United States: One Slip Up Can Cost You The Case: The Impact Of The Supreme Court's Decision On Copyright Infringement Actions

Last Updated: April 16 2019
Article by John L. Krieger

There are any number of reasons a lawsuit could be dismissed. However, if you are a copyright owner, the last thing you want is to have your case dismissed because of a problem with your registration. Unfortunately, the United States Supreme Court recently held that a copyright owner must have a decision from the Copyright Office on an application before filing a lawsuit for copyright infringement. The decision put to rest a long-standing circuit split regarding the "registration" requirement under the Copyright Act.

Fourth Estate Public Benefit Corp v. Wall-Street.com

In Fourth Estate Public Benefit Corp. v. Wall-Street.com, Fourth Estate sued Wall-Street.com for copyright infringement after Wall-Street failed to remove articles from its website following the cancellation of a licensing agreement. When it filed the suit, Fourth Estate had applications on the news articles at issue pending with the Copyright Office, but the Register of Copyrights had not yet issued decisions on the applications. Fourth Estate's position, supported by groups such as the Authors Guild and much of the music industry, was that it had standing to file copyright infringement because the applications had been filed, adopting the "application approach" favored by the Ninth Circuit. Wall-Street argued, on the other hand, that a "registration approach (e.g., requiring a copyright owner to wait to file suit until after a decision in rendered on an application) was required under the law, and the Supreme Court agreed.

The Supreme Court has now held that a copyright owner may only file a lawsuit for copyright infringement after complying with § 411(a)'s "registration" requirement. The "registration" requirement is met when the Copyright Office has either: (1) registered the copyright; or (2) refused the copyright. Under § 411(a), an applicant who is refused may still institute a lawsuit for infringement, but the Register of Copyrights must be served with a copy of the complaint, and the office may opt to become a party to the action regarding the registrability of the copyright.

The Implication of the Decision

With this decision, it is imperative that copyright owners comply with the registration requirements of the Copyright Act promptly. Registrations can take as long as seven (7) months to issue, although, for a rather exorbitant fee, an applicant can "expedite" the application. However, applications for registration should not be filed without careful thought being paid to the a number of aspects that can also pose problems for copyright owners seeking to enforce their rights (e.g., authorship, assignments, works for hire, scope of rights claimed, excluded work, etc.). Moreover, failure to comply with the Copyright Act's strict timing requirements can result in a loss of an ability to recover statutory damages and attorneys' fees. Vigilance and accuracy are key.

One exception to the "registration" requirement that is available to works considered vulnerable to predistribution is "preregistration." A work is eligible for preregistration if it is both unpublished and in the process of being prepared for commercial distribution in either a physical or digital format, namely: (1) motion pictures; (2) sound recordings; (3) musical compositions; (4) literary works being prepared for publication in book form; (5) computer programs (can include videogames); and (6) advertising or marketing photos. However, to preserve the legal benefits of preregistration, the work must still be registered within one month after the copyright owner becomes aware of infringement, and no later than three months after the work's first publication. Provided the copyright owner has timely filed a preregistration application, an action for infringement will not be dismissed for lack of a registration.

Another "exception" to the registration requirement is one that confers an immediate right to sue for infringement of live broadcasts. Section 411(c)'s narrow exception allows the copyright author of a live broadcast to file an infringement action before applying for registration, and even before the broadcast has been fixed in a tangible medium. Furthermore, statutory damages and attorneys' fees may also be sought in such a situation, even though the claim is filed prior to the effective date of the work's registration. However, the copyright owner must have filed for the work within three months of the work's first transmission or lose these protections.

So long as a copyright owner has applied for registration and received a decision from the Copyright Office, the owner may recover damages for the past infringement, as well as the infringer's profits, assuming the three-year statute of limitations has been met. The copyright owner may also seek to obtain an injunction barring the infringer from continuing to violate any of the exclusive rights, and an order requiring the infringer to destroy infringing materials. And, presuming the application was filed in a timely manner, seek statutory damages and attorney's fees.


Notwithstanding the exceptions that allow a copyright owner to file an action for infringement without a registration, those exceptions do not allow the copyright owner to avoid registration entirely. Based upon the Supreme Court's decision in Fourth Estate, copyright owners should apply for and obtain registrations for their works as soon as practicable without delay. Otherwise, they will not be able to pursue an immediate action against an infringer and will have to wait until a registration is issued, possibly losing valuable time and revenue in the process.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Practice Guides
by Mondaq Advice Centers
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions