The governing copyright text is found in Title 17 of the United States Code (USC) and includes the Copyright Act of 1976, together with all amendments (the “Copyright Act”). The language of the Copyright Act can be located at copyright.gov, the official website for the US Copyright Office (CO). The text is located at https://www.copyright.gov/title17.
The CO regulations regarding registration practices are codified and published in the Code of Federal Regulations (CFR) under Title 37 — Patents, Trademarks, and Copyrights, Section II, located at https://www.copyright.gov/title37.
The CO has also released revisions to the US Copyright Office, Compendium of US Copyright Office Practices (3rd edition, 2017), the governing administrative manual for registrations and recordations issued by the CO. The full manual is located online at https://www.copyright.gov/comp3.
The Copyright Act is interpreted by US federal courts.
The USA became a party to the Berne Convention Treaty on 1 March 1989. This treaty was first accepted in 1886, and has been revised numerous times. The USA adheres to the Paris 27 July 1971 version, revised on 28 September 1979.
The USA has adhered to the World Intellectual Property Organization (WIPO) Copyright Treaty since 6 March 2002 and the WIPO Performances and Phonograms Treaty since 20 May 2002.
The USA is a member of the World Trade Organization (WTO) and follows the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which sets forth obligations related to intellectual property rights, including copyright and enforcement.
The USA is also party to other significant international conventions and treaties, including the UCC Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms; the Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite; and the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled.
The Berne Convention permits foreign copyright holders to bring infringement claims within the USA without having to obtain a copyright registration for the work infringed if the work is not a US work as defined in the Copyright Act. Section 104 of the Copyright Act pertains to the national origin of works receiving US copyright protection and copyright in restored works.
However, registration is a prerequisite to certain remedies, even for foreign authors, specifically regarding statutory damages or attorney’s fees.
To qualify for copyright protection, Section 102 of the Copyright Act requires that a work be an “original work of authorship”, meeting minimal levels of originality and “fixed in any tangible medium of expression”. The first element does not present a particularly high bar but works must display at least a minimal level of creativity, which tends to raise questions over the ability to copyright works in the realm of conceptual art or new technologies. The second element requires a work to be captured and perceived, reproduced, or communicated for more than a short time. Copyright protection is automatic from the moment of creation, but authors can receive enhanced benefits from registration.
Copyright notice is no longer required upon publication of a work since 1 March 1989 when the USA joined the Berne Convention treaty. Although lack of notice will no longer result in forfeiture of copyright, owners preserve certain litigation benefits by publishing a work with proper notice. Proper notice consists of the copyright symbol © or the word “Copyright”, the name of the copyright owner, and the year of first publication. Registration establishes a claim to copyright with the CO. Although registering with the CO is not mandatory, for US works, registration (not merely application) is a prerequisite to filing a claim in federal court to enforce one’s copyright and permits authors to seek the full panoply of remedies under the Copyright Act in litigation. The CO serves as the register of copyright, and applications for certificates of registration can be filed online (or in paper).
One may search a work’s registration in the Records Room of the CO or request the CO to do so (for a fee of USD200 per hour or a fraction thereof, with a two-hour minimum). The printed Catalog of Copyright Entries covers registrations from 1891 through 1978. An electronic version is available for works registered from 1978 to the present. To individually search public records, one can visit the Public Records Room at the Library of Congress. Where records, such as correspondence or deposits, are unavailable for public search, one can request the CO conduct the search, for a fee.
Consulting with informational circulars published by the CO, such as https://www.copyright.gov/circs/circ22.pdf, is recommended before conducting a search.
Section 102 of the Copyright Act provides categories of works protectable by copyright, including:
These categories should be interpreted broadly; for example, computer software is protected under “literary works”, while maps and technical drawings fall under “pictorial, graphic, and sculptural works”.
Software is protected as a literary work, receiving the same protection as other literary works. The CO’s Circular 61 contains helpful information regarding the registration of source code.
Each version of a published software program containing new, copyrightable authorship requires a new application. The subsequent registration will not cover previously published or registered source code, source code in the public domain, or copyrightable source code owned by a third party.
The deposit requirement for software permits filing the entire source code or a representative sample, which is useful if the source code contains trade secrets.
For purposes of registration, hypertext markup language (HTML) is neither considered a computer program nor software. The CO permits registering HTML as a literary work if created by a human rather than a website design program, provided it contains sufficient creative expression. To register HTML, submit a complete copy of the code, not a sample. Refer to Circular 66 on “Websites and Website Content” for more information.
Databases are not a protected category of creative works; however, a database that is comprised of a collection and arrangement of material may be registered as a compilation of copyrightable work. This form of authorship recognises the selection, coordination, and arrangement involved in creating a database. Additionally, material appearing in a database may be deemed authored and thus protectable.
Either form may be registered with the CO, provided that the database contains sufficient original expression and the copyright claimant owns the copyright in that material. The CO also maintains specific regulations for the registration of a photograph database.
Industrial designs do not receive copyright protection but may qualify for a design patent under 35 USC Section 171, which protects the ornamental design of an article of manufacture.
The Copyright Act does not afford copyright protection for distinct categories beyond the categories listed in Section 102; works must either fall within those categories or be a compilation or derivative work thereof, to merit protection. Although the categories are interpreted broadly, various works would not be protected, such as ideas, processes, or systems.
“Author” is undefined in the Copyright Act. Copyright initially vests in the individual who created the work, unless the work qualifies as a “work made for hire,” either because the individual is an employee and created the work within the scope of their employment or because the work falls within the categories of works that can be created as a work for hire. Entities can own work either because it is created as a work for hire or because the copyright is assigned to the entity. The CO will only register works created by a human.
