Copyright and Trademark
[T]he plaintiff . . . was the author, inventor, designer, and proprietor of the photograph . . . to which he gave visible form.1
This chapter describes the rights and obligations associated with copyrights and trademarks. Although there is a significant body of related international and state law, we focus on those laws that would impact a mass communications practitioner working in the United States. Most international agreements on intellectual trade apply a concept called national treatment. National treatment means that a country provides authors from other countries the same protection given its own citizen authors. Because of national treatment, the protections afforded intellectual creations vary significantly from country to country. Treaties like the Berne Convention impact the enforcement of rights in the United States, so they are mentioned, but practitioners working outside the United States or those who work with materials produced outside the country are encourased to seek legal counsel.
We have also omitted coverage of a number of related state laws. Most states, for example, have laws addressing unfair trade practices, misappropriation, and fraud. All of these laws could be used to protect the creative work of authors or artists. Because of the variations in these laws, they are simply beyond the scope of a single text.
We work from the assumption that most of our readers are primarily concerned about protecting works created in the United States from plagiarism by competitors in the United States. Therefore, this chapter focuses primarily on U.S. copyright protection. We also provide a brief overview of protections given to trademarks, service marks, and trade dress because experience shows that many practitioners in advertising and public relations are involved in creation and application of those items.
Introduction to Copyright
Article I, Section 8, Clause 8 of the U.S. Constitution grants Congress the power to promote science and the arts by giving authors and inventors exclusive rights to their writings and discoveries. The rights of inventors to their inventions are called patents and the rights of authors to their writings are called copyrights. Collectively, patents, copyrights, and trademarks are called intellectual property. The very words used to describe these rights are significant. Copyright is a right to prohibit copying. It is not the right to prohibit another author from independently creating a similar or identical document. Intellectual property is property. It can be bought and sold just like other kinds of property. It is called intellectual property because it is the product of intellectual creativity, not simply hard work. Each of these ideas is explained in more detail later in this chapter but it may facilitate understanding to keep the concepts of copy, property, and intellectual in mind as you read this chapter. It may also help to note that the notions of author and writing have been expanded to include artists and their art. Therefore, the work of graphic artists, musicians, and photographers can all be protected by copyright. As we introduce the section on trademark, we explain why trademarks are not covered under copyright law.
The first U.S. copyright laws were passed in 1790. They were revised in 1831, 1870, 1909, and 1976. In addition, when the United States ratified the Berne International Convention in 1989, that action modified some of the copyright laws, particularly those dealing with the requirements for notice. As we discuss copyright law, we focus on the law as it exists as of this writing, but some copyrights created prior to the 1976 act and prior to the 1989 accession to the Berne Convention are still in effect. Materials copyrighted prior to 1976 and between 1976 and 1989 have different protections and requirements than do materials copyrighted in 2005.
Creation of Copyrights
Before an author or artist can protect work from being copied he or she must create a copyright. The requirements to create a copyright are listed in Exhibit 10.1. Generally, a copyright is created the instant an original work is reduced to a tangible form and the author can prohibit others from copying his or her work by either an actual or implied notice.2 Registration is not required to create a copyright. However, it is necessary to register a copyright before the author can obtain statutory damages and attorney fees in an infringement suit. For this reason, we include registration in our discussion of the requirements for copyright creation.
Reduced to Tangible Form
Notice -Implied or Actual
What Is an Original Work?
There are two major limitations on what is legally an original work. First, the work must be creative. Second, the work must be intellectual and not utilitarian. If they involve significant intellectual creativity, some reproductions or copies are treated as original works.
