A recent SCOTUS ruling in a case between Fourth Estate Public Benefit Corporation and Wall-Street.com, LLC helped finally determine the requirements for suing for copyright infringement.
In the past, federal appeals courts have been split on whether or not a plaintiff must wait until copyright registration is complete before filing a suit. Some courts have said that simply submitting a copyright application is enough; others have said that a registration must be complete, with a final registration from the U.S. Copyright Office.
This prior circuit split was in part due to somewhat conflicting statutory language that states, “No civil action for infringement of the copyright of any United States work shall be instituted until preregistration or registration of the copyright claim has been made…”
SCOTUS ruled in favor of the appeals court that held you must have a complete, registered copyright in order to sue for copyright infringement.
What does this mean for you?
What this means is that if you wish to prevent others from using copyright-able subject matter in the future — from artistic endeavors to software — you must have a registration certificate from the U.S. Copyright Office before you can file a suit. It’s no longer enough to simply have the application on file.
If you have questions about what to do and expect now that this ruling has come down, here are six answers to the FAQ about this latest change to IP protection.
What implications does this ruling have for a company seeking copyright protection on their IP?
This new Supreme Court ruling means that artists, IP attorneys, and others should be filing for copyright protection as soon as a protectable work is completed. This will prevent any issues in being able to enforce your right down the road.
What can a company/entity do to protect their property while awaiting the Register of Copyright’s approval, which can take months?
If you have a timely work of art and need to protect it quickly, there are ways to expedite the copyright process for specific works of art.
- You can acquire a preliminary injunction in order to quickly prevent the release of infringing materials.
- You can also expedite the copyright process if, for example, infringement is already occurring.
What’s the difference between an expedited and a traditional registration process?
In terms of the time it takes to get protection, the difference could mean you obtain your registration with an expedited process months sooner than with an un-expedited process.
For example, if you file an expedited registration in anticipation of litigation, the copyright office can turn your registration around in a week or two rather than if you file traditionally, you could end up waiting as long as nine months.
Do note that there are fees associated with this expedited process and the special handling of a copyright application, in addition to your normal filing fee.
How does this ruling affect the timeline in which a company needs to roll out a new product or service?
It all depends on what your creative endeavor is.
If you’re a software developer, your timeline will be very different than that of a recording artist because you’ll probably be updating the software frequently.
In this case, once you have a source code that you release publicly or maybe even just for beta testing, you would want to file for copyright protection on the source code. Once you have an updated version of the source code, you’ll want to file copyright protection on the new versions, too; otherwise, you won’t have the protection needed on that new code that you’re releasing to the public.
Remember, you may be able to expedite this process in order to properly protect your copyrighted material.
How does this opinion affect different industries?
While some may think that copyright issues only impact the typical creatives such as authors, artists, or videographers, we’re often dealing with startup companies and other non-creatives that are providing a service or a product.
This opinion affects any industry with a trademark, original work of authorship, or logo that meets the minimum requirements of novelty and copyright protection is sought on the work.
Are there any times when it’s not worth pursuing an infringement case?
Before suing, you always want to send a cease and desist letter. Hopefully, this letter will hit home and the other party ceases their infringing activities. Otherwise, you’ll have to make a business decision on whether or not it makes sense to spend your resources on preventing someone else from copying or infringing upon your copyrighted work.
For example, if they’re only producing 100 units of an infringing product, but you’re producing 10,000, does it make sense to spend thousands of dollars on legal fees if your bottom line is only minimally impacted?
Where infringement cases are concerned, you’ll always need to make a business decision on whether or not pursuing a case makes good financial sense for your company.