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Copyright Portfolio Development Return to Practice Areas & Industries

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Practice/Industry Group Overview

We focus our efforts on ensuring that clients properly maintain copyrights and make informed choices as to when to seek copyright protection. Our attorneys assist clients in obtaining federal copyright registrations and in enforcing and defending their copyrights in court.

 

Sunstein Approach to Copyright Portfolio Development and Management

 

 

Copyrighted works are potentially valuable assets, which must be protected and managed accordingly. We devote careful attention to the development of our clients' copyright portfolios, much as we do their patent, trademark, or trade secret portfolios. Our representation in this area includes securing and maintaining copyright registrations, and enforcing our clients' copyrights. Whether developing strategies for protecting copyrights in historical photographs of Martin Luther King, the archives and papers of The Edna St. Vincent Millay Society, or the sophisticated computer software of technology companies, we always assess how our legal work advances our clients' larger goals.

Developing a comprehensive plan and budget. In helping our clients evaluate and protect their intellectual property assets, we review copyrightable materials, associated trademarks, and other intellectual property, determine the scope of the rights that need to be protected, and develop a reasonable budget for protecting them. We also advise our clients to establish internal responsibility for the protection of copyright assets, which can sometimes be accomplished by setting up an internal working group, with one individual acting as liaison with the copyright counsel.

Assessing the value of IP assets. As a first step in developing a copyright portfolio, we guide our clients in assessing the value of their intellectual property, both to themselves and to their competitors. Establishing value is part of a strategic plan that ensures that the most valuable assets are appropriately protected.

Registering copyrighted works. After the works have been evaluated, we establish a plan to register qualified assets with the United States Copyright Office. For example, we help our clients determine whether each version of a software program should be registered or whether, when modifications are made frequently, it is preferable to register versions only on a fixed schedule, such as quarterly or semi-annually. We have extensive experience working with the Copyright Office to register original works of authorship and successfully appealing initial refusals to register. We regularly establish docketing systems for tracking and renewing registrations, as appropriate. We also provide guidance on the use of a copyright notice, and the appropriate format of the notice.

Understanding registration issues. While registration is not required for a copyright to exist in a work, it is a jurisdictional requirement for a U.S. owner seeking to sue for infringement, is necessary for recovering statutory damages, and can be recorded with the U.S. Customs Service (which may seize infringing merchandise). In addition, a certificate of registration issued within five years of the first publication of the work confers a presumption in judicial proceedings that the copyright is valid. On the other hand, because registration requires deposit with the Copyright Office of at least some portion of the work (there are provisions for deleting trade secret information), which becomes part of the public record, there are circumstances where clients may prefer not to register certain works. We guide our clients to the right decision.

Licensing copyrights. Once a copyrightable work has been identified and/or registered, we work with our clients to develop licensing strategies. We draw on our knowledge of the relative merits of exclusive vs. nonexclusive licenses, including the complex issues in the creation of derivative works by licensees, as well as the circumstances that might give rise to an implied license. We also advise our clients regarding copyright assignments, including evaluation of when revocation of a copyright assignment might be available.

Policing copyrights. Portfolio management requires policing these rights. We work with our clients to implement policies for monitoring the field efficiently and uncovering infringement. For example, employees may be educated to be alert to copyright issues when they attend trade shows and review trade magazines and newsletters. If infringement is discovered, we counsel our clients regarding an appropriate enforcement strategy.

Our lawyers' technical depth and extensive experience developing and managing intellectual property portfolios enable us to assist our clients in enhancing the business value of their copyright assets.

Please contact an attorney in our Copyright Practice Group if you are interested in exploring how we can assist you in connection with copyright matters.

 

Copyright fundamentals

 

In this section we offer an introduction to copyrights and the differences between copyrights and trademarks. We have also included information on how to obtain a copyright, both in the United States and internationally, as well as an overview of licensing and transferring copyrights.

This material should be considered informational in nature, as it does not constitute legal advice. If you have specific questions, please direct them to Sunstein's Copyright Practice Group.

Our attorneys advise clients regarding the protection provided by law to copyrightable works. Below, we answer some frequently asked questions concerning copyrights. Copyright law has changed significantly over the years. This summary does not address prior versions of the federal copyright statute. The summary is provided for informational purposes only, and does not constitute legal advice. Any specific question about copyright law should be directed to an attorney in our Copyright Practice Group.

 

FAQ About Copyrights

 

Q: What is a copyright?

A: The term "copyright" refers to a set of intangible property rights that an author has in certain works that he or she has created. These rights are governed by federal statute, and include the exclusive right to reproduce the work, to prepare works derived from the copyrighted work, to distribute copies to the public, and to perform or display the work publicly. The copyright owner can prevent others from reproducing or using the copyrighted work in an unauthorized manner, subject to certain "fair use" exceptions, such as limited use of the material for teaching, news reporting and commentary.

