Supreme Court Ruling Abrogates Precedent Regarding Standing To Sue For Copyright Infringement

By Marc Whitfield
Partner, Taylor Porter

On March 4, 2019, the United States Supreme Court issued its decision in Fourth Estate Pub. Benefit Corp. v., LLC, 19 Cal. Daily Op. Serv. 1825, 2019 WL 1005829 (U.S. Mar. 4, 2019), therein concluding that “registration of a copyright claim occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright, not when a copyright owner submits the application, materials, and registration fee to the Copyright Office, abrogating Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612” and similar precedential rulings established under the United States Fifth Circuit Court of Appeal.

In its decision, the Supreme Court recognized that a conflict exists among the various circuits regarding when a “registration of the copyright has been made in accordance with this title” for purposes of 17 USC § 411 and its requirement that “registration” of copyright is required to initiate a claim for copyright infringement. Consistent with the arguments advanced on behalf of the plaintiff, Fourth Estate, some circuits (specifically including the United States Fifth Circuit Court of Appeal) have adopted the “application approach” to this provision, arguing that registration occurs when a copyright owner submits a proper application for registration to the Copyright Office. Other circuits have adopted the literal position advanced by the defendant, Wall-Street, advocating the “registration approach,” and urging that registration occurs only when the Copyright Office finally approves the registration of a copyright.

In recognition of this conflict, the Supreme Court explained:

  • [W]e granted Fourth Estate’s petition for certiorari to resolve a division among U.S. Courts of Appeals on when registration occurs in accordance with § 411(a). 585 U.S. ––––, 138 S.Ct. 2707, 201 L.Ed.2d 1095 (2018). Compare, e.g., 856 F.3d at 1341 (case below) (registration has been made under § 411(a) when the Register of Copyrights registers a copyright), with, e.g., Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 621 (C.A.9 2010) (registration has been made under § 411(a) when the copyright claimant’s “complete application” for registration is received by the Copyright Office).

After a thorough analysis of the respective arguments in favor of each interpretation of § 411(a), the Supreme Court adopted the “registration approach” concluding:

  • [W]e hold, in accord with the United States Court of Appeals for the Eleventh Circuit, that registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright.

The Supreme Court’s ruling in Fourth Estate effectively abrogates the Fifth Circuit’s long-standing precedent, adopting and endorsing the “application approach,” which was summarized in Starr v. DaimlerChrysler Corp., 2007 WL 3144852 *1 (5th Cir.2007), as follows:

  • “[N]o 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.” 17 U.S.C. § 411(a) (2005). Registration is a jurisdictional prerequisite to filing an infringement action. Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 816 (5th Cir.1997). This court does not require that a certificate from the Copyright Office be obtained before bringing suit, but it does require the plaintiff to have filed an application for registration with the Copyright Office prior to the infringement action. Lakedreams v. Taylor, 932 F.2d 1103, 1108 (5th Cir.1991).

See also: Levingston Corp. v. DeWayles Ltd. Int’l, CIV.A. 07-7169, 2008 WL 449843, at *1 (E.D. La. Feb. 13, 2008)(“Although courts in other circuits have held that a plaintiff must actually obtain a certificate from the U.S. Copyright Office before filing suit, the Fifth Circuit has interpreted § 411 to require only that a plaintiff files, and the Copyright Office receives, a copyright application, deposit, and fee before a plaintiff commences an infringement action.”)

After the Supreme Court’s decision in Fourth Estate, it is now clear that a plaintiff must obtain a copyright registration certificate to establish the plaintiff’s standing under 17 USC § 411 to assert a claim in Louisiana courts for copyright infringement.