At Lawrence G. Townsend, Intellectual Property Lawyer, we represent California plaintiffs and defendants in federal copyright infringement lawsuits. The copyright owner of an “original work of authorship” has an exclusive right to control, use and protect its creative work, which could range from books, movies, and architecture to music, poetry and software.
A creative work eligible for copyright protection is automatically protected by copyright law upon its tangible creation, but to file a federal lawsuit for copyright infringement, the work must be registered with the U.S. Copyright office, a government agency. Infringement happens if a copyrighted work is “reproduced, distributed, performed, publicly displayed, or made into a derivative work without” the owner’s permission, according to the Copyright Office.
When does registration giving the right to sue for infringement occur?
The U.S. Supreme Court has agreed to hear Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, a case that presents an important legal issue that has split federal courts and should be settled by the highest court.
The Copyright Act requires that to bring an infringement suit one of these must be true:
- The copyright must be registered.
- The registration application, deposit and fee must be filed with the Copyright Office and registration refused.
The issue before the Supreme Court is whether a copyright owner can bring an infringement lawsuit if it has filed the application, deposit and fee, but the Register of Copyright has not yet decided whether to approve the registration request.
Resolution of this question can be financially crucial to copyright owners, since in a federal copyright infringement suit, the owner could recover actual or statutory damages, an injunction (court order to stop infringing) and legal fees and costs. Or the copyright owner could face dismissal of the suit if the registration requirement is not met.
Completing the examination of the application can take significant time. It can involve ongoing communication between the owner and the Copyright Office to clarify or supplement the claim, and sometimes the issues are complex. The average time for resolving a copyright registration application (until approval or denial) is about eight months.
So, the give-or-take eight-month examination period is the time in question in Fourth Estate. The federal appeals courts are divided:
- Registration approach: This is the approach of the 10th and 11th Circuit Courts of Appeals and means an owner can only file a suit after the examiner has granted or denied the application.
- Application approach: The 5th and 9th Circuits have held that filing the registration application, even before the Copyright Office has examined the application and decided whether to grant or deny it, is sufficient to allow an infringement lawsuit. (California is part of the 9th Circuit.)
The Authors Guild and other advocates for artists, musicians, authors and other creative people are urging the court to follow the application approach because it seems unfair to make the copyright holder wait through the unpredictable examination process to accrue the right to sue, when the owner has done all it can do by filing the application.
Opponents of the application approach feel that the plain words of the law require a final decision on the application.
This case is extremely important for our clients and we will keep readers informed about the outcome of the case, which has not yet been scheduled for oral argument as of this date.