On March 4, 2019, the U.S. Supreme Court resolved a long-standing split among the circuits, making it impossible to sue for copyright infringement if the copyright is not registered. The Supreme Court held that a copyright claimant may not commence an infringement suit until “registration has been made,” and clarified that “registration has been made” when “the Register has registered a copyright after examining a properly filed application.” Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, slip op. at 12 (U.S. Mar. 4, 2019). Previously, some circuit courts had allowed copyright owners to assert claims for infringement upon filing of an application for registration, while other circuit courts required issuance of a certificate of registration prior to litigation.
The journalism collective Fourth Estate filed suit against Wall-Street.com, alleging it had used articles without permission. The case made its way up to the Eleventh Circuit which affirmed the district court’s decision that “filing an application does not amount to registration.” Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 856 F.3d 1338, 1341 (11th Cir. 2017). The Supreme Court agreed and there is now an even more compelling reason to register copyrights early.
The ability to receive statutory damages and attorneys’ fees are other significant reasons to register copyrights early on in the life of a work. Ideally, a copyright application for a work should be filed before the work is published. However, litigants are now required to have an issued copyright registration – not just a pending application – before having their claims heard in court.
Currently, the U.S. Copyright Office states on its website that it examines applications and issues registrations in approximately seven months, but it can take longer in some situations. This delay in registration can be significant given the three-year statute of limitations to enforce one’s rights under the Copyright Act. Expedited registration, also known as “special handling,” is available in cases of prospective litigation or other urgent circumstances, and the U.S. Copyright Office endeavors to process the “special handling” claims within five working days. However, the $800 registration fee and $550 expedited recordation fee is significantly higher than the fee of $35-$55 for regular applications. The Copyright Act rewards those who register works early and provides for the recovery of statutory damages of between $200 and $150,000 per work, along with the recovery of attorneys’ fees, for works registered early on. While actual damages can be recovered when works are registered later, attorneys’ fees cannot be recovered in such cases. If a client has hundreds of works, the expedited process can certainly be cost-prohibitive in many cases, especially if it is too late to receive statutory damages or attorneys’ fees.
With the Supreme Court’s ruling in Fourth Estate v. Wall-Street.com, it is now clear that copyright owners will need an issued certificate of registration before heading to court. A pending application is not enough. As a result, registering works early and registering updated versions on a regular basis are important best practices for all clients who are producing any sort of copyrightable content, including artwork, music, film, video, print or online publications, software and databases. Ideally, works should be registered before publication or shortly afterward. This will provide for the most cost-effective registration process, and also provide the ability to recover statutory damages and attorneys’ fees in most cases.