DOES REGISTERING MULTIPLE WORKS IN A SINGLE APPLICATION LIMIT REMEDIES FOR COPYRIGHT INFRINGEMENT?

Much confusion surrounds the issue of whether one can register multiple works in a single copyright registration application.  One theory is that if an author of creative works such as photographs or songs, registers more than one work in the same application, her entitlement to statutory damages may be compromise   ed. For example, I recently spoke to a colleague specializing in art law whose understanding was that if a visual artist registered ten paintings using a single application, and only one of them was infringed, the artist’s remedy may be limited to one-tenth of the maximum statutory damage award of $150,000.  Fortunately for visual artists, as well as other creators, this is not true. If a single application for more than one work is properly completed, visual artists, writers, composers, recording artists and other creators can retain all the legal remedies afforded by the Copyright Act while saving money by avoiding multiple registration fees ($35 for each on-line application and $65 for each paper application).

This article explains the rules pertaining to filing registrations for multiple works. We also explain special rules that Congress passed and the Copyright Office implemented to make it easier for creators, such as illustrators, freelance writers, cartoonists and others, who usually publish their works in different magazines and newspapers on different dates, to register their works in groups. Then we will discuss another special rule for photographs that was specifically designed to make it easier for owners of copyrights in photographs to register their work in groups.  Finally, we will discuss mistakes to avoid, and circumstances under which it advisable   to file separate registrations for individual works.  

Why Registration Is Important

Before exploring the rules regarding how to save money by registering multiple works in a single registration, it is useful to review why registration is important. Under the Copyright Act of 1976, a copyright comes into existence as soon as a work is fixed in a tangible medium of expression, and registration is not a condition of copyright protection. So why bother to register?  Even though registration is not a requirement for protection, the copyright law provides several inducements to encourage copyright owners to register their works.  The Copyright Office’s Circular entitled Copyright Basics (http://www.copyright.gov/circs/circ01.pdf) outlines those advantages as follows:

   
-  Registration establishes a public record of the copyright claim.

 

-  Before an infringement suit may be filed in court, registration is necessary for works of U. S. origin.

 

-  If made before or within five years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.

 

-  If registration is made within three months after publication of the work or prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.

 

 -  Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies.

Of the reasons to register set forth above, the most important are that (i) a copyright owner cannot start a lawsuit for copyright infringement before registering, and (ii) cannot secure statutory damages or attorneys’ fees without registering. Copyright law provides for statutory damages of up to $150,000 per infringement, but if the work has been published (see the discussion below on the meaning of publication), statutory damages are only available if registration occurred prior to the infringement.  Otherwise, the plaintiff must prove actual damages, which can be difficult to quantify, or may equal a negligible amount unless the defendant earned a significant amount of money from the infringing work.  Also attorneys’ fees are only available for published works that are registered prior to the infringement. Similar to other litigation, a lawsuit for copyright infringement can take a great deal of work and time on the part of the attorney. It would be difficult to retain the services of an experienced copyright litigator without the potential for recovering attorney’s fees.

 

 

Basic Rules for Registering Multiple Works in a Single Application

 

 

The basic rules pertaining to copyright  registration, are set forth in the Copyright Office "Basics" circular as follows:

              Basic claims include (1) a single work; (2) multiple unpublished works if the elements are 
              assembled in an orderly form; the combined elements bear a single title identifying the 

              collection  as a whole; the copyright claimant in all the elements and in the collection as a

              whole is the same; and all the elements are by the same author or, if they are by different

              authors, at least    one of the authors has contributed copyrightable authorship to each

              element; and (3) multiple published works if they are all first published together in the same

              publication on the same date  and owned by the same claimant.  

 

These rules, which are based on Section 408(c) of the Copyright Act and codified in the Code of Federal Regulations Title 37, Part 202.3(b)(4)(i), are clear: registration of multiple works in a single application is fine, so long as all works were created by the same person,[1] and (i) if the works are unpublished, all of them may be registered in a single registration even if they were created at different times, (ii) if the works were published, those that were published for the first time in the same publication by the same claimant at the same time may be registered in a single registration.

In my practice as a music attorney, I often register groups of songs and masters. For instance, if a client wrote and recorded his own songs for an album, I would register the entire album at the same time for one payment to the Copyright Office of $35. This saves time and money. And the registration protects each song and the recording of each song.[2]      

With regard to the concept of publication, which distinguishes rule (2) from (3),  if the album were not commercially released I would register it as an “unpublished work,” or if it had been released commercially I would register it as a “published work.” The 1976 Copyright Act defines publication as “the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending.” 17 U.S.C § 101. For instance, a photograph is “published” if it is sold, mere public display is not publication. A musical recording is published if it is offered for sale. If the recording contains a new song, selling the record will cause the song to be published. So in reference to the example discussed above, if one of the songs was commercially released prior to the release of the rest of the album, I would register the “published” recording containing that song in a separate application and register the rest of the album as an “unpublished work” in a separate application.

Special Rules Applying to Creators who Publish their Works in Periodicals

In addition to the rules set forth in the Copyright Basics Circular, Section 408(c)(2) of the Copyright Act directs the Register of Copyrights (i.e., the Director of the U.S. Copyright Office) to establish regulations “permitting a single registration for a group of works by the same individual author, all first published as contributions to periodicals, including newspapers, within a twelve-month period, on the basis of a single deposit, application, and registration fee, …” Pursuant to this provision in the Copyright Act, the Copyright Office issued the following regulation: "…a single registration, on the basis of a single application, deposit, and registration fee,  may be made for a group of works if all of the following conditions are met:

   
                (A)  All of the works are by the same author;

            (B)  The author of each work is an individual, and not an employer or other person for     whom the work was made for hire;

            (C)  Each of the works was first published as a contribution to a periodical (including newspapers) within a twelve-month period; This does not require that each of the works  must have been first published during the same calendar year; it does require that, to be   grouped in a single application, the earliest and latest contributions must not have been  first published more than twelve months apart.

