In 1998, then-president Bill Clinton signed into law a controversial act that protects American business interests from the public. At that time, college kids were downloading music from an app called Napster that allowed them to share any file on their computer with others. Prior to this, sharing music in this manner was quite difficult. Not only was the size of the files too large for the small hard drives, but the speeds to share the files were also fairly slow. Napster allowed an individual to leave the app running for hours while a file was downloaded. It also helped that these kids were using T1 connections provided by their colleges. 

In response to the brazen theft that was occurring, Congress passed a law protecting media companies from copyright theft. This made it possible to target individuals who were downloading music from Napster and charge them with crimes. Today, those who pirate their favorite television shows from Torrent sites may be familiar with DMCA notices. These notices are given to those who illegally pirate files from the internet. While these notices rarely result in criminal charges, an individual can have their account suspended if they are caught multiple times. Targeting the torrent sites themselves has proven far trickier, though.

Who is Liable for Copyright Infringement?

There are two main targets for copyright infringement. Those are websites and pirates. While those who seek out copyrighted material they know they should not possess are guilty of criminal activity, stopping piracy at the source would produce better results for media companies that rely on their digital assets for income. However, the DMCA protects websites from liability through “safe harbor” exclusions. These exclusions protect web hosts and internet service providers from copyright infringement so long as they implement takedown notices and other measures.

Why are ISPs and Web Hosts Exempted From Copyright Infringement?

To understand the answer to this question, you have to understand the technical aspects of internet hosting. Web hosts do stuff that makes the user’s experience faster and better. They would have been prevented from doing these things or potentially liable to media companies had the exclusion not been passed. Most of the processes are automatic. 

As an example, take Google. Google does not give users copyrighted material. However, its search engine cache allows users to find copyrighted material. Is Google liable for copyright infringement? The answer is no because the information is contained in a “safe harbor” in an information cache. While a company that owns the copyright may file a takedown notice, there may also be a lawsuit over whether or not the exclusion applies.

In most cases, ISPs need only comply with requests from an aggrieved party to satisfy the requirements under the law and maintain their exclusion. However, copyright legislation only applies within the United States and servers that are located here. 

 

Need to File a DMCA Takedown Notice?

Carbon Law Group helps Los Angeles businesses protect their intellectual property. Call today to schedule an appointment, and we can discuss your next moves immediately. 

Today, media companies are fighting battles on multiple fronts to protect their intellectual properties. However, major sites like YouTube are almost certain to have the most takedown notices filed against them each year. Something like the Pirate Bay, on the other hand, seldom has takedown notices filed against it, and if it does, it does not respond to them. If it did respond to them, there would be another torrent file up on the site in a few minutes after the original was taken down.

It is fair to ask: How do media companies protect their IP from pirates? Well, the torrent itself has the IP addresses of everyone downloading the copyrighted material at the time. If you are unlucky enough to be downloading the copyrighted material when the torrent is hacked, the information will be sent to your internet service provider and you will be given a nastygram instructing you not to violate the law. 

With sites like Pirate Bay, however, you are dealing with an internationally-hosted site in a country that does not have super-strong copyright legislation. With YouTube, you are dealing with an American company that is hosted in the United States and can be subjected to legal pressure.

Filing a DMCA Notice With YouTube

This happens sometimes. Let’s say I’m in a band. My band produces a hit song, and now, everyone wants in. Eventually, someone on the internet makes a karaoke version of the song by stripping the vocals and putting up the lyrics. I did not authorize this karaoke version, and I am not getting a cut of the proceeds. I file a notice a DMCA notice with YouTube to remove the video immediately. In this case, I have my lawyer file a notice with YouTube’s registered agent. YouTube accepts the allegations at face value and then removes the video from its platform. It files notice with the individual who put the video up that the video has been taken down. The individual has a right to contest the takedown. 

If an individual who has uploaded copyrighted material to YouTube claims that the material is theirs, then YouTube will review the counter-notice it received and either ask for more information or deem the counter-notice complete and valid, and forward the information to the person who filed the complaint. At that point, I have 14 days to file a lawsuit against the individual who has uploaded copyrighted material to YouTube. If I do not file this lawsuit within 14 days, the allegedly-copyrighted material will go back up on YouTube. 

Can I File a DMCA Notice Myself?

