Broken those New Year’s resolutions yet? Well, we’ve got a new one for you, and it’s much easier to keep than anything having to do with Physical Fitness. Do yourself a big, huge, legal favor this year and read our three part series on Internet Law. Seriously, don’t get caught messing with the top four major intellectual property laws in the United States; it’s so much easier to inform yourself than to defend yourself (or pay someone else to defend you).  

Mark Radcliffe and Dianne Brinson are the authors of The Internet Law and Business Handbook. (The book is currently out of print and undergoing revision, but you can reserve a copy of the next edition by sending an email to mradcliffe@sonic.net.) We’ve commissioned them to supply three articles, covering most of what you need to know about the legal issues you’ll encounter doing business on the Net. Among the detours into Internet Law they describe, you’ll find the answers to these (and other) burning questions:

• Does copyright protection apply to the work of celestial beings?
• How about my work? Beauty and artistic merit aside, does it qualify?
• How do I obtain a copyright?
• How original does “original thought” actually have to be?
• Trademark, copyright – what’s the difference, anyway?
• How secretive is a Trade Secret, and what have I got to do to keep mine securely under wraps?

Mark and Dianne are going to cover a lot of ground with this series, so we’ll provide you with a quick summary. Sit up and pay attention, now. Internet users in the United States need to be aware of four major intellectual property laws:

• Copyright law
• Patent law
• Trademark law
• Trade secret law

If you’re to avoid ending up on the wrong side of the law, you’ve got to be able to define which category your work falls under, and you’ve got to know how to make the system work for you. This month’s article on copyright law defines the types of work that are covered, and the standards to which those works must adhere. The authors have come up with some great examples to brighten up the legalese, and they outline the procedures that must be followed in order to protect your own work.

In next month’s article on patent, trademark and trade secret law we’ll examine the basics of United States patent law as defined under the Patent Act. In March, you can read the final article in the series, which concerns ownership of copyrights. Our legal experts will explain the Copyright Act, as well as touching on ownership regulations for patents, trademarks and trade secrets.

If you acquire, make use of, or develop content for the Web, you really do need to understand this stuff. Some of the examples given hit closer to home than is comfortable; as in the story about the Marketing Director who was really pretty darn sure she had the permission she needed to use those photos on her company’s site, or the curious story of the Web Developer and the Shopping Cart.

You can do all the push-ups and avoid all the french fries you want to this year, but if you develop or deal in Web content, it’s much more important to the community that you inform yourself about these legal issues, than it is that you have washboard abs. Avail yourself of Mark & Dianne’s legal know-how! We really don’t want to have to say we told you so…

Copyright Law

INTRODUCTION

Copyright law in the United States is based on the Copyright Act of 1976, a federal statute that went into effect on January 1, 1978.  We’ll refer to this statute throughout the book as the Copyright Act.  The Copyright Act (Title 17 of the United States Code) is available online in Adobe Acrobat PDF format at http://www.loc.gov/copyright/title17. The United States Copyright Office, part of the Library of Congress, handles copyright registrations (discussed later in this section) and provides information on copyright law on its Web site, www.loc.gov.

States cannot enact their own laws to protect the same rights as the rights provided by the Copyright Act. 17 USC § 301. For example, a state cannot pass a law to extend copyright protection on works in the state beyond the term of protection given by the Copyright Act.  State “copyright” laws exist, but they are limited to works that cannot be protected under federal copyright law.   (Requirements for federal protection are discussed in the “Standards” section below.)

Copyright law is important for Internet users for three reasons:

• Much of the material that is on the Internet is protected by copyright, making copyright law a concern for those wishing to use material they find on the Internet.
• The types of pre-existing material used for Web site content — text, graphics, photographs, and  music — are copyrightable, and much of this material is protected by copyright.   Web site owners and developers and Web product designers and publishers must avoid infringing copyrights owned by others.
• Copyright protection is available for Web sites and new Web content.

