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December 13, 2018 | By S&H
Posted in: S&H IP Blog | U.S. Supreme Court

Fourth Estate Public Benefit Corp. v.

            On June 28, 2018, the U.S. Supreme Court (“Supreme Court”) granted certiorari to Fourth Estate Public Benefit Corp. v. The question before the Supreme Court is whether, under 17 U.S.C. § 411(a) of the Copyright Act, a copyright owner can bring an infringement suit after delivering the proper deposit, application, and fee to the U.S. Copyright Office (“Copyright Office”), but before the Register of Copyrights has acted on the application for registration.


            Fourth Estate Public Benefit Corp. (“Fourth Estate”) is an independent news organization that licenses its journalism to online news outlets. (“Wall-Street”), an online news source, obtained licenses to publish several of Fourth Estate”™s news articles. However, after the licenses expired, Wall-Street continued to publish Fourth Estate”™s articles. Fourth Estate, after discovering Wall-Street”™s further use of the articles, filed several applications to obtain copyright registrations for the previously licensed works. Immediately after, Fourth Estate sued Wall-Street for copyright infringement in the district court. In district court, Wall-Street moved to dismiss, arguing § 411(a) bars Fourth Estate from suing until after the Register of Copyrights acts on its application. 


  • 411(a) provides that, no civil action for infringement of the copyright in any United States work shall be instituted until either registration of the copyright claim has been made, or the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused.


            At the time of filing the infringement suit in district court, U.S. Court of Appeals circuits were split between the “registration” and “application” interpretations of § 411(a). Under the “registration” interpretation, a plaintiff is required to have either an issued copyright or a rejected trademark application to maintain an infringement action. Alternatively, under the “application” interpretation, a plaintiff only needs to have properly filed for a trademark to maintain an infringement action. The district court, in agreement with Wall-Street, adopted the registration approach and dismissed the case. Subsequently, Fourth Estate appealed to the U.S. Court of Appeals for the Eleventh Circuit (“Eleventh Circuit”).

On appeal, the Eleventh Circuit analyzed the text of the Copyright Act to determine which interpretation was correct. The circuit court first turned to the text of § 410(a) of the Copyright Act and found that an application alone was insufficient for registration. Specifically, the Eleventh Circuit noted that § 411(a) makes it clear that the registration only occurs “after examination,” which is later in time than the filing of the application. Furthermore, the Eleventh Circuit concluded that simply filing an application does not constitute registration under § 410(a) because registration requires action from both the copyright owner and the Copyright Office. The Eleventh Circuit reasoned that, if registration occurs at the time of filing an application, the Copyright Office would not have the power to refuse registration as granted by § 411(a). 


            Additionally, the Eleventh Circuit rejected all of Fourth Estate”™s policy arguments because the statutory language of the Copyright Act was clear and unambiguous. Ultimately, the Eleventh Circuit affirmed the district court”™s decision, and adopted the “registration” interpretation of § 411(a). Subsequently, Fourth Estate filed a petition for certiorari to the Supreme Court.


            By granting certiorari to this issue, the Supreme Court will decide which § 411(a) interpretation is correct. Currently, under the jurisdictions that follow the “registration” interpretation, the best method for a copyright holder without a registration to sue for infringement is to use the Copyright Office”™s Special Handling program to expedite the registration process for $800. However, if the Supreme Court adopts the “application” interpretation, a copyright holder without a registration can file an infringement case as soon as an application is filed.  All copyright holders without a registration should pay attention to this case as it will determine the process for filing and maintaining a copyright infringement suit.


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