For many organizations, copyright law could be the most broadly applicable and useful intellectual property protection strategy available. The entrepreneur or executive who understands how to leverage the set of tools embodied in the U.S. Copyright Act will set her organization up for competitive advantage.
In this post we address just about everything you need to know about copyright protection – when to use it, how to properly take advantage of copyright laws, and its limitations.
Where Does the Authority Come From?
The principle source of United States copyright law comes from the Constitution, Article I, Section 8, Clause 8. It says that Congress has the power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.
Stemming from the authority in the Constitution, the primary legislation governing copyright in the United States is the Copyright Act 1976 (17 USC 101 and following), which was enacted on January 1, 1978.
Another important copyright law that relates to software protection and digital technology is the Digital Millennium Copyright Act 1998 (DMCA), which is codified in the Copyright Act at 17 U.S.C. sections 512, 1201-1205, 1301-1332. The DMCA was enacted by Congress in October 1998 and made major changes to the Copyright Act. These changes were necessary in part to bring U.S. copyright law into compliance with the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. The DMCA strengthened the legal protection of IP rights in the wake of emerging new information and communication technologies.
What Can Be Copyrighted
U.S. copyright law protects any qualifying ‘original works of authorship’ that are fixed in a tangible form of expression. The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or device.
Viewed broadly, copyrightable works include the following categories:
- literary works;
- musical works, including any accompanying words;
- dramatic works, including any accompanying music;
- pantomimes and choreographic works;
- pictorial, graphic and sculptural works;
- motion pictures and other audio-visual works;
- sound recordings; and
- architectural works.
It is possible to copyright a work of authorship not captured on this list. Note that it is possible to protect works that are not strictly artistic, such as software and databases. Examples of items that cannot be copyrighted:
- ideas, procedures, principles, discoveries and devices
- titles, names, short phrases and slogans
- articles which have a utilitarian function (so-called ‘useful articles’).
Since fixation is one of the prerequisites for copyright protection, works that have been fixed in a tangible form or medium are excluded from copyright protection. This may include choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded.
Copyrightable works like software can also be protected under trademark rights, patent rights and trade secret rights. Copyright protects the artistic expression of the idea (e.g., the software code itself). Patent protects the functional expression of the idea (e.g., using a single click to purchase something online). And trade secret law protects all aspects of the software that have value and are secret (e.g., source code).
Another example is a logo for a brand. The logo serves as a trademark indicating that products affixed with the logo are from the same source. The creative and artistic aspects of the logo may also be protected by a copyright. To figure out what law protects your creation consult an intellectual property attorney familiar with copyright and these other areas of law.
Who Owns the Copyrightable Work?
The author of a work generally owns the copyright in the work. Joint authors of a work are co-owners of the copyright unless there is an agreement to the contrary. In the case of works made for hire, the employer – not the employee – is considered to be the author. Minors under the age of 18 may claim copyright, but state laws may regulate the business dealings involving copyrights owned by minors. Once the owner of a copyright dies, ownership may be passed on to her heirs.
Joint and collective ownership
When two or more authors prepare a work with the intent to combine their contributions into inseparable or interdependent parts, the work is considered a joint work and the authors are considered joint copyright owners. A common example of a joint work is when a book has two or more authors. However, if one author primarily writes the book, but the other author contributes only a specific chapter and is given credit for his or her chapter, the work would probably not be a joint work because the contributions are not inseparable or interdependent.
If, at the time of creation, the authors did not intend their works to be part of an inseparable whole, the fact that their works are later put together does not create a joint work. Rather, the result is considered a collective work. In the case of a collective work, each author owns a copyright in only the material that he or she contributed to the final product.
The Copyright office considers joint copyright owners to have an equal right to register and enforce the copyright. Unless the joint owners make a written agreement to the contrary, each copyright owner has the right to commercially exploit the copyright, provided that the other copyright owners get an equal share of the proceeds.
Employee and commissioned work
If a work is created by an employee in the course of his or her employment, the employer owns the copyright.
