By Debby Winters
In 2019 the Supreme Court held that a copyright infringement action may only be brought after the copyright is registered. Fourth Estate v. Wall-Street.com
The Copyright Act 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[.]” 17 U.S.C. § 411. Despite this straightforward language, federal courts were divided on the interpretation of “registration.”
The Fifth and Ninth Circuits had adopted an “application approach,” holding that a copyright owner needed only to file an application, deposit the work and pay the fees to the US Copyright Office before initiating an infringement suit. Meanwhile, the Tenth and Eleventh Circuits had adopted a “registration approach,” holding that a copyright owner may only bring an infringement suit after the US Copyright Office had registered the copyright.
The issue presented to the Supreme Court was whether “registration . . . has been made” when the copyright owner delivers the required application, deposit and fee to the US Copyright Office, or only once the US Copyright Office registers the copyright. Reviewing the language of Section 411, Justice Ginsburg explained that while an author has rights in their work immediately upon creation and may recover for infringements occurring both before and after registration, the copyright owner must register the work before filing an infringement action.
Since this decision was issued, lower courts have grappled with an issue not squarely addressed by the Supreme Court’s opinion: whether a copyright owner may amend its complaint to include works registered after the filing of the complaint. Courts in California and New York have held that Fourth Estate bars the addition of infringement claims relating to copyrighted material registered after the commencement of the lawsuit. See Izmo, Inc. v. Roadster, Inc., No. 18-CV-06092-NC (N.D. Cal. June 4, 2019); Malibu Media, LLC v. Doe, No. 18-cv-10956-JMF (S.D.N.Y. Apr. 2, 2019). Given the registration requirement and the refusal by courts to allow amendment of infringement claims based on subsequent registration, it is imperative that copyright owners timely seek registration of their works to ensure protection.