This month, the Supreme Court heard oral arguments in two cases involving fairly technical aspects of copyright law. One case, Rimini Street v. Oracle, involves a question of what “full costs” to a prevailing party means and whether it includes both taxable and non-taxable costs. The other case, and the subject of today’s column, Fourth Estate v. Wall-Street.com is also a rather technical aspect of copyright law and will clarify a long-debated question. At first glance, it seems like a simple question: when has registration of a copyright claim been made? But the answer has resulted in a circuit split, which of course makes it a great case for SCOTUS.
I’ve talked briefly about registration before, but this case provides an excellent reminder of what registration is and why it’s important. Of course, under the Berne Convention, which is incorporated in the WTO Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), formalities — such as notice and registration — aren’t necessary for copyright protection. While copyright protection exists from the moment of creation, registration still provides important benefits for the rightholder. One of the most notable benefits, of course, is the ability to sue for copyright infringement, and Section 411(a) of the Copyright Act requires registration before civil action for infringement. That these benefits require registration isn’t a mistake and is intended to encourage registration, which serves the public interest in providing notice and information about copyrighted works and also requires deposit, allowing the Library of Congress to grow its collection.
While much attention has been given to the backlog of patent applications, the fact that the Copyright Office needs to act upon registration applications is often overlooked, probably because the registration isn’t necessary for copyright protection (unlike patents, which require the application to be granted for protection). Certainly, the bar for originality in copyright cases is much lower than the requirements for patents, but there is a minimum threshold to consider. After receiving the registration application, the Copyright Office examines the application to ensure that statutory requirements for protection have been complied with. While it’s a much less intensive process that patent application reviews — which, of course, necessitate looking at prior art and determining whether the claimed invention is novel and useful — it can still take months from application to certificate of registration. Applicants can pay a fee of $800 to expedite the process, for example, where litigation may be imminent.
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Some courts, notably the Fifth and Ninth Circuits, take the position that the registration occurs upon delivery of the application for registration, deposit of the work, and fees paid to the Copyright Office; in other words, the application may be still be pending when litigation occurs. The Tenth and Eleventh Circuits, by contrast, have held that registration occurs only after the Copyright Office acts on the application and the certificate is issued. These different positions impact the timing of litigation, and the end result will either favor the copyright owner (who can initiate litigation more quickly, even if their claims for copyright registration are ultimately denied — as occurred in the present case) or the public (by upholding the value of a public registry and acknowledging the Copyright Office’s role in denying some applications).
During oral arguments on January 8, Chief Justice Roberts indeed pointed to the practical reasons for waiting until after the Copyright Office has acted: an applicant is “not entitled to the special benefits [provided by registration] under the [Copyright] Act until the registrar” has acted, “[o]therwise, how do you know that you’re entitled to those benefits?” Justice Sotomayor appeared to agree, raising questions about what would happen if a court acted and entered an injunction or other judgment only to have the Copyright Office later reject the application for registration.
While Justice Kavanaugh did raise concerns regarding the delays in registration and the “devastating impact and . . . severe hardship” that industry amici claim, he acknowledged that at least textually, the statute supports a reading permitting litigation after the Copyright Office has acted on an application for registration. In response to this line of question and amici opposition to a holding that requires the Copyright Office to act before litigation commences, counsel for Wall-Street.com argued, “there’s not ambiguity in the statute, but rather, a profound dissatisfaction on the part of some stakeholders.” Indeed, “profound dissatisfaction” by stakeholders has a more proper role in influencing legislative policymakers than arguing textual ambiguity in a statute.
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Krista L. Cox is a policy attorney who has spent her career working for non-profit organizations and associations. She has expertise in copyright, patent, and intellectual property enforcement law, as well as international trade. She currently works for a non-profit member association advocating for balanced copyright. You can reach her at [email protected].