Copyright Law Guide

2.1 Advantages of Registration

As we have seen in chapter 1, copyright protection arises automatically as soon as an original work is embodied in a tangible form. At no time does the work or the claim of copyright have to be “registered” with the Copyright Office in Washington, D.C. Section 408(a) of the Copyright Act specifically states that “registration is not a condition of copyright protection.”

Nevertheless, section 408 permits the copyright owner of any published or unpublished work to register the copyright claim by filing an application and fee with the copyright office. Why would a copyright owner ever want to register a copyright claim in a work if it is not required? What advantages and disadvantages are there to registration? What procedure is used to register a copyright claim in a work? These questions will be addressed in this chapter.

First of all, why would a copyright owner ever wish to register a copyright claim? Consider the following advantages associated with registration:

(1) precondition to bringing infringement suits

infringement suits

 Section 411 of the Copyright Act provides that “no action for infringement of the copyright in any work shall be instituted until registration of the copyright claim has been made …” This is a significant advantage of registration. Unless you have registered your copyright claim in a work, you cannot seek redress in the civil courts for acts of infringement. A number of courts have held, however, that a copyright owner of an unregistered work can sue an infringer by simply registering the claim of copyright even though the infringement occurred prior to registration.¹ This rule would not apply if the infringement suit were brought after the limitations period (generally 3 years) following the initial act of infringement. Works whose “country of origin” is not the United States need not he registered prior to filing suit for infringement. Congress carefully considered eliminating the requirement of registering works published in the United States as a precondition to bringing infringement suits on the ground that this constituted a copyright “formality” generally prohibited by the Berne Convention (which took effect March 1, 1989). This position ultimately was rejected.

(2) statutory damages

statutory damages 

Section 504(c) of the Copyright Act allows a copyright owner to collect “statutory damages” from an infringer in lieu of proving actual damages. Statutory damages ordinarily range from $750 to $30,000 per violation, and they often comprise the only meaningful measure of damages since actual damages are difficult to prove.² Statutory damages are available only for infringements that occur after a work is registered, with one important exception. Section 412 specifies that “no award of statutory damages … shall be made for (1) any infringement of copyright in an unpublished work commenced before the effective date of its registration, or (2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.”

Key point. Statutory damages are available for any infringements occurring after registration of a work, or for infringements occurring prior to registration if the work is registered within three months following first publication. Otherwise, only an award of actual damages and profits is available to the copyright owner.

Example. In January of 2002 Ruth composes an original song that she reduces to writing. She does not publish or register the work. In October of 2002 James obtains an unauthorized copy of the song and publishes it. Since Ruth had not registered the unpublished work as of the date of the infringement, she is not eligible for statutory damages. She cannot register the work and then sue for statutory damages, although, as noted above, she can register the work and then sue for infringement and recover any actual damages that she can prove (assuming the infringement suit is brought within the three-year limitations period following the initial act of infringement). Since actual damages are often difficult to prove, the loss of statutory damages is a serious matter. Ruth could have preserved her right to sue for statutory damages by registering her unpublished work as soon as she reduced it to a tangible form (prior to the infringement).

Example. Same facts as the preceding example, except that Ruth published the song on August 1, 2002. Under these circumstances, Ruth can site James for statutory damages only if she registers the work within three months after August 1, 2002 (the date of first publication), Section 412 specifies that “no award of statutory damages … shall be made for … any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.” So, for Ruth to be entitled to statutory damages for “post publication, pre-registration” infringements, she must register the work within three months of first publication. As a result, if she fails to register the work by November 1, 2002 then she cannot sue James for statutory damages, although, as noted above, she can register the work and then site for infringement and recover any actual damages that she can prove (assuming the infringement suit is brought within the three-year limitations period following the initial act of infringement,).

Example. Same facts as the previous examples, except that Ruth composes and publishes the song in August of 2002, registers the copyright in March of 2003, and James’ infringement does not occur until 2004. Since James’ infringement occurs after Ruth registered the copyright in her work, she is entitled to statutory damages. It doesn’t matter that she did not register the work within three months of publication. That rule, only applies to “past-publication, pre-registration” infringements.

(3) “prima facie” evidence of copyright validity

evidence of validity 

Section 410(c) provides that “[i]n any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” What is the significance of this rule? Simply this—a copyright claimant who has registered a claim of copyright in a work within five years before or after first publication does not have the burden of proving the validity of the copyright claim in an infringement suit.

