1 COPYRIGHT FROM THE CORPORATE PERSPECTIVE Jeanne Hamburg Presented by: Jeanne Hamburg June 22,...

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COPYRIGHT FROM THE COPYRIGHT FROM THE CORPORATE PERSPECTIVECORPORATE PERSPECTIVE

Attorneys at Law

Presented by:

Jeanne HamburgJeanne Hamburg

June 22, 2004

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OverviewOverviewWhy Are We Here?Why Are We Here?

Copyright basicsCopyright basics

Identify common situations in which Identify common situations in which copyright issues may arisecopyright issues may arise

Learn how to resolve copyright issuesLearn how to resolve copyright issues

Significant damages can be available for Significant damages can be available for infringementinfringement

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What is Copyright?What is Copyright?

Section 102(a) of Copyright ActSection 102(a) of Copyright Act

Copyright protection subsists inCopyright protection subsists in– Original works of authorshipOriginal works of authorship– Fixed in any tangible medium of expressionFixed in any tangible medium of expression

Copyright protection subsists from the moment Copyright protection subsists from the moment of creation, as soon as the work is “fixed” in of creation, as soon as the work is “fixed” in tangible form from which it can be “perceived, tangible form from which it can be “perceived, reproduced, or otherwise communicated” either reproduced, or otherwise communicated” either directly or with the aid of a machine.directly or with the aid of a machine.

©

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Copyright Registration Copyright Registration

Registration not required for copyright to Registration not required for copyright to subsist subsist

Registration is a pre-condition to lawsuit Registration is a pre-condition to lawsuit and limits damages if copyright is and limits damages if copyright is registered after an infringement takes registered after an infringement takes placeplace– No statutory damages if don’t register: up to No statutory damages if don’t register: up to

150,000 PER willful infringement150,000 PER willful infringement

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Copyright: What’s ProtectedCopyright: What’s Protected

Literary works (including Literary works (including compilations)compilations)

Musical worksMusical works

Dramatic worksDramatic works

Pantomine & choreographic Pantomine & choreographic worksworks

Pictorial, graphic & sculptural Pictorial, graphic & sculptural worksworks

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Copyright: What’s ProtectedCopyright: What’s Protected

Motion picture & Motion picture & audiovisual worksaudiovisual works

Sound recordingsSound recordings

Architectural plansArchitectural plans

Computer programsComputer programs– CodeCode– ““Look and feel” Look and feel”

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Copyright: What’s Not ProtectedCopyright: What’s Not Protected

Works not fixed in a Works not fixed in a tangible form of tangible form of expression (the spoken, expression (the spoken, unrecorded word, not unrecorded word, not fixed in any medium)fixed in any medium)Titles, names, short Titles, names, short phrases, slogans, familiar phrases, slogans, familiar symbols or designs symbols or designs (typically protected by (typically protected by trademark law)trademark law)Listings of ingredients or Listings of ingredients or contentscontents

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Copyright: What’s Not ProtectedCopyright: What’s Not Protected

Ideas, procedures, Ideas, procedures, methods, systems, methods, systems, processes, concepts, processes, concepts, discoveries, devices (may discoveries, devices (may be protected under patent be protected under patent law), anything purely law), anything purely functional functional Standard lists, tables, Standard lists, tables, calendars, rulers or other calendars, rulers or other content taken from public content taken from public domain documents and domain documents and other works containing no other works containing no original authorshiporiginal authorship

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Copyright: Protected Elements in Copyright: Protected Elements in Unprotected ItemsUnprotected Items

Clothing not protected, fabric design Clothing not protected, fabric design isis

A belt may not be protected, its A belt may not be protected, its buckle can be buckle can be

Jewelry which has elements that are Jewelry which has elements that are original and not purely functionaloriginal and not purely functional

Selection and arrangement of content Selection and arrangement of content may be protected (selected works of may be protected (selected works of Shakespeare) even if the underlying Shakespeare) even if the underlying works aren’tworks aren’t

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Copyright: A Bundle of RightsCopyright: A Bundle of Rights

Author’s Right to Do or License Others to:Author’s Right to Do or License Others to:

