Legalities 39: Important New Rules for Copyright Registration

Many artists do not routinely register copyright in their works, believing that registration is not necessary because under U.S. law, copyright protection is automatic as soon as you create your work. However, you must have a registration in order to enforce your copyright against unauthorized copiers. And very soon after you post your work online, whether on your own website or social media like Instagram, it will be copied – at least by Google Images, and likely by others. Two new developments will have an important impact on your ability to register and protect your copyrights.

1. You Must Have a Registration Certificate to Sue for Infringement

In some jurisdictions, including the Ninth Circuit (which covers California and several other western states), the courts allowed copyright owners to sue for infringement as soon as they filed an application to register their copyrights. That meant that when you discovered an infringement, you could quickly file for registration, and then use the threat of a lawsuit as bargaining power to stop the infringement. This made sense, because once a copyright registration certificate was issued, it had an effective date retroactive to the date you filed the application. Moreover, it can take a long time to receive your certificate. Currently, the Copyright Office takes an average of 6 months, but often 10 months or more, to process registration applications. If a copyright examiner has a question or objection to the application, that can add from several months to over a year to the process.

On March 4, 2019, the Supreme Court decided that copyright owners may not file infringement lawsuits until the Copyright Office has issued a registration certificate for the infringed work. The Supreme Court’s decision is a major set-back for copyright owners. If you have not already registered your work when you discover an infringement, you must now wait several months before you can file a lawsuit, or in the alternative, pay a large extra fee (currently, $800) to receive expedited processing of an application. Expedited processing can still take several weeks.

Why does this matter for graphic artists?

If you are an independent contractor, and you are licensing to your clients only limited usage rights to your work product, then you are retaining your copyrights, and it is your responsibility to protect them. (See Legalities # 1 for a discussion of copyrights and licensing.) Unfortunately, this sometimes means you need to protect your copyrights from your own clients, who may use your works beyond the scope of the license you gave them. If you don’t already have a registration certificate, when you discover that someone has copied your work without your permission, under the new rule it will already be too late to effectively stop the infringement. You or your lawyer can send a cease and desist demand, but as soon as the infringer determines that you do not have a registration certificate, they will feel emboldened to ignore it. That’s because they will know that you cannot take legal action against them for several months (or, if you pay for expedited processing, several weeks). This severely weakens your bargaining power both to get the infringer to stop using your work and to get them to pay you any monetary compensation.

So now more than ever, it is critically important to establish and implement a regular practice of filing appropriate proactive copyright applications. But if you need to register lots of “unpublished works,” it will be harder to do so.

2. New Rules for Registering Collections of Unpublished Works

It used to be easy to register a large number of artworks together under one registration for one fee, so long as they were all “unpublished.” Figuring out what was published versus unpublished is not so easy, especially for online works. Now it is harder to register many works together, even if you are sure they are all unpublished.

How do you know if a work is published or unpublished?

Under the Copyright statute, there are two definitions of “published.” First, a work has been “published” if copies of it have been distributed to the public with your authorization. Unauthorized copying does not count. Merely displaying your artwork to the public, such as in a gallery, also does not count.

Second, a work is “published” if it is distributed to a “group of persons” that you authorize to distribute it further, or to publicly display your work.

For online works, it is often difficult to make the distinction between what has been “published” or “unpublished,” and the Copyright Office will not help you decide. However, the general consensus among copyright lawyers is that if you show your work online, for example in a portfolio on your own website or another site, without offering viewers an authorized way to copy or download the artwork, that will qualify as an unpublished “display” of the work. On the other hand, if you are selling downloads of digital image files from your site, that would be considered a distribution of copies, and those works would be “published.” This makes sense under the first definition of “published.”

But what about the second definition? What if you post your work on a social media site? The terms of use for most social media sites state that you to grant them a license to copy your posted content for their own purposes, and sometimes, that their other users can repost your content. Although no court has yet been asked to decide this issue, this could mean work shown on such sites would be considered “published” because you are giving your work to them with the understanding that they will enable multiple public displays of your work. The question may come down to whether a social media website qualifies as a “group of persons” under the second statutory definition. In light of all this uncertainty, the best practice would be to apply for registration before you post your artworks online, because then you can be sure they are unpublished, and you can safely register them together as a group of unpublished works.

If you are displaying work online that has already been published elsewhere, for example as physical prints, or downloadable materials distributed by your client, those images are “published,” and cannot be part of a group registration of unpublished works.

Limits of the new group registration

Beginning on March 15, 2019, the Copyright Office changed its rules for registering groups of unpublished works. Group registrations for unpublished works are nowlimited to 10 works  (previously an unlimited number of unpublished works could be registered together under one registration certificate.). A new online application form called “Group of Unpublished Works” must be used. The only exceptions will be for group registration of photographs, which will continue to be accepted for up to 750 photographs using the special form for photographers,  and certain groups of musical works, which can have 20 works per registration.

