The Zernerlaw Report
Protecting Your Best Ideas
Since 1927, the Writers Guild of America, West Registry has existed as a place where professional and aspiring screenwriters can deposit their scripts. It exists solely to document a provable date of creation in the event there is a claim of copyright infringement. And yet for all the good intentions of the WGA in establishing the Registry, because writers treat it as a substitute for registration with the Copyright Office, its existence only serves to damage the interests and waste the money of WGA members.
If the WGA is interested in making sure that its members receive the greatest possible protection for their scripts, it should immediately shut the Registry down or take significant steps to make sure that the Registry does not act in a way that is antithetical to the best interests of screenwriters.
Over the years, the WGA has marketed the Registry as the place to register a screenplay The WGA has made both Final Draft® and Movie Magic Screenwriter® preferred formats for the Registry and writers using these programs believe that depositing a script with the Registry is de rigueur. As a result, screenwriters have acquired the mistaken impression that using the Registry is all that is required to protect their screenplay. This perception is completely inaccurate and the WGA should take steps to correct it.
As a copyright lawyer and litigator in Los Angeles for almost 20 years, I have spoken to hundreds of writers, both established and newcomers, who contacted me because they were worried that their screenplay was stolen. One of the first questions I will ask the writer is whether they registered the script with the U.S. Copyright Office. While many do tell me that they have, a large percentage proudly tells me that they only registered the script with the Registry.
This error is potentially costing writers hundreds of thousands of dollars. The reason for this is that according to §412 of the U.S. Copyright Act, in a lawsuit for copyright infringement, the Plaintiff cannot receive either attorney’s fees or statutory damages unless they registered with the Copyright Office before the infringement commences. 
Judges interpreting §412 have interpreted “commencement” to mean the first act of infringement in a series of ongoing separate infringements. In the case of motion pictures, the first act of infringement would typically occur at the time a screenplay containing infringing material is written, not the release of the movie. This means that even if the aggrieved screenwriter finds out about the infringing movie and registers with the Copyright Office before the film’s release, it’s almost certainly too late. Since the writer registered after commencement of the infringement, he or she could not receive statutory damages or attorney’s fees in any subsequent litigation.
The consequences of failing to register with the Copyright Office can be tremendous. If the script was properly registered, a court can award statutory damages of up to $150,000 for willful infringement. Without prior registration, these would not be allowed. Also, most screenwriters, in fact, most people, cannot afford the attorney’s fees that arise in a copyright infringement lawsuit. Such fees, if paid on an hourly basis, can easily reach into the hundreds of thousands of dollars. As a result, the screenwriter must usually find an attorney who will take on the case on a contingency fee basis. But any attorney asked to take on such a case for a 1/3 contingency is going to be hard-pressed to do so if neither attorney’s fees nor statutory damages will be part of the award.
Without these possible remedies, the screenwriter would only be able to receive the actual damages suffered by him and any profits of the infringer attributable to the infringement. But the reality is that for most films, it is almost impossible to show any “profits”, and certainly not for films that have just been released. That leaves the screenwriter’s actual damages.
For a screenwriter with an established track record, like Eric Roth or David Koepp, it may be possible to prove significant damages. But for the vast majority of writers, there is no track record. It would be difficult at best for them to prove that they would receive any more than WGA minimum for a script. And if the screenwriter is not a WGA member, it is hard to prove even that much in damages.
Here’s an example of how the damages plays out depending on whether the work was registered with the Copyright Office.
Let’s imagine that our screenwriter, Dan, registered his script with the Copyright Office, and the screenplay was used as the basis for a low-budget movie. When the movie came out, it bombed, and so there are no profits. Dan hires a lawyer, who sues for copyright infringement. Dan has no prior credits, so significant actual damages are hard to prove. But because the script was registered with the Copyright Office, Dan can ask for statutory damages of up to $150,000. Faced with the threat of not only paying Dan a large statutory damage award, plus paying Dan’s attorney’s fees and their own attorney’s fees, the producer quickly settles the case, giving Dan a multiple of what he would have received had they bought the script in the first place.
