This article addresses unique issues related to registration of copyrights for computer programs. Although a computer program is automatically copyrighted by virtue of its creation, there are a number of advantages to registering the copyright with the U.S. Copyright Office. For example, an application for copyright registration must be filed before a suit for copyright infringement may be brought. If a suit is instituted, registration is a prerequisite to recovering attorneys' fees and statutory damages of up to $30,000 for non-willful infringement and up to $150,000 for willful infringement (i.e., where the infringer either knew or recklessly disregarded that it was infringing). The option of requesting statutory damages is important because it is often difficult and expensive to prove actual damages in an infringement suit.
Copyright registration for computer programs presents several traps for the unwary. For example, certain procedures must be followed when the computer program is based in part on a previous version. Additionally, to protect trade secrets in the program, it is important to know the options available to obtain "special relief" from the normal requirement to deposit "identifying portions" of the program with the Copyright Office.
- COPYRIGHT PROTECTION FOR COMPUTER PROGRAMS
The statement that a work is "copyrighted" is often used to mean that a copyright registration on the work has been obtained from the U.S. Copyright Office. This terminology, while commonly used, is technically incorrect. A "copyrighted" work more appropriately means that U.S. copyright law protects the work.
Copyright protection is available for all copyrightable expression embodied in a computer program. Copyright protection is not available for ideas, program logic, algorithms, systems, methods, concepts, or layouts. This means that an author of a computer program has copyright protection from others duplicating a segment of code, but not from others writing different code to achieve the same or similar result.
In the United States, copyrightable expression in a computer program becomes protected from the moment it is "fixed in a tangible medium." This means that, without the author doing any more than simply creating the computer program and storing it on a hard disk or floppy disk, the program is protected by the copyright law. In other words, a computer program is automatically copyrighted from the moment the programmer saves the file to disk.
- TIMING AND BENEFITS OF REGISTERING COPYRIGHTS
In stark contrast to the strict time limits for filing a U.S. patent application, a copyright application can be filed at any time during the copyright term. The Copyright Act provides a minimum term of 95 years from the date of publication, and if a person is named as the author in the application, the term extends for the life of the author (or last surviving author) plus 70 years
Despite the ability to file a copyright application many years after the initial publication, this does not mean that copyright registration should not be done promptly. There are significant advantages if the application is filed with reasonable promptness. One reason is that copyright registration is necessary to file an infringement suit. Because the Copyright Act provides a three-year statute of limitations for civil actions, the infringement action must be filed in court within three years after the claim accrued.
Another reason to promptly obtain a copyright registration is that an award of statutory damages and attorneys' fees in an infringement action cannot normally be made unless the author has registered the program before the infringement began. However, if the infringement begins shortly after the program was first published, a three-month window from the date of first publication is afforded for registration of the copyright claim in order for the author to be entitled in an infringement action to statutory damages and attorney's fees. Thus, the guiding principle is to register a program while it is unpublished or within three months of publication.
By registering the copyright, the copyright owner retains the option of requesting the court to award actual or statutory damages at any time during the course of litigation until a final judgment is rendered. The copyright owner can proceed through discovery and all the way to the end of trial up to the time of judgment before having to elect actual or statutory damages. This is important because in many situations proving actual damages may be difficult, particularly for a start-up company with little or no sales history, or the profits of the infringer may be nominal and may not justify the legal costs involved.
A final benefit to promptly obtaining a copyright registration is that the registration, if done within five years following publication of the program, constitutes prima facie evidence of the validity of the copyright and the facts stated in the certificate, such as authorship, ownership and date of publication. Thus, if infringement occurs, the copyright owner, armed with the presumption of validity and the threat of statutory damages and attorneys' fees, will be in a strong position to stop the infringement without formal litigation by, for example, sending the infringer a cease and desist letter. If that fails and litigation is necessary, the copyright owner will be well suited to obtain an appropriate remedy, such as an injunction, due to the presumption of validity. Because the benefits of registering a copyright in advance of infringement are so great, and because the cost of registering a copyright is so small (e.g., only a $30 filing fee), it is highly recommended that copyright owners register the computer program promptly upon its creation or publication.
Authors of all copyrightable works can obtain copyright registrations without representation by counsel. The U.S. Copyright Office maintains an extensive collection of circulars and forms to help authors register their works. While many copyright registrations are relatively easy and straight forward, in the area of computer programs authors are encouraged to seek advice of competent counsel, at least on the first one or two registrations, because of the danger that an improperly drafted registration application may be ineffective or fail to preserve the trade secrets in the computer program.
