Are You Registered? An Examination of Fourth Estate Public Benefit Corp. v., LLC, et al.

In the United States, a copyright holder of a US work can sue for infringement only upon registration. Title 17 U.S.C §411(a) explicitly states that

“Except for an action brought for a violation of the rights of the author under section 106A(a), and subject to the provisions of subsection (b),[1] 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 if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.”

While this provision seems straightforward, some questions might arise. Most would agree that the Code does not protect an owner who has not commenced an application. * Many would also agree that someone with a certificate of registration would be entitled to bring an action for infringement. However, where people might differ is whether this provision permits parties, who have only applied for a copyright registration, to commence an action for infringement.

Relevant prior case law has produced somewhat divergent results on the exact meaning of §411(a). Seeming to support a “registration approach” the US Court of Appeals, Tenth Circuit, in the 2005 case of La Resolana Architects PA v. Clay Realtors Angel Fire, ruled that an owner of a US-based work can only sue for infringement when their copyright is registered. Slightly differently, the US Supreme Court ruled, in the 2010 case of Reed Elsevier, Inc., et al., Petitioners v. Irvin Muchnick et al., while registration is a “precondition to filing a claim, that does not restrict a federal court’s subject matter jurisdiction.”

The March 2019 case of Fourth Estate Public Benefit Corp. v., LLC, et al. pertained to this very issue.  Fourth Estate licensed news stories to and was supposed to delete the stories when the licensing agreement ended. However, continued to display these news stories on their website after the agreement had ended. Fourth Estate brought a copyright infringement suit against However, the Court of Appeals for the Eleventh Circuit ruled against Fourth Estate because they had only had copyright applications for the stories. Fourth Estate was granted a petition for certiorari. In the petition, Fourth Estate argued that the Copyright Act of 1976 used passive language which suggested that registration occurs upon application.

However, the US Supreme Court unanimously affirmed the decision of the Circuit Court and stated registration occurred when “the Register has registered a copyright after examining a properly filed application.” Speaking for the majority, Ginsburg stated Fourth Estate misunderstood the Copyright Act and the 1976 Congressional amendments to copyright law supported the view that registration must precede an infringement suit. She noted that at various times, Congress has opposed eliminating this registration requirement. This decision has confirmed that registration is a prerequisite for a copyright infringement suit. What is quite interesting is this significantly differs from Canada’s copyright infringement policies. While a copyright registration would make it easier to argue copyright infringement in Canada, it is not necessary.

It will be interesting to examine the effects of Fourth Estate Public Benefit Corp. v., LLC et al. on the field of American copyright. Potentially there could be an increased number of parties seeking registration earlier. There might be a decrease in copyright litigation, in the next several years, because the Supreme Court has confirmed parties would have to wait for a certificate of registration. On the other hand, there could be an increase in owners of foreign works commencing copyright infringement lawsuits because they are not bound by the registration requirement.

Public reaction to this case will also be interesting to gauge. By confirming the need for registration, some might argue this case prevents the abusive use of copyright infringement. In contrast, others may argue this case makes it more difficult for copyright owners to protect their work.  Due to this case, some copyright applicants might argue the time it takes to register a copyright, which is approximately seven months, will have to be shortened.

While one cannot be sure of the exact impact of Fourth Estate Public Benefit Corp. v., LLC et al., it will most likely have a strong impact on the American copyright landscape.

Authored by Margot Mary Davis

*Preregistration is available for works, like movies, where there is a high risk of “predistribution infringement”.






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