Another Drumroll…the Supreme Court said you need a copyright registration to file that copyright lawsuit

By Matthew J. Booth

A couple of weeks ago I wrote about the timing of filing a copyright infringement lawsuit. The U.S. Supreme Court answered this question in Fourth Estate Public Benefit Corp. v. Wall-Street.com with a short, unanimous opinion by Justice Ginsburg. The answer is you need to have received a copyright registration before you can file the lawsuit. See Fourth Estate Public Benefit Corp. v. Wall-Street.com, No. 17-571 (US 2019). Link to opinion.

The Court went with the “registration approach” that I discussed in my earlier blog. This approach follows the plain language reading of the first part of section 411(a) (“…no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title”). See 17 USC 411(a). In reaching its decision, the Court said that the registration approach reflects the only satisfactory reading of the text of 17 USC 411(a).

Now that the Supreme Court has resolved the split between the Federal Courts of Appeal, it’s time to rethink copyright protection. The first step in any future strategy starts with the adage “file early, file often.” In industries such as media, music, and video games, one option is to use preregistration to put a marker down before filing the actual copyright application. I think that a “pre-registration” filing is the functional equivalent to the “application approach,” I discussed in my previous blog but it does have a basis in the statutory language. Another option is to use the expedited registration process at the Copyright Office which has a higher fee than a normal application ($800 per work versus $55 per work for normal processing) and which will result in a copyright registration within about one week. I suspect that because of this case, the Copyright Office will have an uptick in expedited registration requests and that the processing time will increase exponentially.

Copyright cases have a 3-year statute of limitations within which to file the lawsuit after the infringement occurs. See 17 USC § 507(b). If you feel that you can hold off filing the lawsuit while you wait the 8 to 9 months it is currently taking to receive the registration, then you can follow the normal “non-expedited” processing path.

Consulting with copyright counsel can help determine what filing strategy is best.

When can you sue for copyright infringement?

By Matthew J. Booth

Yet again, we have the dreaded, “it depends,” answer.  In this case, it depends on where you can bring the lawsuit because there have been different decisions in various Federal Circuit Courts of Appeal about the proper timing of filing a copyright infringement lawsuit.

Let’s go back to the beginning of this process.  When someone comes to me and asks me to sue another party for infringement of a copyright, my first question is, “Do you have a copyright registration?” Why? Because the Copyright Act seems to require you to have a registration to file the lawsuit. The relevant statute provides, “… no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights…” See 17 USC 411(a).

So, we know that we have to file an application for a copyright registration. After the application is filed, we go back to the original question, “When can we file that lawsuit for copyright infringement?” Sadly, the answer is still, “it depends.” At this point the language is slightly confusing about the mechanics and the timing of filing which has lead to the differing court decisions I mentioned earlier. So, unfortunately, the answer to this question depends on what court is going to hear the case. There have been different decisions in the various Federal Circuit Courts of Appeal on whether a plaintiff must have received a copyright registration before filing the lawsuit (the “registration approach”) or rather must only have filed a copyright application (the “application approach”) with the Copyright Office before filing the lawsuit.

The “registration approach” seems to follow a plain language reading of the first part of section 411(a) (“…no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title”). I think the second part of this section muddies that take (“In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights…”).

The “application approach,” on the other hand, views the actual copyright registration as a formality since an application with the Copyright Office results in a registration or a rejection of the application. Either of these decisions allows an applicant to proceed with filing a lawsuit. I personally think a couple of other factors weigh in on the application approach. First, an application for a copyright registration takes months before it’s issued or rejected (with the current time frame running about 6 to 9 months). Second, when a registration issues, the date of registration is the date that the application was filed. And finally (and unlike TV where things are fast and drama filled), a lawsuit for copyright infringement goes to trial at least 1 or 2 years after the lawsuit is filed, which is plenty of time for the Copyright Office to issue the registration or rejection.

The Copyright Office favors the registration approach though I think that has more to do with economics because they offer an expedited registration process for a higher fee ($800 per work versus $55 per work for normal processing).

The good news amidst all this confusion is that the US Supreme Court will finally get to weigh in and, hopefully, resolve this issue in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571. Link. The oral arguments were on 01/08/2019 (yes, Elvis Presley’s birthday!) so the decision should come soon.

If you have hung with me through this entire article, kudos to you for hanging in there through a complicated albeit important issue. Clarification of the timing on these filings will help everyone have a clear checklist for preparing to file copyright infringement lawsuits. As for me, I typically represent the copyright owners in these instances, so I hope the Supreme Court goes with the application approach. This approach will allow the copyright owners to start enforcing their Intellectual Property rights sooner and much closer to when the infringement actually occurred.

“And miles to go before I sleep, And miles to go before I sleep.”

By Matthew J. Booth

That’s a little bit what starting this adventure in blogging feels like. It is also the ending to Robert Frost’s poem “Stopping by Woods on a Snowy Evening.” On January 1, 2019, most copyrighted works published in 1923 went into the public domain. This includes several notable works including “Stopping by Woods on a Snowy Evening,” a dubstep version of “Yes, We Have No Bananas,” and Winston Churchill’s The World Crisis. The practical effect of this is that everyone can now republish worry free those works or adapt them for use in new works. A quick internet search will reveal most of the works that have now entered the public domain.

Why has it been a whopping 21 years since such a large number of works have entered into the public domain? In 1998, works published in 1922 or earlier were in the public domain. In that same year, Congress passed the Sonny Bono Copyright Term Extension Act that increased the duration of copyright protection for works published between 1923 and 1977 from 75 years to 95 years. The practical effect of the law was that the flow of works into the public domain completely stopped for a 21-year period.

How did the public domain get frozen in time for 21 years? One of the prime movers for the passage of the Act was Disney because the first appearance of Mickey Mouse, in the movie Steamboat Willie, occurred in 1928. Under the copyright laws in 1998, that version of Mickey Mouse would have entered into the public domain in 2004. After passage of the Act, this version of the Mouse is still protected until 2024.

A very nice source of information on copyright term and the Public Domain can be found here at Cornell University Library’s Copyright Information Center.