Computer Program Registration Basics

Registration is not required for copyright protection to exist, but it is a prerequisite for filing a lawsuit in the United States for U.S. works.¹ Registration confers other benefits as well, including prima facie evidence of the validity of the facts stated in the certificate if filed within five years after initial publication,² and serving as a prerequisite for obtaining statutory damages and attorneys’ fees when other requirements are met.³

Only one registration is required to protect both the source code and the object code of a computer program. The source code and the object code are viewed as two representations of one work (the object code is the encryption of the copyright-protected source code).⁴ The deposit generally required is therefore of source code. Whether the registration for a computer program is made as a literary work, as is typical, or as another type of work (if forms of authorship other than code predominate, for example, registration of a video game as an audiovisual work of the performing arts), similar questions arise of how to most effectively register the work.

Determining Which Software Versions to Register: Preexisting and Derivative Works

To determine how to register a copyright on computer software, many practitioners will look first to guidance from the U.S. Copyright Office. The Copyright Office provides several resources, available on its website (www.copyright.gov), to help those wanting to understand the process and many of the issues involved in registering computer software. These include circulars on selected topics and the more comprehensive Compendium of U.S. Copyright Office Practices (Compendium).⁵ The Compendium, in particular, is a valuable resource with examples addressing many (but by no means all) practical situations.

The Copyright Office’s guidance is that registration is required for each separately published version of a computer program that contains new, copyrightable authorship, and that registration of any subsequent version covers only the new or revised material added to that version. That position is set out clearly in Circular 61: Copyright Registration for Computer Programs. One section of the Compendium provides a more nuanced view that there is no need to limit the claim in a copyright registration application if the derivative is based on copyrightable material that is owned by the claimant named in the application.⁶ However, other sections of the Compendium state that previously published or previously registered material should be excluded from the claim in a registration application.⁷ The Compendium gives examples of such exclusion where the author is the same for both the prior work and the work being registered.⁸ This seems to support the view set out in Circular 61.

Registering each published version of a work that contains new, copyrightable authorship is often impractical for software, however, because software developers may release many different versions of a program during its commercial life and distribute minor releases and updates between major releases. Moreover, the view taken by most courts that have considered the issue challenges the Copyright Office’s perspective. We review some of the court decisions on this topic in more detail below, and provide some thoughts as to practical approaches for dealing with the situation.

Case Law Overview

Notwithstanding the guidance in Circular 61, most courts that have considered the issue recognize that a copyright registration for a later derivative work provides sufficient basis for a lawsuit on a preexisting version of the same work when the author or copyright claimant is the same for the preexisting and derivative works. Most cases also seem to assume that the material infringed, or at least a substantial portion of it, is contained in the registered version, without always directly addressing that point. This view is expressed both in cases concluding that a registration for a later work is sufficient to support an infringement lawsuit for an earlier work, and in cases that find the later registration insufficient but nevertheless recognize the general principle.

What about the reverse situation—a suit on a derivative work based on a registration for an earlier version? Registration of an earlier version of a work cannot necessarily be relied on to provide coverage for a later derivative work, as the results in some cases demonstrate. Some cases, however, find registration of an earlier version adequate to the extent that components of the registered work are included in the later infringed version.

Registration of Derivative Work Sufficient for Infringement Claim Based on Preexisting Work

One of the early cases on the topic recognized the fundamental problem that if registration were required for each previously published subcomponent of a computer program, complete copyright protection for a program developed by the same author over a period of time could require hundreds of registrations.⁹ In Computer Associates International, Inc. v. Altai, Inc., Computer Associates sued Altai for infringement based on a claim that Altai’s software infringed the sequence, structure, and organization of the Computer Associates program ADAPTER, which was a component of Computer Associates’ CA-SCHEDULER product.¹⁰ Computer Associates registered version 2.1 of CA-SCHEDULER, but not version 1.0, the first version of CA-SCHEDULER that contained ADAPTER.¹¹ The registration certificate for CA-SCHEDULER 2.1 indicated that it was a derivative work whose preexisting material was CA-SCHEDULER 1.0.¹² Altai argued that Computer Associates could not maintain the claims for infringement of ADAPTER based on the CA-SCHEDULER 2.1 registration.¹³ The court rejected Altai’s argument, finding that because the undisputed evidence was that Computer Associates was the author of ADAPTER, the registration of CA-SCHEDULER 2.1 as a derivative work was sufficient for the maintenance of infringement claims based on ADAPTER.¹⁴

