COPYRIGHTS

Article I, Section 8 of the U.S. Constitution grants Congress the power to “promote the Progress of Science and the Useful Arts, by securing for limited Times to Authors…the exclusive Right to their … Writings.”  Copyrights exist to promote the creation of works, which after their copyrights expire, will become a portion of the public domain for all to use.

Copyright law has evolved significantly since the Copyright Office registered its first works.  For many years, the system was based on the Copyright Act of 1909, under which works enjoyed no copyright protection unless they were promptly registered after their first publication.  The law changed substantially with the Copyright Act of 1976, although much of the old Act still remains in force for works created before January 1, 1978.  The law changed again significantly in 1989, when the United States joined the Berne Convention, bringing the U.S. copyright system more in line with copyright laws elsewhere.

WHAT IS COPYRIGHTABLE?

The US Copyright Act recognizes the following categories of copyrightable works:

  • Literary works (this has been extended far beyond works of literature, and includes, e.g., computer software)
  • Architectural works
  • Dramatic works, including accompanying music
  • Musical works, including lyrics
  • Motion pictures and other audio-visual works
  • Pantomimes and works of choreography
  • Pictorial, graphic, and sculptural works
  • Sound recordings, including performances of musical works
  • Compilations
  • Derivative works (works derived from existing copyrighted works)

However, certain things cannot be copyrighted: abstract ideas, facts (although compilations of facts may be copyrighted if the arrangement is sufficiently original), discoveries, processes or procedures, certain stock literary characters and scenes a faire, names, blank forms, slogans, short titles and mottoes.  The external appearance of a utilitarian article (such as a pen) will rarely have copyright attach to it; protection for such is available via a design patent.  But if a work is conceptually separable from, and capable of existence independent from, the object on which it appears, the work may be protected by copyright.  Examples include a 2-dimensional design formed on a three-dimensional object (such as the design of a cheerleader’s uniform; Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017)), or where a work of fine art such as a sculpture has an incidental utilitarian purpose such a forming a lamp base (Mazer v. Stein, 347 U.S. 201 (1954)).

 

The expression of ideas, discoveries, processes etc. may be copyrightable, but the underlying abstract idea or concept is not, and another’s independently originated expression of such an idea will not be an infringement.

 

Statutory Requirements

 

The two basic requirements for copyrightability are that the work be an original expression and that it be fixed in a tangible medium of expression.

Originality

To qualify as original, a work must be of independent creation.  The threshold is very low: as long as the work is the author’s own and exhibits at least a minimal amount of creativity, it will meet the demands of the statute.  The work must show some amount of imaginative effort, however.  A phone book, for example, with names and telephone numbers listed in alphabetical order, is not sufficiently creative to be copyrightable.

The fact that a great deal of time and effort went into producing the work is irrelevant.  The Supreme Court has rejected the old common law “sweat of the brow” doctrine, which had granted protection to works like phone books if considerable energy was expended in producing the work.

Compilations of otherwise uncopyrightable materials may be copyrightable if the selection and arrangement of the particular elements is sufficiently creative.  A copyright in a compilation protects only the selection and arrangement of elements, however; the facts themselves remain in the public domain.

Fixed in a Tangible Form

A work must also be fixed in some tangible medium of expression in order to qualify for copyright protection.  This is generally an easy requirement to satisfy.  For example, an author’s poem is eligible for protection the moment the words are put to paper or recorded on a hard drive.  Generally, the work must be fixed so that it may be communicated to others for more than a transitory period of time.

WHAT DOES A COPYRIGHT
GIVE YOU?

Exclusive Rights

A valid copyright confers on its owner five exclusive, statutory rights:

  • To reproduce the work
  • To prepare derivative works based on the original
  • To distribute copies of the work to the public
  • To publicly perform the work
  • To publicly display the work

Additionally, the author may have certain “moral rights” if the copyrighted material is a “work of visual art.”  These rights have existed for a long time in foreign countries but have only recently, and only partially, gained acceptance in the U.S.  The Visual Artist’s Rights Act, which became effective in 1991, gives authors of “works of visual art” the right of attribution (preventing the use of the author’s name in connection with distortions of the original work or works the author did not in fact create); the right of integrity (the ability to prevent an intentional modification or distortion of the work by others that would damage the author’s reputation); and the right to prohibit destruction of a work.  The copyright statute defines “works of visual art” narrowly, however.  Such a work must exist only as a single copy, or in only 200 or fewer signed and numbered copies.  Many sorts of “pictorial, graphic or sculptural works” are excluded from the definition of “work of visual art”, including most commercial works and all that are created by an employee for an employer.