Yes. Creating a takedown notice does not require a law degree. A takedown notice is composed of the following information:

  • Name, address, and electronic signature of the complainant
  • The infringing materials and their URL on the offending web host
  • A statement by the copyright owner that there is a good-faith belief that the material was used in violation of the DMCA
  • An affirmation that the statements made are accurate under the penalty of perjury and that the complaining party (usually a lawyer) is authorized to act on behalf of the copyright owner

Essentially, that is all the information you need to provide to a web host to get copyrighted material taken down. However, if the user fights the action, then you will need an attorney to file suit on your behalf.

Contact a Los Angeles Copyright Attorney Today

Carbon Law Group helps digital content creators protect their intellectual properties from illegal use. To learn more, call us today, and we can begin discussing your options immediately. 

 

What are NFTs again? 

Non-fungible tokens, or NFTs, are a form of digital collectible. While they can be copied and reproduced, the original is secured on a blockchain just like Bitcoin. The first NFTs were digital trading cards that could be traded and collected, even sold online. Today, you can make NFTs out of just about anything, including different types of original artworks. But if anyone can copy them, how do you enforce the copyright?

Recent Copyright Lawsuits Involving NFTs

In a recent lawsuit filed by the creator of Bored Ape Yacht Club NFTs, a “satirist” is accused of copyright infringement after creating NFTs that look substantially like Yuga Lab’s Bored Ape NFTs. These, known as Ryder Ripps NFTs, are at the center of a copyright infringement lawsuit. Yuga Labs, the progenitor of the original Bored Ape NFTs believes that Ryder Ripps is sowing the seed of confusion by mixing his satirical spin-offs with the highly-profitable NFTs created by Yuga Labs.

Yuga Labs is demanding Ryder Ripps cease production of the offending NFTs and compensate the company for financial losses related to the confusion surrounding Bored Ape NFTs. If another company is producing a similar copyrighted product making it difficult for collectors to tell the difference between the original Bored Ape and the spin-off, that could dilute the value of their collectible.

Specifically, What is Ryder Ripps Being Accused of?

They are being accused of ripping off Bored Ape’s original work, connecting it to a different blockchain token, and then selling it at a fraction of the value of the original collectible. They contend that the only point of the effort is to cause financial harm to Yuga Labs. In other words, the satirist is accused of profiting on the popularity of the Bored Ape NFT and defrauding consumers at both their expense and the expense of Yuga Labs. Ryder Ripps is also accused of setting up a copycat Twitter account to further sow confusion in consumers. The fraud element is among the most important allegations made against Ripps who contends that all purchasers are required to sign a disclaimer acknowledging that the product is a satire against the Yuga Labs variation and not meant to be passed off as an original. 

Where do we stand in NFT-related copyright issues? 

Some popular NFT projects have been released with no explicitly written copyright terms (not the Board Apes – its terms and conditions say “You Own the NFT. Each Bored Ape is an NFT on the Ethereum blockchain. When you purchase an NFT, you own the underlying Bored Ape, the Art, completely.”) This creates great legal risk for all concerned. These NFT sales merely convey a license to use the digital copy of the creative work, and the copyright holder retains their copyright ownership. This means that ownership of the virtual art piece is not guaranteed when one buys an NFT. The digital governing contract covering the sale of NFTs must expressly provide for an assignment of copyright in a signed writing for the buyer to actually own the copyright in the art. Without such a signed written instrument, someone could approach an NFT series’ creator and buy the underlying copyright to the artwork, then sue the NFT’s purchasers for putting the images in their profile pictures — because there’s no license explicitly granting them the right to do so.

Using intellectual property without the rights owner’s permission is called infringement, and an NFT creator can be sued for it. Some NFTs create copyright trouble by using artworks stolen from artists, or famous works that the NFT creators have no connection with and no license to use from. Copying these works as part of the NFT marketing (e.g. for OpenSea listings) can be copyright infringement. An NFT creator could be engaged in false advertising by implying that NFT owners will receive rights alongside these stolen works. And because copyright infringement is a “strict liability” claim, NFT owners who make copies of stolen art could also be liable for infringement, even if they were misled by the original NFT creator/seller into thinking that they own the rights to the underlying artwork.

While there is certainly a lot of confusion over what is and is not permissible in our Web3 future of the age of digital collectibles, profiting off another company’s intellectual property remains actionable under the law. 

Talk to a Los Angeles Intellectual Property Attorney

Need to pursue someone for profiting off your intellectual property? Call Carbon Law Group today to schedule a free consultation and learn more about how we can help.

