Chapter 5: Definitions Copyright Law

In this section, we provide concise definitions of the words and phrases commonly used when dealing with copyrights.

abridgment of works

See derivative work.

access

In order to prove that a work was copied, sold or performed without authorization, the copyright owner must demonstrate that the person accused of infringement had a reasonable opportunity to view or hear the copyrighted work and that the two works—the infringer’s and the copyright owner’s—are substantially similar. The first requirement—the occasion to view or hear the copyrighted work—is referred to as access. If the infringement involves identical copies, such as photographs copied from a magazine, access may be presumed and does not need to be proved. That’s because in cases of verbatim copying, it is virtually impossible that two works could have been independently created. For example, the makers of Beanie Babies successfully sued a company marketing a pig bean bag known as “Preston the Pig” that was identical to the Beanie Baby known as “Squealor.” The similarity between the two was so close as to create a reasonable presumption of access. (Ty Inc. v. GMA Accessories Inc. 132 F.3d 1167 (7th Cir. 1997).)

When the copies are not identical, access can be proven in various ways. For example, in one case the owners of copyright in popular children’s characters proved access because the representatives of a fast food chain had visited their headquarters and discussed use of the characters in commercials. (Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157 (9th Cir. 1977).)

In another case, the owners of the song He’s So Fine sued George Harrison alleging that Harrison’s song My Sweet Lord infringed their copyright. It was determined that Harrison had access to He’s So Fine since the song was on the British pop charts in 1963 during the same period when a song by the Beatles was also on the British charts. (Abkco Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988 (2d Cir. 1983).)

As a general rule, the more popular a work, the easier it is to prove access. Conversely, if a work was not published, the copyright owner has a harder time proving access.

Related terms: copyright infringement, defined; infringement action, explained.

actual damages for copyright infringement

A court may award a dollar amount in actual damages in an effort to approximate the real dollars a copyright owner lost as a result of the owner’s copyrighted work being distributed, copied, displayed, performed or altered by someone else without proper authorization.

Related terms: copyright infringement, defined; damages for copyright infringement.

adaptations or alterations of original works

See derivative work.

affirmative rights

Many people use the term “protections” to refer to the benefits that go along with ownership of copyrights and other intellectual property such as trade secrets, patents and trademarks. For example, one might say, “My poem is protected by copyright.” However, a number of commentators (among them David Pressman, well-known patent lawyer and author of Patent It Yourself) prefer to describe these legal protections as “affirmative rights” because owners must affirmatively exercise their rights if their copyright is infringed.

Affirmative rights include the owner’s right to file a lawsuit, the right to recover damages and the right to obtain an injunction (a court order preventing the infringer from taking certain actions, such as using or selling the infringing material). Although observing this linguistic difference may lead to a better understanding of how intellectual property laws work, this book generally uses the more accepted and commonly used term “protection.”

all rights reserved

This phrase was required as part of a copyright notice by the Buenos Aires Convention international treaty. Until recently, the term appeared in many copyright notices in an attempt to secure complete protection under that treaty. However, all signatory countries to the Buenos Aires Convention are now also members of other international agreements that don’t require the “all rights reserved” phrase, so it no longer serves any useful purpose.

Related terms: international copyright protection; international rules on notice of copyright.

Altai case

See Computer Associates Int’l v. Altai.

anthologies, copyrightability of

See compilations of unoriginal or original material.

anonymous

An author’s contribution to a work is anonymous if the author is not identified on the copies or phonorecords of the work. Copyright protection for anonymous and pseudonymous works is 95 years from the date of publication or 120 years from creation, whichever is shorter. However, if the name of the author is disclosed in the records of the Copyright Office, the work will be protected for the author’s life plus 70 years.

EXAMPLE: The 1995 bestseller Primary Colors was published anonymously. The media eventually determined that the book’s author was Joe Klein, a writer for Newsweek magazine. If Mr. Klein died in 2030 without disclosing his name to the Copyright Office, the term of copyright for Primary Colors would end in 2090 (95 years from publication). If Mr. Klein disclosed his name, protection would extend until 2100 (70 years from his death.)

Related terms: author as owner of copyright, duration of copyright, pseudonym.

Apple Computer, Inc. v. Franklin

In this influential 1983 court decision, a federal Court of Appeals for the first time extended copyright protection to computer operating systems consisting of object code embedded in read-only memory chips, or ROMs. (Apple Computer, Inc. v. Franklin Computer Corporation, 714 F.2d 1240 (3d Cir. 1983).)

Related terms: computer software, copyright of.

Apple Computer, Inc. v. Microsoft Corp.

Apple Computer sued Microsoft, alleging that the Microsoft Windows operating system user interface infringed on Apple’s copyright in the Macintosh user interface. The court ruled that the desktop metaphor employed by the Macintosh user interface was an unprotectable idea. The court also found that most of the individual elements that made up this desktop metaphor were not protected by copyright ideas, either because they were functional rather than original expression or because they were unprotectable ideas.

(Apple Computer, Inc. v. Microsoft Corp., 717 F. Supp. 1428 (N.D. Cal. 1989), 779 F. Supp. 133 (N.D. Cal. 1992).)

Related terms: computer software, copyright of.

architectural work

The design of a building is protected under copyright law. That is, the building, architectural plans, drawings or photographs cannot be reproduced without the consent of the owner of copyright in the architectural work—usually the architect or developer. There are some exceptions. For example, if the building is located in a place that is ordinarily visible to the public, photos or pictures of the building can be taken, distributed, or publicly displayed. Standard features such as common bathroom or kitchen design elements are not protected.

archival copies

The Computer Software Protection Act of 1980 defines archival copies as copies of software made by a software owner strictly for backup purposes—that is, to use if something happens to the original copy. The Act permits a computer program owner to make archival copies of the program as long as the owner retains the original copy of the program. But if the purchaser sells or gives away the original software to a new owner, all archival copies must either be included in the transfer or destroyed. The intention is to prevent two or more people from legally possessing copies of a program that has only been purchased from the copyright owner once.

arrangements, musical

See musical works and copyright protection.

assignment of copyright

The transfer of all or a portion of a copyright to a new owner is referred to as an assignment. Usually, an assignment involves the transfer of the entire copyright, as when a freelance writer assigns all copyright interests in a particular article to a magazine. But an assignment may also transfer less than the whole copyright. For example, an author might assign the right to promote, display, and distribute a novel to a publisher, while reserving the right to create derivative works (such as a screenplay) from that novel.

As a general rule, assignments are unconditional transfers of the rights in question, without limitations on how long the transfer lasts or the conditions under which the rights may be used. By contrast, licenses give permission for a party to use a copyright expression under certain specified conditions for a defined period of time.

Related terms: licensing of copyrights; transfers of copyright ownership, generally.

attorney fees in infringement actions

See infringement action, explained.

Audio Home Recording Act

During the 1980s, technology developed that allowed for digital reproduction of music by consumers. The recording industry was concerned that the consumer’s ability to make near-perfect copies of recordings would result in uncontrolled infringement. The Audio Home Recording Act of 1992 (AHRA) was an attempt to balance the interests of the recording industry, manufacturers and consumers. The AHRA requires the manufacturers of certain digital devices to register with the Copyright Office and pay a statutory royalty on each device and piece of media sold. Manufacturers also have to use a copyright management system that permits only a copy to be made from an original (or first-generation copy). By following these rules, manufacturers are immune from lawsuits claiming copyright infringement. Consumers are also immune from claims of infringement when using devices covered by the AHRA so long as the copying is done for noncommercial use. The AHRA covers devices that are designed or marketed for the primary purpose of making digital musical recordings, such as DAT players and minidisc players. Computers or CD-writable drives are not covered by the AHRA, and therefore unauthorized copying on these devices is an infringement unless otherwise permitted under copyright law.

Related terms: MP3; cyberspace, copyrights in.

audiovisual works

The Copyright Act of 1976 specifically protects movies, videotapes, videodisks, CD-ROM multimedia packages, training films and computer games as audiovisual works. The Copyright Act defines audiovisual works as ones consisting of “a series of related images intended to be shown on machines such as projectors, viewers or electronic equipment, with accompanying sounds, if any, whether the works are recorded on film, tape or other material.” (17 United States Code, Section 101.)

Related terms: Copyright Act of 1976; Form PA, described.

author, defined

The “author” of a work of expression subject to copyright protection is one of the following:

• the person who creates the work

• the person or business that pays another to create the work in the employment context, or

• the person or business that commissions the work under a valid work made for hire contract.

For example, a songwriter may author a song, a movie producer may author a movie, a computer programmer may author a program and a toy designer may author a toy (unique toys with designs unrelated to their functions are protectable by copyright). In all these situations, however, if the creator does not work independently but creates the work in an employment relationship or under a valid work made for hire contract, the employer or person paying for the work is the author for copyright purposes.

Related terms: author as owner of copyright; copyright, explained; work made for hire.

author as owner of copyright

With two major exceptions, when a person first creates a work of expression, he or she is generally considered to be its author and, by virtue of that status, the owner of the copyright in the work. The exceptions are:

• When an author assigns all of his or her copyright ownership rights to another party before the work is created, that party becomes the author (and the owner of the copyright). This typically occurs when someone who is paid to create a work is required, as a condition of that payment, to assign all copyright rights in the future work to the paying party.

• When a work is created by an employee in the course of employment or as a commissioned work under a valid written work made for hire contract, the employer/commissioning party is considered the author (and owner of the copyright).

Because an author/owner of a copyright can always sell the copyright to someone else, it often is the case that a copyright in a work is eventually owned by someone other than its original author.

Related terms: assignment of copyright; transfers of copyright ownership, generally; work made for hire.

authorized use of copyrighted material

A person accused of infringing another’s copyright may seek to prove as a defense that the use was authorized through a license or a transfer. Were such a case to go to court, the judge would seek to determine the conditions under which the license or transfer was granted, what was transferred, and to whom.

EXAMPLE: Ethan, an author of virtual reality games, writes a freelance article for a new publication called Virtually Yours. The article is submitted under a license agreement giving Virtually Yours first serial rights to the article. Two years later, without Ethan’s permission, Virtually Yours places the article on a popular electronic bulletin board and collects royalties each time the article is downloaded. Ethan sues Virtually Yours for copyright infringement, claiming his first serial rights license did not authorize electronic publication of the article. To decide whether Virtually Yours is guilty of infringement, the court will examine the factual context in which Ethan submitted the article, and the terms of the license.

Related terms: copyright infringement, defined; infringement action, explained; transfers of copyright ownership, generally.

automated databases

See computer databases.

backup copies of program

See archival copies.

based on an earlier work

When one original work of authorship has heavily relied upon an earlier one for its content and expression, it is said to be based on the earlier work and, under the Copyright Act of 1976, is considered to be a derivative work. The author of a derivative work must obtain permission from the owner of the copyright in the earlier work to copy, sell or distribute the derivative work. For example, a foreign language translation of a book is based on the book as it was originally written and is subject to the copyright in the original version; a movie that borrows the main characters, story line and some dialogue from a novel is based on that novel and is subject to that novel’s copyright; and a song that has substantially the same melody as an earlier song is based on that song, even if the words are different, and is subject to the earlier song’s copyright.

As a general rule, the more expression a subsequent work uses from an earlier work, the more likely it is to be considered a derivative work and therefore subject to the earlier work’s copyright. However, assuming permission is obtained from the owner of the copyright in the earlier work, the derivative work is itself subject to copyright protection as an independent work.

Related terms: derivative work.

Berne Convention

Originally drafted in 1886, the Berne Convention is an international treaty that standardizes basic copyright protection among all of the countries signing it (currently over 100 member countries). For copyright purposes, a member country will afford the same treatment to an author from another country as it does to authors in its own country. In addition, each member country has agreed to protect what are called the author’s moral rights in the work (generally, the right to proclaim or disclaim authorship and the right to protect the reputation of the work) and to extend copyright protection for at least the life of the author plus 50 years. No notice of copyright or other formality is required for basic copyright protection under the Berne Convention.

Under the General Agreement on Tariffs and Trade (GATT) treaty, enacted into U.S. law in December 1994, all signatories to GATT must also adhere to the Berne Convention if they don’t already do so.

Related terms: GATT (General Agreement on Tariffs and Trade); international rules on notice of copyright; Universal Copyright Convention (U.C.C.).

best edition of a work

To register a work with the U.S. Copyright Office, the author must deposit the best edition of the work with the application. The “best edition of a work” is usually the best quality version of the work available at the time of registration or deposit. The U.S. Copyright Office has published a circular explaining the best version of a work for different types of deposits. Ask the U.S. Copyright Office for Circular R7b. You can also download this publication from the U.S. Copyright Office’s website (www.copyright.gov). (The U.S. Copyright Office’s phone number and address are listed under the “U.S. Copyright Office” entry.)

Related terms: deposit with U.S. Copyright Office; U.S. Copyright Office.

bootlegging of live performance

In 1994, as part of the implementation of the GATT Agreement, the United States passed legislation that allows a performer or record company to prevent the unauthorized recording of a live performance, even if the performer or record company does not own a copyright in any of the songs being performed. (17 United States Code, Section 1101.) A performer or record company can also prevent the “trafficking” in bootlegs from the live performance. “Trafficking” is the transportation or sale of unauthorized copies.

A record company has a right to sue bootleggers because the record company enters into recording agreements with each performer giving the company the exclusive right to release that performer’s recordings. Under the new anti bootlegging law, performers or record companies do not have to register with the Copyright Office in order to receive protection, and there is no time limit for how long the protection lasts. In other words, even though this law is part of the Copyright Act, it does not have the same formal requirements for copyright protection as other works, for example, literary, musical or audiovisual works.

Buenos Aires Convention

The Buenos Aires Convention establishes copyright reciprocity between the U.S. and most Latin American nations. However, because all of these member nations are now also members of larger international treaties that supersede the Buenos Aires Convention, this treaty has little, if any, remaining significance.

When the Buenos Aires Convention had more importance, it guaranteed copyright protection in its member countries if the statement “all rights reserved” was placed on all expressions for which copyright protection was being claimed. This is why the “all rights reserved” phrase appears as a part of so many copyright notices on published works, even if there is no longer any legal reason for it.

Related terms: international copyright protection; international rules on notice of copyright.

cease and desist letter

The opening salvo in any copyright dispute is usually a cease and desist letter from the copyright owner’s attorney. This letter informs the alleged infringer of the validity and ownership of the copyrighted work, the nature of the infringement and the remedies that are available to the copyright holder unless the infringement is halted.

Related terms: copyright infringement, defined; damages for copyright infringement; infringement action, explained.

certificate of registration

When the U.S. Copyright Office approves a copyright application for registration, it mails the author (or other owner) a certificate of registration. This certificate consists of the copyright application stamped with a copyright registration number, the registration date and the U.S. Copyright Office seal at the top.

If the copyright owner sues another party for infringement, the certificate can be used as evidence that the copyright is valid. There is also a legal presumption that the certificate contains true statements—for example, the year the work was created, the fact of authorship and whether other works are incorporated in the work being copyrighted.

Related terms: copyright infringement, defined; infringement action, explained; supplemental registration.

characters, fictional

Fictional characters can be protected separately from their underlying works as derivative copyrights, provided that they are sufficiently unique and distinctive—for example James Bond, Fred Flintstone, Hannibal Lecter, Snoopy and Bridget Jones. Judge Learned Hand established the standard for character protection in Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930) when he stated that, “...the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.”

For example, an alien stranded on earth is a popular and recurring character—My Favorite Martian, Starman and The Man Who Fell to Earth—and by itself, without embellishment is not protectible.

EXAMPLE: A relatively unknown play (Lokey From Maldemar) featured an alien with powers of levitation and telepathy, stranded on earth and pursued by authoritarian characters. The playwright sued the owners of the movie, E.T.—The Extra-Terrestrial, claiming that her character was infringed by the E.T. character. A federal court disagreed, ruling that that the character from Lokey was too indistinct to merit protection. (Litchfield v. Spielberg, 736 F.2d 1352 (9th Cir. 1984).)

However, once the stranded alien acquires more distinctive characteristics—for example, a big-headed, long-necked alien with a glowing finger who murmurs “Phone Home”—it is distinct enough to merit protection and its owners can prevent others from using his image and expression (Universal Studios, Inc. v. J.A.R. Sales, Inc., 216 U.S.P.Q. 679 (C.D. Cal. 1982); (Universal Studios, Inc. v. Kamar Indus. Inc., 217 U.S.P.Q. 1165 (S.D. Tex. 1982)).

Exploitation of fictional characters is a huge source of revenue for entertainment and merchandising companies. Characters such as Superman and Mickey Mouse are the foundations of massive entertainment franchises and are commonly protected under both copyright and trademark law.

The protection afforded to fictional characters sometimes clashes with the fair use right to comment upon or criticize those characters. This is particularly common in parody cases. For example, one court refused to permit an X-rated parody, Scarlett Fever, that used characters from Gone With the Wind (Metro-Goldwyn-Mayer, Inc. v. Showcase Atlanta Cooperative Productions, Inc., 217 U.S.P.Q. (BNA) 857 (N.D. Ga. 1981). Another court permitted publication of a novel using characters from Gone With the Wind but written from a slave’s perspective (Suntrust Bank v. Houghton Mifflin Co., 268 F.2d 1257 (11th Cir. 2001). The disparity in the two opinions—both based on Gone With the Wind—may be due to the fact that in one work, the characters were lampooned in a broad sexual farce, while in the other the characters were used to provoke discussion about racial stereotypes.

Related terms: derivative works, parody. See also Part 4 (Trademark Law): Characters as Trademarks

charts, copyrightability of

See flow charts, registration of.

clearinghouses, copyright

Copyright clearinghouses organize and license works by their members. A person who wants to use one of these works contacts the clearinghouse and—depending on how the organization is structured—pays a fee and acquires a limited right to use the work for a specific purpose. Clearinghouses speed up the permissions process by providing a central source for a class or type of work. For example, Copyright Clearinghouse (www.copyright.com), and icopyright (www.icopyright.com) provide permission for written materials. BMI (www.bmi.com) and ASCAP (www.ascap.com) provide permission for musical performances. Harry Fox Agency (www.harryfox.com) provides permission to reproduce songs. Corbis (www.corbis.com), Archive Photos (www.history.com) and Time, Inc. (www.thepicturecollection.com) are among several clearinghouses that grant permission to use photographs. Art Resource (www.artres.com) and the Visual Artists and Galleries Association (website under construction) grant permission for famous artwork. The Cartoonbank (www.cartoonbank.com) is one of several clearinghouses that licenses cartoons.

Related terms: permission, getting.

click wrap agreement

See end-user license.

co-authors

Two or more people who have contributed significant creative input to a work of expression are legally considered co-authors. Co-authorship can take several forms. Probably the most common is a joint work, where the authors intend that their separate contributions be merged into a unified whole. Co-authors of a joint work share in the copyright of the whole work equally, unless they have signed a joint ownership agreement that provides differently. Absent an agreement to the contrary, any co-author may use the expression covered by the copyright without permission of other co-authors, but must account to the other co-authors and equally share with them any profits realized from the use.

Other forms of co-authorship appear in collective works and derivative works with more than one author, where each author owns only the copyright of the material he or she created:

• Collective works. Co-authors intend to keep their contributions separate—for instance, where one co-author is separately credited for chapters 1 through 10 and the other co-author is credited for chapters 11 through 20.

• Coauthored derivative works. Two or more authors create separate works and only later decide to combine them in one work.

  Related terms: collective work; derivative work; joint work; collaboration agreement.

collaboration agreement

When co-authors want to specify their rights, obligations and percentage of copyright ownership and revenues, they enter into a collaboration agreement. Without a collaboration agreement, a court will presume that the co-authors share equally unless evidence to the contrary is introduced.

Related terms: co-authors; collective work, joint work.

collective work

A work such as a periodical, anthology or encyclopedia, in which a number of separate and independent works are assembled into one work, is referred to as a collective work. (17 United States Code, Section 101.) A collective work is a type of compilation, but unlike other compilations, such as a directory or book of quotes, the underlying elements assembled into a collective work can be separately protected; for example, a collection of short stories by John Updike or a collection of “greatest disco hits” recordings from the 1970s. Other examples of collective works would include a newspaper, a group of film clips or a poetry anthology. To create a collective work, either public domain materials must be used or the owners of the copyrights in the constituent parts must give their permissions. Assuming that these rules are followed, the creativity involved in organizing and selecting the constituent materials is itself subject to independent copyright protection.

EXAMPLE: Phil prepares an anthology of what he considers to be the best American poems published in the years 1900 and 2000, calling this collective work American Poetry—A Century of Difference. Each 2000 poem is a separate and independent work protected by its own copyright. To use them, Phil must get the permission of each copyright owner. But because copyright protection has run out on the 1900 poems, they are now in the public domain and Phil can use them without obtaining anyone’s permission. Once all needed permissions are assembled, Phil has created a new protectable collective work and owns a copyright in the overall work, but not in any specific poem.

Related terms: compilations of original or unoriginal material; original work of authorship.

commissioned work

See work made for hire.

common law copyright laws

The common law of copyrights is a set of legal principles applying to copyrights that U.S. courts developed from court decisions over a period of several hundred years prior to January 1, 1978 (at which time the 1976 Copyright Act took over and replaced whatever rules the courts had come up with). Primarily in cases of unpublished works, courts used these common law rules before 1978, as well as the rules set out in the Copyright Act of 1909, to determine whether a copyright existed, and the extent to which a work of authorship should receive legal protection.

Related terms: Copyright Act of 1909; Copyright Act of 1976.

compilations

A compilation is a work formed by selecting, collecting and assembling preexisting materials or data in a novel way that forms an original work of authorship. Examples of compilations are databases (collections of information arranged in a way to facilitate updating and retrieval), anthologies and collective works. (17 United States Code, Section 101.)

The creative aspects of a compilation—such as the way it is organized and the selection of the materials to be included—are entitled to copyright protection whether or not the individual parts are in the public domain or are subject to another owner’s copyright.

EXAMPLE: Harry wants to assemble national anthems and feature them in a book of sheet music. The national anthems are all in the public domain due to their age. If Harry simply collected a group of national anthems and published them in alphabetical order without enhancing or organizing them in a special way or combining them with other materials, the collection would not be protected, because it is not considered to be creative. If, on the other hand, Harry compiled a selection of his favorite anthems (Harry’s Favorites), the compilation (but not the music) is more likely to qualify for copyright protection, since the act of selecting the anthems involved some creative work on Harry’s part.

Related terms: Feist Publications Inc. v. Rural Telephone Service Co.; original work of authorship.

compulsory license

Normally, in order for someone to reproduce, perform or distribute a copyrighted work, permission must be obtained from the copyright owner. However, in a few circumstances—known as compulsory licenses—a copyright owner’s permission is not required.

