Registering a copyright is a prerequisite for bringing infringement actions in federal court. Registration entitles copyright holders to certain benefits, including the ability to obtain statutory damages and attorneys’ fees for successful infringement claims. Registering software presents unique challenges, and there are several important nuances to consider. While not exhaustive by any means, here are a number of things that are important for developers to consider.
As a basic introduction, registering software protects both the source and object codes. Software is unique in that many developers create an initial program and then subsequently modify and update the program. The base program, Version 1.0, so to speak, becomes a preexisting work relative to derivative works created later. Even slight modifications or updates to the original program constitute derivative works. The question becomes, what works should a developer register?
In its publications, Compendium of U.S. Copyright Office Practices and Circular 61: Copyright Registration for Computer Programs, the U.S. Copyright Office provides one answer: register the original work as well as each and every derivative work. However, registration of derivative works can be complicated.
In 2008, the U.S. District Court for the District of New Jersey held in Mortg. Mkt. Guide, LLC v. Freedman Report that registration of derivative works protects preexisting works by the same author. However, when registering a derivative work, developers should be careful to describe in detail the preexisting work, because an inadequate description can eliminate protections. The registration should be limited to material that was not previously registered, and it should identify the new material as compared to the preexisting work. Also, regarding timing, developers cannot retroactively register a derivative work after infringement of the preexisting work in an effort to prosecute the infringement. In other words, developers need to register their works prior to bringing infringement claims.
Some courts have recognized that, in certain circumstances, registration of preexisting works can protect derivative works. These cases are highly fact-dependent, and derivative works are protected through registered preexisting works only when substantial portions of the derivative work are the same as the preexisting work. For example, in 1999, the Eleventh Circuit Court of Appeals held in Montgomery v. Noga that registration of a preexisting work protected infringement of a derivative work that incorporated over seventy percent of the preexisting work’s source code. Note, however, that copyright holders may not be able to base a claim on non-overlapping aspects of their derivative works.
Another important aspect of registering software copyrights is the deposit requirement. The deposit is the source code that is submitted with the application, and in certain circumstances, the deposit may be modified. In cases of trade secrets or incomplete copies, registration may still be viable through redaction or receiving a grant of special relief. The deposit should be an exact copy of the work that is being registered, and the precise code that was registered as well as its revision history should be dutifully tracked to reduce the risk that problems arise in the future.
As far as whether a developer should register the original work as well as each and every derivative work, there are multiple feasible approaches. First, developers can register each major version of their work, including the original version, as well as intermediate versions that include important modifications. Developers likely do not need to register derivative works that make only minor or insignificant changes. Second, developers can register their works regularly and systematically, such as every month, three months, or six months. Third, developers can register works based on the portion of the work that has changed. These strategies are merely illustrative, and because each software project is different, and registration strategies can change depending on the facts of each case, we recommend consulting with legal counsel.