Mark Twain was not a firm believer in copyright law. He famously said: “Only one thing is impossible for God: to find any sense in any copyright law on the planet. Whenever a copyright law is to be made or altered, then the idiots assemble.” (Mark Twain, Mark Twain’s Notebook, May 23, 1903).   Let’s nevertheless try to find sense in copyright law. Below is an overview of the basic principles of US copyright law.

 

1. What is copyright under US law?

 

The US Copyright Act does not provide a clear definition of the term “copyright”. US copyright is comprised of the various rights granted by Sections 106 and 106A of the US Copyright Act.

 

Section 106 of the US Copyright Act grants six exclusive rights to the copyright owner: (1) the right to reproduce the work; (2) the right to prepare derivative works based upon the copyrighted work; (3) the right to distribute the work; (4) the right to publicly perform the work (in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works); (5) the right to publicly display the work (in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works); and (6) the right to publicly perform the work by means of a digital audio transmission (in the case of sound recordings).

 

Section 106A of the US Copyright Act grants to the authors of a “work of visual art”[1] some rights of attribution and integrity. More precisely, Section 106A grants (under certain limitations and exceptions) to such authors the right to claim authorship of the work; the right to prevent the use of his or her name as the author of a work of visual art which he or she did not create); the right to prevent the use of his or her name as the author of the work in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation; the right to prevent any intentional distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation; and the right to prevent any destruction of a work of recognized stature.

 

In other words, US copyright is a bundle of various rights[2] that provide the authors or subsequent copyright owners with the exclusive right to authorize or prohibit certain uses of the work, such as to reproduce the work in whole or in part; to make new or derivative versions of the work; to distribute copies of the work; to perform the work publicly (e.g. by singing, reciting, dancing or acting); to display the work publicly (e.g. directly or by means of film, television, slides or other means). On top of these rights, certain rights of attribution and integrity are conferred to authors of a specific set of works, i.e. “works of visual art”.

 

 

2. The Constitutional copyright clause

 

 

Article I, Section 8, Clause 8 of the United States Constitution, known as the “Copyright Clause”, empowers the United States Congress: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”[3]

 

The Constitutional Clause basically says that the central purpose of copyright is to benefit society by opening up works of authorship to the public (“to promote the progress of science and useful arts”), and that the instrument to achieve that purpose is the author (“by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”).[4]

 

In reality, it is questionable whether copyright really promotes such progress. In the same sense, if copyright is seen as a reward for investments in time, money or talent, there does not seem to be a proven link between such investment and the creation of a copyright work.

 

 

3. Basic requirements of US copyright: fixation and originality

 

 

a. General copyright conditions under US law

 

 

Section 102 (a) of the US Copyright Act mentions: “Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.”

 

In other words, in order to qualify for copyright protection, a work must meet two basic conditions: (1) the work must be “original”[5] and (2) the work must be “fixed”[6] in a tangible form. Together, fixation and originality are the touchstones of US copyright law.[7] When assessing whether a work qualifies for copyright protection, a court will first investigate whether the hurdles of fixation and originality have been taken. This assessment will happen on the basis of the specific facts of the case. There is no golden rule to decide whether a work qualifies for copyright protection. Each case will be decided on its own merits, depending on the specific circumstances and facts particular to the case.

 

Section 102 (a) of the US copyright act also mentions that, in order to qualify for copyright protection, a work must fall within a special category of “eligible” works.[8] These categories are illustrative and not exhaustive of what is covered by copyright law. Put otherwise, all original works of authorship that are fixed in a tangible medium of expression are protected, regardless of whether they fall within one of the lists of Section 102 (a).[9] The category of “Literary works” in particular represents a very broad range of subject matter.[10]

 

b. First copyright requirement: Fixation

 

 

The first fundamental requirement for US copyright is “fixation”. Section 101 of the Copyright Act defines “fixation” as follows: “A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is “fixed” for purposes of this title if a fixation of the work is being made simultaneously with its transmission.”[11]

 

This basically means that a work will be considered “fixed” if it satisfies the following three requirements: (1) the work is embodied in a copy[12] or phonorecord[13] (such copies or phonorecords may take any form that “can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device”)[14]; (2) this is done by the author or under the authority of the author (for instance, the recording of a speech by a member of the public without the consent of the author is not considered a “fixation”); and (3) this is done for more than a transitory duration (though fixation needs not be permanent; the fixation should be “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration”[15]).[16]

 

This means that, in order to be protected by copyright, the work must be “fixed in any tangible medium of expression.”[17] Copyright protection under the US Copyright Act begins automatically once fixation occurs (provided that the originality requirement is also fulfilled).

 

c. Second copyright requirement: Originality

 

 

On the requirement of “originality”,[18] the US Supreme Court mentions the following in Feist Publications, Inc. v. Rural Telephone Service Co., Inc.: “The ‘sine qua non’ of copyright is originality. To qualify for copyright protection, a work must be original to the author. (…) Original, 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.”[19]

 

In other words, to achieve the threshold of “originality” under copyright law, a work must be both independently created and have a minimal degree of creativity. The concept of “independent creation” means that the author created the work by himself and did not merely copy from a previous work (although the author may use previous works in quotations, referrals or merely as ideas or building blocks for his or her own work).[20] “Independent creation” does not mean that the work must be novel.[21] A work may be original even if it closely resembles another work, so long as the similarity is fortuitous and not the result of copying.[22]

 

The requirement of “creativity” means that the work should be imbued with a minimum level of creativity. This is essentially a matter of facts, to be assessed by the court based on the specific circumstances of each case.[23] In reality, the originality threshold is quite easily achieved if there is a basic level of originality involved.[24] As the Supreme Court clarified in Feist Publications v. Rural Telephone Service, the required level of creativity is “extremely low”: “To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, ‘no matter how crude, humble or obvious.’”[25] Courts should not judge the artistic, ingenious or aesthetical quality of a work, just the presence or absence of a minimum level creativity.

 

d. No formalities needed for copyright protection

 

 

Once an original work is created and fixed, copyright protection applies automatically. Since the Berne Implementation Amendments, there are no longer any formalities to fulfill in order to enjoy copyright protection over a work.

