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Timing is Everything - A Significant Supreme Court Ruling on Copyrights

08.13.19  |  By Paula M. Gart

Most design professionals understand the benefits of protecting their designs through registration of their copyrights with the U.S. Copyright Office.  Some wisely register their architectural works as a matter of course, or at least register their more significant or important designs prior to them being built or published, making them more likely to be copied by others as a result. Publication of an architectural work occurs when the designs or images of the designs are displayed publicly in promotional materials, websites, design awards or in digital or print publications. 

Why register copyrights at all?  Even though the design professional who authors the designs − or the firm that the design professional is an owner of or employed by – is the owner of the design's copyrights automatically, registration has always been required before a copyright infringement action against the one who copies those designs – known as the infringer, could be started. 

Upon learning of an infringement of its designs, the design professional could file her registration application with the U.S. Copyright Office and then immediately start a copyright infringement action for damages or to stop, or enjoin, the construction of those designs. 

The U.S. Supreme Court has recently changed the timing of the ability to commence that infringement action.  Now, instead of being able to pursue the infringer immediately on simply filing for copyright registration, the aggrieved design professional must wait until the filed application is actually registered by the U.S. Copyright Office.  The mere filing of a copyright application is no longer sufficient to permit a copyright infringement action to proceed under the Copyright Act; obtaining the registration of the copyright is now required to do so.  This hurts architects and engineers whose designs are often misappropriated by others because the U.S. Copyright Office is taking approximately seven to nine months to register copyrights, with seven months being the average wait time to receive registration from the time of application.  Adding in the time needed to properly apply for registration results in the design professional having to wait and seethe for close to a year while his or her designs are being used by another, all because the lawsuit now cannot commence until the registration is actually granted. 

Had the design professional filed for registration on the completion of the designs so that registration occurred prior to the infringement, the design professional would be entitled to statutory damages, avoiding the need to prove actual damages and attorneys' fees.  Of course, upon the actual registration of the copyright, the registering design professional could recover damages for infringement that occurred before and after the registration period.  But since registration is a prerequisite to recovering statutory damages and attorneys' fees, filing for copyright registration of the designs as they leave one's firm puts the design professional in a position to take more immediate action against the infringement if it occurs.  Statutory damages can in some cases be significantly more than actual damages suffered by the design professional owning the copyright in the designs.  A showing of willful infringement, which is often accomplished if the drawings and architectural work contain the appropriate notice of copyright ownership and indicia of ownership, may entitle the copyright owner to receive up to $150,000 per architectural work infringed.  Those statutory damages, plus attorneys' fees, may provide the incentive needed to register copyrights as the designs are produced and issued in an effort to avoid infringement.

There is no way to know when someone will infringe a design, so it behooves design professionals to routinely register their designs as soon as they are issued. Given the relative ease and low cost of filing registrations and the wait time for the registration to be received, filing a copyright registration of the designs on their completion or issuance should be part of every design professional's standard practice.

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