CopyCopy

DistributeDistribute

DisplayDisplay

Perform orPerform or

Make Derivative Works based on an Make Derivative Works based on an author’s fixed expression (a “Work”)author’s fixed expression (a “Work”)(Derivative works = alteration of work)(Derivative works = alteration of work)

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Copyright: A Bundle of RightsCopyright: A Bundle of Rights

Copy & distribute in Copy & distribute in printed formprinted formCopy & distribute in Copy & distribute in digital formdigital formDisplay only in digital Display only in digital form form

Divisible: Can give away one right or Divisible: Can give away one right or part of one, for example:part of one, for example:

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Copyright: Ownership and TermCopyright: Ownership and Term

Rights typically vest in the creatorRights typically vest in the creatorException is “work for hire” when another Exception is “work for hire” when another “commissions” the work or when a work is “commissions” the work or when a work is created in the scope of employment. In those created in the scope of employment. In those instances the employer or party who instances the employer or party who commissioned the creation of the work is commissioned the creation of the work is deemed the ownerdeemed the ownerTerm of copyright: life plus 70 yearsTerm of copyright: life plus 70 yearsFor works made for hire: 120 yearsFor works made for hire: 120 yearsAfter copyright expires work said to be in “public After copyright expires work said to be in “public domain” and anyone can exploitdomain” and anyone can exploit

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Form of Copyright GrantsForm of Copyright Grants

Written grant of rights required for Written grant of rights required for exclusivity.exclusivity.

If the agreement to exploit a work is verbal If the agreement to exploit a work is verbal only, then it is only a non-exclusive one. only, then it is only a non-exclusive one. Others have the right to exploit the work in Others have the right to exploit the work in the identical fashion.the identical fashion.

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Copyright GrantsCopyright Grants

Three forms of grants:Three forms of grants:– LicenseLicense– AssignmentAssignment– Work for HireWork for Hire

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LicenseLicense

Only some rights in the bundle grantedOnly some rights in the bundle granted

Author keeps the restAuthor keeps the rest

May end if author exercises his “right of May end if author exercises his “right of reversion”reversion”

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AssignmentAssignment

Transfer of entire copyright: the whole Transfer of entire copyright: the whole bundlebundle

May terminate if author exercises right of May terminate if author exercises right of reversionreversion

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Work for HireWork for Hire

Employer owns the copyright as if it created Employer owns the copyright as if it created itit

Two ways to getTwo ways to getas employeras employer

as one who “commissions” 9 types of works, as one who “commissions” 9 types of works, including educational texts and contributions to including educational texts and contributions to collective works collective works

NOT software created by non-employeeNOT software created by non-employee

NO reversionNO reversion

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Reversion Reversion

Earlier of publication plus 35 years or Earlier of publication plus 35 years or execution plus 40 yearsexecution plus 40 years

NOT automaticNOT automatic

NOT work for hire—but every other grant NOT work for hire—but every other grant subject tosubject to

Long shelf-life (get an option)Long shelf-life (get an option)

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Power to GrantPower to GrantSomeone else’s work for hireSomeone else’s work for hireJoint work: two authors merge contributions so Joint work: two authors merge contributions so each has copyright to give in entire work. Wrote each has copyright to give in entire work. Wrote chapter, developed software code.chapter, developed software code.Collective work: each make severable Collective work: each make severable contributions, need each to convey copyright in contributions, need each to convey copyright in the whole, e.g. author and editor; or one author the whole, e.g. author and editor; or one author wrote chapters 1-3, other wrote 4-6wrote chapters 1-3, other wrote 4-6U.S. Government work: created by gov’t ee in U.S. Government work: created by gov’t ee in scope of his employmentscope of his employment

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New MediaNew Media

All media “now known or hereafter All media “now known or hereafter developed”developed”

Right to make derivative works NOT Right to make derivative works NOT enoughenough

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Situations in Which Situations in Which Copyright May ApplyCopyright May Apply

Clearing content a company wants to distribute (web Clearing content a company wants to distribute (web sites, brochures, etc.)sites, brochures, etc.)

