Supreme Court Case Highlights the Importance of Applying for Copyright Registration as Soon as Possible


Article ImageCopyright protection is granted immediately upon fixation of a creative work in a tangible medium. This means that you have copyright protection as soon as you put pen to paper, enter words in your document, or record your video. Why, then, should you bother applying for a registration? You should bother because your copyright has to be registered if you actually want to enforce it.

The Copyright Act states that copyright claimants who sue for copyright infringement of their works must first have a copyright registration before they are able to file the lawsuit. Copyright registration is relatively inexpensive. If you are the only author and owner of the work, your filing fee will be $35. If there is more than one author or owner, or it is a work for hire, the fee is $55.

Although it is typically a fairly simple matter to prepare and file a copyright application, it may take a very long time before the registration issues. Because the U.S. Copyright Office receives so many applications, their usual estimate is that they will take 6-10 months to review the application and either grant registration (in most cases) or refuse registration (if the work fails to meet certain criteria for protection, or if the application is defective). The average review time in recent years has been seven months. This means that a typical copyright claimant must wait seven months before they can file a lawsuit claiming infringement of their work.

Federal courts in California and a number of other states came up with a workaround to the problem—if a copyright claimant filed all the necessary paperwork to apply for copyright registration, the courts would allow the claimant to file a lawsuit even before the Copyright Office reviewed the application. This enabled copyright owners to sue almost as soon as they discovered infringement, rather than having to first file an application and then wait for several months for the registration to issue. However, a recent Supreme Court decision, Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, clarified that the Copyright Act dictates that claimants do indeed have to wait for their applications to be reviewed by the Copyright Office before being able to file infringement lawsuits.

The Background of the Case and the Supreme Court’s Decision

An entity known as Fourth Estate Public Benefit Corporation licensed a number of journalistic articles to the website Wall-Street.com. Wall-Street canceled its license but continued to display the articles on its website. In response, Fourth Estate submitted copyright applications for the articles and filed suit in the United State District Court for the Southern District of Florida. The district court dismissed the lawsuit because the Copyright Office had not granted Fourth Estate copyright registrations for the articles. Fourth Estate appealed to the Eleventh Circuit.

Section 411(a) of the Copyright Act prohibits copyright claimants from bringing infringement claims until “registration of the copyright claim has been made in accordance with this title.” The Circuit Courts are split on what is sufficient to show “registration of the copyright claim.” The Fifth Circuit and Ninth Circuit hold that registration “has been made” when a copyright claimant submits all the proper materials to the Copyright Office in an application for registration (the “application approach”). In contrast, the Tenth Circuit holds that registration “has been made” only when the Copyright Office either grants or denies registration of the work (the “registration approach”). Here, the Eleventh Circuit joined with the Tenth Circuit, holding that the registration approach is the only plausible interpretation of the plain language of § 411(a). Thus, the Eleventh Circuit affirmed the district court’s dismissal.

Fourth Estate petitioned the Supreme Court for review, arguing that other sections of the Copyright Act use the phrase “make registration” to refer to actions and submissions of the copyright claimant. Fourth Estate also argued that a claimant should not have to wait for the Copyright Office to act on the application because the Copyright Act permits the claimant to bring suit even if the Copyright Office refuses registration.

In a unanimous decision, the Supreme Court held that the correct reading of § 411(a) is the registration approach. Indeed, the second sentence of § 411(a), which sets out an exception to the rule, states that a claimant may bring an infringement suit even if the application is refused by the Copyright Office.

The Supreme Court’s ruling firmly establishes that, although creative works are protected by copyright upon fixation in a tangible medium, it is essentially impossible to enforce the copyright unless it is reviewed by the Copyright Office.

 

1. Is there a way I can “pre-register” my work to protect it earlier?

Yes, if your work is being prepared for commercial distribution and is either (1) a Motion Picture, (2) a Sound Recording, (3) a Musical Composition, (4) a Literary Work, (5) a Computer Program, or (6) Advertising or Marketing Photographs.

These types of works have been shown to be more likely to be pirated or infringed, often even before being released or published. So if you are preparing one of these types of works, you can apply for pre-registration, which allows you to sue for copyright infringement as soon as you discover the infringement. You still need to apply for regular registration after you publish the work, but you don’t need to wait for the Copyright Office to review your application before suing to enforce it.

The cost to file for pre-registration with the Copyright Office is $140.

 

2. My work doesn’t qualify for pre-registration, but I don’t want to wait for seven months before being able to enforce my copyright. Is there a way I can expedite the review of my application?

Yes. At the time of application, you can file an expedited request for review. When you file an expedited request, the Copyright Office will attempt to review your application within five business days--a much faster turnaround time than seven months. The cost for an expedited application is $800.  This can get expensive if you want to register a number of works, but it may be your best option if your work is already being pirated, and you want to take immediate action to stop further copying.

This Supreme Court case highlights the importance of registering your works as soon as possible after creation or publication. Even if no one is pirating your work at the time, they may be by the time your application is reviewed by the Copyright Office. And there is another enforcement-related benefit to registering as soon as possible. If you register the work prior to the commencement of any infringing activity, or within three months of the date of first publication, then you may be entitled to an award of statutory damages and attorneys’ fees from the infringer.

When it comes to copyright protection of your works, don’t sit on your rights. Take action!

Please note that none of the above constitutes legal advice. If you have any questions about your specific situation, consider hiring an attorney. 


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