This post is the part II of our last blog post “4 Secrets to Building Your Best Brand (Part I).”

In addition to start using your trademark as early as possible to obtain important trademark rights and start selling goods or services across state lines with your trademark to allow it to be regulated by the Trademark Act, here are two more secrets to help you build your best brand!

  • DON’T INFRINGE ON OTHERS’ MARKS

Trademark Infringement means a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees.

For example, situations like these:

When evaluating whether two trademarks are confusingly similar, courts in the U.S. actually look at between nine to thirteen different factors to determine whether there is confusion that will cause trademark infringement. So when lawyers create trademark search reports, we look at those different elements and provide an analysis to prevent our clients from infringing others’ marks.

The two most important factors of this analysis are the following:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
  • The relatedness of the goods or services.

The greater the similarity between marks, the less related the goods or services have to be in order to support a finding of likelihood of confusion. Therefore, if two marks are identical or virtually identical, the respective goods or services need not be as close to finding a likelihood of confusion.

 Other factors of this analysis include: 

  • The similarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing
  • The number and nature of similar marks in use on similar goods 
  • The existence of a valid consent agreement between the applicant and the owner of the previously registered mark  
  • The fame of the prior mark
  • Nature and extent of any actual confusion
  • Concurrent use without evidence of actual confusion: length of time and conditions

Before you apply to register your trademark with the USPTO, you should search the USPTO’s trademark database – Trademark Electronic Search System (TESS) to see if any trademark has already been registered or applied for that is: similar to your trademark, used on related products or for related services, and live.

  • BE THE OWNER OF YOUR MARK

Copyrights are generally owned by the person who created the works of expression. Therefore, if you are not the creator of your trademark you may not be the actual owner of the mark!

If you are not the actual creator of a creative work, then the only way that you can acquire exclusive rights to the work is by having a signed and legally sufficient writing transferring some or all of those rights exclusively to you or your business. If the creative work is created by an employee in the course of his or her employment, the employer owns the copyright. If it is your independent contractor that created the work, then it depends on whether the independent contractor signed a written agreement stating that the work shall be “made for hire,” or enter into an assignment agreement with you.

It is important to note that, under California law, including a work made for hire clause in an independent contractor agreement with an individual will cause the California-based independent contractor to be considered a “statutory employee” under California’s workers’ compensation, unemployment insurance, and disability insurance laws.

Therefore, when you are creating your trademark, make sure you are the exclusive owner of your mark/logo when you hire an independent contractor to create it, by using work for hire agreement or a copyright assignment agreement and don’t forget to address potential worker classification issues!

If you need help with registering a new trademark with the USPTO, contact us today to discuss your trademark protection strategies with an experienced trademark attorney. Schedule an appointment with us to have a free initial consultation. 

Interested in learning the secrets behind building the best brand? Join us for this FREE webinar and learn about how to build a successful and legally protectable brand! If you are thinking about building a brand, you cannot miss this!

It is the new year and a lot of us resolved to work out more and get stronger. But don’t limit your strength training to just your muscles–your trademarks deserve a little boost as well!?

Why is trademark strength important?

U.S. trademark law recognizes a spectrum of distinctiveness that provides a sliding scale of trademark protectability. Judge Pierre Leval defined trademark strength as the amount of “legal muscle” possessed by a given mark.

The stronger the mark, the more uses the trademark owner may exclude from the marketplace through a trademark infringement or dilution action. Stronger marks are able to exclude more similar marks from the marketplace. Such increases can happen along two fronts: “appearance” of the trademark and the “goods or services” the trademark protects. The stronger a registered trademark is on the “appearance” dimension, the less similar the look, sound, and spelling a third-party’s mark must be in order to risk being excluded by the registered trademark. The stronger a registered trademark is on the “goods or services” dimension, the less similar the goods or services offered by a competitor using the same or similar marks must be in order to risk being excluded by the registered trademark.

A trademark’s relative strength or weakness will also have a direct bearing on its performance in the market. A mark that is highly distinctive functions as a strong mark, identifying the owner as the source of the covered products or services. When a mark is not distinctive or it may already be used by others on or in connection with different products or services, the mark is considered weak.

Therefore, trademark strength is extremely important for trademark owners as it has a strong impact on the value of the trademarks to their owners. It is generally easier and less costly for a trademark owner to acquire and enforce exclusive rights in a strong trademark that is distinctive and unique than one that is descriptive or highly diluted, i.e., widely used.

