United States: The Basics Of Copyright Law: Just Enough Copyright For People Who Are Not Attorneys Or Intellectual Property Experts

This article originally appeared in the California Bar Journal as an educational piece for attorneys not expert in intellectual property law, but is suitable for non-attorneys as well.

You have been helping a client set up her consulting business for failing bookstores (Speak Volumes Recovery Group), and she mentions that she has developed a PowerPoint presentation and hand-outs for use in their seminars. "Do you think we should trademark or copyright these materials?" she asks. "We're really jazzed about the slides; we made them much more exciting by using a lot of photos we found on the internet. Also, the manuals we give our customers include some great ideas we've developed about bookstore inventory control — the copyright will keep our competitors from using our ideas if we register the manual, right?"

"Well," you respond, "ummm... ahh.... Let me think about that." (Maybe you should have taken that intellectual property course in law school after all!)

No mind; not too late. Copyright issues can arise in any practice, but you don't need to become an expert in the most sophisticated and arcane aspects of the practice in order to answer some basic questions. This article seeks to provide you with just enough copyright law to understand the fundamentals and address the key issues.

Just What Is A Copyright?

Copyright refers to the rights of authors in works of authorship — as distinguished from patents (whose subject matter is inventions), trademarks (which concern symbols of an enterprise's reputation and goodwill) and trade secrets (information whose value derives from being kept secret).

Copyright protects the expression in a work of authorship against copying. Copyright law does not protect the underlying ideas embodied in a work; neither does it protect against independent development.

Basic copyright protection is automatic, essentially free, and more or less world-wide in scope. Although people often speak of "copyrighting" a work or "obtaining a copyright," these are misnomers. The copyrights in any original work of authorship come into existence automatically, without further action, as of the moment of "fixation" of the work. Registering a work with the U.S. Copyright Office and marking a work with a copyright notice are not required, and failure to do so does not result in loss of the basic rights of copyright holders.

Copyright Requirements

There are three basic requirements for copyright protection: that which is to be protected must be a work of authorship; it must be original; and it must be fixed in a tangible medium of expression.

1. The Work of Authorship Requirement

What is a work of authorship? The subject matter of copyright embraces a wide range of works, whether published or unpublished, including:

  • Literary or textual works of all kinds (including novels, short stories, biographies, articles, news stories, poems, outlines, letters, email messages, etc.).
  • Pictorial, graphic and sculptural works (including sketches, paintings, photographs, drawings, designs, etc.).
  • Musical, dramatic and choreographed works (songs, telephone ring tones, plays, TV shows).
  • Sounds recordings (performances of songs, public speeches, books on tape).
  • Computer programs, most websites, and various other digitized works.

2. The Originality Requirement

"Originality" is a constitutional requirement, but it is a minimal requirement under copyright, not comparable to the "nonobviousness" standard for a patent. A hackneyed or trivial work can be original enough for copyright protection, so long as it is not copied from an earlier work and so long as it contains a tiny spark of creativity. What would represent insufficient creativity? Arranging the names in a telephone directory in alphabetical order.

3. The Fixation Requirement

A work must be "fixed," under copyright law, to enjoy copyright protection. This does not mean it must be the final or a well-considered version of the work. Rather, the term simply refers to the requirement that an embodiment of the work be set down or "fixed in a tangible medium of expression" for a more than transitory period. A draft of a novel on paper, the "rushes" from a film before editing, the beta version of a computer program on a CD-ROM disk, a snapshot on film or a digital camera's flash memory, all are "fixed" works within the meaning of copyright law. But the most brilliant and creative improvisation is not "fixed" if unscripted and unrecorded.

Benefits Of Registration With The U.S. Copyright Office

Registration, though not required for basic copyright protection, has important advantages: Registration is necessary if you want to (i) record security interests in a copyright, (ii) ask U.S. Customs to block infringing goods from being imported into the country, (iii) benefit from the (rebuttable) presumption that all facts stated in the registration certificate, including ownership, are true or (iv) be eligible for statutory damages and attorneys fees.

In cases in which the infringement begins after registration or within three months of publication, the registrant is entitled to statutory damages — damages awarded without need of evidence of harm to the plaintiff or unjust enrichment of the defendant — in a discretionary amount between $750 and $30,000 per infringed work (increased to as much as $150,000 per infringed work in cases of willful infringement). The plaintiff is in any event always eligible for actual damages or infringer's profits if they can be proven.

