Copyright Law/Copyright Formalities

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Copyright Law Treatise
Table of Contents
Copyright Law Outline
History and Background
The Copyright Statutes
Copyright as an Element of Intellectual Property Law
Copyright Office and Judicial Review
The Subject Matter of Copyright
General Principles
The Distinction Between Idea and Expression
Compilations and Derivative Works
Pictorial, Graphic, and Sculptural Works
Pictorial and Literary Characters
Government Works
Duration and Renewal
The Renewal Format
Duration of Copyright Under the 1976 Act
Ownership of Copyright
Initial Ownership of Copyright
Transfer of Copyright Ownership
Termination of Transfers
Copyright Formalities
Formalities Under the 1909 Copyright Act
Copyright Notice Under the 1976 Act
Deposit and Registration
Exclusive Rights of the Copyright Owner
The Right of Reproduction
Reproduction of Music and Sound Recordings
The Right to Prepare Derivative Works
The Right of Public Distribution
The Right of Public Performance
The Right of Public Display
Visual Artists’ Rights
Secondary Liability: Contributory and Vicarious Infringement
Fair Use and Other Exemptions from the Exclusive Rights of the Copyright Owner
Fair Use
Exemptions and Compulsory Licenses
Enforcement of Copyright
Jurisdictional and Procedural Issues
Remedies
Technological Protection Measures
State Law and Its Preemption
State Anti-Copying Laws
Federal Preemption
Glossary

In the slightly more than a decade between 1977 and 1989, no feature of U.S. copyright law was more dramatically changed than the law relating to the so-called formalities of copyright—notice, registration and deposit. Most notably, Congress, effective March 1, 1989, eliminated the requirement that the copyright owner give public notice of his or her claim of copyright, a requirement that had been a central feature of our law since 1790.

Formalities Under the 1909 Copyright Act[edit | edit source]

Because the drafters of the 1976 Copyright Act did not intend to restore to copyright works that had previously fallen into the public domain,[1] it is imperative to understand the somewhat Byzantine rules that had developed under the 1909 Act for purposes of determining when a work had been “published” so as to precipitate the requirement to place proper notice on copies of the work. Litigation taking place even in the twenty-first century will no doubt continue to bring before the federal courts claims that the plaintiff’s copyright on a work created prior to January 1, 1978, was lost by failure to comply with the notice requirements of the 1909 Act.

Under the 1909 Act, a work that was kept unpublished could be protected by state law against unauthorized copying, performance or other exploitation. State common-law copyright afforded to the author (or the author’s assignee) the right to publish a work for the first time. Once the work was published, state copyright protection was ousted, by virtue both of state law and of the federal statute. If such publication was accompanied by compliance with the federal statutory formalities—in particular the placement of proper notice on all copies distributed to the public—federal copyright protection was afforded. Section 10 of the 1909 Act provided that

Any person entitled thereto by this title may secure copyright for his work by publication thereof with the notice of copyright required by this title; and such notice shall be affixed to each copy thereof published or offered for sale in the United States by authority of the copyright proprietor.

Once federal copyright attached, it would last for 28 years from the date of publication, subject to renewal for another 28 years.

If, however, the owner of common-law copyright published the work but failed to place a proper copyright notice on the distributed copies, this was generally regarded as fatal to the copyright. If the wrong name was placed in the notice (i.e., the name of someone other than the “proprietor” of copyright), or if the year of publication was materially inaccurate, or if either of those elements was omitted or the notice was omitted altogether, the work would be thrust irretrievably into the public domain. Moreover, if the notice—even though accurate in form and conspicuous—was placed on the work in a location other than that dictated by the statute, it could be expected that a court would hold that this too was a fatal error and that the work had fallen into the public domain.[2]

“Publication”[edit | edit source]

Determining when a work was “published” was thus crucial under the 1909 Act, for it served to determine three important features of copyright protection: the demarcation between state and federal protection, the loss of all protection for failure to comply with federal formalities, and the beginning point from which the 28- or 56-year term of federal copyright was measured.

