Roy, Kiesel, Keegan & DeNicola

I. HISTORICAL BACKGROUND

In 1710, English Parliament enacted the first true copyright statute, the Statute of Anne. This
law granted copyright protection to the author, as creator of the work, rather than to the printer.
Protection was limited to a fixed term of years, after which the work would enter the public
domain, available for all to use.

In the United States, the Constitutional Convention included the power to enact copyright in
the powers of Congress:

     "The Congress shall have the 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."1

Copyrights are limited in that they may only endure for "limited times" and may only
be granted for "writings" of "authors."

The First Congress enacted a national copyright statute in 1790. Thereafter, federal copyright
law has been revised as new forms of expression develop. Major revisions of the copyright laws
occurred in 1831, 1870, 1909 and 1976. The 1976 Copyright Act, as revised, is the basic law
governing copyright today.2 The last major revisions of the copyright act took place in 1989 and
1998. In 1989, provisions were added in the Copyright Act to place the United States in accord
with the Berne Convention for the Protection of Literacy and Artistic Works, an international
treaty concerning Copyrights. In 1998, Congress enacted the Digital Millenium Copyright Act,
a first attempt to deal with copyright issues raised by the Internet. The prior 1909 act remains of
importance, as works published during the term of the 1909 act are governed, in part, by the 1909
act.

II. COPYRIGHTABILITY

Under United States copyright law, only certain types of work are subject to copyright protection. The Copyright Act specifies that copyright extends to "original works of
authorship fixed in any tangible medium of expression, now known or later developed, from
which they can be perceived, reproduced or otherwise communicated, either directly or with the
aid of a machine or device" 3. The Copyright Act expressly lists certain works as being subject
to copyright.

A. The Subject Matter of Copyright

The Copyright Act expressly identifies certain types of works, including: (1) literary works;
(2) musical works, including any accompanying words (3) dramatic works, including any
accompanying music (4) pantomimes and choreographic works (5) pictorial, graphic, and
sculptural works (6) motion pictures and other audiovisual works (7) sound recordings (8)
architectural works. Other non-listed works may also qualify for copyright.3 For instance,
while computer programs are copyrightable as literary works, computer games are copyrightable
as audiovisual works. Other listed copyrightable subject matter are compilations and collective
works.

Compilations

Copyright extends not only to works which can exist on their own, but to compilations of
such works and even to compilations of public domain material.4 The Copyright Act imposes a
three-step test for such copyrightable compilations. First, the compilation must constitute a
collection and assembling of pre-existing data or materials. Second, those materials must be
selected, coordinated or arranged in a particular fashion. Lastly, the selection, coordination
or arrangement must itself possess sufficient originality and creativity to constitute an original
work of authorship. For example, the alphabetical listing of all subscribers to a telephone
company's service, as in an ordinary "white pages" telephone directory, does not constitute a
copyrightable compilation -- no selection was made (all subscribers were listed); as such, the arrangement fails to rise to the level of "original expression" (the listings were merely ordered alphabetically). On the other hand, the anthologizing of articles on a particular subject (such as in this paper) does constitute a copyrightable compilation.

Collective works

Collections of materials, each of which is a copyrightable independent work, such as a
collection of short stories, a journal, or newspaper, are called "collective works", and are also
copyrightable.

The copyright in a compilation or collective work does not extend to protection of the
individual elements of the compilation or collective work.5 The copyright extends only to the
original expression contributed by the author of the compilation, such as the selection of articles
in an encyclopedia or compilation.

B. Non-Copyrightable Subject Matter

Copyright protects the expression of ideas fixed in tangible form, but not ideas themselves.
Thus, works that have not been fixed in a tangible form of expression, (for example,
choreographic works that have not been notated or recorded, or improvisational speeches or
performances that have not been written or recorded), are not copyrightable. Copyright will not
protect any idea, procedures, methods, systems, processes, concepts, principles, discoveries, or
devices, as distinguished from a description, explanation, or illustration.6 Copyright also does not
extend to facts or news, but only to the particular form of expression of those facts. For example,
the fact that Louisiana's ex-governor is under investigation is not protected by copyright, but a
newspaper article describing that investigation would be protectable, because the article is an
"expression" of the facts, and not the facts themselves. Copyright would not prevent anyone using
the facts, but only from copying the article about it.

