Copyright at the Supreme Court: When do damages for copyright infringement really start to bite?

Update: On Monday, March 4, the US Supreme Court decided the right to sue for copyright infringement takes effect when the Copyright Office issues a certificate of registration (or an explicit rejection) to the author. In other words, and as discussed below, they affirmed the “registration approach.”

Copyright owners can, and regularly do, have their lawyers send a “Cease & Desist” (C&D) letter when they learn of an apparent infringement of their works. This is a simple, and relatively inexpensive, first step. “That’s my stuff you are using” these say, in legal language. And, also, “Knock it off.” Many times, that is the end of the matter, and the courts never hear of it.

There’s a clause in the US copyright law that enables copyright holders to go further when the facts call for it. They can bring an infringement suit and, if infringement is found, they may collect significant damages – and, if the plaintiff’s lost profits cannot be quantified, US law permits statutory damage awards of up to $30,000 per infringing act or $150,000 per willful infringing act (Section 504), depending on a number of circumstances. But in order to bring the suit in the first place, the work involved is required to have been registered for copyright.

The case heard at the Supreme Court last week, Fourth Estate vs., bubbled up from Florida and on appeal went to the 11th circuit. The specific facts of the infringement at the heart of this case don’t stand out in any special way, and they are fairly mundane —basically, kept using content from Fourth Estate after their license to do so had expired. There have been a few infringement cases recently which came out on different sides of the question whether the plaintiff work was validly registered at the time of suit, so the SCOTUS decided to take it up and attempt to resolve the question once and for all.

Section 411(a) of the Copyright Act [Title 17] reads: “no civil action for infringement of the copyright in any United States work shall be instituted until” either (1) “registration of the copyright claim has been made in accordance with this title,” or (2) “the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused.”

The latter bit about deposit is not part of the issue in this case. But the possibility of ‘refusal’ – that is, of the Copyright Office not accepting the work for registration (most often because the Office determines that the work is not protectable under copyright law) – does enter into it.

The core of this case is the question: When does “registration” occur for purposes of Section 411(a)? Is it when the form is filed, which is referred to as the “application approach”, or when the certificate of registration is issued by the Copyright Office, called the “certificate approach”? The answer entails consequences for authors and other creators, who may lose some of the economic benefit of their work if things take too long or the threat of damages is not credible, and there are tradeoffs to be recognized resulting from either approach. Let’s dig in to that a little.

  • The application approach: Under the application approach, the creator of the work is recognized by the courts as effectively having registered the work for copyright at the moment when he/she/it has filled out the registration form and sent the money to the Copyright Office. Which is to say, when they have applied.
  • The certificate approach: Same as above, except that the creator of the work is recognized as effectively having registered the work for copyright only when the Copyright Office issues the certificate of registration for that work (which, currently, tends to run about 8-12 months after a paper application and a bit sooner for an online application)

Amicus (‘Friend of the Court’) briefs in favor of the certificate approach – that favored by the alleged infringer here – were filed by: Public Knowledge and R Street, Washington Legal Foundation, and Prof. Peter Jaszi, on behalf himself and of other Authors and Educators

Amicus filings in favor of the application approach – that sought by the copyright plaintiff here – came from: the Copyright Alliance (full disclosure, CCC is a member), the American Bar Association, various music publishing and rights organizations (NMPA, RIAA, ASCAP, BMI, et al.), the Authors Guild and other Authors’ Rights Organizations, and the International Trademark Association.

I went through each of these thoughtful filings, trying to understand better the risks and benefits of each approach.

It appears to me that proponents of the application approach see timeliness as the main benefit. As I mentioned above, it takes months (down from 1-2 years about a decade ago) for a copyright certificate to come back from the Copyright Office, which has examiners dedicated to checking each application to make sure everything is right and ready to go. Once an alleged infringement is discovered, the sooner legal action can be taken on it, the less likely it is that serious economic harm will result to the copyright holder (and, ordinarily, the less likely that there are public effects as well, including the possible need to recall infringing articles or to change a defendant’s entrenched business model).

Proponents of the certificate approach, on the other hand, point to the benefits of building a robust public record of works registered for copyright. They also say that the risk of harm from waiting for the certificate is not very great.

There are detailed legal arguments on both sides that I, as a non-lawyer, have opted to skip over in this brief post. I’m sure the SCOTUS will cover all of those arguments when it makes its ruling. Professor Litman has provided a good summary of them over at SCOTUSblog.

For my own part, I guess I would currently lean towards adopting the application approach. While I think the public benefits resulting from a more complete public record are real, and substantial, I think the economic risks (to copyright holders and potentially to others as well) of delayed action on alleged infringements, that must result from certificate approach, outweigh those benefits in the short, and in the longer, runs.

We’ll see what the Court says, almost certainly before the end of its current term in June.

Author: Dave Davis

Dave Davis joined CCC in 1994 and currently serves as a research consultant. He previously held directorships in both public and corporate libraries and earned joint master’s degrees in Library and Information Sciences and Medieval European History from Catholic University of America. He is the owner/operator of Pyegar Press, LLC.
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