Copyright News

• Jurisdiction: United States,Federal
• Citation: Vol. 43 No. 1
• Publication year: 2018
• Author: Jo Ardalan
• topic: Copyright law

Copyright News

Jo Ardalan

One LLP

PRE-SUIT COPYRIGHT REGISTRATION REQUIREMENT CATCHES THE ATTENTION OF THE UNITED STATES SUPREME COURT

On January 8, 2018, the United States Supreme Court invited the Solicitor General to weigh in on when "registration" occurs in Fourth Estate Public Benefit Corporation v. Wall-Street.com LLC. ¹ Under 17 U.S.C. § 411(a), "registration" is a prerequisite to filing an infringement claim. The circuit courts are split as to whether "registration" under Section 411(a) occurs when the copyright holder simply applies for registration or whether it occurs when the Copyright Office issues the registration. The Fifth and Ninth Circuits have adopted the "application" approach,² while the Tenth and now Eleventh Circuits have adopted the "registration" approach. ³ The First and Second Circuits have noted the circuit split but have not adopted either approach,⁴while the Seventh Circuit has adopted both approaches.⁵ Although the Court has not yet granted certiorari in Fourth Estate Public Benefit, the Court's invitation to the Solicitor General to brief the government's view suggests that it might be heard during the upcoming Supreme Court term.

What's the Big Deal?

While the application approach allows a copyright holder to file for registration and file suit immediately thereafter, the registration approach requires that the Copyright Office first issue or deny a registration. The latter approach subjects the copyright holder to potentially staggering delays in protecting its rights. In Fourth Estate Public Benefit, the plaintiff's application was still pending 19 months after the plaintiffap-plied for registration.⁶ The implications of having to wait 19+ months to file suit may mean that copyright plaintiffs who don't file their copyright applications immediately upon creation, publication, or infringement but wait to do so may find that the three-year statute of limitations has ran because their registration has not yet been issued or denied.⁷

Further, the registration approach can seriously harm copyright holders, whose works are typically most valuable immediately after publication. For example, a celebrity photographer who captures the first photos of a new celebrity couple can demand a significant licensing fee when the news is hot. But when infringers flood the Internet with those first photos, the photographer's licensing rights become less valuable. Under the registration approach, the photographer must wait until after the photographs have ceased to be newsworthy to file suit, by which time the damage to the photographer may have become irreparable. In one case though the court permitted a plaintiff to seek pre-registration injunctive relief to avoid that result.⁸

Should the Court adopt the application approach, a copyright owner could file suit immediately after filing an application for registration, and immediately apply for a temporary restraining order.

The Eleventh Circuit's Decision

Fourth Estate Public Benefit is a news organization that produces articles and licenses them to websites.⁹ It sued Wall-Street.com, its former client, alleging that Wall-Street.com did not have a license to continue to publicly display and publish Fourth Estate's articles on its website, but the district court...