Evaluating whether uses of content are infringingEvaluating whether uses of content are infringing

Protecting content against infringementProtecting content against infringement

Enforcing copyright when it is infringedEnforcing copyright when it is infringed

Selling or transferring copyright or rights thereunder Selling or transferring copyright or rights thereunder (M&A)(M&A)

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Clearing content: Web siteClearing content: Web site

Do I need permission to use this content on Do I need permission to use this content on my company’s web site?my company’s web site?

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Clearing content: Web SiteClearing content: Web Site

Who created the web site?Who created the web site?Is there an agreement with web site developer?Is there an agreement with web site developer?Who wrote the content for the web site?Who wrote the content for the web site?– Employee: work made for hireEmployee: work made for hire– Third Party: need contractThird Party: need contract

Is there original art work/photography on the Is there original art work/photography on the site?site?Who created the art work/photography?Who created the art work/photography?Are there agreements with those individuals?Are there agreements with those individuals?Is there any right of publicity issue for real Is there any right of publicity issue for real persons depicted?persons depicted?

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Proving Copyright InfringementProving Copyright Infringement

Copyrightable expressionCopyrightable expression

Access to copyrightable workAccess to copyrightable work

CopyingCopying– Copying is presumed from Copying is presumed from substantialsubstantial

similaritysimilarity—the key test for infringement—the key test for infringement

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Limitations on Exclusive Rights: Limitations on Exclusive Rights: Fair UseFair Use

““Fair use”, codified at 17 U.S.C. 107Fair use”, codified at 17 U.S.C. 107

Allows the user of copyrighted material to do things Allows the user of copyrighted material to do things otherwise exclusively the right of the copyright ownerotherwise exclusively the right of the copyright owner

Must be for “fair use” purposes enumerated by statute: Must be for “fair use” purposes enumerated by statute: e.g., criticism, comment, news reporting, teaching, e.g., criticism, comment, news reporting, teaching, scholarship, researchscholarship, research

Four factor test for fair use: (1) purpose and character of Four factor test for fair use: (1) purpose and character of use; (2) nature of work; (3) amount and substantiality of use; (2) nature of work; (3) amount and substantiality of portion used: (4) effect on marketplace valueportion used: (4) effect on marketplace value

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Copyright Infringement: AdvertisingCopyright Infringement: Advertising

Verizon Wireless Print AdVerizon Wireless Print Ad

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Copyright Infringement: AdvertisingCopyright Infringement: Advertising

Variation OneVariation One

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Copyright Infringement: Copyright Infringement: AdvertisingAdvertising

Variation TwoVariation Two

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Copyright: AdvertisingCopyright: AdvertisingAre the uses infringing?Are the uses infringing?

Is the “variation” substantially similar to Is the “variation” substantially similar to protected elements in the original?protected elements in the original?

Is the “variation” a fair use of the original?Is the “variation” a fair use of the original?– Purpose or character of use:Purpose or character of use:

Commercial: to promote goods or services or Not-for-profitCommercial: to promote goods or services or Not-for-profit

– What is the nature of the work?What is the nature of the work?Comment? Editorial use? Parody?Comment? Editorial use? Parody?

– Amount/substantiality of portion taken:Amount/substantiality of portion taken:How much original expression “borrowed” from the original?How much original expression “borrowed” from the original?

Does it displace market for the original?Does it displace market for the original?

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Copyright: Advertising—Fair Use Copyright: Advertising—Fair Use Or Infringement?Or Infringement?

The The OriginalOriginal MasterCard “Priceless Ad” MasterCard “Priceless Ad”

The Copy: Nader’s “Priceless Truth” AdThe Copy: Nader’s “Priceless Truth” Ad

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Analysis of Priceless AdsAnalysis of Priceless Ads

Identify the copyrightable expressionIdentify the copyrightable expression– Selection and arrangement of creative expression Selection and arrangement of creative expression

(NOT ideas) including(NOT ideas) includingRecitation of item colon price; and intangible that is pricelessRecitation of item colon price; and intangible that is pricelessSequence of imagesSequence of imagesPlacement and appearance of text within ad (over image)Placement and appearance of text within ad (over image)Use of voice overUse of voice overSound of voice overSound of voice over““Look and feel”Look and feel”

Analyze whether the alleged infringing use is Analyze whether the alleged infringing use is “substantially similar” to original creative “substantially similar” to original creative expression in the originalexpression in the original

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Analysis of Priceless AdsAnalysis of Priceless Ads

Is it fair use or infringement?Is it fair use or infringement?– Purpose of use: commercial?Purpose of use: commercial?

