Copyright protection is an often overlooked component of an intellectual property portfolio. However, it is important to consider pursuing copyright protection in order to provide a more robust intellectual property portfolio. Given the relatively low costs to acquire a copyright registration and the ability to collect statutory damages, pursuing a copyright registration can prove to be a worthwhile expense. Although copyright registration is often a relatively simple process, there is an ongoing split among various circuit courts as to the effectiveness of a pending copyright application for registration versus that of an issued copyright registration. The difference can have important consequences for pursuing a copyright infringement action.

A copyright protects an author's “original works” once they are fixed in a tangible medium. The hallmark of copyright protection is creativity that is manifested in an original work. While creativity is a basic requirement for copyright protection, the requisite level of creativity is low and most original works meet the standard. In fact, the U.S. Supreme Court stated that even an “extremely low” or “slight amount” of creative expression meets the standard, see Feist Publications v. Rural Telephone Service, 499 U.S. 340, 346 (1991)). Under this standard, copyright protection is available for original works in things as diverse as marketing or promotional materials, instruction manuals, specification sheets, catalogues, movie posters, painting and software code. As a general matter, copyright protection is available for most materials generated in connection with a product or service, even if it is not a new product or service. There is no required level of artist achievement required for copyright protection.

Although the creativity bar is low, it is not nonexistent, and courts will examine whether that bar is satisfied. Recently, Taylor Swift was accused of copyright infringement for her song “Shake It Off” by the song writers of pop group 3LW's song “Playas Gon' Play.” In examining the threshold and dismissing the song writers' claim, the judge held the lyrics “playas, they gonna play” and “haters, they gonna hate” from the song “Playas Gon' Play” were not sufficiently creative enough in the first instance to warrant copyright protection, and, therefore, Swift was not liable for copyright infringement. The judge did not rule on whether Swift's song itself was original enough to warrant copyright protection. Rather, the ruling addressed the fact that the allegedly copied terms or phrases were not original enough to warrant copyright protection, so there could be no infringement.

The desirability of securing copyright protection becomes even more evident when the application process and cost are weighed against the investment in time and cost. Keeping in mind that the copyright manifests itself upon fixation in a tangible medium, there is no further action needed. Putting aside intricacies that can arise in a particular situation, the process is relatively simple and inexpensive. A copyright application only requires three items: an application form, a filing fee, which can be a little as $35 or $55, and a nonreturnable deposit copy of the subject work. The attorney fees, if an attorney is engaged to prepare the application and there are no intricacies or unforeseen complexities, are relatively inexpensive compared to the fees associated with other types of intellectual property issues, such as trademark clearances and patent applications.

There are some caveats that must be heeded and they most often precede the decision to file an application. If there are possibly multiple authors, it is important to secure assignment of any “work for hire.” There are very specific rules for assignments, such as they must be in writing, but once an organization becomes familiar with the requirements, the collection of this information can become routine.

Putting aside unusual complexities, copyright applications do not undergo substantive examination by in the Copyright Office. The Copyright Office overwhelming grants copyrights and only rejects applications for a few reasons, such as the work being ineligible subject matter or the work lacking the requisite level of creativity. Registration usually does not take more than a few months, but it is still recommended to file an application as soon as possible, either as a published or unpublished work.

The copyright application for registration is relatively straight forward; however, the effectiveness of filling the application but not having the registration in the area of enforcement is unsettled. The relevant copyright statute seems straight forward in requiring “registration” to bring an infringement action, see 17 U.S. Code Section 411. Nevertheless, there is significant disagreement among the various circuits regarding when an infringement suit can be filed. This has resulted in two interpretations regarding this statute and the timing of bringing an infringement suit.

One approach, known as the “application approach,” allows a copyright applicant to bring an infringement suit as soon the application is submitted to the Copyright Office, see, e.g., Cosmetic Ideas v. IAC/InteractiveCorp,, 606 F.3d 612 (9th Cir. 2010)). Under this approach, plaintiffs do not need to await the Copyright Office's review and grant of a copyright registration prior to bringing an infringement action. This approach is considered pro-plaintiff/pro-applicant because it allows for the filing of a lawsuit immediately after applying for the copyright registration. Since the registration process is mostly pro forma, this approach has been interpreted as a common sense approach, albeit not necessarily in line with the text of the copyright statute.

The other approach, known as the “registration approach,” requires an applicant to complete the registration process and obtain an issued copyright registration prior to bringing an infringement suit, as in Fourth Estate Public Benefit v. Wall-Street.com, No. 16-13726 (11th Cir. 2017)). This approach is seen as complying with the statutory language of requiring registration to bring an infringement action.

The distinction between these two approaches is significant. The registration approach focuses on what the plaintiff-applicant did and the registration approach focuses on what the Copyright Office did with the registration application. In January of this year, the Supreme Court, in Fourth Estate Public Benefit v. Wall-Street.com, Docket No. 17-571 (docketed Oct. 16, 2017), invited the solicitor general to submit a brief on this dispute. This appears to be a clear signal that the Supreme Court believes this dispute is ripe for a final, clarifying decision. The decision on this issue could have far-reaching implications for copyright owners and the timing for commencing infringement litigation.

The importance of the upcoming Supreme Court decision can be a critical consideration in bringing suit. Will a copyright owner be required to have a registration as a precondition to filing suit? Will a copyright owner still be required to have a registration before collecting statutory damages pursuant to 17 U.S. Code Section 504? Statutory damages are “not less than $750 or more than $30,000 as the court considers just,” see 17 U.S. Code Section 504 (c)(1)). “In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000,” see 17 U.S. Code Section 504 (c)(2)). Given the relatively low cost for copyright registration, there is a very persuasive economic incentive for pursuing a copyright registration.

The entertainment industry is acutely aware of the importance of copyright registrations and enforcement. In December 2017, Wixen Music Publishing, which represents many famous music acts, filed a $1.6 billion copyright infringement suit against Spotify USA Inc. for copyright infringement, as in Wixen Music Publishing v. Spotify USA, No. 2:17-cv-09288-GW-GJS (C.D. Cal. Dec. 29, 2017)). Wixen alleged that there were approximately 10,784 musical compositions that Spotify was infringing. Wixen reached the $1.6 billion request by multiplying the number of works, i.e., 10,784, by the statutory damages amount, i.e., $150,000. This case illustrates just how important registration can be for pursuing considerable damages in any infringement suit.

Copyright registration has the additional benefit that enforcement against importation of infringing works is available through the U.S. Customs.

Regardless of how the current circuit split is resolved by the U.S. Supreme Court, the relative easy and low-cost availability of copyright protection in most noncomplex matters argues for a robust program of filing for copyright protection. It is critical to remain mindful of the scope of protection provided by a copyright, and to understand the scope of materials protectable by copyrights. Most commercial entities generate multiple works that are copyrightable. Copyright may be low-hanging intellectual property that is being ignored.

Anthony S. Volpe is a shareholder at Volpe & Koenig. He has has corporate and private practice experience in all aspects of intellectual property rights.

Thomas P. Gushue, an associate with the firm, focuses his practice on U.S. and international patent prosecution and intellectual property litigation.