Copyright registration must precede filing of claims, court says

Attorneys say a U.S. Supreme Court ruling Monday requiring copyright owners to await registration before filing claims should stop some lower courts from trying to put the cart before the horse.

In a unanimous decision written by Justice Ruth Bader Ginsburg, the court dismissed an appeal from Fourth Estate Benefit Corporation challenging a lower court's dismissal of their copyright claims.

Fourth Estate raised a number of arguments in favor of their preemptive claim, including language in the Copyright Act of 1976 and the potential for the statute of limitations running out before the registration process could be completed. Fourth Estate Publishing Benefit Corp v. Wallstreet.com LLC, 17-571 (2019).

Corey Field, a copyright attorney at Corey Field Law PC, said Ginsburg thoroughly dismissed each of the company's arguments.

"And after all that analysis, it really just comes down to a common sense thing," Field said.

The court concluded "registration ... has been made," in the context of the Copyright Act, "not when an application for registration is filed, but when the register has registered a copyright after examining a properly filed application."

"Registration" has always been a prerequisite for bringing a copyright claim, explained Lincoln Bandlow, a litigation attorney and partner at Fox Rothschild LLP. But he said circuit courts were split on whether simply having filed an application for registration met that prerequisite, "or if a party needed to wait until the Copyright Office had actually issued a registration or otherwise ruled on the application."

The 5th and 9th U.S. Circuit Courts of Appeals ruled in favor of an "application approach," under which a lawsuit can be brought so long as a claimant applied for a copyright registration. The 2nd, 10th and 11th U.S. Circuit Courts, by contrast, have taken a "registration approach," requiring plaintiffs to have an approval -- or even refusal -- from the copyright office regarding the application before filing.

"I think the language of the statute seems clear that a completed registration was required, but there were some courts that were applying a sort of 'Well, I know registration's important, so getting the application on file is enough' sort of approach," Bandlow said.

Victoria Burke, a copyright attorney at Scott & Scott LLP and an adjunct professor at Southwestern Law School, said she felt the decision "brings everything into accord," resolving unnecessary circuit splits over a largely irrelevant issue.

Burke said it coincidentally avoids the possibility of a court finding in a plaintiff's favor despite a registration being denied, a "potentially catastrophic" scenario where the court would have to pit itself against the Copyright Office.

"The fact that it's a unanimous decision based on the legislative intent of Congress makes it pretty clear," Burke said.

Burke said she didn't think the decision would upset too many copyright litigators as she's found the copyright office to be expedient enough and can't recall a time where an application's been denied. Field, similarly, said anyone who really needs to rush an application through can pay to have the process expedited.

"When you're filing a copyright claim, you don't do it casually. It's a big deal," Field said. "I assume most lawyers will realize that."

Bandlow pointed to recent litigation brought over dance moves in the video game "Fortnite" as an example of the impact of this ruling. Alfonso Ribeiro only had an application pending when he recently filed suit over the game's alleged infringement of the "Carlton Dance" he famously performed on "The Fresh Prince of Bel-Air," so the lawsuit could not have been filed under this decision.

Ribeiro's application was recently denied by the copyright office, meaning he and similarly situated plaintiffs will face a significantly higher burden without the copyright office's support. But not an insurmountable one, Bandlow said.

In addition to meeting their burden to show infringement, litigants bringing a claim without the copyright office's backing would need to demonstrate to the court the office had been wrong in denying registration.

"Whether a work meets the requirements to be granted copyright protection is ultimately a legal decision for a court to make," Bandlow said. "But courts tend to generally be very deferential to the position of the copyright office when it comes to these kinds of issues."