COMM 407: CHAPTER 6
CREATIVE PROPERTY /
COPYRIGHT
Immaterial Property

An area of law that deals with intangible
property

Patents
Copyrights
Trademarks


The Constitution

“The Congress shall have the power to promote
the progress of science and the useful arts, by
securing for limited times to authors and inventors
the exclusive right to their respective writing and
discoveries.” Article I, section 8
A fundamental question:



Are these temporary rights residing only in the inventors
or property rights residing in the creation?
Patents and copyrights are now treated like property
rights, so that they may be sold, licensed, mortgaged,
assigned, transferred, given away, abandoned, actively
developed, or held as investments without being
developed.
Just as there is generally no legal requirement that owners of real
property develop their vacant land, there is likewise no legal
requirement that patent owners develop their inventions
Patents


Any person who “invents or discovers any new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may
obtain a patent,” subject to the conditions and requirements
of the law.
Granting exclusive rights to the inventor is intended to
encourage the investment of time and resources into the
development of new and useful discoveries.
Patents

Patents give the inventor a monopoly on selling
the product for 20 years
 Three kinds of patents include:
 Patents on inventions with utility (20 years)
 Patents on designs (14 years)
 Patents that protect plants (e.g., flowers)
Copyright

The law of copyright gives the author, or the
owner of the copyright, the sole and exclusive
right to reproduce the copyrighted work in any
form for any reason.
Rights under Copyright Law





The right of reproduction
The right of preparation of derivative works
The right of public performance of the work
The right of public display of the work
The right of public digital performance of a
sound recording (with exceptions)
What Can Be Copyrighted?
Expressive and Original Creation









Literary works
Musical works
Dramatic works, including accompanying music
Pantomimes and choreographic works
Pictorial, graphic and sculptural works
Motion pictures /audiovisual work
Sound recordings
Computer software
Maps, architectural design
What Cannot Be Copyrighted





Facts (including news)
Trivial materials such as titles or slogans
(but some could be “trademarked”)
Ideas
Utilitarian goods
Methods, systems, mathematical principles,
formulas and equations
Utilitarian goods





Examples: clothing; automobile bodies; furniture;
appliances; dinnerware; and lighting fixtures.
Thus: the design of the chair, the flatware, or a
car body itself cannot by copyrighted
However:
a carving on the back of a chair or a floral relief
design on silver flatware can be copyrighted
a logo of a car can be trademarked
Car ‘knock-offs’

.
News Events

Copyright law protects the expression of the
story – the way it is told, the style and manner in
which the facts are presented

Copyright law does not protect the facts in the
story; other journalists may use the facts you have
gathered to write their news story
Originality

The work must be original: not a reproduction
Compilations of factual information:
The “sweat of the brow” doctrine


A legal proposition that even though facts are not
copyrightable, a person who invests great energy
and hard work in amassing these facts deserves
some reward for this hard work.
Accepted by courts only if certain originality of
the effort can be established.
Compilations of factual information:
Business Directories



O’Dwyer Co. v. Media Marketing (1991)
O’Dwyer’s listing of PR agencies was a
copyrightable compilation.
It was ruled to be original by its research and
criteria for inclusion of agencies
Compilations of factual information:
Telephone Books and Databases

Feist Publications, Inc. v. Rural Telephone
Service Co., Inc. (1991)

While some new compilations of facts may
be protected by copyright, the Court said,
there was no novelty or originality in the
compilation of these materials
(a telephone book)
Collective work

Collective work, compilations made up of
individual contributions (e.g., an anthology of
poetry) is copyrightable.
Derivative work


Material based on existing work is
copyrightable as long as the material has a
sufficient amount of originality (e.g.,
condensation, translation)
However, a consent must be obtained from the
owner of the copyright to the original work
Ownership



Copyright ownership begins at the moment a
work that can be protected is created (in a
tangible medium).
There is no formal procedure required for
copyright protection.
A NOTE: ownership of physical object is not the
same as copyright ownership (e.g., letters received
from a friend).
Copyright Notice:
Copyright © 2013 by…..