Copyright can be jointly owned provided the work was prepared by two or more authors who both intended that their contributions combine into “inseparable or interdependent parts of a unitary whole”. Joint authorship arises either where authors directly collaborated or where they prepared their contributions separately but knew and intended that the contributions would merge. Paramount in joint authorship is the parties’ intention at the time of creation for their contributions to combine into an integrated unit. A contribution to a joint work is “inseparable” if the work contains a single form of authorship, as with a novel or painting, and “interdependent” if the work contains multiple forms of authorship, such as a motion picture or the music and lyrics of a song.
A copyright applicant must determine whether a work qualifies as a joint work based on the facts surrounding its creation. This determination bears importantly on the ownership and term of the copyright. For example, the authors of a joint work jointly own the copyright in each other’s contributions, as well as an undivided interest in the copyright for the work as a whole. In other words, joint authors are essentially treated as tenants in common, each enjoying an independent right to use or license a joint work, provided they account for the profits. A joint author may exploit the joint work but may not grant exclusive rights, or transfer all interest in the work, without obtaining consent from the other author(s). If a joint author does exploit a work non-exclusively, he or she must account to the other author(s).
The copyright term for a joint work expires 70 years after the death of the last surviving author. If the joint work was created by two or more authors as a work made for hire, an anonymous work, or a pseudonymous work, the copyright expires 95 years from the year of publication or 120 years from the year of creation (whichever is shorter).
Authors may claim copyright anonymously or pseudonymously. In this case, the copyright lasts 95 years from the year of publication or 120 years from the year of creation (whichever is shorter). If, however, an author reveals their identity, this term converts to the life of the author plus 70 years.
The Copyright Act protects collective works, including anthologies or encyclopaedias, in which a number of contributions, constituting separate and independent works in themselves, are collectively assembled. The Copyright Act also protects compilations, including collective works comprised of pre-existing material arranged in a way that results in an original work of authorship.
Copyright in compilations or collective works only extends to the material contributed by the author of the collection, not to pre-existing material. Copyright in a collection does not enlarge the scope of copyright in the pre-existing material. For example, a collection that includes public domain material will not cause the public domain work to be protected by copyright.
The copyright in a collective work is distinct from the copyright in component works and can be exploited separate and apart from the pre-existing material. The owner of a collective work may only exploit the component parts as part of the collective work or any revision.
Any entity, including a corporation, may qualify as an author of a work in the USA under Section 201(b)’s “work made for hire” doctrine. Under the doctrine, an employer is considered the author unless the parties sign a written agreement to the contrary.
Work made for hire applies under two scenarios: where the work is prepared by an employee within the course and scope of employment, and where the work has been specifically ordered or commissioned for use in nine specific categories:
For the second scenario, the parties must expressly agree in a written, signed instrument that the works shall be considered for hire.
For the first scenario, courts distinguish between work prepared by an independent contractor versus an employee, employing a multi-factor agency law analysis to examine the relationship, such as the hiring party’s right to control and the hired party’s discretion to perform the work. Alternatively, collective bargaining agreements in various industries designate a worker’s employee status and are often given weight by courts.
Public employers operate under the same work made for hire doctrine as other employers, although many universities have specific contracts with professors that address whether a professor’s writing is outside the scope of his or her employment and whether the professor would retain the copyright.
The Copyright Act does not accord protection for any work of the US government; however, the government may still hold copyrights transferred by an assignment, bequest, or otherwise.
Section 106 accords six exclusive economic rights to owners:
These rights persist throughout the term of copyright and do not vary a term’s duration. For works created on or after 1 January 1978, copyright persists for the life of the author plus 70 years, or, in the case of jointly authored works, for 70 years after the last surviving author’s death. For works made for hire and anonymous or pseudonymous works, copyright lasts 95 years from first publication or 120 years from creation (whichever is shorter), though in the latter category, if the author’s identity is revealed, the term becomes the author’s life plus 70 years. Copyright terms do not otherwise vary based on the type of work. Works created and published prior to 1978 were initially protected for 28 years plus a 28-year renewal term, but this term has since been extended many times over by amendments, and pre-1978 unpublished works are protected by the Copyright Act. For additional information, visit Circular 15A "Duration of Copyright".
A copyright owner may transfer their exclusive rights within a copyright. A transfer, other than by operation of law, is only valid if in writing and signed by the owner of the rights being transferred, or by the owner’s representative.
A transfer is effectuated by an assignment, mortgage, exclusive licence, or other conveyance and may include the copyright in its entirety or limited exclusive rights. Limitations on the time, place, or effect of a transfer will not affect its validity.
A certificate of acknowledgement is not required for a valid transfer but is considered prima facie evidence if executed by a person who administers oaths within the USA, or, in the case of a transfer executed in a foreign country if issued by a diplomatic or consular office of the USA or a person authorised to administer oaths. Transfers may be recorded with the CO but are not required.
Economic rights are transmissible upon death. Section 201(d) of the Copyright Act provides that copyright ownership may be transferred under the law by will or as personal property, in whole or in part.
Copyright can be transferred. Any transfer of exclusive rights must be in writing and signed by the owner or representative. Minors (in the USA, those under 18 years of age) may claim and exercise copyrights, but state law may regulate transfer agreements entered into by minors.
Section 109 of the Copyright Act recognises the first sale doctrine (commonly called an “exhaustion” doctrine outside the USA), by which the owner of a work’s copyright may not prevent subsequent sales of the work where there has been a first, authorised sale of a copy. Essentially, the owner’s right to control distribution of a lawful copy is “exhausted” following the first authorised distribution. An actual “sale” is not a necessary condition for application of the doctrine but, at the very least, a copy must have been lawfully made and conveyed. Digital content, like an e-book, is not included in this doctrine because one only leases, and does not own, a digital copy.