The most common use of a compulsory license is in the music industry. Once a song has been recorded and distributed to the public on recordings, any person or group is entitled to record and distribute the song without obtaining the copyright owner’s consent, provided they pay a fee and meet copyright law requirements.

In order to take advantage of this compulsory license, a notice must be sent to the copyright owner along with a fee set by the Copyright Office known as the statutory fee or statutory rate. The fee for recordings made and distributed between January 1, 2002, and January 1, 2004, is 8.0 cents per song or 1.55 cents per minute of playing time, whichever is larger. The rates will increase to 8.5 cents per song (or 1.65 cents per minute of playing time) in the year 2004; and to 9.1 per song (or 1.75 cents per minute of playing time) in 2006. To verify the current rate, check the copyright office website (www.copyright.gov). On the home page, click Copyright Arbitration panel (CARP) and scroll down to Mechanical Royalty Rates. If a song is three minutes long and an artist makes 10,000 compact discs containing the song, the fee paid to the song’s owner would be $800. A recording artist does not have to use the compulsory license and many recording artists seek permission directly from the song owner and negotiate for a lower rate.

EXAMPLE: Lou writes the song “Up the Stars.” Kate obtains permission from Lou to become the first artist to record the song. The song is released. Later, Barry and the Bushmen decide they want to record “Up the Stars.” If Barry and the Bushmen are willing to pay the statutory fee, they do not need to ask Lou for permission but if they want to pay less per copy, they must obtain permission from Lou.

Keep in mind that the compulsory license for recording music only applies to nondramatic musical compositions and would not apply to dramatic music such an opera or an overture to a musical. The compulsory license only applies to phonorecords distributed to the public. Therefore it cannot be used to record a song for use on a television show’s soundtrack. In that case, permission must be obtained from the copyright owner.

Under the terms of a compulsory license, the licensee is permitted to make a new arrangement of the composition as long as the basic melody or fundamental character of the work is not altered.

EXAMPLE: Sammy composes a country ballad, “My Pickup Died,” and licenses country singer Justine Carbo to be the first artist to record it. Later, Pauline and the Punkettes, a punk rap group, acquire a compulsory license and record Sammy’s song but they change the words and eliminate the melody. Sammy can have Pauline’s compulsory license revoked and prevent the recording from being distributed further or played.

In a different context, and without regard to the type of work involved, the concept of a compulsory license can arise in a copyright infringement action. A court has the power to order a copyright owner to grant a license to an innocent infringer instead of ordering the infringement stopped.

EXAMPLE: Willie innocently assumes a particular poem to be in the public domain, and uses it in his new novel. After the novel is published and selling well, Willie is sued by Carol, who claims copyright ownership in the poem. Even if the court finds that Carol does own the copyright in the poem, the court can require Carol to license Willie to use the poem in exchange for reasonable royalties. If, however, the court finds that Willie’s use of the poem was a willful copyright violation, no such license may be ordered.

Finally, in countries that subscribe to the Universal Copyright Convention (U.C.C.), including the U.S., an author may be required to grant a compulsory license to a subscribing government to translate his or her work into that country’s primary language if no translation has been published within seven years of the work’s original date of publication. This rule precludes copyright owners in most countries from preventing the translation of works covered by their copyrights into different languages.

Related terms: derivative work; innocent infringement of copyright; musical works and copyright protection; mechanical right.

Computer Associates Int’l v. Altai

This federal appellate court case first applied a now commonly used technique called “filtration” to distinguish those aspects of software or software interfaces that are protected by copyright from those that are not. Filtration works by first eliminating from a software-related work such unprotectable elements as:

• ideas

• elements dictated by efficiency (that is, there is no other sensible way to write the code or handle the task)

• elements determined by external factors (such as the nature of the mechanical specifications of the computer on which the program is intended to run, compatibility requirements, manufacturers’ design standards and the intended user base), and

• material taken from the public domain.

What’s left of the work is then examined to see whether it qualifies for copyright protection.

The Altai case itself dealt with whether a computer program interface was entitled to copyright protection. After the court applied the filtration process to the interface in question, nothing was left to protect, thus copyright protection was denied. (Computer Associates Int’l v. Altai, 982 F.2d 693 (2d Cir. 1992).)

Related terms: computer software, copyright of.

computer databases, copyright of

A computer database, sometimes known as an automated database, is a collection of information or resources placed in a computer and organized to allow for rapid updating and retrieval. Examples of computer databases are:

• a mailing list organized so that mailings can be made according to certain criteria such as the residential area, average personal income or interests of the recipient

• a compilation of articles published on a particular subject (for example, female Parkinson’s disease sufferers over 80), organized so that people can quickly retrieve and read the article dealing with their particular point of interest, and

• a listing of all items in a store’s inventory arranged to permit an analysis by such variables as supplier, kind of product, price and length of time in stock.

Computer databases commonly consist both of materials protected by copyright and materials that are said to be in the public domain, either because their copyright has run out or because they consist of ideas and facts that themselves do not receive copyright protection.

Despite the fact that the database owner may not own any copyright interest in any of the material in the database, the structure and organization of the database itself can qualify as an original work of authorship, and thus be subject to copyright protection as a compilation.

EXAMPLE: Suppose Catherine Jermany gathers all articles in ten leading education journals since 1990, and indexes them, using several hundred subject-matter headings that she has developed. Then Jermany converts the full text of each article into computer-readable text and uses a database management program to build an index linked to each article and paragraph, with the result that a computer user can quickly locate the text of any paragraph of any relevant article. Jermany’s database would qualify as an original work of authorship in terms of its structure and organization, and thus would be subject to copyright protection. However, as all of the constituent articles would already be subject to copyright protection by their authors (or the assignees or licensees of the authors), Jermany would have to obtain the authors’ permission to reproduce the text of the articles for commercial purposes.

Although the original expression implicit in the structure and organization of a computer database is entitled to copyright protection, the labor and cost associated with building a database is not protected by copyright. For instance, the labor and cost associated with compiling an alphabetical telephone directory does not protect the information in the directory from being copied by others because there was no creativity exercised in building the database.

Computer databases can be registered with the U.S. Copyright Office using Form TX. The application must specify the parts of the database claimed as an original work of authorship by the database compiler, and must distinguish these from parts whose copyrights are owned by others.

Related terms: compilations of original or unoriginal material; Feist Publications Inc. v. Rural Telephone Service Co.; Form TX, described.

computer software, copyright of

A 1980 amendment to the Copyright Act of 1976 applies to all software, regardless of when it was first published. Under the 1980 amendment, computer software is protected in the same manner as other original works of authorship. Any computer program, defined as “a set of statements or instructions to be used directly or indirectly in a computer to bring about a certain result,” can be protected by copyright if it constitutes an original work of authorship. The 1980 amendment also specifies the situations in which computer programs may be copied and altered without permission of the copyright owner.

The early 1980s saw a debate over whether some types of programs could be protected under the Copyright Act—especially those in object code form, those mechanically reproduced in a silicon chip as part of an integrated circuit (ROM chips), and templates (mask works) used in making ROM chips. The dispute centered on whether such programs were “hardware” (and therefore appropriately subject to patent rather than copyright protection) or “software” (and thus deserving of protection as a work of expression).

Most of these questions have been answered in favor of copyright protection for software regardless of its form (that is, whether it is source code or object code), and regardless of whether it is embedded in a chip or exists as an independent work on a computer disk. The lead case in this area is still Apple Computer, Inc. v. Franklin Computer Corporation, 714 F.2d 1240 (3d Cir. 1983). Interestingly, under a different line of cases, software can now increasingly be protected by patent as well.

In the late 1980s and early 1990s, new questions arose about what aspects of software could receive copyright protection. Some of the burning issues have been:

• Should copyright protection be limited to the literal code as written, or is the structure, sequence and organization of software code also entitled to copyright protection? In Whelan v. Jastrow, 797 F.2d 1222 (3d Cir. 1986), a federal circuit court of appeals held that protection for software code goes beyond the code’s literal expression and extends to its structure, sequence and organization. Other courts have found this approach unworkable and have adopted the filtration approach taken in Computer Associates Int’l. v. Altai, 982 F.2d 693 (2d Cir. 1992). That approach separates the code’s ideas and other public domain elements from its expression and then extends protection only to the expression.

• What aspects of computer screen displays and graphical user interfaces (GUIs) are entitled to copyright protection? The filtration approach taken in the Altai case has been used by a number of courts to decide which aspects of a program interface are protected by copyright. The most prominent of these cases involved a suit by Apple against Microsoft, which claimed that the Microsoft Windows operating system violated a copyright owned by Apple in the Macintosh interface. (Apple Computer, Inc. v. Microsoft Corp., 717 F. Supp 1428 (N.D. Cal. 1989), 779 F. Supp. 133 (N.D. Cal. 1992).) Using the filtration approach, the court eliminated from copyright protection most individual elements of the Macintosh interface and refused to provide protection for the interface as a whole. In short, Microsoft won and Apple lost. The overall result of applying the filtration approach to computer user interfaces has been to afford computer user interfaces very little copyright protection.

• How much originality must a factual database have to qualify for copyright protection? In Feist Publications Inc. v. Rural Telephone Service Co., 111 S.Ct. 1282 (1991), the U.S. Supreme Court ruled that an alphabetically arranged telephone directory involved insufficient creativity to qualify for copyright. As a result, the Copyright Act could not be used to compensate Feist Publications Inc. for the labor and expense involved in originally compiling the directory. The question remains, however, as to how much creativity is required to qualify a factual database for copyright. By its very nature, this issue can only be decided on a case-by-case basis.

The Software Publishers Association (SPA) has been the most active organization in ferreting out and suing copyright infringers, although some of the large software development companies are also active in enforcing the copyright laws.

Related terms: Apple Computer, Inc. v. Franklin; Apple Computer, Inc. v. Microsoft Corp.; copyright, explained; copyright infringement, defined; infringement action, explained.

Computer Software Protection Act of 1980

See archival copies; computer software, copyright of.

Computer Software Rental Amendments Act of 1990

See first sale doctrine.

copies, meaning under copyright law

For purposes of the copyright law, a copy is the physical form in which an expression is retained over time, no matter how brief. This includes such things as photocopies, tape recordings, photographs, carbon copies, manuscripts, printings, molds (for example, for plastic toy designs), computer disks and diskettes, videotapes, videodisks and ROMs. The placing of a program in dynamic computer memory (RAM) for a brief period of time has also been treated as copying which may constitute an infringement under the copyright act. (Mai v. Peak, 991 F.2d 511 (9th Cir. 1993).)

The Copyright Act defines copies as “material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device.” (17 United States Code, Section 101.)

The right to prepare copies of an original work of authorship—that is, put the work into some fixed form—is one of the primary rights protected by the overall copyright.

Related terms: copyright, explained; copyright infringement, defined; photocopies and copyright law.

copyright, explained

Under the Copyright Act of 1976 (applicable to all works first published on or after January 1, 1978), a copyright consists of a bundle of rights held by the author or developer of an original work of authorship. The term “copyright” applies both to the entire bundle of rights and to any individual right or part of an individual right:

• the exclusive right to make copies

• the exclusive right to authorize others to make copies

• the exclusive right to make derivative works (that is, similar works based on the original, such as translations or updated versions)

• the exclusive right to sell (market) the work

• the exclusive right to display the work

• the exclusive right to perform the work (such as plays and musical compositions), and

• the exclusive right to obtain court relief in the event others infringe (violate) these rights.

Each of these exclusive rights can be sold separately through transfers of copyright ownership. For example, a transfer may give a party the exclusive right to make derivative works from an original work. In addition, each right may be divided, giving different parties exclusive rights during different periods of time or in different geographical areas.

Under the laws of most countries, any original work of authorship is considered the property of its owner; others are prevented from using this property without the owner’s consent. The owner is usually the originator of the work—the actual author or somebody who paid for the work under an employment agreement or work made for hire contract. Sometimes, however, full ownership is transferred to somebody else before the work is finished. For instance, it is common for freelance software programmers to assign all of their copyright rights in the program to the publisher before programming begins, in exchange for advance royalties or payments to be received in phases as the project progresses. Usually termed a “grant of rights,” this type of transfer shifts ownership of the copyright from the author to the publisher.

Among the categories of expressive works that are protected by copyright throughout the world are:

• literary works

• audiovisual works

• computer software

• graphic works

• musical arrangements, and

• sound recordings.

In short, practically any type of expression that can be fixed in a tangible medium of expression is eligible for copyright protection, assuming it is original and has at least some creativity. It is important to understand, however, that copyright law protects only the expression itself—not the underlying facts, ideas or concepts. This means it is often possible to legitimately produce an expression very similar to one that is already protected by copyright, as long as the original expression itself is not copied or used as a basis for the later work. The more factual in nature the original work, the more similar the second work can be without infringement occurring. Conversely, works of fiction are more susceptible to infringement claims, since they tend to involve far more original expression than do nonfiction works.

Although a copyright owner’s permission must be obtained to make copies for commercial purposes, it is sometimes possible to copy without permission in situations collectively labeled as “fair use.” These tend to be for educational and nonprofit purposes—situations where there is little or no commercial motive for using the material and the use of the material won’t interfere with the natural market for the work being used.

Under the Copyright Act of 1976, an original work of authorship gains copyright protection the instant it becomes fixed in a tangible form. This means that such protection is available for both published and unpublished works. The protection lasts for:

• the life of the author plus 70 years, or

• 95 years from the date of publication or 120 years from the date of creation, whichever is shorter, if the author is an employer or commissioner of a work made for hire, or if the author uses a pseudonym or remains anonymous.

In addition to the automatic protection extended a copyright owner by the law, it is possible to gain crucially important protective benefits in the United States by placing a proper copyright notice on the work and registering it with the U.S. Copyright Office. Specifically, such registration is mandatory before a copyright infringement action can be filed in court. In addition, if the registration occurs in a timely manner (either within three months of publication or before the infringing activity begins) it is easier for the copyright owner to prevail in court and obtain effective relief against infringers.

Related terms: copyright infringement, defined; copyright owner, defined; duration of copyrights; fair use, defined; timely registration, defined; transfers of copyright ownership, generally.

Copyright Act of 1909

This federal statute governed copyrights in the U.S. between 1910 and 1978. Works first published prior to January 1, 1978, are still covered by the 1909 Act, unless the copyright has expired. The main practical differences between the 1909 Copyright Act and the 1976 Copyright Act (which replaced the 1909 Act) are:

• The 1909 Act granted protection only to published works. The 1976 Act extends its protection to both published and unpublished works.

• Protection under the 1909 Act could be permanently lost if even a single copy was distributed without the proper notice of copyright. The 1976 Act provided that the absence of a proper notice could be cured under certain circumstances. Moreover, since March 1989, there is no longer any requirement for a notice.

Note that GATT (General Agreement on Tariffs and Trade) has restored copyright protection for works of foreign authors that fell into the public domain in the U.S. prior to March 1989 because of faulty notice. These restored copyrights have the same duration as they would have had if they not been considered to be in the public domain.

Related terms: common law copyright laws; copyright, explained; Copyright Act of 1976; notice of copyright; restored copyright under GATT.

Copyright Act of 1976

This comprehensive federal statute governs copyright protection for original works of authorship created after January 1, 1978. Found in Title 17, United States Code, Section 100 and following, the 1976 Copyright Act (as amended from time to time), is the exclusive source of copyright law in the United States for works published after January 1, 1978. It preempts (replaces) all state laws that affect rights covered by this Act.

Related terms: audiovisual works; Copyright Act of 1909; copyright, explained; infringement action, explained; original work of authorship.

copyright and patent compared

As a general matter, the copyright and patent laws cover entirely different kinds of items. Copyright law protects all forms of expression fixed in a tangible medium, but not the underlying ideas. Patents protect ideas that take the form of useful, novel and nonobvious inventions—for instance, production methods, devices, substances and mechanical processes.

Copyright and patent do intersect, however, in two important areas:

• product design. Both copyright and patent may be used to protect a product’s design as long as the design does not affect how the product functions. A design patent is more difficult to obtain than a copyright, but a patent offers a broader scope of protection because it embraces the idea of the design as well as its literal expression. A copyright, however, only extends to the literal design. On the other hand, copyright protection lasts for the life of the author, whereas design patent protection lasts for only 14 years from the date the patent issues. As mentioned, these two approaches to protecting original designs are not exclusive of each other. For instance, a truly innovative but functionless design for a computer might qualify for both copyright protection (as a pictorial, graphic or sculptural work) and for a design patent (as a purely ornamental design of an article of manufacture).

• computer software. Both copyright and patent may be used to protect computer software. A copyright may protect the program’s literal expression and perhaps its structure, sequence and organization. A patent may issue on the program’s innovative approach to solving a particular problem or producing a particular result in a computer or other type of machine, such as a robot or remote vehicle. As with designs, patent protection is broader than that afforded by copyright because the patent creates a monopoly over the ideas covered by the patent, whereas the copyright only protects the expression itself. In addition, a copyright owner can only stop someone who has copied the software. A patent owner can stop anyone who is making, selling or using the software, regardless of whether it has been copied or developed independently.

  Related terms: computer software, copyright of; pictorial, graphic and sculptural works.
  See also Part 3 (Patent Law): design patents; software patents.

copyright claimant

A copyright claimant is the party considered to be the basic owner of the copyright in a work being registered with the U.S. Copyright Office. The copyright claimant may be any of the following:

• the actual author of the work

• an employer (also considered the actual author) whose employee created the work in the scope of employment

• a party who commissioned a work made for hire, as defined in the Copyright Act of 1976 (also considered the actual author)

• a party to whom all rights in a work have been assigned, or

• a party who has come to own all of the exclusive rights that make up the copyright.

The name of the copyright claimant must be put in the copyright registration form filed with the U.S. Copyright Office as part of the registration process.

Related terms: registration of copyright, defined.

copyright infringement, defined

Any unauthorized use of a copyrighted work that violates the copyright owner’s exclusive rights in the work constitutes an infringement. Common examples of infringement are:

• making unauthorized copies of an original work for commercial purposes

• using a composer’s tune in a song with different words

• including in a computer program important software subroutines authored by someone else

• adapting another’s work in one medium (such as a book or play) for use in another medium (such as a movie or CD-ROM), and

• outright plagiarism of somebody else’s prior original copyrighted work.

Once a copyright owner suspects infringement, the owner may file a lawsuit against the infringer for damages in a federal court, provided that the copyright has been registered with the U.S. Copyright Office. An expedited registration process is available for those who have not previously registered and need to get into court right away. But the fact that the infringement began before the registration occurred will diminish the rights and remedies available in court unless the work was first published less than three months previously.

Whether or not a work will be found to have infringed an earlier copyrighted work largely depends on three factors:

• Was the first work the subject of a proper copyright? This factor is satisfied if the first work was independently created, has enough creativity and is fixed in a tangible medium.

• Did the infringer copy the work? In the absence of an admission that copying occurred, this factor depends on whether the author of the second work had access to the earlier work and whether there is a substantial similarity between the two works. The stronger the similarity, the greater the chance that a court will find that infringement occurred. Generally, a greater similarity is required for factual or nonfiction works to be considered infringing than is required for works of fiction.

• Did the infringer improperly use the copied material? The third factor addresses whether the infringer copied by paraphrasing or by repeating the expression verbatim, and how much was copied. Again, the key determination is how substantially similar are the two works. An infringement might be found based on several paraphrased passages of a few hundred words each, or just 20 words copied verbatim.

Some courts use a three-step approach to decide whether the substantial similarity element (in the second factor) has been shown. First, they identify the aspects of the two works that are subject to copyright protection. Then they make an objective comparison of these aspects to see how alike they are. If they are similar enough to warrant a suspicion of infringement, the courts then make a subjective determination as to whether the works are substantially similar enough to justify a finding of infringement.

Below are two examples showing the basic principles involved in copyright infringement.

EXAMPLE 1: Infringement of the Right to Make Derivative Works. Beverly uses the computer language BASIC and writes a copyrighted program that gives legal advice on divorce procedures in Michigan. Jeff, deciding that the program would sell equally well in Colorado, alters the program to apply Colorado law, and distributes it under his own name. Because in essence Jeff’s program is a copy of Beverly’s program, he has infringed on Beverly’s exclusive right (as part of her copyright) to make copies of, and prepare derivative works from, the original work. However, if Jeff had only borrowed Beverly’s idea and written his own program covering Colorado divorce law (or even Michigan divorce law), it would not be a copyright violation. In other words, if Jeff’s program was not based on Beverly’s (not simply translated or substantially programmed on the basis of the structure, sequence and organization of Beverly’s program), but instead was an independent creation, Jeff will not have infringed Beverly’s copyright.

EXAMPLE 2: Infringement of the Right to Make Copies. Joseph writes a book on media law which is used widely as a textbook. Peter, a media law teacher, wants to use the book as a textbook, but doesn’t want his students to have to pay the $30 cover price. Accordingly, Peter makes 25 photocopies of the book and distributes them to his students for the cost of the copying. Peter has infringed Joseph’s copyright. Although Peter did not make the copies for personal profit, Joseph has been deprived of income because of the unauthorized copying of his book. While the fair use provisions of the Copyright Act of 1976 allows some unauthorized copying for strictly educational purposes, copying a large portion of a textbook to avoid purchasing it probably exceeds what is allowed under the fair use doctrine.

Related terms: derivative work; fair use, defined; infringement action, explained; registration of copyright, defined.

copyright management information, defined

The Digital Millennium Copyright Act of 1998 prohibits the falsification of copyright management information and the distribution of such falsified information. The Act defines copyright management information as: ‘‘(1) The title and other information identifying the work, including the information set forth on a notice of copyright. (2) The name of, and other identifying information about, the author of a work. (3) The name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright. (4) With the exception of public performances of works by radio and television broadcast stations, the name of, and other identifying information about, a performer whose performance is fixed in a work other than an audiovisual work. (5) With the exception of public performances of works by radio and television broadcast stations, in the case of an audiovisual work, the name of, and other identifying information about, a writer, performer, or director who is credited in the audiovisual work.”

Related terms: Digital Millennium Copyright Act of 1998.

copyright notice

See notice of copyright.

copyright office

See U.S. Copyright Office.

copyright owner, defined

Under the Copyright Act of 1976, the term “copyright owner” has two distinct meanings. First, it refers to the person or entity who is listed as the owner in the U.S. Copyright Office and on any notice attached to the copyrighted work. This is either the original author or developer, or a person or entity to whom all rights under the copyright have been transferred.

