In a unanimous decision, the Supreme Court held that registration with the U.S. Copyright Office is required to enforce copyrights. Fourth Estate Public Benefit Corp. v. Wall-street.com, LLC, No. 17-571, 586 U.S. (March 4, 2019). The ruling makes it even more important that copyright holders register their works promptly.
Prior to this decision, circuits were split on the language of 17 U.S.C. § 411(a), which states that “no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.” Many circuit courts, including the 8th Circuit, followed an “application approach” and interpreted this statute to be satisfied by the mere filing of an application to register a work with the Copyright Office. When a copyright holder discovered infringement, the copyright holder could apply and have the required jurisdiction to file for infringement.
The application approach made sense. Copyright registration is pro forma. The application is not substantively examined for the copyrightability of the underlying work. More importantly, copyright protection, under the Berne Convention for the Protection of Literary and Artistic Works (1886), is to be automatic and not conditioned on compliance with any formalities. A protectable copyright arises the moment the author fixes a work in a tangible form. In this spirit, the “application approach” allowed an author to enforce its protectable right without administrative delay.
Now, a copyright holder must apply and receive a final agency decision from the Copyright Office of either granting or denying a registration before enforcing his or her rights. Contrary to the spirit of automatic protection without administrative formalities of the Berne Convention, copyright protection is no longer automatic but conditioned on a seven-month (or more delay) while the Copyright Office reviews the application.
There have always been good reasons for registering copyrights promptly. The Copyright Act encourages registration with the added benefits of statutory damages and attorneys’ fees for infringement of registered copyrights under 17 U.S.C. § 412. Now, a registered copyright is required to bring an action for infringement in federal court. Early registration is especially important if the harm from infringement could be irreparable and there is a need for a temporary restraining order or preliminary injunction to stop the infringement, or the infringing action occurred near the end of the three-year statute of limitations for infringement under the Copyright Act.
We have always strongly advised clients to register their copyrights promptly. Now, the Fourth Estate decision makes this even more important.