 

e. Reasons to register a work for copyright in the USA

 

 

Even though no formalities apply for copyright protection, a copyright notice and registration of a work with the US Copyright Office carries with it certain benefits.

 

For instance, Section 401 (d) of the US Copyright Act holds that a copyright notice will effectively neutralize an infringer’s defense of innocent infringement when assessing the amount of damages: “If a notice of copyright in the form and position specified by this section appears on the published copy or copies to which a defendant in a copyright infringement suit had access, then no weight shall be given to such a defendant’s interposition of a defense based on innocent infringement in mitigation of actual or statutory damages, except as provided in the last sentence of section 504 (c)(2).”[26]

 

Also, registration of the copyright with the Copyright Office[27] is a prerequisite to start an infringement action. Section 411 (a) of the US Copyright Act mentions: “Except for an action brought for a violation of the rights of the author under section106A (a), and subject to the provisions of subsection (b), no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. (…)”[28]

 

Registration with the Copyright Office can be completed on the eve of initiating the infringement claim.[29] However, the US Copyright Act encourages prompt registration. Section 412 of the Copyright Act mentions with regard to a copyright owner’s entitlement to statutory damages and attorney’s fees: “In any action under this title, (…) an action for infringement of the copyright of a work that has been preregistered under section 408 (f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement, or an action instituted under section 411(c), no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for (1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or (2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.”

 

In other words, the copyright owner will not be able to recover statutory damages or attorney’s fees if the infringement started before he or she registered the copyright with the Copyright Office (this applies to damages for acts occurring before and after the registration; this does not apply to a copyright owner’s claim for actual damages).[30] Copyright owners who formally registered their copyright before an infringement occurred can choose to receive statutory damages instead of actual damages (this applies even in cases where actual damages are small or non-existent).[31]

 

Registration of the copyright with the Copyright Office brings other benefits as well. For example, a registration certificate serves as “prima facie” evidence that the copyright is valid and that the facts mentioned in the certificate are correct (see infra under procedural aspects).[32]

 

 

4. Authorship under US copyright law

 

a. Authorship in general

 

 

According to Section 201 (a) of the US Copyright Act, copyright “vests initially in the author or authors of the work.”[33] The Copyright Act, however, does not define an “author” or the concept of “authorship”. Through the case law of US courts, and in particular of the US Supreme Court, it can be concluded that the concept of “authorship” is closely tied to the concept of “originality”, in the sense that, in order to qualify as an “author” under copyright law, one should create the work independently (not merely copy another work) and one should contribute at least a minimum degree of creativity to the work.[34] The authorship requirement also entails that the work should be created by a human author, and not by a machine or computer (though machines, computers and other technical devices may of course be used in the process of creation).[35]

 

Many works are the product of collaborative efforts. Some of these works may be qualified as “joint works”, “collective works”, or “works made for hire”. In the following paragraphs, I briefly discuss the basic characteristics of these notions.

 

b. Joint works and collective works

 

 

The US Copyright Act defines a “joint work” as follows: “A ‘joint work’ is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”[36]

 

The authors of a joint work are in principle “co-owners” of the copyright in the work.[37] The “intention” to create a joint work is a basic requirement for a joint work, making that editors, research assistants and others are often not considered joint authors, even if in reality they have contributed to the work.[38]  This proof of intent is essentially a matter of fact, to be determined based upon the specific facts of each case.

 

A “collective work” by contrast is defined as follows: “A ‘collective work’ is a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.”[39] Collective works consist of the assembling of independent copyrightable works in a new work that is, as a whole, also copyrightable (for instance, a newspaper).

 

In other words, with a joint work, the individual contributions will merge into a whole, whereas with a collective work, the individual contributions remain separable and copyright can subsist for both the individual contribution and the collective work as a whole[40] (for instance, a photograph in a newspaper or magazine remains a separate work, even though it is published in the collective work that constitutes the newspaper or magazine).

 

For both types of works, the authors will be required to make an original contribution to the work in order to be considered an “author.” In other words, each author in a joint work or a collective work should meet the basic requirements of independent creation and a minimum degree of creativity (see above).[41] The mere contribution of ideas or assistantship is thus not sufficient to be considered a joint author (each joint author should contribute original expression).[42]

 

c. Works made for hire under US copyright law

 

 

Section 201 (b) of the US Copyright Act mentions, with regard to so called “Works made for hire”: “In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.”[43]

 

The “work made for hire”[44] doctrine is an important exception to the general rule that the creator of a work owns the copyright in his or her work. For works for hire, the hiring party will be considered the author, not the original creator of the work. In other words, the “work made for hire” doctrine is a legal fiction, whereby the employer or the commissioning party is deemed the legal author of the work. The employer or commissioning party will thus enjoy the benefits of authorship, including the right to grant permission for use of the work and the right to sue for copyright infringement.

 

The work for hire doctrine plays in two situations: (1) works made by employees in the scope of their employment; and (2) works created by independent contractors upon request (for instance via a freelance contract).

 

For the first category (i.e., employees), no special written agreement is required, although many employment contracts contain a statement acknowledging that all works created in the scope of employment are considered works for hire.[45]

 

For the second category (e.g., freelancers), three conditions must be satisfied: First, the work must be specially commissioned; second, the hiring party and creator must both sign a special agreement stating that the work will be a work-for-hire, before commencement of the work; and, third, the work must fall within one of nine categories of works listed in the Copyright Act.

