Supreme Court Holds Copyright Owners Must Wait to Commence Infringement Suit Until After the Copyright Office Acts

By Elizabeth Tassi

Although copyright registration is voluntary, the U.S. Copyright Act incentivizes copyright owners to register their works with the U.S. Copyright Office. For example, you cannot file a civil action for copyright infringement until "registration of the copyright claim has been made..." 17 U.S.C. § 411(a). Until yesterday, there was a circuit split regarding whether simply filing an application for registration with the Copyright Office satisfied this requirement. Now the U.S. Supreme Court has held the Copyright Office must act on an application for registration (either granting or denying registration) before the precondition to filing suit is satisfied. Fourth Estate Public Benefit Corp. v., LLC, No. 17-571, 586 U.S. ___ (March 4, 2019).

The court found registration "akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights." Id. at slip op. at 3. Therefore, copyright owners must either wait seven months or more after filing an application for the Copyright Office to act or pay additional fees to expedite examination before they can file a copyright infringement lawsuit. Although a copyright owner can recover for infringement that occurred before and after registration, the delay in filing suit may be particularly troublesome in cases where a temporary restraining order would be appropriate. 

What this decision means for your business

This is a good time to review the works in your copyright portfolio and file applications on those that are valuable or at risk of infringement. Other incentives for registering your copyrights include the ability to elect statutory damages (instead of actual damages) and request attorney fees for a successful infringement claim. The availability of these options in litigation also provides leverage to diffuse an infringement situation at the cease and desist letter stage. We are here to help you prepare and file copyright applications and determine whether expedited examination is available and appropriate.

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