COPYRIGHT BASICS AND THE BENEFITS OF FORMAL REGISTRATION

Believe it or not, copyrights have become the most widely available form of intellectual property protection. Available to “original works of authorship fixed in a tangible medium of expression,” copyright often provides refuge to works that have been rejected by the U.S. Patent and Trademark Office. Thus, understanding the basics of copyright law and the benefits of formally registering a copyright can serve as a valuable tool to any intellectual property practitioner.

What is a Copyright?

Copyright is a form of intellectual property law that protects original literary, dramatic, musical and artistic works. Governed by Title 17 of the United States Code (“the Copyright Act”), copyright protection attaches to such trivial things as a poem in a Christmas card with the same force and effect that it attaches to things of great value, such as the lyrics of a “Top 40” song. Examples of copyright can include information that is maintained on your firm’s (or a client’s) website, a particular sales presentation, articles, poems, essays, photographs, paintings, architectural designs, and even a seminar on the extinction of the dodo bird.

Despite the enormous breath of the Copyright Act, however, not everything is eligible for copyright protection. Copyright does not protect facts and/or ideas. For example, the fact that Barry Bonds hit 73 homeruns during the 2001 baseball season is not capable of being copyrighted – not even by Bonds himself. This means that literally anyone could write a book about Bonds’ feat without the fear of being sued for copyright infringement. The finished product, however, would be afforded copyright protection, because copyright does protect an author’s particular method of expressing facts and/or ideas. Names, titles, blank forms, slogans and short phrases are also ineligible for copyright protection.

The owner of a copyright holds the exclusive right to reproduce the copyrighted material and, more importantly, prevent others from reproducing copyrighted material.

It should be noted, however, that the exclusive right to reproduce one’s copyright does not last forever. Works created on or after January 1, 1978 typically enjoy copyright protection for the author’s life, plus an additional 70 years after the author’s death. In the case of a “joint work” prepared by two or more authors the copyright protection lasts for 70 years after the last surviving author’s death. For works made for hire, copyright protection lasts for 95 years from publication or 120 years from creation, whichever is shorter.

What is Copyright Infringement?

As a general matter, copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed or made into a derivative work without the permission of the copyright owner. Examples of copyright infringement can range from the seemingly innocent downloading of your favorite Eagles hit utilizing programs such as Morpheus and/or Kazaa, to the more egregious reproduction of a competitors website and/or sales brochure to enhance one’s pecuniary gain.

Not all reproductions of a copyrighted work violate the Copyright Act, however. Under the “fair use” doctrine, it is permissible to use limited portions of a work including quotes, for purposes such as commentary, criticism, news reporting and scholarly reports. Therefore, the “Govenator” does not have a cause of action against Saturday Night Live for its frequent skits utilizing experts from the Terminator movies.

Why Should Your Client Register Its Copyright With the U.S. Copyright Office?

Copyright registration is the process by which a formal claim of copyright is filed on a work with the U.S. Copyright Office. Even though formal registration is not a requirement for copyright to attach to a specific work, registration is a prerequisite to the filing of a copyright infringement action. Thankfully, the U.S. Copyright Office provides several inducements and/or advantages to encourage copyright owners to file for copyright registration.

From a litigator’s standpoint, the most important inducement to formal copyright registration is that it opens the door to the recovery of statutory damages and attorneys’ fees. Specifically, if registration is made within 3 months after publication of the work, it is possible to collect statutory damages and attorneys’ fees in infringement actions. Absent formal registration within this timeframe, your client will be left to pursue only its actual damages (which is often difficult and costly to prove). Thus, you should encourage your client’s to formally register their copyrights as soon as possible after creation.

Further, if registration is accomplished within 5 years of copyright creation and/or publication, registration will establish prima facie evidence of the validity of the copyright and of the facts stated in the certificate. This can prove to be extremely valuable when moving to temporarily enjoin someone from infringing upon your client’s work. Finally, prompt registration of your client’s copyright, coupled with providing the world with proper notice of the copyright (discussed below), will enhance your ability to argue that an infringer’s use of your client’s work was willful, opening the door to a punitive damages award.

How Do I Register My Client’s Copyright?

Copyright registration is an inexpensive and fairly painless process. To register a copyright, you must submit a completed application form, a nonrefundable filing fee of $30, and a non-returnable copy or copies of the work to be registered. Registration forms can be easily downloaded from the U.S. Copyright Office website at www.copyright.gov/forms/.

According to the U.S. Copyright Office, the registration process takes, on average, approximately 4-5 months to complete. I have found this average to be consistent with my experience.

Given that formal registration of a copyright is a prerequisite to the filing of a claim for copyright infringement, the U.S. Copyright Office will, in most circumstances, expedite an application for registration for a fee of $580. Once a request for special handling is approved, the Copyright Office will attempt to process the application within 5 working days. However, no guarantee is made that the work can be processed within this time. Thus, I would not recommend waiting until the week before the statute of limitations runs on your client’s copyright infringement claims to begin the copyright registration process.

How Should Your Client Give Notice of Its Copyright?

While use of a copyright notice was once required as a condition of copyright protection, it is now optional. A copyright notice is an identifier placed on copies of the work to inform the world of copyright ownership that generally consists of the symbol or word “copyright” or “copr.” or ©, the name of the copyright owner and the year of first publication. Thus, proper notice for this article could be “Copyright 2003 Ken Jones” or “© 2003 Ken Jones”.

Ken Jones is a partner of the Bowles & Verna law firm in Walnut Creek. The emphasis of his practice includes intellectual property and construction litigation. Ken is a member of the ABA and CCBA Intellectual Property Sections.