It used to be that some federal circuits allowed lawsuits to begin once an application had been filed with the Copyright Office. However, the current law, thanks to a recent U.S. Supreme Court decision1 is that an issued registration from the Copyright Office is required for owners to enforce their rights to copyrights.
Generally, an author or creator is entitled to exclusive rights to that work immediately upon creation. These “exclusive rights” include the rights to reproduce, distribute, and display the work. The Copyright act also grants the right of the author or creator to file a copyright infringement lawsuit in federal court in order to enforce those rights.
However, although the author or creator is entitled to those rights, they must first ensure that the copyrighted work has been registered with the Copyright Office in order to sue to enforce those rights, except in very limited circumstances. The process to register such a copyright takes approximately seven months, although expedited processing can be obtained in as little as two weeks for a significantly higher filing fee (approximately $800).
The case of Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC1 involved two different online news journalism entities. The Petitioner licensed news stories to be printed on the Respondent’s website. Pursuant to the licensing agreement between them, when that agreement was cancelled, the Respondent would have to remove the news stories from the website. However, here the Respondent did not remove the content, and so the Petitioner initiated a copyright infringement suit. However, at the time of filing suit, the Petitioner had not registered, nor even applied, for copyright registration with the Copyright Office. Although those applications were eventually denied, the issue before the Court was whether the suit was proper at all, or whether it could not be initiated until registration was completed.
In a unanimous decision, the Supreme Court ruled that a copyright owner cannot file a copyright infringement lawsuit until the Copyright Office has fully registered the work at issue. Notably, the Court did acknowledge that copyright owners still can recover damages for infringement that occurred prior to the registration of the work with the Copyright Office, although the Court limited those damages to “actual damages”, as opposed to punitive or speculative damages. It is only the filing of the suit that must wait until registration is completed.
Copyright registrations, unlike trademarks or patents, are relatively inexpensive and the process is relatively quick. As a result, we recommended that you start the registration process for all licensed works as soon as possible, preferably at creation. If there is a breach of the licensing agreement, you do not want to be scrambling at the eleventh hour to get that registration completed, waiting months for the results, or shelling out hundreds of dollars per work for expedited fees. Here, a little foresight can save you a lot of money and hassle. Also, if you wait until after the infringing use, the damages from that unauthorized use can accrue for months while you are waiting on registration, possibly causing damages that you might not be able to recover in the long-run. It’s simply better to use a little bit of caution now, to avoid a lot of headaches later.
So if you or your business has intellectual property that you need to protect, the time to act is now. Please contact us in order to help you through the registration process, or to help you go ahead and enforce your intellectual property rights if infringement is ongoing or imminent. Don’t wait and cause yourself a costly headache later.
1 Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, 586 U.S. ___ (Mar. 4, 2019) (slip op.).
This blog was written by the Hunter Business Law team.
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