Frankfurt Kurnit Klein & Selz

March 5th, 2019

Supreme Court Requires Registration Prior to Bringing Copyright Suit

Yesterday, the Supreme Court issued two unanimous decisions affecting the rights and remedies available to copyright owners. The takeaway from both cases was clear: copyright owners should register their work early and often. Not only will early registration avoid a delay in bringing a lawsuit, but registration before infringement allows a party to take advantage of additional remedies, including statutory damages and attorneys’ fees.

In Fourth Estate Public Benefit Corp. v. Wall-Street.com, the Court held that a copyright owner may not sue for infringement until the Copyright Office has ruled on its application for copyright registration. The Supreme Court’s opinion settled the split at the Circuit Court level between the “application approach”—where a plaintiff can sue as soon as a registration application is submitted—and the “registration approach”—where a plaintiff must wait until the Copyright Office has actually granted or denied the application before suing. In opting for the latter, the Court found that the language of Section 411(a) of the Copyright Act requires registration rather than simply an application. Although the Court recognized that the ruling would delay a plaintiff’s ability to sue and possibly result in the Copyright Act’s three-year statute of limitations expiring if the copyright owner waited too long before applying for registration, these concerns could not override the Court’s reading of Section 411. 

If a copyright owner is concerned about the registration processing time—presently averaging around seven months—the registrant could nevertheless pay an additional fee (currently $800) and opt for “special handling,” which usually only takes a few days. And, even under the “registration approach,” the Court made clear that copyright owners maintain the ability to recover damages incurred both before and after the registration issues. 

In its second copyright opinion of the day, Rimini Street, Inc. v. Oracle, the Supreme Court found that the prevailing party in a copyright infringement case is entitled to only the regular set of taxable costs enumerated in the federal code, in addition to damages. In that case, the district court ordered Rimini Street, which infringed certain Oracle copyrights, to pay Oracle $12.8 million in “nontaxable costs” accrued in litigation, including fees for expert witnesses, e-discovery, and jury consulting. Typically, an award of costs to a prevailing litigant is limited to six types of expenses enumerated in the federal code. Section 505 of the Copyright Act, however, empowers a court to award “full costs.” The Supreme Court found that “full” in this context operates as a term of “quantity or amount,” and does not expand the categories of costs, and thus the grant of $12.8 million in nontaxable costs was improper.

As a result, successful copyright infringement plaintiffs are limited in the costs they can recover. This is yet another reason why copyright owners should register early: if infringement occurs before registration, copyright plaintiffs are limited to actual damages, profits, and taxable costs. If infringement occurs after registration, copyright plaintiffs could potentially recover statutory damages and attorneys’ fees as well. 

If you have questions about these two Supreme Court decisions, or about another intellectual property matter, contact Nicole Bergstrom at 212 705 4858 or nbergstrom@fkks.com, or any member of the Frankfurt Kurnit Intellectual Property Group.