The U.S. Supreme Court sounded inclined Tuesday to resolve a circuit split over copyright registration procedures against copyright holders.
Four justices suggested that the text of the Copyright Act requires holders to formally obtain registration from the Copyright Office before proceeding with infringement suits.
Only Justice Neil Gorsuch seemed more focused on the problems such an interpretation would create for copyright holders pursuing claims against infringers. Copyright holders argue that once they’ve filed their application and paid the fee they should be cleared to sue, instead of being forced to wait up to 15 months for the Copyright Office to act.
“Do you drive without a driver’s license when yours has expired because you wrote in to the registry of motor vehicles but they haven’t yet licensed you?” Justice Stephen Breyer asked Aaron Panner, who represents copyright holder Fourth Estate Public Benefit Corp. Breyer said he couldn’t think of something “roughly comparable and the statute is interpreted the way you want.”
Panner, a partner at Kellogg, Hansen, Todd, Figel & Frederick, argued that a college student who has signed up for a class has “made his registration, he’s registered for the class,” even though the school’s registrar might later say the class is full.
Tuesday’s debate in Fourth Estate Public Benefit v. Wall-Street.com was somewhat wonky, but the stakes are significant. Amicus groups such as the National Music Publishers’ Association claim that being put on hold while a work is distributed all over the internet can have “a devastating effect” on copyright holders.
Petitioner Fourth Estate Public Benefit Corp., an online news producer, sued Wall-Street.com when it refused to remove Fourth Estate articles after its license had expired. Fourth Estate had registered the articles with the U.S. Copyright Office but the office had not yet acted on the applications. The U.S. Court of Appeals with the Eleventh Circuit sided with Wall-Street.com. The Fifth and Ninth circuits have said you can sue once you’ve applied and paid the fees. The Tenth Circuit agrees with the Eleventh that plaintiffs must wait until the Copyright Office acts, which according to Panner takes an average of seven months and as many as 15.
The problem for Fourth Estate is the text of Section 411(a) of the Copyright Act, which states that a suit shall not be instituted “until preregistration or registration of the copyright claim has been made in accordance with this title,” or after “registration has been refused.”
Justice Elena Kagan said the phrase “registration has been refused” clearly refers to the Copyright Office’s Register, not the holder. “And so it seems, you know, the only way to read this is that the ‘registration has been made’ is by the Register too,” she told Panner.
Justices Sonia Sotomayor and Brett Kavanaugh and Chief Justice John Roberts also seemed to agree, though Roberts said equally compelling arguments could be made for copyright holders based on other parts of the statute.
Justices Samuel Alito and Clarence Thomas didn’t ask any questions, and Justice Ruth Bader Ginsburg was absent from argument recovering from surgery.
Polsinelli partner Fabio Marino, who’s not involved in the case, said that from reading the transcript he believes Wall-Street.com is in a strong position. He said Wall-Street.com attorney Peter Stris of Stris & Maher and Jonathan Ellis of the Solicitor General’s Office effectively addressed the justices’ primary concern with the textual argument—that Congress could not have anticipated in 1976 the speed with which content travels over the internet today.
Stris and Ellis pointed to newer laws such as the takedown provision of the Digital Millennium Copyright Act, and a pre-registration procedure that copyright owners can use to protect new works they expect to be infringed. “They did a good job of making the point that there are other provisions of the law” that apply to the justices’ concerns, Marino said.
But most of all Stris emphasized the statutory text. “I certainly don’t want to suggest that the policy arguments for the alternative are terrible,” Stris said. “They could be defended. Many people in this room may think that they’re right. But they’re beside the point when the case is about what Congress meant in enacting this particular statutory language.”