A recent Supreme Court decision resolved a long-standing circuit split about preconditions under the Copyright Act to filing a copyright infringement claim. In one camp, “application approach” advocates argued that a copyright owner could sue for infringement any time after it properly filed an application for registration with the U.S. Copyright Office. See, e.g., Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 365 (5th Cir. 2004) (“[T]he Fifth Circuit requires only that the Copyright Office actually receive the application, deposit, and fee before a plaintiff files an infringement action.”); Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612, 619 (9th Cir. 2010) (“[W]e conclude that the application approach better fulfills Congress’s purpose of providing broad copyright protection while maintaining a robust federal register.”). In the other camp, courts following the so-called “registration approach” claimed that copyright owners could sue for infringement only after the Copyright Office issued a valid registration or refused to do so. See, e.g., La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1200–01 (10th Cir. 2005) (“[O]nly upon registration or refusal to register is a copyright holder entitled to sue for copyright infringement.”); Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 856 F.3d 1338, 1341 (11th Cir. 2017) (“[T]he text of the Copyright Act makes clear that the registration approach . . . is correct.”).
Justice Ginsberg, writing for a unanimous Court, sided with the registration approach, finding that “‘registration . . . has been made,’ and a copyright owner may sue for infringement, when the Copyright Office registers a copyright.” Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 888 (2019). Accepting the application approach, the Court reasoned, would make the Copyright Act’s provision allowing suit upon the refusal of a registration superfluous and would require “the implausible assumption that Congress gave ‘registration’ different meanings in consecutive, related sentences within a single statutory provision.” Id. at 889. The Court tackled the relevant Copyright Act provisions line-by-line, evaluating the plain language of the statute and concluding that the Act “requires action by the Register before a copyright claimant may sue for infringement” and that this provision would also be negated if a suit could be filed and resolved before the Register acted on an application. Id. Thus, the explicit terms of the Copyright Act require that the Copyright Office must act, by issuing or denying a registration, before a party may sue for infringement.
While Petitioner Fourth Estate argued that a copyright registration is not a condition to copyright protection, the Court clarified that the Copyright Act “safeguards copyright owners, irrespective of registration, by vesting them with exclusive rights upon creation of their works and prohibiting infringement from that point forward.” Id. at 891. A copyright owner may still recover for damages stemming from past infringement—he or she must simply receive a registration from the Copyright Office before filing suit. Id. With a registration in hand, the copyright owner may turn to the court seeking damages, an injunction barring the infringer from continued violations, or an order requiring the infringer to destroy the offending materials. Id.
The Court also rejected the notion that copyright owners are in danger of losing the ability to enforce their rights if the Copyright Act’s three-year statute of limitations runs before the Copyright Office acts on an application for registration. Describing this concern as “overstated,” the Court noted that the average processing time for an application is seven months, “leaving ample time to sue after the Register’s decision, even for infringement that began before submission of an application.” Id. at 892. The Court likened the Copyright Act’s registration requirement “to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights.” Id. at 887. Leaning on the separation of powers, the Court shifted responsibility for delays in processing copyright applications to Congress, noting that delays “are attributable, in large measure, to staffing and budgetary shortages that Congress can alleviate, but courts cannot cure.” Id. at 892.
Justice Ginsberg’s common sense, textual approach to the registration provision of the Copyright Act provided clarity to an area of copyright law that has troubled both copyright owners and alleged infringers alike and remedied a regional divide in the application of copyright law.
