Jaburg Wilk


Register Your Copyrights Early or Say Goodbye to Statutory Damages and Attorney’s Fees

Categories: Intellectual Property, Article

Register copyright as soon as possible

One of the important benefits that come from registering copyrighted works early is the ability to seek statutory damages and attorney’s fees from a copyright infringer in a lawsuit. It is only when copyright owners register their work before copyright infringement begins (or within three months after first publication of that work) that they become eligible for an award of statutory damages and attorney’s fees. Statutory damages can range from $750 to $30,000 per work infringed, with the possibility of recovering up to $150,000 per work for willful infringement. Many copyright owners fail to appreciate this until it’s too late and they are forced into the sometimes difficult position of having to prove their actual damages with no possibility of recovering statutory damages or attorney’s fees.

The Fifth Circuit Court of Appeals reinforced this lesson in its recent decision in Southern Credentialing Support Services, L.L.C. v. Hammond Surgical Hospital, L.L.C., 946 F.3d 780 (5th Cir. 2020). In that case, the plaintiff copyright owner, a credentialing services provider, sued the defendant, a surgical hospital, for continuing to use its credentialing forms without permission after the parties’ business relationship ended. The plaintiff registered its credentialing forms with the U.S. Copyright Office only after learning of the defendant’s unauthorized use of them.

The trial court granted the plaintiff summary judgment as to infringement and awarded it statutory damages, attorney’s fees and costs, and an injunction prohibiting further infringement of its copyrights.

Importantly, the trial court awarded the plaintiff statutory damages despite the defendant’s copyright infringement pre-dating the plaintiff’s copyright registration and the relevant copyright statute (17 U.S.C. § 412) prohibiting this. The trial court concluded that because the defendant’s post-registration infringement (distribution) was “different in kind” than its pre-registration infringement (copying), the statutory prohibition didn’t apply. Both parties appealed.

Although the Fifth Circuit affirmed the trial court’s rulings on copyright validity, infringement and injunctive relief, it agreed with the defendant that the trial court erred in ruling that the plaintiff was entitled to recover statutory damages and attorney’s fees.

The Fifth Circuit held that 17 U.S.C. § 412 bars statutory damage awards and attorney’s fees even “when a defendant violates one of the six exclusive rights of a copyright holder preregistration and violates a different right in the same work after registration.” In its reasoning, the court noted that this “limitation encourages authors to register their works quickly, allowing potential infringers to readily determine whether a work is protected.”

The Fifth Circuit’s Southern Credentialing decision serves as a good reminder to copyright owners that they must register their copyrighted works before copyright infringement occurs if they wish to be eligible for statutory damages and attorney’s fees. Given this and the other benefits of copyright registration, there is no advantage in waiting.

About the Author: Michael B. Dvoren is a partner and intellectual property attorney at Jaburg Wilk, where he assists clients with various intellectual property matters. He has helped numerous clients navigate the complexities of copyright law in litigation, pre-litigation disputes, and transactions.