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Matthew F. Abbott

On September 27, 2018, the Supreme Court granted a petition for writ of certiorari in Rimini Street, Inc. v. Oracle USA, Inc.  (No. 17-1625).  At issue is whether the Copyright Act’s allowance of “full costs” to a prevailing party is limited to taxable costs, or whether the Copyright Act allows recovery of taxable and non-taxable costs, which may include a variety of significant litigation expenses, including e-discovery costs and expert witness fees.

Background

In 2010, Respondent Oracle USA Inc. (“Oracle”) filed suit against Petitioner Rimini Street, Inc. (“Rimini”) for copyright infringement and violation of California and Nevada’s computer abuse laws. The jury ultimately awarded Oracle $35,600,000 in lost licensing revenues for the copyright infringement claims, and $14,400,000 in lost profits for the state law claims.  The district court further awarded Oracle $28,502,246.40 in attorney’s fees, $4,950,566.70 in taxable costs and $12,774,550.26 in non-taxable costs.

The Ninth Circuit affirmed the verdict and damages award for Oracle’s copyright infringement claims, and affirmed the awards of taxable and non-taxable costs.  A request by Rimini for en banc review was denied, and Rimini filed its petition for writ of certiorari to the Supreme Court.

Interpretation of 17 U.S.C. § 505

At issue is the proper interpretation of the Copyright Act, 17 U.S.C. § 505, which provides that “the court, in its discretion, may allow the recovery of full costs by or against any party” (emphasis added).   The controversy has arisen because 28 U.S.C. § 1920 provides that a court may only award “taxable” costs as specifically enumerated in six categories under the statute (such “taxable” costs include, for example, fees for printing and witnesses, costs of the production of transcripts used in the case, and costs for the copying of materials necessarily obtained for use in the case).[i]  28 U.S.C. § 1920 governs judicial procedure generally, not only copyright cases.

A split has developed among the circuit courts of appeal as to whether “full costs” in 17 U.S.C. § 505 is limited to the costs listed in § 1920, or whether § 505 allows recovery of additional, non-taxable costs.  To date, the Eighth and Eleventh Circuits have limited recovery of costs under § 505 to those enumerated in 28 U.S.C. § 1920.  Pinkham v. Camex, Inc., 84 F.3d 292, 295 (8th Cir. 1996) (per curiam); Artisan Contractors Ass’n of America, Inc. v. Frontier Insurance Co., 275 F.3d 1038, 1039-40 (11th Cir. 2001) (per curiam).  In contrast, the Ninth, Sixth and First Circuits have held that § 505 also allows for the recovery of non-taxable costs.  Twentieth Century Fox Film Corp. v. Entm’t Distrib., 429 F.3d 869, 885 (9th Cir. 2005); Coles v. Wonder, 283 F.3d 798, 803 (6th Cir. 2002); InvesSys, Inc. v. McGraw-Hill Cos., 369 F.3d 16, 22-23 (1st Cir. 2004).

In its Petition, Rimini argues that the Eighth and Eleventh Circuits properly limited recovery under § 505 to those costs enumerated in 28 U.S.C. § 1920.  Rimini adopts the reasoning of these decisions, arguing that Supreme Court precedent requires that a statute must “‘clear[ly],” “explicitly,” or “plain[ly],’ evidence [] congressional intent” to expand recovery of costs beyond the limitations of § 1920, and that 17 U.S.C. § 505 does not demonstrate such intent. See Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 445 (1987); W. Va. Univer. Hosps. Inc., v. Casey, 499 U.S. 83, 87-88 (1991)

In response, Oracle argues that the Ninth Circuit correctly interpreted the Copyright Act where it allowed recovery of nontaxable costs under § 505, and that use of the word “full” in the Copyright Act was “clear evidence of congressional intent that non-taxable costs should be available.”  Twentieth Century Fox, 429 F.3d at 885.  Oracle further argues that Twentieth Century Fox is consistent with Crawford Fitting, which limited cases governed by Fed. R. Civ. P 54(d) to recovery of taxable costs under 28 U.S. § 1920, but expressly contemplated that cost recovery could be controlled by a separate statute, such as § 505.

Ramifications for Copyright Owners

The Supreme Court granted Rimini’s petition notwithstanding Oracle’s attempts to minimize the Circuit split by arguing that the Eighth and Eleventh Circuit decisions “contain about two sentences of reasoning” and “have not been followed by a single court of appeals since.” Clearly, the Court does not view the issue to be as settled as Oracle claims it to be, although it is difficult to predict any outcome at this early stage, before briefing or argument have taken place.