Second, “copyright owner” also refers to a person or entity who owns one or more of the five exclusive rights that make up the whole copyright, and who therefore has a right to sue infringers of that right. These constituent rights, which may be separately owned and assigned (sold), consist of the following:

• the right to reproduce (copy) the work

• the right to prepare derivative works

• the right to distribute copies of the work

• the right to perform the work, and

• the right to display the work.

  EXAMPLE: June writes a novel and owns the copyright on the expression contained in it. June grants an exclusive worldwide license (permission) to Henry to publish and distribute her novel. She also gives Ernest the exclusive right to prepare a screenplay (a derivative work) based on the novel. Because these rights are exclusive, both Henry and Ernest are legally considered copyright owners.

In addition to separately licensing basic copyright rights, a copyright owner can separately license subparts of each right.

EXAMPLE: Vixen Publications purchases the entire copyright in Andrew Fox’s book, Teethmarks, before it is written, in exchange for a royalties advance. Vixen is now the copyright owner, and has the right to transfer parts of its copyright ownership to others. Vixen licenses exclusive German language book rights to a German publisher, exclusive French language book rights to a French publisher and exclusive Russian language book rights to a Russian publisher. Vixen also licenses exclusive movie rights worldwide to a film producer and exclusive worldwide electronic publication rights to a CD-ROM developer. Each of the entities receiving exclusive rights under these licenses would also be considered a copyright owner.

Although different people or entities can own different rights based on a copyright and be considered copyright owners, there is only one actual “copyright.” Unless the original developer (the author, employer, commissioner of a work made for hire or assignee of all rights) transfers all of the five exclusive rights set out above to one or more parties, that original developer is still considered by the U.S. Copyright Office to be the copyright owner.

Related terms: author as owner of copyright; copyright claimant; transfers of copyright ownership, generally.

copyright protection

See affirmative rights.

copyright registration

See registration of copyright, defined.

copyright registration forms

Forms published by the U.S. Copyright Office must be used to register copyrights with that agency. The most commonly used forms are Form TX for nondramatic literary works, including computer programs; Form PA for audiovisual works; Form VA for graphic art and sculptural works; Form SR for sound recordings; and Form SE for serials and periodicals. Samples are included in the Sample Forms section at the end of the copyright law part of the book. Copyright forms can be downloaded from the copyright office website (www.copyright.gov).

Related terms: registration of copyright, defined.

copyrighted work

A copyrighted work is any work that is entitled to copyright protection. For works publicly distributed after March 1, 1989, copyright protection is automatically available to any original work of expression that is fixed in a tangible medium. Putting a copyright notice on the work and registering it with the U.S. Copyright Office affords a copyright owner additional protection, but neither is required for basic copyright protection.

Related terms: Berne Convention; GATT (General Agreement on Tariffs and Trade); registration of copyright, defined.

creation of work, when protected by copyright

Under the Copyright Act of 1976, the following three rules determine when a work is first entitled to copyright protection—that is, when it is first “created”:

Rule 1:	Creation of a work occurs when it first becomes “fixed” in some form.
Rule 2:	Drafts and other intermediate forms in the development of a work receive copyright protection just like the underlying work does.
Rule 3:	Each new version of an original work is a separate creation.

EXAMPLE: Todd creates complex charts showing the relationships between scientific concepts in different fields. Todd often carries an idea for a particular chart around in his head for weeks before he jots it down in physical (tangible) form. Once his idea becomes fixed in a tangible form, whether on paper, programmed on a computer or constructed out of plastic or other materials, Todd has created a work of authorship. Todd typically changes and improves the physical representation of his original idea. Each new version of Todd’s chart becomes an original work as of the moment it becomes fixed in a tangible form. As long as Todd is working on a given chart, he has created only one work despite a number of incremental changes. If, however, Todd produces his chart both in a print version and in a specially tailored computerized slide show, he would have two different versions of the same work and could obtain separate copyright protection for each. Separate copyrights may also be available for two different charts based on the same idea, regardless of the medium used.

Related terms: derivative work; fixed in a tangible medium of expression.

credit line

A written acknowledgment of authorship is referred to as a credit line. When authors give permission for somebody else to use a portion or an entire work, they commonly condition the permission on including a line crediting the original author in the new work.

criminal copyright infringement

Infringement of a copyright can be treated as a federal crime under the Copyright Act of 1976 (17 United States Code, Section 506) if it is done intentionally and with full knowledge that an infringement is occurring. As a practical matter, the U.S. Department of Justice only brings criminal charges against copyright infringers when a large amount of money is at stake, and the purpose of the infringement is commercial gain.

Most enforcement of the copyright laws is civil in nature, which involves detecting infringing activity and, if necessary, bringing copyright infringement lawsuits in federal court.

customs, preventing importing of infringing works

See importing of infringing works.

cyberspace

See Internet.

damages for copyright infringement

Money damages in copyright infringement actions are commonly awarded under three legal theories:

• Actual damages. Also called compensatory damages, this consists of the dollar amount of any demonstrable loss the owner suffered as a result of the infringing activity.

• Profits. This consists of any money made by the infringer as a result of the infringement. These damages are only awarded if they exceed the amount of profits lost by the copyright owner as a result of the infringement.

  EXAMPLE: A book on self-defense, authored by Susan Lopez, contains a practical chapter on how to purchase and care for a handgun. Rachel Sanders also writes a book on self-defense and substantially borrows from Susan’s chapter on handguns without first obtaining her permission. Rachel has infringed Susan’s copyright. A court could award Susan actual damages if Susan proves that she lost sales of her book because people bought Rachel’s book instead, at least in part because of the handgun chapter. In addition, the court could award Susan any profits that Rachel realized from the infringement to the extent such profits exceeded the amount of Susan’s lost profits.

• Statutory damages. In many copyright cases, both actual damages and profits are difficult to prove. For that reason, the Copyright Act provides for statutory damages—that is, damages set by law. However, only a person who has registered a work with the U.S. Copyright Office before the infringement (or within three months of publication) may receive statutory damages. Such a plaintiff in an infringement action may opt for either actual damages (and the infringer’s profits, if appropriate) or statutory damages, but not both.

  For infringements that can’t clearly be proven as either innocent or willful, statutory damages may be from $750 to $30,000 per infringement depending on the circumstances. The amount will depend on the seriousness of the infringing act and the financial worth of the infringer. On the other hand, an innocent infringer may have to pay as little as $200, while an intentional infringer may have to pay as much as $150,000 for a single infringement of one work.

  Related terms: criminal copyright infringement; infringement action, explained; injunctions, copyright infringement; innocent infringement of copyright; profits as damages.

databases, copyright of

See computer databases, copyright of.

deep linking

See linking.

defective copyright notice

Until March 1, 1989, works published in the United States needed a copyright notice for the copyright to remain in force. A defective notice could and did permanently nullify copyright protection for many works. However, after the March 1, 1989, date, no notice is required, but only recommended (to give people notice that the work is protected by copyright).

A correct notice is either the little “ ” or the words “Copyright” or “Copr.” followed by the date and the author’s name. In the case of a sound recording, the proper symbol is a “P” in a circle ().

A defective copyright notice might be one with an error in or omission of the author’s name, the copyright symbol or the date (an error of more than one year).

Related terms: innocent infringement of copyright; international copyright protection; notice of copyright; omission of copyright notice.

defenses to copyright infringement

The main defenses to an allegation of copyright infringement are:

• The use was what the courts consider, and the Copyright Act defines as, a “fair use.” In essence, the use was for a nonprofit or educational purpose, for a parody or in a critical commentary.

• The allegedly infringing work was independently created.

• The statute of limitations has run (the plaintiff waited too long to file suit—within three years of discovering the infringement).

• The work copied was in the public domain.

• The use was authorized.

  Related terms: authorized use of copyrighted material; fair use, defined; independent creation, defense to infringement action; innocent infringement of copyright; public domain—copyright context; statute of limitations.

de minimis, defined

This term is used by the U.S. Copyright Office to characterize changes in an existing work that are too small to warrant a separate registration. U.S. Copyright Office regulations allow only one registration per version of a work. If an author makes several minor changes to a work and tries to register the new version, the U.S. Copyright Office will consider the changes “de minimis” and reject the attempted new registration.

The term is also used in copyright litigation. If a court determines that the infringement is insubstantial, the copying will be excused as de minimis. This is not a fair use defense; it is a defense based solely upon the inconsequential amount of infringing material. For example, several photographs appeared briefly in the film Seven. A court determined that a lay observer would have been unable to identify them. Therefore, the momentary use of the photos was so insubstantial that the copyright was not infringed. (Sandoval v. New Line Cinema Corp., 2 147 F.3d 215 (2d Cir. 1998).)

Related terms: derivative work; single registration rule.

deposit with U.S. Copyright Office

Part of the copyright registration process requires the deposit of actual copies, photographs or other representations of an original work of authorship with the U.S. Copyright Office. For most categories of published works, it is necessary to deposit two copies of the work’s best edition. For some types of works, however, including computer programs, motion pictures and most unpublished works, only one copy need be deposited. The form a deposit must take differs according to the media in question, but must generally be sufficient to identify the work being registered.

Related terms: identifying material, defined; Library of Congress, deposit requirement; registration of copyright, defined.

derivative work

A derivative work is one based upon preexisting material to which enough original creative work has been added so that the new work represents an original work of authorship. The term (as defined in 17 United States Code, Section 101) encompasses any form into which a work may be recast, transformed or adapted. Examples of derivative works are:

• an English translation of a book written in French

• a computer program rewritten in a different programming language

• a movie based on a play or book

• condensed or abridged versions of articles such as those found in Reader’s Digest

• annotations to literary works (for example, Cliff Notes), and

• a jazz version of a popular tune.

Derivative works may also be fictionalizations, recordings or even editorial revisions. Compilations and collective works are not normally considered derivative works because they are collections of different underlying works, rather than a new work based upon an original work.

The exclusive right to make derivative works is an important part of the bundle of rights that make up every copyright. Absent an explicit transfer of this right by a written license, or by permission from the owner (voluntary or forced in the case of a compulsory license), no one else can exercise it except for their personal use. This rule applies not only in the U.S., but in Turkey, Germany, Japan and Australia, all countries that have signed GATT or the Berne or Universal Copyright Conventions.

EXAMPLE: Joe wants to adapt a popular novel into an interactive computer program. Because the program will be based on the novel, it will constitute a derivative work, and therefore cannot legally be marketed without permission from the novel’s copyright owner.

There is often a large gray area where difficulty exists in telling whether or not subsequent works are derivative of earlier ones.

EXAMPLE: Jack writes a book in English about Ecoterrorists that is similar to one Luis has written in Spanish but is not, strictly speaking, a translation. Is this a derivative work? Yes, if the court finds that Jack’s book was “based on” the Spanish one, and no, if the court finds that Jack’s book was an “independent creation.” Which of these results will occur depends on the degree of similarity between the works, whether Jack had access to Luis’s work, the probability of Jack’s independently creating a similar work, and so on.

Related terms: collective work; copyright, explained; copyright infringement, defined; independent creation, defense to infringement action.

Digital Millennium Copyright Act

This federal statute addresses a number of copyright issues created by the increasing use of the Internet for commerce in materials protected by copyright. Because the Digital Millennium Copyright Act (DMCA) is relatively new, it has recently undergone much interpretation by the courts and by copyright experts.

The DMCA outlaws attempts to get around devices used by software publishers to keep their programs from being copied, but makes a number of exceptions, including:

• works exempted by the Copyright Office, under rules to be issued in the future

• nonprofit libraries, archives and educational institutions who need to decide whether to add the protected work to their collections

• reverse engineering for the purpose of determining interoperability (the ability of computer programs to exchange information, and of such programs mutually to use the information which has been exchanged)

• legitimate encryption research

• legitimate security testing

• law enforcement and intelligence activities, and

• legitimate consumer privacy needs (the need to disable the protective device in order to prevent the unwanted acquisition of personal information or the tracking of activities on the Internet).

The DMCA also prohibits the production, marketing or sales of a product or service designed to circumvent these technological protections. For example, the movie industry was able to use the DMCA to prohibit circumvention of DVD technology when it stopped a programmer from distributing a software code designed to decode DVDs and permit their copying. (Universal City Studios Inc. v. Corley, 273 F.3d 429 (2d Cir. 2001).)

The DMCA also puts restrictions on the import, distribution and sales of analog video cassette recorders and camcorders that don’t have a certain type of copy-proof technology.

The DMCA prohibits the falsification of copyright management information and the distribution of works that contain such falsified information.

The DMCA contains a number of provisions relating to transmission of copyrighted materials over Internet services providers (ISPs). The DMCA takes ISPs off the hook for infringement for transient transmissions automatically passing through their computers. Under its “safe harbor” provisions, the DMCA also allows ISPs to escape liability for infringement regarding more permanent materials if they promptly remove infringing materials upon request. The DMCA sets up a procedure in case the owner of the removed materials protests. In exchange for escaping liability for infringement, service providers must designate an agent to accept service of legal papers. The DMCA also relieves ISPs from liability for unknowingly linking to a site that does contain infringing material. Finally, the DMCA authorizes U.S. District Court clerks to issue subpoenas to service providers requiring them to identify an alleged online infringer.

An example of how a safe harbor was used occurred when America Online avoided copyright infringement liability for USENET postings in a case involving famed science fiction writer Harlan Ellison. Ellison discovered that a fan had scanned many of his short stories and uploaded them to the USENET newsgroup alt.binaries.e-book. (USENET is an abbreviation of “User Network,” an international message board for members, called peers, whose computers connect to each other via the Internet.)

Ellison filed suit against the fan and, among others, America Online (AOL), alleging copyright infringement. He claimed that AOL was liable because the newsgroup content was temporarily stored on AOL’s servers that are accessed by its many subscribers.

The court concluded that AOL was shielded from liability by the safe harbor for transitory communications because: (1) it satisfied the threshold requirements for safe harbor protection discussed above; (2) AOL did not select, modify, initiate or direct the uploading of the copied stories or select who would receive them; and (3) AOL’s storage of USENET messages—including the copied stories—was transitory and not for longer than necessary to transmit or rout them to users—this even though the messages were kept on AOL’s servers for 14 days. (Ellison v. Robertson, 189 F.Supp. 2d 1051 (C.D. Cal. 2002).

The DMCA allows a copy of a computer program to be made for the purpose of repairing or maintaining a computer. In addition, the DMCA contains new laws regarding the licensing of motion pictures and phonorecordings and the innovative designs of vessel hulls.

Violations of the DMCA can result in civil remedies consisting of injunctive relief, actual damages and statutory damages. Repeat violators may be tagged with treble damages. A willful violation of the DMCA for personal or financial gain can result in stiff criminal penalties (up to ten years in prison).

The first criminal prosecution under the DMCA occurred when the U.S. government indicted Dmitri Sklyarov for creating and distributing software that could permit electronic book owners to convert the Adobe e-Book format. A jury later acquitted Sklyarov of all criminal charges.

One of the most novel attempts at applying the DMCA occurred in 2003 when a printer manufacturer, Lexmark, sued a rival company, Static Control Components, that sold replacement toner cartridges. Lexmark’s printers contained a software program that read information embedded on a chip in the toner cartridge. If the toner wasn’t “authorized” (made by Lexmark or a licensee) the toner cartridge would not work in the printer. Static Control created Smartek chips that sent a message to the Lexmark printer authorizing the use of its toner cartridges. Lexmark argued that the Smartek chips circumvented Lexmark technology in violation of the DMCA. In March, 2003, a district court in Kentucky agreed with Lexmark and enjoined Static Control from selling its Smartek chip or incorporating it in cartridges. Lexmark International Inc. v. Static Control Components Inc., __ F.Supp. 2d__, (E.D. Ky. March, 2003).

Related terms: cyberspace, copyrights in; linking; ElcomSoft, U.S.V.

display a work, defined

The exclusive right to display an original work of authorship is one of the bundle of rights that together form the overall copyright. (17 United States Code, Section 101.) The Copyright Act of 1976 defines “display” as: “to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images nonsequentially” (as in movie previews).

EXAMPLE: Marylou photographs Juan’s copyrighted print for the purpose of using it in her photography show. Because Juan has the exclusive right to display his work, Marylou must obtain Juan’s permission before she displays the photo.

This particular copyright right is certain to become increasingly important as more creative works are put into digital form for display through the Internet, and through the large online services which charge users for the time they spend viewing displayed materials.

Related terms: copyright, explained.

dramatic works, copyrights

In the copyright sense, a dramatic work is one that carries a story line and is intended to be performed before an audience, either directly or through use of a tangible medium such as paper, film, videotape or videodisc. Dramatic works include movies, plays, satires, comedies and pantomimes. Like other original works of authorship, they are fully protectable by copyright.

Related terms: original work of authorship.

duration of copyrights

How long a copyright lasts in the U.S. depends on when the work covered by the copyright was first created or published:

• Works created on or after January 1, 1978. Under the Copyright Act of 1976, copyrights on works created on or after January 1, 1978, last for a defined period of time. If the “author” is an individual, and the work appears under that person’s name, the copyright lasts for the life of the author plus 70 years. If the “author” is an employer or the commissioner of a work made for hire, or uses a pseudonym or remains anonymous, the copyright lasts for 95 years from the date of publication or 120 years from the date the work was first created, whichever comes first.

• Works created or published before January 1, 1978. If the work was published before 1978, the copyright lasts for 95 years from the date of publication, assuming the copyright was (or is) timely renewed (by filing a renewal application with the U.S. Copyright Office). The copyright in works created before 1978 lasts at least until December 31, 2002, regardless of when they were created and at least to 2047 if published before December 31, 2002.

Countries that are members of the Berne Convention and countries that have signed the GATT treaty (which requires its members to honor the Berne Convention’s copyright protection standards) extend copyright protection for the life of the author plus a minimum of 50 years. The countries in the European Union also extend copyright protection for the life of the author plus 70 years.

The value of works such as books, films, art and songs (that is, their ability to generate copyright fees) may last well beyond the term of the copyright, in which case the author’s inheritors are out of luck. On the other hand, computer-related works seem likely to be more short-lived so copyright protection will probably last for more than enough time to protect them for their entire commercial life expectancy.

Related terms: GATT (General Agreement on Tariffs and Trade); international copyright protection; work made for hire, defined; Sonny Bono Copyright Term Extension Act; Eldred v. Ashcroft.

Below is a chart which shows the duration of copyrights for different publishing dates.

Copyright Duration Chart

Date and Nature of Work	Copyright Terms
Published before 1923	The work is in the public domain
Published 1923–1963 and	The work is in the public domain never renewed
Published 1923–1963 and	95 years from the date of first publication timely renewed
Published between 1964–1977	95 years from the date of publication (renewal term automatic)
Created 1978 or later (whether or not published)	Single term of life plus 70 years (but if work is made for hire or anonymous or pseudonymous, 95 years from the date of publication or 120 years from date of creation, whichever ends first)
Created, but not published or registered, before 1978	Single term of at least life plus 70 years, but cannot expire before December 31, 2002 (if work remains unpublished) or December 31, 2047 (if work is published before December 31, 2002)
Reprinted with permission from The Copyright Handbook, by Stephen Fishman (Nolo).

ElcomSoft, U.S.V.

The first criminal prosecution under the DMCA occurred in 2001 when programmer Dmitri Sklyarov was indicted by the U.S. government for creating and distributing software that permitted owners of electronic books in Adobe software format to copy and use the books without restrictions. The government alleged Sklyarov’s software violated the DMCA’s prohibition on making or selling devices whose primary purpose is to disable copyright protections. Initially, Adobe supported the prosecution but later backed away because of public outcry from the “open source” movement. At trial, a jury—convinced that Sklyarov’s actions weren’t willful—acquitted him of all charges.

One result of the case was that the trial judge issued a pre-trial ruling that the DMCA “imposes a blanket ban on trafficking in or the marketing of any device that circumvents use restrictions.” In other words, it doesn’t matter if Sklyarov’s software was used solely to permit users to perform legal functions with electronic books—for example, to copy public domain materials, to use materials under fair use rules, to make a back-up copy or to print the e-book in paper form. If his software circumvented copy protection, it violated the DMCA. (U.S. v. ElcomSoft, 62 U.S.P.Q. 2d. (BNA) 1736 (N.D. Cal. 2002).)

Eldred v. Ashcroft

During the past four decades, Congress has extended copyright terms eleven times. After the Sonny Bono Copyright Term Extension Act added a 20-year term extension, Eric Eldred and other users of public domain commercial materials sued, claiming that Congress’ continual extensions of the copyright term violated the Constitution. In 2003, the U.S. Supreme Court disagreed and ruled the 20-year copyright extension did not violate the U.S. Constitution. (Eldred v. Ashcroft, 123 S.Ct. 769 (2003).)

Related terms: duration of copyright, Sonny Bono Copyright Term Extension Act.

end-user license (aka EULA, shrinkwrap or clickwrap agreement)

Copyright owners, particularly software and website publishers, often want to limit how purchasers use their products and services. For example, a software maker may insist that customers only use its program for personal not commercial purposes. To impose these restrictions, most publishers employ a contract known as an end-user license agreement (EULA).

Some EULAs are known as “shrinkwrap licenses” because—at least in the early days of software production—the user would consent to the EULA (visible on the back of the package) by breaking the box’s shrinkwrap. A user who proceeds to use the program is deemed to accept the terms. A user who doesn’t want to accept the terms can return the program to the manufacturer for a refund.

Another type of EULA is known as a “clickwrap agreement” since the user must click to accept the conditions before accessing a website or using software.

Initially, there was doubt as to whether EULAs could be enforced in court, especially if the provisions were inconsistent with the Copyright Act. The reason for doubt is because the typical EULA isn’t negotiated between seller and purchaser at the time of sale, and so the purchaser shouldn’t be held to its terms, especially if the user must waive rights under the Copyright Act. For example, some licenses may prohibit the user from copying the software, even though the Copyright Act permits the purchaser to make an archival copy.

In 1996, a federal Court of Appeal ruled that shrinkwrap licenses are valid as long as a user who disagrees with the terms can return the product for a refund. The court also ruled that a license restricting rights that a purchaser would have otherwise had under the Copyright Act is legal (ProCD v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996)).

The same is true for clickwrap agreements; “clickwrap license agreements are an appropriate way to form contracts” (i.Lan Systems Inc. v. Netscout Service Level Corp., 183 F. Supp. 2d 328 (D. Mass. 2002)). In a case involving America Online, a court upheld a clickwrap agreement between AOL and a Massachusetts man requiring that legal disputes with AOL be settled in Virginia (Hughes v. AOL, 2002 U.S. Dist. LEXIS 9569 (D. Mass 2002)).

