Fildes & Outland, P.C.

The U.S. Supreme Court recently issued two decisions in copyright cases.

On March 4, 2019, the Supreme Court issued a decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et al., 586 U.S. ___ (2019); Supreme Court docket no. 17-571.  In this case, the Court unanimously held that a copyright claimant may commence an infringement suit after the Copyright Office registers a copyright for the work at issue, rather than after the date on which the claimant files an application for registration of the copyright.  This decision resolved a circuit split in the U.S. Court of Appeals as to whether “registration” of a copyright claim under 17 U.S.C. 411(a), the statute providing for copyright infringement actions, simply requires that an application for registration be filed or instead requires the application be approved and a copyright registration be issued by the Copyright Office.  (Section 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 Supreme Court also held that upon registration, a copyright owner can recover for infringement that occurred both before and after the registration.  The Supreme Court noted that there are a few narrow exceptions enumerated in the statute in which a copyright claimant can file suit prior to obtaining a registration.  However, even in these limited scenarios, the copyright owner must still pursue a registration in order to maintain the suit for infringement.

Also on March 4, 2019, the Supreme Court issued a decision in Rimini Street, Inc., et al v. Oracle USA, Inc., et al, 586 U.S. ___ (2019); Supreme Court docket no. 17-1625.  In this case, the Court unanimously held that the term “full costs” in 17 U.S.C. 505 of the Copyright Act means the entire amount of only the costs specified in the general costs statute codified at 28 U.S.C. 1821 and 1920.  Thus, a federal district court may only award full costs to a party in a copyright litigation for the six categories specified in the general costs statute, namely (i) fees of the clerk and marshal; (ii) fees for printed or electronically recorded transcripts necessarily obtained for use in the case; (iii) fees and disbursements for printing and witnesses; (iv) fees for exemplification and the costs of making copies of any materials where the copies are necessarily obtained for use in the case; (v) docket fees under 28 U.S.C. 1923; and (vi) compensation of court appointed experts, compensation of interpreters, and salaries, fees, expenses, and costs of special interpretation services under 28 U.S.C. 1920.  Thus, the Court reversed the award of costs for litigation expenses including expert witness fees, e-discovery expenses, and jury consultant fees.

A copy of the Fourth Estate decision may be accessed at https://www.supremecourt.gov/opinions/18pdf/17-571_e29f.pdf and a copy of the Rimini decision may be accessed at https://www.supremecourt.gov/opinions/18pdf/17-1625_lkhn.pdf.

Supreme Court Copyright Update

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