On March 4, 2019, in a unanimous opinion written by Justice Ruth Bader Ginsburg, the Supreme Court rejected the argument by news organization Fourth Estate Public Benefit Corp. that it should be allowed to maintain its action against Wall-Street.com, LLC while the applications were pending for copyright registration of Fourth Estate's allegedly-infringed news articles. Resolving a long-standing split amongst federal circuit courts on the registration precursor to the commencement of an infringement suit, Judge Ginsburg clarified that "[r]egistration occurs ... when the Copyright Office registers a copyright" or otherwise "act[s] upon" the registration application (i.e. by refusing registration).
The Supreme Court recognized the potential problems such an approach may cause for rights-holders looking to enforce the protection of their works, noting that the processing time for copyright registrations has "increased from one or two weeks in 1956 to many months today." However, Judge Ginsburg's opinion lamented that this problem is caused by staffing and budgetary shortages that only "Congress can alleviate" and "courts cannot cure," and does not change the fact that "the registration approach reflects the only satisfactory reading of [the Copyright Act]'s text."
The Copyright Office does provide an option for expedited processing in the event of, e.g., "pending or prospective litigation," but does not guarantee that such requests will be processed within the five-business-day timeframe referenced as a guideline on its website. Such "special handling" provides one potential avenue for rights-holders who perceive an emergent threat of infringement. The Fourth Estate holding also does not limit the ability of a plaintiff rights-holder to recover compensatory damages incurred both before and after the grant of registration for an infringed work.
However, rights-holders may no longer sue on the basis of a pending registration, and the additional time and expense of filing on an expedited basis (currently, the Copyright Office charges $800 per work for which "special handling" is requested) force such creators into a reactive, rather than pro-active position in the event of infringement. Artists, authors and other copyright holders would do well to consider avoiding these registration "emergencies" by routinely registering original works at the time of their first publication, or as soon as is practicable thereafter.
More About Pryor Cashman
Pryor Cashman's Copyright and Art Law practices are nationally renowned for their expertise, and can assist rights-holders with diverse copyright needs, ranging from initial registration (including through the development of a prioritized registration program) to the optimization and licensing of copyright assets and the strategic pursuit and resolution of infringement claims.
Learn more about our broader intellectual property capabilities here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.