In another early case, In re Independent Service Organizations Antitrust Litigation,¹⁵ involving a dispute over infringement of service manuals and diagnostic software, the court stated that the Copyright Act does not require registration of each and every component part of a copyrighted work, particularly where the author of the derivative work is the uncontested author of each of the component parts.¹⁶ The court noted that the copyright statute does not address directly the distinction between preexisting materials from other authors and preexisting materials from the author of the derivative work.¹⁷ Xerox, the plaintiff, did not have to produce registrations for the preexisting works because it was the owner of those works; it was sufficient that it presented the registration certificate stating that it was the owner of the entire work (which included the preexisting works).¹⁸

Most of the cases applying this principle (sometimes referred to as “effective registration”) arise outside of the software context,¹⁹ and include maps, architectural works, film and musical works, engineering reports, and dolls, as well as other types of works. The analysis is the same for software and other works, so these cases are instructive for those seeking to register computer programs, and are cited by courts dealing with issues in the software context.²⁰

At least one case has expressly discussed Circular 61 and rejected the position taken by the Copyright Office. In Aspen Technology, Inc. v. M3 Technology, Inc.,²¹ the Fifth Circuit affirmed the jury’s finding of copyright infringement, rejecting M3’s argument that Aspen did not present sufficient evidence of its copyright ownership interest because, under Circular 61, Aspen’s registrations of certain versions of its software did not protect prior versions.²² The court stated that circulars may be instructive but are not authoritative.²³ The court’s view was that Circular 61 instructs only that derivative works must themselves be registered in order for newer material not contained in preexisting software to be protected, but says nothing about the effects on preexisting works.²⁴

Another case rejecting the Copyright Office’s perspective, although as related to online works rather than computer programs, is Mortgage Market Guide, LLC v. Freedman Report, LLC.²⁵ In that case, the defendants relied on § 103 of the Copyright Act and Circular 66: Copyright Registrations for Online Works, which states a position similar to that in Circular 61, to argue that preexisting works of a registered website should not be afforded protection.²⁶ The court noted cases holding that although courts have considered Copyright Office circulars to be a fair summary of the law, they merely provide simple explanations for laypersons and are not more binding on statutory interpretation than a plain reading of the Copyright Act itself or the copyright regulations codified at 37 C.F.R. §§ 202 et seq.²⁷ The court rejected the position in Circular 66 and held that preexisting online works by the same author should be protected when a derivative work is registered.²⁸

Registration of Derivative Work Insufficient for Infringement Claim Based on Preexisting Work

There are also a number of cases where the courts recognize the basic principle set out in the cases above, but find it inapplicable in the particular circumstances. The most interesting of these for computer software registration may be Oskar Systems, LLC v. Club Speed, Inc.²⁹ In that case, Oskar sued Club Speed for infringement of source code of a 2002 version of a computer software program used to operate go-kart tracks.³⁰ Oskar’s lawsuit relied on a 2009 registration for the “OSKAR Go Kart Business Software” that included a 2008 version of the source code as the deposit, which was a derivative work of the 2002 software.³¹ Oskar argued that because the 2008 work it registered was a derivative work, the registration covered any preexisting work upon which the derivative was based, and was therefore a sufficient basis for suing for infringement of the 2002 software that occurred in 2006.³² The court rejected Oskar’s argument that its registration of the 2008 version enabled it to sue for the 2006 infringement.³³

In rejecting Oskar’s registration as inadequate, the court raised concerns that the purpose of registration, which serves both an evidentiary function and to protect against fraud, would be defeated if the suit were allowed in this case. First, the court noted that the plaintiff’s expert’s report did not specify which version of the software his infringement opinion was based on, and there was evidence that it was based on a snapshot of the code as it existed in 2007, after the alleged infringement occurred.³⁴ Second, while acknowledging authority in other courts and in scholarly commentary that registration of a derivative work necessarily encompasses all of the original works contained within the derivative, the case at hand was distinguishable because the plaintiff did not allege that the defendant infringed the derivative work itself, only the earlier work.³⁵

