2015-03-17-Copyright-Basics.txt

The Basics of Copyright Law
Just Enough Copyright for People Who Are  
Not Attorneys or Intellectual Property Experts
by mitchell zimmerman

This article originally appeared in the 
California Bar Journal as an educational piece 
for attorneys not expert in intellectual property 
law, but is suitable for non-attorneys as well.

You have been helping a client set up her consulting 
business for failing bookstores (Speak Volumes 
Recovery Group), and she mentions that she has 
developed a PowerPoint presentation and hand-outs 
for use in their seminars. Do you think we should 
trademark or copyright these materials? she asks. 
Were really jazzed about the slides; we made them 
much more exciting by using a lot of photos we 
found on the internet. Also, the manuals we give our 
customers include some great ideas weve developed 
about bookstore inventory control  the copyright 
will keep our competitors from using our ideas if we 
register the manual, right?

Well, you respond, ummm... ahh.... Let me think 
about that. (Maybe you should have taken that 
intellectual property course in law school after all!)

No mind; not too late. Copyright issues can arise in 
any practice, but you dont need to become an expert 
in the most sophisticated and arcane aspects of the 
practice in order to answer some basic questions. This 
article seeks to provide you with just enough copyright 
law to understand the fundamentals and address the 
key issues.

just what is a copyright?

Copyright refers to the rights of authors in works of 
authorship  as distinguished from patents (whose 
subject matter is inventions), trademarks (which 
concern symbols of an enterprises reputation and 
goodwill) and trade secrets (information whose value 
derives from being kept secret).

Copyright protects the expression in a work of 
authorship against copying. Copyright law does 

not protect the underlying ideas embodied in a 
work; neither does it protect against independent 
development.

Basic copyright protection is automatic, essentially 
free, and more or less world-wide in scope. Although 
people often speak of copyrighting a work or 
obtaining a copyright, these are misnomers. The 
copyrights in any original work of authorship come 
into existence automatically, without further action, as 
of the moment of fixation of the work. Registering 
a work with the U.S. Copyright Office and marking a 
work with a copyright notice are not required, and 
failure to do so does not result in loss of the basic 
rights of copyright holders.

copyright requirements

There are three basic requirements for copyright 
protection: that which is to be protected must be a 
work of authorship; it must be original; and it must be 
fixed in a tangible medium of expression.

1.  The Work of Authorship Requirement
What is a work of authorship? The subject matter of 
copyright embraces a wide range of works, whether 
published or unpublished, including:

  Literary or textual works of all kinds (including 

novels, short stories, biographies, articles, news 
stories, poems, outlines, letters, email messages, 
etc.).

  Pictorial, graphic and sculptural works (including 

sketches, paintings, photographs, drawings, 
designs, etc.).

  Musical, dramatic and choreographed works 

(songs, telephone ring tones, plays, TV shows).

  Sounds recordings (performances of songs, public 

speeches, books on tape).

copyright basics 

2006, 2015 Fenwick & West LLP. Some Rights Reserved. 
This work is licensed under a Creative Commons  
Attribution-NonCommercial-NoDerivs 3.0 Unported License.

  Computer programs, most websites, and various 

other digitized works.

2.  The Originality Requirement
Originality is a constitutional requirement, but it is a 
minimal requirement under copyright, not comparable 
to the nonobviousness standard for a patent. A 
hackneyed or trivial work can be original enough 
for copyright protection, so long as it is not copied 
from an earlier work and so long as it contains a tiny 
spark of creativity. What would represent insufficient 
creativity? Arranging the names in a telephone 
directory in alphabetical order.

3.  The Fixation Requirement
A work must be fixed, under copyright law, to enjoy 
copyright protection. This does not mean it must be 
the final or a well-considered version of the work. 
Rather, the term simply refers to the requirement that 
an embodiment of the work be set down or fixed in 
a tangible medium of expression for a more than 
transitory period. A draft of a novel on paper, the 
rushes from a film before editing, the beta version 
of a computer program on a CD-ROM disk, a snapshot 
on film or a digital cameras flash memory, all are 
fixed works within the meaning of copyright law. 
But the most brilliant and creative improvisation is not 
fixed if unscripted and unrecorded.

benefits of registration with the u.s. 
copyright office

Registration, though not required for basic copyright 
protection, has important advantages: Registration is 
necessary if you want to (i) record security interests in 
a copyright, (ii) ask U.S. Customs to block infringing 
goods from being imported into the country, (iii) 
benefit from the (rebuttable) presumption that all 
facts stated in the registration certificate, including 
ownership, are true or (iv) be eligible for statutory 
damages and attorneys fees.

