Magazines, videos, books, songs, choreography, paintings, all of these have the potential to become copyright protected works upon creation under the Copyright Act. But is that enough? The Copyright Act also provides stronger protection for copyright protected works upon registration.
Curiously, a lot of people are aware of the fact that copyrighted works can have their claims to copyright protection registered. Consequently, people like to ask whether they should get their copyright registered, what the effect of registration is, when should the registration happen and how often should the registrations take place. These aren’t easy questions and often depend on the circumstances. Let’s take a look at why your clients should always register their copyrights and where copyright registrations ultimately end up.
Back to Basics: The Creation of Copyright Protection
So, when does that book actually become protected by copyright? The answer is generally upon creation, provided that it is original and fixated. If the author of a book took large extracts from another author’s book, his book probably wouldn’t qualify as being sufficiently originally and may even expose him to a claim of copyright infringement. At the same time, his book has to be fixed in a material form, which can include fixation in an electronic file. Just because he has a brilliant book written from start to finish in his head, it won’t be protected under the Copyright Act.
Therefore, if our author has written an original book, which is preserved in electronic format, the Copyright Act will protect it from unauthorized use. What more does the author need to do? Well, if the author wants better protection, he has to register his copyright. Let’s discuss the benefits of copyright registration.
The Benefits of Copyright Registration
The first benefit of registration is that if you have to enforce your copyright against an alleged infringer, such infringer cannot plead innocent infringement. If an alleged infringer is able to prove that at the date of infringement the alleged infringer was not aware and had no reasonable grounds for suspecting that copyright existed in the subject copyright work, then the only remedy available to a plaintiff claiming for copyright infringement may be an injunction. If the copyright is registered prior to the date of the alleged infringement, the alleged infringer can’t raise an innocent infringement defence. In this case, a copyright registration gives the copyright owner more powerful remedies in the case of infringement.
The second benefit of registration is that it creates a rebuttable presumption that copyright exists in the copyrighted work and that the copyright registrant is the owner of such work. The copyright registration constitutes prima facie evidence of the information set out in the registration. In the case where anyone seeks to question whether copyright exists in a work or who the owner of the copyrighted work is, the existence of the copyright registration will require the person challenging the copyright registration to establish why the presumptions raised by the registration are incorrect, i.e. why copyright does not exist in the work or why the copyright registrant is not the actual owner. The presence of such rebuttable presumption can be useful in litigation concerning copyrighted works.
Coincidentally, a case was decided at the Federal Court last year which provides some guidance on whether the timing of a copyright registration matters when assessing the strength of the rebuttable presumption. This is an important case for two reasons: (i) it confirms the position that one should register copyright as soon as possible; and (ii) it questions the usefulness of the common practice of registering copyrights just before or during copyright litigation.
In Drolet v. Stiftung Gralsbotschaft, 2009 FC 17, a case decided at the Federal Court in early 2009, plaintiffs by counterclaim wanted to sue for copyright infringement. In order to bolster their position, they obtained the leave of the Federal Court to register their copyrights. The plaintiffs by counterclaim used their copyright registrations as proof that copyright existed in the copyrighted works and that they were the owners of the copyright. In its decision, the court stated that, because the copyright registrations were filed so late, the court afforded them little or no weight in making its determinations.
The third benefit of copyright registration goes directly to title. If the owner of a copyrighted work assigns the copyrighted work or an interest in a copyrighted work to another party, the assignee party should register their interest in the copyright immediately. If the assignee does not register its copyright, then a subsequent assignee of the same copyrighted work, who pays valuable consideration for such work and who does not have notice of the first assignment, for example, because the first assignee did not register its copyright, will receive good title to the copyrighted work if it registers its copyright before the first assignee does. This is a very important benefit and should be top of mind when a client is hiring a third party to create copyrighted works, especially where such work is a trademark.
The fourth benefit is the formal prestige associated with a copyright registration. In other countries around the world, copyright registration has different requirements and it has different significances. Nevertheless, if you are going to be dealing with a copyrighted work outside the borders of Canada, then it is worthwhile to have your copyright registered in Canada as you use and grant use of a copyrighted work abroad and apply for registrations in foreign countries (for a host of reasons perhaps in addition to the ones specified here).
The fifth benefit of registration, if it can be called that, is the low cost of registering a copyright. The Canadian Intellectual Property Office (“CIPO”) only charges $65.00 for copyright registration, so register early and register often.
The Register of Copyrights
When a copyright is registered, it is placed on the Register of Copyrights. The fun, and perhaps at the same time frustrating, thing about the Register of Copyrights is that it is self-policing. So long as an application meets the minimum requirements for registration, it should be possible to obtain a copyright registration.
However, a copyright registration certainly provides no warranty that copyright exists or even that one has title to the copyrighted work. Rather, it just reflects that someone is publicly claiming title to a copyrighted work but no more. Further, the Copyright Office does not police the Register of Copyrights. Several registrations may conflict with one another or provide contradictory information. It is the position of the Copyright Office that the rights holders must ensure that the Register of Copyrights accurately reflects the legal rights of the parties. If any party wishes to change the Register of Copyrights their only recourse is an application to the Federal Court.
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In conclusion, the copyright registration process is relatively pain free and cost effective. The benefits of registration as discussed above far exceed non-registration. Register your copyrights often and early, but make sure they are correct. The Copyright Office provides the Register of Copyrights as an accessible service by which copyright holders can strengthen the protection for their copyrighted works and communicate claims of copyright ownership clearly to the public. Nevertheless, at this time, users of the Register of Copyrights must be prepared to sift through some number of invalid registrations when making themselves aware of who is claiming copyright protection in what.
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Ryan K. Smith is a lawyer and trade-mark agent at Feltmate Delibato Heagle LLP. He specializes in corporate and commercial law with expertise in intellectual property matters including trade-marks, copyrights, privacy, information technology, and confidential information. You can reach Ryan at firstname.lastname@example.org and (905) 287-2215.