The copyrights in a work are separate from the work itself and, in the absence of an agreement to the contrary, are not transferred when the work itself is sold or given away. Thus, an artist who creates a painting and sells it to a collector has not given up the copyrights in the work and may prevent the collector from making and selling posters or postcards of the painting. Although the collector does not have copyrights in the work, under U.S. copyright law, he or she does have the right to display and sell the work itself.

Q: What kinds of material are protected by copyright?

A: The works protected by the federal copyright laws include literary works (including computer programs), musical works, dramatic works, pantomimes and choreographic works, pictorial, graphic, and sculptural works, motion pictures and audiovisual works, sound recordings, and architectural works.

Q: What is the difference between copyright, patent and trademark?

A: Copyright law, patent law and trademark law are independent legal doctrines, and are governed by separate federal statutes. However, some works may be protected under more than one doctrine. Generally speaking, copyright law protects original works of authorship that are fixed in a tangible form of expression, such as books, paintings, sculptures and films. Patent law protects novel and non-obvious inventions, such as machines, manufacturing processes and synthetic drugs. Trademark law protects brand names, such as Reebok® and Pepsi®.

Copyright law protects the expression of a work, but not the underlying ideas. Thus, the copyright owner of a movie cannot prevent others from making movies with the same basic plot elements or themes unless so much material is copied from the original work that the works are substantially similar. Ideas, methods or processes contained in an expression, though not protected under copyright law, can sometimes be protected under patent law. This is often the case with computer software. In addition, although copyright law often does not apply to titles, names, short phrases or slogans, these works may be protected under trademark law. Because our firm's practice includes patent law and trademark law in additional to copyright law, we are able to assist our clients in developing the best strategy for the protection of their intellectual property rights.

Q: How are copyrights obtained?

A: Under the current law, at the moment that a copyrightable work is physically created, it is automatically and immediately protected by copyright law. It is not necessary to obtain a copyright registration, although there are several advantages to doing so. A copyright notice may be placed on publicly distributed copies of the work regardless of whether the copyright has been registered. While not required by law for works first published after March 1, 1989, a copyright notice provides the important function of informing the public of the author's claim of copyright and, in the event of copyright infringement litigation, can eliminate the defense of "innocent infringement" (i.e. that the infringer was not aware of the copyright claim), which may affect the amount of damages the owner of a registered copyright can recover.

Q: Who owns the copyrights in works?

A: Generally speaking, the author of a work is the sole owner of the copyrights in that work. In the case of a work that is jointly authored by two or more people, the copyrights will be owned jointly by those people in equal shares. These rights can be altered by contract, however, and it is a good idea to decide at the beginning of a project who the copyright owner will be and to prepare a written agreement reflecting that arrangement in order to minimize the possibility of litigation later on.

Q: Who owns the copyrights in works made for hire?

A: The copyright statute provides that the owner of copyrights in a "work for hire" is the party for whom the work was created, not the party that actually created the work. What is a work for hire? The statute defines a work for hire as (1) a work prepared by an employee within the scope of his or her employment; or (2) a work prepared for another if the parties enter into a written "work for hire" agreement and the works consist of contributions to a collective work, translations, instructional or explanatory texts, and certain other materials specified in the statute. Thus, if an employee prepares a work within the scope of his or her employment, the employer and not the employee is considered to be the author and the copyright owner. Consultants or independent contractors, on the other hand, generally retain the copyrights in the works that they create in the absence of a work for hire agreement. We have advised employers, employees and independent contractors regarding copyright matters and, when necessary, have drafted copyright assignments, licenses and contracts in order to transfer ownership and other rights in accordance with the true intentions of the parties.

Q: Where can I get additional information?

A: For additional information or assistance with a particular copyright issue, please contact a member of our Copyright Practice Group. In addition, the U.S. Copyright Office publishes circulars concerning a number of copyright issues. These circulars can be obtained by calling the Copyright Office at (202) 707-3000 or visiting the Copyright Office's home page.

 

Federal Copyright Registration

 

Our attorneys have obtained federal copyright registrations for textual works, computer software, sound recordings, and works of visual art such as paintings and sculptures on behalf of clients in a variety of fields. We handle all aspects of the copyright registration process, including drafting of the application, responding to any objections posted by the United States Copyright Register's Office, and ensuring the accuracy of the registration certificate.

The copyright registration process and the benefits of copyright registration are summarized below. This summary is provided for informational purposes only, and does not constitute legal advice. Any specific question about copyright law should be directed to an attorney in our Copyright Practice Group.

Overview of Copyright Registration Process

A party can apply for federal copyright registration for certain original works either before or after the work has been made publicly available. An application form, together with "deposit" copies of the work, must be filed with the Copyright Office. The Copyright Office reviews the application and may require corrections, clarification, or additional information, or may refuse to register the copyright claim for various reasons. The Copyright Office does not determine whether the work infringes another copyright.

