The Process of Securing Copyright Protection - Module 5 of 5

Module 5: The Process of Securing Copyright Protection

Creation

For works developed today, copyrights are created when an original work of authorship is fixed in a tangible medium of expression. There is no need to apply for copyright protection as the right exists when the work has been placed into fixed, tangible form.  Additionally, there is no need to publish the work publicly.  To exercise fully all the rights associated with copyright ownership, however, the owners of copyright protected works should comply with certain formalities of practice and procedure established and enforced by copyright law.

Notice

Owners of copyrights generally provide notice of their copyright claims along with their work when it is published, displayed or distributed. The copyright notice should include use of the copyright symbol, ©, the word “Copyright” or the corresponding abbreviation, “Copr,” the year in which the work was first published and identification of the party who owns the copyright.  If the work is for hire, the notice should indicate the organization that owns the copyright.  If the copyright is owned jointly be more than one author, then the names of both authors should be identified in the notice. The copyright notice is most commonly presented in a form such as © 2017 XYZ Corp. Care should be exercised to avoid errors in the notice (such as misspelling of copyright owner’s name), as such errors can undermine the effectiveness of the notice.

The copyright notice should be prominently placed on the work to provide reasonable notice to users of the copyright claim.[1]  Since the purpose is to alert users of the copyright claim, the notice must be placed in a conspicuous location and presented in a manner likely to capture the attention of the user.  Suggested locations include the title page of a book or the masthead of a magazine.[2]  There is substantial flexibility in the location of a copyright notice, but the key requirement is that the location highlight the notice and make it easy for a user to see it.

          While copyright notice for works published before March 1, 1989 remains mandatory (and failure to publish notice can result in loss of copyrights)[3], notice is optional for works published since that date. Whether optional or mandatory, when used, notice should be managed carefully to document the history of the work and thus ensure that the notice conveys accurate information.

Registration

Copyrighted works may be registered with the Copyright Office of the Library of Congress.  While not mandatory, registration does provide a copyright owner with important advantages, and so many copyright owners voluntarily register their works.[4]  Helpful information regarding the copyright registration process is available at the Copyright Office website.[5]

Each version of a work can receive its own “basic registration.”  For example, the author of a book can apply to the Copyright Office for basic registration of a first edition and for all revised versions. This applies regardless of whether each edition is formally published.

The registration process begins with the filing of an application and associated materials with the Copyright Office. To facilitate the process, the Copyright Office offers several different types of forms on its website.[6]  Each form is applicable for a different category of creative work.  Among the most commonly used copyright registration application forms are:

-        Form TX (for unpublished and published literary works, websites, computer programs, etc.);

-        Form PA (for unpublished and published works of performing arts including music, motion pictures, theatrical plays, etc.);

-        Form VA (for works in the visual arts, including photographs and paintings) and

-        Form SR (for unpublished and published sound recordings).

All information provided to the Copyright Office as part of an application for registration must be accurate and not misleading.  If an applicant misleads the Copyright Office intentionally or through gross negligence, the applicant has engaged in fraud on the Copyright Office.  Such conduct justifies rejection of an application or subsequent cancellation of a registration if discovered after the fact.  Examples of fraud in the registration process include misrepresenting the character or form of a work, including flawed materials in the work, and claiming public domain works as original work.[7]

Each application requires some basic information. Applicants are required to provide a title, a description of the work and identification of the author or authors and the party who claims ownership of the copyright (for example, the employer in the case of a work for hire).

