COPYRIGHT FROM THE
CORPORATE PERSPECTIVE
Presented by:
Jeanne Hamburg
Attorneys at Law
June 22, 2004
1
Overview
Why Are We Here?
Copyright basics
Identify common situations in which
copyright issues may arise
Learn how to resolve copyright issues
Significant damages can be available for
infringement
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What is Copyright? ©
Section 102(a) of Copyright Act
Copyright protection subsists in
– Original works of authorship
– Fixed in any tangible medium of expression
Copyright protection subsists from the moment
of creation, as soon as the work is “fixed” in
tangible form from which it can be “perceived,
reproduced, or otherwise communicated” either
directly or with the aid of a machine.
3
Copyright Registration
Registration not required for copyright to
subsist
Registration is a pre-condition to lawsuit
and limits damages if copyright is
registered after an infringement takes
place
– No statutory damages if don’t register: up to
150,000 PER willful infringement
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Copyright: What’s Protected
Literary works (including
compilations)
Musical works
Dramatic works
Pantomine & choreographic
works
Pictorial, graphic & sculptural
works
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Copyright: What’s Protected
Motion picture &
audiovisual works
Sound recordings
Architectural plans
Computer programs
– Code
– “Look and feel”
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Copyright: What’s Not Protected
Works not fixed in a
tangible form of
expression (the spoken,
unrecorded word, not
fixed in any medium)
Titles, names, short
phrases, slogans, familiar
symbols or designs
(typically protected by
trademark law)
Listings of ingredients or
contents
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Copyright: What’s Not Protected
Ideas, procedures,
methods, systems,
processes, concepts,
discoveries, devices (may
be protected under patent
law), anything purely
functional
Standard lists, tables,
calendars, rulers or other
content taken from public
domain documents and
other works containing no
original authorship
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Copyright: Protected Elements in
Unprotected Items
Clothing not protected, fabric design
is
A belt may not be protected, its
buckle can be
Jewelry which has elements that are
original and not purely functional
Selection and arrangement of content
may be protected (selected works of
Shakespeare) even if the underlying
works aren’t
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Copyright: A Bundle of Rights
Author’s Right to Do or License Others to:
Copy
Distribute
Display
Perform or
Make Derivative Works based on an
author’s fixed expression (a “Work”)
(Derivative works = alteration of work)
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Copyright: A Bundle of Rights
Divisible: Can give away one right or
part of one, for example:
Copy & distribute in
printed form
Copy & distribute in
digital form
Display only in digital
form
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Copyright: Ownership and Term
Rights typically vest in the creator
Exception is “work for hire” when another
“commissions” the work or when a work is
created in the scope of employment. In those
instances the employer or party who
commissioned the creation of the work is
deemed the owner
Term of copyright: life plus 70 years
For works made for hire: 120 years
After copyright expires work said to be in “public
domain” and anyone can exploit
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Form of Copyright Grants
Written grant of rights required for
exclusivity.
If the agreement to exploit a work is verbal
only, then it is only a non-exclusive one.
Others have the right to exploit the work in
the identical fashion.
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Copyright Grants
Three forms of grants:
– License
– Assignment
– Work for Hire
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Copyright Grants
License
Only some rights in the bundle granted
Author keeps the rest
May end if author exercises his “right of
reversion”
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Copyright Grants
Assignment
Transfer of entire copyright: the whole
bundle
May terminate if author exercises right of
reversion
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Copyright Grants
Work for Hire
Employer owns the copyright as if it
created it
Two ways to get
as employer
as one who “commissions” 9 types of works,
including educational texts and contributions to
collective works
NOT software created by non-employee
NO reversion
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Copyright Grants
Reversion
Earlier of publication plus 35 years or
execution plus 40 years
NOT automatic
NOT work for hire—but every other grant
subject to
Long shelf-life (get an option)
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Copyright Grants
Power to Grant
Someone else’s work for hire
Joint work: two authors merge contributions so
each has copyright to give in entire work. Wrote
chapter, developed software code.
Collective work: each make severable
contributions, need each to convey copyright in
the whole, e.g. author and editor; or one author
wrote chapters 1-3, other wrote 4-6
U.S. Government work: created by gov’t ee in
scope of his employment
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Copyright Grants
New Media
All media “now known or hereafter
developed”
Right to make derivative works NOT
enough
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Situations in Which
Copyright May Apply
Clearing content a company wants to distribute (web
sites, brochures, etc.)
Evaluating whether uses of content are infringing
Protecting content against infringement
Enforcing copyright when it is infringed
Selling or transferring copyright or rights thereunder
(M&A)
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Clearing content: Web site
Do I need permission to use this content on
my company’s web site?
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Clearing content: Web Site
Who created the web site?
Is there an agreement with web site developer?
Who wrote the content for the web site?
– Employee: work made for hire
– Third Party: need contract
Is there original art work/photography on the
site?
Who created the art work/photography?
Are there agreements with those individuals?
Is there any right of publicity issue for real
persons depicted?
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Proving Copyright Infringement
Copyrightable expression
Access to copyrightable work
Copying
– Copying is presumed from substantial
similarity—the key test for infringement
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Limitations on Exclusive Rights:
Fair Use
“Fair use”, codified at 17 U.S.C. 107
Allows the user of copyrighted material to do things
otherwise exclusively the right of the copyright owner
Must be for “fair use” purposes enumerated by statute:
e.g., criticism, comment, news reporting, teaching,
scholarship, research
Four factor test for fair use: (1) purpose and character of
use; (2) nature of work; (3) amount and substantiality of
portion used: (4) effect on marketplace value
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Copyright Infringement: Advertising
Verizon Wireless Print Ad
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Copyright Infringement: Advertising
Variation One
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Copyright Infringement:
Advertising
Variation Two
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Copyright: Advertising
Are the uses infringing?