Counsel can provide computer program authors valuable assistance in several ways. First, counsel can advise authors on ways to preserve trade secrets in the program by depositing less than all of the source code for the program with the Copyright Office. Counsel can also be helpful in determining whether the program is based on a prior work in which case certain disclosures must be made, and in determining whether it a "work for hire." Consultation with counsel is particularly important for computer program authors who plan to file multiple applications for similar programs. Legal costs for the first copyright registration do not have to be repeated for each subsequent registration application. Computer program authors will often find it helpful to work with counsel on the first one or two registration applications. Then, after being educated on the process, they are able to proceed with filing subsequent registration applications with little or no assistance of counsel.
The next question is how to register the copyright in a computer program and thereby take advantage of the benefits of copyright registration. That question will now be addressed.
- REGISTRATION PROCEDURES
The U.S. Copyright Office accepts applications to register a computer program on either Form TX or Form PA. Form TX should be normally used. However, if the audiovisual content of the program predominates (such as in a computer game), applicants should use Form PA. Registration is accomplished by completing and sending the form, along with the $30 registration fee and the appropriate deposit of "identifying material," to the Copyright Office.
The Copyright Office does not acknowledge receipt of an application as a matter of course. Therefore, to confirm that the Copyright Office has received an application, the application should be sent by registered or certified mail with a request for return receipt from the mail carrier. The copyright registration process normally takes six months to one year after receipt of the application. Within that period of time, the applicant should receive (i) a Certificate of Registration, indicating that the program has been registered, or (ii) a letter or telephone call asking for additional information, or (iii) a letter refusing registration and explaining the basis for the refusal. The copyright registration is effective on the date that the application itself, the fee and the deposit material are received in the Copyright Office. This means that the registration will bear the date that these required elements were received, regardless of the length of time the Copyright Office takes to process the application and mail the Certificate of Registration.
Because incorrect registrations run the risk that copyright protection may be lost, copyright owners should pay particular attention to the information provided in the copyright application form. This is especially important in four areas: (i) the "author" and "nature of authorship" in Section 2 of the form, (ii) the year of creation and first publication in Section 3 of the form, (iii) the "derivative work" information in Section 6 of the form, and (iv) the deposit requirement.
- Author and Nature of Authorship
With respect to the "author" portion in Section 2 of the form, the general rule is that the author is the party who actually created the computer program. If the program is a "work made for hire," then the author of the program is the employer, not the employee. Computer programs created by regular employees in the course of their employment are ordinarily presumed to be "works for hire" that are owned by their employers. Absent an agreement to the contrary, the employer owns both the work and the accompanying copyright.
Unlike employees, third party programmers and consultants are ordinarily presumed to own the copyrights in the programs that they create, even if another party paid for the development. A program created by a free-lance programmer may still be a work for hire, however, if there is a written agreement to that effect in which case the party commissioning the work owns the copyright. It is therefore important for companies who engage consultants to create programs to ensure that a written agreement is signed by all parties that expressly provides that the program is a work for hire and is owned by the company.
In completing the "nature of authorship" portion in Section 2 of the form, the applicant should use statements that the Copyright Office has previously found acceptable, such as "computer program," "entire text of computer program," "entire program code," "text of user's manual and computer program." Since copyright protection does not extend to ideas, functional concepts, facts or elements of the work which are incidental to such matters, the Copyright Office will reject copyright claims which express, refer to or describe the program's features or functions, or which refer to designs, physical form, hardware or algorithms.
- Year of Creation and Publication
Section 3 of the form requires the applicant to state the year in which the computer program was created. A work is considered created when it is fixed in a tangible medium for the first time by or under the authority of the author. For example, writing the final source code of a program and saving it into computer memory would be considered fixation of the program at that time. The date of creation must conform to the dates appearing on the deposit material. Registration will not be enforceable if the deposit copy represents a later version of the unpublished program for which enforcement is sought.
Applicants should pay particular attention to the year of creation when filing a copyright application for a computer program that has been prepared in different versions. Each version of a published or registered program constitutes a different "work" for which a separate application should be made with the year of creation applying to the particular version being registered. However, when a single version of a computer program which is based in part on previously unpublished and unregistered versions is being registered, only the latest year of creation is required (i.e., the latest year in which copyrightable material was added to the version being registered). Such a program is considered a "new work" for purposes of registration.