Original Work Must Be Creative
The key to intellectual originality is creativity. Works cannot be copyrighted simply because the author was the person who originated them. The work must have been creatively original, not simply the product of hard work. It may help you understand this concept to remember the idea that copyrights are intellectual property. Time, sweat, and effort are not intellectually creative. In 1991, the U.S. Supreme Court delivered an opinion that emphasizes the distinction between effort and the creativity required to make something an original work. A commercial publisher of telephone books simply copied the listings from a rural telephone company’s directory and the telephone company sued for copyright violation. It is difficult to imagine a written work that takes more time and effort than the creation of an accurate telephone directory, but the Supreme Court ruled the listings in such a directory cannot be copyrighted because they are not original works. The Court said, “The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author.”3 The Court ruled the Feist Directory could legally take the work of the telephone company and republish the same information without violating copyright laws because there was nothing creative in the creation of the original directory. In order to be creative, a directory or database would have to be organized in some creative way or include novel language or material. Following this general rule, collections of court cases cannot be copyrighted nor can typefaces.4
Utilitarian Items Are Not Original
There is an historic distinction between utilitarian objects and the creative works that can be copyrighted. This distinction arises primarily from the separate references in the Constitution to authors and writing in one clause and to inventors and discoveries in another. Many courts have ruled that objects that can be patented should not also enjoy copyright protection.5 This philosophical and legal distinction had little meaning to those of in mass communications until technology began to merge utility and creativity in the form of computer programming. Because some works may involve computer programming or application, we briefly describe when such utilitarian works may or may not be copyrighted.
Dealing with a low-technology work, the U.S. Supreme Court described how utility and creativity might merge in the case of Mazur v. Stein in 1954.6 The case dealt with an attempt by a sculptor to use copyright law to protect statuettes he designed for use as bases for lamps. The courts below rejected his claims, saying the lamps were utilitarian and therefore could not be copyrighted. The Supreme Court ruled the statues themselves could enjoy copyright protection even though they were designed to be used as lamp bases. Art incorporated into the moving parts on a watch face has also been permitted a copyright.7
The fact that utilitarian works were denied patents led many to think that computer programs could not be protected by copyright. Congress resolved this concern with the 1980 amendments to the Copyright Act. Those amendments added language protecting computer programs as original works and defined programs with the following language: “[A] set of statements or instructions to be used directly or indirectly in a computer to bring about a certain result.”8 Furthermore, the U.S. Court of Appeals for the Third Circuit said that even when embedded in a utilitarian chip, a computer program is a copyrightable creative work if it is original and meets the definition given by the 1980 amendments to the Copyright Act.9 Some of the difficulty deciding how to deal with programs embedded in computer chips was resolved when Congress passed the Semiconductor Chip Protection Act in 1984. That act mixes principles from copyright and patent law to protect products that may be both utilitarian and creative.10
Even with these decisions and laws, courts are occasionally confronted with programs, not in chips, that incorporate both utilitarian and creative components. For example, a program that produces outlines may have utilitarian components such as pulldown menus or printing commands and these may not be copyrightable, but the same program may have specific language or instructions that can be copyrighted.11 Some other components of computer programs, like what is often called the use and feel of the programs, have been denied copyright protection. These aspects are not reduced to written codes12 and may be denied protection because they are utilitarian and therefore not original work. They may also be denied copyrights because they have not been reduced to a tangible form.
Copies or Reproductions May Be Original
One form of original work that seems contrary to common sense is the reproduction or copy. Courts have consistently held that a copy can be an original work if the reproduction introduces interpretation or elements of originality. This view of original work arose at a time when hand copying was the usual form of reproduction. It was solidified in application of copyright law to photography. Ours is not the first time in which courts have attempted to apply old law to new technology. Just as contemporary courts are trying to find how to separate utility and creativity in computer programs, courts in the past had to wrestle with then new technology like photography. One of the first cases applying copyright law to photography was Barrow-Giles Lithographic Co. v. Sarony. The plaintiff had taken a portrait of Oscar Wilde and the defendant copied that photograph. The facts of the case were not disputed. The defendant admitted copying plaintiff’s work but defended his actions by saying that a photograph was merely a mechanical copy of a natural image and lacked the originality required for copyright. In other words, the defendant said that one cannot copyright a photograph because it is not an original work. The Supreme Court ruled photographers, by posing their subjects, arranging background and costume, and selecting lighting, do add their own originality and creativity to photographs.13 Working from this logic, a later Circuit Court case said, “no photograph, however simple, can be unaffected by the personal influence of the author, and no two will be absolutely alike.”14 In short, a photograph, even though it is only a copy of nature, has enough creativity to be an original work and can be copyrighted.
