A friend emailed me the below article, titled above, by Abi Oyewole. This article came out in “Law Practice Today”, the Monthly Webzine of ABA Monthly Law Practice Division. I work with her in the Sports & Entertainment Law Section of the ABA and she is great resource for all things copyright and always willing to answer questions.
Under the current Copyright Act, copyright protection is automatic upon fixation of a work that is (i) original to the author and (ii) contains a sufficient amount of creative expression. See 17 U.S.C. § 102(a); see also Feist Publ’n, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 346 (1991). Registration of a copyright claim is permissive. Certain benefits are, however, conferred upon the owner who does register her claim.1 Authors or owners should register their works in a timely fashion. To obtain copyright registration, claimants must submit a completed application for registration, the prescribed fee, and a deposit of their work. In technical terms, deposits will fall into one of two forms of material objects:
- Copies (“material objects, other than phonorecords, in which a work is fixed” such as, books, motion pictures, fabric, architectural drawings, etc.)
- Phonorecords (“material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed,” such as LPs, audiocassettes, and CDs)
17 U.S.C. § 101.
Generally, the required deposit of a published work is two copies (or phonorecords) of the “best edition” of that work. For unpublished works, only one copy of the work is required in whatever form the work was created. U.S. Copyright Office regulations permit, for certain types of works either:
- One complete copy rather than two, or
- Identifying material rather than copies or phonorecords of the work, e.g., a photograph or drawing of jewelry or other sculptural work rather than a copy of the sculptural work itself.
Deposits may serve an important role in copyright litigation, because in many cases, the scope of the claim may only be determined by reviewing the particular deposit associated with an application. See H.R. Rep. No. 94–1476, at 171 (1976)(“Aside from its indisputable utility to future historians and scholars, a substantiallv complete collection of both published and unpublished deposits, other than those selected by the Library of Congress, would avoid the many difficulties encountered when copies needed for identification in connection with litigation or other purposes have been destroyed.”). The public may inspect2 certain copyright deposits at the Office or, under certain circumstances, may order reproductions of deposits. Requests for reproductions of deposits may be made in connection with copyright infringement cases but also for reasons unrelated to copyright, including:
- Trademark infringement lawsuits
- Patent infringement lawsuits
- Estate matters
- Bankruptcy cases
- Personal recordkeeping needs of the copyright author, copyright owner, an owner of an exclusive right in the work, or her or his authorized agent
This article provides practical guidance on how to obtain reproductions of copyright registration deposits for litigation.
Who May Request a Reproduction
Not every person is entitled to obtain a reproduction of a registration deposit. The Copyright Office may grant requests for reproductions of deposits in the following cases only:
- When the request is made by an attorney on behalf of either the plaintiff or defendant in connection with actual or prospective litigation that somehow involves the registration deposit
- When the request is made by the copyright claimant of record or her or his authorized representative
- When the request is made by an owner of an exclusive right in the work and supported by written documentation of the transfer of ownership
- When a court orders a copy of the deposit which is the subject of litigation
- When the work is requested by an heir of the estate and accompanied by the appropriate documentation
37 C.F.R. § 201.2(d)(2).
How Attorneys May Request a Reproduction of a Registration Deposit for Use in Litigation
Requests for reproductions of deposits are made through the Records, Research and Certification Section (RR&C or Section) of the Information and Records Division of the U.S. Copyright Office using the following contact information:
- Email: firstname.lastname@example.org
- Telephone: (202) 707-6787
- U.S. Mail: U.S. Copyright Office, Attn: RR&C Section, P.O. Box 70400]
- In person: James Madison Building, Room LM-453, 101 Independence Ave., SE, Washington, D.C. 20559-6300, Monday through Friday, during the hours of 8:30 am – 5:00 pm, ET, except legal holidays.
The preferred method of initial contact is by email. In that email, the requesting attorney should provide the following information:
- The attorney’s name
- The name of the copyright owner
- Statement that the attorney needs a reproduction of a registration deposit on behalf of the copyright owner or owner of exclusive right, or on behalf of a plaintiff or defendant in connection with litigation
- The title of the work
- The registration number
- The year in which the work was completed
Attorneys should contact RR&C as early as possible to request a reproduction of a deposit and, in their request, specify whether the reproduction must be certified3 and whether the attorney needs expedited service.4
An RR&C staff member will respond by providing the attorney with a Litigation Statement form on which the attorney must provide information regarding the litigation, including the names of the parties, the name of the court, a possible docket number, and a brief statement of the facts surrounding the case. An attorney is best served by returning the completed Litigation Statement form to RR&C with the appropriate fee in a timely manner. Work is not begun on the request until the office receives the base fees for requested services.
