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SCOTUS Finds Copyright Owners Must Wait to File Suit

Josh Conley \ March 04, 2019

Today, the Supreme Court (SCOTUS) resolved a split between federal circuits on whether a copyright owner must wait until their copyright registers to file suit or if suit can be filed immediately once the application for registration is filed.  The answer, a lawsuit cannot be filed until the copyrighted work has been registered.

The Notorious RBG wrote the unanimous decision in Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, finding Section 411(a) of the Copyright Act requires the work to be registered prior to commencing suit.  Simply filing with the Copyright Office is not enough.

The appellant, Fourth Estate Public Benefit Corp., had argued that the wait-time could result in a claim being barred by the three-year statute of limitations.  Justice Ginsburg, however, pointed out that the concern regarding application processing delays were “overstated” and noted that applications are typically processed within seven months.  The Court also noted that a copyright owner can still seek relief from infringement that occurs before registration is secured—they just have to wait until registration is granted or refused.

Justice Ginsburg also dropped a footnote that highlighted the ability to expedite the processing of an application through the Copyright Office for $800.  Expedited examination is available when there is “[p]ending or prospective litigation.” Once expedited, the Copyright Office will try to “examine the application … within five working days.”

The High Court also noted that in limited instances, a copyright owner may file for preregistration, which would allow suit to be filed prior to registration.  This is available when the work at issue is “especially susceptible to prepublication infringement” such as with a live performance, broadcast, movie, or musical composition.  The owner must take prompt action to obtain full registration or they run the risk of their suit being dismissed.

This changes the approach taken in many federal circuits, including the Fifth, Eighth, and

Ninth Circuits.  The First, Second, and Seventh Circuits have been sitting the split out by not taking a definitive approach.

For copyright owners, this means that taking action on infringement is even more important because of the potential delays with processing.  In the grand scheme of litigation, however, $800 is a small amount to get access to the federal courts within days of applying for registration.

The Supreme Court’s full opinion can be found here.

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