Copyright Registrations: A big hammer for your small company

Benefits of Copyright Registration

If your company’s core products are original works of authorship — like software, websites, video games, music videos, graphics, photographs, musical compositions, cartoons, on-line publications, articles, books, or even automated databases — you may want to get enhanced benefits by filing a formal copyright registration with the Copyright Office.

There are several important reasons to file a federal copyright registration before infringement.  First, registration is necessary to even get to court. Second, if you win, the court may award statutory damages –- from $750 per infringed work to as high as $150,000 for willful infringement — and attorneys’ fees, which alone can be hundreds of thousands of dollars.

This big statutory hammer is very important when you send a cease and desist letter to an infringer.  If an infringer may face paying hundreds of thousands of dollars (or even millions) to the copyright owner pursuant to the statute, they should be more likely to stop infringing and settle out of court.

And the hammer is relatively cheap.

The registration fee for a simple work filed electronically is $35. (Fees vary depending on the type of work and method of filing.)

To get the statutory benefits, however, you must file for copyright registration before infringement or within three months of publication of the work.  If you file late, you will have to prove the amount of actual damages you have suffered because of the infringement and pay all of your own costs and attorneys fees. In some cases, without registration, the costs of enforcement may be too high to justify going to court.

The difference between statutory damages and actual damages can be astronomical and the copyright litigation in the music industry is illustrative.

Really, what are the actual damages from illegally downloading a song? 99 cents?

In one case, however, a jury found that a single mother who willfully downloaded 24 songs on the KaZa’s file sharing network liable for $1.9 million in statutory damages. Now, that’s a big hammer.

For software developers it’s especially important to note that to get the full statutory benefits you need to file registrations for new versions of your work that may be infringed.  For example, it’s not enough that you have a registration on an original version of your software when the work that is actually infringed is a newer version.  A common defense in a software copyright infringement case and a reason for dismissal is that the registration does not cover the software at issue in the lawsuit.  It can be a very, very expensive mistake to fail to file new registrations when you revise or update your work. (See the article Version Control Blues, about Airframe’s System’s legal woes for failure to register the new version of its software).

Of course, new registrations are a hassle when the copyright is for a work that is frequently updated, like software or a website. But it can be well worth the trouble.

Take Time to Review Your IP Strategy and Protection

As I explained in my last post, January is a great time of year to review your IP protection strategies and see if you need to file additional copyright registrations (and trademark registrations and patent applications)!  You may think this is a simple point but you may be amazed at how many companies screw up protection by not reviewing the status of their filings as their startup grows and changes.  All too often they find out too late that another company has beaten them to the PTO and filed a trademark or patent on a key part of their business. Or they lose in court because they screwed up and didn’t get their registrations up to date for new versions.

Filing with the Copyright Office

The Copyright Office has tried to make things simple.  Go to www.copyright.gov for more extensive information.  They have many circulars and brochures explaining what you need to do to file registrations for your specific type of work. Some brochure examples include:

• Copyright Registrations for Computer Programs
• Copyright Registration for Online Works
• Copyright Registrations for Multimedia Works

Registrations require filing out the proper form, paying a fee, and giving the Copyright Office a deposit of the work – a good copy of what you are registering.  And registrations for many works can be done electronically through the electronic Copyright Office (eCO), saving time, money and a trip to the Post Office.

Filing Considerations

There are several things that give people trouble when filing.

Type of Work. First, people tend to be confused and think they can register ideas, concepts, procedures, methods, short phrases, titles, or software program logic or algorithms.  You can’t.  Make sure you are registering a type of work that can be registered like software source code, literary works, photographs, artwork, text, sculpture, choreography, or music.

Publication.  Second, you also need to identify the first date of publication.  Publication of on-line material is confusing, even to the courts, but it basically means when you distribute copies of the work to the public for sale, rental or lease or an offering to others for further distribution or public display.  Just figure out the first date you sold the work or allowed others to freely distribute or download it.

Copyright Claimant or Author. To file a registration you need to be the author or the owner of the copyright, the Copyright Claimant.  A super common mistake for startups is that they don’t own the copyright to the works created for them.  Remember you must have a signed, written assignment agreement with the proper language from the author of the work – like the logo designer or software developer – before you can register the copyright for the work.  You must also identify all authors of the work even if you are the owner. You must also own all of the rights to the parts of the work you are registering.

Don’t get tripped up when they ask if the work is a “made for hire.”  Unless you have a contract specifying the work as a “work made for hire” or the author is your employee, the made for hire doctrine does not apply.  See related posts.

Deposit. Third, sometimes the deposit requirement trips people up because they don’t know what to deposit or they don’t want to give a deposit.  For example, software is special and the filing is frequently screwed up.  This is why you need to read the circulars carefully and follow the directions.  Generally, for a software deposit of a program with more than 50 pages of source code, you can file the first and last 25 pages of a printout of the source code, which can uploaded electronically in PDF format.

In your software source code deposit, you can black out trade secrets and vary what you file.  But of course, you need to be able to identify a trade secret to block it out.

Ask yourself:   Are there any special sections of the source code for a cool features you want to keep secret because it gives your company a competitive advantage over other programmers who don’t know the code?  Black out those sections with a magic marker.

If you unwittingly disclose a trade secret, you lose legal trade secret protection.  Because some developer’s don’t want anyone to have any of the source code and they choose to forgo statutory benefits of an early filing or file object code.

Short on-line works can be uploaded in the electronic system very simply.  Long on-line works need to be sent in on a CD-ROM with representative paper copies and the length required varies.  Again the Copyright Office has brochures trying to explain what you need to do.

Make sure you use an acceptable file type of electronic submissions like .jpeg or .pdf or logos or art; .wav or .mp3 for audio files; and .pdf for text and .ppt for presentations.  The Copyright Office has a list.  The wrong file format is a common trip up. If you can’t upload the file, check the file format.

Taking the time to file copyright registrations can give your little company a big statutory hammer and help protect its valuable works.  Just remember to update your filings, especially in the new year.