{"id":7270,"date":"2019-03-07T16:57:25","date_gmt":"2019-03-07T16:57:25","guid":{"rendered":"https:\/\/cpip.gmu.edu\/?p=7270"},"modified":"2026-02-10T20:14:35","modified_gmt":"2026-02-10T20:14:35","slug":"how-the-supreme-court-made-it-harder-for-copyright-owners-to-protect-their-rights-and-why-congress-should-fix-it","status":"publish","type":"post","link":"https:\/\/blogs.uakron.edu\/ualawip\/2019\/03\/07\/how-the-supreme-court-made-it-harder-for-copyright-owners-to-protect-their-rights-and-why-congress-should-fix-it\/","title":{"rendered":"[Archived Post] How the Supreme Court Made it Harder for Copyright Owners to Protect Their Rights\u2014And Why Congress Should Fix It"},"content":{"rendered":"

Earlier this week, the Supreme Court handed down its <\/span>decision<\/a> in <\/span>Fourth Estate v. Wall-Street.com<\/em><\/a>, a case examining the registration precondition to filing a suit for copyright infringement in the federal district courts. While I agree with the Court\u2019s exegesis of the statute at issue, it\u2019s worth noting how the Court\u2019s construction leaves many, if not most, copyright owners in the lurch. Under the Court\u2019s holding, in fact, this very blog post could be infringed today, and there\u2019s very little that could be done to stop it for many months to come. As the Court <\/span>noted<\/a> in <\/span>Harper & Row v. Nation<\/em>, \u201ccopyright supplies the economic incentive to create and disseminate ideas.\u201d The Court\u2019s holding in <\/span>Fourth Estate<\/em>, by contrast, disincentivizes dissemination since it undermines effective copyright protection and prejudices the public interest in the production of, and access to, creative works. Again, I don\u2019t blame the Court for this outcome\u2014in fact, I think it\u2019s correct. The problem, as I\u2019ll explain, lies in the unfortunate fact that nowadays it takes too long to register a copyright claim. And that\u2019s something that Congress needs to fix.<\/span><\/p>\n

The issue in Fourth Estate<\/em> is straightforward. Under the first sentence of Section 411(a)<\/a> of the Copyright Act, \u201cno civil 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.\u201d Some courts, like the Ninth Circuit<\/a>, have applied the so-called \u201capplication approach,\u201d finding that \u201cregistration . . . has been made\u201d when the copyright owner delivers a complete application to the Copyright Office. Other courts, like the Tenth Circuit<\/a>, have applied the so-called \u201cregistration approach,\u201d where \u201cregistration\u201d is not \u201cmade\u201d until the Register of Copyrights has acted upon the application (by either approving or rejecting it). Confounding the analysis is the fact that other sections of the Copyright Act alternatively delineate registration as something done by the applicant or by the Copyright Office.<\/p>\n

In the decision below, the Eleventh Circuit applied<\/a> the registration approach, affirming the district court\u2019s dismissal of Fourth Estate\u2019s complaint since the Register of Copyrights had not yet approved or denied its application to register. The Supreme Court, in a unanimous decision<\/a> by Justice Ginsburg, affirmed: \u201cWe hold . . . that registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright.\u201d The issue for the Court was one of pure statutory construction, and the problem for proponents of the application approach is that the second sentence of Section 411(a) clearly indicates that registration is something done by the Copyright Office. It provides, as an exception to the first sentence, that a copyright owner can nevertheless sue for infringement once the application materials \u201chave been delivered to the Copyright Office in proper form and registration has been refused.\u201d<\/p>\n

Justice Ginsburg reasoned: \u201cIf application alone sufficed to \u2018ma[ke]\u2019 registration, \u00a7 411(a)\u2019s second sentence\u2014allowing suit upon refusal of registration\u2014would be superfluous.\u201d I\u2019ve always found this to be the better argument, and I\u2019m not surprised to see it front-and-center in the Court\u2019s analysis. Why would applicants need an exception that turns on the subsequent action of the Copyright Office if merely delivering a completed application sufficed? As Justice Ginsburg noted, the application approach \u201crequires the implausible assumption that Congress gave \u2018registration\u2019 different meanings in consecutive, related sentences within a single statutory provision.\u201d I think the Court got this one exactly right, and I don\u2019t find arguments to the contrary to be particularly persuasive.<\/p>\n

