It’s well known that copyright protection is available to authors of creative works even if a registration at the U.S. copyright office has not been secured. IP practitioners also know that you can always file for a copyright registration at any time, and that statutory damages under the Copyright Act are not available unless a copyright registration has been secured.
So what happens to your right to statutory damages and attorney’s fees if your copyright registration occurs after an infringement has commenced? That’s the issue that the Ninth Circuit faced in the Derek Andrew v. Poof Apparel Case, CV-05-01136JPD (decided June 11, 2008). Basically, you are out of luck if your copyright registration takes place after the infringement has commenced and is ongoing. Because of the delay, you lose the right to statutory damages, even for the acts of infringement that occurred after the registration, if they are viewed as continuations of the initial infringement. You can still get actual damages, but that may be more difficult to prove in court.
Copyright registrations are inexpensive and easy to obtain. It only costs $45 to file, and $35 if you file electronically at http://www.copyright.gov/docs/fees.html . Unlike trademark filings, there is little, if any, review by the Copyright Office. If you file your registration before an act of infringement commences, or within three months of the first publication of your creative work, statutory damages and attorney’s fees are available. You also have the ability to file DMCA notices with ISPs to quickly take down infringing content if your copyrighted content appears online.
Brandholders often think of brand abuse as a trademark issue, and tend to overlook the potential remedies available under the Copyright Act. Incorporating regular copyright registrations as part of your overall brand protection strategy may be one way of expanding your arsenal of weapons to deploy against abusers of your brand.