Copyright News

• Publication year: 2019
• Author: Jo Ardalan

Copyright News

Jo Ardalan
One LLP

COPYRIGHT JURISPRUDENCE IN THE NINTH CIRCUIT GETS A ONE-TWO PUNCH FROM THE SUPREME COURT

On the same day, the Supreme Court issued two unanimous decisions that uprooted long-held Ninth Circuit precedent.

The Left Lead: Fourth Estate Public Benefit Corp. v. Wall-Street. com, LLC

Justice Ginsburg delivered the left lead when the Court decided whether Section 411(a)'s language allows a plaintiff to file suit upon filing an application for copyright registration or whether it requires waiting until the registration has issued. Section 411 states that "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 in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights."¹ The Ninth Circuit's precedent had required only that the Copyright Office receive a complete application for a plaintiff to file suit.² That approach benefited copyright plaintiffs to avoid what could be a seven-month delay in filing suit while the registration application was processed. Rejecting the strong policy arguments for the application approach, the Court held that the registration approach is required.³

The Court found support for its decision in the statute's text, reasoning that, "[i]f application alone sufficed to 'ma[ke]' registration complete, § 411(a)'s second sentence—allowing suit upon refusal of registration—would be superfluous."⁴ And, Section 411 which also provides that the owner of the copyright may file suit if it has only preregistered the work, also supports the registration approach.⁵ The Court opined that preregistration would have little utility under the application approach.⁶ Preregistration, however, is available only as to the types of works specified in the Code of Federal Regulations based on their identification by the Register of Copyrights as having a long history of infringement prior to authorized commercial release.⁷

The Right Cross: Rimini Street, Inc. v. Oracle USA, Inc.

Justice Kavanaugh delivered the right cross punch when the Court decided what categories of "costs" are awardable under 17 U.S.C. § 505...