Intellectual Property Law

Chapter 13 Lecture Notes

Major points addressed in the chapter materials include the following:

1. Although copyright is secured automatically when a work is created and registration
of a work with the Copyright Office is not required to obtain copyright protection for
a work, registration is inexpensive, easy, and offers several advantages.

2. To register a work, the applicant must send three elements to the Copyright Office: a
properly completed application form, a filing fee, and proper deposit materials.
Registration can be made at any time within the life of the copyright.

3. Various persons are entitled to file copyright applications: the author (or if the work is
one made for hire, the employer or the commissioning party); the copyright claimant
(one who has obtained rights to the copyright, such as through a transfer or
inheritance); the owner of exclusive rights (such as the transferee of an exclusive
grant of copyright rights); or the authorized agent or attorney of any of the foregoing.
4. There are two methods of application:

• Electronic filing using the Copyright Office’s eCO system, which is faster and
cheaper than other methods and allows online tracking of the status of an
application. Since 2013, the Copyright Office allows a “single application,” for
one work by one author (that is not a work made for hire). This single application
is easier to complete and has lower filing fees than other forms of applications.

• Paper forms (provided by the Copyright Office)

5. Preparing the application form is relatively simple. When one files using the eCO
system (for which one must register and obtain a user name and password), one is
given prompts for each screen to be completed, with helpful links to additional
information. Payment may be submitted electronically and some deposit materials
may be uploaded and submitted electronically (for example, sound recordings and
source code may be submitted electronically).

6. An application for copyright registration must be accompanied by a deposit of the
best edition of the work being registered (if the work is unpublished, one complete
copy must be provided; if the work is published, two complete copies must be
provided). Thus, for example, for registration of a book, two hardcover bound
volumes should be provided. Although some deposit materials may be submitted
electronically, typically, the Copyright Office still demands hard-copy deposit
materials.

7. Certain types of works have special deposit requirements. Thus, photos of large
sculptures are acceptable, and source code must generally be deposited for computer
programs.

8. The Copyright Office does not subject the application to a substantive examination. If
the material in which copyright is claimed is copyrightable, the fee is paid, and the
material deposited complies with statutory requirements, a registration will issue,
usually in less than 8 months after an eCO filing and less than 13 months after paper
filing.

9. Copyright Office policy is to resolve questionable cases in favor of the applicant
under its rule of doubt, meaning that if the Copyright Office has questions about
copyrightability it will resolve doubts in favor of the applicant and allow a court to
make a final determination as to copyrightability if questions later arise.

10. If the Copyright Office refuses registration, reconsideration can be requested. Further
reconsideration may be requested of the Copyright Office Review Board. If
registration is still refused, the applicant may seek judicial review in the U.S. District
Court for the District of Columbia.

11. Because copyright registration is a prerequisite for an infringement suit for works
originating in the United States, if registration is refused, the applicant may still file
an infringement suit but must provide notice of the suit to the Register of Copyrights
who may become a party to the action with regard to registrability of the work.

12. The Copyright Office can cancel a registration if it is determined that a work is not
copyrightable.

13. Applicants who cannot wait the several weeks or months to receive a registration may
pay additional fees and request special handling if special circumstances are shown,
namely, prospective or pending litigation, customs matters, or contract or publishing
deadlines.

14. A relatively new statute allows preregistration for certain types of works that have a
history of prerelease infringement (such as movies). Preregistration allows a
copyright owner to sue for infringement while a work is still being prepared for
commercial release. Preregistration is not a substitute for regular registration but is
simply an indication of an intent to register a work once it is completed or published.

15. If a registration is incorrect, an application may be filed for supplementary
registration to correct the error upon completion of the proper form and payment of a
filing fee.

16. Although not required, registration of copyright affords several advantages:

• Registration establishes a public record of the claim of copyright

• Before an infringement suit may be filed, registration is necessary for works of
U.S. origin

• If made before or within five years of publication, registration constitutes prima
facie evidence of the validity of the copyright and the facts in the certificate

• If registration is made within three months after publication or prior to an
infringement of the work, statutory damages and attorney’s fees will be available

• Registration allows the owner to deposit the registration with U.S. Customs and
bar importation of infringing copies

17. Conducting a search of Copyright Office records prior to applying for registration is
not as critical as conducting trademark or patent searches because copyright
protection exists once a work is created, and independent creation is permissible.
Thus, the fact that another party has a copyright registration for another similar or
identical work will not preclude registration of the second work.

18. There are several ways to search Copyright Office records: The records of the
Copyright Office are open for inspection and searching; the Library of Congress card
catalog can be searched; searching can easily be conducted through the Copyright
Office’s website (searching by document number, name, key word, and so forth); the
Copyright Office will conduct searches for a fee; and private companies will conduct
searches for a fee.

19. Upon request, the Copyright Office will prepare certified or uncertified copies of its
records (for a fee). Obtaining copies of deposit materials is much more difficult.
Generally, one of three conditions must be met: The copyright claimant must
authorize release of the deposit materials; a litigation statement must be completed
stating there is actual or prospective litigation involving the copyrighted work and the
deposit must be examined; or a court must order release of the deposit material.
Moreover, the Copyright Office does not retain deposit material forever.

20. Since March 1, 1989, use of a copyright notice is no longer mandatory although it is
recommended and it offers several advantages. For works published before January 1,
1978, failure to use a notice caused a loss of copyright rights.

21. The form of copyright notice for visually perceptible copies is as follows:

• The symbol (©), or the word “Copyright,” or the abbreviation “Copr.”; and

• The year of first publication; and

• The name of the owner of copyright (or some abbreviation by which the name can
be recognized). Example: © 2015 Janice Taylor

22. Use of the notice informs the public that the work is protected by copyright, identifies
the owner, and shows the year of first publication. If a work is infringed, if a proper
notice appears on a published work to which the defendant had access, the defendant
cannot assert that the infringement was innocent (which would reduce damages).

23. Use of the notice does not require advance permission from or registration of
copyright with the Copyright Office.

24. The copyright notice should be placed/located in such a way that it gives reasonable
notice of the claim of copyright.

25. Because copyright notice is no longer required, errors and omissions in notices are
less important than they once were, although if an error in the date occurs, it may
affect copyright duration. Adding extra material or surplusage to a notice is
acceptable but it gives no additional rights beyond those provided for by the Act.