Many software developers (as well as lawyers) focus entirely upon patent protection for the software code, oftentimes ignoring enormously valuable Copyright registration entirely. For reasons I outline in this post, Federal Copyright law is arguably the single most important legal protection available to you as a creator of software code.
Copyrights explained (again)
As I’ve written in earlier posts, a copyright in a work gives you an exclusive right to do a number of things with the work, such as copy, distribute, display, perform, or make adaptations to that work, among other rights. Copyright law says that no one else can do of these things with your work without your permission.
Copyright protection is actually available for all copyrightable expression embodied in a computer program. Now notice how I said “copyrightable expression”. What this means is that not everything in your software program is going to be protectable—just the original expression.
Yes, you can register a Copyright in your software
To be clear, copyright protection is not available for mere ideas, program logic, algorithms, systems, methods, concepts, etc., etc.
From the practical standpoint, this means that you the author of software code will receive copyright protection from someone copying your segment of code, but not from another programmer who ends up writing different code to accomplish the same result.
The Copyright Act provides a minimum term of copyright protection of the life of the author plus 70 years, however this is only generalizing. Various exceptions to this complex area of intellectual property law apply. Point is, even forgetting the rate of change in the software world, this length of protection is several times that of the 14-20 years you might receive from a patent alone.
But I thought Copyright was automatic?
Sort of. Like with most copyrightable works, copyrightable expression in a computer program becomes protected from the moment it is “fixed” in a tangible medium.
In other words, you as the software author receive protection under copyright law for doing nothing more than simply creating the software program itself and storing it on a hard disk or other tangible storage. Your program is automatically copyrighted from the moment you save your file to disk. Pretty neat, huh?
A common misconception is that if you don’t or can’t put the little “©” on your work, you are not protected. Fortunately, copyright law does not work that way. An author automatically receives copyright protection as soon as her work of expression becomes fixed in a tangible medium.
To further contrast copyright from patent, which has strict time limits for filing an application, a copyright application can be filed at any time during the copyright term.
So how is copyright protection NOT automatic?
In the good ‘ol USA, we have an owner-enforcement regime for intellectual property. In other words, there is no Copyright Police that you can call if you find out someone has taken your work without your permission. It’s up to you to file a lawsuit in federal court and to convince the judge to order the other party to stop the infringement and compensate you for your losses.
Therefore, although a computer program is automatically copyrighted by virtue of its creation, the problem comes in when someone infringes on your copyright.
IMPORTANT: Copyright registration is necessary to file an infringement suit
In Fourth Estate Public Benefit Corp. vs. Wall-Street.com, the United States Supreme Court ruled that you can’t even file your lawsuit against an infringer unless you have registered the copyright with the U.S. Copyright Office. And by “registered”, SCOTUS meant actually approved or rejected by the Copyright Office for registration–not just having applied only!
Therefore, until you register, our highest court has told us that there’s nothing a copyright owner can legally do to stop someone else from infringing the copyright on your software code.
And keep in mind that registration with the Copyright Office is neither a slam dunk nor instantaneous. It could take several months, during which the infringing activity could be costing you dearly. Just to be able to secure registration so that you could file for a preliminary injunction, you would likely have to file for registration on an expedited basis, which costs hundreds of dollars more than just a regular registration.
Another reason for registration: Your damages may not be enough
Next, while you as copyright author can sue an infringer for your damages, it can sometimes be difficult, if not impossible, to gauge your lost profits. This, in turn, can impact the attractiveness of your case to that hot shot litigation firm you’re looking to let loose on the bad guys.
On the other hand, registering your copyright opens the door for you to recover not only your attorney’s fees but, more importantly, statutory damages of up to $150,000 per instance of willful infringement.
We attorneys love statutory damages, since they’re (as the name suggests) right there in the statute and are in most cases much, much easier to prove than actual damages in an infringement lawsuit. This is important because, particularly in the case of startup and early stage companies like our Phoenix law firm represents, demonstrating what your actual damages are when you have little or no sales history, or the profits of the infringer are negligible, can be challenging.
Thanks to Fourth Estate, we know that this award of statutory damages (and attorneys’ fees) in an infringement action cannot be made unless you have already registered your software program before the infringement started or you are able to show you registered within a 90-day window following first publication.
While this may sound like a bit of inside baseball, by registering your copyright you keep open the option of asking the court to award actual or statutory damages during the lawsuit up to and including when a final judgment is handed down. Practically speaking, this means that you can proceed through discovery and all the way to the end of trial up to the time of judgment before you and your legal team would have to choose which damages you prefer.
Again, as a practical matter, if you haven’t registered your copyright in a timely manner, it takes both attorney’s fees and statutory damages out of the equation. This in turn may not make it worthwhile for you (and especially your chosen attorney) to bring a lawsuit against an infringer.
Copyright registration is the cheapest IP insurance you’re likely to find
Apart from the litigation benefits from timely registration of your software, there are also the non-litigation benefits. Timely copyright registration might even help keep you out of Federal court to begin with.
Think about it—if you were an infringer of a registered work and you knew that you were very likely going to be crushed with statutory damages, as well as the author’s attorney’s fees, don’t you think you would have some extra incentive not to end up in a lawsuit? As a copyright owner, having a timely registration of your copyright in your holster gives you a tremendous amount of leverage to force an infringer to negotiate and settle.
On top of all of the reasons above, the actual fees for registration (especially compared with patent or even trademark registration) are almost negligible.
Because the benefits of registering a copyright prior to infringement so overwhelmingly outweigh the costs, we advise nearly all of our software developer clients to register their software programs essentially upon their creation or publication.
Hire an experienced IP Attorney to register your Copyright
Many copyright registrations for traditional expressive works such as books, photographs, musical compositions, are relatively straightforward and easy enough for the layperson to handle themselves. However, particularly given the potential stakes involved, when it comes to registration of computer software, developers are strongly encouraged to work with experienced counsel.
Registering your copyright in computer software (correctly, anyway) can be a bit more involved than just filling out some blanks in a form. For example, certain analysis should be made and procedures followed if your software program is based in part on a prior version.
Protection of valuable trade secrets in your computer software is another especially critical area. It is important to know the options available to receive “special relief” and avoid the usual requirement of depositing identifying portions of the program with the Copyright Office.
BHANDLAW has represented numerous computer software developers and can work with you and your team on:
- Determining whether your software program is based on a prior work or not, in which case certain disclosures must be made.
- Assessing if your work is or was a “work made for hire” and actually owned by someone else.
- Advising on ways to preserve your business’ trade secrets by depositing less than all of the source code for the software with the Copyright Office.
- Assisting authors or businesses planning to file multiple applications for similar programs.
Ben Bhandhusavee is the Managing Attorney for BHANDLAW, PLLC, a Phoenix business and technology law firm working with start-up companies, creative intellectual property, Internet and digital media matters, and complex corporate M&A and technology transactions. Ben can be reached at (602) 222-5542 or by e-mail at firstname.lastname@example.org