In cases in which the infringement begins after 
registration or within three months of publication, the 
registrant is entitled to statutory damages  damages 
awarded without need of evidence of harm to the 
plaintiff or unjust enrichment of the defendant  in 

a discretionary amount between $750 and $30,000 
per infringed work (increased to as much as $150,000 
per infringed work in cases of willful infringement). 
The plaintiff is in any event always eligible for actual 
damages or infringers profits if they can be proven.

Registration is also required (v) as a condition for filing 
a copyright infringement lawsuit. The registration 
is just the ticket for getting into court, however; you 
can register and sue even if you had not registered 
before you learned of the infringement. Also, it is not 
uncommon for plaintiffs to file a complaint and attach 
a registration application, and then to substitute the 
actual registration certificate later.

The form is a simple one and the registration fee, 
relatively trivial. Some works, like computer software 
and web sites, can pose more difficult issues, and a 
lawyers help may be needed for them. The Copyright 
Offices examination of the application is largely 
ministerial, and it does not engage in the kind of 
substantive review characteristic of patent and 
trademark applications.

owning a copy versus owning a copyright

Although a work must be fixed in order to be 
protected, the copyright in a work is not the same as 
the physical medium in which the work was fixed. 
It follows that owning a copy of a work (even, for 
example, the original of a painting) is not the same 
thing as owning the copyrights in the work. The owner 
of a lawfully transferred copy (or original) therefore 
does not own the copyrights, in the absence of an 
express copyright assignment in writing.

the rights of copyright holders and 
limiting doctrines

Under the Copyright Act of 1976 (and international 
copyright law), the copyright holder owns a bundle of 
rights. The copyright owner is the only one who has 
the right to

  reproduce the work in copies;

  prepare derivative works based on the original 

work;

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fenwick & west llp

   distribute copies to the public; or

  display and perform the work publicly.

Although the copyright holder owns these exclusive 
rights with respect to a work, there are still limits on 
the scope of the rights. These are the principal limiting 
doctrines:

  Copyright does not protect against independent 
development, only against copying. Thus, if you 
and I each independently write identical sonnets, 
without any copying, each of us owns a copyright 
in our own work notwithstanding who came first or 
that the works are the same.

  Copyright does not protect ideas, only the way the 

ideas are expressed. This is often referred to as 
the idea  expression dichotomy, although the 
distinction is really more of a continuum.

  Copyright does not protect individual words and 

short phrases.

  Copyright does not protect procedures, processes, 
systems, concepts or methods of operation that are 
embodied in works; only the particular way they are 
expressed.

  If there is only one or very few ways to express an 

idea, the expression is deemed to be merged 
with the idea and it is not protected against 
copying. This merger doctrine prevents copyright 
from being used to monopolize ideas.

  Standard treatments of a subject within a 

genre of works (known as scenes a faire) are 
not protected. (Example: the gun duel on a dusty 
main street in a cowboy movie.) The scenes a faire 
doctrine bars protection for features or elements 
of a computer program that are dictated by 
externalities such as the purpose of the program, 
standard programming practices, the requirements 
of the relevant computing environment, etc.

  Copyright does not protect facts or data. But 
the selection and arrangement of facts (e.g., in 
databases) can be protected as a compilation. In 
that event, copying the underlying facts is not an 
infringement, so long as the creativity residing in 

selecting or arranging the facts is not appropriated 
by the copier. Thus, extracting facts or data from a 
web site (so-called screen scraping) is usually not 
a copyright violation. (Keep in mind, however, that 
it might nonetheless violate the web sites terms 
of use (which may or may not be enforceable under 
contract law). And if automated software robots 
or spiders were used to collect masses of data 
from a web site, the owner of the site might also 
assert a state law claim for trespass to chattel.)

ownership and transfer of copyrights

The author initially owns the copyrights in a work. The 
author is either the individual who wrote or created 
the work or (under the work made for hire doctrine) 
her employer, if the work was created by an employee 
within the scope of her employment. 17 U.S.C.  101, 
201(b). With only a few narrow exceptions (see part (2) 
of work made for hire definition in 17 U.S.C.  101), 
when a consultant creates a work of authorship, he or 
she is the author and owns the copyrights in the work 
even if someone else specifically commissioned and 
paid for the work.

When two or more individuals contribute parts 
intended to be united into a single, unitary, indivisible 
work (e.g., the music and lyrics of a song, or the 
analytical software engine and user interface of a 
computer program), they are considered joint owners 
of the copyright in the work. Unless they contract 
otherwise, each has the power to exploit the work 
(and each may license third parties use of the work) 
without the permission of the other joint owner, 
subject only to an obligation to account to the other 
party for profits.

