I’ve been doing a lot of research on copyright issues
lately, and I am seeing people, attorneys included, incorrectly explaining when
statutory damages are available in copyright infringement cases. Namely, I see
a lot of people claim you are only eligible for statutory damages if you
register your copyright within 3 months of publication. This is incorrect, and
it is very important to understand this section of the Copyright Act properly
as it can greatly impact a copyright holder’s decisions in enforcing their
rights.
In brief, when a copyright holder sues someone for infringement they can attempt to pursue actual damages and profit from the infringer, or they can pursue statutory damages—if they qualify to do so. The benefit of being able to pursue statutory damages is that the copyright holder doesn’t have to prove they were harmed, and the damages range from $750 to $30,000 per infringement, with the ability to pursue up to $150,000 for willful infringement. Essentially, this means that pursuing statutory damages in a copyright infringement case is easier and, in some cases, can be more lucrative.
How can a copyright holder be eligible for statutory damages? By having their copyright registered. The text of the statute authorizing statutory damages reads:
In any action under this title, other than an action brought for a violation of the rights of the author under section 106A(a), an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement, or an action instituted under section 411(c), no award of statutory damages or of attorney’s fees, as provided by sections
504 and 505, shall be made for—
(1) any
infringement of copyright in an unpublished work commenced before the effective
date of its registration; or
(2) any
infringement of copyright commenced after first publication of the
work and before the effective date of its registration, unless such
registration is made within three months after the first publication of
the work.[1]
This statue is awkwardly worded and people misread it. Frankly, the first time I read this statute, it took me a good 30 to 45 minutes to understand it. Most people get hung up on the phrase that appears to state a copyright must be registered within 3 months of publication or you are not entitled to seek statutory damages. This only applies to infringements that occur before registration. The three months is a grace period between publication and registration. If a work is published and
someone begins infringing it, then the copyright owner can pursue statutory damages if the work is registered within 3 months of publication. If we remove the phrases that are exceptions to the rule, then we can see that a copyright holder can seek statutory damages for any infringement that occurs after the copyright has been registered:
In any action under this title, other than an action
brought for a violation of the rights of the author under section 106A(a), an
action for infringement of the copyright of a work that has been preregistered
under section 408(f) before the commencement of the infringement and that has
an effective date of registration not later than the earlier of 3 months after
the first publication of the work or 1 month after the copyright owner
has learned of the infringement, or an action instituted under section 411(c), no award of statutory damages or of
attorney’s fees, as provided by sections 504 and 505, shall be made for—
(1) any
infringement of copyright in an unpublished work commenced before the effective
date of its registration; or
(2) any infringement of copyright commenced
after first publication of the work and before the effective date of
its registration, unless such registration is made within three months after
the first publication of the work. [Italics added for
emphasis.]
Paragraph 2 only prevents an owner from seeking statutory
damages for infringement that occurred before the work was registered. If the
owner registers the work, then the owner can pursue statutory damages for any
new infringing uses that occur after registration. Note, however, that an
infringing use that occurred before registration and continues after
registration has been found to be one infringement. Therefore, an owner would not be able to seek
statutory damages.[2]
There is nothing preventing copyright owners from pursuing
statutory damages against people who infringe their work after it has been
registered. Additionally, they may pursue statutory damages against infringements
that occur during the three month period between publication and registration,
if the work is registered within three months of being published.
As one commentator has noted, “Congress made
statutory damages available only for previously registered works to serve … as ‘a
great encouragement for registration.’”[3] This is a reminder for all creators to register their work as
soon as possible. If you haven’t registered your work and you’ve discovered it
being infringed, unfortunately it’s too late to pursue statutory damages.
[1] 17 U.S.C. §412
[2] See Derek Andrew, Inc. v. Poof Apparel Corp.,
528 F.3d 696, 700-01 (9th Cir. 2008)(“Every court to consider the issue has held that
"infringement `commences' for the purposes of § 412 when the first act in a
series of acts constituting continuing infringement occurs.; See also, Mason v. Montgomery Data, Inc., 967 F.2d
135, 144 (5th Cir. 1992)(“We thus
conclude that a plaintiff may not recover an award of statutory damages and
attorney's fees for infringements that commenced after registration if the same
defendant commenced an infringement of the same work prior to registration.”),
and Johnson v. Jones, 149 F.3d 494,
506 (6th Cir. 1998).
[3] Nimmer,
David, Investigating the Hypothetical “Reasonable
Royalty” for Copyright Infringement, 99 B.U.L.Rev. 1, 24. [Internal
citations omitted.]