Another significant factor in the Oskar case was that in the portion of the registration form that requires a brief description of the preexisting work from which the work being registered was derived, the plaintiff did not adequately describe the preexisting version(s) of the program on which the lawsuit was based.³⁶ The court noted that while the registration included some language that this work was a derivative of prior versions of the same computer program, it failed to identify upon which prior version(s) of the program the registration was based and when those prior versions were created, and apparently did not amend or fill in the specific sections for claims and limitations in a supplemental registration.³⁷

In Fidelity Information Services, Inc. v. Debtdomain GLMS PTE Ltd.,³⁸ the court relied on Oskar Systems to find that the plaintiff’s registration was inadequate to maintain the lawsuit. The screen display that was the subject of the infringement claims appeared to be generated by the SyndTrak version 3.269 software program, which was completed and registered in 2009, while the alleged infringement occurred in 2008.³⁹ The court acknowledged authority that a registration for a computer program extends to all copyrightable expression embodied in the program, including screen displays, but found that in this case there was no evidence that the screen display generated by SyndTrak 3.269 was a preexisting work.⁴⁰ The registration certificate for version 3.269 did not identify it as a preexisting work, and there was no evidence showing that the screen display was part of an earlier version of the software.⁴¹

Applications for registration of derivative works must do two things: (1) limit the claim(s) if the work being registered contains a substantial amount of material that was previously published or previously registered (or in the public domain or owned by a third party) (“material excluded” section of the electronic application form); and (2) identify what has been added to the work (“new material” section). The Oskar Systems and Fidelity cases both indicate that some specificity in the description of a preexisting work is required, referring approvingly to the Streetwise Maps case, where the registration for the derivative 1989 map specified that the preexisting work was a “1984, 1985” version.⁴² However, the view that describing a registered work as derivative “of prior versions of the same computer program” is imprecise and therefore does not encompass the preexisting work runs counter to the guidance provided by the Copyright Office. The Compendium instructs that general statements such as “prior versions” are usually acceptable for the material excluded section, and general statements such as “revised computer program” or “new computer code” are generally acceptable for the new material section of the registration application.⁴³

A review of the case law thus indicates that if the evidence apart from the registration itself is sufficient to establish that the preexisting work being sued on (or sufficient portions of it) is contained within the registered derivative work (which seems not to have been evident in the cases noted in this section), there is a strong argument for allowing the lawsuit if the registration includes the general types of descriptions of material excluded and new material that the Compendium advises are acceptable.

Protection for Subsequent Derivative Work Based on Registration of Preexisting Work

A slightly different but also complicated issue is whether a registration for a preexisting work is sufficient to support a lawsuit based on copying of a derivative work. There is no definitive answer because this is also a fact-intensive inquiry. Some derivative works will incorporate substantial portions of preexisting works. Those are stronger cases for bringing a claim for infringement based on the registration of the preexisting work. But if there are substantial differences between the derivative work and the preexisting work, it will be much more difficult to establish that registration of the preexisting work is sufficient to support a lawsuit.

While some cases have found that the registration of a preexisting work was insufficient to support claims of infringement of the derivative work,⁴⁴ other cases have held that an earlier registration will suffice. Central Point Software, Inc. v. Nugent⁴⁵ is an early case in the software context that held that the registration of the preexisting work could support a claim of infringement of a derivative work. The court noted that affidavits established that the later version had the same basic functions and incorporated over 50 percent of the code of the earlier version for one product, and that the later versions of two other products contained only minor modifications and improvements compared to the registered versions.⁴⁶

In Montgomery v. Noga,⁴⁷ the plaintiff took the position that its registration for its VPIC 2.9a software product was sufficient to support a lawsuit for infringement of the derivative work VPIC 4.3. The court of appeals agreed with the district court’s finding that the registration was sufficient, because the evidence at trial showed that VPIC 4.3 incorporated over 70 percent of the original source code from the registered work VPIC 2.9a, and that VPIC 4.3 would not function if the VPIC 2.9a code was removed.⁴⁸ By downloading VPIC 4.3 and incorporating it as a utility on discs, the defendants infringed the plaintiff’s registered copyright in VPIC 2.9a.⁴⁹

