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AN INTELLECTUAL PROPERTY LAW PRIMER FOR
MULTIMEDIA AND WEB DEVELOPERS Copyright 1996 by J. Dianne Brinson and Mark
F. Radcliffe LICENSE NOTICE: This article may be copied in its entirety for
personal or educational use (the copy should include a License Notice at
the beginning and at the end).
It may posted on gopher and FTP sites, but
please provide notice of such posting to the authors at the addresses
below. It may not be modified without the written permission of the
authors. This primer is based on the Multimedia Law and Business Handbook
which is designed to provide accurate information on the legal issues in
multimedia. The primer is provided with the understanding that the authors
are not engaged in rendering legal services. If you have a legal problem,
you should seek the advice of experienced counsel. An understanding of
legal issues is essential to success in the multimedia industry. Mistakes
can cost the multimedia developer tens or even hundred of thousands of
dollars in legal fees and damages. For example, Delrina lost hundreds of
thousands of dollars and had to recall all of the copies of its screen
saver last fall when it lost a copyright suit. Delrina distributed a screen
saver in which one of the 30 modules showed the comic book character Opus
shooting down Berkeley Systems' "flying toasters" (made famous in
Berkeley's "After Dark" screen saver program). Berkeley Systems
sued Delrina for copyright and trademark infringement. The court ruled for
Berkeley Systems, prohibiting further distribution of Delrina's product and
requiring Delrina to recall all of the product not already sold. The
copyright ownership dispute between two leading multimedia developers,
Michael Saenz and Joe Sparks, provides another example of the importance of
dealing properly with legal issues. The dispute focuses on whether Joe was
an employee or independent contractor of Reactor, Inc. (Mike Saenz's
company) when they developed the successful game "Spaceship
Warlock." If Joe was right in claiming that he was an independent
contractor, he is co-owner of the copyright and has a right to half of the
profits from the game. These profits could be worth hundreds of thousands
of dollars. The court did decide that Joe Sparks was a co-owner of the
copyright and the suit was later settled. This primer will help you
understand the legal issues in developing and distributing multimedia and
online works. It is based on the Multimedia Law and Business Handbook
(1996) from Ladera Press, which has been praised by the Interactive
Multimedia Association. This summary of the law should not be viewed as
"answering" most questions (the Multimedia Law and Business
Handbook discusses these issues in more detail in 320 pages and includes
twenty -two sample agreements to show how these issues are dealt with in
actual transactions) You can order the book by calling 800-523-3721 or
faxing 810- 987-3562. Legal matters in multimedia are frequently complex
and you should not rely on the information in this primer alone. You should
consult with experienced counsel before making any final decisions.
OVERVIEW There are four major intellectual property laws in the United
States that are important for multimedia developers: * Copyright law, which
protects original "works of authorship." * Patent law, which
protects new, useful, and "nonobvious" inventions and processes.
* Trademark law, which protects words, names, and symbols used by
manufacturers and businesses to identify their goods and services. * Trade
secret law, which protects valuable information not generally known that
has been kept secret by its owner. This primer will focus on U.S. copyright
law because copyright law is the most important of these laws for most
multimedia developers and publishers. The other three intellectual property
laws are discussed in less detail, as are several other relevant laws. The
primer concludes with a hypothetical which applies the laws discussed in
the primer to a fictitious multimedia project. COPYRIGHT LAW There are two
reasons why it is important for you as a multimedia developer or publisher
to be familiar with the basic principles of copyright law: * Multimedia
works are created by combining "content" - music, text, graphics,
illustrations, photographs, software - that is protected under copyright
law. Developers and publishers must avoid infringing copyrights owned by
others. * Original multimedia works are protected by copyright. The
Copyright Act's exclusive rights provision gives developers and publishers
the right to control unauthorized exploitation of their works. Copyright
law is a federal law, and so the law does not vary from state to state
(although the interpretation of the law may be different in different
courts). Basic Principles This section summarizes the basic principles of
copyright law, including the types of works that are protected by
copyright, how copyright protection is obtained, and the scope of the
protection. Works Protected Copyright protection is available for
"works of authorship." The Copyright Act states that works of
authorship include the following types of works which are of interest to
the multimedia developer: * Literary works. Novels, nonfiction prose,
poetry, newspaper articles and newspapers, magazine articles and magazines,
computer software, software manuals, training manuals, manuals, catalogs,
brochures, ads (text), and compilations such as business directories *
Musical works. Songs, advertising jingles, and instrumentals. * Dramatic
works. Plays, operas, and skits. * Pantomimes and choreographic works.