The USA recognises moral rights within visual arts, defined within Sections 106A and 101 of the Copyright Act as paintings, drawings, prints, or sculptures existing in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author (and bearing their signature or other identifying mark), as well as still photographic images produced for exhibition purposes.
Moral rights include the rights of attribution and integrity. The right to attribution allows an author to be credited as the author of their work, while the right of integrity allows an author to prevent intentional and prejudicial distortions of the work, as well as the destruction of a work of “recognised stature”. Moral rights also allow authors to prevent others from using their name in association with a work they did not create.
Moral rights only apply to a work’s author and persist only throughout their life, or, in the case of joint authorship, throughout the life of the last surviving author. Their term runs to the end of the calendar year in which they would expire. Moral rights may not be transferred but may be waived if an author expressly agrees to a waiver in a signed, written instrument identifying the work and the uses of the work to which the waiver will apply.
Moral rights are distinct from the ownership of the copy of any work. Consequently, any transfer of ownership of a copy of a work of visual art or any rights under copyright does not, without the written, signed instrument discussed above, constitute a waiver of an author’s moral rights.
The USA has implemented anti-circumvention measures along the lines of Article 11 of the WIPO Copyright Treaty by way of the Digital Millennium Copyright Act of 1998 (DMCA), codified in Section 1201 of the Copyright Act.
Section 1201(a)(1) prohibits any person from circumventing a technological measure that effectively controls access to a work protected under the Copyright Act. Subsection 1201(a)(3) defines this circumvention a “means to descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner”. For example, bypassing a paywall to read a news article without paying for a subscription would fall under Section 1201(a)(1). Additionally, the law prohibits trafficking in technologies that circumvent technical measures.
The statute does provide certain exemptions and exceptions in Sections 1201(d)–(j), however, including for non-profit libraries, archives, and education institutions, which may access copyrighted works solely to determine whether to acquire a copy of that work; for lawfully authorised law enforcement or government agencies to carry out information security activities; for reverse engineering solely to identify and analyse the underlying elements of a computer program necessary to achieve interoperability; for encryption research; for the protection of personal identifying information; and for security testing. Persons injured by a violation of Section 1201 may bring a civil action and seek the actual damages suffered, including profits of the violator attributable to the violation, or elect statutory damages for each violation ranging from USD200 to USD2,500.
The USA has implemented legal remedies with respect to copyright management information (CMI) along the lines of Article 12 of the WIPO Copyright Treaty by way of DMCA Section 1202.
Section 1202(a) prohibits any person from knowingly, and with the intent to induce, enable, facilitate, or conceal infringement, from either: providing false CMI, or distributing or importing false CMI. Section 1202(b) also prohibits the intentional removal or alteration of CMI, as well as the distribution, importation, and public performance of works knowing that the CMI has been removed or altered. Section 1202(c) broadly defines CMI as including, among other things, title and copyright notice information, and identifying information about the author, owner, writer, or performer who is credited in an audio-visual work. Persons injured by a Section 1202 violation may bring a civil action and seek the actual damages suffered, including profits of the violator attributable to the violation, or elect statutory damages for each violation, ranging from USD2,500 to USD25,000.
There are several collective rights management (CRM) systems in the USA that cater to different types of copyrighted works, major examples of which are referenced below. However, CRM is complicated and industry-specific, and while it is governed by statute to some degree, US antitrust laws and existing court consent decrees render participation in CRM organisations voluntary.
US music copyrights are split into two parts: the underlying musical composition copyright (the written music and lyrics), and the sound recording embodying the composition’s performance. Different organisations collect and disburse earned royalties to the appropriate rightsholder.
With respect to composition copyrights, the songwriter(s) and music publisher(s) typically split the income earned from certain uses of the composition. For public performances (such as on radio, TV, and public venues like concert halls, and even bars and restaurants), performing rights organisations (PROs) collect money from each entity holding a license issued by the society for the use of musical works in the PRO’s repertory and distribute it to their members based on proprietary formulae. PROs also enforce the rights of their members against any unlicensed public performance of their music. There are various licences available but generally one pays an annual fee for a “blanket” licence that covers the entire repertory of the PRO. The two largest PROs are ASCAP and BMI, which comprise about 96% of the music market, followed by SESAC and newcomer GMR.
Composition copyright owners also employ agencies to collect “mechanical” royalties, or moneys earned by songwriters and publishers from the creation and sale of sound recording renditions of a composition. The Harry Fox Agency issues these mechanical licences (called “compulsory licences”) and has traditionally collected mechanical royalties for its members. However, under the recently passed Music Modernization Act (MMA), statutory compulsory licences will be streamlined by 2021, replacing the old song-by-song licensing structure with a blanket licensing system for digital music providers to make and distribute downloads and streams of digital music. A new mechanical licensing collective will administer the blanket licence, receive reports from digital music providers, and collect and distribute royalties.
With respect to sound recording, a record label typically owns the copyright in the “master” of a sound recording. The label typically tracks record sales, whether physical or digital, while a collection society called SoundExchange tracks digital public performance royalties for sound recordings. Under the Copyright Act, sound recording copyright owners, unlike composition owners, lack an exclusive public performance right other than by digital means (ie, radio stations do not pay sound recording owners royalties for radio play).
Artists’ Rights Society (ARS) is a US licensing and monitoring organisation for visual artists, which represents the copyright interests of thousands of global visual artists (and estates), from painters and photographers to sculptors and architects. ARS, among other things, handles inquiries for licenses to reproduce visual art works (for instance, for publication in books, museum exhibitions, monographs, etc). Membership is voluntary.