Limitations on Exclusive Rights

First Sale Doctrine

A major limitation on the exclusive rights is the first sale doctrine, which holds that any owner of a lawfully made copy of a copyrighted work is free to resell, rent, or give the copy away without the consent of the copyright owner.  For example, a purchaser of a book is free to sell that book to a friend or a used book store, even while the original author retains the copyright in the underlying material.  This privilege is limited with respect to phonorecords and computer software programs, however, which can be sold but not rented or leased.

Fair Use

Some uses of copyrighted materials will be excused if they are deemed to be “fair uses.”  A fair use in not an infringement, and includes uses such as the reproduction of works for news or scholarly purposes, formal criticism, and parodies of existing works.

There are no uses which will automatically qualify under this doctrine.  A court will examine four factors to determine if a particular use will qualify:

  • The purpose and character of the use, including whether such use was of a commercial nature or was for nonprofit educational purposes;
  • The nature of the copyrighted work;
  • The amount and substantiality of the portion of the work used in relation to the copyrighted work as a whole;
  • The effect of the use upon the potential market for or value of the copyrighted work.

Fair use in general remains a narrow and limited exception to a copyright owner’s exclusive rights.  In particular, persons who copy works for commercial purposes should not count on this defense to excuse their conduct.

Other statutory limitations of the exclusive rights of copyright include the exemption of certain reproductions by libraries and archives, certain performances and displays, certain transmissions of broadcast programming by cable, and certain ephemeral recordings.

OWNERSHIP OF COPYRIGHTS

Authorship

Copyrights belong to the author or authors of the work as soon as the work is fixed in a tangible form.  As a matter of default, an “author” is the same as a creator of the work.

When two or more authors contribute to a work and each author’s contribution would be copyrightable by itself, the end result is known as a joint work.  Every author of a joint work is considered a co-owner of the copyright, and may enjoy its exclusive rights without obtaining permission from the other authors.  Each author has only a duty to share any profits received from exercising the exclusive rights.

Works Made for Hire

“Works made for hire” are exceptions to the general rule that a copyright vests in a work’s creator. Two kinds of works qualify as works made for hire.  The first are works prepared by employees acting within the scope of their employment. In this instance the employer is considered the “author” and the original owner of the copyright in the work.  However, the creator must be a true employee and not merely an independent contractor.  The second category consists of specially ordered or commissioned works developed pursuant to written agreements that are signed by both parties and specifically state that the work will be a work made for hire.  This second category includes only the following types of works that are specifically set forth in the copyright statute:

  • Contributions to collective works
  • Parts of a motion picture or other audiovisual work
  • Supplementary works (such as a forward, edition or revision)
  • Translations
  • Compilations
  • Instructional texts
  • Tests
  • Answer material for tests
  • Atlases

Given the difficulty of determining whether a work legally qualifies as a “work made for hire”, companies that commission works from independent contractors (such as photographers, web site developers and software writers) should seek written agreements that assign the copyright in the commissioned work to the company.  Mere physical delivery of the completed work product does not convey copyright.  A company which does not own the copyright in a work cannot register the work, will not have standing to sue for its infringement, and may not be able to use the work in all of the ways it may want to in the future without paying further compensation to the copyright owner.

Licensing and Assignments

A copyright is intangible personal property.   A copyright owner may assign or license his or her exclusive rights, in whole or in part, to anyone he or she wishes.  These rights may be limited to a certain geographic area.  The copyright owner may grant an exclusive license to a single licensee, or grant nonexclusive licenses to any number of different licensees.  The owner may also give a security interest in the copyright to a lender as collateral for a loan.

An assignment of copyright must be in writing, and may, but does not have to be, recorded with the Copyright Office.   Because of the legal benefits which flow from the recordation of assignments and security interests, it is advisable that recordation be done.

Term and Renewal

A copyright attaches the moment a work is completed and fixed in a tangible form.  For all works created on or after January 1, 1978, the length of the copyright varies according to the number and kind of its “authors”.  For works with single, natural authors, the term is the author’s life plus 70 years.  For joint works, the copyright lasts 70 years after the last surviving author’s death.  Copyrights in works made for hire (typically, works made for an employer) last for 95 years after the date of first publication or 120 years from the time of creation, whichever is shorter.

Copyrights in works created on or after January 1, 1978 may not be renewed, which is a change from the old Copyright Act.  Different rules are still in place for works created before this date, however; it is best to consult with an attorney familiar with the statutory scheme to determine rights for older works.

Copyright Formalities: Notice and Registration

Notice

Formal copyright notice is not required for works fixed after March 1, 1989, the date the U.S. joined the Berne Convention.

