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Failure to Register Copyrights in the U.S. Can Bar Statutory Damages for Infringements

General / Jan 30, 2020

Article written by Dotan Hammer

A decision delivered by the Federal Court of Appeals for the Fifth Circuit in Louisiana held that copyright owners which neglect to register the copyright of their work before an infringer’s initial infringement of the work are not entitled to statutory damages even for post-registration infringements by the infringer. These owners will be required to prove actual damages and also will not be entitled to recovery of their attorney fees.

The case addressed a healthcare credentialing services provider who offered application forms for physicians to complete and verification services for the information completed in the forms. One of its clients, Hammond Surgical Hospital,  continued using the provider’s custom forms even after the relationship between the parties ended, including by posting them publicly on its website. After learning of the hospital’s first unauthorized use of its forms, the service provider registered them with the US Copyright Office. After the hospital continued to use the forms without authorization, the service provider asserted copyright infringement claims in federal court, seeking statutory damages and attorney fees.

The Federal District Court granted summary judgment for the service provider as to copyright validity and infringement. However, on appeal, the Court of Appeals held despite the copyrightability of the form, the provider is not entitled to recover statutory damages because it failed to register its rights before the occurrence of the initial breach.

The Court of Appeals explained that the Copyright Act prohibits the recovery of statutory damages and attorney’s fees for “any infringement of copyright in an unpublished work commenced before the effective date of its registration”. Thus, the ban on the recovery of statutory damages and sometimes, more importantly, attorney’s fees, applies to any infringement a defendant commences before registration and spans all post-registration infringements by the defendant. The court explained that the rule applies even when an infringer violates one of the six exclusive rights of a copyright holder pre-registration and then violates a different right in the same work post-registration. The Court of Appeals opined that this rule promotes the incentives for early registration that Congress created.

CLICK HERE to read the Fifth Circuit’s decision in Southern Credentialing Support Services LLC v. Hammond Surgical Hospital LLC et al.

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