Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC
139 S. Ct. 881
SCOTUS2019Background
- Fourth Estate (news org) licensed articles to Wall-Street.com; license was canceled but Wall-Street kept displaying the articles.
- Fourth Estate submitted applications, copies, and fees to the Copyright Office to register the articles; the Register had not acted when suit was filed.
- Fourth Estate sued for copyright infringement; District Court dismissed and the Eleventh Circuit affirmed, holding registration occurs only when the Copyright Office registers the claim.
- Fourth Estate sought Supreme Court review to resolve a circuit split over whether §411(a) permits suit upon filing a completed application or only after the Copyright Office grants registration.
- After the Eleventh Circuit decision, the Copyright Office refused registration of the implicated articles; the Supreme Court addressed only the timing question under §411(a).
Issues
| Issue | Plaintiff's Argument (Fourth Estate) | Defendant's Argument (Wall-Street) | Held |
|---|---|---|---|
| Whether §411(a) permits an infringement suit once a claimant files a proper registration application (the "application approach") or only after the Copyright Office grants registration (the "registration approach"). | Filing a completed application (deposit, fee, materials) "makes registration" under §411(a), so suit may be instituted upon submission. | "Registration has been made" means the Register’s action to grant registration; suit may be filed only after the Copyright Office registers (or refuses) the claim. | Court adopts the registration approach: §411(a) requires the Copyright Office to register (or refuse) before suit; upon registration, owner may recover for infringement occurring before or after registration. |
Key Cases Cited
- United States v. Detroit Timber & Lumber Co., 200 U.S. 321 (clarifies that a syllabus/headnote is not part of the Court's opinion)
- Eldred v. Ashcroft, 537 U.S. 186 (copyright protection attaches at creation)
- Mid-Con Freight Systems, Inc. v. Michigan Public Service Comm’n, 545 U.S. 440 (avoid reading identical words in consecutive sentences to mean different things)
- TRW Inc. v. Andrews, 534 U.S. 19 (rejects interpretations that render statutory provisions superfluous)
- Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637 (2d Cir. 1958) (historical precedent on sufficiency of application pre-registration)
- Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612 (9th Cir. 2010) (adopts the application approach)
- Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 856 F.3d 1338 (11th Cir. 2017) (court below: registration occurs when the Register registers the claim)