American Society for Collective Rights Licensing is a not-for-profit corporation that collects and distributes funds earned abroad in connection with visual art to rightsholders in the USA, as well as to foreign rightsholders whose works are published in the USA. Membership is voluntary.
Copyright Clearance Center is a corporation providing collective copyright licensing services for users of copyrighted works in the corporate world and academia. It negotiates and secures agreements with copyright owners (particularly academic publishers) and arranges for collective licensing of the owners’ publications as the owners’ agent. Membership is voluntary.
See 6.1 Collective Rights Management.
Using a copyrighted piece of music alongside visual or audio-visual material requires a synchronisation (or “sync”) licence.
Sync rights in the USA must be procured by the party seeking to use the music in a movie or TV show (usually the producer), and licences must be obtained from both the songwriter or music publisher and the sound recording owner. Sound recording sync rights are typically negotiated directly with the record label for the master rights, whereas publishing sync rights for the composition can be negotiated through Harry Fox Agency in many instances, or otherwise directly with the songwriter or publisher.
The USA employs a fair use system that permits use of copyrighted works without the copyright holder’s consent in certain circumstances. Codified in Section 107 of the Copyright Act, fair use may commonly be found in instances of “criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research...” although this list is not exhaustive.
In assessing fair use, courts consider four factors articulated in Section 107:
Courts weigh these factors case-by-case, because fair use determinations are particularly fact-specific. Even so, courts commonly accord the most weight to factor 1, and through developments in case law, have added a gloss to it which considers the “transformative” nature of the work. Factor 4 is the second most heavily weighted factor, with the other two factors rarely tipping the scales.
Factor 1 considers, apart from commercial versus non-commercial use, whether the new work is transformative, ie, whether it merely supersedes the objects of the original, or instead, adds a further purpose or character to it, altering it with new expression or meaning. The more transformative the work, the less significant the other factors.
Factor 2 accounts for the nature of the copyright work. Unauthorised use of a largely factual work is more likely to be deemed a fair use, considering that creative works are closer to the core of intended copyright protection under US law.
Factor 3 considers the amount of the original work used in the new work; the larger the amount, the less likely is a fair use finding. Still, where an author can demonstrate that copying a large portion, or even the entirety, of the original work was necessary to transform it, the amount copied will be less likely to sway courts against finding fair use. Courts here also consider whether the “heart” of the work was used.
Factor 4 addresses the likelihood of market harm to the original work and its derivatives that could result by introducing the secondary work into the market, especially where it could be a substitute for the original work, and often looks to the consequences of the copying becoming widespread. However, courts that have deemed a work largely transformative under factor 1 are less likely to view it as a market substitute. Courts also balance the benefit that the public will derive from the secondary work if the use is permitted with the personal gain the copyright owner will receive if it is denied.
The fair use framework is famously complicated and, as noted, fact-specific. Case law provides valuable insight into how courts may undertake this analysis but is far from consistent or clear, and often varies by jurisdiction.
Various provisions within the Copyright Act protect forms of private copying although there is no express exception for private copying.
Fair use protects copying for certain educational purposes, such as making copies for classroom use and may also protect making backup copies of electronic media, recording time-shifted televised broadcasts, and non-commercial archiving of personal properties, such as CDs and DVDs. The Audio Home Recording Act (Section 1001) protects home copying of pre-recorded music, such as music airing over the radio, for personal use.
Under Section 117 of the Copyright Act, computer program owners are also permitted to make an archival copy, but it must be destroyed if the owner ceases rightful possession of the original. An owner may also lawfully possess a copy of a computer program made as part of the activation of a machine that lawfully contains the program, or for maintenance or repair purposes, but the copy must only be used for those purposes and destroyed immediately following their completion.
Section 108 protects libraries or archives engaged in private copying provided these organisations “reproduce no more than one copy or phonorecord of a work”. This exception requires that the reproduction be made without a purpose of commercial advantage, the organisation’s collection be open to the public or available to more persons than merely the researchers affiliated with the organisation and the reproduction include a notice of copyright or similar “legend” stating that the work is copyright-protected.
Section 108 further distinguishes between copying of published versus unpublished works. The law permits libraries or archives to duplicate an unpublished work from their collection solely for purposes of preservation or deposit for research use in another library or archives, provided that any digital copy is not further distributed or shared publicly outside the organisation. Libraries or archives may duplicate published works solely for replacement purposes to safeguard against damage, deterioration, loss, theft, or obsolescence of its storage format, if they ensure that the unused replacement cannot be obtained at a fair price and that digital copies are not made available outside of the organisation.
Further, should the work be within the last 20 years of its copyright term, a library or archives, and some non-profit educational institutions, may under limited circumstances copy it for “preservation, scholarship, or research”.
Section 120 of the Copyright Act establishes an exception to copyright protection in regard to the pictorial representation of architectural works. Although architectural works may themselves merit protection, if such a work is embodied in a building “located in or ordinarily visible from a public place”, its copyright will not prevent persons from painting, photographing, or pictorially representing the work, including the distribution or public display of such representations.
The USA has established an exception to copyright infringement for activities carried out by intermediaries, such as Internet Service Providers (ISPs). Pursuant to the DMCA Section 512(a)–(d), an ISP may qualify for one of four “safe harbours”, which limit their liability for infringement claims based on “transitory digital network communications", "system caching", "information residing on systems or networks at [the] direction of users" and "information location tools”.
To qualify, ISPs must meet certain threshold criteria. They must first qualify as an online service or network access provider or operator; practically any website can be considered an ISP under the DMCA. They must also have adopted and reasonably implemented a repeat infringer policy that provides for terminating subscribers in appropriate circumstances. Additionally, they must accommodate standard technical measures used by copyright owners to identify or protect copyrighted works. To merit the safe harbour concerning user-generated content, ISPs must also have a registered agent with the CO.