Now imagine the same scenario, except that Dan registered his script with the WGA Registry instead of the Copyright Office. As a result, Dan can only receive his actual damages, which are somewhat less than $50,000. But when Dan tries to find an attorney to take his case on a contingency, he is unable to do so. One-third of $50,000 is only $16,666, which is far less than most attorneys will need to take such a case on a contingency.
Due to the complexities and difficulties of bringing such a case, Dan can’t find an attorney who will represent him. Consequently, Dan doesn’t bring a lawsuit and doesn’t get any money for the infringement. Remember, the only difference in these two scenarios is that in one Dan registered with the Copyright Office, and in the other, with the WGA Registry.
Even in the case of an established screenwriter who can prove actual damages of over $150,000, the ability to obtain attorney’s fees is crucial as it could add over $100,000 to the settlement value of a case.
Also, even if a writer did not register with the Copyright Office before learning of the infringement, copyright registration is still required prior to that writer bringing a lawsuit for copyright infringement. So, even if he previously filed with the Registry, the writer must still file with the Copyright Office. This is a waste of the writer’s time and money.
The real shame in all this is that the WGA makes it a point not to educate its members to these facts. The only reason I can imagine that they keep their members in the dark is that the WGA knows if people were aware of the truth, no one would bother using the Registry anymore, resulting in what is probably a loss of over $1,000,000 per year to the Guild. While I’m sure this represents a significant portion of the WGA’s annual revenue, the Guild should not just put this revenue source over their member’s best interests.
In fact, if one visits the details page of the WGA Registry, the word “copyright” is not even mentioned. And on the WGA Registry FAQ page, where the Guild could easily educate its members about the importance of copyright registration, it merely states:
Does registration take the place of copyright?
Registering your work with the WGAW Registry does not take the place of registering with the Library of Congress, U.S. Copyright Office. However, both create valid legal evidence that can be used in court.
Questions regarding copyright should be directed to the U.S. Copyright Office in Washington, D.C. at (202) 707-3000 or to an attorney specializing in that area of law. Click on www.loc.gov for more information.
The WGA has an opportunity to clearly explain to its members the benefits of copyright registration. Instead, the FAQ attempts to equate the Registry with the Copyright Office by claiming that "both create valid legal evidence that can be used in court." While this is technically true, it leaves out so much that it must be seen as a deliberate attempt to mislead its members and non-WGA writers who may also register their scripts with the Guild for double the fee as WGA members (currently registration fees for literary material are $20.00 US for the general public and $10.00 US for WGA members in good standing).
An additional problem with the Registry is that the registration only lasts for five years unless it is renewed for an additional fee &emdash; contrast that with Copyright Office registration which remains in force until 70 years after the writer’s death. Because most people do not bother to renew the registrations, even the initial registration could prove legally worthless to prove prior creation if the infringement is discovered more than five years after the deposit, a not uncommon occurrence. While this five year rule may have made some sense in the pre-Internet era when the WGA actually had to pay to store the physical scripts, it makes no sense in 2010, when almost all of the scripts received by the Registry are digitally uploaded. The cost of maintaining a digital copy of these scripts indefinitely would only cost a few pennies per year.
Because the continued existence of the Registry only serves to hurt the true interests of WGA members, the WGA should shut it down, and instead, inform its members that if they want to protect their written material to the greatest extent possible, they should register their script with the U.S. Copyright Office. If the WGA is not willing to close the Registry, it should, at a minimum, take the following steps:
- Add explicit language to the Registry web site informing WGA members that WGA registration is not a substitute for Copyright Office registration and informing them that there are significant advantages to registering with the Copyright Office immediately and not just relying on the WGA registration process.
- Extend the term of the registrations, especially for digital uploads from 5 to 20 years, or better yet, indefinitely. The cost of maintaining these digital uploads is so small that to not do so really shows that the WGA is really more interested in raising revenue then protecting its members.
