Last month, the United States Supreme Court issued a unanimous opinion resolving a long-standing circuit split concerning when a copyrighted work is considered “registered” for the purposes of initiating a copyright infringement lawsuit. The Supreme Court held that a lawsuit for copyright infringement can only be filed after the U.S. Copyright Office actually issues a registration certificate for the work.
The case, Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, centered on whether Fourth Estate, an online news organization, could sue Wall-Street.com for copyright infringement after the defendant canceled its license agreement but continued to display Fourth Estate’s content on its website. The fourth Estate filed its infringement suit after it had filed applications to register the articles with the Register of Copyrights but before it received registration certificates for the articles.
Prior to the Supreme Court’s decision, federal courts were split as to the meaning of the language in Section 411(a) of the Copyright Act that “no civil action for infringement… shall be instituted until… registration of the copyright claim has been made.” 17 U.S.C. 411(a). Some courts (including the Fifth and Ninth Circuits) took the position that because the date of registration relates back to the date the application was filed, the copyright was “registered” as of the filing date. Other courts (including the Seventh, Tenth, and Eleventh Circuits) took the position that registration did not occur until after the copyright office examined the application and issued a registration certificate. This circuit split had extensive and often costly ramifications for plaintiffs and defendants alike.
It incentivized forum shopping for plaintiffs and often forced copyright owners to file costly expedited copyright applications merely because of the district in which infringers were subject to personal jurisdiction. It also caused some defendants to settle cases prematurely before it was even determined whether the plaintiff would ultimately obtain a copyright registration. The Supreme Court put an end to the split, holding that a work is not “registered” until the U.S. Copyright Office examines the work and issues a certificate of registration. In doing so, the Court clarified for plaintiffs and defendants alike the requirements for initiating copyright infringement litigation.
The Court’s decision has significant implications for copyright plaintiffs. The most significant being the timing of the filing of a copyright infringement action. It typically takes at least seven months to obtain a copyright registration after the filing of a copyright application. This meant a copyright plaintiff would usually have to wait at least seven months after filing a copyright application before being able to file suit for infringement. To avoid this long delay, many plaintiffs opted instead to file expedited copyright applications. However, rather than the usual $35 fee, an expedited application costs $800. With an expedited application, the U.S. Copyright Office will typically process the application within five business days of the filing—though they do not guarantee this.
Given the Supreme Court’s decision, potential plaintiffs (particularly those registering many works) should plan ahead. Copyright registration is not only a prerequisite to bringing a lawsuit but the timing of the registration can affect whether a plaintiff can recover statutory damages and attorney’s fees in an infringement suit. To recover statutory damages and attorney’s fees, an unpublished work must be registered prior to the infringement, and a published work must be registered within three months of the date of first publication of the work. This is no small sum to forego. Attorney’s fees can top six figures for a complex infringement case and statutory damages can be as high as $150,000 per work for willful infringement.
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