Because of the principles established for photography, we know that some copies can be copyrighted. But the element of creativity must be more than just a trivial modification. In 1951, the U.S. Court of Appeals ruled that an engraver’s copy of an old art master had enough creativity to be copyrighted but that simple colorization of the engraver’s work was too trivial to justify a new copyright. The court said that an author must contribute “something more than a merely trivial variation. . . .” He must contribute “something recognizably his own.”15
For those in mass communications, this means that news photographs, video, or audiotape of news, and courtroom sketches may all be copyrighted.16 Probably more important to most mass communications practitioners, it also means an original interpretation or new expression of facts can be copyrighted. The copyright of news reports or expressions of facts are somewhat complicated by the requirement that copyrighted material must be reduced to a tangible form so that pure ideas or information cannot be copyrighted. That distinction between expression and ideas is addressed in the next section.
Reduced to a Tangible Form
In order to copyright any work, that work must be in some tangible form. The form can be any medium including writing, painting, sculpture, photography, or magnetic recording.17 The Copyright Act even includes language saying works may be “fixed in any tangible medium of expression now known or later developed.”18 The act also says materials are protected by copyright as soon as they are reduced to a tangible form.
The requirement for a tangible form means ideas, facts, or pure information cannot be copyrighted because they are not tangible. What can be copyrighted is the physical expression of the ideas, facts, or pure information. For example, if an individual has an idea for a word-of-mouth public relations campaign, even if that campaign is implemented, the idea or concept cannot be copyrighted. What could be copyrighted is the written plan or instructions for the campaign.
If a reporter invests his or her time and energy in research to identify information for a groundbreaking story on political corruption, he or she cannot copyright the facts in the story. Only the tangible form of the story itself can be copyrighted. Another reporter could read the story, rewrite it, and add his or her own elements of creativity in the way the facts are expressed.
Copyright is available for the form of expression of an idea but not for the idea itself.19 The principle that ideas cannot be protected by copyright was made obvious by the U.S. Supreme Court in a ruling involving an author who developed a unique accounting system and described the system in a book he copyrighted. The Court ruled other accountants could use his system or ideas; they just could not use the expression or the language he had used to describe the system in his book.20 What is protected by copyright is not an idea but the exact tangible form in which it is expressed.
Furthermore, if there is only one way to express an idea, one may not even be able to copyright one’s tangible writings. For example, Frank Morrissey developed an idea for a sales promotion contest based on customers’ social security numbers. He even wrote the rules for the contest and registered those rules for copyright. After attempting to sell his idea to several companies, one of those companies began to use the promotional scheme without paying him. Morrissey sued for copyright infringement because a promotion for Tide soap used a copy of the rules he had registered. The court held that the promotional contest idea was not tangible and could not be protected by copyright. Even more damaging to Morrissey, the court held that the rules for the contest could only be expressed in a limited number of ways and therefore even the rules could not be copyrighted because they were simply an idea, not a form of expression.21 In a more contemporary case, the U.S. Court of Appeals ruled the Windows system used on most personal computers cannot be copyrighted. The court ruled the system of “icon-driven” computer controls originated by Macintosh is a pure idea and there are only a limited number of ways computer controls and screen images can express the idea. Therefore, Microsoft Windows programs are free to adopt ideas and control features developed by Macintosh without violating any copyright laws.22
Notice simply means including markings, language, or specific admonitions to the viewers of material that the author does not intend to surrender his or her rights to the intellectual property. Without notice, a person seeing a document or photograph might innocently assume the work is available for public use. In the United States, the requirements for notice were fairly formal and rigid until 1976. Specifically, a notice had to include three elements: (a) the word copyright, the abbreviation “C” or “Copr.,” or the symbol ©; (b) the date of publication; and (c) the name of the copyright holder.23 Each of these elements serves a simple and logical function. First, the word or abbreviation for copyright tells the reader or viewer that the author prohibits unauthorized use of the material. Second, the date allows a reader to determine if or when the copyright will expire. Third, the name of the copyright holder helps the reader locate the copyright holder in order to seek permission to use the copyrighted material.
From 1976 to 1989, the requirements for notice gradually eroded. The date of the most recent Copyright Act was 1976; the date the Berne Convention on intellectual property was implemented in the United States was 1989. If there is reason to determine the requirements for notice for material first published between those dates, one would be advised to consult an attorney.24 Prior to 1976, the rule was straightforward. Formal notice was required.
Since 1989, the rule has been consistent if not quite so simple. An original work published today is still protected by copyright even though it does not include formal notice. However, the absence of notice does make it more difficult to pursue an action for infringement. If a work is published without notice, a viewer who copies it may claim a defense called innocent infringement. An innocent infringer is one who uses the material without knowing it was copyrighted.
