An action for copyright infringement requires 1) a valid copyright and 2) a an act of infringement. A valid copyright requires a work fixed in a tangible medium of expression. These works can be literary, musical, dramatic, and pictorial in a sculpture, image, motion picture or sound recording. The act of infringement in copyright is normally making an unauthorized copies but minor alterations or “derivative works also impose liability.
One Must Apply for a Copyright in Order to file a Copyright Lawsuit in Federal Court.
Copyright protection is a creature of statute. Section 411 of the Copyright Act provides that a federal lawsuit for Copyright infringement cannot be maintained until “preregistration or registration of the copyright claim has been made.” The U.S. Supreme Court has explained that this is a “claim-processing rule” and that even if the registration is denied, one is not barred from enforcement. This requires that the Copyright Office either grant or deny the application. The application cannot merely be filed before a lawsuit is instituted. If the application is denied, the rightsholder simply needs to serve the lawsuit on the Register of Copyrights in order to give the Register the opportunity to join the lawsuit.
Courts sometimes find the opinion of the Register of Copyrights Persuasive
One common reason for a Copyright being denied, and a common defense to Copyright infringement is that the alleged infringing device is useful and not an artistic work. In some cases, the Copyright Office makes an elaborate factual finding as to exactly why the work will not be registered. This finding is not binding on the Federal Courts (though some do take it quite seriously).
In Halo Creative & Design Ltd. v. Comptoir Des Indes Inc., the Rightsholder applied for a copyright registration for several pieces of furniture. The Copyright Office rejected the application stating that the furniture was useful and was not an artistic work fixed in a tangible medium of expression. The alleged infringer stated that the opinion of the Copyright Office should preclude the rightsholder from taking its Copyright Infringement case to trial. The Court disagreed and stated that a jury could consider the Copyright Office’s opinion as evidence and it could consider contrary opinion as evidence as well. I have attached the case below for download.