Supreme Court Requires Actual Copyright Registration To Sue

By Louis Bonham

Resolving a circuit split, the Supreme Court on March 4, 2019, unanimously held that the Copyright Office must have issued a registration on a work for the copyright owner to sue for its infringement.

The question before the Court in Fourth Estate Public Benefits Corp. v. Wall Street.com was whether a copyright owner may file suit as long as it has submitted all the registration materials for the work in question to the Copyright Office, or whether the Copyright Office must have acted on the application.  (The former approach is known as the Apple Barrel rule, after a Fifth Circuit case that adopted it.)   The Fifth and Ninth Circuits had adopted the Apple Barrel rule, but the Tenth and Eleventh Circuit rejected it.

A unanimous Supreme Court rejected Apple Barrel, ruling that the Copyright Office must have acted on the registration application and issued a certificate for the copyright owner to be able to sue for infringement.  The Court reiterated current law that such a lawsuit can recover for both pre- and post-registration acts of infringement.  It recognized that the Copyright Office can be painfully slow in acting on registrations, but said that was a problem for Congress to fix (either by changing the law or giving the Copyright Office greater resources).

Under Apple Barrel, copyright owners could bring suit quickly and economically by simply sending in all the required materials before filing suit.   Under the new Supreme Court opinion, however, if a copyright owner discovers infringement and needs to file suit quickly (e.g., to obtain injunctive relief or to avoid the running of the statute of limitations), then if it has not previously obtained registration it will have to use the expensive Special Handling procedure at the Copyright Office to expedite the registration process.

The Supreme Court’s ruling also brings into sharp focus the advantages of a business having processes in place to register its copyrights on a regular basis, rather than doing so only after learning of infringement.