If the work is created by an independent contractor and the independent contractor signs a written agreement stating that the work shall be “made for hire”, the commissioning person or organization owns the copyright only if the work is:
- part of a larger literary work (e.g., an article in a magazine or a poem or story in an anthology);
- part of a motion picture or other audio-visual work (e.g., a screenplay);
- a translation;
- a supplementary work (e.g., an afterword, introduction, chart, editorial note, bibliography, appendix or index);
- a compilation;
- an instructional text;
- a test or answer material for a test; or
- an atlas.
Works that do not fall within one of these eight categories constitute works made for hire only if they are created by an employee within the scope of his or her employment.
If the creator has sold the entire copyright, the purchasing business or person becomes the copyright owner.
How to Establish Your Copyright
Copyright protection exists from the moment that the work is fixed in a tangible medium of expression. There is no requirement that the work be registered to secure copyright protection.
Although use of a copyright notice was once required as a condition of copyright protection, now it is optional. A copyright notice will generally consist of the symbol or word ‘copyright’ (or ‘copr’ or ‘©’), the name of the copyright owner and the year of first publication (e.g., ‘©2003 John Smith’). The only significant consequence of failure to display the copyright notice is that it will be easier for an infringer of the underlying work to claim that it is an ‘innocent infringer’.
However, displaying a copyright notice was important for those works published or distributed under the Copyright Act 1909 (which governs all works published until December 31 1977) and the Copyright Act 1976 before the United States’ accession to the Berne Convention in 1989. For these works, copyright could have been lost if the notice was omitted and that omission was not cured within five years of publication by registering and affixing the notice on the remaining copies.
How to register and deposit your copyrightable work
If the copyright owner chooses to register his or her work at the Copyright Office, the applicant must deposit one or more copies of the work along with the application. The actual deposit requirement varies depending on the category under which the work falls. Failing to deposit a work means that the underlying work will not be registered unless the required deposit copy or copies are submitted to the Copyright Office.
If voluntary, what are the benefits of registration/deposit?
In many jurisdictions, U.S. authors may not sue in federal court for infringement of their work unless the work has been registered. In addition, attorneys’ fees and statutory damages may not be available if the author has not promptly registered the work. Finally, if registration occurs within five years of publication, it is considered prima facie evidence of copyright validity and ownership in court should an infringement suit subsequently arise.
Exercising a Copyright
The Copyright Act generally gives the owner of a copyright the exclusive right to:
- reproduce, and authorize others to reproduce, the work in copies or phonographic records;
- prepare derivative works based upon the work;
- distribute copies or phonographic records of the work to the public by sale or other transfer of ownership, or by rental, lease or lending;
- perform the work publicly, in the case of literary, musical, dramatic and choreographic works, pantomimes and motion pictures and other audio-visual works;
- display the copyrighted work publicly, in the case of literary, musical, dramatic and choreographic works, pantomimes and pictorial, graphic or sculptural works, including the individual images of a motion picture or other audio-visual work; and
- perform the work publicly by means of a digital audio transmission, in the case of sound recordings.
Under the Visual Artists Rights Act 1991, rights of integrity and attribution are expressly recognized in the Copyright Act with respect to original works of fine art made after 1991, and limited-edition copies of the same.
Limits & restrictions on a copyright
The doctrines of fair use and fair dealing limit the rights of a copyright holder. Fair use is codified in Section 107 of the Copyright Act. Under the fair-use doctrine of the Copyright Act, it is permissible to use limited portions of a work (e.g., quotations) for purposes such as commentary, criticism, news reporting and scholarly reports. Courts weigh four non-exclusive factors in determining whether a use is fair use:
- the purpose and character of the use (i.e., whether the use is ‘transformative’ in nature);
- the nature of the copyrighted work;
- the amount and substantiality of the portion taken; and
- the effect of the use upon the potential market for the copyrighted work.
Courts may adapt the factors to particular situations on a case-by-case basis and judges have a great deal of discretion when deciding what is fair use. The outcome of any given question of fair use is therefore difficult to predict.
U.S. copyright law gives copyright owners the exclusive right to distribute copies. However, under a principle known as the ‘first sale doctrine’, the owner of a lawfully made copy of a copyrighted work may sell or otherwise dispose of possession of that particular copy, without the permission or authority of the copyright owner (17 U.S.C. § 109).
