U.S. Supreme Court Holds That Copyrights Must Be Registered Before Plaintiffs Can File Infringement Suits

Author:Ms Susan Neuberger Weller, Andrew D. Skale and Harold S. Laidlaw

The U.S. Supreme Court held today that bringing a suit for copyright infringement requires that the infringed work actually be registered with the U.S. Copyright Office, and that a mere application for registration will not suffice.

The ruling makes it even more imperative that copyright holders register their works promptly if they wish to enforce their rights—on top of the already considerable financial incentives that the U.S. copyright regime provides for registered works.

While expedited registration at the Copyright Office remains available to copyright claimants for a fee, the Court's new ruling is most likely to impact copyright holders for whom a delay of even a few weeks in bringing suit could prove irreparable—particularly those seeking temporary restraining orders or other preliminary injunctive relief.

The Supreme Court's Holding: Registered means registered, not applied-for.

17 U.S.C. § 411 generally requires that any copyright claimant must have registered or preregistered their copyright with the U.S. Copyright Office before they can bring suit.

Except for an action brought for a violation of the rights of the author under section 106A(a), and subject to the provisions of subsection (b), 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. . . .

17 U.S.C. § 411(a). Note that there are exceptions to §411(a) for "moral rights suits," recorded live broadcasts (carved out under 17 U.S.C. §411(b)), and foreign works, which need not be registered domestically in order to sue under the Berne Convention, (but which, like U.S. works, must generally be registered to obtain statutory damages and attorneys' fees under 17 U.S.C. § 412).

The question for the Supreme Court in Fourth Estate Public Benefits Corp. v. Wall-Street.com was directed to a long-standing Circuit split about when a work is considered "registered:" at the time that a registration is filed with the Copyright Office (which serves as the "effective date of registration" once the registration is actually processed) or at the time that the registration has actually been processed by the Copyright Office and thus formally "registered?.

Justice Ginsburg, writing for a unanimous Supreme Court, held that only after the application has been "registered" and issued by the Copyright Officea process that can take monthsmay a plaintiff...

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