Copyright does not extend to titles, names, phrases, lettering, coloring, mere listings of
ingredients or contents or, as a general rule, forms.

Merger

There are circumstances where the idea (or facts) and the expression of the idea are
indistinguishable. In this instance, no copyright protection will extend to the expression, as the
expression is considered "merged" with the idea. "Merger" has been found in a jewelry pin
made in the exact form of a bee and in the replication of realistic poses of the taxidermists art.
Generally, merger may be found when there is one or only a very limited number of ways,
to depict a particular work under consideration.

Utilitarian Works

Utilitarian works are generally not copyrightable, unless the works contain matter constituting
"original expression".7 The copyrightable subject matter must be physically or conceptually
separable from the purely utilitarian object. For example, a knife is not copyrightable, but
ornamentation on the knife's handle may be copyrightable. If that handle contains a carved deer's
head, then the carved deer's head may be copyrightable.

Government Works

Works of the United States Government are not subject to copyright protection.8
In other words, works created by government employees are common property. However, works created pursuant to Government grants or using Government funds may be copyrightable, and owned by those outside the Government who receive the funds. The actual right to copyright will depend on the regulations of the particular agency providing the grant.

III. COPYRIGHT RIGHTS

The Copyright Act grants copyright owners several exclusive rights.9 These rights include
not only the right to do the specified actions, but also to authorize others (i.e. license) to exercise
the copyright right.

The Right to Copy

The most basic copyright right is the right to reproduce the copyrighted work in
copies or phonorecords. This is the right to prevent unauthorized duplication of the work -- for
example, the printing of an article without the copyright owner's consent.

The Right to Prepare Derivative Works

Many copyrighted works serve as the basis for further works. A work which is based
substantially on a previous work is considered a derivative work; for instance, a recasting or
adaptation of a work, such as modifying a book for a screenplay, or a translation of a song from
English to Spanish, are examples of derivative works. The sequel to a book can be considered
a derivative work if the sequel employs some of the same characters or settings as the base work.
Derivative works can be a major source of income for copyright owners.

The Right of Public Distribution

The exclusive copyright rights include the right to public distribution of copies, by sale or
other transfer of ownership, or by rental, lease, or lending

The Right of Public Performance

In certain types of work, such as literary, musical, dramatic, and choreographic work,
pantomimes, motion pictures and other audiovisual works, copyright includes the right of
public performance of the work. In the case of sound recordings, this includes public performance
by means of a digital audio transmission.

The Right of Public Display

Copyright includes the right to publicly display certain types of works, notably literary,
musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural
works, including the individual images of a motion picture or other audiovisual work; pictorial,
graphic and sculptural works.

Author's Rights

The copyright law was amended effective June 1, 1991 to grant very limited additional rights to authors of certain types of works, even if they have parted with copyright ownership.10 These "authors' rights" (sometimes referred to as "moral rights") are applicable only to works of visual art which exist in single copies or multiples of up to 200. Author's rights include the right of attribution, the right to claim authorship or to disavow authorship in a mulitated work, the right of intergity, and the right to prevent distortion or mulitation of a work which is prejudical to the author's reputation. Within this limited category of works, there are many exceptions -- for example, author's rights do not apply to works made for hire.

IV. COPYRIGHT OWNERSHIP

Copyright is a property right, vesting in intangible property, the copyright. Ownership of the
copyright in a work is distinct from ownership of the material object (the copy or phonorecord)
in which the copyrighted work is embodied. The transfer of one does not constitute
transfer of the other. For example, if a painter sells her painting (that is, the material object, such
as canvas and oils), she does not automatically transfer the copyright in it. And sale of that
copyright (for example, so as to allow reproduction of the oil painting in printed posters) does not
transfer the material object.