Having met this threshold, an ISP must then satisfy the requirements of a particular safe harbour. For Section 512(c), a commonly litigated safe harbour protecting against infringement claims arising from an ISP’s storage of copyrighted user-generated or submitted content, an ISP must demonstrate lack of actual knowledge that the material is infringing, or that, upon obtaining knowledge, it acted expeditiously to remove or disable access; that it hasn’t received a financial benefit from the activity in cases where it had the right and ability to control the activity; and that upon notification of the infringement, it responded expeditiously to remove or disable access. The requirements for eligibility for the other safe harbours may be found in the statute.
Satire and parody fall within the umbrella of fair use, assuming they meet the applicable standards. Parody is a classic example of fair use, especially because the nature of parody is to lampoon a specific work. Satire, on the other hand, typically appears as criticism of society or larger abstract concepts and may be harder to prove as fair use if one is not critiquing a specific work.
Fair use is typically seen as a First Amendment exception to copyright protection. Fair use embodies the intersection of freedom of expression and the limited monopoly conferred by the Copyright Act. Fair use incorporates significant aspects of commentary, criticism, and news reporting, which are all central First Amendment concepts. Indeed, fair use, while typically termed a “defence” to copyright infringement is actually not a defence at all, it is a permissive use of a copyrighted work that furthers the goals of the First Amendment.
The USA does not recognise the concept of neighbouring rights, which traditionally refer to commercial public performance rights in sound recordings.
As noted, the USA does not recognise traditional neighbouring rights.
As noted, the USA does not recognise traditional neighbouring rights.
Infringement occurs when a party who is not the author, legal or beneficial owner, or licensee exercises one of the exclusive rights of copyright holders under Section 106 of the Copyright Act or any rights in Sections 106A or 107 through 122, without permission; creates a work that is substantially similar to an existing copyrighted work; or imports copies or phonorecords of a copyrighted work into the USA in violation of Section 602.
Infringement can be direct or secondary. Direct infringement involves an accused infringer who undertook volitional conduct to commit the infringement, whereas secondary (indirect) infringement arises when a party contributes or induces a third party to commit the direct infringement or otherwise is vicariously liable for another’s direct infringement. Contributory infringement occurs where the accused secondary infringer knew of the direct infringement and either caused, induced, or materially contributed to it. Vicarious infringement occurs where the accused secondary infringer had the right and ability to control or supervise the activity giving rise to the infringement and a direct financial interest in the same.
The many defences against a claim of copyright infringement, include the following:
Currently, federal lawsuits are the sole means of pursuing infringement claims. Pending legislation would establish a copyright small claims tribunal for lower-value claims, but the bill has not yet become law.
Before filing a federal lawsuit, one must register the copyrighted work with the CO Merely submitting an application is not enough; rather, the CO must have granted the application (or denied it, in which case the applicant can still bring a claim but will not be entitled to a presumption of ownership or copyright validity). This approach is somewhat counterintuitive because a work is considered “copyrighted” as soon as it is fixed in a tangible medium of expression, but for purposes of enforcement, one must comply with Sections 408 to 412 of the Copyright Act.
US federal courts have exclusive jurisdiction over copyright infringement actions. A federal statute, 28 USC Section 1338(a), states that copyright cases must be brought before a federal district court; this means that no state court may hear a copyright case. Appeals of copyright decisions filter up to the applicable Court of Appeals (divided geographically across the country).
Only a copyright owner/author, assignee, or exclusive licensee may bring an infringement action. A non-exclusive licensee who has only been licensed limited rights cannot enforce a copyright.
Third parties may be involved in proceedings for copyright infringement in several ways. When a plaintiff asserts claims of both direct and contributory infringement, and only pursues one type of offender, the other alleged infringers may remain at large but may end up as witnesses in the pending case.
Under Federal Rule of Civil Procedure (FRCP) 65(d)(2), federal court injunctions bind the parties, the “parties’ officers, agents, servants, employees, and attorneys”, and “other persons who are in active concert or participation with” any of the above. Non-parties who do not receive notice of the injunction are not bound. Non-parties likely will not be sanctioned (unless they fail to comply with a non-party subpoena under FRCP 45) and would not be subject to damages awards.
In federal court plaintiffs may seek emergency relief by filing for a temporary restraining order (TRO) or preliminary injunction (PI). These tools are governed by FRCP. 65. TROs can be heard ex parte in court (without the participation of the party to be enjoined) and are inherently limited in scope and time and will only last for 14 days, whereas PIs necessitate full briefing and a hearing and, if granted, last throughout the litigation. The requirements are generally the same:
With TROs, movants can show, as an alternative to likelihood of success on the merits, that sufficiently serious questions on the merits provide fair ground for litigation and must show that the balance of hardships decidedly tips in their favour, with irreparable harm imminent and likely.
Courts may at any time during an infringement action order infringing goods impounded, and this remedy can be requested in the context of TROs or PIs.
Expert witnesses may be critical in certain copyright cases, but are not mandatory. In the context of substantial similarity, experts do not matter much when the test is what the “ordinary observer” would recognise as a work’s “total concept and feel” (which should be decided by the trier of fact), but they can be useful in certain jurisdictions which require an objective analysis.