TYPES OF WORKS PROTECTED BY COPYRIGHT

Copyright law protects “works of authorship.” 17 USC § 102(a). The Copyright Act states that works of authorship include the following types of works:

• Literary works.  Novels, fictional characters, nonfiction prose, poetry, newspaper articles and newspapers, magazine articles and magazines, computer software, software documentation and manuals, training manuals, manuals, catalogs, brochures, ads (text), and compilations such as business directories.
• Musical works.  Songs, advertising jingles, and instrumentals.
• Dramatic works.  Plays, operas, and skits.
• Pantomimes and choreographic works.  Ballets, modern dance, jazz dance, and mime works.
• Pictorial, graphic, and sculptural works.  Photographs, posters, maps, paintings, drawings, graphic art, display ads, cartoon strips and cartoon characters, stuffed animals, statues, paintings, and works of fine art.
• Motion pictures and other audiovisual works.  Movies, documentaries, travelogues, training films and videos, television shows, television ads, and interactive multimedia works.
• Sound recordings.  Recordings of music, sounds, or words.
• Architectural works.  Building designs, whether in the form of architectural plans, drawings, or the constructed building itself.

STANDARDS

To receive copyright protection, a work must be “original” and must be “fixed” in a tangible medium of expression. 17 USC § 102(a). Certain types of works are not copyrightable.

Originality

The originality requirement is not stringent:  A work is original in the copyright sense if it owes its origin to the author and was not copied from some preexisting work.  A work can be original without being novel or unique.

Example: John’s book, Designing Web Sites, is original in the copyright sense so long as John did not create his book by copying existing material-even if it’s the millionth book to be written on the subject.

Only minimal creativity is required to meet the originality requirement.  No artistic merit or beauty is required.

Prior Widespread Use

While most works make the grade on the originality requirement — because they possess some creative spark, no matter how obvious — a phrase or slogan that has been in widespread use may lack the originality necessary for copyrightability.  A federal appeals court held that a music publishing company could not claim copyright in the phrase, “You’ve got to stand for something, or you’ll fall for anything,” because the phrase lacked originality.  Acuff-Rose Music Inc. v. Jostens Inc., 155  F3d 140 (2d Cir 1998).  Short phrases rarely meet the originality requirement and are usually not copyrightable.  However, they may qualify for trademark protection.

A work can incorporate preexisting material and still be original.  When preexisting material is incorporated into a new work, the copyright on the new work covers only the original material contributed by the author.

Example: Web Developer used preexisting photographs and graphics (with the permission of the copyright owners) in a Web design project.  The Web site as a whole owes its origin to Developer, but the photographs and graphics do not.  Web Developer’s copyright on the Web site does not cover the photographs, just the material created by Developer.

Facts owe their origin to no one and so are not original.  In the United States, a compilation of facts (a work formed by collecting and assembling data) is protected by copyright only to the extent of the author’s originality in the selection, coordination, and arrangement of the facts.

Example: Ralph created a neighborhood phone directory for his neighborhood by going door-to-door and acquiring his neighbors’ names and phone numbers.  The directory’s facts (names and phone numbers) are not original.  Ralph’s selection of facts was not original (he “selected” every household in the neighborhood).  His coordination and arrangement of facts (alphabetical order by last name) is routine rather than original.  The directory is not protected by copyright.

Selection and Arrangement

In the case Urantia Foundation v. Maaherra, the court had to decide whether a book believed by both parties to be the words of celestial beings was copyrightable.  The foundation claimed copyright ownership.  The defendant, who had distributed a computer disk version of the book without the permission of the foundation, maintained that the book was not copyrightable because no human creativity was involved in creating the book.  The court held that even if the book’s content originated with a celestial being, there had been sufficient human selection and arrangement of material to satisfy copyright law’s “originality” requirement. 114  F3d 955  (9th Cir 1997).

