Push Back the Scrimmage Line: Fourth Estate Public Benefit v. Wall Street.com

In Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, 586 U.S. __ (2019) [hereinafter ‘Fourth Estate’ and ‘Wall-Street’] the United States Supreme Court [hereinafter ‘the Court’] held that the United States copyright office [hereinafter ‘copyright office’] must affirmatively grant or deny registration to a work prior to a copyright infringement lawsuit by a claimant.  In so holding the Court resolved a split in the appellate circuits over whether the copyright office’s registration decision was a pre-requisite to commencing a lawsuit. The relevant statutory provision reads in part that a civil suit may commence “after registration has been made” and interpretation of this language was the focus of the litigation. See 1 7 U.S.C. 411(a).

In this case, the district court dismissed Fourth Estate’s copyright infringement lawsuit, because the copyright office had not yet acted upon its registration application for the disputed work. The United States Court of Appeals for the Eleventh Circuit affirmed for the same reasons. Before the Court, Fourth Estate contended that the passive voice of the disputed statutory language evidenced that no action by the copyright office was necessary. Fourth Estate further contended that other provisions of the Copyright Act supported its interpretation because some works do not require registration prior to a lawsuit.  Fourth Estate also asserted that section 411(a) explicitly allows a claimant to commence litigation even if the copyright office refuses registration, and therefore a copyright office decision is unnecessary. In response Wall-Street contended that a copyright office decision granting registration is not the condition precedent; rather the issue is whether the copyright office must either affirmatively either allow or deny registration prior to a lawsuit.  Wall-Street also distinguished Fourth Estates’ examples where registration was not necessary prior to commencing a lawsuit (movies and musical works), by characterizing them as statutory exceptions to section 411(a).

The Court agreed with Wall-Street and affirmed the Eleventh Circuit decision. In particular, the Court stated that the first two sentences of section 411(a) focused upon action by the copyright office.  It also concluded that the last sentence of section 411(a), and by which the copyright office may become a party to the lawsuit, would be unnecessary if a copyright office decision was not required. On this point the Court noted that Congress modified section 411(a) to address instances in which the copyright office refuses registration.  The modification provides notice of the lawsuit to the copyright office and allows a claimant to proceed with a lawsuit after this copyright office refusal.

The court further noted that other provisions of the copyright supported its interpretation of section 411(a). For example, the statutory pre-registration option would be unnecessary if a completed application without more comprised registration. 17 U.S.C. section 408(f).  Finally, the Court dismissed Fourth Estate’s contention that because rights automatically vest in copyrightable works, then these works should be protected in court without copyright office participation.  However, the Court concluded that although by statute ownership may spontaneously arise without the copyright office, protection of these rights requires a registration decision of the copyright office.

©2019 Adrienne B.  Naumann, Esq. Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress.com

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