Robert J. Bernstein and Robert W. Clarida

Earlier this month, in what might be viewed as the speed of light when measuring time between oral argument and decision, the U.S. Supreme Court issued two unanimous opinions construing provisions of the Copyright Act relating to procedural requirements for commencing infringement actions and interpreting the term “full costs” in awarding them to the prevailing party. This article will focus on the former, Fourth Estate Public Benefit v., et al., No. 17-571, 2019 WL 1005829, ___ U.S. ___ (2019) (Fourth Estate).

The Supreme Court granted certiorari in Fourth Estate to resolve a split in the Circuit Courts as to whether §411(a) of the U.S. Copyright Act (the Act) could be read to allow commencement of an infringement action once an application to register a copyright with the U.S. Copyright Office is complete (the “application approach”), or, instead, only (subject to limited statutorily specified exceptions) upon issuance of the registration (the “registration approach”). Despite the split in the circuits and the various policy arguments marshaled in favor of the application approach, Justice Ruth Bader Ginsburg, writing for the court, considered the registration approach to be mandated both by the explicit language of §411(a) and by statutory exceptions which proved the general rule. Moreover, to the extent that proponents of the application approach argued for its adoption to overcome delays in application processing times, the court referred their plea to Congress, which could reduce processing delays through increased funding of the Copyright Office.

The Statutory Scheme

The registration requirement is set forth in the first sentence of §411(a), which provides that “no civil action for infringement of the copyright in any United States work shall be instituted until … registration of the copyright claim has been made in accordance with this title.” An exception to that requirement is set forth in the second sentence of §411(a), which states: “In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.” The third sentence of §411(a) permits the Register “at his or her option, [to] become a party to the action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, … .”

Other exceptions to the registration requirement are provided in §408(f) and the regulations thereunder, which permit commencement of an infringement action based upon preregistration of certain types of works before distribution, provided that actual registration is made soon after publication. The statutory provisions and regulations pertaining to preregistration are summarized by Justice Ginsburg as follows:

In limited circumstances, copyright owners may file an infringement suit before undertaking registration. If a copyright owner is preparing to distribute a work of a type vulnerable to predistribution infringement—notably, a movie or musical composition—the owner may apply for preregistration. §408(f)(2); 37 CFR §202.16(b)(1) (2018). The Copyright Office will “conduct a limited review” of the application and notify the claimant “[u]pon completion of the preregistration.” §202.16(c)(7), (c)(10). Once “preregistration … has been made,” the copyright claimant may institute a suit for infringement. 17 U.S.C. §411(a). Preregistration, however, serves only as “a preliminary step prior to a full registration.” Preregistration of Certain Unpublished Copyright Claims, 70 Fed. Reg. 42286 (2005). An infringement suit brought in reliance on preregistration risks dismissal unless the copyright owner applies for registration promptly after the preregistered work’s publication or infringement. §408(f)(3)-(4).” A copyright owner may also sue for infringement of a live broadcast before “registration … has been made,” but faces dismissal of her suit if she fails to “make registration for the work” within three months of its first transmission. §411(c). Even in these exceptional scenarios, then, the copyright owner must eventually pursue registration in order to maintain a suit for infringement.

Fourth Estate, 2019 WL 1005829, at *3.

Although the role of the Copyright Office in reviewing applications is limited, and the originality requirement for copyright protection is minimal, neither is non-existent. The Register’s responsibilities in examining applications for registration and in issuing (or denying) registration certificates are set forth in sections 410(a) and (b) of the Act:

(a) When, after examination, the Register of Copyrights determines that, in accordance with the provisions of this title, the material deposited constitutes copyrightable subject matter and that the other legal and formal requirements of this title have been met, the Register shall register the claim and issue to the applicant a certificate of registration under the seal of the Copyright Office. The certificate shall contain the information given in the application, together with the number and effective date of the registration.

(b) In any case in which the Register of Copyrights determines that, in accordance with the provisions of this title, the material deposited does not constitute copyrightable subject matter or that the claim is invalid for any other reason, the Register shall refuse registration and shall notify the applicant in writing of the reasons for such refusal. Thus, the statute clearly contemplates some review by the Register, and anticipates that some applications will not be entitled to registration, whether, for example, due to a lack of any originality in the claimed work; a failure to provide a proper deposit copy; or a defect in completing the application form, such as, in the case of a derivative work, a failure to specify the pre-existing material on which the claimed derivative work is based.

Justice Ginsburg’s Opinion

Although a reasonable reader might have inferred from the first sentence of §411(a) that an actual copyright registration had to be issued by the Copyright Office before an infringement action could be commenced, the appellant in Fourth Estate argued that completion of the application, providing the deposit copy and paying the application fee should collectively be deemed the equivalent of “registration” for this purpose. In support of this argument, appellant cited decisions of the Ninth Circuit, Cosmetic Ideas v. IAC/Interactivecorp., 606 F.3d 612, 621 (9th Cir. 2010), and the Fifth Circuit, Positive Black Talk v. Cash Money Records, 394 F.3d 357, 365 (5th Cir. 2004). On the other side of the split, the Eleventh and Tenth Circuits required actual registration.

Notwithstanding the contrary opinions in the Fifth and Ninth Circuits, Justice Ginsburg considered the application approach to require a tortured and unsupportable reading of the statutory language and scheme. Although the language of the first sentence of §411(a) is arguably clear enough to end the discussion, Justice Ginsburg nevertheless examined that sentence in comparison with the second and third sentences of 411(a) and the entire statutory scheme for registration and preregistration, which, together, compelled the conclusion that actual registration must generally precede commencement of the infringement action. In particular, she considered the exceptions for applications that were refused registration, and for preregistration of cinematic and musical works prone to pre-distribution infringement and live broadcasts, to confirm the general registration requirement, reasoning that there would be no need for these specific exceptions if a civil action could generally be commenced upon mere application.

Justice Ginsburg also rejected the arguments for the application approach based upon harm to a copyright owner’s rights caused by undue delay in the processing of registration applications in the Copyright Office. For example, appellant argued that an applicant’s claim could become barred by the statute of limitations during the several months it was awaiting action on its application. Justice Ginsburg viewed this concern as “overstated, as the average processing time for registration applications is currently seven months, leaving ample time to sue after the Register’s decision, even for infringement that began before submission of an application.” Fourth Estate, 2019 WL 1005829, at *7. The Court also observed in a footnote, id. n.6, that expedited registration may be obtained within a matter of days, in connection with prospective litigation, upon payment of an additional filing fee.


In view of the clarity of the statutory language and scheme, Justice Ginsburg considered appellant’s policy arguments and concerns to be for consideration by Congress and beyond the capacity of courts to cure. Thus, as an aside, she observed that Congress could alleviate some of the backlog of pending applications through increased funding for the Copyright Office. However, increased processing times may not be around the corner, as for the foreseeable future members of the House Committee on the Judiciary (whose responsibilities include Copyright Office oversight) are otherwise occupied overseeing the Executive Branch. In any event, henceforth, copyright plaintiffs throughout the land must obtain a registration or preregister their works in order to commence infringement actions.

Robert J. Bernstein practices law in The Law Office of Robert J. Bernstein. Robert W. Clarida is a partner at Reitler, Kailas & Rosenblatt and the author of the treatise Copyright Law Deskbook (BNA).