An Introduction To Copyrights

*Patricia Smink Rogowski is a partner in the Wilmington, Delaware law firm Connolly Bove Lodge & Hutz LLP. Ms. Rogowski is a graduate of Lehigh University (B.S.M.E., with highest honors) and the University of Pennsylvania Law School (J.D.). James M. Olsen is an associate at the firm and is a graduate of the University of Pennsylvania (B.S.M.E.), Marist College (M.B.A.), and the George Washington University National Law Center (J.D.).

This Introduction to Copyrights has been prepared to summarize briefly the U.S. law for copyrights. It was not intended to answer and does not answer all questions about registering and enforcing copyrights. Individuals should seek the advice of counsel for answers to specific questions and assistance in specific situations.

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I. An Overview
II. How to Establish Copyright Protection
III. What Cannot Be Copyrighted
IV. Copyright Ownership and Transfer
V. Copyright Duration
VI. Copyright Notice
VII. Copyright Registration
VIII. A Copyright Owner's Rights
IX. Enforcing Your Copyright--Federal Court
X. Remedies for Copyright Infringement
XI. Enforcing Your Copyright--U.S. Customs
XII. Internet Copyright Issues

.I. An Overview

• A. The United States Constitution grants Congress the power to protect copyrights:
  The Congress shall have Power To ... promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.
  U.S. Const. Art. I, Sec. 8, Cl. 8.
• B. Copyright law protects original works of authorship, including literature, art work, dramatic works, dance choreography, and computer software. Under the United States Copyright Act, copyright protection applies as soon as a work is put in a tangible form (i.e., something is written on paper, painted on canvas, recorded on magnetic tape or stored disk). Copyright ownership originally vests in the author of a work (with some exceptions) and is freely transferable. Both published and unpublished works of authors are the subject of statutory copyright protection. 17 U.S.C. § 104.
• C. A copyright does not give the author the exclusive right to the "idea" disclosed. Rather, copyright protection extends only to the "expression" of the idea. 17 U.S.C. § 102(b). For protection of the underlying idea, procedure, process, system, method of operation, concept, principle or discovery, the owner must rely upon the applicable patent, trademark, or trade secret laws.
• D. A copyright owner actually holds a series of "rights," which include the rights to prevent: (1) reproduction of a work; (2) preparation of derivative works from an original work; (3) public distribution of copies or phonorecords of the work; (4) public performance of a work; and (5) public display of a work.
• E. Exclusive rights to a copyrighted work do not arise from registration, but from creation. This is different from rights to a patent, which arise only by grant of the federal government. Copyrights are also different from rights in a trademark, which arise only from use in commerce.
• F. Since 1984 the designs of masks used to create circuitry patterns on semiconductor chips have been protected under the Semiconductor Chip Protection Act (SCPA). 17 U.S.C. §§ 901 et seq. The SCPA filled a void between copyright and patent laws that had previously been exploited by chip pirates. The SCPA is separate from the Copyright Act, and has different notice and registration requirements and provides a different term of protection.

II. How to Establish Copyright Protection

The basic elements needed to create a copyrighted work are:

