home

Media Law Resource Center

Serving the Media Law Community Since 1980

Home

Fighting Copyright Pirates Through Preregistration

By David Halberstadter

On March 4, 2019, the United States Supreme Court issued its decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. The high court concluded that it is not sufficient for a copyright claimant merely to have applied for registration in order to satisfy the "registration" requirement of 17 U.S.C. § 411(a); rather, the statute requires that the Copyright Office must either issue a certificate of registration or reject the claimant's application before a claimant may sue for copyright infringement. One of the primary arguments in favor of the "application" approach over the "registration" approach had been that the latter could be especially prejudicial when injunctive relief might be necessary to prevent rampant, rapid piracy.

In the wake of this ruling, there has been heightened interest in the provisions of the Copyright Act that provide for "preregistration" as a possible means for protecting certain copyrighted works prior to the Copyright Office's action on a formal application for registration, and as a possible alternative to requesting expedited processing of an application. But there is some confusion over the preregistration process, the types of works that may be eligible for preregistration, and the scope of potential protection that preregistration may provide. This article will explain what preregistration is and what it can do.

What is "Preregistration" and How Does It Work?

In 2005, Congress passed the Family Entertainment and Copyright Act, which President George W. Bush signed into law on April 27, 2005. This Act comprised two separate parts, one of which was the Artist's Rights and Theft Prevention Act of 2005. This Act principally targeted two activities: filming of movies in a movie theater; and the unauthorized release of movies and software before they become publicly available. This Act provided for preregistration of certain types of unpublished works that have experienced a history of infringement/piracy prior to their commercial distribution.

The preregistration of works being prepared for commercial distribution is governed by 17 U.S.C. § 408(f). The statute directs the Register of Copyrights to take two steps: (1) determine which classes of works have had a history of infringement prior to authorized commercial distribution; and (2) issue regulations to establish procedures for preregistration of such works. The statute makes clear that preregistration is only a temporary measure, and that the copyright owner eventually must submit a formal application for registration or risk the dismissal of any copyright infringement lawsuit that originally was permitted to proceed based upon preregistration of the work. (More on this below.) In effect, preregistration serves as a "place-holder" for a copyright owner who needs to sue for infringement while a work is still being prepared for commercial release.

What Types of Works Are Eligible for Preregistration?

The Register of Copyrights has identified various classes of works that have had a history of infringement prior to authorized commercial distribution. 37 C.F.R. § 202.16(b)(1). The list includes: (1) "motion pictures" (which term includes feature films, animations, television shows, documentaries and other audiovisual works); (2) sound recordings; (3) musical compositions; (4) literary works being prepared for publication in book form; (5) computer programs (including videogames); and (6) advertising or marketing photographs. Such works are considered to be in the process of being prepared for commercial distribution if (i) the claimant certifies that it has a reasonable expectation that the work will be commercially distributed to the public and (ii) preparation of the work has commenced and at least some portion of the work has been fixed in a tangible medium of expression.

Obviously, every type of work that does not fit into one of the categories described above is ineligible for preregistration. Motion picture screenplays, animation storyboards, costume designs, and television series bibles, for example, are not eligible. Neither are literary works that may be intended for publication but not as books, or software that may be integral to other products but are not themselves intended to be offered for commercial sale. Photographs that, when taken, are not intended to be used in advertising or marketing are likewise ineligible.

When Does A Work Become Eligible for Preregistration?

For motion pictures and other eligible audiovisual works, the creation and fixation of the work in a motion picture format must have already commenced. In other words, filming of the motion picture or videotaping of the audiovisual work must have begun. Sound recordings, whether based on musical compositions or other types of underlying works (for example, comedy albums and audio books), become eligible for preregistration once at least some of the sounds have been fixed in a sound recording medium. 37 C.F.R. § 202.16(b)(2)(ii)(A) & (B).

For musical compositions that are eligible for preregistration, some portion of the composition must have already been fixed in some tangible medium, such as handwritten musical notation or an audio recording. For a literary work being prepared as a book, the actual writing of the text (even a few handwritten pages) must have commenced. Similarly, a computer program becomes eligible once some of the computer code (source code or object code) has been fixed. Finally, for a collection of advertising or marketing photographs to become eligible for preregistration, at least one of the photographs intended for simultaneous publication must have been taken. 37 C.F.R. § 202.16(b)(2)(ii)(C)-(F).