Ballets, modern dance, jazz dance, and mime works. * Pictorial, graphic,
and sculptural works. Photographs, posters, maps, paintings, drawings,
graphic art, display ads, cartoon strips and cartoon characters, stuffed
animals, statues, paintings, and works of fine art. * Motion pictures and
other audiovisual works. Movies, documentaries, travelogues, training films
and videos, television shows, television ads, and interactive multimedia
works. * Sound recordings. Recordings of music, sounds, or words. Obtaining
Copyright Protection Copyright protection arises automatically when an
"original" work of authorship is "fixed" in a tangible
medium of expression. Registration with the Copyright Office is optional
(but you have to register before you file an infringement suit, and
registering early will make you eligible to receive attorney's fees and
statutory damages in a future lawsuit). Here's what "original"
and "fixed" mean in copyright law: Originality: A work is
original in the copyright sense if it owes its origin to the author and was
not copied from some preexisting work. Fixation: A work is
"fixed" when it is made "sufficiently permanent or stable to
permit it to be perceived, reproduced, or otherwise communicated for a
period of more than transitory duration." Even copying a computer
program into RAM has been found to be of sufficient duration for it to be
"fixed" (although some scholars and lawyers disagree with this
conclusion). Neither the "originality" requirement nor the
"fixation" requirement is stringent. An author can
"fix" words, for example, by writing them down, typing them on an
old-fashioned typewriter, dictating them into a tape recorder, or entering
them into a computer. A work can be original without being novel or unique.
Example: Betsy's book How to Lose Weight is original in the copyright sense
so long as Betsy did not create her book by copying existing material -
even if it's the millionth book to be written on the subject of weight
loss. Only minimal creativity is required to meet the originality
requirement. No artistic merit or beauty is required. A work can
incorporate preexisting material and still be original. When preexisting
material is incorporated into a new work, the copyright on the new work
covers only the original material contributed by the author. Example:
Developer's multimedia work incorporates a number of photographs that were
made by Photographer (who gave Developer permission to use the photographs
in the multimedia work). The multimedia work as a whole owes its origin to
Developer, but the photographs do not. The copyright on the multimedia work
does not cover the photographs, just the material created by Developer.
Scope of Protection Copyright protects against copying the
"expression" in a work, not against copying the work's ideas. The
difference between "idea" and "expression" is one of
the most difficult concepts in copyright law. The most important point to
understand is that one can copy the protected expression in a work without
copying the literal words (or the exact shape of a sculpture, or the exact
"look" of a stuffed animal). When a new work is created by
copying an existing copyrighted work, copyright infringement exists if the
new work is "substantially similar" to the work that was copied.
The new work need not be identical to the copied work. A copyright owner
has five exclusive rights in the copyrighted work: * Reproduction Right.
The reproduction right is the right to copy, duplicate, transcribe, or
imitate the work in fixed form. * Modification Right. The modification
right (also known as the derivative works right) is the right to modify the
work to create a new work. A new work that is based on a preexisting work
is known as a "derivative work." * Distribution Right. The
distribution right is the right to distribute copies of the work to the
public by sale, rental, lease, or lending. * Public Performance Right. The
public performance right is the right to recite, play, dance, act, or show
the work at public place or to transmit it to the public. In the case of a
motion picture or other audiovisual work, showing the work's images in
sequence is considered "performance." Sound recordings - recorded
versions of music or other sounds - do not have a public performance right.
* Public Display Right. The public display right is the right to show a
copy of the work directly or by means of a film, slide, or television image
at a public place or to transmit it to the public. In the case of a motion
picture or other audiovisual work, showing the work's images out of
sequence is considered "display." In addition, certain types of
works of "visual art" also have "moral rights" which
limit the modification of the work and the use of the author's name without
permission from the original author. Anyone who violates any of the
exclusive rights of a copyright owner is an infringer. Example: Developer
scanned Photographer's copyrighted photograph, altered the image by using
digital editing software, and included the altered version of the
photograph in a multimedia work that Developer sold to consumers. If
Developer used Photographer's photograph without permission, Developer
infringed Photographer's copyright by violating the reproduction right
(scanning the photograph), the modification right (altering the
photograph), and the distribution right (selling the altered photograph in
his work). A copyright owner can recover actual or, in some cases,
statutory damages (which can be as high as $100,000 in some cases) from an
infringer. In addition, courts have the power to issue injunctions (orders)
to prevent or restrain copyright infringement and to order the impoundment
and destruction of infringing copies. The term of copyright protection
depends on three factors: who created the work, when the work was created,
and when it was first distributed commercially. For copyrightable works
created on and after January 1, 1978, the copyright term for those created
by individuals is the life of the author plus 50 years. The copyright term
for "works made for hire" (see below) is 75 years from the date
of first "publication" (distribution of copies to the general
public) or 100 years from the date of creation, whichever expires first.