 

Thus, in general, for works created by employees in the scope of their employment (for instance journalists employed by a publisher), the employer will be considered the author and copyright owner. The rights of the employer in works created by his employees arise automatically from authorship, not from a grant by the employees.[46]

 

 

5. US copyright: exclusions, limitations, and exceptions

 

 

Some items are excluded from copyright. For instance, facts and ideas. Section 102 (b) of the US Copyright Act mentions: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”[47] The exclusion from copyright for these items is directly related to their lack of originality and/or fixation.[48]

 

Other works are protected by copyright but may be used for certain limited purposes without the copyright owner’s permission based upon an exception to copyright protection (e.g. under the “fair use” doctrine). Other exceptions and limitations to copyright include: independent creation; use of public domain material; authorized use (by express or implied consent); “de minimis” rule; and the statute of limitations (generally, three years from the moment the infringement could reasonably have been detected).[49]  The US Copyright Act does not contain a categorical exception for “private uses”, though such uses may be excused under other provisions of the Act, such as the “fair use” provision of Section 107.[50]

 

Together, these limitations and exceptions provide subsequent authors the necessary breathing space to use prior authors’ works without having to ask for permission or pay license fees.

 

 

6. No copyright for facts and ideas

 

a. The idea / fact – expression dichotomy

 

 

Copyright protects a particular form of expression, not the ideas or facts expressed. Ideas and facts are part of the public domain and can be freely used by other authors who can build on them. Only the particular expression of an idea or fact may be protected, not the idea or fact on itself. This is in essence what is meant by the idea – expression or fact – expression dichotomy. For example, a newspaper will have no copyright entitlements on the news that it reports, but it may have copyright on the particular manner in which the news is reported.

 

In Feist v. Rural Telephone Service, the Supreme Court called the non-protectability of facts and ideas the “most fundamental axiom of copyright law”.[51] The dichotomy between (non-protectable) ideas and facts on the one hand, and (protectable) expressions on the other hand, is said to directly accommodate freedom of speech rights. In Eldred v. Ashcroft, the Supreme Court stated that the dichotomy “strikes a definitional balance between the First Amendment and copyright law by permitting free communication of facts while still protecting an author’s expression”.[52] Although originally formulated by case law,[53] the dichotomy is now codified in section 102 (b) of the Copyright Act (see above).

 

A consequence of this dichotomy is that fact-based works such as news reports, histories, biographies and scientific or technical works will generally receive less protection from copyright law than works such as novels, films, plays, paintings, etc. The rationale behind this is that for the former type of works, there are less ways of expressing the idea, and for the latter type of works, there are more potential ways to express one’s ideas. In other words, highly creative works are more likely to be protected by copyright law than highly factual works. This does not mean that factual works are automatically precluded altogether from copyright. Indeed, the particular way in which an author expresses his or her ideas, concepts, facts or theories may well result in copyright protection.

 

b. US Supreme Court on the idea-expression dichotomy

 

 i. US Supreme Court: Baker v. Selden

 

The US Supreme Court case of Baker v. Selden[54] is an early case of approaching the idea – expression dichotomy in US copyright law: Selden had published a book, explaining a new system of bookkeeping. Selden’s book contained mostly bookkeeping forms, accompanied with limited explanation of how to use his system. Baker also published a book on accounting, in which he employed a system of bookkeeping that was similar to the one described by Selden (Baker did not copy Selden’s text or presentation, he only published his idea, method or system of bookkeeping similar to the one developed by Selden). The Supreme Court held that “copyright of a book on bookkeeping cannot secure the exclusive right to make, sell and use account books prepared upon the plan set forth in such a book” (the Supreme Court added that patent law might have been more appropriate for Selden’s pretentions than copyright law). The system devised by Selden was found to be merely an idea and therefore not open to copyright protection. The Supreme Court decision in Baker v. Selden is now a central point of reference for courts and legal scholars to point out that ideas and facts cannot be copyrighted, and that the publication of a work does not entitle one to protection of the subject matter described in the work.

 

ii. US Supreme Court: Feist v. Rural Telephone Service

 

In Feist v. Rural Telephone Service,[55] the Supreme Court addressed the idea/fact – expression dichotomy first in general terms and subsequently as applied to fact compilations. The Supreme Court stated that: “copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work.”[56] The Supreme Court added: “This principle, known as the idea/expression or fact/expression dichotomy, applies to all works of authorship.”[57]  As applied to factual compilations, the Supreme Court held that, in the absence of an original written expression, “only the compiler’s selection and arrangement may be protected; the raw facts may be copied at will”.[58]

 

Rural Telephone was a telephone service provider in Kansas that was by law required to provide a free telephone directory to its customers. Feist was a company specialized in the publication of telephone directories from areas larger than the one covered by Rural Telephone’s directory. Rural Telephone refused to license its local telephone directory to Feist, whereupon Feist copied various entries from Rural Telephone’s listing in its own directory, without permission.[59]

 

The Supreme Court rejected the so-called “sweat of the brow” doctrine and held that the investment of time, effort or energy is not a proper criterion for granting copyright protection to a work. The Supreme Court in Feist v. Rural Telephone Service held that an author’s selection, coordination and arrangement of non-protectable data such as facts in a compilation might merit copyright protection if the compilation is sufficiently original (i.e., independently created and containing a minimum degree of creativity). However, based upon the specific facts of the case, the Supreme Court found Rural Telephone’s arrangement of names and telephone numbers lacking sufficient creativity and thus not warranting copyright protection. In Feist v. Rural Telephone Service, the Supreme Court called the doctrine that no author may copyright his or her ideas or the facts that he or she narrates the “most fundamental axiom of copyright law”.[60]

 

c. Critique on the idea/fact – expression dichotomy

 

 

In practice, it is not always possible to distinguish between a work’s underlying ideas and the expression of these ideas.[61]

 

William Patry in particular has criticized the dichotomy between unprotected ideas/facts and protected expression. According to Patry, the image of a dichotomy is a false image, since a dichotomy supposes the existence of two mutually exclusive concepts (either something is “A” or it is “B”), which is not useful in an analysis of whether a work is copyrightable or not. Patry writes that it would be more useful – and more correct – to describe the tension between idea (or fact) and expression as a continuum, rather than a dichotomy. At one end of the spectrum, there may be a total lack of protection because there is a mere idea or fact and no original expression. At the other end of the spectrum, copyright may apply because of the original and fixed character of a particular expression. In between, there are mixed situations with varying degrees of originality where the court has to figure out whether the degree of originality is sufficient enough for copyright protection. These “in-between cases” are probably the most frequent (and the most problematic).[62]

 

This criticism seems justified, but it does not provide an answer as to precisely where on the continuum copyright protection begins or stops.

