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SCOTUS ruling will drive copyright registrations, say lawyers

Post Time:2019-03-07 Source:WIPR Author: Views:

The US Supreme Court’s decision in Fourth Estate Public Benefit Corporation v Wall-Street.com is likely to drive more creators to file for copyright registration and force businesses to reassess their IP strategies.

Earlier this week, the court unanimously ruled that copyright infringement suits cannot be filed until after the US Copyright Office has granted registration of the work at issue.

Delays and demand letters

As the court noted in its decision, creators may be faced with a delay as “the processing time for copyright registrations has increased from one or two weeks in 1956 to many months today”, said Michael Kelber, partner and co-chair of Neal Gerber & Eisenberg’s IP practice group, based in Chicago.

He added that the decision may result in an increased number of expedited copyright applications in the near term, a sentiment that Keyonn Pope, partner in Reed Smith’s Chicago office, agreed with.

Pope said: “Despite ruling that copyright registration is required before filing suit, Justice Ginsburg acknowledges and appears to somewhat sympathise with creators’ complaints concerning registration delays.”

Soon after the ruling was handed down, content groups expressed concerns that the decision, which means that the act of filing an application for registration is insufficient before pursuing a claim, would make it more difficult to stop online infringement.

Trade body Copyright Alliance claimed that “in a world of viral, online infringement, a lot of damage can be done to a copyrighted work while an owner is powerless to stop it”.

Pope said that in theory, the decision could create an “impediment to enforcing online infringement, as it could delay the owners’ ability to file suit”. But, in practice, many copyright enforcement and policing matters are resolved without the need to file a complaint, according to Pope, and the decision doesn’t appear to prohibit content owners from sending demand letters to infringers.

Proskauer Rose partner Alex Kaplan, who is based in the firm’s New York office, agreed that there’s likely to be an uptick in applications.

However, he noted that the ruling may make it more difficult for copyright owners in the sense that, if an act of infringement occurs before the copyright owner has applied for registration, they will have to wait several months to enforce their rights or pay an $800 fee to expedite registration.

“Unless the copyright holder is willing to spend $800 to expedite the registration or wait months to enforce its rights, vigilant copyright holders are more likely to apply for registrations as soon as they create their works, rather than wait for an act of infringement”, said Kaplan.

Client advice

Josh Reisberg, a partner in Axinn’s IP practice in New York, also presented a potential issue arising from the decision.

He said: “The natural reaction to this ruling is that some copyright owners may be time-barred from bringing an action for infringement if they are running up against the three-year statute of limitations and have not filed for registration.”

Reisberg added that the decision reinforces the need for copyright owners to be diligent in registering copyrights and consider the registration process to be an “integral component of their business practices”.

Clients of McDonnell Boehnen Hulbert & Berghoff (MBHB) are being advised to apply for registration well before they think they may need to enforce their rights.

“Although the court (and the Copyright Office) indicated that the ‘average processing time for all copyright claims is seven months’, we have experienced much longer processing times in some cases,” said Eric Moran, partner at Chicago-based MBHB and chair of the firm’s trademark, unfair competition, advertising law and copyright practices group.

John Polito, the San Francisco-based leader of Morgan Lewis’s trademark and copyright litigation practice in, advised creators who have filed a lawsuit with copyright claims based on applications alone should reach out to the Copyright Office to expedite any still-pending applications via a request for special handling.

He also advised creators that are planning to register works in preparation for a suit should revise budgets to account for special-handling fees and timelines.

Strict statutory interpretation

“Most interesting about the decision is the way that the court navigated policy concerns while sticking to a strict statutory interpretation,” said Moran.

Kaplan added that the “seeming ease” with which the court reached its decision was interesting, considering that a number of circuit courts had followed the (now rejected) application approach.

Moran explained that both in the decision and at oral argument, the court recognised that a “registration approach” creates policy issues for copyright owners that an “application approach” could alleviate.

However, instead of addressing these concerns, the court seemed to encourage budgetary or legislative fixes.

“Delays in Copyright Office processing of applications, it appears, are attributable, in large measure, to staffing and budgetary shortages that Congress can alleviate, but courts cannot cure,” said the court.