Copyright Owners Face Uphill Battle at Supreme Court
Several justices sounded convinced that the Copyright Act requires owners to complete registration before suing for infringement, even though the process can take more than a year.
January 08, 2019 at 06:25 PM
4 minute read
The U.S. Supreme Court sounded inclined Tuesday to resolve a circuit split over copyright registration procedures against copyright holders.
Four justices suggested that the text of the Copyright Act requires holders to formally obtain registration from the Copyright Office before proceeding with infringement suits.
Only Justice Neil Gorsuch seemed more focused on the problems such an interpretation would create for copyright holders pursuing claims against infringers. Copyright holders argue that once they've filed their application and paid the fee they should be cleared to sue, instead of being forced to wait up to 15 months for the Copyright Office to act.
“Do you drive without a driver's license when yours has expired because you wrote in to the registry of motor vehicles but they haven't yet licensed you?” Justice Stephen Breyer asked Aaron Panner, who represents copyright holder Fourth Estate Public Benefit Corp. Breyer said he couldn't think of something “roughly comparable and the statute is interpreted the way you want.”
Panner, a partner at Kellogg, Hansen, Todd, Figel & Frederick, argued that a college student who has signed up for a class has “made his registration, he's registered for the class,” even though the school's registrar might later say the class is full.
Tuesday's debate in Fourth Estate Public Benefit v. Wall-Street.com was somewhat wonky, but the stakes are significant. Amicus groups such as the National Music Publishers' Association claim that being put on hold while a work is distributed all over the internet can have “a devastating effect” on copyright holders.
Petitioner Fourth Estate Public Benefit Corp., an online news producer, sued Wall-Street.com when it refused to remove Fourth Estate articles after its license had expired. Fourth Estate had registered the articles with the U.S. Copyright Office but the office had not yet acted on the applications. The U.S. Court of Appeals with the Eleventh Circuit sided with Wall-Street.com. The Fifth and Ninth circuits have said you can sue once you've applied and paid the fees. The Tenth Circuit agrees with the Eleventh that plaintiffs must wait until the Copyright Office acts, which according to Panner takes an average of seven months and as many as 15.
The problem for Fourth Estate is the text of Section 411(a) of the Copyright Act, which states that a suit shall not be instituted “until preregistration or registration of the copyright claim has been made in accordance with this title,” or after “registration has been refused.”
Justice Elena Kagan said the phrase “registration has been refused” clearly refers to the Copyright Office's Register, not the holder. “And so it seems, you know, the only way to read this is that the 'registration has been made' is by the Register too,” she told Panner.
Justices Sonia Sotomayor and Brett Kavanaugh and Chief Justice John Roberts also seemed to agree, though Roberts said equally compelling arguments could be made for copyright holders based on other parts of the statute.
Justices Samuel Alito and Clarence Thomas didn't ask any questions, and Justice Ruth Bader Ginsburg was absent from argument recovering from surgery.
Polsinelli partner Fabio Marino, who's not involved in the case, said that from reading the transcript he believes Wall-Street.com is in a strong position. He said Wall-Street.com attorney Peter Stris of Stris & Maher and Jonathan Ellis of the Solicitor General's Office effectively addressed the justices' primary concern with the textual argument—that Congress could not have anticipated in 1976 the speed with which content travels over the internet today.
Stris and Ellis pointed to newer laws such as the takedown provision of the Digital Millennium Copyright Act, and a pre-registration procedure that copyright owners can use to protect new works they expect to be infringed. “They did a good job of making the point that there are other provisions of the law” that apply to the justices' concerns, Marino said.
But most of all Stris emphasized the statutory text. “I certainly don't want to suggest that the policy arguments for the alternative are terrible,” Stris said. “They could be defended. Many people in this room may think that they're right. But they're beside the point when the case is about what Congress meant in enacting this particular statutory language.”
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View All'Unlawful Release'?: Judge Grants Preliminary Injunction in NASCAR Antitrust Lawsuit
3 minute readTrump-Appointed Judge Presides Over NASCAR Antitrust Dispute Under Case Reassignment
3 minute readWachtell Helps Miami Dolphins Secure One of NFL’s First Private Equity Deals
3 minute read'New Circumstances': Winston & Strawn Seek Expedited Relief in NASCAR Antitrust Lawsuit
3 minute readTrending Stories
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250