When can you sue for copyright infringement?

By Matthew J. Booth

Yet again, we have the dreaded, “it depends,” answer.  In this case, it depends on where you can bring the lawsuit because there have been different decisions in various Federal Circuit Courts of Appeal about the proper timing of filing a copyright infringement lawsuit.

Let’s go back to the beginning of this process.  When someone comes to me and asks me to sue another party for infringement of a copyright, my first question is, “Do you have a copyright registration?” Why? Because the Copyright Act seems to require you to have a registration to file the lawsuit. The relevant statute provides, “… no 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. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights…” See 17 USC 411(a).

So, we know that we have to file an application for a copyright registration. After the application is filed, we go back to the original question, “When can we file that lawsuit for copyright infringement?” Sadly, the answer is still, “it depends.” At this point the language is slightly confusing about the mechanics and the timing of filing which has lead to the differing court decisions I mentioned earlier. So, unfortunately, the answer to this question depends on what court is going to hear the case. There have been different decisions in the various Federal Circuit Courts of Appeal on whether a plaintiff must have received a copyright registration before filing the lawsuit (the “registration approach”) or rather must only have filed a copyright application (the “application approach”) with the Copyright Office before filing the lawsuit.

The “registration approach” seems to follow a plain language reading of the first part of section 411(a) (“…no 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”). I think the second part of this section muddies that take (“In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights…”).

The “application approach,” on the other hand, views the actual copyright registration as a formality since an application with the Copyright Office results in a registration or a rejection of the application. Either of these decisions allows an applicant to proceed with filing a lawsuit. I personally think a couple of other factors weigh in on the application approach. First, an application for a copyright registration takes months before it’s issued or rejected (with the current time frame running about 6 to 9 months). Second, when a registration issues, the date of registration is the date that the application was filed. And finally (and unlike TV where things are fast and drama filled), a lawsuit for copyright infringement goes to trial at least 1 or 2 years after the lawsuit is filed, which is plenty of time for the Copyright Office to issue the registration or rejection.

The Copyright Office favors the registration approach though I think that has more to do with economics because they offer an expedited registration process for a higher fee ($800 per work versus $55 per work for normal processing).

The good news amidst all this confusion is that the US Supreme Court will finally get to weigh in and, hopefully, resolve this issue in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571. Link. The oral arguments were on 01/08/2019 (yes, Elvis Presley’s birthday!) so the decision should come soon.

If you have hung with me through this entire article, kudos to you for hanging in there through a complicated albeit important issue. Clarification of the timing on these filings will help everyone have a clear checklist for preparing to file copyright infringement lawsuits. As for me, I typically represent the copyright owners in these instances, so I hope the Supreme Court goes with the application approach. This approach will allow the copyright owners to start enforcing their Intellectual Property rights sooner and much closer to when the infringement actually occurred.