Copyright owners are advised to follow this case going forward, as it will very likely determine whether prevailing parties in copyright cases can expect to recover costs incurred for significant litigation expenses including e-discovery costs, expert witness and jury consultant fees and travel expenses.  The outcome of this case will likely affect the inclusion of nontaxable costs in formulating settlement offers, and should also be considered carefully in connection with offers of judgment served under Fed. R. Civ. P. 68, as the shifting of post-offer non-taxable costs could result in a significant liability for a party that has rejected a proper offer of judgment.

[i] Under 28 US.C. § 1920, the following may be taxed as costs:

(1) Fees of the clerk and marshal;

(2)  Fees for printed or electronically recorded transcripts necessarily obtained for use in the case;

(3)  Fees and disbursements for printing and witnesses;

(4)  Fees for exemplification and the costs of making copies of any materials where the copies are necessarily obtained for use in the case;

(5) Docket fees under section 1923 of this title;

(6)  Compensation of court appointed experts, compensation of interpreters, and salaries, fees, expenses, and costs of special interpretation services under section 1828 of this title.

Additionally, 28 U.S.C. § 1821 places further limitations on the per diem fees and travel and subsistence allowances payable to witnesses.

[1] Under 28 US.C. § 1920, the following may be taxed as costs:

(1) Fees of the clerk and marshal;
(2)  Fees for printed or electronically recorded transcripts necessarily obtained for use in the case;
(3)  Fees and disbursements for printing and witnesses;
(4)  Fees for exemplification and the costs of making copies of any materials where the copies are necessarily obtained for use in the case;
(5) Docket fees under section 1923 of this title;
(6)  Compensation of court appointed experts, compensation of interpreters, and salaries, fees, expenses, and costs of special interpretation services under section 1828 of this title.

Additionally, 28 U.S.C. § 1821 places further limitations on the per diem fees and travel and subsistence allowances payable to witnesses.

Patrick. B. Monahan.

The U.S. Copyright Office has recently proposed several rule changes that, if adopted, would modernize the procedures for obtaining federal copyright registrations for groups of serials and daily newsletters, as well as alter the pricing structure for the application process for those publications. For publishers of periodicals, these new registration procedures discussed below will hopefully simplify the registration process.

A. INTRODUCTION

The Copyright Office has proposed changes to the requirements of and procedures for group registration of both serials and daily newsletters. For the purposes of copyright registration, these two types of collective works are defined as follows:

• A collective work is “a work in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.” 17 U.S.C. § 101. Collective works are a type of compilation, “a work formed by the collection and assembly of preexisting materials or data that are selected, coordinated or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” Id.
• A serial is “[a] work that is issued or intended to be issued on an established schedule in successive parts bearing numerical or chronological designations that are intended to be continued indefinitely.” 37 C.F.R. § 202.3(b)(1)(v). Examples of serials include periodicals, newspapers, magazines, newsletters, annuals, and other similar works. A daily newsletter is a type of serial.
• A newsletter is a type of serial that is routinely published and distributed by mail or electronic media at least two days per week and that contains information of interest chiefly to a special group (such as trade and professional associations, corporations, schools, and churches). Newsletters are generally available by subscription and not sold at retail outlets such as newsstands. Compendium of U.S. Copyright Office Practices § 1111.1.

B. PROPOSED CHANGES TO GROUP REGISTRATION OF SERIALS

The Copyright Office is proposing to update its regulations and procedures for group registration of serials. Currently, related serials published at intervals of a week or longer may be registered on the basis of a single application, deposit and filing fee using the Copyright Office’s group registration procedure provided that the following conditions are met: 

(A) The Library of Congress receives two complimentary copies promptly after publication of each issue of the serial; 

(B) The single application covers no more than the issues published in a given three month period; 

(C) The claim to copyright for which registration is sought is in the collective work; 

(E) The collective work authorship is essentially new material that is being published for the first time; 

(F) The collective work is a work made for hire; 

(G) The author(s) and claimant(s) of the collective work is the same person(s) or organization(s); and 

(H) Each issue was created no more than one year prior to publication and all issues included in the group registration were published in the same calendar year. 

See 37 C.F.R. § 202.3(b)(6)(i). 

