What do you need in place prior to bringing an action for copyright infringement? That specific question was decided by the United States Supreme Court in the case of Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et al.
The case concerned Fourth Estate Public Benefit Corporation, a news organization, which licensed works to Wall-Street.com, a news website. The former corporate entity sued the latter corporate entity for copyright infringement after the latter failed to remove articles upon the termination of their license agreement.
While Fourth Estate had filed copyright applications to register its articles with the U.S. Copyright Office, no registrations had been provided prior to Fourth Estate initiating its legal action against Wall-Street.com. As such, Fourth Estate’s lawsuit was dismissed under Title 17 U.S.C. 411(a), which requires registration of a copyright before a civil action is instituted.
The Supreme Court upheld the decisions made by the district and appellate courts. An infringement suit must wait to be commenced until after a registration is provided by the U.S. Copyright Office and, at that time, a plaintiff may seek relief for infringement that occurred after as well as prior to the registration being issued. There are very limited exceptions, which are provided by statute (i.e. works vulnerable to predistribution infringement such as a movie or musical composition).
Prior to the decision, some jurisdictions followed what was referred to as the “application approach,” which suggested that a plaintiff could properly bring a lawsuit for copyright infringement as soon as a copyright application is submitted to the U.S. Copyright Office. The Supreme Court instead held that the “registration approach” is the law of the land — an actual registration is required before bringing suit.
As to the delay that this registration approach may cause for potential plaintiffs, the Supreme Court offered the following:
True, registration processing times have increased from one to two weeks in 1956 to many months today. Delays, in large part, are the result of Copyright Office staffing and budgetary shortages that Congress can alleviate, but courts cannot cure. Unfortunate as the current administrative lag may be, that factor does not allow this Court to revise §411(a)’s congressionally composed text.