Timing is Everything: When Does Registration of a Copyright Occur Under the Copyright Act?

Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, Case No. 0:16-cv-60497-RNS (11th Cir. May 18, 2017)

Copyright Registration

Copyrights are a unique category of intellectual property law in that the Copyright Act does not require official registration with the Register of Copyrights in order to have a valid copyright. However, despite the seemingly voluntary nature of this regime, there are incentives for a copyright holder to apply for registration of his or her copyright – namely that you cannot file a suit for copyright infringement without doing so. The term “registration,” as it is used in the Copyright Act, is interpreted differently by the Circuit Courts and on May 18, 2017, the Eleventh Circuit weighed in on the circuit split and answered an important question in copyright infringement cases: when does registration of a copyright occur?

Background

In this case, Fourth Estate Public Benefit Corporation, an organization that produces online journalism, brought suit against Wall-Street.com, LLC for copyright infringement. Fourth Estate licenses articles to different websites, but retains the copyrights to those articles. Fourth Estate licensed articles to Wall-Street.com and, pursuant to their licensing agreement, Wall-Street.com was required to remove all content produced by Fourth Estate when the relationship ended; however, Wall-Street.com continued to display the articles after termination of the relationship.

Consequently, Fourth Estate filed a complaint against Wall-Street.com and its owner. Fourth Estate’s Complaint, in an attempt to comply with the pleading requirements for copyright infringement, alleged that “applications to register [the] articles with the Register of Copyrights” had been filed, but pled no facts regarding the Register of Copyrights’ actions on the application. In response, Wall-Street.com filed a motion to dismiss arguing that under the Copyright Act a suit for infringement can only be brought after the Register of Copyrights approves or denies the application to register. As further discussed below, this prompted the Eleventh Circuit to finally address the question that currently splits the circuits: whether registration of a copyright occurs upon the filing of an application or after the Register of Copyrights approves or denies registration of the copyright?

Ruling

In its analysis, the Eleventh Circuit sets forth the two approaches to “registration” under the Copyright Act: (1) the “registration” approach, which “requires a copyright owner to plead that the Register of Copyrights has acted on the application – either by approving or denying it – before a copyright owner can file an infringement action,” and (2) the “application” approach, which “requires a copyright owner to plead that he has filed ‘the deposit, application, and fee required for registration’ before filing a suit for infringement.” Fourth Estate Public Benefit Corporation v. Wall-Street.Com, LLC et al., Docket No. 0:16-cv-60497-RNS at p. 5.

The Eleventh Circuit held that, under the clear language of the Copyright Act, the registration approach is correct – a decision that aligns with the minority approach.[1] In reaching its decision, the Court relied heavily on the statutory language in the Copyright Act. For example, the Court cited to §410(a) of the Copyright Act, which states that “[R]egistration of [a] copyright . . . has [not] been made in accordance with” the Act until the Register “register[s] the claim.” Additionally, the Eleventh found that the Act’s use of the phrase “after examination” in discussing registration indicated that registration occurs subsequent to, and not instantaneously with, the filing of the application.[2] Further, the Eleventh Circuit cited §410(b) to further bolster its analysis, as this section acknowledges that the Register of Copyrights has the power to “refuse registration” if the application does not meet copyrightable standards. Clearly, “if registration occurred as soon as an application was filed, then the Register of Copyrights would have no power to ‘refuse registration.’” Fourth Estate Public Benefit Corporation v. Wall-Street.Com, LLC et al., Docket No. 0:16-cv-60497-RNS at p. 8.

Moreover, Fourth Estate argued that the three-year statute of limitations for infringement suits, established by §507(b) of the Copyright Act, supported the application approach. The Court rejected this argument finding that the Copyright Act’s statutory plan is to encourage early registration, and thus, the three-year statute of limitations and the registration approach taken together align with this statutory scheme. The Court further stated that the statute of limitations functions as an incentive for early registration because the potential of losing the right to protect your copyright against infringement “encourages an owner to register his copyright soon after he obtains the copyright and before infringement occurs.[3]Fourth Estate Public Benefit Corporation v. Wall-Street.Com, LLC et al., Docket No. 0:16-cv-60497-RNS at p. 10.

