U.S. Supreme Court Ruling Affects Copyright Registration and Litigation Strategy.
Registration is NOT required for federal copyright protection, but…
On March 4, 2019, The U.S. Supreme Court decided that registration is necessary before suing for copyright infringement. This is a departure from prior rulings in certain lower courts that allowed lawsuits to be filed with only a filed application. While there is an exception to the new registration rule through which an infringement suit may be filed prior to registration, such treatment is reserved for “limited circumstances” in which a copyright owner will distribute a type of work that is vulnerable to predistribution infringement (e.g. movies and musical compositions).
Why is this significant for copyright owners?
In most cases, there is little doubt that works are subject to registration, like a computer program, song, picture or book. Nevertheless, copyright applications can take anywhere between seven (7) to ten (10) months to register. Waiting for this long may not be an option, since infringements hurt businesses now and lawsuits must be filed in a timely manner to maximize remedies and comply with statutes of limitation and the like.
Applicants can pay for expedited processing at a cost of $800 on top of the application fee. If your copyrightable works are being infringed and you do not have a registration, it may be best to apply for special handling to more quickly register the works at issue. A request for special handling can be made either contemporaneously with the filing of the application, or after the application is filed.
File copyright applications early and often!
The sooner you file, the sooner you register. Earlier applications also increase the likelihood that you will be able to recover statutory damages and attorney’s fees.
Worried about the cost of copyright applications? In some cases, you may be able to include multiple works in one application. For example, the Copyright Office offers “group registration” for photographs. Even if group registration is not an option, you can develop a copyright registration program to cost-effectively protect your valuable intellectual property.
What will courts do now that registration is required?
If you have already filed your lawsuit without a registration, you face a difficult decision: Do you withdraw the case and re-file after obtaining registration? Do you request special handling of your pending application? The best action to take may depend what the lower courts will do in the wake of the recent Supreme Court decision. Some possibilities include:
- Dismiss cases filed without registrations;
- Grandfather-in cases that still have merely pending applications; or
- Give more time for copyright owners to acquire registrations.
In previous cases where the court has ruled that registration is required, dismissal without prejudice to file again has been the most common outcome. This requires copyright owners to re-file their cases and start over.
If you have any questions about this, please contact: Adam Mandell, 703-465-5358