comments

Thanks to those of you who have already signed up--this is going to be a really great group.

I'll send a few more reminders on this, but please bring to this seminar a copy of whatever document you use to sell or license your creative works to your customers. During the session we'll break into small groups for 20-30 minutes to specifically discuss what you like and what you don't like (or maybe don't understand) about your current contracts. That way we'll all come away with some ideas for best practices.

Looking forward to seeing you all on the 15th!

--John

@Richard G, @Darlin, & @Bill: Thank you for your kind comments. Glad you've found the article helpful.

@Richard A: There's a chance that the statute of limitations may have run if your competitor has been using the excerpts for more than three years. If that's the case, be sure to talk with your attorney about the concepts of "continuing infringement" or "republication" which can reset the clock in certain circumstances.

Thanks to all for the suggestions. One other recommendation that I got through an email rather than on this post was to fellow Bizniker Debbie Whitlock. Figured she deserves to be on this thread as well.

Ila and Kristen:

I do need to keep the attendance at 12 (originally 10 and that was about the right fit for the room last time), but I will let you both know if someone cancels their RSVP and I will also be holding more seminars in the coming months.

--John

Thomas:

Short answer: no. Under section 202 of the Copyright Statute, ownership of a physical copy of a work does not, by itself, convey any of the copyright rights to that work. There is an exception found in section 109(c) that allows the owner (such as a museum that buys a painting) of the physical work, or of a lawful copy of that work, to publicly display that original or copy despite what section 106(5) says. But without a grant of further rights (which must be in writing and signed by the copyright holder under section 204--an oral agreement isn't enough) then the museum couldn't do anything else reserved under section 106 like make postcards of the work or put the painting on its website.

Tom:

I sympathize with your plight; I think people who are just starting out in the arts--particularly in the music and film industries--face an uphill battle against larger and more experienced players. But just because the festivals you mention try to disclaim liability doesn't mean you wouldn't have an infringement claim if someone copies your work. Particularly with something like a screenplay, where the idea and the expression can be closely intertwined, if you think someone has ripped you off then you should talk to an attorney to discuss your options.

Thomas:

I couldn't agree more--the first step should be to do the right thing, and if the law doesn't back you up then society's got a problem. That said, the idea/expression dichotomy has always been a sticky area of copyright law since it rides the line between what is a legal right vs. what the marketplace will support. To illustrate this, let's flip your hypothetical around: Say someone takes some lousy photos of women and flowers and you say to yourself, "I can do better than that," so you grab your camera and do your own shoot. Turns out you were right and your photos sell well, but the original photographer turns up and demands a share of your profits for stealing his idea. Just because the marketplace favored your photos over his doesn't mean you should owe him money; but if your works are close copies then maybe he has a point. This is at the core of the difference between unprotectable ideas and the protected expression of them. As you indicated, the line can be blurry, and courts have even found that "unconscious copying" can trigger damages. But I think your advice is fundamentally sound: if you are driven by inspiration and your own artistic vision instead of profit-motive, you will usually come out OK.

Bal:

Without knowing more about your individual situation, I can't say whether or not your approach makes sense. I think your concerns regarding jurisdiction and security are valid ones, but there may still be ways to make your work easier.

Bal:

First I want to address your comment regarding your current method for avoiding copyright issues by re-writing the summaries you get from outside writers. While this could work, it seems awfully labor intensive and expensive. Why not make sure that any contract you have with your contractors includes a license for you to use their output for your end project (whatever it may be)? Who knows, your existing agreements may already cover this sort of thing. I'd take a closer look, and try to rewrite them if they don't.

Regarding search engines and their use of online material, the short answer is that search engine uses of many types of content have been designated as "Fair Use" by various courts, including the Supreme Court.

Fair Use is worthy of an article all by itself, but the basics are that courts consider four factors-- mandated by statute, 17 U.S.C. 107--in determining whether a particular use of someone else's work is a fair use:

(1) the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

Cases concerning search engines typically focus on the "transformative" nature of the use under the 4th factor, offering the opinion that enabling users to find a particular work doesn't diminish the market for the underlying work. For a look at the 9th Circuit's discussion of the matter is it pertains to thumbnails of photographs used in online search, see Perfect 10, Inc. v. Amazon.com, Inc. , 487 F.3d 701 (9th Cir 2007) , more commonly known as Perfect 10 v. Google (link is to a PDF file).

As I said, Fair Use is worthy of its own article, but feel free to contact me if you have further questions.

And always remember that the purpose of Copyright Law is expressed in the Constitution in Article 1 Section 8 : "To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." The doctrine of Fair Use is there to make sure that the grant of a limited monopoly is balanced against the promotion of progress, and there is a natural (and I think ultimately beneficial) tension between the two.

Hi Bal:

I understand your frustration; it can be very difficult tracking down the owners of content you'd like to use. But if you do not definitively establish your right to use a work--either by getting permission from the proper rights holder or confirming that the work is in the public domain--you will run at least some risk of someone making an infringement claim against you.

