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Fourth Estate: SCOTUS says registration approach is correct one

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

The verdict is finally in. Earlier this month, the U.S. Supreme Court released its opinion in Fourth Estate Public Benefit Corporation v., LLC. The court held that to bring a copyright infringement lawsuit under the federal Copyright Act, the Register of Copyrights must have acted on the copyright application in question by either granting or denying the registration.

Registration approach

The court adopted the so-called registration approach. The Copyright Act says that a copyright owner may file an infringement suit in federal court under the Act after "registration ... has been made." The registration approach interprets this to mean that the Registrar must have processed and made a decision on the application first.

Application approach

Advocates of the "application approach" had urged the interpretation that filing the complete application with the U.S. Patent and Trademark Office should be enough to satisfy the registration prerequisite for the lawsuit, especially since the applicant has no control over how long it will take to process the application.

Justice Ruth Bader Ginsburg wrote the opinion. She had missed the oral arguments for health reasons, but participated based on the transcript and filings.

Interestingly, the opinion is unanimous with all nine justices in agreement. We wrote in our February 13 post that some court watchers felt Justices Gorsuch and Kavanaugh seemed to lean toward the application approach, but when all was said and done, there was consensus on the registration approach.  

This opinion resolves disagreement among the federal Circuit Courts of Appeal. (Notably, the Ninth Circuit, of which California is a part, had taken the opposite view and embraced the application approach.)


Reasoning of the Supreme Court included:

  • The delay in filing the lawsuit while waiting for the registration decision is not that harmful to the copyright owner because the suit allows recovery of damages for infringing activity both before and after the registration is issued.
  • The language within the other sentences of the relevant statutory section supports the registration approach.
  • In narrow circumstances when early infringement is likely for certain workssuch as a pre-released movie or live broadcast, a preregistration option is available that allows the lawsuit filing before the Register's decision on the registration application. If filing an application were enough to allow a suit, there would be no need for the preregistration process exception.
  • Legislative history and congressional intent support the registration approach.

We will continue to share information about important U.S. Supreme Court cases to our readers.

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