Registration is also required (v) as a condition for filing a copyright infringement lawsuit. The registration is just the ticket for getting into court, however; you can register and sue even if you had not registered before you learned of the infringement. Also, it is not uncommon for plaintiffs to file a complaint and attach a registration application, and then to substitute the actual registration certificate later.

The form is a simple one and the registration fee, relatively trivial. Some works, like computer software and web sites, can pose more difficult issues, and a lawyer's help may be needed for them. The Copyright Office's examination of the application is largely ministerial, and it does not engage in the kind of substantive review characteristic of patent and trademark applications.

Owning A Copy Versus Owning A Copyright

Although a work must be fixed in order to be protected, the copyright in a work is not the same as the physical medium in which the work was fixed. It follows that owning a "copy" of a work (even, for example, the original of a painting) is not the same thing as owning the copyrights in the work. The owner of a lawfully transferred copy (or original) therefore does not own the copyrights, in the absence of an express copyright assignment in writing.

The Rights Of Copyright Holders And Limiting Doctrines

Under the Copyright Act of 1976 (and international copyright law), the copyright holder owns a bundle of rights. The copyright owner is the only one who has the right to

  • reproduce the work in copies;
  • prepare derivative works based on the original work;
  • distribute copies to the public; or
  • display and perform the work publicly.

Although the copyright holder owns these exclusive rights with respect to a work, there are still limits on the scope of the rights. These are the principal limiting doctrines:

  • Copyright does not protect against independent development, only against copying. Thus, if you and I each independently write identical sonnets, without any copying, each of us owns a copyright in our own work notwithstanding who came first or that the works are the same.
  • Copyright does not protect ideas, only the way the ideas are expressed. This is often referred to as the "idea — expression 'dichotomy'," although the distinction is really more of a continuum.
  • Copyright does not protect individual words and short phrases.
  • Copyright does not protect procedures, processes, systems, concepts or methods of operation that are embodied in works; only the particular way they are expressed.
  • If there is only one or very few ways to express an idea, the expression is deemed to be "merged" with the idea and it is not protected against copying. This "merger" doctrine prevents copyright from being used to monopolize ideas.
  • "Standard treatments" of a subject within a genre of works (known as "scenes a faire") are not protected. (Example: the gun duel on a dusty main street in a cowboy movie.) The scenes a faire doctrine bars protection for features or elements of a computer program that are dictated by "externalities" such as the purpose of the program, standard programming practices, the requirements of the relevant computing environment, etc.
  • Copyright does not protect "facts" or data. But the selection and arrangement of facts (e.g., in databases) can be protected as a "compilation." In that event, copying the underlying facts is not an infringement, so long as the creativity residing in selecting or arranging the facts is not appropriated by the copier. Thus, extracting facts or data from a web site (so-called "screen scraping") is usually not a copyright violation. (Keep in mind, however, that it might nonetheless violate the web site's terms of use (which may or may not be enforceable under contract law). And if automated software "robots" or "spiders" were used to collect masses of data from a web site, the owner of the site might also assert a state law claim for "trespass to chattel.")

Ownership And Transfer Of Copyrights

The author initially owns the copyrights in a work. The author is either the individual who wrote or created the work or (under the "work made for hire" doctrine) her employer, if the work was created by an employee within the scope of her employment. 17 U.S.C. §§ 101, 201(b). With only a few narrow exceptions (see part (2) of "work made for hire" definition in 17 U.S.C. § 101), when a consultant creates a work of authorship, he or she is the author and owns the copyrights in the work even if someone else specifically commissioned and paid for the work.

When two or more individuals contribute parts intended to be united into a single, unitary, indivisible work (e.g., the music and lyrics of a song, or the analytical software engine and user interface of a computer program), they are considered joint owners of the copyright in the work. Unless they contract otherwise, each has the power to exploit the work (and each may license third parties' use of the work) without the permission of the other joint owner, subject only to an obligation to account to the other party for profits.

Copyrights can be transferred only by an express assignment in writing. This requirement governs exclusive licenses as well as assignments of the entirety of a copyright.