That said, let me now explain why it\u2019s wrong\u2014well, at least why it\u2019s bad for millions of copyright owners and why Congress should fix it ASAP.<\/p>\n

The purpose of the registration approach and other similar provisions in the Copyright Act (such as the availability<\/a> of statutory damages or attorney\u2019s fees) is to incentivize timely registration, which is no longer a prerequisite to copyright protection as it was under the Copyright Act of 1909. Under the current Copyright Act, copyright protection nominally exists<\/a> once a work is fixed in a tangible medium of expression, and registration is no longer mandatory. (I say \u201cnominally\u201d because the Court\u2019s holding in Fourth Estate<\/em> ensures that, as a practical matter, countless works with respect to which copyright owners have exclusive rights<\/a> on paper in fact have no immediate rights in the real world since they can\u2019t actually file suit to quickly stop any ongoing infringement.) However, the incentive-to-register theory makes little sense in the context of the debate over the proper interpretation of Section 411(a) itself as the works being sued upon must be registered under both the application and registration approaches.<\/p>\n

With due respect to the Copyright Office, processing a registration application is primarily a ministerial act. The vast majority of applications are granted\u201497% in 2017 according to the latest available data<\/a> from the Copyright Office (though 29% of those applications required correspondence with the applicant). Are we really withholding remedies for all copyright owners because of the remaining 3%? And even for the 3% of applications that are denied, the copyright owner can still sue for infringement, asking the district court to reassess the agency\u2019s refusal. No matter what the Copyright Office does with the application, whether it grants or denies, the copyright owner ultimately can sue. And, under the third sentence of Section 411(a), the Register of Copyrights can even \u201cbecome a party to the action with respect to the issue of registrability of the copyright claim.\u201d So it\u2019s not like the Register can\u2019t have a say should the application be in that slim minority of questionable ones that may merit intervention.<\/p>\n

To its credit, the Supreme Court acknowledged that its holding would cause problems for copyright owners\u2014but it also overplayed the exceptions to the registration approach that Congress put in place to alleviate some of these issues. For example, Justice Ginsburg pointed out that Section 408(f)<\/a> empowers the Register of Copyrights to establish regulations<\/a> for the preregistration of certain categories of works. Under this regime, as Justice Ginsburg noted, \u201cCongress provided that owners of works especially susceptible to prepublication infringement should be allowed to institute suit before the Register has granted or refused registration.\u201d That\u2019s great for that particular subset of copyright owners, but what about everyone else? And what about authors who publish their works just as soon as they create them? Moreover, Justice Ginsburg\u2019s blithe comment that copyright owners \u201cmay eventually recover damages for the past infringement\u201d ignores the fact that injunctive relief to stop the actual, ongoing infringement is unavailable until the registration is processed by the Copyright Office.<\/p>\n

The Court laments such policy ramifications: \u201cTrue, the statutory scheme has not worked as Congress likely envisioned. Registration processing times have increased from one or two weeks in 1956 to many months today.\u201d And this gets to the heart of the problem: The time it takes the Copyright Office to process an application has significantly increased over the years. Just four years after the Copyright Act of 1976 went into effect, the delay<\/a> was \u201c5 to 6 weeks.\u201d And, as of October 2018, the delay<\/a> has grown to an \u201caverage processing time for all claims\u201d of \u201c7 months.\u201d Indeed, the fastest the Copyright Office processes an application now is one month, and the longest it takes is an incredible 37 months. The following illustration<\/a> from the Copyright Office breaks this down with more particularity:<\/p>\n

\"Chart<\/p>\n

To be clear, I don\u2019t think these delays are the Copyright Office\u2019s fault. In fact, I think it\u2019s Congress\u2019s fault for not giving the agency more resources to do the very things that Congress requires it to do. Regardless, the fact remains that even copyright owners who do everything that the Copyright Act expects them to do in order to obtain the greatest protection for their works at the earliest that they can reasonably do so are still left without remedies should\u2014or, perhaps more likely, when\u2014infringement occur once they release their works to the world. The aforementioned constitutional goal of dissemination is thus undercut by the subservient goal of registration, for rational copyright owners would be less motivated to disseminate their works by the right to exclude when that right is in fact illusory. If Congress really wants authors to promote progress<\/a> via dissemination of new works, it should adjust Section 411(a) to provide for immediate protection to all works, whether registered or not. It can still incentivize registration by limiting the remedies available, but it shouldn\u2019t make it so that there are none.<\/p>\n

