This Frequently Asked Question (FAQ) memo addresses questions, problematic areas, and difficult issues often encountered in registering copyrights in computer software and computer programs.  This document is authored by the Intellectual Property Group of Morris, Manning & Martin, LLP (www.mmmlaw.com), and is intended to assist clients and entrepreneurs in identifying and collecting materials necessary for registering software copyrights.

 

1.  Why should I register the copyright in my works of authorship?

Answer:  Although copyright protection extends automatically to “original works of authorship” that are fixed in a tangible medium, registering those works of authorship with the U.S. Copyright Office is a relatively straightforward process that provides substantial benefits.  First, the copyright registration is a legal document that reflects ownership of the work identified in the registration.  Second, a registration is required before any lawsuit for infringement can be brought in federal court.  But perhaps the most compelling reason is that registration allows the copyright owner to obtain statutory damages and attorneys’ fees if a successful infringement suit is brought.  Statutory damages are a monetary award that can be obtained without having to prove actual damages from the infringement.  Also, the ability to obtain attorneys’ fees can have a huge impact on the value of the copyright and on litigation strategy—if you can win in court and the damages are nominal, the threat of attorneys’ fees imposed on the infringing party can be a tremendous weapon.

 

2.  What is required for a work* to be considered registrable?

Answer:  As mentioned above, copyright protection extends to “original works of authorship” that are fixed in a tangible medium.  To meet this standard, a work must include some “modicum of creativity.”  Generally, most computer programs are considered original “enough” to be registrable.  In fact, the threshold for copyright protection is relatively low, and even a short email or letter is eligible, in theory, for copyright protection.

In the computer program context, this question typically arises when a new version of a program is released.  If that new version includes significant revisions or additional material, then it is likely eligible for registration as a “derivative work” of the original version.  If, however, the new version simply includes minor tweaks or “bug fixes” as compared to a prior version, then that new version is likely not eligible for separate registration.  Keep in mind, however, that if prior versions of a work have not yet been registered, the new version can generally be registered as a new work.

 

3.  What is a “derivative work”?

Answer:  A “derivative work” is a work based on one or more preexisting works, such as a translation, musical arrangement, motion picture version of a book, abridgement, etc., or any other form in which a work may be recast, transformed, or adapted.  In the software context, derivative works typically comprise new versions or releases of an existing computer program.

Importantly, the U.S. Copyright Office takes the position that a registration for a derivative work only extends to the material that is new or different in the work.  Thus, according to the Copyright Office, each version of a computer program that contains new, copyrightable authorship must be registered separately.  Some courts disagree with this stance, however, as explained immediately below.

 

4.  Which version of a work should I register?

Answer:  It is considered a “best practice” to register the original version of a work, and every major release thereafter.  Minor releases or updates typically do not need to be registered.  As noted above, the U.S. Copyright Office takes the position that a registration for a derivative work only extends to the material that is new or different in the work, and thus the most conservative approach is to register the original version and every significant release with additional content thereafter.

In contrast to the U.S. Copyright Office’s position, many courts hold that a registration of a derivative work, without registration of the original, is sufficient to protect both the underlying work (the original) and the derivative, assuming that both works are owned by the same entity.  Specifically, courts have held that a copyright registrant can sue for misappropriation of an original version of a computer program or a derivative version if the registrant holds only a registration for the derivative work.  Accordingly, if it is impossible or impractical to register an original version or every release of a given computer program, a later registration of a specific version that has been misappropriated, copied, or stolen may provide sufficient protection and allow initiation of a lawsuit.

 

5.  Once a copyright registration application has been filed, how long does it typically take for the U.S. Copyright Office to issue the registration?

Answer:  The average time period for issuance of copyright registrations in the computer program context is 4–6 months.  However, in some circumstances, registration applications may remain pending at the Copyright Office for two (2) years or more before a registration is issued.

 

6.  Is there a way to receive a copyright registration quickly?

Answer:  Yes.  Under the “special handling” provisions of the U.S. Copyright Office, a copyright registration will typically be issued 1–3 weeks after filing the corresponding application.

However, the special handling rules are only available in particular circumstances, namely:  (i) if there is pending or prospective litigation corresponding to the work to be registered, (ii) if the work is related to customs matters, or (iii) if there are contract or publishing deadlines that necessitate the expedited issuance of a registration certificate.

Also, the special handling provisions require an additional “expediting” fee (in addition to the basic filing fee) of >$700.

 

7.  Who should be named as an author of the work?

Answer:  If the work was created entirely by an individual, then the individual is the author.  But, if the work was created by employees acting within the scope of their employment, then the employer is the sole author.

If, however, some portions of the work were created by third parties (e.g., subcontractors or outside developers, or even clients of an employer), then each of those parties is likely a co-author of the work, and each may have ownership interests in the work (depending upon other agreements).  For each author, you must provide the corporate name, business address, and state of incorporation or formation of each entity (or person).

If there are third party authors for a given work, then it is important to obtain assignments of rights in the work from those authors, if assignments have not been previously obtained.

