[208] Mark Twain.
This photograph of Mark Twain (center, with friends George
Alfred Townsend and David Gray) was taken by Matthew Brady in 1871.
The Illustrated Story of Copyright
©
2000 by Edward Samuels
[205]
Chapter Nine
___________________________________
Other Major Copyright Principles
There are other copyright principles that are just as important as those already discussed in this book, but that don’t fit neatly into the categories of other chapters. In this chapter, we’ll look at some basic questions: How long does copyright last? What formalities are required? How do you determine who owns a copyright? And what about other theories for protecting creative works?
Nothing illustrates the tremendous expansion of copyright over the years more clearly than the extension of copyright protection to cover ever longer periods of time.
As we have seen, the initial American copyright act,* modeled after the British Statute of Anne, granted copyright protection for 14 years, with an option to renew for another 14 years, for a maximum of 28 years.
*1790 copyright act, see p. 14.
In 1831, the first term was extended to 28 years, to create a maximum period of 42 years.
In the recodification of copyright in 1909, the second term was also extended to 28 years, making the maximum period of protection 56 years. Thus, over a period of 120 years, the term of copyright was exactly doubled.
[206] Even by 1909, most of the rest of the world had expanded their protection to the life of the author plus 50 years, and that term was seriously considered in the congressional debates of 1909. But Congress, in its wisdom, chose to retain the renewal system, and to limit protection to 56 years.
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[206] Only a bathtub-full of books. Here’s a fun quote from Mark Twain. “[P]erhaps no important American or English statutes are uncompromisingly and hopelessly idiotic except the copyright statutes of these two countries.” The quote, taken out of context, might seem to imply that Twain (Samuel Clemens) was not a fan of copyright. But actually his frustration was with the fact that these countries placed any restriction on the duration of copyright. He argued that most creative works were not of much value for very long anyway, so that it would not be a great burden upon society to allow the successful works protection virtually in perpetuity. It’s of course more fun to look at Twain’s own words, from his autobiography: If you could prove that only twenty idiots are born in a century and that each of them, by special genius, was able to make an article of commerce which no one else could make; and which was able to furnish the idiot and his descendants after him an income sufficient for the modest and economical support of half a dozen persons, there is no Congress and no Parliament in all Christendom that would dream of descending to the shabbiness of limiting that trifling income to a term of years, in order that it might be enjoyed thereafter by persons who had no sort of claim upon it. I know that this would happen because all Congresses and Parliaments have a kindly feeling for idiots and a compassion for them, on account of personal experience and heredity. Neither England nor America has been able to produce in a century any more than twenty authors whose books have been able to outlive the copyright limit of forty-two years [the applicable term at the time], yet the Congresses and the Parliaments stick [207] to the forty-two-year limit greedily, intensely, pathetically, and do seem to believe by some kind of insane reasoning that somebody is in some way benefited by this trivial robbery inflicted upon the families of twenty authors in the course of a hundred years. . . . In a century we have produced two hundred and twenty thousand books; not a bathtub-full of them are still alive and marketable. The case would have been the same if the copyright limit had been a thousand years. It would be entirely safe to make it a thousand years and it would also be properly respectable and courteous to do it. |
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[208] Mark Twain. |
Life of the author plus 50 years,
1976
Throughout the twentieth century, authors complained that 56 years was too short. Unlike other forms of property, copyrights might not survive long enough to allow authors to provide for their children. Life expectancy was lengthening, and many authors lived long enough to see their own works go into the public domain. Or some less conventional writers weren’t “discovered” by the public until years after they created their works, sometimes after their copyrights had expired. America had fallen behind the rest of the world in the period of protection we granted authors; and, since the Berne Convention* required life plus 50 years as a minimum period of protection, the 56-year term prevented the United States from joining the premier international copyright convention.
*Berne Convention, see p. 241.
After
fending off authors for most of the twentieth century, the United States in
1976 finally adopted the period of protection that prevailed throughout the
rest of the world: the life of the author plus 50 years. After another dozen
years, we joined the Berne Union, and everyone pretty much assumed that was the
end of the process.
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[207] Plucky Panda
unplucked. |
But a curious thing happened. Many other countries, particularly in Europe, extended their copyright to life of the author plus 70 years. For foreign authors, however, they conditioned the extension upon reciprocity: that is, they would protect the rights of foreign [207] authors only if the foreign authors’ own countries also extended protection to life of the author plus 70 years. So, American authors didn’t participate in the extension of copyright in these countries. It didn’t take the authors very long to figure out that they should get Congress to extend the term of protection in this country; and it didn’t take Congress long to figure out that, as a copyright exporting country, we stood to gain by the reciprocal extension of the copyright term.
There was considerable opposition to the term extension. For one thing, the Constitution provides that Congress may grant copyright protection “for limited times.” It was thought by some observers that the life of the author plus 70 years—which could in some circumstances extend copyright for over a century—somehow violated the spirit of the “limited times” provision. (Though, to be sure, life plus 70 is still a limited time.) Several critics argued that the term extension was a ploy by existing copyright owners—or, worse, their “freeloading” heirs—to simply gouge every last dollar out of their copyrights.
Ultimately, the term extension argument won, with the passage of the Sonny Bono Copyright Term Extension Act of 1998. There was a price, however, that some of the copyright holders had to pay. A coalition of music licensees convinced Congress to condition the term extension upon passage of the Fairness in Music Licensing Act,* also of 1998. The result was that, while all copyrights were extended for an additional 20 years, the value of the music copyrights was decreased by limitations imposed upon the music licensing organizations. But the net result was that we now have a copyright term of life of the author plus 70 years—a substantial increase over the original copyright maximum of 28 years.
