Category Archives: Copyright Basics

Appeals Court Affirms that Facts and “Asserted Truths” Are Not Protected by Copyright

Posted September 22, 2020
“Jersey Boys @ August Wilson Theatre on Broadway” by BroadwayTour.net is licensed under CC BY-SA 2.0

A recent decision from the Ninth Circuit Court of Appeals, Corbello v. Vali, may finally put to bed over a decade of litigation over alleged copyright infringement in the hit Broadway musical, Jersey Boys. The play depicts the history of the musical quartet, Four Seasons, which rose to prominence in the 1960s. The Ninth Circuit held that historical facts—even those which an author later claims are untrue—are not entitled to copyright protection, and cannot form the basis of a successful copyright infringement claim. The decision provides substantial clarity for authors wishing to use historical facts from other works in their own later works, and affirms that facts are not copyrightable—full stop. 

Background

The case concerned several alleged similarities between Jersey Boys and an unpublished autobiography written by Four Seasons member Tommy DeVito and a ghostwriter, Rex Woodward. The autobiography purported to be a “straightforward historical account,” and describes itself at the outset as the “complete and truthful chronicle of the Four Seasons,” narrated by DeVito. The work was completed in 1991, but Woodward died shortly thereafter, and DeVito and Donna Corbello—Woodward’s widow and the plaintiff in the case—were unable to find a publisher for the work. 

In 2005, Jersey Boys debuted on Broadway, where it ran for 12 years. The musical also toured North America and the United Kingdom several times and won four Tony awards—by all accounts a huge success. Corbello believed that the success of Jersey Boys could lead to increased interest in the band, and in 2007, sought to confirm the copyright registration for the unpublished autobiography, but discovered that the copyright for the work had been erroneously registered in DeVito’s name only. After re-registering the copyright for the autobiography in both authors’ names, Corbello learned that the play’s writers were given access to the work to use in their research.

In 2007, Corbello sued DeVito for breach of contract, various forms of copyright infringement, equitable accounting, and other causes of action. After multiple proceedings, the case proceeded to trial, where the jury found that Jersey Boys infringed the unpublished autobiography and that 10% of the play’s success was attributable to the autobiography.  However, the district court subsequently found that Jersey Boys’ use of the copyrightable portions of the autobiography was fair use—a doctrine which allows creators to use brief portions of copyrighted works without permission or payment for certain purposes, such as criticism, news reporting, or parody. Unsatisfied with this finding, Corbello appealed to the Ninth Circuit, which heard the case in June 2019.

The Decision

In a decision by Circuit Judge Marsha Berzon, the court rejected Corbello’s argument that the similarities between the Jersey Boys and the autobiography infringed Corbello’s copyright in the autobiography, overturning the jury’s finding of infringement altogether without discussing whether fair use would have applied. This was because each of the elements that the Jersey Boys creators took from the autobiography were historical events and facts, which are not protected by copyright—a basic tenet of copyright law. 

The court examined in detail each of the alleged similarities between the autobiography and the play—including certain dialogue, origins of Four Seasons songs, and the occurrence of a particularly raucous party—and concluded that the similarities were due to the use of the same historical facts in both works. In some cases, the similarity was even based on a well-known event that DeVito had recounted elsewhere, such as a staged murder in one of the band member’s cars. The court concluded that each similarity between the two works was based on historical facts as well as shared common phrases and what are known scènes-à-faire—ideas and scenes that are standard in the treatment of a certain topic, such as a shoot-out in a western film.

“Asserted Truths”

Judge Berzon rejected Corbello’s argument that because some of the facts Jersey Boys took from the autobiography were apparently fabricated by DeVito, those should be entitled to copyright protection as non-factual creative expression. In what it called the “asserted truths doctrine” (known as “copyright estoppel” in other jurisdictions), the court stated that where a text represents itself as historically accurate—and therefore factual in nature—the copyright holder cannot later claim that the work was fictionalized in order to obtain copyright protection. 

The court examined both the text of the autobiography and the manner in which it was submitted to publishers and found it was represented as fact: the work explicitly represented itself as factual, and pitch letters emphasized that the autobiography would disclose “the truth” about several events and reveal “the secret past that the performers successfully hid for almost three decades.” The fact that Corbello now claimed that some elements of the autobiography were fictionalized or inaccurate and that these same elements were present in the play did not change the court’s analysis: what matters is how the text is presented, not how it is later characterized by the copyright holder. 