Applicants must also pay filing fees.  A schedule of fees associated with applications and other Copyright Office services, including recording of documents, is available at the Copyright Office website.[8]  Applicants must also deposit with the Copyright Office two complete copies of the work being registered (though, in some instances, one copy is sufficient).[9]  The copies deposited should be the best available versions of the work being copyrighted.[10]  The Copyright Office characterizes this requirement as the “best edition” requirement.  The best edition requirement obligates the applicant to submit to the Copyright Office the best and most complete version of the work as it was first published.[11]

For works such as books and other printed materials, it is relatively easy to satisfy the deposit requirement.  Many forms of copyrighted work, however, present greater challenges.  For example, copies of websites and other online works can be deposited either on a computer disk or in a hardcopy printout of the entire website.  When a computer program is registered, the Copyright Office requests a visually perceptible copy of the entire source code, if the program is less than 50 pages in length or the first 25 and the final 25 pages of source code if the program is 50 pages or more.[12]  As websites generally evolve rapidly, it is often useful to treat website registrations using forms, information, and procedures applicable to periodicals and serial publications for registration purposes to capture effectively the dynamic nature of website content.[13]

In some cases, particularly with computer programs, the deposit requirement raises issues associated with protection of trade secrets.  Some software developers protect elements of their computer programs as trade secrets, meaning that they consider them to be confidential and proprietary and don’t want them released to the public. Filings with the Copyright Office become public record. It is possible to establish copyright protection for material which contains trade secrets. But the challenge is to provide the Copyright Office access to enough of the computer program so that it can identify originality while shielding from public disclosure the portions of the program that are trade secrets.  The Copyright Office has developed procedures which permit filing those portions of computer programs that are not trade secrets while withholding disclosure of the secret portions, provided there is enough code disclosed to permit evaluation of originality.[14]

It is important to recognize that, although the Copyright Office permits deposit of copies of computer code that do not contain the entire source codes or which withhold portions of computer programs that are trade secrets, such filings weaken the value of registration certificates issued for those materials.  The Copyright Office takes the position that if it has granted a registration certificate based on deposit of anything less than the entire copyrighted work, that certification is subject to the “rule of doubt.”[15]  This means that the Copyright Office has, in effect, issued a certification which has less than full evidentiary value.  As the Copyright Office was unable to examine the entire work, it is unable to provide the usual full certification of the work in question.  Issuance of a registration subject to the rule of doubt has been used by defendants in copyright infringement actions to challenge arguments by copyright owners that injunctions should be issued to block use of material by defendants.[16]  This suggests that, whenever feasible, applicants should deposit complete copies of their protected works with the Copyright Office so that they can obtain the full evidentiary value associated with copyright registration.

Copyright registration applications can be filed online or in paper form via mail. The Copyright Office notes that online application filings are generally processed more quickly (six to eight months) than are paper filings (eight to ten months).[17]  The status of pending applications can also be reviewed online.[18]  Online filing is also often less expensive than paper filing.

          After submission of the proper application and all necessary supporting materials, the application is reviewed by an examiner at the Copyright Office.  This review involves a determination of whether the work is eligible for copyright protection and whether all necessary application materials have been provided.  Review for copyright registration is not the same as the review conducted by the Patent Office for grant of a patent application as the patent application review is far more rigorous that the copyright registration review.  Patent application review examines the prior art to see if the proposed invention is novel and non-obvious.  Copyright registration review focuses instead merely on a determination of whether the work presented qualifies for copyright protection.  If the examiner makes a positive determination on the application, the copyright is registered, and the deposited copies of the work are retained by the Library of Congress as part of its collection.

If an application for copyright registration is rejected, then the applicant is notified in writing of the reasons for the rejection.  At that point, the applicant can request re-consideration.  If the application is again rejected by the Copyright Office, then the denial of the application is final.  The applicant can then appeal the final decision of the Copyright Office to a federal district court.  Appeals of final rejections are usually based on claims by the applicant that the action of the Copyright Office was arbitrary and capricious and thus in violation of the federal Administrative Procedures Act.[19]

It should be noted that, even if registration is denied by the Copyright Office, the applicant can continue to treat the work in question as copyrighted (remember that registration is not a requirement for copyright protection).  If the applicant ever chooses to enforce the copyright through litigation, the applicant must copy the Registrar of Copyrights on the litigation pleadings.[20]  The Registrar has the option to become a party to the litigation.  If the Registrar chooses to become a party to the infringement litigation, its involvement will be limited to the issue of whether the work in question should be eligible for registration.