Duration of Copyright for Works Created on Specified Dates
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Works created as of these dates |
Duration of
copyright |
Explanation |
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Published before 1923. |
Already in public domain.
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These works originally received at most 56 years of protection, extended to 75 years in 1976; but they went into the public domain before they could be extended by the 1998 amendment. |
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Published 1923-1977. |
If published with notice, and renewed in 28th year, copyright lasts for 95 years from date of publication. |
These works originally received 28 year term, renewable for 28 more years; extended to total of 75 years in 1976; extended again to 95 years in 1998. |
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Created after January 1, 1978. |
Life of author plus seventy years. |
These works originally received life plus 50, extended to life plus 70 in 1998. |
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Created before 1978, but not yet published. |
Life plus seventy years, or until 2002, whichever is later. If published by 2002, extended to 2047. |
These works, as unpublished works, would have gone on forever, but were given the listed terms by the 1976 and 1998 acts. |
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[208] Different rules for existing copyrights. |
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[209] Copyright notice. This is what a
copyright notice looks like: Copyright © 2000 by Edward Samuels You should find it at
the beginning of this and most other books. Under prior acts, the existence and
proper placement of the copyright notice were critical to the continued
viability of copyright protection—even slight slip-ups could result in loss of
all rights! |
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[209] Works under prior law. |
One of the questions I’m most often asked about copyright goes something like this: “If a copyright is so great, how do I get one? What do I have to do to copyright my book/play/sculpture/song/ photograph?” The simple answer is, you don’t have to do anything. Or, to be more precise, all you have to do is “fix” it* “in a tangible medium of expression”—that is, make some sort of physical copy of it—write it down, make a video of it, or audiotape it. That’s it. Copyright protection is automatic.
Some of the apparent confusion may arise from the fact that under prior copyright acts, a copyright owner had to register the claim with the Copyright Office and [209] place a copyright “notice” on all published copies. The notice was a simple and conspicuous statement including all of the following elements: (1) the word “Copyright” or the abbreviation “Copyr.” or the symbol of a “c” in a circle—©; (2) the year of first publication of the work; and (3) the name of the copyright owner. In the 1976 statute, the registration, deposit, and notice requirements were eased somewhat, but not totally abandoned.
However, in 1988, as a condition to joining the international Berne Copyright Convention,* the United States was forced to abandon the copyright formalities it had previously required. What this means is that, while works may have gone into the public domain prior to 1988 because of a failure to comply with technicalities, since 1988 there are virtually no technical prerequisites to federal copyright.
*Berne Convention and copyright formalities, see p. 242.
If you’re an author or composer or artist, I still recommend that you fill out and send in the appropriate copyright registration forms, pay the $30 fee (as of 2000), deposit the recommended copies, and receive a copyright registration certificate. You should also place the copyright notice described above on all published copies of your work. Although a copyright will be valid whether or not you do these things, there are advantages in taking such actions, such as entitling you to recover more money in the event someone infringes the copyright.†
Prior to 1988, the United States was the last major industrial country to still impose copyright formalities. By joining the rest of the world and eliminating these formalities, we’ve made copyright simpler and easier for copyright owners. This is important, because many of the people most affected by copyright don’t seem to know a lot about it. It’s said that an invention is great only if it’s capable of being used by people who don’t know how it works. (If we all had to know how to make and maintain [210] an internal combustion engine before we could drive a car, we’d probably still be using the horse and buggy.) Well, copyright becomes a great invention when it can be used even by people who aren’t lawyers. That’s the beauty of copyright simplification.
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[210] The Library of Congress main reading room, circa 1980.
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One of the primary benefits of copyright has been the requirement that authors register their works, and also deposit copies with the Copyright Office. Many, but by no means all, of these works are chosen for retention by the Library of Congress. As a result, the Library of [211] Congress now represents the “largest collection of stored knowledge in the world.”
The Library of Congress was first established in 1800,
when the United States capital was moved to Washington, D.C. It was completely
destroyed in 1814, when the British burned down almost all government buildings
in the new capital. (The British action in burning Washington was nominally in
retaliation for the American burning of the Parliament Building in York, now
Toronto, Upper Canada, and the destruction of its archives and library.) In a
grand gesture, Thomas Jefferson replenished the Library with his own private
collection from Monticello, making it still the most complete collection in the
country. It was not until 1870 that the federal copyright law was amended to
make the Library of Congress the official depository of all works registered
for copyright. In 1897, the Copyright Office was established as a separate
office within the Library of Congress.