This is problematic for works such as visual works (photographs, film images, etc.) and music, less so for works based on written words.[63] The reason is that an “idea” of a visual or musical work is less easy to grasp than the idea expressed in a work consisting of written words. In the latter case, it will be relatively easy to dissect the underlying (unprotectable) idea from the specific (protectable) expression. In the former case, the idea and the expression of the idea are more tightly connected or at least less easily distinguishable from one another by the public (or by the artist himself/herself).

As the District Court in Mannion v. Coors Brewing Co. noted, observers may have different interpretations of a work of visual art, and the particular expression used by an artist of a visual work (such as a photograph) is often the very idea that constitutes the work of art, making that the work “could just as easily be labeled ‘idea’ as ‘expression’.”[64] The court concluded: “I think little is gained by attempting to distinguish an unprotectible “idea” from its protectible “expression” in a photograph or other work of visual art”;[65] and: “In the context of photography, the idea/expression distinction is not useful or relevant.”[66] The question becomes then rather to verify at what point the similarities between two photographs become sufficiently general that there is no infringement even though actual copying has occurred. But, as the court clarifies, this question is in fact the same question, though phrased in the opposite way, as the question that needs to be addressed in all infringement cases, namely whether two works are substantially similar with respect to their protected elements. In other words, it does not make sense to say that a photograph is substantially similar to another photograph in the creation and interpretation of its subject matter, but somehow not infringing because of a shared idea. In the same sense, if two photographs are not substantially similar in the creation and interpretation of their subject matter, the distinction between idea and expression is not relevant, since there is no infringement.[67]

Some commentators state that, ultimately, courts are more often guided by their intuition than by a rigorous analysis of the distinction between idea/fact and expression.[68] In practice, courts do not try to establish the precise borders between ideas/facts and expression in a particular work (given that these borders are vague and elusive).[69] Judges rather compare the original work and the allegedly infringing work and assess whether the copying falls on the idea/fact side or on the expression side of the continuum.[70] In that sense, the idea/fact v. expression tension is probably more relevant at the infringement stage of the analysis than at the copyrightability stage.[71] However, this is only true if a court has first established that the original work is sufficiently original as to warrant copyright protection in the first place. This is where the so called “merger doctrine” comes into play.

 

d. The merger doctrine under US copyright law

 

 

One of the ways in which courts and legal commentators have tried to deal with the distinction between ideas and facts on the one hand, and protected expression on the other hand, is through the formulation of the so called “merger doctrine”. This doctrine basically states that in some cases, the idea or fact and the possible expressions of the idea or fact are believed to “merge”, in the sense that there is only one or at least very few ways to express a particular idea or fact.

 

In such cases, if the particular expression would be copyrighted, then the owner of the copyright would in practice have a monopoly on the idea or fact itself.[72] Copyright law and freedom of speech interests do not allow such monopoly of facts or ideas. As the First Circuit Appellate Court formulated it: “We cannot recognize copyright as a game of chess in which the public can be checkmated.”[73]

 

In such cases, the ideas or facts are supposed to have merged with the expression, excluding copyright protection for both the expression and the underlying ideas and facts. However, there is some controversy about the exact scope of the merger doctrine, i.e. does the merger doctrine deny copyright protection to the original work,[74] or does it merely provide a defense against copyright infringement.[75]

 

The merger doctrine is in particular used with regard to functional works, such as to reject or limit copyright protection in maps,[76] recipes,[77] product descriptions,[78] laws,[79] legal forms,[80] and computer software (if there are only few ways to design a program to implement a specific function)[81] and factual works such as scientific works, biographies and histories.

 

I am personally not convinced that it is necessary to use the merger doctrine as a legal instrument, where in fact the real criterion for copyright protection is “originality.” Situations where an idea can only be expressed in one way or very few different ways, to the effect that the idea and its expression become inseparably “merged” into one another, probably simply point to a lack of available choices, and thus a lack of originality in the expression.[82] If a work is not sufficiently original, no copyright should be accorded to it in the first place, and there is no need for a theoretical fiction about the idea “merging” with the expression to deny copyright protection.

 

e. Copyright for compilations of facts or data

 

 

A particular arrangement of facts or concepts may be protected as a compilation copyright. Section 101 of the US Copyright Act defines a “compilation” as follows: “A ‘compilation’ is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term ‘compilation’ includes collective works.”

 

Copyright protection for the compilation will be based on the original selection, coordination or arrangement of the material, not on the copyrightable status of the material itself (the compiled data are often not protected separately). Key is that the compilation should satisfy the “originality” requirement. This means that the collector should make the choices of selection independently (no mere copying) and with a minimum degree of creativity.[83]

 

Examples of compilations are fact compilations (i.e., the selection and arrangement of non-protected public domain material in a single work), collective works (i.e., the selection and arrangement of copyrighted works in a single work),[84] and electronic databases.[85]

 

The first category (fact compilations) may include databases, indexes, directories and maps. The second category (collective works) may include newspapers, magazines and encyclopedias. For the third category (electronic databases), it is important to distinguish electronic databases (copyright extends to the particular selection, coordination and arrangement of data) from computer programs (copyright protection extends to the source or object code).

 

The protection of compilations will depend on the amount of skill and discretion used in selecting, coordinating and arranging the data. Purely functional arrangements (such as alphabetical or numerical arrangements) that follow a particular sequence are generally too mechanical to be copyrightable.[86] Some creative research or interpretation of the raw data is necessary to qualify as a compilation copyright.

 

In Feist Publications v. Rural Telephone Service, the US Supreme Court judged that copyright in a compilation does not extend to protection of the facts assembled in the compilation. The Supreme Court also rejected the so-called “sweat of the brow” theory of copyright protection. Under this theory, courts accorded copyright protection to those who invested a significant amount of time and effort in the creation of a work (including copyright to fact compilations, based on the compiler’s laborious efforts to collect and arrange these facts).[87]

 

 

7. US copyright and the “de minimis” rule

 

 

It is commonly accepted that certain minimal or trivial uses of copyrighted material are not significant or damaging enough for a court to explore copyright infringement. This principle is expressed by the Latin phrase “De minimis non curat lex” (the law does not concern itself with trifles).[88] For instance, if only tiny portions of a work have been copied, a copyright infringement action might be rejected on the basis of the “de minimis” rule.

