The Supreme Court of the United States (SCOTUS) just issued two decisions, both by 9 -0 votes directly affecting the rights and legal remedies available to copyright owners who choose to protect their work either defensively or by bringing an action for money damages for infringement.
As we have written, lectured, screamed and cajoled for decades, the bottom line coming from both cases is that copyright owners should register their work early and all of the time, always, no exceptions.
Timely registration avoids delays in being able to bring a lawsuit, but timely registration especially before any infringement allows an author/creator to take advantage of additional remedies, including the options of recovering statutory damages and/or attorneys’ fees.
First SCOTUS decision: In Fourth Estate Public Benefit Corp. v. Wall-Street.com, the Court held that a copyright owner may not sue for infringement until the Copyright Office has ruled on its application for copyright registration and you have the Certificate of Registration in hand. Some Federal Courts permitted a party to start litigation while the registration process had been commenced but the Certificate of Registration not as yet rendered. Some Federal Courts required the issuance of the registration with the United States Copyright Office (USCO) as the “key to the courthouse”. Without the registration in hand your case could and would likely be tossed. On some occasions that policy led to photographers making “expedited copyright filings” also known as “special handling” and incurring a USCO fee of about $800 to process and application in days rather than months often for the express purpose of being able to file a lawsuit ASAP.
The Supreme Court’s decision has the effect of creating a single policy for all Federal Courts. The Court unanimously held that the language of Section 411(a) of the Copyright Act requires registration rather than just the submission of an application for registration. SCOTUS recognized that the ruling could/would delay a plaintiff’s ability to file suit for infringement and possibly result in the Copyright Act’s three-year statute of limitations expiring if the copyright owner waited too long before obtaining a registration, but those concerns didn’t affect the Court’s interpretation of Section 411 – that an actual registration must have been issued relative to the work in order to file suit.
Second SCOTUS decision: In the nightcap of the high court’s double header – Rimini Street, Inc. v. Oracle – the Supremes held that the prevailing party in a copyright infringement case is entitled to only the regular set of taxable costs enumerated in the federal code, in addition to damages. So if you confused The DaVinci Code with the equally entertaining Federal Code and didn’t read the later, no worries. SCOTUS has read the Federal Code for you and interpreted it for use in this case and others like it.
The trial court had ordered Rimini Street, which infringed certain Oracle copyrights, to pay Oracle $12.8 million in “nontaxable costs” accrued in litigation, including fees for expert witnesses, e-discovery, and jury consulting. Typically, an award of costs to a prevailing litigant is limited to six types of expenses enumerated in the federal code.
However… Section 505 of the Copyright Act, permits/allows/empowers a trial court to award “full costs.” The Supreme Court found that the word “full” in this sense works as a term of “quantity or amount,” and does not expand the categories of costs, and thus the grant of $12.8 million in nontaxable costs was improper. Or in other words, it was calculated incorrectly.
What does the above legalese really mean to you, yuze and y’all? A successful copyright infringement plaintiff is limited in the costs they can recover. You now have another reason to file your applications for registrations as early as possible. With rare exceptions If infringement occurs before your registration, you are limited to actual damages, profits, and taxable costs. If infringement occurs after your registration, copyright plaintiffs can seek and potentially recover statutory damages which may (or many not ) be greater than actual damages and attorneys’ fees on top of the statutory damages.
In plain English – register everything, all of the time, as soon as possible after you have created it. As Monty Python said – “No one expects the Spanish Inquisition” and likewise no one expects their work to be ripped off. Avoid posting or using it anywhere until at least after registration and preferably after you have your registration in hand. Yes, we know that doing that if often impractical if not impossible in real life. Nevertheless, it remains the “Best Practice”. Jack will not wait sometimes to get his certificate for things he wants to show more quickly, but after many, many registrations, he’s confident that his registrations will be approved and he doesn’t post anything online without an effective registration date and a copyright notice watermarked on his image. Like the image below from a trip to Cuba, he didn’t show it on his social media feeds until he completed the registration. He’d prefer to have the certificate in hand, but this is the next best practice after the “Best Practice” that Ed hounds him about (and is correct). But sometime you have to make business decisions. At the very least, register your work before showing it anywhere.
Anecdotally, we are compelled to inform you based on legal reportage and comments made to Ed directly by attorneys present and/or participating in the 4th Estate case. It was rather clear that at least 2 members of SCOTUS were surprisingly unaware and/or unprepared for some of the rather simple, time honored, legal concepts relating to copyright law dating back to the US Constitution. No matter. Consider yourself bound by these two rulings likely for the rest of your career…at least.
Here’s the photo from Cuba that Jack wouldn’t post online until he sent in his copyright registration (and watermarked the photo to boot).
#1 by John Paul on March 19, 2019 - 12:52 am
Thank you for this update Ed and Jack.
