Presented by John Goodhue
In a unanimous opinion by Justice Ginsburg, the Supreme Court held that under 17 U.S.C. Section 411(a), 'registration ... has been made' — and a copyright owner may file an infringement suit — only when the Copyright Office acts on the application by registering the copyright or refusing registration, not when the owner merely submits the application, deposit, and fee. The Court adopted the registration approach and rejected the application approach, reasoning that the statute's refusal clause (which permits suit after the Office denies registration) would be superfluous if a pending application sufficed. Delays caused by the Office's processing backlog are a matter for Congress; a copyright owner who waits for registration may still recover for infringement that occurred before it.
Fourth Estate Public Benefit Corp. v. Wall-Street.com, decided March 4th, 2019. A unanimous Supreme Court, in an opinion by Justice Ginsburg, affirmed the Eleventh Circuit and held that under section 411(a) of the Copyright Act, registration of a copyright claim is made — and a copyright owner may begin an infringement suit — only when the Copyright Office acts on the application, not when the owner merely files it. Here's the brief.
Fourth Estate Public Benefit Corporation is a news organization that produces online journalism. It licensed articles to Wall-Street.com, a news website. The license required Wall-Street to take down all of Fourth Estate's content before canceling the agreement. Wall-Street canceled but kept displaying the articles. Fourth Estate sued Wall-Street and its owner, Jerrold Burden, for copyright infringement.
Fourth Estate had filed applications to register the articles with the Copyright Office, but the Register of Copyrights had not acted on them. On the defendants' motion, the District Court dismissed the complaint, and the Eleventh Circuit affirmed, holding that registration has not been made under section 411(a) until the Copyright Office registers a copyright. After that ruling, the Register in fact refused registration of the articles — though the merits of that refusal were not before the Court.
The Court granted cert to resolve a division among the courts of appeals: the Eleventh Circuit's registration approach against the Ninth Circuit's view, in Cosmetic Ideas, that registration is made when the Office receives a complete application.
The question was narrow and textual. Section 411(a) provides that no civil infringement action for a United States work may be instituted until registration of the copyright claim has been made. All parties agreed the provision barred suit until registration; they disputed only when registration occurs — when the claimant delivers the application, deposit, and fee to the Copyright Office, the application approach; or only after the Office reviews the claim and registers it, the registration approach.
Two neighboring provisions framed the reading. Section 411(a)'s own second sentence lets an owner sue once the required materials have been delivered and registration has been refused. And section 410 directs the Register, after examination, either to register the claim and issue a certificate, or to refuse registration.
The Court held that registration is made when the Copyright Office registers a copyright. Read together, Justice Ginsburg wrote, section 411(a)'s opening sentences focus not on the claimant's act of applying, but on action by the Copyright Office — its registration or refusal of a claim.
The refusal clause was the key. If merely applying sufficed to make registration, the second sentence — which lets an owner sue after the Office refuses — would be superfluous. It would make no sense to authorize suit upon refusal if the owner could already sue the moment she applied. Giving "registration" one meaning in the first sentence and a different meaning in the next, the Court added, would be an implausible construction of a single provision.
The structure confirmed it. Section 410 treats application as discrete from, and preceding, registration, and section 408(f)'s preregistration option would have little use if a completed application already counted as registration.
The Court acknowledged the practical concern: processing times have grown from a week or two in the 1950s to many months. But it framed delay as a matter of Copyright Office staffing and budget for Congress to address — not a license for the Court to rewrite the statute. It noted the limited safety valves Congress did provide: preregistration for works vulnerable to predistribution infringement, and a narrow exception for live broadcasts. And it emphasized that once the Office acts, an owner may still recover for infringement that occurred both before and after registration.
Fourth Estate settled a longstanding split and adopted the registration approach: a copyright claimant generally must obtain the Copyright Office's action — registration or refusal — before filing suit. Filing the application is not enough. The decision does not shrink the owner's substantive rights; those attach on creation, and once the Office acts the owner can sue for, and recover on, infringement that occurred both before and after registration. What Fourth Estate resolved was timing — the administrative step a claimant must complete before a federal court may hear the claim.
Fourth Estate Public Benefit Corp. v. Wall-Street.com, 586 U.S. 296, decided March 4th, 2019. I'm John Goodhue. Thanks for watching.
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