CREATIVE PROPERTY / COPYRIGHT

COMM 407: CHAPTER 6

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 Free-Lancer 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 yearsWorks 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 OfficeAnd 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 cease-and-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