At the outset, the intangible nature of copyright requires a distinction between the intangible
property of the copyright (called a "work") and the material object in which the copyrighted work
is, quite literally, embodied (termed a "copy" or "phonorecord," terms which include such diverse
media as paper-and-ink, computer disks, and audiotapes). Mere ownership of a book, manuscript,
painting, or any other copy or phonorecord does not give the possessor the copyright. Ownership
of the copyrighted work does not constitute ownership of the material object in which it is
embodied, and vice versa. Copyright ownership vests initially in the author or authors of the
work, but by transfer (assignment) or by operation of law (works-made-for hire) may not remain
in the author. Copyright in each separate contribution to a periodical or other collective work is
distinct from copyright in the collective work as a whole and vests initially with the author of the
contribution.

Joint Authorship

When more than one author has created a work, the work is said to be a "joint work."11 Under
the law, a joint work is one prepared by two or more authors with the intention that their
contributions be merged into inseparable or interdependent parts of a unitary whole. Thus, joint
authorship can occur when a composer and a lyricist collaborate on a song, even though their
contributions, the music and lyrics, can exist independently of each other (the music as an
instrumental, the lyrics as a poem). Two writers collaborating on an article for a journal are
similarly joint authors. The test of joint authorship is intent: the creation must be made with
the intent that the contributions be merged into one work. This intent cannot be imputed
after the fact of creation if it was not there to begin with. The authors of a joint work are
co-owners of the copyright in the work (joint ownership), unless there is an agreement to the
contrary. Each joint owner is presumed to own an undivided proportional interest in the entire
work. However, under the copyright act, each joint owner has a duty to account to the remaining
co-owners for his profits from exploitation of the copyright.

Copyright is a personal property right, and it is subject to the various state laws and
regulations that govern the ownership, inheritance, or transfer of personal property as well as
terms of contracts or conduct of business. Any or all of the copyright owner's exclusive rights or
any subdivision of those rights may be transferred, but the transfer of exclusive rights is not valid
unless that transfer is in writing and signed by the owner of the rights conveyed or such owner's
duly authorized agent. Transfer of a right on a nonexclusive basis does not require a written
agreement.

Works-Made-For-Hire

There are many instances when, although a person has created a work, that creation has been
made at the request of another. In particular instances, the person doing the creation does not own
the copyright. As an example, consider a company which manufactures software, and has one
of its employees write an instruction manual for the software. The company, and not the
employee, owns the copyright in the manual.

Such situations are governed by the work-made-for-hire doctrine of the Copyright Act.12
Ownership vests initially in the author of a work, but in "works made for hire," the law specifies
that the employer or other person for whom the work is prepared is deemed to be the author. The
copyright act specifies the contours of a "work made for hire":

A) Employee

First, a work made for hire is a work prepared by an employee within the scope of his or her
employment. Whether one is an employee or independent contractor, and whether the work was
created within the scope of employment are issues determined by the law of agency.13 Some
factors to be considered are the method of payment for services, whether taxes and the like are
withheld, where the work is done, who supplies the tools and instrumentalities for the work, the
duration of the engagement, and so on. Additionally, in a work-made-for-hire situation, the
parties may nevertheless agree in writing that the work is not a work made for hire.

B) Commissioned Work

Second, a work may be a work made for hire if it is specially ordered or commissioned, but only
if it meets the following requirements. The work must fall into one of nine categories: (1) a contribution to a collective work; 2) part of a motion picture or other audiovisual work; 3) a translation; 4) a supplementary work; 5) a compilation; 6) an instructional text; 7) a test; 8) answer material for a test; or 9) an atlas, and the parties must expressly agree in a written instrument signed by them that the work is to be considered a work made for hire.14

The circumstances under which an independently commissioned work is considered a
work made for hire are limited. As a result, the commissioning party is likely to seek a
transfer of copyright, in the form of an assignment or license.

V. COPYRIGHT REGISTRATION

Copyrightable material may be registered with the Copyright Office of the Library of
Congress. However, federal copyright protection exists from the moment a work is created, that
is, fixed in a tangible medium of expression, even if it is never registered. Copyright registration
is not required for copyright protection. However, registration provides certain benefits for
purposes of litigation.