Where appropriate, experts serve an important role in litigation and qualified expert witnesses are used to submit a report and/or testify (or to simply consult) to support the litigant’s position, whether it be to help establish (or disprove) substantial similarity for an infringement analysis or support a damages theory. Experts are key in cases involving nuanced or technical areas of copyright law, including music and software. Both the plaintiff and the defendant may engage experts who offer competing viewpoints, and use of a knowledgeable expert may spell the difference between a win and a loss. However, experts can be expensive, driving up the costs of litigation, leaving even successful litigants unable to recover the costs of their witnesses, especially considering the Supreme Court recently limited the types of costs awardable to prevailing parties under Section 505 of the Copyright Act.
US Customs and Border Patrol (CBP) officials have authority to seize potentially infringing goods. Such seizures are governed by a procedure outlined in Title 19 of the Code of Federal Regulations. Copyright owners must first register their copyright with the CO and may then then separately file an application to record the copyright to secure customs protection on the CBP’s Intellectual Property Rights e-Recordation website, or mail the application to a CBP office in Washington, DC, along with the USD190 fee. Once approved, CBP recordation lasts for 20 years, unless copyright ownership expires earlier. Owners may renew their recordation for USD80, so long as they submit the renewal application at least three months before the recordation expires.
If CBP officials see goods they suspect infringe a copyright recorded in the database, they may seize them at border control and withhold delivery. Specific notice is then given to both the importer and the copyright owner. The owner may engage in the administrative proceeding with the CBP or seek a court order enjoining importation of the article. Notably, even an owner who has not recorded their copyright with CBP may seek this court order. Following entry of the order, the owner must submit a certified copy of the same to the Commissioner of Customs in order to obtain CBP enforcement.
Monetary remedies for copyright infringement under Copyright Act Sections 504(a)–(d) include the copyright owner’s actual damages, including any of the infringer’s additional profits derived from the infringement, or statutory damages. Copyright owners must choose, prior to the rendering of a final judgment, whether to seek actual damages and profits or statutory damages, but not both.
Statutory damages range from a minimum of UDS750 to a maximum of USD30,000 per work infringed (not per infringement) and do not require specific proof; in cases of wilful infringement, courts have the discretion to increase a statutory damages award up to USD150,000. However, where an infringer can demonstrate that they were unaware of the infringing nature of their conduct (“innocent infringement”), a court may reduce the award to no less than USD200. A finding that the infringer reasonably believed the use to be fair use will protect limited classes of infringers against statutory damages, including employees or agents of non-profit educational institutions, libraries, or archives.
The Copyright Act also provides for injunctive relief and equitable remedies. Under Section 502, district courts may grant temporary and final injunctions that are operative and enforceable nationwide against the targeted infringement. Section 503 allows courts to seize and impound infringing copies or phonorecords and, as part of a final judgment, to order the seized items destroyed.
The Copyright Act occasions criminal liability in limited circumstances. Under Section 506(a), criminal sanctions are available against one who wilfully infringes a copyright for purposes of commercial advantage or private or financial gains, by reproducing or distributing one or more copies or phonorecords of a work valued at more than USD1,000 in any 180-day period, or by electronically distributing a work being prepared for commercial distribution with the knowledge that the work was intended for commercial distribution. Remedies for criminal infringement include forfeiture and destruction of infringing articles (Section 506(b)) and restitution, under 18 USC Section 2323 (a provision of the federal criminal code).
Some courts have held that a copyright registration is not required for the US government to bring a criminal complaint, but this is not settled law. Still, an essential element of a criminal copyright infringement claim is the existence of a “valid” copyright, and a registration strongly evidences this.
Appellate procedures for copyright cases mirror any other federal case. Copyright cases are appealed to the US circuit courts of appeal, which are not specialised (with the exception of the US Court of Appeals for the Federal Circuit, which hears patent appeals, not copyright appeals). Appeal from the circuit courts proceeds to the Supreme Court on a writ of certiorari, which the Court may or may not grant.
The basic US rule is that each party pay its own attorney’s fees and costs unless a contract or statute provides otherwise. Section 505 of the Copyright Act provides for the shifting of a prevailing party’s fees and costs to the non-prevailing party, but such awards are not mandatory, and district courts have discretion to determine whether fees should be awarded based on various factors established by case law. These include whether the non-prevailing party’s claims or defences were objectively unreasonable or frivolous, whether an award would further the prevailing party’s need for compensation and deter the non-prevailing party, and the non-prevailing party’s motivation.
Outside of the Copyright Act, other rules and statutes bear upon litigation costs, as copyright cases are, by nature, federal actions. Pursuant to FRCP 11, courts may impose sanctions, including paying another party’s attorney’s fees and expenses, on “any attorney, law firm, or party” found to have violated its responsibilities in conducting the lawsuit, including by bringing or maintaining a suit for an “improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation”, as well as for bringing frivolous actions or making baseless factual contentions in court papers. FRCP. 37(c), 28 USC Section 1927, and the courts’ inherent powers also allow for sanctions for various discovery and litigation abuses both against parties and their attorneys.
Alternative Dispute Resolution (ADR) is a common way of settling copyright cases. While it is generally not mandatory, some courts strongly encourage (and may order) pre-trial ADR. The most common form in copyright cases is mediation, which is voluntary and non-binding, and can be held through a private provider such as the American Arbitration Association or JAMS (for which the participants must pay), or, depending on the jurisdiction, may be provided for by the court at no cost or a reduced cost. Some courts appoint volunteer private attorneys as mediators at no cost; others provide a mediator for a certain number of hours at no cost with fees to be paid after a threshold is met; and others refer the case to a magistrate judge for mediation. Arbitration (which is binding and akin to a private trial) is uncommon in copyright cases and generally does not occur unless a contract between the litigants mandates arbitration versus litigation.