In addition to the requirement that all of the works must be unpublished, there are several more limitations:

Compilations cannot be included. A “compilation” is a combination of several different elements into one overall work. This would include works featuring photographs or other imagery and typography, such as printed advertisements, brochures, movie posters, album covers, and web pages. Unfortunately for graphic designers, this means a lot of graphic design will not qualify for group registration. (See Legalities # 39 for an explanation of “compilation authorship” and how to register graphic artwork in that category.) Stand-alone illustrations and logos (provided they are not pure typographic designs) are eligible for group registration.

– The works must be the same type of work. This is another big change. Under the previous rules for registering a group of unpublished works, the only requirement was that the works were “related” in some fashion, for example, you could include all elements of a comprehensive marketing campaign, including print and radio advertisements, web page designs, logos and animation, together under one application. Now you cannot put these different kinds of works (visual, audio, audio-visual) in one group registration.

– Each work has to be created by the same artist(s). If you collaborate with another artist to create some of the works, those joint works cannot be included in the same group registration as works you create on your own. This is a question of joint authorship, so be careful here. Merely working with a client or an art director does not mean those people contributed copyrightable expression to your work product. Ideas for content and instructions for revisions are not considered copyrightable and will not make those people joint authors and thus joint owners of your copyright.

– The copyright claimant(s) must be the same as the artist(s). The “copyright claimant” on a registration form is the person who is claiming to own copyright in the work. This is a tricky one, because in some circumstances a “copyright claimant” can be someone who owns an exclusive license to use your work in certain ways, rather than having been assigned your entire copyright. For example, your contract may say that your client will be the only one who can reproduce your work for a certain period of time. Technically, that would mean your client owns a registrable copyright interest in the work as your exclusive licensee. However, for group registration purposes, the client cannot be listed as a copyright claimant, and it is okay to list only yourself as the artist and claimant.

Works made for hire may only be registered together. If you are a design studio and you want to register unpublished works that were created by your employees and your independent contractors, you can combine these two categories of works only if the independent contractors signed valid work-made-for-hire contracts, and your studio will be the author and the copyright claimant under the work made for hire category of authorship. To be valid, a work made for hire contract with an independent contractor must include the magic words “work made for hire,” must be signed by both parties, and must fall within certain types of works listed in the statute. If your independent contractors did not sign an explicit work-made-for-hire contract, then you need to have a written assignment of copyright, and their works cannot be combined in the same group application as works created by your employees.

What does this mean for professional graphic designers?

Unfortunately, it is now more difficult to register preliminary graphic works and alternate designs that you create for client projects, while it is more important than ever to do so. Suppose you are working on branding design for your client’s 10 product lines. If you create 3 initial logo design concepts for each brand, you’ve done 30 designs. Under your contract, your client chooses one direction for each brand for further development, and the rest of the alternatives belong to you. That leaves 20 alternate designs for which you will own copyright. Later you may discover that your client went ahead and used in-house staff to create collateral using your alternate designs (unfortunately, this happens all too frequently). Under the new rule, you have to register your 20 alternates in two groups of 10. And you should have registered them as soon as you completed that project, not now when it will take many months to get your registrations. Worse, now that you’re registering late, after you discovered the client’s infringement, you will not be eligible for statutory damages or attorneys’ fees. These are the best bargaining chips to get compensation for the unauthorized use of your alternates or just to get the infringements stopped.

For projects that include disparate types of work, the group registration is even more limited. Say you are designing an integrated marketing campaign that includes a new logo, printed publications, website design, animated TV spots and radio ads. Your project includes several alternates which will not be developed by the client, and in which you are retaining copyright. Under the new group registration rule, you cannot register all of this work together, and you cannot include the compilations at all. Each compilation would have to be registered separately. Thus, it can get quite expensive very quickly to protect all of your alternate works. (Currently, the fee is $55 for each unpublished group or compilation registration.)

Are There Ways Around the New Group Registration Restrictions?

Collective Works

As an alternative to a group registration, the option to register a “collective work” is still available for both unpublished and published works. However, the Copyright Office rules for what qualifies as a collective work are now more restrictive. Under the Copyright statute, a “collective work” is defined as “a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.” Contributions to a collective work can include different types of works, such as a CD package including the sound recording, liner notes, photographs and cover artwork.

Unfortunately, because the statute also says that a collective work is a type of compilation, the Copyright Office requires that your group of works must also meet the definition of a compilation, which says the works must be “selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” If a copyright examiner decides that your arrangement of the individual works is not creative enough (e.g., merely presented in a grid pattern on an online portfolio, or a series of illustrations on separate pages), you will probably face a rejection of your collective work application. You can appeal the decision, but that will cause further delays. (Note: If you need to file suit against an infringer, you can do that once the Copyright Office refuses your application, because the courts have the power to overturn Copyright Office decisions. However, there is a significant risk that the court will defer to the Copyright Office’s decision. In any event, it still takes months to get any action from the Copyright Office, including a refusal to register your work.)

