SCOTUS copyright ruling could cost creators more money, lawyers say
If the US Supreme Court rules that copyright owners must obtain approval of their registration before filing an infringement suit, it could prove much more expensive for creators, lawyers have told WIPR.
Today, January 8, the court will hear arguments in the case Fourth Estate Public Benefit Corp v Wall-Street.com on whether a copyright suit can only be filed after the US Copyright Office has approved a registration.
Under section 411 (a) of the Copyright Act, “no civil action for infringement of 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”.
The Supreme Court must now decide whether a copyright registration has been made when the copyright owner submits an application to the Copyright Office (the application approach), or only once the Copyright Office acts on that application (the registration approach).
The decision concerns a dispute between online news organisation Fourth Estate Public Benefit Corporation and financial services website Wall-Street.com.
Fourth Estate took legal action against Wall-Street for infringing its copyright in 2017, but it was unsuccessful in both the district court and an appeals court as its copyright application had not been approved by the Copyright Office.
Although IP lawyers offered WIPR a variety of opinions, there is a consensus among them that if the court rules in favour of the registration approach, filing a copyright infringement suit could prove much more expensive for creators.
Appeals courts in the US have taken different approaches to these issues.
Laura Goldbard George, co-practice group leader of IP at law firm Stroock & Stroock & Lavan, based in New York, said that despite the split between the courts, copyright owners have not been significantly affected in practice.
A registration approach outcome would mean that owners who wish to file a suit against an infringer “will seek to have their application expedited … albeit at a greater cost”, said George. The present expedited review process costs $800.
George told WIPR that she expects the court to rule in favour of Wall-Street because requiring registration as a precondition “is a better way to encourage owners to seek registration as early as possible”.
Robert deBrauwere, an IP partner at New York-based Pryor Cashman, disagreed with George and said he was inclined to believe the court will rule in favour of the application approach.
An application approach would have a “very significant impact” on copyright owners’ ability to secure injunctive relief, he continued.
Matthew Williams, a partner at Los Angeles-based MSK, said he is hopeful that the court will adopt the correct interpretation of the statute, which means adopting the application approach.
Williams said that copyright owners “face enough challenges in the digital era” and that “imposing an additional, unnecessary burden and expense on copyright owners would be harmful”.
He said a registration approach would prevent quick injunctive relief against digital piracy and block the “effective use” of the Digital Millennium Copyright Act’s notice and takedown provision.
He also argued that requiring action from the Copyright Office first “could lead to fewer applications being filed because the delay in the ability to file suit and the increased cost of doing so could discourage some potential plaintiffs from pursuing a registration or a lawsuit”.
Fourth Estate’s original complaint for copyright infringement, which was filed at the US District Court for Southern District of Florida, alleged that Fourth Estate previously provided Wall-Street with news articles for publication under a licence. After Wall-Street cancelled the licence arrangement, it was required to remove the content, but it refused.
Wall-Street moved to dismiss the complaint, arguing that the Copyright Act would permit a suit for copyright infringement only after the Register of Copyrights had approved Fourth Estate’s application. This view was upheld by the district court.
Fourth Estate appealed against the decision, but in May 2017, the US Court of Appeals for the Eleventh Circuit declined to hear the case because Fourth Estate’s copyright application had still not been approved.
Fourth Estate then took the case to the US Supreme Court, which granted certiorari on June 6, 2018.
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