The mediation process is generally as follows. The parties select the forum and mediator, and if they cannot agree on a mediator, the organisation or court may appoint one. In copyright cases, parties tend to prefer mediators with substantive experience. Mediators typically hold an initial conference and request pre-mediation letters or briefs. The parties and their attorneys then convene at an in-person mediation where the mediator takes turns speaking with each party until a deal is made or a stalemate occurs. Sometimes the mediator offers a “mediator’s proposal”: a proposed settlement figure that each side can either accept or reject confidentially.
One other ADR method is currently proceeding through Congress — the Copyright Alternative in Small-Claims Enforcement Act of 2019 (CASE Act). If passed, the law would provide a voluntary system for smaller-value copyright claims to be heard before a Copyright Claims Board presided over by qualified copyright attorneys. Litigants could seek rulings on infringement, declarations of non-infringement, and certain DMCA claims. Parties would not require attorneys, personal appearances would be unnecessary, and the process would provide for only limited discovery. The CASE Act would cap damages at USD15,000 per claim with a case maximum of USD30,000. The CASE Act also proposes sanctions for bringing frivolous or abusive claims, including barring litigants from bringing claims for twelve months and attorney’s fee awards for bad-faith claims.
Will a New Standard Emerge for Originality of Short Phrases?
In the closing months of 2019, the Ninth Circuit Court of Appeals in California issued an unusual and cryptic decision on the subject of copyright protection for short phrases, and then quickly compounded the mystery by issuing an amended decision that deleted virtually all of the Court’s reasoning. The net effect of the Court’s actions is not at all clear, except that the case has been remanded for further proceedings. Those proceedings, including a likely second appeal from whatever the result may be on remand, will bear watching, and could have significant implications beyond the resolution of the parties’ specific dispute.
The issue commonly arises in a fact pattern like this: a songwriter alleges that another songwriter has infringed the lyrics of Song A by using a similar short phrase, frequently a current slang phrase, in the lyrics of Song B. Historically, claims like this have not often succeeded because “words and short phrases such as names, titles, and slogans” are “not subject to copyright,” according to a blanket rule set forth in the Code of Federal Regulations ("the CFR"), which governs the US Copyright Office(37 CFR § 202.01). Courts are not bound by the CFR, but often defer to it on such questions.
Under the CFR rule, even though a short phrase like “just do it” might be protectable as a trade mark, it is not copyrightable, and the mere presence of such a phrase in both Song A and Song B is not enough to make Song B an infringement, even if the plaintiff proves access and copying by the defendant. See, for example, Lessem v Taylor, 766 F. Supp. 2d 504 (S.D.N.Y. 2011), in which the parties’ works both included the phrase “this is how we do.”
Against this background, the Ninth Circuit’s 28 October 2019 decision in Hall v Swift, 782 Fed. Appx. 639 (9th Cir. 2019), 2019 WL 5543864 (“Swift”) is an exception that proves the rule, or perhaps suggests a new rule altogether – it is not easy to tell. In Swift, the alleged infringer was superstar Taylor Swift, whose song “Shake It Off” included lines allegedly copied from a lyric in the song “Playas Gon’ Play” (“Playas”) by plaintiffs Sean Hall et al. “Playas,” released in 2001, earned a place on MTV and the Billboard chart, was performed multiple times on national television, and the album that contained the track was certified platinum.
The lyrics of the plaintiffs’ song focus on “playas” and “haters.” As the district court explained, “the terms ‘playa’ and hater together all revolve about the concept of ‘playa haters’ – a ‘playa’ being ‘one who is successful at courting women,’ and a ‘playa hater’ being ‘one who is notably jealous of the playa’s success.’” The song “Playas” seems to assert that both playas and haters should be ignored, along with everyone else other than “me and you”:
"Playas, they gonna play / And haters, they gonna hate / Ballers, they gonna ball / Shot callers, they gonna call / That ain’t got nothin’ to do / With me and you / That’s the way it is /That’s the way it is."
In the chorus of Swift’s No 1 hit “Shake It Off” (2014), she sings:
"Cause the players gonna play, play, play, play, play / And the haters gonna hate, hate, hate, hate, hate / Baby I’m just gonna shake, shake, shake, shake, shake / Shake it off / Shake it off /
Heartbreakers gonna break, break, break, break, break / And the fakers gonna fake, fake, fake, fake, fake / Baby I’m just gonna shake, shake, shake, shake, shake / Shake it off / Shake it off."
When litigation ensued, Swift moved to dismiss and asked the court to take judicial notice of other songs built around the terms “playa” (or “player”) and “hater,” all of which pre-dated the plaintiffs’ song. These included Playa Hata (Luniz, 1995) (“Why you wanna playa hate on me?”); Man U Luv to Hate (Sir Mix-A-Lot, 1996)(“Playa’s in the house can you feel me, Got these playa haters lookin’ at me silly”); Playa Hater (Notorious B.I.G., 1997)(“We have, the playas, and we have, the playa haters”); Hater Players (Black Star, 1998) (“Yo-yo, yo-yo, later for these hater-players”); Don’t Hate the Player (Ice-T, 1999) (“Don’t hate the player”); Don’t Hate the Player (Too Short, 2000) (“You think someone player hated”).
The Court for the Central District of California took judicial notice of these works as Swift requested, and granted her motion to dismiss:
"The concept of actors acting in accordance with their essential nature is not at all creative; it is banal. In the early 2000s, popular culture was adequately suffused with the concepts of players and haters to render the phrases 'playas . . . gonna play' or 'haters . . . gonna hate,' standing on their own, no more creative than 'runners gonna run,' 'drummers gonna drum,' or 'swimmers gonna swim.'"
The district court also rejected the plaintiffs’ argument that the combination of “playas, they gonna play” and “haters, they gonna hate” was sufficiently creative to warrant copyright protection: “two unprotectable elements that, given pop culture at the time, were inextricably intertwined with one another, is not enough.”
