State Bar of California California Bar Journal
Home Page Official Publication of the State Bar of California February2006
Top Headlines
Opinion
MCLE Calendar of Events
Discipline
You Need to Know
Trials Digest
Contact CBJ
PastIssues

Copyright Basics For Non-experts

A copyright primer for lawyers who don’t know much about intellectual property law

By Mitchell Zimmerman
©2006. All rights reserved.

Mitchell Zimmerman
Zimmerman

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

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

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

Just what is a copyright?

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

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

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

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

1. THE WORK OF AUTHORSHIP REQUIREMENT

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

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

2. THE ORIGINALITY REQUIREMENT

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

3. THE FIXATION REQUIREMENT

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

Benefits of registration

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

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

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

The form is a simple one and the $30 fee, trivial. Some works, like computer software and Web sites, pose more difficult issues. The Copyright Office’s review is largely ministerial, and it does not engage in the kind of substantive review characteristic of patent and trademark applications.

Owning a copy v. owning a copyright

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

Rights of copyright holders and limiting doctrines

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

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

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

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

Ownership and transfer of copyrights

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

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

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

Copyright infringement

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

Secondary liability

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

Fair use defenses

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

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

Copyright misuse

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

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

And about Speak Volumes Recovery Group . . . 

Getting back to your client, you can now explain:

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

But those are subjects for another day.

Mitchell Zimmerman is a partner in the intellectual property and litigation groups of Fenwick & West LLP, where he is chair of the firm’s Copyright Group. His practice focuses on intellectual property, managing IP risks and dispute resolution.

Certification

  • This self-study activity has been approved for Minimum Continuing Legal Education credit by the State Bar of California in the amount of one hour of legal ethics.
  • The State Bar of California certifies that this activity conforms to the standards for approved education activities prescribed by the rules and regulations of the State Bar of California governing minimum continuing legal education.

SELF-ASSESSMENT TEST

Indicate whether the following statements are true or false after reading the MCLE article on copyright law. Use the answer form provided to send the test, along with a $25 processing fee, to the State Bar. If you do not receive your certificate within four to six weeks, call 415-538-2504.

  1. Works like history textbooks are factual and not expressive; therefore they are not protected by copyright law.
  2. The fixation requirement would bar copyright protection for a 5-year-old’s painting on butcher paper, even though it looks like modern art, because such paintings are generally discarded after a short period of time.
  3. The copyrights in an original work of authorship come into existence upon fixation, but the owner cannot sue for infringement unless she registers the copyrights with the U.S. Copyright Office before the infringement begins.
  4. A consultant writes a computer program for the specific use of a company, and agrees in a writing (i) to give the company a copy of the final program on a master disk for duplication (ii) in exchange for a fixed, one-time payment instead of royalties, and (iii) that he will not supply the program to any other company or sell it himself. The consultant, not the company, owns the copyrights to the program. 
  5. A museum that is open to the public does not bar visitors from taking photographs of contemporary works of art on loan from the artist’s studio. Nonetheless, if a person makes and sells postcards from such photographs, she will infringe the artist’s copyrights.  
  6. A company that makes television shows buys a poster of the work of a contemporary artist from a museum store. The company cuts off the name of the artist and museum that were on the original poster, frames the copy and portrays it prominently in the television drama as an example of a fictional character’s work. Since the production company is the lawful owner of the copy, however, its use of the poster poses no copyright concerns.
  7. A scholar takes the basic idea from an article that appeared in an obscure journal without giving credit to the original author, but explains the concept in a completely different way. She is not liable for copyright infringement.
  8. The merger doctrine would bar copyright protection for a statement of the rules of a simple, traditional game like checkers.
  9. Henrietta clicks “I agree” to the Terms of Use of a Web site containing charts showing the scientific and common names of thousands of plants, organized by genera. The terms of use include an acknowledgement that the Web site owner holds the copyrights in the Web site, and an agreement that the user will not use any of the data found on the site for any commercial or business purpose. Henrietta copies both sets of names for 150 of those plants, reorganizes them by color and includes them in new charts found at her subscription Web site on houseplants. She is liable for copyright infringement.
  10. Oscar outlines the story and writes the script for a musical comedy and Jane composes the songs and writes the lyrics. The production flops after a week, but two years later Jane sells rights to adapt the work to a network as a drama without Oscar’s agreement. She is within her rights in doing so.
  11. Programmer Laverne is an employee of SofteeSoft who writes computer code for soft ice cream franchisees. When Laverne was hired, her supervisor told her that SofteeSoft would hold the copyrights on any software she wrote for them, but they never put it in writing. SofteeSoft owns the copyrights in the freezer temperature optimization programs that Laverne was asked to write anyway.  
  12. Toward the end of a week in which Juan was trapped in a coal mine and unable to communicate with the outside world, he wrote a short story about his experience.  (Luckily, Juan, a vegetarian, had a large store of tofu cheese sandwiches to keep him going, as well as batteries for his flashlight.) The story, which was made into an episode of the television series, True Harrowing Experiences, was strikingly similar to the treatment for a movie that Judith wrote immediately after the mine disaster began. However extensive the similarities, Juan is not liable for copyright infringement.
  13. Jay runs a swap meet and gets a percentage of all sales. He reserves the right, under the terms that all participants must sign, to bar the sale of any goods for any reason, in his complete discretion. Gina sells illegal copies of computer software at the meet and is the only merchant there who does so. Jay is not liable for Gina’s infringement because he did not know illegal software was being offered and because he did nothing to encourage Gina’s infringing sales.
  14. Amir’s sculpture of a fawn, available at Artistic Garden Castings, is substantially similar to Sofia’s naturalistic concrete fawn, which Amir admits that he saw at a garden show. But there are nontrivial differences, including the posture of the fawns. On these facts, Amir cannot be presumed to have infringed Sofia’s copyrights.
  15. Copying the entirety of a work for a commercial purpose can never be fair use.
  16. Since the copyright holder has the exclusive right to make copies of its work and has a legitimate interest in preventing licensees from creating infringing copies, the owner of the copyrights in a software program can condition use of its work on the licensee’s agreement not to create works of the same kind.
  17. If the author fails to register her work with the copyright office within three months of publication, she is ineligible for damages but can still obtain an injunction against an infringer.
  18. Nancy Nairdool rents DVDs from local video rental store Clueless Flixer, projects the DVDs in a small auditorium and charges admission to members of the public. These acts infringe the movie studio’s exclusive right to publicly display and perform the work. The studio demands that Clueless Flixer cease renting to Ms. Nairdool. If Clueless continues to do so, it will be liable as a contributory infringer.
  19. Even though “everybody” copies and redistributes all kinds of materials they find on the internet, putting works of authorship on an unprotected Web site does not mean abandoning the copyrights in them. One who copies photographs and other materials from the internet and uses them for commercial purposes therefore commits prima facie copyright infringement.
  20. Under the Copyright Act, the copyright holder has the exclusive right to determine who can use the work of authorship.
Contact Us Site Map Notices Privacy Policy
© 2022 The State Bar of California