Copyright

Historical Background

American copyright law can be traced back to England and, specifically, the Statute of Anne¹ passed by Parliament in 1710 to recognize and protect the rights of authors. From the 1400s on, English printers and publishers were concerned about preventing competitors from pirating their works. These efforts culminated with the Act of Parliament that recognized the right of authors to ownership of their original works but, of interest for subsequent American copyright law, recognized such rights for only a limited amount of time (generally 14 years, with the possibility of renewal for an additional 14 years).

British law, including the law of copyright, formed the basis of American colonial law and it is, therefore, not surprising that when the framers of the United States Constitution drafted that document, they included authority for federal copyright law in Article I, Section 8 of the Constitution. This section gives Congress authority to grant a limited monopoly to “authors” that enables them to profit from their “writings” as an inducement for them to contribute to the “useful Arts.”² Today, copyright protection by extension applies not only to authors, but to artists, photographers and others who produce original creative works.

Congress enacted the first federal copyright statute in 1790, one year after the Constitution was ratified and a year before the Bill of Rights took effect. The nineteenth century brought many revisions to the federal copyright scheme embodied in numerous revisions of the statute. What developed was a two-tiered system, with the federal statute protecting mainly published works and state common law governing unpublished works.

That all changed when, pushed by technological innovations, the Copyright Act of 1976 took effect and the pieces of what was once a colossal mess were assembled into some long-needed order. The 1976 Act, which is the basis for copyright protection today, brought significant changes; even the premises of the old and new statutes are at odds. As Kitch and Perlman noted, “[u]nder the old law, the starting principle was: the owner shall have the exclusive right to copy his copies. Under the new, the principle is: the owner shall have the exclusive right to exploit his work.”³ The new law clearly was designed to be an author-oriented statute that offers tremendous protection to the creators of original works of authorship.

Creation of Copyright

Any attorney practicing copyright law can verify that one of the most common questions clients ask is: “What do I need to do to copyright this great idea I have?” Often, the “shocking” answer is: “Sorry. You can’t copyright an idea; you can only copyright your expression of that idea.”

A work cannot be copyrighted if it exists only in the mind of the creator; it is created under the current copyright statute “when it is fixed in a copy or phonorecord for the first time.”⁴ Once it is fixed in a tangible medium, the protection begins. When a work is developed over time, the portion that is fixed at a particular time is considered the work at that time. For instance, the copyrighted portion of this book at the time these words are being written on the word processor is everything written thus far to the end of this sentence. If a work is prepared in different versions, each version is a separate work for purposes of copyright. The first edition of this book is considered a separate work from the second edition and so on.

Probably the most important difference between the old and new copyright statutes is the point at which copyright protection begins. Under the 1909 federal statute, federal copyright protection generally could not be invoked until a work had been published with notice of copyright. There were a few exceptions to this rule, but unpublished works were basically protected only under state law, or what was known as common-law copyright. Common-law copyright certainly had some advantages, including perpetual protection for unpublished works, but with each state having its own common law, there was little uniformity.

The 1976 Copyright Law solved this problem easily: copyright exists automatically “in 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.”⁵ No registration is necessary. No publication is required. Not even a copyright notice has to be placed on the work for it to be copyrighted. The copyright exists automatically upon creation.

This is one of the most misunderstood aspects of copyright by advertising and public relations professionals who wish to make use of the creative works of others—a work is copyrighted the very second it is created in a tangible medium. Nothing could be simpler. No hocus-pocus, smoke and mirrors or other magic. Not even a government form to complete.

“Fixing” an Idea

When does an idea become a work actually fixed in a medium? According to Section 101:

Suppose an enterprising skywriter composes a love poem in the sky to her fiancé during halftime of the Super Bowl. A few miles away, another romantic scribbles in the ocean sand the opening of a modernized version of the great film epic, Beach Blanket Bingo. Can these two original works of authorship be copyrighted? Both face a major obstacle—they are not yet fixed in a tangible medium of expression. Almost as soon as the love poem is written in the sky, it evaporates into thin air. Its transitory nature prevents it from being “fixed” for purposes of copyright. The same holds true for the film’s opening sequence written in the sand because it ends up being washed away by the tide.

