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Jul 17, 2018

U.S. Supreme Court to Address Circuit Split Over Copyright Registration

The U.S. Supreme Court recently decided to take on the challenge of resolving a circuit split over when in the copyright registration process a party can sue another party for copyright infringement. The court granted a petition for writ of certiorari in the case Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC, in which journalism group Fourth Estate sued Wall-Street.com for republishing articles without permission.

Last year, a federal judge dismissed the case, deciding that Fourth Estate could not file a lawsuit for copyright infringement before it had fully registered the copyrights for the articles in question. The Eleventh Circuit affirmed the decision shortly after. However, several other circuits, including the Ninth Circuit, have allowed parties to sue after filing the necessary documents for registration with the U.S. Copyright Office, even if said application has not yet been approved.

Approval of a copyright registration application can take months, especially without paying additional fees to the Copyright Office to expedite the process. The application process could be even longer if the Copyright Office raises any issues upon examination of the application, or if the claimant needs to appeal an initial refusal to register a work (and assuming the work is ultimately registered). This can be a significant hindrance to pursuing timely legal action, particularly if for some reason the plaintiff is approaching its statute of limitations to bring a claim.

While there is a policy argument that infringement claims should not be allowed unless the Copyright Office first determines that a work is entitled to copyright protection, i.e. that the work is minimally creative, the presumption that one owns a valid copyright which is conferred by a registration is still rebuttable. The trier of fact in a lawsuit is not bound by the conclusion of the particular employee at the Copyright Office who deemed the work protectable. That is, although currently required under the Copyright Act, from a practical standpoint it may not really be necessary for the Copyright Office to register a work before an infringement lawsuit can be filed. Further, while one benefit of having a copyright registration is to put the public on notice of claimed rights, and in doing so theoretically deter infringement, the registration process actually does not effectively show the public what works have been registered, as deposit copies are not viewable through the Copyright Office online database.

While the decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com will not answer all of the above questions, it should at least clear up a long-debated controversy over whether filing an application for copyright registration is an adequate prerequisite to suing on copyright infringement grounds.

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