• A. Original Work: Only "original works of authorship" are eligible for copyright protection. 17 U.S.C. § 102. The threshold of originality is quite low; novelty, ingenuity, or aesthetic merit are not required. "Originality" simply means that the work must be independently created and not copied from another. The author must contribute something more than a "merely trivial variation," -- he or she must contribute something recognizably his or her own. Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903); Feist Publications, Inc. v. Rural Telephone Service Co., 111 S.Ct. 1282 (1991).
  • 1. In Bleistein, the United States Supreme Court held that a chromolithograph circus poster (like a photograph) was sufficiently original to be protected by copyright. The Court refused to adopt an artistic merit test for copyrights, and stated that "it would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations."
  • 2. Mezzotint painters, who reproduce with painstaking exactitude paintings created by the old masters that are no longer protected by copyright, may obtain copyright protection for their works. Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951).
  • 3. Some factual compilations, like product catalogs, may be sufficiently original to warrant copyright protection. , 44 F.3d 61 (2d Cir. 1994). Telephone directories are not copyrightable compilations. See Feist, 499 U.S. 340 (A "garden variety" telephone directory that lists subscribers alphabetically by surname was not protected by copyright because the directory was "entirely typical" and "devoid of even the slightest traces of creativity."); Matthew Bender & Co. v. West Publishing Co., 158 F.3d 674 (2d Cir. 1998) (Publisher's additions or changes to judicial opinions in the form of information regarding parties, etc., are not copyrightable).
  • 4. Copyright will not protect "words and short phrases, such as names, titles, and slogans; familiar symbols or designs; mere variations or typographic ornamentation, lettering or coloring; mere listing of ingredients or contents." 37 C.F.R. §202.1.
  • 5. Originality need not extend to all aspects of a copyrighted work. Original adaptations or additions to prior material, whether or not already copyrighted, can be copyrighted in the name of the new author. The copyright in such a "derivative work," however, extends only to the newly added material.
• B. Fixation in a Tangible Medium. For federal copyright protection to apply, a work of authorship must be fixed in a tangible form. Unfixed works, such as oral statements or a live routine by an improvisational artist, like comedian/actor Robin Williams, are not protected. Such unfixed works may be protected by state law.
  • 1. A musical composition may be protected even if it is not reduced to sheet music. A recording of the music puts it in fixed form. Live broadcasts (e.g., concerts or sporting events) meet the fixation requirement, however, if they are simultaneously being recorded. 17 U.S.C. § 101.
  • 2. A work is protected by the copyright laws as soon as it is fixed in a tangible form. The work "must be fixed in any tangible medium of expression, now known or later developed, from which [it] can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." 17 U.S.C. § 102. Fixation of computer programs in a "tangible medium" includes storage in memory chips (ROM or RAM), disks and magnetic tape. , 714 F.2d 1240 (3d Cir. 1983).
  • 3. The "fixation" requirement encompasses unpublished as well as published works.
• C. Work of Authorship. The Copyright Act lists eight types of works of authorship which are protected under the Act. 17 U.S.C. § 102(a).
  • 1. Literary Works. Literary works are "works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia ... ." 17 U.S.C. § 101. This includes the obvious, such as books, newspaper articles, periodicals and manuscripts, and the not so obvious, such as:
    • a. Catalogs and Directories: Provided there is sufficient originality.
    • b. Computer programs: Computer programs were specifically recognized as copyrightable literary works by the Computer Software Copyright Act of 1990. Certain computer programs may also be patentable. Protection of menu hierarchies, i.e., the organization of commands in an operating system or software application in a menu structure, are uncopyrightable. Lotus Development Corp. v. Borland Int'l, Inc., 49 F.3d 807 (1st Cir. 1995), aff'd without opinion, 116 S. Ct. 804 (1996).
  • 2. Musical Works: Includes both the music and lyrics of a song, wherein lyrics fuse with the musical composition they accompany into a single copyrighted work. Although the lyrics alone could be separately copyrighted as a "literary work."
  • 3. Dramatic Works: Dramatic works, by definition, portray a story or convey some type of theme through the use of dialogue or acting. They may include accompanying music. Include theatrical plays, screenplays, works of musical theater, and opera.
  • 4. Pantomime and Choreographic Works: These are dramatic presentations without words, principally dance, but the protection does not extend to social dance steps. Nondramatic pantomimes and choreographic works are now copyrightable works in their own right.
  • 5. Pictorial, Graphic and Sculptural Works: This category includes two-dimensional and three-dimensional works of fine, graphic and applied art, photographs, prints, art reproductions, maps, globes, charts, technical drawings, diagrams and models. Unresolved is whether reproduction of pictorial or graphic works created by a digital scanner are copyrightable. Some less obvious examples are:
    • a. Labels: The printed and pictorial information on product labels can be protected if they contain more than just trademarks, short phrases (slogans) or lists of ingredients. Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541 (2d Cir. 1959). For example, detailed information concerning a product and its applications originating with the manufacturer of that product can be protected, as can drawings or photographs imprinted on the label.
    • b. Advertisements: Transwestern Publish. Co. v. Multimedia Mktg. Associates, Inc., 133 F.3d 773, 782 (10th Cir. 1998) (advertisements are copyrightable). c. Dress and Fabric Designs: It is undisputed that fabric designs, including lace designs, are copyrightable. See, e.g., Eve of Milady v. Impression Bridal, Inc., 957 F. Supp. 484, 489 (S.D.N.Y. 1997). Fabric designs are copyrightable "writings" which are distinguishable them from "useful articles" such as dress designs and clothes. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995).
    • d. Popular Art: Broadly encompasses a range of decorative or novelty items from jewelry to cemetary monuments, but copyright protects only the aesthetic aspects of a work, not its functional aspects. The design of a useful article, such as a chair, table or lamp, often is not protected by copyright, although the ornamental features on or applied to that article may be protected with a design patent.
    • e. Architectural Drawings and Plans: Technical drawings and architectural work must be registered separately. 37 C.F.R. § 202.11(c)(4).
    • f. Game Boards: But not the overall method of playing the game, only the design of the boards and pieces.
  • 6. Motion Pictures and Other Audiovisual Works: Such works include film strips, slide shows, and their electronic equivalents such as, videotape, videodisk, and interactive media. New CD-based works that contain both audio and audiovisual segments may also qualify as audiovisual works.
  • 7. Sound Recordings: Includes records, tapes, and CDs. The Copyright Office has taken the position that MIDI (Musical Instrument Digital Interface) files upon which aural sequences are recorded, unaccompanied by visual images, constitute "phonorecords" and that the output of these files constitute copyrightable "sound recordings."
  • 8. Architectural Works: Architechtural plans have been copyrightable as "pictorial, graphic and sculptural works" for some time. The Architectural Works Copyright Protection Act of 1990 brought architectural structures within the definition of "architectural works" protected by the Copyright Act in § 102(a)(8). An "architectural work" includes the overall form of the building, as well as the arrangement and composition of spaces and elements of design. However, it does not include individual standard features like common windows, doors and other staple building components. 17 U.S.C. § 101.
• D. Compilations and Collective Works: The Copyright Act allows for two types of works created from the assembly of other works: compilations and collective works.
  • 1. Compilations: A "compilation" is a work formed by collecting and assembling preexisting materials; or by selecting, coordinating or arranging data in such a way that the resulting work as a whole constitutes an original work of authorship. The copyright protection for a compilation extends only to the material contributed by the author to the work, not to the preexisting material. 17 U.S.C. §§ 101, 103(b). Databases are a specific type of compilation that may be protectible separately from its copyrightable elements if the author uses some creativity in selecting, coordinating, or arranging these elements that is not merely mechanical or dictated by logic or legal mandate. CCC Information Services, Inc., 44 F.3d 61; Feist, 499 U.S. 340.
  • 2. Collective Works: A "collective work" is a work, such an an anthology or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled together into a collective whole. A collective work is a form of compilation in which the materials collected are individually copyrightable. 17 U.S.C. § 101. In Tassini v. New York Times, six freelance writers claimed the copyright in their articles had been infringed when the defendant newspapers and magazines bought the articles and published them in printed form, then re-sold them to electronic database services. The Court found for the defendants, holding that § 201(c) of the Copyright Act permits publishers to revise collective works. The judge further stated that although the Act does not specifically anticipate the newly-developed information technologies, does not exclude the use of new media as a means of revision. 972 F. Supp. 804 (S.D.N.Y. 1997).