How is a mark’s strength or weakness gauged?

The relative strength or weakness of a trademark may be gauged by placing the trademark on a spectrum. The types of trademarks discussed below range from the strongest to the weakest.

  • Fanciful or Coined Marks. A fanciful or coined mark is at the strongest end of the spectrum because it is inherently distinctive. Such a mark consists of an invented word that is a combination of letters that has no meaning. For example: GOOGLE for online services, PEPSI for soft drinks, ROLEX for watches, and XEROX for copiers. Since a fanciful or coined mark has no inherent meaning, in the beginning, a bigger effort in terms of advertising is necessary in order to educate the public as to the relationship between the invented word and the owner’s product or service. However, these marks enjoy the broadest scope of protection against third-party use.
  • Arbitrary Marks. An arbitrary mark is composed of a word or words that have a common meaning in the language of the relevant jurisdiction; however, that meaning is unrelated to the goods or services for which the mark is used. Arbitrary marks, such as CAMEL for cigarettes and APPLE for computers, are considered highly distinctive in identifying and distinguishing products or services. As with fanciful or coined marks, the public must be educated as to the association of the arbitrary mark with the relevant product or service, but the scope of protection obtained is very broad.
  • Suggestive Marks. A suggestive mark gives consumers some sense of the nature of the products or services that a business will provide without actually describing the product or service. A suggestive mark is one that requires “a mental leap from the mark to the product”, or, “the consumer’s imagination, thought, and perception to reach a conclusion as to the nature of the goods or services.” Variety Stores, Inc. v. Wal-Mart Stores, Inc., 888 F.3d 651, 662 (4th Cir. 2018). Examples of suggestive marks are AIRBUS for airplanes and NETFLIX for streaming services. Suggestive marks can possess an inherent element of sales appeal and will require less education of the public than coined or arbitrary marks; for this reason, generally, suggestive marks are entitled to less-extensive protection.
  • Descriptive Marks. In general, a descriptive mark is a word (or words) that merely describes a product or that contains ingredients or attributes that are too weak to function as a trademark. An example of a merely descriptive mark would be COLD AND CREAMY for ice cream. Such a mark is very unlikely to be granted registration, as the phrase merely describes an attribute of the product. Words that merely describe an attribute, feature, end result, or use of the product, or the persons employed in its production, generally are not granted trademark protection. Merely laudatory terms such as “best” or “quality” also are generally not registrable. In some jurisdictions, surnames are treated as descriptive marks. What is initially a descriptive word may later become protectable as a trademark if it acquires secondary meaning. In other words, if a descriptive word is used and advertised exclusively as a trademark for a sufficient period of time, it may, in addition to having the primary meaning that is descriptive of the product, come to identify the mark as being associated with a single source of origin for that product. An example of a descriptive word that has acquired a secondary meaning and become protectable as a trademark is SHARP for televisions.
  • Generic Words. A generic word can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify.

How to select a strong trademark?

As a trademark applicant, you should try your best to come up with a strong new trademark that is inherently distinctive. The strongest types of trademarks are (1) fanciful or coined marks, such as EXXON for petroleum products, KODAK for photography company; and (2) arbitrary marks, such as AMAZON for retail services, APPLE for computers, SHELL for gasoline, and BLACKBERRY for cell phones. 

There are many resources online that can help you with the naming process of your brand. For example, what we found on this website: https://guide.onym.co/ or the books like “Brand Thinking and Other Noble Pursuits.” Check out our other blog post on how to choose a business name here

If you need help with determining your proposed trademark’s strength, contact us today to discuss your trademark protection strategies with an experienced trademark attorney. Schedule an appointment with us to schedule a free initial consultation! 