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[210] More et cetera, et cetera. Charles Goodrum in 1980 pointed out that many of the claims about the collection of the Library of Congress are exaggerated. But the superlatives that are true boggle the mind: It is the largest collection of stored knowledge in the world. It does have more maps, globes, charts, and atlases than any other place on earth. It has accumulated more books from England and America than anywhere else—but, mirabile dictu, barely one-fourth of its collections are in English! It does have—almost—every phonograph record ever made in the United States, the largest collection of motion pictures in America, more Civil War photographs, more personal letters in Sigmund Freud’s handwriting, more Stradivari violins, more flutes, more handwritten copies of the Gettysburg Address in Lincoln’s own hand, more . . . . et cetera, et cetera, than any other institution in the world. Obviously, not all of these items come from copyright deposits. The Library also benefits from exchange programs with other countries and other libraries, and from gifts. |
[212] Beyond his wildest dreams. There
had been copyright legislation since 1790 with the law calling for deposit to
the State Department and then to the Interior Department and then to the Patent
Office, but few people gave it much attention. What books were deposited (after
paying a dollar to the clerk of your nearest district court) were stacked in
damp basements all over Washington. [Librarian Ainsworth] Spofford saw the
concept as a gold mine. It took him four years of brisk lobbying, amendments,
and general legislative exercises but by 1870 he had a law that read: “All
records and other things relating to copyrights and required by law to be
preserved, shall be under the control of the librarian of Congress.” Anyone
claiming a copyright on any book, map, chart, dramatic or musical composition,
engraving, cut, print, or photograph or negative thereof must send two copies
to the Librarian within ten days of its publication. Penalties were spelled
out, and the Librarian could demand compliance. It worked beyond Spofford’s wildest dreams. In the next 25 years the Library received 371,636 books, 257,153 magazines, 289,617 pieces of music, 73,817 photographs, 95,249 prints, and 48,048 maps. . . . While the stuff was pouring in, [Spofford] carried on complicated negotiations with the Departments of State and the Interior to recover all the deposits he’d missed back to 1790! -Charles A. Goodrum. |
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[213] The Library’s collection. But,
you ask, doesn’t everything that’s copyrighted become a part of the Library’s
collections? Not at all. Each year about five hundred thousand items are
deposited for copyright; about three hundred thousand of these will be
transferred to the Library and made available to the visiting public. Of these,
the first third are trade books, the kind you see in bookstores; the second
third are magazines; and the final third are tens of thousand of pieces of
sheet music. . . . (In addition to the three thirds, just to keep it from being
too neat, there are three or four percentage points of such things as maps,
motion picture reels, telephone directories, fashion photographs, computer
programs, phonograph records, and phonograph album jackets.) The
remaining two hundred thousand are put into storage and kept indefinitely,
simply arranged by registration number. |
Now that copyright registration
and deposit have been made voluntary rather than mandatory, might the Library
of Congress’s acquisition program suffer? Only time will tell. But it appears
that most publishers still take advantage of copyright registration in order to
provide maximum protection of their works, and are eager to supply copies to
the Copyright Office for ultimate retention in the Library of Congress.
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[Click on image to access form TX and instructions in pdf format] |
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[213] The 1976 Act provides: Ownership of a copyright . . . is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright . . . convey property rights in any material object. |
As a basic premise, the author of a work—its creator—owns all the rights of copyright. But what if the author of the work gives a copy of it—perhaps the only copy—to someone else? A painter sells a painting, an author sends a letter, a musician gives away a master recording of a song. Who owns the copies, and who owns the copyrights? The law is clear: the recipient owns the physical copy of the work, and the original author retains the exclusive reproduction and other rights. For example, J. D. Salinger may own the right to control the making and distribution of copies of his private letters to Joyce Maynard, but she was clearly given the physical letters themselves, and had the right to sell them to whomever she wished.
To make the distinction clear, different terms are used to describe the metaphysical concept of a copyrightable work, and the more concrete material object in which it is embodied. On the one hand, the listed copyrightable works include “literary,” “musical,” “dramatic,” “pictorial” and “audiovisual” works. These works are embodied in “copies” (such as books) or “phonorecords,” the physical objects that exist in the material world. It is technically imprecise to talk about the copyright in a book; the copyright is in the literary work contained in the book.
In order to protect against the inadvertent transfer of copyrights, the Act generally requires that, to legally give away the copyright (as opposed to the physical object), the owner of the copyright must sign a written “instrument of conveyance.” This will usually be in the form of a written contract or a will or other formal document. Think of it this way: the Copyright Act creates property rights in creative works, but it’s the law of contracts and transfers that will often determine who ends up with the rights. There is also a system for recording in the Copyright Office the transfers of copyrighted works, in [213] order to determine priority among competing interests (in the event two or more parties acquire overlapping rights) and to provide a public record of who owns particular copyrights.
Some critics suggest that it’s the giant corporations, not individual authors, that end up owning most of the copyrights. A handful of giant publishing, music, movie, television, and software companies, we’re told, buy up all of the major creative works, and use copyright to control the flow of works in their industries and keep the poor, starving artists and creators from sharing in the bounty.
Even if true, this situation doesn’t imply that we should abandon the copyright system. The fact of the matter is that copyrighted works are generally expensive to publish, and particularly risky as investments. It’s estimated that fewer than one in ten books, records, movies, or other creative works ever makes much of a profit. Movies and other high-tech productions cost millions or hundreds of millions of dollars to produce, and require the cooperation of many thousands of individuals. In such an environment, it is only logical that corporations subsidize the production and distribution of creative works, and end up owning many of the rights of copyright. If there were no copyrights, then the corporations would not be able to protect their investments, and would not be in a position to pay the authors who create the works.
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[214] There’s work for hire and there’s work for hire. |
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You can find it here: http://www.traditionliveson.com/reid.html] |
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[214] Third World America. |
Traditionally, if an employee creates a work within the scope of the employee’s job, then any resulting copyrights belong to the employer. So if a New York Times [214] reporter or photographer is paid to cover a story, the story and the photos belong to the Times; if a Universal Studios employee works on a movie, the copyright in any resulting movie belongs to Universal.