 

In fact, a more sound rationale of the de minimis rule is that these works often lack sufficient originality and are thus not protected by copyright in the first place.[89] Typical cases of de minimis works that are not covered by copyright are: individual words, titles, names (including pen names), slogans, short phrases and internet URLs.[90] Courts will generally withhold copyright protection from such works, and the US Copyright Office will often refuse copyright registration for them.[91] These works lack copyright protection, but they may well be protected under other legal regimes, such as trademark law or unfair competition laws.[92]

 

For a specific de minimis case, see for example Murray Hill Publications, Inc. v. ABC Communications, Inc., where the line “Good morning, Detroit. This is J.P. on JR in the A.M. Have a swell day” was not considered fit for copyright protection. The Circuit Court found that this line was “nothing more than a short phrase or slogan, dictated to some degree by the functional considerations inherent in conveying the desired information about McCarthy’s morning show, i.e., whose morning show, what radio station, and what time.”[93]

 

Goldstein writes: “The shorter a phrase is, the less likely it is to be original and the more likely it is to constitute an idea rather than an expression. Also, the shorter the phrase, the less likely it is to have acceptable substitutes, thus barring protection under the merger doctrine.”[94]

 

This is no doubt true in general terms, but there are also situations where a short phrase or a short expression may in fact testify to a high degree of originality – for instance, in relation to certain newspaper titles[95] or certain artistic expressions such as haikus.

 

Titles of works are often denied copyright protection, either because they are too short to be original or because they merely describe the work and thus, again, are not sufficiently original.[96]  However, it seems that some titles may be sufficiently original to enjoy copyright protection. This will depend on the specific words and expressions used in the title. In general terms, the less descriptive a title is (and probably also the more words it counts), the more likely it will be original and thus protectable.

 

 

8. Copyright for speeches and performances

 

 

Speeches and performances may be protected as derivative works[97] if there is some form of fixation, for instance because the speech is recorded with the authority of the author or is based on an original manuscript or detailed notes (in contrast to spontaneous, unprepared speeches).

 

Spontaneous speeches or improvisational performances that have not been recorded with the authority of the authors are generally not protected by US federal copyright. This is likely also the case with speeches recorded by members of the public without the speaker’s permission.[98]

 

 

9. Copyright and government works

 

 

The following three types of government works are in the public domain and may be used without permission: (1) United States government works created by federal government officers or employees as part of their official duties;[99] (2) certain works commissioned by the United States government as “works for hire”[100] (though not all works prepared for or cited in government reports are automatically in the public domain); and (3) certain works of state and local governments.[101]

 

In many instances, use of these works is allowed under the fair use doctrine. In general terms, federal and state laws, judicial opinions and administrative rules may be safely used without obtaining a prior permission or mentioning a reference to the original source.[102]

 

 

10. US copyright: procedural aspects

 

a. Prima facie case of infringement

 

 

The plaintiff in a copyright infringement case will bear the burden of establishing a “prima facie” case of infringement. This means that the plaintiff will have to bring sufficient evidence first, that the works were duly protected by copyright; second, that he or she owns the copyright in the work; and third, that the defendant copied (copying not being confined to literal copying. Material paraphrasing may also constitute copying) a material amount of the expression without authorization of the copyright owner.[103] The materiality of the copying can be assessed in both quantitative and qualitative terms.[104]

 

A certificate of registration of the US Copyright Office within five years of first publication or at any time for unpublished works constitutes a prima facie evidence of the validity of the copyright (including that the work is original) and of the facts stated in the certificate (for instance, that the author mentioned is the copyright owner and that the work was published on the date and place mentioned in the certificate).[105]

 

A valid certificate means that the burden of proof will shift to the defendant if the defendant questions the copyrightability of the work. The defendant can rebut the presumption by introducing evidence casting doubt on the work’s copyrightability. The plaintiff will have then to introduce new evidence, since the ultimate burden of proof regarding a work’s copyrightability is with the plaintiff.[106]

 

b. Intent or knowledge are irrelevant for copyright infringement

 

 

Copyright is considered a strict liability tort under US law.[107] This means that a plaintiff in a copyright infringement case does not have to prove that the infringer had knowledge or intent to infringe (i.e., not at the prima facie stage and not to prove actual copyright infringement).

 

In the same sense, ignorance (or innocent intent) is not bliss under copyright law. A defendant in a copyright infringement case cannot rely on a lack of knowledge that he or she was infringing or on a lack of intent to infringe a copyright. However, these elements may come into play in establishing secondary liability or in the award of statutory damages.

 

c. Remedies and damages in US copyright infringement cases

 

 

Here are some general principles for copyright infringement case in the United States:[108]

 

Under Section 502(a) of the US Copyright Act, a court may grant a temporary or final injunction on such terms as the court may deem reasonable to prevent or restrain infringement of a copyright.[109]

 

For a preliminary injunction, the plaintiff must establish a prima facie case of copyright infringement, a probability or likelihood of success on the merits, and a balance of equities tipping determinately in favor of the plaintiff (showing greater harm to the plaintiff in case the preliminary injunction is denied than to the defendant in case the injunction is granted).[110]

 

After a trial on the merits, a successful plaintiff may be entitled to a permanent injunction if there is a threat of continuing copyright infringement,[111] and also to recovery of damages and possibly attorneys’ fees.[112]

 

As concerns damages, a plaintiff may opt to claim either actual damages (plus the defendant’s profits if they are attributable to the infringement and not yet calculated in plaintiff’s actual damages) or statutory damages in lieu of actual damages.