In the event of a refusal to register, an applicant may respond to the Copyright Office's objections by filing a request for reconsideration by the Examining Division, and, if registration is again refused, by filing a request for reconsideration by a Review Board. If the Copyright Office agrees to register the copyright claim, it issues a copyright registration certificate. The term of copyright protection depends upon the year in which the work was first created and published. For works created on or after January 1, 1978, the copyright expires 70 years after the author's death. For works made for hire created on or after January 1, 1978, the copyright duration is 95 years from publication or 120 years from creation, whichever is shorter. For works created prior to January 1, 1978, the copyright term generally lasted 28 years but could be renewed for an additional period during the 28th year. Calculating the duration of copyright terms of works created prior to January 1, 1978 requires careful analysis and must be based on the individual facts of each case.

Benefits of Federal Copyright Registration

Required for Infringement Suit. Generally speaking, unless the copyrighted work has been registered (or the Copyright Office has refused registration although the required deposit, application and fee were properly filed), a court action for infringement of the copyright will be dismissed.

Required for Statutory Damages. If registration is made within three months after the first publication of the work or prior to infringement, certain damages and attorneys' fees provided by law will be available, in addition to actual damages and lost profits.

Presumption of Validity. In any judicial proceeding, a certificate of registration issued within five years of the first publication of the work confers a legal presumption that the copyright is valid and that all facts stated in the copyright registration certificate are true.

Protection Against Importation of Infringing Copies. A copyright owner can record the registration with the U.S. Customs Service for protection against the importation of infringing works.

 

Copyright Durations

 

The summary below is provided for informational purposes only, and does not constitute legal advice. Any specific question about copyright law should be directed to an attorney in our Copyright Practice Group.

General Framework

The general framework for understanding statutory copyright duration involves the change of law effective January 1, 1978 (the 1976 Copyright Act). Under the prior law (the 1909 Act) the copyright term began on the date of publication or registration, and originally lasted 28 years; a series of laws, culminating in the Sonny Bono Term Extension Act of 1998, extended the term to a maximum, for some works, of 95 years from publication. The U.S. Supreme Court has upheld the constitutionality of the Sonny Bono Act. Eldred v. Ashcroft, 537 U.S. 186 (2003).

Under the 1976 Act, as amended by the 1998 Act, the copyright term for works created on or after January 1, 1978 begins on the date of creation and ends 70 years after the author's death, 95 years from publication, or 120 years from creation (depending on the nature of the work, its authorship, and its date of publication).

This term also applies to works created but not published or registered before January 1, 1978. In addition, the 1976 Act, as amended, provides these works with a minimum term until the end of 2002; the term is extended, if the work was published by the end of 2002, through 2047.

We have prepared a flow chart setting forth some general guidelines regarding the duration of United States federal statutory copyright. There are a number of exceptions to these guidelines. In most cases, these exceptions may involve expiration prior to the theoretical date indicated. However, in some cases, copyright protection may continue past the indicated date. In addition, some remnants of state common law copyright protection continue to exist, and may provide protection even when federal copyright does not. See, e.g., Capitol Records, Inc. v. Naxos of Am., Inc., 4 N.Y.3d 540 (2005) (holding that New York state common law copyright protects sound recordings made before 1972 until February 15, 2067).

We recommend consulting with an attorney in our Copyright Practice Group before relying on any conclusions concerning the copyright status of a work reached using this flowchart.

Dates of Note

Use of the flowchart will reveal the following categories of works that have already entered the public domain, and works that will enter the public domain in the next few decades:

  • Works published (or registered when unpublished) before January 1, 1923.
  • Works published (or registered when unpublished) before January 1, 1964, for which the registration was not properly renewed.
  • Works published before March 1, 1989 without a proper copyright notice (where the defect was not cured and no exception applied).
  • Works created before January 1, 1978, not registered as an unpublished work before January 1, 1978, and not published before December 31, 2002 entered the public domain on January 1, 2003, if the author died before 1933. If the author died in 1933, the work entered the public domain on January 1, 2004; if the author died in 1934, the work entered the public domain on January 1, 2005, and so on.
  • If the work was a work for hire, or was anonymous or pseudonymous, it entered the public domain on January 1, 2003 if the work was created before 1883. If the work was created in 1883, the work entered the public domain on January 1, 2004; if it was created in 1884, the work entered the public domain on January 1, 2005, and so on.

     

  • Works published (or registered when unpublished) in 1923, 1924, 1925, 1926, and so on, and properly renewed will enter the public domain on January 1 of the years 2019, 2020, 2021, 2022, and so on, respectively.

