Protect Software!!!!!!!!! Register Copyrights . . .

A prerequisite to bringing suit to enforce a copyright is that the copyrighted work is registered with the U.S. Copyright Office. 17 U.S.C. § 411(a). Let's repeat that: A prerequisite to bringing suit to enforce a copyright is that the copyrighted work is registered with the U.S. Copyright Office. 17 U.S.C. § 411(a).

Registering a copyright brings a horde of benefits to the copyright owner, including statutory damages, but the best benefit is attorneys' fees rights in enforcing the copyright. From a litigation perspective, the threat of an award of fees significantly shifts the balance of power to the copyright owner.

And the registration of copyrights must include registration of derivative works. "A 'derivative work' is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a 'derivative work'." 17 U.S.C. § 101. "The copyright in a . . . derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material." 17 U.S.C. § 103(b).

When software revisions are issued, those revisions are derivative works. The original software should be copyrighted and registered, as should be the revisions.

In Dalton-Ross Homes, Inc. v. Williams, 2007 WL 2461892 (D. Ariz. Aug. 29, 2007), the plaintiff sued claiming defendant had infringed a copyright which plaintiff held on architectural floor plans. Plaintiff had registered a copyright for a floor plan known as the “VDM plan” and claimed that a newer floor plan, known as the “Conley plan” was a derivative which was entitled to protection as well. The defendant had admittedly copied the Conley plan in designing a home. The court concluded as follows:

The registration requirement in § 411(a) makes no distinction between derivative and original works. Whether a separate registration of a derivative work is a prerequisite to an action for infringement of that derivative work is a question of first impression in this circuit. However, we are persuaded that separate registration of the derivative work is required. See Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 354 F.3d 112, 115 (2d Cir.2003) (“registration of a claim on an original work does not create subject matter jurisdiction with respect to a suit for infringement of the original’s unregistered derivative”); Murray Hill, 264 F.3d at 632 (6th Cir.)(“before an infringement suit can be sustained based on the derivative work,that derivative work must be registered”); Montgomery v. Noga, 168 F.3d 1282, 1292 (11th Cir. 1999); Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 816 (5th Cir.1997); cf. Litchfield, 736 F.2d at 1357 (“[t]o constitute a violation of section 106(2) the infringing work must incorporate in some form a portion of the copyrighted work”). These multi-circuit authorities,coupled with a plain reading of section 501(b) in conjunction with section 411(a), indicate that in order to file an action for infringement of a derivative work, the plaintiff must first register the copyright of that derivative work.

Register, register, register. And that applies to originals and derivative works.