How does one “fix” these creative efforts? An easy way is to write them on a piece of paper or perhaps photograph or videotape them before they fade. But won’t paper eventually deteriorate? Fixation does not require permanency; only that the medium be sufficiently permanent or stable to allow it to be perceived, copied or otherwise communicated for more than a transitory duration.

Similar Ideas

Suppose two people have a similar idea and both express it in tangible terms. Can the one who first fixes the idea in a creative work prevent the other from profiting from his or her later efforts if the idea is the same but the creative efforts appear to be independent of each other?

In Hoehling v. Universal City Studios, Inc.,⁷ a federal appellate court ruled that Universal had not infringed on the copyright of A.A. Hoehling’s book, Who Destroyed the Hindenburg?, in a movie about the explosion of the German dirigible at Lakehurst, New Jersey, in 1937. The film was based on a book by Michael Mooney published in 1972, 10 years after Hoehling’s work. Both books theorized that Eric Spehl, a disgruntled crew member who was among the 36 people killed in the disaster, had planted a bomb in one of the gas cells. Although the 1975 movie, which was a fictionalized account of the event, used a pseudonym for Spehl, its thesis about the cause of the tragedy was similar to that in Hoehling’s book. (Investigators concluded that the airship blew up after static electricity ignited the hydrogen fuel, but speculation has always abounded about whether this was the actual cause.)

A federal district court judge issued a summary judgment in favor of the defendant, Universal City Studios, and a federal circuit court of appeals upheld the decision. According to the appeals court:

Hoehling claimed there were other similarities, including random duplication of phrases and the chronology of the story, but the court saw no problem with such overlap.

A more recent example of idea versus expression of idea involved the 2007 copyright infringement lawsuit filed against Jessica Seinfeld, perhaps best known as the wife of comedian Jerry Seinfeld. The plaintiff, author Missy Chase Lapine, claimed that Seinfeld’s book, Deceptively Delicious: Simple Secrets to Get Your Kids Eating Good Food, infringed her earlier-published cookbook, The Sneaky Chef: Simple Strategies for Hiding Healthy Foods in Kids’ Favorite Meals. A federal judge dismissed the suit, finding that the works themselves, though based on similar ideas, were very different.⁹

Protected Works

Under Section 102, copyright protection 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.” This section enumerates seven categories under works of authorship: (a) literary works; (b) musical works, including any accompanying words; (c) dramatic works, including any accompanying music; (d) pantomimes and choreographic works; (e) pictorial, graphic and sculptural works; (f) motion pictures and other audiovisual works; and (g) sound recordings.¹⁰

Section 102(b) notes that copyright protection does not extend to “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”¹¹ As discussed in other chapters, some of these items may enjoy protection as trademarks, trade secrets or patents, but they cannot be copyrighted even though works in which they appear can be copyrighted.

In the case of compilations or derivative works, Section 103 specifies that only the material contributed by the author of a compilation or derivative work is granted new copyright protection; any preexisting material used in the derivative work or compilation does not gain additional protection, but maintains the same protection it had originally. In other words, you cannot expand the protection a work originally was granted by using it in another work such as a derivative work or compilation.

Section 101, which contains definitions of terms in the statute, defines a compilation as: “… a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.”¹² Compilations also include collective works, defined as: “… a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.”¹³

A derivative work is defined as:

Unprotected Works

People unfamiliar with the law wrongly assume that any creative work can be protected by copyright. Although the 1976 statute is broad, certain types of works do not fall under its wings. The most obvious example is a work that has not been fixed in a tangible medium. But, as discussed above, the Act also excludes “any idea, procedure, process, system, method of operation, concept, principle, or discovery.”¹⁵ Note, however, that although such works have no protection in and of themselves, expressions of them can be copyrighted. For example, a university professor who writes a textbook based on his ideas about advertising and public relations law cannot protect his ideas per se, but the expression of those ideas—a book—is copyrighted the moment it is created and put in a tangible medium.

Titles (e.g., “City of Angels”), names (e.g., Harry Potter), short phrases (e.g., “I’m Lovin It”), slogans (e.g., “The beer that made Milwaukee famous”), familiar symbols and designs (e.g., the Nike “swoosh”) and mere listings of ingredients and contents cannot be copyrighted, although these may enjoy other forms of legal protection, such as trademarks. Four more categories of works that lack copyright protection include works by the U.S. Government, works of common information, works in the public domain and works consisting of basic facts.

