Copyright Prosecution

• Author: David R. Gerk - John M. Fleming
• Pages: 327-335

P A R T 2

Copyright Prosecution

327

To promote public education and creative exchange, [copyright

law] invites audiences and subsequent authors to use existing works

in every conceivable manner that falls outside the province of the

copyright owner’s exclusive rights. Copyright law’s perennial di-

lemma is to determine where exclusive rights should end and unre-

strained public access should begin.

—Neil Weinstock Netanel

“Copyright and a Democratic Civil Society,”

Yale Law Journal, 1996

I. INITIAL REGISTRATION CONSIDERATION

Throughout the New Practitioner’s Guide, the term “prosecution” has been

broadly used as a heading to categorize the actions involved in obtaining

and/or formalizing intellectual property rights. The actions involved in

obtaining and/or formalizing patent, trademark, and copyright rights vary

significantly. In the United States, patent prosecution involves an applica-

tion process involving substantive review for novelty, obviousness and

written description, and best mode requirements, among others. Conversely,

trademark and copyright prosecution are generally registration-type pro-

cesses, although trademark applications are considered in view of previ-

ously registered marks to ensure that a confusingly similar mark has not

already been registered. Copyright registration, however, does not involve

a review of the subject matter to be registered in view of previous works.

Rather, the application is reviewed to ensure that the requisite formalities

have been complied with, including any requisite deposits.

Part 2