However, there may be a major limitation to relying on the registration of the preexisting work rather than the derivative work: the plaintiff may not be able to base its claim on any of the new features and material in the derivative work. This issue arose in Oracle America, Inc. v. Terix Computer Co.⁵⁰ Oracle sued Terix, alleging infringement of two versions of its Solaris operating system, based on Terix’s provisioning or facilitating the provision of software updates to the operating system. The software updates were not registered.⁵¹ The court held that Oracle could maintain the lawsuit based on the earlier registrations of the operating system, but its infringement claim would be limited to material common to both the operating system and the derivative software updates.⁵²

When determining whether to register derivative works of registered preexisting software, it is important to consider what percentage of the derivative work incorporates the preexisting software and the importance of the features in the derivative work that were not contained in the early registration. For derivative works with material changes, the owner should plan on registering the work if it wants the ability to pursue a copyright infringement lawsuit based on the unique features of the derivative work.

Understanding the Deposit Requirement

The deposit is one of the critical components of any copyright application. If source code is the required deposit, there are multiple options for providing relevant samples, and there are different requirements for original works and derivative works. Special options are also available for source code that is considered a trade secret (as it often is), including options to block out portions of the submitted deposit.⁵³ In addition, there is a process for requesting special relief from the normal registration deposit requirements, which may include situations where a complete copy is not available.⁵⁴ If granted, the registration certificate will indicate that the work was registered under a grant of special relief.⁵⁵

Case law illustrates the importance of complying with the requirement that the deposit be a “bona fide copy” of the work being registered. A deposit included with a copyright application must be an example of the work at the time of publication, not a version that is recreated to look like the work at the time of publication. In Shroats v. Customized Technology, Inc.,⁵⁶ the plaintiff created a deposit using a later version of software and reconstructed at least part of the deposit from memory.⁵⁷ He did not refer to the original software when preparing the deposit, and indicated that he was unsure as to whether certain pages of the deposit were even part of the original.⁵⁸ Noting the requirement that a deposit be a “bona fide” copy of the original work, the court found the registration invalid and granted the defendant’s motion for summary judgment.⁵⁹

Even if a deposit is sufficient for a registration to issue, it is critical to maintain sufficient additional evidence of what is included in the program in the event of a dispute. In Indyne, Inc. v. Abacus Technology Corp.,⁶⁰ Indyne filed its lawsuit for copyright infringement of its PIMS v.2 software program based on a registration it filed in 2008. While Abacus challenged the validity of the registration, the court did not analyze that issue in detail.⁶¹ Instead, the court focused on Indyne’s failure to produce sufficient evidence to allow a reasonable juror to conduct the required abstraction-filtration test to determine infringement.⁶² Indyne failed to keep a copy of the PIMS v.2 code as it existed on the date of publication, or of the prior PIMS v.1.⁶³ The only version it had by the time of the 2008 registration reflected the “chameleon-like” evolution of the code in the intervening years, and 36 percent of the code produced in discovery had “last modified” dates after the publication date.⁶⁴ The court distinguished the situation in Montgomery, noting that court was presented with both the original registered code as of the date of publication and a clear revision history that enabled the plaintiff to identify the changes made from earlier unregistered code.⁶⁵ The court therefore granted Abacus’s motion for summary judgment dismissing the copyright infringement claims.⁶⁶

Practical Registration Strategies

While the most cautious approach to obtaining the benefits of registration for computer programs would be to fully comply with the requirements of Circular 61 (registering each version of a work that contains any new, copyrightable authorship), many companies and developers find that to be impractical. In addition to the volume of registrations that would be required in many cases, the preparation of the required deposits can be burdensome when large volumes of software are involved. The question then is what registration strategies can be used to maximize obtaining the benefits of registration. Many companies will balance the burdens, scope of protection, and resources required, and identify a system that protects at least some key versions. Some approaches in use include the following:

• Register major versions such as 1.0, 2.0, etc. (or at least register the most recent major release and the earliest major release containing a substantial amount of code that you want to protect).
• In addition, register some intermediate versions such as 1.x, 2.x, etc.; but do not register other intermediate versions such as 1.x.y or bug fixes.
• Register at least once per specified time period (e.g., every three months, or once per year).
• Register based on the amount of code change from one version to another (e.g., if there has been a change in 15 to 20 percent of the code).

