Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. ___ (2019)
Fourth Estate, a news organization that licensed works to Wall-Street.com, a news website. sued Wall-Street for copyright infringement of articles that Wall-Street failed to remove from its website after canceling the license agreement. Fourth Estate had applied to register the articles with the Copyright Office, but the Register had not acted on those applications. No civil infringement action “shall be instituted until . . . registration of the copyright claim has been made,” 17 U.S.C. 411(a). The Eleventh Circuit and a unanimous Supreme Court affirmed the dismissal of the suit. Registration occurs, and a copyright claimant may commence an infringement suit, upon registration; a copyright owner can then recover for infringement that occurred both before and after registration. In limited circumstances, copyright owners may file suit before undertaking registration. For example, an owner who is preparing to distribute a work that is vulnerable to predistribution infringement—e.g., a movie or musical composition—may apply for preregistration; an owner may also sue for infringement of a live broadcast before registration. The Court rejected Fourth Estate’s “application approach” argument that registration occurs when a copyright owner submits a proper application. In 1976 revisions to the Copyright Act, Congress both reaffirmed that registration must precede an infringement suit. The Act safeguards copyright owners by vesting them with exclusive rights upon creation of their works and prohibiting infringement from that point forward. To recover for such infringement, copyright owners must apply for registration and await the Register’s decision. An administrative lag in processing applications does not allow revision of section 411(a)’s congressionally-composed text.
A copyright infringement suit may not be brought before the Copyright Office registers the copyright, even if the owner has submitted a proper application; upon registration, the owner may recover damages for infringement that occurred prior to registration.
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is being done in connection with this case, at the time the opinion is issued. The syllabus constitutes no part of the opinion of the Court but has been prepared by the Reporter of Decisions for the convenience of the reader. See United States v. Detroit Timber & Lumber Co., 200 U.S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et al.
certiorari to the united states court of appeals for the eleventh circuit
No. 17–571. Argued January 8, 2019—Decided March 4, 2019
Petitioner Fourth Estate Public Benefit Corporation (Fourth Estate), a news organization, licensed works to respondent Wall-Street.com, LLC (Wall-Street), a news website. Fourth Estate sued Wall-Street and its owner for copyright infringement of news articles that Wall-Street failed to remove from its website after canceling the parties’ license agreement. Fourth Estate had filed applications to register the articles with the Copyright Office, but the Register of Copyrights had not acted on those applications. Title 17 U. S. C. §411(a) states 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 District Court dismissed the complaint, and the Eleventh Circuit affirmed, holding that “registration . . . has [not] been made” under §411(a) until the Copyright Office registers a copyright.
Held: Registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright. Upon registration of the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration. Pp. 3–12.
(a) Under the Copyright Act of 1976, as amended, a copyright author gains “exclusive rights” in her work immediately upon the work’s creation. 17 U. S. C. §106. A copyright owner may institute a civil action for infringement of those exclusive rights, §501(b), but generally only after complying with §411(a)’s requirement that “registration . . . has been made.” Registration is thus akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights. P. 3.
(b) In limited circumstances, copyright owners may file an infringement suit before undertaking registration. For example, a copy- right owner who is preparing to distribute a work of a type vulnerable to predistribution infringement—e.g., a movie or musical composition—may apply to the Copyright Office for preregistration. §408(f)(2). A copyright owner may also sue for infringement of a live broadcast before “registration . . . has been made.” §411(c). Outside of statutory exceptions not applicable here, however, §411(a) bars a copyright owner from suing for infringement until “registration . . . has been made.” Fourth Estate advances the “application approach” to this provision, arguing that registration occurs when a copyright owner submits a proper application for registration. Wall-Street advocates the “registration approach,” urging that registration occurs only when the Copyright Office grants registration of a copyright. The registration approach reflects the only satisfactory reading of §411(a)’s text. Pp. 3–12.
(1) Read together, §411(a)’s first two sentences focus on action by the Copyright Office—namely, its registration or refusal to register a copyright claim. If application alone sufficed to “ma[ke]” registration, §411(a)’s second sentence—which permits a copyright claimant to file suit when the Register has refused her application—would be superfluous. Similarly, §411(a)’s third sentence—which allows the Register to “become a party to the action with respect to the issue of registrability of the copyright claim”—would be negated if an infringement suit could be filed and resolved before the Register acted on an application. The registration approach reading of §411(a) is supported by other provisions of the Copyright Act. In particular, §410 confirms that application is discrete from, and precedes, registration, while §408(f)’s preregistration option would have little utility if a completed application sufficed to make registration. Pp. 4–7.
(2) Fourth Estate primarily contends that the Copyright Act uses the phrases “make registration” and “registration has been made” to describe submissions by the copyright owner. Fourth Estate therefore insists that §411(a)’s requirement that “registration . . . has been made in accordance with this title” most likely refers to a copyright owner’s compliance with statutory requirements for registration applications. Fourth Estate points to other Copyright Act provisions that appear to use the phrase “make registration” or one of its variants to describe what a copyright claimant does. Fourth Estate acknowledges, however, that determining how the Copyright Act uses the word “registration” in a particular provision requires examining the “specific context” in which the term is used. The “specific context” of §411(a) permits only one sensible reading: The phrase “registration . . . has been made” refers to the Copyright Office’s act granting registration, not to the copyright claimant’s request for registration.