Impact

This decision clarifies the pleading standard for copyright infringement in the Eleventh Circuit. After this decision, in order to state a claim for copyright infringement a copyright holder must allege that the Register of Copyrights has approved or denied the application for registration. Additionally, as suggested by the Court’s interpretation of the Act’s statutory scheme, this decision has the potential to prevent copyright holders from sleeping on their rights and motivate prompt registration. However, since the Eleventh Circuit took the minority approach, copyright holders and attorneys practicing in this field should continue to follow this issue as it is likely that Fourth Estate will petition for a writ of certiorari in the Supreme Court.

 

[1] The Eleventh Circuit followed the Tenth Circuit’s registration approach, whereas the Ninth, Fifth, and Eighth Circuits have all elected to follow the more lenient application approach.

[2] Section 410(a) of the Act states “When, after examination, the Register of Copyrights determines that, in accordance with the provisions of this title, the material deposited constitutes copyrightable subject matter and that the other legal and formal requirements of this title have been met, the Register shall register the claim and issue to the applicant a certificate of registration under the deal of the Copyright Office.” 17 U.S.C. §410(a) (emphasis added).

[3] The Court also cited to other provisions in the Copyright Act that reflect a statutory scheme encouraging prompt registration. See e.g., 17 U.S.C. §410(c) (stating that registration made “before or within five years after first publication of the work” will be “prima facie evidence of the validity of the copyright.”)

 

Micayla MancusoMicayla Mancuso is an associate at Kluger Kaplan, focusing on general and complex commercial litigation. Before joining Kluger Kaplan as a full time associate, she served as a summer associate at the firm. Prior to this, she served as an extern for the City of Boston Law Department and served as a judicial intern in the Boston Municipal Court for Judge Debra A. DelVecchio. She also served as an intern for the Federal Public Defender for the Southern District of Florida.

Chambers USA Ranks Kluger Kaplan in 2017 Edition

Firm and Three Founding Members Ranked for General Commercial Litigation

Prominent-boutique litigation firm Kluger, Kaplan, Silverman, Katzen & Levine, P.L. is pleased to announce that the firm has been recognized as a leading general commercial litigation firm in the 2017 edition of Chambers USA, one of the most esteemed legal publications in the world.

Kluger Kaplan received a Band 3 ranking in the category of General Commercial. Additionally, three of the firm’s founding members, Alan J. Kluger (Band 2), Steve I. Silverman (Band 3) and Philippe Lieberman (Band 4) were recognized by the publication.

Alan KlugerPhilippe LiebermanSteve Silverman

 

 

 

 

 

The Chambers USA guide annually ranks preeminence in key practice areas, and achievements of law firms and lawyers throughout the country based on complexity of the work, firm growth and client service.

“It is an honor to have the firm’s work again recognized by one of the most prestigious legal publications in the world,” said Alan J. Kluger, founding member of Kluger Kaplan. “This recognition spotlights Kluger Kaplan’s dedication to being zealous advocates for our clients.”

The recognition by Chambers USA is the latest in a long list of accolades received by Kluger Kaplan. The firm was recently named a Top Litigation Firm by the Daily Business Review, an ALM-affiliate and sister publication to the American Lawyer, Corporate Counsel and National Law Journal. The firm has also been named Best Law Firm by U.S. News and World Report, one of Florida Trend Magazine’s Legal Elite and one of Florida’s Top 100 law firms by Florida Super Lawyers Magazine.

With a growing national litigation practice, Kluger Kaplan announced in April that it was opening a new office in Minneapolis—the first of its physical footprint outside of South Florida. The firm anticipates opening subsequent locations across the Midwest, such as Chicago and St. Louis.

Attorney rankings by Chambers USA:

Litigation: General Commercial (Band 3)

  • Alan J. Kluger (Band 2)
  • Philippe Lieberman (Band 4)
  • Steve I. Silverman (Band 3)

For full details on Kluger Kaplan’s rankings in Chambers USA 2017, please visit Chambers & Partners.