One way to focus on what should be registered is to ask whether the new material in a new release is sufficiently important that you would want to initiate a lawsuit if it were infringed, or you would be able to provide a registration certificate in a business negotiation where it is requested as evidence of ownership. If the answer is yes, you may want to register the work to best position yourself for that eventuality. An alternative is to wait until the need arises. If needed for purposes of litigation and a few other exceptional circumstances, expedited processing may be available,⁶⁷ although additional costs are involved.⁶⁸ However, backlogs may prevent the Copyright Office from responding within its five-business-day target. Because timing can be critical, delay may cause the loss of significant advantages in some cases.

Conclusion

The Copyright Office’s publications provide important insight into the procedures for registering copyrights for software. However, on the critical issue of what scope of protection is provided by a registration for a derivative work, the Copyright Office takes a view that many software developers find to be impractical and that does not reflect the view taken by most courts that have considered the issue. Practitioners will therefore need to balance resource costs, risks, and potential benefits to determine an approach to software copyright registration that best meets their business needs, keeping in mind the perspectives taken by various courts as well as Copyright Office positions. Familiarity with some of the lessons from the case law should help avoid potential missteps during the application process that can undermine the value of the copyright registration and leave the copyright holder with limited remedies. By strategically considering the implications of these issues, practitioners can best position individuals and companies to take advantage of copyright law to maximize protection for their software.

Endnotes

1. 17 U.S.C. § 411(a). In Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010), the U.S. Supreme Court rejected the view previously held by many courts that this requirement was a prerequisite for invoking the subject matter jurisdiction of the court, finding instead that § 411 establishes only a nonjurisdictional, claim-processing rule. That topic is beyond the scope of this article.

2. 17 U.S.C. § 410(c).

3. Id. § 412.

4. Oskar Sys., LLC v. Club Speed, Inc., 745 F. Supp. 2d 1155, 1162 (C.D. Cal. 2010).

5. See U.S. Copyright Office, Circular 61, Copyright Registration for Computer Programs (2012); U.S. Copyright Office, Circular 14, Copyright in Derivative Works and Compilations (2013); U.S. Copyright Office, Compendium of U.S. Copyright Office Practices (3d ed. 2014) [hereinafter Compendium] (especially section 721 on computer programs).

6. Compendium, supra note 5, § 507.2 (“Derivative works often contain previously published material, previously registered material, public domain material, or material owned by a third party because by definition they are based upon one or more preexisting works. If a derivative work contains an appreciable amount of unclaimable material, the application generally should limit the claim to the new material that the author contributed to the work, and the unclaimable material should be excluded from the claim. . . . By contrast, there is generally no need to limit the claim if the derivative work is solely based on or derived from unpublished material, unregistered material, or copyrightable material that is owned by the claimant named in the application.”).

7. Id. §§ 503.5, 504 (requiring identification of a work as original or derivative, and requiring the identification of excluded material and new material).

8. See id. §§ 512, 621.4, 621.5.

9. 775 F. Supp. 544 (E.D.N.Y. 1991), aff’d in part and vacated in part on other grounds, 982 F.2d 693 (2d Cir. 1992).

10. Id. at 549.

11. Id. at 555–56.

12. Id. at 555.

13. Id. at 556.

14. Id. at 556–57.

15. 964 F. Supp. 1469, modified on reconsideration on other grounds, 989 F. Supp. 1131 (D. Kan. 1997).

16. Id. at 1473.

17. Id.

18. Id.

19. See, e.g., R.W. Beck, Inc. v. E3 Consulting, LLC, 577 F.3d 1133 (10th Cir. 2009) (engineering consultant reports); Christopher Phelps & Assocs., LLC v. Galloway, 492 F.3d 532 (4th Cir. 2007) (architectural designs); Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199 (3d Cir. 2005) (rock sculptures depicted in catalog); Xoom, Inc. v. Imageline, Inc., 323 F.3d 279 (4th Cir. 2003) (clip-art images); Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739 (2d Cir. 1998) (maps); O.T. Pickell Builders, Inc. v. Witowski, No. 96 C 4233, 1998 U.S. Dist. LEXIS 14936 (N.D. Ill. Sept. 16, 1998) (architectural designs); Greenwich Film Prods., S.A. v. DRG Records, Inc., 833 F. Supp. 248 (S.D.N.Y. 1993) (film soundtrack).