Generally, the copyright is owned by the person (or persons) who create the
work. However, if the work is created by employee within the scope of his
or her employment, the employer owns the copyright because it is a
"work for hire." The copyright law also includes another form of
"work for hire": it applies only to certain types of works which
are specially commissioned works. These works include audiovisual works,
which will include most multimedia projects. In order to qualify the work
as a "specially commissioned" work for hire, the creator must
sign a written agreement stating that it is a "work for hire"
prior to commencing development of the product. (Remember that this primer
deals only with United States law; most foreign jurisdictions do not
recognize the "specially commissioned" work for hire, and you
need an assignment to transfer rights in those countries). Avoiding
Copyright Infringement Current technology makes it fairly easy to combine
material created by others - film and television clips, music, graphics,
photographs, and text - into a multimedia product. Just because you have
the technology to copy these works, that does not mean you have the legal
right to do so. If you use copyrighted material owned by others without
getting permission, you can incur liability for hundreds of thousands or
even millions of dollars in damages. Most of the third-party material you
will want to use in your multimedia product is protected by copyright.
Using copyrighted material without getting permission - either by obtaining
an "assignment" or a "license"- can have disastrous
consequences. An assignment is generally understood to transfer all of the
intellectual property rights in a particular work (although an assignment
can be more limited). A license provides the right to use a work and is
generally quite limited. A discussion of the terms of licenses and
assignments is beyond the scope of this primer (this discussion takes up
several entire chapters in our book). If you use copyrighted material in
your multimedia project without getting permission, the owner of the
copyright can prevent the distribution of your product and obtain damages
from you for infringement, even if you did not intentionally include his or
her material. Consider the following example: Productions, Inc. created an
interactive multimedia training work called You Can Do It. The script was
written by a freelance writer. You Can Do It includes an excerpt from a
recording of Julie Andrews singing Climb Every Mountain. It ends with a
photograph of Lauren Bacall shown above the words, "Good luck."
In this example, if the Productions staff did not obtain permission to use
the recording of Climb Every Mountain or the photo of Lauren Bacall, You
Can Do It infringes three copyrights: the copyright on the song, the
copyright on the Julie Andrews recording of the song, and the copyright on
the photograph. Productions is also infringing Lauren Bacall's right of
publicity (which is separate from copyright) by the commercial use of her
image. Furthermore, if Productions did not acquire ownership of the script
from the freelance writer, Productions does not have clear title to Do It,
and distribution of Do It may infringe the writer's copyright in the
script. Any of the copyright owners whose copyrights are infringed may be
able to get a court order preventing further distribution of this
multimedia product.
There are a number of myths out there concerning the
necessity of getting a license. Here are five. Don't make the mistake of
believing them:
* Myth #1: "The work I want to use doesn't have a
copyright notice on it, so it's not copyrighted. I'm free to use it."
Most published works contain a copyright notice. However, for works
published on or after March 1, 1989, the use of copyright notice is
optional. The fact that a work doesn't have a copyright notice doesn't mean
that the work is not protected by copyright.
* Myth #2: "I don't need
a license because I'm using only a small amount of the copyrighted
work." It is true that de minimis copying (copying a small amount) is
not copyright infringement. Unfortunately, it is rarely possible to tell
where de minimis copying ends and copyright infringement begins. There are
no "bright line" rules. Copying a small amount of a copyrighted
work is infringement if what is copied is a qualitatively substantial
portion of the copied work. In one case, a magazine article that used 300
words from a 200,000-word autobiography written by President Gerald Ford
was found to infringe the copyright on the autobiography. Even though the
copied material was only a small part of the autobiography, the copied
portions were among the most powerful passages in the autobiography.
Copying any part of a copyrighted work is risky. If what you copy is truly
a tiny and non-memorable part of the work, you may get away with it (the
work's owner may not be able to tell that your work incorporates an excerpt
from the owner's work). However, you run the risk of having to defend your
use in expensive litigation. If you are copying, it is better to get a
permission or a license (unless fair use applies). You cannot escape
liability for infringement by showing how much of the protected work you
did not take.
* Myth #3: "Since I'm planning to give credit to all
authors whose works I copy, I don't need to get licenses." If you give
credit to a work's author, you are not a plagiarist (you are not pretending
that you authored the copied work). However, attribution is not a defense
to copyright infringement. * Myth #4: "My multimedia work will be a
wonderful showcase for the copyright owner's work, so I'm sure the owner
will not object to my use of the work." Don't assume that a copyright
owner will be happy to have you use his or her work. Even if the owner is
willing to let you use the work, the owner will probably want to charge you
a license fee. Content owners view multimedia as a new market for licensing
their material. In 1993, ten freelance writers sued the New York Times and
other publishers over the unauthorized publication of their work through
online computer services. And the Harry Fox Agency and other music
publishers have sued CompuServe, an online computer service, over the
distribution of their music on the service.
* Myth #5: "I don't need a
license because I'm going to alter the work I copy." Generally, you
cannot escape liability for copyright infringement by altering or modifying
the work you copy. If you copy and modify protected elements of a
copyrighted work, you will be infringing the copyright owner's modification
right as well as the copying right. Special Myths about the Internet Much
public domain material is available on the Net government reports and un-copyrightable factual information, for example. However, much of the
material that is on the Internet is protected by copyright. In addition to
the general copyright myths discussed above, there are a number of myths
about how copyright law applies to copying material from the Internet and
posting material on the Internet. We will discuss some of them in this
section.