The doctrine works well enough in the case of true employees, but it has led to some problems in the case of so-called independent contractors. What if the reporter and the photographer don’t work for the Times, but are freelancers who supply a story or a photograph to the Times? What if the contributors to a Universal movie are not employees of Universal, but independent writers or composers or special effects specialists who are paid just for the one project? What if a musician-composer is not an employee of a record company, but independently creates works and sells them to the company?
In 1976,
Congress tightened up the definition of works for hire to make it harder for
companies to claim the copyright in works under that doctrine. For the most
part, the courts seem to be getting the message, and closely scrutinizing
“work-for-hire” contracts to assure that they qualify under the statute. My
advice to independent contractors who sell copyrights to companies: [215] have a lawyer review the contract, to make sure
you don’t give away more rights than you intend.
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[215] William Clark’s private notes. The maps produced by the Lewis and Clark expedition were quite clearly government works, in which no one, including Lewis, had a copyright. Jefferson’s formal instructions to Meriwether Lewis were quite clear: Your observations are to be taken with great pains & accuracy, to be entered distinctly, & intelligibly for others as well as yourself, to comprehend all the elements necessary, with the aid of the usual tables, to fix the latitude and longitude of the places at which they were taken, & are to be rendered to the war office, for the purpose of having the calculations made concurrently by proper persons within the U.S. Several copies of these, as well as your other notes, should be made at leisure times & put into the care of the most trustworthy of your attendants, to guard by multiplying them, against the accidental losses to which they will be exposed. a further guard would be that one of these copies be written on the paper of the birch, as less liable to injury from damp than common paper. But what about the private papers of William Clark, discovered in an attic in 1952? These he had prepared on his own during the famous expedition, and he was not subject to the particular instructions made to Lewis. In a fascinating case, it was held that these physical papers were owned by Clark: the claim of title by the U.S. government was set aside. Though not decided in that case, the copyright in the previously unpublished work would presumably belong to Clark’s heirs. |
Under the federal statute, U.S. government works do not qualify for copyright protection. This is easy to apply when government employees create works within the scope of their employment (analogous to the work-for-hire doctrine just discussed). Such government works are not copyrightable, but are in the public domain, and may be reproduced by anyone.
The problem gets trickier when a government employee prepares a work outside the normal scope of employment. If a government official prepares a speech expressing the official’s own views, then it is possible that the official can claim copyright in the work. Also, if an individual obtains a copyright in a work, the individual may subsequently convey the copyright to the United States, which can then itself enforce the copyright. The trickiest problem is when the United States pays an individual to prepare a work for the government. In that case, it’s usually up to the administrative agency to determine whether the individual may hold the copyright, or the individual should convey the copyright to the United States, or the work is unprotected by copyright because it is essentially a U.S. government work.*
*Ansel Adams’s governmental work, see p. 160.
The statute does not make clear the status of state government works. However, it’s generally considered that state statutes and court opinions, at least, are not protected by copyright, but are free for all to use.
Some
official-looking documents may be copyrightable. The American Law Institute and
the National Conference of Commissioners on Uniform State Laws, for example,
publish the Uniform Commercial Code, for the purpose of encouraging its [216] adoption by the state legislatures. As my
colleague, Jim Brook, was surprised to learn when he wrote a series of books on
the Uniform Commercial Code, those nongovernmental bodies consider their work
copyrighted, and ask a modest fee for publication of excerpts of their version
of the work (though it is presumably not copyrighted as specifically enacted in
any particular state).
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[216] States are free to infringe. The Eleventh Amendment
provides that states may not be sued (at least without their consent) in the
federal courts. In 1989, the Supreme Court suggested that a specific grant of
power to the federal government (such as the copyright power) might trump the
state’s immunity, at least if the federal statute specifically so provided. In
response to this suggestion, Congress in 1990 added a provision specifically
making states liable for copyright infringement, on the same terms as applied
to other entities. In a series of recent cases, however, the Supreme Court has
held that such a provision (or, to be precise, similar provisions in other
laws) is beyond the power of Congress. It appears that the federal government
cannot enforce copyright laws against states, and that states are thus free to
infringe copyrights, patents, trademarks, or a number of other federal rights
with impunity. |
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[217] Rear Window. The Rear Window case arose under the prior
law’s tricky renewal provisions. Cornell Woolrich had written a story, “It Had
To Be Murder,” for Dime Detective magazine
in 1942. In 1953-54, Alfred Hitchcock obtained the rights to make a movie based
upon the story, and produced the now classic Rear Window (starring Grace Kelly and Jimmy Stewart). Woolrich died
in 1968, just two years before the renewal of his story; the renewal was
ultimately obtained by a trust, set up in Woolrich’s will, for the benefit of
Columbia University. In the 1980s, MCA, which had acquired the rights to the
movie, re-released it in theaters, on television, and on videocassette and
videodisc. Sheldon Abend, who acquired rights from the trust, sued various
parties, including Jimmy Stewart, who owned a part interest in the production
company that initially bought rights in the story. The Supreme Court, in the case known on appeal as Stewart v. Abend, held that MCA could
not continue to distribute the movie without the agreement of Abend, who now
controlled the renewal rights in the story. As a result of this case, Rear Window and hundreds of other movies were held off the market, and were
absent from television screens, because the motion picture producers were
unable to come to terms with the owners of the renewals in the underlying
stories. In setting up the new termination rights under the 1976
statute, Congress was concerned that works, such as movies, that required the
investment of millions of dollars should not be held up in this fashion. So
they built into the termination rights an important exception that hadn’t
existed for the old renewal scheme: a copyright owner who has granted someone
else the right to make a derivative work (including, most importantly, a movie
adaptation of a book or story) cannot terminate the right to continue
distributing that version of the derivative work (movie) on the terms
originally negotiated. That way, the copyright owners will not be able to “hold
up” the continued distribution of movies based upon their stories, for which
they have been paid. Copyright owners who have terminated rights can, however,
renegotiate the rights to make a new version of the underlying work. |
Read this closely, because it’s rather incredible, and you may not believe it the first time around. Authors generally have the right, between thirty-five and forty years after making a grant of copyright, to “terminate” any such license or grant. For example, if I write a book or a play or a song, and sell the copyright to someone else—even if I say that I grant the copyright forever—thirty-five years later, I may terminate the grant. I may then either renegotiate with the original buyer (presumably for a higher price), or I may convey the right to someone else entirely (again, presumably for a higher price). (This provision is quite complicated, but I think you can get the general idea without going into all the technicalities.)