First, in the case of works of United States authors, no lawsuit for copyright infringement
may be brought until a work is registered.15 Second, many important remedies in a lawsuit, such
as recovery of statutory damages and attorneys' fees, are not available to a copyright owner unless
registration has preceded the infringement (there is a three-month grace period from the
publication date for published works).16 Third, the certificate of copyright registration which the
Copyright Office provides is prima facie evidence of the facts it contains, and shifts the burden
of proof concerning those facts from the copyright owner to the defendant in a lawsuit.

Copyright registration is fairly easily accomplished. The copyright claimant completes a
relatively simple form, and returns it to the Copyright Office with a nominal fee and deposits
copies of the work with the Copyright Office (special provisions allow for nondisclosure of trade
secrets or full computer programs and the like in the deposit). Copies of the registration forms
are available on the Copyright Office's website, lcweb.loc.gov/copyright, including instructions
on registration and deposit requirements.

VI. LIMITATIONS ON COPYRIGHT

The copyright law contains several limitations on copyright rights and exemptions for certain
uses. We will briefly discuss the most common examples of both.

First Sale Doctrine

Although the copyright owner has the exclusive right to distribute copies to the public, the
bona fide possessor of a particular copy may, in most circumstances, further dispose of that copy
without the copyright owner's consent 17. For example, the purchaser of a book may freely
resell the copy purchased (hence, used book stores do not violate copyright law). Similarly, a
copy of a work legitimately owned may be displayed publicly, as in the case of a picture hung in
a museum. The Copyright Act has been amended to prohibit the rental of sound recordings or
computer software, even though that rental would have been permitted by the first sale doctrine.

Fair Use

Certain uses of copyrighted works which would otherwise be an infringement are excused
from liability because they are "fair." Consequently, "fair use" is a defense to copyright
infringement. Examples of fair use include: uses for purposes such as criticism, comment, news
reporting, teaching, scholarship or research.18 However, even within these examples, each case
must be judged on its particular merits and facts, and no particular use will be presumed to be a
fair use.

The Copyright Act requires the courts to consider at least four factors to evaluate whether the
use is "fair": 1) The purpose and character of the use (including whether it is of a
commercial or nonprofit educational nature); commercial use is presumptively not fair use,
although that presumption may be overcome (e.g., for legitimate parodies which do not take too
much of the copyrighted work); 2) The nature of the copyrighted work; it has been held, for
example, that use of an unpublished work is less likely to be a fair use than use of a published
work, and the use of a scholarly or scientific work more likely to be a fair use than the use of
works of pure entertainment; 3) The amount and substantiality of the portion used in relation to
the copyrighted work as a whole; the less used, and the less significant the portion used, the more
likely that fair use will be found; 4) The effect of the use upon the potential market for or value
of the copyrighted work; this has been said to be the most significant fair use factor, because any
real harm to the copyrighted work or its exploitation will defeat the purpose of copyright
protection.19 No single factor is determinative of whether the use is fair.

VII. COPYRIGHT NOTICE

Notice consists of three elements: 1) the symbol (the letter "c" in a circle) or the word
"Copyright" or the abbreviation "Copr."; 2) the name of the copyright owner; and 3) the year date
of first publication.20 Copyright law prior to March 1, 1989, contained an absolute requirement
that each copy of a published work bear a proper copyright notice. The copyright notice should
be affixed to copies or phonorecords in such a way as to "give reasonable notice of the claim of
copyright." The notice for phonorecords embodying a sound recording should contain all the
following three elements: 1) The symbol (the letter "P" in a circle); 2) The year of first
publication of the sound recording; and 3) The name of the owner of copyright in the sound
recording.

The notice formality used to be a major trap for unwary copyright owners. Before 1978,
Federal copyright was generally secured by the act of publication with notice of copyright,
assuming compliance with all other relevant statutory conditions. Unites States works in the public domain on January 1, 1978, (for example, works published without satisfying all conditions for securing Federal copyright under the Copyright Act of 1909) remain in the public domain under the 1976 Copyright Act. Failure to comply with the technicalities of the law's notice provisions resulted
in the unintentional loss of protection for works. Notice was required under the 1976 Copyright
Act. This requirement was eliminated when the United States adhered to the Berne Convention,
effective March 1, 1989. Works published without notice before that date generally have entered
the public domain in the United States, with certain exceptions. The Copyright Office has not
taken a position on whether copies of works first published with notice before March 1, 1989,
which are distributed on or after March 1, 1989, must bear the copyright notice.

