Copyright Law Part 3 - Common Miscellaneous Questions

by Terry Carroll

Part 3 - Common miscellaneous questions.

3.1) Who owns the copyright to something I wrote at work, me or my company?

3.2) [reserved.]

3.3) Is copyright infringement a crime, or a civil matter?

3.4) What is the statute of limitation for copyright infringement?

3.5) Can the government be sued for copyright infringement?

3.6) Can the government copyright its works?

3.7) Can I legally make a cassette copy of a musical CD for my own use, so I can play it in my car?

3.8) Are Usenet postings and email messages copyrighted?

3.9) Are fonts copyrighted?

3.10) What does "All Rights Reserved" mean?

3.11) What's the difference between a copyright and a patent?

3.12) Why is there so little in this FAQ about patents?

3.13 - 3.18) [reserved.]

3.1) Who owns the copyright to something I wrote at work, me or my company?

That depends on a lot of things. Normally, you are the author of the work and own the copyright. There are two broad mechanisms by which your company may own the copyright, though: assignment and the work-made-for-hire doctrine.

ASSIGNMENT: Even if you are the author, and therefore the copyright is initially yours, it may now belong to your company if you assigned the copyright to them. A full assignment of copyright must be in writing, and signed; it can't be implied. 17 U.S.C. 204. Therefore, if you're the author in a copyright sense, and did not assign the copyright to your company in writing, you still own it. Please note, however, that some companies make it a practice to acquire a blanket assignment of copyright in any works created on the job at time of hiring.

Note, though, that even in the absence of a written contract, your actions might have been sufficient to grant the company an implied license to the work. For example, in the case of Effects Associates v. Cohen, 908 F.2d 555 (9th Cir., 1990), a film producer (Cohen) claimed that he owned copyright in special effects film footage depicting "great gobs of alien yogurt oozing out of a defunct factory." The footage was produced by Effects Associates, a special effects company, and there was no written assignment of copyright. The court ruled that Effects retained ownership of the copyright, but that Cohen had an implied license to use it in his horror film, "The Stuff," because Effects had "created the work at [Cohen's] request and handed it over, intending that [Cohen] copy and distribute it." Because the license was non-exclusive, it wasn't a complete transfer of copyright, and did not need to be in writing. Effects was free to sell the same footage to other moviemakers.

WORK MADE FOR HIRE: If a work qualifies as a work made for hire, the company is the author for purposes of copyright, and copyright initially vests in the company. A work is a work made for hire under either of two circumstances. First, if it is a work prepared by an employee within the scope of employment. Second, if the work was specially commissioned, is one of a short list of relatively esoteric types (a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a supplementary work, as a compilation, as an instructional text, a test, answer material for a test, or an atlas), and the parties agreed in writing that it was to be considered a work for hire. 17 U.S.C. 101.

To determine if a work is one prepared by an employee within the scope of employment, there are two important considerations.

First, was the work prepared by an employee, or by an independent contractor? Several facts, such as whether taxes were withheld, who supervised the work, artistic control, setting of working hours, etc., will be examined to determine this factor. A good case discussing these factors is CCNV v. Reid, 490 U.S. 730 (1989).

The second consideration is whether the work was within the scope of the employment.

Unless these two considerations are met, the work will not be considered one made for hire under the employee test, and the "employee" will retain copyright. Of course, the same considerations discussed above regarding an implied license might exist, even in cases where the work-made-for-hire doctrine does not apply.

3.2) [reserved.]

3.3) Is copyright infringement a crime, or a civil matter?

It's always at least a civil matter (a tort). 17 U.S.C. 501(b) details the mechanisms by which an owner of a copyright may file a civil suit, and 28 U.S.C. 1338 expressly refers to civil actions arising under the copyright act.

However, under certain circumstances, it may also be a federal crime. A copyright infringement is subject to criminal prosecution if infringement is willful and for purposes of commercial advantage or private financial gain. 17 U.S.C. 506(a). If the offense consists of the reproduction or distribution, during any 180-day period, of 10 or more copies having a retail value of more than $2,500, the offense is a felony; otherwise, the offense is a misdemeanor. 18 U.S.C. 2319.

As a side note, although 18 U.S.C. 2319 purports to prescribe the penalties for criminal infringement, all crimes covered by Title 18 have their penalties determined by the U.S. Sentencing Guidelines, another part of Title 18.

3.4) What is the statute of limitation for copyright infringement?

