Though copyright vests upon completion of the work, registration with the U.S. Copyright Office is required to bring suit to enforce the copyright. Although usually perfunctory, the registration process may take many months from the date of application. Expedited registration is available, but at significant cost and only with a showing of compelling circumstances. Until just recently, some courts held that a pending application provided sufficient standing for a copyright holder to sue for infringement. Other courts disagreed and required a granted registration. To avoid the cost of securing an expedited registration, copyright holders preferred to sue in the more permissive jurisdictions, which encouraged forum shopping. The debate over whether the pendency of an application suffices is now over, however.
The United States Supreme Court's recent ruling in Fourth Estate Public Benefit Corp. v. WallStreet.Com, LLC, 586 U.S. __ 2019, confirmed that with limited exceptions, a copyright registration, not a mere application, is required throughout the land in order to commence copyright infringement proceedings. This ruling gives copyright holders clear direction and greater incentive to seek early registration. Although there may be delays awaiting issuance of the registration, a successful claimant can recover actual damages or the infringer's profits for infringements that occurred within the limitations period and before registration. Statutory damages are also available in certain instances prior to registration when the works are recently published.
In another recent decision, the Supreme Court also addressed the issue of what constitutes recoverable "costs" for the prevailing party. Rimini Street, Inc. v. Oracle USA, Inc., 586 U.S. __ 2019. The Court clarified that "full costs" to prevailing parties in infringement cases do not include expert witness fees, e-discovery fees or other costs that do not fall under the defined categories of "taxable costs" recognized in the Judicial Code. This ruling confirms that, although the prevailing party may recover attorney fees and certain litigation costs, the winning litigant will need to bear certain types of expenses, some of which may be substantial. Thus, expense management remains an essential component of copyright disputes, as it does for other forms of modern litigation.
Without the option of pursuing litigation based only on a pending application, those seeking to enforce their copyrights would be wise to make an early assessment of possible copyright infringements to determine the need for registration, as well as the timing of demand letters and lawsuits. Creators of copyright-protected works should strongly consider developing a proactive copyright protection plan for new works, especially in industries where infringement is rampant or where speed in pursuing infringement is essential. Moreover, in evaluating the costs and benefits of litigation over settlement, as well as setting reserves, parties must consider that some expenses cannot be recovered, regardless of outcome.
Members of Day Pitney's Trademark Copyright and Advertising group are well-versed in copyright assessment, registration, enforcement and licensing. We would be happy to discuss any questions you may have or to develop a strategic assessment of your copyrighted works in advance of possible infringement, litigation or licensing opportunities.
Ryan S. Osterweil, a senior associate in Day Pitney's Intellectual Property group and a member of the firm's Regulated Substances practice group will be speaking on a panel, "The Cannabis Goldrush and the IP Landgrab," at a program presented by the Patents Committee of the New York City Bar Association.
On June 19, Day Pitney LLP and the Association of Corporate Counsel (ACC) Northeast Chapter co-hosted a program, "Understanding Your Brand Identity: Bridging the Gap Between Business and Legal," held at Day Pitney's Boston office.
On May 22, Heather Weine Brochin will be presenting on "Navigating New Jersey Law when Hiring and Onboarding Employees" at the Hospitality Financial and Technology Professionals Mid-Jersey Chapter event.
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Ryan Osterweil was quoted in an article, "'It Isn't Illegal If It Doesn't Exist yet': Patent Laws Pose Challenges for the Cannabis Industry," which was published by Cannabis Wire and reports on a recent New York City Bar Association program where he served as a panelist.
Michael J. Dunne authored a chapter, entitled "Demystifying Service-Level Agreements and Avoiding the 'Gotchas,'" as part of the book Cloud 3.0: Drafting and Negotiating Cloud Computing Agreements published by the American Bar Association (ABA) Business Law Section.
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