To illustrate, assume that Gail writes and publishes an article in 2001, and registers it in the same year. If Andrew later infringes on Gail’s copyright claim, then Gail can sue Andrew for infringement, and the court must presume that Gail’s copyright claim is in fact valid. The burden of proof is on Andre to prove that Gail’s copyright claim is defective. It may surprise you to learn that the Copyright Office ordinarily does not examine a copyright registration application for basic validity before a certificate of registration is issued.³ In this sense, a copyright claim differs from a patent application. As a result, a certificate of registration is of little value apart from the “prima facie” validity conferred by section 410(c).

(4) “constructive notice” of recordation

notice of copyright 

Section 205(c) of the Copyright Act provides that “[r]ecordation of a document in the Copyright Office gives all persons constructive notice of the facts stated in the recorded document, but only if … registration has been made for the work.” This provision means that the public is “on notice” of and transfers, licenses, mortgages, and other documents pertaining to copyrights if such documents are recorded in the Copyright Office and the underlying works are registered.

To illustrate, assume that Mark is the owner of a copyright in a book, and that he assigns his copyright in the book to John, who records and registers the transfer in January of 2002. Assume further that Mark tries to assign the copyright in the same book to Esther in May of 2002. According to section 205(c), Esther has constructive notice of the earlier transfer to John, and cannot use her ignorance of the previous transfer as legal justification for her position.

(5) “curing” the effect of an omitted copyright notice

“curing” omitted notice

Generally, omission of a valid copyright notice from a work first published before March 1, 1989 invalidates the copyright in the work. However, section 405(a)(2) of the Copyright Act provides that omission of the notice on such a work will not invalidate the copyright if “registration for the work has been made before or is made within five years after the publication without notice, and a reasonable effort is made to add notice to all copies or phonorecords that are distributed to the public in the United States after the omission has been discovered.”

Example. Samuel writes a book and decides to publish it himself with the aid of a local printer. Samuel has 10,000 copies printed, and sales to the public begin in January of 1998. Samuel discovers in July of 2002 that none of the books contained a copyright notice. As of July of 2002, 3,000 of the books had been sold to the public, 2,000 were in the hands of a number of bookstores, and the remaining 5,000 were in Samuel’s garage. By registering the work before the end of 2002, and using reasonable efforts to add a valid copyright notice to the 2,000 copies in the bookstores and the 5,000 copies in his garage, Samuel may prevent the loss of his copyright interest in the book. Reasonable efforts to correct the omission of notice would include printing labels containing a valid copyright notice, and providing them to the bookstores with a request that they be affixed to the title page of each book, and affixing the same labels to the books still stored in the garage.

(6) detection of errors

detection of errors

The Copyright Office reviews every application for registration to ensure that the legal formalities needed to ensure protection are satisfied. Often, the Copyright Office will call to the attention of a copyright owner an error in the registration application or in the copyright notice that can ensure that copyright protection is first preserved. Note, however, that this review is limited to the applicant’s compliance with technical requirements. The merits of a particular claim of copyright ordinarily are not evaluated.

(7) marketability

marketability

Registration of a copyright in some cases may enhance the marketability of an author’s or composer’s work. For example, a person checking Copyright Office records on a particular subject may inadvertently find your work, and contact you regarding a publishing opportunity.

(8) compulsory licenses

compulsory licenses

As we will learn later, registration of a musical work may entitle you to “compulsory royalty payments” in the event that someone else makes a recording of the work. This provision has special relevance in the context of audio recording of church worship services in which copyrighted music is performed.

2.2 When to Register a Work

Let’s assume that you are convinced that the benefits associated with registration are worth the effort. When should you pursue registration of the copyright in your work, and what is the procedure? First, let’s look at the question of timing—when should a work be registered? Section 408(a) of the Copyright Act states that “[a]t any time during the subsistence of the first term of copyright in any published or unpublished work in which the copyright was secured before January 1, 1978, and during the subsistence of any copyright secured on or after that date, the owner of copyright or of any exclusive right in the work may obtain registration of the copyright claim ….Authors or composers can wait for many years following the publication of a work to seek registration, or they can seek registration as soon as a work is embodied in a tangible form (prior to publication). In general, registering your work between completion and within three months of publication is the best course to follow. While it is possible to register each chapter or section of a work as it is completed, such a procedure is costly and time-consuming, and ordinarily is not warranted. On the other hand, if you have decided to register a work, there is nothing to be gained by delaying registration once the work is completed.

