Occasionally, a court decision is rendered that materially impacts intellectual property law and should be publicized as nonlawyers need to be aware of its import. Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 17-571, handed down on March 4 by the United States Supreme Court, is such a decision. In Fourth Estate, the Supreme Court holds that a copyright lawsuit cannot be filed until the copyright registration to the work is approved by the Copyright Office. The Supreme Court abrogate the decision of the United States Court of Appeals for the Ninth Circuit in Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612 (9th Cir. 2010), which permitted a copyright applicant to file suit as soon as he or she had submitted an application for copyright registration to the Copyright Office.
Why is this important to the artists, photographers, composers and authors? Delay. Waiting until the application for copyright has been finally approved means that the lawsuit is delayed until application review is completed by the Copyright Office, a process that takes many months. The ramification of this delay is that the original author or creator of a work cannot seek prompt injunctive relief to stop infringement. While an expedited application may be filed, the cost is an additional $800.
The more important reason to register works early is: if infringement occurs before the registration is filed, the copyright owner is barred from recovering statutory damages provided by federal statute and his or her attorney’s fees and costs of litigation. Without the ability to recover statutory damages (which can be up to $150,000 for willful infringement), attorney’s fees and costs, enforcement of a copyright is economically unjustifiable, as the copyright owner’s ultimate recovery may be insignificant when compared to the legal fees incurred.
Now that the Supreme Court has settled the issue of when a copyright lawsuit can be filed, not to register a copyrightable work promptly with the Copyright Office is indefensible if the copyright owner wants to protect the work from infringement. All too often, an artist, writer, photographer or composer learns too late that the failure to register his or her copyright before an infringement occurs renders a copyright lawsuit financially impractical.
This week’s writer is Rex Stratton, Of Counsel to Lynch & Foley P.C. in Middlebury.