Finally, the court rejected the argument that the “asserted truth doctrine” did not apply to an unpublished work, finding that regardless of whether the audience for the work is “a few actual readers” (for unpublished works) or “the general public,” the representations of truthfulness determine the factual nature of the work for purposes of copyright protection. It is thus the apparent nature of the work—in this case, a factual autobiography—and not whether it is in fact fully accurate or factual, that determines whether it is entitled to copyright protection, or unprotected as factual in nature.

Implications for Authors

This decision clarifies the bounds of unprotected facts under copyright law and simplifies the process a court must undertake to determine whether allegedly infringing uses are factual in nature, or events recounted actually happened—it need only look to the work itself to see if it represents itself as factual. It also underscores the important point that facts are not protected by copyright law, and makes it easier for creators to use facts from other works in their own works without fear of copyright liability. The decision serves as an obstacle for those who seek to bring copyright infringement suits based solely on factual information, strengthening protections for authors who seek to use facts present in copyrighted works to contribute knowledge and scholarship to their communities. It also makes clear that these creators will not be held liable for using factual information from other works that later turns out to be untrue, further easing the threat of copyright liability when nonfiction works are relied upon as accurate.

Mastering your (Author) Domain Name

Posted July 14, 2020

Authors Alliance is grateful to Jacqui Lipton for this guest post on domain names for authors. Her new book, Law and Authors: A Legal Handbook for Writers, is an approachable, reader-friendly resource to help authors navigate the legal landscape of the contemporary publishing industry. Through case studies and hypothetical examples, Law and Authors addresses issues of copyright law, including explanations of fair use and the public domain; trademark and branding concerns for those embarking on a publishing career; laws that impact the ways that authors might use social media and marketing promotions; and privacy and defamation questions that writers may face. Get your copy today from the University of California Press (use discount code 17M6662 for 30% off).

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Not all authors have, or even want, their own website. Some are happy to rely on social media like Facebook, Twitter, Instagram etc., to connect with readers. Even those who do have a website may choose to use a service like WordPress which can provide a sub-page for a blog or website without the need to register a dedicated domain name. This column is for those who are considering venturing into the often murky waters of domain name registration.

Many people would tell you that Internet domain names are no big deal; they’re just so last century. In a sense that’s true. In the mid to late 1990s, Internet domain names were the most effective way for people to find you online because search engines weren’t nearly as sophisticated as they are today. Today, if people want to find you they just Google you.

For example, if you Googled “Sarah Perry”, you’d get a list of results that probably prioritizes a bunch of different people including two authors with that name: one, an American memoirist and the other, a British novelist. The search engine results would likely prioritize the British novelist because search engine algorithms, like Google’s, use a number of factors to identify the most relevant search results, including how often a particular page is accessed. Because the British author is more well-known, her page has likely been accessed more often than the American author with the same name.

However, those algorithms also use domain names to prioritize search results, which is why domain names are still important. Try searching some of your favorite authors and artists online. Those who hold a relevant domain name are likely to be in the top ten results.

Pinning Down a Domain Name

Securing a domain name that corresponds with your personal name may be more difficult than you expect: for example, in the Sarah Perry context, the British author uses “sarahperry.net” while the American memoirist uses “sarahperryauthor.net”. Neither uses the arguably more intuitive “sarahperry.com”. While a lot people say that the “.com” version of your name is important, that’s a lot less true today than it was in the past and it’s arguably less true for people’s names than for corporate trademarks.

Domain names are generally registered on a first come, first served basis, so the first person to register “sarahperry.com” will generally take the name, subject to any later legal challenges or complaints. Most of those challenges are based on trademark rights and it’s important to note that authors typically can’t claim trademarks in their names, at least under American trademark law.

If you are concerned about someone else using your name as a domain name, you can attempt an online arbitration under the Uniform Domain Name Dispute Resolution Policy (URDP) established by the Internet Corporation for Assigned Names and Numbers (ICANN) in 1999. The UDRP is fast, online and much less expensive than court proceedings. More importantly, UDRP arbitrators have accepted trademarks in personal names much more often than American courts typically do, although they’ve tended to be celebrity names like Julia Roberts and Al Pacino.

To win a URDP arbitration, you need to establish that (a) the domain name is identical or confusingly similar to your trademark, so it only works if your name is accepted as a trademark; (b) the registrant has no rights or legitimate interests in the domain name; and, (c) the domain name has been registered and is being used in bad faith. While this sounds simple, it’s not easy for an author to establish all these things. In particular, it’s often difficult to prove that the domain name has been registered in bad faith, even if it was registered by a domain name speculator (often called cybersquatter) in the hopes of making money selling it to someone with an interest in it.