In the case of a "published" computer program, the applicant is required to state the date and nation of first publication. A common mistake is to treat published and unpublished computer programs, both of which can be registered, the same way. If a program is erroneously registered as unpublished, the Copyright Office generally will not allow an amended or supplementary registration, but will require an entirely new application. The applicant should therefore determine first if the program has been published and then, only if published, determine the date and nation of publication. "Publication" is generally defined by the Copyright Act as distributing or offering to distribute the work to the public or to a group of persons for further distribution, public performance or public display. While the posting of a computing program on a website and permitting it to be downloaded with or without a fee would certainly constitute publication, distribution of a computer program to a limited class and for a limited purpose (e.g., distribution to a few customers for internal use only under burden of confidentiality) would probably not be enough to render the program as "published."
If the program is "unpublished," the applicant should leave the date and nation of publication portion of Section 3 blank. The applicant should make sure that the deposit materials do not suggest that publication information was omitted, such as stating a year in the copyright notice without an accompanying statement that the work is "unpublished.' To avoid any confusion about publication, the copyright notice for an unpublished program should expressly state that the program is an "unpublished" work.
If the program is "published," the applicant should, if possible, give the exact day, month and year of publication and identify the nation where such publication occurred. Where the exact date of publication cannot be determined, the date may be qualified by words such as "approximately," "not later than," "not before" or similar words.
The Copyright Act also allows but does not require registration of a published version of a previously unpublished registered work. Certainly, if substantial new content is added to a previously unpublished computer program for which a registration has been obtained, the new version should be registered as a derivative work.
- Derivative Works
Most computer programs are produced in versions that are based in part on prior versions and usually include at least some previously written code. Unless the program contains either (i) a relatively small and insubstantial amount of previously published code, or (ii) preexisting code which has never been published or registered, the program will be considered a "derivative work," rather than an original work, and must be identified in Section 6 of the form. A program will be deemed a derivative program when the previously published or registered code is substantial or, in relation to the program as a whole, represents a significant portion of the program. If the program is a derivative work, both the "preexisting material" and the "material added" should be identified in Section 6 of the form using the same types of general descriptions that are used to describe the "nature of authorship" of the program as set forth above.
The copyright in a derivative computer program extends only to the additions, changes or other new materials that are included in the program for the first time, and does not imply any exclusive rights in preexisting material taken from prior versions. This presents a trap for the unwary software company that, for example, files an application for a version of a program that is based in part on prior published versions of the program on the belief that the registration will cover in the entire program. If the software company thereafter brings an infringement suit, it may be surprised to learn that the registration extends only to the new material included in the most recent version, as distinguished from the preexisting material. This example illustrates the importance of maintaining a repository of the source code for all versions of the program and filing separate applications for each version.
- Deposit Requirements
Where a computer program contains trade secrets, applicants can take advantage of special deposit rules and avoid depositing the entire source code with Copyright Office where deposits are available to the public. The applicant should include a cover letter stating that the program contains trade secrets, along with the page containing the copyright notice, if any, plus one of the following special deposits, as applicable:
- If the printed source code is less than 50 pages long, all of it must be submitted, with the trade secrets blocked out. Such blocked out portions, however, cannot exceed half of the total number of lines of code.
- If the total number of pages of source code is 50 pages or more, the applicant can take advantage of three less burdensome deposit requirements: (i) the first 10 and last 10 pages of source code, free of any deletions, as the entire deposit; (ii) the first 25 and last 25 pages of source code with sensitive lines blocked out, but the total lines blocked out must be proportionally less than the remaining lines; or (iii) the first 25 and last 25 pages of object code and any 10 consecutive pages of source code (with no blocked out portions).
Where the application is for a derivative computer program containing trade secrets, the deposit requirements are as follows:
- If the revisions are present in the first 25 and last 25 pages, the applicant can use, as appropriate, any one the options discussed above for entirely new computer programs.
- If the revisions are not present in the first 25 and last 25 pages, the applicant can deposit either: (i) 20 pages of source code containing the revisions with no blocked out portions; or (ii) any 50 pages of source code containing the revisions with sensitive portions blocked out, but again the total lines blocked out must be proportionally less than the remaining lines.