SCOTUS: copyright owners cannot sue for infringement without formal registration

By Emmanuel Legrand

The Supreme Court of the United States unanimously ruled that a formal certificate of registration from the US Copyright Office, and not the application for the registration of a copyright, was a prerequisite for rights holders to file a copyright infringement lawsuit. The ruling in the case Fourth Estate Public Benefit Corporation v. Wall-Street.com clarifies an issue that had split courts.

  Fourth Estate had sued Wall-Street.com after a licensing agreement between the two parties was canceled and Wall-Street.com continued to display Fourth Estate's content. Fourth Estate sued only days after it had filed registration applications for 244 articles. The lower courts dismissed the case, considering that Fourth Estate did not provide proper registration when filing for infringement.

  Fourth Estate petitioned the Supreme Court, asking for clarification as to when "registration has been made" as some courts, in particular the Courts of Appeals for the 5th and 9th Circuits, have accepted in the past copyright infringement cases based on application for registration.

  "We conclude that 'registration has been made' within the meaning of 17 U.S.C. §411(a) not when an application for registration is filed, but when the Register [of Copyrights] has registered a copyright after examining a properly filed application," wrote Supreme Court Justice Ruth Bader Ginsburg in her opinion.

Resolves a circuit court split 

  Reacting to the ruling, Fourth Estate said it "resolved a circuit court split and significant uncertainty over the issue of when registration of a copyright occurs, and when a copyright owner may commence an infringement suit to protect their rights." 

  The ruling is now expected now to put the onus on the Register of Copyrights to accelerate the Copyright Office's modernisation of the registration procedures. "On average, it takes the Copyright Office six months to process a claim," wrote Terry Hart, the VP of legal policy and copyright counsel for Washington, DC-based Copyright Alliance, in a blogpost on the organisation's site. "That average goes up to nine months if a Copyright Office Examiner needs to correspond with a copyright owner. In a world of viral, online infringement, a lot of damage can be done to a copyrighted work while an owner is powerless to stop it.”

  For Mitch Glazier, Chairman and CEO of the Recording Industry Association of America, “This ruling allows administrative backlog to prejudice the timely enforcement of constitutionally based rights and prevents necessary and immediate action against infringement that happens at Internet speed. Given this ruling, the Copyright Office must also work at Internet speed to ensure adequate enforcement protects essential rights.”

  Justice Ginsburg did take this issue into consideration in her opinion, indicating that “delays in Copyright Office processing of applications, it appears, are attributable, in large measure, to staffing and budgetary shortages that Congress can alleviate, but courts cannot cure." She added, "Unfortunate as the current administrative lag may be, that factor does not allow us to revise §411(a)’s [the Copyright Act provision’s] congressionally composed text.”

 Improving the registration process

  Fourth Estate executive director W. Jeffrey Brown said the Supreme Court "also recognised 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."

  For rights holders, the consequences are "likely to have two immediate effects," according to Ann G. Fort, Robert D. Owen and Anna C. Halsey from law firm Eversheds Sutherland (US): "First, it is likely that copyright holders may be motivated to register their copyrighted works upon creation so that they have the ability to litigate without delay. And second, it is likely that the Copyright Office will have an influx of registrants seeking to take advantage of its 'special handling' option for registration, which expedites registration in the face of pending litigation."

  "Special handling" registrations take only around five business days, but cost $800. "For a litigant hoping to stop an infringer, however, that is a small price to pay to obtain the necessary registration to enforce one’s copyrights," they wrote.

  Stephen Carlisle from Nova Southeastern Universiry analysed the recent decision the the US Supreme Court ruling and noted that "The effect of the ruling is that any lawsuit that is filed without a registration being issued is subject to being immediately dismissed. This will in turn have the effect of instantly denying any request for a preliminary injunction or temporary restraining order. Thus, two valuable litigation tactics to combat rampant infringement have been negated." 

 

  He concluded, "The exercise of your legal rights should not depend on something as mundane, and easy to fix as an underfunded bureaucracy."