Many speculators register bulk domain names with no idea as to whether the names match someone else’s brand or trademark in the hopes that some of the names will become valuable in the future. They make their money by registering large numbers of names at low cost and then charging high prices when someone later wants the name. In these situations, the speculators can argue that they didn’t register the name in bad faith because they didn’t know any other person had an interest in it at the time of registration. This may well be what happened with “sarahperry.com” which is currently offered for sale through GoDaddy, probably for a price significantly higher than it would cost to register an alternative domain name. This may explain why neither of the “Sarah Perry”s uses the “.com” version of their name.

UDRP arbitrations are simple and inexpensive, but they are often of limited use to authors in the absence of a trademark.

What about Negotiation?

Most lawyers will suggest that the first (and often easiest) strategy to try and wrangle control of the domain name you want is to contact the person who registered it and find out if they will sell it for a reasonable price. They may ask more than the cost of registering an alternative name, but it may still be cheaper than attempting to use the UDRP and it may be worth it depending on how important it is for you to secure a particular name. In the Sarah Perry situation, presumably neither author thought it was worth paying more than they needed to as they were each able to find viable options.

Bear in mind that some people will not be prepared to sell you a name they have registered because they are using it themselves. They might be prepared to put a link to your website on their page, depending on the circumstances, though, so it may be worth asking in any event.

Search Engine Optimization (SEO)

If you’ve heard the term “SEO” and don’t understand it, it’s basically just a way of referencing techniques you can use to ensure that your website is prioritized in search results regardless of your domain name. The precise ways to do this change over time as search engine algorithms change, and people find better ways of playing the system.

SEO isn’t a legal issue. It’s a matter of being tech-savvy. A number of companies specialize in SEO and you can pay them to teach you how to prioritize your website in search engine results. Many of the popular web hosting packages offer SEO as an add-on service. Google also offers statistics and strategies for SEO including a free online SEO Starter Guide and a free service, Google Analytics, which breaks down the figures related to who is visiting your website and how often.

You can end up spending a lot or a little on your web presence, and attempts to make it easily searchable. There’s no one right way to be online, and it’s best to find what you’re comfortable with than to try and do everything, but if you do venture into domain name territory, hopefully this blog post has given you some guidance. If you’re not the website type, social media can be just as effective and potentially a lot more interactive. But that’s a whole other blog post …

Headshot of Jacqui Lipton

Jacqui Lipton is the founder of Raven Quill Literary Agency as well as a consultant on business and legal issues for creative artists. She also teaches law and legal writing at the University of Pittsburgh, as well as several online venues. She writes regular columns on legal and business issues for authors for SCBWI, Luna Station Quarterly, Catapult, and Savvy Authors. Her book Law and Authors: A Legal Handbook for Writers is available from University of California Press.

US Copyright Office Issues Report on Section 512

Posted June 3, 2020
Diana Buck - Headshot

Authors Alliance is grateful to Diana Buck, Copyright Intern, for sharing this summary of the US Copyright Office’s recent Report on Section 512, a part of the Digital Millennium Copyright Act (“DMCA”) enacted in 1998 to provide a framework for copyright owners and online service providers (“OSPs”) to address copyright infringement online.

The United States Copyright Office recently released a Report on the operation of Section 512. The Report is the culmination of a five-year study of whether Section 512 is working as originally intended to balance the interests of OSPs and copyright owners.

Section 512 gives OSPs a “safe harbor” from secondary liability for their users’ copyright infringement. In return, OSPs are required to implement certain features to protect copyright holders, most notably “notice and takedown” procedures. Under notice and takedown procedures, copyright owners can get infringing material removed from online sites by sending brief “takedown notices” to OSPs, without the expense and hassle of filing a lawsuit. To be eligible for the safe harbor, upon receiving a takedown notice with the statutorily-required information, the OSP must remove the allegedly infringing material.

In preparing the Report, the Copyright Office sought input from stakeholders. OSPs generally praised Section 512 for allowing them to grow their services and serve the public without facing debilitating lawsuits. Copyright owners generally expressed concern that they couldn’t utilize Section 512 in a meaningful way to address copyright infringement because infringing material reappears across the internet even after it is removed in response to takedown notices. User groups critiqued the notice and takedown regime in a different way, contending users’ interests are not being adequately protected when their content is mistakenly targeted and removed.