 

Actual damages will include the plaintiff’s lost profits as a result of the infringement, the profits made by the infringer as a result of the infringement and the decrease in the value of the copyright.[113] If a precise calculation proves impossible (which will often be the case), the court will make a reasonable estimate of the actual damages. A plaintiff will generally elect to recover statutory damages only in cases where no or only minimal actual damages are proven or when the profits of the defendant are minimal or difficult to prove.[114]

 

In case of statutory damages, the courts have discretion in awarding such damages (factors taken into account are generally the profits made by the infringer, the losses suffered by the copyright owner, the deterrent effect of the amount of damages on the infringer and third parties, and whether the infringement was willful).[115] Importantly, recovery of statutory damages and attorneys’ fees is only possible if the copyright has been officially registered prior to the infringement.

 

 

Author: Bart Van Besien

(this article was written in 2014, when I was a visiting scholar at UC Berkeley)

[1] A “work of visual art is defined in Section 101 of the US Copyright Act as “(1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or (2) a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.” This does not include: “(A)(i) any poster, map, globe, chart, technical drawing, diagram, model, applied art, motion picture or other audiovisual work, book, magazine, newspaper, periodical, data base, electronic information service, electronic publication, or similar publication; (ii) any merchandising item or advertising, promotional, descriptive, covering, or packaging material or container; (iii) any portion or part of any item described in clause (i) or (ii); (B) any work made for hire; or (C) any work not subject to copyright protection under this title.” (Section 101 US Copyright Act).

[2] Some authors state that the essence of copyright is the right to exclusive publication and that the essential function of copyright is to provide protection to publishers (more so than to authors; hence a certain confusion about copyright: in the statutes, copyright is formulated as providing rights to the authors, but in practice copyright functions as a publishers’ right (see Patterson, Lyman Ray, Copyright and the Public Interest, in Allen Kent and Harold Lancour (eds.), Copyright: Current Viewpoints on History, Laws, Legislation, New York & London, R.R. Bowker Company, 1972, 44).

[3] Article I, Section 8, Clause 8 of the United States Constitution.

[4] This is confirmed by the US Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. at 349 (1991): “The primary objective of copyright is not to reward the labor of authors, but “[t]o promote the Progress of Science and useful Arts.” (Reference to US Constitution, Art. I, § 8, cl. 8 omitted).

[5] Section 102 (a) of the US copyright act mentions that copyright subsists in “original works of authorship”, without defining this concept.

[6] “Fixation” is defined in Section 101 of the Copyright Act (see further below).

[7] See Lloyd J. Jassin and Steven C. Schechter, The Copyright Permission and Libel Handbook: A Step-by-Step Guide for Writers, Editors, and Publishers, New York, John Wiley & Sons, 1998, 56.

[8] Section 102 (a) of the US Copyright Act mentions the following eligible categories: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.

[9] See William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 3:15, p. 3-44.

[10] “Literary works” are defined as “works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied.” (Section 101 of the US Copyright Act).

[11] Section 101 of the US Copyright Act.

[12] Section 101 of the US Copyright Act defines “copies” as follows: ““Copies” are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “copies” includes the material object, other than a phonorecord, in which the work is first fixed.”

[13] Section 101 of the US Copyright Act defines “phonorecords” as follows: ““Phonorecords” are material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “phonorecords” includes the material object in which the sounds are first fixed.”

[14] Section 102 (a) of the US Copyright Act.

[15] Section 101 of the US Copyright Act.

[16] Stephen Fishman, Copyright and the Public Domain, New York, Law Journal Press, 2013, § 2.02(1), 2-7.

[17] Section 102 (a) of the US Copyright Act.

[18] Section 102 (a) of the US Copyright Act refers to “original” works of authorship.

[19] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 345 (1991). Citation to Harper & Row, 547-549 omitted.

[20] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 345 (1991).

[21] P. Goldstein, Goldstein on Copyright, Wolters Kluwer Law & Business, New York, 2013, § 2.2.1, p. 2:13.

[22] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, at 345 (1991).

[23] See case law cited by F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 3:39, p. 3-104.

[24] For a general discussion on the notion of “originality” in copyright law, see Deborah Tussey, Complex Copyright: Mapping the Information Ecosystem, Farnham (UK) and Burlington (USA), Ashgate, 2012, 102-104.

[25] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 345 (1991). Omitted citation to M. Nimmer & D. Nimmer, Copyright § 1.08 [C] [1].

[26] Section 401 (d) of the US Copyright Act. The last sentence of section 504 (c)(2) refers to certain specific cases where an infringer believed and had reasonable grounds for believing that his or her use of the copyrighted work was a “fair use” (such as where the infringer was a nonprofit educational institution, library or archive (or an employee or agent of such organization) or a public broadcasting entity).

[27] Section 408 of the US Copyright Act.

[28] Section 411 (a) of the US Copyright Act. Section 106 (A) refers to certain rights of attribution and integrity of the authors of a “work of visual art”.

[29] P. Goldstein, Goldstein on Copyright, Wolters Kluwer Law & Business, New York, 2013, § 3.11, p. 3:128.

[30] P. Goldstein, Goldstein on Copyright, Wolters Kluwer Law & Business, New York, 2013, § 3.11, p. 3:129.

[31] Patricia Aufderheide and Peter Jaszi, Reclaiming Fair Use, University of Chicago Press, Chicago and London, 2011, 32.

[32] Section 410(c) of the US Copyright Act.

[33] Section 201 (a) of the US Copyright Act.

[34] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 345 (1991).

[35] P. Goldstein, Goldstein on Copyright, Wolters Kluwer Law & Business, New York, 2013, § 2.2.2, p. 2:25.

[36] US Copyright Act, Section 101.

[37] US Copyright Act, Section 201 (a).

[38] See Childress v. Taylor, 945 F.2d 500, at 507 (2d Cir. 1991): “What distinguishes the writer-editor relationship and the writer-researcher relationship from the true joint author relationship is the lack of intent of both participants in the venture to regard themselves as joint authors.”

[39] US Copyright Act, Section 101.

