WHEN SHOULD YOU REGISTER A COPYRIGHT?

I am often asked about copyright registrations and when is it worthwhile to register a copyright.

 copyright registration

Background

Copyright registrations are fundamentally different than the better-known registrations for patents and trademarks. Patent protection does not exist without a federal patent registration. While common law trademark ownership is available, no serious trademark ownership can be obtained in the U.S. without a federal registration.

However, with copyright, full copyright ownership applies from the moment a copyrightable work is created, without any registration. Registering a copyright does not enhance copyright ownership rights, but it does greatly enhance the ability to take legal action against infringers.

Benefits of Copyright Registration

  1. Copyright infringement actions are brought pursuant to the U.S. Copyright Act and may only be brought in federal court. Unless a copyright has been registered (or in some jurisdictions, filed – more on this important distinction below), an infringement suit may not be filed in court. Therefore, you cannot sue for copyright infringement unless/until you register the work. (Note that this limitation does not apply to copyrightable works originating outside of the U.S.) 
  1. Statutory damages can only be awarded for infringing activity occurring after registration. A plaintiff may seek actual damages or statutory damages allowable under the U.S. Copyright Act, but not both. Under certain circumstances, statutory damages can greatly exceed actual damages.   Statutory damages for innocent infringement may range from $750 to $30,000 per infringement. Whereas for intentional infringement, a court may award as much as $150,000 for a single infringement. 
  1. Legal fees can be awarded to plaintiffs only for registered works. 
  1. Registration establishes a public record of the copyright claim. 
  1. A registration made within five years of publication will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the copyright certificate. 
  1. A copyright owner can record a registered work with the U.S. Customs Service which will enable protection against the importation of infringing products.

So, when should I register??

Copyright registration is hands down the biggest bargain when compared to patent and trademark. The filing fee ranges from only $35 to $55 for a single work. However, when a trademark or patent is registered, the subject of the filing is fixed – unchangeable. Whereas, many valuable copyrightable works, like software, will change regularly.

So, for copyrightable works that are fixed, like art, music or books, there’s no reason not to file a copyright registration upon completion or publication of the work. For works that are regularly changing, the guidance is not to file a copyright registration until there is a suspected infringement, because the version filed will soon be outdated.

The downside of waiting to register until there is an infringement is that statutory damages will not be available for infringement occurring prior to the registration. However, from a practical standpoint – this is still the best approach.

Registration v. Filing

Now for a wrinkle. As mentioned, an infringement suit may not be brought before the copyrightable work is registered. However, there is a split in the Federal Circuit courts as to whether the term “registration” specified in the U.S. Copyright Act refers to the date an application is filed or the date that the Copyright Office issues the registration certificate (which may take a number of months). Some Federal Circuits hold that actual registration is required (e.g., the Tenth and Eleventh Circuits), while the Fifth and Ninth Circuits hold that only filing of the application is required. The positions of other Federal Circuits can go either way.

Even if you are in jurisdiction following the position that filing is sufficient, you still don’t know in what jurisdiction the litigation might be in.

So, if there is any hint of an infringement occurring, file the application as soon as possible. The U.S. Copyright Office also has  Special Handling arrangements for expedited filing and registration.

Bottom Line:

If you have copyrightable works that are fixed that you want to protect, then you should file a copyright registration. However, if your work is constantly changing, then you should wait until you suspect that an infringement might be occurring. For software, the deposit is required to contain source code. However, only a portion needs to be deposited and there are provisions for maintaining the confidentiality of much of the code.

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William Galkin manages GalkinLaw. Mr. Galkin has dedicated his legal practice to representing Internet, e-commerce, computer technology and new media businesses across the U.S. and around the world. He serves as a trusted adviser to both startup and multinational corporations on their core commercial transactions.

   
                                                                                                         
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