A decision from a Federal judge in New York should spur copyright owners to register their copyrighted works (“copyrighted works” meaning just about anything your create). Those who fail to do so may lose the ability to recover valuable statutory damages if they end up having to go to court against an infringer.
The decision was issued in a class action lawsuit brought by several foreign and domestic copyright owners – largely broadcasters and television/movie producers alleging copyright infringement – against YouTube and parent company Google. The plaintiffs claimed that YouTube/Google failed to prevent repeat instances of infringement when works were posted to the YouTube site without permission and not taken down in a timely manner.
There are at least three ways to put a dollar figure on the damages that a party claiming copyright infringement can seek from an infringer. First, and most obvious, is “actual damages” – which are determined by the amount of actual, demonstrable profits gained by the infringer, or lost by the plaintiff, as a result of the infringement. The trouble with this measure is that it tends to be difficult – sometimes impossible – to prove what such “actual damages” amount to.
No problem. The Copyright Act allows for recovery of “statutory damages” in the amount of $750.00- $30,000 per work (and this can increase to up to $ 150,000 per work if willful infringement can be proven). Now we’re talking – a higher amount, no need for extended expert testimony from accountants or economists as to the illicit profits gained (by the infringer) or legitimate profits lost (by the copyright owner), straight cash-money, and free lawyering to boot. What’s not to like?
There’s just one catch. Statutory damages and attorney fees can be recovered only if the work at issue was “registered” with the Copyright Office prior to first publication/broadcast or within three months of publication/broadcast. If the work was not registered within that time frame (but was registered prior to the filing of the lawsuit), the victorious copyright owner can recover only actual damages, which the owner has the burden of proving in court.
[Copyright 101 lesson of the day: The creator of a work technically gets his/her copyright interest in that work the moment it is created. That is, you get the copyright by coming up with the creation – no separate governmental blessing is required. But if you want the government to help you protect that copyright – that is, if you want to be able to make infringers pay for their misdeeds through litigation in the federal courts – you have to “register” your copyright with the U.S. Copyright Office. As indicated above, the extent of governmental protection available depends on when you register: your potential is greatest if you register within three months of first publication/broadcast.]
Well, you can see where this is headed: most of the plaintiffs in the YouTube case had not registered their works within three months of first publication/broadcast. BUT, in most instances, they had a reason: as it turns out, the Copyright Act (Section 411(c), if you’re keeping score) exempts non-U.S. works from the registration-prior-to-filing-suit requirement. So foreign copyright owners have tended not to bother registering their works in the United States on the assumption that the potential downside would normally be minimal.
That assumption was wrong. The judge in the YouTube case agreed that the Copyright Act (consistently with the "Berne Convention") exempts owner of a foreign copyright from having to register the work prior to filing an infringement lawsuit. However, no similar exemption exists from the requirement to register the work prior to or within three months of first publication or broadcast in order to obtain the benefit of recovering statutory damages and attorney fees.
In other words, the owner of a foreign copyright does not have to register its work with the United States Copyright Office, but it will be limited to recovery of actual damages and an injunction if it fails to do so within the time frame applicable to U.S. copyright owners. The judge therefore dismissed the claims for statutory damages and attorney fees brought by all copyright owners, foreign and domestic, who had not registered their works in a timely fashion. As a result, they could recover nothing more than actual damages (although they could also get an injunction preventing further publication or broadcast).
But wait, there’s yet another twist! The Copyright Act provides separate treatment for live broadcasts (sporting events, concerts, theatrical presentations and news and public affairs programs, among others) by foreign copyright owners. In such cases, the foreign copyright may be entitled to the full range of possible damages (statutory, actual, attorney fees) as long as it has provided notice to the infringer at least 48 hours before broadcast. (Domestic U.S. copyright owners must provide such a notice, but must also register their copyrights within three months of the broadcast; foreign owners are exempt from that latter gotcha.) The notice – dubbed an "Advance Notice of Potential Infringement" – must include:
- the title and copyright owner of each work;
- the specific date, time, expected duration, and source of the first transmission;
- a description of the relevant activities of the potential infringer which would, if carried out, result in an infringement of the copyright; and
- a statement of intention to eventually secure copyright registration for the work.
Because there was evidence that at least some of the plaintiffs had served the required notice on YouTube/Google, the judge allowed the claim for statutory damages and attorney fees to go forward with regard to the live broadcasts.
So, to recap:
- The owner of a U.S. copyright who has never registered the work with the United States Copyright Office cannot recover damages in an infringement action.
- The owner of a U.S. or foreign copyright who registers the work with the United States Copyright Office prior to or within three months of first publication or broadcast can obtain an injunction, recover attorney fees and choose between actual damages or statutory damages.
- The owner of a U.S. copyright who registers the work with the Copyright Office prior to filing a lawsuit but not within three months of first broadcast or publication can obtain an injunction and actual damages only.
- The owner of a foreign copyright who does not register the work at all or does not register the work prior to or within three months of first publication/broadcast can obtain an injunction and actual damages only – NO attorney fees or statutory damages UNLESS the work is a live broadcast and a timely and proper "Advance Notice of Potential Infringement" was sent to the infringer.
It costs very little ($35) to register a copyright. It does not take much time. We realize you may never, ever find yourself filing a copyright infringement lawsuit. But doesn’t the high benefit justify the low cost and effort of registration? We think so. Consider it . . . infringement insurance.