Earlier this year, a unanimous Supreme Court held that a copyright owner may not file an infringement lawsuit until the Copyright Office has acted to register the owner’s application.  This decision resolves a long-standing circuit split over when a copyright owner may file an infringement lawsuit – either when the application has been submitted (the “application” approach) or when the Copyright Office registers the copyright (the “registration” approach).  In the wake of this ruling for the “registration” approach, content creators are expected to make greater use of the Copyright Act’s preregistration process as a way of protecting their work before it has been published.

In Fourth Estate Pub. Benefit Corp. v. Wall-Street.com LLC, Fourth Estate, a news organization, licensed its articles to Wall-Street.com, a news website.  No. 17-751, 586 U.S. __, slip op. at 1-2 (2019).  When Fourth Estate canceled the license agreement, Wall-Street.com did not immediately remove Fourth Estate’s articles from its website.  Id. at 2.  Fourth Estate then filed applications to register its articles with the Copyright Office.  Id.  Before the Copyright Office acted on those applications, Fourth Estate sued Wall-Street.com for copyright infringement.  Id.  Because the Copyright Office had not acted on Fourth Estate’s applications when it filed its lawsuits, the lower courts dismissed the complaint.  Id.  The Supreme Court then granted certiorariId.

Section 411(a) of the Copyright Act states 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.”  In Fourth Estate, the Supreme Court strictly interpreted the term “registration” to mean “when the Register has registered a copyright after examining a properly filed application.”  Id. at 12.  The Court examined other provisions of the Copyright Act and determined that this was “the only satisfactory reading of § 411(a)’s text.”  Id. at 4.  For example, Section 411(a) provides an express exception allowing an infringement lawsuit to commence after the registration has been refused by the Copyright Office.  The Court observed that this exception would be useless if Congress intended to follow the “application” approach, because an infringement suit could be filed before the Copyright Office even rejected the application.  Id. at 5-6.  As a result, registration should be considered “akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights.”  Id. at 3.

The Court also looked to Section 408(f), the preregistration provision, and found that it “would have little utility if a completed application constituted registration.”  Id. at 6-7.  Preregistration is a temporary measure for unpublished works that are in the process of being prepared for commercial distribution and are particularly vulnerable to pre-distribution infringement.  37 C.F.R. § 202.16(b)(3).  Such works include movies, television shows, recordings, compositions, literary works, video games, and advertising or marketing photographs.  37 C.F.R. § 202.16(b)(1).  When a preregistration application is submitted, the Copyright Office will conduct a limited review to confirm that the applicant has provided all required information and that the work qualifies for preregistration.  If all of the criteria for preregistration are met, the Copyright Office will send the applicant an email notice, and the applicant may file a complaint for copyright infringement.

In order to maintain the benefits of preregistration, an application for registration must be submitted to the Copyright Office by the earlier of (i) one month after the copyright owner becomes aware of infringement, or (ii) three months after first publication. 17 U.S.C. § 408(f)(3)-(4).

As a result of the Court’s decision in Fourth Estate, claimants in circuits who previously followed the “application” approach will now have to wait longer before bringing infringement actions.  The current average time for the Copyright Office to process an application is seven months.  For those content creators with works in progress that are particularly vulnerable to infringement, preregistration now provides a tested and more efficient route to the courthouse.