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.
