Copyright owners take note: registration means registration

U.S. Supreme Court decision settles long-running dispute among courts

Under current U.S. copyright law, registration of the copyright in a work is not necessary to create the copyright itself. To the contrary, copyright is created the moment the work is fixed in a tangible format, such as on a piece of paper, on a compact disc, or even on a computer hard drive. But that does not mean that there is no good reason to register the copyright.

Two of the most important reasons to timely register a copyright are (1) to be able to institute a copyright infringement action and (2) to be able to recover statutory damages and attorneys’ fees.

Under U.S. copyright law, registration is a prerequisite to bringing a lawsuit, and if an unpublished work is not registered prior to the infringement, or if a published work is not registered within three months of the date of first publication of the work, the applicant will not be entitled to recover statutory damages or attorneys’ fees.

This latter point is particularly significant because often it is difficult to prove actual damages in a case of copyright infringement. Statutory damages entitle a plaintiff to recover damages for infringement of a work in an amount between $750 and $30,000, and where infringement is willful, enhanced damages up to $150,000.

The difficulty for many copyright infringement plaintiffs has been the timing of obtaining registration for the copyright. Imagine that you just distributed your self-published book and within a month find out that someone has infringed your copyright by copying and displaying on the Internet large portions of your book. So you hurry up and file your copyright application along with the required fee and deposit of your work.

At that point you are all set, right? Prior to March 4, the answer largely depended on which court you brought the lawsuit in. Some courts took the position that because the date of registration relates back to the date the application was filed along with the fee and deposit, the copyright was “registered” as of the filing date.

Other courts took the position that registration did not occur until after the copyright office examined the application and issued a registration certificate.

But on March 4, in Fourth Estate Public Benefit Corp. v. Wall-Street.com, the U.S. Supreme Court put an end to this dispute, holding that a work is not registered until the Copyright Office examines the work and issues a certificate of registration.

The court’s decision has significant ramifications for plaintiffs. One of the most significant relates to the timing of a copyright infringement action.

It typically takes at least seven months for the Copyright Office to examine a copyright application and issue a registration certificate. This means a copyright plaintiff would usually have to wait at least seven months before being able to bring a lawsuit.

There is an option for copyright applicants to seek expedited handling of their applications. Rather than the minimal $35 fee applicable in many cases to register a work online, an applicant can pay the Copyright Office $800 and the Copyright Office will typically (but no guarantee) process the application within five working days from the date of filing the application.

Even with the expedited handling, if the registration certificate is not obtained prior to the infringement with regard to unpublished works, or within three months of the date of first publication for published works, the applicant will not be entitled to recover statutory damages or attorneys’ fees.

Accordingly, the expedited handling would only help if the registration certificate is received before any infringement occurs, or if the work is published, if the expedited certificate is received within a period of three months after the date of first publication.

The word “publication” has a very specific meaning under the copyright law. The copyright statute defines publication as “the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending.”

While there is a difference of opinion among authorities on whether posting material on a website is publication, the better view seems to be that such posting would only be considered a display, not publication, unless visitors to the website clearly have the right to download the work posted on the website. Therefore, arguably, the three-month publication grace period would not apply to works posted on a website.

So what does this mean for copyright owners? In an ideal world it would mean that copyright owners obtain copyright registrations before they disclose their works to the public if they want to try to maximize the opportunity to recover statutory damages and attorneys’ fees. But that is not a very realistic scenario in most cases.

Alternatively, the copyright owner could routinely request expedited handling before making a work public. If there are many works, however, the $800 could add up quickly, making that option unrealistic as well. Ultimately, prioritizing is key. If a work is very important, then copyright owners should consider paying the $800 and seeking expedited handling before disclosing the work to the public.

Doug Verge, a shareholder at the law firm of Sheehan Phinney, is a member of its Intellectual Property Law Practice and chair of its Franchise and Distribution Law Practice Group.