Posts Tagged: "copyright registration"

In a 6-3 decision today, the U.S. Supreme Court held that Section 411(b) of the U.S. Copyright Act “does not distinguish between a mistake of law and a mistake of fact; lack of either factual or legal knowledge can excuse an inaccuracy in a copyright registration under §411(b)(1)(A)’s safe harbor.” The decision comes after Unicolors, Inc. petitioned the Court in January of last year, asking whether the Ninth Circuit erred in determining that Section 411 required referral to the Copyright Office on any inaccurate registration information, even without evidence of fraud or material error, in conflict with other circuit courts and the Copyright Office’s own findings on Section 411.

The U.S. Supreme Court heard oral argument today in Unicolors v. H&M. The case asks the Court to decide whether the Ninth Circuit properly construed the language of 17 U.S.C. § 411 relating to whether courts must have evidence of intent to defraud before referring copyright registration validity questions to the Copyright Office. While the questioning seemed to favor Unicolors overall, at least one Justice today asked why a change in the question presented at the merits stage of the briefing shouldn’t result in the case being dismissed as having been “improvidently granted.”

Discussion around intellectual property strategies for small and medium enterprises (SMEs) often focus chiefly on patent and trademarks. But the benefits of copyright to a small business should not be underestimated. Copyrights protect the expression of ideas in works that are tangible. Copyrightable subject matter is very broad—all “original works of authorship, fixed in a tangible medium” are protected immediately from creation. The U.S. Copyright Office lists these categories as subject to copyright protection: literary works, musical works, performing arts, visual arts, other digital content (including computer software code), motion pictures, photographs, sound recordings, and architectural works. 17 U.S.C. Section 102.

The United States Copyright Office recently released a New Group Registration Option for Short Online Literary Works (GRTX), which would allow an applicant to register up to 50 short online literary works with one application and one filing fee. A group registration covers the copyrightable text in each literary work submitted with the group registration, such that the copyright owner may seek a separate award for each work infringed.

In a landmark ruling, the Supreme Court finally unequivocally answered the question about whether copyright owners need to receive a Registration Certificate from the Copyright Office before filing suit for infringement and thus resolved a difference of opinion among various regional circuit courts. (Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. Since this decision was issued, federal district courts have cited it in at least 63 decisions. What should artists, writers, and businesses do now to protect their creative work? How should attorneys alter the standard advice they give their clients? Let’s start with a review of what the ruling actually says.

In August, amid growing concern that the U.S. Copyright Office has become antiquated and out of touch with the needs of modern users, Senator Thom Tillis sent a letter to Librarian of Congress Dr. Carla Hayden and Register of Copyrights Karyn Temple asking them to answer a number of questions relating to the timeline for their efforts to modernize the Copyright Office. Hayden and Temple submitted their responses Monday, noting that the modernization effort is “one of the most significant operational undertakings the Library and Copyright Office face in the near term.” In their letter to Tillis, Hayden and Temple explained that, while efforts are already underway, including the expected launch of a limited-pilot version of the new Copyright Recordation system by Spring of 2020, modernization “remains an ambitious and technologically sophisticated undertaking.”

Senator Thom Tillis (R-NC) sent a letter to Librarian of Congress Dr. Carla Hayden and Register of Copyrights Karyn Temple on Tuesday, August 27, asking that they help him to “speed up the modernization process” for the U.S. Copyright Office. Tillis posed seven pointed questions to Hayden and Temple, which in part implied that their agencies’ reliance on legacy contractors and internal staff to implement the pending IT updates could be the source of proposed timelines that Tillis characterized as “unnecessarily long in the age of agile IT.”

On March 14, Senators Thom Tillis (R-NC) and Chris Coons (D-DE), respectively the Chairman and Ranking Member of the Senate Judiciary Committee’s Subcommittee on Intellectual Property, sent a letter addressed to Karyn Temple, Acting Register of Copyrights at the U.S. Copyright Office expressing concerns that Tillis and Coons share about the U.S. Supreme Court’s recent decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. As the letter from Sens. Tillis and Coons notes, it takes an average of about six months for the Copyright Office to fully process registration applications. Given that the Supreme Court has now ruled that these applications must be fully processed prior to the filing of a suit, Senators Tillis and Coons said the real impact of the Fourth Estate decision “will be the extended unlawful exploitation of a copyright owner’s intellectual property.”

On January 8th, the Supreme Court heard oral arguments in Fourth Estate Public Benefit Corporation v. Wall-Street.com [Case No. 17-571 (Jan. 8, 2019)] to settle a longstanding circuit split on the copyright registration prerequisite to a copyright infringement suit… The Justices gave little indication as to how convincing they found either party’s policy arguments. The first rule of statutory interpretation, however, is that if the plain meaning of the text is clear, the inquiry ends. Here, at least two of the Justices acknowledged that the term “registration” is flexible, so the issue may end up turning on how far outside the four corners of Section 411(a) the Court is willing to look to determine its meaning.

Copyrights protect original works of authorship.  This gives a copyright holder exclusive rights to modify, distribute, perform, display, and copy the work. However, as with other forms of intellectual property, there are important things copyright holders need to know in order to best protect and utilize their copyrights. You do not need to register a work to be protected by copyright.  However, registration is encouraged as it provides enhanced protection for copyright holders.  For example, a registered copyright is considered prima facie evidence in litigation, meaning the court will accept, on face value, that the copyright is valid unless it can be proven otherwise. 

U.S. District Judge Jon McCalla of the Western District of Tennessee recently issued an order denying motions made by interactive streaming music provider Spotify to dismiss a case including copyright infringement claims brought by independent music publisher and copyright administration company Bluewater Music Corporation. Judge McCalla’s order determined Bluewater has standing for all 2,142 music compositions it has asserted based on ownership or an exclusive license of the works. Given Bluewater is seeking the maximum statutory damages of $150,000 per infringed work, Judge McCalla’s order allows Bluewater to continue pursuing a maximum damages award of $321.3 million.

Enforcement of trademark rights in China is an ongoing issue faced by numerous corporations.  Invalidating or canceling a trademark registration in the Chinese market is time-consuming and costly.  The best way to defend your company’s valuable intellectual property assets is to put in place as many protections as possible.  If your company owns a creative design mark, consider going beyond the standard trademark registration and getting the “super trademark” by obtaining copyright registration for this artistic design element.

While registration is required in order to file a lawsuit for copyright in federal court, there is currently a circuit split with regard to what part of the process must be complete in order to meet the “registration” standard.  According to 17 U.S.C. §411(b), “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made.”  The question that circuit courts seem to be divided on is whether “registration” is satisfied when a Copyright Registration is received, or when an application has been filed. On June 28, 2018, the Supreme Court agreed to weigh in. The case at issue is Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, which arises out of the Eleventh Circuit.

Some circuit courts have held that a work is “registered” and the copyright owner can sue an infringer as soon as the applicant files the application, deposits a copy of the work and pays a fee.  This is known as the “application” approach.  Other circuit courts follow the “registration” approach which requires the Copyright Office to act on the application—by examining it and either approving or refusing it—before the copyright owner may file suit. So, which approach is correct? We should soon have an answer as the United States Supreme Court has agreed to hear Fourth Estate Public Benefit Corporation v Wall-Street.com, LLC to resolve this issue and finally decide what it means to be “registered.”