[40] See US Copyright Act, Section 201 (c): “Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.” Examples in case law include Williams & Wilkins Co. v. US, 487 F.2d, 1354, at 1353 (Ct.Cl. 1973) and American Geophysical Union v. Texaco, Inc., 60 F.3d 913, at 926 (2d Cir. 1994).

[41] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 345 (1991).

[42] William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 5:14, p. 5-48 and 5-49.

[43] US Copyright Act, Section 201 (b).

[44] Section 101 of the US Copyright Act defines “works made for hire” as follows: “A “work made for hire” is (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 a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.”

[45] See J. Dianne Brinson and Mark F. Radcliffe, Multimedia Law and Business Handbook, Menlo Park, The Roberts Group – Ladera Press, 1996, 66; and William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 5:47, p. 5-110.

[46] This was already described by Harry Henn in 1955: see Henn, Harry G., “’Magazine Rights’ – A Division of Indivisible Copyright”, Cornell L. Q., 1955, Vol. 40, 421.

[47] Section 102 (b) of the US Copyright Act.

[48] Rather than because they are not covered by the list of eligible categories of Section 102 (a).

[49] Lloyd J. Jassin and Steven C. Schechter, The Copyright Permission and Libel Handbook: A Step-by-Step Guide for Writers, Editors, and Publishers, New York, John Wiley & Sons, 1998, 24.

[50] P. Goldstein, Goldstein on Copyright, Wolters Kluwer Law & Business, New York, 2013, § 7.0.4, p. 7:8.5

[51] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. at 344-345 (1991).

[52] Eldred v. Ashcroft, 537 U.S. 186, 190 (2003).

[53] See the US Supreme Court decision in Baker v. Selden, 101 U.S. 99 (1879).

[54] Baker v. Selden, 101 U.S. 99 (1879).

[55] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. (1991).

[56] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499, at 349-350 U.S. (1991), with reference to the Supreme Court’s earlier decision in Harper & Row v. Nation Enterprises, 471 U.S., at 556-557 (1985).

[57] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499, at 350 U.S. (1991).

[58] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499, at 350 U.S. (1991).

[59] In case one would wonder how Rural Telephone could prove that Feist had copied its directory: Rural Telephone had been so smart as to include phony numbers in its directory for that purpose.

[60] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. at 344-345 (1991).

[61] Many commentators have voiced criticism on the dichotomy between unprotected ideas and facts on the one hand and protected expression on the other hand. Among them are the following authors: Libott, R.Y., “Round the Prickly Pear: The Idea-Expression Fallacy in a Mass Communications World”, ASCAP Copyright Law Symposium, Vol. 16, Columbia University Press, New York and London, 1968, 30-80.

[62] William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 4:36, p. 4-120 – 4-126.

[63] See for instance, the Second Circuit appellate court in the case of Peter Pan Fabrics v. Martin Weiner, where Judge Hand mentioned: “Obviously, no principle can be stated as to when an imitator has gone beyond copying the ‘idea,’ and has borrowed its ‘expression.’ Decisions must therefore inevitably be ad hoc. In the case of designs, which are addressed to the aesthetic sensibilities of an observer, the test is, if possible, even more intangible.” (Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, at 489 (2d Cir. 1960)); see also, the Third Circuit appellate court in Franklin Mint Corp. v. National Wildlife Art Exchange: “Troublesome, too, is the fact that the same general principles are applied in claims involving plays, novels, sculpture, maps, directories of information, musical compositions, as well as artistic paintings. Isolating the idea from the expression and determining the extent of copying required for unlawful appropriation necessarily depend to some degree on whether the subject matter is words or symbols written on paper, or paint brushed onto canvas.” (Franklin Mint Corp. v. National Wildlife Art Exchange, Inc., 575 F.2d 62, at 65 (3d Cir.1978)).

[64] Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444, at 458 (S.D.N.Y. 2005).

[65] Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444, at 459 (S.D.N.Y. 2005).

[66] Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444, at 461 (S.D.N.Y. 2005).

[67] Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444, at 461 (S.D.N.Y. 2005).

[68] See for example, Durham, Alan, “Speaking of the World: Fact, Opinion and the Originality Standard of Copyright”, Ariz. St. L.J., 2001, Vol. 33, 799.

[69] See for example, Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, at 912 (2d Cir.1980), characterizing the idea/expression distinction as “an imprecise tool”); Williams v. Crichton, 84 F.3d 581, at 587-588 (2d Cir.1996), stating: “The distinction between an idea and its expression is an elusive one”; and Fournier v. Erickson, 202 F.Supp.2d 290, at 295 (S.D.N.Y.2002), stating: “the distinction between the concept and the expression of a concept is a difficult one”.

[70] Stephen Fishman, Copyright and the Public Domain, New York, Law Journal Press, 2013, § 7.02(2), 7-12.

[71] William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 4:36, p. 4-120 – 4-125 (Patry also notes that the idea – expression dichotomy is seldom the basis for excluding copyright in an entire work (see examples of such few cases cited by Patry at: William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 4:45, p. 4-139)).  See also P. Goldstein, Goldstein on Copyright, Wolters Kluwer Law & Business, New York, 2013, § 2.3, p. 2:28 (Goldstein notes that courts most commonly apply the idea – expression distinction in the context of infringement cases and that, as a result, courts merely decide whether the taking falls on the side of idea or expression without drawing a precise line between both concepts).

[72] See Stephen Fishman, Copyright and the Public Domain, New York, Law Journal Press, 2013, § 7.05(1), 7-42.

[73] Morrissey v. Procter & Gamble Co., 379 F.2d 675, at 678-679 (1st Cir. 1967)
.

[74] In that sense, William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 4:46, p. 4-141.

[75] In that sense, Kregos v. Associated Press, 937 F.2d 700, at 705 (2d Cir.1991); Reed–Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, at 914 (7th Cir.1996); and Ets-Hokin v. Skyy Spirits, Inc. 323 F.3d 763, at 764 (9^th Cir. 2003).

[76] For instance, Kern River Gas Transmission Co. v. Coastal Corp., 899 F.2d 1458 (5th Cir. 1990).

[77] For instance, Publications Int’l v. Meredith Corp., 88 F.3d 473 (7th Cir. 1996).