As was the case with almost all such crucial language, the 1909 Act did not define “publication.” It was therefore left to the courts to define, and the courts—sometimes federal and sometimes state— generated a number of important interpretive rules. Perhaps most important was the rule that only a “general publication” would divest a work of copyright protection, while a “limited publication” would

not.[3] The courts found a limited publication when a work was disseminated only to a limited group of persons for a limited purpose. A striking application of the doctrine was that of the Court of Appeals for the Ninth Circuit in Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc.[4] In that 1991 decision, the court addressed the question whether the distribution of 159 Oscar statuettes by the Academy between 1929 and 1941—without notices of copyright— constituted a divestive general publication that thrust the familiar sculptural figure into the public domain. The court found that the Oscar was awarded only to a select group of persons, that the purpose was limited (to advance the art of motion-picture making), and that no recipient had the right of sale or further distribution. And in 1999, in Estate of Martin Luther King, Jr., Inc. v. CBS, Inc.,[5] the Court of Appeals for the Eleventh Circuit, confronted with the question whether Reverend King lost the copyright on his epochal “I Have a Dream” speech, concluded that even Dr. King’s distribution of copies (without a copyright notice) to the news media was merely a “limited publication” because that was for the purpose of enabling the reporting of a newsworthy event and not a distribution directly to the general public. These cases clearly demonstrate that the limited-publication doctrine is, as the court stated in Academy of Motion Picture Arts & Sciences, “an attempt by courts to mitigate the harsh forfeiture effects of a divesting general publication.”[6]

Other examples of limited publications that would not, in all likelihood, have required the use of a copyright notice (there were no squarely authoritative judicial decisions) are the distribution of a manuscript to several magazine or book publishers for the purpose of soliciting expressions of interest, and the distribution of the professor’s own teaching materials to students in a university course.

Another important aspect of the definition of “publication” that evolved under the 1909 Act was the prevailing view that the performance of a work, no matter how many times to no matter how large an audience, would not constitute a publication that would divest the author of common-law copyright protection.[7] The performance of a play, for example, every night to a packed house in a large theater would not be regarded as a divestive publication. The rule was also applied in the King case so as to preserve common-law copyright in the speech given by Dr. King to the 200,000 people in attendance and over radio and television broadcasts.[8]

It therefore came to be understood that, in order for a work to be “published” for copyright purposes, tangible copies had to be distributed, essentially indiscriminately, to any interested member of the public. If a work was thus distributed, the copies had to bear a proper notice, or else the work would fall into the public domain. It was therefore generally understood that the exhibition of a painting or sculpture was not a divestive general publication, at least if the artist or gallery did not permit members of the public to photograph or make copies of the work.[9] It was also held that the public distribution of phonograph records of a song did not constitute a divestive general publication, because the records were not eye-readable copies.[10] This focus on eye-readability characterized the judicial interpretation of the 1909 Act in several important respects, though it has been essentially abandoned under the present Copyright Act. A few cases also raised the question whether the public exhibition of a motion picture or television film was to be regarded as a divestive general publication, and it was usually held that such exhibition (like a performance) was not.[11]

It has been a widespread misconception that copyright attaches to a work only when registration of the copyright is secured with the Copyright Office. Registration was not, under the 1909 Act (and is not today), a prerequisite of a valid copyright. All that was necessary to secure copyright in a published work under the 1909 Act was that a proper notice be placed on all publicly distributed copies. At that point, federal protection attached and the copyright owner could validly enter into transactions involving the copyright, such as assignments and licenses. Registration was, however, a prerequisite for the commencement of an action for copyright infringement,[12] and registration for an initial copyright term was a prerequisite for a valid renewal application.

Copyright Notice Under the 1976 Act[edit | edit source]

Upon the effective date of the 1976 Copyright Act, January 1, 1978, the drastic consequences of failing to place a copyright notice on published works were initially ameliorated and ultimately eliminated altogether. From January 1978 through February 1989, notice was still required, but neither mistakes in nor complete omission of notice thrust the work into the public domain, and reasonable steps could be taken by the copyright owner to preserve the copyright. Since March 1, 1989, when the Copyright Act was further amended in order to permit United States adherence to the Berne Convention, the notice requirement has been eliminated completely for works published on or after that date. Under the 1976 Act, federal copyright attaches to a work immediately upon its “creation,” i.e., its manifestation in a tangible medium of expression; common-law copyright is preempted and “publication” no longer serves as the dividing line between state and federal protection. Nonetheless, the federal protection that attaches once a work was fixed could—under the 1976 Act as originally enacted—be forfeited if proper copyright notice was omitted when the work was later “published.” Both the act of “publication” and the requirement of notice thus continued to be significant under the 1976 Act.

“Publication”[edit | edit source]

Unlike the 1909 Copyright Act, the 1976 Act defines “publication”:

“Publication” is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

“Publication” still requires an authorized distribution to the public, but the work may be distributed either in the form of “copies” that appeal to the eye or of “phonorecords” that appeal to the ear. Moreover, as was the case under the 1909 Act, neither public performance nor public display in itself constitutes the kind of publication that requires the use of a copyright notice. The statute also defines a “public” display or performance, a definition that can provide some guidance in determining whether a “distribution” of copies or phonorecords is “to the public”; this would contemplate a distribution to members of the public generally or to a substantial number of persons “outside of a normal circle of a family and its social acquaintances.” The distribution of a manuscript to a number of magazines for the purpose of generating an offer to print would most likely not be a publication, but the status of a distribution of teaching materials to a large class is somewhat unclear.

