For a long time, courts were divided over the importance of securing copyright registration prior to bringing an action claiming that a party infringed (that is, trespassed upon) the owner’s copyright in a creative work (film, tv program, literary work, art, etc.).
The Supreme Court resolved the question definitively in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 598 U.S. ___, 139 S. Ct. 881(2019), holding registration (or its denial) by the Copyright Office is required. Moreover, unless an application for registration is filed within three months of publication of the work, the copyright owner will be stripped of the ability to obtain its attorneys’ fees if it prevails, and “statutory” (pre-calculated) damages of up to $150,000 per infringement, regardless of its ability to prove lost profits or the infringer’s profits from the infringement.
But even though the law is now clear, a recent district court decision underscores the importance of correctly securing copyright registration. In Wolf Designs v. Five 18 Designs, 2022 WL 10551564 (D. Ariz. October 18, 2022), a federal court held there were fact issues as to the validity of a group copyright registration (registration for a group of works, in this case, “vehicle wraps, large vinyl graphics or decals applied to car bodies”). The application for that group registration allegedly wrongly stated that the works were “unpublished,” meaning that they had not been offered for sale to third parties. This simple mistake could result in the plaintiff’s forfeiture of attorneys’ fees and statutory damages. Moreover, the other copyright registrations in issue were not published within three months of publication, meaning the sole chance of recovery of attorneys’ fees and statutory damages is on the registration with an alleged mistake in the application.
For these reasons, we strongly encourage owners of valuable copyrightable works to seek experienced copyright counsel when completing copyright applications. Likewise, if a company or individual is on the receiving end of an infringement claim, it is wise to secure counsel with the ability to recognize and exploit flaws in registrations such as those in Wolf Designs.