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Archive for the ‘Copyright Pitfalls’ Category

How can I get my copyright registration quickly?

Special handling is available to copyright applicant’s who require their application to be processed in an expeditious manner.  When selected, the registration can be received in as early as five (5) business days. The service is expensive (currently $760.00 per claim) and there must be a legitimate need for the expedited service.  There are only three circumstances under which the U.S. Copyright will grant special handling of an application:

1) Pending or prospective litigation

2) Customs matters

3) Contract or publishing deadlines that necessitate the expedited issuance of a certificate

In some jurisdictions a Copyright Registration is required before you can initiate suit in Federal Court. California only requires that the Copyright application be pending to initiate suit but this is not the case in all jurisdictions.

For further information on special handling go to the website for the U.S. Copyright Office www.copyright.gov or contact your Copyright Lawyer.  We are located just outside of Downtown Los Angeles in the City of Pasadena.

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How to Terminate a Copyright Previously Assigned?

If you happen to be the  grandson of a famous comic book author, playwright, artist, or other creative icon who sold his rights for a fraction of what they ended up being worth, copyright termination is a subject you should know something about.

Section 304(c) of the United States Copyright Act enables a copyright owner or its heirs to terminate all grants, licenses or transfers of rights (made prior to 1978) beginning on the 56th year after that grant of rights was made.  Thus, in certain cases, it is possible to recapture rights to a copyrighted work that was previously transferred.  The purpose of the copyright termination laws is to allow authors to benefit from laws that extended the term of copyright from 56 years to 95 years, enabling them to recapture 39 years of term. The United States Copyright Act provides a five year period beginning in the 56th year, in which a grant of rights may be terminated. A qualified copyright attorney will know how to go about the termination process.

If an author or his heirs miss the opportunity to recapture the 39-year copyright term, there is another opportunity at the end of 75 years to recapture the final 20 years of copyright.  To take advantage of this new opportunity to terminate, notice of termination must be sent to the proper party no later than 78 years from the date of the original copyright (or, as early as 65 years after initial publication).

Termination notices must be recorded with the Copyright Office prior to the date of termination. Any copyright proprietor wishing to terminate a grant, license or transfer of any copyright rights must provide at least two (2) years’ and no more than ten (10) years’ written notice to the person to whom the grant was made. There are nuances in providing a notice of termination to the Copyright Office that are beyond the scope of this blog. If you believe you may be entitled to terminate a copyright you should contact a copyright attorney.

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Copyright Termination – Heirs Can Recapture Rights Previously Assigned

Under the 1976 Copyright Act, authors who license or assign their copyrights have the right to unilaterally terminate such agreements thirty-five years later. This right is also retained by heirs. This termination right may be exercised without consideration. The first set of copyright assignments governed by the 1976 Copyright Act become eligible for termination on January 1, 2013. As a result, a looming crisis over termination rights is on the horizon. As long as the work is not a “work made for hire,” the right of termination cannot be waived — even if there are contractual provisions to the contrary. If your business relies upon rights made prior to 1978 you should have a copyright attorney carefully review your rights and determine if you will be impacted by termination.

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They’re mimicking me! When is a parody fair use?

A parody is fair use of a copyrighted work when it is a humorous form of social commentary and literary criticism in which one work imitates another.   Although a parody falls under “use of a copyrighted work for the purpose of criticism or comment” as provided under 17 USC §107, the determination of whether the work qualifies as a parody depends on the current case law.  There is no steadfast set of factors to be considered.  As with all gray areas of law, it is important to consult your Copyright Attorney before you publish a work you believe to be a parody.   Famous works are often the subject of parodies because of their mass appeal.   Famous is synonymous with wealth, or at least financial backing, so it would not be wise to infringe the rights of someone who has the means to defend their rights through litigation.

The following examples are from real-world cases:

PARODY:  Making fun of the famous photograph of a naked pregnant Demi Moore, taken by Annie Leibovitz for Vanity Fair, by placing the superimposed head of Leslie Nielsen on the body of a naked pregnant woman, using the same lighting and body positioning as the famous photograph, was a parody and therefore was ruled as fair use.  See Leibovitz v. Paramount Pictures Corp. 137 F.3d 109 (2d Cir. N.Y. 1998).

