July 6, 2020

Volume X, Number 188

July 06, 2020

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Supreme Court Confirms Registration is Prerequisite to Claim for Infringement

On March 4, the US Supreme Court resolved a circuit split and held that, with limited statutory exceptions, the issuance of a registration from the Copyright Office is a prerequisite to filing a claim for infringement. See Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, slip op. (US Mar. 4, 2019).

Copyrights exist independent of government registration. An author of an original work acquires exclusive rights (e.g., to reproduce, distribute, and perform or display the work) as soon as the work is fixed in a tangible medium of expression. 17 USC § 102(a). But registration confers important benefits. These benefits include the ability to recover statutory damages and attorneys' fees, which generally are not available for acts of infringement that began before the work was registered, see 17 USC § 412, and the right to file a claim for infringement.   

The statutory provision at issue in Fourth Estate was 17 USC 411(a), which provides, in part, that "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." Circuit courts were split as to what Congress meant by the phrase, "registration of the copyright claim has been made." The Tenth Circuit strictly construed the statutory registration requirement and held that a copyright claim based on an unregistered work was subject to dismissal.

The Fifth, Seventh and Ninth Circuits, on the other hand, had adopted a more lenient approach, allowing suits to proceed, so long as the applicant had filed a proper application, paid its fee and submitted a deposit copy of the work prior to filing suit. Copyright claimants in those circuits, and in various district courts in other circuits, were thus able to file a claim for infringement of an unregistered work, so long as they submitted an application immediately ahead of their complaint. The Eleventh Circuit recently joined the Tenth Circuit when it affirmed a district court's dismissal of Fourth Estate Public Benefit Corp.'s complaint against WallStreet.com on the basis that the plaintiff's copyright application was pending, but unregistered, at the time of suit.

The Supreme Court granted certiorari to resolve the circuit split and rejected the more lenient approach of finding a completed application sufficient to file suit. The unanimous court relied primarily on the language of the statute, itself, as well as its legislative history. In explaining its reasoning, the court noted that the owner of a registration, ultimately, can recover damages and profits for pre-registration acts of infringement (within the three-year statute of limitations); that pre-registration procedures exist for live broadcasts and works that are commonly infringed (e.g., movie releases); and that a suit may also be maintained on an application that was properly submitted, but refused by the Copyright Office.

The Supreme Court's decision means that, barring limited exceptions, a copyright claim will now be subject to dismissal in any circuit, if the complaint was filed before a registration is actually issued (or refused) by the Copyright Office. With the processing time for applications currently averaging seven months, it becomes even more important for copyright owners to consider registration of their works as part of their overall intellectual property strategies. If that timeline proves unworkable, the copyright owner will need to seek expedited processing of its application (for a fee).The mere act of filing an application will no longer suffice in any court.

©2020 Katten Muchin Rosenman LLPNational Law Review, Volume IX, Number 66

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About this Author

Karen Artz Ash, Intellectual Property Attorney, Katten Muchin
Partner

Designers, apparel manufacturers and other clothing businesses seek out Karen Artz Ash, national co-chair of Katten’s Intellectual Property department and co-head of the Trademarks and Trademark Litigation practice, because of her experience in all aspects of intellectual property, trademarks and copyrights.

Karen handles the structuring and administration of intellectual property, including establishing holding companies and trusts, and the creation, development, implementation and administration of licensing, servicing and manufacturing for companies worldwide....

212-940-8554
David Halberstadt entertainment industry Lawyer Katten Muchin Law Firm
Partner

David Halberstadter serves as deputy general counsel for the firm's four California offices. He is an established and well-respected presence in the entertainment industry, widely known for his clear, thoughtful advice and strategic litigation judgment in intellectual property and other entertainment matters. David represents traditional, institutional entertainment industry clients as well as new media companies, that come to him for his extensive experience, his practical, business-savvy approach, and his ability to aggressively prosecute and defend litigation relating to all aspects of motion picture, television and new media conception, development, finance, production and distribution.

David both prosecutes and defends litigation on behalf of motion picture studios and production companies, television networks and producers, and Internet/new media companies on a wide variety of issues, including: copyright infringement, fair use, parody and termination; trademark infringement and unfair competition; defamation, rights of publicity, rights of privacy and the First Amendment; rights acquisitions and transfers; contract disputes between producers and talent; and production, financing, distribution and licensing matters. 

David also plays a prolific "behind-the-scenes" role in connection with motion picture, television and new media development. He regularly helps creators of entertainment content answer the question "Can we do this without getting sued?" For example, David frequently can be found at his desk reviewing books, films, screenplays, motion picture and television treatments, magazine articles and other works in order to assess and reduce the risks of third-party claims based upon motion picture and television adaptations of such works. 

310.788.4408
Floyd Mandell, Katten Muchin Rosenman Law Firm, Patent Attorney
Partner

Floyd A. Mandell is national co-head of the firm’s Intellectual Property practice and co-head of the Trademarks practice. He has earned widespread recognition for his world-class intellectual property counseling and litigation practice, which covers trademarks, trade dress, unfair competition, trade secrets, copyrights, high-tech disputes, e-commerce/Internet disputes, false advertising, entertainment litigation and First Amendment litigation.

312-902-5235
Jeffrey A. Wakolbinger, Katten Muchin, false advertising lawyer, trade secrets attorney
Associate

Jeffrey A. Wakolbinger concentrates his practice on matters involving trademarks, copyrights, unfair competition, false advertising and trade secrets.

Jeff has represented the owners of many well-known brands in litigation and appeals in federal court and before the Trademark Trial and Appeal Board, where he has enforced and defended trademarks used in the technology, entertainment, fashion, telecommunications, automotive, food, pharmaceutical, oil-and-gas and other industries. Jeff also has defended media, fashion, hospitality and...

312.902.5570