The U.S. Customs and Border Protection (CBP), a bureau of the Department of Homeland Security, is the nation’s largest federal law enforcement agency that is charged with securing the nation’s borders and facilitating international travel and trade. It plays an underrated role in helping businesses enforce their intellectual property rights. Businesses may work with CBP to protect their intellectual property rights against counterfeiters. CBP has the authority to determine infringement of intellectual property rights at the US border and enforce intellectual property rights by excluding from entry, detaining, and seizing goods that infringe the business’s intellectual property rights such as trademarks, copyrights, and patents. How can CBP help with Intellectual property rights enforcement and fight against counterfeits? Intellectual property rights enforcement is complex and CBP relies on assistance from intellectual property rights owners to effectively carry out its enforcement authority. To obtain full CBP protection against the importation of goods bearing infringing trademarks, trademark owners should record their federally registered trademarks with CBP. Only trademarks registered on the USPTO’s Principal Register are eligible for CBP recordation. Common law trademarks and trademarks registered on the USPTO’s Supplemental Register cannot be recorded with CBP. It is important to record trademarks with CBP because CBP has no authority to prevent the importation of goods bearing a confusingly similar mark if the mark has not been recorded with the CBP. Therefore, even if the goods bear a mark that copies or simulates a mark registered with the USPTO, if the mark has not been recorded with CBP, the goods are not subject to detention or seizure. CBP and Counterfeits A counterfeit mark is a “spurious mark that is identical with, or substantially indistinguishable from,” a federally registered mark. CBP is obligated to seize and seek forfeiture of imported goods deemed to bear a “counterfeit” mark, whether or not the mark is recorded with CBP.  CBP has authority to seize goods bearing counterfeit marks because of the Tariff Act of 1930 and Federal Criminal Code, which provide for criminal penalties, including fines, against persons who intentionally traffic in counterfeit goods. CBP may impose a civil fine against any person who directs, assists financially or otherwise, or aids in the importation of goods bearing a counterfeit mark. Knowledge that the product is counterfeit is not required for civil liability. CBP also maintains the Intellectual Property Rights Search (IPRS) database, which contains information on recorded trademarks (as well as copyrights and trade names) and the IPRS database is available to the public. How can Intellectual Property Owners Effectively Work with the CBP  Here are a few steps intellectual property owners can take to increase the likelihood that CBP will discover and take action against infringements:
  1. Provide CBP with information regarding their trademarks and products (such as by making a product identification training guide and providing product identification training)
  2. Report suspected infringing imports to CBP
  3. Create and implement an intellectual property security plan
Navigating how you can work with the CBP to protect your company or product against counterfeits may seem daunting. It is always helpful to enlist the assistance of a professional intellectual property attorney. We are here to help you fully understand the benefits and details of working the the CBP to protect your intellectual property rights. Find out how Carbon Law Group can help you protect your intellectual property rights by scheduling a meeting with us using this link.  

Did you know that color, sound, scent, and hashtags can be protected by trademarks? 

Traditionally, trademarks are words or symbols used to identify the source of a product or service. Most trademarks are word marks such as COCA-COLA; or design marks/logos such as ; and slogans, such as Coca-Cola’s “It’s The Real Thing.”

However, the list of things that can be registered as trademarks under the Lanham Act is actually very broad. There are practically no limitations to the subject matter of registrable marks, so long as the mark is capable of acting as an identifier of source, whether because it is inherently distinctive, or it has acquired distinctiveness and the mark is not functional.

Here is a list of non-traditional trademarks: 

Color Mark

The registrability of a color mark depends on the manner in which the proposed color mark is used. Color takes on the characteristics of the object or surface to which it is applied, and the commercial impression of color will change accordingly. Color marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness.

Color, whether a single overall color or multiple colors applied in a specific and arbitrary fashion, is usually perceived as an ornamental feature of the goods or services. However, color can function as a mark if it is used in the manner of a trademark or service mark and if it is perceived by the purchasing public to identify and distinguish the goods or services on or in connection with which it is used and to indicate their source. 

Sound and Scent Mark 

A sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they “assume a definite shape or arrangement” and “create in the listener’s mind an association of the sound” with a good or service. Some famous sound trademarks include the iconic ticking of 60 Minutes’ stopwatch that CBS trademarked and the sound of a lightsaber, FYI, is described as “an oscillating humming buzz created by combining feedback from a microphone with a projector motor sound.”

Some scents that are protected by trademarks include the scent of Play-Doh, which is described as “a unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough;” and the “flowery musk scent” in verizon stores.

A trademark applicant that wishes to register a sound or a scent trademark is not required to submit a drawing if the mark consists only of a sound, a scent, or other completely non-visual matter.  For these types of marks, the applicant must submit a detailed description of the mark.

Hashtag Mark

A “hashtag” is a form of metadata consisting of a word or phrase prefixed with the symbol “#”. Hashtags are often used on social networking sites to identify or facilitate a search for a keyword or topic of interest. 

As hashtags became increasingly more popular on social media, in 2013 the United States Patent and Trademark Office (USPTO) recognized hashtags as registrable trademarks “only if [the mark] functions as an identifier of the source of the applicant’s goods or services.” The addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable.

