What Every Lawyer Should Know about Copyright Law
by James D. Nguyen
(County Bar Update, June/July 2005, Vol. 25, No. 6)


What Every Lawyer Should Know about Copyright Law


By James D. Nguyen, partner in the Los Angeles office of Foley & Lardner LLP. He is co-leader of the firm's Trademark & Copyright Enforcement and Litigation Team, and also co-chairs his firm's Entertainment & Media Industry Team. The opinions expressed are his own.


1. What is copyrightable?

Copyright law is governed by the Copyright Act of 1976, 17 U.S.C. Sec. 101 et seq. Section 102 of the Copyright Act defines copyrightable subject matter as "original works of authorship fixed in any tangible medium of expression." Basic ideas and concepts are not copyrightable; an author must express an idea in tangible form before copyright protection arises. Copyright is a very broad form of intellectual property. In addition to traditionally protected works such as literature, motion pictures, and music, courts have applied copyright to such "less expected" works as jewelry, belt buckles, glass sculptures, furniture designs, and architectural structures.


2. What is a work-for-hire?

Section 101 of the Copyright Act defines two categories of works that may be a "work made for hire." First, any work prepared by an employee within the scope of the employment relationship qualifies. No written agreement is required between employer and employee to trigger this first category, though it is often advisable for employers to make this clear in writing with their employees. The second category of "specially commissioned" works typically is invoked to cover works created by an independent contractor. A common misconception is that parties can agree to make any type of work created by an independent contractor into a "work for hire." In reality, this category applies only to specific types of commissioned works: (a) a contribution to a collective work (such as an article for a magazine issue); (b) part of a motion picture or other audiovisual work; (c) a translation; (d) a supplementary work; (e) a compilation; (f) an instructional text; (g) a test or answer material for a test; or (h) an atlas. Unlike the employment context, there must be a written document signed by the parties expressly agreeing that these "specially commissioned" works are made for hire.


3. What rights does a copyright provide?

A copyright owner has the following "bundle" of exclusive rights in the copyrighted work—the right to (a) reproduce or make copies of the work; (b) prepare derivative works; and (c) distribute copies of the work to the public. For a literary, musical, dramatic, choreographic, pantomime, or motion picture work, the owner also holds the exclusive right to perform the work publicly. For sound recordings, the owner has the exclusive right to perform the work by means of a digital audio transmission. 17 U.S.C. Sec. 106. Copyright owners can give or license any or all these rights to other parties.


4. Is it necessary to register a work to get copyright protection?

A common misconception is that a work needs to be registered with the Copyright Office before it can receive copyright protection. Government approval is necessary to obtain patents and to federally register a trademark. However, under the current Copyright Act, registration is not a condition for copyright protection. The copyright to a work exists when it is created, i.e., fixed in a tangible medium of expression. However, there are some important benefits to obtaining a copyright registration. Generally, a copyright owner can file suit to enforce the copyright only if the copyright is registered or at least if a copyright application has been submitted. 17 U.S.C. Sec. 410. (There is some disagreement among the courts about whether the mere filing of a copyright application is enough, or whether the copyright registration must be issued or denied, before a copyright suit can be filed.) In addition, a copyright owner can seek statutory damages and attorney's fees only if (a) for an unpublished work, the copyright owner registered the work before the alleged infringement began; or (b) for a published work that is infringed after publication but before the effective date of registration, the copyright owner registered the work within three months after the work was first published. 17 U.S.C. Sec. 412. Therefore, it is advisable for copyright owners to promptly register their works.


5. What remedies can be recovered in a copyright infringement suit?

A successful copyright plaintiff can elect between either (a) actual damages, which include both provable losses suffered by the copyright owner and disgorgement of profits from the infringer; or (b) statutory damages, which can range up to $30,000 per work without proof of willfulness, and up to $150,000 per work if the infringement is willful. 17 U.S.C. Sec. 504. (In cases with multiple works at issue, there are sometimes disputes about how to count the number of statutory awards available.) Statutory damages are an important remedy because it is often difficult for a copyright owner to prove the exact amount of lost revenue or other harm caused by the infringer; in those instances, statutory damages provide a "fixed" amount to award. As discussed above, statutory damages can be elected only if a work was timely registered. Injunctive relief is also available as well as a court order to seize or forfeit infringing copies. 17 U.S.C. Secs. 502, 509. The court also has discretion to award a winning copyright owner attorney's fees, but, again, only if the work was timely registered. 17 U.S.C. Sec. 505. Finally, copyright infringement also is a criminal offense. 17 U.S.C. Sec. 506. Though criminal copyright cases are far less common than private suits, the federal government recently has become more active in pursuing criminal charges for copyright violations.

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