SCOTUS agrees to hear copyright registration clash
The US Supreme Court is set to clarify whether copyright protection must be registered or merely applied for before suing for infringement, after agreeing to hear Fourth Estate Public Benefit Corp v Wall-Street.com yesterday.
The main question directed to the Supreme Court is whether a copyright owner can instigate an infringement complaint after filing a copyright application or whether the owner must wait until a decision on that application has been given.
In handing down its decision, the Supreme Court will resolve a circuit split over what section 411(a) of the Copyright Act means when it says a work must be “registered” before the filing of a lawsuit.
The US Court of Appeals circuit courts currently approach the matter in differing ways.
For example, the Tenth and Eleventh Circuits use the ‘registration approach’, whereby the US Copyright Office must have approved registration before a copyright owner can bring an infringement suit.
However, the Fifth and Ninth Circuits instead take an ‘application approach’, meaning a copyright infringement suit can be brought once the US Copyright Office receives a complete application.
Jason Bloom, partner at Haynes and Boone, explained that the registration approach “creates an unnecessary burden on copyright claimants who need to pursue court relief quickly”.
Obtaining registration from the Copyright Office can often take more than nine months, he said.
The case began in 2016, when news organisation Fourth Estate filed a copyright lawsuit against financial news site Wall-Street.com at the US District Court for the Southern District of Florida.
Fourth Estate said it had licensed some of its articles to Wall-Street. Once the licence expired, Wall-Street was required to remove them, but the news site allegedly refused to do so.
In the suit, Fourth Estate said it had applied to protect the articles in question with the Copyright Office in March 2015, before (but in the same month as) it filed the complaint, but the office had not yet processed the application.
Notably, when Fourth Estate filed a petition for a writ of certiorari in October 2017, the application remained “pending” with the Copyright Office—19 months after the application was filed.
In response to Fourth Estate’s complaint, Wall-Street said the Copyright Act only permits infringement complaints to be brought once the Copyright Office has approved an application for copyright protection. The district court agreed, and granted Wall-Street’s motion to dismiss the matter.
On appeal against the dismissal, Fourth Estate argued that copyright owners risk losing the right to enforce their copyright due to the lengthy period the Copyright Office takes to view applications. However, the US Court of Appeals for the Eleventh Circuit affirmed the district court’s decision.
In its petition, Fourth Estate claimed that the Eleventh Circuit’s decision “deepens division among the circuits” when it comes to copyright infringement suits.
Shortly after, the US solicitor general submitted a brief in support of the Supreme Court granting certiorari. “There is no realistic possibility that the circuit conflict will be eliminated without this court’s intervention,” the brief said.
In its response, Wall-Street said Fourth Estate had “vastly” overstated the importance of the question presented.
According to Wall-Street, section 411(a) clearly says that a claim for infringement may be filed once copyright registration has been made, not once an application for registration has been made.
In its supplemental brief, filed earlier this month, Fourth Estate urged the court not to “leave this conflict unresolved”.
“There is enough ambiguity in the Copyright Act that the court could go either way," Bloom noted.
In his opinion, “mass content creators should not be forced to constantly obtain copyright registrations in order to enforce their rights when problems arise, but should be able to quickly pursue litigation by merely applying to register particular works when infringement concerns arise”.
Speaking to WIPR, a spokesperson for Fourth Estate said: "We're very pleased that the Supreme Court has acknowledged that there is a critical need to bring consistency of interpretation to the question of when the owner of a copyright can start a claim of infringement against those that violate their IP rights."
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