III. What Cannot Be Copyrighted

• A. The Copyright Act denies protection to "any idea, procedure, process, system, method of operation, concept, principle or discovery." 17 U.S.C. § 102(b).
  • 1. Ideas: Copyright protects the expression of the idea, but not the idea itself.
  • 2. Functional Aspects of Works: Copyright does not protect the functional aspect of a work of authorship. For example, the aesthetic design of a useful article (i.e., a chair or table) will not be protected to the extent it has been dictated by functional concerns.
  • 3. Facts: Facts are not copyrightable. The first person to write a book on the Civil War cannot prevent others from writing books on the war that discuss the same facts. Only the writer's own expression of those facts is protected.
  • 4. Lists of ingredients, Recipes: Recipes are not copyrightable. Publications Int'l, Ltd. v. Meredith Corp., 88 F.3d 473, 480-81 (7th Cir. 1996). The identification of ingredients necessary for the preparation of food is a statement of facts. There is no expressive element deserving copyright protection in each listing. Id. at 480. Thus, recipes are functional directions for achieving a result and are excluded from copyright protection under 17 U.S.C. § 102(b). Id. at 481.
  • 5. Blank Forms, like accounting ledgers: Copyright protection is not afforded "forms" likely because of the de minimus expression contribution of the "author" or out of concern that copyright would extended to the "system" or "method of operation."
  • 6. Typefaces: Typeface designs are not copyrightable. , 45 U.S.P.Q.2d 1827 (N.D. Cal. 1998).
  • 7. Method of Playing Games: Nevertheless, game board designs are protectible.
• B. Work of the U.S. Government: The Copyright Act denies copyright protection to works of the U.S. Federal Government or its employees in works created by its employees in the course of their official duties. 17 U.S.C. § 105. Courts have also denied copyright protection to state and federal statutes and judicial decisions. State governments and agencies are not excluded from copyright protection under Section 105.

IV. Copyright Ownership and Transfer

• A. Copyright Vests in Author: Copyright ownership in a work initially vests in the author. 17 U.S.C. § 201(a).
• B. Works Made for Hire: The work made for hire doctrine is a narrow exception to the basic rule that the creator is the owner of the copyright. If an employee creates a work within the scope of his or her employment, copyright protection will vest in the employer. 17 U.S.C. § 201(b). The definition of employee is determined under the general law of agency. Relevant factors to the inquiry include: skill required of the hired person; source of tools; location work is performed; duration of the relationship between the parties; method of payment; hired party's discretion over when and how long to work; regular business of the hiring party; employee benefits; and the tax treatment of the hired party. Langman Fabrics v. Graff Californiawear, Inc., 160 F.3d 106 (2d Cir. 1998) (citing Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989)).
• C. Commissioned Works: Where a person other than an employee is commissioned to prepare a work that may be entitled to copyright protection, copyright will vest in the author unless there is a written agreement with the proposed author acknowledging that his work is a "work for hire" belonging to the person contracting for the services.
  • 1. For example, an artist who was not an employee, but had been specially commissioned to create a statue, was held to own the copyright in the statue. The copyright rights had never been transferred from the artist to the agency in a written contract. Reid, 490 U.S. at 750-51 (Artist who created a statue depicting the plight of the homeless owned the copyright on that statue even though the party that had commissioned the statue, CCNV, had already paid him $25,000 for his efforts.).
  • 2. When commissioned to create items to be used in advertisements, brochures, or artwork, make sure that you make clear in a written agreement that you either (a) retain or (b) assign your rights to the party commissioning the work. Without a written assignment, the author/artist retains the copyright. For example, in I., 969 F.2d 1547 (3d Cir. 1992), a freelance photographer was engaged by a trade journal to layout and photograph various jewelry displays. He was paid $150 per photograph used in the journal, plus a stipend of $450 for each month in which one of his photos appeared in the journal. The Third Circuit held that the photographer was an independent contractor (not an employee of the journal) and owned the copyright on the photos. See also Kelstall-Whitney v. Mahar, C.A. No. 89-4684, 1990 U.S. Dist. LEXIS 6186 (E.D. Pa. 1990) (Agreements need to make clear that an assignment has been made, because simply describing work as work made for hire may not be supported by the facts and circumstances).
  • 3. When status as either employee or independent contractor is in doubt, and you intend to own copyright in the work, you should: (a) file 1099 Forms and use your own equipment to establish yourself as an independent contractor; and (b) have a written agreement and put the commissioning party on notice that you retain the copyright.
• D. Joint Works: A joint work is a work created by two or more authors whose respective contributions merge into a single inseparable work, e.g., two or more playrights who jointly create a play. Each author has an undivided right of ownership in the entire work, unless the joint authors agree otherwise. Oddo v. Ries, 743 F.2d 630 (9th Cir. 1984).
  • 1. If the author of a "commissioned" work refuses to assign his copyright in the work, the person or entity hiring that author may try to have sufficient involvement in the creation of the work to qualify as a joint author. The co-author would then have an undivided whole interest in any copyright that might be granted.
  • 2. With an "undivided ownership right," each joint author may authorize reproduction, distribution, publication, performance, and preparation of derivative works without permission from the other joint author.
• E. Transferring Copyright Ownership and Licensing. As set forth in greater detail below, the copyright owner actually holds an array of rights to control the reproduction, performance, distribution, display and adaptation of a work. These rights are freely transferred in whole or in part. For example, a copyright owner may transfer his performance rights and retain his distribution rights. Discrete portions of a right may also be transferred. For instance, reproduction rights may be given to produce a copyrighted book in a hard cover version, while reserving the reproduction to the paperback edition of a novel.
  • 1. Transfers of Ownership: Ownership of copyright may be transferred by assignment or exclusive license. 17 U.S.C. § 101. The transferee acquires the right to bring suit for copyright infringement. 17 U.S.C. § 201(d)(2). All transfers must be in writing and signed by the owner. 17 U.S.C. § 205. Transfers of copyright may be recorded with the Register of Copyrights at the Library of Congress. 17 U.S.C. § 205. Recordal is recommended because it provides constructive notice to the public that the transfer of ownership took place.
  • 2. Licensing: Non-exclusive rights under a copyright may be granted to multiple parties. License agreements should be in writing.

