Individuals or companies in New Jersey and around the country must apply for trademarks or patents if they wish to protect inventions, formulas, symbols or designs, but copyrights are issued automatically. However, intellectual property owners who wish to take legal action against copyright infringers must first register their original works with the U.S. Copyright Office. District courts have made contradictory rulings in this area, but any confusion over the issue was cleared up by a recent Supreme Court ruling.
Individuals or companies seeking to enforce copyrights have generally filed their registrations and lawsuits simultaneously, which has led to contentious legal arguments over when registration takes place. Some district courts have ruled that simply applying for registration is enough to support a lawsuit while others have said that litigation may not proceed until a Certificate of Registration has been issued by the U.S. Copyright Office.
This matter was resolved by the nation's highest court in a recent case brought by a news journalism organization against a news website. Fourth Estate Public Benefit Corp. filed their lawsuit against Wall-Street.com, LLC, for allegedly continuing to use original works after canceling their contract. The organization applied to the U.S. Copyright Office to register the works in question at the same time. After a district court dismissed the case, and an appeals court affirmed, the Supreme Court ruled unanimously that Certificates of Registration must be issued before copyrights can be enforced in the courts.
Attorneys with experience in intellectual property litigation may have been watching this case closely, and they could advise their clients to proactively obtain Certificates of Registration as the registration process can take months. The Supreme Court ruling would, therefore, give infringers more time to infringe. Obtaining a Certificate of Registration could also be an effective way to deter infringement and avoid potentially costly litigation.
Source: The National Law Review, "Supreme Court Resolves Circuit Court Split: Copyright Registration Is a Prerequisite to a Copyright Infringement Suit," Jill Sarnoff Riola, June 12, 2019