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Fifth Circuit Court of Appeals Emphasizes the Need for Timely Copyright Registration

Copyrights in original works of authorship must be promptly registered to receive full protection under the Copyright Laws of the United States.  A January 9, 2020 decision of the U.S. Court of Appeals for the Fifth Circuit clearly makes this point.

Copyright protection subsists in original works of authorship fixed in any tangible medium of expression. 17 U.S.C. § 102(a).  Such works of authorship include: literary works; musical works, including any accompanying words, dramatic works, including any accompanying music; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings, which are works that result from the fixation of a series of musical, spoken, or other sounds; and architectural works.  A work is original if it exhibits a minimal degree of creativity. Feist Publ’ns., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).

Owners of copyrights generally have the following exclusive rights:

  • to make copies of the copyrighted work; 
  • to prepare derivative works based upon the copyrighted work; 
  • to distribute copies of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; 
  • in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; 
  • in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
  • in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

17 U.S.C. § 106.  

For those who act swiftly to register their copyrights, the Copyright Laws provide a full range of remedies against infringers.  These remedies include injunctive relief, impounding and destruction of infringing articles, and recovery of damages and profits.  Since it is not always possible to prove actual damages or even an infringer’s profits attributable to any infringement, the copyright laws also provide for recovery of statutory damages, court costs and attorney’s fees.  Statutory damages of up to $150,000.00 may be awarded where the infringement is willful and up to $30,000.00 for non-willful infringement.  

However, as the Fifth Circuit Court of Appeals recently made clear in Southern Credentialing Support Servs., LLC v. Hammond Surgical Hosp., LLC, 2020 WL 104342, Jan. 9, 2020, a copyright owner’s failure to register copyrights on time will bar recovery of statutory damages and attorney’s fees.  In discussing statutory damages, the Court stated, “the Copyright Act’s purpose in limiting statutory damages when infringement occurs before registration [is] to encourage early registration, thus allowing potential infringers to determine whether a work is protected. Permitting a plaintiff to register, then collect statutory damages for new infringements of the same work by the same defendant that occur after registration, would dull that incentive.”

According to the Court, the Copyright Act prohibits the recovery of statutory damages and attorney’s fees for “any infringement of copyright in an unpublished work commenced before the effective date of its registration. . . .”  17 U.S.C. § 412(1).  Similarly, recovery of statutory damages and attorney’s fees is barred 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.”  17 U.S.C. § 412(2).  The Court emphasized that this prohibition bars “statutory damages broadly to prohibit statutory damages for both pre- and post-registration infringements.”

The specific issue before the Court was whether an infringer’s post-registration infringements, different in kind from the pre-registration infringements, negate the prohibition on recovery of statutory damages.  Specifically, the copyright owner argued that “the preregistration infringement and the post-registration infringement violate different exclusive rights of a copyright holder” and thus the recovery of statutory damages was not barred.

The Court rejected this argument stating, “No court has previously applied Southern Credentialing’s approach.”  The Court then held, “[S]ection 412 bars statutory damage awards when a defendant violates one of the six exclusive rights of a copyright holder preregistration and violates a different right in the same work after registration.  Any other conclusion would be inconsistent with the Copyright Act, which does not distinguish between ‘different’ infringements.”

So, when should copyrights in a work be registered to preserve the right to recover statutory damages?  Ideally, before the work is published, but no later than three months after the first publication of the work.  Recovery of statutory damages and attorney’s fees is barred if the registration is later and the infringer commenced any form of infringement before the effective date of the registration.

Registration is a relatively straight forward and inexpensive process.  The intellectual property lawyers at DeWitt LLP are ready to assist you with your registration needs.

About the Author

James Nikolai is an intellectual property attorney in DeWitt’s Minneapolis office. Jim has substantial experience representing clients in the areas of patents, trademarks, copyrights, trade secrets, software protection and licensing. He has successfully represented both plaintiffs and defendants in litigating intellectual property claims. If you have any intellectual property questions, you can reach Jim by email or at (612) 305-1518.

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