Law (in Plain English) for Writers (Fifth Edition)

CHAPTER 4

A copyright is a form of property that can be created by individuals and transferred to others. Unlike most property that exists in tangible form, there are nuances that affect the ability to assert claims of ownership. Writers need to understand the nature of their rights and how licensing agreements can affect their ability to profit from and market their work. Otherwise, they are at risk of needlessly yielding their rights to other parties.

CREATION OF COPYRIGHTS

Under the 1909 Copyright Act, a statutory copyright was created when the work was published with a copyright notice (at which time it was required to be registered promptly with the US Copyright Office). Unpublished works could be protected by common law copyright doctrines developed under state law. The 1976 Copyright Act dramatically changed the law in that respect by making works automatically copyrighted once they were created. There are no formal requirements of notice or registration for a work to be protected. However, prior to March 1, 1989, copyright protection could be lost if the work was published without the proper notice.

TRANSFERRING OR LICENSING COPYRIGHTS

On death, a copyright may be willed to another by the owner of the copyright or it may be distributed as personal property from the estate of someone who dies without a will.

During lifetime, a copyright owner may transfer the entire copyright or any part of it to another person, or may grant limited permission to others to copy the work. The transfer of all the exclusive rights in a copyright is commonly known as an assignment. It must be made in writing and be signed by the copyright owner or the owner’s agent. Once the rights are assigned, the party who receives the assignment is entitled to all of the protection and remedies accorded to the copyright owner by the statute. This means that the assignee can give permission to others to copy the work and enforce against infringements. The party that assigns the copyright relinquishes its rights altogether. For example, a writer who assigns all rights to an article to a magazine can no longer grant permission to others to use the text or sue parties who reproduce the work without his or her permission.

It is also possible to assign only a particular subset of the exclusive rights encompassed by a copyright, such as the right to prepare derivative works. Such transfers are commonly called exclusive licenses or partial assignments. For example, a writer might assign the right to publish a book to a publishing house and the right to prepare screenplays to a movie producer. Once a particular right is assigned, the writer may no longer legally prepare screenplays based on the work or grant permission to others to do so. Such permission must come from the party that acquired the exclusive right.

Giving another person limited permission to reproduce a copyrighted work is known as granting a nonexclusive license. Another term commonly used in the publishing business for a nonexclusive license is a permission. These kinds of licenses allow the recipient of the license to reproduce the work without potential liability for infringement, but generally do not give the recipient the right to take action against infringers or grant permission to others to copy the work.

Both exclusive and nonexclusive licenses can be limited as to time, geographical area, and media. This allows copyright owners to exploit their rights more broadly than would otherwise be possible. For example, a writer can sell the exclusive right to publish an article for the first time in North America to a magazine publisher. Having done so, the writer is also free to sell the right to publish the article outside North America. Once the article is published, the writer will still have the right to license publication of the article in other magazines, incorporate the material in a book, or prepare a derivative work.

Many magazine and other serial publishers will demand that writers transfer their copyrights to the publisher. Publishers favor such transfers because they make it easier to republish (or resell) material in other media, such as on the Internet, without having to further compensate the author. Holding the copyright also provides the publisher with the assurance that competing publishers cannot legally use the material. In general, writers should resist transferring copyrights and should instead attempt to license the rights. Even when a writer foresees no additional personal use for the material, transferring the copyright will preclude the writer from incorporating the material in a future work or giving others permission to publish it. In most cases, granting a permission or a limited exclusive license will meet the publisher’s legitimate business needs as well as an outright assignment of all the rights.

Another aspect of licenses is that courts typically construe them narrowly. For example, in the case of New York Times Co. v. Tasini, the United States Supreme Court held that, in the absence of an agreement that allowed for the continued electronic reproduction of particular works, publishers are not entitled to republish, on the Internet or on CD-ROMs, articles written by freelancers that were licensed for publication in printed periodicals.

IN PLAIN ENGLISH

Courts are reluctant to infer the transfer of rights beyond the explicit terms of licensing agreements.

Recording Transfers

Both an assignment of ownership and a licensing agreement can be recorded with the Copyright Office. When the transaction is recorded, the rights of the assignee or licensee are protected in much the same way as the rights of an owner of real estate are protected by recording a deed. A critical fact to remember is that before a transferee (either an assignee or licensee) may sue a third party for infringement, the document of transfer must be recorded.

