Practice Areas

Copyrights

Copyrights

Our copyright practice insures that valuable rights are properly registered. Copyright registration is necessary – whether you are protecting the latest version of a valuable software code – the next best selling book – or an infomercial that is set to market a billion dollar product. Proper copyright registrations can be used effectively in the battle against counterfeiters who may try to illegally advertise their products.

Copyrights are the rights that arise when a “creative” work is created. This area of law is often the most overlooked area of intellectual property in today’s entrepreneurial businesses. Ownership of creative works vests in the creator of the work, “in the absence of an agreement to the contrary.”

Do you actually own your website, or does the consultant that built it?

Unless you have an agreement that says explicitly that its yours, it belongs to your consultant.

Does your company expect to enforce its copyrights if infringed?

If you don’t register your copyright within 5 years of publication, you impair your presumptions in infringement litigation.

Does your accounting department want to amortize your intellectual property expenses

If you don’t consummate your IP expenses with proper registrations, you cannot avail yourself of the GAAP rules that allow certain IP expenses to be capitalized, and amortized over many years.

Copyright registration is fairly straightforward. If we have properly documented that the client owns the creative works, we file a two page form with the Library of Congress with a small fee and normally the process leads to a copyright registration within a year. Some common registrations that we have filed recently: Websites, Instructional product manuals, Software, Logos, Audiobooks, Printed books, Teaching, Television scripts and treatments.

What is a copyright?
One of a group of legal protections collectively known as “Intellectual Property”. Intellectual Property may include patents, trademarks, service marks, trade secrets, licensing and contract rights. Copyright is the legal protection afforded to a particular form of creativity that might be called: “originality of authorship”, “the expression of an idea” or “the writings of an author”. It is quite literally the right to copy – a bundle of rights that include copying, distribution, control of derivative work, and other rights. Think of a “bundle of sticks”.
What is copyrightable?

Must be an “original work of authorship”.

Doesn’t have to be unique or novel (as patent law requires).

Only has to be original.

Sufficient if the work produced is not a direct copy of a pre-existing work and the author contributes some creativity.

Must be the work of an “author”. Even if a tool is used, such as a camera or a computer program.

Work must be “fixed in a tangible medium of expression”. If I jumped up on the table and danced a new jig, which was not recorded, it would not be fixed and the federal statute would not protect it.

Includes:
Literary works
Musical works, including lyrics
Dramatic works
Pantomimes
Choreography
Pictorial, graphic, and sculptural work
Motion pictures and other audio visual work
Sound recordings
Architectural work

The test for copyrightability is not subjective: doesn’t matter if the work is good or bad, or even obscene.

What is not protected?

Copyright protects the expression of an idea, but not the idea itself.

Does not protect any procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied.

If you invent a new method of collage, such as applying the pieces with adhesive and heat, you can protect your collages, but not your new process (patent protection may be available but is usually cost prohibitive). Any article you write about your process is protected, but not the process itself.

Work created by governmental employees is not protected, but your work is protected if you are the recipient of a government grant.

Cannot generally protect:
Titles, phrases, forms
Facts or news
Research
Copyright protects creativity, not effort
Utilitarian work – (cannot copyright a plain, straight-back chair)
Mere compilations are not copyrightable
White pages of the phone book (It’s a mere list of subscriber’s to the phone company’s service)

What rights are protected?

The Copyright Act grants copyright owners six exclusive rights:

1) The right to reproduce in copies – which is also the right to prevent unauthorized duplication of the work

2) The right to prepare derivative works, such as translations, movies from novels, musical arrangements, etc.

3) The right of public distribution

4) The right of public performance

5) The right of public display

6) The performance right in sound recordings

What formalities are required?

Notice

In the past, the law included an absolute requirement that each copy of a published work bear proper copyright notice.

This requirement has been abolished for all works first published on or after March 1, 1989

·        Now, no notice required

·        Still required for all copies of work first published before that date

·        Still widely used because valuable for non-legal reasons

Warns off potential infringers

Identifies the owner to those seeking a license

Three elements:

© or the word “copyright” or “copr.”

