Copyright protects expressive works. Like patent law, copyright law arises from the Constitution. However, unlike patents, copyright does not focus on function – it focuses on expression. It is based on Congress’s intent to encourage the “useful arts.”
The U.S. Copyright Office, which is a department within the Library of Congress, is in charge of copyright registrations and records. Although registration is not necessary, it is essential for pursuing copyright infringement as discussed later below.
Among the areas of intellectual property, copyright is arguably the most complicated area of intellectual property law. This is because copyright law is inherently subjective despite the objective tests available to determine copyright infringement.
What is A Copyright?
A copyright encompasses more than the exclusive right to make copies of an expressive work. Overall, a copyright provides an owner several distinct rights:
- Reproduction – the exclusive right to make copies.
- Derivative Works – the exclusive right to prepare derivative works, i.e., works based on the original expressive work but in different or otherwise altered form.
- Distribution – the right to control the sale and distribution of the original work as well as all copies and derivative works, including licensed copies.
- Performance and Display – the right to control the public (not private) performance and display of the expressive work. This right does not include the right to prevent the display of the work in a public place.
- Anti-Circumvention – the right to prohibit circumvention of protection technology for digital works. For example, tampering with technology that prevents a DVD-player from playing counterfeit DVDs is prohibited under this right.
- Moral Rights – the right against intentional distortion, mutilation, and other modification of the expressive work.
The rights that come with a U.S. copyright only applies to the United States. Copyright protection in a foreign country depends on the laws of the foreign country.
What Can Be Protected?
A copyright protects only original works of authorship fixed in any tangible medium of expression. In other words, a copyright protects original expressive works that are sufficiently stable or permanent in form.
To be considered an “original work of authorship,” the work must be distinguishable from what came before it. Unlike patents, this requirement does not mean that the work must be novel or non-obvious. It only requires that the work is an original work. There are generally three requirements for a work to be original:
1. Independent creation – i.e., knowingly copying another’s work will not count, but unknowingly recreating another’s work by coincidence is acceptable.
2. Expressive contribution – i.e., the decisions made in creating the work cannot be “constrained” (based on function).
3. Modicum of creativity – i.e., copying another’s work is not allowed.
Original works can take the form of literature, music (including words), dramas (including music), pantomimes and choreography, pictures, graphics, sculptures, movies, audiovisual works, sound recordings, and architecture.
In addition to being original, the work must be “fixed in any tangible medium of expression” – it has to be permanent or stable enough to be perceived, reproduced, or otherwise communicated either directly or with the help of a machine or device. This means that, to be copyrightable, the original work must be recorded or accessible whether in an audio file, a DVD, a sculpture, photograph, etc. In short, the work cannot be merely transitionary such as an unrecorded choreography, performance, or broadcast. For example, a dance performance recorded on DVD is copyrightable, but the choreographed moves themselves are not.
What Cannot Be Protected?
U.S. copyright law does not protect any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of how it is described, explained, illustrated, or embodied in an original work. Copyright does not protect facts; it does not protect function; it does not protect something that has only one or very few ways of expression.
For example, blank forms in a self-help accounting book are not copyrightable. This is because the forms are functional; they are for use. The book as a whole is copyrightable because it is an expressive original work that is fixed to a tangible medium (a book). However, the fact that the book is copyrightable does not necessarily mean that the inside is copyrightable. Copyright does not protect function.
Another example is a command menu displayed on a spreadsheet program. Despite that the command menu is a result of a selection of command terms, structure, and order of those terms, such a command menu is not copyrightable because it is a “method of operation.” The menu is the means by which a person can operate the spreadsheet program. Although the words used in the menu may be expressive (i.e., other words may be chosen), they are essential to the operation of the program. Think of the words in the menu as analogous to the word “play” on a music player.
Other non-copyrightable subject matter include what is called “scenes à faire”: the incidents, characters, or settings that come standard in a particular theme. In the literary context, this could be the typical elements in a traditional fairy tale or romance plot: a damsel-in-distress, an evil villain, and a prince charming who comes and saves the damsel. In the software context, this could be the stock language used in a computer program based upon industry practices, technical specifications, design standards, etc. “Scenes à faire” are not given copyright protection because such protection would unduly restrict subsequent authors from creating their own works with which audiences or users can relate or understand.