Involuntary Transfers

One section of the 1976 Copyright Act pertains to the involuntary transfer of a copyright. This section, which states that such a transfer will be held invalid, was included primarily because of problems arising from US recognition of foreign copyrights. For example, if a country did not want a dissident author’s works to be published, the country could claim to be the copyright owner and thereby refuse to license foreign publication. Under the 1976 Copyright Act, the foreign government must produce a signed record of the transfer before its ownership of the work will be recognized.

Another situation covered in this section deals with a transfer that at first glance might appear to be involuntary, but is not. For example, a transfer of a copyright in a bankruptcy proceeding or in the foreclosure of a mortgage secured by the copyright is valid. Such a transfer is considered voluntary rather than involuntary because the copyright owner freely chose to declare bankruptcy or to mortgage the copyright, even though the owner may not have chosen the consequences.

Alternative Licensing Schemes

In recent years, there have been some alternative licensing schemes. These include, for example, Creative Commons, Copyleft, and other vehicles whereby material may be used without additional permission of the copyright owner, who by publishing it without reserving all rights gives such permission as to those rights expressly relinquished, provided that any modification, enhancement, or the like remains part of the work, and the enhanced, modified, or altered work must be available for others to freely use as well. There are some technical restrictions imposed by the different alternative licensing schemes, and attribution may be required. For example, some Creative Commons works do not permit modification, others impose economic restrictions on use, etc. It is therefore important for anyone relying on these alternative licensing schemes to carefully read the terms of use and strictly comply with them. A significant issue which should be considered before taking advantage of one of these forms of alternative licenses is that, once the material is available, it cannot be withdrawn. This means that, for example, someone who has published material and identified it as Creative Commons or Copyleft will not be able to then publish it commercially since it is highly unlikely that anyone would purchase material when it is already available for free. If questions arise, an experienced publishing lawyer should be consulted.

Termination of Copyright Transfers and Licenses

It is not unusual for writers, confronted with an unequal bargaining position with respect to a publisher, to transfer all rights in the copyright to the publisher for a small amount, only to see the work become valuable at a later date. The 1976 Copyright Act, in response to this situation, provides that after a certain period has lapsed, the author or certain other parties in special cases may terminate the transfer of the copyright and reclaim the rights. Thus, the law grants the author a second chance to exploit his or her work after the original transfer of copyright. This right to terminate a transfer is called termination interest.

In most cases, the termination interest will belong to the author or authors. If the author is no longer alive, however, and is survived by a spouse but no children, the surviving spouse owns the termination interest. If the deceased author is not survived by a spouse, ownership of the interest belongs to any surviving children in equal shares. If the decedent is survived by both a spouse and children, the interest is divided so that the spouse receives 50 percent and the children receive the remaining 50 percent in equal shares.

When the termination interest is owned by more than one party, be they joint authors or an author’s survivors, a majority of the owners must agree to terminate. Under the statute, the general rule is that termination may be effected at any time within a five-year period, beginning at the end of the thirty-fifth year from the date on which the rights were transferred. If, however, the transfer includes the right of publication, termination may go into effect at any time within a five-year period, beginning at the end of thirty-five years from the date of publication or forty years from the date of transfer, whichever is earlier.

The party wishing to terminate the transferred interest must serve an advance written notice on the transferee. This notice must state the intended termination date, and must be served not less than two but no more than ten years prior to the stated termination date. A copy of the notice must be recorded in the Copyright Office before the effective date of termination.

DURATION OF COPYRIGHT

Determining when the copyright to a work expires can be somewhat complicated because the rules vary depending upon when the work was created and when it was published. They also vary depending on whether the work was created by a natural person, or is anonymous, pseudonymous, or a work made for hire. Under copyright law, the date of creation is the date when the work was first fixed in a tangible medium. The date of publication, with a limited exception, is determined by when the work was first distributed (sold, rented, or loaned) to the public or offered for further distribution. The exception is that limited distribution, made with the understanding that such copies are not to be further reproduced and distributed, is not considered publication. Examples include showing a manuscript to a friend for review and submissions to publishers for purposes of consideration. A public performance or display of a work does not of itself constitute publication.

For a work created on or after January l, 1978, by identified natural persons, the copyright will last for a term consisting of the life of the author, plus seventy years. If the work was created by two or more authors and is not a work for hire, the copyright endures for a term consisting of the life of the last surviving author, plus seventy years. With regard to works created anonymously, pseudonymously, or for hire, the duration of the copyright depends on the creation and publication dates. The copyright will endure for ninety-five years from the year of first publication or for 120 years from the year of its creation, whichever expires first (this is sometimes called the 95/120 rule). However, the life plus seventy years rule will apply if the identity of one or more of the authors of an anonymous or pseudonymous work is revealed in a registration filed with the US Copyright Office during the term of the copyright.