However, it should be acknowledged that as long as the Registry exists, the WGA is not working in the best interests of its members or the greater screenwriter community. For the good of screenwriters everywhere, the best thing would be for the WGA to stop taking further submissions and instead, make sure that writers know that registration with the Copyright Office is the best way to protect their scripts.
This work is licensed under a Creative Commons Attribution-ShareAlike 3.0 Unported License.
 §412 of the Copyright Act states, in pertinent part, “[N]o award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for (1) any infringement of copyright in an unpublished work commenced before the effective date of its registration . . . .”
Since the vast majority of screenplays constitute “unpublished works,” the registration must be in place before the infringement begins.
Mail Problems at Copyright Office: Due to last year's anthrax scare, the Copyright Office did not accept any mail delivered through the post office for a period of about six months, creating a huge backlog which they have still not remedied. If you are planning on filing any copyright applications, use a commercial mail carrier such as FedEx, UPS, or Airborne Express.
Case to Watch – Eldred v. Ashcroft: On October 9, the Supreme Court heard arguments in the case of Eldred v. Ashcroft, which seeks to overturn the 20-year copyright extension that was enacted by Congress in 1998. Currently, copyright for works published before 1976 lasts for 95 years and no new copyrighted works will enter the public domain until at least the year 2018. If the Supreme Court decides to strike down the law, then the copyright term will go back to the previous 75-year term and all works published between 1923 and 1928 will immediately enter the public domain, including such seminal works as the movie The Jazz Singer, Gershwin's Rhapsody in Blue and the first Mickey Mouse cartoon. More information can be obtained at http://www.eldred.cc.
Court Rules "Skank" is Not Defamatory: In case you were worrying about being sued for calling someone a "skank," the California Supreme Court has said, "It's okay." In the case of Seelig v. Infinity Broadcasting Corp., Jennifer Seelig, one of the losing contestants on the television show Who Wants to Marry a Millionaire, sued San Francisco radio DJ Vincent Crackhorn, as well as the station, for referring to her on the air as a "chicken butt," "local loser" and "big skank." The California Court of Appeals struck down her lawsuit, ruling that the terms mentioned above were simply hyperbole and could not be proven true or false. So, go ahead, call someone a "skank;" you might get punched, but you can't get sued.
If your company is planning on putting out a new product or starting a new service, you're going to want to choose a name that is catchy, and stylish, and, most important, isn't already being used by someone else. A trademark search company will charge between $200 and $1000 for each trademark search depending upon how thorough you want them to be. So, before you shell out that money, do your own search. It won't tell you for certain that a name is available, but it will give you a good idea if the name you want is already taken, so you can move on to other choices.
First Step—Patent and Trademark Office
The first place you're going to want to look is naturally the United State Patent and Trademark Office ("PTO"). The PTO has a searchable database of all current and expired trademarks, which is called "TESS" the Trademark Electronic Search System. You can find it on the web at http://tess.uspto.gov. When you get there, put your search term in the box and hit enter. TESS will automatically search both the plural and singular of your search term and give you results for both active registrations ("live") and expired or abandoned registrations ("dead") registrations.
If the search comes back with no results, great. Your term might be clear. But search again, this time using common misspellings. For example, if your proposed trademark is "Forever," then also search "Fourever" and "4ever." Get creative. Remember it doesn't cost any more to do these additional searches, but it will cost you if you choose a trademark that's already taken.
If your search comes back with results, don't panic. That doesn't necessarily mean that the mark is definitely taken. First, look at the "live/dead" indicator on the search results. Are all the matching results "live"? If they are all "dead," you don't have a problem. For those that are live, check and see what goods and services are being offered under those marks. If the goods and services are very different from those that you plan to use, then you may be okay. For example, if you're planning to use the "Forever" trademark on a line of purses, and you find that someone has registered "Forever" for use with plumbing supplies, you shouldn't have a problem because no one is going to confuse the two companies. However, if the prior registration is for women's shoes, then you might have a problem even though the goods aren't identical. That's because the PTO will look to see if the two products are so related that consumers might be confused.