[78] For instance, MyWebGrocer, LLC v. Hometown Info, Inc., 375 F.3d 190 (2d Cir. Vt. 2004).

[79] For instance, Veeck v. S. Bldg. Code Cong. Int’l, 293 F.3d 791 (5th Cir. 2002).

[80] For instance, Continental Casualty Co. v. Beardsley, 253 F.2d 702, (2d Cir. 1958).

[81] For instance, Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832 (9th Cir. 1992).

[82] In the same sense, William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 4:46, p. 4-146.

[83] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S., at 348 (1991).

[84] Section 101 of the US Copyright Act defines a “collective work” as follows: “A ‘collective work’ is a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.” To use parts of an original fact collection or collective work, you will often need to apply for permission from the author of each separate contribution.

[85] William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 3:69, p. 3-221.

[86] For instance, in Feist v. Rural Telephone Service, the Supreme Court found Rural Telephone’s arrangement of names and telephone numbers in alphabetical order not to contain the necessary modicum of creativity, and therefore not to be worthy of copyright protection (Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. (1991)).

[87] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S., at 353 (1991).

[88] To avoid misunderstanding: a “trifle” in the sense of an issue of trivial importance, not in the sense of a dessert made from sponge cake, fruit, custard and whipped cream.

[89] In the same sense, William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 4:2, p. 4-12: “The touchstone of all inquiry is originality, not length, complexity, or time spent creating the work.” Contra: P. Goldstein, Goldstein on Copyright, Wolters Kluwer Law & Business, New York, 2013, § 7.0.2, p. 7:10: Goldstein mentions that some courts have merged the question whether a use is ‘de minimis’ with the question whether the original work was protected. Goldstein deplores this merger because it may significantly narrow the role of the ‘de minimis’ rule.

[90] Stephen Fishman, Copyright and the Public Domain, New York, Law Journal Press, 2013, § 2.08, 2-42.

[91] See the US Copyright Office regulations prohibiting registration for the following de minimis works: “The following are examples of works not subject to copyright and applications for registration of such works cannot be entertained: (a) Words and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere listing of ingredients or contents; (…)” (Title 37, §202.1(a) of the Electronic Code of Federal Regulations (e-C.F.R.), prepared by the National Archives and Records Administration’s Office of the Federal Register (OFR) and the Government Printing Office). According to Patry, the practice of the Copyright Office of refusing registration to words and short phrases dates back to the year 1899 (William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 4:2, p. 4-7).

[92] Neil Boorstyn, Copyright Law, San Francisco, The Lawyers Co-operative Publishing Company, 1981, § 2:25, 78.

[93] Murray Hill Publications, Inc. v. ABC Communications, Inc., 264 F.3d 622, at 633 (6th Cir. 2001).

[94] P. Goldstein, Goldstein on Copyright, Wolters Kluwer Law & Business, New York, 2013, § 2.7.3, p. 2:96.

[95] If they are sufficiently original. This will not be the case if the title has a highly descriptive, factual character.

[96] See case law quoted by P. Goldstein, Goldstein on Copyright, Wolters Kluwer Law & Business, New York, 2013, § 2.7.3, p. 2:97. To be noted that the cases quoted by Goldstein all concerned titles that contained no more than a few words.

[97] Under Section 101 of the US Copyright Act, a “derivative work” is “a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a ‘derivative work’.”

[98] Lloyd J. Jassin and Steven C. Schechter, The Copyright Permission and Libel Handbook: A Step-by-Step Guide for Writers, Editors, and Publishers, New York, John Wiley & Sons, 1998, 12.

[99] Section 105 of the US Copyright Act: “Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.”

[100] The following works are considered “works for hire”: “(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 a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” (Section 101 of the US Copyright Act).

[101] Section 105 does not cover works of state and local governments. In other words, state and local authorities may claim copyright in their works (and they often do, see Gellman, Robert, “Twin Evils: Government Copyright and Copyright-Like Controls over Government Information”, Syracuse L. Rev., 1995, Vol. 45, 999, at 1000).

[102] See Lloyd J. Jassin and Steven C. Schechter, The Copyright Permission and Libel Handbook: A Step-by-Step Guide for Writers, Editors, and Publishers, New York, John Wiley & Sons, 1998, 57; and William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 4:81, p. 4-225.

[103] See William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 9:3, p. 9-18.

[104] William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 9:114, p. 9-303.

[105] US Copyright Act § 410(c).

[106] William F. Patry, Patry on Copyright, Thomson Reuters, 2013, § 9:11, p. 9-28 – 9-29.

[107] See the US Supreme Court decision in Buck v. Jewell-La Salle Realty Co., 283 U.S. 191, at 198, 51 S. Ct. 410, 411, 75 L. Ed. 971 (1931): “Intention to infringe is not essential under the act.”

[108] For more information on injunctive relief in copyright infringement cases, see Terence P. Ross, Intellectual Property Law: Damages and Remedies, New York, Law Journal Press, 2013, § 11.03, 11-24 – 11-37.

[109] Section 502(a) of the US Copyright Act: “Any court having jurisdiction of a civil action arising under this title may, subject to the provisions of section 1498 of title 28, grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.”

[110] Neil Boorstyn, Boorstyn on Copyright, St. Paul MN, West Group, 2000, § 13.08(2), 13-46.

[111] Generally not if the defendant has stopped his or her infringement and shows no inclination towards further infringements.

[112] See Section 505 of the US Copyright Act for the award of attorneys’ fees to the prevailing party in a copyright infringement suit. The award of attorneys’ fees will depend on the degree of success of plaintiff on the merits (only partial success in establishing copyright infringement or in establishing damages may reduce the amount awarded).

[113] Neil Boorstyn, Boorstyn on Copyright, St. Paul MN, West Group, 2000, § 13.02, 13-2.

[114] Neil Boorstyn, Boorstyn on Copyright, St. Paul MN, West Group, 2000, § 13.05, 13-16.

[115] See Section 504 (c) of the US Copyright Act for the minimum and maximum amounts of statutory damages.