Is there any other form of property that allows you to take back rights decades after you’ve conveyed them? I don’t think so.
In order to understand why Congress created such a special right in copyright, we have to look back to the statute prior to 1976. Under the prior act, copyright existed in two separate “terms”—an initial term of twenty-eight years from the date of first publication, and a renewal term of twenty-eight additional years (if the copyright owner properly filed for renewal*). If an author died before the renewal term, then the renewal term would pass to the author’s heirs.
[217] In an incredible series of cases, the courts held that the renewal term did not “exist” until the twenty-eighth year after publication of the work. If an author sold the renewal rights, and died before the twenty-eighth year, then the author’s heirs were not bound by the assignment, even if the contract said that they were.
The court interpretations produced some pretty odd results. Suppose an author conveyed away the renewal rights, and lived to the twenty-eighth year; then the assignment of the renewal rights was effective. But if the author died, then the renewal rights could be claimed by the author’s heirs, independently of any contract the author may have made. If you were an author who sold your copyrights, and you wanted to leave something of value to your children, you might be better off dead!
[218] I’m not at all convinced that Congress really intended
this result when it first adopted the two-term copyright system. But Congress
basically allowed the interpretation to stand, by not changing the language of
the statute even after the definitive court interpretations.
Congress finally eliminated the two separate terms of copyright when it passed the 1976 Act. But Congress liked some of the features of the two-term system, particularly the “second bite of the apple” enjoyed by some copyright owners or their heirs. Indeed, Congress liked it so much that they passed the termination provisions, and made sure that they were available not only to heirs but also to copyright owners who were lucky enough to live thirty-five years after conveying rights in their works.
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[218] Justification for termination provisions. |
[219] Other termination rights. |
The upshot of all this is that most purchasers of rights in copyrighted works are only sure to get the exclusive right for the first thirty-five years. Thereafter, the rights are terminable by the copyright owner. Does this dampen the prices that purchasers are willing to pay for copyrighted works? Not by much. As Mark Twain observed, only a “bathtub-full of works”* are of any real value decades after they are created. The vast majority of copyrights will not be terminated precisely because they’re not of much value anyway.
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[218] A Moon for the Misbegotten. The complicated renewal
rules that protected heirs did not always work out the way authors might have
wanted. For example, Eugene O’Neill disapproved of the marriage of his
daughter, Oona (then eighteen), to Charlie Chaplin (then fifty-four), and
subsequently (though not necessarily for that reason) disinherited her. Yet
Oona Chaplin was able to establish her rights to works that came up for renewal
after her father’s death, including A
Moon for the Misbegotten, which at the time (1973) was having a successful
Broadway revival. A similar result can be expected under the new termination
rights of the 1976 Act. |
Remember our discussion of works for hire.† What is the difference between an author’s creating a work, on the one hand, as a work for hire; and, on the other hand, as an independent contractor, and then simply conveying the copyright in the work to the “employer”? For the most part, there is no difference, since the “employer” in either case will own the copyright. But it makes a big difference thirty-five years later! If the work is a work for hire, then the “employer” is the copyright owner, and a specific exception provides that there is no termination right. But if the work is by an independent contractor, subsequently [219] conveyed to the “employer,” then the grant of copyright may be terminated thirty-five years later. Now maybe you can understand why companies try so hard to treat their copyrights as works for hire.
There are dozens of other federal and state rights that overlap copyright in one way or another. It would take another book to catalogue all of them completely; but I will at least briefly review some of the related rights that lawyers and lawmakers have come up with over the years.
We’ve already seen a brief description of patents,* which have been covered by federal statute since 1790, the same year as the first federal copyright statute. Patents generally protect new and useful inventions and improvements of inventions, including mechanical, chemical, biological, and electronic works and processes. While copyright is granted almost as a matter of course if an author has created the work without copying it from someone else, a patent applicant has the high burden of convincing a patent examiner that the invention is new, useful, and nonobvious. The patent is much more powerful while it lasts, because it protects against even the independent creation of similar works and processes. On the other hand, while a copyright is generally good for the life of the author plus 70 years, a patent is only good for twenty years from the date of the patent application.
A special category of patent is the design patent,† which is good for fourteen years from the date it is granted. It protects the design of functional works, but has to meet the high standard of novelty and nonobviousness.
