by Bernard W. Gerdelman*

The purpose of this article is to answer, in general context, some of the copyright questions I’m most frequently asked by computer consultants and Web page designers and to dispel some copyright myths that have spread through the computer community.

The owner of the copyright in a work has the exclusive right to do, and authorize others to do the following: make copies, distribute copies, make derivative works, display and perform the work. By a "license" a copyright owner may transfer any one or more of these rights for any one or more purposes. For example, the owner of a copyright in a computer program may grant a reseller a license to make copies of the program and "sublicense" (distribute) them in exchange for royalty payments to the copyright owner. But the license may specifically exclude from its grant, and reserve to the copyright owner, the right to alter or augment the program (in other words, "make a derivative work"). It should be evident from this that the ownership of the tangible medium containing the work, such as a computer diskette or compact disc, does not constitute ownership of the underlying copyright in the work itself. One who purchases a photograph or print at an exhibition, for example, does not usually obtain the right to make copies of that work and distribute them. This right is reserved to the artist.

Recent federal legislation lengthened the duration of copyright protection. The term of a copyright in a work created on or after January 1, 1978 is the life of the author plus seventy (formerly 50) years. The term of a copyright for a "work made for hire" (see below) after January 1, 1978 is ninety-five (formerly 75) years.

With only one exception it is the author or creator of the work that owns the initial copyright. That one exception is a "work made for hire." There are two classes of works made for hire. One is a very specific group of works, narrowly defined by statute as "works specifically ordered or commissioned for use as a contribution to a collective work, as a compilation," and certain other works that are not germane to this discussion. The other class is works "made by an employee within the scope of his/her employment." "Employee" for this purpose is defined in the classic sense as one who is under the control of the employer and receives a W-2, as opposed to a 1099, at the end of the year. If a work is "made for hire," then it is the commissioning party or the employer that owns the copyright.

Because computer consultants usually act as independent contractors, works they create will rarely be works made for hire. Hence, unless the consultant conveys to the engaging party by written license or assignment the exclusive rights granted by copyright, the engaging party will receive an implied license to use the work and the consultant will retain the copyright. It is frequently the case, however, that parties who engage computer consultants require such a license or assignment. In such a situation the consultant should realize that he/she is surrendering the underlying copyright and charge accordingly, particularly if the work to be created is highly marketable.

Two of the most misunderstood areas of copyright are the focus of copyright protection and the prerequisites to copyright ownership. Many people have started conversations with me by stating "I have an idea I want to copyright." This statement evinces two basic misunderstandings: first, that copyright protects ideas; and second, that the existence of a copyright requires the author to take some action other than creation of the work, such as registration with the federal government.

Copyright does not afford protection for ideas. An "idea," if protectable at all, is protectable by patent. Copyright protects only the expression of an idea, if that expression has the "spark of creativity" required for copyright protection. Also, copyright does not protect short phrases, titles, names or slogans (this is the province of trademarks). Nor does copyright protect strictly factual information, although it may protect the way in which such information is arranged or organized, if sufficiently creative. In this context it should be noted that only those parts of a computer program manifesting sufficient creativity will be protectable by copyright. In several recent decisions courts have found unprotectable those program segments or subroutines that reflect one of only a few standard ways of accomplishing a result.

The second misunderstanding, that registration is a prerequisite to the existence of a copyright, mistakes the role of the United States Copyright Office in the copyright process. A copyright in a work exists from the moment it is manifested in a fixed medium. If you lay a brush to canvas, as soon as the painting exhibits the necessary "spark of creativity" the copyright comes into existence. Registration of copyright with the United States Copyright Office is not a prerequisite to ownership. What purpose, then, does registration of a copyright serve? Existing federal law still offers substantial inducements for registration: First, a copyright must be registered before an owner can file suit for infringement under the United States Copyright Act. A copyright owner may register a copyright after an infringement has occurred, and sue the infringer once registration is completed. However, the owner's remedies will be limited.

Second, a copyright that is registered within three months after first publication or before an infringement occurs is entitled to recovery statutory damages and attorneys' fees. This is particularly important since the costs of litigating a copyright claim in some instances may exceed the value of the copyright itself, and it may be very difficult and expensive to prove economic loss resulting from the infringement. If the copyright is registered after the infringement occurs, the owner's remedy as to that infringement will be limited to an injunction preventing further infringing conduct. Third, the owner of a registered copyright is entitled to certain favorable evidentiary presumptions (e.g., the facts stated in the copyright certificate are assumed to be true) in any action brought to enforce the copyright.

Consequently, while a copyright exists whether or not registration has occurred, good practice dictates registration as soon as possible after the work is created, and in no event later than three months after it is published. Generally, registration is a relatively inexpensive process requiring the completion and filing by mail of one of four or five basic forms (usually a form TX to register computer software) together with a non-returnable copy of the work (special depository requirements apply to computer program code) and a nonrefundable deposit (presently $20.00 per filing). In many instances, completing the form will be straightforward. However, under some circumstances it can become complicated: for example, the registration of a copyright in the recording of a performance by one person of works written by a second (music) and a third (lyrics) person and arranged by yet another person. As you might expect, registrations for multimedia presentations can be a nightmare of complexity. It is always important to file correctly because even an inadvertent error on the application can cause a registration to be void ab initio even if the error it not detected until much later. Therefore, if the registration is not simple, get professional help.

Registration of copyright in a Web page would typically require, at a minimum, the completion and filing of a Form TX for published nondramatic literary works, both fiction and nonfiction. It may also require the filing of a Form VA for published works of the visual arts (graphics and charts, for example) if the art for the Web page is original and not clip art in the public domain. Finally, if the page also incorporates original audio, the author would also need to file Form SR for published and unpublished sound recordings. This filing applies not only to musical recordings but also sound effects.

Another mistaken belief regarding the copyright is that a copyright notice is required in order to maintain protection under the Copyright Act. This is a vestigial requirement of a former version of the Act that was deleted by the 1989 amendment. No notice is required for any work created on or after March 1, 1989. However, like registration, affixing a copyright notice to a work, while not a prerequisite to a valid copyright, is good practice. The notice serves at least two functions. First, it prevents any infringer from asserting an "innocent infringement" defense. That is, an infringing party cannot legitimately claim that he or she did not realize that the work was protected by copyright (thereby possibly avoiding the payment of damages) if a copyright notice appears on the work. Second, the notice has a deterrent effect by informing the world that the author of a particular work is claiming copyright protection and will take action if there is an infringement. Both of these functions are particularly appropriate for works published on the Internet where wholesale copying is common.

The notice need only contain three elements: (1) the symbol, the word "copyright" or the abbreviation "copr."; (2) the year of the first publication (not creation) of the work; and (3) the name of the copyright owner. For example, the copyright notice for this work would read:

©1999 Bernard W. Gerdelman

In the case of computer software, it is advisable to embed this notice in the source code and to cause the notice to appear as part of the screen display at boot up. For Web pages the notice should be displayed on the home page and each other web page in which the owner is claiming a copyright in design or text or both. Of course, where the authors of the design and the text are different, it is appropriate to include one copyright notice for the text author in the text frame and a separate copyright notice at the bottom of the page for the designer.

* Mr. Gerdelman is an attorney with the law firm Paule Camazine & Blumenthal, P.C. in Clayton, Missouri. If you have questions regarding this article you can reach him by e-mail at attorney@i1.net.