A EULA was not effective in a case involving the Adobe Software company. In 2001, a federal court ruled that, despite the language of an Adobe license agreement, the purchaser of a bundle of Adobe software programs could resell the individual components (separate programs on CDs) (Softman Products Co. LLC v. Adobe Systems Inc., 171 F.Supp. 2d 1075 (C.D. Cal. 2001)). The district court in that case determined that Adobe had sold, rather than licensed, its products to distributors, permitting the resale of the components under the first sale doctrine.

In 2000 federal legislation was enacted—the Electronic Signatures in Global and International Commerce Act—which helped remove some of the uncertainty that previously plagued e-contracts and prevented a contract from being challenged simply because it was created electronically. Some proponents of software licenses urged passage of the Uniform Computer Information Transaction Act (UCITA), a proposed law that would legitimize all software licenses. However, as of 2003, UCITA has been adopted in only two states, Virginia and Maryland.

In 2002, the New York attorney general filed suit against Nework Associates, a software company, claiming that provisions of its EULA censored speech and prevented free discussion. Network Associates provided a EULA prohibiting any reviewing or testing of its software without permission. When a computer magazine published an unfavorable review, Network Associates sued for breach of the EULA.

Another company, as a condition of its EULA, prohibited reverse engineering of its software. To the dismay of software programmers, a federal court upheld this provision (Bowers v. Baystate Technologies, Inc. 2003 U.S. App. LEXIS 1423 (Fed. Cir. 2003)).

Even more disconcerting for many scholars and consumers was the introduction of non-software EULAs. For example, a book publisher used a shrinkwrap agreement to prohibit the resale of books. A museum required viewers to waive the right to claim fair use when copying material from its website. (Both of these rights—resale and fair use—are permitted under the Copyright Act.)

Related terms: computer software, copyright of; licensing of copyrights; UCITA.

ephemeral recording

Under some circumstances, the Copyright Act permits making copies of works for purposes of later transmission. For example, a disc jockey is permitted to copy a song from compact disc to tape in order to prepare a radio broadcast. These ephemeral recordings are commonly used in radio, cable and Internet broadcasting.

exclusive copyright rights

The entire bundle of rights that a copyright owner is exclusively entitled to exercise under the copyright laws. These rights consists of:

• the right to reproduce (copy) the work

• the right to prepare derivative works

• the right to distribute copies of the work

• the right to perform the work, and

• the right to display the work.

  Related terms: copyright, explained; exclusive license, defined; infringement action, explained.

exclusive license, defined

An exclusive license, which must be in writing, is a valid contract in which a copyright owner authorizes another person or entity (called the licensee) to exclusively exercise one or more of the rights (or portion of such rights) that belong to the copyright owner under the copyright. The licensee is said to “own” the rights granted in the license and is often referred to as a “copyright owner.”

EXAMPLE: Jeanette Pulaski, a U.S. author, publishes a successful cookbook specializing in East African recipes. Aaron Smith believes the book will sell well in other countries, and approaches Jeanette for permission to sell it on the international market. Jeanette may choose to grant Aaron an exclusive license to copy, distribute and translate (prepare derivative works from) the book for marketing in all countries outside of the U.S. She might, instead, license Aaron to market the book only in one or a few countries—for example, France, the Canadian province of Quebec and all Caribbean and African countries where French is a primary language. In addition to foreign rights, Jeanette is interested in finding someone to help her market the book to cooking stores within the U.S. To reach this market, she grants an exclusive license to a cookware wholesaler. Finally, she exclusively licenses a cookbook publisher to publish and distribute the book to the book trade (exclusive of cooking stores) in the U.S.

Under an exclusive license, the licensee as a “copyright owner” has the right to file an infringement action in court to stop all infringing activities, assuming that the copyright was properly registered and the license was recorded with the U.S. Copyright Office.

Related terms: copyright owner, defined; transfers of copyright ownership, generally.

expedited registration

The U.S. Copyright Office has a special procedure to quickly register a work if a copyright owner needs the registration to pursue a copyright infringement action in federal court (no action may be filed without first registering the copyright). Expedited registration—called “special handling” by the U.S. Copyright Office—costs an additional $500 (as of August 2000).

Related terms: copyright infringement, defined; infringement action, explained.

expression, protection of, under copyright law

See copyright, explained; original work of authorship.

factual works, defined

Factual works are those that legitimately may be classified as nonfiction. Histories, instruction manuals, trade catalogs, travel guides and biographies are all examples of factual works. Under copyright law, factual works receive less protection than works of fiction because the underlying facts are legally considered to be in the public domain. Therefore, factual works do not contain as much protectable material as fictional works.

EXAMPLE: Tim writes a travel book on the Comoros Islands, a small island country off the east coast of Africa. In this book, he catalogs all the usual items, including lodging, tourist sites and food. A year later, Alice publishes a competing book that contains much of the same information plus some additional facts about the Comorean political system. Tim writes Alice, accusing her of copyright infringement. Alice responds that she used Tim’s book to visit the Comoros and that since his facts were remarkably accurate, she had no choice but to include them in her book. Because facts such as those found in Alice’s and Tim’s books are in the public domain, Alice has not infringed Tim’s copyright.

Related terms: Feist Publications Inc. v. Rural Telephone Service Co.; merger doctrine.

failure to deposit work

To properly register a copyright with the U.S. Copyright Office, the registrant must deposit one or more copies of the underlying work. Failure to deposit within three months after a demand for the deposit is made by the Registrar of Copyrights will require the owner to forfeit the copyright application fee and reapply. In that case, the owner will not be entitled to the original filing date.

Related terms: copyright infringement, defined; registration of copyright, defined.

fair use, defined

Certain uses of a work protected by copyright do not require permission of the copyright owner when done for essentially noncommercial reasons.

The Copyright Act of 1976, as amended in 1992, authorizes any person to make “fair use” of a published or unpublished copyrighted work—including the making of unauthorized copies—in these contexts:

• in connection with criticism of or comment on the work

• in the course of news reporting

• for teaching purposes, or

• as part of scholarship or research activity.

As a practical matter, fair use is primarily an affirmative defense to a claim of copyright infringement—that is, the defense is that even if infringement occurred there is no liability because the infringing activity was excusable as a fair use of the original work.

Whether or not a particular instance of copying without permission qualifies as a fair use is decided on a case-by-case basis and depends on four basic factors. These are:

• the purpose and character of the use, including whether such use is of a commercial nature or for nonprofit, educational purposes

• the nature of the copyrighted work

• the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and

• the effect of the use upon the potential market for, or value of, the copyrighted work.

Below we examine each of these factors separately. Note that when we use the term “defendant” we are referring to the person accused of infringement.

The first factor is considered the most important and requires an analysis as to whether the use is transformative. That is, did the defendant change the original by adding new expression or meaning? Did the defendant add value to the original by creating new information, new aesthetics, new insights and understandings? If the use was transformative, this weighs in favor of a fair use finding. In a parody, for example, the parodist transforms the original by holding it up to ridicule. The brief use of photographs in a film was considered to be transformative because the images were used in furtherance of the creation of a distinct aesthetic and overall mood. The defendant’s work doesn’t have to transform the original work’s expression as long as the purpose is transformative, for example, scholarship, research, education or commentary.

When considering the second factor—nature of the copyrighted work—a court will generally consider whether the work being copied is informational or entertaining in nature. As the Supreme Court indicated, “copying a news broadcast may have a stronger claim to fair use than copying a motion picture.” Why? Because copying from informational works such as scholarly, scientific or news journals encourages the free spread of ideas and encourages the creation of new scientific or educational works, all of which benefits the public. In addition, a defendant has a stronger case of fair use if material is copied from a published work rather than an unpublished work. The scope of fair use is narrower with respect to unpublished works because of the author’s right to control the first public appearance of his expression.

As for the third factor—amount and substantiality of portion used—the more that is taken from a work, the more difficult it becomes to justify it as a fair use. For example, in one case the court found that copying more than half of an unpublished manuscript was not considered a fair use. When considering the amount and substantiality of the portion taken, the court considers not just the quantity of the material taken but the quality of the material taken. Determinations regarding “quality” or “substantiality” are subjective and may be difficult to reconcile. For example, the copying of 1 minute and 15 seconds of a 72 two minute Charlie Chaplin film, used in a news report about the comedian’s death, was considered substantial and not a fair use. However, in another case, the court determined that copying 41 seconds from a boxing match film was not substantial and permitted it as a fair use in a movie biography of Muhammed Ali.

In certain rare cases, copying of a complete work may be considered a fair use. (Universal City Studios v. Sony Corp., 464 U.S. 417 (1984).) For example, the Supreme Court in the Sony case permitted the off the air copying of complete television programs by consumers who owned video recorders (VCRs).

As for the fourth factor—effect of the use on the potential market—a judge must consider the effect on the actual and potential market for the copyrighted work. This consideration goes beyond the past intentions of the author or the means by which the author is currently exploiting the work. For example, in one case a photograph was adapted into a wood sculpture without the authorization of the photographer. The fact that the photographer never considered converting the photograph into a sculpture was irrelevant. What mattered was that the potential market existed as demonstrated by the fact that the defendant earned hundreds of thousands of dollars selling such sculptures.

Some uses are not considered to undermine the potential market. Copying a magazine cover for purposes of a comparative advertisement is a fair use because the comparative advertisement does not undermine the sales or need for the magazine. Similarly, a court found that the appearance of a poster in the background of a television series for less than 30 seconds did not harm the potential market for the poster.

Similarly, a court held that a search engine’s practice of creating small reproductions (“thumbnails”) of images and placing them on its own website (known as “inlining”) did not undermine the potential market for the sale or licensing of those images. One of the reasons for this fair use ruling was that the thumbnails were much smaller and of much poorer quality than the original photos and served to index the images and help the public access them. (Kelly v. Arriba Soft Corp., 280 F.3d 934 (9th Cir. 2002).)

In addition to these four fair use factors, a court may consider other factors, if relevant. The drafters of the Copyright Act of 1976 were careful to advise that the four fair use factors were intended only as a guideline and the courts are free to adapt the doctrine to particular situations on a case by case basis.

Related terms: copyright infringement, defined; infringement action, explained; published work, defined; inlining.

false representation in copyright registration application

A deliberate lie on a copyright registration form, such as a false statement that no preexisting works are included in the work being registered, may invalidate the legal effect and benefits of the registration. On the other hand, an innocent mistake should not invalidate the registration if the copyright owner makes timely moves to correct it.

Related terms: supplemental registration.

Feist Publications Inc. v. Rural Telephone Service Co.

In this court case, a publisher of a residential telephone directory sued a competitor who had copied the directory verbatim. The Supreme Court ruled that the original phone directory was not protected under copyright because:

• it consisted of facts in the public domain (the residence and phone number of each person listed in the directory), and

• the information was not arranged in a creative manner (the listings were in alphabetical order).

Although Feist argued that it wasn’t fair to allow a competitor to capitalize on the labor and expense that had gone into the original directory, the Supreme Court ruled that copyright only protects original expression, not labor and expense. (Feist Publications Inc. v. Rural Telephone Service Co., 111 S.Ct. 1282 (1991).)

Related terms: compilations of original or unoriginal material; computer databases, copyright of.

filtration test for determining substantial similarity

See Computer Associates Int’l v. Altai.

first sale doctrine

Under the Copyright Act of 1976, the purchaser of a legal copy of a copyrighted work is generally entitled to treat that copy in any way he or she desires, as long as the copyright owner’s exclusive copyright rights are not infringed. This means the copy can be destroyed, sold, given away or rented. A common example is the rental of movie videos, where the store purchasing the videotapes is entitled to rent them out without paying any royalties to the owner of the copyright rights in the movie. If, however, the store made additional copies of the movie and also rented them out, the underlying copyright would be infringed. The term “first sale doctrine” comes from the fact that the copyright owner maintains control over a specific copy only until it is first sold.

As with many areas of copyright law, there is some confusion as to the boundaries of the first sale doctrine. Two cases involving the framing of artwork seem to have arrived at different results. In one case, a company purchased a book of prints by the painter Patrick Nagel and cut out the individual images in the book and mounted them in frames for resale. The Ninth Circuit Court of Appeals in California held that this practice was an infringement and was not permitted under the first sale doctrine. (Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (1988). A similar result was reached in Greenwich Workshop Inc. v. Timber Creations, Inc., 932 F.Supp. 1210 (C.D. Cal. 1996).)

In a different case, however, a company purchased notecards and mounted them on tiles. A federal court in Illinois determined that this practice was not an infringement and was permitted under the first sale doctrine. (Lee v. Deck the Walls, Inc., 925 F.Supp. 576 (N.D. Ill. 1996). The same result occurred in C.M. Paula Co. v. Logan, 355 F.Supp. 189 (D.C. Texas 1973).) Under these rulings, a person in California cannot mount individual images from an art book; while a person in Illinois can mount individual notecards. Should it matter whether the object that is mounted is from an art book or from a note card? In the California case, the justices felt that mounting the Nagel images separately created a derivative work. In the Illinois case, the judge did not believe that mounting an image on a tile created a derivative work since the image was not altered or modified.

Another first sale decision added some confusion regarding the rights of software companies. A federal court ruled that the purchaser of a bundle of software programs could resell the individual components (separate programs on CDs). (Softman Products Co. LLC v. Adobe Systems Inc., 171 F.Supp. 2d 1075 (C.D. Cal. 2001).)

There are exceptions to the first sale doctrine. As a result of lobbying by the computer and music industries, the rental of computer programs and sound recordings is prohibited. It is also not permissible under the first sale doctrine to destroy a fine art or photographic work that meets the requirements of the Visual Artists Rights Act (for example, signed and numbered photographs created in limited editions of 200 or fewer copies) (see work of visual art).

Related terms: end-user license; work of visual art.

fixed in a tangible medium of expression

In the U.S., and most other countries, an original work of authorship first qualifies for copyright protection when it is reduced to some physical form or representation—that is, when it is fixed in a tangible medium of expression. Under the Copyright Act of 1976, a work is considered fixed in a tangible medium of expression when “its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced or otherwise communicated for a period of more than transitory duration.”

When a computer program is first reduced to paper or electronic patterns on a disk, it becomes fixed in a tangible medium of expression and is protected under the copyright laws. Similarly, when a song is recorded, a holograph photographed, a movie filmed, a video game recorded on tape or an ornamental design molded, each is fixed in a tangible medium of expression and protected by copyright.

A work consisting of sounds, images, or both, that is being transmitted live, is considered “fixed” if some record of the work is being made simultaneously with its transmission. A live transmission of a baseball game is therefore subject to copyright protection at the instant of transmission, because the images being broadcast are also captured on videotape or sound recording.

Although copyright protection arises the instant a work becomes fixed, many countries, including the U.S., allow the copyright owner to take additional steps to strengthen this protection, such as including a correct notice of copyright and registering the copyright with a government agency.

Related terms: copyright, explained; international copyright protection; registration of copyright, defined.

flow charts, registration of

Flow charts that constitute original works of authorship qualify for copyright protection, and may be registered with the U.S. Copyright Office. When registering flow charts, it is necessary to determine whether a Form TX or a Form VA is more appropriate. Form TX (for nondramatic literary works) is used for flow charts that communicate information primarily through text. Form VA (for visual arts works) is used for charts that communicate information primarily through a graphic arrangement of symbols and boxes.

Related terms: Form TX, described; Form VA, described; registration of copyright, defined.

Form CA, described

The U.S. Copyright Office requires Form CA for supplemental registrations, including the correction of errors.

Related terms: registration of copyright, defined; supplemental registration; U.S. Copyright Office.

Form PA, described

The U.S. Copyright Office requires Form PA to register all works involving the performing arts, including dramatic works, audiovisual works (such as movies, audio tapes and training films) and CD-ROM based multimedia products that feature a graphical user interface. Samples of this and other copyright registration forms are in the Sample Forms section at the end of this part of the book.

Related terms: musical works and copyright protection; registration of copyright, defined; U.S. Copyright Office.

Form RE, described

The U.S. Copyright Office requires Form RE to renew copyrights on works first published prior to January 1, 1978.

Related terms: duration of copyrights; registration of copyright, defined; U.S. Copyright Office.

Form SE (short, regular and group), described

The U.S. Copyright Office provides several versions of the SE form for the registration of works consisting of newspapers, serials or periodicals, such as magazines. Which form to use depends on a number of factors, including the number of items to be registered, the period of time for which the items are to be registered, and whether the constituent parts of the items are works made for hire.

Related terms: registration of copyright, defined; U.S. Copyright Office.

Form SR, described

The U.S. Copyright Office requires Form SR to register published and unpublished sound recordings.

Related terms: musical works and copyright protection; registration of copyright, defined; U.S. Copyright Office.

Form TX, described

The U.S. Copyright Office requires Form TX to register all works classified as literary and nondramatic. These include books, poems, computer programs and documentation, essays and articles. Samples of this and other copyright registration forms are in the Sample Forms section at the end of this part of the book.

Related terms: registration of copyright, defined; U.S. Copyright Office.

Form VA, described

The U.S. Copyright Office requires Form VA to register all sculptural or graphic works, such as paintings, photographs and designs. Samples of this and other copyright registration forms are in the Sample Forms section at the end of this part of the book.

Related terms: pictorial, graphic and sculptural works; registration of copyright, defined; U.S. Copyright Office.

framing

Framing occurs when one website displays a Web page of another company within a bordered area on its own site (similar to the “picture-in-picture” feature offered on some televisions). For example, when a user enters a search engine request, the search engine might display the contents of an online store within the search engine’s website, framed by the search engine’s text and logos. When a website is framed within another website, its URL or domain name of the website within the frame is not displayed and users are not able to bookmark the site.

Framing may trigger a dispute under copyright and trademark law theories because a framed site arguably alters the appearance of the content and creates the impression that its owner endorses or voluntarily chooses to associate with the framer. In a 1997 lawsuit, TotalNEWS was sued by news providers for framing news content from media outlets such as CNN, USA Today and Time. For example, the content of a CNN Web page appeared within a frame packed with advertising and information about TotalNEWS. The lawsuit settled and TotalNEWS agreed to stop framing and to use text-only links.

A subsequent court fight involving two dental websites also failed to fully resolve the issue. Applied Anagramic, Inc., a dentaI services website, framed the content of a competing site. The frames included information about Applied Anagramic as well as its trademark and links to all of its Web pages. A federal district court ruled that a website containing a link that reproduced Web pages within a frame may constitute an infringing derivative work. The court reasoned that the addition of the frame modified the appearance of the linked site and such modifications could, without authorization, amount to infringement. (Futuredontics Inc. v. Applied Anagramic Inc., 46 U.S.P.Q. 2d 2005 (C.D. Cal.1997).)

In 2002, the Ninth Circuit court of appeals ruled that it was copyright infringement for a search engine to import and reproduce full-size photographic images from a photographer’s website and to surround the images with a frame containing search engine advertising. The court also ruled that the reproduction of smaller versions of the photos (“thumbnails”) was permitted as a fair use. (Kelly v. Arriba Soft Corp., 280 F.3d 934 (9th Cir. 2002).)

Related terms: cyberspace, copyrights in; Digital Millennium Copyright Act; linking; inlining.

freedom of speech and copyright protection

The First Amendment to the U.S. Constitution prohibits the government from placing restrictions on a person’s freedom of speech, except in certain situations. One exception is found in the copyright laws, which prohibit speech that would infringe on somebody’s copyright. For example, a court can issue an injunction to prevent the publication of material that would damage a copyright owner by infringing on a copyright.

But this protection is not absolute. Educators, news reporters and scholars can invoke the statutory defense of fair use when they use small amounts of copyrighted material as part of teaching, criticizing or commenting on the copyrighted material.

Related terms: fair use, defined.

GATT (General Agreement on Tariffs and Trade)

Commonly known as GATT, the General Agreement on Tariffs and Trade is a comprehensive free-trade treaty signed by 117 nations, including almost every developed country. GATT created an international regulatory body known as the World Trade Organization (WTO) to enforce compliance with the agreement.

GATT becomes effective in different countries at different times, depending on when they enact it and the strength of their economies. For instance, GATT’s effective date in the U.S. was January 1, 1996, whereas the former Soviet Union and Warsaw Pact members had to comply beginning in 2000 and the least developed countries will have until 2006.

The part of GATT that affects copyright law (and other forms of intellectual property) is contained in a special agreement known as Trade Related Aspects of Intellectual Property Rights (TRIPS for short). Probably the most important provision of the TRIPS agreement is that all members of GATT must now adhere to the Berne Convention (except for the Berne requirement that moral rights be respected), even if they haven’t signed it. This means that 12 countries that were not members of the Berne Convention—including Haiti, Indonesia, Kuwait, Malaysia and some of the countries of the former Soviet Union—now agree to offer basic copyright protection under that treaty because of their GATT membership.

Other important GATT provisions applicable to all members include:

• Live musical performances must be protected from unauthorized distribution (bootlegging) through the means of fixing the performance in a tangible medium (tape, video, etc.) or communicating the performance to the public by wireless means.

• Computer programs are to be treated as literary works under the Berne Convention.

• Works by foreign authors that entered the public domain in the U.S. because of their failure to comply with U.S notice requirements in effect prior to March 1989 are to have restored copyright protection.

• Substantive penalties for copyright infringement are to be provided, including injunctive relief that prevents further infringement and adequate monetary damages for past infringement.

• Members must implement procedures that stop infringing materials from crossing the borders of other member countries.

• Software copyright owners may prevent the commercial rental of their protected works.

  Related terms: Berne Convention; international copyright protection; restored copyright under GATT; Universal Copyright Convention (U.C.C.).

grant of rights

When an author assigns all copyright rights to his or her publisher in advance of publication, in exchange for future royalties or other payment, the phrase commonly used is “grant of rights.”

Related terms: assignment of copyright; transfers of copyright ownership, generally.

graphic and pictorial works

See pictorial, graphic and sculptural works.

HTML

HTML (Hypertext Markup Language) is a collection of computer symbols and codes that are used to create documents that can be displayed on the Internet. HTML works in conjunction with a Web browser—a software program such as Netscape or Internet Explorer that allows users to surf the Internet.

ideas, not protected under copyright

Ideas as such are not protected through the copyright process. Only the actual expression of an idea is subject to copyright protection.

EXAMPLE: Janice La Beaux authors a new computer program that permits a homemaker to keep a running inventory of household goods. If Kim Rivera likes the idea and independently writes a competing program, no copyright infringement has occurred because Kim copied Janice’s idea, but not the expressive aspect of the program.