Copying Material from the Net
Don t make the mistake of believing
these myths about copying material from the Net:
Internet Myth #1: If I
find something on the Net, it s okay to copy it and use it without getting
permission. While you are free to copy public domain material that you find
on the Net, generally you should not copy copyrighted material without
getting permission from the copyright owner whether you find the material
on the Net or in a more traditional medium (book, music CD, software disk,
etc.).
Internet Myth #2: Anyone who puts material on a Web server wants
people to use that material, so I can do anything I want with material that
I get from a Web server. Individuals and organizations put material on a
Web server to make it accessible by others. They do not give up their
copyright rights by putting material on a Web server. Also, the person who
posted the material may not own it.
Internet Myth #3: It s okay to copy
material from a Home Page or website without getting permission. Much of
the material that appears in websites and Home Pages is protected by
copyright. If you want to use something from someone else s Home Page or
website, get permission unless permission to copy is granted in the text of
the Home Page or website. Posting Material And don't believe these myths
about how copyright law applies to putting copyrighted material owned by
others on the Net:
Internet Myth #4: It s okay to use copyrighted material
in my Web site so long as no one has to pay to visit my Web site. Unless
your use of the copyrighted work is fair use (see Fair Use, later in this
article), you need a license to copy and use the work in your website even
if you won t be charging people to view your website. (You also need a
public display license.)
Internet Myth #5: It s okay to make other people s
copyrighted material available on my Web server so long as I don t charge
people anything to get the material. Copying and distributing copyrighted
material without permission can be copyright infringement even if you don t
charge for the copied material. Making material available for others to
copy can be contributory infringement.
When You Don't Need a License
You
don't need a license to use a copyrighted work in three circumstances:
(1)
if your use is fair use;
(2) if the work you use is in the public domain;
or
(3) if the material you use is factual or an idea.
Fair Use
You don't
need a license to use a copyrighted work if your use is "fair
use." Unfortunately, it is difficult to tell whether a particular use
of a work is fair or unfair. Determinations are made on a case-by- case
basis by considering four factors:
* Factor #1: Purpose and character of
use. The courts are most likely to find fair use where the use is for
noncommercial purposes, such as a book review.
* Factor #2: Nature of the
copyrighted work. The courts are most likely to find fair use where the
copied work is a factual work rather than a creative one.
* Factor #3:
Amount and substantiality of the portion used. The courts are most likely
to find fair use where what is used is a tiny amount of the protected work.
If what is used is small in amount but substantial in terms of importance,
a finding of fair use is unlikely.
* Factor #4: Effect on the potential
market for or value of the protected work. The courts are most likely to
find fair use where the new work is not a substitute for the copyrighted
work. If your multimedia work serves traditional "fair use"
purposes - criticism, comment, news reporting, teaching, scholarship, and
research - you have a better chance of falling within the bounds of fair
use than you do if your work is a sold to the public for entertainment
purposes and for commercial gain.
Public Domain
You don't need a license to
use a public domain work. Public domain works - works not protected by
copyright - can be used by anyone. Because these works are not protected by
copyright, no one can claim the exclusive rights of copyright for such
works. For example, the plays of Shakespeare are in the public domain.
Works enter the public domain in several ways: because the term of the
copyright expired, because the copyright owner failed to "renew"
his copyright under the old Copyright Act of 1909, or because the copyright
owner failed to properly use copyright notice (of importance only for works
created before March 1, 1989, at which time copyright notice became
optional.
The rules regarding what works are in the public domain are too
complex for this primer, and they vary from country to country.
Ideas or
Facts
You don't need a license to copy facts from a protected work or to
copy ideas from a protected work. The copyright on a work does not extend
to the work's facts. This is because copyright protection is limited to
original works of authorship, and no one can claim originality or
authorship for facts. You are free to copy facts from a copyrighted work.
Creating Your Own Works
Naturally, you don't need a copyright license for
material which you create yourself. However, you should be aware that the
rules regarding ownership of copyright are complex. You should not assume
that you own the copyright if you pay an independent contractor to create
the work (or part of it). In fact, generally the copyright in a work is
owned by the individual who creates the work, except for full-time
employees working within the scope of their employment and copyrights which
are assigned in writing.
PATENT LAW
While copyright law is the most
important intellectual property law for protecting rights in multimedia
works, a multimedia developer needs to know enough about patent, trademark,
and trade secret law to avoid infringing intellectual property rights owned
by others and to be able to take advantage of the protection these laws
provide.
Works Protected
Patent law protects inventions and processes
("utility" patents) and ornamental designs ("design"
patents). Inventions and processes protected by utility patents can be
electrical, mechanical, or chemical in nature.
