Do I have to wait for my copyright to be registered to sue for copyright infringement?

Do I have to wait for my copyright to be registered to sue for copyright infringement?

A copyright is a set of exclusive rights granted to the creator of a new work of expression.  Copyright generally protects creative works like books, paintings, photographs and music, but can also protect things like software.  The creator of a new work is granted the exclusive right to reproduce, distribute, display, perform, transmit and make derivative works based on the original work.  If someone other than the copyright owner attempts to exercise one of these exclusive rights that can be considered copyright infringement.  A copyright owner can file a lawsuit and request an injunction to stop copyright infringement from occurring and to get monetary damages for copyright infringement which has occurred.

In the United States copyright registration is not necessary for a copyright to be granted, however registration of a copyright grants a copyright owner several important rights.  To comply with the Berne Convention, the United States does not require foreign copyright owners to register their works to gain some of the rights granted by registration, however it is a good idea for foreign copyright holders to register their copyright in the Untied States if that is a market in which they plan to operate.

Registration of a copyright grants a copyright owner the following benefits:

  • Registration establishes a public record of the copyright owner’s claim to the work
  • Before an infringement suit may be filed in court, registration (or refusal) is necessary for works of U.S. origin.
  • Registration establishes prima facie evidence of the validity of the copyright and facts stated in the certificate when registration is made before or within five years of publication.
  • When registration is made prior to infringement or within three months after publication of a work, a copyright owner is eligible for statutory damages, attorneys’ fees, and costs.
  • Registration permits a copyright owner to establish a record with the U.S. Customs and Border Protection for protection against the importation of infringing copies.

Many copyright owners feel that registration is an unnecessary formality, that is until they discover someone is infringing on their work.   Because registration of a copyright is necessary before a copyright infringement lawsuit may be filed, a copyright owner will rush to register their work.  The Copyright Office takes time to process registrations, so sometimes a copyright infringement lawsuit is filed before the Copyright Office has the time to complete the registration process.  The question then becomes, is a copyright registered on the date the application is filed or on the date that the Copyright Office completes the registration process?

FOURTH ESTATE PUBLIC BENEFIT CORP. v. WALLSTREET.COM, LLC,  17–571 (U.S.S.C. 2019) provides a clear answer to this question.  The plaintiff in this case licensed several copyrighted news articles to the defendant.  At some point the license agreement was canceled and the copyrighted news articles were not removed from the defendant’s website.  The plaintiff filed applications to register the copyright on the news articles, but did not wait for the Copyright Office to act on those applications.  The plaintiff filed a copyright infringement lawsuit before the registration process was complete.  The defendant moved to dismiss the complaint on the grounds that the copyrighted news articles were not registered.

Title 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 District Court dismissed the complaint, and the Court of Appeals for the Eleventh Circuit affirmed, holding that “registration . . . has [not] been made” under §411(a) until the Copyright Office registers a copyright.  The plaintiff appealed to the United States Supreme Court.

The Supreme Court held that registration occurs, and a copyright owner 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.  The lesson in the case is clear, it is better to register a copyright as soon as a work is created, rather than waiting until copyright infringement is discovered.

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