Only a scant four months has passed since the Supreme Court dropped the neutron bomb known as Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. In its immediate wake, a multitude of pending copyright actions were thrown into a state of flux and uncertainty. And accused infringers wasted no time in seizing on the holding as a basis to ask the court to throw out otherwise meritorious copyright infringement claims. The courts tasked with reviewing the requests had no choice but to comply, delaying justice and resolution each time.
Affected artists and copyright holders (remember not to conflate copyright with copyright registration, a copyright exists upon fixation and is unaffected by registration) have been forced to sit on their hands and anxiously await the Copyright Office taking action on their applications. The Copyright Office, swaying under the burden of an application onslaught, has done well to decrease response time, but the wait is still months and months. And those artists who do not have the luxury of time, due to statute of limitation issues or other concerns, have been forced to pony up $800 on top of the normal application fee, which for many artists is no small feat. In exchange for this hefty sum, the Copyright Office will stamp and return their one-page copyright form in a few weeks instead of many months.
And even when the Copyright Office has acted and approved the registration for the work at issue in a particular case, accused infringers are still attempting to exploit Fourth Estate — or as the copyright litigators in our office call it, “Forced To Wait” — in an attempt to delay, or increase the expense of, the litigation.
For example, when Fourth Estate dropped, a number of cases were pending in which the copyright holder had filed the case while their copyright registration applications were pending. At some point during the litigation, the applications matured into registrations. But, certain infringers argued, such a registration is still insufficient to support a copyright infringement action because Fourth Estate held that a registration is required before the infringement action is filed in the first place.
Courts have dealt with this in varying ways, depending on the circuit and the weight of authority therein at the time Fourth Estate was decided. In one recent decision, issued by the Central District of California in Lang Van, Inc. v. VNG Corporation, the court acknowledged the fragility of the assertion that cases should be dismissed under Fourth Estate if the registration at issue issued after the filing of the complaint. The Lang Van case involved thousands of copyrights covered by registrations that issued at various times, including after the date of the complaint’s filing.
The court noted that the leading appellate authority at the time of the filing of the case was Cosmetic Ideas, Inc. v. IAC/Interactivecorp, which embraced the much saner approach of allowing a copyright owner to file her infringement claim once she submits her registration application, materials, and fee to the Copyright Office. This decision was abrogated by Fourth Estate, but the court resisted the alleged infringer’s push to narrowly delimit the action and allowed the plaintiff to amend to add allegations detailing the obtainment of additional registrations. The court noted that it was particularly appropriate to allow an amendment in that case because the case was filed in 2014 and disallowing the requested amendment would “implicate[] potential statute of limitations and equitable tolling issues.”
The court also rejected the alleged infringer’s hollow cries of “prejudice” because it was obvious that the date the Copyright Office stamped a form did not have any impact on anything. Indeed, the copyright registration process is a simple formality and the date and other indicia in the form never have much of an impact on anything, yet much time and money is wasted ventilating the various technical registration requirements. This is one of many reasons why the call to obviate the registration requirement in its entirety is reaching a fever pitch.
In Lang Van, the court noted that the registration-before-filing “requirement wasn’t the law at the time of filing,” and rejected the opposition to the amendment request. In doing so, Judge Guilford acknowledges that “the pertinent inquiry is not how the Court would have viewed Plaintiff’s complaint in 2014 if Fourth Estate had been in effect then. Rather, it is how to impose the requirements of Fourth Estate now on a copyright claim that was properly pled when filed, when the facts supporting that claim have continued to evolve.” Given this inquiry, and the axiom that leave to amend should be freely and liberally granted, the court concludes that “[a]mendment is the clearest and fairest way to bring this case in line with new Supreme Court law.” This astute and well-written decision will provide a roadmap for the various other courts who will receive similar challenges in the weeks and months to come.
Scott Alan Burroughs, Esq. practices with Doniger / Burroughs, an art law firm based in Venice, California. He represents artists and content creators of all stripes and writes and speaks regularly on copyright issues. He can be reached at scott@copyrightLA.com, and you can follow his law firm on Instagram: @veniceartlaw.
