The U.S. Supreme Court recently granted certiorari in a case, Fourth Estate v. Wall-Street.com, that will determine a simple but critical question effecting the copyright industry nationwide: What stage of the copyright application process does a plaintiff need to have reached before they’re eligible to file a lawsuit?
The court’s decision will likely rest on the interpretation of eight words in Section 411(a) of the Copyright Act: Whether “registration of the copyright claim has been made.” Multiple circuit courts have interpreted the language differently. The 10th Circuit Court of Appeals, for instance, has found that to be eligible to file a copyright claim that person has to first have received approval of the copyright from the government. Other courts — the 5th and 9th Circuits, for example — have held that an individual need only to have initiated the application process.
The catch is that it can take more than a year to receive a decision on an application filed with the U.S. Copyright Office.
“It’s a really significant glitch,” said Regina Drexler, of counsel at Ireland Stapleton, who handles copyright and IP matters at the firm. “This will be an important decision because of the impact and because of the [circuit court] splits.”
In petitioning the court to hear the case, Aaron Panner, partner at the D.C.-based firm Kellogg Hansen Todd Figel & Frederick, wrote on behalf of Fourth Estate, “The question presented not only recurs repeatedly in copyright infringement cases but also frequently leads to wasteful litigation; worse, the interpretation adopted by the Eleventh Circuit can deprive the owner of a valid copyright of statutory remedies for infringement. Courts, including several courts of appeals, and scholars have addressed the question and reached opposing views, and there is no prospect that further litigation will resolve the conflict among the circuits. The judgment below turns wholly on the answer to the question, making this case an appropriate vehicle for this Court to resolve it.”
In this case, the Fourth Estate, an independent news organization licensed some of its work to Wall-Street.com, which then displayed the copyrighted Fourth Estate content on its website. Wall-Street.com later cancelled its account but did not remove the Fourth Estate stories from its website. Fourth Estate sued, seeking an injunction and damages. The company filed a registration application with the copyright office prior to suing but did not wait to receive a determination.
“The question presented is of significant practical importance,” Panner wrote in his brief to the court. “Whether the plaintiff has satisfied the registration requirement … may arise at the outset of any infringement case involving a non-exempt U.S. work. In cases where infringement is ongoing and an application for registration is complete but not yet acted on, an infringer can, at a minimum, delay proceedings on the merits and impose additional costs on the copyright owner while the question of compliance with § 411(a) is resolved. (That is what occurred here.) This is especially true in those eight regional circuits where the question has not yet been resolved by the court of appeals.”
Tim Getzoff, partner at Holland & Hart, said it’s a good thing the court has taken this case, particularly because of the “very clear split” among the circuits. “The starting point is to understand that you get copyright rights even without registration; you have copyright rights as soon as you create an original work,” Getzoff said. “But to file a lawsuit — you can’t enforce your copyright against an infringer unless a registration has been made, and that’s the language that’s got everyone.”
It costs $35 to file a standard copyright registration application. There’s also an option to expedite the process but for a steeper $800 price tag.
Drexler said the decision by the Supreme Court could have broad impact on the way artists approach copyright registration. “If you think about how many works of authorship there are, it’s overwhelming in terms of the amount that’s being produced in the country on any given day,” she said. “A lot of that work is not registered. It could be a very expensive proposition; even though the application fee is very reasonable, that can add up.”
Several groups including the American Bar Association, the National Music Publishers’ Association and the International Trademark Association have already filed amicus briefs in the case.
The brief filed by the National Music Publishers’ group notes the lengthy timeline the copyright office tends to work on. “The Copyright Office operates with a limited budget, staffing, and resources. The Office acknowledges that it typically takes seven to nine months, and sometimes more than two years, for a copyright owner to receive a copyright certificate. In the experience of Amici’s members, the delay can be even longer and in some instances may consume most or all of the Copyright Act’s three-year limitations period, thereby eliminating altogether a copyright owner’s ability to bring an infringement action. Moreover, as also recognized by the Office, the general trend in recent years is that processing times are increasing.”
Getzoff noted, “It’s kind of a dumb dispute that was created by sloppy language. You can argue it both ways. It’s good to get this resolved.”
— Chris Outcalt