A recent copyright case, May v. Sony Music Entm't and Cyrus, involving a top-of-the-charts song illustrates the importance of early copyright registration, before any infringement begins.
Later registration will not preclude suit, but it will limit the relief that can be collected. In some cases, that limitation may turn what seems like a winning case into a loser.
The case also highlights an effective strategy for those defending against copyright infringement claims, especially in cases involving “copyright trolls.”
Lawsuits are about more than who is liable – they are also about remedies, including how much to pay in damages. If there is a way to limit the awardable damages, that can go a long way towards disposing of a suit.
The Miley Cyrus Case
Miley Cyrus wrote and performed a hit song, “We Can’t Stop” in 2013. Michael May, a Jamaican reggae artist, claimed she appropriated the phrase “We Run Things, Things Don’t Run We” from his song. May sued for copyright infringement in Manhattan federal court. Cyrus moved to dismiss the claims at an early stage, before any of the facts were developed, based solely on the complaint.
The court rejected most of the arguments. Although May’s claim had many apparent holes, because, at that early stage, a court has to assume that all facts in the complaint are true and give him every reasonable inference, there was no basis to dispose of the claims entirely.
But Cyrus did win one part of her motion. The complaint alleged that the infringement began when Cyrus released her song in 2013. But although May’s song was written and released five years earlier, in 2008, he did not register it with the Copyright Office until 2017, four years after Cyrus allegedly began her infringement. That severely limited the possible damages.
Damages Under the Copyright Act
The Copyright Act permits a copyright plaintiff to obtain either his actual damages or the defendant’s profits from the infringement, to the extent they do not overlap. But it also permits, as an alternative, the election of what are known as “statutory damages,” which are a range of damages imposed at the court’s discretion, of $750 to $150,000 per work infringed. Statutory damages often can become inflated far beyond actual damages, especially in cases involving multiple works.
The Copyright Act also allows for an award of attorney’s fees to a prevailing plaintiff.
However, there is an important legal limitation, which Cyrus was able to exploit. In order to bring any copyright case, a copyright plaintiff must first register the copyright in the work. And, to collect statutory damages or attorney’s fees, the registration had to take place before the alleged infringement began.
How Miley Cyrus Used that to Her Advantage
This limitation even applies to “an ongoing series of infringing acts,” which the court applied in the Miley Cyrus case. Each time her song is sold, is a separate act of infringement, as is each time she performs it live, in video, or on other media. If Cyrus is indeed found to infringe, then she has likely performed hundreds of acts of copyright infringement since 2013.
But the court in her case ruled that did not matter – the series of infringements began in 2013, when the song was initially released. The fact that the same song was sold and performed hundreds of time since made no difference. The plaintiff had registered his copyright too late, and now cannot collect either statutory damages or attorney’s fees.
The Court also limited May’s damages in another way. The Copyright Act has a three-year statute of limitations. The alleged infringements took place from 2013 to the present. The statute of limitations meant that May’s damages were limited to acts of infringement that took place in the three years prior to the complaint – he could not collect for earlier infringements.
The net result was that while May’s claims could go forward, his damages were limited to a three-year window, and he could not collect either statutory damages or attorney’s fees, but was limited to actual damages, which are generally both harder to prove and lower.
Lessons to Learn
The moral of the story for copyright owners is clear: for commercially important designs and other creative works, register the copyright as early as possible. Later registration will not preclude suit, but it will limit the relief you can collect. In some cases, that limitation may turn what seems like a winning case into a loser.
For those defending against copyright claims, often brought by “trolls,” the lesson is to scrutinize early on when the registration was filed in comparison to the alleged infringement. Lawsuits are about more than who is liable – they are also about remedies, including how much to pay in damages. If there is a way to limit the awardable damages, that can go a long way towards disposing of a suit.
A previous version of this post appeared in Luxury Daily July 16, 2019