V. Copyright Duration

• A. Historic: Prior to the Copyright Act of 1976 (which took effect in 1978), copyright protection was granted for a period of 28 years, with the right to renew for an additional 28 year period. If the owner failed to renew the copyright, the work passed into the public domain after the first 28 years.
• B. Current Approach: For works created on or after January 1, 1978, the copyright term is measured by the life of the author, plus seventy years. 17 U.S.C. §§ 302(a), 305. Jointly authored copyrights endure until the end of the year of the 70th anniversary of the last surviving author's death. However, works for hire, posthumous and anonymous works have a copyright term that is the shorter of 120 years from creation or 95 years from first publication, whichever occurs first. 17 U.S.C. § 302(c). For transition between the current approach and the prior law, works that obtained copyright protection under the prior law still must be renewed at the end of a first 28 year term, but the renewal term has been increased to 67 years for a total of 95 years of protection (28 year original term plus 67 year renewal).

VI. Copyright Notice

• A. Purpose. Notice of copyright is an essential element in the protection of a copyrightable work. The notice informs the public of the name of the owner, the fact that copyright is claimed, and the date of publication (so that duration of the copyright may be determined, at least for works made for hire).
• B. Impact of International Treaty--The Berne Convention: In 1988, the Copyright Act of 1976 was amended by the Berne Convention Implementation Act. This Act made the United States Copyright Law more compatible with the Berne Convention, the world's premier copyright treaty, and allowed the United States to join the convention. The Berne Convention historically has placed much less emphasis on copyright formalities, such as notice. As a result, the Berne Implementation Act made copyright notice merely permissible, but not required. Therefore, for works published after March 1, 1989, copyright notice is not required, and failure to include the notice will not result in the loss of copyright protection. Nevertheless, there are still many advantages to including a copyright notice on a copyright-protected work. As one example, if an infringer relies on the lack of copyright notice on a work and can show he was misled by the lack of notice, he is considered an "innocent infringer" and will incur no liability for actual or statutory damages for infringement that occurred before he received actual notice of the copyright. 17 U.S.C. § 405(b).
• C. Pre-March 1989 Copyright Notice Was Mandatory: Before the effective date of the Berne Implementation Act, copyright notice was mandatory on all works published by or on behalf of the copyright owner. The absence of the notice informed the public that they were free to use the work. A failure to place notice on a "relatively small number" of publicly distributed copies may be cured by making a reasonable effort to add the notice to avoid loss of copyright. 17 U.S.C. § 405. Courts have not formed consistent standards for what is "a relatively small number" or what is "a reasonable effort."
• D. Form of Notice: Notice should be in one of the following forms (17 U.S.C. § 401):
  Copyright 1999 Connolly Bove Lodge & Hutz LLP
  © 1999 Connolly Bove Lodge & Hutz LLP
  Copr. 1999 Connolly Bove Lodge & Hutz LLP
  
  • 1. Special Notice for Phonorecords: The notice on phonorecords (the material object that embodies sound recordings such as tapes, records, CDs) uses a rather than a © (17 U.S.C. § 402): 1999 The Hub Caps.
  • 2. Errors in Name on Notice: The name used in the notice should be that of the copyright owner. An error in the name will not cause the copyright notice to be invalid, but such error may provide a defense to infringement to anyone who was misled by the error. 17 U.S.C. § 406.
• E. Placement of Notice: Prior to the Berne Act, the law provided that "notice shall be affixed to the copies in such manner and location as to give reasonable notice of the claim of copyright."
  • 1. For sound recordings, notice had to be placed on the surface of the phonorecord, or on the phonorecord label or container.
  • 2. For literary works, notice is usually placed on the first page or on the last page of the work. Do NOT bury the copyright notice in the middle of the text.
  • 3. For computer programs, notice should be affixed to the ROM, magnetic disks or other medium in which it is embodied and distributed. Documentation should include the copyright notice and a statement that the notice covers the program. If the program generates a visual display, notice should also be displayed for a short time on the screen.
  • 4. For collective works, generally the copyright notice on the collective work covers all of the separate contributions contained within the work. However, an advertisement inserted on behalf of persons other than the owner of the copyright in the collective work (e.g., any ad in a newspaper or magazine) must carry a separate copyright notice. 17 U.S.C. § 404(a).

VII. Copyright Registration

• A. Copyright registration with the Register of Copyrights at the Library of Congress is not required as a condition for obtaining a valid copyright. 17 U.S.C. § 408. Nevertheless, prompt registration is advisable. Deposit and registration requirements are set forth in 17 U.S.C. §§ 407-409.
• B. Must register before suing for infringement. A lawsuit for copyright infringement in the United States cannot be filed until a completed application for registration has been received by the Register of Copyrights.
• C. Registration as Evidence. If registration is obtained within five years of the first publication of the work, it constitutes prima facie evidence of the validity of a copyright. As a consequence, the accused infringer in a lawsuit will have a more difficult burden to prove that the copyright is invalid.
• D. Opportunity to Recover Statutory Damages/Attorneys Fees: The Copyright Act provides for awards of statutory damages and recovery of reasonable attorneys fees as an incentive for copyright owners to enforce their rights. Such damages and fees, however, cannot be recovered from an infringer unless a registration (not just an application for registration) has been obtained prior to commencement of the infringement or within three months after first publication of the work. Failure to obtain prior registration does not prevent an award of actual damages for the earlier (pre-registration) infringement, but in many instances the actual damages are difficult to calculate and the statutory damages might have been preferable.
• E. Registration Requirements
  • 1. Forms Provided By Copyright Office: The Copyright Office supplies forms and instructions to be used when seeking registration of a copyrighted work (see Copyright Office web site at http://lcweb.loc.gov/copyright/). These forms include:
  TX -- for published and unpublished non-dramatic literary works, including computer programs;
  PA -- for published and unpublished works of the performing arts, e.g., motion pictures and other audiovisual works;
  VA -- for published and unpublished works of the visual arts, such as pictorial, graphic and sculptural works;
  SR -- for published and unpublished sound recordings;
  SE -- for serials such as newspapers, magazines, newsletters, annuals, journals, etc.; and
  GATT -- for restored works (in public domain in U.S. but protected in source country) under the Uruguay Round Agreement Act (URAA).
  
