Under US copyright law, an individual who creates a copyrightable work—such as a book, magazine, photograph, painting, sculpture, musical composition, sound recording, software application, or piece of jewelry—owns the copyright in that work from the moment of its creation. It is not necessary to obtain a federal copyright registration in order to perfect those ownership rights. It is necessary, however, to have a federal copyright registration in order to sue for copyright infringement. See S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085 (9th Cir. 1989) (“Registration is not a prerequisite to a valid copyright, although it is a prerequisite to suit.”). Thus, owning a copyrightable work that has not been registered is a right without a remedy.
With the exception of live transmissions, which are given special treatment, Section 411 of the Copyright Act states that an action for copyright infringement may not be instituted unless the work has been registered with the Copyright Office, or unless registration has been refused. (In the latter case, the plaintiff must notify the Registrar of Copyright before suit is initiated so that the Copyright Office may join the lawsuit, presumably to challenge the validity of the asserted copyright. The author is not aware of any instances in which the Copyright Office has availed itself of this right.) A copyright infringement action brought without a copyright registration, or without a refusal to register, will be dismissed for lack of subject matter jurisdiction.
There is a split of authority as to whether the existence of a pending copyright application is sufficient to satisfy the pre-suit “registration” requirement. The Ninth Circuit has not squarely addressed the issue of whether a copyright application is sufficient to confer jurisdiction in an infringement action. In the most recent reported decision to address this issue, the court held that it is not.
In Mays & Associates Inc. v. Euler, 370 F. Supp. 2d 362 (D. Md. 2005), the plaintiff complained that a former employee had used certain images from the plaintiff’s website without authorization. The plaintiff filed 30 copyright applications on a Friday and filed suit on Monday, seeking immediate injunctive relief. The court dismissed for lack of jurisdiction, holding that the plain language of the statute requires either actual registration or a decision by the Copyright Office to refuse registration before suit can be filed. According to the court, filing suit without a determination by the Copyright Office that the work is either registrable or not places the court “in limbo.” (Presumably, if the Copyright Office were to refuse registration, the court would take some guidance from the Copyright Office’s determination of non-registrability.)
The court indicated that under Section 401(d) of the Copyright Act, registration dates back to the date on which the application, deposit and fee were received by the Copyright Office; therefore, there is no prejudice to the copyright holder in terms of having to wait for the application to issue. The only prejudice is to the copyright holder who does not leave enough time between the filing of the application and the expiration date of the statute of limitations for the registration to issue. In that event, except in those few jurisdictions that have held that a copyright application is sufficient, the copyright holder loses his right to sue. The statute of limitations under the Copyright Act is three years, and in the author’s experience, it takes approximately four months for a copyright registration to issue. Thus, a copyright application should be filed no later than two and a half years from the date of accrual of the cause of action.
Even if a copyright holder obtains a registration before filing suit, if the work has been published and the registration is not obtained within three months after the first publication of the work, the copyright holder loses the right to elect statutory damages or recover attorney’s fees—two significant advantages of federal registration. (This rule applies to works that are pre-registered and works that consist of sounds, images or both.) Statutory damages allow the copyright owner to avoid having to prove actual damages. The court may award between $750 and $150,000 per infringed work (up to $30,000 for non-willful infringement). Attorney’s fees may be awarded in exceptional circumstances. Furthermore, registration must occur within five years of first publication in order for the registration certificate to constitute prima facie evidence of the validity of the copyright.
The lesson to be gleaned from the above discussion is that if your business involves the generation of copyrightable works, and if you are concerned about potential infringement at any point in the future, you should establish a process whereby those works are regularly registered with the Copyright Office. The failure to do so can result in unintended consequences if and when you are faced with an infringement action. In order for the registration to count (and not be subsequently invalidated), the copyright owner must be properly identified, the deposit must be sufficient, the work must be properly characterized as published or unpublished, etc. A knowledgeable copyright attorney can help with these and other issues, including what constitutes a work made for hire and what constitutes publication under the Copyright Act.
