In a recent decision, the Second Circuit Court of Appeals recently held that a copyright application solely directed to screen shots generated from a software program was insufficient to establish copyright rights in the software as a whole, for purpose of giving the plaintiff a right to sue for infringement of the software. In A Star Group, Inc. v. Manitoba Hydro, the Second Circuit considered whether a plaintiff had jurisdictional standing to file suit for copyright infringement relating to its software – specifically because the plaintiff applied for copyright protection only over screen shots showing various displays that appear when its software was used and not in the software as a whole. (A Star Group, Inc. v. Manitoba Hydro, No. 14-2738-cv (2d Cir. July 27, 2015) affirming No. 13 Civ. 4501, 2014 WL 2933155 (S.D.N.Y. June 30, 2104) – BNA’s cite: 2015 BL 238362.)
The Copyright Office’s guidance for seeking registration of software (http://www.copyright.gov/circs/circ61.pdf) advises that at least some portion of the source code (subject to modifications due to trade secret claims) must be deposited with the Application in order to qualify for copyright registration in the software. In addition, the Copyright Office has confirmed that, “The registration [in computer software] will extend to any copyrightable screens generated by the program, regardless of whether identifying material for the screens is deposited.” (Circular 61, at 3). If instead, the applicant only wanted to protect certain design elements, then the applicant could apply for protection of only those elements as “works of visual arts.”
In the case at hand, A Star filed its application for registration the day before it filed a complaint in federal court for copyright infringement of its software. The copyright application only covered the screen shots; the deposit contained “operations risk reports, in the form of charts and graphs, apparently generated by the Timetrics software.” A Star did not apply for copyright registration in the software as a whole, nor did it submit a copy of the source code (either complete or excerpted due to trade secret claims) to the Copyright Office.
In its complaint, however, A Star described itself as “the owner of copyright rights to Timetrics software and related documentation, including without limitation, Timetrics screenshots, graphic representations, data compilations, source code, object code, programming tools and documentation related to Timetrics technology and derivative works thereof.” Essentially, asserting copyright ownership in a much broader collection of works than what was covered in its application for copyright registration.
The district court concluded that A Star’s infringement case was “deficient” because it had not completed its copyright application before filing suit. The district court also declined to allow A Star the opportunity to amend its complaint to refer to a subsequent registration of the screen shots alone, concluding plaintiff’s failure to tie the alleged infringement (of the software) to the registered copyright rights (in the screen shots) and thus had failed to allege how or when the defendant allegedly copied the copyrighted works.
The Second Circuit agreed with the conclusion – but for different reasons. The Second Circuit decided not to reach the ultimate question of whether a pending copyright application could meet the jurisdictional requirement for registering a copyright before filing an infringement lawsuit (see Psihoyos v. John Wiley & Sons, Inc., 748 F. 3d 120, 125 (2d Cir. 2014) (collecting cases regarding the different standards for registration before filing copyright infringement suits across various districts), and instead affirmed the dismissal on more basic grounds – that the plaintiff failed to identify how the defendant allegedly infringed the copyright in the screen shots.
As a result – software developers who seek to protect their code through copyright should apply for registration of every critical aspect of their software in order to obtain maximum protection against potential infringement. If the purpose is to protect the code, then the rights in the code should be claimed and a copy of the full source code (redacted if needed to account for trade secrets) should be submitted to the Copyright Office. If there is a user manual to be protected, that should be claimed and a copy submitted as well. While copyright protection exists the moment the “work is fixed in a tangible medium of expression,” a litigant cannot seek judicial redress for potential infringement unless the registration of the work sought to be protected has been accomplished BEFORE filing suit.