The Copyright Office’s Report concludes that the balance has tilted askew, failing to meet the concerns of copyright owners. However, the Copyright Office generally recommends that Congress clarify and revise some of the language of Section 512, rather than make any large changes that would go beyond the original construct of the DMCA. The Copyright Office outlines areas for potential revision, including:

  • Clarifying what exactly constitutes a “repeat infringer,” and whether allowing OSPs to have unwritten policies for termination of repeat infringers’ access to OSP platforms has Section 512’s desired deterrent effect.
  • Clarifying the proper knowledge requirements for an OSP to receive safe harbor protection, including delineating a lack of “actual knowledge” of infringing activities from a lack of “red flag knowledge,” which is when an OSP is aware of facts and circumstances that make infringing activity apparent.
  • Clarifying whether a copyright owner, when submitting a takedown notice, must include a unique URL for every instance of infringement on an OSP’s service.
  • Considering an alternative dispute resolution model for whether material should be removed and reinstated, instead of requiring that a copyright owner must file a federal lawsuit.
  • Monitoring the impact of the Ninth Circuit’s decision in Lenz v. Universal Music Corp., and whether it is appropriate for Congress to clarify whether copyright owners who send takedown notices should have to meet an implied good faith requirement that they assessed whether the potentially-infringing use was actually fair use.

Advocacy groups for large content creators, such as the Association of American Publishers (“AAP”) and the Motion Picture Association of America, issued statements that commend the Copyright Office’s report, agreeing with the Report’s conclusion that the DMCA fails to adequately protect creators’ rights.

Academics and organizations critical of the Report argue that it favors the copyright industry in almost every respect, potentially placing new burdens on OSPs and allowing notice senders to abuse Section 512 by using notice and takedown to censor content they do not own or control. Several commentators point out that the Report fails to account for internet users’ interests. Copyright scholar and Authors Alliance board president Pamela Samuelson also criticizes the Report’s stance on the Lenz decision and for chiding OSPs for failing to remove content that the OSPs believe is fair use. Critics express concern that the Report supports terminating internet access for users on the basis of allegations of infringing activity. These critics express relief, at least, that the Report did not go as far as suggesting site-blocking or notice-and-staydown (areas where the Copyright Office instead suggested that additional study was needed).

Whether to make any of the changes suggested in the Report is a legislative decision for Congress. The Senate Judiciary Subcommittee on Intellectual Property is examining the DMCA and has announced plans to draft changes to the law as early as this year. The Copyright Office, in its Report, stated its intention to prepare education materials for copyright owners and OSPs on their rights and obligations under Section 512, including rolling out a new website, copyright.gov/DMCA, for that purpose.

Implied Licenses in Copyright Law

Posted May 27, 2020

Authors Alliance is grateful to Jacqui Lipton for this guest post on implied licenses. Her new book, Law and Authors: A Legal Handbook for Writers, is an approachable, reader-friendly resource to help authors navigate the legal landscape of the contemporary publishing industry. Through case studies and hypothetical examples, Law and Authors addresses issues of copyright law, including explanations of fair use and the public domain; trademark and branding concerns for those embarking on a publishing career; laws that impact the ways that authors might use social media and marketing promotions; and privacy and defamation questions that writers may face. Get your copy today from the University of California Press (use discount code 17M6662 for 30% off).

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Authors deal with copyright issues all the time, both in relation to their own, and other people’s, work: for example, if an author wants to use someone else’s photography or graphic to illustrate a point made in a book, or use a line of a poem or song as a chapter epigraph. Usually, a publisher will ask the author to obtain permission for these uses. In the absence of permission, or in the absence of a traditional publisher seeking permission (e.g., in the self-publishing context), the go-to defense for unauthorized use, if a problem arises, is typically fair use.

This blog post is about another defense to copyright infringement that can arise where an author thinks she has permission to use copyrighted material in the absence of a clear contract, based on surrounding facts. Enter the implied license doctrine. While it can be difficult to succeed with this defense, it’s worth knowing about.

Implied licenses in the copyright context are an outgrowth of basic contract law principles where agreements are sometimes implied between two or more people in circumstances where a judge or jury believes that those people would have made a contract if they’d turned their minds to it. The typical example given in law school classrooms involves lawn mowing: Assume you mow your neighbor’s lawn every Sunday for three weeks, and she gives you $20 each time. Then you mow her lawn the next week and she refuses to pay. Do you have a contract? A contract would probably be implied here based on the way you both acted. Your neighbor would likely have to pay you the $20 for the fourth week.

