Copyright & Trade Secrets

An application for copyright registration should be filed, preferably before your work is published, provided to others, or otherwise made publicly available. Registration is necessary to provide a court with jurisdiction to hear the suit. Infringement of a registered work also results in liability for statutory damages as well as potential liability for attorney fees. Registration may be accomplished any time after completion of the work, but the benefits of registration only accrue after registration. Furthermore, obtaining the full benefits of registration – specifically statutory damages and attorney fees - generally depends on completing the application process prior to infringement by the defendant against whom the statutory remedies are sought. An exception exists for works that are infringed after publication, and for which registration is sought within three months of the first publication. You should include a copyright notice on your work to notify others of your claim of copyright. Although such a notice is not required to receive monetary damages, the absence of a notice can give an infringer the opportunity to prove innocent infringement, which can reduce the amount of a monetary damage award.

Yes, but this must be done carefully. Your copyright application should disclaim pre-existing work that is included within your work. Depending on the amount and substantiality of the pre-existing work included, you may also need to obtain a license from the owner of the copyright in the pre-existing work before copying or distributing your own work. Particularly in the case of musical compositions, even the inclusion of small amounts of work owned by others has resulted in substantial litigation. In some cases, a license agreement from the owner of the pre-existing music copyright may be necessary in order to obtain copyright registration.

If you are distributing the work to others for collaboration, to seek license agreements for your work, etc., document and retain copies of all correspondence with others. Copyright infringement requires actual copying, which is proven by proving access to the work plus substantial similarity of the allegedly infringing work to the copyrightable elements of the protected work. Retaining copies of your correspondence will help prove access.

You should also mark your work as being protected by copyright using the word Copyright or the © symbol next to the year of creation and the name of the copyright owner. Providing notice of the copyright claim can prevent a defendant from successfully asserting an innocent infringer defense. If an infringer removes the copyright notice, then that infringer can be liable for the removal of the copyright management information.

It is possible to use copyrighted works to a limited extent as “fair use.” Fair use is determined by analyzing the purpose and character of the use (nonprofit educational uses are more likely to be fair than commercial uses, “transformative” uses that change the nature of the work are more likely to be fair), the nature of the copyrighted work (facts cannot be protected through copyright but the manner in which they are expressed is protectable, so factual works are subject to less protection than fictional works), the amount and substantiality of the portion used as compared to the work as a whole, and the effect of the use on the commercial value of the work. The above factors will be weighed differently in different situations, and you should not assume that your use is fair without consulting an attorney familiar with copyright law. Please contact me with your specific questions.

Hopefully you applied for registration prior to the commencement of infringement, because prior registration provides the opportunity to gain statutory damages (which do not have to be proven) and attorney fees. However, even without prior registration, a decision from the Copyright Office can be obtained on an expedited basis, and actual damages and possibly an injunction are still available. The first step is a comparison of the copyrightable elements of your work to the allegedly infringing work, as well as an evaluation of the degree of access that the infringer had to your work. If I determine that infringement is occurring, the next step is typically a cease-and-desist letter. This letter is often enough to stop the infringing activities, but sometimes litigation is required.

You cannot safely ignore the letter. A comparison of your work with the copyrightable portions of the allegedly copied work must be performed. Additionally, your access to the copyrighted work must be evaluated. The registration status of the allegedly copied work must also be checked to determine your potential liability. Learning the registration status of the allegedly infringed work is critical, because infringement of a registered work can result in an award of statutory damages and attorney fees. However, if the work is unregistered, or if the effective date of the registration predates the commencement of the alleged infringement, then in most cases damages will be limited to provable, actual damages, and attorney fees will not be available to the plaintiff. Thus, filing a suit for infringement of an unregistered work is rarely financially worthwhile for the owner of the work. If your work is sufficiently different or amounts to fair use, then we will inform the accuser of this fact, and you may proceed with relative safety, although you could still be sued. If infringement appears likely, then we can take steps to mitigate your exposure to liability, such as stopping the allegedly infringing activity and/or negotiating a license agreement.

If foreign protection is desired, the laws of the country wherein protection is desired should be researched prior to publication of the work, if possible, because the availability of protection may depend on facts at the time of the first publication of the work. Depending on the country in which protection is sought, one or more of several different international treaties may simplify the application process. One of the most common treaties is the Berne Convention. Copyright protection automatically exists for copyrightable subject matter in countries that have signed this treaty, without the need to take any formal steps.

I do not recommend doing so. Your intellectual property is a critical asset that needs the best possible protection. The apparent simplicity of copyright applications can also be deceiving, particularly if elements of other works are incorporated in your work. In this case, it may be necessary not only to name the underlying work in the application, but also to negotiate a license with the owner of the underlying work. Additionally, ownership of the copyright may or may not be readily apparent from the circumstances of the work’s creation. It is not uncommon for applicants to fail to realize the difference between situations in which a work is a work made for hire, and situations in which a written assignment agreement is necessary. Doing a job properly the first time is always easier and less costly than trying to repair mistakes later, and also ensures that rights will not be lost as a result of mistakes or omissions. Please contact me to discuss your needs before taking action yourself.

A patent provides protection against any use of the claimed subject matter, regardless of how the subject matter is obtained, for a limited period of time. A trade secret provides protection against the use of wrongfully obtained secrets for as long as the trade secret remains a trade secret. A trade secret only protects against wrongful taking of the secret, and does not protect against independent discovery of the secret.

You should consider trade secret protection if:

• You are willing to accept the risk that your competitors may independently discover your innovations
  
• Your innovations are not easily subject to reverse engineering
  
• You wish to keep your innovations secret for a time period longer than the period of enforceability of a patent
  
• Your innovations have independent value derived from the fact that they are secret
  
• You are willing to take steps to identify trade secrets and to protect the secrecy of these secrets
  
• The best form of protection for each innovation should be determined on a case-by-case basis. Please call me to discuss your specific situation.

You should consider patent protection if:

• You need the strongest possible protection for your innovations, including protection from the possibility of independent discovery of your innovations by your competitors
  
• Your innovations are potentially subject to reverse engineering
  
• The limited duration of a patent (20 years from the filing date, subject to certain extensions of patent term) is acceptable.