Understanding the Impact of the United States Supreme Court’s Decision in
Estate Public Benefit Corp vs. Wall-Street.com:
Requiring Copyright Stakeholders to Register their Works Often and Early
Have you ever seen “All Rights Reserved” under a a popular website? These formalities indicate to the public that the owner of the website is the copyright holder and as a result holds all the rights provided by copyright law. In other words, to use any part of the copyrighted material, one must obtain permission, regardless if it is specified or not.
What can you copyright? Believe it or not, Copyright is everywhere. From videos, pictures and audio files to written pieces, building designs and sculptures. There are three basic requirements that a work must met to be protected by copyright. The work must be original, i.e., must be independently created. The work must be creative, i.e., include at least a very small amount of creativity. Third, the work must be fixed, i.e. it has to be sufficiently permanent or stable to permit it to be perceived, reproduced, or communicated. Very few works of authorship fall outside of copyrightable subject matter.
Estate Public Benefit Corp v. Wall-Street.com (2019)
Fourth Estate Public Benefit Corporation (FEPBC) is a news organization producing online journalism. The organization also licenses articles to websites while retaining the copyright to the articles. Wall-Street.com obtained licenses to several articles from FEPBC, and under the license agreement, Wall-Street.com was required to remove all content produced by FEPBC before cancelling its account.
After some time, Wall-Street.com cancelled its account yet it continued to display the articles produced by FEPBC. Consequently, FEPBC filed a lawsuit for copyright infringement. Although FEPBC filed an application to register its allegedly infringed copyrights, the United States Copyright Office had yet to approve and register the claim. So, you have FEPBC trying to sue for copyright infringement, meanwhile Wall-Street.com argued that without a valid issued registration by the United States Copyright Office, that there was no basis to sue for infringement.
The Federal district court dismissed FEPBC’s copyright infringement action, explaining that the “registration” component under Section 411 of the Copyright Act required that the applicant of the copyrights “register” the claim, and that step had not occurred prior to filing suit. The Eleventh Circuit – which is the Federal appeals court for the states of Florida, Georgia and Alabama – affirmed.
Before this case, the Federal Circuit Courts (ie, the appeals courts) were split as to whether the submission of an application for registration to the United States Copyright Office was sufficient to comply with the statute. Some circuits held that submission of applicant only (prior to the actual registration) was sufficient, while others held that formal issuance of a registration certificate by the United States was required.
Supreme Court Justice Ruth Ginsburg drafted the unanimous ruling that settled the split amongst the Circuit Courts. The Supreme Court ruled that infringement lawsuits cannot be filed until the Copyright Office formally issues a copyright registration. However, Justice Ginsburg did note that the ruling allows infringement to continue for some time before a copyright owner can stop the infringement; the average processing time for copyright applications being 11 months.
How Does the Supreme Court’s decision affect owners of copyrightable works?
Following the ruling in Fourth Estate Benefit Corp, a copyright owner who discovers infringement but has yet to register must first file an application for copyright and then wait for the Copyright Office to issue the underlying registration before filing a copyright infringement lawsuit in Federal Court. However, one option available to the copyright owner is to seek registration of the copyrightable work of authorship on an expedited basis. Specifically, the United States Copyright Office offers “special handling” of copyright applications for the specific purpose of “pending or prospective litigation.” However, that “special handling” fee is not cheap – and it is currently an additional fee of $800 (in addition to the underlying standard application fee). Copyright owners – who choose the “special handling” option and pay the fee are not necessarily guaranteed a specific date in which the registration will issue. Instead, the Copyright Office states it will “make every attempt to examine the application … within five working days.” Compendium of U.S. Copyright Office Practices § 623.4 (3d ed. 2017). However, the “special handling” option remains one of the most frequently used options when a copyright owner discovers an infringement – and needs to seek legal recourse by bringing a Federal copyright claim.
Does Registration of a Foreign Work of Authorship – in a Foreign Jurisdiction – allow the copyright owner to bring suit in the United States?
With Miami being known as the “tourism hub” for international visitors, it’s important to note these implications on foreign copyright owners. Even though the copyright owner of a foreign work may commence an infringement suit without registering the work before the United States Copyright Office, the owner cannot recover statutory damages under United States Copyright Laws unless the author first registers the work within the United States before the infringement commenced. Lastly, a foreign copyright owner who has not registered within the United States does not get the benefit of the presumption of validity, and has the burden of proving that the work was first published in an eligible foreign country. Thus, it is strongly encouraged that owners of copyrightable works in jurisdictions outside of the United States seek registration of the work before the United States Copyright Office – even though that work may be registered in the author or owner’s home jurisdiction.
Contact a Copyright Infringement Attorney today at 305-374-8303 to discuss your rights and the best course of protection for your copyrightable work.