North Nash

A COPYRIGHT CASE TO WATCH… SIGNIFICANT IMPLICATIONS FOR CONTENT OWNERS!

Posted: March 15, 2018 |

All owners of copyrightable content should be watching closely Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC (“Fourth Estate”). This is a case filed in Florida and now progressing through the federal appeals court, with a cert. petition having been filed with the U.S. Supreme Court (“SCOTUS”). The case raises procedural issues under the Act that are of crucial significance to copyright owners who want to enforce their rights promptly in any appropriate court. SCOTUS may clarify.

Copyright owners may bring infringement actions under the Copyright Act of 1976 in district courts to enforce the exclusive rights protected under the Act.   An infringement action, however, cannot be filed for a “United States work” until registration or pre-registration of the work “has been made in accordance with [the Act].”  17 U.S.C. § 411.  But what does this mean? Unfortunately, the federal courts disagree on how to interpret this provision. Does a plaintiff have to hold an issued copyright registration before having the right to file a copyright infringement action for a U.S. work? Or is it sufficient to have filed a copyright application with the Copyright Office in order to commence a lawsuit? The United States Courts of Appeal are divided. 

In particular, the appeals courts disagree on when a copyright registration “has been made” in order to satisfy the Act’s pre-suit registration requirement. The Ninth Circuit (and the Fifth) hold that a mere application on file with the Copyright Office prior to filing suit will suffice. On the other hand, other courts (e.g., the Eleventh and Tenth Circuits) require that an application have ripened into a registration issued by the Copyright Office. Other Circuits either have not ruled on the point or have conflicting opinions.

The practical significance between the application-only and the completed-registration approaches can be of major importance because timing can be crucial. A mere copyright application can be accomplished in minutes, while obtaining a registration from the Copyright Office can take months. 

In Fourth Estate, plaintiff Fourth Estate Public Benefit (FEPB) brought suit against Wall-Street.com, alleging claims for copyright infringement for articles defendant had posted on its website.  A license from FEPB had allegedly expired. At the time of filing suit, FEPB had on file applications to register the works at issue, but had not yet received certificates of registration. The district court in Florida held that FEPB had failed to comply with the Copyright Act’s registration requirement and dismissed the action. The Eleventh Circuit Court affirmed the dismissal on the basis that a mere application does not satisfy the pre-ligation registration requirement of section 411.

FEPB filed a cert petition to SCOTUS, citing the split among the circuits.  FEPB of course argued for the application-only approach. Defendant argued that the completed-registration requirement is more consistent with the Act’s actual wording and policy rationales.

In January 2018, SCOTUS invited the Unites States Solicitor General (SG) to express the government’s view on the issue. As the Court gave the SG no deadline to file, there is now no time certain for when the Supreme Court may decide the cert petition. 

The Supreme Court’s request for the SG’s view certainly reflects the Court’s recognition of the seriousness of the issue; and the potential for review to resolve the conflicts among the circuits and district courts around the nation. 

Should the Court grant cert, a ruling that affirms the strict completed-registration approach would incentivize content owners to routinely and promptly seek registration for their important works so they can file litigation on a timely basis. Considering that some registration applications can languish for months or years, the need for prompt injunctive relief to restrain unlawful acts of infringement can be frustrated by the completed-registration approach. The completed-registration approach would also highlight the need for copyright owners to promptly apply for registration, in order to avail themselves of the right to seek statutory damages, which typically are available only for a work that was registered at the time of the act of infringement. On the other hand, should the Court rule for the application-only approach, copyright owners would be at liberty to prosecute infringement actions around the country without waiting for the Copyright Office to issue a registration. 

All copyright owners should watch the outcome of Fourth Estate in order to formulate an appropriate copyright protection strategy.

THE ATTORNEYS AT NORTH, NASH & ABENDROTH LLP ARE EXPERIENCED IN COPYRIGHT LITIGATION AND WOULD BE PLEASED TO CONSULT WITH YOU ABOUT A COPYRIGHT ISSUE OR LITIGATION. 

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