Don’t Give Up Important Rights—Register Your Copyrights
/ January 20, 2012
by Cory Webster
Copyright registration is a fairly straightforward procedure. Yet, for whatever reason, authors and owners of copyrights often forgo registration.
How is a work registered and what does it cost?
Under the current Copyright Act, registration “may” be obtained “by delivering to the Copyright Office the deposit specified by this section, together with the application and fee . . . .” 17 U.S.C. § 408(a). The deposit is a copy of the work being registered. The application is a form prepared by the Copyright Office that requests basic information about the work. Overall, the process is not very complex.
Nor is the process expensive. The fee for registration of a basic claim is between $35 and $65, depending on which form is used. Filing online can be particularly advantageous. It is cheaper and significantly faster than paper forms. As of the time of this publication, the Copyright Office listed the expected processing time for an online application at three months, compared to ten months for paper applications. The process can be expedited—and frequently is for litigation purposes (see below)—for an additional fee of about $800.
Although the Copyright Office’s website has a number of resources that help simplify the application process, it is a good idea to consult a copyright attorney to ensure the registration is completed properly. This can usually be done for less than $1000. An application completed incorrectly gives a copyright infringer ammunition in defending against an infringement suit.
Is copyright registration necessary?
A copyright holder can hardly be blamed for mistakenly believing her work has full copyright protection without having obtained registration with the Copyright Office.
Under the 1909 Copyright Act, observing certain formalities, including registration, was mandatory to receive copyright protection. If the author failed to register, the work would enter the public domain. However, the 1976 Copyright Act and the United States’ adoption of the Berne Convention in 1988 did away with many of the strict formalities associated with copyright protection.
The 1976 Copyright Act specifically provides that registration is “permissive” and that “registration is not a condition of copyright protection.” 17 U.S.C. § 408(a). “[C]opyright automatically inheres in the work at the moment it is created without regard to whether it is ever registered.” Montgomery v. Noga, 168 F.3d 1282, 1288 (11th Cir. 1999). Additionally, according to its website, the World Intellectual Property Organization—a specialized agency of the United Nations dedicated to promoting an international intellectual property system—does not offer any kind of copyright registration because “works are protected without any formalities in the countries party to [the Berne] Convention.” http://www.wipo.int/copyright/en/faq/faqs.htm#P81_9657.
From all this, one could get the impression that registration is unnecessary for preservation of copyright protection. However, even though it removed many of the formal requirements for copyright protection, Congress included in the 1976 Copyright Act a number of “incentives” to encourage registration.
One of these incentives is that registration is a prerequisite to a copyright infringement action. 17 U.S.C. § 411. Although registration is not a condition of copyright protection, a copyright cannot be enforced unless the author registered the work (with a few narrow exceptions). In a very real way, creating an original work without registering it gives an author a “right without a remedy.”
Second, if a copyright holder waits to register until after discovering infringement, she will lose out on important remedies. The Copyright Act authorizes a court to award statutory damages and attorneys fees to a prevailing copyright plaintiff. 17 U.S.C. §§ 504, 505. For “innocent” infringement, statutory damages of up to $30,000 may be awarded for each work infringed. A plaintiff who can show the “infringement was committed willfully” can receive up to $150,000 in statutory damages per work. Additionally, “an award of attorney’s fees to a prevailing [party] that furthers the underlying purposes of the Copyright Act is reposed in the sound discretion of the district courts . . . .” Fantasy, Inc. v. Fogerty, 94 F.3d 553, 555 (9th Cir. 1996).
However, statutory damages and attorneys fees (with a few narrow exceptions) are not available if the work is not registered before the defendant begins infringement. 17 U.S.C. § 412. In other words, if an infringer started selling (publishing) an infringing product before the plaintiff obtained registration, the plaintiff cannot get statutory damages or attorneys fees, even if the infringer continues to sell the infringing product long after registration. In such a case, the plaintiff can only get actual damages and the defendant’s profits attributable to infringement.
Third, a copyright plaintiff gains an evidentiary advantage by timely registration. 17 U.S.C. § 410(c). Obtaining registration within five years of first publication of a work constitutes prima facie evidence of the validity of the copyright and of the facts stated in the certificate. This shifts the burden to the defendant to disprove copyright validity in the event of litigation. Moreover, even if a work is registered more than five years after first publication, the court still has discretion to give evidentiary weight to a certificate of registration.
These provisions in the Copyright Act relating to registration put in perspective—if not dispel—the misnomer that “registration is not a condition of copyright protection.”
Is an infringement lawsuit worth it?
Some copyright holders may neglect to register their works, having accepted the fact that there will be knock-offs regardless of what they do and that litigating a copyright case can be too costly. This sentiment is in a way self-fulfilling.
If a copyright holder timely registers her work, in a successful infringement suit, she can recover costs and attorneys fees in addition to statutory damages or actual damages and the infringer’s profits. On the other hand, if she does not register her work and later wishes to enforce her copyright interest, the cost of an infringement suit may be prohibitive.
Consider the following scenario: A jewelry designer creates and sells an original jewelry piece for a number of years. After she stops selling the piece, she sees an advertisement for a jeweler selling a copied version of her jewelry piece. Assuming the designer has not already registered her work, she must do so before she can bring an infringement action.
Like any person contemplating filing a lawsuit, she should consider the risks and potential rewards involved. Because she failed to register her work before the infringement began, a successful infringement suit would only entitle her to actual damages and/or the infringer’s profits (no attorneys fees and no choice of statutory damages). Because she has stopped selling the piece, there are no actual damages. And although the prospect of recovering the infringer’s profits sounds promising, the amount is often limited. The infringing jeweler can argue that most (if not all) of its profits are attributable to something other than the copyrighted design of the jewelry. For example, the jeweler may persuasively argue that its profits are primarily attributable to its superior marketing.
Additionally, the fight about how much of the defendant’s profits are attributable to the infringement can be very costly—not to mention the cost of establishing the other elements of a copyright claim (i.e., ownership of a valid copyright and infringement). It is no surprise that frequently the cost of litigating an infringement suit far exceeds what stands to be gained.
However, consider if the jewelry designer from the scenario above obtained registration for her work immediately after creating it. The cost-benefit evaluation of an infringement case is altered dramatically. It is not that the cost of litigating is less. Instead, there is a good prospect of recovering that cost. Although attorneys fees are not automatic, they are typically awarded to a prevailing copyright plaintiff. Additionally, the copyright plaintiff who timely registers her work can elect to recover statutory damages instead of actual damages and the infringer’s profits. 17 U.S.C. § 504(c). This election can be made “at any time before final judgment is rendered,” which gives the plaintiff a good opportunity to evaluate which prospect is likely to be more fruitful.
Although the formalities of copyright law have been drastically liberalized, copyright holders should be aware of the rights they risk losing when they fail to register their copyrights. To ensure that you do not lose valuable rights, register your copyright. It is easy to do and costs very little. Better to be safe than sorry.