SCOTUS's Special Exception for Copyright Protection
On Monday, March 4, 2019, the U.S. Supreme Court issued a decision that stands as an important reminder to owners of copyrightable works: registration of a copyright is a prerequisite to filing a lawsuit for copyright infringement. There is, however, a special exception available to the video game industry known as “preregistration.”
Justice Ruth Bader Ginsburg, writing for the unanimous Court in Forth Estate Public Benefit Corp. v. Wall-Street.com, LLC, resolved a long split among federal courts concerning whether Section 411(a) of the Copyright Act required a registration issued by the Copyright Office or the filing of an application as a prerequisite to bringing a lawsuit for copyright infringement. Quite simply, the Supreme Court held that “registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright.”
This is not to say that the author of an original work has no rights until the work is registered. On the contrary, the Supreme Court was careful to note that “the Copyright Act safeguards copyright owners, irrespective of registration, by vesting them with exclusive rights upon creation of their works and prohibiting infringement from that point forward.” Registration is instead “an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights.”
There is an important exception available to the video game industry. The Copyright Act provides for a “preregistration” mechanism applicable to owners of a work that is “being prepared for commercial distribution and has not been published” and “has had a history of infringement prior to authorized commercial distribution.” 17 U.S.C. § 408(f). Among the categories of works entitled to preregistration are “computer programs (including videogames).” 37 C.F.R. § 202.16(b)(1)(iv). Under the preregistration process, the Copyright Office will conduct a “limited review” and notify the applicant of preregistration. Once this preregistration has been made, the applicant may sue for copyright infringement. However, no later than 3 months after first publication of a work that has been preregistered, the applicant must submit a complete application for registration of the work. A plaintiff that sues for copyright infringement based on preregistration risks having the lawsuit dismissed if the plaintiff does not file a full application for registration within three months of first publication of the work.
Considering the average processing time of copyright applications filed online is approximately six months, preregistration is an important advantage for the video game industry. Additionally, there is a “Special Handling” process by which an application may be expedited, for a significantly higher fee.
Owners of foreign copyrights are exempt from the registration requirement as a result of the U.S. joining the international Berne Convention for the Protection of Literary and Artistic Works, but failure to register deprives even foreign owners of some of the advantages offered under the Copyright Act, such as awards of statutory damages and attorneys’ fees.
The Supreme Court’s ruling is a strong reminder to the video game industry that registration and preregistration of copyrightable works are necessary for anti-piracy and competition. Now is a good time to review portfolios to ensure works have been submitted to the Copyright Office for registration. Additionally, if publishers are not taking advantage of the preregistration process already, they should consider doing so as part of their intellectual property strategy going forward.