Could This Copyright Case Ruling Impact Your Business?


The U.S. Supreme Court on March 4 issued its opinion in a case that deserves notice from broadcast media companies, their digital media partners, and marketers and advertisers doing business with radio and TV stations.

How so? It involves copyright law, and what the SCOTUS says could have a ripple effect on everything from branding your next station to a big money-making out-of-home event a competitor could “steal” right out from under you.

Arguments in Washington in FOURTH ESTATE PUBLIC BENEFIT CORP. v. WALLSTREET.COM, LLC, ET AL. began January 8.

It involves Fourth Estate, a news organization that licensed works to the respondent in this case,

Fourth Estate sued Wall-Street and its owner, Wall Street Media Co., for copyright infringement of news articles that it failed to remove from its website after canceling the parties’ license agreement.

It’s something a number of radio and TV station websites could get entangled with, given the level of third-party content often found on these online hubs.

Here’s the rub: Fourth Estate had filed applications to register the articles with the U.S. Copyright Office. But, the Register of Copyrights had not acted on those applications.

Title 17 U. S. C. §411(a) states 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.”

In plain English: If the work hasn’t yet been copyrighted, you cannot sue for copyright infringement.

But, can’t you? That’s what Fourth Estate argued, and failed to convince a U.S. District Court and, then on appeal, the Eleventh Circuit court. Each lower court held that registration of a copyright hasn’t been made until the Copyright Office acts.

As such, upon registration of the copyright, a copyright owner can recover for infringement that occurred both before and after registration.

But, in limited circumstances, copyright owners may file an infringement suit before undertaking registration. For example, the Supreme Court notes in its syllabus outlining its opinion, a copyright owner who is preparing to distribute a work of a type vulnerable to predistribution infringement—e.g., a movie or musical
composition—may apply to the Copyright Office for preregistration.

A copyright owner may also sue for infringement of a live broadcast before “registration . . . has been made.” This is a highly important subject for radio and TV companies.

“Outside of statutory exceptions not applicable here, however, §411(a) bars a copyright owner from suing for infringement until “registration … has been made,” the Supreme Court writes.

This is where Fourth Estate argued that, using an “application approach,” registration occurs when a copyright owner submits a proper application for registration.

Wall-Street advocates the “registration approach,” explaining that, in its view, registration occurs only when the Copyright Office grants registration of a copyright.

That’s what the lower courts ruled, and that’s what the Supreme Court upheld.

Justice Ruth Bader Ginsburg delivered the opinion for an unanimous Supreme Court.

“Fourth Estate’s contrary reading stems in part from its misapprehension of the significance of certain 1976 revisions to the Copyright Act,” Ginsburg wrote, speaking for all of the Justices.

What about the length of time it takes for registration to be had?

“True, registration processing times have increased from one to two weeks in 1956 to many months today,” Ginsburg states. “Delays, in large part, are the result of Copyright Office staffing and budgetary shortages that Congress can alleviate, but courts cannot cure. Unfortunate as the current administrative lag may be, that factor does not allow this Court to revise §411(a)’s Congressionally composed text.”

As J. Michael Keyes, an intellectual property attorney in the Palo Alto, Calif., office of law firm Dorsey & Whitney, sees it, the ruling will impact authors, artists, and content creators.

Keyes has extensive trial and litigation experience in cases involving trademarks, copyrights, unfair competition and false advertising. He has tried several cases in federal courts across the U.S. Of the decision, Keyes says the SCOTUS decision is significant in a number of respects.

“First, the structure of the Copyright Act encourages authors and content creators to register their works early,” Keyes says. “The Court’s decision reinforces the importance of early registration.”

Second, the practical effects of this decision likely means that some plaintiffs may be delayed in getting into court quickly.  “Copyright registration is a relatively straightforward process, but it can take several months for the Copyright Office to act on an application,” Keyes says, adding to Justice Ginsburg’s commentary. “So, unless the plaintiff wants to seek expedited registration and pay the expedited fee, it will take a while to get into court.”

Third, Keyes says, “I suspect that most plaintiffs that are serious about enforcing their rights in Federal court will not hesitate to pay the expedited fees to the Copyright Office (it is $1,000+ in fees).  Hopefully, the Office can use the influx of additional fees to improve the Office’s technological offerings!”