Examples of works protected
by utility patents are a microwave oven, genetically engineered bacteria
for cleaning up oil spills, a computerized method of running cash
management accounts, and a method for curing rubber.
Examples of works
protected by design patents are a design for the sole of running shoes, a
design for sterling silver tableware, and a design for a water fountain.
Obtaining Patent Protection
There are strict requirements for the grant of
utility patents and design patents. To qualify for a utility patent, an
invention must be new, useful, and "non-obvious." To meet the
novelty requirement, the invention must not have been known or used by
others in this country before the applicant invented it, and it also must
not have been patented or described in a printed publication in the U.S. or
a foreign country before the applicant invented it. The policy behind the
novelty requirement is that a patent is issued in exchange for the
inventor's disclosure to the public of the details of his invention. If the
inventor's work is not novel, the inventor is not adding to the public
knowledge, so the inventor should not be granted a patent. To meet the
non-obviousness requirement, the invention must be sufficiently different
from existing technology and knowledge so that, at the time the invention
was made, the invention as a whole would not have been obvious to a person
having ordinary skill in that field.
The policy behind this requirement is
that patents should only be granted for real advances, not for mere
technical tinkering or modifications of existing inventions. It is
difficult to obtain a utility patent. Even if the invention or process
meets the requirements of novelty, utility, and non-obviousness, a patent
will not be granted if the invention was patented or described in a printed
publication in the U.S. or a foreign country more than one year before the
application date, or if the invention was in public use or on sale in the
U.S. for more than one year before the application date.
Scope of
Protection
A patent owner has the right to exclude others from making,
using, or selling the patented invention or design in the United States
during the term of the patent. Anyone who makes, uses, or sells a patented
invention or design within the United States during the term of the patent
without permission from the patent owner is an infringer - even if he or
she did not copy the patented invention or design or even know about it.
Example: Developer's staff members, working on their own, developed a
software program for manipulating images in Developer's multimedia works.
Although Developer's staff didn't know it, Inventor has a patent on that
method of image manipulation. Developer's use of the software program
infringes Inventor's patent.
Before June 8, 1995, utility patents were
granted for a period of 17 years. After that date patents are issued for
the greater of 17 years after issuance or 20 years after filing. Design
patents are granted for a period of 14 years. Once the patent on an
invention or design has expired, anyone is free to make, use, or sell the
invention or design.
Trademark Law
Trademarks and service marks are words,
names, symbols, or devices used by manufacturers of goods and providers of
services to identify their goods and services, and to distinguish their
goods and services from goods manufactured and sold by others.
Example: The trademark
WordPerfect is used by the Corel Corporation to identify
that company's word processing software and distinguish that software from
other vendors' word processing software.
For trademarks used in commerce,
federal trademark protection is available under the federal trademark
statute, the Lanham Act. Many states have trademark registration statutes
that resemble the Lanham Act, and all states protect unregistered
trademarks under the common law (non-statutory law) of trademarks.
Availability of Protection Trademark protection is available for words,
names, symbols, or devices that are capable of distinguishing the owner's
goods or services from the goods or services of others. A trademark that
merely describes a class of goods rather than distinguishing the trademark
owner's goods from goods provided by others is not protectible. Example:
The word "corn flakes" is not protectible as a trademark for
cereal because that term describes a type of cereal that is sold by a
number of cereal manufacturers rather than distinguishing one cereal
manufacturer's goods. A trademark that so resembles a trademark already in
use in the U.S. as to be likely to cause confusion or mistake is not
protectible. In addition, trademarks that are "descriptive" of
the functions, quality or character of the goods or services must meet
special requirements before they will be protected. Obtaining Protection
The most effective trademark protection is obtained by filing a federal
trademark registration application in the Patent and Trademark Office.
Federal law also protects unregistered trademarks, but such protection is
limited to the geographic area in which the mark is actually being used.
State trademark protection under common law is obtained simply by adopting
a trademark and using it in connection with goods or services. This
protection is limited to the geographic area in which the trademark is
actually being used. State statutory protection is obtained by filing an
application with the state trademark office. Scope of Protection Trademark
law in general, whether federal or state, protects a trademark owner's
commercial identity (goodwill, reputation, and investment in advertising)
by giving the trademark owner the exclusive right to use the trademark on
the type of goods or services for which the owner is using the trademark.
