Recognizing and Preventing Infringement
The purpose of this article is to examine the elements of and conduct required to support a claim of copyright infringement. A further purpose of this article is to explain to the reader how the can recognize and prevent infringement. We will begin with an overview of Copyright Law itself, exploring what subject matter is, in rather strained parlance, copyrightable, and the rights enjoyed by a copyright owner, who or which does not necessarily have to be the author. Once we have established firm understanding of copyright basics, we will discuss direct and contributory infringement, how to preventing infringe, and the “fair use” doctrine. Lastly we will review the remedies awarded a copyright holder when infringement is discovered and proven in federal courts.
The purpose of this article is to examine the elements of and conduct required to support a claim of copyright infringement. A further purpose of this article is to explain to the reader how the can recognize and prevent infringement. We will begin with an overview of Copyright Law itself, exploring what subject matter is, in rather strained parlance, copyrightable, and the rights enjoyed by a copyright owner, who or which does not necessarily have to be the author. Once we have established firm understanding of copyright basics, we will discuss direct and contributory infringement, how to preventing infringe, and the “fair use” doctrine. Lastly we will review the remedies awarded a copyright holder when infringement is discovered and proven in federal courts.
What can be copyrighted?
According to the Copyright Code, copyrightable subject matter covers a broad range of literary and artistic expression including: “literary works;musical works, including any accompanying words;dramatic works, including any accompanying music;pantomimes and choreographic works;pictorial, graphic, and sculptural works;motion pictures and other audiovisual works;sound recordings; andarchitectural works.”
Copyright protection is provided for “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.”
A work is automatically covered by copyright from the point in time that it is fixed in some tangible form. It can be fixed in any form such as email, notes on the back of an envelope or napkin or any electronic media. However a lecture or the performance of a song that is not recorded is not protected until it is in a fixed form. The expression must be the original work of the author and not copied from another source, and must be the result of some creative effort.
What cannot be copyrighted?
“In no case does copyright protection for an original work of authorship 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.” “Words and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographical ornamentation, letter or coloring; mere listing of ingredients or contents” cannot be copyrighted. Unless the design or shape of a useful article “contains some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be copyrighted under the bill.”
“For similar reasons, copyright does not protect facts--whether scientific, historical, biographical or news of the day. Any facts that an author discovers in the course of research are in the public domain, free to all. Facts are not protected even if the author spends considerable time and effort discovering things that were previously unknown.”
What are the rights of a copyright owner?
The owner of a copyright has certain exclusive rights “to do and to authorize any of the following: to reproduce the copyrighted work in copies; to prepare derivative works based upon the copyrighted work; to distribute copies . . . of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; in the case of 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, to display the copyrighted work publicly; and in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.”
The copyright owner also has a moral right against mutilation and misattribution. She has the right “to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.”
“The only quasi-moral right given to authors of literary works is the right to prohibit false attribution. This right . . . prevents a publisher from crediting an author with material her or she has not written and, conversely, from failing to credit an author as the source of the work, except where the publisher is acting with the author’s acquiescence.”
Does the employee or the employer own the copyright?
“If a work is created by an employee in the course of his or her employment, the employer owns the copyright. If the work is created by an independent contractor and the independent contractor signs a written agreement stating that the work shall be "made for hire," the commissioning person or organization owns the copyright only if the work is:
(1) a part of a larger literary work, such as an article in a magazine or a poem or story in an anthology;
(2) part of a motion picture or other audiovisual work, such as a screenplay;
(3) a translation;
(4) a supplementary work such as an afterword, an introduction, chart, editorial note, bibliography, appendix or index;
(5) a compilation;
(6) an instructional text;
(7) a test or answer material for a test; or
(8) an atlas.
Works that don't fall within one of these eight categories constitute works made for hire only if created by an employee within the scope of his or her employment.”
Can a copyright owner transfer some or all of his specific rights?
The owner of a copyright can exercise their exclusive rights directly or they can assign all of those rights to another entity, or assign some of their rights, or grant subsidiary rights through a license agreement for a specific duration of time.
“When a copyright owner wishes to commercially exploit the work covered by the copyright, the owner typically transfers one or more of these rights to the person or entity who will be responsible for getting the work to market, such as a book or software publisher. It is also common for the copyright owner to place some limitations on the exclusive rights being transferred. For example, the owner may limit the transfer to a specific period of time, allow the right to be exercised only in a specific part of the country or world, or require that the right be exercised only through certain media, such as hardcover books, audiotapes, magazines or computers.
If a copyright owner transfers all of his rights unconditionally, it is generally termed an "assignment." When only some of the rights associated with the copyright are transferred, it is known as a "license." An exclusive license exists when the transferred rights can be exercised only by the owner of the license (the licensee), and no one else -- including the person who granted the license (the licensor). If the license allows others (including the licensor) to exercise the same rights being transferred in the license, the license is said to be non-exclusive.
