By Mark H. Anania
For many years, circuit courts have been split over whether a copyright must be registered before it can be the subject of an infringement suit. This disagreement has led to forum shopping, questions about the value of registering copyrights, and the potential for conflicts between the courts and the copyright office about what is copyrightable. In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et al., 586 U.S. __ (2019), however, the Supreme Court has resolved this split. Now all copyrights (with some minor statutory exceptions) must await registration with the U.S. Copyright Office before a copyright holder can file an infringement action, which highlights the importance of this often overlooked IP tactic.
Unlike with some other IP rights, no agency action is required to create a copyright. Instead, a protectable copyright is created as soon as an author fixes a creative work in a tangible medium of expression. Thus, while applying to register a work with the Copyright Office offers certain advantages, it is not required in order to obtain the exclusive right to one’s work. Accordingly, many copyright holders forgo the registration process and scores of copyrighted works go undocumented and unexamined every year.
One of the most compelling reasons to register a copyright has been 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.” Some circuit courts, however, interpreted this statute to be satisfied by the mere filing of an application to register a work with the Copyright Office. Thus, upon discovering infringement, a copyright holder in those jurisdictions could simply submit an application and proceed immediately with suit.
Not anymore. In Fourth Estate, the Supreme Court rejects this “application approach” and holds that 17 U.S.C. § 411(a) is not satisfied “when an application for registration is filed, but when the Register has registered a copyright after examining a properly filed application.” Thus, except in the limited case of works eligible for preregistration under § 408(f)(3)–(4) or for infringement of a live broadcast subject to § 411(c), the “registration approach” is now the law of the land.
As a result, copyright holders – be they authors, artists, apparel designers, or software developers – should make a renewed effort to register their copyrighted works if they have any intention of enforcing them in the future. There is no time bar to seeking copyright registration, but there is a three-year statute of limitations on pursuing a copyright infringement claim. And while Fourth Estate quotes the average time to examination at seven months, the realities of modern copyright practice can be quite different. Accordingly, the value of obtaining advanced copyright registration can no longer be questioned, and should be part of any company’s IP strategy going forward.