Opinion analysis: A copyright owner can’t sue for infringement before the Register has processed its copyright registration application
In Fourth Estate Public Benefit Corporation v. Wall-Street.com, a unanimous court held today that although the copyright statute confers exclusive rights upon the author of a work as soon as the work is created, a copyright owner may not file an infringement suit until the Register of Copyrights has acted on the owner’s application to register the copyright in the work. The result turned on the meaning of the phrase “registration of the copyright claim has been made” in Section 411(a) of the statute. That section reads:
[N]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim.
Fourth Estate alleged that Wall-Street.com infringed Fourth Estate’s copyrights in news articles by displaying the text of those articles online after Wall-Street.com’s subscription had expired. Fourth Estate submitted a registration application covering 244 articles. A few days later, without waiting for the Register of Copyrights to process the application, it filed a copyright infringement suit against Wall-Street.com. The lower courts dismissed the case, ruling that Fourth Estate had failed to comply with Section 411’s requirement that registration be made before an infringement suit is filed. Fourth Estate petitioned for certiorari, noting that the Courts of Appeals for the 5th and 9th Circuits have long followed a rule permitting a copyright owner to file suit as soon as it submits its application for registration, and arguing that that construction better fits the language of the statute and the policies that it seeks to effect. The Supreme Court granted the petition to resolve the circuit split.
Justice Ruth Bader Ginsburg (who had not attended the oral argument because she was home recovering from surgery) delivered the court’s opinion. She analogized the registration requirement to an administrative exhaustion requirement that an owner must satisfy before suing to enforce ownership rights. Section 411 includes express exceptions to the registration requirement, but none of the exceptions applied to this case. Both parties agreed that, absent a statutory exception, a copyright owner must have made registration before filing suit. The dispute therefore came down to whether “registration … has been made” as soon as the registration application has been filed, or only after the Copyright Office has acted on the application and either registered the copyright or rejected the claim.
The court concluded that the only satisfactory reading of the text of Section 411(a) is that the Copyright Office must have registered the copyright in order for registration to have been made. Fourth Estate had argued that the phrase should be read to refer to the copyright owner’s submission of a completed application. Ginsburg responded that Fourth Estate’s interpretation required the implausible assumption that Congress had used the word registration to bear “different meanings in consecutive, related sentences within a single statutory provision.” Moreover, Fourth Estate’s reading would make other sentences in 411(a) superfluous. If a copyright owner could file suit as soon as it submitted its application, why would there need to be an express exception allowing suit after registration had been refused? If the Register is entitled to intervene in a copyright infringement suit in connection with whether the copyright claim is registrable, how is she to exercise that option if the suit is resolved before the Copyright Office can review the application? Reading the three sentences together persuaded the court that 411(a) requires copyright office action before the owner may file suit.
Fourth Estate had also argued that Congress’ purpose in enacting the current language had been to overturn a 1958 decision of the U.S. Court of Appeals for the 2nd Circuit that construed language in the earlier copyright statute to require completed registration. The court disagreed. Congress enacted an exception to the registration requirement while affirming the general rule that registration must precede an infringement suit. The express exception for copyright applications that the Register had rejected would make no sense if suit required only a submitted application. Further, Congress had repeatedly chosen to retain the registration prerequisite in response to many proposals to eliminate it.
Fourth Estate had claimed that requiring a copyright owner to wait until the copyright office had reviewed its application would deprive owners of the ability to enforce their rights. The court rejected that argument, finding it “overstated.” Because copyright protection is automatic and vests as soon as work is created, an owner can register its copyright and then sue for infringement that occurred before registration. The average registration process takes several months, posing little danger that the owner will be unable to file suit until after the three-year limitations period has expired. Moreover, Congress enacted specific exceptions to the requirement for the benefit of works that are especially vulnerable to pre-registration infringement. Finally, the court noted that although staffing and budgetary shortages have caused a significant increase in processing times in the past 60 years, that increase does not allow the court to rewrite the statutory text.
The opinion resolves a longstanding circuit split, but the practical implications may be modest. The decision may encourage some copyright owners to register their claims promptly, may reduce forum shopping, may delay some infringement suits for several months and may deter plaintiffs from including peripheral copyright infringement claims in suits over other disputes in order to brandish the threat of large copyright damage awards.