Other legal doctrines, such as patent law and trade secret law, are available to protect some ideas in certain contexts. For example, an idea that adds to a business’s competitive position and is not generally known or used in the trade may be treated as a trade secret, and others may be prevented from disclosing or using it without permission. Similarly, an idea may qualify for protection as a utility patent if it is novel, nonobvious and useful, and has either been reduced to practice (that is, demonstrated to work) or has been adequately described in a patent application. An idea for a design may also qualify for a patent if it is for a nonfunctional ornamental design of a manufactured product.

Related terms: copyright and patent compared.
See also Part 1 (Trade Secret Law): ideas as trade secrets; idea submission.

identifying material, defined

To register a copyright, it generally is necessary to deposit at least one, and often two, complete copies of the work with the U.S. Copyright Office. However, some kinds of works (for instance, holographs and virtual reality scenarios) are not easy to deposit. In other cases, the author may wish to maintain certain ideas as trade secrets and fears their disclosure if a true or complete copy of the work is to be deposited.

To accommodate the needs of registrants in these types of situations, the U.S. Copyright Office will accept a deposit of only a portion of the work or a representation of the entire work. The portion deposited is labeled as “identifying material” in order to satisfy the deposit requirement in the copyright law. Examples of identifying material include photographic prints, transparencies, photostats, drawings or similar two-dimensional reproductions visible without the aid of a machine.

To deposit computer software, the U.S. Copyright Office will accept the first and last 25 pages of a program as identifying material, if the program runs beyond 50 pages. For databases, identifying material consists of a portion of each file in the database.

In addition to these rules, the U.S. Copyright Office is willing to provide special relief for individual deposits on a case-by-case basis. For instance, if a software developer wants to deposit source code but doesn’t want to disclose certain trade secrets, the U.S. Copyright Office will allow the developer to black out certain portions of the code so that it cannot easily be understood and copied by potential infringers. Deposits accomplished under the special relief doctrine are also considered to be “identifying material.”

Related terms: deposit with U.S. Copyright Office; object code, copyrights; source code, copyrights; special relief, defined.

importing of infringing works

U.S. copyright and customs laws authorize the U.S. Customs Service to prevent material that infringes a U.S. copyright from entering the U.S. Under GATT, all member countries are supposed to enact a similar procedure.

In the U.S., the procedure is supposed to work like this. The copyright owner records his or her work with the U.S. Customs Service. Any imported copies that are the same or highly similar to the recorded works are temporarily seized. The copyright owner is informed of the seizure, and provided time in which to obtain a court order barring the materials from being imported to the U.S.

As a practical matter, this remedy is seldom used due to the inability of the Customs Service to check imports carefully against recorded copyrights. However, Customs will act if alerted by the copyright owner.

The U.S. customs law also authorizes copyright owners to file a complaint with the International Trade Commission to have infringing works excluded from the U.S., on the ground their importation would constitute an unfair method of competition.

Related terms: international copyright protection; international rules on copyright protection.

indecent or immoral works, not protected

Copyright protection is not available for works that a court or the U.S. Copyright Office deems to be indecent or immoral. Although in the past, the U.S. Copyright Office was commonly willing to reject registration of works on these grounds, the tendency now is to accept registration for even fairly explicit material, and to let the courts decide the issue if anyone objects.

independent creation, defense to infringement action

When an author independently creates a work, it is considered original, even though it may be highly similar to another work created by someone else. Accordingly, if a defendant in an infringement lawsuit can prove independent creation, the infringement action will fail, even if the plaintiffs have proved the necessary elements for infringement (substantial similarity and access).

Although some situations are relatively clear-cut, there is also a large gray area where it is difficult to tell whether subsequent works are independent creations or derivatives of earlier ones. In the latter case, permission to use the earlier work would be required.

EXAMPLE: Tim writes a book in English that is similar to one Antoine has written in French but it is not, strictly speaking, a translation. Is this an independent creation? No, if the court finds that Tim’s book was based on the French one, and yes, if the court finds that Tim’s book was created without relying on or borrowing from Antoine’s book. Which of these results will occur depends on the degree of similarity between the works, whether Tim had access to Antoine’s work and the probability of Tim’s independently creating a similar work.

Determining whether a work is an independent creation or a derivative work is especially difficult in the cases of:

• computer graphics. Expression can easily be reduced to digital form, allowing incremental modifications (called “morphing” in the case of moving images) to be made easily, with the result that one expression can be transformed into another without a clear line of demarcation.

• musical sampling. Sounds can be digitally captured and then modified and mixed to a point that the result has very little resemblance to any of the original material.

  Related terms: based on an earlier work; copyright, explained; copyright infringement, defined; derivative work (copyright).

information in public domain

See public domain—copyright context.

infringement action, explained

A lawsuit brought against someone who uses a copyrighted expression without permission is commonly known as an infringement action. Under the Copyright Act of 1976, a copyright owner is entitled to file an infringement action in federal court against a person who, without proper authorization of the owner:

• makes copies of a copyrighted work

• prepares derivative works from a copyrighted work

• distributes copies of a copyrighted work

• displays a work protected by copyright, or

• performs any original work of authorship protected by the copyright.

To prevail in an infringement action, a plaintiff (copyright owner) must establish that copying occurred. Because direct evidence of copying is almost never available, the plaintiff usually must establish that the infringing work is substantially similar to the infringed work and that the alleged infringer could have had access to the infringed work in order to copy it.

If these elements are proven, the defendant (who allegedly infringed the copyright) has several defenses, including claims that:

• the work was the product of an independent conception, and is therefore an original work of authorship

• the use falls under the “fair use” exception, or

• the defendant had permission to use the work.

Infringement actions offer the successful plaintiff the possibility of a wide variety of judicial relief, depending on the circumstances and whether the work is registered with the U.S. Copyright Office. Most important, the court is authorized to grant immediate but temporary relief in the form of a temporary restraining order, and, pending a full scale trial, more extended relief in the form of a preliminary injunction. Either or both of these devices can halt publication or distribution of the offending work.

The preliminary injunction can be vital to a copyright owner’s interests, since a regular injunction (or permanent injunction) can only be obtained as a part of a final judgment, which can take years. A preliminary injunction is relatively easy to obtain, once substantial evidence has been presented to the court showing a probability that an infringement is occurring.

In addition to court orders prohibiting further infringing activity, plaintiffs may be awarded a money award known as damages. This can consist of actual losses suffered as a result of the infringement and the profits realized by the defendant because of the infringement. As an alternative to seeking damages and profits, copyright owners who have timely registered their copyright may pursue statutory damages, which can be awarded without any proof of harm or defendant’s profits.

Copyright owners who timely register their copyright and/or record their ownership interest also qualify to have their attorney fees and court costs paid by an unsuccessful defendant. This alone can be a powerful incentive to register the copyright at the earliest possible time.

Related terms: copyright infringement, defined; damages for copyright infringement; defenses to copyright infringement; injunctions, copyright infringement; registration of copyright, defined.

infringement of copyright

See copyright infringement, defined.

injunctions, copyright infringement

Once copyright infringement is established, courts often are willing to issue an order (termed an injunction) to prevent the infringer from making or distributing further unauthorized copies of the original work of authorship. To the extent that the infringing work heavily relies on the infringed work, an injunction can have a severely adverse economic impact on the infringer.

EXAMPLE: When Apple Computer Inc. obtained an injunction preventing Franklin Computer from further copying the Apple Computer operating system, Franklin was effectively unable to market its computers because they would not work without using the infringing material. (Apple Computer, Inc. v. Franklin Computer Corporation, 714 F.2d 1240 (3d Cir. 1983).)

Injunctions come in three forms:

• temporary injunctions or temporary restraining orders (TROs). These are technically restricted to a situation when the plaintiff is on the brink of suffering irreparable injury and needs to stop some immediate action pending further consideration of the case. TROs generally only last for a week or two until the court can consider whether to grant a preliminary injunction.

• preliminary injunctions. Courts will issue a preliminary injunction if the plaintiff makes a strong showing that: the plaintiff is likely to prevail at the trial of the case, and the plaintiff will suffer greater economic harm than the defendant if such interim relief is not granted. Preliminary injunctions can last as long as it takes to get to trial—sometimes years.

• permanent injunctions. These are, as billed, permanent prohibition against using or distributing the unauthorized work.

Because courts generally presume that copyright infringement will cause irreparable injury, they often issue TROs and preliminary injunctions if infringement appears likely. Nevertheless, the court will usually require the plaintiff to post a bond to compensate the defendant for any harm caused by the injunction if later on the defendant ends up winning the case. Whether or not preliminary relief is granted, the court will determine after a trial whether injunctive relief is appropriate on a more permanent basis.

As a practical matter, losing a preliminary injunction often spells defeat for the defendant, regardless of the legal strength of the case. This is because few defendants can afford to keep the allegedly infringing work off the market pending trial and also meet the costs of a full-blown defense to the infringement charges. Because by definition a judge has already determined that infringement will mostly likely be found to exist when the case goes to trial, defendants normally find it economically prudent to settle early on the plaintiff’s terms and get on with their business.

Related terms: Apple Computer, Inc. v. Franklin; damages for copyright infringement; infringement action, explained.

Inlining

Inlining (sometimes referred to as “mirroring”) is the process of incorporating a graphic file from one website onto another website. In the first case involving inlining, an image search engine called ditto.com used inline links to reproduce full-size photographic images from a photographer’s website. By clicking on the link, the user was presented with a window contain a full-sized image imported from the photographer’s website, surrounded by the search engine’s advertising. The court held that this inlining constituted copyright infringement—it violated the photographer’s exclusive right to display his images. In contrast, the court held that the search engine’s practice of creating small reproductions (“thumbnails”) of the images and placing them on its own website was permitted as a fair use. The thumbnails were much smaller and of much poorer quality than the original photos and served to index the images and thereby help the public access them. (Kelly v. Arriba Soft Corp., 280 F.3d 934 (9th Cir. 2002).)

innocent infringement of copyright

Because the copyright laws afford protection to an original work of authorship as soon as it has become fixed in a tangible medium of expression, copyright infringement can easily be accidental. This is especially true if the copyright owner has failed to place a copyright notice on the work.

EXAMPLE: Lester collects many materials from diverse sources while writing a book about robot law. Among these is a July 6, 1995, article by Timothy Witherspoon, a well-known employee of the National Institutes of Science. No copyright notice is attached, and Lester assumes that the article is in the public domain because of Witherspoon’s federal employment (works published by the federal government are in the public domain). Accordingly, Lester quotes freely from the article in his book, giving Timothy a full credit line, but no royalties.

As it turns out, Timothy wrote the article on his own time and owns the copyright in the article. Because the article was published after March 1, 1989, the lack of a copyright notice does not affect the underlying copyright in a work. However, since Lester’s infringement was inadvertent, Timothy will probably not be able to collect damages from him for the use of the article that occurred before Lester discovered that the article was protected by copyright. Further, Timothy may not even be able to prevent further publication and sales of the infringing work (the book on robot law). But Timothy is likely to get a court to require Lester, as a condition of permitting Lester to continue his infringement, to pay Timothy a reasonable license fee for what is called a “judicially imposed compulsory license.”

Whether a particular infringement qualifies as innocent varies from case to case. For example, if Timothy’s article had a proper copyright notice on it, or if the article had been registered with the U.S. Copyright Office, Lester could not have claimed innocence. It is always wise either to get an author’s permission for a work prior to use, or, if it lacks a copyright notice, to check with the U.S. Copyright Office to see if a work is registered.

Innocent infringement should be distinguished from the fair use doctrine, where infringement is excused because of the nature of the material and the context in which it was used.

Related terms: fair use, defined; international rules on notice of copyright; omission of copyright notice.

instructional text

A literary, pictorial or graphic work that is prepared for use in day to day instructional activities is an instructional text. For example, a textbook would be an instructional text, but a novel used in a literature class would not be an instructional text. Instructional texts are one of the enumerated categories listed for determining whether a work can qualify as a commissioned work made for hire. This distinction is important because if a work was commissioned and it did not fall within one of the enumerated categories, it would not be a work made for hire even if there was a signed agreement stating that the work was made for hire. If a work qualifies as a work made for hire, the copyright is owned by the hiring party, not the author.

Related terms: work made for hire, defined.

international copyright protection

Over 120 nations have signed treaties in which they agree to extend reciprocal copyright protection to works authored by nationals of the other signing countries as well as works first published in one of the other signing countries. This reciprocal approach is commonly called “national treatment.”

The two main copyright treaties are the Berne Convention and the Universal Copyright Convention (U.C.C.), both of which the U.S. has signed. To the extent the provisions of these two treaties overlap, the author is entitled to the most liberal protection available—usually found in the Berne Convention.

In 1994–1995, most countries of the world ratified GATT (General Agreement on Tariffs and Trade), which binds them to comply with the provisions of the Berne Convention (except for its moral rights provision) whether or not they are already members. The GATT treaty makes the Berne Convention by far the most important international treaty; the U.C.C. will play an increasingly minor role in international copyright protection.

Besides establishing reciprocal protection rights, the Berne Convention also establishes the minimum protections that must be afforded, and specifies that no formalities—such as copyright notice—are required for gaining such protection. The Berne Convention does not impose on any country a definition of what can and cannot be copyrighted, but virtually all of the signatory countries (and GATT members) will fully protect such traditional items as books, art works, movies and plays. In addition, GATT requires that all members treat computer programs as literary works under the Berne Convention.

Related terms: Berne Convention; GATT (General Agreement on Tariffs and Trade); international rules on notice of copyright; Universal Copyright Convention (U.C.C.).

international rules on notice of copyright

Authors seeking to invoke international protection under the Berne Convention (authors in the U.S. and in most large industrialized nations, including all nations that ratify the GATT treaty) need not apply any copyright notice to their works.

Authors seeking to invoke international copyright protection under the Universal Copyright Convention (the relatively few countries that have not signed the Berne Convention or the GATT treaty) must use the following notice: “ (year of publication) (author or other basic copyright owner).”

For example, the correct U.C.C. notice for this book would be: “ 2002 Stephen Elias and Richard Stim.” Or, if Nolo owned the copyright, the correct notice would be: “ 2003 Nolo.”

Related terms: Berne Convention; international copyright protection.

Internet and copyright

Copyright law is supposed to work the same on the Internet as it does in the more tangible worlds of print and the fine arts. However, once works are put into digital form and uploaded into cyberspace, keeping track of copyright ownership and enforcing copyright rights becomes difficult.

Works cast in digital form can more easily be copied and modified than when they exist on paper or canvas, and it can be difficult to know when the line between copyright violation and permissible copying of ideas has been crossed. Also, once a work is posted on the Internet, it can simultaneously be copied by millions of users in many different countries, even if the copying is illegal. There is no practical way to reassert control over the work so that the copyright can be meaningfully enforced.

In an attempt to establish some regulation and predictability for copyrights on the Internet, Congress enacted the Digital Millennium Copyright Act (DMCA). The DMCA prohibits circumvention of digital anti-piracy devices and the removal of secret codes known as digital watermarks from digital files. The DMCA also limits liability for companies that provide access to the Internet (Internet Service Providers—ISPs) in the event that an infringing copy is offered online. In addition, the DMCA establishes licensing standards by which companies can webcast music (broadcast over the Internet).

Despite passage of the DMCA, technology has continued to outpace copyright legislation and new unresolved issues have emerged in cyberspace such as linking, framing and file sharing. For example, website owners may be liable as copyright infringers for creating links to infringing materials. One company ran into problems when framing—placing the contents of one website within a frame of another website—because the process resulted in the creation of a derivative work. Downloading music, particularly through the use of an Internet technology known as MP3, has triggered litigation and debate as to what constitutes infringement and fair use. Napster, a website that provide file sharing of MP3 files, was sued by the recording industry in 2000, forced to modify its methods of providing file sharing in 2001, and eventually folded.

A similar result occurred when in 2001, a programmer was prevented from distributing code that circumvented DVD technology allowing computer users to copy DVDs. (Universal City Studios Inc. v. Corley, 273 F.3d 429 (2d Cir. 2001).)

Related terms: Digital Millennium Copyright Act; MP3; linking; framing.

Internet service provider (ISP)

America Online, MSN and Mindspring are all ISPs—businesses that provide access to the Internet. ISPs may also offer services such as website hosting. ISPs can sometimes be held accountable for copyright violations for material posted by subscribers and users, but are usually protected by the provisions of the Digital Millennium Copyright Act.

Related terms: cyberspace, copyrights in; Digital Millennium Copyright Act.

joint copyright ownership

See joint work.

joint work

Under the Copyright Act of 1976, a joint work is defined as “a work prepared by two or more authors who intend to merge their contributions into inseparable or interdependent parts of the whole.” (17 United States Code, Section 101.) The U.S. Copyright Office will accept for registration works that meet this statutory definition, and will treat the authors as having equal rights to register and enforce the copyright, regardless of what the joint authors arrange among themselves.

EXAMPLE: Tom Maris and Mary Tiger have a partnership agreement, under which Tom owns three-fourths of the copyright and Mary one-fourth. If the copyright is registered with the U.S. Copyright Office with Tom and Mary listed as coauthors, they will be simply listed as coauthors without reference to their independent, unequal ownership arrangement. However, the partnership agreement will govern issues that may arise between Tom and Mary, such as who gets what share of the any royalties earned on the work, who is entitled to license the work to others and who can sue to enforce the copyright.

Related terms: co-authors.

laws, judicial opinions and model codes, copyrightable subject matter

There has long been a judicial consensus that neither the opinions of judges, nor the statutes enacted by Congress or state legislatures can be protected by copyright. This principle is derived from a Supreme Court opinion, Wheaton v. Peters, 33 U.S. 591 (1834). Although anyone is free to quote or reproduce these statutes and legal opinions, various publishers and reporting systems have claimed proprietary rights to the way these statutes and opinions are annotated or organized. For example, West Publishing unsuccessfully argued that its page numbering system could not be copied onto CD-ROMs by a rival publisher. (Matthew Bender & Co. v. West Publishing Co., 158 F.3d 674 (2d Cir. 1998).) These decisions and their underlying rationale—that the laws and opinions created by public officials belong in the public domain—did not necessarily apply to model codes. Model codes are regulations created by a private business and which may later be adopted by a public entity. For example, the Southern Building Code Congress International (SBCCI) is a nonprofit organization that develops modern building, fire and mechanical codes. These codes are adopted by municipalities and the SBCCI earns revenues by publishing and selling the codes or licensing the codes for publication. In 1997, Peter Veeck, the operator of a website, posted the building codes for two small towns in North Texas. The SBCCI sued for copyright infringement. In 2002, the Fifth Circuit Court of Appeals ruled that a company that creates a model code may not claim copyright in it once the code has been adopted into law. (Veeck v. Southern Building Code Congress International, Inc., 268 F.3d 298; (5th Cir. 2001).)

Related terms: factual works defined; merger doctrine, public domain.

Library of Congress, deposit requirement

With few exceptions, under the Copyright Act of 1976, an author is required to deposit at least one copy of his or her published work with the Library of Congress. This requirement is automatically met if the work is registered with the U.S. Copyright Office, which requires a deposit of either one or two copies of the best edition of the work, depending on the type of work. However, even if an author decides not to register a work with the U.S. Copyright Office, the author generally has an obligation to make the Library of Congress deposit, except for computer programs and certain other types of works. Failure to make the deposit carries no penalty unless the Library of Congress makes a demand. In that case, failure to deposit within three months may result in a relatively nominal fine.

Related terms: best edition of a work; deposit with U.S. Copyright Office.

license fee, payable by innocent infringer

See innocent infringement of copyright.

license recordation

See recordation of copyright transfers.

licensing of copyrights

A copyright license is a method by which the owner of a copyright gives permission for another to use or copy an original work of authorship. Because the essence of a copyright is the exclusive right to make copies, in order to commercially exploit the product, a copyright owner often needs to pass this and associated rights to a publisher or distributor.

A license may be either exclusive or non-exclusive and can be restricted by territory, by time, by media, by purpose, or by virtually any other factor desired by the parties. Exclusive licenses must almost always be in writing to be valid. In all cases, licenses should be recorded with the U.S. Copyright Office.

Related terms: exclusive license, defined; transfers of copyright ownership, generally.

linking

Any component of a Web page that connects to another Web page or another portion of the same Web page is a link. Clicking on underlined text or a graphic image activates most links. For example, if a user clicks on the words Financial Calculator or an image of a calculator, the user will be transported to a page that contains a calculator. Links are sometimes called “hyperlinks.” Although it is not a copyright violation to create a link, it is a violation of the law to create a link that contributes to unauthorized copying of a copyrighted work if the linking party knew or had reason to know of the unauthorized copying and encouraged it.

EXAMPLE: A website posted infringing copies of a church’s copyrighted handbook at its site. The website was ordered to remove the handbook but subsequently provided links to other sites that contained infringing copies of the handbook. These links were different from traditional links because the website knew and encouraged the use of the links to obtain unauthorized copies. The linking activity constituted contributory copyright infringement. (Intellectual Reserve, Inc. v. Utah Lighthouse Ministry, Inc., 75 F. Supp. 2d 1290 (D. Utah 1999).)

A link that bypasses a website’s home page and instead goes to another page within the site is often called a “deep link.” Some website owners object to the use of deep links. They want all the people who use their website to go first to the home page, usually because advertising is posted there. The use of deep links can cost such a website advertising revenue. In one of the first cases of its kind, Ticketmaster sued a competitor called Tickets.com partly because it linked from its website to pages deep within Ticketmaster’s site. The court held that deep linking does not violate the copyright laws because no copying is involved. However, the court held that Ticketmaster might have a claim against Tickets.com on other legal grounds, such as violation of trademarks or unfair business practices. (Ticketmaster Corp. v. Tickets.com, 54 U.S.P.Q. 2d 1344 (C.D. Cal. 2000).)

Many copyright experts believe that deep linking is not copyright infringement—after all, the author of a novel can’t prevent readers from reading the end first if they so desire, so why should a website owner have the right to determine in what order a user can access a website? Some well-known websites such as Amazon.com welcome deep links. However, if a commercial website has no posting linking policy or says that deep links are not allowed, it’s wise to ask for permission before deep linking. Why? Because many websites—even the listener-friendly National Public Radio—began asserting rights against deep linkers both under copyright and trademark law principles. For example, in 2002, a Danish court prevented a website from deep linking to a newspaper site. Until a definitive court ruling establishes a precedent, it’s wise to be prudent when creating deep links.

literary works, copyrights

“Literary works” is one of the broad categories of material protected under the copyright laws. The phrase has little legal significance, and is used primarily to classify materials that must be registered with the U.S. Copyright Office on a Form TX.

According to the U.S. Copyright Act of 1976, literary works are “works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks or cards in which they are embodied.” (17 United States Code, Section 101.)