Copyright infringement can be prosecuted either as a civil matter between the copyright holder and the person making unauthorized copies or as a criminal matter in which the government asserts its authority. The penalties for criminal copyright are greater and obviously there are advantages to having the government pursue someone who has improperly taken one’s materials. However, criminal copyright violation must be “willful.”25 Someone who can claim innocent infringement will probably escape the government’s involvement. Furthermore, even in civil cases, the defense of innocent infringement may reduce the amount of damages a defendant is ordered to pay a wronged copyright holder.26 In summary, a notice statement may not be legally required but it costs virtually nothing to add and provides both some legal protection and convenience.
As noted previously, registration is not a requirement to create a copyright. The copyright is created the instant an original work is reduced to tangible form.27 However, registration is required before an author may sue someone for infringing on that copyright28 and there are limitations on damages that occur prior to the date of registration. For example, if someone copies and sells your work after the date of registration, you may be entitled to attorneys’ fees and statutory damages. If that person copies and sells your work prior to the date you register the copyright, you will not be able to recover your attorneys’ fees and you cannot recover the statutory damages. You will have to prove the amount of your loss to establish the damage the defendant will be required to pay you.29
For most works, the requirement to register a copyright is simply the completion of a form, the payment of $30, and submitting one copy of an unpublished work or two copies of a published work. The procedure is outlined and the forms are available from the U.S. Copyright Office online at www.copyright.gov. If you believe you have written a Pulitzer Prize-winning article, a Clio-winning advertisement, or a Silver Anvil-winning public relations campaign, it certainly seems worth the minor expense of protecting your rights by registering the work.
Ownership of Copyright
Remember that copyrights are intellectual property and property can be sold, inherited, or simply given away. Therefore, the copyright holder is often not the author of the copyrighted work. However, the duration of the copyright is, in many cases, a function of the life of the author rather than the copyright holder. Since the first Copyright Act in 1909, the duration of copyright ownership has been gradually increased. Most copyrights established today are valid for the life of the author of the copyrighted material, plus 75 years.30 If the work is co-authored, the copyright is enforceable for the life of the last surviving author, plus 75 years.31 One exception, which is explained later in the practice notes, applies to works for hire. Works for hire are written by an employee or are written under contract for another person. The copyright for works for hire can be valid for as long as 120 years.32 An excellent summary of copyright duration is online at www.copyright.cornell.edu/training/hirtle_public_domain.htm.
If one is negotiating for the purchase or sale of a copyright, he or she should note that any contract to transfer a copyright must be in the form of an express and written contract.33 It should also be noted that simply buying a work does not give the new owner a copyright in the work. The copyright must be sold separately.34 This means, for example, that purchasing an original Mark Twain manuscript does not give the purchaser the right to copy or to publish that manuscript.35
Even a bona fide purchaser may not have perpetual ownership of the copyright. The 1976 Copyright Act created a right to “terminate transfer.”36 Under this provision, an author who sells his or her copyright can terminate the transfer during a 5-year period that begins 35 years after the copyright is sold. This right even extends, in some cases, to relatives of the author who may inherit the right of termination of transfer. The provision was created to help authors who sell rights to literature or songs early in their career and only later learn that they will be worth much more than was originally paid. This right to terminate transfer does not apply to works for hire.
Ownership of co-authored works is somewhat complicated and we can only present a simplified summary of the rules governing them here. Generally, the copyright is owned by the author who wrote or created the first part of the work, unless there was some intent on the part of the authors to create a joint work.37 Also, where one person compiles the works of several other authors into one piece, copyright of the resulting compilation is owned by the compiler.38 Where the authors intended to create a joint work, the co-authors are owners “in common” of the copyright. Owners in common, in this context, have a duty to report any use of the copyright to the other authors, to share any profits, and not to do anything that would damage the rights or interests of the other co-authors. Works produced under contract with an agency or as an employee of an agency or news medium are discussed in the practice notes to this chapter.
If your work is protected by copyright, what can you prohibit others from doing with that work, and what are you prohibited from doing with the copyrighted works of others? This section answers those questions. Copyrighted material may not be copied, used to create derivative works, distributed, performed, displayed, or transmitted digitally without the permission of the copyright holder. Each of those concepts requires some explanation. These prohibited acts are listed in Exhibit 10.2.