Would answer change if told you contributions increased 80 Would answer change if told you contributions increased 80 fold after ad ran nationally?fold after ad ran nationally?

What is the nature of the work?What is the nature of the work?– Parody? Does it comment on the original?Parody? Does it comment on the original?

Amount/substantiality of portion taken:Amount/substantiality of portion taken:– How much original expression “borrowed” from the How much original expression “borrowed” from the

original?original?

Does it displace market for the original?Does it displace market for the original?

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Protecting Copyright:Protecting Copyright:AdvertisingAdvertising

File Applications for Copyright Registration, File Applications for Copyright Registration, ASAPASAPDifferent forms will be needed depending upon Different forms will be needed depending upon the ad is a television (VA), print (TX) or radio the ad is a television (VA), print (TX) or radio (SR)(SR)– Deposit copies of the work are typically required. For Deposit copies of the work are typically required. For

a tv commercial, a storyboard and description are a tv commercial, a storyboard and description are usually submitted, rather than a videotape.usually submitted, rather than a videotape.

– Since statutory damages aren’t available until the Since statutory damages aren’t available until the registration issues, or unless registration issues in the registration issues, or unless registration issues in the 3 months following publication, early filing is desirable3 months following publication, early filing is desirable

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Protecting Copyright:Protecting Copyright:Advertising/Promotional MaterialsAdvertising/Promotional Materials

Place a copyright notice on the workPlace a copyright notice on the work– ©YEAR by COPYRIGHT OWNER©YEAR by COPYRIGHT OWNER– No longer required, butNo longer required, but– Willfulness will be presumed from copying, Willfulness will be presumed from copying,

entitling owner to greater damagesentitling owner to greater damages– May defer infringersMay defer infringers

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Protecting Copyright: SoftwareProtecting Copyright: Software

Software “source code” considered a textual Software “source code” considered a textual work for registration purposeswork for registration purposes““Open source code” cases: Open source code” cases: – So called because the code was derived from So called because the code was derived from

supposedly “public domain” sites—to wit, supposedly “public domain” sites—to wit, Internet postings by those who sought an Internet postings by those who sought an alternative to other OS such as Windows.alternative to other OS such as Windows.

– IBM is being sued for $1 billion by SCO IBM is being sued for $1 billion by SCO Group, the licensee of Unix, an operating Group, the licensee of Unix, an operating system. SCO, claims that Linux, which is system. SCO, claims that Linux, which is installed on all IBM computers, inrfringes installed on all IBM computers, inrfringes copyright in the Unix code.copyright in the Unix code.

““Look and feel” of a program may be Look and feel” of a program may be independently copyrightable as visual workindependently copyrightable as visual work

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Copyright: DatabasesCopyright: DatabasesIn the U.S., databases are not, In the U.S., databases are not, in and of themselves, in and of themselves, protectible. protectible.

Feist Publications v. Rural Feist Publications v. Rural Telephone Service Co.,Telephone Service Co.,– publisher of a phone directory publisher of a phone directory

sued for copyright infringement sued for copyright infringement in its “white pages”.in its “white pages”.

– ““sweat of the brow” not enough sweat of the brow” not enough to create copyright. to create copyright.

Databases must be original to Databases must be original to qualify for copyright protection. qualify for copyright protection. – Originality in the selection and Originality in the selection and

arrangement of data is enough, arrangement of data is enough, but “alphabetical” or “numeric” but “alphabetical” or “numeric” listing isn’t original.listing isn’t original.

