U.S. Supreme Court to decide when copyright owners can sue

The U.S. Supreme Court has decided to resolve whether a copyright owner can sue an infringer after they pay for their registration deposit but before the Copyright Office acts on the application.

Circuit courts nationwide have split on the issue. The 9th and 5th U.S. Circuit Courts of Appeals ruled for the so-called "application approach," which says suit can be filed after the application deposit is paid but before it is decided.

In contrast, the 10th and 11th U.S. Circuit Courts decided for the more traditional "registration approach" that suits must wait until after the Register of Copyrights acts on an application. The underlying case is appealed from the 11th Circuit's decision in May 2017. Fourth Estate Public Benefit Corp. v. Wall-Street.com, 17-571.

According to copyright attorney Corey Field of Corey Field Law Group PC, the circuit split is a recent development whose roots are unclear. However, the registration approach is still the safest.

"Over the last 18 years or so, we have this increasing split about the approach, and I've always wondered what on earth was driving that. From my perspective, it's clear that if you get the registration and your client is the plaintiff, it's unassailable. We have a certification, let's move on and litigate," he said.

Field is also a University of Southern California Gould School of Law adjunct professor.

"I'm dubious there's a legitimate statutory basis for the application process," he added.

Copyright registration is not a requirement for protection but significantly strengthens the legal safeguards. It also heightens the penalties for infringers who lose, adding statutory damages and attorney fees to the list of costs.

"If you already have a registration and then someone infringes, it's a powerful position to be in," Field said.

According to the 11th Circuit's opinion, online news publisher Fourth Estate Benefit Corporation licensed articles to Wall-Street.com, but retained the copyrights. Fourth Estate's terms require that before canceling an account, a licensee must remove all their content from the rehosting site. Wall-Street canceled their account but did not clear the content.

Fourth Estate then sued Wall-Street as an infringer based on active applications to register the content.

The court dismissed the suit based on a plain reading of the Copyright Act, which traditionally permits suits only after the Register approves or denies an application. The 11th Circuit affirmed the dismissal.

The suit was first filed in the Southern District of Florida.

In its petition for writ of certiorari, Fourth Estate reiterated its argument that without the application process, the statute of limitations could run out on infringement before the Register makes a decision.

Before its decision Thursday to hear the case, the Supreme Court asked the federal government to weigh in, which it did May 16.

In the brief, the government agreed the issue was worth review because of the circuit court splits and advocated for the registration approach by a plain reading of the Copyright Act.

According to Field, the typical time for an application decision by the Copyright Office is approximately eight months.

However, an applicant can request an expedited process for reasons including pending litigation at an additional cost. The expedited process can take as little as a week.

"With the Supreme Court having granted certiorari, who knows what's going to happen, but without question worst case scenario is a coin flip," he said. "If you're practicing copyright law in the 9th Circuit and you're going to file suit, the safe thing to do is get on board with the registration approach right now."