Copyright Infringement Suits in the Wake of Fourth Estate

Earlier this year, in Fourth Estate Pub. Benefit Corp. v. Wall-Street.com LLC Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, 139 S. Ct. 881 (2019)., the Supreme Court made a unanimous ruling holding that a copyright owner may not file an infringement lawsuit until the US Copyright Office has acted to register the trademark. Prior to the Court’s ruling, Federal circuit courts have been split in their approach of the timeliness of infringement lawsuits, with some taking the “application” approach, or allowing for infringement suits after the application has been submitted, and others taking the “registration” approach, in which infringement suits were only timely after the copyright was registered. As the SCOTUS has now favored the “registration” approach, content creators are well-advised to go through the Copyright Act’s preregistration process to protect their works prior to publication.

The case before the Court — Fourth Estate — involved the licensing of news articles by Fourth Estate, a news organization, to Wall-Street.com, a news website. Though Fourth Estate eventually cancelled the licensing agreement, Wall-Street.com did not immediately remove the licensed articles from its website. Subsequently, Fourth Estate filed applications to register its news articles with the Copy Right office, but then sued Wall-Street.com prior to the registration of those applications.

Section 411(a) of the Copyright ActU.S. Code § 411. Registration and civil infringement actions.states that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.”  In Fourth Estate, the Supreme Court strictly interpreted the term “registration” to mean “when the Register has registered a copyright after examining a properly filed application.”The Court examined other provisions of the Copyright Act and determined that this was “the only satisfactory reading of § 411(a)’s text.”  For instance, Section 411(a) outlines an exception which allows for an infringement lawsuit to commence after the registration has been refused by the Copyright Office.  The Court observed that this exception would be useless if Congress intended to follow the “application” approach, because an infringement suit could be filed before the Copyright Office even rejected the application. As a result, registration should be considered “akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights.”

The Court also looked to Section 408(f)U.S. Code § 408. Copyright registration in general., the preregistration provision, and found that it “would have little utility if a completed application constituted registration.” Registration is a stop-gap for the protection of unpublished works that are being prepared for commercial distribution, and is utilized for those works that tend to be targets of early infringement (such as movies, TV shows, video games, etc.). When a preregistration application qualifies and therefore is approved by the Copyright Office, applicants receive notice and may subsequently file a complaint for copyright infringement. In order to maintain the benefits of preregistration, an application for registration must be submitted to the Copyright Office by the earlier of: (i) one month after the copyright owner becomes aware of infringement, or (ii) three months after first publication.

In the wake of Fourth Estate, our clients are now advised that they will have to wait longer before bringing infringement actions. The current average time for the Copyright Office to process an application is seven months. For those clients who qualify, preregistration is recommended as a more immediate and direct path to filing their infringement suit.

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