I’m interested in better understanding how this may affect the 3 calendar month rule. I understand that it’s always best to simply register copyright before any sort of publishing but it’s unfortunately not always possible.
Is it safe to say the 3 calendar month rule is now in the dust bin for all practical purposes?
#2 by Jack and Ed on April 6, 2019 - 10:35 am
Not at all. The 3 month window for published work is still in full force. What the ruling is about is that you need the registration certificate in hand in order to file a lawsuit. That’s always been the case in most of the Federal Districts, except one. This ruling is to get them all in line. We’ve always said in our writings and lectures that you need the certificate to file. Looks like SCOTUS agrees with us ;->
#3 by Derek on April 29, 2019 - 9:35 pm
Hi Ed and Jack,
Can you expound on your phrase above regarding case #1, “…the Copyright Act’s three-year statute of limitations expiring if the copyright owner waited too long before obtaining a registration”?
I assume this refers to how long one has to file a case after the infringement has taken place (“Copyright infringement has a three-year statute of limitations indicating that ‘No civil action shall be maintained under the [Act] unless it is commenced within three years after the claim accrued.’ 17 U.S.C. §507”) and not how long the photographer has to register the photo after date of creation? Is that correct?
Either way, I think the way copyright law states it is confusing. By saying, “within three years after the claim accrued” rather than the infringement occurred, one is left wondering what they mean by “claim”? Does the clock start on the 3 year window when the infringement actually happens or only when it is discovered and a legal claim filed? If they mean the latter, then what else can you do after filing the claim? So what’s the 3 year limitation for?
Thanks, Derek
#4 by Jack and Ed on May 9, 2019 - 2:04 pm
Hi Derek,
Sorry for the long delay answering. This is an Ed question as I know he’s dealt with it in court. And he’s been very busy. I sent him a reminder today to see if he can respond soon.
Jack
#5 by Kerry Bern on May 20, 2019 - 9:27 pm
I have the same question as Derek. I’m hoping that Ed can get the time soon to clarify what exactly para 507 of the Copyright Law means.
Thanks, Kerry
#6 by Jack and Ed on May 23, 2019 - 4:32 pm
Trying to get a reply to answer and post this weekend.
#7 by Jack and Ed on June 1, 2019 - 4:12 pm
OK, Ed sent me an answer to post, but it’s a little dense with legal jargon (for me at least). Will try and post in the next day or two as Ed approves my changes. He’s been swamped in his practice.
#8 by Jack and Ed on June 4, 2019 - 5:14 pm
Well, we worked on it and worked on it, and after 800 words, thought that making it a new article was better than a long reply here. So check out our new blog piece, Statue of Limitation, Limitations at https://thecopyrightzone.com/?p=1968
#9 by Robin on March 29, 2020 - 12:19 pm
Hi there – I know this is an old thread but hoping you’ll be notified of comments. I have your book and have searched the threads but can’t find an answer to this question, which like this post could be a minor but important point in court. If you are a single member LLC (therefore operating like a sole proprietor), the government defines you NOT as an employee. Therefore, should you register the photos under your own name or the company name? I am guessing you must under your own name and then if you want to assign copyright to your company, you can do that. I am guessing that you cannot automatically register the copyright under the company name and should also not check that it is a work made for hire since I am not an employee. What would be the benefits of filing under your own name vs filing under your own name and then assigning copyright to your company name? And should the IPTC copyright metadata on the images have the same information for the copyright owner? Do you recommend we have that part filled out in the metadata? Sorry so many questions – but they all are relevant and could be a point of contention in a case.
#10 by Jack and Ed on March 29, 2020 - 1:35 pm
Hi Robin,
What appears to be a simple question of “Do I register in my name or my company’s name” is actually a very complex question requiring a very complex answer that is highly dependent on your individual situation. There is no “one size fits all” answer.
To be realistic and real world rather than a short “Interweb” answer, this has to be on our part the classic “It depends” answer.
It would take a lawyer and definitely your accountant in the room, to ask the proper questions in order to give you a proper and complete answer.
Some, but very far from all the questions to answer are:
What state do you live in? What are the tax laws there? What is your financial situation? Is there a bankruptcy in your past or possible in the near future? Are you married or single? Do you have kids? If married, what is your marital situation? Is your spouse involved in the business? Are you in a divorce procedure? Are you near retirement age? What is the scope of your business? Do you license stock as a main part of your business, a small part, or non-existent right now? Ed I know from experience, would have a few dozen more questions, depending on some of the answers.
The above are just some of the issues that you would need to discuss with both a lawyer and accountant familiar with the laws of the state in which you do business.
Jack
(Note: I’m not a lawyer)
#11 by Robin on March 31, 2020 - 12:28 pm
Thanks so much for taking the time to respond.
#12 by Jack and Ed on March 31, 2020 - 12:51 pm
You’re welcome.
Sorry it wasn’t a more simple answer.
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