Wednesday, April 12, 2006

Scope of Registrations

A recent opinion from the Central District of California, Express, LLC v. Fetish Group, Inc., 2006 WL 802294 (C.D. Cal. March 24, 2006), addressed an interesting question: understanding that copyright is automatic and that the ultimate question of copyrightability and the scope of protection is up to the court (or jury), for purposes of the Section 410(c) presumption of validity, is the presumptive effect limited by the statements in the application or by the deposit? The case involved lace and embroidery design for a camisole. At issue was whether the registration covered all protectible aspects of the design in keeping with an application that originally said "garment with lace and embroidery design," or instead whether it covered a narrower scope in keeping with the registration as issued which eliminated "garment with." (There were other changes too).

The court held that "it is the registration that sets the scope for the copyright protection," by which is meant presumptive validity. Plaintiff could still prove up its larger claim but had to do so without the benefit of Section 410(c). A related issue is whether the registration covers material not deposited, as in software, where less than the entirety of the work is deposited to protect trade secrets. My view, which is held I believe by some but not all in the Copyright Office, is that the registration only covers material deposited; after all, the Office cannot examine material not presented to it. Both issues demonstrate attention should be paid to the registration process.


Anonymous said...

Since you mention software, I've been pondering a question that I'd like to hear your opinion on.

In the context of open source software, the development cycle is often completely in the open. I.e., the source code is made continuously available to the public throughout the development process. Now this source code is protected by copyright and certain rights are usually granted to the end user via an open source license in exchange for certain guarantees about what the user will do with that source.

When an end user does something with the source that is in violation of the license, copyright law is the usual recourse of the copyright holder. Now, in order to be entitled to statutory damages, the copyright holder must have register their work. So in an environment of constantly changing publicly available code, what should the authors register with the Registrar to ensure that statutory damages are an available remedy?

William Patry said...

I think most of what you are asking about is covered in this June posting:

Anonymous said...

Thanks for the quick response. I'll understand if you don't say anything else until after passover (or ever, really).

I read and think I appreciate your prior post, so correct me if I'm wrong. It seems to me that if every time new material which constitutes a later version of an existing work is created and published, in order to have a statutory damages and attorneys' fees remedy available, it must be registered, since absent subsequent registrations, the initial registration is "forward looking" and fails to satisfy 411(a) . I'd say that requirement doesn't really fit the model of open source development, at all. It would require daily (if not hourly) registration on the part of the copyright holder.

William Patry said...

Dear Critical Observer:

My remarks are based on nothing so formal, but rather conversations with friends within the Office. As far as I know there is no official Office position, and I am not, moreover, such a fan of larger interpretive theories of anything, Dworkin be damned.