Professor David Post
H2O has permission to use this resource.
Section 501(a) of the Copyright Act provides:
“Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 122 . . . is an infringer of the copyright . . .”
Section 501(b) continues:
“The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it.”
1. Only the “legal or beneficial owner of an exclusive right under a copyright” may institute an action for infringement. The concept of the “beneficial owner” of a copyright is important, in practice (though one very rarely encounters it in the cases). In many of the “copyright industries”(e.g., motion pictures, musical recording, book publishing), copyrights (in whole or in part) are routinely assigned by those in whom they initially vest (authors) to institutions : songwriters frequently assign copyrights to music publishing companies, for example, book authors to (print) publishers, etc. Consideration for this transfer usually consists of royalty payments from the transferee to the transferor, which in turn depend on the number of copies of the work that are sold, or the number of times it is performed, etc. Even though the transferors, in those cases, have parted with legal title to the copyrights (via the assignments), they are deemed “beneficial” owners of the copyright, because they have a continuing financial stake (via the royalty) in the “health” of the copyright interest. [The notion of the “beneficial” owner derives from the law of trusts, where the person for whose benefit the trust is established is deemed to have “beneficial ownership” over the trust assets, even though the trustee actually has “legal ownership.”]
2. The copyright owner can only institute such an action for infringements “of that particular right” – the particular right that he/she/it owns, beneficially or legally – and only for infringements “committed while he or she is the owner of” that right.
Frodo composes an original musical composition and fixes it in a tangible medium of expression on January 1, 2000. On January 30, 2000, he transfers the exclusive right to reproduce the composition to Fred. On June 30, 2000, he transfers the exclusive right to create derivative works based on the composition to Franz. On September 30, 2000, he transfers the exclusive right to publicly perform the composition to Fritz. And on December 31, 2000, he transfers “all of my remaining right, title, and interest” in the copyright to Frank.
It is now January 2002. Frodo has just gotten word that Debbie has publicly performed his musical composition 12 separate times: 8 times in February 2000, and 4 times in December 2001. Question: Who is entitled to bring an infringement action against Debbie?
3. The copyright owner’s entitlement to sue for infringement is “subject to the requirements of section 411.” Sec. 411 reads:
§ 411. Registration and infringement actions
(a) Except for [certain exceptions], no action for infringement of the copyright in any United States work shall be instituted until preregistration [see §408(f)] or registration [see §§408-410] of the copyright claim has been made in accordance with this title. . . .
So, if you have a United States Work (see definition, § 101), no action for copyright infringement can be instituted until you register your copyright.
How does that square with the notion that copyright “subsists in the work,” and doesn’t require any action on your part to bring it into being (other than fixation in a tangible medium of expression)? See §408.
§ 408. Copyright registration in general ￼￼
(a) Registration permissive. . . . [T]he owner of copyright or of any exclusive right in the work may obtain registration of the copyright claim by delivering to the Copyright Office the deposit specified by this section, together with the application and fee specified by sections 409 and 708. Such registration is not a condition of copyright protection. [emphasis added]
How does it fit together? Registration is not a condition of copyright protection – works are protected by copyright from the moment of “creation” (see §101 definition). But registration is a condition for bringing an infringement action (at least if you are asserting infringement of a “United States work”).
New Facts. Gabriella creates an original pictorial work and fixes it in a tangible medium of expression on September 1, 2006. You may assume Gabriella is the copyright owner. On December 1, 2007 George reproduces 10,000 copies of her work and distributes those copies to the public. Gabriella has not registered her copyright. It is now June 1, 2008.
(a) Can Gabriella bring an action for infringement against George? No, she cannot (if her work is a “United States work”), because she has not registered the copyright.
b) If Gabriella registers her copyright on June 2, 2008, can she now bring an action for infringement against George? Yes, she can. Note that her work was protected by copyright in December 2007 (even though she had not yet registered the copyright). She was the owner of copyright in December 2007, and §501(b) gives her the right to institute an action “for any infringement” of her copyright “committed while she is the owner” of the copyright. So she is entitled to bring an action for the December 2007 infringements – but she will have to register the copyright before doing so. If she has registered on June 2, 2008 she can bring the suit as of that date.
Copyright registration, in other words, is like a ticket to the courtroom. You can’t get into court without it to enforce your copyright, but its existence vel non does not affect your substantive rights as the copyright holder. ￼
4. So why would anyone register their copyright before they need to go into court, if registration has no effect on their substantive rights as copyright holder?
§ 412. Registration as prerequisite to certain remedies for infringement
In any action under this title, other than [certain exceptions listed], no award of statutory damages or of attorney's fees, as provided by sections 504 and 505, shall be made for--
(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or
(2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.
It’s a complicated little section. To work through it, try to answer this question:
New Facts. Gabriella creates an original pictorial work and fixes it in a tangible medium of expression on September 1, 2006. You may assume Gabriella is the copyright owner. On December 1, 2007 George reproduces 10,000 copies of her work and distributes those copies to the public. Gabriella registers her copyright on June 2, 2008, and files suit against George on September 1, 2008.
(a) Can Gabriella recover attorney’s fees or statutory damages from George?
(b) Assume that Gabriella’s pictorial work was first “published”on November 1, 2007. Can Gabriella recover attorney’s fees or statutory damages from George?
(c) Assume instead that Gabriella’s work was “unpublished” at the time of George’s infringement. Can Gabriella recover attorney’s fees or statutory damages from George?
(d) Assume instead that Gabriella’s work was published on November 1, 2007 and that she registered her copyright on January 1, 2008. Can Gabriella recover attorney’s fees or statutory damages from George?