Fixation

According to Section 101 of the Copyright Act, a work is “fixed” when it is made “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”  It makes no difference what the form, manner, or medium is.  An author can “fix” words, for example, by writing them down, typing them on an old-fashioned typewriter, dictating them into a tape recorder, or entering them into a computer.  A live television broadcast is “fixed” if it is recorded simultaneously with the transmission.

Uncopyrightable Works

Works prepared by federal government officers and employees as part of their official duties are not protected by copyright. 17 USC § 105. Consequently, federal statutes (the Copyright Act, for example) and regulations are not protected by copyright.  This rule does not apply to works created by state government officers and employees.

Titles of works are not copyrightable.  However, titles may be protectible under trademark law.

The design of a useful article is protected by copyright only if, and to the extent that, the design “incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 USC § 101 (definition of “pictorial, graphic, and sculptural works”).  For example, while a standard belt buckle design is not protected, a three-dimensional belt-buckle design with a dolphin shape qualifies for limited protection.

Uncopyrightable works and works for which copyright protection has ended are referred to as “public domain” works.

PROCEDURE FOR GETTING PROTECTION

Copyright protection arises automatically when an original work of authorship is fixed in a tangible medium of expression. 17 USC § 102.  Registration with the Copyright Office is optional (but you have to register before you file an infringement suit, if you are a United States citizen or corporation).

The use of copyright notice is optional for works distributed after March 1, 1989.  Copyright notice can take any of these three forms:

• © followed by a date and name.
• “Copyright”  followed by a date and name.
• “Copr.” followed by a date and name.

THE EXCLUSIVE RIGHTS

According to section 106 of the Copyright Act, a copyright owner has five exclusive rights in the copyrighted work:

• Reproduction Right. The reproduction right is the right to copy, duplicate, transcribe, or imitate the work in fixed form.   Scanning a copyrighted work for use on a Web site is an exercise of the copyright owner’s reproduction right.
• Modification Right. The modification right (also known as the derivative works right) is the right to modify the work to create a new work.  A new work that is based on a preexisting work is known as a “derivative work.”  Altering a photograph is an exercise of the modification right, as is creating an interactive version of a novel or creating a sequel to a computer game or motion picture.
• Distribution Right. The distribution right is the right to distribute copies of the work to the public by sale, rental, lease, or lending.
• Public Performance Right. The public performance right is the right to recite, play, dance, act, or show the work at a public place or to transmit it to the public. In the case of a motion picture or other audiovisual work, showing the work’s images in sequence is considered “performance.”  Showing scenes from a copyrighted motion picture in sequence on the Web is an exercise of the public performance right, as is the use of a copyrighted musical composition on the Web.
• Public Display Right. The public display right is the right to show a copy of the work directly or by means of a film, slide, or television image at a public place or to transmit it to the public.  In the case of a motion picture or other audiovisual work, showing the work’s images out of sequence is considered “display.”  Posting copyrighted material on the Web is an exercise of the public display right.

INFRINGEMENT

Anyone who violates any of the exclusive rights of a copyright owner is an infringer.

Example: John scanned Photographer’s copyrighted photograph, altered the image by using digital editing software, and used the altered version of the photograph on  an e-commerce site.  If John used the photograph without Photographer’s permission, John infringed Photographer’s copyright by violating the reproduction right, the modification right, and the public display right.

A copyright owner can recover actual or, in some cases, statutory damages from an infringer.  The federal district courts have the power to issue injunctions (orders) to prevent or restrain copyright infringement and to order the impoundment and destruction of infringing copies.

There are two essential elements to an infringement case:  (a) that the defendant copied from the plaintiff’s copyrighted work; and (b) that the copyright was improper appropriation.  Copying generally is established by showing that the defendant had access to the plaintiff’s work and that the defendant’s work is substantially similar to the plaintiff’s work.

Most copyright infringement cases are civil cases.  However, copyright infringement also can be a criminal offense.   According to Section 506 of the Copyright Act, two types of willful copyright infringement are criminal offenses:

• Willful infringement for purposes of commercial advantage or private financial gain.
• Willful infringement by reproducing or distributing copies or phonorecords of copyrighted works having a total retail value of more than $1000 in a 180-day period.

