Supreme Court Decision May Significantly Delay the Filing of Copyright Infringement Suits

Posted on by Dana D. McDaniel in Intellectual Property and Information Technology

The Copyright Act contains incentives for copyright owners to register their works early. For example, in copyright infringement cases, statutory damages and attorneys' fees are available only with respect to works that were registered work at the time infringement began. In a decision issued today, the United States Supreme Court has resolved a split among federal circuit courts that establishes another incentive to register early, holding that a copyrighted work must be registered (or refused) by the Copyright Office before an infringement suit can be filed.1

Section 411 of the Copyright Act, provides that "no civil action for infringement of a copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title." The issue presented to the Supreme Court was whether the "registration . . . has been made" requirement is satisfied when the copyright owner files a copyright application (the application approach) or only after the Copyright Office has reviewed either registered or refused the copyright (the registration approach). The Supreme Court adopted the registration approach, holding that "registration occurs, and a copyright claimant may commence an infringement suit, [only] when the Copyright Office registers the copyright."2

So, what does this mean to you? Usually, when a copyright owner learns of an infringement, she wants to act quickly to enjoin the infringement and recover damages. However, under the Supreme Court's holding in Fourth-Estate, if she has not already registered the copyright when she learns of the infringement, she will have to apply for registration and wait until the Copyright Office either grants or refuses the application before she can take any court action. That process, according to the Court, currently averages seven months. Most copyright plaintiffs want immediate action, and a delay of 7-months or longer before they can even file suit, would be a viewed as a major disadvantage. And, while the copyright owner can recover pre-registration damages, in most cases she would not be able to obtain injunctive relief and, therefore, the infringement could continue during that delay.

The takeaway from the Fourth-Estate holding is that, once again, the Copyright Act encourages copyright owners to register their works early. In addition to the possibility of recovering statutory damages and attorneys' fees, early registration offers copyright owners immediate, or at least faster, access to courts to enforce the copyright. If your business considers copyrighted works (such as software, photographs, written works, videos, artwork) to be valuable assets that you would sue to enforce, and if you have not registered those works, now is the time to do so.

If you have questions about the copyright process, check out the helpful resources on the Copyright Office website,, or give us a call at (804) 697-2000.

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1 Fourth Estate Public Benefit Corp. v., No. 17-571.
2 The Supreme Court acknowledged certain specific statutory exceptions to this rule, but those exceptions do not apply to the typical copyright owner.

About the Author

Dana D. McDaniel is an intellectual property and commercial litigator with extensive experience representing clients in matters involving intellectual property issues, including patent infringement, trademark infringement, false advertising, unfair competition, copyright infringement, trade secret misappropriation, licensing disputes and technology contract disputes.

Spotts Fain publications are provided as an educational service and are not meant to be and should not be construed as legal advice. Readers with particular needs on specific issues should retain the services of competent counsel.