Do you need to file Copyright Registration in the United States for a Foreign work?

Copyright in Forigen Works

The United States is a party to the Berne Convention, an international copyright union adopted by 165 countries. Under the Berne Convention, all party countries must recognize the copyright of works of authors from every other Berne Convention country. Under the Berne Convention copyright is automatic and does not require formal registration.

In addition, in the United States, works first published outside the United States do not need to be registered prior to filing a copyright infringement claim. In this way, foreign works are provided greater protection than U.S. works, which must be registered in order to obtain a judgment under the Copyright Act.

With automatic protection of works from 165 countries (including all industrial, developed countries with the notable exception of Taiwan) and the ability to bring a lawsuit in U.S. Courts, what is the point of obtaining a U.S. Registration for a foreign work?

The short answer? You get a bigger hammer.

Specifically, registration of any copyrighted work in the U.S. prior to infringement occurring allows the copyright holder to seek statutory damages and attorney’s fees.

Why is this important? Two reasons. First, it’s always nice to have an opportunity to argue that some or all of your attorney’s fees should be paid by someone else. Second, it is often extremely difficult to show actually damages in a copyright case. Take for example a photograph published on a website. If another website uses the same photo what are the actual damages to the copyright owner? Statutory damages allow the court to set the damages based on the facts of the case (e.g. purpose of infringing use, intent, etc.) rather than the actual damages (possibly none) incurred by the copyright owner. Statutory damages range from $750 to $30,000 per infringement and can go as high as $150,000 if the court finds that the infringement was “willful.”

The Problem with the Internet

In addition to it simply being a “good idea” to register a foreign work in the United States, the internet has made the question of where a work is fist published more difficult to determine. In several District Court cases, the question has arisen as to whether a work first published on a foreign website was actually simultaneously published world-wide. If the work was first published both in the United States and another country, under U.S. copyright law, the work is considered a U.S. work requiring registration prior to litigation.

Bottom line: If you want to make sure you have the ability to file a lawsuit in the U.S. with the biggest hammer possible, you must register your work with the U.S. Copyright Office.