Terminating copyright transfers

return
“Return”, by Ldavis (CC BY-SA 3.0)

Someone in your family write something years ago that was a hit? Copyright transfer termination laws might let you get this old copyright back.  

US copyright laws contain certain author-friendly provisions that allow independent authors (authors who did not make their work for hire), who had previously assigned their copyrights, to eventually get their copyrights back.  The underlying idea is to give a second chance to young authors who, through inexperience or poverty, may have initially entered into unfavorable copyright assignment deals.

For example, the 1976 copyright act (17 U.S. Code § 203, effective 1978) states that under certain situations (such as if written notice is given 2-10 years in advance), the rights to previously assigned copyrights can be retrieved by the author (or heirs) during a limited 5 year time window that starts 35 years after the initial assignment or publication.

Although since 1978, there have been other substantial changes to US copyright law (e.g. the “Sonny Bono” Copyright Term Extension act of 1998), this 1976/1978 era termination right still exists.

Indeed the concept of author termination rights predates the 1976/1978 copyright act.  Previous copyright acts, such as the 1909 US copyright act, had independent author termination rights as well.  For example, under the 1909 act (in effect until 1977), copyright terms were 28 years, and the author had the option to renew the copyright one time, for a total of 56 years.  During this first renewal period, under certain situations, the author could also terminate his original copyright assignments at 28 years. But no more.

The 1976/78 copyright act changed the copyright term (for works not made for hire) from 56 years to the author’s lifetime plus 50 years, and later the renewal requirement was also dropped. The 1976/78 copyright act changed the author termination rules for pre-1978 works. These days, for pre-1978 works, under 17 U.S. Code § 304, independent authors (or heirs of independent authors) are now given a five-year window, starting at 56 years, to get their copyrights back.

Sound complicated?  This is the simplified version; the reality is even more complex!  For example, what is a “work for hire?” For non-employees, it is a work that someone has commissioned you to do, and these days this commission agreement must be in writing.  However, in the pre-1978 era, companies would try to incorporate “work for hire” clauses into assignments from even non-commissioned authors. The courts did not always buy this, as per a famous Marvel comics case involving Captain America.  Like to get the rights to this?

These rules are so complex that you almost need a computer program to sort through the various options.  Fortunately, this has been done.  The Authors Alliance, in conjunction with Creative Commons, now offers online software designed to give authors at least a rough idea of the feasibility of terminating their earlier copyright assignments.  This software is available at rightsback.org.

Blurred lines: copyright AFC tests

Blurred lines

The “Blurred lines” music copyright case went wrong because courts are not using modern abstraction-filtration-comparison (AFC) infringement tests.

Copyright covers creative expression but not ideas or information.  Many copyrighted works, however, are a mixture of creative expression and ideas/information.  This mixture gives courts headaches, and as a result, copyright litigation can be unpredictable.

For software copyright infringement cases, courts tend to use an “abstraction-filtration-comparison” (AFC) test. The AFC test was first introduced in the 1992 “Computer Associates v. Altai” case.  For this test, the court (i.e. the judge with expert help) first “abstracts” (analyzes) the work and determines what parts are “expression” (copyright protected) and what parts are ideas (copyright ineligible).  Then the court removes (filters out) the ineligible idea portions. If there are questions about what remains, the court can give the remaining “expression” portions to a jury to decide.

This test puts a lot of responsibility on the court to get things right and is hard to perform in practice, but at least it makes some sort of logical sense.  Throw out the ineligible stuff, and just look at the rest.

The AFC test was inspired by the earlier “Scènes à Faire” (Scenes a Faire) concept often used for literary and movie copyrights. As a quick example, if you want to write a Western novel or film, then horses, guns, salons, bandits and the like are considered essential ideas, and these would be tossed out in a copyright case involving a Western theme.

So what went wrong in the recent “Blurred Lines” music copyright infringement case? The song admittedly tried to capture the party atmosphere of Marvin Gaye’s earlier “Got to Give it Up” song, but the lyrics and music were quite different. Both had party noises and “cowbell”, but these were different party noises and different cowbell. In fact, Marvin Gaye’s copyright was for sheet music that didn’t cover party noises and cowbell at all.

The problem is that outside of software, older tests, such as “objective substantial similarity” and “total concept and feel” are still being used.  These older tests blur the distinction between creative expression and ideas and rely on an unskilled jury to magically sort things out.