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[219] Trademark notice. |
What are trademarks? They are names, phrases, designs, or marks that identify the source of products. Once a manufacturer has registered a trademark, or begun using it in commerce, then other manufacturers are not allowed to use the mark in such a way as to confuse the public about the source of the product. For example, once the Coca-Cola Company registered the names “Coca-Cola” and “Coke” as trademarks for their brand of beverage, no one else could sell similar products using those names.
The federal
trademark law effectively dates only from 1946. The primary function of the
federal law [221] is to provide a federal
registry for trademarks, and a federal forum for enforcing trademarks.
Otherwise, the federal law works as a supplement to state law, which still
governs many of the substantive rights of trademarks.
While copyrights require originality, trademarks need not be original, but can be words or symbols adopted by a company to identify its products. Thus, Microsoft Corporation did not create the word or concept of “Windows,” but once they adopted the word and used it to describe their particular operating system, and the public came to associate the word with Microsoft’s product, then others could not use the term to describe their products in a way that would make customers think that they came from Microsoft.
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[220] A Night in Casablanca. In 1942, Warner Brothers produced Casablanca, starring Humphrey Bogart and Ingrid Bergman. Several years later, their lawyers notified the Marx Brothers that they objected to the name of their upcoming film, A Night in Casablanca. Here are some excerpts from Groucho Marx’s famous response: Apparently there is
more than one way of conquering a city and holding it as your own. For example,
up to the time that we contemplated making this picture, I had no idea that the
city of Casablanca belonged exclusively to Warner Brothers. However, it was
only a few days after our announcement appeared that we received your long,
ominous legal document warning us not to use the name Casablanca. . . . There were further exchanges, as
described by Andrew Carroll:
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There are many special rules for determining the scope of trademarks. Trademarks are generally not granted for words that merely describe a product. Nabisco, Inc., was not able to get a trademark in the term “Shredded Wheat,” because that phrase simply described wheat that was shredded, and it was thought that (once the patent on the process expired) other manufacturers of similar products should be able to describe their wheat as shredded. A related doctrine is that if a word, once distinctive, comes to be used as a generic word to describe a whole category of products, then a trademark owner may lose the trademark. Some famous trademarks that have been lost through “genericide” are aspirin, trampoline, cellophane, and thermos. That’s why companies that own trademarks in danger of turning generic will go to great lengths to remind the public that, for example, “Sanka” is a trademark of a particular brand of decaffeinated coffee, and “Xerox” is a trademark of a particular brand of photocopying and document processing equipment.
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[221] Don’t ask Pat Riley! Words and short phrases
are generally not copyrightable. But a few years ago, whenever I would explain
this aspect of copyright, students would argue with me that they knew this
wasn’t true. They had read that Pat Riley had copyrighted the word “three-peat”
to describe the act of getting a national basketball championship for a third
consecutive year, and that he was suing to prevent anyone else from using the
word. For several weeks, I simply said that that was wrong. But
then I did some research on sports columns across the country, and discovered
many references to Pat Riley’s allegedly copyrighting the word “three-peat.”
Knowing that the word couldn’t be copyrighted, and following a hunch, I looked
up the trademark registrations, and discovered what was going on. Riley had
registered the word as a trademark, to be used in conjunction with the sale of
sports-related products, such as T-shirts and jerseys. Under trademark law,
Riley is allowed to control the use of the word to identify the source of such
specific products, but he is certainly not allowed to prevent other people from
using the word generally, even if he did “invent” it. |
[222] The Cadillac of
trademarks. Under traditional trademark law, marks were protected only if they were used on competitive products. For example, Cadillac dog food did not infringe on Cadillac automobiles, because the products were sufficiently dissimilar that customers would not be likely to confuse one company as the source of the other’s product. However, this strict approach has been changing in recent years. Many states adopted “anti-dilution” laws to protect against the erosion of so-called strong marks. In 1995, the federal statute was amended to provide for the first time that strong marks would be entitled to federal protection against such dilution. Although decided before that amendment, exemplary of the expanding trend is a suit by McDonald’s Corp., in which they were able to block Quality Inns’ development of a line of hotels under the name “McSleep.” McDonald’s was able to demonstrate that the “Mc” prefix—hardly their novel creation—had become so associated with products of their company that consumers believed that McSleep must have some association with McDonald’s, even though McDonald’s was not in the hotel business. The court granted a permanent injunction against the use of the “Mc” prefix by Quality Inns. |
Patents,
copyrights, and trademarks are the three federal forms of protection frequently
lumped together under the rubric “intellectual property.” They are each
distinct, and governed by their own statute, [222] though
it is sometimes useful to think of intellectual property rights generally in
the context of licensing such rights from one company or person to another.
Antitrust is the law against monopolies. Primarily covered by federal statute, it prohibits a range of predatory business activities, providing remedies for the government and for individuals and companies that have been injured. Since a copyright (or patent or trademark) is, in a sense, a legal monopoly, it’s not unusual that copyright and antitrust issues are raised in the same cases. If a monopoly results from a valid copyright, then the copyright may be a defense to an antitrust claim; conversely, a defense to a copyright claim may include the allegation that the copyright owner has exceeded the boundaries of copyright, and has illegally used the copyright to gain a foothold in other markets. For example, a major issue in the Microsoft antitrust case is whether its monopoly position is the natural consequence of its valid patents, copyrights, and trademarks, or results from predatory business behavior that goes beyond the scope of its intellectual property. Since antitrust law is extremely complicated, I won’t attempt a fuller explanation here.
