In a pair of unanimous rulings on March 4, 2019, the Supreme Court clarified (1) that the U.S. Copyright Office must issue a registration certificate before a plaintiff can commence suit and (2) that a prevailing plaintiff cannot recover fees for expert witnesses, jury consultants or other “costs” that are not specifically called for in the relevant statutes.
In Fourth Estate Public Benefit Corp. v. Wall-Street.com, the Court held that plaintiffs alleging copyright infringement cannot commence a case for infringement without first applying for and receiving from the Copyright office a certificate of registration. The Court reasoned that registration of a copyright is “akin to an administrative exhaustion requirement that the owner must satisfy before suing to enforce ownership rights.” The Court was careful to point out that the Copyright Act permits preregistration in some cases, but those would be the only circumstances where an action can be commenced prior to a registration issuing.
The upshot is that content owners and practitioners should take care to ensure that they register all works. Not only does the law now clearly and ambiguously require it as a prerequisite to enforcing copyrights, pre-infringement registration is the only way to obtain statutory damages and attorneys’ fees.
We wrote about the arguments considered by the Court in a previous post, available here.
In Rimini Street, Inc. v. Oracle USA, Inc., the Court held that a district court’s discretion to award “full costs” does not include discretion to award expert witness fees or other “costs” that are not specifically permitted in 28 U.S.C. §1920. In its case against Rimini Street for copyright infringement, Oracle obtained a $12.8 million award of “costs” for litigation expenses such as expert witnesses, e-discovery, and jury consulting even though those “costs” are not generally permitted to be taxed. The district court had reasoned that the Copyright Act conferred discretion to award “full costs” that included all litigation expenses in addition to those enumerated in Section 1920
Writing for the Court, Justice Kavanaugh explained that the term “full” was a term of quantity or amount and does not expand the type of costs available to the plaintiff. The Court reasoned that:
A “full moon” means the moon, not Mars. A “full breakfast” means breakfast, not lunch. A “full season ticket plan” means tickets, not hot dogs.
The phrase “full costs” means just “costs,” i.e., those specifically delineated by Congress – which are quite limited. The Court noted the Copyright Act separately provides for attorneys’ fees in appropriate cases. (But, as we note above, a copyright plaintiff can only get its attorneys’ fees where it registers its copyright before the infringement occurs).