Supreme Court Decides Copyright Registration, Not Merely Application, Is Needed to Bring Infringement Action

After the Supreme Court’s recent decision in Fourth Estate Pub. Ben. Corp. v. Wall-Street.com, LLC, copyright holders should consider registering their copyrights early – before a need to sue arises.

Although a copyright holder gains exclusive rights immediately upon creation of a work of original authorship, under the Copyright Act one may only sue for infringement after “registration of the copyright.” 17 U.S.C. § 411(a). Lower courts have been split on exactly what “registration of the copyright” means: does “registration” occur when an author applies for copyright registration or only after the Copyright Office reviews the application and registers the copyright?

In Fourth Estate, a unanimous Supreme Court held that it means the latter. Registration has been made under 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.”

The Supreme Court noted in Fourth Estate, that “the average processing time for registration applications is currently seven months.” The decision highlights the importance of implementing an appropriate copyright application process, so that your company’s work product can be protected on a timely basis.

In another copyright decision issued on the same day, a unanimous Supreme Court held that the prevailing party in a copyright infringement case is entitled only to six specific categories of “costs” (as outlined in 28 U.S.C. §§ 1821, 1920), despite the Copyright Act’s language awarding “full costs” to the prevailing party. Rimini St., Inc. v. Oracle USA, Inc.. The cost categories available for recovery include the following: fees of the clerk and marshal; transcripts necessary for use in the case; printing and witnesses; making copies of materials necessary for use in the case; docket fees and compensation of court appointed experts and interpreters; and special interpretation services.

If your company creates software or other works of authorship, these Supreme Court decisions illustrate the necessity of having an efficient copyright application process in place.