It is possible to register an unpublished work. Whether registration prior to publication is desirable or not depends upon the circumstances. Generally, it can be said that registration prior to publication is justified if the work is going to have exposure to the public prior to publication. For example, if Anne writes a song and sends it to several music publishers to review for possible publication, and also sends it to several of her friends for their comments, it would be well for her to consider registration prior to publication because of the widespread pre-publication exposure the song has had. Registration of the unpublished work can help prevent loss of control over the work. On the other hand, if Anne plans to publish and distribute the work herself, and does not send any copies to anyone else (for review or any other purposes) prior to publication, there is little reason to register the work prior to publication.

Key point. Authors and composers who send their unpublished works to publishers for review should be sure to insert a notice on their works (on the title page) stating that the work is an unpublished manuscript that is being submitted solely for review purposes, and that no publication or public distribution is authorized without the express written permission of the author or composer.

If your work will have significant public exposure prior to publication, and you have decided to register it before it is published, you may also “re-register” the work after it is published. Section 408(e) of the Copyright Act specifies that “[r]egistration for the first published edition of a work previously registered in unpublished form may be made even though the work as published is substantially the same as the unpublished version.”

published works

Let’s say that you have decided to register your work, but that your work will not have any public exposure prior to publication. Under these facts, it ordinarily is best to register the work within three months following publication since this will preserve your right to statutory damages (and attorneys’ fees) in the event someone infringes upon your work at any time following publication but before registration. That is, if you register your work within three months following publication, you are entitled to statutory damages for infringing acts that occur after publication but before registration. This is an important exception to the general rule that statutory damages are available only for infringing acts that occur after registration.

Often, an author or composer is not aware of the advantages of registration until long after a work is published. As noted above, registration can be pursued at any time during the term of copyright. Obviously it is helpful if registration occurs within five years from the date of publication, since in some cases this can prevent loss of copyright in a work (first published before March 1, 1989) on account of an omitted defective copyright notice. Further, section 410(c) of the Copyright Act provides that “[i]n any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. This is further reason to register a work within five years of publication. But if registration is not accomplished within five years of publication, this is no reason to dispense with it if you have determined that the benefits to be gained are worthwhile and desirable.

2.3 How to Register a Copyright Claim

Let’s assume you have decided to register your work. How do you proceed? Happily, copyright registration is a fairly simple procedure in most cases. To register a work, send the following three items in the same envelope or package to the Register of Copyrights, Copyright Office, Library of Congress, Washington, D.C. 20559:

(1)A properly completed application form. Be sure to complete the application using black ink or a typewriter or printer, and either an original Copyright Office form or a clear photocopy made on a good grade of white paper. Applications not meeting these requirements will be returned. There are several registration forms. Use the following table to determine which one is appropriate for you:

Note. All of the forms listed in the table can be obtained from the Copyright Office, free of charge, by contacting the Copyright Office forms hotline at 1-202-707-3000. For informational purposes, Forms TX, P4, and SR are reproduced in an Appendix at the end of this book. You can also request forms by regular mail by writing Library of Congress, Copyright Office, Publications Section LM-455, 101 Independence Avenue S.E., Washington, D.C. 205.59-6000.

Tip. All Copyright Office forms are available on the Copyright Office Website in fill-in version. Go to loc.gov/copyright/forms/ and follow the instructions. The fill-in forms allow you to enter information while the form is displayed on the screen by an Adobe Acrobat Reader product. You may then print the completed form and mail it to the Copyright Office. Fill-in forms provide a clean, sharp printout for your records and for filing with the Copyright Office.

(2) A nonrefundable filing fee of’$30 (effective through June 30, 2002) per application. The $30 fee applies to all of the forms described in the table, except for Form RE for which a $45 fee applies.

(3) A nonrefundable deposit of the work being registered. The deposit requirements vary in particular situations. The general requirements are as follows:

(a) If the work is unpublished, one complete copy or phonorecord.

(b) If the work was first published in the United States on or after January 1, 1978, two complete copies or phonorecords of the best edition.

(c) If the work was first published in the United States before January 1, 1978, two complete copies or phonorecords of the work as first published.