Another important caveat for collective work registrations is that the statute says a collective work is a “single work” for the purposes of statutory damages. Some courts have interpreted this to mean that if you register a group of works together as a collective work, you are only entitled to one measure of statutory damages, even if many of those works have been infringed. Other courts, including in California, apply a “separate economic value” test, which allows multiple awards of statutory damages for individual works that were included in a collective work registration if you can show that they each have a separate economic value (for example, if you routinely license your illustrations separately).

Don’t’ Register

As mentioned above, you need a registration to sue for infringement, so from my viewpoint as a copyright lawyer, deciding not to register is not a good option. However, I understand that getting copyright registrations for all of your works, especially under these new rules, can be beyond the time and financial resources of many graphic artists. I still strongly recommend that you register works you think are most important and most likely to be copied. If you decide not to register some of your works, at least take some steps to minimize the likelihood that you will not be able to protect them from infringement. Here are some thoughts:

Post only low-res images online. This will not affect online copying, but it will stop people from making high-res copies for printed materials.

Use the DMCA take-down process to police online infringements. (See Legalities # 34). You do not have to have a registration to send a DMCA take-down notice. However, a successful DMCA notice only gets the infringing copies taken down, it does not entitle you to collect monetary compensation. Also, the DMCA is legally effective only in the U.S. Many website hosts in other countries will honor a DMCA take-down notice, but others (notably in Asia) will not.

Use image tracking to find unauthorized online copies. But beware of services that offer automated systems to track your images and issue infringement settlement demands without your oversight. Some of those services engage in unethical practices including sending exorbitant settlement demands to sites that are protected by the DMCA safe harbor, or are clearly engaged in fair use.

– If your business model does not require retaining copyright in work you do for your clients, give your clients a full buy-out of all rights. You will need a written, signed work-made-for-hire/copyright assignment provision in your client contract, which can be on your invoice or project proposal. Charge an appropriate fee for the buy-out, which should be higher than a limited usage license fee. Since many clients assume they are getting a full rights buy-out anyway, this will eliminate disputes over unlicensed usage. Also, your client, not you, will be responsible for registering the work and going after infringers. If appropriate, you can consider having a contract provision that requires the client to assign the copyright back to you if the client stops using the work. In that case, assuming the client has registered the copyright, you can file an assignment of that registration back to yourself in the Copyright Office.

Registration Procedure for Group of Unpublished Works

If you want to use the new group registration, there are some specific procedural requirements:

– You must use the online application and the special form accessed by choosing “Register a Group of Unpublished Works” on the home page after you log in. (The Copyright Office says it will waive this requirement in “exceptional” circumstances, but that will cause long delays in the application process.)

– The deposit specimens (copies of the works being registered) must be uploaded electronically in a format and file size accepted by the Copyright Office. (Here is the list of acceptable digital formats: https://www.copyright.gov/eco/help-file-types.html). (Again, the Copyright Office says it will waive this requirement in “exceptional” circumstances, but that will cause long delays in the application process.)

– You must list a title for each of the individual works. If you do not already have a title, you can decide on one just for the purposes of the registration. You titles need not be distinctive, you can even just give your works numbers, like “Illustration No. 1.” But more descriptive titles will help you and others know which works are covered by the registration. The online form will let you enter more than ten titles, but then you will get an error message and will have to delete the extras. The form will generate a title for the group as a whole (which you cannot choose). Typically, the group title will be the first individual work title you listed “and 9 other unpublished works.”

– As noted above, the author and claimants must be the same – the form has only one entry for both.

– For “year of completion,” give the year that the most recent work in the group was completed.

– If your works incorporate pre-existing works, describe the pre-existing works in the “limitations on claim” section. For example, if your illustration is a manipulated adaptation of a photograph, put “photograph” in the description box. Be careful here: do not list other works that merely inspired you, for example, if you just used photographs for reference, or if you are illustrating a scene from a novel or lyrics of a song, don’t say so. That will likely cause the copyright examiner to flag your application for further inquiry, which will cause long delays the application process.

The Copyright Office has embedded lots of explanations on the new form in pull-down menus and links. However, the registration process is not particularly easy, the form is not particularly user-friendly, and copyright examiners are trained to question anything they think might be wrong with an application. Mistakes or ambiguities in your form can cause serious delays, so don’t guess. If you are having trouble filling out the application form, it is wiser to consult a copyright attorney to guide you through the process.

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You are invited to submit questions about this article, or for upcoming Legalities columns. Please send your questions to Legalities@owe.com.

LegalitiesSM is a service mark. © 2019 Linda Joy Kattwinkel. The information in this column is provided to help you become familiar with legal issues that may affect graphic artists. Legal advice must be tailored to the specific circumstances of each case, and nothing provided here should be used as a substitute for advice of legal counsel. Linda Joy  is an attorney, painter and former graphic artist/illustrator. She practices intellectual property law, arts law and mediation for artists in San Francisco. She can be reached at 415-882-3200 or ljk@owe.com.