US Supreme Court Rules on Two Copyright Issues
This week, the Supreme Court of the United States issued two decisions with major implications for copyright litigation.
As you may know, even though your work is automatically copyrighted once it’s fixed in a tangible form, the copyright statute says that, other than for certain very limited exceptions, you can’t sue until “registration of the copyright claim has been made…” or “where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused.”
Until this week, exactly what that meant depended on the jurisdiction in which the case was filed. In some parts of the country, courts held that a work is “registered” only when the Copyright Office has approved the copyright application.
In other areas, courts held that a work was “registered” as soon as the applicant filed the application, deposited a copy of the work, and paid the fee. These courts said the registration approach is illogical given that a copyright owner can sue for infringement even when the Copyright Office rejects the application.
Earlier this week, though, the Supreme Court resolved this split among jurisdictions in a case called Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC. In a unanimous decision, the Court held that the Register of Copyrights must either approve or reject an application for the registration of a copyright before the copyright owner can bring a suit for infringement.
The Court pointed out that if “registration” meant “application,” the statute wouldn’t need to say that a lawsuit can be filed if a properly submitted application is rejected.
This ruling means that unless your work is registered before the infringement occurs, you’ll have to wait until the Copyright Office processes your application before you can file a lawsuit.
In some cases, the delay may not be a problem, but it’s likely to result in a significant hardship if the three-year statute of limitations for copyright is about to expire or if you’re in a situation where you need the infringer to stop its infringing conduct immediately.
Courts can issue “temporary restraining orders” and “preliminary injunctions” in order to prevent a copyright owner from experiencing harm that can’t be corrected by financial compensation alone. If, however, the copyright isn’t registered and your application hasn’t been rejected, you won’t be able to request this relief from the court.
The average wait time for processing of a copyright application is seven months and, even if you pay the sizable premium for “special handling” ($800 per application, plus the regular application fees), there’s no guarantee as to how quickly the Copyright Office will examine the application, though it will try to process the application within five working days.
In another unanimous decision, the Court interpreted a portion of the copyright statute that says that a court “may allow the recovery of full costs by or against any party….”
In Rimini Street, Inc. v. Oracle USA, Inc., the Supreme Court held that the term “full” doesn’t mean that a court can award a party additional types of expenses beyond those listed in the general costs statutes.
A jury had determined that Rimini Street had infringed various Oracle copyrights, and the lower court awarded Oracle fees and costs, including nearly 13 million dollars for litigation expenses such as expert witnesses, e-discovery, and jury consulting.
Although Oracle had argued that the word “full” authorizes courts to award expenses beyond the costs specified in the general cost statutes, the Supreme Court held that “full” means the “complete measure of the noun it modifies” and does not change the meaning of the word “costs.” In other words, “full costs” are all of the “costs” otherwise available under the relevant law.
Therefore, awardable “costs” are normally limited to fees of the clerk and marshal; fees for transcripts necessarily obtained for use in the case; fees and disbursements for printing and witnesses; fees for exemplification of copies and the costs of making copies of any materials where the copies are necessarily obtained for use in the case; certain docket fees; and compensation of court-appointed experts, compensation of interpreters, and certain costs associated with “special interpretation services.”
This means that a lot of potentially expensive charges, including those for expert witnesses other than court-appointed experts, e-discovery, and jury consulting, are not recoverable by a successful party.
Further, pursuant to the copyright statutes, attorneys’ fees can be awarded as costs only if the copyright in the work at issue was registered before the infringement occurred. If, however, you register a work within three months of the date of first publication, the registration will be retroactive to the date of first publication.
Obviously then, it’s a good idea to register all of your copyrights within three months of publication. Timely registration also gives you the option of requesting statutory damages rather than actual damages, as well as a host of other benefits.
Please feel free to contact us if you have any questions about registering or enforcing your copyrights.
Photo by Claire Anderson on Unsplash