To somewhat simplify the “Blurred Lines” case, the jury listened to music that contained a mixture of creative expression (different lyrics and music) and unprotected ideas (generic party noises and cowbell). To make matters worse, the jury instructions did not even tell the jury to try to distinguish between creative expression and copyright ineligible ideas.

So, not surprisingly, the jurors found infringement; most likely because both songs contained party noises and cowbell.  Never mind that these were not covered by copyright and that as far as the actual copyrightable lyrics and music went, the two songs were quite different.

This case is presently on appeal. Various copyright experts have suggested that the way out of this mess is to expand the use of the AFC test from computer software to other types of copyright cases as well. Unfortunately, the law works slowly. Until then, go easy on the cowbell at parties.

Intellectual property for cheerleaders

Cheerleader
Is the uniform decoration “functional”?

In Star Athletica v Varsity Brands, the Supreme Court ruled that copyrights can cover the industrial designs of clothing, 3D objects, and other useful (functional) things.

The boundaries between different areas of intellectual property, such as copyrights and patents, can be fuzzy.  Copyrights, among other things, cover artistic images and 3D sculptures on various media or “articles”, but the artistic feature must be able to exist separately from any functional (useful) part of the underlying media.

Copyrights v design patents: Copyrights require only minimal originality, are cheap, and last for generations. But, if you want to claim an ornamental design for a functional (useful) item, this falls into design patent territory. Design patents have a higher threshold for originality, are more expensive, and only last for 15 years.

Some things, such as clothing, and other 3D designs that combine artistic/ornamental and useful/functional aspects, fall into multiple areas, but not always as one might predict. Clothing “knock-offs” exist because the overall pattern or cut of clothing is conclusively (legally) presumed to be functional, hence copyright exempt. So this goes into the design patent bin. However artistic fabric patterns can be copyrighted.

Which brings us to the cheerleaders, and the Supreme Court’s (SCOTUS) recently decided Star Athletica v. Varsity Brands case.  This teaches lessons that apply to other mixed artistic/functional things as well, such as 3D objects. So you folks with 3D printers, listen up!

Cheerleader uniforms have certain characteristic lines and colors, and Star Athletica copyrighted a number of these designs. Varsity Brands, possibly believing that fashion knockoffs are no big deal, copied them, got sued, and the case eventually made its way to SCOTUS.

Varsity had some interesting legal arguments – namely that the lines and colors were functional (no copyright) because they distinguished the uniform as a cheerleader uniform. However, SCOTUS didn’t buy it. They cited Mazer v Stein, an earlier 1954 SCOTUS case, where an artistic statute was ruled to have retained copyright protection even when used as a lamp base (made functional). Like this earlier case, SCOTUS ruled that if an otherwise copyrightable feature can be perceived as art separate from the useful article, then the feature can get copyright protection.

Unintended consequences?  So we can have an ornamental design for a functional item (design patent).  We can also have a useful item with an artistic feature (copyright); at least when the artistic feature can exist independently of the useful item. Confusing, and there may be some unforeseen economic issues. Although SCOTUS relied on the previous 1954 Mazar case, copyright laws have changed since 1954.  Copyright now automatically attaches to nearly everything and lasts nearly forever.

In any event, if you are planning on doing fashion knockoffs, be careful.  In fact, if you are any manufacturer planning on incorporating “an old art design” into a functional object, be careful.

Copyrights and creativity

macaca_photograph300
Macaca self-photograph. No human creativity, so no copyright?

Copyright protection requires that a work have at least a minimum amount of human creativity, but the laws are vague as to what this minimum is.

Legally, US copyright protection is provided for information (typically preserved in a non-transitory medium) that has at least a small element of a human author’s own creativity. Courts have held that mere facts and ideas alone can’t be copyrighted. The amount of creativity can be very small, but it isn’t zero.  For example, using human judgment to select and compile facts according to personal criteria often qualifies, and an author’s annotations of facts may also qualify, but routine alphabetical sorting is not enough (Feist Publications v. Rural Telephone, 499 US 340, 1991) .

From an engineering or mathematical perspective, these rules may look vague. This is in part because copyright concepts date back hundreds of years, back to the early days of printing presses, and have evolved slowly over time through various laws and court decisions. However copyrights are big business, and copyright law enforcement tends to be efficient and harsh. So like them or not, the rules are important.

