Are There Deadlines to File Copyright Infringement Suits?

This article is the second in a series, analyzing the Supreme Court’s decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC., issued on March 4, 2019.

In the briefing submitted to the Supreme Court in connection with the Fourth Estate case, the petitioner argued that a determination that the registration certificates were required before filing suit would dramatically constrict a copyright owner’s ability to stop infringements and enforce its rights in court, given the statutory time limit in which to file suit. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, 2019 WL 1005829 at ¶ 20 (U.S. Mar. 4, 2019).  The Court dismissed this concern as “overstated,” noting that “the average processing time for registration applications is currently seven months.” Id.

However, the presence of a three-year statute of limitations on filing copyright infringement actions should instruct copyright owners to be diligent in policing their rights and seeking registration as soon as possible – or at least as soon as possible after infringement has occurred (if the infringed work was not already registered), so that the owner is not precluded from recovering its actual damages or enjoining further infringement. 17 U.S.C. § 507(b) (“No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.”) (emphasis added).

When Does a “Claim” Accrue?

The date when a copyright infringement claim accrues is also the subject of a circuit split – so copyright owners must also pay attention to the rule that applies in their jurisdiction. Continue reading

Copyright Registration Certificate Must be “In Hand” Before Filing Infringement Suit

This article is the first in a series, discussing the Supreme Court’s decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. issued on March 4, 2019.

Resolving a long-standing circuit split over whether copyright owners must have a copyright registration certificate in hand before filing a copyright infringement suit, the U.S. Supreme Court has ruled that it’s not sufficient to have simply filed a completed application, but that the Copyright Office must act on the application, either to grant or to refuse registration, before a copyright owner can commence a lawsuit to combat infringement. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, 2019 WL 1005829 (U.S. Mar. 4, 2019).

Copyright Registration – “Keys to the Courthouse”

Registration of a copyright in a work has long been considered the “keys to the courthouse” for copyright owners – meaning that while creative works written after 1978 were automatically protected by the Copyright Act (Eldred v. Ashcroft, 537 U.S. 186, 195 (2003) (confirming that “federal copyright protection . . . runs from the work’s creation”)), their owners could not sue for infringement until those works were registered with the Copyright Office. 17 U.S.C. § 501(b) (providing a private right of action for infringement of a copyright); id. § 411(a) (requiring registration before copyright owner was permitted to institute suit).

Incentives to Prompt Registration – Before Infringement

The Act provides several additional incentives for owners to apply for registration with the Copyright Office as soon as possible. In particular, if a work that has been registered is later infringed, the rights holder could recover statutory damages of up to $30,000 per work infringed (or up to $150,000 per work if the infringement were proven to be willful) and could recover its reasonable attorneys’ fees incurred in connection with enforcing its rights if it prevails in the case. Id. §§ 504(c), 505. Statutory damages and attorney’s fees are not available unless the work had been registered before the infringement occurred or within three months after first publication of the work. Id. § 412(2).

Prior Circuit Split – “Registration” versus “Application” Approaches

Until now, federal courts were split on the issue of whether a registration certificate was required (the “registration approach”) or whether it was sufficient to have submitted a completed application with the mandatory deposit copies and the correct filing fee to the Copyright Office for consideration (the “application approach”) before filing a complaint in federal court. Fourth Estate, 2019 WL 10055829, ¶ 4 (confirming that certiorari was granted to “resolve a division among U.S. Courts of Appeals on when registration occurs in accordance with § 411(a)); see also Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 615-16 (9th Cir. 2010) (collecting cases and noting circuit split); Zaslow v. Coleman, 103 F. Supp. 3d 657, 663 (E.D. Pa. 2015) (“Courts are divided over whether merely applying to the Copyright Office (the ‘application’ approach), or whether the Office issuing the registration (the ‘registration’ approach), sufficiently satisfies § 411.”). Continue reading

IP Claims Fail Against ISP for Merely Hosting Infringing Material

In a recent decision by the United States District Court for the Eastern District of Pennsylvania (ED Pa.), the court dismissed an individual author’s suit against Amazon for hosting an infringing copy of his copyrighted work. Parker v. Paypal, Inc., Civil Action No. 16-4786, 2017 WL 3508759 (E.D. Pa. Aug. 16, 2017).

