Historical and Revision Notes
The recording and priority provisions of section 205 are intended to clear up a number of uncertainties arising from sections 30 and 31 of the present law [sections 30 and 31 of former title 17] and to make them more effective and practical in operation. Any “document pertaining to a copyright” may be recorded under subsection (a) if it “bears that actual signature of the person who executed it,” or if it is appropriately certified as a true copy. However, subsection (c) makes clear that the recorded document will give constructive notice of its contents only if two conditions are met: (1) the document or attached material specifically identifies the work to which it pertains so that a reasonable search under the title or registration number would reveal it, and (2) registration has been made for the work. Moreover, even though the Register of Copyrights may be compelled to accept for recordation documents that on their face appear self-serving or colorable, the Register should take care that their nature is not concealed from the public in the Copyright Office’s indexing and search reports.
The provisions of subsection (d), requiring recordation of transfers as a prerequisite to the institution of an infringement suit, represent a desirable change in the law. The one- and three-month grace periods provided in subsection (e) are a reasonable compromise between those who want a longer hiatus and those who argue that any grace period makes it impossible for a bona fide transferee to rely on the record at any particular time.
Under subsection (f) of section 205, a nonexclusive license in writing and signed, whether recorded or not, would be valid against a later transfer, and would also prevail as against a prior unrecorded transfer if taken in good faith and without notice. Objections were raised by motion picture producers, particularly to the provision allowing unrecorded nonexclusive licenses to prevail over subsequent transfers, on the ground that a nonexclusive license can have drastic effects on the value of a copyright. On the other hand, the impracticalities and burdens that would accompany any requirement of recordation of nonexclusive licenses outweigh the limited advantages of a statutory recordation system for them.
2010—Subsec. (a). Pub. L. 111–295 inserted at end “A sworn or official certification may be submitted to the Copyright Office electronically, pursuant to regulations established by the Register of Copyrights.”
1988—Subsecs. (d) to (f). Pub. L. 100–568 redesignated subsecs. (e) and (f) as (d) and (e), respectively, and struck out former subsec. (d), which read as follows: “No person claiming by virtue of a transfer to be the owner of copyright or of any exclusive right under a copyright is entitled to institute an infringement action under this title until the instrument of transfer under which such person claims has been recorded in the Copyright Office, but suit may be instituted after such recordation on a cause of action that arose before recordation.”
Pub. L. 101–650, title VIII, § 805, Dec. 1, 1990, 104 Stat. 5136, provided that:
The Register of Copyrights is authorized, upon receipt of any document designated as pertaining to computer shareware and the fee prescribed by section 708 of title 17, United States Code, to record the document and return it with a certificate of recordation.
The Register of Copyrights is authorized to maintain current, separate records relating to the recordation of documents under subsection (a), and to compile and publish at periodic intervals information relating to such recordations. Such publications shall be offered for sale to the public at prices based on the cost of reproduction and distribution.
In the case of public domain computer software, at the election of the person recording a document under subsection (a), 2 complete copies of the best edition (as defined in section 101 of title 17, United States Code) of the computer software as embodied in machine-readable form may be deposited for the benefit of the Machine-Readable Collections Reading Room of the Library of Congress.
The Register of Copyrights is authorized to establish regulations not inconsistent with law for the administration of the functions of the Register under this section. All regulations established by the Register are subject to the approval of the Librarian of Congress.”
Recordation of assignments of copyrights or other instruments received in the Copyright Office before Jan. 1, 1978, to be made in accordance with this title as it existed on Dec. 31, 1977, see section 109 of Pub. L. 94–553, set out as a note under section 410 of this title.
IVAN HOFFMAN, B.A., J.D.
The owner of rights in copyright has the right to transfer and assign some or all of those rights to another party (the Assignee) and it is in the best interests of that Assignee to record the document of transfer with the United States copyright office. For the purposes of this article, I will use the term assignee and assignment as a catchall for various forms of transfers. Any party not the original copyright proprietor can be an Assignee including publishers (if the copyright is in the name of the author), web site owners taking transfers from designers and content providers and other such parties.
What May Be Assigned
Copyright is not a monolithic concept. A copyright bestows on the owner a bundle of rights, to use the oft-used metaphor, and that bundle includes the rights to make copies, make derivative works, display, perform and many other rights. An assignment can be as to some or indeed all of the rights in copyright including not merely the above rights, but the above and many other rights within certain territories, for certain times and other such forms of grants and licenses. And while an assignment of non-exclusive rights can be made without a writing, a procedure which should *never* be followed, in order to transfer exclusive rights the assignment must be in writing and signed by the owner of those rights or that owners duly authorized agent. Copyrights can also be transferred by operation of law (such as a judgment after a civil action) or they can be bequeathed via will or intestate succession. However I wish to focus, in this article, on voluntary transfers within a commercial context since that is the most frequent experience many will have.
In the instance where there are joint or co-owners of a work, each of those joint or co-owners has the non-exclusive right to transfer right in the entirety of the work but any such transfer is subject to the same rights of the other co-owner to do so. The foregoing is in the absence of a written and fully signed collaboration agreement that sets forth a different structure for the relationship. Indeed, in that agreement it is highly recommended that one of the parties be granted the sole and exclusive right to handle and administer the rights in the joint work, subject of course to a full accounting to the other. This makes it much more efficient and less cloudy when a rights transfer of some sort is involved. Furthermore, it is essential when taking an assignment from a co-owner that the document be in writing and signed by both co-owners otherwise the Assignee may find that there are competing assignments made since without that written assignment, any assignment can only be non-exclusive.
Documents that can and should be in writing and recorded are any contracts, licenses, mortgages, interests in copyrights such as for security purposes (these also may be subject to state laws governing the filing of appropriate notices under the states laws such as the Uniform Commercial Code or other statutes) and other documents regarding rights or interests in copyrights, whether or not those copyrights relate to published or unpublished works. As an alternative to filing the entirety of a document, the Assignee can file a short form summation of the underlying document.
Advantages of Recordation
As I indicated above, it is to the distinct advantage of the Assignee to have the assignment recorded. While the document will be binding as between the owner-transferor subject to its terms, the advantages of recording the document give the Assignee potential rights as against third parties who are not parties to the transfer and these rights can be very important. These are some instances:
1. In the event the owner-transferor (or a collaborator, as discussed above) has made multiple transfers of the same rights (including both further exclusive as well as non-exclusive transfers), the document first recorded may create a priority among the various assignees (not to mention of course any rights as against the owner-transferor in the transfer document about restrictions on assignments, warranties etc.). There are time limits to when the recording must take place and if it is not so recorded, the subsequent transfer may in fact take priority if it is first recorded and otherwise satisfies the conditions of the copyright and other laws.
2. Under appropriate circumstances, the filing and recording of the transfer document establishes what the law refers to as constructive notice to the public about the existence and content of the recorded document. In this sense, it is similar to the impact recording a document of title to real estate has. What this means is that, under proper circumstances, the recorded document prevents third parties from successfully claiming they did not know of the existence of the transfer or of the Assignees rights in the copyright and this may have an impact on remedies such as damages. An innocent infringer is subject to less damages than one who acts with knowledge. In this regard, it is similar to putting a copyright notice on the work. One important qualification here is that the recorded document will only provide such constructive knowledge if the underlying copyright has also been registered. This means that both the underlying work and the assignment should both be recorded.
The rules and statutes surrounding the recording of transfers in copyrights are a bit complex but under any circumstances, it is very important that the Assignee obtain a valid, written and signed document of transfer and that the same be recorded very promptly in order that that Assignees rights be most protected.
© 2001 Ivan Hoffman