Case No. 17-571, 11th Cir.
Preview by Michelle Divelbiss, Online Editor
On the second day of arguments in 2019, the Supreme Court will determine when the “registration of [a] copyright claim has been made.” 17 U.S.C. § 411(a) (2018). That is, does registration occur when the application, deposit, and fee are delivered to the Copyright Office or when the application is acted upon by the Copyright Office? The time of registration must be determined because “no civil action for infringement of the copyright . . . shall be instituted until preregistration or registration of the copyright claim has been made.” Id.
Petitioner Fourth Estate Public Benefit Corporation (“Fourth Estate”) is a news organization and Respondent Wall-Street.com (“Wall-Street”) had obtained a license for some of the written works produced by Fourth Estate journalists. The license stipulated that “if Wall-Street canceled its account with [Fourth Estate’s syndicate], Wall-Street was to ‘stop display of all [licensed material] . . . and permanently take down, remove and/or delete all . . . data.’” Brief for Petitioner at 15, Fourth Estate Public Benefit Corp. v. Wall-Street.com, No. 17-571 (U.S. filed Aug. 27, 2018). Wall-Street canceled its account but failed to take down or remove the licensed work. Fourth Estate subsequently filed its copyright application and sued Wall-Street. When Fourth Estate filed the complaint, the Copyright Office had not yet acted on the application.
The district court granted Wall-Street’s motion to dismiss because it found that registration had not yet occurred. On appeal, the Eleventh Circuit agreed because it found that “registration [is] a process that requires action by both the copyright owner and the Copyright Office.” Id. at 17 (quoting Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 856 F.3d 1338, 1341 (11th Cir. 2017)). Wall-Street argues that registration only occurs once the Copyright Office acts on the application because if “registration occurred as soon as an application was filed, then the [Copyright Office] would have no power to ‘refuse registration.’” Id. (quoting Fourth Estate, 856 F.3d at 1341). On the other hand, Fourth Estate argues that “the phrase ‘registration . . . has been made’ . . . refers to the actions of the copyright owner in submitting the deposit, application, and fee required for registration” and not to actions by the Copyright Office. Id. at 21 (quoting 17 U.S.C. § 411).
Although the Fifth and Ninth Circuits have held that registration occurs once the application, deposit, and fee are delivered, the Tenth and Eleventh Circuits have held that registration occurs only once the Copyright Office acts on the application.