502 WASHINGTON AVENUE - SUITE 605 TOWSON, MARYLAND 21204 410-659-9550 94 NAROD BOULEVARD WATER MILL, NY  11976 631-237-4891 larry@guffeylaw.com Senior Patent Counsel OLIVER & GRIMSLEY, LLC 443-541-5680
"Maximizing the Returns on Your Intellectual Endeavors"

Under Title 17 of the U.S. Code, when authors document their original works, they are granted a number of relatively long-duration but limited-extent, exclusive rights to those of their original works that are within specific categories of copyrightable subject matter.

The sentence above summarizes the basics of U.S. copyright laws, but obviously needs some elaboration on its many qualifying terms in order for the sentence to be helpful to one trying to understand the U.S. copyright registration process. Listed below are some key points of the needed elaborations:

(a) "when authors document" implies that an author's exclusive rights are created at the moment his/her work is documented - which can be satisfied by fixing the work in a tangible medium of expression which will enable the work's embodiment in the resulting copy to be communicated -- thus, an author does not need to complete an application process in order for his/her exclusive rights to be created, (b) the exclusive rights mentioned above include the rights to reproduce, distribute, display or make derivative works of the original work. These rights are subject to only a few public- interest exceptions -- the most important of which are certain, specified "fair uses," including copying for the non-commercial purposes of teaching, research, criticism. These rights are also a topic of great debate today with respect to copyrightable works posted on the Internet and when/how does one commit the tortious act of copying them. (c) the long duration of these rights frequently is the life of the author plus fifty years, (d) the limited-extent of the rights refers to the so-called "first sale" doctrine, whereby the owner of a copy of the work may sale the copy to another without either having to worry about the work's copyright owner having any recourse against them, (e) a copyrightable work must show some originality on the part of its author, but, as discussed below, this has proven to be a relatively easy standard for authors to meet, and (f) the categories of copyrightable subject matter are statutorily defined and include: writings, pictures, paintings, motion pictures, sculptures, sound recordings, compilations, computer programs and works of music, drama, or choreography.

Furthermore, if an author timely registers (i.e., within three months of the date of first publication or before the copyright infringement begins) his/her work with the U.S. Copyright Office of the Library of Congress (USCO), the author may acquire valuable additional rights and evidentiary points of law in any subsequent litigation over the work, including: (1) a federal cause-of-action against infringers and possible remedies of statutory damages and attorney's, and (2) prima facie (i.e., sufficient, if not adequately rebutted or contradicted, to prove the evidentiary fact being introduced) evidence of ownership and the copyright's validity.

Additionally, if an author, with or without having registered his/her work, places a statutorily defined notice on the publicly distributed copies of the work (frequently it would appear as the symbol ©, the year of first publication of the work and the name of the copyright owner), the author receives further significant benefits, including: (1) application of this notice will defeat an accused infringer's defense of "innocent Infringement," which if believed by the court could lead to a significant reduction in any subsequent damage award, and (2) the acquisition of similar exclusive rights in his/her work in those foreign countries that require such a copyright notice to appear on the distributed copies as a condition for the creation of copyright's exclusive rights. For all U.S. works published prior to 1978 and for many of those published between 1978 and March 1, 1989, the existence of such a copyright notice appearing on all publicly distributed copies was an actual requirement for the U.S. copyright in the work to remain in effect.

Preparation of the Copyright Registration Application

Unlike the patent application and trademark registration processes, the copyright registration process is relatively uncomplicated and inexpensive. Thus, there is no need to try to break the process down into low cost steps, the first of which might be a copyright registerability assessment, the results of which, if they were positive, would justify proceeding with the later, more expensive steps in the process.

In order to apply for copyright registration, the author need only: (1) file the appropriate registration application, the form for which is available from the USCO at http://lcweb.loc.gov/copyright/, (2) make a category-specific deposit of copies of the work, and (3) pay the USCO filing fee. There is a specific version of the registration application that must be used depending upon the copyrightable category into which the submitted work will be classified. This registration process serves to make basic facts concerning the copyrighted work a matter of public record, thereby increasing the work's marketability by allowing such matters as ownership to be easily verified.

