Design firms may face problems enforcing copyright protection

The U.S. Supreme Court unanimously ruled on March 4th that copyright owners must wait for registration before pursuing infringement claims in court. The decision settles a circuit court split wherein certain courts had previously held that merely applying for registration was enough to satisfy the statutory prerequisite for a lawsuit.

Although the opinion will have a dramatic influence on the range and number of copyright lawsuits in the entertainment and media industry, it also makes it more difficult for design firms to enforce copyrights of their instruments of professional service. In Fourth Estate Public Benefit Corporation v. Wall-Street.com, a creator of content, Fourth Estate, licensed its journalism works to Wall-Street.com. Even though the agreement was canceled, articles provided by Fourth Estate were not removed from the Wall-Street website. Fourth Estate filed suit, leading to a challenge over whether the plaintiff needed to wait until the Register of Copyrights either accepted or refused the application for registration before legal action could proceed.

When it comes to copyright lawsuits, many plaintiffs seek applications for registration just days before lodging a complaint in federal court. The court ruled that except for limited circumstances, this will no longer be tolerated. The exception, explained in the opinion written by Justice Ginsburg, acknowledges that registration processing times have increased from weeks to months over the years. The opinion states: “If a copyright owner is preparing to distribute a work of a type vulnerable to pre-distribution infringement — notably, a movie or musical composition—the owner may apply for pre-registration.” But the opinion also states that even in such exceptional scenarios, the copyright owner must eventually pursue registration to maintain a suit for infringement.

Many design firms have relied on the fact that copyright attaches as soon as a creative work is developed. While that remains the law, enforcement of the copyright may not include a lawsuit claiming infringement until registration is successfully obtained.