11 Mar 2019 Supreme Court Cases
In January 2019, the Supreme Court heard two cases that will affect copyright litigation from the timing of when a case can be filed to the amount of costs for which the prevailing party can ask. Both cases involve splits between different Federal Circuits. A Supreme Court decision on each issue will provide guidance to other courts, so that these issues can be decided even-handedly across the country.
Registration as a Prerequisite for Litigation? Fourth Estate Public Benefit Corp. v. Wall-Street.com
In order to bring a copyright case against an infringer, the original work must be registered with the US Copyright Office, or proper application must be made and registration must be denied. In other words, the office must act and a decision must be made.
However, many copyright holders seek protection while their application for registration is pending with the Copyright Office — a process that can take a year or more. While the Fifth and Ninth Federal Circuits have allowed these holders to bring infringement lawsuits during the pendency of the application, the Tenth and Eleventh Circuits do not.
On January 8, 2019, the Supreme Court heard arguments as to whether the Copyright Act allows copyright holders to file infringement lawsuits before their applications are acted upon, or if they must wait until the decision is given.
This timing question is important because, if the Court determines that the Copyright Office must act before an infringement suit can be brought, copyright holders will have to wait before being able to obtain preliminary relief. They may also be denied relief altogether, if the statute of limitations deadline comes before a decision on registration.
Because the Copyright Act provides automatic copyright protection to original works upon creation, many groups, including the American Bar Association, filed amicus briefs with the Court arguing that it should take the “application” approach, allowing a copyright holder to bring suit once the copyright application has been submitted.
Prevailing Party Costs: Rimini Street Inc. v. Oracle USA Inc.
Federal litigation for a case that goes to trial can be extremely expensive. Generally, prevailing parties are entitled to recover costs for:
- Clerk costs and marshal fees
- Transcript fees
- Disbursements for printing and witnesses
- Copying fees
- Docketing fees, and
- Compensation of court-appointed experts and interpreters.
Other expenses are considered “nontaxable” and are not available to the prevailing party.
However, the Copyright Act differs because it allows the prevailing party to obtain “full costs.”
In this case, the Ninth Circuit granted Oracle a $75 million award, which included $12 million in nontaxable costs, out of a total of $20 million in costs, as well as an additional $28 million in attorney fees. Other Federal Circuits have taken a different approach and do not allow the prevailing party to seek the other non-taxable costs.
A decision on both cases can be expected by the end of June 2019.
This article is for informational purposes only and does not provide legal advice. If you are interested in speaking with a business litigation lawyer regarding copyright infringement, contact Heerde Blum LLP by calling 310-620-7172 or 212-920-5858 or by filling out the online contact form.