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Preparing for Protection Against Copyright Infringement

By Wade Savoy, October 11, 2018

Imagine your company is about to release a new product, along with end-user product guides and manuals, online help videos, various training materials, and sales collateral. The value of these assets is tied to your ability to generate sales revenue by differentiating your product from the competition. However, you could easily lose control (and value) of these assets if they are not properly protected with copyrights.

When advising clients about copyright disputes, I am a firm believer in the old-adage, “an ounce of prevention is worth a pound of cure.” The best way to protect your assets from infringement is to think about them as protectable property before a violation occurs, rather than after the fact. A proactive approach will leave you in an “enforcement-ready” position, saving you both time and money in the long run, and is easily achieved by taking one critically important step – registering your copyrights.

This step is often overlooked, however, due to the nature of copyright ownership. Under U.S. law, ownership is automatically granted to a creator; an application or filing with the U.S. Copyright Office is not needed to establish these rights. As a result, many creators of copyrighted works, such as software, websites, videos, and training materials, feel secure in knowing that ownership starts the moment an idea takes a tangible form. And while this is technically true, their ability to assert these rights will be considerably limited if they have not registered with the Copyright Office prior to infringement.

What are the benefits of registering a copyright prior to infringement?

1. Quicker legal action
The most important benefit of registration is that it opens the door to legal action. Without it, an owner cannot start copyright litigation against an infringer. Of course, an owner can register after the infringement has occurred, but registration is a slow process, possibly spanning 9-12 months. The Copyright Office will expedite registration in light of potential litigation but charges a significant fee ($800 vs. $55 basic filing fee) to do so. More significantly, post-infringement registration will impact an owner’s enforcement position in several significant ways discussed below. Simply put, you will save time and money by registering early, in addition to preserving other important benefits.

2. Stronger pre-litigation bargaining position
By registering prior to an infringement, an owner might be able to recover the owner’s attorney’s fees from the infringer, in addition to any damages attributed to the actual infringement. This benefit was built into the copyright laws as an incentive for early registration, and it can significantly alter the balance of power between an owner and infringer, leaving the owner in a more favorable position from which to demand a settlement prior to litigation. On the flip side, by failing to register early, an owner loses the threat of attorney’s fees, which could deter legal action completely if actual damages are less than the cost a bringing a lawsuit. When an owner registers ahead of infringement, the shift in bargaining power is clearly meaningful.

3. Possibility of statutory damages
In many situations, proving actual damages can be difficult or even impossible. An owner must quantify its loss of income, or an infringer’s gain, and substantiate this amount with proper documentation. However, by registering before infringement, a copyright owner is entitled to request statutory damages, which are prescribed by law and do not require proof of actual damages. Statutory damages can be up to $30,000 per infringed asset or, in cases of willful infringement, up to $150,000 per infringed asset.

Although an award of statutory damages is left to the court’s discretion, and often times courts are reluctant to award them without a real sense of the owner’s loss, the mere threat of a statutory damages is nonetheless a powerful weapon in the hands of a copyright owner who proactively registered before the act of infringement, putting much more weight behind a cease and desist letter.

4. Easier burden of proof at trial stage
A copyright owner must prove two essential elements during trial: (1) ownership of the asset and (2) a violation of those rights. A Certificate of Registration serves as presumptive proof of ownership, effectively shifting the burden of proof to the defendant/infringer to prove that the plaintiff is not the rightful owner of a valid copyright. There is a catch to this benefit, however. A Certificate of Registration is only given this presumptive weight if it is obtained within 5 years of publishing the copyrighted work, a requirement included to incentivize early registration. So, waiting to register a work could significantly undermine a copyright owner’s case.

5. Cost-effective batch registrations
As mentioned, the basic filing fee for copyright registration is typically $55, plus any legal fees associated with preparing the application. Although this is relatively inexpensive when compared with the average cost of obtaining a patent (in the tens of thousands) or a trademark (around a couple of thousand), the cost can still add up for a prolific creator like a photographer if a filing is made for each new work. Fortunately, in some cases the Copyright Office permits owners to file one application for an entire collection of work if the works are not yet published, allowing them to save on filing fees and legal expenses. Once the application is filed and pending, the work can be published with full registration-level protection. Further, after the first application is prepared, subsequent applications will likely require less attorney time, thereby enhancing the overall savings attributed to collection registrations.

Thinking strategically about your assets from the moment they are created, rather than after someone has infringed upon them, offers substantial advantages. We advise clients to consider implementing copyright registration as a matter of their day-to-day internal processes, starting with consideration of the following questions:

  1. Who will be responsible for identifying your important assets and overseeing preemptive protection?
  2. Which departments should be included in this decision-making?
  3. What kinds of “works” do you create (software, websites, videos, manuals, training and sales collateral), and which ones might lose revenue or strategic advantage if copied?
  4. At what point in new product development does copyright registration make the most sense?
  5. For assets that are periodically updated, such as software, do you have a strategic plan in place for registering the most current version or the most important updates?

By registering a copyright before infringement occurs, an owner will save time and money and, more importantly, maintain the upper hand in all aspects of enforcement action.

If you have questions about copyright protection, our team would be happy to help. Feel free to contact Wade Savoy directly at wsavoy@patentgc.com or to request more information by visiting our Contact Us page.