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Protecting Copyright: Protecting Copyright: Digital ContentDigital Content

What steps can my company take to protect its What steps can my company take to protect its digital content?digital content?– Self help: “digital rights management” (“DRM”) Self help: “digital rights management” (“DRM”)

technology (e.g. copy degradation); digital technology (e.g. copy degradation); digital watermarkswatermarks

– Register copyright Register copyright

Digital Millennium Copyright ActDigital Millennium Copyright Act– Makes it illegal for others to circumvent DRM Makes it illegal for others to circumvent DRM

technology. “Hacking” into copyrighted content is now technology. “Hacking” into copyrighted content is now unlawfulunlawful

– Remedies include civil suit as well as criminal Remedies include civil suit as well as criminal prosecution (fines, imprisonment)prosecution (fines, imprisonment)

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Enforcing CopyrightEnforcing Copyright

Assuming you have identified an Assuming you have identified an infringement what is the copyright owner’s infringement what is the copyright owner’s recourse?recourse?– Demand letter: weigh benefit (cost effective) Demand letter: weigh benefit (cost effective)

against possible risk (declaratory infringement against possible risk (declaratory infringement action by infringer)action by infringer)

– ADR/Mediation/Arbitration: Cannot get ADR/Mediation/Arbitration: Cannot get nationwide injunctive reliefnationwide injunctive relief

– LitigateLitigate

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LitigationLitigation– Federal courts have exclusive jurisdiction Federal courts have exclusive jurisdiction – Need copyright registration to bring actionNeed copyright registration to bring action– If registration not issued, can request If registration not issued, can request

expedited issuance (2-3 days) for higher fee expedited issuance (2-3 days) for higher fee (580 dollars per app., ordinarily 30 dollars)(580 dollars per app., ordinarily 30 dollars)

– If infringement has commenced before If infringement has commenced before registration issues (or within a 3 month registration issues (or within a 3 month “window” after first publication, no right to “window” after first publication, no right to statutory damagesstatutory damages

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RemediesRemedies– InjunctionInjunction– ““Actual” damages (lost profits of plaintiff)Actual” damages (lost profits of plaintiff)– Defendants’ profitsDefendants’ profits– Statutory DamagesStatutory Damages

Must elect, cannot recover in addition to actual damages, Must elect, cannot recover in addition to actual damages, profitsprofitsUp to $150,000 per willful infringementUp to $150,000 per willful infringement

– Willfulness can be imputed from copyright noticeWillfulness can be imputed from copyright notice– Discretionary with the court so usually other factors Discretionary with the court so usually other factors

demonstrating bad faith copying critical to get maximum awarddemonstrating bad faith copying critical to get maximum award

– Attorneys’ Fees to prevailing party (even the Attorneys’ Fees to prevailing party (even the defendant)defendant)

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Acquiring or Selling Copyrights In Acquiring or Selling Copyrights In Purchase or Sale of Assets/StockPurchase or Sale of Assets/StockYour company has come to you for advice Your company has come to you for advice concerning sale to another company of its concerning sale to another company of its assets. A few issues the company will face in assets. A few issues the company will face in transferring copyright:transferring copyright:– Chain of title: does the seller own rights?Chain of title: does the seller own rights?– Exclusivity: if the seller owns rights, does it own them Exclusivity: if the seller owns rights, does it own them

exclusively?exclusively?– Documenting the Seller’s Ownership: contracts, Documenting the Seller’s Ownership: contracts,

registrationsregistrations– Assignability of rights (change of control, consent): Assignability of rights (change of control, consent):

asset versus stock purchaseasset versus stock purchase– Liens Liens – Due diligence criticalDue diligence critical

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Where to Learn MoreWhere to Learn More

Copyright Office web site, www.copyright.govCopyright Office web site, www.copyright.gov

Contains forms of application with instructions Contains forms of application with instructions and useful circulars on all manner of topicsand useful circulars on all manner of topics

Contains information re: legislation, new and Contains information re: legislation, new and proposedproposed

Enables one to search copyright records to Enables one to search copyright records to determine ownership, registration date although determine ownership, registration date although a hand search is necessary to obtain deposita hand search is necessary to obtain deposit

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