Government Works

The Copyright Act of 1976 generally prohibits the federal government from copyrighting works it creates. The major exception to this rule is that the government can acquire copyright for works it did not create. For example, U.S. postage stamp designs are copyrighted, as witnessed by the copyright notice in the margins of sheets and booklets, despite the fact that the U.S. Postal Service is a semiautonomous federal agency. Typically, the Postal Service contracts with freelance artists who design the stamps and then transfer the copyrights to the agency.

Works of Common Information

Like works of the U.S. Government, works consisting wholly of common information having no original authorship such as standard calendars, weight and measure charts, rulers and so forth cannot be copyrighted. Note, however, that works that contain such information can be copyrighted even though the information cannot be. As an illustration, a calendar with pictures of herbs for each month could be copyrighted, but the copyright would extend only to the photographs and any other original work on the calendar, not the standard calendar itself.

Works in the Public Domain

Under the 1909 law, copyright protection lasted for a maximum of two terms of 28 years each for a total of 56 years. Works copyrighted before changes made by the 1976 law took effect had the period of protection extended, but any work that was copyrighted prior to 1903 and any work whose copyright was not timely renewed no longer have protection. Thus, some works copyrighted as late as 1949 have gone into the public domain because no copyright renewal application was filed.

Once a work becomes public domain property, no royalties have to be paid and no permission needs to be sought from any owner before use. This is the reason that one can find such great prices on some old movies and television shows at the local Walmart or Kmart. Copyright owners simply did not bother at the time to renew the copyright. Before the advent of DVRs and especially cable and satellite television channels hungry for content, many copyright owners of such works believed there was no viable market for their productions after initial release.

Facts

Facts alone are not eligible for copyright protection. The expression of facts, however, does enjoy protection. Thus, although news cannot be copyrighted, newscasts can be.

In Miller v. Universal City Studios,¹⁶ a federal court of appeals overturned a district court decision that Universal had infringed the copyright of Gene Miller, a Pulitzer Prize-winning reporter for the Miami Herald, in a book entitled 83 Hours Till Dawn. The non-fiction work focused on a young woman named Barbara Mackle who was rescued after being kidnapped and buried underground for five days in a box in which she could have survived for no more than a week. The trial court in Miller was impressed by the approximately 2,500 hours that the author said he had spent researching and writing the book: “To this court it doesn’t square with reason or common sense to believe that Gene Miller would have undertaken the research required … if the author thought that upon completion of the book a movie producer or television network could simply come along and take the profits of the books and his research from him.”¹⁷

Although there were several similarities between Miller’s book and the script for Universal’s docudrama, The Longest Night, including some of the same factual errors, the appellate court ordered a new trial on the ground that “the case was presented and argued to the jury on a false premise: that the labor of research by an author [unearthing the facts in the case] is protected by copyright.”¹⁸

In 1991, the Supreme Court of the United States attempted to clarify the concept of “originality,” which is closely linked to the facts-versus-compilation-of-facts distinction. In Feist Publications, Inc. v. Rural Telephone Service Co.,¹⁹ the Court unanimously held that the white pages of a telephone directory could not be copyrighted. The case involved a telephone book publisher that used the names and telephone numbers from a competing telephone company’s directory to compile its own area-wide telephone directories. The Court noted that, although the telephone company could claim copyright ownership in its directory as a whole, it could not prevent a competitor from using the elements of its compilation of names, towns and phone numbers to create the competitor’s own directory. Facts are not copyrightable, the justices said, but the compilations of facts can generally be copyrighted.

The decision stressed that hard work or “sweat of the brow” is not enough; there must be originality of creative expression, which the Court characterized as the sine qua non of copyright. However, it should be noted that the amount of originality is not the test. “To be sure, the requisite level of creativity is extremely low; [but] even a slight amount will suffice,”²⁰ Justice O’Connor wrote for the Court.

Who Owns the Copyright?

There is a world of difference between the treatment of copyright ownership under the 1909 statute and coexisting common law versus the treatment under the current Copyright Act of 1976. Under the old law, when an author, artist or other creator sold his or her copyright, the presumption was that all rights had been transferred unless rights were specifically reserved by the creator, usually in writing. For instance, an artist who sold his or her original painting to someone effectively transferred copyright ownership as well because the common law recognized that the sale of certain types of creative works invoked transfer of the copyright to the purchaser.

