High Court Could Give Copyright Lawyers’ Advice Extra Strength

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By Anandashankar Mazumdar

A case headed to the Supreme Court this fall may give extra ammunition to copyright and corporate lawyers urging clients to register their copyrights as soon as they release a product.

Fourth Estate Public Benefit Corp., a not-for-profit independent news syndicator, accused Wall-Street.com LLC of republishing more than 200 Fourth Estate articles without licenses on its website. Wall-Street.com argues that it shouldn’t have to defend against a copyright infringement claim if all Fourth Estate has to show is an application for copyright registration.

The case has split federal appeals courts over whether a copyright owner can sue for infringement with only an application. The Copyright Act says a creative work must be registered with the Copyright Office before someone can file a lawsuit.

The outcome could be particularly significant for freelance photographers, who find registering thousands of photos to be costly and burdensome, and the software industry, which historically has been slow to register because of security concerns, industry representatives told Bloomberg Law.

“Software companies do not routinely register copyrights in their software, and typically do so only on the eve of filing a suit for copyright infringement,” intellectual property lawyer Fabio E. Marino of Polsinelli LLP, San Francisco, told Bloomberg Law. “If the completed registration standard is adopted by the Supreme Court that would create a potentially dangerous delay in being able to bring a lawsuit in case of infringement.”

Depending on how the Supreme Court rules, legal counsel for software companies might start pressuring their clients to change their registration practices, Marino said.

The Copyright Office requires a software registration to include 25 pages of the program’s source code, Marino, who advises software developers, said. Many developers worry that disclosing code to the public in a copyright filing might create a security problem by revealing the software’s inner workings. Software developers also hesitate to register for copyrights because software is constantly being updated.

Registration Is Optional

Creators usually don’t have to register their copyright interest to have legal rights over their work. Rights take effect as soon as the author fixes a work in a perceivable medium, such as writing it down or making an audio or video recording.

Many creators don’t bother registering until they plan to sue someone making unauthorized use of their work, then send in their registration applications right before filing suit.

The Supreme Court will have to determine the meaning of Section 411(a) of the Copyright Act, which requires that a copyright owner have a registration in hand before going to court.

The U.S. Courts of Appeals for the Tenth and Eleventh Circuits have ruled that copyright holders must come to court with an actual registration certificate, or a notice of refusal from the Copyright Office. That’s known as the “registration approach.” But the Fifth and Ninth Circuits follow what’s known as the “application approach,” meaning copyright owners just need proof that they applied for a registration even if the Copyright Office hasn’t issued a final response.

The Copyright Office favors the registration approach, doesn’t reply to most registration applications right away. Federal appeals courts disagree on whether to allow a copyright owner’s lawsuit to proceed in the interim.

Impact on Software, Photo Industries

Software developers could handle a registration approach ruling by redacting sensitive program lines in software code, Marino said. He recommended producers plan to file a copyright application every time they issue a major update to software.

Freelance photographers also could feel the bite if the Supreme Court favors the registration approach, Mickey H. Osterreicher, general counsel for the National Press Photographers Association, told Bloomberg Law.

Photographers are hard-pressed as it is to keep up with registering the thousands of works they might produce in a year, Osterreicher told Bloomberg Law. Also, news photographers have a short window of opportunity to make money from timely images.

During “the long wait time between an application and the issuance of a copyright registration certificate during which the value of, and the market for, an infringed work may have significantly decreased because of the infringement,” he said. “Additionally, the extremely high cost for ‘expedited registration’ is far too much for most photographers to realistically afford.”

Expediting Issues

If a copyright owner is squeezed between the three-year statute of limitations to sue and waiting for a registration, the Copyright Office can expedite registration for an extra $800. Copyright lawyer Sharon Urias of Greenspoon Marder LLP, Scottsdale, Ariz., told Bloomberg Law she got an expedited registration for one of her clients last year.

Expedited registration is supposed to take five business days to complete. But some copyright lawyers told Bloomberg Law that they’ve had mixed experiences with the process.

Mark Peroff of Peroff Saunders PC, New York, said that in at least one case, he filed for expedited registration. “And it’s taken months to get the Copyright Office to take action on the application.”

Whether it takes days or months to get a completed registration, Wall-Street.com asserts that it’s the only way to be able to sue for copyright infringement.

“The statute is clear that the Copyright Office must act on an application before a plaintiff may sue,” Wall-Street.com’s lawyer, Elizabeth Rogers Brannen of Stris & Maher LLP, told Bloomberg Law. “We hope and anticipate that the Supreme Court will decline the petitioner’s invitation to rewrite the statute based on policy arguments Congress has rejected.”

Fourth Estate’s counsel didn’t respond to a Bloomberg Law request for comment.

Kellogg, Hansen, Todd, Figel & Frederick PLLC represents Fourth Estate. Stris & Maher LLP represents Wall-Street.com.

The case is Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, U.S., No. 17-571, review granted 6/28/18.

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