20. See, e.g., AFL Telecomms. LLC v. SurplusEQ.com, Inc., No. CV11-1086-PHX-DGC, 2012 U.S. Dist. LEXIS 49239 (D. Ariz. Apr. 9, 2012).

21. 569 F. App’x 259, 261–73 (5th Cir. 2014).

22. Id. at 268–69.

23. Id.

24. Id.

25. No. 06-cv-140-FLW, 2008 U.S. Dist. LEXIS 56871 (D.N.J. July 28, 2008).

26. Id. at *79–83.

27. Id. at *84–85.

28. Id. at *85–93.

29. 745 F. Supp. 2d 1155 (C.D. Cal. 2010).

30. Id. at 1157.

31. Id. at 1160–61.

32. Id. at 1161.

33. Id. at 1163–64.

34. Id. at 1162 n.4.

35. Id. at 1163.

36. Id. at 1163–64.

37. Id.

38. No. 09 Civ. 7589 (LAK)(KNF), 2011 U.S. Dist. LEXIS 93668, at *11–12 (S.D.N.Y. Aug. 11, 2011).

39. Id. at *4, *10.

40. Id. at *8–9.

41. Id. at *11.

42. Oskar Sys., LLC v. Club Speed, Inc., 745 F. Supp. 2d 1155, 1162–63 (C.D. Cal. 2010) (citing Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 741, 746–47 (2d Cir. 1998)); Fidelity, 2011 U.S. Dist. LEXIS 93668, at *8–10 (citing Streetwise Maps, 159 F.3d at 745–47).

43. See Compendium, supra note 5, §§ 621 et seq. for examples.

44. See Airframe Sys., Inc. v. L-3 Commc’ns Corp., 658 F.3d 100 (1st Cir. 2011); Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 354 F.3d 112 (2d Cir. 2003); Murray Hill Publ’ns, Inc., v. ABC Commc’ns, Inc., 264 F.3d 622 (6th Cir. 2001), abrogated on other grounds by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010) (noting that because a derivative work is cumulative of the earlier work, it is logical that the registration of the derivative work would relate back to include the original work, while registration of the original materials would not carry forward to new, derivative material).

45. 903 F. Supp. 1057 (E.D. Tex. 1995).

46. Id. at 1060 n.5.

47. 168 F.3d 1282, 1292–93 (11th Cir. 1999); see also Well-Made Toy Mfg., 354 F.3d at 113; Carmichael Lodge No. 2103 v. Leonard, No. S-07-2665 LKK/GGH, 2009 U.S. Dist. LEXIS 84857 (E.D. Cal. Sept. 16, 2009) (travel guides).

48. Id. at 1292.

49. Id.

50. No. 5:13-cv-03385-PSG, 2014 U.S. Dist. LEXIS 561 (N.D. Cal. Jan. 3, 2014).

51. Id. at *28.

52. Id. at *29.

53. See Compendium, supra note 5, § 1509.1(C) for detailed guidance on the various options.

54. See id. §§ 1508.8 et seq.

55. Id. § 1508.8(B).

56. No. 08 C 5565, 2011 U.S. Dist. LEXIS 68142 (N.D. Ill. June 22, 2011).

57. Id. at *7–10.

58. Id. at *18–20.

59. Id.

60. 876 F. Supp. 2d 1278, 1280 (M.D. Fla. 2012).

61. Id. at 1283 n.11.

62. Id. at 1287–88.

63. Id. at 1280.

64. Id. at 1280–81.

65. Id. at 1289–91.

66. Id. at 1293.

67. See U.S. Copyright Office, Circular 10, Special Handling (2013) (providing that special handling is granted only in the following circumstances: pending or prospective litigation, customs matters, and contract or publishing deadlines that necessitate the expedited issuance of a certificate).

68. See U.S. Copyright Office, Circular 4, Copyright Office Fees (2016).