The purpose of 408(c)(2), is to make it easier for creators who publish their works in different newspapers and magazines, such as freelance writers, photographers, cartoonists, illustrators, etc., to register groups of their works that were published in different periodicals during any twelve month period. Suppose, for instance, that a cartoonist publishes fifty different cartoons in several different magazines and newspapers in one year. Under the basic rules set forth in the Copyright Office website, she would be forbidden from filing them all in one application. But under 408(c)(2), she is authorized to file all of them in one application thereby saving time and $1,715 (49 x $35).

Special Rule for Published Photographs

In addition to 408(c)(2), there is yet another rule designed to make it easier to register groups of photographs. That rule allows for registration of any number of photographs if they were taken by the same photographer and published within the same calendar year. This means that the photographer can register not only all his photos that were published in different periodicals, but also all the photos sold during any given twelve month period on one registration.  Special deposit rules apply as well as instructions for filling out the form (GR/PPh/CON). The application has to be done by snail mail, and the fee is $65.

Limitations on Registering Multiple Works in a Single Application

In registering multiple works in a single application, the applicant must be careful to follow the rules carefully.  It is important to note that with regard to the first rule set forth in this article concerning published works,

                (3) multiple published works if they are all first published together in the same publication on the same date and owned by the same claimant         

all the works must be published as a “single unit.” As interpreted by courts, this criterion requires that all of the published works must have been first published together in a single unit of publication. Courts have invalidated registrations of groups of published works violating these principles. See e.g., L.A. Printex Industries v. Aeropostale, 2010 U.S. Dist. LEXIS 46951 (C.D. Cal. May 5, 2010) (invalidating registration of a group of fabric designs because one design was sold prior to and independently of the others), reversed, 466 Fed. Appx. 590 (9^th Cir. 2012) (reversing grant of summary judgment based on material issue of fact, but upholding relevant legal standard); Olander Enters., Inc. v. Spencer’s Gift, LLC, 812 F. Supp. 2d 1070 (C.D. Cal. 2011) (adopting rule that “group of published works must be first published together in order to qualify as a ‘single unit of production’ for purposes of a ‘single work’ registration” in a case involving belt buckles); McLarens v. Chico’s F.A.S., Inc., 2010 U.S. Dist. LEXIS 120185 (S.D.N.Y. Nov. 9, 2010) (same).[3] 

As a caveat to this concern, groups of unpublished items must only include unpublished items. Inclusion of published materials could invalidate protection of the entire group. See Banco Populaire de Puerto Rico v. Latin American Music Co., 685 F. Supp. 2d 259 (D.P.R. 2010).
Finally, in cases of complex works, such as a motion picture, that involve “the co-existence of [multiple] elements in a single self-contained work included in a single unit of publication, only one registration is appropriate to cover all the elements.” Nimmer, On Copyright, § 7.18[C][3].  

Conclusion

Group registrations can save creators a great deal of time and money provided that they follow the rules set forth by the Copyright Act as implemented by the Copyright Office. [4]

Steve Gordon  wishes to thank Ariel Greenberg (2L Cardozo), Emily Borich (2L Pace) and  Kevin Park (3L NYU) for their assistance in writing this article.

---

[1] See Muench Photography Inc. v. Houghton Mifflin Harcourt Publishing, 712 F. Supp. 2d 84 (S.D.N.Y. 2010) (protection of individual components in a registered group may only attach when the author of the individual component is the same as the author of the group).  

[2] See Ocasio v. Alfano, 592 F. Supp. 2d 242, 244-45 (D.P.R. 2008) (holding that registration for a group of unpublished songs protected the individual songs listed in the registration under 37 C.F.R. §202(b)(4)(i)(B); King Records, Inc. v. Bennett, 438 F. Supp. 2d 812, 841 (M.D. Tenn. 2006) (noting that “other courts have found that registration of a collection extends copyright protection to each copyrightable element in that collection” in a case involving a collection of published songs); see also Masterfile Corp. v. Gale, 2011 U.S. Dist. LEXIS 114638 (D. Utah Oct. 4, 2011) (finding that copyright in a collection of photographs protected the individual photos). Courts have found that a copyright registration of a group of works can also protect individual components not specifically listed in the copyright application if the materials sent to the copyright office include the unlisted material. See Szabo v. Errison, 68 F.3d 940 (5^th Cir. 1995) (extending copyright protection to unlisted songs because the songs were included on the tape sent to the Copyright Office for registration of the group).

[3] However, the single publication criterion does not require all items within that publication to be eligible for registration within the group. See Design Ideas, Ltd. v. Things Remembered, Inc., 2009 U.S. Dist. LEXIS 13114 (C.D. Ill. Feb. 20, 2009) (upholding validity of registration of three designs included in a book containing material that was not part of the group).

              [4] There are other rules for registering works in groups for specific kinds of works such as automated databases and periodicals. They are beyond the scope of this article which deals with multiple works created by individual creators such as visual artists, songwriters and writers. But you can learn more about the other rules by reading Nimmer, On Copyright, § 7.18[C] discussing 37 C.F.R. §202.3(b).