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Copyright 2020: Will Hindsight Rule the Decade?
...or Will the ‘20s Really Roar Again!

© 2020 Mark H. Barinholtz, P.C.

Introduction

              What do Sonny Bono (posthumously), and Supreme Court Justices Ruth Bader Ginsburg and Brett Kavanaugh, all have in common? Each became historically influential in major developments in U.S. copyright law during 2019.
              On one track, a 20-year extension in the term of copyright protection, expired without fanfare. Now, the pipeline for 20th century “works of authorship,” e.g., books, plays, films and artworks, has been flung open allowing a yearly surge of such works to slip quietly into the public domain.
              On more of a housekeeping note, on March 4, 2019, the Supreme Court issued two unanimous decisions resolving issues of statutory construction under the U.S. Copyright Act, namely: (i) defining prevailing party “costs” in copyright litigation; and (ii) defining the meaning of “Registration” for purposes of initiating an infringement suit.
              Here’s how the events tee’d us up to move into the new decade.

The “public domain” pipeline reopens.

              On January 1, 2019, the Sonny Bono Copyright Term Extension Act (CTEA), a part of the U.S. Copyright Act, expired. This means that each year for the foreseeable future many 20th Century works will no longer be protected under U.S. copyright law.
              Sonny Bono first registered his copyright to the words and music for his song I Got You, Babe in the summer of 1965. ( https://en.wikipedia.org/wiki/I_Got_You_Babe ) Bono renewed that registration in 1993. About that time, Harold Ramis’ movie Groundhog Day featured the song as the endless, time loop wake-up theme to Bill Murray’s dilemma. But time was ticking on the iconic anthem of youthful angst.
              The CTEA was passed into law in 1998, and effectively paused expiration of copyright protection for works made in 1923 or afterwords, under certain legal and factual conditions. Those works were held back from the public domain until January 1, 2019. Now the floodgates will open each year, on a year-by-year basis, going forward every January 1st.
              The CTEA was promoted at the time by the Walt Disney company which had a substantial investment in the Mickey Mouse brand and related works of authorship. But now, the spigot has been turned to “on.”
              The “public domain,” as a colloquial phrase, connotes the public sphere or realm, where information and concepts are free for all to know and use. Although partly influenced by the colloquial, the “public domain” as a legal term of art, describes works which are not, or are no longer, protected by intellectual property laws. The public domain generally includes works for which the term of copyright protection has expired.
              Determining whether a work has entered the public domain can be a complex and difficult status to pin down. At least for now, the 20-year “pause” imposed by the Sonny Bono Copyright Term Extension Act has begun to fade into history.

The Supreme Court’s “Kumbaya” moment – the Court
Issues simultaneous, unanimous copyright decisions.

              Imagine a U.S. Supreme Court where all nine justices find common ground to issue two unanimous decisions involving interpretations of American copyright law. As we start off the new decade, that’s where U.S. copyright jurisprudence stands!
              On March 4, 2019, the Supreme Court came to grips with several copyright issues which had been dividing the circuits. First, the Court decided that a copyright plaintiff must have an “acted upon” copyright registration in order to pursue her claim in federal court. The “application only” approach will no longer suffice to initially lodge a claim in court. Second, the Court decided that where a prevailing party may be entitled to its costs under the Copyright Act, those costs are limited to certain basic “taxable” costs. “Non-taxable” costs, such as expert witness’ and attorneys’ fees are no longer counted toward the total.
              From a copyright case law standpoint, these two guideposts will likely have a significant impact in coming years. During the time I’ve been practicing in this area, I cannot recall times when U.S. Supreme Court decisions are not cited as the most relevant authority. These two cases will, no doubt, have that effect.

              Fourth Estate Public Benefit Corp. v. Wall-Street.com
              The issue resolved by Fourth Estate occurs when a copyright holder initially decides to bring her claim into a court. In most cases, particularly involving infringement, the copyright registration is the claimant’s ticket into the courthouse. However, the decisions among the various federal circuits were in conflict, so it hasn’t been a simple question as to whether, when and how such registration should be accomplished. Some federal circuits allowed an “application only” to suffice. Some circuits required an “acted upon” certificate -- one which had been issued by the Copyright Office. The decision about what is needed in any particular circuit was unclear.
              Additional factors can have an effect on the copyright claimant’s actions in getting the case ready for filing in a court. There may be more than one work at issue. There may be published works and unpublished works at issue simultaneously. The expense of requesting expedited processing by the Copyright Office may be at issue.
              Now, litigants will have to wait (or pay an expedite fee) for an application to be “acted upon” before filing suit. Depending on each set of facts, the Supreme Court’s ruling in Fourth Estate will give litigants more definitive criteria to consider when entering the court.

              Rimini Street, Inc. v. Oracle USA, Inc.
              In its petition to the Supreme Court, Rimini Street articulated the question to be presented in its controversy, as: “Whether the Copyright Act’s allowance of ‘full costs’ (17 U.S.C. § 505) to a prevailing party is limited to [specifically enumerated] taxable costs under 28 U.S.C. §§ 1920 and 1821, or also authorizes non-taxable costs [e.g., retained expert witness fees and/or attorney fees]. The federal Circuits were split on the proper approach, up to now.
              The issue – to what extent can the prevailing party claim expert witness fees and/or attorney’s fees as part of an award of “full costs” under Section 505 of the U.S. Copyright Act. Allocation of attorney fees can be a significant factor in copyright litigation. Likewise, expert witness fees as costs (other than mere per diems and travel expenses) can rack up considerable dollars.
              In plain English, the difference boils down to how federal courts should provide for the allowance of attorney’s fees and retained expert witness expenses. How those factors may be allocated or shifted among the litigants depending on the outcome of the case, can be an important consideration. This issue is a bit technical, but the Rimini Street decision should have a clarifying impact.


Conclusion

              As a regular proponent of authors’ rights, I’ve encountered the defense of “unprotectability” on more than one occasion, and in more than one form. When it comes to the public domain, however, having a yearly guidepost set by the U.S. Copyright Act itself, should be helpful.
              The Court’s March 4th rulings on some fine points of (i) when is copyright registration “made,” and, (ii) how to allocate fees and costs once a case has been concluded with finality, will also hopefully provide needed clarity.

© 2020 Mark H. Barinholtz, P.C.