Some examples of hashtag mark the USPTO has granted registration include: 

#EVERYDAYMADEWELL for “online retail store and retail store services in the fields of clothing, footwear, bags, sunglasses, jewelry, watches, and fashion accessories”

#HOWDOYOUKFC for “restaurant services

#THESELFIE for “photography and videography equipment, namely, remote shutter releases

Unique challenges applicants of non-traditional trademarks face

Federal registration of trademarks generally confers certain benefits to the trademark owner However, non-traditional trademarks face unique challenges that traditional trademarks don’t face in registering with the USPTO. Non-traditional trademarks can take longer and cost more to register and in addition to the distinctiveness and non-functionality hurdles, challenges exist in clearing the marks for registration due to the complexity involved in searching Non-traditional trademarks on TESS; fulfilling technical requirements for registration involved in providing the appropriate drawing and specimens for marks that are not easily depicted on paper; and the unique unpredictability due to a lack of successful precedents to provide guidance. Even if it is registered, a non-traditional trademark may be difficult to enforce. Furthermore, the inherent challenges in searching non-traditional marks make it hard to monitor infringement of the mark. 

If you need help with your non-traditional trademark, contact us today to discuss your trademark protection strategies with an experienced trademark practitioner.

Judy Yen Judy Yen is an associate in Carbon Law Group’s Los Angeles office. She joined our firm in 2019 and her practice focuses on representing emerging companies in intellectual property and business transactional matters. Born and raised in Taiwan, Judy is a native speaker of Mandarin Chinese. She has used her international legal experience, […]

Answer: Only if you care about protecting your creative work.

We realize we set you up with a leading question, but the reality is, based on a recent Supreme Court ruling, it is more important than ever before to file for a copyright registration if you want to protect your creative work.

On March 4, 2019, the Supreme Court settled a split among U.S. Courts of Appeals regarding whether a copyright owner can sue for infringement before the Copyright Office grants registration in Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC.

This decision underscores the importance for copyright owners who expect to enforce their rights through litigation take early action to register their works with the Copyright Office before any claim arises.

The Copyright Act of 1976 gives copyright protection to “original works of authorship fixed in any tangible medium of expression,” and copyrights vest as soon as the original work was created and reduces to a tangible medium (such as put in writing, saved on a hard drive, recorded on tape, etc.).

Copyright owners have the exclusive right to (a) reproduce their original work; (b) distribute such work; (c) publicly display or perform the original work, and (d) create derivative works of the original work. And they can prevent other people from exercising those rights during the duration of the copyright.

However, 17 U.S.C. §411(a) conditions that “no civil action for infringement of the copyright in any United States work shall be instituted until…registration of the copyright claim has been made in accordance with this title.” In plain English, this means that if the original work has not yet been copyrighted, the owner cannot sue for copyright infringement.

Fourth Estate Public Benefit Corporation (“Fourth Estate”), a news organization, sued Wall-Street.com and its owner (“Wall-Street”) for copyright infringement after Wall-Street failed to remove Fourth Estate’s news articles from its website despite having canceled the parties’ license agreement. Fourth Estate had filed applications to register the articles with the U.S. Copyright Office. Yet, the Register of Copyrights had not acted on those applications before Fourth Estate filed the suit.

The parties disputed the meaning of “registration” in §411(a). Fourth Estate argued but failed to convince both the U.S. District Court and the Eleventh Circuit court, that “registration” for the purposes of §411(a) occurs when a copyright owner submits the application, materials, and payment to the Copyright Office. Both lower courts held that registration of copyright hasn’t been made until the Copyright Office acts. Justice Ruth Bader Ginsburg delivered the opinion for a unanimous Supreme Court that affirmed the lower courts’ decisions, holding that “registration” in §411(a) “refers to the Copyright Office’s act of granting registration, not to the copyright claimant’s request for registration.”

However, the statute provides several exceptions to the general rule that registration occurs, and a copyright claimant may commence an infringement suit when the Copyright Office registers the copyright. For example, owners of material susceptible to pre-distribution infringement, such as movies or musical compositions, can apply for preregistration, a limited review of the application after which the copyright owner may commence an infringement suit.

Thus, this case clarifies that generally a copyright owner only may bring an infringement suit after the Copyright Office grants registration. If authors and content creators do not register their works early, they may not be able to enforce their rights in courts right away when infringement takes place.

By Judy Yen, Loyola Law Student and Law Clerk with Carbon Law Group

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