significantly reduce processing times. The overall average is now down to about 5.1 months and by the end of the year, may be closer to three months. The keys to having a very quick application process are having the application filled out correctly (meaning no need for correspondence) and having a sufficient number of examiners and that is dependent on money. The Office has been starved of funding for years, by applicants who do not want to pay the actual cost of registrations and by Congress which doesn't want to make up the difference in subsidies. Something has to give in that scenario and it has been processing times. One can't complain about processing times if you are unwilling to pay the people who have to do the processing. The Court's decision was the only permissible interpretation of the statute -- a contrary decision would have led to further processing delays as fewer claims would have been filed and therefore fewer fees would have paid leading to fewer examiners, to the detriment of those who wanted a registration.