By: Jeff Francis
Should You Register Your Copyright?
Registration of a copyright is not mandatory to obtain copyright protection
Registration is a statutory prerequisite to bring a claim for copyright infringement
Registration is a prerequisite to seek statutory damages and attorneys’ fees
Foreign works are not required to be registered in order to file suit in the United States, however, a registration is required for attorneys’ fees and statutory damages
What do the Courts Say?
As explained by the United States Supreme Court in Reed Elsevier, Inc. v. Muchnick, registering a copyright is an essential element of a cause of action for copyright infringement. Lesser appellate and trial courts have interpreted the actual import of this holding differently and have split into two groups. The first will permit a claim for copyright infringement to proceed if the plaintiff has filed an application for registration with the copyright office but prior to the copyright office actually issuing the copyright registration for the work. These courts often take this position because the effective date of a copyright registration is the date “on which the application, deposit and fees have been received by the copyright office.”
The second group of courts requires a fully granted registration as a prerequisite to bringing a claim. The principal rationale for this position is the argument that if the Copyright Act required only an application as a prerequisite for bringing a claim, then the Act’s explicit requirement for a registration would be rendered superfluous and would violate a fundamental canon of statutory construction by rendering meaningless explicit language in the Act.
Benefits of Registering Your Copyright
Putting aside the uncertainty regarding registration as a statutory prerequisite to bringing a claim, there are significant benefits that come from registration. First, a copyright registration creates a searchable, public record of the copyright in the work, permits the copyright holder to mark the work with a copyright notice, and will help the owner establish willful infringement in a copyright infringement matter. Second, if registration is made within five years from the date that the work was published, the certificate of registration constitutes prima facie evidence in any judicial proceeding of the facts stated in the certificate and of the validity of the copyright. Third, and most importantly, if the registration is made within three months after first publication of the work or prior to an infringement of the work, then the copyright holder can be awarded statutory damages and attorneys’ fees in an infringement action. The availability of statutory damages eliminates the need to prove actual damages that can be both difficult and expensive to establish at trial. Statutory damages can range anywhere from $200 to $150,000 per work infringed.
Fourth, a copyright holder who has registered the work can also avail him or herself of the takedown rights under the Digital Millennium Copyright Act (DMCA). Under the DMCA, a holder of a registered copyright can serve a Takedown Notification Letter to a website that the holder believes has posted, uploaded, or otherwise contains materials that infringe the copyright holder’s copyright. Upon receipt of a proper Takedown Notification Letter, a website is required to expeditiously take down the infringing work and to provide notice of its takedown to any third-party customer who had uploaded or posted the work. The third-party customer then has an opportunity to respond to the Takedown Notification Letter.
Finally, foreign works are not required to be registered with the United States Copyright Office to file suit. Indeed, the registration requirement would violate the Berne Convention prohibition that “the enjoyment and the exercise of [copyright] shall not be subject to any formality.” However, the holder of an unregistered foreign work cannot receive an award of attorneys’ fees and statutory damages under the Copyright Act.
It is highly recommended that based on: (i) the uncertainty over the ability to bring a claim with only an application pending; and (ii) the very substantial benefits that are available once a copyright is registered, that a copyright holder make it a regular practice to undertake the largely ministerial act of registering the copyright claim for their domestic and foreign works with the United States Copyright Office.
For questions or more information about registering copyrights, please contact Jeffrey E. Francis, a partner in Pierce Atwood’s Litigation and Intellectual Property Practice Groups. Jeff can be reached at 617.488.8136 or email@example.com.