4 March 2019Copyright

Copyright owners cannot sue until after registration: SCOTUS

The US Supreme Court has ruled that copyright infringement suits cannot be filed until after the US Copyright Office has granted registration of the work at issue.

In a unanimous  ruling issued today, March 4, the Supreme Court affirmed the US Court of Appeals for the Eleventh Circuit’s 2017 decision in Fourth Estate Public Benefit Corporation v

Fourth Estate is a cooperative news organisation which licensed its work to news website, on the condition that the site would remove Fourth Estate’s content if it cancelled the agreement.

However, continued to display articles produced by Fourth Estate after cancelling the agreement, prompting the cooperative to sue for copyright infringement.

In 2017, the Eleventh Circuit dismissed Fourth Estate’s action on the ground that the Copyright Office had not granted registration of the articles.

The Supreme Court granted Fourth Estate’s petition for certiorari in June 2018 to “resolve a dispute among US Courts of Appeals on when registration occurs”, in accordance with USC section 411 of title 17.

In its ruling, the Supreme Court cited section 411 which states that a copyright infringement suit cannot be filed “until preregistration or registration of the copyright claim has been made”.

Fourth Estate argued that “the phrase ‘make registration’ and its passive-voice counterpart  ‘registration has been made’” refer to the copyright applicant, rather than the Copyright Office.

But, the Supreme Court rejected Fourth Estate’s so-called “application approach”, ruling that it was an inconsistent reading of section 411.

The court said that, under Fourth Estate’s reading, the exceptions to the rule against filing infringement suits before registration would be superfluous.

“What utility would that allowance have if a copyright claimant could sue for infringement immediately after applying for registration without awaiting the register’s decision on her  application?”, questioned the court.

Marsha Gentner, senior counsel at Dykema in Washington, DC, told WIPR that “although the case engendered much commentary while pending … the unanimous decision was, to my mind, garden variety statutory interpretation”.

“The court noted the current long delay for processing a copyright application to registration by the Copyright Office, but said this was a problem for Congress (not the court) to fix, either by way of the budget or legislation”, she added.

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More on this story

6 March 2019   The US Supreme Court’s decision in Fourth Estate Public Benefit Corporation v is likely to drive more creators to file for copyright registration and force businesses to reassess their IP strategies.
11 March 2019   The recent US Supreme Court ruling in Fourth Estate Public Benefit Corporation v has brought respite for the makers of the Fortnite and NBA 2K video games.
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