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Supreme Court Holds Registration by the U.S. Copyright Office Required Before Bringing Suit

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The Supreme Court issued a unanimous opinion in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, which held that registration under U.S. Copyright Act, 17 U.S.C. § 411(a), is required in order for a copyright claimant to commence suit, with certain exceptions. Specifically, the Court considered whether the “registration” requirement in 17 U.S.C. § 411(a) means that the Copyright Office must have acted on a copyright application, either by accepting or denying registration, or whether merely applying and paying the fees for a registration is sufficient. In holding that registration by the Copyright Office is required, the Court considered the statutory interpretation of the Act, highlighting that if “registration” is read to only require application of a copyright and not registration, this would cause “registration” to mean different things in different parts of the statute when in fact a uniform reading is favored.

According to 17 U.S.C. § 411(a), No civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of [a] copyright claim has been made. Despite how apparently clear the statute may seem, federal courts have split on the meaning of the term “registration.”  Previously, the Tenth and Eleventh Circuits followed the “registration” requirement, that prior to commencing suit the Copyright Office would have to act on the application, either by accepting or denying registration. In contrast, the Fifth and Ninth Circuits, and oftentimes the Eighth Circuit, followed the “application” approach, only requiring claimants to have filed an application to commence suit; these Circuits did not require the Copyright Office to act on the application in any way.

Following its statutory interpretation and favoring a uniform reading of the term “registration”, the Court turned to the history of the Copyright Act, apparently in view of Petitioner’s misguided analysis of the 1976 revisions to the Act. Petitioner had read the revisions as endorsing the position that submitting an application was sufficient to commence an infringement action, as this was the position of a dissenter in the case Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F. 2d 637 (1958).  The Supreme Court disagreed. Instead, the Court noted that in the 1976 revision to the Act, Congress affirmed that “registration” meant actual registration with the Copyright Office when it added an exception which concerns applications refused registration. See 17 U.S.C. § 411(a). Interpreting “registration” differently would make this exception meaningless. Moreover, the Court mentioned Congress’s many efforts to maintain § 411 after the 1976 revisions, despite repeated opportunities to eliminate this part of the Act.

The Court went on to dismantle Petitioner’s arguments that registration should not be a condition of copyright protection in general, and that action by the Copyright Office can take years which may complicate the three-year statute of limitations. The Court stated that upon registration, a copyright claimant may recover for infringement that occurred both before and after registration. The Court also pointed out that the average time for the Copyright Office to act is only seven months, thereby causing no unnecessary delay. In so doing, the Court settled the potential issue of copyright no longer serving its protective function with options to acknowledge claimants’ past injuries, so long as suit is only brought once the Copyright Office issues a registration.

 

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