James E. Hough
Copyright and Intellectual Property Litigation
In Fourth Estate Public Benefit Corp. v. Wall-Street.com, the Supreme Court resolved a longstanding circuit split by unanimously holding a copyright owner of a United States work may not file an infringement lawsuit until after the Copyright Office has completed its review of the copyright owner’s application and has issued (or definitively declined to issue) a certificate of registration. In so holding, the Court recognized that delays in the registration process mean “the statutory [registration] scheme has not worked as Congress likely intended.” Those delays may increase as copyright owners react to this recent ruling, because some commentators reacted to this holding by urging companies to ensure prompt registration of all of their copyrightable works. This may be warranted in some cases, but several reasons should temper any rush to change existing practices.
The Court recognized that delays in the registration process raise serious concerns. Justice Ginsburg also acknowledged Professor Goldstein’s view that permitting an infringement lawsuit as soon as an application for registration was filed was “the better rule” because delays inherent in processing an application could prejudice the copyright holder, especially when seeking immediate injunctive relief. Several influential amici, including the Recording Industry of America, the American Bar Association, and the Author’s Guild, made similar points.
Why reject “the better rule”? The Court relied primarily on textual analysis to hold that “[Section 411(a)] focus[es] not on the claimant’s act of applying for registration, but on action by the Copyright Office—namely, its registration or refusal to register a copyright claim.” Perhaps equally important, the Court made clear that registration delays are “attributable, in large measure, to staffing and budgetary shortages that Congress can alleviate, but Courts cannot cure.” Picking up on this theme soon after the decision was announced, plaintiff Fourth Estate immediately called on Congress to remedy the long delays currently experienced by copyright owners in the registration process.
Whether you should change your copyright registration practices in reaction to the Fourth Estate decision depends on the type of copyrighted works your business creates and your expectations regarding litigation to enforce your rights. If your works are entitled to pre–registration and you believe infringements are likely upon first publication, you should consider pre-registration. Otherwise, please contact us to discuss whether an adjustment to your current practices is warranted.
 Owners of foreign copyrights (that is, works whose country of origin is not the United States) can usually file suit without prior registration. But even owners of foreign copyrights must register their works in order to enjoy a presumption of validity, seek statutory damages, or obtain an award of attorney’s fees.
 Slip Op. at 12.
 Slip Op. at 3.
 Copyright Act § 408(f)(2).
 37 C.F.R. §202.16(b).
 Copyright Act § 408(f)(3).
 Copyright Act § 411(c).
 Slip Op. at 10.
 Slip Op. at 11, quoting 1 P. Goldstein, Goldstein on Copyright §3.15, p.3:154.2 (3d ed. 2018 Supp.).
 Slip Op. at 5.
 Slip Op. at 12.
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