Copyright law has adopted a similar approach in terms of licenses to use a copyright work if it seems like the parties would have created a license under the circumstances. An implied license, if it exists, must, by definition, be non-exclusive because U.S. copyright law requires exclusive licenses to be in writing.

Courts have differed in the tests they use for implying a copyright license. Some courts use a three-step test that largely developed out of situations where the parties had an express agreement in place, but deviated from its terms in practice: for example, where a contract requires invoices to be generated and payments to be made prior to engaging in a licensed use, but the parties have engaged in a course of dealing that allows invoices and payments to post-date uses (e.g., publication) of licensed works.

In these kinds of cases, many courts have asked whether the copyright holder: (1) creates a work at another person’s request; (2) delivers the work to the other person; and, (3) intends the other person to copy and distribute the work. If the answer to all of these questions is “yes”, a license will likely be implied.

For example, in Latimer v Roaring Toyz, 601 F.3d 1224 (2010) a freelance photographer (Latimer) was hired by Kawasaki to photograph some tricked-out Kawasaki motorbikes for promotional materials connected to a bike show. The pictures were later used for promotions in Cycle World magazine articles and on Roaring Toyz’s website. Kawasaki and Roaring Toyz argued that there was an implied license to use the photos in all of these contexts. The court held that there was an implied license for Roaring Toyz to use the photographs for the bike show, but not for any other purposes. (The license had to be implied here because the original contract was with Kawasaki, not Roaring Toyz.)

Applying the three-step test, the court noted that: (1) Latimer took the photos at Kawasaki’s request; and, (2) he delivered the photographs to Kawasaki and Roaring Toyz; (3) for use at the show. This was enough evidence to support an implied license to use the photos at the show. However, the license didn’t cover the additional uses on Roaring Toyz’s websites or in the Cycle World magazine.

Not all courts rely on the three-step test for implied licenses. Some take a much more wholistic view of whether an implied license has been established. In Pelaez v McGraw Hill, 399 F. Supp. 3d 120 (2019), another case involving arguments about unauthorized uses of photography, the court noted that the correct legal test for an implied license is whether the parties conduct, taken as a whole, supports the intent to grant a license. This approach, taken in many cases, is more like the standard common law approach to implying any kind of contractual obligation to unclear facts.

In Pelaez, Judge Wood emphasized the fact that a license cannot be imposed on the basis of the unilateral expectations of one party. It is not enough for a person to subjectively believe there was a license; there must be actual facts from which the court could infer that both parties intended a license, or would have intended a license if they had turned their minds to it. If an author or other creative artist makes it clear, say, on their website that they do not consent to unauthorized use of their material (e.g., many authors say they “do not allow fanfiction”), it’s unlikely a court would imply a license in relation to the relevant works.

Because of the challenges in constructing implied licenses out of often ambiguous facts, if you want to re-purpose someone else’s work in your own manuscript, it’s a better idea to either obtain permission or to see if you raise a good fair use argument. More information on fair use is available here.

Of course, a court can always “get it wrong” when working by implication, which is why it’s always better to specifically say clearly what uses are, and are not, allowed, under a written contract. Even if you post your work online, express license terms are easier to create than ever before. Creative Commons licenses enable authors and others to release work online with clear license terms attached. Stock photography websites, for example, do a very good job of clearly setting out the licensing terms for images released via their services. Terms can include both money and attribution, as well as restrictions on future commercial uses. Further information on Creative Commons licenses is available here.

Headshot of Jacqui Lipton

Jacqui Lipton is the founder of Raven Quill Literary Agency as well as a consultant on business and legal issues for creative artists. She also teaches law and legal writing at the University of Pittsburgh, as well as several online venues. She writes regular columns on legal and business issues for authors for SCBWI, Luna Station Quarterly, Catapult, and Savvy Authors. Her book Law and Authors: A Legal Handbook for Writers is available from University of California Press.

Law and Ethics of Copying: Copyright Infringement vs. Plagiarism

Posted April 22, 2020

While the terms “copyright infringement” and “plagiarism” are often incorrectly used interchangeably, they are different harms.

Authors Alliance is grateful to Nicolas Charest, Copyright Research Assistant, for providing this overview for authors to clarify how copyright infringement and plagiarism differ.

Copyright infringement is a harm that is grounded in law: It is a violation of the exclusive rights of a copyright holder to reproduce and distribute a copyrighted work, to prepare derivative works, or to perform or display the work publicly. An infringement of one of these rights, such as the unauthorized reproduction or distribution of a copyrighted work, gives rise to a claim under federal law where a copyright holder may be entitled to a monetary remedy and a court can order the infringing party restrain from further infringement.