The presumption now works in the opposite direction. None of the exclusive rights (discussed later in this chapter), nor any subdivision of those rights, are legally transferred in the sale of a copyrighted work unless the transfer is in writing and signed by the original copyright owner or the owner’s legal representative.

Under the current statute, the copyright is immediately vested in the original creator/author. If more than one creator (i.e., there is joint authorship), the copyright belongs to all of them. The creator or creators can, of course, transfer their rights, but the transfer of any exclusive rights must be in writing.

Oral agreements are sufficient for the transfer of nonexclusive rights. For example, a freelance artist could have a valid oral agreement with an advertising agency to create a series of drawings to be used in commercials for a life insurance company. At the same time, he or she could have an agreement with a magazine to do similar illustrations for a feature story. However, if the artist chose to transfer (a) an exclusive right, such as the sole right to reproduce the drawings; (b) a subdivided right, such as the right to reproduce the drawings in commercials; or (c) the right to produce a derivative work, such as a training film based on the drawings, such a transfer would need to be in writing for it to be binding.

Ownership of Compilations and Derivative Works

Ownership becomes more complicated in compilations and derivative works. Remember that the key differences between a compilation and a derivative work are that (a) a compilation consists of pulling together separate works or pieces of works already created, whereas a derivative work can trace its origins to one previous work, and (b) the key creative element in a compilation is the way in which the preexisting works are compiled to create the whole (i.e., the new work), whereas the creative dimensions of a derivative work are basically independent of the previous work.

An anthology of poems by Robert Frost, which consists of poems previously published on their own, is an illustration of a compilation that is also a collective work. With certain exceptions, the owner—who is usually the creator—of an original work of authorship has exclusive rights that only he or she can exercise or authorize others to exercise. Thus the poet would normally own the copyright in his works, absent his assigning the rights to another party (his publisher, for example). If Frost did make such an assignment with five of his poems contained in the compilation, there would be three copyright holders in the work—the poet for most of the poems, the publisher for the five poems earlier obtained from Frost and the compiler of the final book, Collected Works of Robert Frost, for the ways the poems are arranged in the book, the typeface used in the printing of the work, any original commentary and so forth.

Prudent advertising and public relations professionals should recognize that in any one collective work like a movie or music recording, there may be a number of copyright owners. In the film, the director, the writer of the screenplay, the film editor and the creator of the original musical score may all have independent copyrights in the various elements that make up the finished product. Likewise in the music recording, the composer, lyricist and music arranger may all have separate ownership interests that need to be satisfied before the recording may be used.

The novel Gone with the Wind and its subsequent history provide an example of ownership of a derivative work. Margaret Mitchell’s heirs, who inherited the rights to her novel after she was killed by an auto in 1949, nixed any sequels to the enormously popular book and movie for more than four decades. A series of sequels, including books and movies, probably would have brought in millions of dollars in royalties, but Gone With the Wind devotees, dying to learn the fate of Rhett and Scarlett, had to wait until 1991 when agents representing the estate finally chose Alexandra Ripley to write Scarlett: Tomorrow Is Another Day. The 768-page sequel was published simultaneously in 40 countries, with excerpts appearing a month earlier in Life magazine. The television movie followed in 1994—all six hours plus commercials.

Works Made for Hire

The sole exception to the rule of author-as-copyright-owner is a “work made for hire,” which exists in two situations:

In the case of a work made for hire, the employer is considered the author for purposes of copyright and automatically acquires all rights, exclusive and nonexclusive, unless the parties have signed an agreement to the contrary. Thus, the employer effectively attains the status of creator of the work.

For instance, a full-time copywriter for an advertising agency would have no rights to the copy he or she created for the agency. In contrast, a photo sold by a freelance photographer to a public relations firm for use in a press release normally would not be a work made for hire unless the photographer, who is contractually an independent contractor, had signed a contract specifically stating that the photo should be considered a work made for hire.

