Linda Norbut reflects upon how the Copyright Act will be impacted by two recent Supreme Court decisions.
In a pair of unanimous decisions construing the Copyright Act, the U.S. Supreme Court has tightened pre-suit registration requirements and the costs that can be awarded in infringement litigation.
In Fourth Estate Public Benefit Corporation v. Wall-Street, LLC,, the Court held that in most cases copyright registration must be completed before an infringement lawsuit is filed.
The specific question presented in the case was whether the pre-suit registration requirement in 17 U.S.C. Section 411(a) is met as soon as the copyright owner delivers the required application, supporting material, and fee to the Copyright Office, as some courts have held, or if litigation must wait until the Copyright Office has granted or denied registration. Justice Ginsburg, writing for the Court, held the latter to be the correct interpretation of the statute, explaining that a completed registration is “akin to an administrative exhaustion requirement that the owner must satisfy before suing” for infringement.
In order to avoid any confusion, Justice Ginsburg included a reminder that, even though registration is required prior to suing under the Copyright Act, a copyright owner may nonetheless sue for infringement that occurred prior to registration, so long as the lawsuit is filed within the Act’s three-year statute of limitations. The Court seemed unconcerned with the effect that increasingly slow registration processing times might have on a copyright owner’s ability to enforce his rights, despite the Copyright Office’s current average processing time of seven months. Expedited registration is available from the Copyright Office for an additional cost, and preregistration of some works also is permitted, Justice Ginsburg noted.
In a second copyright case decided the same day, Rimini Street, Inc. v. OrFacle USA, Inc., the Court explored whether a court’s discretion to award “full costs” to a party in copyright litigation under Title 17 U.S.C. Section 505 extends beyond the six categories of “costs” specified by Congress in the general costs statutes, codified at 28 U.S.C. Sections 1821 and 1920. Those statutes provide for recovery of clerk and marshal fees, docket fees, certain printing and copy costs, fact witness fees, and compensation of court-appointed experts.
A district court ordered defendant Rimini Street to pay Oracle $12.8 million for litigation expenses, such as expert witness fees, e-discovery costs, and jury consulting fees. Justice Kavanaugh, writing for the Court, explained that courts may not award such litigation expenses absent Congress’ express authority. The term “full” is simply a term of quantity, which does not expand the categories or types of damages that a court may award, Kavanaugh wrote.
The takeaway from both cases is relatively simple: The Copyright Act says what it means and means what it says, and the plain meaning of its terms will usually provide all the interpretation one needs.
Linda Norbut is an Associate in the Tampa office of Thomas & LoCicero, She has a practice concentration in copyright and trademark law, while she also focuses on business litigation and intellectual property matters.
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