\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0The Often-Overlooked Form of IP Protection
\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0When it comes to identifying intellectual property protection, most clients quickly can name patents, trademarks and trade secrets. However, an important, often ignored, area of intellectual property protection is copyright. Copyright protection is quite extensive, and the implications for infringing (copying) copyrighted material can potentially be devastating to a client's business. For example, your client's use of marketing materials or material posted on its website can create infringement concerns. Further, if your client broadcasts music or television programs to an audience, it could be subject to enforcement actions. In addition, copyright ownership issues come into play with respect to materials created by employees or independent contractors.
\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0Copyright protection exists at the time a work is created in a fixed form, e.g., written, recorded on an audio medium, videotaped, etc., and protects the manifestation or physical expression of the idea, not the idea itself. After creation of a work, your client should consider registering it with the U.S. Copyright Office. While registration is not required, the benefits of registering a copyright are very favorable. As an example, registration within five years of publication of the work will establish prima facie evidence of the validity of the copyright and the facts in the certification. In addition, registration within three months after publication (i.e., the date on which copies of the work are first distributed to the public, or prior to infringement of the work) makes available statutory damages and attorneys' fees. Statutory damages may total as high as $150,000 per copyrighted work in cases of willful infringement.1 Additionally, your client can record the copyright registration with the U.S. Customs Service for protection against importation of infringing copies. Importantly, a finding of copyright infringement does not depend on the intent or the state of mind of the infringer. Thus, "innocent" infringement is still infringement.2
\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0Two recent cases illustrate the broad international and domestic impacts of the Copyright Act. In Kirtsaeng v. John Wiley & Sons, Inc.,3 the U.S. Supreme Court arguably rewrote the law of copyright exhaustion. A recent Fourth Circuit case, Universal Furniture International, Inc. v. Frankel,4 imposed personal liability for copyright infringement on the owner of the infringing company, after the company had filed bankruptcy to escape the judgment.
\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0In Kirtsaeng, John Wiley & Sons (Wiley), a textbook publisher, attempted to prevent lawfully made copies of textbooks made outside the United States from being imported and sold domestically. Wiley used a geographic pricing structure wherein textbooks were priced higher in the United States than in other countries. The textbooks contained a legend stating they were only authorized for sale in specific territories and could not be exported from those territories. Kirtsaeng, a Thai citizen attending school in the United States, had family and friends purchase copies of textbooks in Thailand and ship them to him in the U.S. Kirtsaeng subsequently sold the books for a profit. Wiley sued Kirtsaeng for copyright infringement, claiming the unauthorized importation of the Thai textbooks infringed its exclusive right to distribute the works.
\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0\xA0The U.S. Supreme Court examined 17U.S.C. § 109(a) of the...