On Monday, March 4 2019, the United States Supreme Court resolved a long-standing circuit split regarding when a party can sue for copyright infringement. What’s the split? For some time, several United States Circuit Courts allowed a party to bring an action for copyright infringement before the Copyright Office has issued or denied a parties copyright registration application. This was because it takes an estimated 7 months from the date of filing to the date of registration. The issue is, this circuit split was not supported by the plain text of Section 411(a) of the Copyright Act which states registration is a prerequisite to suit, not merely filing the application.
This was the central issue in Fourth Estate Public Benefit Corp v. Wall-Street.com, LLC, where Fourth Estate sued Wall-Steet.com for copyright infringement as a result of hosting various news articles Wall-Street.com no longer had permission or a license to display on its site. The kicker here was Fourth Estate had yet to receive a registration certificate for the various articles, and Wall-Street sought to dismiss the case because Fourth Estate had yet to comply with the prerequisite to bring its claim. Justice Ginsburg, drafting the Court's unanimous ruling stated it’s the role of Congress to correct the long delay at the copyright office and not the Courts.
How Does this Change Effect You?
In the United States once a work of authorship is recorded on a fixed medium you have a copyrightable asset. To protect that asset from infringement, or to enforce your exclusive rights in that asset you must file for a copyright with the United States Copyright Office. Now, time is a large factor when thinking about protecting your IP. As a developer or content creator, you will need to factor the additional time required to secure a copyright registration prior to commencing an infringement action.
For Developer Studio’s this enforcement of registration as a prerequisite should shift your thinking from protecting your IP once everything is finished to taking an as we go approach to protecting your copyrightable IP, and planning your developments legal budget for the year. As a studio, as parts of your project reach completion filing registrations in a proactive approach will save you time in the event you are forced to enforce your copyrights.
What if I am suffering from infringement now, do I still need to wait? What are my options?
If you're currently suffering from infringers don’t worry, there are options and paths for you depending on budget and type of work. The Copyright Act does allow for very limited exceptions applicable to certain categories of copyrightable assets. If you’re a copyright owner who is preparing to distribute work that is vulnerable to predistribution infringement, you may apply to the Copyright Office for preregistration. What type of works are these? Works that are vulnerable to predistribution infringement typically include movies or musical compositions. Another exception extends to live broadcasts, however, the copyright owner must eventually pursue registration for their claims in order to maintain their suit for infringement.
If you don’t fall into those categories there is another option around the 7 months estimated wait for registration. Copyright owners can opt for an expedited application review process called special handling, that results in the Copyright Office evaluating the if a work can be registered quickly, sometimes in less than 5 business days. To meet this special handling review a copyright owner must: have an acceptable application, an acceptable deposit, and a nonrefundable filing fee of $800 per claim. If this falls out of your budget, and you're forced to wait the 7 plus months for a registration certificate fear not. The Court in its ruling recognized this issue and will allow a Copyright owner to recover for both pre and post-registration infringement.
Press Start Legal’s team of intellectual property lawyers advises its clients on a broad range of copyright protection and enforcement strategies. Are you looking how to best protect your intellectual property within your business needs? Feel free to reach out to Zachary Rich at PressStart.Legal for a free consultation on how we can help you and your business protect your brand and all of your hard work.