Although applying for copyright registration appears relatively simple, this does not meant that the decision is always easy as to when to apply for registration or whether to seek counsel's assistance with this task. For those authors who do not plan to publish their own works, they must decide whether to apply for registration before seeking a publisher. Many publishers traditionally have preferred that works not be registered prior to publication. Thus, publishers' policies probably should be explored in advance of applying for registration or making deposit submissions.

As to whether to involve counsel in the registration process, most authors can probably apply for registration without the benefit of counsel. However, for most authors to realize any financial returns on their creative endeavors, they eventually have to transfer legal interest in their works -- counsel will almost certainly be needed for this step. Thus, the issue of counsel's involvement often becomes a question not of whether, but of when to retain counsel. (Typical legal fees for preparing a copyright registration application are $100.00 to $500.00 depending upon the complexity of the work of authorship).

The Examination Process for Copyright Registerability

When the copyright registration application is filed at the USCO, it is assigned to a copyright examiner who will review the application to determine the work's copyright registerability. To be registerable, the author's work must be: (1) sufficiently original, (2) fixed in a tangible medium, and (3) within one of the categories of copyrightable subject matter, and the submitted application must be: (a) properly completed, with the appropriate version of the application that corresponds to the work's copyright category having been used, (b) accompanied by the required government filing fee of $20.00, and (c) accompanied by a nonreturnable deposit of one or more copies, depending on the work's copyright category, that embody the author's work.

The Originality Requirement of Copyrightable Works

The requirement of originality has proven hard to objectively define, but it is certainly not as demanding as the "novelty and nonobviousness" requirements imposed on inventions for patentability. The case law on this point uses such terminology as "not mere trivial originality," "independently created," and "quantum of creativity." Over the years, it has not proven a very difficult standard to meet. Mechanical drawings and simple freehand sketches, for example, are protectable under copyright. However, slogans, names, titles, simple phrases, symbols utilizing common geometric shapes, certain designs, slight variations of musical works, translations from one language to another, photos of the finish of a horse race in which the photographer was held to have controlled little in the picture and articles which differ only by a change in materials (e.g., plastic replica of a cast iron bank model) have been held to not possess sufficient originality of expression to warrant being afforded copyright protection.

Copyrightable Subject Matter

The presently recognized categories of copyrightable subject matter reflect our current awareness of an author's tangible means of expressing his/her works. However, since it is appreciated that the numbers of these means are expected to increase with time due to the invention or discovery of new means, a list of these categories is statutorially recognized to be open-ended and to include:
(1) Literary works, which include computer programs;
(2) Musical works, including any accompanying words;
(3) Dramatic works, including any accompanying music;
(4) Pantomimes and choreographic works;
(5) Pictorial, graphic, and sculptural works;
(6) Motion pictures and other audiovisual works;
(7) Sound recordings, and
(8) Architectural works.

Ownership of Copyrightable Works - "Works For Hire"

Proper completion of the required copyright application is usually not a problem. However, problematic issues can arise in identifying who is entitled to apply for a work's copyright registration and thereby make claim to the work's exclusive rights.

In general, anyone who owns all or part of a work's exclusive rights may apply for the work's copyright registration. Unless a work is a "work for hire," its author will be the initial owner of all of the work's exclusive rights. He/She may transfer ownership of any or all of these rights to another, thereby empowering the new owner to apply for copyright registration.

However, such copyright ownership transfers are subject to a unique, statutorily defined right of the author: these exclusive rights may revert back to the work's author (or to the family of those who are deceased). Rights in a work "not for hire" revert back to its author after approximately 35 years if certain required administrative steps are followed, even if such rights have been unconditionally sold or licensed to others.

The exclusive rights to a "work for hire" are initially owned by the employer of the employee who created the work. A "work for hire" is essentially a work that is: (a) prepared by an employee within the scope of his/her employment, or (b) created by the author as part of a larger work and under a written agreement with the owner that the work shall be a "work for hire." The duration of these exclusive rights in a "work for hire" extend for the shorter of 100 years from the date of creation or 75 years from the date of first publication.

Issuance of a Certificate of Registration

Within approximately 120 days after filing the copyright application, the copyright examiner will respond by either: (1) asking for further information, (2) indicating disallowance and the reasons therefor, or (3) issuing a Certificate of Registration, which is essentially a copy of the application with an assigned registration number, the effective date of registration, and the seal/signature of the Register of Copyrights.