Is It Necessary To Register A Design Copyright?

A client was asking “is it necessary to fill out all the paperwork to register a design even though the law says you already own it?”

It’s a good question. Technically, under the Copyright Act as amended in 1976, the author (creator) of a work owns the copyright. The 1976 Act states that copyright protection extends to original works that are fixed in a tangible medium of expression. This wording broadens the scope of federal statutory copyright protection from the previous “publication” standard to a “fixation” standard. No further action is necessary. Under previous versions of the law, there were publication requirements to perfect ownership.

Under section 102 of the Act, copyright protection extends to “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”

Until the ’76 statutory revision to U.S. copyright law the Copyright Act of 1909 governed, under which federal copyright protection attached only when those works were 1) published and 2) had a notice of copyright affixed. In addition, state copyright law governed protection for unpublished works creating inconsistencies.

Despite the successful streamlining and efficiency of rights creation and enforcement, some challenges and inconsistencies remained. Most noticeably, there had been spit in the federal courts. Some courts required the certificate to litigate, some courts only required proof that an application had been filed.

Last year, the US Supreme Court ruled that in order for a copyright owner to enforce its rights against infringers, the copyright owner must have a registration certificate for the works that are being infringed.

In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. ___ (2019) (PDF here) decided March 4, 2019, the US Supreme Court resolved this split among courts around the country by holding that the mere filing of a copyright application is not sufficient to allow a copyright owner to file suit – actual approval of a copyright application by the United States Copyright Office is required before suit can be filed. Approval comes only in the form of a Registration Certificate.

Returning to the client’s question, while it is true that the Copyright Act says  one owns the copyright in a work when it is fixed, it is no longer true that one can ignore the registration requirements. Yes, one does not have to do anything formal to own a copyright in a work one creates. However, one cannot enforce those rights without the registration certificate in hand. For all practical purposes, there is no reason not to register the copyright in any design, pattern or other distinctive element you create. The fees are relatively low ($65.00) and completing/filing the form can be done electronically.

A word to the wise, like all areas of Intellectual Property, there are nuances that are easily overlooked by the uninitiated. You should always consult with an experienced copyright lawyer when evaluating any individual situation.

David M. Adler

David M. Adler is an attorney, author, educator, entrepreneur, and founder of a boutique intellectual property law firm. The firm is professionally-recognized as a leader counseling creative professionals, talent, financiers, and entrepreneurs across the interrelated areas of Intellectual Property, Arts, Entertainment & Media, Communications & Technology, and Corporate Law.

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