  • 2. Where to Send Form, Fee and Deposit: The completed application for registration along with a thirty dollar filing fee (check or money order made out to the Register of Copyrights) and, for published works, two copies of the copyrighted work ("the deposit") should be sent to:
  Library of Congress
  Copyright Office
  101 Independence Avenue, S.E.
  Washington, D.C. 20559-6000.
  
  • a. Deposit Requirement: The deposit required for most copyrighted works is two copies of the material being registered. For bulky material, such as sculptural works, photographs may usually be substituted. Only one copy of an unpublished work needs to be submitted.
  • b. Computer Programs: The deposit required for computer programs, which cannot be perceived without the aid of a machine (computer), is two copies of a visually perceptible version of the program to be copyrighted. However, for lengthy programs, the deposit typically consists of the first and last 25 pages of the program printout, along with the page of the program containing the copyright notice.
  • c. Fee Amount: On July 1, 1999, the Copyright Office adjusted its fees to the thirty dollar fee, effective through June 30, 2002. The Technical Amendments Act of 1997 authorized the Register of Copyrights to increase fees, but required a study of the cost-providing services to the public. Thus, copyright fees can be adjusted any time by the Copyright Office.
• F. Effective Date of Registration: Registration is effective on the date when all of the required application materials are received in the Copyright Office, provided that the application is not later refused by the Register of Copyrights. 17 U.S.C. § 410(d).