Notice, however, is still required on all copies of works first published before that date.
Although copyright notice is no longer a prerequisite to copyright protection, it is still valuable
as a non-legal matter. It serves to warn off infringers and identifies the copyright owner to those
seeking a license.

"Publication," for purposes of notice, is the distribution of copies or phonorecords of a work
to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offer
to distribute copies or phonorecords to a group of persons for purposes of further distribution,
public performance, or public display constitutes publication. A public performance or display of
a work does not of itself constitute publication.

VIII. COPYRIGHT DURATION

Two different regimes of copyright duration apply in the United States: one for works first
created, published or registered for copyright on or after January 1, 1978 ("new law works"), and
one for works published or registered before that date ("old law works").21 In all cases, copyright
terms run through December 31 of their anniversary year.

Post 1978 Works

For new law works, the basic copyright term is the life of the author plus seventy years after
the author's death. In the case of joint authors, the "life" in question is that of the longest
surviving joint author.

For works where the duration of the author's life is not known -- anonymous and
pseudonymous works, and works made for hire -- the term is 95 years from publication or 120
years from creation, whichever expires first.

Pre 1978 Works

Protection for pre-1978 registered or published works endures for a dual term system. There
is an initial term of 28 years from the earlier of publication or registration, followed by a renewal
term of an additional 67 years, for a total of 95 years of protection. Renewal is automatic, but,
in the last year of that initial term, an application for renewal of copyright may be filed in the
Copyright Office, which will provide certain benefits to the renewal claimant.

The law contains a complicated provision, which case law has further elaborated, concerning
ownership of renewal rights. As a general matter, renewal rights do not vest until the last year
of the initial term, and then vest in the following individuals: 1) the author; 2) if the author is
dead, the author's surviving spouse and children, as a class; 3) if there are no surviving spouse
or children, the author's executor (i.e., for the beneficiaries under the author's will); and 4) if the
author did not leave a will, the author's next of kin under applicable state law.

Further, as a general rule, while these renewal rights may be assigned away in advance, such
advance assignments are only binding if those making them survive to the time when renewal
rights vest.22 For example, if an author assigned her renewal term rights in advance of renewal,
but died during the initial term of copyright leaving a surviving spouse at the time of renewal, her
surviving spouse owns the renewal rights and her assignment of the renewal term rights is
ineffective.

IX. INFRINGEMENT

Anyone who violates the exclusive rights of a copyright owner is liable for infringement, in
a lawsuit brought in federal court. There is a 3-year statute of limitations on copyright
infringement actions.23

Infringement Analysis

Infringement generally involves a second work which has incorporated some form of a prior
copyrighted work. Proof of copyright infringement generally requires showing that the alleged
infringer has taken or "copied" some portion of the copyrighted work. Evidence of direct copying
is rare. Consequently, proof of copying is circumstantial and is shown by a two-part test. First,
the alleged infringer must be shown to have had access to the copyrighted work. Second, the two
works must appear "substantially similiar" to their intended audience. The two parts of the
test may be balanced: while both must be present, the greater the evidence of substantial
similarity, the less evidence of access is necessary.

Infringement of rights other than that of reproduction (such as the rights of public
performance or display) are more easily proven directly by evidence of the infringing acts (for
example, by a tape recording of the infringing public performance)

Infringement can be direct, vicarious, or contributory. In "direct infringement," the accused
party is the actual infringer of copyright. In "vicarious infringement," the accused party had the
right to "direct and supervise" the actual infringer, and had an "obvious and direct financial
interest" in the infringement. In "contributory infringement," the accused party" knowingly
induces, causes or materially contributes to the infringement of another."