Evolving Society, Evolving Law?

 

Introducing our KK Q&A series. Over the coming months, look out for monthly Q&A posts with Kluger Kaplan associates, digging in about some of the most interesting parts of their practices. Something special you’re dying to ask an associate or learn more about? Send us a message and we’d be happy to include it.

The world is certainly different than it was 50 years ago. No longer is it the norm to get married, buy a house, have a family – in that order. In many places, gone are the days of nuclear family, picket fence suburbia, and instead, trading in for later in life marriages, children out of wedlock, and pre-marital cohabitation. In fact, Miami is among the highest numbers of non-married co-borrowers of new mortgages this year.

But has the law changed to accommodate the new norm? Not really. We asked Lindsay Haber, KKSKL associate and family and divorce law expert, about the effect societal changes have on the practice of law.

  1. What should unmarried couples be aware of when combining their lives?
    As couples are slower to rush down the aisle, couples should be considering legalities of purchasing cars and property together, mixing incomes, accumulating debts and much more. When any sort of comingling of finances occurs, there is no real recourse in a family court should an unmarried couple break up. A popular concern for unmarried co-habitating couples is buying a home together. The question of how to own property is something I frequently see unmarried couples struggle with. If a couple is married with no prenup, real property purchased during the marriage is generally considered marital property regardless of how titled. For an unmarried couple, however, there is no such presumption of jointly held ownership when an unmarried couple titles the property in one party’s name only.  There is limited recourse for the party not titled, yet who has helped purchase the real property, pay down the mortgage, and put money towards the upkeep of the property.
  1. From your perspective, has the law had any effect on families?
    The world is changing. People are not as quick to get married, which leads to more marriages later in life. More later-life marriages mean more life events happening prior to marriage, like opening your own business, inheriting money, and creating substantial debt (be it school or otherwise), and a more complicated union is born. This, in turn, is just one of the reasons couples should consider entering into a pre-nuptial agreement prior to marriage.
  1. How has the changing view of gender roles in a marriage effected family law?
    When most people think of a family going through a divorce or paternity matter, one of their first thoughts is “how much is the man going to have to pay?” But that’s no longer the case.  I have had quite a few cases this year where the wife or mother has been the breadwinner, has had to pay alimony to her now ex-husband, or will be paying her ex-husband or ex-boyfriend child support until their child reaches the age of a majority.  I have also had several cases where both parties make nearly the same income and are surprised to learn during their divorce or paternity action that neither party is entitled to alimony or child support from the other.
  1. In an ever-changing world, can you suggest some tips for someone in the first stages of a divorce or a paternity matter?
    Many get the wrong advice from friends and family—who all probably have the best intentions for that person—but ultimately, this can do more harm than good. There is no such thing as a one-size-fits-all divorce advice. No two families are the same, so no two divorces and no two paternity actions will be the same. While a friend or family member may recommend that you should move out, empty a bank account, or immediately file for divorce, the best first step is to contact an attorney for a consultation to see if that is in fact the right step for you to take. Attorney/prospective client privilege applies in consultations so you can feel comfortable that what is said during that time will remain private.

 

Lindsay HaberLindsay Haber is an associate in the firm’s Family Law Group, focusing her practice on family law disputes, including divorces, child custody issues, domestic violence and preparations of prenuptial agreements and paternity disputes.  Beyond her national practice, Ms. Haber has handled international domestic relations issues, including international kidnapping.

Practice Tips: Building Your Personal Brand

Building your brand in a law firm as a young associate is no easy feat. Not to mention, trying to build a book of business at the same time. Richard Segal, however, has proven in his time at Kluger Kaplan, that he knows how to climb the ladder. Rich’s path has been influenced by the firm’s mentorship program, where founding partners mentor new partners and associates to provide them the tools to build and market their practices—something he hopes to pay forward. So, we asked Rich for his advice on building a successful career trajectory.