For both civil suits and criminal prosecutions, the statute of limitations for copyright infringement is three years. 17 U.S.C. 507.

3.5) Can the government be sued for copyright infringement?

Yes. The United States has expressly waived its immunity to suit for copyright infringement. 28 U.S.C. 1498.

For some time, it was unclear whether the Eleventh Amendment of the U.S. Constitution operated to make a state immune from suit for copyright infringement. In BV Engineering v. University of California at Los Angeles, 858 F.2d 1394 (9th Cir., 1988), UCLA successfully defended a copyright infringement suit on the ground that it had such immunity. Although UCLA won that suit, Congress responded by passing the Copyright Remedy Clarification Act, PL 101-553, in 1990. This law added section 511 to the Copyright Act, which had the effect of removing the immunity defense. It became effective June 1, 1991.

Today the law is very clear: the United States government and the governments of each state may be sued for copyright infringement, and may not plead immunity as a defense.

3.6) Can the government copyright its works?

This one has to be taken slowly, and we'll look at federal and state governments separately, because the rules are different.

With one exception, works of the United States government are public domain. 17 U.S.C. 105. The only exception is for standard reference data produced by the U.S. Secretary of Commerce under the Standard Reference Data Act, 15 U.S.C. 290e.

However, there's a big loophole here: while the U.S government can't get copyright for its own works, it can have an existing copyright assigned to it. So if the U.S. government produces a work, it's not copyrighted. But if an independent contractor working for the government produces a work, it is copyrighted, and nothing prevents that contractor from assigning the copyright back to the government. This reconciles the fact that the U.S. government can't copyright its works with the fact that if you stay up late on weekends, you'll see Public Service Announcements against drunk driving that say "Copyright U.S. Department of Transportation."

Also, there are some entities that might seem to be part of the U.S. government, but are not. For example, the U.S. Postal Service is no longer a branch of the U.S. government. In addition, while under U.S. control, the District of Columbia, Puerto Rico, and organized territories of the U.S. are not considered to be part of the U.S. government for purposes of copyright law.

Whether a state can copyright its works is a different matter. Unlike the U.S. government, a state government's works are subject to copyright. It is up to each state to decide whether to retain the copyright or whether such works are to be automatically made public domain.

A related question that sometimes comes up is whether a government may copyright its laws. In the case of the federal government, because of the factors discussed above, the answer is clearly that it cannot. With state governments, it's a little less clear. There is no statute, case, or regulation that indicates that a state cannot copyright its laws. However, it is the position of the U.S. Copyright Office that a state's laws may not be copyrighted. The Compendium of Copyright Office Practices (Compendium II) section 206.01 states, "Edicts of government, such as judicial opinions, administrative rulings, legislative enactments, public ordinances, and similar official legal documents are not copyrightable for reasons of public policy. This apples to such works whether they are Federal, State, or local as well as to those of foreign governments."

Now, the Compendium II does not have force of law. But this does indicate that any state trying to register a copyright in its laws would be refused registration by the Copyright Office. As a result, it would either have to successfully sue the Office to force registration, or it would bear the burden of establishing that its work was indeed copyrighted in the event of an infringement suit (normally, a registration fulfills that burden). It's a safe bet that any state or city trying to assert a copyright in its laws would have an uphill battle ahead of it.

3.7) Can I legally make a cassette copy of a musical CD for my own use, so I can play it in my car?

This issue has been argued back and forth for many years, with consumers groups arguing that this was a fair use (see sections 2.8 and 2.9), and the recording industry arguing that it was not. The issue was finally settled by Congress when the Audio Home Recording Act (AHRA) (P.L. 102-563, 106 Stat. 4237, codified at 17 U.S.C. 1001 - 1010) was passed in October 1992. This Act added ten sections to Title 17, one of which provided an alternative to the fair use analysis for musical recordings. The new section states:

No action may be brought under this title alleging infringement of copyright based on the manufacture, importation, or distribution of a digital audio recording device, a digital audio recording medium, an analog recording device, or an analog recording medium, or based on the noncommercial use by a consumer of such a device or medium for making digital musical recordings or analog musical recordings.

17 U.S.C. 1008.

As the legislative history to this statute noted, "In short, the reported legislation would clearly establish that consumers cannot be sued for making analog or digital audio copies for private noncommercial use." H.R. Rep. 102-780(I).