Remedies

A copyright owner successfully proving infringement has three types of remedies available:
recovery of monetary damages, injunctive relief, and recovery of costs including attorneys' fees.
Within the court's discretion, and subject to timely registration, the prevailing party in an
infringement suit may be awarded the costs of the litigation, including a reasonable attorney's
fee.23

Damages may be recovered in two alternative measures at the choice of the copyright owner.
First, the copyright owner is entitled to his actual damages and the infringer's profits which result
from the infringement. These measures of damage are often difficult to prove, and so the law
allows for statutory damages in the alternative (provided copyright registration has been timely
made). Statutory damages are assessed by the court, in its discretion, between $500 and $20,000
for each work infringed (and not for each act of infringement). The limits may be lowered to
$200 for truly innocent infringement, or raised to $100,000 for willful infringement.

Injunctive relief -- making the infringer stop infringing -- is often more important to the
copyright owner than recovering damages. The court may craft appropriate injunctive relief.

X. EXPLOITATION

It has often been said that copyright is a bundle of many different rights. There are many
different ways in which a particular copyright may be exploited. The law allows copyright
ownership to be divisible. That is, each of the copyright rights may be sold or exploited
separately. The owner of any particular exclusive right is deemed to be the owner of copyright
for that right. For example, the author of an article may sell the exclusive right of first
publication of that article, but nothing else, to another, and that will result in two "owners of
copyright" in that article -- the purchaser of the right of first publication, who will own only that
right, and the author, who will own all other rights.

There are two methods by which copyrights are exploited: 1) assignments or transfers or ownership of the copyright, either in whole or in part; and 2) licenses, the right to exercise a copyright right. In assignment, the purchaser becomes the outright owner of the copyright or the particular right at issue. A license is merely the permission to use the copyrighted work in the particular manner specified. While exclusive licenses constitute transfers of copyright ownership for the particular rights involved, non-exclusive licenses do not. The distinction is important because the Copyright Act requires that transfers of copyright ownership must be in writing to be valid, whereas nonexclusive licenses need not be reduced to writing.

It must also be remembered that, in the case of joint ownership of works, the joint owners
are treated as tenants-in-common. For purposes of transfer and license of the copyright, this
means that each co-owner may only transfer his own interest in the copyright, and not his co-owner's interest. Thus, a co-owner may not grant an exclusive license (which constitutes a
transfer of copyright ownership) without his co-owner's permission. But any co-owner may grant
a non-exclusive license to use the copyright without his co-owner's permission. If he does so,
however, he is subject to a duty to account to his co-owners for their proportional shares of the
profits realized by the non-exclusive license.

It was thought that due to unequal bargaining power, authors would not be able to realize the
true ultimate value of their works in initial transfers of copyright. Accordingly, the law provides
to authors or, if they are dead, their surviving spouses and children, a "termination right". Any
transfer of copyright made after January 1, 1978 by an author may be terminated between 35 and
40 years after the transfer is made, and the copyright "recaptured." The technical formalities
concerning such terminations are intricate.

Endnotes

1. U.S. Const., Art. I, Sec. 8, Cl. 8.

2. 17 U.S.C. §§101 et seq.

3. 17 U.S.C. §102(a).

4. 17 U.S.C. §103

5. 17 U.S.C. §102(b).

6. Mazer v. Stein, 347 U.S. 201 (1954).

7. 17 U.S.C. §105.

8. 17 U.S.C. §106.

9. 17 U.S.C. §106A.

10. 17 U.S.C. §201(a).

11. 17 U.S.C. §101.

12. 17 U.S.C. §411(a).

13. 17 U.S.C. §504(c).

14. 17 U.S.C. §109.

15. 17 U.S.C. §107.

16. 17 U.S.C. §401(a).

17. Copyright duration was modified by the Sonny Bono Copyright Extension Act, effective
October of 1998.

18. 17 U.S.C §302-305.

19. Steward v. Abend, 110 S.Ct 1750 (1990).

20. 17 U.S.C.§501.

21. 17 U.S.C. §502-504.

M.B. Nimmer and D. Nimmer, Nimmer on Copyright, Matthew Bender, New York, 1991 (4-vol
treatise) (the most often cited and detailed copyright treatise, updated semiannually)

The United States Copyright Office furnishes a wide variety of circulars and publications on all
aspects of copyright, as well as registration forms. All may be obtained from the United States
Copyright Office, Library of Congress, Washington, D.C. 20559. The Copyright Office
maintains a web site where much of this material is available, www.lcweb.loc.gov/copyright.

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