From The Field

March 5, 2019

On March 4, 2019, the Supreme Court issued two unanimous decisions of interest to copyright practitioners. In both cases, the Court resolved a split among the Circuit courts and repudiated Ninth Circuit positions.

In Fourth Estate Pub. Ben. Corp. v., LLC, 2019 U.S. LEXIS 1730 (March 4, 2019), the Court held that a copyright claimant may commence an infringement suit only after the Copyright Office registers a copyright. The decision resolved a division among the Circuits and expressly rejected the Ninth Circuit’s approach, which had allowed a copyright claimant to commence suit immediately after filing an application for registration.

The Court based its holding on straightforward statutory interpretation, noting that, “[i]f application alone sufficed to ‘ma[ke]’ registration, § 411(a)’s second sentence — allowing suit upon refusal of registration — would be superfluous.” Fourth Estate, slip op. at 5. In accordance with that second sentence of 17 USC § 411(a), a copyright claimant may also commence an infringement suit if the Copyright Office has refused to register a copyright.

Other existing statutory exceptions to the registration requirement remain unaffected by Fourth Estate.  See 17 USC § 408(f)(2) (regarding works vulnerable to predistribution infringement that have been preregistered with the Copyright Office); 17 USC § 411(c) (regarding transmissions of live broadcasts). In these limited scenarios, Congress has authorized preregistration lawsuits.

Justice Ginsburg authored the Court’s opinion in Fourth Estate.

In Rimini St., Inc. v. Oracle USA, Inc., 2019 U.S. LEXIS 1733 (March 4, 2019), the Court held that the “full costs” available to a party in copyright litigation under 17 USC § 505 encompass only those costs specified in the general costs statute, 28 USC §§ 1821 and 1920. In the dispute before it, the Court’s interpretation meant that plaintiff Oracle’s $12.8 million in expert witness, e-discovery, and jury consulting expenses had to be excluded.

The Court based its decision on a line of its earlier cases, which held that, “awarding ‘costs’ will not be construed as authorizing an award of litigation expenses beyond the six categories listed in §§ 1821 and 1920, absent an explicit statutory instruction to that effect.” Rimini Street, slip op. at 6. Because the Copyright Act does not expressly authorize the award of expert witness, e-discovery, or jury consulting costs, Oracle could not recover them here.

In reaching its decision, the Court rejected several assertions advanced by Oracle, including arguments based on the plain meaning of the statutory text and historical interpretations. The Court quipped: “A ‘full moon’ means the moon[sic], not Mars.” The Court remanded the case to the Ninth Circuit for further proceedings consistent with its opinion.

Justice Kavanaugh wrote the Court’s opinion in Rimini Street.

Author: Dave Steiner