One area where the rules are fuzzy is short works, such as short sections of text or individual photographic images. What is the minimum work (creative information) that might get copyright protection?  The rules are not uniform throughout the world, and here we are discussing US laws.

Short text:  Very short text fragments are often considered too trivial (de minimis) for copyright protection, but the court will consider originality here, and more originality gets better protection. Although there is no minimum word-count cut off, text fragments of 11 words or less at the “news article” level of originality are often considered non-infringing.

Individual photographs:  Again the law requires a small amount of human creativity for copyright protection.  The US copyright office will not register works produced by non-humans, and lower court cases are consistent with this decision.  Additionally, exact copies of public domain work (Bridgeman Art Library v. Corel Corp.) are also exempt from copyright. Otherwise, the courts often ignore the creativity requirement.  This raises some interesting questions for future cases. However, unless the law changes, assume that copyright applies to nearly all human-produced photographs, no matter how repetitious, trivial or otherwise non-creative.

There are other copyright exceptions.  Federal Government work is often not copyrightable.  Further, under “fair use”, there can be additional exceptions where it is OK to reproduce another’s copyrighted work.  Fair use rules are complex and will be the topic of another discussion.

Contractor ownership of IP

Agree on IP ownership in advance
Agree on IP ownership in advance

The ownership rules for copyrights, patents, and other IP vary depending on if the IP creator is an employee or an independent contractor.

In today’s world, the distinction between employee and independent contractor is often blurred, but legally, these two forms of working are very different.  As a result, whether you are working as an employee or independent contractor, or hiring employees or independent contractors, it is good to be aware of how these different types of work engagements impact IP ownership rights.

These laws can vary from state to state.  Consider California. Generally, work done by an employee for an employer, at the employer’ request, does belong to the employer. However the IP assignment process is not always automatic (patents, for example, generally need to be assigned to the employer in writing).

One of the reasons why California has a booming high-tech economy is that California labor code sections 2870-2872 mandate (with certain exceptions) that work that does not relate to an employer’s business (and is done with the California employee’s own time and materials) generally belongs to the employee. However, this section of California law may not protect independent contractors.  So if you are an independent contractor, you may want to negotiate this.

US copyright law (writing, art, software, etc.) also distinguishes between employees and contractors. For employees, copyright ownership for works made for the employer typically goes to the employer. However for independent contractors, absent a signed written agreement (such as a work made for hire agreement) that copyright ownership is being transferred, often ownership remains with the independent contractor.  So if you are hiring an independent contractor, absent a written agreement, just because you paid for something doesn’t automatically mean that you own it!

How to distinguish an employee from an independent contractor?  Generally, the difference is the amount of control.  For an independent contractor, whoever is paying can control the work result, but generally not how the work is done.  By contrast, even an employer who gives his employees freedom still has the legal right to specify how the work is done.

Regardless of work arrangement, it is always a good idea to work out the issues of who is going to own what in writing and in advance.  For employees, spell this out with a proprietary information and inventions agreement. For independent contractors, negotiate and sign an agreement on these issues before starting work.  This topic often comes up in due diligence.

Open source software licenses for startups

BSD open source license
BSD open source license

Open source software is a wonderful thing.  The open source community has given us a gift pack animal that everyone from individual hackers to the largest companies in the world can ride.  However not all open source software licenses are alike. In particular, some of the most famous open source software comes with legal obligations that can be hazardous for startups.  So if you are doing a startup, resist the temptation to immediately grab your favorite open source software and start hacking.  Instead first take a bit of time to look that gift pack animal in the mouth.

What’s Gnu? Back in the 1980’s, Richard Stallman, who wrote the original and very influential Gnu OS open software license, had a deeply held opinion that in order to create an open software sharing community, it was necessary to “poison the well” for many commercial uses. This underlying hostility towards commercial applications is very evident in “The GNU manifesto”.

These “poison the well for commercial use” Gnu concepts in turn influenced the open source GPL (General Public License), which Linux and MySQL use; along with a number of other popular open source licenses.  Some of these open source license terms can negatively impact your ability to patent your software, as well as your other attempts to make your business profitable.

This problem scares investors.  Sophisticated investors now frequently include open source software questions as part of their routine, pre-funding, due diligence process. So yes, to avoid starving, this stuff matters.