Additional defenses available to the alleged infringer are abandonment of copyright, estoppels, and, copyright misuse (antitrust).
The U.S. is not a signatory to the Rome Convention. As such, U.S. citizen musicians receive no neighboring rights royalties.
The moment the original work of authorship is reduced to a tangible medium (e.g., written or typed). The length of copyright protection depends on when a particular work was authored or published. A work that is created on or after January 1, 1978, is automatically protected from the moment of its creation and is ordinarily given a term enduring for the author’s life plus an additional 70 years after the author’s death.
In the case of a joint work prepared by two or more authors who did not work for hire, the term lasts for 70 years after the last surviving author’s death. For works made for hire, and for anonymous and pseudonymous works (unless the author’s identity is revealed in Copyright Office records), the duration of copyright will be 95 years from publication or 120 years from creation, whichever is shorter.
Works created before January 1, 1978, but not published or registered by that date, are given federal copyright protection. The duration of copyright in these works will generally be computed in the same way as works created on or after January 1, 1978: the plus 70 or 95 or 120-year terms will apply to them as well.
For works published on or before December 31, 2002 additional rules may apply.
A related topic is that of reversion of rights through termination. The Copyright Act allows an author who has transferred a copyright or granted a license on or after January 1, 1978, to terminate the transfer or grant. There is a five-year period to effect the termination that begins on the earlier of 35 years from the publication of the work or 40 years from the execution of the grant (17 U.S.C. 203).
Transfer, Assignment and Licensing
Transfer and assignment
Any or all of the copyright owner’s exclusive rights or any subdivision of those rights may be transferred. However, the transfer of exclusive rights is not valid unless that transfer is in writing and signed by either the owner of the rights conveyed or such owner’s duly authorized agent. The written transfer, however, does not need to be made at the time of assignment, and a later written document confirming the agreement is sufficient to prove the assignment.
Transfer of a right on a non-exclusive basis does not require a written agreement. A copyright may also be conveyed by operation of law. Additionally, it may be bequeathed by will or pass as personal property by the applicable laws of intestate succession. Copyright is a personal property right and is subject to the various state laws and regulations that govern the ownership, inheritance or transfer of personal property as well as terms of contracts or conduct of business. The recording of a transfer with the Copyright Office is not required to make the transfer valid between the parties; however, it provides certain legal advantages and may be required to validate the transfer as against third parties. To bring an infringement suit in court, a copyright owner needs proof of an unbroken chain of title going back to the author of the work.
Copyright rights can be licensed on an exclusive and non-exclusive basis. An exclusive license generally occurs when a copyright owner transfers one or more, but not all, of its exclusive rights but retains others. The holder of an exclusive license becomes the owner of the transferred right and as such is entitled to sue any party that infringes the right while the licensee owns it. A non-exclusive license gives the licensee the right to exercise one or more of the copyright owner’s rights, but does not prevent the copyright owner from giving others permission to exercise the same right. Exclusive licensees may sub-license only with the consent of the licensor. Non-exclusive licensees may not sublicense.
Where to sue to enforce your copyright.
If a claim also involves state law issues such as a breach of contract, state courts may have jurisdiction over the case. The federal courts have more experience and expertise with copyright law than state courts. This is particularly true in the jurisdictions that cover locales where copyright disputes are frequently brought, such as the federal district courts in the Southern District of New York (Manhattan), the Central District of California (Los Angeles), and the Northern District of California (San Francisco).
Copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed or made into a derivative work without the permission of the copyright owner.
Taking action against infringement
The owner of a copyright may initiate civil lawsuits in the U.S. courts. The federal government may, at its discretion, also initiate a criminal copyright enforcement action against counterfeiting at the request of the copyright owner.
Under the Digital Millennium Copyright Act a content owner has the right to process a takedown notice against a website owner and/or online service provider (e.g., an internet service provider) if the content owner’s property is found online without its permission. The content will generally be removed; however, the poster of the content will also be given an opportunity to have the content put back.