If you are worried about somebody selling you an infringing work (the plagiarized shortcut you mention), the best approach is to make sure that the person who sells you the work takes full responsibility for it. (See the discussion of warranties and indemnification clauses in points 2 and 3 of my article.)

The daunting feeling of the task you describe is exactly what Congress is trying to address in the Orphan Works legislation I mentioned in a previous comment. The general approach being proposed is that where someone makes a good-faith effort to track down and license a work but honestly can't find the license holder, then if the license holder later surfaces with an infringement claim she would only be entitled to a reduced damage award (currently proposed at a couple hundred dollars). This would more or less be an expansion of the existing "innocent infringement" defense which allows an infringer to reduce a damages award (but doesn't absolve him of all liability). The current "innocent infringement" test can be difficult to meet, so the "orphan works" proposal would attempt to mark a clearer path.

Also, for help in determining what is or isn't in the public domain, I recommend Steven Fishman's Book, "The Public Domain: How to Find & Use Copyright-free Writings, Music, Art & More."

Hope this helps. If you have questions about a particular work you'd like to use or need to have someone review your contract with a content provider, I would be happy to consult with you to determine your best course of action.

Hi Koren:

Written copy can be protected the same way as any other work of authorship: Copyright protection attaches as soon as the work is created, and an author can realize additional benefits by registering the work with the Copyright Office.

As for licensing copy for use in a website, this primarily comes into play if you utilize the written works of some third party. If you generate your own copy for your website, then obviously you are the author and own the copyright. If your web developer generates copy, then you should have it spelled out in your contract how the ownership of the copyright in the text will be handled and who has the rights to that text going forward (there are a few different ways of handling this that I won't go into here).

If you use some third party copy, however, then you need to ensure you have the proper rights to use it just as you would a photo, video, or other media type (subject to the same Fair Use exceptions). For example, if you create a Brett Favre fan site and you post on that site the text of a New York Times article discussing his trade to the Jets, you've very likely infringed on the Times's copyright in that article (the news event itself isn't covered by copyright, but the expression of that news item by the Times reporter is protected).

In my experience, some of the most common instances of copyright infringement regarding the copy on a website involve the legal copy: Terms and Conditions, Privacy Policies, etc. Lots of web developers and website owners, as a shortcut, simply copy and paste these legal documents from other well-known sites to avoid the costs of hiring an attorney. Certainly this is a bad idea from a contract-law perspective because another company's needs for these documents are likely to be different from your own. It is also a clear copyright violation; either the attorney who originally drafted the text or the website owner for whom she drafted it could come after you with an infringement claim.

Carol, in her comment above, already mentioned the Copyscape service. This makes it awfully easy for the rights holders in website copy to come after infringers in much the same way photographers can use PicScout or Tineye to monitor use of their photographs., so I would have to say that here to, it is not a matter of whether you'll get caught, but when.

Chris:

The petition you saw is probably referencing the proposed "Orphan Works" legislation that is currently winding its way through Congress. Briefly, an "orphan work" is a copyrighted work whose author is impossible to identify or locate.

Under previous versions of the Copyright Act, this wasn't as much of a problem because the initial duration of copyright protection was relatively short (28 years from publication), but an author could extend protection for another period of time by filing a renewal with the Copyright office.

This made determining whether a work was in the public domain reasonably easy. The logic (oversimplified) went something like this: if a published work is older than 28 years and no renewal was filed, then it is in the public domain. (For a great tool to help with Public Domain calculations, see the Copyright Slider at http://librarycopyright.net/digitalslider/.)

Lots of electrons have been spilled online regarding the Orphan Works issue, and many of the heavy hitters in the media industry have staked their positions. For an overview of the report that the Copyright Office created on this topic and links to the proposed legislation, see http://www.copyright.gov/orphan/. For commentary from various interest groups, just search the term "orphan works" online and the results will keep you busy for as long as you care to spend on them.

If you have any specific questions or concerns regarding your own works and how their copyright protection may be impacted by this legislation, I'd be happy to talk more about it with you offline.

Reba:

Good question regarding your blog. I think Carol's mention of "Fair Use" is appropriate and is likely to apply to your blog, but I'd have to know more about your specific postings to say for sure. Of course the safest route, as Carol also mentioned, is to get permission to use the logos. But I don't think spending the time doing so is always necessary, again depending on your particular situation.

The copyright office publishes a fact sheet on Fair Use on its website, http://www.copyright.gov/fls/fl102.html. Also, the Stanford Library runs a Fair Use Project with great information, http://fairuse.stanford.edu/, and Stanford Law Professor Martha Minnow writes a Fair Use blog that is accessible from that page.

If you have detailed questions regarding what is or isn't fair use I'd suggest contacting an attorney, but hopefully the resources above will give you a good start.

Bob:

I think your situation is all too common. I plan to write another article in the near future discussing the other side of the coin from this one: what to do when you discover someone has infringed on your work. As a short answer I'd say out that you probably have a legitimate claim for monetary damages--just taking the infringing work down doesn't absolve an infringer of liability. Of course going after payment may be more trouble than it is worth, especially if you didn't register the copyright and therefore aren't entitled to attorney's fees. I'd have to know more about your particular situation to go any deeper.