Ideas Versus Expression
One way of looking at what is excluded from the scope of copyright protection is to look at what is included in the scope of patent protection. Again, patents protect ideas, and copyright protects expression. The more a work appears to be an idea, the more likely there is minimal copyright protection.
There are two useful doctrines in the idea-versus-expression analysis: the Merger Doctrine and the Useful Article Doctrine.
THE MERGER DOCTRINE. The Merger Doctrine states that, when there is only one way or few ways of expressing an idea, then that idea merges with the expressive work, and that work is not copyrightable. Some lenient courts might decide that such situations warrant limited copyright protection, rather than no protection, but the concept is the same.
One instance in which the Merger Doctrine would apply is the writing of sweepstakes rules such as the fine print one would find on a promotional flyer. There are only a few finite ways to express sweepstakes rules because the idea itself is so narrow. In such an instance, the idea of sweepstakes rules would merge with the wording of the rules, and the rules as a whole would be non-copyrightable.
THE USEFUL ARTICLE DOCTRINE. The Useful Article Doctrine applies to “useful articles” – works that have “intrinsic utilitarian function” (functional use) that are not just for appearance or for conveying information. An example of a useful article is a costume: a costume is functional because it is clothing, but it also portrays an appearance or conveys information.
Copyright law allows the design of a useful article to be protected by copyright as “pictorial, graphic, or sculptural work” only if, and only to the extent that, the expressive features of the article can be identified separately from and are capable of existing independently of the functional aspects of the useful article. Thus, in the example of a costume, a decorative zipper or a graphic image that has no function may be copyrightable because, although it is a part of the clothing, it can be identified separately from the clothing and can exist independently of the functioning of the clothing.
There are several tests used to apply the Useful Article Doctrine. These “separability tests” help to determine which aspects of a useful article are copyrightable and which are functional.
The Physical Test. The physical test of separability is narrow. It only looks at whether the artistic elements of the useful article can be physically removed from the functional aspects of the article. If the artistic elements can be detached, then those elements are copyrightable. Given its narrow analysis, the physical test is rejected by most courts.
The Conceptual Tests. The conceptual tests are broader than the physical test and can take many forms. There currently is no consensus across U.S. courts as to which test is the best to apply.
- Denicola’s Test – This test looks at the extent to which the useful article reflects artistic expression uninhibited by functional considerations. In other words, if the design elements of the useful article reflect both aesthetic and functional considerations, then there is no separability and thus no copyrightable elements. On the other hand, if the design elements reflect artistic judgment that was exercised independently of any functional influences, then conceptual separability exists, and such elements are copyrightable.
- Winter’s Test – This test looks at whether a reasonably ordinary observer would perceive the design of a useful article as an aesthetic concept unrelated to the functional aspects of the article.
- Newman’s Temporal Displacement Test – This test looks at whether the useful article stimulates in the mind of the beholder a concept that is separate from the concept evoked by the article’s function. This test is a bit murky and thus difficult to apply.
- Other (less useful) tests – Other tests include the Primary Use Test, which looks at whether the useful article is a utilitarian object or an artistic work; the Marketable Test, which looks at whether the useful article is marketable as art; and the Primarily Aesthetic Test, which looks at whether the useful article has primarily aesthetic features. Although easier to apply, these tests are less useful in truly separating the copyrightable elements of the useful article at issue.
How to Obtain A Copyright
A copyright is automatically created upon the time an original work is created and fixed in tangible form. There is no need to file any applications to obtain a copyright, and there is no need to register a copyright. With that said, registration of a copyright with the U.S. Copyright Office is essential in the case of copyright infringement.
The length of copyright protection depends on the date the work was created. For works created on or after January 1, 1978, copyright protection lasts as long as the author’s life plus seventy years after the author’s death. For works created before January 1, 1978, but was not published or registered by that date, the same term applies with the additions that no copyright will expire before December 31, 2002, and that, for works published on or before December 31, 2002, no copyright will expire before December 31, 2047. For works created and published or registered before January 1, 1978, copyright protection lasts 28 years from when the work was published with a copyright notice or from the date of registration if the work was registered unpublished. After the initial 28 years pass, renewal is available.