 

8.  What should be submitted as “deposit material” for the computer program?

Answer:  For software, this is often the trickiest part of any copyright registration.  To complete the registration application, “deposit material” must be provided to the Copyright Office, which essentially comprises a printed copy (or .pdf file) of the program source code.  However, given that many software programs span hundreds or even thousands of pages, the Copyright Office has specific rules regarding what should be submitted (summarized below).  Also, if the code includes any “trade secret” or confidential materials, those materials can be (and should be) redacted (blacked out).

a)  Programs with NO trade secrets:  If there are NO trade secret materials in the code, then the first 25 and last 25 pages of source code from the computer program should be submitted, together with the page containing the copyright notice (if any).  If the program is less than 50 pages in length, the entire source code should be submitted.

For revised programs (i.e., derivative works), if the revisions are contained throughout the program, then the deposit requirements as stated above continue to apply.  If, however, the revisions are not contained in the first 25 and last 25 pages of the code, then any 50 pages representative of the revised material may be submitted (together with the page containing the copyright notice, if any).

b)  Programs with trade secrets:  If there ARE trade secret materials in the code, then a cover letter should be included with the deposit material indicating that the work contains trade secrets, along with the page containing the copyright notice (if any).  As to the code itself, one of the following should be submitted:  the first and last 25 pages of source code with portions containing trade secrets blacked out, OR the first and last 10 pages of source code alone with no portions blacked out, OR the first and last 25 pages of object code plus any 10 or more consecutive pages of source code with no blacked out portions, OR if the program is less than 50 pages in length, the entire source code with trade secrets blacked out.

For revised programs, if the revisions are contained throughout the program, then the deposit requirements as stated above continue to apply.  If, however, the revisions are not contained in the first 25 and last 25 pages of the code, then either of the following can be submitted:  20 pages of source code containing the revisions with no blacked out portions, OR any 50 pages of source code containing the revisions with some portions blacked out.

Please note that whenever portions of the code are blacked out, the following requirements must be met:  the blacked out portions must be proportionally less than the material remaining; and the visible portion must represent an appreciable amount of original computer code.

Regardless of whether the work does or does not include trade secrets, if the program includes many discrete software “modules”, then it is helpful (but not required) to submit a “table of contents” type listing that lists each module in the code.

If you are unable or unwilling to submit source code, then you must state in writing that the work as deposited in object code contains copyrightable authorship.  The Copyright Office will send a letter stating that registration has been made under its rule of doubt and warning that it has not determined the existence of copyrightable authorship.  Please note that this approach is not recommended.

Satisfying the deposit requirements can be tricky.  If you still have questions after reading the above, then please contact an IP attorney at Morris, Manning & Martin.

 

9.  How do I know if a work has been “published”?

Answer:  Note that “publication” in the copyright sense is defined as “the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending.”  Publication may also be defined as “the offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display.”

Typically, software is not considered to be “published,” given that most source code associated with a program is kept out of public view.  However, if software source code is freely disseminated to the public (or purchasers of the program) without any restrictions on its use or distribution, then the program may be “published.”

If source code is provided to customers or others, but is subject to a non-disclosure provision or other limitation of its use, it may be considered a “limited publication,” and thus likely not “published” under the copyright laws.  This can be a gray area, however, and should be examined closely.

 

10.  What if the work includes material that should be excluded from the copyright claim, such as open source software or third party software products?

Answer:  These materials should be enumerated on the copyright application as excluded from the copyright claim.  These materials typically do not have to be specifically identified, but can be generally listed, such as “open source code,” or “preexisting text,” or “audiovisual materials,” or the like.

 

11.  What if the software to be registered includes trade secrets?

Answer:  See question 8 above relating to deposit material for software.

 

12.  What if a non-software product to be registered includes trade secrets?

Answer:  In certain circumstances, a work may be registered under the Copyright Office’s “special relief” provisions.  For example, it may be possible to register user manuals provided with computer program code that have trade secrets by submitting redacted versions of the user manuals with a letter requesting special relief (and explaining the circumstances why special relief is needed).  The Copyright Office will address these requests on a case-by-case basis.

 

13.  Does copyright protection of a computer program extend to screen displays?

Answer:  This is a somewhat unsettled area of the law.  The Copyright Office takes the position that registration of a computer program also extends protection to screens that are rendered by execution of the program.  Some courts, however, do not agree with this provision.  Please contact an MMM IP attorney for more information.

 

14.  Should I do anything internally with respect to a registered computer program?

Answer:  Yes.  It is a “best practice” to place a version of a computer program that has been registered in escrow so that it is safely maintained if a lawsuit ever arises.  Short of storing a copy of the program in escrow, it is recommended to store a copy of the program in a specific, easily-identifiable database folder to enable later retrieval.

Further, it is recommended that all computer programs (and any copyrightable works) include an appropriate copyright notice.  Such a notice should read:

 

Copyright © [year of creation + years of modification] [Ownership entity].   All rights reserved.

* * * * *

For more information relating to registration of computer programs, please see U.S. Copyright Office Circular 61, available here.  For more information regarding any of the above-listed questions, or any others relating to patents or intellectual property, please contact one of the following attorneys in the MMM IP Group:

John R. Harris – 404-504-7720 – jharris@mmmlaw.com

Daniel E. Sineway – 404-364-7421 – dsineway@mmmlaw.com