I recently attended a Continuing Legal Education (CLE) seminar in which the presenter asserted that copyright owners who register their works within one month after the infringement occurs can still get attorney’s fees and statutory damages in litigation. That assertion perplexed me, so I looked at the statute afterwards. Perplexed, because, for the copyright owner to receive attorney’s fees and statutory damages, the statute requires that the work be registered either before the infringement occurs or within 3 months after the first publication.
Section 412 of the Copyright Act of 1976 indicates that statutory damages and attorney’s fees may be available for copyright owners of preregistered works when the registration occurs one month after the owner learns of the infringement.
…an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement…
17 U.S.C. §412.
The one month window applies only if the work is a) preregistered and b) the one month period occurs before 3 months after the first publication.
This leads to two questions: 1) What is preregistration? and 2) What is publication?
Section 408(f) sets out the basic framework for preregistration. Preregistration applies to the classes of works the Register of Copyrights determines have a history of infringement prior to authorized commercial distribution.
Section 408(f) requires the copyright owner to complete the registration process within 3 months after the first publication. So, the copyright owner must still register the copyright in her work, and do it within the indicated time, even if she preregistered.
CFR §202.16 specifies the classes of works that are eligible for preregistration:
(i) Motion pictures;
(ii) Sound recordings;
(iii) Musical compositions;
(iv) Literary works being prepared for publication in book form;
(v) Computer programs (including videogames); or
(vi) Advertising or marketing photographs.
Note that some significant categories of works, such as pictorial, graphic, sculptural works and architectural works, are not included on the list and are not eligible for preregistration.
Publication is a historically significant event. Under the Copyright Act of 1909, copyright was obtained by publication, as long as the notice requirements were met. No publication, no copyright.
Under the current act, the Copyright Act of 1976, copyright protection starts at the point of fixation in a tangible medium of expression. §102(a). Saving to a computer hard drive and writing something down on paper are examples of fixation in a tangible medium of expression. Even though a work is now protected by copyright from its inception, registration is required for filing a copyright infringement action. §411(a).
‘Publication’ is 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. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.
To perform or display a work ‘publicly’ means—
(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or
(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.
The publication date remains significant under the 1976 Act, although for different reasons than under the 1909 Act. The Copyright Office requires the owner applying for copyright registration to state the date and nation of first publication if the work has been published. Providing incorrect publication information when registering the copyright can invalidate the registration. For example, United Fabrics registered a collection of fabric designs as unpublished. But some of the designs had been published. United Fabrics sued Family Dollar Stores for copyright infringement on a published design. The court held that the prior publication did not invalidate registration of the unpublished elements of the collection, but that it did invalidate the registration as to the previously published designs, including the design at issue. Family Dollar Stores, Inc. v. United Fabrics Int’l, Inc., 896 F. Supp. 2d 223 (S.D.N.Y. 2012).
In the context of preregistration, the copyright owner’s registration-related rights flow from the publication date. It’s important for the copyright owner to understand the significance of the publication date and to determine what that date is.
Thanks to Bob Cumbow for suggesting that I write this post. Bob is a partner at Miller Nash Graham & Dunn, where his practice focuses on intellectual property, advertising, publishing, and Internet issues. Bob is also a professor at the Seattle University Law School and the University of Washington School of Law, mentor to untold throngs of IP law students and all around good guy.