March 4, 2019, marked the first time in over 100 years that the Supreme Court of the United States issued two copyright decisions in the same day [1] – both unanimous and both strict interpretations of statutory language. In the first of these two decisions, the Supreme Court unanimously held in Fourth Estate Public Benefit Corporation v. Wall-Street.com that copyright owners must obtain a registration from the U.S. Copyright Office prior to filing an infringement action. [2] The Court, in an opinion authored by Justice Ruth Bader Ginsburg, resolved a long-standing circuit split on whether the “application approach” (merely filing a copyright application) or the “registration approach” (obtaining a copyright registration) is sufficient to file a copyright infringement suit under § 411(a) of the Copyright Act of 1976. In the second decision, the Court in Rimini Street, Inc. v. Oracle USA, Inc. determined that “full costs” under § 505 of the Copyright Act did not authorize awarding litigation expenses beyond those specified in the general costs statute.
Given the Supreme Court’s Fourth Estate decision, there should be a flood of copyright applications at the U.S. Copyright Office given the low cost to file and average seven-month wait time to receive registration. [3] Upon registration of the copyright, a copyright owner can recover for infringement that occurred both before and after registration. Expedited registration is available; [4] however, even expedited processing may not provide a registration quickly enough for preliminary injunctive relief for works that do not qualify for Section 408(f)’s exception for works such as music and movies that are vulnerable to pre-distribution infringement.
Due to the unpredictability of knowing when someone will infringe a copyrighted work and the need to halt infringement in a timely manner, it is typically in the copyright owner’s best interest to routinely file copyright applications for any work of economic value with the potential to be infringed. Not only would routine registration set the stage for taking immediate action against infringers and seeking a preliminary injunction before extensive distribution and damage can be done, it also is a prerequisite for statutory damages and attorney fees, which are permitted only for registrations within three months of first publication of the work or before infringement. Otherwise, only provable compensatory damages within the limitations period are recoverable. [5]
As noted above, in the second of the two decisions, the Court in Rimini Street, Inc. v. Oracle USA, Inc. determined that “full costs” under § 505 of the Copyright Act did not authorize the appellate court to award litigation expenses beyond those specified by Congress in the general costs statute.
Prior Circuit Split and Fourth Estate Case Background
Section 411(a) of the Copyright Act of 1976 provides that “no civil action for infringement of the copyright in any United States work shall be instituted until…registration of the copyright claim has been made in accordance with this title.” The Ninth and Fifth Circuits followed the “application approach,” finding that a filed copyright application was sufficient to file a copyright infringement suit. The Tenth and Eleventh Circuits followed the “registration approach,” finding that registration of a work at the U.S. Copyright Office is required before commencing an infringement suit. [6] The “application approach” was more favorable to copyright plaintiffs because the U.S. Copyright Office can take several months, and at times, more than a year, to issue a registration in the normal course (non-expedited).
Fourth Estate Public Benefit Corp., a journalism collective, filed a copyright infringement claim against Wall-Street.com for reposting its articles without permission. Fourth Estate’s articles were not registered at the U.S. Copyright Office. The district court found that registration was required prior to commencing suit, and dismissed the complaint. Fourth Estate appealed, and the Eleventh Circuit affirmed. Fourth Estate then brought this case to the Supreme Court arguing in favor of the “application approach.” The Court granted certiorari.
Supreme Court Fourth Estate Ruling
In interpreting § 411(a), the Court focused on the phrase “registration…has been made.” The Court opined that this statutory requirement “permits only one sensible reading: that the Copyright Office’s act of granting registration and not the copyright claimant’s request for registration determines whether registration…has been...
