By Bryan K. Wheelock, Principal
Today the Supreme Court clarified two small but significant copyright issues, relying on the express words of the copyright statute in one, but deviating slightly in the other.
In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, [17–571] the Supreme Court held that §411 explicitly requires that a plaintiff actually have a copyright registration before bringing a copyright suit.
In Rimini Street, Inc., v. Oracle USA, Inc., [17–1625] on the other hand, the Supreme Court held that the term “full costs” in §505 of the Copyright Act simply means the “costs” specified in the general costs statute codified at 28 U.S.C. §§1821 and 1920, and does not include a party’s other costs, in effect giving no weight to “full” in the statute.
Fourth Estate Public Benefit Corp. v. Wall-Street.com
In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, Fourth Estate sued for infringement of its news articles after Wall-Street failed to remove them from its website following the cancellation of the parties’ license agreement. Fourth Estate had filed applications to register the articles in question with the Copyright Office, but the Register of Copyrights had not acted on those applications. The District Court dismissed the complaint because 17 U.S.C. §411(a) provides that “no civil action for infringement of the copyright in any United States work shall be instituted until … registration of the copyright claim has been made in accordance with this title.” The Eleventh Circuit affirmed, holding that registration has not been made under §411(a) until the Copyright Office actually registers the copyright.
The Supreme Court affirmed, agreeing that registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers the copyright. This resolves a split in the circuits, as the Fifth, Seventh, and Ninth Circuits and a smattering of district courts held that merely filing a complete application was sufficient, while the Tenth and Eleventh Circuits, and other district courts maintained that “registration” in 17 U.S.C. §411 meant actual registration.
Today’s decision does not leave copyright owners in too difficult position: the Copyright Office has a process for expedited copyright registration, and the Supreme Court reiterated that the copyright owner can still recover pre-registration damages. At most, this ruling should slow a copyright plaintiff by only a week or two and cost a few hundred dollars more — barely a blip for a plaintiff heading to federal court to enforce its rights.
Rimini Street, Inc., v. Oracle USA, Inc.
In Rimini Street, Inc., v. Oracle USA, Inc., after a jury awarded Oracle damages for copyright infringement, the district court added Oracle’s fees and costs, including $12.8 million for litigation expenses such as expert witnesses, e-discovery and jury consulting. The Ninth Circuit affirmed the award, acknowledging that it covered expenses beyond the six categories of costs enumerated in general federal statutes authorizing district courts to award costs (28 U.S.C. §§1821 and 1920). The Ninth Circuit explained that the additional award was appropriate because 17 U.S.C. §505 gives federal district courts discretion to award “full costs” to a party in copyright litigation. The Supreme Court reversed, holding that Sections 1821 and 1920 define what the term “costs” encompasses in subject-specific federal statutes such as §505. The Supreme Court said that while Congress may authorize awards of expenses beyond the six categories specified in the general costs statutes, the courts may not award litigation expenses that are not specified in §§1821 and 1920 absent explicit authority.
The Court said that its precedents have consistently adhered to that approach, and the Court rejected Oracle’s arguments that this ignored Congress’s use of “full” to modify costs in §505. By rejecting Oracle’s argument regarding “full costs” in the statute, the Supreme Court told Oracle that there is no special rule for costs in copyright cases – they are treated like all other cases.
Businesses, individuals and organizations can benefit greatly from registering copyrights promptly. Not only does it preserve important remedies (statutory damages, attorneys’ fees), registration is a prerequisite to filing suit.