(d) If the work was first published outside the United States, whenever published, one complete copy or phonorecord of the work as first published.

(e) If the work is a contribution to a collective work, and published after January 1, 1978, one complete copy or phonorecord of the best edition of the collective work.

There are a number of special registration rules. Consider the following:

renewal registrations 

Consider the following rules:

(1) works copyrighted before January 1, 1978

The copyright law provides a first term of copyright protection lasting 28 years followed by a second term of protection known as the renewal term. However, these works were required to be renewed within strict time limits to obtain a second term of copyright protection. If copyright was originally secured before January 1, 1964, and was not renewed at the proper time, copyright protection expired permanently at the end of the 28th year of the first term and could not be renewed. Congress enacted legislation in 1992 that amended the copyright law with respect to works copyrighted between January 1, 1964, and December 31, 1977, to secure automatically the second term of copyright and to make renewal registration optional. The renewal term automatically vests in the party entitled to claim renewal on December 31 of the 28th year of the first term. Congress enacted legislation in 1998 that extended the renewal term an additional 20 years for all works still under copyright, whether in their first term or renewal term at the time the law became effective. The 1992 and 1998 laws do not retroactively restore copyright to U.S. works that are in the public domain.

In summary, a work is eligible for renewal registration at the beginning of the 28th year of the first term copyright, but there is no requirement to make a renewal filing in order to extend the original 28-year copyright term to the full term of 95 years. However, there are benefits from making a renewal registration during the 28th year of the original term.

The copyright law provides that, in order to register a renewal copyright, the renewal application and fee must be received in the Copyright Office within the last (28th) calendar year before the expiration of the original term of copyright or at any time during the renewed and extended term of 67 years. To renew a copyright during the original copyright term, the renewal application and fee must be received in the Copyright Office within 1 year prior to the expiration of the original copyright. All terms of the original copyright run through the end of the 28th calendar year, making the period for renewal registration during the original term from December 31st of the 27th year of the copyright through December 31st of the following year.

Form RE is the renewal application. The filing fee that must accompany this form is currently $45.

(2) works copyrighted on or after January 1, 1978

The copyright law has eliminated all renewal requirements and established a single copyright term a different methods for computing the duration of a copyright.

corrections 

Corrections and amplifications. To deal with cases in which information in the basic registration later turns out to be incorrect or incomplete, the law provides for “the filing of an application for supplementary registration, to correct an error in a copyright registration or to amplify the information given in a registration.” The information in a supplementary registration augments but does not supersede that contained in the earlier registration. Note also that a supplementary registration is not a substitute for an original registration or for a renewal registration. Form CA is used for supplementary registrations, and it is available from the Copyright Office.

group of contributions to periodicals 

Group of contributions to periodicals. Section 408(c)(2) of the Copyright Act permits “a single registration for a group of works by the same individual author, all first published as contributions to periodicals … within a twelve-month period, on the basis of a single deposit, application, and registration fee … (A) if the deposit consists of one copy of the entire issue of the periodical … in which each contribution was first published and (B) if the application identifies each work separately, including the periodical containing it and its date of first publication.” Copyright Office Form GR/CI is used for this kind of registration. Note that the Form GR/CP is an “adjunct application” that is used in addition to Forms TX, PA, or VA. To illustrate, if an author writes 10 articles in 2002 and all of them are published in a variety of periodicals, the author can register 10 works simultaneously by using Form GR/CP. But, the author must also complete and submit with the Form GR/CP a Form TX registration application for each article. Prior to March 1, 1989 this group registration procedure was not available unless each individual work bore a separate copyright notice. While a separate copyright notice was technically not necessary to preserve the copyright in a contribution to a periodical or other compilation if the periodical or compilation itself bore a valid copyright notice,⁴ it was a precondition to a group registration by the author of the article and therefore was a desirable practice for periodicals to follow. Thanks to the Berne Convention, this requirement no longer exists.

effective date

There are just a few more issues to summarize regarding copyright registration. First, what is the effective date of registration, and second, who may file an application form. A copyright registration is effective date of receipt in the Copyright Office of all the required elements (discussed above) in acceptable form, regardless of the length of time it takes thereafter to process the application and mail the certificates of registration. The length of time required by the Copyright Office to process an application varies. You will not receive an acknowledgement that your application has been received, but yon can expect within 120 days a letter or telephone call from the copyright examiner if additional information is needed, and a certificate of registration to indicate that the work has been registered (or, if the application cannot be accepted, a letter explaining why). If you want to know when the Copyright Office receives your material, you should send it certified mail and request a return receipt from the post office.

who may submit an application

Any of the following persons are legally entitled to submit a copyright registration application:

(1)The author. This is either the person who actually created the work, or, if the work was made for hire, the employer or other person for whom the work was prepared.