VIII. A Copyright Owner's Rights

• A. Section 106 of the Copyright Act provides a copyright owner with the rights to prevent:
  reproduction of the work;
  preparation of derivative works from the work (the "adaptation right");
  public distribution of the work;
  public performance of the work;
  public display of the work; and
  public digital performance of a sound recording.
  The rights may be limited by specific exceptions and qualifications. 17 U.S.C. § 107-119. For example, specific exceptions apply to public performances of works by educational institutions, religious organizations and fraternal organizations. A more general and more vague exception is the doctrine of fair use of copyright.
• B. The Reproduction Right: The reproduction right allows a copyright owner to prevent reproduction of all or part of her work by any means, including, for example, a photocopy. American Geophysical Union v. Texaco, Inc., 37 F.3d 881 (2d Cir. 1994). Copies can include data storage devices, disks, hard drives, or, according to some court, computer RAM. In the Texaco case, Texaco's scientists infringed the copyright rights of the publisher of scientific journals. The scientists had lawfully purchased the journal, but had then, without permission from the publisher, proceeded to photocopy entire articles from the journal to keep in their personal files for reference purposes. Texaco's fair use defense was rejected. To avoid infringement liability, Texaco could have paid license royalties to the Copyright Clearance Center (CCC), an organization that collects and distributes copyright license royalties to publishers.
  • 1. Not-for-profit libraries and archives are generally permitted to make limited reproductions (photocopies) of copyrighted works under the guidelines set forth in 17 U.S.C. § 108.
  • 2. Limited copies of computer programs can lawfully be made for archival purposes or "as an essential step in the utilization of the computer program in conjunction with a machine." 17 U.S.C. § 117.
• C. Derivative Works Right: Section 106(2) of the Copyright Act grants the copyright owner the exclusive right "to prepare derivative works based upon the copyrighted works." A "derivative work" is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent any original work of authorship, is a derivative work. 17 U.S.C. § 101. The copyright in a derivative work extends only to the original contribution of the author, which must be something more than a trivial variation. Generally, only a copyright owner has the right to prepare a derivative work based upon the copyrighted work. Therefore, one must consider whether there is a preexisting copyright in the original work before proceeding to create a derivative work.
• D. U: The distribution right gives the copyright owner the right to control distribution of a work to the public by sale, rental, lease, or lending. The distribution right is limited by the first sale exception. Once a copy of a work is sold, the distribution right as to that particular copy is terminated. 17 U.S.C. § 109(a). For example, the owner of a book does not violate a copyright owner's distribution right if she sells that copy of the book to someone else. Likewise, a video rental store can distribute the videotapes it lawfully buys, either by sale or rental. The first sale exception, however, only applies to "sales." If the copyright owner leases or rents, versus sells, his copyrighted work, he retains his right to control future distribution of that work. Most films are leased rather than sold to distributors and theaters. In addition, many copyrighted computer programs are now leased, rather than sold.
• E. The Public Performance Right: A copyright owner has the right to control the public performance of certain types of copyrighted works. There is no right to control private performances. The Copyright Act also carves out a wide range of exceptions to the performance right for educational institutions, religious organizations, public broadcasting companies, and performances for the disabled. There are three categories of public performances: (1) performance at a place open to the public; (2) performance by transmitting to a place open to the public; or (3) performance to an audience that may be geographically or temporally dispersed or both.
  • 1. To illustrate, showing a rented video in your home to family and friends normally would not violate the performance right, unless, for example, you publicly advertised and charged an admission. By contrast, displaying a movie video in a viewing booth at a video store open to the public would constitute a public performance, even if each viewing only was shown to family and friends. , 568 F. Supp. 494 (W.D. Pa. 1983), aff'd, 749 F.2d 154 (3d Cir. 1984).
  • 2. The Copyright Act does not grant a performance right in sound recordings. The underlying musical composition, however, still has a performance right. The owner of a nightclub that plays tapes and CDS of copyrighted music over its sound system, does not violate the performance right in the fixed sounds on the tapes or CDs, but does infringe the performance rights of the copyright owner in the musical compositions which are played. The nightclub owner may obtain the right to perform such "musical works" by taking licenses with the performing rights societies, such as ASCAP and BMI.
• F. The Public Display Right: All copyright owner's enjoy the exclusive right of public display. To display a work means to show a copy of it, either directly or by means of film, slide, television image, or any other device or process.
• G. The Public Digital Performance of a Sound Recording Right: Provides limited public digital performance rights in sound recordings. Right pertains only to public performances by digital transmission. Excludes on site performance (direct playback, without transmission, of a sound recording in a place open to the public) and analog transmissions (such as conventional, analog terrestrial radio broadcasts). 17 U.S.C. §§ 106, 114, 115.
• H. Visual Artists Rights Act: Since October 1990, the author of a copyrighted work of visual art has the rights to have a work attributed to the artist and to "prevent any destruction of a work of recognized stature." 17 U.S.C. § 106A(a)(3)(B). This law was enacted to prevent destruction of works of art where such destruction might be considered a significant societal loss. Carter v. Helmsley-Spear Inc., 861 F. Supp. 303 (S.D.N.Y. 1994), rev'd in part, 71 F.3d 77 (2d Cir. 1995).
  • 1. A work of visual art is defined by the Act as "a painting, drawing, print, or sculpture, existing in a single copy" or in a limited edition of 200 copies or fewer.
  • 2. The concept of artists' moral rights led up to passage of the statute. Because they are personal to the artist, moral rights exist independently of an artist's copyright in his or her work. Moral rights encompasses many varieties of rights, with two being protected in nearly every jurisdiction: attribution and integrity. The right of attribution generally consists of the right of an artist to be recognized by name as the author of his work or to publish anonymously or pseudonymously, the right to prevent the author's work from being attributed to someone else, and to prevent the use of the author's name on works created by others, including distorted editions of the author's original work. The right of integrity allows the author to prevent any deforming or mutilating changes to his work, even after title in the work has been transferred.
  • 3. Excluded works: works made for hire; most graphic works such as posters, technical drawings, and applied art; art in books, newspapers and periodicals; advertising and packaging; audio-visual works and motion pictures.
• I. Limitations on Owner's Rights: Sections 107-120 of the Copyright Act limit the copyright owner's rights. The most important of these exceptions are fair use and first sale doctrine.
  • 1. Fair Use: Fair use provides that what would ordinarily be an infringement of copyright is not because it meets certain criteria that make the use "fair". Fair use is most clearly applicable to scholarly works or criticisms that briefly quote from an earlier work that is being critiqued. Section 107 of the Copyright Act list the factors to consider in making a fair use analysis, which include:
    • a. the purpose and character of the use of a copyrighted work -- is the use primarily to promote education or to commercially exploit the work? The copying of a copyrighted work for a commercial or profit-making purpose is presumptively unfair;
    • b. the amount and substantiality of the portion of the copyrighted work used -- did the later work copy whole chapters or just one or two lines? Did the later work misappropriate the "heart" of the copyrighted work?;
    • c. the effect of the use on the potential market for the copyrighted work -- has the later work profited at the expense of sales of the copyrighted work? Actual harm need not be shown, only that a meaningful likelihood of future harm to the potential market for the copyrighted work exists; and
    • d. the nature of the copyrighted work -- The law recognizes a greater need to disseminate factual works than works of fiction or fantasy. Moreover, the owner of an unpublished copyrighted work has a strong interest in being the first to publish that work. Depending upon the circumstances, an unauthorized publication of that work is likely not a fair use.
    • e. The "fair use" doctrine may prevent liability for unauthorized use of a work. 17 U.S.C. § 107. Nevertheless, the following court decisions illustrate where the court found infringement despite the allegation that a use was "fair":
      • (1). A magazine publisher's use of excerpts from Gerald Ford's unpublished copyrighted manuscript relating to the Nixon pardon was an abrogation of the copyright owner's right of first publication, and was not a fair use. Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985).
      • (2). In Basic Books, Inc. v. Kinko's Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991), a group of major publishing houses successfully sued a chain of photocopying stores for copyright infringement. Kinko's had copied excerpts from text books, compiled them into "course packets" and sold them to college students. In finding that Kinko's photocopying was not fair use, the court emphasized the commercial nature of Kinko's copying, and that the copying did not add any value to the work, as would a biographer's or critic's use of a copyrighted quote or excerpt. Kinko's was later ordered to pay $510,000 in damages and $1,365,000 in attorneys' fees and costs.
      • (3). In Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), the Supreme Court held that 2 Live Crew's unauthorized use of certain material from Roy Orbison's copyrighted song "Oh, Pretty Woman" in a parody version was a fair use.
  • 2. First Sale Doctrine: The first sale doctrine specifies that a copyright owner's exclusive right to distribute a copy of a work may be extinguished when such a copy is lawfully acquired by another, such as by sale, rental, lease or lending. See, e.g., Quality King Distributors, Inc. v. L'anza Research Int'l, Inc., 118 S. Ct. 1125 (1998) (under certain circumstances, a copy of a copyrighted work that is sold abroad under license by a U.S. copyright owner can be re-imported into the United States by a third party for sale pursuant to the first sale doctrine).
  • 3. State Sovereign Immunity: In 1992, Congress amended the patent laws and expressly abrogated the State's sovereign immunity from claims of patent infringement. Recently, the Supreme Court held that the statute could not be sustained due to lack of federal jurisdiction over unconsenting States, and the lack of an identified pattern of patent infringement by the States. Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 119 S. Ct. 2199 (1999). Although not specifically stated in College Savings Bank, State sovereign immunity to copyright infringement claims should also be upheld since Congress will be hard-pressed to establish a pattern of copyright infringement by the States. Thus, copyright owners will not be able to bring a suit for infringement against a State.

