Play it Safe

Last week, apparel manufacturer Original Outerwear called me in a panic. One of its biggest competitors, Copy Cat Designs, had knocked off its recent catalog. Copy Cat had published a catalog that incorporated the look and feel, layout and other significant features of Original’s catalog. The only difference with Copy Cat’s catalog was the name and specific products contained in the catalog. When asked what could be done, my first question to Original was “Do you have a copyright registration for your catalog?” The response was a resonating “huh?”

There appears to be a popular misconception that the only thing necessary to have copyright protection is to place the designation © or a notation that “All Rights Are Reserved” on materials for which copyright protection is sought. While that may be true—at least in part—one cannot sue under the federal Copyright Act for infringement unless the copyright is registered with the United States Copyright Office.

The Copyright Act permits a copyright owner to sue for infringement and to recover, among other things, statutory damages of up to $150,000 for each copyright infringed. Damages are set by the statute in a fixed amount as an alternative to actual damages. Statutory damages are often sought when actual damages are difficult to determine. The Copyright Act also permits the copyright owner to recover actual damages—it is the plaintiff’s choice and, logically, a plaintiff will elect to recover statutory damages if that amount exceeds actual damages.

In addition, the U.S. rule is that parties pay their own attorney fees in litigation. However, as a remedy for infringement, the Copyright Act permits a copyright owner to recover its attorney fees and costs. One cannot recover these remedies without a registered copyright.

In certain jurisdictions, an action for infringement may be brought under the Copyright Act if an application for registration is filed before or at the time of registration. This is what we did in the case of Original Outerwear v. Copy Cat Designs—filed for registrations at the time we filed suit. However, without an actual registration, Original cannot seek statutory damages or attorney fees. The remedies are limited to injunctive relief (to stop and prevent further infringement) and actual damages. Thus, it is apparent why registering your copyright is important.