Barter Boards

David LaMacchia, an MIT student, invited users to post commercial software on his bulletin board for exchange with other users.  LaMacchia made no money from the exchanges.  He was arrested, but the court dismissed the suit because the criminal copyright law in effect at the time of the prosecution applied only to willful infringement for commercial motive or private gain.   Congress then amended the law, adding the second violation category discussed in the paragraph immediately above.  Prosecutors can use the provision to shut down barter boards through which pirated copies of software and computer games are traded.

DURATION OF THE RIGHTS

The duration of copyright law is very complicated because it depends on when the work was created, when the work was “published” (distribution of copies to the general public), the author of the work and, in some cases, the type of work. However, works created under the Copyright Act of 1976, the copyright term for works created by individuals is the life of the author plus seventy years. 17 USC § 302(a).

The copyright term for “works made for hire” is ninety-five years from the date of first “publication” or 120 years from the date of creation, whichever expires first. 17 USC § 302(c).  Works made for hire are works created by employees for employers and certain types of specially commissioned works.

LIMITATIONS ON THE EXCLUSIVE RIGHTS

The copyright owner’s exclusive rights are subject to a number of exceptions and limitations that give others the right to make limited use of a copyrighted work.  Major exceptions and limitations are outlined in this section.

Ideas

Copyright protects only against the unauthorized taking of a protected work’s “expression.”  It does not extend to the work’s ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries.

Facts

A work’s facts are not protected by copyright, even if the author spent large amounts of time, effort, and money discovering those facts. In the United States, copyright protects originality, not effort or “sweat of the brow.”

Extracting Facts from a Web Site

In Ticketmaster Corp. v. Tickets.com, Inc., the court held that extracting facts from a Web site is not copyright infringement.  “This falls in the same category of taking historical facts from a work of reference and printing them in a different expression,” the court stated.   54 USPQ2d 1344  (CD Cal 2000).  The court also held that using facts from a Web site is neither an unfair business practice nor unjust enrichment.

Independent Creation

A copyright owner has no recourse against another person who, working independently, creates an exact duplicate of the copyrighted work.  The independent creation of a similar work or even an exact duplicate does not violate any of the copyright owner’s exclusive rights.

Fair Use

The “fair use” of a copyrighted work, including use for purposes such as criticism, comment, news reporting, teaching, scholarship, or research, is not an infringement of copyright.  Copyright owners are, by law, deemed to consent to fair use of their works by others.

The Copyright Act does not define fair use.  Instead, whether a use is fair use is determined by balancing these factors:

• The purpose and character of the use.
• The nature of the copyrighted work.
• The amount and substantiality of the portion used in relation to the copyrighted work as a whole.
• The effect of the use on the potential market for, or value of, the copyrighted work.

INTERNATIONAL PROTECTION

U.S. authors automatically receive copyright protection in all countries that are parties to the Berne Convention for the Protection of Literary and Artistic Works, or parties to the Universal Copyright Convention (UCC).  Most countries belong to at least one of these conventions.  Members of the two international copyright conventions have agreed to give nationals of member countries the same level of copyright protection they give their own nationals.

Example: Publisher has discovered that bootleg copies of one of its software are being sold in England.  Because the United Kingdom is a member of the Berne Convention and the UCC, Publisher’s work is automatically protected by copyright in England.  When Publisher files a copyright infringement action in England against the bootlegger, Publisher will be given the same rights that an English copyright owner would be given.

The copyright laws (and other intellectual property laws) of a number of countries are posted at www.wipo.int/clea.

Works of foreign authors who are nationals of Berne or UCC-member countries automatically receive copyright protection in the U.S., as do works first published in a Berne Convention or UCC country.  Unpublished works are subject to copyright protection in the U.S. without regard to the nationality or domicile of the author.