March 6, 2019

In a unanimous decision, the U.S. Supreme Court has held that actual copyright registration, as opposed to merely filing an application for registration, is a prerequisite to bringing a copyright infringement claim in federal court. Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, 2019 U.S. LEXIS 1730 (Mar. 4, 2019). In the Fourth Estate case, the plaintiff had brought a copyright infringement lawsuit alleging that it had filed “applications to register” the allegedly infringed works. Because 17 U.S.C. § 411 requires “registration of a copyright” prior to bringing an infringement suit, the case was dismissed. Both the Eleventh Circuit and the Supreme Court affirmed the dismissal.

The case was decided on what most consider to be fairly clear statutory language, so the unanimous decision was not unexpected. As with most of the rest of the world, U.S. copyright registration is not required to secure rights in an original work of authorship, but registration is required to file a copyright infringement complaint in federal court. If this could be accomplished in a reasonable period of time, it would be a non-issue. However, those of us who practice in this area know that nothing happens quickly at the U.S. Copyright Office.

On more than one occasion, I have prepared copyright applications that would be filed with the Copyright Office mere hours before the infringement complaint would be filed in district court. In each case, time was of the essence, and waiting months for the registration certificate to be issued would have prejudiced the rights of my clients.
Justice Ginsburg, writing for the Court, recognized that registration “processing times have increased from one or two weeks in 1956 to many months today” and that this delay was likely the result of “staffing and budgetary shortages that Congress can alleviate, but courts cannot cure.” Id. at *21. In the Fifth Circuit, where the “application” approach was recognized prior to this ruling, allowing copyright owners to seek judicial remedies to prevent infringement of their works upon applying to the Copyright Office was good policy.

A work submitted for registration is not subject to a rigorous eligibility examination, other than perhaps ensuring that the proper fee has been paid. In infringement litigation, the district court will be the ultimate arbiter of whether the work is sufficiently original to support a copyright claim. The very statute at issue provides that the applicant can institute an action even if registration is refused, so waiting around for the Copyright Office to register your application (or not) prior to taking legal action against an infringer is “justice delayed” for no good reason.

Mike Regitz focuses his practice on intellectual property and technology disputes, counseling, and licensing.

RegitzMauck PLLC is an intellectual property boutique based in Dallas, Texas. The firm focuses on providing value-based legal services to cost-conscious clients seeking high-quality legal representation in intellectual property, cybersecurity, and data privacy matters and disputes.