If the registration application is granted, then the Copyright Office issues a certificate of registration.  The certificate includes information from the application and official documentation of the effective date.  Such documentation is particularly useful and important when disputes arise regarding the work.

Benefits of Registration

Although registration is not mandatory, it brings certain advantages as it enhances the strength of a copyright claim.   For one, registration carries with it a presumption that the underlying copyright is valid.[21]  Registration also carries a presumption that the person who registered the copyright is also the copyright holder. Moreover, successful registration is evidence that the material in question is eligible for copyright protection and that the party identified in the registration is the true owner of the copyrighted work.

Registration is also an essential part of infringement litigation.  Only after copyright registration has been successfully completed can a copyright owner initiate litigation for infringement.  In general, a certificate of copyright registration must be included with an initial complaint in an infringement proceeding.[22]

Copyright registration is also required if a copyright owner is to receive any of the statutory damages provided by copyright law.[23]  Copyright law permits courts to award statutorily defined damages for infringement as well as additional damages for willful infringement, but registration is a prerequisite for these statutes to kick in. Registration is also required for the copyright owner to receive attorney fees associated with infringement litigation.

Timing of Registration

An application for copyright registration can be filed at any time during the copyright term.  It is not necessary that registration be sought immediately upon establishment of the copyright rights. It is possible to apply for registration even after substantial time has passed from the date when copyright rights were established.

          Under certain circumstances and for an additional fee, the Copyright Office may grant expedited review to a registration application.  The applicant must explain why expedited treatment is needed.  A common basis for such a request is the need to pursue litigation for infringement. Whether to grant expedited review is entirely at the discretion of the Copyright Office.

Copyright registrations can be cancelled by the Copyright Office.[24]  Generally, cancellation occurs when there is a determination that the work in question does not qualify for copyright protection or if there has been a failure in the application process. An example of a failure in the application process would be fraudulent conduct by the applicant which misleads or deceives the Copyright Office.  Prior to cancellation, the Copyright Office will inform the registration owner of its intent to cancel, and the owner has an opportunity to respond to the concerns of the Copyright Office.

Recording Documents

The Copyright Office also records certain documents associated with registered copyrights.[25]  For example, the Copyright Office records documents executing transfers or assignments of ownership for registered copyrights. Such recording is not mandatory, but there are advantages to recording these transactions.

First, recording of transfer documents helps to create an official record of all parties who have rights associated with the work.  This record is often useful in the event of disputes or litigation involving ownership or license to use the work.  By recording, the copyright owner provides public notice of the ownership interests and rights of use associated with the work.

Only documents that relate to a registered copyright can be recorded by the Copyright Office.  They must be signed by the parties executing them, and although they need not be notarized, notarization can help enhance their evidentiary value. Finally, all documents submitted for recording must be complete and in legible form.  Fees associated with recording of documents by the Copyright Office are identified at the Copyright Office website.[26]

Computer Shareware Registry

          The Copyright Office operates a repository for computer software donated to the public domain for public use.  Called the Computer Shareware Registry, it contains computer programs that have been deposited with the Copyright Office for participation in this Registry.[27]  Donation of computer code to the Registry is not the same as registration of the copyright associated with the code.  Instead, the software developer is indicating that the computer program is available for use without any license or other authorization. 

Software developers who wish to contribute to the Registry deposit the source code for their computer programs with the Copyright Office, designating the deposit for addition to the Registry. The Registry is intended to provide a repository where parties could search and access computer software which has been made public to allow use of those materials in further development.

Conclusion

Notice, registration, and recording are sometimes characterized as the formalities associated with copyright protection and management.  They play a vital role in the establishment and enforcement of copyrights.  Changes in the law have made the requirements associated with copyright formalities more readily understandable and easier to manage.  There has also been a general effort to try to bring the requirements of copyright formalities into greater uniformity from country to country.  Although some of the requirements of copyright formalities have been eased in recent years, copyright formalities continue to merit careful attention as full exercise of all of the rights associated with copyrights requires effective compliance with copyright formalities.