Registering Copyrighted Works with the U.S. Copyright Office: Once May Not Be Enough

Article by Jocelyn W. Brittin and Selwa Masri

It is widely recognized under U.S. copyright law that in order to bring a law suit against any third party that infringes a copyright owner's work of authorship, the copyright owner must register the work that has been infringed with the United States Copyright Office (Copyright Office).1 A lesser-known fact that copyright owners should heed is that even where he/she registers the original work with the Copyright Office, that registration may be of no use when a copyright owner seeks to file a law suit against any third party that infringes a derivative work that the owner created from its original work. This article will explain the meaning of "derivative works" and the need to register derivative works with the Copyright Office even if the underlying work on which the derivative is based is registered.

This past November, the movie "Harry Potter and the Sorcerer's Stone" became a box office hit breaking movie records around the nation. The Harry Potter movie is based on the best-selling book also entitled "Harry Potter and the Sorcerer's Stone." Ms. J.K. Rowling, the author of the Harry Potter book, enjoys significant rights and protections under U.S. copyright law,2 including the exclusive right to create derivative works from the book. The creation of the Harry Potter movie is an excellent example of Ms. Rowling exercising her right to create a derivative work.

According to the U.S. Copyright Act, a derivative work is "a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted."3 Other more widely known examples of derivative works are an English translation of a book originally written in Russian or a video game based on a television game show.

The creation of derivative works is not, however, limited to the book publishing and entertainment industries. Within the rapidly changing software industry, creating derivative works is an essential part of doing business. Indeed, companies that rely upon proprietary software applications as a significant source of revenue (e.g., Microsoft) or companies that use software code and applications developed for them (e.g., for operating a Web site or managing payroll processes) continually seek to update and improve their products...