Last week, the United States Supreme Court issued an opinion in Fourth Estate Public Benefit Corp. v. Wall-Street.Com, LLC, No. 17-571(Mar. 4, 2019), holding that under the Copyright Act of 1976, as amended, registration occurs and a copyright claimant may commence an infringement suit only after the Copyright Office registers a copyright claim; mere application is insufficient to trigger the right to sue under 17 U.S.C. § 501(b). The decision resolved a split between those circuits allowing suit to proceed as soon as an application was filed but before registration is allowed and those following the “registration approach,” which the Court upheld.
The news organization Fourth Estate licensed its content to Wall-Street.com, a news website. The license required Wall-Street.com to remove all licensed content before canceling the agreement. Wall-Street.com canceled without removing the licensed content, and Fourth Estate sued for copyright infringement in the Southern District of Florida. Wall-Street.com moved to dismiss, arguing the infringement claim was not ripe because, while Fourth Estate had filed copyright applications for the licensed articles, the Copyright office had yet to act on those applications. The district court dismissed under the registration approach adopted by the Eleventh Circuit, which affirmed. The Supreme Court granted certiorari to resolve the circuit split.
Under the Copyright Act, authors gain certain exclusive rights immediately upon fixing their works in a “tangible medium of expression,” including the rights of reproduction and distribution. Section 501(b) of the Act authorizes an author to enforce her rights, but only after she complies with § 411(a)’s requirement that “registration of the copyright claim has been made.” Resolving the question of when § 411(a) is satisfied, the Court held registration “is akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights.” The Court acknowledged Fourth Estate’s concern that the registration approach might cause “a copyright owner [to] lose the ability 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.” But it rejected the concern as “overstated,” noting the average processing time is only seven months, and that authors may also pay for expedited consideration. The Court also noted that, under limited circumstances, authors may file for “preregistration” when “preparing to distribute a work of a type vulnerable to predistribution infringement—notably, a movie or musical composition.”