Any person who uses a trademark in connection with goods or services in a
way that is likely to cause confusion is an infringer. Trademark owners can
obtain injunctions against the confusing use of their trademarks by others,
and they can collect damages for infringement. Example: Small Multimedia
Co. is selling a line of interactive training works under the trademark
Personal Tutor. If Giant Multimedia Co. starts selling interactive training
works under the trademark Personal Tutor, purchasers may think that Giant's
works come from the same source as Small Multimedia's works. Giant is
infringing Small's trademark. Trade Secret Law A trade secret is
information of any sort that is valuable to its owner, not generally known,
and that has been kept secret by the owner. Trade secrets are protected
only under state law. The Uniform Trade Secrets Act, in effect in a number
of states, defines trade secrets as "information, including a formula,
pattern, compilation, program, device, method, technique, or process that
derives independent economic value from not being generally known and not
being readily ascertainable and is subject to reasonable efforts to
maintain secrecy." Works Protected The following types of technical
and business information are examples of material that can be protected by
trade secret law: customer lists; instructional methods; manufacturing
processes; and methods of developing software. Inventions and processes
that are not patentable can be protected under trade secret law. Patent
applicants generally rely on trade secret law to protect their inventions
while the patent applications are pending. Six factors are generally used
to determine whether information is a trade secret: * The extent to which
the information is known outside the claimant's business. * The extent to
which the information is known by the claimant's employees. * The extent of
measures taken by the claimant to guard the secrecy of the information. *
The value of the information to the claimant and the claimant's
competitors. * The amount of effort or money expended by the claimant in
developing the information. * The ease with which the information could be
acquired by others. Information has value if it gives rise to actual or
potential commercial advantage for the owner of the information. Although a
trade secret need not be unique in the patent law sense, information that
is generally known is not protected under trade secrets law. Obtaining
Protection Trade secret protection attaches automatically when information
of value to the owner is kept secret by the owner. Scope of Protection A
trade secret owner has the right to keep others from misappropriating and
using the trade secret. Sometimes the misappropriation is a result of
industrial espionage. Many trade secret cases involve people who have taken
their former employers' trade secrets for use in new businesses or for new
employers. Trade secret owners have recourse only against misappropriation.
Discovery of protected information through independent research or reverse
engineering (taking a product apart to see how it works) is not
misappropriation. Trade secret protection endures so long as the
requirements for protection - generally, value to the owner and secrecy -
continue to be met. The protection is lost if the owner fails to take
reasonable steps to keep the information secret. Example: After Sam
discovered a new method for manipulating images in multimedia works, he
demonstrated his new method to a number of other developers at a multimedia
conference. Sam lost his trade secret protection for the image manipulation
method because he failed to keep his method secret. RIGHTS OF PUBLICITY,
LIBEL AND OTHER LAWS In addition to the intellectual property laws
discussed above, you must also be familiar with the several other areas of
law that deal with the right of the individual to control his image and
reputation. The right of publicity gives the individual the right to
control the use of his name, face, image or voice for commercial purposes.
For example, Ford's advertising agency tried to persuade Bette Midler to
sing during a Ford television commercial. She refused. They hired her
backup singer. The performance of the backup singer was so similar to Bette
Midler that viewers thought Bette Midler was singing. On the basis of that
confusion, she sued and won $400,000 in damages. Libel and slander protect
an individual against the dissemination of falsehoods about that
individual. To be actionable, the falsehood must injure his or her
reputation or subject them to hatred, contempt or ridicule. The individual
can obtain monetary losses as well as damages for mental anguish. If you
intend to use pre-existing material from television or film, you may also
have to deal with the rights of members of the entertainment unions to get
"reuse" fees. These unions include the Writers Guild, the
Directors Guild, the Screen Actors Guild, American Federation of Musicians,
and the American Federation of Television and Radio Artists. Under the
union agreements with the film and television studios, members of these
unions and guilds who worked on a film or television program have a right
to payment if the work is reused. This topic is discussed in more detail in
our book. Although you as the multimedia developer are not signatory to
these agreements and may not be directly liable for these payments, the
license from the film and television studio will generally make you
responsible for paying them. These payments are generally modest. However,
if you are using many clips these payments can become quite expensive. If
you use professional actors, directors, or writers in developing your
product, you will also need to deal with these unions. Most of the unions
have very complex contracts developed specifically for their traditional
film and television work. They are still trying to understand how to deal
with the multimedia industry, although both SAG and AFTRA have developed a
special contract for multimedia projects. You should be aware that if you
use professional talent, you should be prepared for the additional
complexity arising out of these union agreements. HYPOTHETICAL MULTIMEDIA
CD-ROM AND WEBSITE This section will apply the legal rules just discussed
to the creation and distribution of a new multimedia work based on a
retrospective of the Academy Awards. The work is being created by a new
company, Hollywood Productions. Its intended market is individuals and film
students. It will be distributed on a CD-ROM and as a website. The work, in
addition to "story" text created by Hollywood Productions and
video footage which it shot at the Academy Awards ceremony, will consist of
the following elements: Magazine articles about the winning movies and
excepts from various books about the awards and the film industry,
including Final Cut, Reel Power, and History of American Film. Still
photographs. Excerpts from winning motion pictures. Music, including some
of the hit songs from the winning motion pictures. A. TEXT WORKS. From a
legal point of view, the "story" text created by Hollywood
Productions is treated differently from the magazine articles and book
excerpts. As the creator of the new text, Hollywood Productions will
probably own the copyright in the text, either through the work-for-hire
doctrine or assignments. For the magazine articles and book excerpts,
however, Hollywood Productions is most likely not the copyright owner.
