The Supreme Court Says “You’ll Have to Wait”

Stephen Carlisle March 8, 2019

Consider this problem. You’ve just finished recording your latest batch of songs. The very same day they are released, you go online and register every song and sound recording with the U.S. Copyright Office. Two days later, a friend sends you an email showing that a dozen different pirate sites are offering up your songs for free.

You call your lawyer, and insist that lawsuits be filed immediately.

Except that your lawyer tells you that you can’t. You might have to wait as long as seven months before you can file any lawsuit. Meanwhile the infringements will continue unabated.

Why?

Because this is what the U.S. Supreme Court ruled on March 4, 2019, in the case of Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC. ¹

Unfortunately, you’ve just been tripped up by Section 411 of the Copyright Act. This section of the Act states:

“[N]o 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.”

“But,” says you, “I did register my copyright claim two days ago!”

This is true. But the Copyright Office has not acted upon your registration by accepting it or rejecting it.

Thus, we have the crux of the problem. When is the registration of the copyright claim made? When it is filed? Or when does the Copyright Office finally act and issues you a certificate? The Fifth and Ninth Circuit courts favor the filing approach. The Eleventh Circuit, amongst others, takes the final action approach. This is one of the reason the Supreme Court exists, to resolve split opinions between the Circuit Courts of Appeal.

And now, the Supreme Court has spoken, and rather loudly as well, as the opinion represents the unanimous opinion of the Court.

“[W]e conclude that ‘registration has been made’…when the Register has registered a copyright after examining a properly filed application.” ²

So, the claim for your copyright is not “registered” within the meaning of the statute, until such time as the Copyright Office takes final action on your application.

The opinion of Justice Ginsberg is well reasoned and there is not much to take issue with the analysis it presents. She acknowledges the hardship that the ruling will cause, but offers the principle of judicial restraint.

“True, the statutory scheme has not worked as Congress likely envisioned. Registration processing times have increased from one or two weeks in 1956 to many months today… Delays in Copyright Office processing of applications, it appears, are attributable, in large measure, to staffing and budgetary shortages that Congress can alleviate, but courts cannot cure…Unfortunate as the current administrative lag may be, that factor does not allow us to revise §411(a) ’s congressionally composed text.”

So, what can you do?

You can request “expedited” handling of your registration application. The fee for this is currently $800. ³ There is a current proposal to raise this to $1,000. Don’t have it? Sorry.

As the opinion does point out, you have the ability to “pre-register” certain categories of works which are “being prepared for commercial distribution” and that are likely to be immediately infringed under Section 408(f). These “pre-registered” works can sue absent a completed registration. These include:

• Motion pictures;
• Sound recordings;
• Musical compositions;
• Literary works being prepared for publication in book form;
• Computer programs (including videogames); or
• Advertising or marketing photographs. ⁴

The fee for this is $140. ⁵

The effect of the ruling is that any lawsuit that is filed without a registration being issued is subject to being immediately dismissed. This will in turn have the effect of instantly denying any request for a preliminary injunction or temporary restraining order. Thus, two valuable litigation tactics to combat rampant infringement have been negated.

And then, there’s the whole question of the availability of statutory damages and attorneys fees. Section 412 states:

“[N]o award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made 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.”

But now, the SCOTUS has ruled that registration is not “made” until the Copyright Office acts upon it. The Court itself acknowledges that average wait time is seven months. ⁶ So, if we are to take the opinion at face value, that means that not only can you not sue for infringement for around seven months, once you do file suit, you might be ineligible to ask for statutory damages or attorney’s fees, because you will be well beyond the three month period provided by section 412.

Not exactly an equitable result, is it? That will be an additional thorny question for the Courts to answer.

And finally, we can throw this into the hopper.

“In 1988, Congress removed foreign works from §411(a) ’s dominion in order to comply with the Berne Convention for the Protection of Literary and Artistic Works’ bar on copyright formalities for such works.” ⁷

That’s right, a citizen of a foreign country protected by the Berne Treaty has no requirement to register with the Copyright Office before filing suit, because this violates the Berne Treaty’s prohibition against “formalities.” ⁸

But wait! Isn’t the United States a member of the Berne Treaty? Shouldn’t we be protected against the requirements of “formalities?”

You would think so, but Congress has decided otherwise.

Time for Congress to act. The exercise of your legal rights should not depend on something as mundane, and easy to fix as an underfunded bureaucracy.