Examples of literary works include computer programs, books, poems, plays, newspapers, magazines, software documentation, training films consisting primarily of dialogue and flowcharts consisting primarily of text.

Related terms: registration of copyright, defined.

manufacturing clause

The manufacturing clause is a now defunct U.S. statute that barred the importation of more than 2,000 copies of any nondramatic literary material written in English by an American author, unless it had been manufactured in the U.S. or Canada. The manufacturing clause has not been in effect since the 1980s.

mask work

See Semiconductor Chip Protection Act of 1984.

mechanical rights

The right to reproduce a song on vinyl recordings, cassette tape, compact disc or DVD (collectively known as phonorecords) is referred to as a mechanical right. In contrast, broadcasting a song over the radio, TV or Internet or incorporating a song in a movie, video or video game are not mechanical rights; they are performance rights.

Every time a song is “pressed” (or fixed) on a phonorecord, the songwriter is entitled to a payment for this mechanical right, known as a mechanical royalty. Mechanical royalty rates are set by law (known as the statutory rate) but artists and songwriters are free to negotiate a lower rate. The advantage of paying the statutory rate is that an artist does not have to seek permission to record the song provided that certain requirements are met (see compulsory license).

Why would a songwriter accept less than the statutory rate? Sometimes the songwriter has no choice because it is a condition of a recording agreement or because it is the only way to attract a specific artist to record the song.

Mechanical royalty rates are constantly changing. For example, it was common in the 1970s for a songwriter to receive $.02 for every song pressed on a recording. Below are the rates expected through the year 2006. The current mechanical rate can be determined by calling the Copyright Office Licensing Division
(202-707-8150) or consulting the Code of Federal Regulations at 37 C.F.R. 255. Two rates are provided: per song and per minute. The song owner is paid whichever rate is higher.

Table of Mechanical Royalty Rates

Years	Per Song	Per Minute
Jan. 1, 2002–Jan. 1, 2004	8 cents	1.55 cents
Jan. 1, 2004–Jan. 1, 2006	8.5 cents	1.65 cents
After Jan. 1, 2006	9.1 cents	1.75 cents

Related terms: compulsory license; music publisher.

merger doctrine

This rule was developed in and followed by the courts. It severely limits copyright protection—or denies it altogether—to a work that involves very little creativity if its ways of expressing the ideas in the work are very limited. When it is very difficult to separate the expression in a work from the underlying ideas, the two are said to merge. Under the merger doctrine, a work will only be protected against verbatim copying, assuming there is any protectable expression at all in the work.

The merger doctrine has been the basis for a series of court decisions that deny protection to computer user interfaces, the best known of which is Computer Associates Int’l v. Altai, 982 F.2d 693 (2d Cir. 1992). The merger doctrine also applies to factual works such as histories, biographies and scientific treatises.

Related terms: Computer Associates Int’l v. Altai; Feist Publications Inc. v. Rural Telephone Service Co.

microcode and copyright

Microcode is software embedded in a computer chip for the purpose of performing the computer’s basic purpose—to process information. One court has ruled that microcode is subject to copyright protection. (NEC Corp. v. Intel Corp., 10 U.S.P.Q. 2d 1177 (N.D. Cal. 1989).) However, this protection is likely to be limited to “virtually identical copying,” as it was in the Intel case, since microcode is very much determined by external constraints such as heat and space, and the underlying unprotectable idea would therefore be merged with any protectable expression in the code.

Related terms: computer software, copyright of; merger doctrine.

mistakes in registration, correction of

See supplemental registration.

money damages in infringement action

See damages for copyright infringement.

moral rights

Every copyright owner who lives or publishes in a country that has signed the Berne Convention is supposed to have moral rights that are personal to the author and that cannot, therefore, be taken away or abridged. Sometimes referred to by the French term “droit moral,” these rights include the author’s right to:

• proclaim authorship of a work

• disclaim authorship of a work, and

• object to any distortion, mutilation or other modification of the work that would be injurious to the author’s reputation as an author.

Even though the U.S. is a signatory nation to the Berne Convention, it doesn’t specifically recognize moral rights, taking the position that a number of different U.S. statutes provide equivalent and adequate protection. For instance, Section 106 of the Copyright Act of 1976, as amended, provides that the artist of a work of visual art (as defined by the statute) can control whether his or her name is on the art and object if the integrity of the work is threatened. And under a federal statutory scheme that primarily governs trademarks (known as the Lanham Act), an author may sue anyone who misrepresents authorship.

Most art law experts believe this piecemeal approach to moral rights leaves the moral rights provision in the Berne Convention largely unimplemented in the U.S. Although the moral rights provision of the Berne Convention applies to all works of expression, it is seldom an issue in any area other than the visual arts.

Related terms: Berne Convention; international copyright protection; work of visual art.
See also Part 3 (Trademark Law): Lanham Act.

motion pictures, copyrights

According to Section 101 of the Copyright Act of 1976, as amended, “Motion pictures are audiovisual works consisting of a series of related images which, when shown in succession, impart an impression of motion, together with accompanying sounds, if any.” Motion pictures are entitled to copyright protection under the audiovisual work category and may be registered with the U.S. Copyright Office by using Form PA and depositing the best edition of one complete copy.

Related terms: best edition of a work; registration of copyright, defined.

MP3

The most common system for music downloads from the Internet is known as MPEG 1 Layer 3 or “MP3” for short. MP3 technology compresses sound files so that approximately 60 minutes of music can be stored on 32 megabytes of computer memory. The distribution of MP3 files is an infringement unless authorized by the respective copyright owners. In 1998, the Rio appeared, the first hand-held MP3 storage device. The music industry attempted to halt sales of the Rio, arguing that the Rio failed to meet standards established in the Audio Home Recording Act (AHRA). In 1998, a judge refused to issue an injunction halting the sale.

Internet sites that facilitate the copying, transfer or sale of unauthorized MP3s have been the subject of lawsuits from the recording Industry. In 2000, both MP3.com and Napster.com—a file sharing system—were the subjects of record company litigation. In both cases, judges rejected fair use arguments and found that the websites facilitated the distribution of unauthorized recordings. In other words, even though a company does not store or offer unauthorized recordings at its website, the company is still violating copyright law because if it has established a system that allows others to infringe copyrights.

Related terms: Audio Home Recording Act, cyberspace, copyrights in.

music publisher

Music publishers own song copyrights and collect revenue, handle business formalities, sue infringers and look for new ways to exploit songs. Music publishers acquire ownership of song copyrights when the songwriter transfers copyright ownership in exchange for payments or an ongoing royalty. Most music publishers offer an upfront sum or “advance” to the songwriter and share the revenue with the songwriter as the song earns money. That is, the songwriter continues to earn a percentage of the revenue through the life of the copyright. For example, even though Paul McCartney does not own the copyright in the Beatles songs, he still receives revenue from the music publisher that now owns the copyright.

musical works and sound recordings distinguished

There are two types of copyrights for music: musical works copyrights, which protect songs and compositions; and sound recording copyrights, which protect the manner in which music is arranged and recorded—that is, the sounds fixed on the recording. These forms of copyright protection create two overlapping sources of income. Songwriters earn income from the exploitation of songs. Recording artists and record companies earn money from the sale of recordings. The same person or business can own both types of copyrights, but the musical works copyright is usually owned by the songwriter or a music publisher, and the sound recording copyright is usually owned by a record company.

Form PA is used to register published or unpublished musical works. Form SR is used to register published or unpublished sound recordings such as a record, cassette recording or compact disc. In addition, Form SR would be used if the author also wishes to simultaneously register the sound recording and underlying musical work embodied on the sound recording.

national treatment

This approach to international copyright protection, taken by the Berne Convention and other major copyright treaties, requires a signatory country to extend to nationals of other signatory countries the same copyright protection as is extended to its own citizens.

Related terms: Berne Convention; international copyright protection.

new version

See derivative work; single registration rule.

New York Times v. Tasini

A group of freelance authors who wrote articles for the New York Times, Time and several other publications sued these publications when their articles were reproduced without their consent on the LEXIS/NEXIS database and when microfilm reproductions of the publications were also reproduced on two CD-ROM products.

The freelance authors argued that their contracts did not grant permission for these uses of the material. The publishers argued that the freelancers’ permission was not required because the act of placing the articles on electronic databases constituted a revision of the original collective works. In 2001, the Supreme Court rejected the publishers’ argument, reasoning that electronic databases such as LEXIS/NEXIS are not revisions of collective works such as The New York Times because the databases store and retrieve articles individually—articles that are part of a vast database of diverse texts. They do not store intact copies of newspapers or other collective works as originally published. In contrast, the court suggested that microfilm copies of newspapers and other collective works are revisions of the collective works because copies of entire intact editions are stored together on the microfilm rolls. (New York Times v. Tasini, 533 U.S. 483 (2001).)

Under Tasini, permission from the writers would not be required if the republication in the new media qualified as a revision of the original collective work (magazine, newspaper or other publication). For example, permission would not be needed if a newspaper was published both in print form and online since the online edition would surely qualify as a revision of the original print edition.

But what about republishing articles and other materials on CD-ROMs? Are these revisions? One court has said no. The case involved the publication on 30 CD-ROMs of every issue of National Geographic Magazine published from 1888 to 1996 (1200 in all). A freelance photographer sued National Geographic, claiming it didn’t have the right to make digital copies of his photos and place them on the CD-ROM. The court agreed, holding that the CD-ROM was an entirely new work—a compilation consisting of all the back issues—not a revision of the original magazine issues.

This result puzzled many copyright experts because the CD-ROM seemed to be very similar to the microfilm that the Supreme Court in Tasini indicated would be a revision because copies of intact editions were stored together. Moreover, users of the CD-ROM retrieved individual articles as part of entire magazine issues, not individually as was the case with the online databases in Tasini.

Nevertheless, the Supreme Court refused to reverse the decision and, as a result, prudent publishers obtain permission to include freelance materials on CD-ROMs where they haven’t acquired such rights in advance. (Greenberg v. National Geographic Society, 244 F.3d 1267 (11th Cir. 2001).)

As a result of Tasini, more publishers are requiring freelancers to transfer all their rights and librarians and archivists now have gaps in online databases to which they subscribe.

news reporting, fair use

See fair use, defined.

non-exclusive license

A copyright owner grants a non-exclusive license when the owner (licensor) authorizes another person or institution (the licensee) to exercise one or more of the rights belonging to the owner under the copyright on a shared (non-exclusive) basis. Legally, no transfer of copyright ownership takes place under a non-exclusive license, since the licensee shares the right with the original owner and perhaps with additional non-exclusive licensees. Although a non-exclusive license need not be in writing to be valid, most are.

EXAMPLE: Steve Rogers builds an electronic legal dictionary featuring intellectual property terminology for the purpose of selling it to law firms. Rather than sell the dictionary outright, Steve distributes it under non-exclusive licenses that permit licensee law firms to make copies for use in personal computers belonging to the law office staff (a site license). The non-exclusive license prohibits a licensee from transferring the dictionary to another firm, and requires payment of a set amount each year for renewal of the license. Under this arrangement, thousands of law firms might be non-exclusive licensees, but none of them would be considered as a copyright owner, since none has the exclusive right to use and therefore enforce the copyright.

Related terms: exclusive license, defined; licensing of copyrights.

notice of copyright

Often referred to as a “legend” or “bug,” a notice of copyright is the little “ ” plus the date of publication and author’s name.

For works published in the U.S. after March 1, 1989, no such copyright notice is required for copyright protection within the U.S. Nor is a notice required in any of the other countries that have signed either the Berne Convention or GATT. However, the notice is still useful to:

• remind others that the work is protected by copyright

• preclude the use of the “innocent infringer” defense in a copyright infringement case, and

• point a would-be user of the work in the right direction if he or she wants permission to use it.

For works published in the U.S. prior to March 1, 1989, a copyright notice is required to preserve the copyright in the work.

To provide adequate notice where such notice is desired, the copyright notice must be placed where it will easily be seen by a person viewing the work—that is, it must provide “reasonable notice of the claim of copyright.” Under guidelines published by the U.S. Copyright Office:

• For literary works, notice may appear either on the front or back of the title page.

• For computer software, notice may appear on the disk or cassette, in the program itself, or it may be placed to appear when the program appears on the computer screen.

• For audiovisual works, notice may appear on the screen with the credits.

• For phonorecords, audiotapes and CD-ROMs, notice may appear on the record cover or CD-ROM and tape enclosures.

There is no limit to the number of different places a copyright notice can appear.

Related terms: defective copyright notice; innocent infringement of copyright; international rules on notice of copyright; omission of copyright notice.

object code, copyrights

Most computers work through the use of compilers, which translate programs written in a programming language (called source code) into a language that the computer can recognize (called object code). The source code typically consists of words and a formal grammatical syntax. The object code consists of ones and zeros which, in all respects, are equivalent to the source code’s meaning and syntax, but feed the program to the computer in a binary form (one = on and zero = off) which the computer can then process and act on. This is very much like translating a written message into short and long Morse Code signals for telegraphic transmission.

Although object code is unintelligible to most human readers, the courts have held that it qualifies for copyright protection as a form of expression, and as such can be registered with the U.S. Copyright Office. The reason to register object code rather than source code is that because source code can be readily understood by skilled readers, registering it may give away trade secrets that have been maintained in the software.

When someone registers object code rather than source code, the U.S. Copyright Office places the registration under what’s termed “the rule of doubt.” This means that because the U.S. Copyright Office can’t read or understand what was deposited, it expresses no opinion on whether the object code qualifies for copyright protection. In short, the U.S. Copyright Office does not consider the object code deposit the best edition of the underlying work and expressly favors the source code as a computer program deposit instead.

The U.S. Copyright Office offers a number of alternatives to the deposit of pure object code, which are designed to preserve trade secrets in a program while providing the U.S. Copyright Office with something intelligible to its employees. For example, acceptable deposits include parts of the source code with strategic sections blacked out, or a mix of source code and object code.

Related terms: computer software, copyright of; deposit with U.S. Copyright Office; source code, copyrights.
See also Part 1 (Trade Secret Law): trade secret, defined.

omission of copyright notice

Although a copyright notice is no longer required in the U.S. as of March 1, 1989, for many years previous to that, omission of the notice voided copyright protections. A work of authorship published prior to January 1, 1978, without the proper notice of copyright qualified for no copyright protection. A work published between January 1, 1978, and March 1, 1989, without the proper notice of copyright lost its copyright protection unless the work was republished after March 1, 1989. But even then, the old copies remained unprotected unless the work was registered with the U.S. Copyright Office within five years of its original publication and an earnest attempt was made to have correct notices placed on all copies that were already distributed.

While works publicly distributed in the U.S. after March 1, 1989, do not need a notice to protect the copyright, it is still a good idea to include one. If a copyright infringement lawsuit becomes necessary and the work has the correct notice on it, the infringer will not be able to claim an innocent infringement—a legal status that makes it far harder for the copyright owner to recover damages.

Under GATT, works that entered into the public domain in the U.S. because they lacked a proper copyright notice may have their copyright restored if they were otherwise protected by the Berne Convention when created.

Related terms: defective copyright notice; innocent infringement of copyright; notice of copyright.

original work of authorship

Under the Copyright Act of 1976, an “original work of authorship” encompasses, with a few exceptions, any type of expression independently conceived of by its creator. Authorship embodies a certain minimum level of creativity and originality. But as long as a particular expression has been independently arrived at, it need not be original in the sense of “new.” For example, if Thomas Dowel never heard of or read One Flew Over the Cuckoo’s Nest, by Ken Kesey, but somehow managed to write a play very similar to it, Dowel’s play would qualify as “original,” and would thus be subject to copyright protection. Of course, when one work is very much like another, the odds favor the likelihood that copying occurred.

Among the many creations that qualify as works of authorship are sheet music, movies, records, tape recordings, video disk productions, laser disk games, cartoons, artistic designs, magazines and books. Computer software also counts as a work of authorship, in both source code and object code form.

A few categories of expression do not qualify as “original works of authorship” either because they are too short to deserve copyright protection or they involve little or no creativity or originality. Among these are titles of books, movies and songs; short phrases and slogans; printed forms; compilations of facts; and works consisting entirely of information that is public domain property—for instance, lists and tables taken from public documents or other common sources.

Related terms: compilations of original or unoriginal material; Feist Publications Inc. v. Rural Telephone Service Co.

output of computer, copyrightability of

Many computer programs produce original works of authorship on the screen that are individually protectable by copyright apart from the underlying program code. For example, the computer game “Doom” produces characters that may qualify for independent copyright protection. Other examples of protectable computer output are computer-generated slides, music produced by a computerized synthesizer and laser light shows.

Related terms: computer software, copyright of.

overlapping transfers of copyright

Overlapping transfers of copyright rights occur when a copyright owner:

• transfers all or part of the same exclusive right to two or more separate parties

• transfers an exclusive right when that right has already been the subject of a non-exclusive license, or

• grants a non-exclusive license involving a right that has already been transferred by an exclusive license.

The following rules determine ownership in these situations:

• In a case of conflicting exclusive rights, the first right granted is entitled to the protection if the right is recorded in the U.S. Copyright Office within one month of the underlying work’s publication (within two months if the right was granted outside of the U.S.).

• If the exclusive right is not recorded on time, the first transfer recorded is entitled to protection (even if it was the second one granted), as long as the grantee received it in good faith (without knowledge of the earlier one).

• Whether recorded or not, a non-exclusive written license will coexist with a later transfer of an exclusive right.

• Whether recorded or not, a non-exclusive written license will coexist with an exclusive right that was transferred earlier if both the grant of the non-exclusive license occurred before the earlier transfer was recorded, and the recipient of the non-exclusive license did not know of the earlier exclusive-rights transfer.

  Related terms: exclusive license, defined; non-exclusive license; recordation of copyright transfers.

ownership of copyright

See copyright owner, defined.

pantomimes and choreographic works, copyrights

Pantomimes and choreographic productions are among the forms of expression that can qualify for copyright protection when fixed in a tangible medium of expression such as film, video, written score or recording. To register these types of works with the U.S. Copyright Office, the owner must use Form PA.

Related terms: Form PA, described; registration of copyright, defined.

parody and fair use

Parody occurs when one work ridicules another well-known work by imitating it in a comedic way. Because parody is a type of critique—that is, it comments on the work being parodied— it constitutes speech protected under the First Amendment of the U.S. Constitution. However, to the extent that the parody copies material protected by copyright, its publication may also be considered a copyright infringement. How do the courts reconcile these two opposite interests? The courts first decide whether a particular work qualifies as parody. If so, the court then determines whether the work qualifies as a fair use. If it does, then there is no copyright infringement.

To determine whether a work is a parody, the courts decide whether the work actually comments on the original work or just invokes the original work as a means of calling attention to itself in the marketplace. For example, in one case involving a poem by a Dr. Juice called The Cat NOT in the Hat, the court held that the poem was not a parody of the original Dr. Seuss work The Cat in the Hat because the purpose of the poem, which imitated the famous Dr. Seuss style without substantial alteration, was to comment on the O.J. trial rather than the original Dr. Seuss work. (Dr. Seuss Enterprises v. Penguin Books USA Inc., 109 F.3d 1394 (9th Cir. 1997).) To quote from a leading U.S. Supreme Court case in this area (Campbell v. Acuff-Rose, 510 U.S. 569 (1994)), the key question to be addressed in deciding whether a work is a parody is whether the new work “adds something new, with a further purpose or different character altering the first with new expression, meaning, or message; it asks in other words whether and to what extent the new work is transformative.”

A good example of what makes a work transformative can be seen in the case of Leibovitz v. Paramount Pictures Corp., 137 F3d 109 (2d Cir. 1998). In this case the Paramount motion picture company released an advertisement for the movie “Naked Gun 33 1/3” that showed Leslie Nielsen’s face superimposed on the famous nude photo of a pregnant Demi Moore (which originally appeared on the cover of Vanity Fair magazine). Annie Leibovitz, the photographer, sued Paramount for copyright infringement. In holding the work to be a parody, the Court held that the “ad may reasonably be perceived as commenting on the seriousness and even pretentiousness of the original.” The Court went on to note that the parody differed from the original “in a way that may, reasonably, be perceived as commenting, through ridicule, on what a viewer might reasonably think is the undue self-importance conveyed by the subject of the Leibovitz photograph.”

Once a work is found to be a parody, the court then must go on to decide whether the other tests used to determine fair use apply to the case. Briefly these tests are:

• the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes

• the nature of the copyrighted work

• the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and

• the effect of the use upon the potential market for or value of the copyrighted work.

It is often difficult to discern whether a work is a parody. Cases involving Dr. Seuss and the book Gone with the Wind show just how difficult it can be to know for sure. In the Dr. Seuss case, two authors wrote a book called The Cat NOT in the Hat! A Parody by Dr. Juice. The book told the story of the O.J. Simpson trial through poems and sketches similar to those in the famous The Cat in the Hat children’s stories by Dr. Seuss. The work was narrated by Dr. Juice, a character based on Dr. Seuss, and contained a character called “The Cat NOT in the Hat.”

The owners of the copyrights in Dr. Seuss sued for copyright infringement. The authors claimed that their work was a fair use of the Dr. Seuss stories because it was a parody. They argued that by applying Dr. Seuss’s style to adult subject matter their work commented on the “naivet of the original” Dr. Seuss stories as well as on society’s fixation on the O.J. Simpson trial.

The court disagreed. It said that a parody was a “literary or artistic that imitates the characteristic style of an author or a work for comic effect or ridicule. The Cat Not In the Hat! didn’t qualify because the authors’ poems and illustrations merely retold the Simpson tale. Although they broadly mimicked Dr Seuss’s characteristic style, they did not hold it up to ridicule or otherwise make it an object of the parody. The court opined that the authors used the Seuss characters and style merely to get attention or avoid the drudgery of working up something fresh. It upheld an injunction that barred Penguin Books from distributing 12,000 books it had printed at an expense of $35,000. (Dr. Seuss Enterprises v. Penguin Books USA, Inc. 109 F.3d 1394 (9th Cir. 1997).)

Four years later, the opposite result was reached by another court in a case involving the legendary Civil War novel Gone with the Wind. The book, called The Wind Done Gone, chronicles the diary of a woman named Cynara, the illegitimate daughter of a plantation owner, and Mammy, a slave who cares for his children. Without obtaining permission from the copyright owner of Gone with the Wind, the author of The Wind Done Gone copied the prior book’s characters, famous scenes and other elements from the plot and dialog and descriptions. The Margaret Mitchell estate sued both the publisher and author for copyright infringement.

