Copyright registration can be an important way for tech companies and other businesses in Northern Virginia to safeguard their investment in the development of proprietary software and website content that might not otherwise qualify for trade secret, patent, or trademark protection.[1] Companies interested in protecting their intellectual property under the Copyright Act should therefore be alert to the United States Supreme Court’s recent decision in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019), which makes clear that copyright registration, and not merely a proper application, is the key to the courthouse in most infringement lawsuits.[2]
Fourth Estate resolved a split among federal courts over whether Section 411(a) of the Copyright Act (which typically serves as a precondition to filing a copyright infringement lawsuit) allowed a plaintiff to initiate a copyright infringement lawsuit after it properly applied for copyright protection, but before the Copyright Office formally registered the work.[3] Until Fourth Estate, depending on the jurisdiction, the seemingly modest technical distinction between a proper application and a registration could mean the difference between filing a premature infringement lawsuit in federal court only to have it dismissed while an application awaited review in the Copyright Office and promptly seeking damages and injunctive relief against an infringer.[4] For instance, the federal trial court in Fourth Estate dismissed the underlying copyright infringement lawsuit because the Register had yet to act on the plaintiff’s applications when it filed a complaint against the defendant news website.[5] The United States Court of Appeals for the Eleventh Circuit agreed with the federal trial court that a “registration approach” should govern whether the plaintiff was entitled to proceed and, ultimately, so did the Supreme Court. By concluding that a plaintiff “must await action by the Register before filing suit for infringement,”[6] the Supreme Court’s decision in Fourth Estate supersedes the “application approach” adopted by a number of federal appellate and trial courts (including federal trial courts sitting in Virginia), which allowed copyright infringement lawsuits to go forward upon a simple showing of “payment of the required fee, deposit of the work in question, and receipt by the Copyright Office of a registration application.”[7]
Therefore, following the Supreme Court’s decision in Fourth Estate affirming the “registration approach,” Northern Virginia companies that develop and own software and website content vulnerable to infringement should consider seeking copyright registration early and often to ensure access to the federal courts without delay and to avoid the prospect of duplicative court filings.
If you would like to learn more about how this decision might affect your organization, contact attorney Jim Miller at 703-218-2154.
[1] See, e.g., Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1355-56 (Fed. Cir. 2014) (describing copyright protections that can extend to the literal and non-literal elements of computer programs, including source code and object code, as well as the sequence, structure, and organization of computer programs and user interfaces); Ez-XBRL Sols., Inc. v. Chapke, No. 117CV700LMBTCB, 2018 WL 5808724, at *4 (E.D. Va. Sept. 25, 2018), report and recommendation adopted, No. 117CV00700LMBTCB, 2018 WL 5809406 (E.D. Va. Oct. 22, 2018) (awarding a judgment against a defendant who created and sold derivative works of software without the plaintiff’s permission, therefore violating the plaintiff’s exclusive rights under the Copyright Act); Sweepmasters Prof’l Chimney Servs., LLC v. Vanessa Servs., No. 1:16CV439, 2017 WL 3927626, at *3 (E.D. Va. July 5, 2017), report and recommendation adopted, No. 1:16-CV-439, 2017 WL 3927602 (E.D. Va. Sept. 7, 2017) (awarding a judgment against defendants who, among other things, copied, distributed, and publically displayed copyrighted material and content taken verbatim from the plaintiff’s website without the plaintiff’s permission or authorization).
[2] Fourth Estate, 139 S. Ct. at 892 (“[W]e conclude that ‘registration . . . has been made’ within the meaning of 17 U.S.C. § 411(a) not when an application for registration is filed, but when the Register has registered a copyright after examining a properly filed application.”). Nonetheless, there are some statutory exceptions to registration under the Copyright Act. See id. at 888 (“In limited circumstances, copyright owners may file an infringement suit before undertaking registration.”).
[3] See id.; see also infra n.7.
[4] See U.S. Copyright Office, Registration Processing Times, https://www.copyright.gov/registration/docs/processing-times-faqs.pdf (last visited Apr. 9, 2019) (describing copyright application processing times that can range on average from 6 to 20 months, depending on the circumstances).
[5] Fourth Estate, 139 S. Ct. at 887.
[6] Id. at 892.
[7] Caner v. Autry, 16 F. Supp. 3d 689, 707-08 (W.D. Va. 2014) (following the “application approach” adopted by the United States Courts of Appeals for the Fifth, Seventh, Eighth, and Ninth Circuits and declining to use the “registration approach” adopted by the United States Courts of Appeals for the Tenth and Eleventh Circuits and now the Supreme Court); see also Phoenix Renovation Corp. v. Rodriguez, 403 F. Supp. 2d 510 (E.D. Va. 2005) (applying the now-superseded application approach); Secure Servs. Tech., Inc. v. Time & Space Processing Inc., 722 F. Supp. 1354 (E.D. Va. 1989) (same).