Under International and American Law the
affixing of the Notice is not required.
However, it is recommended to prevent
“innocent infringement.”
The “Innocent infringer” is someone who claims
he/she didn’t know that the work was copyrighted
because there was no notice (The U.S. Copyright
Law protects such persons from liability from
infringement).
Registration


Registration is not necessary to establish
copyrights,
However, it must be done before filing a lawsuit in
case of infringements
 To register a copyrighted work with the federal
government, see details at
http://www.copyright.gov/
Ownership




Individual author
Joint Authorship
Work Made for Hire (was the author an
employee?)
Government Works
Joint Authorship




A "joint work of authorship" is a work prepared by two
or more authors with the intention that their contributions
will be merged into inseparable or interdependent parts of
a unitary whole.
"Inseparable" applies when individual contributions are
blended (e.g., computer programs)
“Interdependent" refers to works with separable elements
(e.g., lyrics and music).
The prevailing view is that a joint author's contribution
must be independently copyrightable.
Joint Authorship: contribution


Joint authors need not make equal contributions.
The default rule is that the copyright ownership is equal,
but the default ownership allocation can be varied by
written contract.
Work made for hire




In a work made for hire situation, the "author" of the work
is no longer the individual who created the work. Instead,
the "author" is considered to be the entity which hired the
actual creators of the work
The Copyright Act limits the work made for hire
doctrine to two specific situations:
a work prepared by an employee within the scope of his or
her employment; or
a work specially ordered or commissioned for use
work created by an employee





The determination of whether an individual is an
employee:
the control exerted by the employer over the employee
the control exerted by the employer over how and where
the work is done;
the supplying of equipment for the employee's use; and
the payment of benefits and the withholding of taxes.
work created by an independent
contractor



In order for the work of an independent contractor to be a
work made for hire, the following facts must exist:
the work must be specially ordered or commissioned;
there must be a written agreement between the parties
specifying that the work is a work made for hire.
work made for hire?


Community for Creative Non-Violence
v. James Reid (1989)
James Reid, sculptor from Maryland.
Free-Lancing and Copyright (p. 297)

Rights a Publisher May Purchase From a FreeLancer
 All rights - ownership of the complete
story/photograph
 First serial rights - the right to use the piece for
the first time in a publication
New York Times v. Tasini (2001)




Tasini sold his work to the New York Times
Later the N.Y. Times sold that work to databases
companies (e.g., Lexis/ Nexis).
Tasini filed lawsuits arguing that the he has the right to the
original work.
The Supreme Court agreed: Although newspapers have
the republication rights, selling content to database
companies does not constitute republication
Government works



All government work is precluded from copyright
ownership
All government work can be copied and published
(or republished)
EXCEPTIONS: work produced by private
consultants/contractors
Duration of Copyright
Published before 1923: copyright has expired
Published 1923-1963: 95 years (if renewed in 28th year)
 Works created 1978 and after are protected for the
life of the author plus 70 years
 Works created 1978 and after as “work for hire” are
protected for 95 years from publication or 120 years
from creation, whichever is shorter


See more on the website of the U.S. Copyright Office
And in this document of the U.S. Copyright Office
After copyright expiration

A work falls into the public domain and may be
copied by any person for any reason without
payment of royalty to the original owner
Copyright Infringement

Anyone who violates the exclusive rights of the
copyright holder is guilty of infringement of
copyright.
Rights under Copyright Law





The right of reproduction
The right of preparation of derivative works
The right of public performance of the work
The right of public display of the work
The right of public digital performance of a
sound recording (with exceptions)
Copyright Infringement

The Criteria to Determine Infringement



Is the copyright on the plaintiff’s work valid?
Did the defendant have access to the plaintiff’s
work prior to the alleged infringement?
Are the two works the same or substantially
similar?
Jurors hit Robin Thicke and Pharrell
Williams with $7.4-million verdict