Fourth Estate’s contrary reading stems in part from its misapprehension of the significance of certain 1976 revisions to the Copyright Act. But in enacting §411(a), Congress both reaffirmed the general rule that registration must precede an infringement suit and added an exception in that provision’s second sentence to cover instances in which registration is refused. That exception would have no work to do if Congress intended the 1976 revisions to clarify that a copyright claimant may sue immediately upon applying for registration. Noteworthy, too, in years following the 1976 revisions, Congress resisted efforts to eliminate §411(a), which contains the registration requirement.
Fourth Estate also argues that, because “registration is not a condition of copyright protection,” §408(a), §411(a) should not bar a copyright claimant from enforcing that protection in court once she has applied for registration. But the Copyright Act safeguards copyright owners by vesting them with exclusive rights upon creation of their works and prohibiting infringement from that point forward. To recover for such infringement, copyright owners must simply apply for registration and await the Register’s decision. Further, Congress has authorized preregistration infringement suits with respect to works vulnerable to predistribution infringement, and Fourth Estate’s fear that a copyright owner might lose the ability to enforce her rights entirely is overstated. True, registration processing times have increased from one to two weeks in 1956 to many months today. Delays, in large part, are the result of Copyright Office staffing and budgetary shortages that Congress can alleviate, but courts cannot cure. Unfortunate as the current administrative lag may be, that factor does not allow this Court to revise §411(a)’s congressionally composed text. Pp. 7–12.
856 F.3d 1338, affirmed.
Ginsburg, J., delivered the opinion for a unanimous Court.
|Sep 4, 2018||Amicus brief of Authors Guild and Other Artists' Rights Organizations submitted.
|Sep 4, 2018||Amicus brief of National Music Publishers' Association; Recording Industry Association of America; American Society of Composers, Authors and Publishers; Broadcast Music, Inc.; Nashville Songwriters Association International; Songwriters of North America submitted.
|Sep 4, 2018||Amicus brief of The Copyright Alliance submitted.
|Sep 4, 2018||Amicus brief of AMERICAN BAR ASSOCIATION submitted.
|Sep 4, 2018||Amicus brief of THE INTERNATIONAL TRADEMARK ASSOCIATION submitted.
|Sep 4, 2018||Brief amicus curiae of American Bar Association filed.
|Sep 4, 2018||Brief amici curiae of National Music Publishers' Association, et al. filed.
|Sep 4, 2018||Brief amicus curiae of The Copyright Alliance filed.
|Aug 27, 2018||Brief of Fourth Estate Pub. Benefit Corp. submitted.
|Aug 27, 2018||Brief of petitioner Fourth Estate Pub. Benefit Corp. filed.
|Aug 24, 2018||Motion to dispense with printing the joint appendix filed by petitioner GRANTED.|
|Jul 27, 2018||Motion to extend the time to file the opening briefs on the merits granted. The time to file the joint appendix and petitioner's brief on the merits is extended to and including August 27, 2018. The time to file respondents' brief on the merits is extended to and including October 11, 2018.|
|Jul 25, 2018||Blanket Consent filed by Respondents, Wall-Street.com, LLC, et al.
|Jul 24, 2018||Blanket Consent received from counsel of record for Petitioner, Fourth Estate Public Benefit Corporation filed.
|Jul 24, 2018||Motion to dispense with printing the joint appendix filed by petitioner Fourth Estate Pub. Benefit Corp.
|Jul 23, 2018||Motion for an extension of time filed.
|Jun 28, 2018||Petition GRANTED.|
|Jun 27, 2018||DISTRIBUTED for Conference of 6/27/2018.|
|Jun 5, 2018||DISTRIBUTED for Conference of 6/21/2018.|
|Jun 5, 2018||Supplemental brief of petitioner Fourth Estate Pub. Benefit Corp. filed. (Distributed)
|May 16, 2018||Brief amicus curiae of United States filed.
|Jan 8, 2018||The Solicitor General is invited to file a brief in this case expressing the views of the United States.|
|Dec 13, 2017||DISTRIBUTED for Conference of 1/5/2018.|
|Dec 13, 2017||Reply of petitioner Fourth Estate Public Benefit Corporation filed. (Distributed)
|Nov 28, 2017||Brief of respondents Wall-Street.com, LLC, et al. in opposition filed.
|Nov 2, 2017||Response Requested. (Due December 4, 2017)|
|Nov 1, 2017||DISTRIBUTED for Conference of 11/21/2017.|
|Oct 13, 2017||Petition for a writ of certiorari filed. (Response due November 15, 2017)|
|Oct 13, 2017||Waiver of right of respondents Wall-Street.com, LLC, et al. to respond filed.|
|Aug 7, 2017||Application (17A150) granted by Justice Thomas extending the time to file until October 13, 2017.|
|Aug 4, 2017||Application (17A150) to extend the time to file a petition for a writ of certiorari from August 16, 2017 to October 13, 2017, submitted to Justice Thomas.|
- Fourth Estate Public Benefit v. Wall-Street.com, LLC, No. 16-13726 (11th Cir. May. 18, 2017)
Registration of a copyright has not been made in accordance with 17 U.S.C. 411(a), until the Register of Copyrights registers the claim. Filing an application does not amount to registration. Fourth Estate filed suit against defendants, alleging that Fourth Estate had filed an application to register its allegedly infringed copyrights, but that the Copyright Office had not registered its claims. The Eleventh Circuit affirmed the district court's dismissal of the action where Fourth Estate has not alleged infringement of any registered work, and this appeal did not involve the ongoing creation of original works, or potential future infringement of works not yet created.