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Copyrights; Right To Sue For Infringement Of A Copyright

by | Mar 18, 2019 | Intellectual Property

Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, ___ U.S. ___, No. 17571 (4 March 2019).

Fourth Estate is a news organization producing online journalism.  Wall Street is a news website.  Fourth Estate licensed its journalism to Wall Street.  The license agreement required Wall Street to remove from its website all content produced by Fourth Estate before Wall Street cancelled the agreement.  Contrary to the terms of the agreement, Wall Street cancelled the licensing agreement but continued to display news articles produced by Fourth Estate.  Fourth Estate sued Wall Street for copyright infringement.  The complaint alleged that Fourth Estate had filed with the Register of Copyrights applications to register the articles licensed to Wall Street; however, the Register had not yet acted on Fourth Estate’s applications.

The Constitution, Article I, Section 8, Clause 8, states: “The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”   That clause is the constitutional foundation for the copyright laws codified at 17 U.S.C. §§ 101-1401.  Under the Copyright Act of 1976, copyright protection attaches to “original works of authorship” and an author gains “exclusive rights” in her work immediately upon the work’s creation. See §106; Eldred v. Ashcraft, 537 U.S. 186, 195 (2003) (federal copyright protection runs from the work’s creation).

The Copyright Act entitles a copyright owner to institute a civil action for infringement of those exclusive rights. §501(b).  However, a copyright owner’s right to sue is subject to Section 411(a), which has three sentences.  The first sentence of §411(a) can be paraphrased:

Except for limited statutory exceptions no action for infringement of the copyright of a United States work shall be instituted until “registration of the copyright claim has been made in accordance with this title.”

That sentence clearly limits a copyright owner’s right to sue until after registration of the copyright, but what is the meaning of “registration of the copyright claim . . . made in accordance with this title”?  Is registration “made” when the copyright owner submits the application to the Copyright Office or only when the Copyright Office grants the registration?  That was the issue in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC.

Section 411(a) has two additional provisions that are important to the question before the Court and which can be paraphrased:

If an application for registration of a copyright has been delivered to the Copyright Office, and the Copyright Office has refused registration, then the applicant is entitled to institute a civil action for infringement; and

The Register of Copyrights may become a party to an action for infringement with respect to the issue of registrability.

The relationship between these three provisions of §411(a) is the key to the Supreme Court’s decision.

In a unanimous opinion authored by Justice Ginsburg, the Court held that registration of a copyright, within the meaning of §411(a), occurs only when the Copyright Office registers the copyright, not when the applicant submits an application to the Copyright Office.  The Court further held that, upon registration of the copyright, a copyright owner can recover for infringement that occurred both before and after registration.

The Court said that before pursuing an infringement claim in court, a copyright claimant generally must comply with §411(a)’s registration requirement that registration of the copyright has been made.  Although the copyright owner’s rights exist apart from registration, see §408(a), registration is akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights.  In limited circumstances, not at issue here, a copyright owner may file an infringement suit before undertaking registration, but even in those exceptional scenarios the copyright owner must eventually pursue registration in order to maintain the suit for infringement.

In resolving the issue, the Court relied on an old adage of statutory construction: Thou shall not construe a statute so as to render a provision of the statute superfluous.  The Court reasoned that the first sentence of §411(a) provides that no civil action shall be instituted until registration of the copyright claim has been made.  The section’s next sentence (noted above) sets out an exception to this rule: If an application for registration has been delivered to the Copyright Office, and the Copyright Office has refused registration, then the applicant is entitled to institute a civil action for infringement.  Read together, §411(a)’s opening two sentences focus not on the claimant’s act of applying for registration, but on action by the Copyright Office – namely, its registration or refusal to register a copyright.  If application alone were sufficient for registration under the first sentence of §411(a), then the second sentence allowing suit upon refusal of registration would be superfluous.  A contrary reading of the section requires the implausible assumption that Congress gave “registration” different meanings in consecutive sentences within a single statutory provision.  The Court resisted that improbable construction. See, e.g., Mid-Con Freight Systems, Inc. v. Michigan Pub. Serv. Comm’n, 545 U.S 440, 448 (2005) (declining to read “the same words” in consecutive sentences as “refer[ring] to something totally different.”)

The third and final sentence of §411(a) further persuaded the Court that §411(a) requires action by the Register before a copyright claimant can sue.  That sentence allows the Register to become a party to an action for infringement with respect to the issue of registrability of the copyright claim.  That allowance would be negated and the court conducting an infringement suit would lack the benefit of the Register’s assessment, if an infringement suit could be filed and resolved before the Register acted on an application.

The Court concluded that the “specific context” of §411(a) permits only one sensible reading: The phrase “registration . . . has been made” refers to the Copyright Office’s act of granting registration, not to the copyright claimant’s request for registration.

John Polk is a Special Counsel at Berenzweig Leonard, LLP. John can be reached at [email protected].