The notice requirement[edit | edit source]

In any event, given an authorized distribution of a work to the public in the form of copies, section 401 of the 1976 Act as originally enacted required that copyright notice be placed on each copy in order to preserve the copyright. Section 401(a) provided:

Whenever a work protected under this title is published in the United States or elsewhere by authority of the copyright owner, a notice of copyright as provided by this section shall be placed on all publicly distributed copies from which the work can be visually perceived, either directly or with the aid of a machine or device.

Section 401(b) prescribes the form of notice; it is the familiar or the word “Copyright” (or “Copr.”) plus the year of first publication and the name of the copyright owner. Section 401(c) announces a far more flexible set of rules than under the 1909 Act for the placement of the notice: it “shall be affixed to the copies in such manner and location as to give reasonable notice of the claim of copyright.”

Section 402 announces comparable rules for what is known as a “P notice” (), which is to be affixed to phonorecords that are distributed to the public, as a way of signaling that there is a claim of copyright in the sound recording as distinguished from the musical or literary work that is performed on the recording.

Before discussing the potential adverse effects of failure to comply with the notice provisions of sections 401 and 402, it is essential to point out that the mandated notice applies only to copies and phonorecords distributed to the public between January 1, 1978, and February 28, 1989. On March 1, 1989, the Berne Convention Implementation Act of 1988 went into effect. In order to make our law compatible with the Berne Convention, which forbids making compliance with formalities a condition of enjoying copyright protection, Congress for the first time eliminated the mandatory notice provisions of our law.[13] This was accomplished by replacing the phrase “shall be placed” in sections 401 and 402 with the phrase “may be placed.” The amended statute gives the copyright owner only one explicit incentive to place a copyright notice on copies and phonorecords distributed after March 1, 1989: a defendant copying such a work will be unable to claim that it is an “innocent infringer” entitled thereby to reduced liability for damages.

Effect of noncompliance for 1978–1989 publications[edit | edit source]

An omission of copyright notice on works distributed prior to January 1, 1978, is generally fatal to the copyright, whereas an omission on or after March 1, 1989, is of very limited significance. Only for copies distributed in the intervening 11 years are the mandatory-notice provisions of the 1976 Act important.

The consequences of noncompliance with those provisions are set forth in sections 405 and 406. Under section 405, a complete omission of notice from copies or phonorecords distributed by authority of the copyright owner does not invalidate the copyright if “the notice has been omitted from no more than a relatively small number” of such copies or phonorecords, or if the notice was omitted in violation of an express written agreement by which the copyright owner made the use of the notice a condition of the authority to distribute. Most significantly, section 405(a)(2) permits a copyright owner to “cure” the omission of notice from more than a “relatively small” number of copies or phonorecords, provided two steps are taken: (1) registration for the work is made prior to, or within five years after, publication without notice; and (2) “a reasonable effort is made to add notice to all copies or phonorecords that are distributed to the public in the United States after the omission has been discovered.” If, after the distribution without notice, registration is not secured within five years or reasonable efforts are not made to add notice to later-distributed copies or phonorecords, the copyright is invalidated and the work falls into the public domain.

For instances in which the copyright owner’s omission of notice was not fatal, Congress saw a need (during the period January 1, 1978, to February 28, 1989) to protect a person innocently relying on that omission of notice in copying or otherwise exploiting the work in question. Under section 405(b), such an innocent infringer is sheltered against an award of damages resulting from infringing acts committed before receiving actual notice that the copyright has been timely registered; however, even such an innocent infringer may be required to disgorge all or part of its profits and is subject to an injunction for the future.

On occasion, a copyright owner will attempt to comply with the notice provisions of the 1976 Act but will make an error or omission with regard to one component. Section 406 deals with the implications of such an error or omission in the name or date alone. The general framework is to protect a person who acts innocently in reliance upon the mistaken name; to use an erroneously early date as the measuring rod for copyright where the publication date is pertinent; and to treat an erroneously late date (by more than one year) as equivalent to a total omission of copyright notice—which will be fatal to the copyright unless cured within five years, a rather harsh sanction for an error that is typically of negligible significance in the administration of the copyright system.