All requests may be emailed or faxed to the Office initially, but eventually the Office must receive an original signature before it will release a reproduction of the deposit; usually this is done by submitting the original signed form in person, by courier, or through the U.S. mail. Attorneys should allow ample time for RR&C staff to search for and make a reproduction of the deposit and for the request to be reviewed by the Copyright Office’s Office of the General Counsel.
Deposit Reproduction Fees
Fees associated with the reproduction of deposit copies range from $12to $100 per copy depending on the type of work (e.g., photograph, audiocassette, DVD, CD, etc.). Search ($165 per hour with a minimum of two hours) and retrieval ($165 per hour for non-electronic deposits and $41.25 per quarter hour with a minimum of one-half hour for electronic deposits) fees apply and vary depending upon the work. If requested, fees for certification ($165) of the reproduction of the deposit also apply. When expedited service is requested, the fees are as follows: $445 per hour for the expedited search; and a $265 surcharge per hour for expedited retrieval, copying, and, if requested, expedited certification. The Copyright Office will provide a fee estimate based upon the request.
For a current list of fees associated with the reproduction of deposits see Fees, athttp://www.copyright.gov/docs/fees.html, or Circular 4, Copyright Office Fees, available at http://www.copyright.gov/circs/circ04.pdf.
Denials of Requests for Reproductions of Copyright Deposits by Attorneys in Litigation
The Copyright Office does not grant all requests for reproductions. A request for a reproduction of a registration deposit may be denied for the following reasons:
- The reproduction will not be used in connection with litigation. 37 C.F.R. § 201.2(d)(2).
- The registration application is pending and different standards apply. 37 C.F.R. § 201.2(b)(4).
- The deposit is no longer in the custody of the U.S. Copyright Office. 37 C.F.R. § 201.2(d)(2).
- The Office did not receive the appropriate fee. Id.
- The Office did not receive sufficient information to process the request. Id.
Denials of requests for reproductions of copyright registration deposits may be appealed. Contact information for filing an appeal is provided in the letter of denial that is issued by the Copyright Office’s Office of the General Counsel. Note that if a request for a reproduction is denied, the Office will not refund fees associated with the retrieval of the deposit or for expedited service.
Registration deposits serve important evidentiary and other purposes, including in copyright infringement cases. Reproductions of registration deposits may be furnished upon request, but only to authorized persons. Attorneys should provide all information needed to support a request and allow ample time for the Copyright Office to process it.
1. Registration of a claim to copyright is required of U.S. authors in order to bring suit; is a prerequisite for a litigant to be eligible for statutory damages and the potential recovery of attorneys fee; and provides an evidentiary presumption. See 17 U.S.C. §§ 410(c), 411, 412.
2. Note that, in lieu of obtaining a reproduction of a deposit, any member of the public may inspect a deposit. For more information on how to inspect a deposit, see Circular 6, Obtaining and Access to and Copies of Copyright Office Records and Deposits, available at http://www.copyright.gov/circs/circ06.pdf.
3. Attorneys may request certification of the reproduction of the deposit for an additional fee. Certified reproductions of deposits are often used in litigation as evidence of the authenticity of the deposit. In a certification statement the Copyright Office attests that the reproduction of the deposit is a true reproduction. See Circular 6, Obtaining and Access to and Copies of Copyright Office Records and Deposits, at 2, available athttp://www.copyright.gov/circs/circ06.pdf.
Attorneys involved in overseas litigation may seek additional certification (known as as apostille certifications or authentication certificates) through the Department of State’s Bureau of Administration. For more information on non-Copyright Office certification of deposits, see http://www.state.gov/m/a/index.htm.
4. For an additional fee, attorneys may request that the reproduction be expedited service. Keep in mind, however, that requests for expedited service may be denied because (i) the deposit cannot be reproduced in an in expedited manner due to size and/or (ii) the Office does not have the available resources to reproduce the deposit in an expedited manner.
Abioye Oyewole is an attorney-advisor at the U.S. Copyright Office. She can be reached at (202) 707-8396 or email@example.com.