     

 

Copyright Investigation

Our attorneys can obtain information concerning copyright registrations and renewals for particular works. In some cases, we use the U.S. Copyright Office web site (discussed below); in others, we use a professional copyright search firm. We can also obtain listings of assignments, licenses, liens and mortgages and other documents recorded with the U.S. Copyright Office.

Information including copyright registrations and renewals dated January 1, 1978 and later can be researched at no charge on-line, at the U.S. Copyright Office internet web site at www.copyright.gov/records. (The web site also includes useful information on a variety of copyright-related topics, including copyright duration. The Copyright Office offers circulars, some available on-line and others available on request, on particular topics.)

Information concerning registrations and renewals between 1891 and 1982 is available in the Catalog of Copyright Entries ("CCE"), published by the Copyright Office. A number of libraries maintain copies of the CCE. The Boston Public Library has a set, although a number of volumes have been damaged and are available only on microfiche. The CCE does not include information concerning assignments or other recorded documents, or the addresses of copyright claimants.

Most Copyright Office records are available to the public at the Library of Congress. In addition, the Copyright Office will search its records for you at an hourly rate that includes the search and a written or oral report.

Foreign Rights and Works

The flow chart concerns only U.S. copyright law. Copyright in a work can expire under U.S. law, but remain valid under the law of another country. Thus, if you make use of a work in another country or on the Internet you may be subject to liability under the laws of a foreign country, even though the work has entered the public domain in the U.S.

Under current law, foreign authors from most countries are accorded the same exclusive rights under U.S. copyright law as they would have if they were U.S. citizens.

Under the 1909 Act, works of foreign authors entered the public domain by virtue of being first published in the U.S. before January 1, 1978, unless they qualified for protection under some other basis, which many did.

Works by foreign authors that were first published abroad before January 1, 1978 similarly entered the public domain unless they qualified for protection under some other basis, but copyright in such works, if lost due to lack of national eligibility, was later restored if the work was not in the public domain in the country of first publication and if certain other requirements were met. (The same law restored the copyright in foreign works that entered the public domain due to other reasons, including publication without notice of copyright before March 1, 1989, or failure to renew U.S. registration when such renewals were necessary.)

 

Licenses and Transfers

 

The need for copyright licenses and assignments can arise in a variety of circumstances. For example, a company that engages an independent contractor to create original works, including textual materials or computer software, should consider whether to seek a copyright assignment from the contractor. In many cases, a license rather than an assignment will be appropriate. A license enables a party to use a copyrighted work in ways specified in the license agreement, but does not transfer ownership of the copyright. Copyright assignments and licenses are commonly used in the fields of software development and consulting, publishing, visual arts and performing arts. Our attorneys have experience in negotiating and drafting copyright assignments and licenses of all types. For more information, contact an attorney in our Copyright Practice Group.

The U.S. Copyright Office publishes circulars concerning copyright licenses, transfers, and other topics. These circulars can be obtained by calling the Copyright Office at (202) 707-3000 or by visiting the Copyright Office's home page. For information relating to transfer of copyright, request Circulars 12, 15a and 15t.

 

International Copyright Protection

 

The summary below is provided for informational purposes only, and does not constitute legal advice. Any specific question about copyright law should be directed to an attorney in our Copyright Practice Group.

There is no international law of copyright, and each country has its own copyright laws which may differ greatly from one to another. However, two international treaties prescribe minimum standards for member countries and require each country to provide "national treatment" to citizens of other member countries. These treaties, the Universal Copyright Convention (UCC) and the Berne Convention for the Protection of Literary and Artistic Works, have been signed by over 100 countries, including the United States and most of the other industrialized countries in the world. The number of countries that adhere to the provisions of these treaties is likely to grow, as countries that wish to sign the General Agreement on Tariffs and Trade (GATT) treaty must also agree to abide by the terms of the Berne Convention.

The UCC and Berne Convention provide certain minimum copyright protection in the member countries, such as the protection of literary works and a duration of copyright for a term consisting of the life of the author plus 50 years. Many countries differ in their interpretation of copyrightable subject matter and the elements of infringement, however, and some countries provide additional protections beyond what is required by the UCC and Berne Convention. If a citizen of the United States believes that his or her copyrights are being infringed abroad, we can refer him or her to competent legal counsel in the country where the infringement is occurring so that he or she can proceed under the laws of that country. Under the "national treatment" provisions of the UCC and Berne Convention, member countries must afford the same copyright protection to the works of U.S. citizens that is available to the works of its own citizens. We have a network of foreign associates around the world who are available to assist our clients protect and enforce their copyrights abroad.

The U.S. Copyright Office publishes circulars concerning international copyright protection, and other topics. These can be obtained by calling the Copyright Office at (202) 707-3000 or by visiting the Copyright Office's home page. For information on international copyright protection, including an alphabetical list of countries that have joined the UCC and Berne Convention, request Circular 38a.