A federal jury found Tuesday 3/10/2015 that the
2013 hit song "Blurred Lines" infringed on the
Marvin Gaye 1977 chart-topper "Got to Give It
Up," awarding nearly $7.4 million to Gaye's
children.
Jurors found against singer-songwriters Pharrell
Williams and Robin Thicke, but held harmless the
record company and rapper T.I.
George Harrison
vs Bright Tunes Music Corp.
George Harrison accused of plagiarizing ‘My Sweet
Lord’ (1971) from a 1962 song “He’s So Fine”
recorded by the Chiffons.
Michael Bolton
vs the Isley Brothers

A suit was brought against Michael Bolton
by the Isley Brothers for allegedly lifting
parts from their original song Love is a
Wonderful Thing
Michael Bolton
vs the Isley Brothers


The district court found in favor of the Isley Brothers.
The Isley Brothers were awarded $5.4 million, the
calculation based on sixty-six percent of past and future
royalties
Similar? Same?


Budka Suflera (Poland) Takie Tango
Power Station (Taiwan) Drunk Tango
'Happy Birthday to You‘ Is Under
Copyright (owned by Warner Music Group)




If you want to sing it at your home at a birthday party you
don't have to pay anything, because that is a private
performance
But if you want to use it in a television show, a movie, or a
television commercial, you'll pay anywhere from $5,000 to
$30,000 for those rights.
The song generates approximately $2 million in
royalties every year
See more in the book about the dispute over the rights
(page 258)
Enforcing / fighting infringement



Demand to cease the unauthorized use (a ceaseand-desist letter)
Request a judge to issue an injunction to order the
unauthorized use
File a lawsuit for damages
Damages for Infringement

A Plaintiff May:
 Ask the court to assess the defendant for any
damage they have suffered
 Ask for the reimbursement of profits made by the
infringer from pirating the protected work
 Receive statutory damages

Copyright infringement is also a criminal offense
(usually prosecuted in a straightforward piracy cases)
“Fair Use” of Copyrighted Material

Permits limited use and copying of an original
creation that has been properly copyrighted
without the owner’s consent and without paying a
royalty
Factors To Be Considered In
Determining Fair Use




The purpose and character of the use
The nature of the copyrighted work
The amount and substantiality of the portion
used in relation to the copyrighted work as a
whole
The effect of the use on the potential market for
or value of the copyrighted work
Special case of
Music and Sound Recording





Compulsory licensing for sound recording: the law
permits anyone to make sound recording of copyrighted
musical work as long as royalties are paid.
Performance rights: Digital versus ‘terrestrial’
Recording artists, music + lyrics authors have the rights to
collect royalties for digital transmission/performance.
However, in the terrestrial broadcast the royalties are
required only for music and lyrics authors.
‘Performance’ applies only to public places
Special case of
Music and Sound Recording

Performance rights societies for broadcasting sound
recording:

Broadcast Music Inc. (BMI) and The American Society of
Composers, Authors and Publishers (ASCAP)

Blanket licenses cost about 2-3% of the total station
revenue
Copyright and the Internet



Publishing copyrighted material on the Internet
constitutes public display.
Thus, it violates owner’s exclusive right to the
material.
ISP companies have immunity from copyright
infringement by users
Copyright and the Internet





A&M Records v. Napster (2001)
In 2001, the 9th Circuit Court of Appeals ordered Napster
to stop facilitating the free transfer of recorded music
The court ruled that the music service was abetting
copyright infringement by its users
MGM v. Grokster (2005)
The U.S. Supreme Court ruled that copyright owners can
sue technology companies who encourage consumers to
share copyrighted files
Trademarks

Any word, symbol or device (or combination of the three)
that differentiates an individual’s or company’s goods and
services from competitors


The function of trademark law is to stop confusion in
the marketplace
Brand names, shapes, slogans, telephone numbers and
colors can all be trademarked
Trademarks

Four Main Functions of Trademarks and Service
Marks
 Distinguish one seller’s goods from another’s
 Signify all goods bearing the trademark or service mark
come from a single source
 Signify all goods bearing the mark are of an equal
quality level
 Serve as a prime instrument in advertising and selling
Trademarks



Infringement
Dilution
Unfair competition