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U.S. Supreme Court Rulings Impact Two Critical Copyright Issues: Application Not Sufficient To Bring A Claim And Meaning Of ‘Full Costs’ To A Prevailing Party

On March 4, 2019, the U.S. Supreme Court issued two decisions influencing the bookends of a copyright lawsuit – what steps are necessary to take with the U.S. Copyright Office before filing a copyright claim in court, and the extent of “full costs” available to a prevailing party.

Registration of a Copyright Claim

In Fourth Estate Pub. Benefit Corp. v. Wall-Street.Com, LLC, Justice Ginsburg authored the opinion that resolved a long-standing circuit split, holding that in the context of 17 U.S.C. § 411(a), “registration occurs, and a copyright claimant may commence an infringement suit, when the copyright office registers a copyright.” Merely filing an application without waiting for action from the copyright office, which some circuits had held to be sufficient, is generally not enough to bring a copyright claim.

This ruling, however, does not make the copyright office the gatekeeper for determining who can file a copyright suit. Justice Ginsburg noted that if the office refuses to register the work, Section 411 of the statute provides a copyright owner can still file suit. The important event is for the copyright office to have acted on the application, either by issuing a registration or by refusing to do so.

There are two “explicit carveouts” to the general rule:

  • First, a copyright owner may file an infringement suit before receiving a registration if the work qualifies as “especially susceptible to prepublication infringement,” such as a movie or musical composition, and if the owner satisfies the preregistration requirements.

  • Second, a copyright claimant may bring suit without a registration if the work is a live broadcast as spelled out in Section 411(c).

  • In either case, the copyright owner will need to secure a copyright registration to maintain the suit.

Rest assured that even if an infringement begins before a copyright owner applies for registration, the successful copyright claimant can still obtain an injunction, and “may eventually recover damages for the past infringement, as well as the infringer’s profits,” the ruling states. Statutory damages – the powerful remedial tool in copyright law – may not be available, however, unless the copyright claimant filed its application within either three months after first publication of the work, or before the infringement began.

A key takeaway is the importance of timing. A copyright owner should consider filing for a federal copyright application as soon as possible and not wait until an infringement has occurred. Filing for such protection could allow the owner to retain the opportunity for statutory damages and potentially reduce the risk of incurring increased fees for expedited application processing.

Proper Costs to a Prevailing Party

On the other end of a copyright lawsuit is the question of proper costs awarded to a prevailing party. In Rimini Street, Inc. v. Oracle USA, Inc., Justice Kavanagh wrote for the court in reversing the U.S. Court of Appeals for the Ninth Circuit’s decision and held that the term “full costs” in 17 U.S.C. § 505 means only the six categories listed in 28 U.S.C. § 1920, namely, fees of the clerk and marshal; fees for printed or electronically recorded transcripts; fees and disbursements for printing and witnesses; fees for exemplification and cost of making copies; docket fees; compensation of court-appointed experts, interpreters, and salaries, fees, expenses, and costs of special interpretation services.

Absent explicit statutory authorization otherwise, the court ruled that the term “costs” encompasses only the aforementioned categories, and the word “full” is a “term of quantity or amount” meaning “complete; entire; not defective or partial.” “Full” does not include other non-specified costs such as expert witness fees, e-discovery expenses, or jury consultant fees.

Although the court’s ruling in Rimini Street reduces the losing party’s liability for costs, monetary awards – especially those in copyright cases – can still be millions of dollars. In this case, even though the Supreme Court ruled that $12.8 million of the overall costs should not have been awarded, Rimini Street was still liable for millions of dollars in damages for copyright infringement and violation of state laws, attorney fees, and costs.

© 2019 BARNES & THORNBURG LLP

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About this Author

Genevieve Charlton Intellectual Property Attorney
Associate

Genevieve's experience includes developing and implementing global trademark filing strategies; counseling clients on brand creation and protection; and litigating intellectual property matters in federal district courts and proceedings before the Trademark Trial and Appeal Board (TTAB). She also advises clients on a variety of domain name matters and has experience preparing and filing Uniform Domain Name Dispute Resolution Policy complaints.

Genevieve has represented a wide range of companies, from startup companies to large corporations, including a major airline transportation...

312-338-5939
Philip Jones Copyright Attorney
Partner

Litigator and counselor Philip Jones helps protect trademark and copyright assets and provides strategic legal advice regarding trademark strategies and advertising initiatives. An experienced advocate and chair of the firm’s Advertising and Marketing team, Philip dedicates his practice to cultivating meaningful relationships with clients, vigorously defending and leveraging their trademark and copyright interests, and safeguarding their brands and promotions.

In the area of IP counseling and litigation, Philip concentrates his practice on the areas of trademarks, unfair competition and copyrights. He handles adversarial matters in federal court, and before the U.S. Patent and Trademark Office (USPTO) and the Federal Trade Commission (FTC). He regularly analyzes trademark searches, provides clearance opinions, prosecutes trademark applications, negotiates licenses, and advises on false advertising, gray market and copyright issues.

Philip assists business of all sizes with promoting their brands and ensuring that their marketing, advertising and promotions are compliant with federal and state laws and regulations. He reviews and advises on both traditional and digital advertising and promotional materials across many platforms, and provides legal counsel pertaining to claim substantiation. He assists clients with evaluating and substantiating advertising claims with an eye toward mitigating competitor, agency and consumer challenges.

In addition, Philip defends clients whose advertising has been challenged by regulators and competitors both informally or in a legal forum. He also represents clients in assessing and contesting competitors’ unsupported claims.

Philip has represented business clients involved in many industries, including television and entertainment, consumer coating products, education services, financial services and home building. He is appreciated for his knowledge, depth of experience and team play. Philip is committed to outside-of-the-box thinking when it comes to problem-solving and to giving his clients the attention they need to succeed. He thrives under the intellectual challenge associated with the law of trademarks, advertising and copyrights, and focuses on creative ways to apply the law in a manner that supports client goals.

Professional and Community Involvement

Member, International Trademark Association

Secretary and former head of the Rules & Ethics Committee, New Trier Hockey Club

Pro bono counsel, Chicago Volunteer Legal Services

Honors

Leading Lawyers Network, 2011, 2014-16 and 2018

EDUCATION

Boston University School of Law, J.D., cum laude, 1993

Princeton University, B.A., magna cum laude, 1988

BAR ADMISSIONS

Illinois

COURT ADMISSIONS

Illinois Supreme Court

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Seventh Circuit

U.S. District Court for the District of Colorado

U.S. District Court for the Northern District of Illinois

U.S. Supreme Court

312-338-5915