 Legal Best Practices
Magazine
Protect Your Idea$ Part II
Turning Ideas Into Value
by Brent C.J. Britton
Published: April / May 2008
Last month we covered the importance of intellectual
property (IP) and went into a bit of detail about
trademarks and patents. This month, we’ll dive into
copyrights.
Copyright Generally
Copyright protects original works of authorship, meaning
just about everything written, composed, scored,
scripted, drawn, painted, sculpted, choreographed, or
architected. No formalities are required to obtain
copyright protection – it applies automatically from the
moment each work is created, or fixed in a tangible
medium of expression, whether that medium is computer
memory, paper and pencil, or paper mâché. Formal
copyright registration is still a good idea, however,
because it is a condition of being able to sue for
copyright infringement. And registration made within 90
days after publication of the work opens the door to the
potential for certain kinds of damages being awarded if
the copyright holder eventually prevails in an
infringement suit. Emblazoning your work with a
copyright notice (the ubiquitous © symbol) is a nice,
but unnecessary, touch in that it has no affect on the
strength of your copyright.
Scope and Duration of Copyright Protection
Copyright protects against unauthorized copying of an
original work. Note that this is much thinner protection
than that afforded by a patent. You can sue an innocent
patent infringer and win, even if the defendant has
never heard of you, your patent, or the underlying
invention; it is enough that they make, use, or sell an
infringing product. With copyright, you may only sue
those who actually copy your original work, by making a
digital copy, for example, or by producing a work of
their own that is substantially similar to yours after
having had access to yours. With patents, you can
effectively thwart all direct competition for your
product. With copyright, you can only thwart those who
actually steal from you. If I have never had access to
your work, but I nonetheless produce a work that is
identical to yours through happenstance or out of dumb
luck, you are powerless to stop me. Under copyright, I
don’t infringe unless I copy.
Copyright protection lasts until 70 years after the
author dies, if the author is a natural person. If the
author is a company, copyright lasts for 95 years from
the date of publication or, for works that are never
published, 120 years from the date of creation. How can
a company be an author? For copyright ownership
purposes, a company is the legal author of all works
created by its employees working within the scope of
their employment. Such works are called “works for hire”
and the employee has no ownership rights in them
whatsoever. Works for hire can also be created by
contract between parties who are not in an
employer/employee relationship, as long as the contract
is signed by the creator before the work is created. Any
defect in this process – e.g. signing the contract after
the creation of the work instead of before – will result
in the original creator’s, and not the hiring party’s,
being deemed to be the author and thus the copyright
holder.
Transfer of Copyright Ownership
Getting ownership issues nailed down properly is
critically important for companies who wish to own their
assets free and clear of any future headaches. The
analysis is convoluted by the fact that copyright
ownership can be counterintuitive. If you commission me
to build you a desk, I deliver, and you pay me, then
absent any written agreement to the contrary, I own the
money and you own the desk. Simple, right? But suppose
instead of a desk, you commission me to author a
copyrightable work such as a photograph or a piece of
software. In this case, again without any written
agreement to the contrary, when I deliver the work to
you and you pay me, I’ll own the money and I’ll still
own the work and you won’t, even though you will have
paid for it! Without a written agreement, the most you
can buy of a work of authorship is a limited,
nonexclusive license. Companies are advised to review
their outside contractor agreements to ensure they are
competently drafted on this issue.
What Can Be Copied?
If everything is protected by copyright, what can
lawfully be copied? Interestingly, you can copy
anything, as long as your copy constitutes a fair use.
Like many questions in the law, however, determining
what qualifies as a fair use can be tricky. A fair use
determination is made by considering and weighing the
answers to the following 4 questions: (i) how creative
was the original work? (ii) what was the purpose of the
copy? (iii) how much of the original work was copied?
and (iv) what effect did the copy have on the market for
the original work? If you copy a large component of a
very eclectic work for commercial reasons negatively
affecting the market for the original work, you’re
probably not anywhere near fair use territory. On the
other hand, if you copy a tiny portion of a relatively
prosaic work for, say, educational purposes and by doing
so you don’t really deprive the copyright holder of a
sale, your copy may be privileged as a fair use! Of
course, you’ll never really know the answer definitively
until you get sued for copyright infringement and win,
which can be an expensive test!
Next time we’ll cover trade secrets and some related IP
issues.
Brent C.J. Britton is a lawyer at the Tampa office of
Squire Sanders & Dempsey LLP, a global law firm. He
practices intellectual property and corporate law.
bcbritton@ssd.com
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