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Trevor T. Graves & Patrick M. Torre
This article was developed by the Kentucky Bar Association (KBA) Intellectual Property (IP) Section. To learn more about the KBA IP Section, visit https://www.kybar.org/page/intellectualproperty.
Copyright is an intellectual property right provided for in the U.S. Constitution, intended “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” (U.S. Constitution, Article I, Section 8). By statute, “copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device” (17 U.S.C. § 102).
Copyright is an intangible right initially owned by the author(s) of a work. That is, by statute initial ownership of copyright in a work automatically vests in the author(s) of the work, and likewise the authors of a joint work are initially automatically co-owners of copyright in the work (17 U.S.C. § 201(a)).
One exception to this general rule of authorship is provided in the Work Made for Hire doctrine. The U.S. Constitution provides that “In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title (17 U.S.C. § 201(b)), and further defines a work made for hire as:
a work prepared by an employee within his/her scope of employment, for example a W-2 employee; or
a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a writing signed by them (17 U.S.C. § 101).
Ownership of a Work and Ownership of Copyright in that Work are not the Same
Many purchasers often assume that when they purchase a work they also purchase copyright in the work and are entitled to reproduce the work, perform the work, or make derivative works of the work at will. However, an important but often-overlooked distinction is that copyright in a work is not the same as the material work in which the copyright is embodied.
Thus, copyright is a separate and distinct right from property rights in the physical or tangible work, that is the material object in which the copyright is embodied. In other words, buying an original painting, sculpture, or other work, or a limited edition reproduction of the painting, sculpture, or other work, provides ownership of the actual painting but not of the underlying copyright in the painting or reproduction. Likewise, purchasing a song grants ownership of that copy of the song, but does not grant the purchaser the right to make public performances of that song or to reproduce copies of the song for sale. The artist or their designated representative(s) retain the right to make prints or other copies of the work, or to publicly perform the work, absent a specific writing. Ownership of the copyright in the work may subsequently be assigned or licensed by the owner to a third party by a specific written instrument.
What Does Copyright Cover?
Works of authorship protected by copyright include:
literary works
musical works
dramatic works
pantomimes and choreographic works
pictorial, graphic, and sculptural works (including, for example, the “look and feel” of web sites)
motion pictures and other audiovisual works
sound recordings
architectural works
Things NOT protected by copyright include:
Works not fixed in a tangible form, that is, an idea for a work that has not yet been rendered in its chosen medium
Titles, names, short phrases, slogans, familiar symbols, variations of typographic ornamentation, lettering, or coloring, and mere listings of ingredients or contents
Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices (as distinguished from a written or recorded description, explanation, or illustration)
Works consisting entirely of information that is common property and containing no original authorship, i.e., historical facts
What Rights are Conferred with Ownership of Copyright in a Work?
The owner of copyright in a work is granted six exclusive rights by virtue of that ownership:
To reproduce the work in copies or phonorecords
To prepare derivative works based on the work
To distribute copies of the work to the public by sale
To perform the work publicly
To display the work publicly
In the case of sound recordings, to perform the work publicly by means of a digital audio transmission (17 U.S.C. § 106)
There are certain limitations on the exclusive rights granted to a copyright owner, the most important of which is fair use. Fair use is a legal doctrine that is intended to promote freedom of expression by permitting unlicensed use of copyright-protected works under certain limited circumstances. Under the fair use doctrine, an individual may be entitled to make limited use of a work without risk of infringement of copyright. Examples of uses of copyright-protected works that may qualify as fair use include criticism, parody, comment, news reporting, teaching, scholarship, and research. Fair use claims are evaluated on a case-by-case basis, and the outcome of any fair use case depends on a fact-specific inquiry.
Certain factors are considered in determining whether a use of a work qualifies as fair use. The factors are:
The purpose and character of the unlicensed use, including whether the use is of a commercial nature or is for nonprofit educational purposes. Nonprofit uses are more likely to be protected as fair use.
The nature of the copyrighted work. Unlicensed use of a creative or imaginative work such as a novel, movie, or song is less likely to be protected as fair use than use of a factual work such as a technical article or news item.
The amount and substantiality of the portion used in relation to the copyrighted work as a whole. Unlicensed use of a large portion of a copyright-protected work is less likely to be viewed as fair use compared to use of only a small portion of the work.
The effect of the use upon the potential market for or value of the copyrighted work. This factor evaluates whether and to what extent the unlicensed use affects the existing or future market for the copyright owner’s work (17 U.S.C. § 107).
Benefits to the Owner of Registration of Copyright
As noted above, copyright ownership initially vests in the author/creator of a work, and copyright registration is not a condition for protection for the copyright owner. However, there are a number of benefits to registration of copyright. Copyright registration can be obtained by submitting a paper or preferably electronic application with the applicable fee and deposit material for the work being registered to the U.S. Copyright Office. The benefits to an owner of registration of their copyright in a work include:
Registration of a copyright with the U.S. Copyright Office provides a public record of ownership of the copyright.
Registration is a prerequisite for U.S. copyright owners to bring an action in federal court for copyright infringement.
If the registration claim is made within five years of the copyright coming into being, it serves as prima facie evidence of validity in litigation; (prima facie is a legal doctrine that means the evidence is presumed to be true, on first impression, until proven otherwise.)
If the registration is made within 3 months of publication of the work or before infringement starts, statutory damages, attorneys’ fees and costs may be sought for the infringement.
Registration is a prerequisite for obtaining exclusionary relief for copyright infringement from the International Trade Commission (ITC), (the ITC has the power to issue cease and desists to unfair importers and to exclude the subsequent sale of unfairly imported products that may infringe on your copyright).
Copyright registration holders may record their registration with the U.S. Customs and Border Protection to stop infringing copies of a work at the border.
Someone has Made Unauthorized Use of my Copyright-protected Work. How do I Enforce my Copyright?
Enforcement of any exclusive right in a registered copyright may be made in a complaint filed before a U.S. District Court. To successfully plead copyright infringement the owner/plaintiff must establish two elements:
ownership of the copyright registration; and
copying by the defendant.
Ownership of a copyright registration is typically easy to show. Actual copying by a defendant, on the other hand, is often difficult to show by direct evidence. For that reason, copying may be shown indirectly by:
Proof of access to the copyright-protected work, i.e., it can be demonstrated that the defendant had access to the copyright-protected work
Substantial similarity of the infringing work to the copyright-protected work
Damages/relief available to a registered copyright owner who has successfully proven infringement include injunctive relief, impounding/destruction of materials proven to infringe copyright, and monetary damages. The latter may include both actual proven damages (loss of sales) suffered by plaintiff and infringer’s profits (sales of infringing material) or alternatively and often more beneficially to the copyright owner, damages in amounts determined by statute. Currently, statutory damages once infringement is proven are provided for in amounts of $750-$30,000 per infringement, and up to $150,000 per infringement if infringement is proven to be willful.
