Copyright Registration, not Application, Must Precede Suit

WASHINGTON (CN) – Bringing a long-simmering issue to a close, the Supreme Court ruled Monday that copyright owners cannot sue for infringement until after the Copyright Office registers a work.

In Fourth Estate v., the court had to determine at what point “registration of the copyright claim has been made.”

Fourth Estate Public Benefit Corp. said registration is made at the time when an applicant submits their registration application materials, while maintained a claim has been made only when the Copyright Office grants the registration.

The Supreme Court adopted the latter view in a unanimous opinion this morning.

“Registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright,” Justice Ruth Bader Ginsburg wrote for the court.

Once that happens, the 15-page opinion continues, copyright owners “can recover for infringement that occurred both before and after registration.”

The dispute stems from a former licensing deal that allowed to display Fourth Estate articles.

Though Fourth Estate accused the news website of continuing to post its content after canceling their agreement, the 11th Circuit affirmed dismissal of the case on the basis that the Copyright Office had not acted on Fourth Estate’s applications for registration at the time of the lawsuit.

The Supreme Court turned to the text of the Copyright Act to derive support for its holding, pointing to section 410, which says the Copyright Office will register a claim after determining the material submitted can be copyrighted.

If, however, the Copyright Office finds otherwise, registration will be refused.

“Section 410 thus confirms that application is discrete from, and precedes, registration,” the opinion says.

The opinion also notes that Congress has repeatedly “maintained registration as prerequisite to suit, and rejected proposals that would have eliminated registration or tied it to the copyright claimant’s application instead of the Register’s action.”

Fourth Estate’s executive director, W. Jeffrey Brown, cheered the court for resolving what has been a 60-year-old conflict.

“As a result of Fourth Estate’s efforts, the uncertainty over when a copyright owner can sue has been lifted for all litigants,” Brown said in a statement.

“The Supreme Court also recognized that the statutory scheme for copyright has not worked as Congress originally envisioned as delays prolonged the registration process. Fourth Estate encountered exactly those delays in this case. Fourth Estate calls upon Congress to remedy the long delays currently experienced by copyright owners”

Fourth Estate was represented by Aaron Panner at Kellogg Hansen. was represented by Peter Stris with Stris & Maher in Los Angeles.

“Today’s decision wholeheartedly affirms the original text of the Copyright Act, as well as Congress’ desire to promote early and extensive copyright registration,” Stris said in a statement. “It is a true victory for common-sense statutory interpretation and for the numerous stakeholders who benefit from a robust system of copyright registration.”

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