SCOTUS Rules That Copyright Owners Cannot Sue Without a Registration

On March 4, 2019 the Supreme Court unanimously ruled that copyright infringement suits cannot be filed until after the Copyright Office registers a copyright.  Justice Ruth Bader Ginsburg delivered the opinion in Fourth Estate v. Wall-street.com, which affirmed the judgment of the U.S. Court of Appeals for the Eleventh Circuit in favor of Wall-Street.com.  The ruling resolved a circuit split, overturning the Fifth and Ninth circuit decisions that allowed copyright lawsuits after merely applying for registration.  The case considered whether, within Section 411(a) of the Copyright Act, registration of a copyright claim is made “when the copyright holder delivers the required application, deposit and fee to the Copyright Office, as the Fifth and Ninth Circuits have held, or only once the Copyright Office acts on that application, as the Tenth Circuit and . . . the Eleventh Circuit have held.”

Fourth Estate, a cooperative news organization, licensed its work to the news website Wall-Street.com.  After the agreement between the two parties was cancelled, Wall-Street.com did not remove the articles from the website, violating the terms of the agreement.  The Eleventh Circuit affirmed a district court’s dismissal of Fourth Estate’s copyright action on the ground that Fourth Estate sued before the copyright was registered.

The Supreme Court granted Fourth Estate’s petition last year in order to “resolve among US Courts of Appeals on when registration occurs” under Section 411(a) of the Copyright Act.  Section 411(a) states a suit for copyright infringement cannot be filed “until preregistration or registration of the copyright claim has been made.”  The Court rejected Fourth Estate’s argument that “the phrase ‘make registration’ and its passive­-voice counterpart ‘registration has been made’” do not refer to the Copyright Office.  Rather, the Court decided that the phrase referred to the copyright applicant, finding that Fourth’s Estate’s reading would make the exceptions to the rule against filing infringement suits before registering for a copyright gratuitous.  The Court asked:  “What utility would that allowance have if a copyright claimant could sue for infringement immediately after applying for registration without awaiting the register’s decision on her application?”

Content groups raised concerns after the ruling, fearing it will make the process of fighting copyright infringement of content online even more daunting.  Game companies and content owners should seriously consider registering a copyright early on so they are armed if they need to sue for infringement.  For more information on the importance of registering copyrights in the source code and audio-visual elements of a video game, please read our earlier Insight, Why should video game companies register copyrights in their video games.