Copyright Infringement

The unauthorized exercise by a third party of any of the exclusive rights of copyright holders, such as copying, is copyright infringement. There is no bright line test for how much is too much copying. But actionable copying is commonly presumed when the defendant had access to the original work and — after setting aside ideas or other elements of a work that are not protected — what is left is "substantially similar" to the original work. For works that enjoy only "thin" copyright protection (such as, for example, representational sculptures of real creatures), infringement will not be presumed unless the works are "virtually identical" or the defendant has "bodily appropriated" the original.

Secondary Liability

One can be liable for the infringing acts of third parties under three distinct doctrines. Liability for contributory infringement attaches if (i) with knowledge of the infringing acts, someone (ii) materially contributes to the infringement. Vicarious infringement lies if the defendant (i) had the right and power to control the infringing activity and (ii) received a direct financial benefit from it. Finally, one is liable for inducement of copyright infringement if it can be shown that one (i) distributed a device or technology with (ii) the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement.

Defenses To Copyright Infringement: Fair Use

Even if a work is copied in whole or in part, a prima facie infringement will not mature into liability if an affirmative defense such as fair use applies. Section 107 of the Copyright Act of 1976 mentions "criticism, comment, news reporting, teaching, scholarship, or research" as examples of fair use purposes. But all such uses are not necessarily deemed "fair use," and the statute directs courts to consider four factors to decide whether a particular use is fair:

  • Purpose & character of use (e.g., commercial, educational, and particularly including whether the use is "transformative" — whether the new work is imbued with new purpose, expression, meaning or message);
  • Nature of copyrighted work (copying of factual works is more likely to be deemed fair use than copying of creative or fictional works);
  • Amount and substantiality of what was taken (it militates against fair use to take the entirety of the work or more than needed for the claimed fair use purpose); and
  • Effect on the potential market for or value of the copyrighted work (it tends to go against fair use if the new work is a substitute for the demand for the original work).

Examples Of Fair Use

  • Cases have held that it represented fair use, and therefore was not an infringement of copyright, for defendants to:
  • Copy numerous features of the original work in order to create a parody that ridicules the original;
  • Use "thumbnail" copies of photographs on a website as part of a visual search engine;
  • Copy and display photographs when the photos themselves are the subject of commentary or a public controversy;
  • Copy television programming for purposes of "time-shifting" (make temporary copies so the consumer can view the programming later);
  • Copy the full text of millions of books, when the texts are not made available to end-users for reading, but are only used for data mining or to enable searches to locate small excerpts from the books.
  • Transfer digital copies of recorded programming, which consumers lawfully possess, to their mobile devices;
  • Reverse engineer and copy the code of a game program, as an intermediate step, when that is required in order to understand the functional specifications of the work and when those functional specifications are needed to prepare new, compatible, non-infringing games to operate on the same platform.

Affirmative Defenses: Copyright Misuse

The use of the copyright to secure (i) an exclusive right or limited monopoly (ii) not granted by the Copyright Office and which is (iii) contrary to public policy constitutes copyright misuse. Cases have therefore held it to be misuse to impose terms in a copyright license that require the licensee to agree not to create new, non-infringing works of the same genre, to agree not to purchase competing non-infringing works from third parties, or to agree to limit access to the work in a way that precludes the creation of new, non-infringing works.

The copyright misuse defense can be asserted by a defendant who was not a party to the misuse-embodying license or contract. Misuse does not invalidate the copyright, but renders it unenforceable for the period of misuse and until the results of the misuse are purged.

And About Speak Volumes Recovery Group...

Getting back to your client, you can now explain—

  • That copyright, not trademark, is what protects their PowerPoint presentations and handouts, and the advantages of registration;
  • That copying photos off the internet is likely copyright infringement, and they need to license rights to the photographs useful in their business; and
  • That copyright law won't prevent SVRG's competitors from using the ideas contained in the SVRG manual, though it may perhaps be possible to protect the company's ideas through a business method patent or as trade secrets.

But those are subjects for another day.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
30 Nov 2017, Conference, San Francisco, United States

The 2017 agenda addresses significant pending legislative and regulatory changes along with our annual substantive updates.

5 Dec 2017, Webinar, California, United States

This highly interactive colloquium will provide a deep understanding and practical advice regarding major e-discovery challenges facing organizations today.

6 Dec 2017, Seminar, California, United States

Network and be seen as an information security thought leader. “The Exchange” colloquium is designed for senior business executives and security practitioners from both the public and private sector.

 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.