The rest of the legal areas we’ll look at are state laws, and therefore may vary considerably from state to state.
States may have a very narrow range of law generally described under the term common law copyright. At one time, this included all unpublished works. Since 1978, however, even unpublished works are picked up under the federal statute, so long as they are “fixed”*—written or recorded. [223] Since 1994, live musical performances are also covered by the federal Act.* What this leaves for the states are live conversations and other live nonmusical performances. There are only a handful of relevant cases.
*Live performances, see p. 170.
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[223] Women and cafes. |
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There’s a broad range of state law described generally under the term unfair competition. The essence of unfair competition is fraud, misleading the public; but it frequently includes unfair injury to competitors. It generally involves what is known as “passing off” a [224] company’s products as those of another, but it applies in such a variety of settings that it is difficult to summarize easily. Historically, trademark is an offshoot of unfair competition, in which the fraud is based upon the taking of specific words or symbols. But under unfair competition, the fraud may be found in the imitation of design or appearance or trade dress that falls short of trademark status, in the use of a title that is not otherwise subject to copyright protection or registered as a trademark, or in the making of other false claims.
The federal
trademark law, the Lanham Act, also contains a general provision on unfair
competition. When first passed in 1946, that section was rarely used; but in
recent years, the courts have expanded the section greatly, so that some of the
law of unfair competition is now being brought within the scope of the federal
statute. Many critics believe that the trend has gone too far; the exact
parameters of unfair competition are still being worked out by the courts.
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[224] The Lanham Act. Section 43(a) of the Lanham Act provides that Any person [which includes a corporation] who . . . uses in commerce any word, term, name, symbol, or device or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which— (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. |
[225] Monty Python’s
Flying Circus. Here’s an example of how lawyers were able to use the Lanham Act in a new setting. In the 1970s, Monty Python had a contract to produce its comedy series, Monty Python’s Flying Circus, for BBC television. The contract was carefully written to assure that the work, once written and accepted by BBC, would not be altered. BBC licensed Time-Life, which licensed ABC to show six programs on American television. The problem was that ABC made substantial cuts from the original; in twice showing three 30-minute episodes, they cut approximately 24 of 90 minutes for insertion of commercials. ABC claimed that some of the cuts were necessary to adapt the programs for American sensibilities. The problem was that the cuts undermined the continuity of the programs. The federal courts found that the omissions were a violation of the contract between Monty Python and BBC, which could not license Time-Life or ABC to do anything that it was not allowed to do under the contract. In addition, the court said, the presentation of the Monty Python program in an altered state constituted a violation of the Lanham Act. The reasoning was that the final programs were attributed to Monty Python, but that the alterations made the products no longer the work of Monty Python. The alteration essentially resulted in a false description of the work. |
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[223] Coca-Cola’s secret
formula. |
Trade secret law may be thought of as the state analog to federal patent law, with one important distinction: state trade secret law depends on keeping the information secret, while federal patent law requires its disclosure.
Trade secret law allows entities who have business or technological secrets to make contracts with their employees and business relations to protect those secrets. The law does not protect against the “reverse engineering” of the product, however, to figure out how it’s made and to duplicate it if it’s not protected by patent. Companies must strategically decide whether it’s better to go the trade secret route, or obtain a patent. The decision may depend upon whether the nature of the technology, in normal use, would be revealed to others.
Obviously, one of the purposes of patent law is to encourage the disclosure of technology to the public, by allowing companies to exploit their technologies without having to keep them secret. Under the copyright [225] law prior to 1978, it might also have been said that one of the purposes of copyright law was to encourage disclosure, since federal copyright was generally only granted upon publication of a work. However, since 1978 the federal law protects unpublished as well as published works, so that disclosure to the public is no longer a prerequisite for federal copyright protection.
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[226] Coming to America. |
Contract is the general body of law, mainly state law, that allows companies and individuals to make mutually binding agreements that they can enforce in a court of law. Parties set up contracts to govern all sorts of business practices, including those dealing with the transfer of intellectual property. If I write a book, my rights are initially governed by copyright; but I can make a contract with a publisher, and set up in the agreement the terms by which they will be allowed to publish my work and I will get paid for it. Contracts are essentially a way of making “private law” between parties who are willing to work together or pay to obtain the right to use otherwise protected information.
Most contracts are explicit, but there are also rules that recognize contracts as “implied in fact” or “implied in law.” For example, many story “ideas”* are not protectable under copyright because they are too general to constitute copyrightable expression. Nevertheless, if you’re a successful screenwriter, Hollywood might still pay you handsomely to develop a general movie concept or television pilot. The rights of the parties are then determined not by copyright law, but by contract law. If you don’t have an established track record, however, most movie or television producers won’t even listen to your suggested plots for Saturday Night Live or Star Trek, unless you sign a waiver making clear that you are giving them the concept for free, and without the expectation of payment. Most studios hire their own writers, and don’t want to [226] accept any suggestions under circumstances that might imply that they’re under a duty to pay for them.
*Ideas vs. expression, see p. 188.
The common law recognizes the right of individuals to prevent others from injuring their reputation by telling lies about them. These rights are recognized by the law of defamation. In a fascinating expansion of these principles in the early twentieth century, the courts of many states came to recognize the right of individuals to protect their privacy against unwarranted public disclosure.