The U.S. Copyright Office allows buyers of exclusive and non-exclusive copyright rights to record the transfers in the U.S. Copyright Office. This helps to protect the buyers in case the original copyright owner later tries to transfer the same rights to another party.
Transfers of copyright ownership are unique in one respect. Authors or their heirs have the right to terminate any transfer of copyright ownership 35 to 40 years after it is made.”
Must a copyright notice be affixed to the work?
Although a copyright notice is not required for works published after March 1, 1989, affixing a notice is still recommended. A visible notice on the work clearly establishes that the item is copyrighted and provides information on the copyright owner. The notice would make it difficult for an infringer to claim that they did not know the work was copyrighted or that they did not know who to contact to obtain permission for use of the work. Unfortunately the legislation in 1989 did not make the new rules retroactive which has resulted in three different notice requirements depending on when the work was first published. “For works published in the United States between January 1, 1978, and February 28, 1989, copyright notice must have been used on all copies published before March 1, 1989 . . . and, for United States works first published before January 1, 1978 the copyright was almost certainly forfeited if the notice was not affixed to all copies.”
The copyright notice under current law requires only that the notice be placed to give reasonable notice to the consumer. There were very strict requirements of where the notice was to be placed under previous legislation: “for books, on either the title page or the page immediately following, and for journals and magazines, on the title page, the first page of text, or the front cover. Under present law, as under the old, the notice consists of three parts: (1) either the symbol ©, or the word copyright . . .; (2) the year of first publication; and (3) the name of the copyright owner.”
Must a copyright be registered with the Copyright Office and copies of the work be deposited?
Although it is not necessary to register to obtain copyright protection for the work, registration does provide public notice of the copyright and therefore provides added protection against infringement. A copyright must be registered before an owner is legally permitted to bring a lawsuit to enforce it. “If registration has been made within three months of publication, or before an infringement begins, the copyright owner, instead of going through the difficulties of proving actual damages, can sue for ‘statutory damages’ (in effect, an award of damages based on equity rather than on proof of loss) and, most significantly, is eligible to be reimbursed for attorney’s fees.”
To register a work an application and fees per work must be submitted to the Copyright Office. There are different application forms for different types of works. Forms and instructions can be found on the Copyright Office website at www.copyright.gov.
What is considered infringement?
Infringement can occur by direct violation of any of the copyright owner’s exclusive rights without appropriate permission, such as reproducing the work, making copies, preparing derivative works, distributing copies of the work to the public, or performing or displaying the work publicly.
Vicarious copyright infringement liability is similar to an employer’s liability for employee action that is applied when an entity receives economic benefit from the direct infringer’s actions. “The landmark case on vicarious liability . . . is Shapiro, Bernstein and Co. v. H.L. Green Co., 316F.2d 304(2d Cir 1963). In Shapiro, the court was faced with a copyright infringement suit against the owner of a chain of department stores where a concessionaire was selling counterfeit recordings. . . It [the Court] imposed liability even though the defendant was unaware of the infringement . . . because the store proprietor had the power to cease the conduct of the concessionaire, and because the proprietor derived an obvious and direct financial benefit from the infringement. 316 F.2d at 307.”
“Contributory infringement originates in tort law and stems from the notion that one who directly contributes to another’s infringement should be held accountable. . . The classic statement of the doctrine is in Gershwin, [Gershwin Publishing Corp v. Columbia Artists Management, Inc., 443 f.2d 1159, 1162 (2d Cir.1971)], “[O]ne who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a ‘contributory’infringer.”
Can one prevent infringement by obtaining permission to use the copyrighted work?
Obtaining copyright permission is the process of getting consent from a copyright owner to use the owner's creative material. Taking the time to obtain permission for use is the most appropriate action but it is not always easy to accomplish. The publisher may have gone out of business or no longer do business under the same imprint, or the author may be dead and finding heirs is difficult. “The elements of a bona fide search will vary with the circumstances but could well include a search of the Copyright Office records, an attempt to communicate with the copyright owner at whatever address is last stated in the file for the work concerned, and perhaps an internet search for the author or publishers. If such efforts yield no results, there is still some risk in going forward. Technically, use of the work might still be ruled an infringement of copyright should a copyright owner surface, but it is unlikely that any court would do more than require the payment of a reasonable permissions fee.”
Is obtaining permission always required?
“Obtaining permission is not always required. In some situations you can reproduce a photograph, a song or text without a license. Generally, this will be true if the work has fallen into the public domain, or if your use qualifies as what's called a “fair use.” Both these legal concepts involve quite specific rules . . . Some people avoid permissions because they don't understand the permissions process or consider it too expensive. However, the process is not foreboding and the fee for common text, photo or artwork uses is commonly under $150.00 per use--and in some cases, it is free. On the other hand, the legal fees for dealing with an unauthorized use lawsuit can easily cost ten to fifty times the average permission expense.