(2) The copyright claimant. The copyright claimant is either the author of the work or a person or organization that has obtained ownership of all the rights under the copyright initially belonging to the author.

(3) The owner of exclusive rights. Under the current copyright law, any of the exclusive rights associated with a copyright can be transferred and owned separately. Any owner of an exclusive right may apply for registration of a claim in the work.

(4) The duly authorized agent of the author, copyright claimant, or owner of exclusive rights. Any person authorized to act on behalf of the author, other copyright claimant, or owner of exclusive rights may apply for registration.

Key point. There is no requirement that applications be prepared or filed by an attorney.

B. “Informal” Registration

mailing your work to yourself

Many persons are of the opinion that by mailing a copy of their literary or musical works to themselves, by certified or registered mail, they somehow acquire legal protection (so long as the envelope remains unopened) that they would not otherwise enjoy. Is there any basis to this view? First of all, such a procedure is not a substitute for registration. Unless an author or composer registers his or her work, none of the benefits associated with registration are available. Mailing a copy of a work back to yourself in no way affects this result. Further, the mailing procedure in no way contributes toward copyright protection in the work, since copyright protection arises automatically by operation of law as soon as an original work of authorship is fixed in a tangible form of expression. What, then, does the mailing procedure accomplish? If anything, the procedure would provide evidence as to the date an author or composer actually created a work. Occasionally, this evidence can be helpful. For example, assume that Alice composes an original song and reduces it to writing in January of 2001, and than Alan composes a nearly identical song in March of 2001. If Alan accuses Alice of copyright infringement, the fact that Alice has in her possession an unopened envelope (bearing a January 2001 postmark) that had been mailed to herself and that contains a copy of her work would be very helpful to her in disproving Alan’s claim. Note, however, that some courts have given very little credibility to the contents of such “unopened” envelopes, on the ground that the owner could have opened the envelope, replaced its contents, and resealed it without detection.⁵ The Writers Guild of America permits authors to deposit works with it, as a means of establishing originality.

Example. Pastor Wilson types his sermons in advance, and would like to copyright them. He would use Form IX. If the sermons are not typed or reduced to any other type of writing, but are recorded, he would submit a Form SR.

Example. Janet composes a sacred song (music and lyrics) that she reduces to writing. She would use Forma PA to register the work. If she records the song, she could use Form SR to register both the recording and the underlying musical work, or she could submit two registrations—a Form PA for the underlying work and a Form SR for the recording.

2.4 Deposit Requirements

Although copyright registration is not required, the Copyright Act establishes a mandatory deposit requirement for works published with notice of copyright in the United States. In general, the copyright owner, or the owner of the exclusive right of publication in a work, has a legal obligation to deposit in the Copyright Office, within three months of publication, two copies (or in the case of sound recordings, two phonorecords) for the use of the Library of Congress. Failure to make the deposit can result in fines and penalties, but does not affect copyright protection. Under section 408(h) of the Act, a single deposit can satisfy both the deposit and registration requirements. This provision requires that the single copy must be accompanied by the prescribed application and registration fee.

Copyright Office regulations exempt various kinds of works from the deposit requirements, including sermons and speeches (when published individually and not as a collection of the works of one or more authors), literary or musical works published only as embodied in phonorecords, certain “on line” computer databases available only in the United States, and works first published as individual contributions to collective works.

Endnotes

1. See, e.g., International Trade Management, Inc. v. United States, 553 F. Supp. 402 (C. CI. 1982).

2. The subject of statutory damages is considered in detail in section 5.3(D).

3. House Report on the Copyright Act of 1976, page 157.

4. Section 404(a) of the Copyright Act specifics that “a single notice applicable to the collective work as a whole is sufficient to the (copyright notice requirements with respect to the separate contributions it contains . . . .”

5. See. e.g.; Smith v. Berlin, 141 N.Y.S.2d 110 (1955).