I.  THE FACTS

Plaintiff, Gordon Roy Parker, wrote a book entitled “Outfoxing the Foxes: How to Seduce the Women of Your Dreams,” for which he registered his copyright in 1998. In October 2015, he learned that his book was being sold online as part of an “anthology of books and articles written by and for pickup artists.” Id. at *2. He requested that the work be removed from the site – which appears to have occurred, at least for a time.

Several months later, in December 2015, he learned that sales of the anthology (including his copyrighted work) had resumed. In addition to seeking a take down of the book from this site, and to restricting the site’s access to its PayPal account, Parker notified Amazon.com, Inc. and Amazon Web Services, Inc. (collectively, “Amazon”) regarding Amazon’s hosting of the infringing work. (The Court’s opinion does not discuss any response by Amazon at this time.)

Parker alleges in his complaint that despite providing such notice to Amazon, the infringing work was still being hosted through Amazon’s cloud servers at least as late as Spring 2016.

In a May 2016 email, Parker told Jeff Bezos (CEO of Amazon) about the infringement and said that Parker was removing six of his titles from Amazon’s Kindle Books program. The distribution of his books through Kindle was undertaken under contract between Parker and Amazon. In response to Parker’s email, representatives of Amazon asked him to report potentially infringing material “consistent with the Digital Millennium Copyright Act.” Id. at *3. (Note: Within Amazon’s Conditions of Use Page, its “Notice and Procedure for Making Claims of Copyright Infringement” Section includes a link to an online form to report instances of infringement.)

II. AMAZON MOVED TO DISMISS THE CLAIMS

Amazon moved to dismiss Parker’s claims against it on the grounds that: (1) Parker failed to state a proper claim for copyright infringement or unfair competition as to Amazon; (2) Parker’s claim for breach of contract (based on the Kindle publishing agreement for seven of his e-books, including the infringed work) was pre-empted by the Copyright Act; and (3) the remaining claims for misappropriation of likeness and unjust enrichment are barred by the Communications Decency Act, 47 USC § 230 (“CDA”).

The Court agreed with Amazon’s analysis and dismissed Parker’s complaint as to Amazon. (Note that the case still proceeds with respect to other defendants.)
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Common Questions – Can I Copyright My Formula?

Probably not. No matter how new a formula (a.k.a. recipe) may be, if it simply comprises a combination of ingredients mixed together to form a new and unique dish, it is not likely to be copyrightable. And, once published, even if the recipe contains additional descriptions or commentary or similar copyrightable expressive content, nothing would actually prevent someone from making the dish.

Consider an example of the brand-new restaurant, whose chefs for have worked together to create a very unique and unusual menu for their customers. After several months, one chef leaves to start a new restaurant – and publishes a cookbook that contains many of the recipes he co-developed with his former co-owner.

Is this infringement?

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Copyrighting Software? Don’t Rely on Screenshots Alone!

In a recent decision, the Second Circuit Court of Appeals recently held that a copyright application solely directed to screen shots generated from a software program was insufficient to establish copyright rights in the software as a whole, for purpose of giving the plaintiff a right to sue for infringement of the software. In A Star Group, Inc. v. Manitoba Hydro, the Second Circuit considered whether a plaintiff had jurisdictional standing to file suit for copyright infringement relating to its software – specifically because the plaintiff applied for copyright protection only over screen shots showing various displays that appear when its software was used and not in the software as a whole. (A Star Group, Inc. v. Manitoba Hydro, No. 14-2738-cv (2d Cir. July 27, 2015) affirming No. 13 Civ. 4501, 2014 WL 2933155 (S.D.N.Y. June 30, 2104) – BNA’s cite: 2015 BL 238362.)

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