Terms may vary depending on the type of copyright ownership, but such details will be discussed later below.
Similar to registered trademarks, registered copyrights come with significant legal advantages. Such advantages include:
- An established public record of a claim to copyright;
- The ability to file a copyright infringement lawsuit in court for U.S. works;
- Prima facie evidence of the validity and ownership of the copyright (if copyright is registered within five years of publication);
- Statutory damages and attorneys’ fees if successful in court (if copyright is registered within three months of publication or before infringement of the copyrighted work);
- The right to request U.S. custom officials to bar the importation of infringing copies.
Although a copyright may be registered at any time during its lifetime, early registration provides more benefits as shown above.
For basic copyright claims, copyright registration may be completed online at https://eco.copyright.gov/eService_enu/. Registration can also be done by paper application. Whether online or by paper, the registration application requires a completed application form, a nonrefundable mandatory filing fee ranging from $35 to $85, and a non-returnable copy (“deposit”) of the work seeking registration. Online applications generally take up to eight months to process, whereas paper applications take up to 13 months to process.
After an application is filed, an applicant will receive one of three possible responses from the U.S. Copyright Office: a request for additional information (by letter, telephone, or e-mail), a certificate of registration, or a letter of rejection (with explanations for the rejection). Once registration is approved, the copyrighted work obtains an effective registration date, which is the date when the U.S. Copyright Office received all the required application materials regardless of the length of processing.
While the U.S. Copyright Office does not require a copyright owner to register its copyright, the office does require that the owner make a “deposit” to the office within three months of the work’s publication. Subject to some exceptions, this means that the owner must provide the office two physical copies of the published copyrighted work. This requirement is separate from the deposit made during the registration application.
Failure to send in a deposit may result in fines and other penalties though copyright protection remains unaffected.
A copyright owner is generally the work’s author – the person responsible for fixing the expression into tangible form. Thus, physical possession of a copyrighted work does not necessarily mean ownership of a copyright.
In certain circumstances, there may be more than one author or the person who created the work may not be the true owner or have exclusive copyright privileges. We discuss these circumstances in turn.
JOINT OWNERSHIP. Joint ownership of a copyright is present when there is a collaboration of two or more authors to fix an expression. In particular, the authors must intend for their contributions to be merged into inseparable or interdependent parts of a unitary whole through, for example, exercising control of the work or making objective manifestations of a shared intent to be co-authors. Thus, if I ask a person for advice on a motion picture I am creating, then that person is only a contributor and not an author. However, if that person and I intend to be co-authors and jointly own the copyright of the motion picture, then we are joint-owners in the copyright. Joint ownership does not require co-authors to contribute equal parts or labor. As long as there is intent to be co-authors, there is joint ownership.
In joint-ownership copyrights, copyright protection will expire after 70 years after the last surviving joint owner’s death.
WORKS MADE FOR HIRE. Works made for hire are copyrighted works made by a person that was hired to create the work. Unless a contract states otherwise, the copyright author/owner then is not the person who fixed the expression but the entity for which that expression was prepared.
This situation arises either in the employer-employee context or general principal-agent context. In the employer-employee context, a work for hire is created when an employee creates a work within the scope of his or her employment. The employer is the copyright owner. In the principal-agent context, a work for hire is created when a work is specially ordered for use as a contribution to a collective work, a motion picture, an audio-visual work, a translation, a supplementary work, a compilation, an instructional text, a test, answer material for a test, or an atlas. This context only creates a work for hire if there is a signed written agreement in which the parties intend the work to be a work for hire. The principal is the copyright owner.
COLLECTIVE WORKS. Collective works are compilations of individual copyrights such as an encyclopedia, periodical, anthology, etc. The author and thus owner of a collective work is the person who put together the individual copyrights. However, the copyright owner of the collective work only has the right to reproduce and distribute the individual copyrights as part of the collective work. The rights of a copyright owner of a collective work as a whole are separate and distinct from the rights of a copyright owner of the individual work within the compilation.