Copyrights can be transferred only by an express 
assignment in writing. This requirement governs 
exclusive licenses as well as assignments of the 
entirety of a copyright.

copyright infringement

The unauthorized exercise by a third party of any of 
the exclusive rights of copyright holders, such as 
copying, is copyright infringement. There is no bright 

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fenwick & west llp

 line test for how much is too much copying. But 
actionable copying is commonly presumed when the 
defendant had access to the original work and  after 
setting aside ideas or other elements of a work that 
are not protected  what is left is substantially 
similar to the original work. For works that enjoy only 
thin copyright protection (such as, for example, 
representational sculptures of real creatures), 
infringement will not be presumed unless the works 
are virtually identical or the defendant has bodily 
appropriated the original.

secondary liability

One can be liable for the infringing acts of third parties 
under three distinct doctrines. Liability for contributory 
infringement attaches if (i) with knowledge of the 
infringing acts, someone (ii) materially contributes 
to the infringement. Vicarious infringement lies if the 
defendant (i) had the right and power to control the 
infringing activity and (ii) received a direct financial 
benefit from it. Finally, one is liable for inducement of 
copyright infringement if it can be shown that one (i) 
distributed a device or technology with (ii) the object 
of promoting its use to infringe copyright, as shown 
by clear expression or other affirmative steps taken to 
foster infringement.

defenses to copyright infringement:  
fair use

Even if a work is copied in whole or in part, a prima 
facie infringement will not mature into liability if an 
affirmative defense such as fair use applies. Section 
107 of the Copyright Act of 1976 mentions criticism, 
comment, news reporting, teaching, scholarship, or 
research as examples of fair use purposes. But all 
such uses are not necessarily deemed fair use, and 
the statute directs courts to consider four factors to 
decide whether a particular use is fair:

  Purpose & character of use (e.g., commercial, 

educational, and particularly including whether the 
use is transformative  whether the new work is 
imbued with new purpose, expression, meaning or 
message);

  Nature of copyrighted work (copying of factual 
works is more likely to be deemed fair use than 
copying of creative or fictional works);

  Amount and substantiality of what was taken (it 

militates against fair use to take the entirety of the 
work or more than needed for the claimed fair use 
purpose); and

  Effect on the potential market for or value of the 

copyrighted work (it tends to go against fair use if 
the new work is a substitute for the demand for the 
original work).

examples of fair use

  Cases have held that it represented fair use, and 

therefore was not an infringement of copyright, for 
defendants to:

  Copy numerous features of the original work in 

order to create a parody that ridicules the original;

  Use thumbnail copies of photographs on a 

website as part of a visual search engine;

  Copy and display photographs when the photos 
themselves are the subject of commentary or a 
public controversy;

  Copy television programming for purposes of time-
shifting (make temporary copies so the consumer 
can view the programming later); 

  Copy the full text of millions of books, when the 

texts are not made available to end-users for 
reading, but are only used for data mining or to 
enable searches to locate small excerpts from the 
books.

  Transfer digital copies of recorded programming, 

which consumers lawfully possess, to their mobile 
devices;

  Reverse engineer and copy the code of a game 
program, as an intermediate step, when that is 
required in order to understand the functional 
specifications of the work and when those 
functional specifications are needed to prepare 
new, compatible, non-infringing games to operate 
on the same platform.

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fenwick & west llp

 Mitchell Zimmerman is Of Counsel at Fenwick & West LLP, 
and a member of the firms Intellectual Property Group. He 
can be reached at mzimmerman@fenwick.com. 

2006, 2015 Fenwick & West LLP. Some Rights Reserved. 

fenwick & west llp intends this article to provide basic 
education in copyright law. it is not intended, and should not 
be regarded, as legal advice. readers who have particular 
questions about these issues should seek advice of counsel.

affirmative defenses: copyright misuse

The use of the copyright to secure (i) an exclusive right 
or limited monopoly (ii) not granted by the Copyright 
Office and which is (iii) contrary to public policy 
constitutes copyright misuse. Cases have therefore 
held it to be misuse to impose terms in a copyright 
license that require the licensee to agree not to create 
new, non-infringing works of the same genre, to agree 
not to purchase competing non-infringing works from 
third parties, or to agree to limit access to the work 
in a way that precludes the creation of new, non-
infringing works.

The copyright misuse defense can be asserted by 
a defendant who was not a party to the misuse-
embodying license or contract. Misuse does not 
invalidate the copyright, but renders it unenforceable 
for the period of misuse and until the results of the 
misuse are purged.

and about speak volumes recovery 
group...

Getting back to your client, you can now explain

That copyright, not trademark, is what 
protects their PowerPoint presentations and 
handouts, and the advantages of registration;

That copying photos off the internet is likely 
copyright infringement, and they need to 
license rights to the photographs useful in 
their business; and

That copyright law wont prevent SVRGs 
competitors from using the ideas contained 
in the SVRG manual, though it may perhaps 
be possible to protect the companys ideas 
through a business method patent or as trade 
secrets.

But those are subjects for another day.

5  copyright basics 

fenwick & west llp