Suppose a public relations writer writes a novel about a fictional head of a public relations firm who solves major crime mysteries on the side. The book is written at home on the public relations professional’s own time, but much of the inspiration comes from his or her observations at work. Is the novel a work made for hire? Clearly not; although the public relations professional may have gotten some ideas from interactions with his or her colleagues, the writing was completed outside the scope of employment. Serving as a source of inspiration alone is not enough for an employer of an individual to claim copyright. An employer-employee relationship must have existed in the context in which the work is created.

Working with Freelancers

Freelancers create much of the copyrighted material existing today and work-made-for-hire principles play a major role in the copyright status of much of this creative output. Unfortunately, although the 1976 law defines dozens of terms, from an anonymous work to a work made for hire, it does not define employer, employee or scope of his or her employment. In 1989, however, the Supreme Court of the United States settled some perplexing questions regarding works made for hire by enunciating a clear principle for determining whether an individual is an “employee.” In Community for Creative Non-Violence v. Reid, the Court unanimously held: “[t]o determine whether a work is for hire under the Act [Copyright Act of 1976], a court must first ascertain, using principles of general common law of agency, whether the work was prepared by an employer or an independent contractor. After making this determination, the court can apply the appropriate subsection of §101.”²²

The Court then indicated factors under the general common law of agency to be applied in determining whether the hired party is an employee or an independent contractor, including:

Community for Creative Non-Violence v. Reid established the presumption that a work is not a work made for hire unless there is a written agreement to treat it as such. As the justices noted, the legislative history of the 1976 Act provides strong evidence that Congress meant to establish two mutually exclusive ways for a work to acquire work-made-for-hire status. The Court also pointed out that, “only enumerated categories of commissioned works may be accorded work for hire status … [and that the] … hiring party’s right to control the product simply is not determinative.”²⁴

The Court specifically rejected an “actual control test” that the Community for Creative Non-Violence argued should be determinative. Under such a test, the hiring party could claim the copyright if it closely monitored the production of the work, but the Court said this approach “would impede Congress’ paramount goal in revising the 1976 Act of enhancing predictability and certainty of copyright ownership.”²⁵ The Court went on to note that “[b]ecause that test hinges on whether the hiring party has closely monitored the production process, the parties would not know until late in the process, if not until the work is completed, whether a work will ultimately fall within §101(1).”²⁶ Congress intended in the 1976 law that it must be clear who owns the copyright at the time a work is created, said the Court.

A 2001 case looked at the rights of individual copyright owners whose individual works were included in a collective work, namely specific editions of The New York Times, Newsday and Sports Illustrated. The issue, in New York Times Company v. Tasini,²⁷ concerned whether freelancers’ copyrights in their individual articles were infringed when the articles were subsequently reproduced in electronic form without authorization. The freelancers had been compensated for the use of their works in print, but argued they were entitled to additional royalties for subsequent electronic uses such as inclusion in searchable CD-ROMs or databases. The Supreme Court found for the freelancers. Writing for the Court, Justice Ginsburg said:

The practical effect of Tasini was to encourage organizations to seek all-encompassing releases from freelancers at the time of engagement. Freelancers, on the other hand, gained potential leverage to be used in negotiating fees and terms of use for their copyrighted contributions.

Joint Authorship: An Alternative to Work for Hire?

Section 101 of the Copyright Act defines a joint work as “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or independent parts of a unitary whole.”²⁹ Unless there is a written agreement stating otherwise, joint authors are considered co-owners of the copyright in a work.

Joint authorship is certainly advantageous to the hiring party because a joint author has an undivided interest in the work, and, therefore, can make use of the work without seeking permission from the other joint owner or owners unless all the owners expressly agree in writing how the copyright ownership in the work is to be divided. Although Community for Creative Non-Violence v. Reid was a major victory for freelancers, it created a problem that one First Amendment expert characterized as “gratuitous joint-authorship claims of commissioning parties,” because those hiring a freelancer would try to claim joint-author status based on their supervision of the production of the copyrighted work. He suggests this unintended consequence could be remedied if Congress enacted a statute banning such practices.³⁰ Under such a law, a freelancer would not become a joint author unless all parties agreed in writing in advance that the work was to be considered jointly authored.³¹

The Copyright Owner’s Exclusive Rights

Copyright laws give the copyright owner a series of exclusive rights the owner may sell, lease, give away or otherwise transfer as desired. Under Section 106, the copyright owner has the exclusive right: