U.S. Supreme Court, Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, Docket No. 17-571, J. Ginsburg, unanimous

Copyright Infringement

License Agreement

Application to Register

No Civil Action for Infringement of the Copyright shall be Instituted until . . . Registration of the Copyright Claim has been Made

Expedited Processing of a Claim for an Additional $800 Fee

Statute of Limitations

Foreign Works

Berne Convention for the Protec­tion of Literary and Artistic Works’ bar on Copyright For­malities for such Works

Title 17 U. S. C. §411(a) 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.”

(…) Section 411(a) provides, in principal 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 any case, however, where the deposit, application, and fee required for registration have been deliv­ered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringe­ment (…)”.

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.

Under the Copyright Act of 1976, as amended, a copyright au­thor gains “exclusive rights” in her work immediately upon the work’s creation. 17 U. S. C. §106. A copyright owner may institute a civil action for infringement of those exclusive rights, §501(b), but generally only after complying with §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.

True, registration processing times have in­creased from one to two weeks in 1956 to many months today. De­lays, in large part, are the result of Copyright Office staffing and budgetary shortages that Congress can alleviate, but courts cannot cure.

Unfortunate as the current administrative lag may be, that factor does not allow this Court to revise §411(a)’s congressionally composed text.

(The Register of Copyrights is the “director of the Copyright Office of the Library of Congress” and is appointed by the Librarian of Congress. 17 U. S. C. §701(a). The Copyright Act delegates to the Register “all administrative functions and duties under [Title 17].”)

In limited circumstances, copyright owners may file an infringement suit before undertaking registration. If a copyright owner is preparing to distribute a work of a type vulnerable to predistribution infringement—notably, a movie or musical composition—the owner may apply for preregistration. §408(f)(2); 37 CFR §202.16(b)(1) (2018). The Copyright Office will “conduct a limited review” of the application and notify the claimant “upon completion of the preregistration.” §202.16(c)(7), (c)(10). Once “prereg­istration . . . has been made,” the copyright claimant may institute a suit for infringement. 17 U. S. C. §411(a). Preregistration, however, serves only as “a preliminary step prior to a full registration.” Preregistration of Cer­tain Unpublished Copyright Claims, 70 Fed. Reg. 42286(2005). An infringement suit brought in reliance on pre­registration risks dismissal unless the copyright owner applies for registration promptly after the preregistered work’s publication or infringement. §408(f)(3)–(4). A copyright owner may also sue for infringement of a live broadcast before “registration . . . has been made,” but faces dismissal of her suit if she fails to “make registration for the work” within three months of its first transmission. §411(c). Even in these exceptional scenarios, then, the copyright owner must eventually pursue registration in order to maintain a suit for infringement.

(…) Noteworthy, too, in years following the 1976 revisions, Congress resisted efforts to eliminate §411(a) and the registration requirement embedded in it. In 1988, Con­gress removed foreign works from §411(a)’s dominion in order to comply with the Berne Convention for the Protec­tion of Literary and Artistic Works’ bar on copyright for­malities for such works. See §9(b)(1), 102 Stat. 2859. Despite proposals to repeal §411(a)’s registration require­ment entirely, however, see S. Rep. No. 100‒352, p. 36 (1988), Congress maintained the requirement for domestic works, see §411(a). Subsequently, in 1993, Congress considered, but declined to adopt, a proposal to allow suit immediately upon submission of a registration application. See H. R. Rep. No. 103–338, p. 4 (1993). And in 2005, Congress made a preregistration option available for works vulnerable to predistribution infringement. See Artists’ Rights and Theft Prevention Act of 2005, §104, 119 Stat. 221.

(…) Fourth Estate raises the specter that a copyright owner may lose the ability to enforce her rights if the Copyright Act’s three-year statute of limitations runs out before the Copyright Office acts on her application for registration (…). Fourth Estate’s fear is overstated, as the average processing time for registration applications is currently seven months, leaving ample time to sue after the Register’s decision, even for infringement that began before submission of an application. See U. S. Copyright Office, Registration Processing Times (Oct. 2, 2018) (Regis­tration Processing Times), https://www.copyright.gov/registration/docs/processing-times-faqs.pdf

Further, in addition to the Act’s provisions for preregistration suit, the Copyright Office allows copyright claimants to seek expedited processing of a claim for an additional $800 fee. See U. S. Copyright Office, Special Handling: Circular No. 10, pp. 1–2 (2017). The Copy­right Office grants requests for special handling in situations involving, inter alia, “pending or prospective litigation,” and “makes every attempt to examine the application . . . within five working days.” Compendium of U. S. Copyright Practices §623.2, 623.4 (3d ed. 2017).

(U.S. Supreme Court, March 4, 2019, Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, Docket No. 17-571, J. Ginsburg, unanimous)