The court held that The Wind Done Gone was protected by the fair use privilege, and thus the Mitchell estate could not obtain a court order halting its publication. The court concluded that The Wind Done Gone was a parody because “its aim is to comment upon or criticize a prior work by appropriating elements of the original in creating a new artistic, as opposed to scholarly or journalistic, work.” The Wind Done Gone satisfied this test because it was a specific criticism of and rejoinder to the depiction of slavery and the relationships between blacks and whites in Gone with The Wind. (Suntrust Bank v. Houghton Mifflin Co., 268 F.2d 1257 (11th Cir. 2001).)

Related terms: copyright infringement, fair use.

patent and copyright

See copyright and patent, compared.

performing a work

The exclusive right to perform a work is one of the bundle of rights that make up a copyright. Performing a copyrighted work without obtaining permission from the copyright owner constitutes an infringement of copyright.

To perform a work publicly has a much broader meaning under copyright law than the common concept of a performance. The drafters of the Copyright Act of 1976 stated that “to perform a work means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.” Section 101 of the Copyright Act states that to perform a work “publicly” means that there is performance of the work where the public is gathered or the work is transmitted or otherwise communicated to the public. (17 United States Code, Section 101.)

Examples of public performance include:

• A disc jockey plays a phonorecord in a nightclub.

• A novelist reads aloud from her work at a bookstore.

• A dancer presents a performance during halftime at a football game.

• A motion picture company authorizes a showing of its latest film.

• A songwriter performs an original composition at a nightclub.

• A radio station plays a record containing a copyrighted song.

• A television station broadcasts a television show.

• A cable TV company receives a television station broadcast and rebroadcasts it via cable transmission.

The performance right does not extend to pictorial, graphic or sculptural works because these works cannot be performed; they can only be displayed so these rights are covered by the display right. In 1994, the Copyright Act was amended to include digital performance rights for sound recordings and to prevent the bootlegging of live musical performances.

Related terms: copyright infringement, defined; exclusive copyright rights; public performance of a work.

performing music at a business

Performing rights societies collect fees from establishments where music is performed, such as clothing stores, bars or restaurants. The “performance” of a song has a broad meaning encompassing live concerts, playing of a recording at a business or club and transmission of a song via radio, television, cable or digital signals.

Some businesses are exempt from these pay-for-play rules. Businesses that play the radio or television do not have to pay performances fees if they meet the criteria below:

• the business is a restaurant or bar under 3,750 square feet;

• the business is a retail establishment under 2,000 square feet; or

• the business, regardless of size, has no more than six external speakers, but not more than four per room, or four televisions measuring 55 inches or less, but not more than one per room.

The exemptions above apply only to establishments that play radio and television. Establishments playing pre-recorded music, such as compact discs, must still pay performance fees. Permission is not required to play a song in a record store or if the song is played via licensed jukebox.

Related terms: performing a work; performing rights societies; mechanical rights; musical works and sound recordings distinguished.

performing rights societies

The owner of a song controls the right to publicly perform it (known as the “performance right”). The “performance” of a song has a broad meaning encompassing live concerts, playing of a recording at a business or club and transmission of a song via radio, television, cable or digital signals. Song owners earn money whenever their song is performed (known as “performance royalties”).

It would be impractical if the proprietors of radio and TV stations or nightclubs had to contact each song owner for permission each time a song was publicly performed. Performing rights societies were established in order to negotiate and collect these fees. In the U.S. a song owner affiliates with one of three performing rights societies, ASCAP, BMI or SESAC. These societies act as agents for song owners, surveying radio stations on a regular basis and using the surveys as a basis for payments to songwriters. TV stations furnish logs of music played and agreements are also made with club owners where phonorecords are played, or with concert halls where live music is performed.

Related terms: performing a work; performing music at a business; mechanical rights; musical works and sound recordings distinguished.

permission, getting

Many kinds of media publications—small and large—use words, music and imagery that are protected by copyright laws. Is permission required for all uses of someone else’s work? For example, is permission needed to reproduce a photo taken by a club member, a friend or a relative? The short answer is: “Yes.” Copyright protection extends to any original work regardless of who created it and permission is required for reproduction, display or distribution of the work.

The reason for acquiring permission is to avoid a lawsuit. The copyright owner controls the use of the work and a person who uses it without permission could be sued for financial damages. If a friend or family member has consented to the use, the concern over a lawsuit diminishes, as does the need for a written permission agreement. An oral consent is valid, although an email or written consent is preferred as it is easier to prove in the event of a dispute. Sometimes the process of acquiring consent can be simplified by using the services of a copyright clearinghouse.

It is wise to operate under the assumption that all art, music and writings are protected by copyright law. A work is not in the public domain simply because it has been posted on the Internet (a popular fallacy) or because it lacks a copyright notice (another fallacy). As a general rule permission is needed to reproduce copyrighted materials including photos, writing, music and artwork.

Do not assume that clip art, shareware, freeware or materials labeled “royalty-free” or “copyright-free” can be distributed or copied without authorization. Read the terms and conditions in the “click to accept” agreement or “readme” files ordinarily accompanying such materials to be certain that an intended use is permitted. One company failed to honor the terms of a click-wrap agreement and was found liable for illegally distributing three volumes of software clip art. Also don’t assume that because a site permits the download of a story that this story can be posted on another website. Each type of activity—emailing, copying, printing and posting—requires authorization.

Permission is sometimes needed to reproduce a trademark including any word, symbol or device that identifies and distinguishes a product or service. For example, the word “McDonald’s,” the distinctive yellow arches and the Ronald McDonald character are all trademarks of the McDonald’s company. Permission would be needed to use these trademarks at a commercial website if consumers are likely to be confused by the use or if the commercial use damages the reputation of McDonald’s.

Related terms: clearinghouse, copyright; shrink-wrap and click-wrap license.

phonorecords, defined

The U.S. Copyright Act of 1976 defines phonorecords not only as the traditional “record” but also as audio tape recordings, compact discs, laser discs and any future technology for reproducing sound. The statute covers “material objects in which sounds, other than those accompanying … [an] audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device. [It] … includes the material object in which the sounds are first fixed.” (17 United States Code, Section 101.)

An original work of authorship contained on a phonorecord may be registered with the U.S. Copyright Office on Form SR.

Related terms: compulsory license; Form SR, described; registration of copyright, defined; musical works and sound recordings distinguished.

photocopies and copyright law

With some exceptions, making even one copy of an original work of authorship requires the copyright owner’s permission; copying without permission constitutes infringement of the copyright and may entitle the copyright owner to seek damages in federal court. However, the photocopy machine is a very familiar part of life in America and copyrights are frequently and massively infringed by its use. Also, when the copying is very limited and not for the purpose of making money, the copying will usually be considered a fair use should an infringement lawsuit be brought.

Because much photocopying occurs in private and doesn’t involve commercial distribution, this type of infringement is seldom discovered. Also, unless the copyright owner has been damaged in some manner or profits were gained from the infringement, an infringement lawsuit is usually out of the question.

EXAMPLE: Philbert writes an article and sends copies to several newspapers and periodicals requesting payment if the article is used. Upon receiving the article, a senior editor for one of the periodicals makes three photocopies and distributes them to the editorial staff for comment. Because Philbert’s copyright gives him the exclusive right to make copies, the senior editor’s act of making the three copies technically constitutes a copyright infringement. However, if Philbert tried to do anything about it, the periodical would be able to raise the fair use defense and escape any consequences.

Nevertheless, in situations where photocopying is discovered by a copyright owner and it appears that sales of the item being copied may be adversely affected, a copyright lawsuit may be the result. For instance, in the case of Basic Books, Inc. v. Kinko’s Graphics Corp., 758 F. Supp. 1522 (S.D. N.Y. 1991), a group of seven major publishers obtained a $510,000 judgment against a duplicating business for copying excerpts from books without permission, compiling them into “course packets,” and selling them to college students.

Related terms: copies, meaning under copyright law; fair use, defined; infringement action, explained.

pictorial, graphic and sculptural works

Works of expression using graphic and physical representations of objects and ideas, rather than text, are entitled to copyright protection. The Copyright Act of 1976 covers “two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, technical drawings, diagrams and models.” (17 United States Code, Section 101.) To register pictorial, graphic or sculptural works with the U.S. Copyright Office, the owner should use Form VA.

The original design of a toy, package, implement or other product can qualify for copyright protection if it is created for expressive rather than functional purposes. For instance, a pitcher designed as a unicorn may be subject to copyright protection as long as the unicorn shape is not directly related to the pitcher’s function—that is, the unicorn shape does not affect how the pitcher stores and pours liquids. Whether or not a design is functional or expressive can only be decided on a case-by-case basis.

Designs of an article of manufacture that are not functional may also qualify for patent protection under a design patent.

Related terms: copyright and patent, compared; Form VA, described; registration of copyright, defined.

Note

See also Part 3 (Patent Law): design patents; Part 4 (Trademark Law); trade dress.

piracy, defined

A colloquial term without legal significance, piracy is used to describe the illegal activity of willful copyright infringers.

Related terms: copyright infringement, defined; criminal copyright infringement.

placement of copyright notice

See notice of copyright.

plagiarism, defined

Deliberately passing off somebody else’s original expression or creative ideas as one’s own is colloquially known as plagiarism. Plagiarism can be a violation under the copyright laws if original expression is copied.

Often, however, plagiarism does not violate any law but marks the plagiarist as an unethical person in the political, academic or scientific community where the plagiarism occurs.

Related terms: copyright infringement, defined; original work of authorship.

preliminary injunctions

See injunctions, copyright infringement.

printed forms, not copyrightable

Printed forms do not usually qualify for copyright protection because they are designed for recording information and do not in themselves convey information.

Related terms: copyright, explained; original work of authorship.

profits as damages

Profits reaped by an infringer as a result of a copyright infringement (called defendant’s profits) are one possible element of monetary damages a court may require the infringer to pay the copyright owner. Defendant’s profits will only be awarded where these profits exceed the amount of profits lost by the copyright owner as a result of the infringement.

To establish the amount of an infringer’s profits, the plaintiff copyright owner first must prove the defendant’s gross profits from the sales of the infringing goods or services. The defendant then is entitled to deduct his or her demonstrable costs from the gross revenues from selling the infringing material. The resulting amount is then compared with the plaintiff’s lost profits, if any. Damages that will be awarded will be the greater of defendant’s profits attributable to the infringement or the plaintiff’s lost profits.

EXAMPLE: Janet clearly infringed Jeffrey’s copyright by stealing his dissertation and publishing it first. Jeffrey proves that he lost $20,000 in publishers’ advances and royalties based on the reasonably anticipated sale of the dissertation as a scholarly book. Because Janet’s publisher did a super job selling foreign rights, she ended up with $35,000. Janet would have to pay Jeffrey $35,000, because her profits were greater. However, if instead Janet’s net profits were only $15,000, she would have to pay him $20,000 in his lost profits, because his lost profits were greater than her actual ones.

Related terms: damages for copyright infringement.

programs, computer, copyright of

See computer software, copyright of.

pseudonym, copyright under a

The copyright laws define a “pseudonymous work” as one on which the author is identified under a fictitious name. Copyright laws protect an author who publishes a work under a pseudonym almost as well as (and in some cases better than) they do an author who uses his or her real name. The main difference is that the copyright will last 75 years for a pseudonymous work, instead of the author’s life plus 50 years for an author-identified work.

Related terms: anonymous, author as owner of copyright; duration of copyrights.

public domain—copyright context

Any work of authorship that is not protected under copyright law is said to fall within the public domain. This means that anyone can use the work without obtaining permission from the author or the author’s heirs. There are several common reasons why works may be considered to be in the public domain:

• The work was published before 1923.

• The work consists solely of facts or ideas. (Facts and ideas are not protected by copyright, although the means used to express them may be protected to some extent.)

• The work was published before 1978 and lacked a proper copyright notice. (But the copyright in many of these works has been restored.)

• The work was published between 1978 and 1989, the notice on the work was defective and inadequate efforts were made to correct the defects. (Copyrights by non-U.S. authors covered by the Berne Convention that expired for this reason can be restored under GATT.)

• The copyright owner deliberately placed the work in the public domain by making a statement to that effect.

• The work was created by the federal government.

  Related terms: factual works, defined; Feist Publications Inc. v. Rural Telephone Service Co.; original work of authorship; work of the U.S. Government, public domain; restored copyrights under GATT.

public performance of a work

Among the bundle of rights making up a copyright is the exclusive right to publicly perform or display an original work of authorship. The Copyright Act of 1976 considers in part the right to: “1) perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or 2) transmit or otherwise communicate a performance or display of the work … to the public, by means of any device or process….” (17 United States Code, Section 101.)

Related terms: copyright, explained; copyright infringement, defined; exclusive license, defined.

published work, defined

Published and unpublished works are both entitled to copyright protection, but some of the rules differ, such as:

• The fair use defense is harder to use when unpublished works are involved, because use of an unpublished work deprives its copyright owner of the right to determine its publication date.

• The duration of a copyright in an unpublished work that is a work made for hire or an anonymous or pseudonymous work can last up to 25 years longer than if the work were published.

• The publication date sets the time running for a timely registration of the copyright with the U.S. Copyright Office.

• A valid copyright notice on a published work can prevent the claim of innocent infringement from being raised in a copyright infringement lawsuit.

An original work of authorship is only considered published under the Copyright Act of 1976 when it is first made available to the public on an unrestricted basis. It is thus possible to display a work, or distribute it with restrictions on disclosure of its contents, without actually “publishing” it. However, if the work is displayed online, so that access by computer is widespread, the work would be considered published.

EXAMPLE: Andres Miczslova writes an essay called “Blood Bath” about the war in Bosnia, and distributes it to five human rights organizations under a non-exclusive license that places restrictions on their right to disclose the essay’s contents. “Blood Bath” has not been “published” in the copyright sense. However, if Miczslova authorizes posting of the essay on the Internet, it would be considered published.

The same rule applies for the posting of a website online. In 2002, a federal court ruled that the posting of a website on the Internet amounted to publication. This ruling enabled the website owner to collect statutory damages from an infringer who copied the website. (Getaped.com v. Cangemi, 188 F. Supp. 2d 398 (S.D. N.Y. 2002).)

Related terms: fair use, defined; international copyright protection; notice of copyright; registration of copyright, defined.

recordation of copyright transfers

When one or more exclusive copyright rights is transferred, it is important for the recipient of the rights to record the transfer immediately with the U.S. Copyright Office. This is because the first to record has greater rights in the event of conflicting or overlapping transfers.

Recordation also provides all persons with “constructive notice” of the transfer of rights. This means that the law will presume infringers should have found out about it, even if they didn’t actually know. Without recordation, although the owner of transferred rights can sue an infringer, it may be hard to prove that the infringement was not innocent.

To record a transfer, the new owner must file with the U.S. Copyright Office a written document describing the work involved and the transfer granted, and bearing the signature of the person granting the transfer.

Related terms: overlapping transfers of copyright; transfers of copyright ownership, generally.

recordings, copyright of

The U.S. Copyright Office calls all sound recordings “phonorecords,” no matter what medium is actually used.

Related terms: phonorecords, defined.

Registrar of Copyrights

This is the official title of the person who heads the U.S. Copyright Office.

Related terms: registration of copyright, defined; U.S. Copyright Office.

registration of copyright, defined

Copyright protection automatically attaches to any work of authorship when it is fixed in a tangible medium of expression. In other words, registration is not required to obtain copyright. The author acquires copyright automatically once the work is fixed. Such protection can be strengthened if certain affirmative steps are taken, such as attaching a correct notice of copyright to the work and registering the work with the U.S. Copyright Office. In fact, when one speaks of copyrighting a work, this often means registering it.

Registration provides several distinct advantages in case of infringement:

• Registration is required before the copyright owner may file an infringement action in court. If the copyright is not already registered, and litigation becomes necessary, there will be a delay while the registration application process goes forward (although expedited registration is possible for $500). Registration is not required to file an infringement lawsuit for non-U.S. works that meet the definition of Berne Convention works (that is, when the author is a national of a Berne Convention country and the work was first published in a Berne Convention country). (See 17 United States Code, Section 101.) Registration is also not required to file an infringement lawsuit for works of visual art (fine art limited editions of 200 or fewer copies as defined in 17 United States Code, Sections 101 and 106A).

• If a copyright is registered either before an infringing activity has begun, or within three months of first publication of the work, the copyright owner may collect statutory damages for the infringement, plus attorney’s fees, if the issue ends up in court. These benefits often make the difference between an owner being able to afford litigation and having to forego copyright rights.

• In an infringement action, the registered copyright owner is presumed to be the actual owner, and the statements in the registration application are presumed to be true. Such presumptions make it easier to present a viable court case, because they put the burden on the other side to disprove the plaintiff’s right to relief.

The registration process is relatively simple. The U.S. Copyright Office provides a number of preprinted forms, with instructions, for different types of works:

• Form TX is used for all nondramatic literary works, including software code

• Form PA is used for published and unpublished works of the performing arts such as musical and dramatic works, pantomimes, motion pictures and graphically based multimedia works on CD-ROM

• Form VA is used for the visual arts

• Form SR is used for sound recordings, and

• Form SE (there are several variations) is used for serials, like newspapers, periodicals and journals.

Several sample registration forms are contained in the Sample Forms section at the end of this part of the book. You can download these forms from the U.S. Copyright Office’s website at www.copyrightgov.

Once the form is filled out, it must be sent to the U.S. Copyright Office with a proper deposit of the work itself, or with material that satisfactorily identifies the work (called identifying material), and a relatively small filing fee ($30 as of September 2000). The U.S. Copyright Office has specific regulations governing what form the deposit must take for different types of works and, in the case of items such as computer software, phonorecordings and mask works, what kind of identifying material will be accepted.

In individual cases, upon application for a good reason, the U.S. Copyright Office grants “special relief” by waiving formal deposit or other registration requirements. This means, for example, that the U.S. Copyright Office will accept deposits in a different medium or form than is normally required. There are no specific rules for when specific relief will and will not be granted.

Assuming that the registration materials are properly completed, the U.S. Copyright Office will normally register the work and send a certificate of registration. On the other hand, if information is either left out of the form or is clearly erroneous on its face (for instance, the date of publication is 100 years off), the U.S. Copyright Office will send the form back and indicate how to correct it.

If, after registration, information provided in the initial registration is incorrect or needs to be updated, it is usually possible to correct it by filing a supplemental registration form (Form CA).

Related terms: copyright infringement, defined; copyright owner, defined; deposit with U.S. Copyright Office; identifying material, defined; infringement action, explained; special relief, defined; timely registration, defined.

registration of copyright license

See recordation of copyright transfers.

registration of copyrights in unpublished works

See unpublished work, copyrightability of.

reliance party, when copyright restored

See restored copyright under GATT.

renewal of copyright

See duration of copyrights.

restored copyright under GATT

Until the U.S. became a member of the Berne Convention in March 1989, works originating in Berne Convention countries often lost their copyright in the U.S. because they failed to observe certain formalities required by the U.S. copyright laws, such as copyright notices. Under the General Agreement on Tariffs and Trade (GATT), copyright protection has been restored in all such works. However, parties who used these restored works without permission in reliance on the fact that they weren’t protected by copyright (called reliance parties) cannot be sued for copyright infringement, and may continue using the works under certain circumstances if they pay a reasonable license fee to the restored copyright owner under a type of compulsory license.

Related terms: GATT (General Agreement on Tariffs and Trade).

revocation of license

Most copyright licenses contain conditions under which the license must be exercised. If these conditions are broken, the copyright owner generally has a right to revoke the license. The license revocation should always be done in writing. Any exercise of the licensed right after revocation will constitute an infringement of the copyright.

Revocation of a license should not be confused with the right to terminate transfers under the Copyright Act of 1976. In that situation (and in addition to any provisions in the license itself), the original copyright owner (or his or her heirs) has a legal right to terminate any transfer after 35 to 40 years have passed.

Related terms: licensing of copyrights; termination of transfers.

rule of doubt

The U.S. Copyright Office allows object code to be deposited in connection with a computer program registration. There is, however, an express understanding that doubt exists as to whether the code qualifies for copyright protection should litigation later ensue. In essence, the U.S. Copyright Office is saying, “We will let you deposit object code, but since we can’t read or understand it, we won’t commit ourselves as to its copyrightability.”

If the registration is accomplished under the rule of doubt, the copyright owner may be unable to claim the presumption of ownership—an important benefit of registration—should the issue end up in court because of an alleged copyright infringement.

Related terms: computer software, copyright of; special relief, defined.

safe harbor

See Digital Millennium Copyright Act.

sampling

The digital recording process has made it possible to “sample” a portion of a sound recording. These digital samples can be manipulated to replay once or twice or repeat as a “loop” throughout a new recording. The use of a musical sample may infringe both the musical works and sound recording copyright held on the sampled music. Whether the use qualifies as an infringement depends upon the portion sampled and its qualitative or quantitative importance to the copyrighted work. Initially, the courts took a rigid approach prohibiting any use of digital samples. However, in a 1997 case, a court determined that the rap group Run DMC’s use of a drum sample from a 1973 recording was not infringing. (Ruff ‘N’ Rumble Mgmt. v. Profile Records, Inc., 42 U.S.P.Q. 2d 1398 (S.D. N.Y. 1997).)

Although industry custom requires that two licenses be obtained to sample recorded music (from the sound recording and musical work owners), a federal court ruled in 2002 that the use of a 6-second flute sample, repeated throughout a Beastie Boys song, “Pass the Mic” required permission only from the sound recording owner, and not from the composer. (Newton v. Diamond, 2002 U.S. Dist. LEXIS 10247 (C.D. Cal. 2002).)

Sound recordings were not protected by copyright law until 1972. The use of a musical sample from a work created prior to 1972 would not be an infringement of a sound recording copyright, although it may be a violation of applicable state laws. In order to avoid claims of infringement, popular artists seek sample clearance from copyright owners.

Semiconductor Chip Protection Act of 1984

This statute protects semiconductor chip manufacturers against the unauthorized copying or use of semiconductor chips and the templates that are used to manufacture them.

Semiconductor chips are a complex combination of tiny circuits that are designed to manipulate electronic data. They are mass-produced from multilayered three-dimensional templates that are called “chip masks” in the trade, and “mask works” under the Semiconductor Chip Protection Act.

Mask works (and the resulting semiconductor chips) are very difficult and expensive to design, but very easy to copy. Accordingly, semiconductor chip manufacturers have long sought protection of these devices as a form of intellectual property. Because technological advances in these chips have been incremental in nature, most improvements have been considered obvious and, therefore, not patentable. Before 1984, the chips did not qualify for copyright protection, due to the fact that their design was considered functional rather than expressive. To plug this gap, Congress passed the Semiconductor Chip Protection Act.