IX. Enforcing Your Copyright--Federal Court

• A. Violation of one of the copyright owner's exclusive rights constitutes copyright infringement, unless one of the limitations on the rights is available as a defense. A copyright infringement action may be filed only in Federal Court. 28 U.S.C. § 1338. The plaintiff (copyright owner) in an infringement action must prove that he owns a valid copyright and that the protectible portions of the copyrighted work have been infringed ("unlawfully copied"). Sid & Marty Krofft Television v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977). As noted above, a copyright registration constitutes prima facie evidence that the copyright is valid, if registration was made within five years of the first publication of the work. Infringement can be either: (1) direct: infringer directly infringes the copyright; (2) contributory: direct infringement by another and contributory infringer knowingly renders assistance to the direct infringer; or (3) vicarious: direct infringement by another, vicarious infringer receives direct financial benefits from the direct infringer, and vicarious infringer has the right and ability to supervise the infringing activity.
• B. Actual Copying of the Work is an Infringement: A person who copies the protectible elements of the copyrighted work may be liable for infringement. A person who independently creates a work is not liable, even if the later work is identical to the copyrighted work. Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp. 25 F.3d 119 (2d Cir. 1994).
• C. Proving Copying: Direct evidence of copying is seldom available. Copying is usually established by circumstantial evidence--proof of access to the copyrighted work, and proof of the substantial similarity between the copyrighted work and the accused work. All that is needed to establish "access" is the opportunity to see the work. Kenbrooke Fabrics, Inc. v. Holland Fabrics, Inc., 602 F. Supp. 151 (S.D. N.Y. 1984). What constitutes "substantial similarity" varies somewhat from case to case. More difficulties arise when the accused work is not exactly the same as the plaintiff's work. The copyright owner must demonstrate similarity in both idea and expression. Krofft, 562 F.2d at 1164. The similarities must relate to the protectible material in the copyrighted work. The fact that a work is copyrighted does not means that all parts of it are protected. Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994).

X. Remedies for Copyright Infringement

• A. Injunction: Continued infringement can be prevented by obtaining an injunction from a Federal Court. The injunction will be effective throughout the United States and its territories. 17 U.S.C. § 502.
• B. Impoundment: Any Federal Court can impound infringing articles and any masters or plates from which they are made. This remedy may be available prior to a final determination of infringement. 17 U.S.C. § 503(a).
• C. Destruction of the Infringing Articles: A Federal Court can order destruction of the infringing materials or destruction of the means used to make the infringing materials as part of its final judgment. 17 U.S.C. § 503(b).
• D. Actual Damages and Infringer's Profits: The copyright owner can recover actual damages suffered by her, as well as any profits of the infringer attributable to the infringement. 17 U.S.C. § 504(a) and (b); In Design v. K-Mart Apparel Corp., 13 F.3d 559 (2d Cir. 1994).
• E. Statutory Damages: If actual damages or an infringer's profits are difficult to ascertain or are a small amount, the copyright owner may, at any time before final judgment, elect to recover statutory damages. Infringement of any one copyrighted work by any single infringer entitles the copyright owner to statutory damages of $500 to $20,000. The amount of the award is determined by the Court. If willful infringement is shown, the statutory damages award can be increased to $100,000. Conversely, if the infringement is determined to have been "innocent", the minimum statutory award can be reduced to $200. 17 U.S.C. § 504(c). In 1998, Section 504 was amended to add subsection (d), which provides for additional damages in certain cases, and states:
  ... In any case in which the court find that a defendant proprietor of an establishment who claims as a defense that its activities were exempt under section 110(5) did not have reasonable grounds to believe that its use of a copyrighted work was exempt under such section, the plaintiff shall be entitled to, in addition to any award of damages under this section, an additional award of two times the amount of the license fee that the proprietor of the establishment concerned should have paid the plaintiff for such use during the preceding period of up to 3 years.
• F. Attorneys Fees and Costs: The Federal Court has discretion to award attorneys fees and litigation costs to the prevailing party. 17 U.S.C. § 505. The trend has been to award such fees to prevailing copyright owners as an incentive for plaintiffs to enforce their copyright rights. Micromanipulator Co., Inc. v. Bough, 779 F.2d 225 (5th Cir. 1985).
• G. Criminal Sanctions: Any willful infringer for profit is subject to criminal prosecution for that infringement. 17 U.S.C. § 506.
• H. Any person who innocently infringes a copyright in reliance upon an unauthorized copy from which the copyright notice was omitted and which was publicly distributed by authority of the copyright owner before March 1, 1989, incurs no liability for actual or statutory damages for any infringing acts committed before receiving notice that registration has been made, if such person proves that he was misled by the omission of the notice. 17 U.S.C. § 405(b).

XI. Enforcing Your Copyright--U.S. Customs

• A. Once your copyright has been registered with the Library of Congress, you may record that registration with the U.S. Customs Service. Customs charges a recordal fee (approximately $190 for each copyright). The recordal remains in effect for twenty years or until copyright ownership expires. Customs copyright recordals may be renewed for additional twenty year terms. 17 U.S.C. §§ 602-603; Customs Regulations Part 133.
• B. Once the copyright has been recorded with Customs, Customs has the authority to deny entry to, or seize, goods that infringe upon the recorded right.
• C. Customs does not provide a standard form for recording a copyright registration. However, the Customs regulations set out in detail the types of information that must be included in an application. For example, the copyright owner must identify by name and address any foreign individuals or business entities that are authorized to manufacture genuine copies of the protected work.

