Rights and Remedies: What can I do with my Copyright?

Copyright law grants to owners a set of exclusive rights for a limited, but lengthy, time period. These exclusive rights include the right to make and distribute copies of the work, the right to make derivatives, and the right to make public performances and displays. If someone else exercises these rights without the copyright owner’s permission, they may be liable for infringement. A copyright owner must prove 1) ownership of a valid copyright; and 2) copying of the constituent elements of the work that are original. Additionally, the copyright owner must rebut or defend against any defenses the potential infringer has.

Ownership of a Valid Copyright

Just because a work is registered with the Copyright Office does not mean a court will hold the copyright valid. If a copyright holder brings an infringement suit, the court first decides whether the copyright is valid; that is, whether it is an original, non-functional, fixed, expression.

Additionally, you must own the copyright to bring an infringement action. A work made for hire is actually owned by the employer, not the creator. Employees and independent

Presented at the Indiana Health Industry Forum, Intellectual Property Workshop, June 16, 2004

This handout is intended for illustrative use only. The information contained herein does not constitute legal advice and should not be relied upon by any person for any purpose whatsoever. Interested parties should contact their own legal counsel to address any specific issues.

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contractors can own works made for hire if another party pays for the work and takes the economic risk involved. First, if an employee creates a work as part of his employment, then the work is a work for hire. Second, a commissioning party may own a work created by an independent contractor if they have a written, signed agreement that the work will be considered a work for hire, and the work falls into one of several broad categories.

Independent contractors may prefer to own the copyright initially and then assign it to a person commissioning the work immediately as a term of the contract. Different rights attach, depending on whether the work is a work for hire or merely assigned to the commissioning party. Assignment gives the new owner most of the rights the creator would have had. Copyright owners can also license the work. Licensing allows the creator to keep all rights except for the limited rights sold in the licensing contract.

Licensing agreements can be powerful tools. The open-source software movement has flourished with strong licensing agreements that typically prevent users of the first work from taking any modifications private. The idea of open-source software is that programmers should have free access to the source code used in software. With this access, programmers can fix bugs, share ideas, or adapt the software to individual needs. Open-source

software is licensed under a number of different arrangements, but most licenses require the user of the original source code to make any modifications publicly available, in exchange for use of the previously developed work. Open source success stories such as LINUX give fodder to those who argue that copyright protection is not necessary for economic success.

Some researchers are trying to implement a similar model in life sciences research to develop new drugs for use in undeveloped countries, a traditionally unprofitable enterprise. For more information on the idea of open science, you can download a paper from Stephen Maurer’s website that provides an overview of the proposals and links to further studies, at www.merit.unimaas.nl/epip/papers/maurer_paper.pdf.

Copying of the Constituent Elements

After establishing that you own a valid copyright that is not made for hire, assigned or licensed with restrictions, the next step to proving infringement is to show unlawful copying of the constituent elements. If two people make the exact same work, without ever having access to the other’s work, each is entitled to copyright protection. That is, independent production of the same material is not infringement; there must be copying of the constituent elements. To prove infringement, however, circumstantial evidence generally suffices. For example, if the infringer has access to the material and the works are similar, a court may infer that the infringer copied the material. Sometimes the similarity between the two works is so striking that a court will infer copying, even without specific evidence of access.

The infringer must have done more than copy the material – the copying must amount to an unlawful appropriation. Courts have struggled to articulate tests to determine whether a defendant has improperly appropriated copyrighted elements of a plaintiff’s work. In many litigated cases, a defendant copies the plaintiff’s uncopyrightable idea, and the court must thus determine whether the defendant also appropriated the plaintiff’s protected expression of that

Presented at the Indiana Health Industry Forum, Intellectual Property Workshop, June 16, 2004

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idea. Courts do not use bright-line rules to make these decisions, but rather compare facts of the case before them to previous decisions and precedents.

Fair Use

The exclusive rights granted to a copyright owner are subject to numerous statutory exceptions or “limitations.” The best known of those exceptions is “fair use,” which generally allows the public to make limited uses of a copyrighted work, most often in the context of education, research, or news reporting. Economically-driven uses will likely be deemed not fair, as courts consider both the purpose of use and the potential effect of the use on the market for or value of the copyrighted work. Among the uses courts have deemed fair include: a rap parody of

“Pretty Woman”; a parody of “Gone with the Wind” told from the perspective of a slave; and a newspaper’s publication of an article containing parts of works owned by a religious leader.

