(this post has been updated)
Last week, the U.S. Supreme Court issued an important copyright decision in Fourth Estate v. Wall-Street.com regarding the meaning of “registration” under section 411 of the Copyright Act. Section 411 states, in part:
…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 other words, before a copyright owner can file an infringement suit, the work at issue must first be registered with the U.S. Copyright Office. This is not a new requirement. In fact, this has been the case since the current copyright statute was enacted in 1976.
The issue before the court was whether the meaning of the phrase “registration … has been made” under section 411 means 1) that the copyright owner needs to have submitted a completed application, deposit, and fee, as adopted by the Fifth and Ninth Circuits OR 2) that the registration application has been “acted on”—i.e., the application has been approved or denied by the Copyright Office—as adopted by the Tenth and Eleventh Circuits.
Resolving the circuit split, the Supreme Court affirmed the “registration approach” adopted by the Tenth and Eleventh Circuits, and supported by the U.S. Copyright Office, requiring that a copyright registration application be approved or denied by the Office before a copyright owner can file an infringement lawsuit.
Why does this matter?
This is an important issue because once the application, deposit, and fee are submitted to the Copyright Office, it takes several months for the registration to be issued or denied. As my colleague Terry Hart put it,
Currently, those delays can be significant—on average, it takes the Copyright Office six months to process a claim. That average goes up to nine months if a Copyright Office Examiner needs to correspond with a copyright owner. In a world of viral, online infringement, a lot of damage can be done to a copyrighted work while an owner is powerless to stop it.
Damages aside, having to wait months to file a suit is especially significant because the rightsholder cannot pursue an injunction to stop the infringing activity during that timeframe.
What does this mean for creators?
This is yet another reason that creators, to the extent they can afford to do so, should register as many of their works as possible and as early as possible. The sooner the application, deposit, and fee are filed, the sooner the registration can be completed and you can access those courthouse doors, if necessary.
Many creators, especially photographers, bloggers/vloggers, songwriters, etc. that create “high volume” works struggle to afford the cost of registering all of their works. The Copyright Office has group registration options in place for certain categories of works, including for contributions to periodicals, serials, photographs, and unpublished works (beginning on March 15), and is working on a similar option for short online literary works. These options allow creators to register multiple works using one application and requiring a single application fee.
How does this affect foreign creators?
Fun fact: the requirement to register a work prior to filing an infringement suit in a United States court only applies to “United States works.” This phrase is a term of art defined in section 101 of the Copyright Act, and works that do not qualify as “United States works” can be the basis of an infringement suit without a registration as a prerequisite.
The reason for this quirky distinction relates to an international treaty known as the Berne Convention—to which the United States and 175 other countries around the world are signatories. The Berne Convention prohibits member countries from requiring registration as a formality for enforcing a copyright in federal court for foreign works, but does allow such a formality for that country’s own works. Nonetheless, U.S. law still requires foreign works to be timely registered in order to seek statutory damages and attorney’s fees.
*Note: I previously wrote about lawsuits brought by a number of creatives—including 2 Milly, Alfonso Ribeiro, and Backpack Kid—alleging misappropriation of their signature dance moves in the video game “Fortnite.” Following this Supreme Court ruling, those lawsuits have been dismissed, as a procedural matter, while the plaintiffs await decisions from the Copyright Office.