Does this mean you can make copies for your family and friends, as long as it's not "commercial?" A strict reading of the words in the statute would seem to say that you may. This is not as outrageous as it sounds. Part of the impetus behind the AHRA was the perception that blank tapes were being used mostly to copy commercial musical sound recordings. As a result, the AHRA provided that a royalty payment (referred to as a "DAT tax" by its detractors) be paid for each sale of digital audio tape to compensate authors of musical works and sound recordings for the profits lost due to these copies. See 17 U.S.C. 1003, 1004. Arguably, the AHRA anticipates and allows exactly this type of copying, and a literal reading of section 1008 would tend to support this position. But the AHRA is still sufficiently new this hasn't been tested in court yet.

Note, also, that this section applies only to musical recordings; it clearly does not include spoken word recordings. Of course, it is still possible that such a use of a spoken word recording might still be considered a section 107 fair use (see sections 2.8 and 2.9), even though section 1008 does not apply to provide a clear exemption.

3.8) Are Usenet postings and email messages copyrighted?

Almost certainly. They meet the requirement of being original works of authorship fixed in a tangible medium of expression (see section 2.3). They haven't been put in the public domain; generally, only an expiration of copyright or an unambiguous declaration by an author is sufficient to place a work into public domain.

However, at least with Usenet postings, there are two doctrines which probably allow at least some copying: fair use (see sections 2.8 and 2.9) and implied license.

Whether a particular use of a Usenet posting is a fair use is, as always, a very fact-specific determination. However, it's probably safe to say that it's a fair use if the use was not commercial in nature, the posting was not an artistic or dramatic work (e.g.,, it was the writer's opinion, or a declaration of facts, and not something like a poem or short story), only as much of the posting was copied as was necessary (e.g., a short quotation for purposes of criticism and comment), and there was little or no impact on any market for the posting.

A similar argument can be made for quoting of private email messages. Of course, revealing the contents of a private email message could run afoul of any of a number of non-copyright laws: defamation, invasion of privacy, and trade secrecy, to name a few. So even if you won't be violating any copyright laws, you should consider other factors that may expose you to legal liability before revealing a private message's contents.

Proponents of the implied license idea point out that Usenet postings are routinely copied and quoted, and anyone posting to Usenet is granting an implied license for others to similarly copy or quote that posting, too. It's not clear whether such implied license extends beyond Usenet, or indeed, what "Usenet" really means (does it include, for example, Internet mailing lists? Does it include netnews on CD-ROM?). If a posting includes an express limitation on the right to copy or quote, it's not at all certain whether the express limitation or the implied license will control. No doubt it depends on the specific facts. For example, was the limitation clearly visible to the person who did the copying? Was the limitation placed such that it would be visible only after the person who did the copying invested time and money to get the posting, believing it to be without any limitation?

With private email messages, a copier who relies solely on the implied license argument will probably lose, since it's hard to argue that by sending the private message to a limited audience, the sender intended for it to be copied and quoted. For email messages to a public mailing list, the implied license argument may still be sound.

These theories are largely speculative, because there has been little litigation to test them in the courts. As a practical matter, most postings, with a small number of notable exceptions, are not registered with the Copyright Office. As such, to prevail in court, the copyright holder would need to show actual damages (see section 2.5). Since most of these cases will result in little or no actual damage, no cases have been be brought; it's simply too expensive to sue for negligible damages.

3.9) Are fonts copyrighted?

First, let's distinguish between a font and a typeface. A typeface is the scheme of letterforms (which is really what you're probably talking about), and the font is the computer file or program (or for that matter, a chunk of metal) which physically embodies the typeface.

A font may be the proper subject of copyright, but the generally accepted rule is that a typeface embodied in the font is not (see Eltra Corp. v. Ringer, 579 F.2d 294, 208 U.S.P.Q. 1 (4th Cir., 1978), and the House of Representatives Report on the Copyright Law Revision, 94-1476, 94th Congress, 2d Session at 55 (1976), reprinted in 1978 U.S. Cong. and Admin. News 5659, 5668).

The letterforms themselves are not copyrightable under U.S. law as a typeface. 37 CFR 202.1(e). A font is copyrightable if it adds some level of protectable expression to the typeface, but that protection does not extend to the underlying uncopyrightable typeface itself (see 17 U.S.C. 102(b)).

In essence, a font will be protectable only if it rises to the level of a computer program. Truetype and other scalable fonts will therefore be protected as computer programs, a particular species of literary works. Bitmapped fonts are not copyrightable, because in the opinion of the Copyright Office, the bitmap does not add the requisite level of originality to satisfy the requirement for copyright.

