Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC

• Decision Date: 04 March 2019
• Docket Number: No. 17-571,17-571
• Citation: 203 L.Ed.2d 147,139 S.Ct. 881
• Parties: FOURTH ESTATE PUBLIC BENEFIT CORPORATION, Petitioner v. WALL-STREET.COM, LLC, et al.
• Court: U.S. Supreme Court

139 S.Ct. 881

203 L.Ed.2d 147

FOURTH ESTATE PUBLIC BENEFIT CORPORATION, Petitioner

v.WALL-STREET.COM, LLC, et al.

No. 17-571

Supreme Court of the United States.

Argued January 8, 2019

Decided March 4, 2019

Peter K. Stris, Los Angeles, CA, for Respondents.

Aaron M. Panner, Washington, DC, for Petitioner.

Jonathan Y. Ellis for the United States as amicus curiae, by special leave of the Court, supporting the Respondents.

David A. Geller, FL, Peter K. Stris, Brendan S. Maher, Elizabeth Brannen, Rachana A. Pathak, Douglas D. Geyser, Victor O'Connell, John Stokes, Stris & Maher LLP, Los Angeles, CA, for Respondents.

Joel B. Rothman, Jerold I. Schneider, Schneider Rothman, Intellectual Property Law Group, PLLC, FL, Aaron M. Panner, Gregory G. Rapawy, Grace W. Knofczynski, Kellogg, Hansen, Todd, Figel & Frederick, P.L.L.C., Washington, DC, for Petitioner.

Justice GINSBURG delivered the opinion of the Court.

Impelling prompt registration of copyright claims, 17 U.S.C. § 411(a) states that "no civil action for infringement of the copyright in any United States work shall be instituted until ... registration of the copyright claim has been made in accordance with this title." The question this case presents: Has "registration ... been made in accordance with [Title 17]" as soon as the claimant delivers the required application, copies of the work, and fee to the Copyright Office; or has "registration ... been made" only after the Copyright Office reviews and registers the copyright? We hold, in accord with the United States Court of Appeals for the Eleventh Circuit, that registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright. Upon registration of the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration.

Petitioner Fourth Estate Public Benefit Corporation (Fourth Estate) is a news organization producing online journalism. Fourth Estate licensed journalism works to respondent Wall-Street.com, LLC (Wall-Street), a news website. The license agreement required Wall-Street to remove from its website all content produced by Fourth Estate before canceling the agreement. Wall-Street canceled, but continued to display articles produced by Fourth Estate. Fourth Estate sued Wall-Street and its owner, Jerrold Burden, for copyright infringement. The complaint alleged that Fourth Estate had filed "applications to register [the] articles [licensed to Wall-Street] with the Register of Copyrights." App. to Pet. for Cert. 18a.¹ Because the Register had not yet acted on Fourth Estate's applications,² the District Court, on Wall-Street and Burden's motion, dismissed the complaint, and the Eleventh Circuit affirmed. 856 F.3d 1338 (2017). Thereafter, the Register of Copyrights refused registration of the articles Wall-Street had allegedly infringed.³

We granted Fourth Estate's petition for certiorari to resolve a division among U.S. Courts of Appeals on when registration occurs in accordance with § 411(a). 585 U.S. ––––, 138 S.Ct. 2707, 201 L.Ed.2d 1095 (2018). Compare, e.g., 856 F.3d at 1341 (case below) (registration has been made under § 411(a) when the Register of Copyrights registers a copyright), with, e.g., Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 621 (C.A.9 2010) (registration has been made under § 411(a) when the copyright claimant's "complete application" for registration is received by the Copyright Office).

I

Under the Copyright Act of 1976, as amended, copyright protection attaches to "original works of authorship"—prominent among them, literary, musical, and dramatic works—"fixed in any tangible medium of expression." 17 U.S.C. § 102(a). An author gains "exclusive rights" in her work immediately upon the work's creation, including rights of reproduction, distribution, and display. See § 106 ; Eldred v. Ashcroft , 537 U.S. 186, 195, 123 S.Ct. 769, 154 L.Ed.2d 683 (2003) ("[F]ederal copyright protection ... run[s] from the work's creation."). The Copyright Act entitles a copyright owner to institute a civil action for infringement of those exclusive rights. § 501(b).

Before pursuing an infringement claim in court, however, a copyright claimant generally must comply with § 411(a)'s requirement that "registration of the copyright claim has been made." § 411(a). Therefore, although an owner's rights exist apart from registration, see § 408(a), registration is akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights, see Tr. of Oral Arg. 35.