Is the “variation” substantially similar to
protected elements in the original?
Is the “variation” a fair use of the original?
– Purpose or character of use:
Commercial: to promote goods or services or Not-for-profit
– What is the nature of the work?
Comment? Editorial use? Parody?
– Amount/substantiality of portion taken:
How much original expression “borrowed” from the original?
Does it displace market for the original?
29
Copyright: Advertising—Fair Use
Or Infringement?
The Original MasterCard “Priceless Ad”
The Copy: Nader’s “Priceless Truth” Ad
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Analysis of Priceless Ads
Identify the copyrightable expression
– Selection and arrangement of creative expression
(NOT ideas) including
Recitation of item colon price; and intangible that is priceless
Sequence of images
Placement and appearance of text within ad (over image)
Use of voice over
Sound of voice over
“Look and feel”
Analyze whether the alleged infringing use is
“substantially similar” to original creative
expression in the original
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Analysis of Priceless Ads
Is it fair use or infringement?
– Purpose of use: commercial?
Would answer change if told you contributions increased 80
fold after ad ran nationally?
What is the nature of the work?
– Parody? Does it comment on the original?
Amount/substantiality of portion taken:
– How much original expression “borrowed” from the
original?
Does it displace market for the original?
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Protecting Copyright:
Advertising
File Applications for Copyright Registration,
ASAP
Different forms will be needed depending upon
the ad is a television (VA), print (TX) or radio
(SR)
– Deposit copies of the work are typically required. For
a tv commercial, a storyboard and description are
usually submitted, rather than a videotape.
– Since statutory damages aren’t available until the
registration issues, or unless registration issues in the
3 months following publication, early filing is desirable
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Protecting Copyright:
Advertising/Promotional Materials
Place a copyright notice on the work
– ©YEAR by COPYRIGHT OWNER
– No longer required, but
– Willfulness will be presumed from copying,
entitling owner to greater damages
– May defer infringers
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Protecting Copyright: Software
Software “source code” considered a textual
work for registration purposes
“Open source code” cases:
– So called because the code was derived from
supposedly “public domain” sites—to wit,
Internet postings by those who sought an
alternative to other OS such as Windows.
– IBM is being sued for $1 billion by SCO
Group, the licensee of Unix, an operating
system. SCO, claims that Linux, which is
installed on all IBM computers, inrfringes
copyright in the Unix code.
“Look and feel” of a program may be
independently copyrightable as visual work
35
Copyright: Databases
In the U.S., databases are not,
in and of themselves,
protectible.
Feist Publications v. Rural
Telephone Service Co.,
– publisher of a phone directory
sued for copyright
infringement in its “white
pages”.
– “sweat of the brow” not
enough to create copyright.
Databases must be original to
qualify for copyright protection.
– Originality in the selection and
arrangement of data is
enough, but “alphabetical” or
“numeric” listing isn’t original.
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Protecting Copyright:
Digital Content
What steps can my company take to protect its
digital content?
– Self help: “digital rights management” (“DRM”)
technology (e.g. copy degradation); digital
watermarks
– Register copyright
Digital Millennium Copyright Act
– Makes it illegal for others to circumvent DRM
technology. “Hacking” into copyrighted content is now
unlawful
– Remedies include civil suit as well as criminal
prosecution (fines, imprisonment)
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Enforcing Copyright
Assuming you have identified an
infringement what is the copyright owner’s
recourse?
– Demand letter: weigh benefit (cost effective)
against possible risk (declaratory infringement
action by infringer)
– ADR/Mediation/Arbitration: Cannot get
nationwide injunctive relief
– Litigate
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Enforcing Copyright
Litigation
– Federal courts have exclusive jurisdiction
– Need copyright registration to bring action
– If registration not issued, can request
expedited issuance (2-3 days) for higher fee
(580 dollars per app., ordinarily 30 dollars)
– If infringement has commenced before
registration issues (or within a 3 month
“window” after first publication, no right to
statutory damages
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Enforcing Copyright
Remedies
–
–
–
–
Injunction
“Actual” damages (lost profits of plaintiff)
Defendants’ profits
Statutory Damages
Must elect, cannot recover in addition to actual damages,
profits
Up to $150,000 per willful infringement
– Willfulness can be imputed from copyright notice
– Discretionary with the court so usually other factors
demonstrating bad faith copying critical to get maximum award
– Attorneys’ Fees to prevailing party (even the
defendant)
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Acquiring or Selling Copyrights In
Purchase or Sale of Assets/Stock
Your company has come to you for advice
concerning sale to another company of its
assets. A few issues the company will face in
transferring copyright:
– Chain of title: does the seller own rights?
– Exclusivity: if the seller owns rights, does it own them
exclusively?
– Documenting the Seller’s Ownership: contracts,
registrations
– Assignability of rights (change of control, consent):
asset versus stock purchase
– Liens
– Due diligence critical
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Where to Learn More
Copyright Office web site, www.copyright.gov
Contains forms of application with instructions
and useful circulars on all manner of topics
Contains information re: legislation, new and
proposed
Enables one to search copyright records to
determine ownership, registration date although
a hand search is necessary to obtain deposit
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