Supreme Court Copyright Decision Indicates Greater Proactivity by Would-Be Infringement Plaintiffs

by Andy Halaby and Lee Fraley

Before today’s decision by the United States Supreme Court in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, there were two views on whether a copyright had to be registered, as opposed to an application for copyright registration merely filed, in order to sue for copyright infringement. In a unanimous decision, the Supreme Court has said the former. 

What does this mean for authors of literary, software, pictorial, architectural, and certain other copyrightable works subject to infringement? 

With certain exceptions, 17 U.S.C. § 411 makes registration a prerequisite to suing for infringement. 

Before Fourth Estate, such authors in the Fifth and Ninth Circuits (which together include California, Arizona, and Texas) could delay spending the resources necessary to register copyright until, if ever, they decided to sue for infringement, then apply for registration and sue immediately thereafter. 

Now that the Supreme Court has ruled that registration (and not merely application for registration) is a prerequisite to filing suit, these authors may want to apply for registration sooner, since it can take months for the registration to issue. Typically, copyright infringement plaintiffs do not want to wait months to file suit after deciding to take action. 

Costs for registration for the kinds of works mentioned above are trivial, and even with the benefit of counsel generally are modest. In addition, as the Supreme Court noted, expedited processing of an application is available for an $800 fee. 

One interesting (but unaddressed) feature of the Supreme Court’s decision lies in its implication for recovery of statutory damages and attorneys’ fees. With certain exceptions, under 17 U.S.C. § 412 neither statutory damages nor attorneys’ fees are available for “any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.” (Emphasis added.) The “effective date of the registration” is defined by 17 U.S.C. § 408 as “the day on which an application, deposit, and fee . . . acceptable for registration, have all been received in the Copyright Office.” Fourth Estate thus raises the question of whether, for statutory damages and attorneys’ fees purposes, “such registration” means “registration” or instead means “application, deposit, and fee.” 

Here too, proactivity may be the better course. If § 412’s window leaves three months for “registration” (by the Copyright Office) rather than submission of the “application, deposit, and fee” (by the applicant), here too, the applicant may well have wished it had made the submission sooner.