In limited circumstances, copyright owners may file an infringement suit before undertaking registration. If a copyright owner is preparing to distribute a work of a type vulnerable to predistribution infringement—notably, a movie or musical composition—the owner may apply for preregistration. § 408(f)(2) ; 37 CFR § 202.16(b)(1) (2018). The Copyright Office will "conduct a limited review" of the application and notify the claimant "[u]pon completion of the preregistration." § 202.16(c)(7), (c)(10). Once "preregistration ... has been made," the copyright claimant may institute a suit for infringement. 17 U.S.C. § 411(a). Preregistration, however, serves only as "a preliminary step prior to a full registration." Preregistration of Certain Unpublished Copyright Claims, 70 Fed. Reg. 42286 (2005). An infringement suit brought in reliance on preregistration risks dismissal unless the copyright owner applies for registration promptly after the preregistered work's publication or infringement. § 408(f)(3)–(4). A copyright owner may also sue for infringement of a live broadcast before "registration ... has been made," but faces dismissal of her suit if she fails to "make registration for the work" within three months of its first transmission. § 411(c). Even in these exceptional scenarios, then, the copyright owner must eventually pursue registration in order to maintain a suit for infringement.

II

All parties agree that, outside of statutory exceptions not applicable here, § 411(a) bars a copyright owner from suing for infringement until "registration ... has been made." Fourth Estate and Wall-Street dispute, however, whether "registration ... has been made" under § 411(a) when a copyright owner submits the application, materials, and fee required for registration, or only when the Copyright Office grants registration. Fourth Estate advances the former view—the "application approach"—while Wall-Street urges the latter reading—the "registration approach." The registration approach, we conclude, reflects the only satisfactory reading of § 411(a)'s text. We therefore reject Fourth Estate's application approach.

A

Under § 411(a), "registration ... has been made," and a copyright owner may sue for infringement, when the Copyright Office registers a copyright.⁴ Section 411(a)'s first sentence provides that no civil infringement action "shall be instituted until preregistration or registration of the copyright claim has been made." The section's next sentence sets out an exception to this rule: When the required "deposit, application, and fee ... have been delivered to the Copyright Office in proper form and registration has been refused," the claimant "[may] institute a civil action, if notice thereof ... is served on the Register." Read together, § 411(a)'s opening sentences focus not on the claimant's act of applying for registration, but on action by the Copyright Office—namely, its registration or refusal to register a copyright claim.

If application alone sufficed to "ma[ke]" registration, § 411(a)'s second sentence—allowing suit upon refusal of registration—would be superfluous. What utility would that allowance have if a copyright claimant could sue for infringement immediately after applying for registration without awaiting the Register's decision on her application? Proponents of the application approach urge that § 411(a)'s second sentence serves merely to require a copyright claimant to serve "notice [of an infringement suit] ... on the Register." See Brief for Petitioner 29–32. This reading, however, requires the implausible assumption that Congress gave "registration" different meanings in consecutive, related sentences within a single statutory provision. In § 411(a)'s first sentence, "registration" would mean the claimant's act of filing an application, while in the section's second sentence, "registration" would entail the Register's review of an application. We resist this improbable construction. See, e.g., Mid-Con Freight Systems, Inc. v. Michigan Pub. Serv. Comm'n , 545 U.S. 440, 448, 125 S.Ct. 2427, 162 L.Ed.2d 418 (2005) (declining to read "the same words" in consecutive sentences as "refer[ring] to something totally different").

The third and final sentence of § 411(a) further persuades us that the provision requires action by the Register before a copyright claimant may sue for infringement. The sentence allows the Register to "become a party to the action with respect to the issue of registrability of the copyright claim." This allowance would be negated, and the court conducting an infringement suit would lack the benefit of the Register's assessment, if an infringement suit could be filed and resolved before the Register acted on an application.

Other provisions of the Copyright Act support our reading of "registration," as used in § 411(a), to mean action by the Register. Section 410 states that, "after examination," if the Register determines that "the material deposited constitutes copyrightable subject matter" and "other legal and formal requirements ... [are] met, the Register shall register the claim and issue to the applicant a certificate of registration." § 410(a). But if the Register determines that the deposited material "does not constitute copyrightable subject matter or that the claim is invalid for any other reason, the Register shall refuse registration." § 410(b)....