Transfers Of Ownership
Copyright ownership may be transferred in part or in whole by signed written agreement. As a personal asset, it may also be transferred by operation of law.
Unlike for federally registered trademarks, copyright transfers do not need to be recorded. However, similar to registration, recording a copyright transfer with the U.S. Copyright Office provides legal benefits such as validation.
Under certain conditions, current law allows transfers to be terminated after 35 years of the transfer as long as timely written notice is served upon the transferee.
How Are Copyrights Enforced?
Copyrights are generally enforced in court when notice or demand letters to accused infringers are unsuccessful. Most courts generally require a copyright owner to show (1) proof of copying and (2) proof of unlawful appropriation.
PROOF OF COPYING. Proof of copying essentially is a showing that the accused infringer had access to the copyrighted work. In other words, the copyright owner must show that the alleged infringer did not independently create the accused work. This factor is an objective factor.
There are two ways to prove copying: directly or circumstantially. Direct evidence is a smoking gun – there is a witness, e-mail, note, etc., about copying. Such evidence is rare. In many cases, the evidence will be circumstantial – a reasonable inference has to be drawn of copying.
Circumstantial evidence involves a sliding scale of similarity and access. It looks to the similarities between the copyrighted work and the accused work and to the amount of access the alleged infringer had to the copyrighted work. On one end, if there are no similarities between the two works, access is irrelevant because there is nothing copied. On the other end, if there is no evidence of access, then the similarities must be “so striking” that the only inference to be drawn is of copying. Evidence of both similarity and access would require a determination by the judge or jury as to whether the similarities are sufficient to show that copying occurred.
Because proof of copying is an objective factor, experts may be hired to dissect the two works and examine their details in determining similarity. If there is probative similarity, then copying may be inferred.
In certain industries, copyright precautions are put in place to catch infringement in the case of litigation. For example, some programmers would insert nonsensical code into their programs so that when an accused infringer’s work also includes that code, then evidence of copying is established. Typographical errors, although unintentional, could also be proof of copying when they show up in an accused work.
PROOF OF UNLAWFUL APPROPRIATION. After a copyright owner successfully shows copying, the owner must then prove unlawful appropriation. This factor is a subjective one and so experts are not allowed for this stage of the copyright infringement analysis. This factor focuses on whether a layperson – an ordinary person – would recognize a substantial similarity between the copyrighted work and the accused work to conclude that the latter was taken from the former.
An abstraction test is applied to this stage of the analysis. The judge or jury must look to only the copyrightable aspects of the original work. Again, this is the idea-versus-expression dichotomy. If the accused work only copied ideas, then no unlawful appropriation occurred because copyright does not protect ideas. If the accused work copied expression, then there must be analysis as to whether the accused work is substantially similar to the original work.
Regardless of whether the original work is copyrightable in whole or in part, the analysis must still depend on whether a layperson would consider the overall accused work as substantially similar to the original work. If a layperson would find substantial similarity, then there is proof of unlawful appropriation and thus proof of copyright infringement.
Copyright Infringement of Computer Software
Proving copyright infringement of computer software involves the same two-step analysis from above but with certain particularities. Because computer software is highly functional, infringement cases involving computer software are very fact-specific when determining which aspects of the software are copyrightable expressions. An example is the high-profile case between Oracle and Google involving Oracle’s copyright claim to its Application Programming Interfaces (APIs) for its Java software.
In assessing infringement, courts generally apply some version of the Abstraction-Filtration-Comparison Test, which attempts to separate idea from expression to find substantial similarity. The test is not a rigid one but requires three separate steps as outlined below.
ABSTRACTION. The first step in the test is abstraction – to dissect the allegedly infringed program into its constituent parts by levels of abstraction. There are generally six levels of abstraction from highest to lowest:
1. The program’s main purpose
2. The program’s structure via a flowchart
3. The program’s modules for achieving processing or data organizing steps
4. The program’s algorithms or data structures used in the above modules
5. The program’s source code
6. The program’s object code
The further one goes down the list, the more expressive the program’s constituent parts.