Enter BSD: Not all open source software licenses have these problems. In the 1990’s other software experts decided that an open software sharing community could develop without also poisoning the well for commercial uses.  They developed the Berkeley Software Distribution (BSD) license (initially for their Unix-like operating system). The BSD license encourages sharing, but does not usually limit commercial use or patents.

Although BSD type open source licenses and software are not quite as famous as GPL open source software, a large number of well-respected and highly reliable BSD distributions are available.  Like Linux, there are different flavors of BSD for different applications. Look into FreeBSD for large scale servers, OpenBSD for secure applications, and NetBSD for smaller scale devices.  There are also BSD web servers (e.g. Nginx, httpd, Lighttpd), BSD databases, and many other BSD licensed open source applications.

Use your business model to pick your open source software (license), and not the other way around.  Google’s main revenue is from advertising.  They could afford to base Android on GPL licensed Linux. They have to make Android available for a free download, but given their business model, this isn’t a problem for them.  By contrast Apple has a business model based on selling closed devices.  Apple can’t survive with non-proprietary software. As a result, Apple chose to build iOS and OS X on a BSD foundation.  So pick the license that is best for your business (hint, think permissive or public domain).

Oracle vs Google Java API case: blurring the distinction between patents and copyrights

Java
Java

Pushing the limits of copyright law:  A recent copyright court case:  Oracle America, Inc. v. Google Inc. is showing that at times, the difference between patents and copyrights is not as distinct as you might think or like.  You can see the court decision here:

https://www.eff.org/files/2014/11/10/oracle_v_google_13-1021.opinion.5-7-2014.1.pdf

As I understand it, Google attempted to reverse engineer Java by using standard “clean room” (e.g. fresh and original code) techniques. However in the case of 37 Java API classes, Google copied some elements on the belief (based on prior case law such as a 1995 Lotus v Borland case) that because these API were functional, such functional elements were therefore not copyright protected.

Oracle, which obtained rights to Java when it acquired Sun Microsystems in 2010, did not agree.

In the May 9, 2014 decision, the Court sided with Oracle.  The Court rejected the Lotus finding, and about 20 years of legal precedent, that menu structures (being essential to operation), were therefore not copyrightable.  Instead, the Court held that elements that can perform a function indeed sometimes can be copyrightable.  Indeed, the Court argued that something that can be patented can potentially be copyrighted as well (page 43).

The Court argued that no deference should be given to findings of operation or function and that copyright should be determined by an “abstraction-filtration-comparison” inquiry.  Perhaps so, but neither this Court nor the previous Trial court actually attempted to perform this test!

In what looks to me to be an important part of the decision, the Court equated the Java language to the English language and concluded that making the API subject to copyright would not restrict Google from using Java any more than a copyrighted paragraph would hinder other authors from using the English language.  “However Google, like any author, cannot employ the precise phrasing or precise structure chosen by Oracle to flesh out the substance of its packages — the details and arrangement of the prose.” (See page 44).

To me, this reasoning appears to be problematic.  API are much more fundamental than standard copyrighted paragraphs.  API are more akin to the functional neural networks in the human brain that are used to understand various short and common English words and phrases.   I can express myself just fine in everyday life without quoting paragraphs from copyrighted novels.  However if, due to copyright restrictions, the underlying brain neural networks (or computer software structure) needed to understand many short and common English phrases are off-limits, then copyright turns standard English into a proprietary language.  In effect, the court is making large chunks of the Java language proprietary as well.

What is more dangerous:  patents go away unless filed within a year of first disclosure, then properly prosecuted, properly maintained, and have a maximum life of 20 years in any event. Trademarks go away unless filed, maintained every 10 years, and efforts are continually expended to protect against the trademark turning generic.  But copyrights automatically attach without effort, and are then good for 95 to 120 years without any need for renewal!

The Court remanded the case to the trial court, where other copyright principles such as “fair use” may then get Google out of hot water.  However in my opinion, the Court’s analysis missed some key points.  We don’t allow short and common English phrases to be subject to copyright because to do so would unduly constrain normal speech.  There appears to have been no consideration as to what extent forcing a rewrite of the 37 Java APIs at issue would constrain the universe of previously written Java code, and prevent use of many short and common phrases in the Java language.

Was the Court in essence telling Google that although standard Java is now off limits, they of course are welcome to create their own unique dialect of Java?   Put this way, then the decision looks off.