AAOS Bulletin - December, 2005

Essentials of copyright law

A basic primer on copyright protections and penalties

By Richard N. Peterson, JD

A “copyright” essentially is the right and ability to prevent others from copying an original work. It is the author’s right to control the communication and reproduction of his or her original work and to reap the benefits of usage by others of that work. A copyright may apply to articles—whether printed or electronic—as well as books, newsletters, periodicals, photographs, illustrations and other materials.

Copyright protections derive from the U.S. Constitution and various federal statutes. The primary federal statute governing copyrights is the Copyright Act of 1976, which enacted a single statutory system that governs all copyright matters, specifically preempting common law or state statutes.

How to qualify

To qualify for copyright protection, a work must meet two basic requirements: originality and fixation in tangible form.

Originality is defined as the fruits of the author’s intellectual labor and effort. The work does not have to be novel or have aesthetic merit. However, under the law, the author must contribute “something more than a ‘merely trivial’ variation, something recognizably ‘his own.’”

A “work is ‘fixed’ in a tangible medium or expression when its embodiment…is sufficiently permanent or stable to permit it to be perceived, reproduced or otherwise communicated for a period of more than transitory duration.” It is the act of fixation of original work that results in copyright protection, not registration. However, copyright registration of the work may be required to successfully sue for infringement.

General rules of ownership

A fundamental concept of copyright law is that the person who creates or writes the work is the copyright owner.

The owner has several rights, including the right to reproduce, prepare derivative works, adopt, publish, perform or display the copyrighted work. Rights are cumulative and often overlap, and may be kept or transferred individually or in total. Transferring one right doesn’t necessarily mean the copyright owner gives up all rights.

Thus, it is important for organizations like the AAOS to try to anticipate all possible uses for submitted contributions and make written agreements with the original copyright owner that will cover all of those possible uses—from using it in the original publication to reprinting the work in a compilation or book, or posting it to a Web site.

Copyright protection exists from the time a work is created, even before it is published or produced. Protections extend for the creator’s lifetime plus another 50 years if the author is an individual. If the creator is a corporation (such as an association), the copyright protection extends for 100 years from the time of the creation of the work or 75 years from its publication, whichever is earlier.

An exception to the rule that a work is owned by its author or creator is the “Work Made for Hire” doctrine. Under this doctrine, a work prepared by an employee as a part of his or her job becomes the property of the employer, not the employee. This doctrine may also apply to works created by consultants or freelancers retained by an organization, provided there is an express written agreement, signed by both parties, stating that the work shall be considered a work made for hire.

Exclusions

Certain works and subject matter are specifically excluded from copyright protection, regardless of their originality and fixation. These include:

• Titles, names, short phrases and slogans

• Blank forms (designed to record rather than to convey information) and similar works or standardized materials (information that is common property and which contains no original authorship)

• The idea itself, although copyright does protect the expression of an idea. Thus, although a journal article on how to perform an orthopaedic procedure is protected by a copyright, that protection extends only to the expression of the ideas, facts and procedure noted in the article, not to the ideas, facts, and procedures themselves, no matter how creative or original they might be.

• Works of the U.S. Government

Non-exclusive licenses

Non-exclusive licenses simply permit the use of the copyrighted work in a particular manner. They do not constitute a transfer of ownership rights and do not come within the purview of Copyright Act. A non-exclusive license may be in writing (preferred) or implied.

For example, if the AAOS wanted to use the materials (overheads, handouts, presentations) prepared by a fellow serving as a faculty member, seminar leader, or conference speaker, it must have a written agreement allowing it to do so. Usage could be as limited as publishing the materials in a conference proceedings manual, or as extensive as using the material in publications, on the Web site, or as a part of a collection.

An implied nonexclusive license exists when specific criteria are met. First, a person (the licensee) requests the creation of the work; second, the creator (licensor) makes that particular work and delivers it to the licensee; and finally, the licensor intends that the licensee copy and distribute the work. If the licensee pays for the work or there other consideration is given, the license is irrevocable.

Notice and registration

Publications are ordinarily published with a copyright notice—the word “copyright” or the symbol followed by the date of the first publication and the name of the copyright owner. In the Bulletin, for example, this appears on the table of contents page of each issue.

Although not required, copyright notice and registration with the Copyright Office of the Library of Congress are strongly recommended.

Copyright infringement

Anyone who exercises any of the exclusive rights of a copyright owner, without authorization from the actual owner, infringes on the copyright and may be held liable for these actions. For example, submitting a photograph downloaded from a Web site as part of an article for the AAOS patient education Web site without the express permission of the copyright owner is a violation of copyright law. Likewise, submitting an article for publication in the AAOS Bulletin that has already appeared in another publication, without noting that fact, may also be a violation.

Copyright infringement is determined without regard to the intent or the state of mind of the infringer; an “innocent infringement” is still an infringement. However, an innocent infringer may not be required to pay damages even if found liable.

In an infringement action, the copyright owner must prove ownership of the copyrighted work and a copying by the defendant. The copyright owner may prove copying through circumstantial evidence establishing that the defendant had access to the original work and that the two works are substantially similar. Substantial similarity may exist even if none of the aspects of the work (e.g., words, brush strokes or musical notes) is identical. Various tests have been developed to determine whether there has been sufficient nonliteral copying to constitute substantial similarity between a copyrighted work and the allegedly infringing work.

Direct participation in the infringing activity is not required for infringement liability because the Copyright Act grants copyright owners not only the right to exercise the exclusive rights, but also the right “to authorize” the exercise of those rights.

Defenses

A number of legal defenses are available to defendants in a copyright infringement action. The most significant defense is the “fair use” doctrine. Congress authorized the “fair use” exception to facilitate “purposes such as criticism, comment, news reporting, teaching, scholarship or research.” Fair use is an affirmative defense to an action of copyright infringement. When it exists, the user is not required to seek permission from the copyright owner or to pay a license fee for the use.

Several factors are considered in determining whether “fair use” exists, including:

• The purpose and character of the use, such as whether it is for commercial or nonprofit educational purposes

• The nature of the copyrighted work

• The amount and substantiality of the portion used in relation to the copyrighted work as a whole

• The effect of the use upon the potential market for or value of the copyrighted work (This is the most important consideration.)

A fundamental tenet of copyright law and limitation on exclusive uses is the first sale doctrine. This doctrine prevents a copyright owner from controlling subsequent transfers of copies of that work. The first sale doctrine allows wholesalers who buy books to distribute those copies to retailers, and retailers to sell them to consumers, and consumers to give them to friends, and friends to sell them at garage sales without the permission of (or payment to) the copyright owner of the work.

Damages and remedies

Violations of copyright can result in a range of penalties. A copyright owner may seek an injunction to prevent or restrain infringement. The court may have copies of the work impounded during the process and destroyed as part of a final order.

At any time before a final judgment is rendered, the copyright owner may elect to recover actual damages and profits of the infringer or be awarded statutory damages ($500 to $20,000 per work infringed). If a copyright owner can demonstrate that the infringement was willful, the court may increase statutory damages up to a maximum of $100,000. Criminal sanctions may be levied against the infringer if the infringement was willful and for purposes of commercial advantage or private financial gain.

Richard N. Peterson, JD, is general counsel for the AAOS. He can be reached at

peterson@aaos.org


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