News analysis: Copyright Office delays in the spotlight

In the wake of Fourth Estate, copyright owners will need to be more proactive in registering their copyright before infringement occurs. WIPR examines the issues.

Copyright law in the US as it currently stands is the product of more than 200 years of amendments. At its inception in 1790, copyright protection was limited to 14 years (with the possibility of renewal for a further 14 years) and granted only on application. Since then, the duration of copyright has increased steadily, while the requirements for application or registration of the right have, broadly, loosened.

Today, there is no requirement to register a copyright in order to own it. However, since 1976, when the US Copyright Act was codified in USC section 411 of title 17, the law has required that “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”.

"What we’re seeing is perhaps a return to a system in which there is a de facto need to register copyright up front in order to exercise it effectively."

That registration needs to be made at the US Copyright Office, a process which currently can take between eight and 12 months.

If this seems slightly paradoxical—a person can own a right without registering it but can’t enforce the right without registering it—it’s not exactly controversial, and indeed the plain English reading of section 411 seems pretty clear.

The question raised in Fourth Estate Public Benefit Corporation v Wall-Street.com essentially hinged on what constitutes ‘registration’. Is it the application for registration or the grant of it? The court was clear and unanimous that it was the latter.

In one sense therefore, the decision is welcome. If there’s one thing business owners and the legal sector crave, it’s certainty, and the ruling brings that in spades. The problem is with the Copyright Office. Justice Ginsburg, writing for the court, was careful to highlight that any delays to registration at the Copyright Office could be reflected in later damages settlements in litigation, and that copyright owners could, at law, recoup any losses incurred by such a delay.

However, that is a less-than-ideal solution to the problem, because alongside the monetary losses associated with copyright infringement, there are larger issues at play, such as the longer term effects on the status and impact of a copyrighted work if, at a minimum, the first eight months or so of its existence are subject to infringement.

It may also be possible to put a monetary value on those effects, but it will certainly be impossible to reverse the effects themselves. The Copyright Act does make provision for exceptions to the need for advanced registration for certain types of vulnerable work, such as live broadcasts and musical compositions, so creators of such works have a slightly easier path to defending them.

Ginsburg suggested that the Copyright Office issue was one for Congress to address, and indeed the office had its budget increased for fiscal year 2019, but there’s a long way to go until owners can feel confident that registering their copyright will happen in a timely enough fashion to guard against significant damages.

In the meantime, it seems that copyright owners will need to be more proactive in registering their copyright before infringement occurs, including using the office’s expedited procedure in certain cases (at a cost of $800 which, if taken up in significantly large volume, will itself help the office’s funding issues). What we’re seeing is perhaps a return to a system in which there is a de facto need to register copyright up front in order to exercise it effectively.

SCOTUS and IP

It may be noteworthy that Fourth Estate was the eighth copyright case decided by the Supreme Court this decade (and the ninth, Rimini Street v Oracle, regarding the definition of costs, followed soon after). That makes it the busiest copyright decade for the court since the 1930s. The reasons for this spike are difficult to ascertain, and indeed it may be a coincidence given the variety of issues at play in the various cases.

However, we can see a similar pattern in the trademark arena (eight cases this decade, the busiest since the 1920s) and with patents (22 cases this decade, the highest on record).

What is the explanation for this increase? One might speculate that there are two key elements: on the patent side, the advance of new technologies in the life sciences and technology spaces have clearly prompted renewed controversy over what exactly constitutes ‘invention’, whether that be a case of when and whether something can be computer-implemented or defining the line between something occurring in nature or being a product of innovation.

More broadly, the increase might reflect the fact that the internet has been totally transformative of society, changing attitudes, changing the speed and breadth of dissemination, changing the way things are sold and the markets to which they are sold. In an online world, IP is arguably more important than ever before, and as the value business puts on it increases, so might the number of challenges to protecting it effectively.

Whatever the explanation for the rise, it seems likely that an increase in the number of IP cases reaching the court is a harbinger of further legislative changes. As Ginsburg said in the Fourth Estate opinion, there is ultimately only so much the court can do to interpret the law. Ultimately, it may be that legislation will be required, on copyright in particular but perhaps elsewhere, to deal with the changing landscape.