Hollywood Productions must go to the owners of the copyrights in the
articles and books to get permission to use the articles and book excerpts.
(How to do this is discussed in more detail in our book.) B. PHOTOGRAPHS.
Copyrights in photographs are initially owned by the photographer, although
they may either be assigned to another party or transferred to the
photographer's employer under the work-for-hire doctrine. The determination
of who owns the appropriate rights in the photograph can be very difficult
and time consuming because of fragmentation in this industry. For example,
the fact that a photograph appeared in the Forbes does not necessarily mean
that the Forbes owns the copyright in the photograph. Forbes may only have
a license to use it once in its magazine. Common limitations in the
licensing of photographs include the color of reproduction, the medium
(i.e. newspapers, magazines, etc.), and attribution as well as those
relating to numbers of copies. The rights required for an interactive
multimedia work would be quite different from those which are normally
granted to use photographs. For example, the photograph may appear several
times throughout the work and the number of its appearances could be
controlled by the viewer. Such flexibility is quite different from the
rights traditionally granted in the photography industry. C. FILM AND
VIDEO. Once again, Hollywood Productions must distinguish between film or
video which it has created (the footage which it shot at the Awards
ceremony) and film or video owned by third parties (the excerpts from the
winning motion pictures). As to the material it created, the Awards
ceremony footage, if the legal issues are properly structured, Hollywood
Productions owns the copyright. The "authors" of a videotape may
include the actors, directors, scriptwriters, music composers and the
cameramen. To avoid the problems of joint ownership of copyright, Hollywood
Productions should obtain the appropriate agreements from the individuals
involved in creating its videotapes. Even if Hollywood Productions owns the
copyright in the footage of the Awards ceremony, the use of the video clips
from the ceremony may require multiple clearances, including clearing the
music used in the video clip, paying reuse fees to the entertainment unions
such as SAG and Directors Guild, and clearing the rights of publicity of
the participants. In addition, if Hollywood Productions uses
"scripted" performances from the Awards ceremony, it will have to
pay reuse fees to the writers if they are members of the Writers Guild.
Hollywood Productions must obtain permission to use the excerpts from the
winning motion pictures. The use of feature films in multimedia can be
particularly complex and expensive and generally requires multiple
permissions. Feature films are frequently based on a novel whose use is
licensed to the studio. The film may also use music developed by a third
party. Consequently, the owner of the copyright in the film may not have
the necessary rights to the music or the underlying novel to permit their
use in the multimedia work. Union reuse fees may also apply. Hollywood
Productions may also have to obtain rights of publicity releases from the
individual actors depending on their contract with the studio. D. MUSIC. To
use music in the new work, Hollywood Productions must get permission from
the owners of the copyrights in the songs. Musical composition copyrights
are usually owned by music publishers. If Hollywood Productions wants to
use excerpts of existing recordings of music - from the recorded sound
tracks of the winning films, for example - it must get permission from
owners of the copyrights in those sound recordings, in addition to getting
permission from the song copyright owners. A sound recording copyright
covers the expression added by the record developer in creating the
recording - the way the song is sung or played, the arrangement, the
mixing, and so on. Sound recording copyrights are generally owned by record
companies. If Hollywood Productions will be recording its own version of
each song, this second level of permission - permission to use an excerpt
from a copyrighted sound recording - is inapplicable. Rights in music are
quite complicated. The rights which Hollywood Productions must consider
obtaining are described below: 1. Mechanical rights. Mechanical rights are
the basic right to use a musical composition. They do not include the right
to publicly perform the music (see below). A mechanical license also does
not permit the use of the music with still or moving images. Such use
requires a "synchronization" license (see below). Although
copyright law provides a compulsory license for mechanical rights, most
licensees prefer to obtain these rights commercially through the Harry Fox
Agency or other similar agencies. This preference is based on the very
onerous payment and accounting requirements imposed by the Copyright Act
for "compulsory" licenses. 2. Synchronization license. If the
music is to be synchronized with still or moving images on a screen, the
licensee must obtain a "synchronization" license. Although these
rights may also be handled by the Harry Fox Agency, in some cases Hollywood
Productions may need to contact the musical publisher directly. 3. Public
performance rights. Hollywood Productions will probably also need a license
for public performance because its multimedia work will be shown to
students and other audiences. Such a showing would be considered a public
performance. A performance is considered public if it is "open to the
public" or at any place where a substantial number of persons outside
of the "normal circle of family and social acquaintances" gather.