I will point out that if the infringer hadn't removed the photograph upon your request, then she could be found liable for intentional infringement which carries penalties of up to $150,000, so it is good (for the infringer) that she at least took the photo down.

Darol:

Again, good questions. The short answer is that patent, copyright, trademark, trade secret, and other intellectual property concepts all protect different things and they do so in different ways. Other types of information, ideas, and concepts may not fall under any type of established intellectual property legal scheme and can only be protected through contractual agreements between parties that share the information, idea, or concept with each other (things like nondisclosure agreements can help protect these items).

Copyright law is very explicit that it protects the expression of an idea, but not the idea itself. For example, if you decided to write a children's book that chronicles the life of a boy wizard at a magic academy, you are completely free to do so. It is only when you name your lead character Harry Potter that you will start to run afoul of copyright law.

And certain items, like the software you describe, can be covered by more than one intellectual property scheme. As a hypothetical, say you receive a patent for a "System or Method of Calculating Copyright Damages" that covers a piece of software that you wrote to solve that problem. Such a patent gives you the sole right to exploit that particular solution to the problem for the statutory period (typically 20 years from filing the patent application but this can vary depending on when you first obtained the patent).

On top of the patent you also get copyright protection in the software code itself, since it is the expression of the underlying idea. Once your patent expires, some third party is free to write their own software program that calculates copyright damages and there's nothing you can do about it. But they cannot just take your software code and start distributing it without your permission because that would still amount to copyright infringement.

Similar scenarios could be devised where an item is covered by both trademark and copyright or copyright and trade secret. Again, my hypotheticals are overly simple, but hopefully they illustrate the point.

One other point of clarification to your post: copyright infringement doesn't necessarily require verbatim copying to be actionable; in some situations "substantial similarity" can be enough to establish infringement.

If you want to learn more about the interplay of various IP laws, there are many resources online and in print that can help get you started. If you have a particular issue in mind that you're concerned about, let's talk offline.

Darol:

You pose a good question. What you are describing is sort of a concept of "efficient infringement" (borrowed from the contract law notion of "efficient breach," where it is cheaper for a party to breach a contract and deal with damages than it is to continue performance on the agreement). If I understand your question correctly, you're asking whether a cash-strapped business owner may be better off not licensing a work up-front and dealing with any damages once he gets caught than he would be to license a work ahead of time.

The answer here is an emphatic "no!" In writing the copyright statute, Congress anticipated people trying this system and came up with specific remedies to deter it. As a general rule, copyright law is very strong in favor of copyright holders.

When someone infringes a copyright, the copyright holder is entitled to recover both (1) her actual damages (i.e. the price you would have paid had you licensed the work up front), and (2) the profits of the infringer. Not only that, but in calculating the profits of the infringer, all the copyright holder has to do is show what the infringer's gross revenues were during the infringement, and the burden then shifts to the infringer to prove what portion of those gross revenues were due to things other than the infringement--undoubtedly an expensive and cumbersome task. And if the copyright holder had the forethought to register the work prior to the infringement (or within 3 months of it's first publication), she can elect to pursue statutory damages and attorney's fees.

One of the points of my article is that with detection costs coming down and technology improving, getting caught infringing is now a matter of "when," not "if." And with plenty of low-cost licensing options available (for photography, try one of the microstock agencies listed at http://www.microstockdiaries.com), there is really no reason to risk the expense and hassle of defending an infringement claim.

As for your question around what are the practical remedies as opposed to the legal ones, that can be all over the board depending on who the copyright holder is. The problem with infringement is that if you don't know who the copyright holder is to begin with, you risk using a work that may have some powerful forces behind it. Sure you may just grab someone's family snapshot from Flickr, but that snapshot may actually belong to a professional photographer who is able to command thousands of dollars per photo. There are other benefits to licensing content as well, specifically regarding model and property releases. If you don't know where a photo comes from, you may be liable for misappropriation of likeness, invasion of privacy, or other possible tort claims, in addition to copyright infringement.

I should note that what I've described is a very brief summary of possible copyright damages. Anyone who has more specific questions should contact an attorney to discuss them further.

Ute, I think your point is a good one. I used images as an example primarily because the TinEye service is helping individual photographers access technology that was once only available to large media companies. But any work of authorship that can be expressed digitally will lend itself to similar detection technologies so long as there is a large enough market for a computer programmer to go to work on the problem. Music and sound recordings already have detection services, and other media will surely follow.

Not only that, but I suspect that in the next several years we'll see consumer software advance past recognizing entire works to detecting individual objects within those works. Object recognition would, for example, allow a sculptor to find photographs or videos that depict her work. A form of this technology is already used for facial recognition in security situations, and it is only a matter of time before consumer-level applications begin to unfold.

Whether the above-mentioned depiction of a sculpture in a photograph would amount to infringement or would be considered "fair use" is a legal question, and it isn't always an easy one. But as detection improves, we will be asking that question more often.