SCOTUS Hears Arguments on Copyright Registration Approvals

Panner, a partner at Kellogg, Hansen, Todd, Figel & Frederick, argued that a college student who has signed up for a class has “made his registration, he's registered for the class,” even though the school's registrar might later say the class is full.

The oral-arguments debate in Fourth Estate was somewhat wonky, but the stakes are significant. Amicus groups such as the National Music Publishers Association claim that being put on hold while a work is distributed all over the Internet can have “a devastating effect” on copyright holders.

Petitioner Fourth Estate Public Benefit Corp., an online news producer, sued Wall-Street.com when it refused to remove Fourth Estate articles after the website's license expired. Fourth Estate had registered the articles with the U.S. Copyright Office, but the office had not yet acted on the applications. The U.S. Court of Appeals for the Eleventh Circuit sided with Wall-Street.com. The Fifth and Ninth Circuits have said you can sue once you've applied and paid the fees. The Tenth Circuit agrees with the Eleventh Circuit that plaintiffs must wait until the Copyright Office acts, which according to Panner takes an average of seven months and as many as 15.

The problem for Fourth Estate is the text of §411(a) of the Copyright Act, which states that a lawsuit shall not be instituted “until preregistration or registration of the copyright claim has been made in accordance with this title,” or after “registration has been refused.”

Justice Elena Kagan said the phrase “registration has been refused” clearly refers to the Copyright Office's Register, not the holder. “And so it seems, you know, the only way to read this is that the 'registration has been made' is by the Register, too,” she told Panner.

Justices Sonia Sotomayor and Brett Kavanaugh and Chief Justice John Roberts also seemed to agree, though Roberts said equally compelling arguments could be made for copyright holders based on other parts of the statute.

Justices Samuel Alito and Clarence Thomas didn't ask any questions, and Justice Ruth Bader Ginsberg was absent from argument recovering from surgery.

Polsinelli law partner Fabio Marino, who's not involved in the case, said Fourth Estate attorney Peter Stris of Stris & Maher and Jonathan Ellis of the U.S. Solicitor General's Office effectively addressed the justices' primary concern with the textual argument — that Congress could not have anticipated in the Copyright Act of 1976 the speed with which the Internet has allowed infringed content to be distributed at much faster speeds.

Justice Gorsuch said Congress “pretty much assumed that registration decisions would happen promptly” when the statute was enacted in the 1970s. and “there's at least some evidence” that hasn't happened.

Stris and Ellis pointed to newer laws such as the takedown provision of the Digital Millennium Copyright Act and a pre-registration procedure that copyright owners can use to protect new works they expect to be infringed. “They did a good job of making the point that there are other provisions of the law” that apply to the justices' concerns, Marino said.

But most of all Stris emphasized the statutory text. “I certainly don't want to suggest that the policy arguments for the alternative are terrible,” Stris said. “They could be defended. Many people in this room may think that they're right. But they're beside the point when the case is about what Congress meant in enacting this particular statutory language.”

Here are some perspectives from intellectual property law experts on the copyright registration issue:

• Irene Lee, partner at Russ August & Kabat: “In general, securing a registration certificate provides some level of clarity in litigation which is inherently unpredictable and subject to uncertainties. Imagine the confusion that could arise when a deposited work is deemed unregistrable in the middle of an infringement case.”
• Robert deBrauwere, partner at Pryor Cashman: “There is no doubt that the practical impact of the issue before the court is not as dry as it may sound. … The court's decision will have a very significant impact on the ability to secure, and the efficacy of, injunctive relief, as well as the possible scope of damages available to copyright litigants, and even whether a remedy may be available at all.”
• Laura Goldbard George, partner at Stroock & Stroock & Lavan: “There is significant disagreement as to which approach is the correct approach …. Even the leading copyright treatise authors advocate different approaches — Nimmer & Nimmer propose a variant of the application approach, and [Willliam] Patry advocates for the registration approach.”

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Scott Graham covers intellectual property and the U.S. Court of Appeals for the Federal Circuit for ALM, the parent company of Entertainment Law & Finance. He can be reached at [email protected]. Comments from the IP experts at the end of this article obtained by ALM's “Supreme Court Briefs” column.