Because of this "fixation" requirement, there may be a gap in time – perhaps even a substantial gap – between when an author commences development of a creative work and the time when it becomes eligible for preregistration. This is especially true of motion pictures and television programs, which can be in development for years prior to the commencement of shooting (much less commercial release). If an author has a need to protect his or her work from pre-release infringement before it becomes eligible for preregistration, the only way to do so is by a formal registration of then-existing development materials.

How Does Preregistration Work?

A person who wishes to preregister a copyright must use the online application process since no hard copy (paper) form of application exists for preregistration. The current fee for preregistration is $140. No deposit of the work being preregistered is required, but an application for preregistration must include a detailed description of the work at issue.

An application for preregistration of a motion picture, for example, must include (to the extent known at the time of the filing) a description of the work's subject matter, a summary or outline, the director, the primary actors, and the principal location of filming. In the case of a sound recording, the description must include the subject matter of the work, its genre (e.g., classical, pop, musical comedy, soft rock, heavy metal), the title and composer of any musical compositions embodied in the sound recording, the names of the performers featured, and the principal location of the recording. Basically, the Copyright Office wants as much information as possible to facilitate identifying the work, so that there is no ambiguity when the copyright owner initiates copyright enforcement proceedings. 37 C.F.R. § 202.16(c)(6)(i)-(ii).

For an eligible literary work, the description should include the genre of the book (e.g., biography, novel, history) and a brief summary, including a description of the subject matter, plot, primary characters, events, or other key elements. The description of a computer program should include its nature, purpose, and function, the programming language used, the form in which the program is expected to be published, and the identities of the persons involved in its creation. And if the computer program is a videogame, the description also should include the subject matter of the game, its overall object, goal, or purpose, the names of the principal characters (if any), and the general setting and surrounding depicted in the game. 37 C.F.R. § 202.16(c)(6)(iv)-(v).

Finally, an application for preregistration of advertising or marketing photographs should include a description of the subject matter depicted in the photographs (including the particular product, event, public figure, or other item or occurrence which the photograph is intended to advertise or market) and, if possible, the party for whom the photographs were taken, the approximate time period when the photographs were taken; the approximate number of photographs that may be included in the group, any events associated with the photograph (e.g., the Superbowl) and the location depicted in the photographs. 37 C.F.R. § 202.16(c)(6)(vi).

The Copyright Office will conduct a limited review of an application for preregistration in order to determine whether the described work qualifies. If so, the work will then be preregistered, as long as the applicant has provided all of the required information and certified its accuracy. Upon completion of the preregistration process, the Copyright Office will send an official notification email, a certified copy of which an applicant may use to support a complaint for copyright infringement.

Unlike a formal registration, preregistration of a work does not constitute prima facie evidence of the validity of the copyright or of the facts stated in the application. The fact that a work has been preregistered also does not create any presumption that the Copyright Office will register the work upon submission of an application for registration.

What Happens Next?

When the work has been completed, it may be registered as an unpublished work; or when it has been published, it may be registered as a published work. Pursuant to 17 U.S.C. § 408(f), however, in order to preserve the legal benefits of preregistration, a copyright owner is required to submit an application for registration by the earlier of (i) one month after the copyright owner becomes aware of infringement and (ii) three months after first publication. If the copyright owner fails to do this in a timely manner, a court is compelled to dismiss an action for copyright infringement that was based on the preregistration and in which the alleged infringement occurred prior to or within two months after, the first publication of the work.

Conclusion

For creators of commercial works that have a history of pre-release infringement, preregistration can be a relatively inexpensive and useful tool for responding quickly when unauthorized copies of their works appear in the marketplace. But the requirements must be followed carefully, both during the preregistration process and following the initial publication of the work, for preregistration to be an effective enforcement mechanism.

David Halberstadter is a partner in the Entertainment & Media Litigation practice group at Katten Muchin Rosenman LLP and a Deputy General Counsel of the firm.

 
Joomla Templates: from JoomlaShack.com