Such oversights—by way of errors in the notice, or its total omission—manifested on copies and phonorecords distributed on or after March 1, 1989, will not result in any loss of copyright and will not give rise to any “innocent infringer” defenses (apart from possibly reducing the defendant’s exposure to damages in a very limited number of circumstances). The elimination of the notice requirement thus imposes a responsibility on putative copyists to investigate in the Copyright Office—or to inquire of author or publisher—to determine the status of recently published works that lack copyright notice. Despite this highly significant, and favorable, change in the law concerning copyright formalities, publishers have continued since 1989 to use copyright notices in any event, both because of human and institutional inertia and because the notice inexpensively serves the useful function of signaling that the work is in copyright and that copyists should beware (or secure a license).

Deposit and Registration[edit | edit source]

Much less need be said about the other two elements of formalities that have been a fixture of our copyright law since the beginning of the twentieth century: deposit and registration. In the interest of maintaining a full collection in the Library of Congress, section 407 of the 1976 Copyright Act—unaffected by the 1988 Berne Implementation Act— requires the copyright owner to deposit with the Copyright Office, within three months after publication of a work, two copies or phonorecords of the “best edition” (subject to some exemptions). If no deposit is made, the Register of Copyrights may make a written demand for such deposit, and continued failure of the copyright owner to comply may result in a fine. Failure to make the required deposit will not, however, invalidate the copyright. There is, in any event, no requirement to deposit copies of unpublished works.

As distinguished from the requirement of deposit of copies of a published work, there is no requirement that the copyright owner register the copyright in the Copyright Office; registration is optional. Under section 408, a registration application may be filed with respect to either a published or unpublished work by “the owner of copyright or of any exclusive right in the work,” and is to be accompanied by the application fee (presently $30) and the deposit of copies or phonorecords of the work. A deposit made in compliance with the statutory requirement of section 407 also satisfies the deposit provision of section 408 relating to registration.

Although registration is not a condition of a valid copyright, it has been a prerequisite for the commencement of an infringement action, both under the 1909 Act and the 1976 Act as originally enacted.[14] The 1976 Act contains other incentives for the copyright owner to apply for registration:

  1. if registration is made within five years after first publication of the work, the certificate issued by the Copyright Office shall, in an infringement action, “constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate”;[15] and
  2. in an infringement action, prompt registration is a condition to an award of attorneys’ fees and, even more significantly, of statutory damages, which can be as high as $30,000 (and as high as $150,000 for willful infringement) for each work infringed even in the absence of specific proof of actual damages or profits.[16]

The Berne Convention Implementation Act (BCIA),[17] effective March 1, 1989, made a significant change in the registration provisions of the Copyright Act. Because there was serious doubt that making registration a condition of an infringement action was consistent with the Berne Convention, Congress decided to eliminate such a condition with respect to “Berne Convention works whose country of origin is not the United States,” i.e., for works initially published in some other nation that adheres to the Berne Convention. Because the Berne Convention does not require any adhering nation to abolish formalities (as a condition on the enjoyment of copyright) for works published domestically, the 1976 Act as amended by the BCIA still requires, in section 411(a), that registration be made as a condition of an infringement action relating to a work first published in the United States. Whatever the country in which a work is first published, prompt registration—even though permissive—will continue to provide significant advantages for copyright owners, particularly with respect to proof and remedies in infringement actions.

Because copyright exists from the moment a work is fixed regardless of registration with the Copyright Office, and because the registration-before-suing requirement is merely to foster somewhat greater completeness of registration files (despite the nonregistration of vast numbers of protected works), it would seem that courts might well be tolerant of minor shortfalls in plaintiff compliance. Nonetheless, recent cases show that courts have been demanding. The Court of Appeals for the Second Circuit, for example, has held that registration by the plaintiff of its 20-inch doll will not avoid dismissal of an action for the copying of its 48-inch version, which was not registered.[18] The court has also held the registration of a journal will not provide jurisdiction to sue for infringement of an article that was included therein when the copyright is owned by another person.[19] The courts are sharply divided on the question whether the registration prerequisite is satisfied “the moment that the plaintiff delivers the fee, deposit and application to the Copyright Office,” or whether the Office must in fact have acted upon the application by actually granting or denying registration.[20] Section 410(b) of the 1976 Copyright Act expressly authorizes the Register of Copyrights to refuse to register a work, provided the applicant is notified of the reasons therefor. Although no intensive scrutiny of the “prior art” is carried out in the Examining Division of the Copyright Office—in contrast to the search undertaken in connection with patent applications—the Register will on occasion refuse to issue a certificate of copyright. For example, he or she may determine that the work lacks original authorship (such as in the case of blank forms or slogans) or that it comprises solely uncopyrightable subject matter (such as useful articles having no separable decorative elements). Section 411(a) of the 1976 Act allows a person making an application for registration to institute an infringement action despite the Register’s refusal, provided that the applicant gives notice thereof to the Register, who may then intervene to challenge the validity of the copyright.

