Article 1, Section 8, Clause 8 of the U.S. Constitution as ratified by the States in 1790, declares "The Congress shall have the power ... 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." This is the basis for the US version of two of the three forms of intangible property - copyrights and patents - commonly recognized around the world today. The third form, trademarks, arose from common law although all three now have been blessed by federal regulation in the form of statutes. Two of the three -copyrights and patents - have been preempted from state law jurisdiction under the Commerce Clause.

Although copyrights and patents have the same constitutional background, they have taken dissimilar paths along the way to their present state. Copyrights are secured for literary and artistic expressions. Patents are directed to functional inventions and ornamental designs. Each has a predetermined life set forth by statute. Trademarks differ from both copyrights and patents in that they have an indeterminate life and serve only to identify the commercial origin of a product or service.

Each of these three "intangible" properties can be a valuable asset to a business. Each has its own rules of use, and each can be lost for failure to understand and apply these rules properly. This paper will focus on copyrights because copyrights are the easiest to obtain, the easiest to lose, and probably the most misunderstood of the three types of intellectual property.

17 U.S.C. § 102 defines what is capable of being the subject matter of a copyright. "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."

Original Works of Authorship

To be subject to copyright, a work need not be "novel" in the sense of a patent, for example. It need be only an independent creation of or originate with the "author". The "author" is the beginner, first owner, creator, originator of a work. A "discovery" is not an "original" work.

Fixed in Any Tangible Medium of Expression Now Known or Later Developed

A work is "fixed" if it can be perceived either directly or with the aid of a machine or other device. Fixation may take the form of words, numbers, notes, sounds, pictures, graphic or symbolic indicia. Then fixation must be more than merely "ephemeral" in nature. Live broadcasts and momentary transitions in computer memory must be separately "fixed" to obtain protection.

Care should be exercised in defining a "work." A "book" is merely the embodiment of the words, pictures, etc., that form the literary work. The same literary work may also take the form of phonograph records, tapes, audio/video films and the like.

Works of authorship include the following categories:

(1) Literary works;

(2) Musical works, including any accompanying words;

(3) Dramatic works, including any accompanying music;

(4) Pantomimes and choreographic works;

(5) Pictorial, graphic, and sculptural works;

(6) Motion works and other audio/visual works;

(7) Sound recordings; and

(8) Architectural works (added December 1, 1990).

In no case does copyright protection for an original work of authorship extend to an idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. 17 U.S.C. 102(b). Copyright only protects the words with which an author has expressed facts and ideas. Copyright does not protect the facts or ideaas themselves. Facts and idea are free for anyone to use. First Amendment, U.S. Constitution.

A copyright may also lie in compilations and derivative works of any one or more of the above. Copyright protects only the expression of an idea, not the idea itself. As such, the idea must be original, i.e., not copied from another (but can include portions of others' copied words viz. Compilations and derivative works).

17 U.S.C. 106 sets out the exclusive rights of a copyright owner, i.e., to reproduce the work and distribute it, to display and perform the work publicly, and to authorize others to do these things. There are exceptions to the exclusive use including the following:

Fair Use

A common misperception is that no one can use or photocopy a protected work without the owner's permission. This has never been true. One can photocopy or otherwise use a copyrighted work so long as that use comes within the bounds of "fair use", i.e., a use that does not diminish the value of the work.

A copyright owner refers to the owner of any one of the exclusive rights enumerated above. The "owner" of a copyright may or may not include the "author" of the works depending on the contractual arrangement.

Work Made for Hire

A "work made for hire" is a work prepared by an "employee", "within the scope of his or her employment". Certain specially ordered or commissioned works are also considered under this definition. Whether a hired party for a work is an "employee" or not depends upon the hiring party's right to control the manner and means by which the product is accomplished under the general principles of agency. Under today's guidelines and in absence of evidence of an agreement to the contrary, if an artist, writer, photographer, architect or other "author" is commissioned to create a work, the copyright in the work will belong to the "author".

(1) A contribution to a collective work;

(2) A part of a motion picture or other audio/visual work;

(3) A translation;

(4) A supplementary work;

(5) A compilation;

(6) An instructional test;

(7) A test;

(8) Answer material for a test;

(9) An atlas.

Under the 1909 Copyright Act, the moment a work of art was fixed in some tangible form, a copyright is obtained. This copyright could be defeated by an untimely failure to place, prior to first publication, the requisite notice in the place (e.g., a "C" with a circle around it, or "cl"). The harshness of the 1909 Act was modified somewhat by the Copyright Law of 1976. The '76 law still required the replacement of a copyright notice, but permitted limited curing of a failure to place the copyright notice on works. After March 1, 1989 (when the United States became a member of the Berne Convention), copyright notices are no longer mandatory to secure a copyright.

Placement of the copyright notice and registration of same, however, still has a number of advantages. The copyright notice strips an infringer of the defense of innocent infringement (i.e., claiming no awareness of the copyright by the failure of the attachment of a copyright to the article or copyrightable material). Secondly, "statutory" damages and attorney fees cannot be obtained for any infringement of a copyright before the effective date of the copyright registration.

Having satisfied the registration requirements, a copyright owner can obtain, at his or her election, (a) actual damages because of a copyright infringement or (b) statutory damages of $500 to $20,000 per infringement. In the event the infringement was committed willfully the court may increase the award to a sum of not more than $100,000 for infringement. Registration is a prerequisite for an infringement suit. As a practical matter, a lack of timely registration makes it difficult to obtain damages for copyright infringement. There are also criminal penalties for a copyright infringement, including the forfeiture and destruction of infringing copies and all implements, devices and equipment used to manufacture the infringing. A defendant can also be enjoined from future infringement.

As noted above, the copyright automatically attaches to any new work of art that has some minimal level of creativity. The copyright only attaches to non-utilitarian aspects of the work. A copyright automatically comes into existence the moment an author fixes his or her work in some form -- for instance, the moment a book or article is typed, handwritten, or dictated. No further action need be taken.

While marking is no longer a prerequisite under the Berne Convention, marking is recommended to counter a defense of "innocent" infringement. Marking can take a number of forms. The most common form is as follows: (cl), (DATE) (AUTHOR). The "DATE" is the year in which the work was published. Shorthand terms may be used for the (AUTHOR) so long as the author may be easily determined. Other forms of notice may be appreciable to some works.

For works created after January 1, 1978, a copyright will last for the author's lifetime plus 50 years. If the copyright is a "work made for hire", the copyright lasts for 75 years from publication or 100 years from creation, whichever is shorter.

Copyright registration can be obtained during the period of copyright by depositing in the Copyright Office, one to two complete copies (as required) of the best edition of the work with an application form prescribed by the Registrar of Copyrights and a small fee. The application is best filed within three months of publication of the work. Filing the application within this time frame can preempt rights even of a third party who began infringing prior to the application. After an examination, if the Registrar of Copyrights determines the materials deposited constitute copyrightable subject matter and other requirements have been met, a Certificate of Registration of copyright will be issued to the applicant.

This short summary of the copyright requirements in the United States should be recognized for what it is - a simplification of a rather complex real subject. Falk & Fish, l.l.p. will be happy to aid you in any of your copyright problems.