Providing notice is still advisable for at least two reasons.  Primarily, notice lets the public know that the copyright owner is claiming rights in the work, which may have a deterrent effect on would-be infringers.  Notice will also prevent infringers from claiming an “innocent infringer” defense, which if proved would reduce the amount of damages awarded by the court.

One legally sufficient form of notice appears as follows: “© [year of first publication] [copyright owner]”, e.g., “© 2013 Smith Inc.”  “Copyright” or “Copyr.” may be used instead of ©.  The commonly seen “All Rights Reserved” is surplusage from a defunct 1910 treaty and may be omitted without legal consequence.

Registration

It is no longer necessary to register a work in order for copyright protection to attach, but a United States work must be registered (or a final refusal of such registration must be made by the Copyright Office) before any infringement lawsuit may be filed in federal district court.  Further, prior registration is necessary in order for a copyright owner to seek statutory damages and attorney’s fees as remedies for acts of infringement commenced after application for registration is made.

Registration of copyright in a work is done by completing and filing an application for registration, and making a deposit of one or two copies of the work or identifying material of the work, depending on the kind of work that it is and other circumstances.

For most works and in most circumstances, electronic filing is possible through the electronic copyright office (eCO), and this is faster and cheaper than submitting paper forms.  Currently, the cost of an electronically submitted copyright application is $55, while a paper form is $85.

The registration process now takes about eight months to complete if the filing is done electronically, and 13 months if done by paper.  For a special handling fee (currently $800) an applicant may speed up the process and obtain registration in a matter of weeks.

COPYRIGHT INFRINGEMENT

Infringement occurs when one or more of a copyright owner’s five exclusive rights is violated.  Actions for copyright infringement must be brought in federal district court.

Proving Infringement

The easiest way to show infringement is direct proof that the infringer copied the work, or performed, without permission, any other of the copyright owner’s exclusive rights.  This proof is usually difficult to obtain, so the courts will allow an inference of infringement if the copyright owner can show that the infringer had access to the work and that the infringing material is “substantially similar” to the copyrighted work.  There are a few different tests for “substantial similarity” established by the different federal circuit courts of appeal.  In one test, an ordinary observer is said to make a side-by-side comparison of the accused work and the copyrighted work.

Additionally, persons who encourage or authorize another to infringe a copyrighted work may be liable for contributory infringement.

Defenses to infringement claims include asserting that the copyright is not valid, that it is not owned by the plaintiff, that what was copied was not a protectable element, that the defendant had authorization to perform the complained-of acts, and that the defendant’s use of the copyrighted work is excused under the fair use doctrine or by another statutory exception.

Remedies

Generally, two types of relief are available: injunctions and damages.

If a work is found to infringe a valid copyright, a court may order the infringer to stop the infringing activity.  The infringer may also be ordered to destroy any existing copies of the infringing work in his or her possession; he or she may also be forced to destroy the instruments and machines used to make the infringing work.

A copyright owner may also recover damages.  There are two kinds of these:  actual damages, which must be proved by the plaintiff (usually at considerable cost), and “statutory” damages, which can be awarded by the court without such proof.  Statutory damages are available only in those cases where the owner had applied for registration of the work prior to the commencement of infringement.  This is one reason for a copyright owner to register those of its works that it believes will be copied.

In addition, a plaintiff may also be able to recover consequential damages caused by the infringing work, such as lost profits.

Finally, the prevailing party in a copyright infringement action may also be able to recover attorney’s fees as determined by the court.  For the plaintiff to be awarded attorney’s fees, it must have applied for registration of the work prior to the commencement of the infringement.

Copyright and the Internet: the Digital Millennium Copyright Act (“DMCA”)

The owner of the copyright in text, photos, artwork, etc. will sometimes see its work used online without its permission.  Title II of the Digital Millennium Copyright Act (“DMCA”) is an addition to the copyright statute that provides a quick remedy for removal of infringing content – at least temporarily.  The owner sends a prescribed notice of the infringement to the Service Provider (“SP”) which hosts the site on which the infringing material is posted.  To avoid civil liability (and assuming that the SP did no more than unconsciously host the material), the SP must expeditiously “take down”, or disable access to, the infringing material in response to a compliant notice.  The owner of the accused content may then in a similar fashion generate a “putback” notice, which then requires the SP to restore access to the accused material, within 10 to 14 days after receiving the counternotice.  In issuing the “takedown” notice, the copyright owner has to have a good faith belief that the accused material is infringing, and in issuing a “putback” notice, the accused user must have a good faith belief that the removal was done by mistake or misidentification.  These statements are made under the penalty of perjury.  Material misrepresentations make the persons making these statements liable for damages, costs and attorneys’ fees.  This is designed to reduce the abuse of these “takedown” and “putback” notices.