Posts Tagged ‘IP’

Supreme Court rules that copyright owners cannot sue until the Copyright Office registers or refuses registration of the work. Cannot sue while application remains pending any longer.

Posted on: March 7, 2019 by admin@klgip
The opinion in Fourth Estate Public Benefit Corporation v. will undoubtedly influence the manner and frequency in which copyright lawsuits are filed.  In the case at issue,  Fourth Estate licensed its journalism works to a popular website,, before the agreement was canceled. When the agreement was cancelled, Fourth Estate demanded that its articles be removed from the website.  When the articles weren’t removed from the website, Fourth Estate filed a copyright infringement action.  One issue raised in the case was whether the plaintiff needed to wait until the Register of Copyrights either accepted or refused the application for registration, or whether suit may be commenced prior to registration being obtained.

Numerous interested parties such as the Author’s Guild, Public Knowledge, and various music industry publishers weighed in with various perspectives.  In fact, much of the music industry, including publishers and recording labels, argued that it was vital that administrative delay (i.e., the review of the copyright application) not act as a roadblock to anyone’s attempt to seek judicial relief.

Many plaintiffs, in copyright infringement suits submit applications for registration just days before filing their complaint in federal court. Except for limited circumstances, this will no longer be permitted.

Supreme Court Justice Ruth Bader Ginsburg, who authored the opinion, opined that the “registration approach” is the “only satisfactory reading” of the relevant statute as she points to lawmaker-envisioned events like the Register refusing an application that would become “superfluous” under an “application approach.”

Ginsburg acknowledged that registration processing times have increased from weeks to months over the years (typical processing times are in the 6-10 month range) but adds that administrative delays do not trump the plain wording of the applicable statute.

Acknowledging that this will undoubtedly cause anxiety within the entertainment industry, which is understandably concerned with piracy, RBG also wrote that there is a preregistration option available with certain works and there are processes for expedited registration.

Specifically, Ginsburg opined “In limited circumstances, copyright owners may file an infringement suit before undertaking registration. . .” “If a copyright owner is preparing to distribute a work of a type vulnerable to predistribution infringement — notably, a movie or musical composition—the owner may apply for preregistration… Even in these exceptional scenarios… the copyright owner must eventually pursue registration in order to maintain a suit for infringement.”

As such, a copyright owner must actually have its work registered by the United States Copyright Office prior to filing litigation to enforce its rights, the Supreme Court underscores the importance of early filing of copyright applications with the copyright office.

The Fourth Estate not only clarifies a Circuit split, but it clearly underscores one incentive encouraging the prompt filing of copyright applications. In addition to other remedies, copyright law allows for “statutory damages” of up to $150,000 per work infringed, and also provides for the possibility of attorney fees being awarded to a prevailing party. Yet, these remedies are only available when an owner applies for registration either before the infringement begins or within 90 days of first publication of the work. If a copyright application for a published work is not filed until after the infringement begins, these statutory damages are not available, and attorney fees cannot be awarded. As such, for any significant work of authorship, early application for registration is necessary for copyright owners to be able to act quickly and receive a maximum recovery.

For additional information on the impact of this decision or to schedule a consultation, please contact us.