The name of the copyright owner

The year date of first publication

Deposit

Copies of every published work must be submitted to the US Copyright Office, which is a branch of the Library of Congress

Purpose – to stock the shelves of the Library

The requirement usually satisfied as part of the registration process

Failure to make the deposit could lead to fine, but not the loss of copyright

Registration

This is what we really mean when we talk about “copyrighting your work”

Usually means registering the work with the Copyright Office

In fact, registration is not required for copyright protection

Federal copyright protection exists from the moment a work is created, that is, fixed in a tangible medium of expression, even if never registered

What are the advantages of registration?
    • No lawsuit for copyright infringement may be brought until work is registered
    • Certain remedies, such as recovery of statutory damages and attorneys’ fees, not available to a copyright owner unless registration preceded the infringement
      • Three month grace period from publication date for published work
    • The certificate of copyright registration provided by the Copyright Office is prima facie evidence of the facts it contains, and shifts the burden of proof concerning these facts from the owner to the infringing defendant in the lawsuit.
How do you register a work?
  • Complete the requisite form (available on-line athttp://www.copyright.gov/)
  • Return it to the Copyright Office with a nominal fee and deposit copies of the work.
How long does copyright protection last?
    • New Law Works – for works first created , published, or registered on or after January 1, 1978
      • The life of the author and 70 years after the author’s death
      • If the author is unknown, 95 years from publication or 120 years from creation, whichever expires first
    • Old Law Works – for works first created, published, or registered beforeJanuary 1, 1978
      • Endures under a system of dual terms
        • There is an initial term of 28 years from the earlier of publication or registration
        • Followed by an additional term of 67 years
        • For a total of 95 years
        • Renewal is automatic, but for the last year of that initial term, an application ofr renewal of copyright may be files (with certain benefits)
What are the limitations of copyright protections?
    • There are several limitations on copyright protection and exemptions for certain uses:
      • Fair Use – not a right, but a defense
        • Certain uses of copyrighted works which would otherwise be infringements are excused from liability because they are “fair”
          • A protected work may be used for criticism, comment, news reporting, teaching, scholarship, or research
          • Each case is judged on its merits and no particular use will be presumed to be a fair use
          • Four factors are considered in each case
            • The purpose and character of the use
              • Commercial vs nonprofit?
              • Educational?
              • Even some commercial uses are fair – legitimate parody
              • Court will look at the transformative nature of the use
                • A potentially infringing work is transformation when it adds “something new or changes the original with a further purpose or different character altering the [original work] with new expression, meaning or message” (US Supreme Court in Campbell v. Acuff-Rose Music)
                • Encouraging transformative works – like parody, like comment or criticism, can shed new light on the  original

 

            • The nature of the work
              • Published or unpublished?
              • Scholarly/scientific or entertainment?
            • The amount and substantiality of the portion used in relation to the copyrighted work as a whole
              • The less used, and the less significant the portion used, the more likely that fair use will be found
                • There is no bright line test
                • No 10% rule
            • The effect of the use upon the potential market for or value of the copyrighted work.
              • Most significant factor:  any harm caused?
              • Test is market substitution, not market criticism
    • First Sale Doctrine
      • The owner of a book may resell the book
      • Owner of a painting may display the painting
What are the consequences of copyright infringement?
    • Proof is either by:
      • Direct evidence of copying; or
      • Inference of copying will be drawn where
        • Defendant had access to the copyrighted work; and
        • The accused work is substantially similar to copyrighted work
          • Rebuttable by proof of independent development
        • The greater the presence of one, the less required of the other
    • Remedies
      • Money damages
        • Actual damages and infringer’s profit
        • Statutory damages for each incident of infringement (requires prior registration)
      • Injunctive Relief:  court will order the infringement to stop
      • Recovery of costs, including attorneys’ fees (requires prior registration)
      • Commercial pirates can face criminal liability