Date of Work	Term or Status of Copyright
Published before 1923	Public Domain
Published 1923–1963 If never renewed If renewed before October 27, 1998	Public Domain 95 years after first publication
Published 1964–1977	95 years after first publication
Created prior to 1978 but never published or registered	Individuals: Life plus 70 years, or 120 years from creation if date of death is unknown Works for hire; anonymous or pseudonymous works: 120 years from date of creation
Created prior to 1978 and published or registered before 2003	Life plus 70 years, or December 31, 2047, whichever is later
Created prior to 1978 and published or registered during or after 2003	Life plus 70 years
Created 1978 or later	Individuals: Life plus 70 years, or 120 years from creation if date of death in unknown Works for hire; anonymous or pseudonymous works: 95 years after first publication or 120 years from the date of creation, whichever comes first

There are special rules for works that were created before 1978, including the requirement of renewals. Renewal is not required under the 1976 Act. Once the copyright on a work has expired, or been lost, the work enters the public domain where it can be exploited by anyone in any manner.

Works published under the 1909 Copyright Act had to contain the proper notice in order to be protected by the federal copyright law. With few exceptions any omission, misplacement, or imperfection in the notice on any copy of a work distributed by authority of the copyright owner thrust the work forever in the public domain. Thus, it was critical for the copyright owner, when signing a contract, to make sure that any license to publish be conditioned on the publisher’s inclusion of the proper copyright notice. That way, if the publisher made a mistake in the notice, the publication might be deemed unauthorized but the copyright would not be affected. The publisher could be liable to the copyright owner for the loss of the copyright if it did occur.

Notice remained a requirement until March l, 1989, when the United States became a party to the Berne Convention. The intent of the Berne Convention is that copyright notice is not a legal requirement for protection. Notice is optional for works published after March 1, 1989. The Copyright Office does not take a position on whether reprints published after March 1, 1989 of works first published with notice before March 1, 1989 must bear the copyright notice. It is likely that such notice is not required.

A proper copyright notice on a written work has three elements. First, there must be the word copyright, the abbreviation copr., or the symbol ©. Courts may show some leniency with respect to minor variations, but departures do carry legal risk.

Second, the notice must contain the year of first publication (or, in the case of unpublished works governed by the 1909 Copyright Act, the year in which the copyright was registered). This date may be expressed in Arabic or Roman numerals, or in words. Under the 1909 Copyright Act, it was not clear when a derivative work, such as a substantially revised textbook, was first published. To be safe, the general practice was to include in the notice both dates—that of the original work and that of the revision. The 1976 Copyright Act makes it clear that the date of the publication of the derivative work is sufficient. The year of the first publication can be omitted on certain works specified in the Act, but this category is extremely narrow. Since the date is necessary for some forms of international protection, it should always be included.

The third necessary element is the name of the copyright owner. If there are several creators, one name is sufficient. Usually, the author’s full name is used, but if the author is well-known by a last name, the last name can be used alone or with initials. A business that owns a copyright may use its trade name if the name is legally recognized.

Errors in a Copyright Notice

Failure to provide a copyright notice or publishing an erroneous notice had serious consequences under the 1909 Copyright Act. Under that Act, the copyright was lost if the wrong name appeared in the notice. If the author sold the copyright and recorded the sale, either the author’s or the new owner’s name could be used. If the sale was not recorded with the Copyright Office, however, using the subsequent owner’s name in the notice destroyed the copyright.

Under the 1976 Copyright Act, a mistake in the name appearing in the notice is not fatal to the copyright. A person who is honestly misled by the incorrect name can, however, use this as a defense to a suit for copyright infringement if the proper name was not on record with the Copyright Office. This is another incentive for registering a sale or license of a copyright with the Copyright Office.

Under the 1909 Copyright Act, a mistake in the year of the first publication could also have serious consequences. If an earlier date was used, the copyright term would be measured from that year, thereby decreasing the duration of protection. If a later date was used, the copyright was forfeited and the work entered the public domain. Because of the harsh consequences of losing a copyright, a mistake of one year was not penalized.

Using an earlier date under the 1976 Copyright Act will not be of any consequence when the duration of the copyright is determined by the author’s life. When the duration of the copyright is determined by the date of first publication, however, the earlier date in the notice will be used to measure how long the copyright will last. If a date that is later than the year of publication is used, the work is considered to have been published without notice. While this is not fatal to the actual copyright itself, it will preclude the recovery of statutory damages and attorney fees in the event of an infringement action.