Under this statute, the owner of the exclusive rights in the mask work (generally the manufacturer) is given an exclusive ten-year right to:

• reproduce the mask work

• import or distribute a semiconductor chip product in which the mask work is embodied, and

• license others to exercise these rights.

These rights are forfeited, however, if the owner fails to register the mask work with the U.S. Copyright Office within two years of its commercial exploitation anywhere in the world.

A party who innocently purchases a semiconductor chip product that has been manufactured in violation of these exclusive rights is not liable for copyright infringement, but must pay a reasonable royalty for each unit the innocent party imports or distributes after notice of the infringement.

Related terms: computer software, copyright of; innocent infringement of copyright.

shrinkwrap and clickwrap license

See end-user license.

simultaneous publication

Previous to March 1, 1989, the U.S. belonged to the Universal Copyright Convention (U.C.C.) but not to the Berne Convention. If an author wished to obtain protection under both the Berne Convention and the U.C.C., it could do so by causing the initial publication of the work to simultaneously occur in the U.S. and a Berne Convention country, such as Canada. In March 1989, however, the U.S. joined the Berne Convention, so U.S. authors have no further reason for simultaneous publication.

Related terms: Berne Convention; international copyright protection; Universal Copyright Convention (U.C.C.).

single registration rule

The U.S. Copyright Office generally allows only one registration for each original work of authorship. There are exceptions, however. A new registration is permitted when an unpublished work is later published. A new registration is also allowed to substitute an author’s name.

Changes, updates or translations of a given work will merit a second registration only if they are substantial enough in quantity or quality to qualify the work as a new version. Practically, unless the modified work is significantly changed or contains a great deal of new material, the original registration should provide adequate protection. However, certain minor or technical changes in an existing registration sometimes warrant filing a supplemental registration.

If a new version is registered, that registration only applies to the new material contained in the work. The material taken from the original work is still covered under the original registration.

Related terms: best edition of a work; supplemental registration.

site license

Some software publishers grant a single license to a company, which allows a set number of copies of the software to be installed on individual computers. For instance, if a company with 100 employees wants its employees to use a particular graphics program, it can either buy 100 copies of the program, or try to get a site license that would permit use of 100 copies of the software at a reduced rate per copy.

Related terms: computer software, copyright of; end-user license; licensing of copyrights.

software and copyrights

See computer software, copyright of.

Sonny Bono Copyright Term Extension Act

This Act, signed by the president on October 26, 1998, extends the copyright term in the United States by 20 years of all works published after January 1, 1998. The act also extended the duration of the copyright term on works created or published prior to 1978.

In 2003, the U.S. Supreme Court ruled that the 20-year copyright extension did not violate the U.S. Constitution (Eldred v. Ashcroft, 123 S.Ct. 769 (2003)). It’s possible that the Supreme Court will hold that all or part of the extension is unconstitutional.

Related terms: Duration of Copyright; Eldred v. Ashcroft.

sound recordings, copyrights

See phonorecords, defined.

source code, copyrights

The computer program written by a programmer is usually called source code. Source code is commonly written in a programming language (for instance, COBOL, C++, Visual Basic) and contains not only the commands for the computer, but also the programmer’s comments regarding the purpose and meaning of the different lines of code. It is relatively easy for a skilled computer programmer to examine the source code for a particular program and figure out how to produce the same result with a technically different program. Thus, access to source code will reveal a program’s trade secrets and allow a competitor to use its ideas in a competing program.

For this reason, programmers like to keep their source code as confidential as possible. Accordingly, when registering a program with the U.S. Copyright Office, many software authors prefer to deposit only object code, which is extremely difficult to decipher because it appears in the form of ones and zeros, hexadecimal or some other inscrutable form.

Nevertheless, the U.S. Copyright Office considers a program’s source code to be the best edition of the work, and accordingly prefers it as a deposit. In fact, the U.S. Copyright Office will accept a deposit of portions of the source code with critical parts blacked out, or a mixture of source code and object code. But the U.S. Copyright Office will also accept a deposit of the object code under what is called the rule of doubt—that is, it has no opinion as to whether the registered code qualifies for copyright protection, since it can’t read it.

Related terms: computer software, copyright of; object code, copyrights; registration of copyright, defined; rule of doubt.

special relief, defined

The U.S. Copyright Office sometimes gives a special variance to depart from its usual requirements for copyright registration or deposit. This variance is known as “special relief.” Applicants for copyright registration may have one or many reasons to seek exemptions from the formal requirements for registration and deposits—for example, an unusual shape, size or composition of the work to be deposited or the need to maintain a trade secret expressed by the work. Often the U.S. Copyright Office will grant such special relief to applicants who request it and explain in a cover letter to their registration application why they need it.

Related terms: best edition of a work; deposit with U.S. Copyright Office; registration of copyright, defined.

statute of limitations

A person accused of infringing another’s copyright, patent or trademark may argue in defense that the plaintiff waited too long to file suit—that is, they violated the statute of limitations. In civil copyright cases, this limit provides that you can’t file suit more than three years after the discovery of the infringement, or after it reasonably should have been discovered. (In criminal copyright cases, the government must bring an action within 5 years after the infringement occurred.) The theory behind the statute of limitations defense is that plaintiffs can’t be allowed to “sit on their rights” and accumulate damages, but must act reasonably promptly to prevent further damage once it is discovered.

Because it is not always easy to discover the existence of a copyright infringement, it’s fairly common to file a lawsuit after the three-year deadline, claiming recent discovery. Unfortunately, the courts do not agree on what types of acts start the calendar running for purposes of the three-year statute of limitations period.

statutory damages under copyright act

See damages for copyright infringement.

substantial similarity, infringement

See copyright infringement, defined.

supplemental registration

Certain errors in a copyright registration may be corrected, changed or amplified by filing a supplemental registration. Form CA is available from the U.S. Copyright Office for this purpose.

Supplemental registration is appropriate for both trivial mistakes and more serious errors, such as where:

• the author’s name was misspelled

• the author’s birth date was incorrect

• the title of the work has changed since the original registration

• the owner’s address has changed

• an unpublished work was registered as published

• the author or copyright claimant was misidentified, omitted or has a changed name (not because of a transfer), or

• some aspect of the application information needs clarification.

The first three of these situations are trivial and need not be changed for the copyright to remain valid. An address change need not be noted for legal purposes, but an accurate address will obviously enable potential licensees and transferees to locate the copyright owner. The other errors, and the need to correct them, are more important because they affect both the validity of the copyright and the owner’s ability to vindicate his or her rights in court.

Related terms: single registration rule.

Tasini

See New York Times v. Tasini

temporary restraining order (TRO)

See infringement action, explained; injunctions, copyright infringement.

termination of transfers

For works published after January 1, 1978, any exclusive copyright right that has been transferred by the author eventually may be terminated by the author, the author’s surviving spouse or the author’s children or grandchildren. The termination must occur after 35 years from publication of the work, or 40 years after the transfer is made, whichever comes first. However, such termination must occur within five years of the date the author or heirs become eligible to do so, or the right to terminate is lost forever. This termination right does not apply to works made for hire.

EXAMPLE: Bill Haywoode composes a song about robots who take over factory jobs. Bill grants the rights to record and market the song to Ecotopia Enterprises. The transfer takes effect January 1, 1995. When first published in January 1996, the song becomes a classic, continuously recorded by a succession of artists. In 2031, Bill will have the right to terminate the “grant of rights” and recapture full ownership of the copyright. However, if Bill fails to exercise this option to terminate by 2036, he will lose it.

Although all copyright transfers may be terminated through this process, any derivative works that have been legally prepared in the meantime will continue to belong to their authors, rather than reverting to the original copyright owner. For instance, if under a broad grant of rights from Bill (which included the right to use the song for all legal purposes) Ecotopia had prepared and marketed a television series based on the song, all rights to the television series will remain with Ecotopia or anyone to whom it transferred the series.

Related terms: exclusive license, defined; licensing of copyrights.

timely registration, defined

To obtain all the benefits of registration, a work must be registered with the U.S. Copyright Office within certain time limits. Timely registration entitles a copyright owner to statutory damages and attorney fees in an infringement suit, which may make affordable a suit that is otherwise prohibitively expensive and risky.

For a published work, timely registration must occur within three months of first publication or before the infringement begins. For unpublished works, registration is timely as long as it occurs before the infringement begins.

Related terms: copyright, explained; registration of copyright, defined.

Trade Related Aspects of Intellectual Property Rights (TRIPS)

See GATT (General Agreement on Tariffs and Trade).

transfers of copyright ownership, generally

According to the Copyright Act of 1976, a transfer of copyright ownership is any grant of an exclusive right, or an assignment, mortgage, exclusive license or any other conveyance of a copyright or of any of the exclusive rights constituting a copyright. A transfer includes almost any assignment of rights except a non-exclusive license.

A transfer can involve the entire copyright or only a portion of it, since a copyright consists of a bundle of rights that can be divided. For example, a grant of rights may be limited by time, geography or media. The right to make copies of an original work, the right to sell the work, the right to display the work, and the right to make derivative works of the work are also separate transferable rights.

EXAMPLE: Ruth Gottfried writes a book called Nurse Ruth. She registers the copyright with the U.S. Copyright Office and lists herself as the owner. Although Ruth could publish and market the book herself, more likely she will let others do the job for her. For example, she might execute a written license giving Able Publishers the exclusive right to sell, display and make copies of the book. She may also transfer some or all of the remaining rights (for instance, film, radio and TV, magazine, CD-ROM, Polish-speaking countries) to Able, or she can choose to transfer some of them to others, retaining for herself only a few or perhaps only the exclusive right to make derivative works.

In fact, an almost infinite number of transfers can occur for a copyrighted work. The only prerequisites for a transfer of ownership are that:

• the transfer must be in writing

• the transfer must be signed by the owner, and

• the right transferred must be an exclusive one.

  EXAMPLE 1: Ruth retains at least one of the exclusive copyright rights in the book Nurse Ruth, so she remains the owner of the “copyright” as far as the U.S. Copyright Office is concerned, and continues to have her name on the notice of copyright. Although Able Publishers may own a number (but not all) of the rights and is considered a legal copyright owner, it owns only the exclusive rights transferred in the license, and is not named as owner in the U.S. Copyright Office or on the notice of copyright.

  EXAMPLE 2: Ruth decides to transfer all of her copyright rights in Nurse Ruth to Able Publishers (including the right to make derivative works). Able is the new “owner” in the U.S. Copyright Office and on the copyright notice. On the other hand, if Ruth transfers all rights to Able except the derivative works, which she transfers to someone else (her sister Edna, perhaps), Ruth will still be the “owner,” even though she has transferred all her rights to other people. This is because the U.S. Copyright Office considers the original owner to remain the owner unless all of the copyright rights are transferred together to a single person or entity.

  Although transfers can be valid without being recorded with the U.S. Copyright Office, it is better practice to record them. This record will serve as evidence in case of an argument about the scope of the rights granted. Also, the date of recordation helps determine which transfer prevails in case of overlapping transfers.

  Related terms: overlapping transfers of copyright; recordation of copyright transfers.

  

translation rights

See compulsory license; derivative work.

UCITA

The Uniform Computer Information Transaction Act (UCITA) was drafted by an organization of law professors, judges and attorneys in an attempt to create uniformity in the way in which courts treat software licenses. The Act legitimizes software licenses, making them fully enforceable, including those licenses that prevent reverse engineering of computer code. The UCITA has been adopted in different forms in only two states, Virginia and Maryland. The Act has been met with considerable opposition and has generated controversy in the software and Internet community. (In 2003, the American Bar Association refused to endorse it and many legal experts predicted the Act’s demise in coming years.)

Related terms: end-user license.

Universal Copyright Convention (U.C.C.)

This is an international copyright treaty that offers national treatment to any work first published in a U.C.C. member country or by a national of any U.C.C. country. In addition, it limits the formalities that a U.C.C. country may require to confer copyright protection. A member country may require only that the work carry this notice of copyright: “ (year of first publication) (name of the author).”

The U.C.C. also requires that each member country offer a minimum copyright duration of at least the life of the author plus 25 years. With one exception, each author is also given the exclusive right to translate his or her own work. If, however, the work is imported to another U.C.C. treaty country and not translated within seven years of the work’s original publication, the government of that country may authorize a translation into that country’s language under a compulsory licensing system (along with payment of a fair fee).

Although the U.C.C. continues to have some importance in areas not covered by the Berne Convention, the Berne Convention is normally the governing international treaty, especially since the GATT treaty provides that all of its signatories agree to be bound by the Berne Convention.

Related terms: Berne Convention; GATT (General Agreement on Tariffs and Trade); international copyright protection.

unpublished work, copyrightability of

An original work of authorship that is fixed in a tangible medium of expression but has not yet been published (made available to the general public without restriction) automatically qualifies for copyright protection. Unpublished works may be registered with the U.S. Copyright Office, but the more common practice is to wait until a work is published before registering. If the registration occurs before an infringement of the unpublished works begins, the copyright owner may recover statutory damages and possibly attorney’s fees.

Related terms: fair use, defined; published work, defined; registration of copyright, defined.

U.S. Copyright Office

Established by Congress, the U.S. Copyright Office—a branch of the Library of Congress—oversees the implementation of the federal copyright laws. It issues regulations, processes applications for registration of copyrights, accepts and (for some types of works) stores deposits made in connection with registration. The U.S. Copyright Office also issues opinions on whether certain types of items are subject to copyright protection.

The U.S. Copyright Office may be reached at:

Registrar of Copyrights

U.S. Copyright Office

Library of Congress

Washington, D.C. 20559

Information Line: 202-707-3000

Forms Hotline: [phone]

The U.S. Copyright Office also has a website (www.copyright.gov) where you can download forms and find a great deal of information.

version

See derivative work; single registration rule.

visual artists’ rights

See work of visual art.

webcasting

Webcasting is the digital audio transmission of music over the Internet. There are various types of webcasting systems: interactive sites (in which the listener requests music), passive sites (in which the station chooses the play lists), subscription sites (in which listeners pay a fee), and nonsubscription. Webcasters can also include terrestrial stations—commercial and noncommercial AM and FM radio stations—that simulcast musical programming over the Internet.

In 2002, the Copyright Arbitration Royalty Panel (“CARP”) delivered its report recommending rates and terms for the statutory license for eligible nonsubscription services. In order for these services to play recordings (including simultaneous Internet retransmissions of over-the-air AM or FM radio broadcasts), a webcaster must pay a royalty of 0.07 per song played. Simulcasts of noncommercial radio stations (AM or FM) result in a 0.02 per song royalty.

In December, 2002, the Copyright Office announced an agreement between rival webcasting groups which set rates for small commercial webcasters. Small commercial webcasters—those who meet the eligibility requirements established in 17 United States Code Sections 112 and 114—may operate under rates and terms set forth in the negotiated agreement or they may operate under the rules previously established by the Copyright Office.

website

A website is a collection of pages or documents located on the Internet. The website is usually written in a computer language known as HTML and is accessed by typing in a domain name such as www.nolo.com. Although the website is written in computer code, it incorporates, displays and performs many media, including text, photography, music, animation, sound, artwork and movies. All of these media may contain copyrightable expressions. To that extent, the website’s creator must obtain permission to use these media. The unauthorized use of these materials is an infringement unless permitted as a fair use.

In turn, a website or Web page is protected under copyright law and may be registered with the Copyright Office. The procedure for registration is established in Copyright Circular 66, which is available at the Copyright Office website (www.copyright.gov). Copyright protection for a website does not extend to the layout or “look and feel” or design of the site. In other words, the website’s style cannot be protected under copyright law. But it is possible that the style or style features may be protected as trade dress under trademark laws.

work made for hire, defined

For purposes of the Copyright Act of 1976, a work made for hire is:

• a work created by an employee within the scope of employment, or

• certain works specified in the Copyright Act (see below) created by an independent author under a written contract specifying that the project is a work made for hire.

The importance of the work-made-for-hire concept is that copyright of a work made for hire belongs either to the party who commissioned it or the employer (depending on the situation), not the party who created it.

Works made for hire most typically result when an employee authors an article, computer program or another original work of authorship within the scope of employment. This generally means that it is the kind of work the employee is paid to perform, it is prepared substantially within work hours at the workplace and it is prepared, at least in part, to serve the employer.

Unless an employer and employee agree otherwise, anything an employee creates outside the scope of employment is not a work made for hire. This is so even if the work arises out of the employee’s activities on the employer’s behalf.

EXAMPLE: Ned Sugimoto uses company time to write a training manual for his employer. The employer owns the copyright in the manual as a work made for hire. By contrast, if Ned used his own time to write the manual, Ned would own the copyright, even though the manual’s main purpose was to help Ned’s employer.

Who is an employee for purposes of the work made for hire rule? If a court determines that an employment relationship exists, even if the author is not technically employed, the work made for hire rule treats the author as an employee for the purpose of determining copyright ownership. The courts examine 11 factors to decide whether an employment relationship exists. All of the factors address who has the right to control the manner and means by which the work is created:

1. the skill required to do the work

2. the source of tools and materials used to create the work

3. the duration of the relationship

4. whether the commissioning person has the right to assign additional projects to the creative party

5. who determines when and how long the creative party works

6. the method of payment

7. who decides which assistants will be hired and who pays them

8. whether the work is in the ordinary line of business of the person who commissions it

9. whether the creative party has his/her own business

10. whether the creative party receives employee benefits from the commissioning person, and

11. the tax treatment of the creative party.

If there is no employment relationship, a work will still be considered a “work made for hire” if both parties sign a written work for hire agreement and the work fits within one of the following nine categories of works (17 United States Code, Section 101):

1. a work specially ordered or commissioned for use as a contribution to a collective work

2. a part of a motion picture or other audiovisual work, such as a screenplay

3. a translation

4. a supplementary work

5. a compilation

6. an instructional text

7. a test or answer material for a test

8. an atlas, or

9. a sound recording.

   EXAMPLE: The law firm of Elias & Stim plan to publish a series of educational texts on copyright, trademark and patent law. They hire Charles Contractor, an author who is not employed by the law firm, to write the books. For the law firm to own copyright as work made for hire, Charles Contractor will have to sign a work-made-for-hire agreement and the resulting texts must fall within one of the enumerated work made for hire categories. It’s possible that the texts may qualify as “instructional texts,” but only if they are intended to be used in day-to-day teaching activities. If the texts do not fall within one of the enumerated categories, the works will not be works made for hire even though a work-made-for-hire agreement has been signed. In that event, the only other method by which the law firm could acquire copyright ownership is if Charles granted an assignment.

The duration of copyrights on works for hire is different than on copyrights for author-owners. A copyright on a work made for hire lasts for the shorter of 75 years from the date of publication or 100 years from the date of creation.

Related terms: copyright, explained; duration of copyrights.

work of the U.S. government, public domain

All works prepared by an officer or employee of the U.S. government as part of that person’s official duties are considered part of the public domain, and are not entitled to copyright protection. This rule does not apply to state or local governmental employees.

Related terms: public domain—copyright context.

work of visual art

All art works (photos, paintings, etc.) are protected under copyright. But visual art that is produced in a single copy or limited edition of 200 copies or fewer signed and numbered copies receives special protection under an amendment to the Copyright Act known as the Visual Artists Rights Act (VARA) (17 United States Code, Section 106A).

VARA amends the Copyright Act by defining a “work of visual art” as (1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or (2) a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.

VARA incorporates certain rules developed in Europe to protect the moral rights of artists. European law grants certain rights to artists based upon moral principles. For example, the creator of a work of fine art (or the artist’s heirs) can share in subsequent sales of the work and can prevent the destruction or mutilation of a work. Under these principles, known as droit de moral, the artist’s rights continue after the sale of the art. An unknown artist who sold a work inexpensively could share in revenues if the work later appreciated in value.

The U.S. refused to recognize moral rights for most of the twentieth century. However, in order to join in an international treaty known as the Berne Convention, Congress amended the Copyright Act in 1990 to include VARA. VARA incorporates two of the features of European droit de moral—attribution and integrity. Attribution is the right to claim or disclaim authorship of a work. That is, the artist has a right to demand that credit be given or that credit be removed from an artwork. The right of integrity is the right to prevent distortion, mutilation or other modification of the work. These rights are independent of the other rights granted under copyright law.

What’s Protected & What’s Not Protected by VARA

Protected by VARA	Not Protected by VARA
A limited edition of 20 copies of a silkscreen, numbered and signed by the artist.	A silkscreen image reprinted on 1,000 posters.
A sculpture of Noah’s ark.	Miniature replicas of Noah’s ark sold by a mail-order company.

What happens if an oil painting is reproduced in a museum booklet or in a magazine review? Does that mass production remove the work from VARA status? No, the artist could still exert VARA rights over the oil painting. However, the artist could not prevent destruction or mutilation of the reprints in the booklet because these would not be covered by VARA, although they would still be covered under normal copyright principles.

Under Section 106A, the creator of a work of visual arts can prevent the “intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation.” This is the most powerful right granted under the VARA provisions. For example, if a collector buys a limited edition photograph (that is, less than 200 prints were made), the collector cannot destroy it without permission from the artist. If the work is destroyed, the artist can sue under VARA and recover damages.

The rule regarding destruction does not apply if: (1) the work was created prior to enactment of the VARA provisions on December 1, 1990; (2) the artist specifically waives the rights in a written statement signed by the artist and owner of the artwork; or (3) the destruction or modification results from the passage of time or because of the materials used to construct the work. For example, certain works such as ice sculptures and sand sculptures self-destruct and the owner would have no obligation to affirmatively prevent such destruction.

Under certain circumstances, the person who employs an artist or commissions artwork acquires copyright ownership. This principle is known as work made for hire. If artwork is created as work made for hire, there are no VARA rights. That is, although normal copyright law applies to the work, neither the artist nor the person commissioning the work can claim rights of integrity or attribution under VARA.

The rights granted under VARA—attribution and integrity—are not transferable. Only the artist can exert these rights. Although copyright protection normally lasts for the life of the author plus 70 years, the rights granted under VARA only last for the life of the artist. That is, once the artist has died, the work can be destroyed under VARA without the destroyer seeking consent from the artist’s estate.

Some states such as California have passed more comprehensive statutes regarding art preservation and resale. Under the California statute (California Civil Code Sections 986-989), for example, an artist is entitled to 5 percent of the resale of a work of fine art. These rights survive for 20 years after the death of the artist. New York and eight other states also have laws that grant certain rights to artists.

Related terms: Copyright Act of 1976, work made for hire.

World Trade Organization (WTO)

See GATT (General Agreement on Tariffs and Trade).

World Wide Web and copyright

See Internet; Digital Millennium Copyright Act.