Formalities Under the 1909 Act and Under the 1976 Act Before and After Berne Convention Implementation Act[edit | edit source]

Work published before 1978 1978–Feb. 1989 After Feb. 1989
Notice Federal copyright arose upon publication with notice; if no notice, work fell into public domain. Affixation of notice perfected protection; five years to cure omissions, otherwise work fell into public domain. Optional: incentive—unavailability of innocent infringer defense.
Registration Optional until last year of first term; mandatory for renewal of works first published before 1964; prerequisite to initiation of infringement suit during both terms of copyright. Optional, but prerequisite to initiation of suit. Incentives: statutory damages and attorney’s fees not available unless work was registered before infringement commenced. Optional for non U.S. Berne and WTO works; remains prerequisite to suit for U.S. and other foreign works. Same incentives apply.
Deposit Prerequisite to suit; in addition, fines may be imposed for failure to deposit copies with Library of Congress. Same. No longer a prerequisite to suit for non-U.S. Berne works; but fines may still be imposed.
Recordation of Transfers Unrecorded transfer void against subsequent good faith purchaser for value. Same, plus a prerequisite to suit. No longer a prerequisite to suit; unrecorded transfers still void against subsequent good faith purchasers for value.

References[edit | edit source]

  1. Transitional and supplementary provisions, section 103.
  2. See Robert A. Gorman & Jane C. Ginsburg, Copyright: Cases and Materials, Chapter 5A (7th ed. 2006).
  3. Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 194 F.3d 1211 (11th Cir. 1999); Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc., 944 F.2d 1446 (9th Cir. 1991).
  4. 944 F.2d 1446 (9th Cir. 1991).
  5. 194 F.3d 1211 (11th Cir. 1999).
  6. Academy of Motion Picture Arts & Sciences, 944 F.2d at 1452 (citing American Vitagraph, Inc. v. Levy, 659 F.2d 1023, 1027 (9th Cir. 1981)).
  7. Ferris v. Frohman, 223 U.S. 424 (1912).
  8. King, 194 F.3d 1211.
  9. Letter Edged in Black Press, Inc. v. Pub. Bldg. Comm’n of Chicago, 320 F. Supp. 1303 (N.D. Ill. 1970).
  10. Rosette v. Rainbo Record Mfg. Corp., 354 F. Supp. 1183 (S.D.N.Y. 1973), aff’d per curiam, 546 F.2d 461 (2d Cir. 1976). In a striking departure, the Court of Appeals for the Ninth Circuit held in 1995 that the distribution of phonorecords did constitute a divestive publication under the 1909 Act. La Cienega Music Co. v. ZZ Top, 53 F.3d 950 (9th Cir. 1995). Congress within two years overruled that decision by adding section 303(b) to the Copyright Act: “The distribution before January 1, 1978, of a phonorecord shall not for any purpose constitute a publication of the musical work embodied therein.”
  11. See, e.g., Burke v. NBC, 598 F.2d 688 (1st Cir. 1979).
  12. See Washingtonian Publ’g Co. v. Pearson, 306 U.S. 30 (1939).
  13. See Kahle v. Ashcroft, 72 U.S.P.Q.2d 1888 (N.D. Cal. 2004) (rejecting constitutional challenge to elimination of notice requirement). But the elimination of this formality is not retroactive. The rules relating to copyright notice for the 11-year period under discussion are preserved. See 17 U.S.C. §§ 405(a) & 406(a).
  14. See Washingtonian Publ’g Co. v. Pearson, 306 U.S. 30 (1939); 17 U.S.C. § 411(a).
  15. 17 U.S.C. § 410(c).
  16. Id. §§ 412, 504(c).
  17. Pub. L. No. 100-568, 102 Stat. 2853 (1988).
  18. Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 354 F.3d 112 (2d Cir. 2003).
  19. Morris v. Business Concepts, Inc., 323 F.3d 502 (2d Cir. 2002).
  20. The authorities are discussed in Corbis Corp. v. Amazon.com, 351 F. Supp. 2d 1090, 1111 (W.D. Wash. 2004) (quoting Loree Rodkin Mgmt. Corp. v. Ross-Simons, Inc., 315 F. Supp. 2d 1053, 1054–55 (C.D. Cal. 2004)).