This week, the U.S. Supreme Court agreed to review a case that may resolve a difference of opinion about whether registration of a copyright — or whether only an application for registration — is required to bring suit under the U.S. Copyright Act.
There is no question that, at a minimum, an application for registration is required to bring suit under the U.S. Copyright Act. Section 411(a) of the Copyright Act states that “no action for infringement of the Copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” The Act also permits copyright actions relating to applications that are refused by the Copyright Office. However, courts are split as to whether Section 411(a) permits a copyright action before the Copyright Office has acted on an application.
In the Second Circuit case that is the subject of the appeal, several freelance writers authored various articles and licensed the articles to print media publishers such as the New York Times. The writers retained copyright in the articles. The writers sued online database services (such as the operator of Westlaw) and others based on their inclusion of the articles in the online database services. The authors claimed that their license agreements did not permit the services to distribute the articles online or in any form other than in print. The authors based their claim on the Supreme Court’s 2001 decision in New York Times Co. v. Tasini, which held that publishers may not electronically reproduce freelance works when the lack specific authorization to do so.
In the lower court case, some of the plaintiffs’ copyrights were registered. Others were subject to applications awaiting registration; others were not even included in an application for registration. The Second Circuit held that it had subject matter jurisdiction only over those works for which the copyright registration was granted.
Some courts, such as the U.S. Court of Appeals for the 5th Circuit, have held that, for the purposes of Section 411(a), copyright registration occurs when the application is filed. Others, including the 11th Circuit and the 2nd Circuit, have held that registration does not occur until the Copyright Office issues the registration certificate. The difference is significant because it can take months for the Copyright Office to act an application for registration, but a copyright owner may want to file suit immediately to stop acts of infringement.
The issues raised on appeal included questions relating to the courts’ authority to take certain actions settlement agreements. However, when granting certiorari on March 3, 2009, the Supreme Court limited its review to the question: “Does 17 U.S.C. 411(a) restrict the subject matter jurisdiction of the fedeal courts over copyright infringement actions.”
The Court’s decision will likely help copyright owners better understand the actions required for before initiating an action for infringement under the Copyright Act.