Two recent Supreme Court decisions may have far reaching consequences for those looking to assert (or avoid) copyright infringement claims.
On March 4, 2019, the Court ruled on Fourth Estate Public Benefit Corp. v. Wall-Street.com, where it held that Copyright Infringement was only available after a copyright is registered at the Copyright Office. In the case before the Court, Fourth Estate Public Benefit (FEPB) had licensed articles to Wall-Street.com (WS). After the license was cancelled, WS kept the articles on their website provoking the infringement claim. At the time of FEPB’s claim, they had already submitted the application for registration, but it had not been fulfilled by the Copyright Office yet.
The decision rested on 17 U.S.C. 411(a), which states that no action for civil infringement “shall be instituted until . . . registration of the copyright claim has been made.” Despite FEPB’s argument that application for the registration would satisfy the statute, the Court unanimously ruled that the text required completed registration. The Court did allow for certain preregistration filings for copyrights specifically vulnerable to pre-registration infringement like movies, live broadcasts, and musical compositions.
Limitations for Damages
Also on March 4, 2019, the Court handed down its decision on Rimini Street, Inc. v. Oracle USA, Inc., where it held that the $12.8 million in awarded damages for litigation expenses including expert witnesses, e-discovery, and jury consultants exceeded the statutory award. At issue here was the meaning of “full costs” available for copyright infringement under 17 U.S.C. 505. Despite the Ninth Circuit’s acknowledgment that e-discovery, expert witnesses, and jury consultants fell outside the bounds of the six categories of costs identified in 28 U.S.C. 1821 and 1920, they upheld the award as representative of “full costs”. The Court disagreed, ruling that the phrase “full costs” referred to the six categorical allowances under 1821 and 1920. In so doing, the Court removed the $12.8 million award for litigation costs, leaving Oracle with only the other $81.9 million for copyright infringement damages, attorney’s fees, and costs.
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