In the last few decades, the law has again been expanded in many states to recognize a related right of “publicity.” The doctrine was literally catapulted onto the scene when the Supreme Court in 1977 recognized the right of Hugo Zacchini, the “human cannonball,” to prevent a local television station from televising his act without his consent. Shortly thereafter, a large number of states adopted such a right, either by legislation or by action of the courts.
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[226] Publicity rights. |
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[227] “Do You Want
to Dance?” In 1985, Ford Motor Co. ran a series of television commercials identified as “The Yuppie Campaign.” The nineteen commercials used songs from the 1960s to remind “yuppies” of their college days. For some of the songs, Young & Rubicam, the advertising agency, got the original performers to sing; for others, the agency hired “sound-alikes” who would sing the songs in the style of the original performers. When the agency asked Bette Midler (left) to sing her version of “Do You Want to Dance?” she declined. Instead, the agency hired Ula Hedwig (third from left) to imitate Bette Midler’s voice. Hedwig, one of the “Harlettes” who worked with Midler in several of her stage productions, was instructed to “sound as much as possible like the Bette Midler record.” Young & Rubicam apparently believed that they could use sound-alikes, since there were some cases at the time suggesting that performers had no rights in the songs or other materials they performed. Nancy Sinatra, for example, had lost in a lawsuit against Goodyear Tire and Rubber Company for a commercial imitating her voice singing “These Boots Are Made For Walkin’,” and Shirley Booth had lost in a lawsuit to protect against someone imitating her voice as the television character Hazel. By the time Midler brought her suit, however, the courts were more sympathetic to such claims. The court held that “when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs.” Bette Midler won the suit under state law. |
A paramount issue for all of the above as well as other state theories of protection is the extent to which the states may legislate in this area at all. To understand the problem, we have to go back to 1964. In that year, two cases worked their way up from the Illinois state courts to the Supreme Court of the United States. They both involved lighting fixtures—in one case, Stiffel Company’s design of a “pole lamp” popular in the 1950s and 1960s, and in the other case Day-Brite Lighting Company’s design of a “cross-ribbed reflector” for a fluorescent fixture. The Illinois courts had held that these lamp designs were not protected under either the federal patent or copyright laws, but they nevertheless extended a more limited form of state protection to these works. However, the Supreme Court held that the states could not do this, because the subject matter of patent or copyrightlike protection was “preempted” by Congress’s power to protect—or choose not to protect—such works. The Illinois law was struck down; Sears, Roebuck & Co. was allowed to make a knock-off of the Stiffel lamp, and Compco Corp. a knock-off of the Day-Brite lamp.
It’s still debatable to what extent the federal laws supersede state laws in this area. In a major retreat from the so-called Sears-Compco doctrine, [229] the Supreme Court in 1973 held that states could pass statutes that created rights in sound recordings prior to the 1971 federal protection of sound recordings. The Court held that states were free to enter the field of protection where Congress “had not acted” (or, in this case, prior to the time Congress acted to protect sound recordings).
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[228] Have Claim, Will
Sue. During the period when the Sears-Compco preemption doctrine was interpreted most broadly, several plaintiffs lost out on what might otherwise have been meritorious actions under state law. Perhaps the plaintiff most whipsawed by the changing law was Victor DeCosta (top, right), a mechanic from Cranston, Rhode Island. DeCosta invented the character Paladin, fitted with black cowboy suit, mustache, derringer, and a card with a chess symbol proclaiming “Have Gun Will Travel, Wire Paladin, N. Court St., Cranston, R.I.” CBS took the character for its television series Paladin (starring Richard Boone, bottom, right). Over a period of twenty years, DeCosta won three lawsuits for substantial sums against CBS, only to see the verdicts overturned each time on appeal to the federal circuit court. The first time, in 1967, the court held that his state-based claim was preempted by federal law under the Sears-Compco doctrine. The second time, in 1975, the court held that he didn’t qualify under the state theories of trademark or unfair competition, because his appearances at local functions were not for profit, and the viewing public was not ultimately confused by CBS’s taking of the Paladin character. Although the court conceded that in the earlier case they “were, in our interpretation of the preemptive reach of the Copyright Clause, overinclusive,” they refused to overrule that part of the case on the ground that it had already been decided, and was thus binding on the parties. The same reasoning led the court in 1992 to reverse the third verdict in DeCosta’s favor. DeCosta, who died a few years ago, was buried in his Paladin suit. |
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The 1976 statute purported to make the matter clearer, but may only have succeeded in making it more complicated. Under the Copyright Act, states are not preempted from passing statutes that protect “subject matter that does not come within the subject matter of copyright” or “activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright.” Needless to say, given these abstract concepts, the proper adjustment between federal and state theories of protection can be complicated in particular cases.
Even in the miscellaneous copyright principles reviewed in this chapter, the major theme of copyright in the twentieth century is evident: copyright is an expanding doctrine. It has been expanded in terms of duration. It has been expanded by eliminating the formalities that sometimes resulted in the loss of copyright. The rights of original authors have been expanded by the creation of termination rights in their favor, and by rules of conveyance that limit the work-for-hire doctrine that might otherwise deprive them of rights. And the peripheral principles surrounding copyright, for better or for worse, have been expanded by courts’ willingness to explore new rights, and by a preemption doctrine that has at least in recent years allowed such a development of state laws.
Go to Chapter 10: International Copyright Relations
Permission, Limitations, and Format
