Case(s): Fourth Estate Pub. Ben. Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019)
Fourth Estate Public Benefit Corporation (“Fourth Estate”) is an organization that creates online news articles. Fourth Estate owns copyright in the articles it produces and licenses those articles to other websites. Fourth Estate provided a license to the news site Wall-Street.com (“Wall-Street”) to post Fourth Estate articles. The licensing agreement mandated that Wall-Street remove all of Fourth Estate’s content prior to cancelling their licensing agreement. Eventually, Wall-Street canceled the licensing agreement, but still continued to feature Fourth Estate content on its website.
District Court Decision
Fourth Estate sued Wall-Street for copyright infringement under 17 U.S.C. s. 501. Fourth Estate claimed that it had satisfied 17 U.S.C. s. 411(a), which requires the copyright owner to obtain “registration of the copyright” before filing suit, by applying to register the articles with the Copyright Office. However, Fourth Estate did not claim that the Copyright Office had acted on the applications. Wall-Street moved to dismiss Fourth Estate’s complaint, arguing that s. 411(a) permits suit only after the Copyright Office approves or denies the copyright application. The District Court agreed with Wall-Street and dismissed the case.
Fourth Estate appealed to the Eleventh Circuit, arguing that “registration of the copyright” only requires that a party file “the deposit, application, and fee required for registration” with the Copyright Office before filing suit. The Eleventh Circuit affirmed the lower court’s finding, bit in doing so, pointed to a disagreement between circuits over when “registration” occurs under s. 411(a). While the Tenth Circuit follows the “registration” approach, requiring that the Copyright Office act on the registration application before suit can be filed, the Fifth and Ninth Circuits follow the “application” approach, which requires that a party file “the deposit, application, and fee required for registration” with the Copyright Office before filing suit. Meanwhile, the Eleventh Circuit adopted the registration approach.
The Eleventh Circuit noted in its decision that under s. 410(a), the Copyright Office examines the material in a registration application to determine whether “the material deposited constitutes copyrightable subject matter.” If the subject matter is copyrightable, the Copyright Office “registers the claim”; if the matter cannot be copyrighted, the Copyright Office “refuse[s] registration.” Based on this text, the court concluded that registration requires action by both the copyright owner and the Copyright Office.
Supreme Court Decision
Fourth Estate petitioned the Supreme Court, which granted certiorari on June 28, 2018. SCOTUS held in a decision dated March 4, 2019 that registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright. Upon registration of the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration.
Writing for the majority, Justice Ginsburg stated …
(a) Under the Copyright Act of 1976, as amended, a copyright author gains “exclusive rights” in her work immediately upon the work’s creation. A copyright owner may institute a civil action for infringement of those exclusive rights, s. 501(b), but generally only after complying with s. 411(a)’s requirement that “registration . . . has been made.” Registration is thus akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights.
(b) In limited circumstances, copyright owners may file an infringement suit before undertaking registration. For example, a copy- right owner who is preparing to distribute a work of a type vulnerable to pre-distribution infringement – e.g., a movie or musical composition – may apply to the Copyright Office for preregistration. A copyright owner may also sue for infringement of a live broadcast before “registration . . . has been made.”
Outside of statutory exceptions not applicable here, however, s. 411(a) bars a copyright owner from suing for infringement until “registration . . . has been made.” Fourth Estate advances the “application approach” to this provision, arguing that registration occurs when a copyright owner submits a proper application for registration. Wall-Street advocates the “registration approach,” urging that registration occurs only when the Copyright Office grants registration of a copyright. The registration approach reflects the only satisfactory reading of s. 411(a)’s text.