To see the injustice, one need look no further than this very blog post. According to the Copyright Act, this post was protected the moment it was fixed in a tangible medium of expression (i.e., yesterday evening). Should the copyright owner\u2014presumably the university where I work as this is a work made for hire\u2014have filed for registration as quickly as possible (i.e., this morning), there still would be no way to obtain any injunctive relief while the Copyright Office processes the application. Preregistration was never an option as this post is not a literary work that is protected by the exception for certain works prone to prepublication infringement under Section 202.16<\/a> of the CFR. Even if the university had done everything that it was supposed to do as early as it could reasonably have done so to ensure the utmost copyright protection for this post, it could do nothing in the courts to stop an infringer who willfully exploits this post for profit until the Copyright Office acts upon the application\u2014a lifetime for infringement in the digital age. (There is an option to expedite review for $800<\/a>, but that amount of money is not reasonable for most people.)<\/p>\n

Perhaps a takedown notice could be issued under Section 512<\/a> of the DMCA, but if there\u2019s a counternotice, the university could not bring suit in the designated 10-14 day window to prevent the service provider from restoring the infringing material since there\u2019s been no registration and thus it cannot sue for infringement. Despite having done everything Congress expected, the university would be powerless to stop the ongoing infringement of its exclusive rights in this post for perhaps several months into the future. And any argument that damages will compensate for infringements occurring before the Copyright Office got around to acting on the application is undercut by the fact that courts routinely grant preliminary injunctive relief precisely because the harm from infringement is irreparable\u2014money damages cannot make the copyright owner whole.<\/p>\n

The absurd result of all this is that the promise of exclusive rights in one\u2019s original work of authorship is practically meaningless given the registration approach under Section 411(a). No doubt, Congress intended this disability to act as a stick in order to encourage the carrot of remedies should those rights be infringed. But the reality is that numerous copyright owners who do everything right get the stick and not the carrot\u2014at least until the Copyright Office happens to process their applications. In the meantime, these copyright owners cannot be faulted for thinking twice before disseminating their works. Since enforcement of their rights is precluded through no fault of their own, what else does Congress expect them to do? A right without a remedy is senseless, and given the millions of original works that are created each day, Congress\u2019s promise of copyright protection for new works may be one of the most illusory rights in modern times. Now that the Supreme Court has clarified Section 411(a), it’s time for Congress to fix it.<\/p>\n","protected":false},"excerpt":{"rendered":"

Earlier this week, the Supreme Court handed down its decision in Fourth Estate v. Wall-Street.com, a case examining the registration precondition to filing a suit for copyright infringement in the federal district courts. While I agree with the Court\u2019s exegesis of the statute at issue, it\u2019s worth noting how the Court\u2019s construction leaves many, if […]<\/p>\n","protected":false},"author":3627,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_monsterinsights_skip_tracking":false,"_monsterinsights_sitenote_active":false,"_monsterinsights_sitenote_note":"","_monsterinsights_sitenote_category":0,"_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[10],"tags":[337,349,427,436,447,535,570,697,1215,1326,1330,1417,1524,1553],"class_list":["post-7270","post","type-post","status-publish","format-standard","hentry","category-copyright","tag-copyright-2","tag-copyright-office","tag-devlin-hartline","tag-digital-millennium-copyright-act","tag-dmca","tag-exclusive-rights","tag-fourth-estate","tag-infringement","tag-registration","tag-section-411","tag-section-512","tag-supreme-court","tag-usco","tag-wall-street-com"],"jetpack_featured_media_url":"","jetpack_sharing_enabled":true,"_links":{"self":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/7270","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/users\/3627"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/comments?post=7270"}],"version-history":[{"count":4,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/7270\/revisions"}],"predecessor-version":[{"id":16191,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/7270\/revisions\/16191"}],"wp:attachment":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/media?parent=7270"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/categories?post=7270"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/tags?post=7270"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}