Plagiarism, on the other hand, is a harm that is grounded in ethics. Put simply, plagiarism is the act of using another’s work or ideas and not giving proper credit, instead falsely presenting it as the user’s own. There is no statutory prohibition against plagiarism. Instead, plagiarism is governed by community norms and the consequences of plagiarism are most likely to be professional or academic sanctions. To avoid plagiarizing another’s work or ideas, authors should properly credit the source of the ideas or words used in their text, with adequate references and citations appropriate to their discipline, and use quotation marks where appropriate when quoting directly.

Sometimes plagiarism also rises to the level of copyright infringement, but not always. For example, authors may freely use materials in the public domain without concern for copyright liability, and some unauthorized uses of copyrighted material are permitted under exceptions to copyright like fair use. While these uses are not copyright infringement, they may still be plagiarism if the work is used in a manner that presents the work or ideas as the user’s own. Likewise, usurping the ideas of another creator without properly crediting the source of the idea is not copyright infringement (copyright protects expression, not ideas), but may be plagiarism.

On the flip side, a use may be copyright infringement, but not plagiarism. For example, unauthorized copying may be copyright infringement if it does not fall under an exception to copyright, but if the source is attributed and the user is not claiming the work as her own, it is unlikely to also be plagiarism.

Copyright Registration and Recordation 101

Posted February 11, 2020
Photo by Patrick Fore on Unsplash

If you have questions about copyright registration, you’re not alone! Authors often ask us why they should register copyright in their works and when and how to do so. Read on for a primer on the benefits of copyright registration, how to register your copyright, and situations where you may want to update or supplement the Copyright Office’s record of your work.

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Copyright registration is a claim to copyright filed with the Copyright Office which creates a public record of facts about a copyrighted work, including authorship and ownership information. Although authors do not need to register their works in order to enjoy the protection of copyright law (under today’s copyright laws, copyright protection for original, creative works is automatic), timely registration has several benefits which make it an advantageous practice. For example, registration establishes a public record of ownership, registration is necessary before initiating an infringement suit, and registration within three months of publication (or prior to infringement of the work) opens up the possibility of statutory damages and attorneys’ fees. Read more about why registration is an advantageous practice for authors in our post Why Register Your Copyright?

Copyright registration includes three essential elements: a completed application form, a filing fee, and a “deposit” (a copy of the work submitted to the Copyright Office). To learn about how to register your works with the U.S. Copyright Office, read our post How to Register Your Copyright.

While copyright owners no longer need to renew registration under U.S. copyright law, there are several situations in which updating or supplementing the Copyright Office’s record of your work is beneficial (or, in the case of termination of transfer, required). Learn more about filing a supplementary registration, registering derivative works, recording transfers or copyright ownership and other documents pertaining to copyright, and recording terminations of transfers in our post on When to Update or Supplement a Copyright Registration.

It is worth noting that as a part of the its modernization plans, the Copyright Office has announced a forthcoming pilot program through which participants will be able to electronically submit for recordation most types of transfers of copyright ownership and other documents pertaining to a copyright. (Notices of termination will not be part of the pilot program when initially launched.) We applaud the Office’s modernization efforts and will provide updates as the program develops.

Distinguishing Trademarks from Copyrights: A Q&A for Authors

Posted January 14, 2020

Authors Alliance is grateful to Nicolas Charest, Copyright Research Assistant, for researching and drafting this post.

There is longstanding confusion between trademarks and copyrights, which can sometimes lead to controversy in author communities. Notably, in 2018 an author sparked what came to be known as “CockyGate” after she registered a trademark for the word “cocky” in connection with her series of romance novels and asked Amazon.com to take down all romance novels with “cocky” in the title. The trademark application was later surrendered and cancelled following legal proceedings (more details here). More recently, another author sought trademark registration for the word “dark,” used in the titles of a series of her books, though she also later abandoned the application.

In light of these recurring issues, what should authors know about trademarks and copyrights, and how they might apply to their works? We’ve got you covered with this Q&A providing an overview of trademark rights and copyright and how these rights can arise in the publishing industry.

What are copyrights and trademark rights?

Copyright protects original works of expression and gives the author the exclusive rights to reproduce the work, to distribute the work, to prepare derivative works (like translations or movie adaptations), or to perform or display the work publicly. Each of these rights can be transferred by the author to a third party through an assignment or license.

