Copyright Deposits and Trade Secret Protection

Registration (or attempted registration) with the Copyright Office is mandatory in order for infringement actions to be brought over "United States works." (Section 411(a)). There are three elements to registration: a completed application, the registration fee, and a deposit copy of the work for which protection is claimed. The deposit requirements are set out in Section 408 and in Copyright Office regulations. According to Section 704(a), all deposit copies are the property of the government. Section 705(b) mandates that the Copyright Office make deposit copies available for inspection. Section 706(b) addresses a different question, the Copyright Office making copies of deposits for members of the public requesting them. The section states that such copies may be made only under the conditions specified by the Copyright Office. Circular No. 6 spells out those conditions. There are three: (1) written authorization is obtained by the copyright owner; (2) a Litigation Statement form is filled out; (3) there is a court order.

Sometimes copyrighted works contain trade secrets or confidential information. Out of concern with making such material available for public disclosure, particularly in software, the Copyright Office has issued regulations that permit the deposit of less than all of the work. (In the case of secure tests, there is no deposit left behind). What if the claimant doesn't take advantage of this redaction option? Is trade secret protection lost?

Trade secret protection is purely a matter of state law, and nothing in the Copyright Act deals with the question. There is not a lot of case law on point. In Computer Corp. v. Serena Software Int'l, Inc., 77 F. Supp.2d 816, 819-820 (E.D. Mich. 1999), the court, in denying defendant's motion for summary judgment, let the issue go to the jury, but seemed of the view protection was not lost. Other courts have come out the other way. See e.g. Tedder Boat Ramp Systems, Inc. v. Hillsborough County, Florida, 54 F. Supp.2d 1300 (M.D. Fla. 1999); Cinebase Software, Inc. v. Media Guaranty Trust, Inc., 1998 U.S. Dist. LEXIS 15007, at *29 (N.D. Cal. Sept. 24, 1998)(but preserving trade secrets for redacted material); Phillips v. Avis, Inc., 1996 U.S. Dist. LEXIS 7342, at *7 (N.D. Ill. May 29, 1996)(New York law).