Supreme Court Decides Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC

On March 4, 2019, the Supreme Court of the United States decided Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, holding that under section 411(a) of the Copyright Act, a party may sue for copyright infringement only after the Copyright Office registers the copyright, not when the party has merely submitted an application for registration. The Court also held that once the copyright is registered, the copyright holder can sue and recover for infringement that occurred both before and after the registration.

Fourth Estate Public Benefit Corporation (Fourth Estate) is a news organization producing online journalism. Fourth Estate licensed various journalism works to Wall-Street.com, LLC (Wall-Street), a news website. The license agreement required that before Wall-Street canceled the licensing agreement, it had to remove from its website all content produced by Fourth Estate. Wall-Street canceled the agreement, but continued to display articles produced by Fourth Estate.

Fourth Estate sued Wall-Street and its owner for copyright infringement. The complaint alleged that Fourth Estate had filed applications to register the articles licensed to Wall-Street with the Copyright Office, but the articles had not yet been officially registered. Because the Copyright Office had not yet acted on Fourth Estate’s applications, the District Court concluded that Fourth Estate could not sue Wall-Street at that time and dismissed the complaint. The Eleventh Circuit affirmed.

The Supreme Court affirmed, holding that (with certain exceptions that did not apply here) a copyright holder can sue for copyright infringement only after the Copyright Office officially registers the copyright, rather than earlier when the Copyright Office receives the application for registration. The Court likened the requirement to an administrative-exhaustion requirement that the copyright holder must satisfy before suing to enforce its rights. The Court relied on the plain text of section 411(a) of the Copyright Act, which states that no copyright lawsuit may be “maintained” until “registration . . . has been made.” That very provision allows a copyright holder to sue for infringement after an “application” has been “delivered” only in cases where the Copyright Office refuses to register a copyright claim and the holder serves notice of the lawsuit on the Register of copyrights. This shows that “registration” means actual registration, not just an application; otherwise, the “application” exception would be superfluous.

The Court added that once a copyright is registered, the copyright holder can recover damages for infringement that occurred both before and after the registration.

Justice Ginsburg delivered the opinion for a unanimous court.