Most music publishers permit either ASCAP or BMI to license their public
performance rights (Harry Fox Agency does not handle the public performance
right). 4. Right to a particular performance or recording. As described
above, if Hollywood Productions wants to use an excerpt from a particular
recording of a song, it must get permission from the owner of the sound
recording copyright. The licenses described in 1 through 3 are limited
solely to the right to use the musical composition. Thus, unless Hollywood
Productions is prepared to have new artists record the music, it must
negotiate with the holder of the rights to the particular recording (a
record company, most likely). Special Website Issues The use of these
materials on a website poses a number of special issues. First, the
licenses of third party rights would have to be worldwide in scope because
of the international nature of the Internet. It may be difficult to obtain
such broad rights, because they may be owned by different parties. For
example, many book publishers exclusively license or assign copyrights to
different companies for distribution in different countries. Consequently,
you would have to obtain clearances from several different companies for a
single work. Second, you will need to license public display rights for
text and photographs and public performance for video clips and music. You
generally don't need those rights for a CD-ROM because it is used in the
privacy of a home, although you would need public performance rights to
demonstrate the CD-ROM at trade shows. You would also need to license such
rights if the CD-ROM is to be used in a school or company where the
audience will be not be limited to family and friends. The creation of a
website, just like developing a CD-ROM, requires careful attention to the
legal as well as the technical aspects of the development. The online
industry is so new that it has few or no traditions of the roles of the
parties. The development contract needs to address the following issues:
ownership of the copyright and other rights in the completed website,
responsibility for the website design, definition of milestones in
development process, definition of website performance specifications,
method for confirming that the website meets the performance
specifications, responsibility for licensing third party software,
liability for the failure of the website to perform in accordance with the
specifications, the responsibility for continuing performance and updating
the website, method and timing of payment, remedies for failure to perform
and liability for infringement of third party rights. CONCLUSION An
understanding of legal issues is critical to success in the multimedia and
online industry. These issues are complex because of the youth of the
industry and the many industries upon which it draws to create its
products. The Multimedia Law and Business Handbook, which has been praised
by the Interactive Multimedia Association, provides a guide to these
issues. Biographies J. Dianne Brinson has a Bachelor of Arts in Political
Science and Russian, summa cum laude, from Duke University and a law degree
from Yale Law School. She teaches the "Law for Internet Users" at
San Jose State University's Internet Institute. She is also the author of a
number of articles in the intellectual property field and is a former
member of the Executive Committee of the Intellectual Property Section of
the State Bar of California. She has practiced law at firms in Los Angeles
and Atlanta. She is a former tenured law professor at Georgia State
University and has taught at Golden Gate Law School and Santa Clara School
of Law. She is now in private practice as a consultant in Menlo Park,
California. She may be reached at laderapres@aol.com. Mark F. Radcliffe is
a partner in the law firm of Gray Cary Ware & Freidenrich in Palo Alto
(formerly Ware & Freidenrich). He has been practicing intellectual
property law, with a special emphasis on computer law, for over ten years,
and has been chairman of the Computer Law Section of the Bar Association of
San Francisco and the Computer Industry Committee of the Licensing
Executives Society. He is a member of the Multimedia Law Group at Gray Cary
Ware & Freidenrich and represents many multimedia developers and
publishers. He has spoken on multimedia legal issues at the AAP, National
Association of Broadcasters annual convention, Game Developer s Workshop,
Seybold San Francisco, and IEEE. He has a Bachelor of Science in Chemistry,
magna cum laude, from the University of Michigan, and a law degree from
Harvard Law School. He has been quoted in the New York Times, Wall Street
Journal and the San Francisco Examiner on legal issues and multimedia. He
can be reached at mradcliffe@gcwf.com. NO RISK GUARANTEE! The Multimedia
Law and Business Handbook comes with a 30- day money back guarantee! If you
are not completely satisfied, just return the book for a full refund. The
book is only $44.95 (plus $7 for shipping and handling). CA residents need
to add 8.25% sales tax. You can order by calling 800-523-3721. To order by
fax (please include your Visa or MasterCard number and its expiration date)
by sending your name, and address to (810) 987-3562; or you can send it by
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48061-5030.
For more information on group discounts and the Ladera Press
Academic Program, call Ladera Press at (415) 854-0642 or write to Ladera
Press, 3130 Alpine Road, Suite 200-9002, Menlo Park, CA 94025. LICENSE
NOTICE: This article may be copied in its entirety for personal or
educational use (the copy should include a License Notice at the beginning
and at the end). It may posted on gopher and FTP sites, but please provide
notice of such posting to the authors at the addresses above. It may not be
modified without the written permission of the authors.
This primer is
based on the Multimedia Law and Business Handbook which is designed to
provide accurate information on the legal issues in multimedia.
The primer
is provided with the understanding that the authors are not engaged in
rendering legal services. If you have a legal problem, you should seek the
advice of experienced counsel.
AN INTELLECTUAL PROPERTY LAW PRIMER FOR
MULTIMEDIA AND WEB DEVELOPERS Copyright 1996 by J. Dianne Brinson and Mark
F. Radcliffe LICENSE NOTICE: This article may be copied in its entirety for
personal or educational use (the copy should include a License Notice at
the beginning and at the end).
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