Duration of the Copyright

In general, copyrighted works created today have protection for the life of the author plus seventy years. In the case of a “work made for hire,” the copyright lasts for ninety-five years from publication of the work, or one hundred twenty years from its creation, whichever expires first. Congress can also extend the copyright of works already registered. In 1998, Congress passed the Sonny Bono Copyright Term Extension Act to extend copyright terms by twenty years. The Act, often dubbed the Mickey Mouse Act because it was passed just before many Disney creations were set to enter to the public domain, set off a firestorm of controversy.

Without this protection, classics such as The Great Gatsby, The Wizard of Oz, and George Gershwin’s “Rhapsody in Blue” would have soon entered the public domain. Now, these works have another twenty years of a legally-protected monopoly right. Critics charged that the Constitution’s requirement that copyright exist only for “limited times” was a nullity if Congress could continually extend copyright terms. In 2000, however, the Supreme Court narrowly ruled the Act constitutional and deferred to Congress’ judgment.

Presented at the Indiana Health Industry Forum, Intellectual Property Workshop, June 16, 2004

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P P a a t t e e n n t t L L a a w w

Patent law gives certain inventors powerful rights and a limited legal monopoly. In part, these rights serve to reward effort and promote invention. Our patent system also functions, thus, as a prospecting system. Because the scope of the patent right is often larger than a simple reward for invention, and because a reward system need not have such competition, patent law allows firms to “prospect” certain ideas and coordinate development efforts accordingly. In short, patent law is not as simple as “build a new invention, patent it, and sell it.” A single pharmaceutical drug may be the product of hundreds, even thousands, of patents. Companies today use patents as leverage in negotiations, as a defense against a potential infringement action, or simply as a signaling device.

So I’ve got this living thing. Does patent law cover that type of subject matter?

Nearly 25 years ago, the Chief Justice Burger of the United States Supreme Court famously noted that patentable subject matter includes “anything under the sun that is made by man.” Since then, patents have covered a wide range of subject matter, including live organisms, genes and proteins. Similarly, business methods and mathematical algorithms are now patentable. Only recently have courts held these types of patents valid. Thus, your method of doing business, performing surgery, or implementing data may not only give you a competitive advantage in the marketplace, but also give you the ability to earn licensing revenues if you patent the idea. Conversely, laws of nature (such as Einstein’s e=mc²equation), abstract ideas, and physical phenomena are not patentable. A new mineral discovered from in the ground is not patentable, but a synthetic process to make a new mineral, bacteria or other living thing would be.

Controversy erupted in the 1990s when scientists started filing appications for bits of human DNA gene sequences, often without knowing the gene’s function. Critics argued that allowing DNA sequences to be patented would hinder further gene research, while others charged that it was wrong to allow private ownership of tiny fragments of a human body. Since the early ‘90s, the USPTO (the United States Patent and Trademark Office) has tightened its requirements for patentability, but more than a thousand gene patents have issued and hundreds of thousands of applications have been filed. The debates over DNA patentability, testing and screening are not likely to go away any time soon.

So how does this affect you? First, recognize that a naturally-occurring phenomena may indeed be patentable. If you discover or slightly modify something in nature, you may be able to patent it. Also, specialized provisions in the U.S. Patent Act apply to plant varieties and designs, so working on genetic mutations of plants may entitle you to own a new species. Your best bet if you have found, created or worked on something valuable in nature is to contact a patent attorney who can do specialized research on the type of organism, product or method you’ve discovered, and advise you of its patentability.

Presented at the Indiana Health Industry Forum, Intellectual Property Workshop, June 16, 2004

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So I’ve created this thing that is of patentable subject matter. Can I patent it?

For a work to be patentable, it must meet these three qualifications:

• The work must be “novel.” This requirement generally means that the creation must be new, not only to the inventor but also the larger world. If an investigation of prior art reveals that someone else already had created the same or a similar work, the patent may be denied.

• The invention must be “useful.” Patents are not allowed for fanciful creativity, but instead for creativity that has some practicable application. In the biotechnology area, some courts have interpreted this provision of the patent code to require a process to have a beneficial pharmacological effect. This area of the law is constantly changing, so again, contact an attorney for specific advice on what is deemed useful.

• The invention must be “non-obvious.” A patent may be denied if the invention was of such a low order of creativity that it would have been obvious to someone skilled in the relevant trade.

Dalam dokumen Dear Copyright Friends and Colleagues - IUPUI archives (Halaman 108-112)