Copyright Rights Acquisition

Creation

Copyright is secured automatically when the work is created, and a work is "created" when it is fixed in a copy or phonorecord for the first time. "Copies" are material objects from which a work can be read or visually perceived either directly or with the aid of a machine or device, such as books, manuscripts, sheet music, film, videotape, or microfilm. "Phonorecords" are material objects embodying fixations of sounds (excluding, by statutory definition, motion picture soundtracks), such as cassette tapes, CDs, or LPs. Thus, for example, a song (the "work") can be fixed in sheet music ("copies") or in phonograph disks ("phonorecords"), or both.

“Addressing the threshold of copyright-ability . . ., the Supreme Court [has] held that ‘[t]he sine qua non of copyright[ability] is originality’ and that ‘[o]riginal, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.’” Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1076 (9th Cir. 2000) (quoting Feist Pub’lns, Inc. v. Rural Tel. Servs. Co., 499 U.S. 340, 345 (1991)).

Licensing

Grant of a license by a copyright owner to a third party may be limited to specific types of distribution or derivative works; many authors do not authorize electronic distribution.

1. Tasini v. New York Times Co., 206 F.3d 161 (2d Cir. 1999), aff’d, 533 U.S. 483 (2001).
   1. Freelance journalists sued a variety of popular newspapers and magazines, including The New York Times, Newsday and Sports Illustrated, and electronic service providers for copyright infringement of their articles when those periodicals–which included plaintiffs’ articles–were subsequently made available on electronic databases and CD-ROM.
   2. Defendant publishers and electronic service providers argued that there was no impermissible use of the freelance articles under the “revision” privilege of the “collective works” provision of the Copyright Act. 17 U.S.C. § 201(c). The district court granted summary judgment for defendants.
   3. The Second Circuit reversed, holding that “Section 201(c) does not permit the Publishers to license individually copyrighted works for inclusion in the electronic databases.” Id. at 165. Rather, “Section 201(c) creates only a presumption by the parties as to what an author means to convey by giving consent to inclusion of an article in a collective work.” Id. at 171. The United States Supreme Court agreed with the Second Circuit, finding that “[t]he Publishers’ encompassing construction of the § 201(c) privilege is unacceptable … for it would diminish the Authors’ exclusive rights in the Articles.” New York Times Co. v. Tasini, 533 U.S. 483, 499 (2001). Thus, publishers are required to obtain express consent from freelancers for subsequent distribution of articles in an electronic archive.
   4. See also Tasini v. New York Times Co., Inc., 184 F. Supp. 2d 350 (S.D.N.Y. 2002). Plaintiffs claimed that The New York Times’ policy of refusing to publish any freelance writer who would not sign a release of all claims for compensation for electronic publication of their articles interfered with writers’ ability to claim relief from infringement of their copyrights. The district court dismissed Tasini’s suit for lack of standing, holding that Tasini failed to allege any personal injury resulting from the policy.
2. Greenberg v. National Geographic Soc’y, 244 F.3d 1267 (11th Cir. 2001). Plaintiff, a photographer whose photographs had been included in several issues of National Geographic, sued the magazine for copyright infringement. Plaintiff’s claim was based upon National Geographic’s creation of a CD-ROM, which included digital copies of all back issues of the magazine, a search tool and an animated introductory clip that displayed one of plaintiff’s photographs every time the CD-ROM was used. Following Tasini, the Eleventh Circuit found for plaintiff. The court held that the CD-ROM was neither a permissible revision under Section 201(c) of Title 17 nor a fair use of plaintiff’s photographs but rather a new collaborative product for which defendant did not have a license.
3. Random House, Inc. v. Rosetta Books, 150 F. Supp. 2d 613 (S.D.N.Y. 2001), aff’d, 283 F.3d 490 (2d Cir. 2002). The district court denied Random House’s motion for a preliminary injunction barring Rosetta Books from publishing eBook versions of works to which Random House had an exclusive copyright license. The licenses assigning rights to the books to Random House included the right to “print, publish and sell the works in book form.” The district court concluded that this did not include the right to publish the works in digital form. The Second Circuit affirmed the decision, finding that Random House could not prove irreparable harm.

Work Made for Hire

In the case of works made for hire, the employer and not the employee is considered to be the author. Section 101 of the copyright law defines a "work made for hire" as:

1. a work prepared by an employee within the scope of his or her employment; or
2. a work specially ordered or commissioned for use as:
   1. a contribution to a collective work
   2. a part of a motion picture or other audiovisual work
   3. a translation
   4. a supplementary work
   5. a compilation
   6. an instructional text
   7. a test
   8. answer material for a test
   9. an atlas
   10. if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

Cases

1. Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989) set standards for determining when a work was a work made for hire under the 1976 Act (including the hired party’s control over accomplishment of the task; provision of tools; right of artist to employ his own helpers; whether creation was in hirer’s line of business; hirer’s control over when and how long hired party is to work; method of payment; tax treatment of the hired party).
2. Lin-Brook Builders Hardware v. Gertler, 352 F.2d 298, 300 (9th Cir. 1965): Under the 1909 Act, "when one person engages another, whether as employee or as an independent contractor, to produce a work of an artistic nature, that in the absence of an express contractual reservation of the copyright in the artist, the presumption arises that the mutual intent of the parties is that the title to the copyright shall be in the person at whose instance and expense the work is done."