Wait Before You Sue – Supreme Court Rules Copyright Registration Must Be Approved Before Filing Infringement Suit

March 15, 2019 Alerts and Newsletters

If you come across your photos, videos, music, or other creative content being used without your permission, you'll need to wait in order to sue for infringement. On Monday, March 4, 2019, the Supreme Court unanimously ruled in Fourth Estate Public Benefit Corporation v. Wall-Street.com that to maintain a copyright infringement lawsuit a copyright owner's application must be approved for registration by the Copyright Office.

This particular lawsuit arose after Wall-Street.com cancelled a license agreement that it entered into with Fourth Estate Public Benefit Corporation. Wall-Street.com licensed some of Fourth Estate's news content, but failed to remove this content from the Wall-Street.com website when the license agreement was cancelled. Fourth Estate had filed an application for, but had not yet been granted, a copyright registration for the content in question. Wall-Street.com argued, and the Supreme Court agreed, that the Copyright Office must approve the application and complete the registration process before Fourth Estate's claim could be brought.

Prior to this ruling, Circuit Courts of Appeals were split – the Eleventh Circuit mandated that registration be granted in order to file an infringement lawsuit. Other courts only required that a copyright application be placed on file. This decision provides clarity to future litigants looking to protect their content – filing an application is not sufficient.

Copyright law also provides other incentives to encourage prompt registration, such as awarding statutory damages, attorney fees, and costs to the prevailing party if copyright applications are filed within ninety days of first publication or before the infringement actually commences. In such instances, early registration may assist in the recovery of maximum damages.

However, as Justice Ginsburg noted in the majority opinion, "the average processing time for registration applications is currently seven months." In light of this delay, copyright owners should file applications as soon as possible for all significant works of authorship to ensure that swift action can be taken if infringement does occur.

If you are interested in filing a copyright application for your creative work or identify a possible instance of copyright infringement, please contact a member of Verrill Dana's Intellectual Property & Technology Group.

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