Reproduction – Copying
Creating a Derivative Work
Reproduction means just what it sounds like. Copyrighted material may not be copied or reproduced without the permission of the copyright holder. There is an exception for “fair use” of the material and we discuss those exceptions later in this section in the discussion on defenses. In addition to the defenses associated with fair use, there are also two exceptions in the Copyright Act that specifically permit copying protected material. One such exception is provided for broadcast media. They are permitted to make very short-term or temporary copies for delayed broadcast.39 There is also an exception that allows the legitimate purchaser of a computer program to copy the programs for the sole purpose of repair or maintenance.40
It should also be noted that what is prohibited really is copying, not the creation of an identical work. In other words, if someone through independent work and creativity writes an article exactly like one that is already copyrighted, they have not “copied” it. This point may best be made by describing the facts in Columbia Broadcasting v. DeCosta, which involved a television show titled Have Gun Will Travel. The show’s main character was named Paladin. Paladin wore a black outfit featuring a holster with a knight chess piece in silver and displayed a calling card that read, “Have Gun, Will Travel, wire Paladin San Francisco.” Prior to the time the television show first aired, Victor DeCosta performed at parades and other events throughout New England as a character he named Paladin. DeCosta’s Paladin wore a black outfit featuring a knight chess piece in silver and he used a calling card that read, in part, “Have Gun, Will Travel, Wire Paladin. . . .” The Court of Appeals ruled that even though the two characters were virtually identical, CBS had not copied DeCosta’s creation. The ruling was based on several factors but chief among them was that the similarities were not the result of copying DeCosta’s creation. Rather, the court found the two characters, including their calling cards, were independently created.41 DeCosta lost his suit for copyright infringement.
The prohibition against derivative works was originally designed to prevent copying copyrighted work in another medium. For example, it prohibited copying an engraving or drawing onto ceramic tiles.42 Today, this prohibition covers such derivative works as translations, abridgements, or condensations. Specifically, it prohibits reproduction in “any form in which a work may be recast, transformed, or adapted.”43 The kinds of derivative works prohibited include copying a tape to a CD format,44 translation into another language,45 or the production of plot outlines.46 The prohibition against derivative works is designed to prevent a creative but dishonest person from making a copy with some minor variation in medium. Simply put, one cannot reproduce copyrighted material even if it is copied into another medium or language or it is copied with some modifications that do not involve significant creativity.
The prohibition against distribution is limited by what is called the first sale doctrine. The first sale doctrine “provides that nothing in [The Copyright Act] shall be deemed to forbid, prevent, or restrict the transfer of any copy of a copyrighted work the possession of which has been lawfully obtained.”47 If the copyright holder sells a book, article, or work of art, the new owner can resell that object, but cannot copy it or sell copies of it. The new owner has a right of “first sale” but not subsequent sales.48
In addition to this first sale, a copyright holder can “distribute copies of phonorecords . . . to the public by sale or other transfer of ownership, or by rental, lease, or lending . . . [emphasis added].”49 This right is limited to the copyright holder. In other words, only the author of the work or someone to whom the author has assigned the right may distribute records by rental, lease, or lending. This limitation on distribution applies to electronic recordings, computer programs, and other media.50 As a practical matter, many publishers charge libraries a higher price for books or journals than those same publishers charge private purchasers or subscribers. This higher price is often imposed to cover the copyright holder’s fee for giving permission to distribute their work by rental, lease, or lending.
Obviously, a playwright or composer of music would expect to be paid for the performance of his or her work. Performances, without the permission of the copyright holder, are prohibited. However, there are several exceptions to the prohibition against performance. For example the Copyright Act specifically permits radio stations to play records, tapes, and CDs without paying royalties for the performance.51 Also exempt are not-for-profit displays of some art work.
It should be noted that performance for commercial purposes is almost always prohibited and the courts’ definition of commercial is very broad. As early as 1916, the U.S. Court of Appeals, for example, noted that performing a song in a restaurant had a commercial purpose even though no fee was paid for the audience to hear the song.52 Even if the commercial motivation is indirect, such as making the environment of a restaurant more attractive to customers, that may be commercial purpose and the user of copyrighted art or music should secure the permission of the copyright holder before using his or her work in such a venue.