XII. Internet Copyright Issues

• A. Copyrights and the Internet: The Internet focuses attention on some new issues: the liability of distributors; the responsibilities of authors or producers to give notice of their claims when distribution occurs without the circulation of actual copies; and the effect of public expectations on the application of fair use to mass electronic distribution.
• B. The Digital Millenium Copyright Act (DMCA): The DMCA implements the WIPO treaties signed by the United States in 1996. The DMCA was signed into law on October 28, 1998, and goes into effect on October 28, 2000.
  • 1. Measures to Prevent Unauthorized Access to or Copying of Copyrighted Works: 17 U.S.C. § 1201 provides measures to prevent unauthorized access to or copying of a copyrighted work, subject to the fair use defense. Making or selling devices or services used to circumvent either category of technological measure is prohibited under the DMCA.
    • a. Exceptions: Certain entities are exempted from liability under Section 1201, including:
      • (1) Law enforcement: 17 U.S.C. § 1201(e).
      • (2) Nonprofit library archives and educational institutions: 17 U.S.C. § 1201(d).
      • (3) Reverse engineering: Under 17 U.S.C. § 1201(f), one who has the lawful right to use a copy of a computer program may identify and analyze the program elements necessary to achieve interoperability with other programs.
      • (4) Prevent minors from having access to Internet material: 17 U.S.C. § 1201(h).
  • 2. Copyright Management Information Protection: 17 U.S.C. § 1202 protects integrity of copyright management information ("CMI"), such as data identity, name of the work, owner, etc. Knowing distribution of false CMI is prohibited if done with an intent to facilitate infringement. Knowing removal or alteration of CMI is also prohibited.
  • 3. Criminal Penalties: It is a criminal offense to willfully violate §§ 1201 or 1202 for the purpose of private financial gain. Penalties range from a $500,000 fine or up to five (5) years imprisonment for a first offense. 17 U.S.C. § 1204.
  • 4. Online Copyright Infringement Liability Limitation: 17 U.S.C. § 512 provides new limitations on liability for copyright infringement by online service providers ("SP") who provide the following services: (1) transitory communications for others (e-mail); (2) system caching (storing copies for later repeat use); (3) storage of information on systems or networks at the direction of users (web sites); and (4) information location tools (search engines).
    • a. Other Defense Available: Even if the SP does not qualify for any of these § 512 limitations, the SP may still defend on other grounds available to copyright defendants, such as fair use.
    • b. Termination Policy Mandated: The SP must adopt and implement a policy to terminate accounts of subscribers who are repeat infringers. The SP must accommodate and not interfere with standard technical measures. With regard to the storage of information limitation, the SP must: (1) not know about infringing activity; (2) expeditiously take down or block access to alleged infringing material upon receiving proper notice of a claimed infringement; and (3) file with the Copyright Office a designation of an agent for notice of claimed infringement.
    • c. Copyright Owner's Notice Requirements: Under the notice and takedown procedures, a copyright owner submits a notice under penalty of perjury to the SP's designated agent. This notice should include:
      • (1) Signature by copyright owner, or those authorized to act for owner;
      • (2) Identification of the copyrighted work claimed to be infringed;
      • (3) Identification of the material claimed to be infringing together with information reasonably sufficient to permit the SP to locate the material;
      • (4) Information reasonably sufficient to permit the SP to contact the complaining party;
      • (5) A statement that the copyrighted material identified is being use in an unauthorized manner; and
      • (6) A statement that the information in the notice is accurate.
    • d. No Monetary Liability for Service Provider: If after receiving the notice the SP promptly removes or blocks access to the material identified in the notice, the SP shall be exempt from monetary liability to the copyright owner or to the SP's customers.
    • e. Safeguards Built into 17 U.S.C. § 512(g): The SP must notify its customer (subscriber) that it has removed or disabled access to the material. If the subscriber serves a counter-notification, complying with requirements including a statement under penalty of perjury, that the material was removed by mistake, then the SP must reactivate the material within 10 to 14 business days after the counter-notification, unless the copyright owner files a court action against the subscriber before that time. Knowing material misrepresentations in the notice or counter-notice will subject that person to penalties, i.e., liability for any resulting damages, including costs and attorneys fees incurred by the opponent.
• C. Recent Internet Case Law: The Courts in recent years have grappled with how best to balance the rights to open access and free speech on the Internet with the rights of copyright owners. The DMCA should assist in establishing a more uniform application of the law.
  • 1. Playboy Enterprises v. Frena, 839 F. Supp. 1582 (M.D. Fla. 1993). Frena's use of 170 images from Playboy magazine on his for profit electronic bulletin board service was not a "fair use" and violated Playboy's copyright.
  • 2. Religious Tech. Ctr. v. Netcom On-Line Comm. Servs., Inc., 907 F. Supp. 1361 (N.D. Cal. 1995). The court held that a bulletin board service should not be held directly liable for copies automatically made as part of the necessary process of forwarding messages.
  • 3. Tassini v. New York Times, 192 F.3d 356 (2d Cir. 1999). Six freelance writers claimed the copyright in their articles was infringed when the defendant newspapers and magazines that bought the articles and published them in printed form, then re-sold them to electronic database services without permission. The district court disagreed, holding that the § 201(c) of the Copyright Act permits publishers to revise collective works, and does not exclude use of new media as a means of revision. On appeal, the Second Circuit Court of Appeals reversed and held that the writers had not transferred the right to publish their works in electronic form.
  • 4. Recording Indus. Ass'n of America, Inc. v. Diamond Multimedia Sys., 29 F. Supp. 2d 624 (C.D. Cal. 1998), aff'd, 180 F.3d 1072 (9th Cir. June 15, 1999). The Court refused to enjoin the sale of a device (the RIO) for storing music in its MP3 format (compression technology that reduces the size of audio files by a factor of ten, with little or no loss in music quality). MP3 format has facilitated the rapid spread of Internet sites that feature digitized music for downloading, typically copied from CDs. On appeal, the Ninth Circuit Court of Appeals affirmed the decision and held that a device which downloads MP3 files from a computer is not a digital audio recording device subject to the restrictions of the Audio Home Recording Act of 1992. This suit was settled by the parties on August 4, 1999.
    A consortium of more than 120 companies in the music, computer, online and consumer electronics industries known as the Secure Digital Music Initiative (SDMI) is attempting to mandate SDMI-compliant Internet music players and services. It is hoped that SDMI-compliant Internet music players and services will enable distributors to program controls in music files that prevent redistribution.