FILTRATION. After abstraction is filtration. The filtration step involves filtering out the non-copyrightable elements of the program: the facts, the processes, the ideas, as well as the expressions required by efficiency (recall the Merger Doctrine), expressions required by standards, industry practice, or compatibility requirements (recall “scenes à faire”), and expressions taken from the public domain (recall originality requirement).
COMPARISON. The third and final step is comparison, the infringement analysis portion of the abstraction-filtration-comparison test. This step compares the remaining copyrightable expressions from the filtration step with the accused program to find substantial similarity. Once substantial similarity is found, copyright infringement is proven.
Like in the case of trademarks, remedies for copyright infringement include legal and equitable remedies. For legal remedies, an owner can receive actual damages and any profits made by the infringer as a result of the infringement, or the owner can elect to receive statutory damages. The owner may also recover the costs of the litigation including attorney’s fees.
Equitable remedies include injunctions and the impounding and destruction of infringing copies.
While the Merger Doctrine, the First Sale Doctrine, and the “Scenes à Faire” Doctrine are all defenses to copyright infringement, the most common defense to copyright infringement is fair use. Fair use is the most popular defense because it is the most generous one.
Fair use is essentially an exception to copyright infringement. Despite that a copyright was infringed, such infringement or use was “fair” because of one reason or another. Fair use is not a categorical defense but it typically applies to criticism, commentary, news reporting, teaching, scholarship, and research.
There are four non-exhaustive factors in determining fair use: (1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and substantiality taken from the copyrighted work, and (4) the market effect of that use.
PURPOSE AND CHARACTER OF THE USE. This factor looks to the defendant, the accused infringer. It determines whether the defendant’s use of the copyrighted work was commercial or non-commercial, public or private, unchanged or transformative. Non-commercial, private, and transformative uses weigh in favor of the defendant.
Non-commercial or private uses point away from the presumption that the defendant exploited the plaintiff’s copyright for commercial gain. For example, videotaping a television program for private viewing in one’s home is likely fair use because there is no commercial exploitation. Photocopying pages from a textbook for classroom use is also fair use because it saves transaction costs and facilitates education, thus serving a public purpose.
Transformative use generally is a sign of some added social value. The more transformative a defendant’s use, the less likely the use is for the same purpose as the original copyrighted work. For example, parodies have high transformative value because they use the original work to comment on or criticize the work, thereby transforming the purpose or use of the original work.
NATURE OF THE COPYRIGHTED WORK. This factor looks to the plaintiff, the copyright owner. This factor determines how much copyright protection is available for the claimed work. More expressive works such as music, movies, etc., receive thick copyright protection and weighs against finding fair use. More fact-oriented or functional works such as factual content or software programs, receive thin copyright protection and weighs in favor of finding fair use.
AMOUNT AND SUBSTANTIALITY TAKEN FROM COPYRIGHTED WORK. This factor looks to the plaintiff. Generally, the more a defendant takes from a copyrighted work, the less likely there will be a fair use argument. The court looks to the copyright owner’s work, not the defendant’s work, because the focus is on how significant the portion taken is to the original work. For example, if a defendant only copied a quantitatively small part of a copyrighted work, but that part was at the heart of the work, then the infringement will not be fair use.
MARKET EFFECT OF USE. This factor looks to the plaintiff. Generally, uses that do not harm the plaintiff’s market or potential market for its original work will weigh in favor of fair use. This factor also considers the market for derivative works. One example again is the parody. A parody and the original work serve separate markets and are not substitutes. Therefore, customers will not purchase a parody in lieu of the original. Note that, if the market for the copyrighted work suffers harm because of the parody, such harm is not the type protected by copyright law. Copyright law protects expression, not consequences of criticism.
One case that found a market threat for the plaintiff but still gave the defendant a fair use defense is that involving the reverse-engineering of object code used in Sega’s Genesis III video game console. Although defendant Accolade copied the code to enable consumers to use its games on Sega machines, the court found fair use because the copying was serving a different gaming interest. The use was not for expression but for compatibility, thus providing customers more variety and serving the public interest.
There is no hard-and-fast rule as to how the fair use doctrine is applied. The weight given to each factor varies on a case-by-case basis.
Click on the links below to navigate between pages of intellectual property resources.