The proposed rule change, if enacted, would do the following:

1. Codify the requirement (currently only in the Compendium of U.S. Copyright Office Practices) that each serial issue must be an “all-new” collective work not previously published, and each issue must be fixed and distributed as a discrete, self-contained collective work; 
2. Confirm the Copyright Office’s position that a group registration has the same effect as a separate registration for each work included in the group registration (the group registration extends to each issue, as well as all elements of the issues owned by the copyright claimant and first published in those issues); 
3. Require applicants to use the Copyright Office’s electronic filing system for applications and discontinue the current paper system (which should streamline the application process). Applicants will be required to upload their serials in digital form through the electronic registration system. The Copyright Office will no longer accept physical copies. 
4. Maintain the requirements that the author and claimant must be the same, that each issue must be a work for hire, and that at least two issues must be included in the group registration;  
5. Eliminate the requirement that each issue must have been created no more than one year prior to publication;  
6. Expressly mandate that the issues be published under the same continuing title and bear issue dates within the same three-month period in the same calendar year (requiring applicants to provide publication dates); and 
7. If the serial is published in the US in a physical format, publishers must provide the Library of Congress with two complimentary subscriptions, unless it is informed that the serial is not needed for the Library of Congress’s collections. Publishers of electronic-only serials only need provide copies if requested in writing by the Copyright Office. 

Of particular note for publishers is item 3, in which the Copyright Office mandates use of the electronic filing system for all applications. In addition, item 2 memorializes a long-standing practice, currently present only in the Compendium of U.S. Copyright Office Practices and caselaw precedent, that registration of a group of works does not limit the number of works eligible for statutory damages for copyright infringement – each issue of a group of serials registered using this procedure is a separate “work” entitled to a separate award of statutory damages.  

C. PROPOSED CHANGES TO GROUP REGISTRATION OF DAILY NEWSLETTERS

Second, the Copyright Office is proposing to update its regulations and procedures for the group registration of newsletters. Currently, two or more issues of a daily newsletter may be registered on the basis of a single application, deposit and filing fee using the Copyright Office’s group registration procedure provided that the following conditions are met: 

See 37 C.F.R. § 202.3(b)(9).

The proposed rule change, if enacted, would do the following:

1. Eliminate the requirement that each newsletter issue be a work-for-hire; 
2. Eliminate the requirement that each newsletter issue be a collective work (note however that each issue must still be “all new”); 
3. Eliminate the three-month deadline for filing the registration application (currently, an application must be filed within three months of the publication of the latest issue referenced in the application in order for the works to be eligible for statutory damages in a copyright infringement action); 
4. Confirm the Copyright Office’s position that a group registration has the same effect as a separate registration for each work included in the group registration (that is, the group registration extends to each issue, as well as all elements of the issues owned by the copyright claimant and first published in those issues); 
5. Require applicants to file their applications electronically by uploading digital copies of their newsletters using the Copyright Office’s electronic filing system. The Office will no longer accept paper applications and physical copies; and  
6. If the newsletter is published in the US in a physical format, publishers must provide the Library of Congress with two complimentary subscriptions, unless it is informed that the newsletter is not needed for the Library of Congress’s collections. Publishers of electronic-only newsletters only need provide copies if requested in writing by the Copyright Office. 

The effect of these changes is similar to those regarding serials. The requirement that all new applications be filed electronically should both simplify the process and allow for faster processing times and fewer errors. Furthermore, the change memorializes the Copyright Office’s guidance that each newsletter registered in a group is a separate “work” eligible for a separate award of statutory damages.

II. PROPOSED CHANGES TO FEE SCHEDULE

Finally, the Copyright Office has also proposed a new schedule of fees that greatly favors electronic filing. A selection of some of those fee schedule changes can be found below, but the full proposed schedule with changes can be found at: https://www.federalregister.gov/documents/2018/05/24/2018-11095/copyright-office-fees. 

III. CONCLUSION

  The period for comments on the proposed changes to the group registration of serials and daily newsletters has closed, however, the Federal Register has not announced whether any changes have been formally adopted as of this writing. For more detailed reading, the Federal Register entry discussing the above proposed changes to group registration of serials may be found at https://www.federalregister.gov/documents/2018/05/17/2018-10422/group-registration-of-serials. The Federal Register Entry discussing the proposed changes to group registration of daily newsletters may be found at https://www.federalregister.gov/documents/2018/05/17/2018-10420/group-registration-of-newsletters.