NOT A PARODY:  A book authored in Dr. Seuss style to tell the story of the OJ Murders, “The Cat NOT in The Hat!” by Dr. Juice, was not a parody and therefore ruled as infringement.  See Dr. Seuss Enterprises, L.P. v. Penguin books USA, Inc., 109 F.3d 1394 (9th Cir. 1997).

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What is considered fair use?

Fair use of a copyrighted work is the reproduction of a work for purposes such as criticism, comment, news reporting, teaching, scholarship, or research.   The doctrine of fair use, which limits exclusive rights, was developed through a number of court decisions over the years and has been codified in 17 USC §107 of the copyright law.

When determining whether use of the copyrighted work is indeed fair use, the following factors are to be considered: (1) the purpose and character of the use, including whether such use is of a 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.  See 17 USC § 107.  These factors apply to both published and unpublished copyrighted work.

There are many nuances of the law to be considered in determining whether your intended use is “fair use” or infringement.  The prudent thing to do is to consult your Copyright Attorney before publishing any work that contains copyrighted material.  We are located in Pasadena, California, not far from Downtown Los Angeles.

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How to make sure you own the copyright to creative works

When hiring an outside person to design a web page, logo, take photographs you plan to use in promoting and selling your product, or create any other type of creative work, it is imperative you address copyright ownership. By default the author of the work owns it. If you are a company hiring an outsider to create works for you, agreements are needed to change this default rule.

If the work has not been created yet you need to have the creator execute a Work for Hire Agreement. A sample of one is provided below for your reference and use.

If the work is done already don’t bother with the Work for Hire Agreement as it’s completely invalid. What you need in this scenario is to have the creator of the work execute a Copyright Assignment to transfer ownership from the creator to you the purchaser. Don’t make the mistake of thinking that simply because you paid someone to create the work that you own the copyright. Unless that person is an employee (which means the creation is automatically a Work for Hire) you don’t own rights without the assignment. A sample Copyright Assignment is provided below.

Please note that although we are providing these samples contracts we are not acting as your lawyers. There are situations where these forms should be substantially modified and before putting them into use you should consult your lawyer. If you need a copyright lawyer in Los Angeles we’d be happy to help out.

Click here for a sample Work for Hire Agreement

Click here for a sample Copyright Assignment

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Register your copyrights promptly to preserve your rights

The statute of limitations for copyright infringement is three years.  However, there is an important three-month bar date that can be the death knell for some cases. 

To be eligible for statutory damages and attorney fees under 17 USC §& 504 and 505 pursuant to 17 USC §412, you must register your creative work within three months from the date of publication.*   Otherwise, you may only plead for actual damages and profits in all future cases.  Depending on the type of creative work, actual damages and profits may be hard to prove, or may prove to be minimal.   

Statutory damages range from $750 to $30,000 per work.  Where willful infringement can be proven, statutory damages may be increased to up to $150,000 per work.  As for attorney fees, even modest copyright litigation can cost tens of thousands of dollars.  Loss of statutory damages and attorney fees can render a suit worthless.

This three-month bar date is limited to creative works that have been published.  No statutory damages or attorneys fees are awarded for unpublished works, where the infringement commenced before the effective date of the registration. 17 USC § 412(1). 

Please promptly inform your IP attorney if you intend to publish your creative work.  The date of publication triggers the three-month period by which your work will need to be registered with the U.S. Copyright Office.  To avoid this IP pitfall, a best practice is to have a regular program for monitoring the publication of your creative works.

* Publication is defined as the distribution of copies of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication, i.e. the work being displayed in museum.  See 17 USC § 101.

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Is your independent contractor working for you?

By default, works of authorship are owned by the author upon creation of the work. This often comes as a surprise to most business owners. Works of authorship include designs, written materials, websites, and even source code! To protect yourself, make sure your independent contractors have agreed that you own the material you are paying them to produce.

A work for hire agreement executed BEFORE the work is created resolves this issue. The agreement should also protect you from infringement of your own intellectual property by the independent contractor while he is working on your behalf. If a work for hire agreement is not executed, an assignment agreement is needed for your company to own any right to the work of authorship. Your IP lawyer can assist you in preparing a work for hire agreement tailored to your specific needs.

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