Second Step – The Web
Once your PTO search is done and you're sure that no one is using the mark you've chosen, your next step is to head to the Web. Go to one of the major search engines, such as Google, Altavista, or Dogpile, and enter your term. What do you see? Is the mark already being used? If so, for what purpose? If you get too many results from your search, narrow the search by also including the product or service you want to use (e.g., "Forever Purses").
If you're only planning to use the mark in a limited geographical area (e.g., for a drycleaner), then you will also want to search the Internet phone books at www.switchboard.com or www.bigyellow.com. Put your term in as the business name and search Los Angeles and the surrounding areas. Again, if the name comes up, check to see what product is being offered. You should only have a problem if the products are similar or related.
Remember, even though your search comes up clear, this does not necessarily mean that you can use the mark. A company may be using a spelling that you didn't think of, or maybe it just doesn't have an Internet presence and didn't come up in your search.
But by using these free searches, you might be able to quickly and cheaply determine that a name you want has been taken, and you can move onto another choice.
A recent but unfortunate trend I have noticed is of companies blatantly stealing information posted on a website. One company will spend days or weeks, and thousands of dollars in preparing a website, describing its products and services in just the right way and putting it in the perfect arrangement. Then, a competitor comes along, and, with a few clicks of the mouse, takes all of that information and puts it on its own site.
Once the competitor is caught, a letter will usually convince him to remove the stolen material, but what about damages? If the website hasn't been registered for copyright then normally the victim would only be limited to its actual damages, which would be hard to prove and probably not worth the trouble of a lawsuit. Also, the victim couldn't receive any attorney's fees, making most lawsuits prohibitively expensive. However, if the website was previously registered with the copyright office, then the injured party cannot only recover the attorney's fees incurred in prosecuting the case, but can also ask the court for "statutory damages" instead of actual damages.
Statutory damages are a device which allows the court to impose damages based on the nature of the infringement and the culpability of the offending party. The court is granted discretion to impose damages between $750 and $30,000. And, if the court finds that the infringement was committed willfully, then the court can increase the damages in an amount up to $150,000 for each act of infringement.
Consequently, I would certainly recommend that if you have a website which contains protectable material (not just your collection of Jennifer Garner pictures), you register the website for copyright protection. It's neither difficult, nor expensive and can certainly pay off in the long run. If you are constantly making additions to your website, then file registrations for just the updates on a regular basis (quarterly, semi-annually or yearly depending upon how often changes are made.)
I am often asked by clients whether their new artistic creation (e.g., script, book, or website), must be registered with the U.S. Copyright Office. While it is true that a creative work is protected by copyright at the moment of creation, copyright registration grants the copyright holder certain benefits which are well worth the $30 registration fee.
First, by registering your work for copyright you now have irrefutable proof of when the work was created. So if someone infringes your copyright and you sue them, they won't be able to claim that their piece was done first.
Second, registration is a prerequisite to filing a lawsuit for copyright infringement. The court will not allow a copyright infringement lawsuit to go forward until they see that the work has been registered. Although you are allowed to file the registration after the infringement has taken place, it normally takes at least six months for the application to be registered with the Copyright office. Or you must pay $580 to expedite the registration. Neither is a very good alternative.
Third, in the event of a lawsuit, you can only recover attorney's fees and statutory damages from the defendant, provided that you registered the work before the infringement took place, or within 90 days of its creation. If you did not register the work for copyright before the infringement or within 90 days of the works creation, then you would only be able to recover actual damages at trial. I can't tell you how many times clients have complained to me that they are being infringed, but they cannot pursue their claim because their actual damages are minimal or are far outweighed by the attorney's fees it would cost to pursue the matter. If they had filed for copyright registration prior to the infringement, the court could award them their attorneys fees as well as statutory damages of up to $150,000 for each act of infringement. This puts the copyright holder in such a strong position that many cases are settled without the need for having to file a lawsuit.
So make it a regular practice to register your creative works for copyright as soon as they are completed. This small investment in time and money will pay you back a hundredfold in the event someone steals your creative work.
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