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Critical timing: Supreme Court decision affects when copyright suits can be filed

A U.S. Supreme Court decision earlier this year has affected the timing of filing a lawsuit for copyright infringement.

The high court held on March 4 in Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC that a party already must have obtained a registration from the U.S. Copyright Office prior to bringing a copyright-infringement lawsuit.

Previously, in some circuits, a copyright-infringement suit could be brought as long as a copyright application had been filed with the U.S. Copyright Office.

“Primarily, the decision standardizes when a party is able to file a copyright-infringement lawsuit across the country,” said Nancy Del Pizzo, a partner in the intellectual property group at Uniondale, New York-based Rivkin Radler.

The Second Circuit, which includes New York, “already required a copyright plaintiff to obtain registration before filing a lawsuit, but it was not the case everywhere.” For instance, the Ninth Circuit, which includes California, held that a plaintiff need only have submitted the application before bringing a suit.

“I think it’s a good decision in that it adds clarity to this issue of whether you need an issued registration from the U.S. Copyright Office or if filing an application was good enough,” said Anthony Bennett, a partner at intellectual property law firm Hoffmann & Baron in Syosset, New York.

The fact that some circuit courts required a registration before filing a lawsuit and others didn’t led in some cases to forum-shopping.

“Let’s say a plaintiff who lives in California created an original work of authorship and was alleging a company based in New York was infringing on his copyright,” Del Pizzo said. “If he didn’t have the registration in place, he may look to sue in California, especially if the deadline for the three-year statute of limitations is approaching.”

It can take up to a year to obtain registration, unless the applicant opts for the speedier but more expensive special handling provision, Del Pizzo said.

The government fee for filing for a copyright registration is $55, Bennett said. This does not include any legal fees. There is an $800 fee to expedite the application, according to Del Pizzo.

The Supreme Court decision reinforces the importance of filing a copyright application as soon as possible after a work is completed, Bennett said.

When individuals write a book or a song, they often decide right away that they want to protect it, and they understand that they need to file a copyright application, Bennett said.

But when businesses have a website or brochure, or they’re creating a lot of content throughout the year, they sometimes don’t know whether it’s worthwhile to file for a registration, Bennett said.

“There is not necessarily a thought that one particular work is important enough to go through the registration process,” he said. “When I talk to clients, I tell them that if they would be upset or it would be damaging to their business if something were copied — if they spent a lot of money, time and effort creating it — that they would want to go forward and get a registration.”

Sometimes businesses take an approach of “Maybe I’ll put something out there and wait till someone infringes on it and start the proceedings then,” he said.

But if claimants do not have a registration prior to the infringement happening, “they lose the opportunity to collect statutory damages and attorney’s fees,” Bennett said. “That’s something you’re entitled to if you file the application right away.”

Further, by getting the application in early, hopefully the registration will come in before the infringement occurs, allowing the copyright holder to take swift legal action against infringers.

Creators of original works such as poetry, novels, movies, songs, computer software or architecture own a copyright to their work just by creating it. But without obtaining copyright registration, they cannot enforce their rights.

“If your work is out there since June 1 and someone started infringing on June 2, you can seek damages back to that first act of copying once you get the registration,” Bennett said. “So you have protection in that sense, but you can’t go into court and enforce it until you get registration.

“Congress and the Copyright Office want to promote registration,” he added. “If you have a work, they want you to register it. That’s why they give you these benefits: statutory damages and the ability to file a lawsuit.”

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