Copyrights

• Author: Susan Upton Douglass
• Pages: 139-175

139

I. OVERVIEW

Copyright protection is an integral part of many successful franchise

operations and other businesses. Potentially copyrightable subject mat-

ter includes operating manuals, style guides, computer programs, menus,

graphics, advertisements, radio and television commercials, jingles, bro-

chures, vehicle wraps, videos, and websites. Indeed, almost all aspects of

the day-to-day business are conceivably protectable by copyright. Copy-

right protection is automatic upon creation of the subject work in the

United States and all other countries that adhere to the primary interna-

tional copyright treaty, the Berne Convention (the Convention), which the

United States joined, effective as of March 1, 1989.1 As of that date, copyright

owners no longer needed to use a copyright notice or to register copyright-

able works as a prerequisite to securing protection. Registration in the U.S.

Copyright Office remains, however, a prerequisite to commencing a court

action for infringement for works created in the United States or owned by

a U.S. entity or citizen. Use of a copyright notice helps in combating copying

and precludes an “innocent infringer” defense. Overall, copyright is an effec-

tive weapon in a business’s arsenal of tools to protect the key components

of its operation and the materials on which the business relies.

A. DEFINITION OF COPYRIGHTABLE

SUBJECT MATTER

The Copyright Act is contained in Title 17 of the U.S. Code. Copyright law is

exclusively a matter of federal law, and preempts state laws and common

law cases on the subject. Copyright arises in “a work of original author-

ship fixed in a tangible medium of expression.” A “work” is any creation, be

it in the form of written words, graphics, fabric designs, music, software,

1. Berne Convention Implementation Act of 1988.

Chapter 4

Copyrights

Susan Upton Douglass

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140 • The Intellectual Property Handbook

audio-video recordings, sculptural or three-dimensional works such as jew-

elry designs, choreography, or architectural works such as buildings. By

“original,” the Act means simply that the author created the work without

copying it from a preexisting work; the work need not be novel (unlike a

patentable invention). There is, however, a minimal level of creativity that

is required: short words or phrases, simple geometrical shapes, blank

forms, typefaces, ingredient listings, and totally utilitarian objects with-

out separately identifiable graphic or sculptural elements are specifically

excluded from copyright protection. A copyrightable work can be based on

a preexisting work, but the “new” work must contain sufficient additional

original material to qualify for copyright protection.

To be “fixed in a tangible medium of expression” means that the work

is fixed in a format that others can view or hear; it is not merely transient

speech or movement. For example, a spoken conversation is not protected

by copyright unless it is recorded. A dance is not protected by copyright

unless it is noted in written form, sketched on paper, or recorded. Thus,

to be protected by copyright, there must be a work created by the author

that is in some way capable of being viewed or heard by others.

B. IDEA/EXPRESSION DICHOTOMY

Ideas alone cannot be protected by copyright, only their specific

expression.

For example, copyright cannot protect the concept of serving coffee by

means of a drive-through station (which, if novel, non-obvious, and use-

ful, might be patentable as a business method); however, one can protect

the specific description of the business as set forth in a written manual,

the decorative appearance of the coffee station (in conjunction with trade

dress protection afforded by trademark law and/or design patent protec-

tion afforded by patent law), and the artistic presentation of the menu.

Ideas can be protected by contract, and the use of nondisclosure or con-

fidentiality agreements is essentially the only way (other than through a

patent) to prevent an idea from being copied by the specific individuals

or businesses to whom the ideas are disclosed. Of course, once an idea

is published or put into use, the general public is free to copy it or even

improve upon it, as long as no specific copyrightable content is copied, nor

any patented subject matter or matter protected under trademark law.

C. FORMALITIES

Copyright arises immediately upon creation and fixation of a copyrightable

work. There are no formalities needed to obtain copyright protection. But

following some formalities—at least for important works—can save the

copyright owner much aggravation and expense later. Prior to the United

States’ adherence to the Berne Convention, the failure to use a copyright

notice or to register the work with the U.S. Copyright Office resulted in the

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I. Overview • 141

work falling into the public domain. The draconian effects of the prior law

caused important works to fall into the public domain, stripping authors

of significant sources of income. Moreover, the law applied to everyone

worldwide, so that works first published abroad where there were no

notice requirements (most countries were members of the Berne Conven-

tion long before the United States joined the Convention) were unwittingly

pitched into the public domain in the United States. Many who are aware of

the old rule that required use of a notice in order to secure copyright pro-

tection are unaware that the law changed and that the notice is no longer

required to preserve the copyright. These individuals might look at a work,

note the absence of a copyright notice, and assume that the work is in the

public domain. Although the copyright owner would ultimately prevail in

an infringement suit under these circumstances, it is far less expensive and

troublesome simply to use the notice to deter people from copying.

Although the copyright notice is no longer required, this rule pertains

only to works first published on or after March 1, 1989. For all works first

published prior to this date, the continued use of a copyright notice is pru-

dent, if not mandatory, to maintain the copyright protection in the work.2

D. NOTICE

The copyright notice is simply the symbol © or the word “Copyright” or

the abbreviation “Copr.” followed by the year of first publication (or, if

the work is not yet published, the year of creation) and the name of the

copyright owner, or any variation of the owner’s name or trade name by

which the owner might be known. There is an exception for useful articles,

such as jewelry, stationery, or clothing, which do not require the year to be

displayed as part of the notice. The notice need only appear once on the

work, in an obvious place where people are likely to see it. There is little

point, for example, in placing a copyright notice on page 17 of a manual, on

the inside seam, or in 4-point type on the back of a package. To function

as a notice, the notice should be used in a manner that will come to the

attention of the intended recipients. For materials that are updated regu-

larly, one can use the latest year in which the work was updated, although

in some types of works—for example, books and computer programs—it is

common to see a recitation of the entire publication and some or all of the

2. A leading copyright treatise supports the view that the use of a notice in this situa-

tion is not essential. A “work first published in 1980 needed to bear a copyright notice; if

republished in 1990, a copyright notice on the work is strictly voluntary, except [in limited

circumstances].” 2-7 NIMMER ON COPYRIGHT § 7.02, n.37. Note that one could, however,

arguably read section 405 of the Copyright Act to continue to require a notice on a work

publicly distributed before March 1, 1989, even if later also distributed after that date. 17

U.S.C. §405. The Copyright Office specifically refrains from taking an official position on this

distinction. Copyright Office, Circular 1, Copyright Basics, at 4. As the continued use of a

copyright notice costs nothing and its omission could have adverse consequences, it would

be prudent to continue to display the notice on such a work.

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