Any owner or exclusive licensee of a right reserved exclusively to the copyright owner under Section 106 of the Copyright Act can sue for copyright infringement. Because a work has many exclusive rights, it is possible that several people could have the right to sue for copyright infringement based on certain rights.
The statute of limitations in the Copyright Act is three years after the claim accrued for civil actions, and five years after the claim accrued for criminal actions. Courts have applied different standards to determine whether continued infringement actions fall under the statute of limitations and whether a cause of action accrues at the time of discovery or at the time of injury.
The cost of pursuing infringement claims is expensive. A copyright case can cost more than $500,000 through trial. The good news is you can recover both your costs and attorneys’ fees if you prove infringement. Reasonable attorneys’ fees may be awarded at the court’s discretion if the work was timely registered with the Copyright Office. So register your works.
Injunctions to prevent imminent or further infringement
Preliminary relief is available through preliminary injunctions and temporary restraining orders (TROs). When deciding whether to issue a preliminary injunction, there are several tests that courts may use. All available tests take into account such factors as:
- whether the plaintiff will succeed on the merits;
- whether the plaintiff will suffer irreparable harm without an injunction;
- whether the balance of hardships in issuing or not issuing the injunction is in favor of the plaintiff or defendant; and
- whether the injunction would disserve the public interest.
Courts issue TROs only for the short periods during which they are deliberating the merits of a preliminary injunction. The factors are the same as for preliminary injunctions; however, because they are issued without the hearing and deliberation typical for a preliminary injunction, the burden is greater on the plaintiff to show an irreparable injury if the TRO is not issued.
Remedies available to owners of infringed copyrights
Final Remedies can include:
- a court order restraining the infringer from continuing the infringing activity;
- confiscation and destruction of the infringing items;
- the payment to the copyright owner of any profits that the infringer received, and of any losses suffered by the copyright owner; and
- statutory damages as an alternative to actual profits and losses, and attorneys’ fees.
If the copyright owner has registered the work with the Copyright Office, a registered copyright owner can record its works with U.S. Customs and Border Protection (CBP). CBP will then stop pirated products at the border and prevent them from entering the United States (although CBP will not stop grey-market goods).
Appeal procedure for infringement decisions
A defeated party, in either the main proceedings or preliminary injunction proceedings, can appeal as a matter of right to the court of appeals for the circuit in which the district court resides, provided that the defeated party files a proper notice of appeal, described in Rule 3 of the Federal Rules of Appellate Procedure. However, appellate courts may overturn a trial court’s finding of fact only when the finding was “clearly erroneous”. Findings of law are reviewed de novo. After the court of appeals hears a case and makes a ruling, either party may appeal to the Supreme Court by filing a petition for a writ of certiorari. These petitions are granted rarely (only in 1% to 2% of cases).
Measures to Consider When Protecting Digital Content
Copyright protection is as broad for online content as it is for non-digital content. An important step in protecting online content is letting others know that the particular work is protected by copyright and who owns the copyright. Affixing a notice to a work, although not necessary for protection, will put others on notice of the work’s protection. Subsequently, third parties can learn who they must seek permission from if they wish to use the work.
Content creators can also control how their works are used through the use of a Creative Commons license. Creative Commons licenses allow others to use your work under certain conditions (e.g., commercial, non-commercial, derivative works allowed, without additional permission).
Content owners should also monitor the use of their work online. In addition to tools such as Google, there are specialized online tools that can assist content owners in monitoring use of their work online.
Capitalizing on copyright law protections is one of the fundamental measures that a business or other organization should take to protect its intellectual property. Familiarize yourself with the concepts above and discuss any unique circumstances with an attorney experienced in intellectual property law.
Finkel Law Group, with offices in San Francisco and Oakland, has over 20 years of experience counseling and representing artists and inventors by helping them protect and exploit their creative works for commercial gain. When you need intelligent, insightful, conscientious and cost-effective legal counsel to assist you in understanding the intersection of federal Copyright law and state law claims that may affect your intellectual property rights, please contact us at (415) 252-9600, (510) 344-6601, or firstname.lastname@example.org to speak with one of our attorneys about your matter.