Networking

  1. What did you learn early on in your career that helped guide you on your path to success?
    I learned early on to give more than I take when it comes to climbing the ladder. Join industry and charitable organizations, and attend networking events. In these organizations and within your firm, lend your time with the goal of obtaining a leadership position. Those around you will be impressed that you devote your time for the benefit of an organization and moreover, will perceive you in an authoritative and professional role. Every fruitful marketing relationship starts off by giving—and the return will inevitably come.
    If you happen to find yourself in a networking situation where you know other colleagues in the room, always speak highly of them and praise their accomplishments. Remember, what goes around comes around.
  2. You now work side by side with veteran litigators, handle major class action suits, counsel high profile clients – what have you learned so far from those experiences?
    Walk the walk and talk the talk. It may be easier said than done, but confidence can go a long way. If you doubt yourself, it is easy for others to do the same. Some of the most successful, veteran litigators I’ve worked with have an air of confidence that makes you want to work with them. Be confident, not cocky.
  3. What can a young associate/lawyer do to promote themselves in and outside of the firm? Why is this important?
    Do what comes naturally to you and be authentic with your choices. It’s important to find your strength and stay true to that. If public speaking doesn’t come naturally to you, write articles. If you’ve developed a deep connection to an organization, dive in headfirst. Begin within your personal comfort zone, but don’t be afraid to push your boundaries when opportunity presents itself. Learn to understand your weaknesses and turn them into an active pursuit towards personal growth. When opportunity arises, you want to be ready for it.
  4. As a young partner yourself, how are you helping the firm’s young associates learn the skills you’ve learned?
    I like to encourage associates to do more than just attend charity events or networking events. Take ownership and organize the events yourself. Differentiate yourself. And make yourself seen by demonstrating the qualities of a leader.
  5. Is there anything you learned the hard way? Any missteps you’ve made that an associate eyeing your success could learn from?
    I joined the Miami Beach Chamber of Commerce early in my career and quite frankly did not know how to “work a room.” I left many networking events feeling defeated—as if I missed an opportunity to appeal to colleagues and peers more authentically. I eventually realized my story was the key to working a room. My grandparents moved to Miami Beach in 1948, my father was born in Miami Beach, I was born at Mount Sinai, and my son was born at Mount Sinai. Starting to see my connection? While I didn’t know at first how to work the room, if I could do nothing more than just tell people my story, about my roots in Miami Beach, I was connecting. Your authentic story is what will bring you to success.

 

Richard SegalRichard Ian Segal is a partner and practices in Kluger Kaplan’s commercial litigation and family law groups, assisting clients in a range of business and corporate litigation matters, and matrimonial disputes.

Law360: Plaintiffs Bar Perspective: Kluger Kaplan’s Steve Silverman

Steve Silverman

Steve I. Silverman is a founding member of Kluger Kaplan Silverman Katzen & Levine PL in Miami. He represents individuals and businesses in all aspects of complex commercial and business disputes, including lender liability issues, claims relating to membership interest rights, all aspects of real property litigation, and complex class action cases.

Silverman has experience litigating multiparty cases in federal and state courts in Florida and nationwide. In addition to his complex litigation practice, he is also an experienced appellate lawyer, having handled dozens of appeals in both state and federal courts, both crafting briefs and delivering oral arguments.

Prior to co-founding Kluger Kaplan, Silverman served as chairman of the litigation and dispute resolution department, and as co-founder of the distressed asset group at Kluger Peretz Kaplan and Berlin. He also heads Kluger Kaplan’s electronic discovery group, following the latest trends and case law in electronic discovery issues at both the state and federal levels.

Q: What’s the most rewarding aspect of working as a plaintiffs attorney?

A: One of the most rewarding aspects of representing a plaintiff is hearing from my client at the end of the case that his or her goals have been met, that my client walks away from the litigation feeling fully and adequately compensated, and that they feel no stone was left unturned in their representation. Plaintiffs often come to us feeling significantly wronged and harmed. Being able to work through a case with clients to make sure that they feel satisfied at the end of the day after an often difficult experience is very gratifying.

Click to read more at Law360.com.