Using Copyrights to Protect Your Software, Literary and Artistic Works

Copyright registration can protect authors of published and unpublished software, literary, dramatic, musical and artistic works against infringement by those who copy their works

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By Robert A. Adelson, Esq.

Partner, Engel & Schultz, LLP

Boston, Massachusetts

Presentation for MDG – Medical Development Group

Business Networking Event

Newton, Massachusetts

May 13, 2009

 

What is a Copyright?

  • Copyright is a form of Federal law protection to the authors of “original works” against infringement by those who copy their works
  •  Includes literary, dramatic, musical and artistic works
  •  Protection available to published and unpublished works

 

                 Owner has exclusive rights to:

 

  • Reproduce copies and prepare derivative works
  • Distribute, sell, transfer, rent, leave or lend copies of work
  • Perform a display of musical, dramatic and other art work
  •  Limited “moral rights” to attribution and integrity of visual works

 

What works are protected?

 

Copyright protects “original works of authorship” that are fixed in a tangible form of expression:

 

  •  Literary works including computer software
  •  Musical and dramatic works
  • Pictorial, graphic, and sculptural works
  • Motion pictures and audiovisual works
  •  Sound recordings
  • Architectural works

 

These categories should be viewed quite broadly: for example, computer programs and most “compilations” are registrable as “literary works;” maps and architectural plans are registrable as “pictorial, graphic and sculptural works.”

 

What works are not protected by copyright?

  •  Titles, names, short phrases, and slogans
  • Mere listings of ingredients or contents
  •  Mere variations of typographic ornamentation, lettering, or coloring
  • Ideas, procedures, methods concepts
  • Principles, discoveries, or devices, as distinguished from a description, explanation or illustration
  • Works consisting entirely of information that is common property and containing no original authorship

 

How to Secure a Copyright:

  • Copyright is secured automatically upon creation;
  • There are, however, certain definite advantages to registration
  • Posting a copyright notice no longer required but it is useful to defeat “innocent infringement” defense

                 *Exception: works before 1/1/1978 required registration and notice

 

                 Who is Copyright owner?

 

  •  Normally, author of work is owner
  •  Joint authors, joint ownership also possible
  • Exception is “work for hire”
  • Employer  is owner of work by employee within scope of employment
  •   Certain works commissioned under written agreement can be owned by person hiring/commissioning work

 

                 Duration of Copyright:

 

  •  Author’s life plus 70 years from death
  •  Joint works measured by last surviving author
  • Work for hire: Sooner of 95 years from publication, or 120 years from creation
  • Works before 1/1/1978: 28 years, with optional renewal 67 more years

 

Registration of Copyrights and Benefits of Registration

 

              What is registration?

 

  •  In general, copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright

 

              Advantages of Federal Copyright Registration:

 

  • Establishes public record necessary for suite
  •  Prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate, if made before or within 5 years of publication
  •  Statutory damages and attorney’s fees available if registration is made within 3 months after publication of the work, or prior to an infringement of the work
  •  Allows the owner of the copyright to record the registration with the U.S. Customs Service for protection against the importation of infringement copies

 

 

Registration Procedure and Special Deposits

 

              Filing Federal Registration of Copyright:

 

  • Filing with US Copyright Office
  •  Application forms vary for literary, performing arts, visual arts, sound recordings
  •  Group registration: Application forms for serials in periodicals, for newspapers, for corrections, amplifications, contributions to periodicals
  • Pre-registration available under 2005 Act for certain unpublished works with history of infringement prior to commercial distribution

 

                 Special Deposit requirements exist for many types of work including computer programs:

 

  • One visually perceptible copy in source code of the first and last 25 pages of the program
  •  For a  program of fewer than 50 pages, the deposit is a copy of the entire program
  • Possible to block out portions of source code that contain trade secrets with either submission

 

What is Copyright Infringement?

  • Test: (1) Ownership and (2) Copying without authorization
  •  If owner/plaintiff cannot show actual copying, must prove
  1. Defendant had access to copyrighted work and
  2. Infringing work is “substantially similar” to protected elements of copyrighted work that are original
  •  Direct infringers who do copying liable for damages and also “vicarious” infringers who direct and have financial interest in infringement and “contributory” infringers who induce and add to infringement
  •  What Remedies are available?
  1. Injunctive relief
  2. Actual damages and profits
  3. Statutory damages
  4. Attorney’s fees
  5. Impoundment

 

 

 

Defenses to Claim of Infringement:

 

  •  Statute of limitations – 3 years after claim accrued
  • License to use
  •   Substantial similarity unmet in quality or quantity – de minimus
  •  Substantial similarity limited to unprotected elements of work
  • Fair use defense
  • 6 uses: criticism, comment, news reporting teaching scholarship, research
  •  Balancing Factors test
  • Character of use made by infringer
  • Nature of copyrighted work infringed
  • Amount and substantially of use made
  • Effect of use on market value of copyrighted work

 

 

Robert A. Adelson, Esq., Boston, MA: Corporate, Tax and IP Attorney:

 

  •  For Businesses.  Adelson structures and implements Business formation; VC and angel finance; Stock, options, vesting plans;   Shareholder agreements;  Employment and contractor agreements; trademarks, trade secrets, copyrights and IP protection, licensing; Software and  product development, distribution; Partnerships, Joint Ventures; M&A, business succession 
  •  For Service Providers. Adelson negotiates employee terms sheets, employment contracts, NDAs, Non-competes, Stock, options, Phantom stock; Relocation,  Severance, retention, termination agreements; and for consultants – client and subcontracting agreements; Entity choice, liability protection; trade identification, trademark, copyrights, IP protection.
  • Publications. Mr. Adelson is a frequent lecturer, with numerous articles in those fields, including articles published in Boston Business Journal, Darwin Magazine, Mass High Tech, Family Business magazine, Genetic Engineering News, Indus Entrepreneur, Small Business Opportunities magazine and The Culpepper Letter (serving the software industry). His work as a prominent Boston business, tax and intellectual property attorney has been recognized in articles in the Boston Globe and Boston Herald and in a chapter of the book, published in 2000, The End of Shareholder Value.  A member of the Massachusetts and New York Bars, Mr. Adelson is also Chairman of ENET –  IEEE Boston Entrepreneurs’ Network and Advisory Board member of the 128 Innovation Capital Group.

 

©2009 Robert A. Adelson.  All Rights Reserved

Author: radelson

Robert Adelson has been a corporate and tax attorney since 1977. He began as an associate at nationally prominent New York City “mega” law firms, first at the Wall Street firm Dewey Ballantine Bushby Palmer & Wood and later at the Park Avenue firm Weil Gotshal & Manges. In 1985, Adelson returned home, where he has since established himself as a respected Boston business attorney. He has attained partner at several small and midsize Boston law firms, most recently at Lawson & Weitzen LLP and then Zimble Brettler LLP, where he was a partner from 1994 to 2004 before becoming a partner at Engel & Schultz LLP.

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