The 1909 Copyright Act contained complicated rules for placing the copyright notice within the work. Improper placement was one more error that was fatal to the copyright. Although the 1976 Copyright Act gives the Copyright Office the authority to promulgate regulations as to where the copyright may be placed, failing to follow them will not invalidate the copyright. For example, the regulations specify that the copyright notice for a book should go on the cover, title page, or the back of the title page.

IN PLAIN ENGLISH

The back of the title page is known as the copyright page in the book publishing industry. This is where you will generally find the copyright information.

Failure to comply with these regulations does not automatically void the copyright notice, but does put the burden on the copyright holder to prove that the notice was placed so as to give reasonable notice of the claim of copyright. The public is not expected to search high and low for a copyright notice. Should a court determine that the placement did not give reasonable notice, the work will be treated as if it were published without any notice.

Under the 1976 Copyright Act, if a work was published prior to March 1, 1989 without notice, the copyright owner could still be protected for five years. During those five years, the owner must have registered the copyright with the Copyright Office and made a reasonable effort to place a notice on those copies published without notice and distributed within the United States. If this was done, full copyright protection is granted for the appropriate duration of the published work. This is known as the savings clause.

A copyright owner is always forgiven for an omission of notice if the omission was in violation of a contract that made inclusion of the proper notice a condition of the right to publish. Also, if the notice is removed or obliterated by an unauthorized person, this will have no effect on the validity of the copyright or the notice.

Even though any work published after March 1, 1989, is not required to have a copyright notice affixed, it is nevertheless important to continue to provide notice. One reason is that an adequate notice is one of the prerequisites for eligibility to recover statutory damages and attorney fees in an infringement case. Another reason is that providing notice tends to better deter casual infringers from unauthorized copying, and one who relies on good faith on the omission of notice may argue that the copying was an innocent infringement. Innocent infringers may not be held liable for damages, or damages may be limited to as little as $200, and they may be permitted to continue copying if the court upholds their claim of innocence if the infringer has made a sizable investment for future production, or the court may compel the copyright owner to grant a license to the infringer. In other cases, the innocent infringer may be compelled to give up any profits made from the infringement.

DEPOSIT AND REGISTRATION OF COPYRIGHTS

Works published after March 1, 1989, are protected by copyright irrespective of whether they contain a copyright notice or have been registered with the US Copyright Office. Nonetheless, providing an adequate notice and registering the work are critical, since enforcing against an infringement may be impractical otherwise. Even though registration is not a strict condition to copyright protection, copyright owners cannot file a lawsuit to enforce their copyrights until it has been registered. More importantly, if the copyright was registered prior to the infringement, the owner may be entitled to recover attorney fees and statutory damages. In the absence of prior registration, the legal costs associated with bringing the action and the difficulty of proving actual damages will usually make an infringement action impractical from an economic perspective, since the costs to bring the action will typically exceed the damages awarded.

Registration is a fairly straightforward process. The most current information on how to do this can be obtained from the US Copyright Office. Contact the Register of Copyrights, Library of Congress, Washington, DC 20559, or go online to www.copyright.gov. A registration fee is required. To be eligible to recover attorney fees and statutory damages from infringers, the owner of the work must register the copyright before the infringement occurs or within three months of publication. Moreover, there is a statutory presumption that a copyright is valid if the work has been registered within five years of its first publication. Thus, the copyright owner has a strong incentive to register the copyright at the earliest possible time.

In addition to completing the registration application form, the applicant must deposit two copies of the best edition of the work if published and one copy if unpublished. The deposit must be made within three months after the work has been published. If the copies are not deposited within the requisite three-month period, the Register of Copyrights may demand them. If the copies are not submitted within three months after demand, the person upon whom demand was made may be subject to a fine for each work that was not submitted. In addition, such person or persons may be required to pay the Library of Congress an amount equal to the retail cost of the work, or if no retail cost has been established, the costs incurred by the Library in acquiring the work (provided such costs are reasonable). Finally, a copyright proprietor who willfully and repeatedly refuses to comply with a Register demand may be liable for a significant additional fine. While depositing copies under the deposit section of the law is not a condition of copyright protection, in light of the penalty provisions, it would be foolish not to comply.

When your claim to copyright has been accepted by the Copyright Office, you will receive a certificate of registration which will include the registration number as well as the effective date of registration. That date is when the form, fee, and deposit are received together at the Copyright Office. This is an important legal document. You cannot bring a lawsuit to enforce your rights until the copyright has been registered.