A trademark is a word, phrase, symbol, or design (or a combination thereof) that identifies and distinguishes goods from one source from those manufactured or sold by others. Rights in a trademark are used to prevent others from using similar signs that would cause confusion to consumers in the marketplace, helping to avoid situations where products from another vendor would be mistakenly believed to come from the trademark owner or suggest such an association. The United States Patent and Trademark Office (“USPTO”), the federal agency responsible for the registration of federal trademarks in the U.S., has adopted the view that the title of a book cannot be registered as a trademark, but the title of a collection or series can. This is because the latter is more likely to identify a source of goods than the former.

Examples of trademarks from the publishing industry include the Penguin Group’s illustration of a black and white penguin on an orange background and the words “For Dummies” in a series of books from Wiley.

What is the purpose of copyrights and trademark rights?

While copyrights and trademarks are both intellectual property rights, they serve markedly different functions in the publishing world. In short, copyright controls the ways a work can be copied, distributed, and adapted, while trademark rights control the use of signs which have become distinctive to a particular author, series, or publisher.

For example, copyright protects the thirteen volumes of Lemony Snicket’s Baudelaire Orphan series, allowing the copyright owner to control the printing and selling of new copies of the books. A copyright owner’s rights are said to be “infringed” if someone exercises one or more of the copyright owner’s exclusive rights—by reproducing one of the books in the series, for example—without authorization or a copyright exception covering that use.

The trademarks “A SERIES OF UNFORTUNATE EVENTS” (TM Reg No. 2732326) and “LEMONY SNICKET” (TM Reg No. 5432563), on the other hand, give the trademark owner the right to prevent others from using these word signs in contexts that would cause consumer confusion as to the source or affiliation of the goods sold under the mark. This gives consumers assurance that books marked as being part of the “Series of Unfortunate Events” come from the author, Daniel Handler, publishing under the pseudonym Lemony Snicket, and indicates to potential readers that any books bearing the mark will be of the same literary quality and style as the other books in the series.

Trademarks are not limited to words. For instance, the exterior appearance of a collection of books can be a distinguishing sign that indicates a source and could be considered a trademark, over which the editor or publisher could claim trademark rights. Examples of such abound, including the recognizable layout of the paperback Penguin Classics collection and the Aspen Casebook Series, which the editor says is “famously known amongst law faculty and students as the ‘red and black’ casebooks.”

An author or publisher may wish to secure a trademark as an indicator of source to protect the goodwill created by the works of the author and to prevent other from usurping the reputation of the author.

How are copyrights and trademark rights obtained?

Under today’s copyright laws, copyright protection for original, creative works is automatic from the moment the work is “fixed in a tangible medium” (e.g., as soon as the author puts pen to paper, paintbrush to canvas, or saves a computer file). Although authors do not need to register their works in order to enjoy the protection of copyright law, registration with the United States Copyright Office has several benefits which make it an advantageous practice. Authors interested in the advantages of registering a copyright in their work can read our blog post Why Register Your Copyright.

“Common law” trademark rights can arise based solely on the use of a mark in commerce where it is used as source identifier over a period of time and consumers recognize the mark as indicative of the specific source. However, like copyright, there are significant benefits to registering the work with the USPTO, including: a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods listed in the registration; public notice of your claim of ownership of the mark; listing in the USPTO’s online databases; and the ability to bring an action concerning the mark in federal court. Federal trademark applications can be filed on the basis of the mark being used in commerce in connection with the goods specified or on and “intent-to-use” basis. A registration of a trademark at the state level is also available, though the protection that it offers is limited to that state only.

How long do copyright and trademark protection last?

Under current copyright law in the United States, copyright lasts for the life of the author plus 70 years. Rights in a federally registered trademark can last indefinitely if you continue to use the mark and file all necessary maintenance documents with the USPTO. Common law trademark rights can continue as long as the sign remains distinctive.

Ringing in the New Year with Public Domain Works from 1924

Posted January 2, 2020
Montage of Public Domain works courtesy of the Center for the Study of the Public Domain

As we ring in the New Year, authors have one more reason to celebrate: another batch of works has entered the public domain in the United States. Last year, the new year brought works published in 1923 that had previously been protected by copyright into the public domain—the first time in 20 years that published works have entered the public domain due to copyright expiration. This January 1, the trend continued as we welcomed works published in 1924 that were previously protected by copyright into the public domain. Many of these works have been out of reach long beyond their creators’ lifetimes and for decades after their commercial potential was exhausted.