To determine whether a work is in the public domain and available for use without the author's permission, you first have to find out when it was published. Then apply the following rules to see if the copyright has expired:
All works published in the United States before 1923 are in the public domain.
Works published after 1922, but before 1978 are protected for 95 years from the date of publication. If the work was created, but not published, before 1978, the copyright lasts for the life of the author plus 70 years. However, even if the author died over 70 years ago, the copyright in an unpublished work lasts until December 31, 2002.
For works published after 1977, the copyright lasts for the life of the author plus 70 years. However, if the work is a work for hire (that is, the work is done in the course of employment or has been specifically commissioned) or is published anonymously or under a pseudonym, the copyright lasts between 95 and 120 years, depending on the date the work is published.
Lastly, if the work was published between 1923 and 1963, you must check with the U.S. Copyright Office to see whether the copyright was properly renewed. If the author failed to renew the copyright, the work has fallen into the public domain and you may use it.”
What is considered “fair use” of a copyrighted work?
“To strike a balance between the needs of a public to be well-informed and the rights of copyright owners to profit from their creativity, Congress passed a law authorizing the use of copyrighted materials in certain circumstances deemed to be "fair" -- even if the copyright owner doesn't give permission.” The statue states:
“The fair use of a copyrighted work, including such use by reproduction in copies . . . or by any other means specified. . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include – the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or value of the copyrighted work.”
“Often, it's difficult to know whether a court will consider a proposed use to be fair.
. . . if the use potentially affects the sales of the copied material, it's usually not fair.
. . . The more [material] someone takes, the less likely it is that the use is fair.
How was the material used? Is it a transformative use? (If the material was used to help create something new it is more likely to be considered a fair use that if it is merely copied verbatim into another work. Criticism, comment, news reporting, research, scholarship and non-profit educational uses are most likely to be judged fair uses. Uses motivated primarily by a desire for a commercial gain are less likely to be fair use).
As a general rule, if you are using a small portion of somebody else's work in a non-competitive way and the purpose for your use is to benefit the public, you're on pretty safe ground. On the other hand, if you take large portions of someone else's expression for your own purely commercial reasons, the rule usually won't apply.”
Library and educational copying are a special type of “fair use.” “Routine library practices permitted under copyright law, such as interlibrary borrowing, lending for classroom or at-home use by patrons, archiving, preservation, and duplication for fair use purposes, have all been restricted, in some cases severely restricted and in other instances barred by licensing agreements . . . Previously, as owner of a particular copy of a book, a library was entitled to set the terms of patron access to that copy. In the new world of libraries as licensee of a digital work subject to technological measures, the library may be denied such right.”
What are the remedies for copyright infringement?
“A copyright owner may request and receive both temporary and permanent injunctions to prevent or restrain infringement. A temporary injunction can even be awarded in advance of a trial if the copyright holder is able to show harm or the potential for harm from the infringing actions. The owner may also seek to impound and destroy all of the work's infringed copies. More likely, however, the copyright owner will want damages for infringement. Section 504 of the Copyright Act recognizes three forms of damages that the owner can request: actual damages, infringer's profits, and statutory damages. . . Actual damages recognize the specific losses suffered by the copyright holder. . . . A profits award looks to any profit made by the infringer that's attributable to the infringement. Both serve to provide the copyright owner with the "income" that the infringer appropriated. However, many individual acts of infringement do not generate significant losses or profits. In order to allow copyright holders to enforce their copyrights through litigation (and to discourage infringement), the Copyright Act provides a range of automatic, or statutory, damages that would apply regardless of loss or profit. Currently, the basic range is from $750 to $30,000 per work infringed.
However, if the copyright owner can prove that the infringement was willful or prove that a party's actions are in violation of the law and are proceeding anyway, the court may increase the damages to as much as $150,000 per work. Willful infringement committed specifically for commercial advantage or private financial gain--or that involves works with a value of more than $1,000--can also invoke criminal penalties, including fines and prison sentences. Finally, awards of court costs and attorney's fees can significantly increase the cost of infringement.”
“A series of recent court cases illustrates the potential amount of damages that can be awarded for copyright infringement. In February, an award of $19.7 million was upheld against financial services firm Legg Mason Wood Walker for redistributing a copyrighted newsletter through fax, e-mail and the company’s intranet. . . . In June 2003, the Los Angeles County Sheriff’s Department was found liable for $210,000 in damages for installation of 4,000 unauthorized copies of copyrighted software. . . . In 2002, a commercial photographer received an award of $2,500 per infringement when a commercial Web site displayed the artist's work without authorization. Multiplied by 176 separate works, the total damages awarded were more than $425,000.”
“Six leading academic publishers have filed a copyright infringement lawsuit against a copy-shop owner in Austin, Tex., who sells packages of course materials online. . . . It accuses the owner of three businesses of reproducing academic material for a profit without the permission of the publishers or their licensing agent, the Copyright Clearance Center. . . The suit says there were 57 counts of infringement, so the copy-shop owner could be fined as much as $8.5 million.”
