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Copyright Lawsuit Questions Answered: Panel Discussion on the Impact of the Fourth Estate Case

Wednesday, August 28, 2019   (0 Comments)
Posted by: CSUSA
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Copyright Lawsuit Questions Answered: Panel Discussion on the Impact of the Fourth Estate Case

By: Alexandra A. Fahringer, W. Drew Kastner, Corinne Militello, and Stephenie W. Yeung

In Fourth Estate Public Benefit Corp. v. WallStreet.com, the U.S. Supreme Court recently clarified the rules for the statutory prerequisite to filing copyright infringement lawsuits. This landmark decision also raises many questions about the practical impact on businesses and other content creators.

On July 23, 2019, the Pennsylvania Chapter of the Copyright Society of the USA held a panel discussion on the implications of the Fourth Estate case, with panelists assessing the practical impact from the perspectives of in-house counsel, outside counsel, and the U.S. Copyright Office.

The event was hosted by Schnader Harrison Segal & Lewis LLP in Philadelphia. Panelists included: W. Drew Kastner, Co-Chair of Schnader’s Intellectual Property Practice Group (moderator); Corinne Militello, lead counsel in the Americas at Taylor & Francis Group; Jason Sloan, Assistant General Counsel at the U.S. Copyright Office; and Stephenie W. Yeung, Co-Chair of Schnader’s Privacy and Data Security Practice Group.

Here are some crucial takeaways from this event:

How does the Fourth Estate decision affect the ability of content creators to preserve their rights?

The registration process has always been important for content creators to preserve their rights to statutory damages and attorney’s fees, should they need to file a copyright infringement lawsuit. However, the Fourth Estate decision explicitly held that content creators cannot even get a “key to the court house” until the Copyright Office has taken action on an application by preregistering or registering the work, or by declining to register the work.

Who may be most affected by the case?

While registration is a relatively routine and straightforward activity for practicing attorneys, it may be daunting for content creators who are not familiar with the process. Individual content creators or small business owners may be most affected, if they lack the experience or the capital to plan ahead and register all their works immediately after publication. If there is a particular urgency for a registration (due to pending or prospective litigation, customs matters, or contract or publishing deadlines), a copyright owner can opt to pay the special handling fee for an expedited registration.

How can content creators set priorities for registration?

It is advisable for content creators to establish a regular protocol for registering their most valuable current and planned copyrightable assets. In addition, the content creator needs to be able to establish clean copyright ownership to these assets. If the creator is unsure about ownership, revising and revisiting any copyright agreements to confirm ownership is a good place to start. This review may include understanding the implications of any “work for hire” provisions. For upcoming projects, content creators should consider utilizing their business team and network of outside resources to ensure that applications for upcoming works can be submitted promptly after publication (or for preregistration if the work is eligible).

How is the U.S. Copyright Office working to cut down processing times for registration?

A major point of contention in the briefing of Fourth Estate was the “long” processing time for the U.S. Copyright Office to make a decision on an application. The Supreme Court did not find the “long” wait a compelling reason to contradict the plain language of Section 411(a), which establishes registration or preregistration as a prerequisite for instituting a civil action for infringement, contrasting the three-year statute of limitations for a copyright action with the average processing time (during the course of the briefing) of seven months. As the Court keenly noted, the delay in processing time is largely due to the impact of staffing and budget cuts on the Copyright Office. However, with support from Congress, the Copyright Office has recently been able to rebuild its examination staffing levels.

The Office has also been engaged in a number of other initiatives aimed at reducing processing times, and in the last two years overall processing time has decreased by nearly 40 percent. The Office publishes its processing times online in an FAQ, which indicates that the current average processing time for all claims is five months and the average for electronic applications not requiring correspondence is four months. More information about the Copyright Office’s processing times and how the Office is working to reduce them is detailed in a recent letter to Congress, available on the Office’s website at the link below.

·         Registration Processing Times FAQ - https://www.copyright.gov/registration/docs/processing-times-faqs.pdf

·         May 2019 Letter to Congress - https://www.copyright.gov/laws/hearings/response-to-march-14-2019-senate-letter.pdf

What is the preregistration process and when should it be utilized?

The copyright preregistration process, which permits a content creator to file a lawsuit if there is an infringement action without waiting for a final registration, is available as a preliminary “key to the court house” for the following categories of works prior to their publication: motion pictures, sound recordings, musical compositions, literary works being prepared for publication in book form, computer programs, or advertising or marketing photos. These categories of works are most likely to be infringed prior to publication.

In 2018, only 661 applications for preregistration were submitted to the U.S. Copyright Office compared to over 500,000 applications for registration. The preregistration process is relatively simple, requiring a short description of the work, information about when the creator started to create the work, and the anticipated date of publication. The U.S. Copyright Office does not review the application for the content as thoroughly as they would with a typical registration, but mainly reviews the application to confirm the work falls in one of the appropriate categories for preregistration. If the application and fee are in order, the Copyright Office will usually reach a decision within five days.

After Fourth Estate, content creators who take advantage of the preregistration process will certainly benefit from being able to file an infringement lawsuit before registration is complete. It is important to note that preregistration is not a substitute for registration. To preserve the benefits of preregistration, a content creator must submit an application for registration, a deposit copy of the work, and the application within three (3) months of publication. A preregistered work will not automatically be accepted for registration nor will the processing period for registration be shortened.

Conclusion

As a content creator, there will be a processing lag no matter when you register. Therefore, early registration, or preregistration when available, and planning ahead are the best means to gain immediate access to courts and to preserve eligibility for statutory damages and attorney’s fees to fully protect copyrighted works.

Further details about the Fourth Estate decision are presented in Schnader’s client alert (linked below), Practical Implications of the Supreme Court’s Decision Requiring Final Copyright Office Action Prior to Infringement Lawsuits.”

·         https://www.schnader.com/wp-content/uploads/2019/06/ALERT-Implications-of-SCOTUS-Decision-on-Timing-of-Copyright-Infringement-Lawsuits-2.pdf

 

Alexandra A. Fahringer, Associate, Schnader Harrison Segal & Lewis LLP, afahringer@schnader.com.

W. Drew Kastner, CSUSA Pennsylvania Chapter Co-Chair, and Co-Chair, Intellectual Property Practice Group, Schnader Harrison Segal & Lewis LLP, dkastner@schnader.com.

Corinne Militello, CSUSA Pennsylvania Chapter Co-Chair, and Senior Corporate Counsel, Americas at Taylor & Francis Group LLC, part of Informa plc, corinne.militello@informa.com.

Stephenie Wingyuen Yeung, Co-Chair, Privacy and Data Security Practice Group, and Member, Intellectual Property Practice Group, Schnader Harrison Segal & Lewis LLP, syeung@schnader.com.


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