Copyrights

UNITED STATES OF AMERICA

U.S. Copyright Office: Preregistration

Copyright protection in the United States is automatic and exists from the moment of fixation of a work in a tangible medium of expression. Thus, it is not necessary to register a work with the U.S. Copyright Office to obtain protection under the U.S. Copyright Act. Nevertheless, there are important benefits to registering a work as soon as possible after fixation.

For example, the owner of copyright in a U.S. work must obtain a copyright registration before commencing a lawsuit for infringement of the work. Moreover, the owner of copyright in a U.S. or foreign work must have obtained a copyright registration before infringement of the work commenced (with limited exceptions) to be eligible to recover statutory damages and attorneys’ fees as a prevailing party. The importance of these remedies cannot be understated: When considering whether to sue for infringement of a copyrighted work, the availability of statutory damages and attorneys’ fees often can be the deciding factor, particularly where the copyright owner’s actual damages and the infringer’s profits attributable to the infringement would be exceeded by the attorneys’ fees that the copyright owner could expect to incur litigating the matter in U.S. court.

Historically, the registration rule presented an obstacle to owners of copyright in works that were infringed in the course of their preparation and prior to commercial distribution, such as a motion picture that is infringed during the production phase, or a yet-to-be released novel that is infringed when in draft form. In such cases, the copyright owner likely would not have obtained a copyright registration for the work prior to the infringement and thus would not have been eligible to recover statutory damages or attorneys’ fees for the infringement.

To remedy this problem, earlier this year the U.S. Congress enacted the “Artists’ Rights and Theft Prevention Act of 2005” or, the “ART Act.” The ART Act amended the U.S. Copyright in several ways, including by introducing a new mechanism known as “preregistration,” which, according to the U.S. Copyright Office, “serve[s] as a placeholder for limited purposes—notably where a copyright owner needs to sue for infringement while a work is still being prepared for commercial release.”

As amended by the ART Act, the Copyright Act now permits owners of copyrighted U.S. works who have registered or preregistered the work to commence an action for infringement. Moreover, the Copyright Act now provides that statutory damages and attorneys’ fees may be recovered (in the court’s discretion) by copyright owners who obtained a registration or preregistration prior to commencement of the infringement.

It must be noted that in most cases, the owner of copyright in a preregistered work must eventually apply for a traditional copyright registration for the work to retain the benefits of preregistration. The Copyright Act provides that an infringement action by the owner of a preregistered work “shall be dismissed” in cases where the infringement commenced no later than two months after first publication of the work but an application, deposit and fee for copyright registration has not been received by the Copyright Office within a specified time period. Similarly, statutory damages and attorneys’ fees will not be available to a prevailing party in an infringement action involving a preregistered work unless the work “has an effective date of registration” within specified time periods after the date of first publication or the date the owner learns of the infringement. Moreover, unlike traditional copyright registration, preregistration does not constitute prima facie evidence of the validity of the copyright or of the facts stated in the certificate of preregistration. Thus, preregistration should be viewed as a complement to registration, not a substitute for it.

Under the ART Act, preregistration is available only for works that are (i) unpublished; (ii) in the process of “being prepared for commercial distribution,” and (iii) “in a class of works that the Register [of Copyrights] determines has had a history of infringement prior to authorized commercial distribution.” The ART Act directed the Register of Copyrights to establish regulations that provide a procedure for obtaining preregistration and set forth the classes of works that will be eligible for preregistration. Recently, the Copyright Office promulgated interim regulations under the ART Act, effective as of November 15, 2005, that will govern preregistration until final regulations are issued. The Copyright Office anticipates issuing final regulations in “the next few weeks” and expects that they “will be identical or very similar to the interim regulations.”

Preregistration offers significant benefits to the owner of a work eligible for copyright protection and thus should be considered as another potential asset to be included in an intellectual property portfolio. However, preregistration may not be suitable or advisable for certain works. Accordingly, it is recommended that a copyright owner considering preregistration seek advice from U.S. counsel prior to applying to preregister copyright in a work.