June 23, 2016Protecting Your Investment

The Value of Timely Registering All Images In Your Portfolio

The investment of time and money to create a portfolio is substantial. Whether photography is your livelihood, a service supporting another business line, or a hobby you pursue only for pleasure, protecting the commercial value of your portfolio is a critical consideration. Even if you do not intend to commercially license your work, you surely have no desire to see a stranger reap the benefits of your creative efforts without compensation to you.

In this digital age, unauthorized copying and transmission of photographic images is widespread and can proliferate very quickly. While tools exist to track and locate unauthorized copies, identifying an infringer is only half the battle. Effective protection of the investment in your portfolio requires the ability to bring a lawsuit against parties who download and use your photos without permission. A lawsuit may not always be necessary to obtain remedial action by an infringer, but intentional and accidental infringers alike are more willing to respond positively to a demand for corrective actions if they understand that the copyright owner is in a position to bring a lawsuit to enforce his or her rights.

The Copyright Act provides powerful tools to combat infringement and misuse of your portfolio, but those tools are only available to those who take the step of formally registering their copyrights with the Copyright Office. 17 U.S.C. §411.

The registration requirement can be met any time before a lawsuit is filed – assuming the statutory time period to bring a lawsuit remains open – but all copyright infringement lawsuits are not created equal, and not all infringement claims will be worth pursuing if the decision to register the copyright is only made after identifying an infringement.

The Copyright Act authorizes a copyright owner who has timely registered his or her work to bring a claim for recovery of the actual losses the owner suffers (typically the value of a license fee the owner would have charged had the infringer sought permission to use the image) plus disgorgement of the infringer’s profits. 17 U.S.C. § 504(b). Alternatively, the owner may elect statutory damages, set in the discretion of the court up to a maximum of $30,000, or $150,000 if willful infringement is proven. 17 U.S.C. §504(c). Under either alternative, where a registered copyright is found to have been infringed, the copyright owner may be awarded some or all of the attorneys’ fees incurred in pursuing the lawsuit. 17 U.S.C. §505.

That is an important array of potential remedies for copyright owners facing infringement, but their availability depend on the timing of registration. The Copyright Act limits the ability to recover statutory damages and attorneys’ fees to copyright holders who either: (1) register their copyright with the Copyright Office prior to the infringement commencing; or (2) register their copyright within three months of first publication, even if the infringement commenced before the effective date of the registration (there are exceptions to these limitations, but they are very limited in application and too detailed for discussion here). 17 U.S.C. §412. In this way, the Copyright Act purposefully gives incentive to photographers and other creators to formally register their new works.

For those who wait to formally register their copyrights until learning of an infringement, the Copyright Act requires that they register before they may file a lawsuit. Even then, the relief available is limited to the actual damages suffered by the copyright owner, plus disgorgement of the infringer’s profits. Experience teaches that those damages can be difficult to prove in many cases and will, at a minimum, require a significant investment to pursue a claim against a motivated infringer, who will not be pressured by potential liability for statutory damages or reimbursement of the copyright owner’s attorneys’ fees.

These same registration incentives apply to copyright owners who are not United States citizens or whose works were first published outside the United States. Under the Berne Convention, to which the vast majority of nations are signatories, works created by nationals

and residents of signatory countries, and works which are first or simultaneously published in a signatory country, are provided the same scope of protection under American law as works created by American citizens or first published in the United States. In fact, copyright owners of Berne nations are able, unlike American owners, to bring legal action for infringement without formally registering their work. But importantly, as with United States copyright owners, statutory damages and attorneys’ fees are unavailable to Berne-nation copyright owners absent formal registration of their copyright with the Copyright Office. Because the timing of registration continues to effect the scope of remedies available, United States copyright law continues to provide significant incentives for non-U.S. copyright owners to register their works in the United States.

Faced with infringement of an unregistered copyright, many copyright owners may find it difficult to obtain an experienced attorney willing to pursue an infringement lawsuit on a contingent fee basis. The reason for this reluctance has a lot to do with how courts interpreting the Copyright Act define recoverable actual damages and an infringer’s profits subject to disgorgement, and the amount of work that will go into establishing the value of those damages during the discovery phase of a lawsuit. Exploration of those topics will have to wait for a future analysis. For now, the important takeaway when considering how best to protect the value of your portfolio from loss associated with infringers, who are willing take your photographs and misuse them for their own commercial or other purposes without compensation to you, is that you want to preserve your ability to use the full range of remedies available under the Copyright Act, whenever necessary. To be in that position should the need arise in the future, it is important to take action now to timely register your copyrights.

Steven M. Cowley Partner – Intellectual Property Litigation Duane Morris LLP 100 High Street, Suite 2400 Boston, MA 02110-1724 +1 857 488 4261

SMCowley@duanemorris.com

Brandon Leahy Attorney – Intellectual Property Litigation Duane Morris LLP Spear Tower One Market Plaza, Suite 2200 San Francisco, CA 94105-1127 +1 415 957 3084 BLeahy@duanemorris.com

www.duanemorris.com