According to the Center for the Study of the Public Domain at Duke, new public domain works include Thomas Mann’s The Magic Mountain, E. M. Forster’s A Passage to India, Edith Wharton’s Old New York, Agatha Christie’s The Man in the Brown Suit, and A. A. Milne’s When We Were Very Young.

While 2020 brings certainty that works first published in the United States in 1924 are in the public domain, changes in copyright duration and renewal requirements during the 20th century mean that works first published in the United States between 1925 and March 1, 1989 could also be in the public domain because their copyrights were not renewed or the copyright owner failed to comply with other “formalities” that used to be required for copyright protection. Analysis undertaken by the New York Public Library reveals that approximately 75% of copyrights for books were not renewed between 1923-1964, meaning roughly 480,000 books from this period are most likely in the public domain.

Once in the public domain, works can be made freely available and can be adapted into new works of authorship. Last year, we covered some of the benefits of the public domain:

  • The public domain provides opportunities to freely translate works to help fill the gap in stories available to children in their native language; and

Authors Alliance looks forward to the new public domain works from 1924 being made more available and to the new works that are created by building upon this rich collection.

Obtaining Image Permissions For Your Book: An Author’s Perspective

Posted August 14, 2018

We are grateful to award-winning filmmaker, author, and Authors Alliance member Lois Farfel Stark for sharing her experience of sourcing image permissions for her most recent book, The Telling Image: Shapes of Changing Times. Read on to learn her tips and tools for finding copyright holders and securing permission to use copyrighted images in a new work. (For information about fair use, an exception to copyright law that allows creators to use copyrighted works without permission in certain circumstances, visit Authors Alliance’s fair use resource page.)

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Front cover of The Telling ImageOver ten years ago—when I began writing my new book, The Telling Image: Shapes of Changing Times—I knew I wanted to create a book that focused on images. The central topic of the book is how humans make sense of the world by finding a shape, an image, to hold everything together.

The journey from that moment to now has been one of discovery mixed with learning. In order to gather the over 200+ images into the book, I had to teach myself about copyright law—a task that is not easy, even on paper. Your book’s journey may be different, and you may even find yourself needing to consult with a lawyer, depending on the situation.

Copyrights for image use are complex, and copyright duration can be extremely long. The U.S. Copyright Act defines an image as a “work of visual art” which includes painting, drawing, print, sculpture, and photographic images. Other copyrightable pictorial, graphic, and sculptural works noted in the Act include “. . . two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.”

Eventually, I included a variety of images in my book, from early blueprints of corporate boardrooms to charts and diagrams used by physicists. Many uses of images require permission from the copyright holder, unless the use falls under an exception to copyright law like fair use or when the work is in the public domain. Uses within the copyright owner’s exclusive rights include reproducing the image in print or online, creating derivative works (new works based on the original), distributing copies of the image (i.e., by publication), or displaying the image in public. Seems pretty straightforward, right? Not so much. Each image in this book ended up having its own acquisition story.

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Supreme Court to Weigh in on Copyright Registration Circuit Split

Posted June 28, 2018

Today, the U.S. Supreme Court agreed to resolve the question of what the Copyright Act means when it says that a work must be registered prior to filing an infringement lawsuit.

Under the Copyright Act, an infringement action cannot be brought until “registration of the copyright claim has been made” (or, alternatively, registration of the claim has been refused by the Copyright Office). Next term, the Supreme Court will review the case of Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC to resolve a circuit split over what it means to fulfill this requirement. The essential question is whether a copyright owner may commence an infringement suit after delivering the proper deposit, application, and fee to the Copyright Office, but before the Register of Copyrights has acted on the application for registration.

Currently, the Tenth Circuit follows the “registration approach,” which requires that the Register of Copyrights act on the application for registration, either by approving or denying it, before a copyright owner can file and infringement action. The Fifth and Ninth Circuits follow an “application approach,” which requires a copyright owner to file the deposit, application, and fee required for registration before filing a suit for infringement. In the case now before the Supreme Court, the Eleventh Circuit followed the registration approach, explaining that in its view “[t]he Copyright Act defines registration as a process that requires action by both the copyright owner and the Copyright Office.” The Supreme Court will now have the opportunity to review and resolve this circuit split in its next term.

We will follow this case and update our readers as the Supreme Court considers this question.

The ability to bring an infringement lawsuit is just one of the benefits of registration. For more information about registration, read our articles on the benefits of registration, how to register your works with the U.S. Copyright Office, and when to update or supplement a registration.