Wednesday, June 23, 2010

Copyright Registration: Not Jurisdictional but Still Really Important

One of the frequent questions I get is whether a copyright owner has to register their works in order to have a copyright or to obtain protection under the federal Copyright laws.  Last year, I wrote a short post highlighting registration asking the question: “Should I Register My Copyright?”  Initially, I noted that one has a copyright regardless of whether one registers the work.  I then focused on the advantages of registration including statutory benefits such as enhancing damages, and evidentiary benefits such as having presumptive proof (if the registration is successful) that the work is protected by copyright law.

While these advantages remain true, new developments in the law help to clarify the importance of registration, importance which I think must be emphasized.

Ownership versus Right to Enforce

First, let me point out that there is a difference between having a copyright, and being able to enforce the copyright.  Using the real property example, it is one thing to own your house lawn, it is another to actually prevent others from walking on your lawn.  With copyright, the walking on your lawn is someone else making aStop sign (small) copy of your work without permission.  You, as the author, may own the copyright in the work, but the fact of ownership does not in itself prevent someone from making a copy of the work.  The power of ownership really takes effect when you can use the fact of ownership to prevent someone from making copies.

Accordingly, while one may have a copyright in their original work of authorship by virtue of having actually created the work, one must also be able to prevent copying.

Copyright Protection Other than a Lawsuit

brick wall (small) Second, there are ways to prevent copying other than filing a lawsuit.  For example, if one never shows their work to anyone else, no one can make a copy of the work.  One can also use physical barriers or technology to prevent copying, like watermarks, encryption and so on.  Use of these types of measures is a key part of creating a copyright protection system and should not be ignored.  However, these measures have their limits, including their feasibility and applicability. 

A Legitimate Lawsuit Option for Enforcement

Third, the perhaps the last component of a copyright protection system is a legitimate threat of litigation against those who are copying the work.  One thing to be noted is that copyrights are a federal right and can only be enforced in federal court, i.e., by making a federal case out of it.  But in addition, this is where registration becomes key.

The Reed Elsevier v. Muchnick Case

A recent case from the U.S. Supreme Court addressed registration as a pre-requisite for enforcement of copyright claims.  The case is Reed Elsevier, Inc. v. Muchnick et al., 130 S.Ct. 1237 (2010).  There, some of the parties seeking copyright protection under federal law had not registered their copyrights.  The trial court raised the question on its own (without the parties raising the question) of whether it had the ability to handle the case if those parties had not registered their works.  Another way of saying this is to say that the court raised the question of whether it had jurisdiction to hear the copyright claims. 

This came about because the federal copyright statutes state that a party cannot file certain copyright claims (for our purposes, it is enough to note that the certain claims at issue are pretty much the ones most important to copyright owners) unless they have registered the copyright.  Specifically, the statute states, in part, “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.”  17 U.S.C. Section 411

Applying this statute, the trial court determined that it did not have jurisdiction, and the parties appealed the issue all the way to the Supreme Court.

In resolving the question, the Supreme Court stated that trial courts do have jurisdiction to handle cases involving unregistered works.  However, the Supreme Court indicate that registration was an essential element of a claim for violation of a copyright under the statute.  In short, this means that while the court can hear the case, the copyright owner still has to prove they registered, or tried to register, the copyright with the Copyright Office to succeed in their lawsuit.

Like any lawsuit, a party has to prove they are entitled to relief or a remedy.  If one is claiming someone else trespassed on their property by walking on it without permission, they not only have to prove that the other person actually walked on their property, they have to also prove that they own the property at issue.  If they cannot prove this, they cannot prove an essential element of the trespass claim and they will loose.

With copyright violations, the federal statutes establish the elements of the claim that a copyright owner has to prove to win.  It may be obvious that a copyright owner has to prove the the other person actually copied the work at issue, but the Reed Elsevier case also suggests that the copyright owner will have to prove that they at least attempted to register the work with the Copyright Office as well if they want to win.  If they cannot prove this requirement, they will likely loose.

thumbs down (small) The reason I say that they have to prove they at least attempted to register the copyright is because registration does not have to be accepted for the copyright owner to file suit.  A copyright owner has to have either successfully registered the work before they sue, or have tried to register properly, but been denied registration.  In addition, in some situations, the registration can occur within three months of the suit for a violation of the copyright.


It is integral to be able to enforce a copyright in court against others who copy.  Without the ability to enforce the copyright, one really has nothing from a legal perspective.  Accordingly, because one must register their copyright to be able to win in a lawsuit about copyright infringement, registration is exceedingly important.

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