So, to summarize this point, a typeface is not copyrightable. While a scalable font might be copyrightable as a program, merely copied the uncopyrightable typeface, and creating your own font, either scalable or bitmapped, is probably not an infringement, assuming you did not copy any of the scalable font's code.

Two warnings:

First, even if typefaces can't be copyrighted, they can be patented under existing design patent laws. 35 U.S.C. 171. Copying a typeface and distributing such a font, while not a violation of copyright, might be an infringement of the patent.

Second, Congress has been considering design protection legislation for many years (most recently, the 102nd Congress' H.R. 1790) which, if passed, would protect typeface design. If such a bill is enacted, the above opinion will be obsolete and incorrect.

3.10) What does "All Rights Reserved" mean?

One of the earliest international copyright treaties to which the U.S. was a member was the 1911 Buenos Aires Convention on Literary and Artistic Copyrights (see section 4.1 for more information). This treaty provided that, once copyright was obtained for a work in one signatory country, all other signatories accorded protection as well without requiring any further formalities (i.e., notice or registration), provided that the work contained a notice reserving these rights. The typical notice complying with Buenos Aires was "All Rights Reserved."

As noted in section 4.1, the Buenos Aires Convention is essentially dead today, and the "All Rights Reserved" notice no longer serves much useful purpose. It lives on mostly as a testament to inertia on the part of U.S. publishers.

3.11) What's the difference between a copyright and a patent?

This answer is included in both the Copyright and Patents FAQs.

There are basically five major legal differences between a copyright and a patent in the United States: subject matter protected, requirement for protection, when protection begins, duration, and infringement. There's also a sixth practical one: cost.

Subject matter: A copyright covers "works of authorship," which essentially means literary, dramatic, and musical works, pictorial, graphic, and sculptural works, audio-visual works, sound recordings, pantomimes and choreography. A patent covers an invention, which essentially means a new and non-obvious useful and functional feature of a product or process.

Requirement for protection: In order for a work to be copyrighted, it must be original and fixed in a tangible medium of expression; no formalities are required (see section 2.3). In order for an invention to be patented, it must be novel (i.e., new), non- obvious, and useful and a patent must be issued by the United States Patent and Trademark Office.

Start of protection: Copyright protection begins as soon as a work is created. Patent protection does not begin until the patent is issued.

Duration: A copyright generally lasts for the life of the author, plus 50 years (see section 2.4). In the U.S., a patent lasts for 17 years from the date granted (in some nations, particularly Japan and most European nations, the duration is 20 years, and is measured from date of application).

Infringement: For a copyright to be infringed, the work itself must have actually been copied from (either wholly or to create a derivative work), distributed, performed, or displayed. If a person other than the copyright owner independently comes up with the same or a similar work, there is no infringement. In contrast, a patent confers a statutory monopoly that prevents anyone other than the patent holder from making, using, or selling the patented invention. This is true even if that person independently invents the patented invention.

Cost: A copyright is essentially free. Even if you want to register the copyright, the cost is only $20, and the paperwork is much less complicated than the 1040A short form for filing your income tax, well within the capabilities of the person registering the copyright. A patent, on the other hand, is much more costly; there are fees to the Patent and Trademark Office, and the patent application process is much more complex, usually requiring the services of a registered patent agent (and perhaps a lawyer) to draft and prosecute the application, adding to the cost.

Philosophically, you can look at a copyright as protecting the author's rights that are inherent in the work; in contrast, a patent is a reward of a statutory monopoly to an inventor in exchange for providing the details of the invention to the public.

3.12) Why is there so little in this FAQ about patents?

Peter Treloar, the moderator of comp.patents, currently maintains a FAQ devoted exclusively to patents, and duplicating his effort here would be needlessly redundant.

The comp.patents FAQ is periodically posted to the Usenet comp.patents newsgroup. A current copy is available by anonymous FTP from rtfm.mit.edu, in the /pub/usenet/comp.patents/ directory, in the file "[ADMIN]_Comp.patents_FAQ." If you do not have access to anonymous FTP, you may obtain it via the MIT mail server by sending an electronic mail message to [email protected], consisting of a single line reading:

send usenet/comp.patents/[ADMIN]_Comp.patents_FAQ

in the body of the message. The subject of the message is immaterial.

3.13 - 3.18) [reserved.]

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