On appeal, the Ninth Circuit reversed and remanded. In a very brief, non-precedential memorandum “not appropriate for publication,” the unanimous panel faulted the district court for resolving the issue as a matter of law, because “[e]ven taking into account the matters of which the district court took judicial notice [citation omitted], Hall’s complaint still plausibly alleged originality.” The Ninth Circuit cited a single 1938 case for the proposition that the “question of originality . . . is one of fact, not of law,” then quoted the famous words of Justice Holmes in Bleistein v Donaldson Lithographing Co., 188 US 239, 251-52 (1903):
"It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits."
Based on Bleistein, the Court’sanalysis reads: “Justice Holmes’ century-old warning remains valid. By concluding that, ‘for such short phrases to be protected under the Copyright Act, they must be more creative than the lyrics at issue here,’ the district court constituted itself as the final judge of the worth of an expressive work.” However, the district court said nothing about “worth”; it ruled on originality. The “worth” of the work in Bleistein did not turn on its originality, but whether it was fine art or “mere” commercial advertisement, the latter of which was unprotectable under the 1870 Copyright Act. Swift presents no such question, just one of originality.
And regarding originality, it is hard to see exactly how the Ninth Circuit’s ruling fits in with the leading Supreme Court precedent on the issue, Feist v Rural Telephone, 499 US 340 (1991). First, in Feist the Supreme Court declared the plaintiff’s work – a telephone directory – unoriginal as a matter of law, as have many of Feist’s progeny, so when Swift states that the originality question is “normally” a fact issue, citing one (pre-Feist) decision, it overstates the case, to put it mildly. And the Ninth Circuit’s focus on the phrase “expressive work” in Swift may be intended to distinguish the song lyrics in Swift from the purely factual compilation the Supreme Court addressed in Feist. Even if that were the court’s intent, though, that distinction would represent a narrowing of Feist to its own facts, and no other court has ever suggested that the Feist standard, with its explicit grounding in the text of the Constitution, is less than universally applicable to all works of authorship, whether factual or expressive.
But Feist also defined originality as requiring both that the work be “original to the author” and that it “possess more than a de minimis quantum of creativity,” and it is for this point that Swift cites Feist, albeit in passing. At the end of the day, Swift may have only meant to say that the panel believed the allegedly copied lyrics of “Playas” were sufficient to rise above the de minimis threshold laid down in Feist. Again, however, even assuming that to be the court’s point, the district court’s ruling seems premised less on the level of creativity of “Playas” in a vacuum and more on its incremental creativity relative to the prior playa/hater songs of which the district court took judicial notice. Since the song and the prior art were both properly before the court, what facts remain to be found on remand? Maybe experts could testify about whether the incremental creativity in “Playas,” relative to the prior art, is more than de minimis? Is that not “normally” a legal question?
About two weeks after the Swift ruling in the Ninth Circuit, Judge Analisa Torres in the Southern District of New York ruled on a motion to dismiss in Pickett v Migos Touring Inc., No 18 cv 9775, 2019 WL 5887742 (12 November 2019) (“Migos”) that the phrase “Walk it like I talk it” in the plaintiff’s song could not form the basis of a valid infringement claim against the defendant’s use of the phrase in their song “Walk It, Talk It”:
"Because songwriters must be free to borrow sayings and expressions from popular culture, the Second Circuit and courts in this district have found that short and commonplace phrases are not protectable, even when used as the title or repeated lyrics of a song, as is the case here. See, eg, Acuff-Rose Music, Inc. v Jostens, Inc., 155 F.3d 140, 144 (2d Cir. 1998) (the phrase 'you've got to stand for something, or you'll fall for anything' is too short and commonplace to be protected by copyright, even when sung repeatedly in plaintiff's song) . . . The only similarity between the two works at issue, the lyrics 'walk it like I talk it,' is not original to the author and is, therefore, not protected by the copyright laws. See Feist, 499 US at 345. Plaintiff has not plausibly alleged facts that demonstrate that Defendants copied 'original elements of plaintiff's copyrighted work.'"
It remains to be seen if the plaintiff in Migos will appeal the dismissal. The court, based in New York, is not bound by the Ninth Circuit’s rulings, and made no mention of Swift.
Meanwhile, the Ninth Circuit evidently had second thoughts about its initial ruling in Swift. On 5 December 2019, 786 Fed. Appx. 711 (9th Cir. 2019), 2019 WL 6608746, it modified its 28 October order reversing and remanding the case. With no explanation, the Court issued a modified version of the order that offered no clarification but merely deleted the lengthy quotation from Bleistein and the Court’s brief discussion of it. As noted above, that passage was essentially the entirety of the Court’s stated rationale for reversal. The “Amended Memorandum” also deletes the reference to the 1938 case that the court previously cited for the proposition that the “question of originality . . . is one of fact, not of law.” That proposition no longer appears in the decision, which now simply says that the originality standard is low, citing Feist, and repeats that “[e]ven taking into account the matters of which the district court took judicial notice [citation omitted], Hall’s complaint still plausibly alleged originality.” Judges gonna judge, perhaps?
If nothing else, the Swift ruling seems to say the threshold for alleging originality sufficient to survive a motion to dismiss is exceedingly low, at least in the Ninth Circuit. How that standard might apply in other procedural contexts, or in courts outside the Ninth Circuit, is anyone’s guess. If the New York ruling in Migos goes forward without reversal, and Swift withstands another appeal (which the losing party on remand will presumably file) in the Ninth Circuit, the US Supreme Court may be asked to supply the final word. Or a suitably original short phrase.
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