Supreme Court: Copyright Holders Must Obtain a Certification of Registration Before Initiating an Infringement Suit
A lesson in statutory textualism was given by the Supreme Court earlier this month in deciding Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, settling a longstanding rift between the federal circuit courts on the requirements of copyright registration in copyright infringement suits.
In an opinion given by Justice Ginsburg, the Supreme Court unanimously held that in interpreting section 411(a) of the Copyright Act, a registration has been made when the Copyright Office has registered a copyright after examining a filed application, not when an application has merely been filed.
Before Fourth Estate, federal circuit courts were divided on the meaning of “registration” within section 411(a), with the Fifth and Eight Circuits finding that that the term suggests that only a copyright application by the copyright owner to the Copyright Office is required before filing an infringement suit (application theory), and the Tenth and Eleventh Circuits finding that a certification of registration by the Copyright Office is required before filing suit (certification theory). In the initial suit by the parties in the district court, Fourth Estate had filed an infringement suit against Wall-Street.com for placing several articles produced by Fourth Estate on Wall-Street.com’s website in violation of an agreement between the two parties. Fourth Estate correctly filed for copyright registration of their articles before initiating the infringement suit with Wall-Street.com, but the suit was initiated before Fourth Estate received certification of registration by the Copyright Office. After rulings against Fourth Estate in both the district and Eleventh Circuit courts, the Supreme Court granted certiorari.
During oral arguments, Fourth Estate stated a primarily textual argument, that “registration” often had different meanings in different contexts of law, and that the term within the phrase “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”, within section 411(a) referred to filing an application. 17 U.S.C. § 411(a) (emphasis added). Justice Kagan agreed that a term like “registration” could have different meanings in law, but noted that the term is also used in the previous sentence within section 411(a), where it unambiguously applies to certification theory. The Justice surmised that the unambiguous use of the term in the previous sentence was highly probative that the ambiguous term should be used similarly.
Wall-Street.com’s initial argument was also primarily textual in nature. They contended that if section 411(a) was read under the application theory, other provisions of section 411 would be rendered meaningless, a contention supported by counsel representing the United States. By making the other provisions meaningless, or superfluous, Wall-street.com stated that reading the term under application theory would negate the ability of the United States Copyright Office from acting to process, and possibly limit copyright claims.
Justices Gorsuch and Kavanaugh both suggested that reading the term under application theory would be helpful to copyright owners, especially as there is a three-year statute of limitations for infringement claims, and the delay for obtaining certification from the Copyright Office has lengthened from a few weeks in the 1950s to several months today. In their rebuttal, Fourth Estate agreed that reading the term under application theory meaning would be protective to copyright owners. However, it was also noted that Congress has added legislative provisions to the law over time, such as pre-registration, notice-and-takedown provisions, and expedited review, that give added protection to copyright holders and lessen the need for a reading of “registration” under application theory.
Ultimately, the court agreed that Wall-Street.com had the better textual argument, for which neither Fourth Estate’s textual argument, nor their public policy argument, could overcome. This decision should send a message to all producers of media, whether published or unpublished, that a discussion of copyright registration should be made before the media is released to the public, rather than only after infringement is discovered.
Suiter Swantz IP is a full-service intellectual property law firm providing client-centric patent, trademark, and copyright services. If you need assistance with an intellectual property matter and would like to speak with one of our attorneys, please contact us at info@suiter.com.
Jason Glanzer is a patent agent with Suiter Swantz IP. Jason obtained his B.S. in Biotechnology from the University of Nebraska at Omaha, his Ph.D. in Pharmacology from the University of Nebraska Medical Center, and his Juris Doctor from Creighton University School of Law with emphasis on intellectual property and health law.
Through his experience as both researcher and inventor, Jason appreciates the expectations of the inventor and works to both identify the aspects of the invention that are patentable, and to develop a strategy with the inventor on how to most effectively craft the patent.
Jason is registered as a Patent Agent before the United States Patent and Trademark Office.
