An Associate's Guide to the Practice of Copyright Law

by Kent, Meaghan Hemmings; Kaufman, Joshua J.

• ISBN13: 9780195373479
• ISBN10: 0195373472
• Edition: CD
• Format: Paperback
• Copyright: 2009-08-19
• Publisher: Lexis Nexis Matthew Bender

Summary

In An Associate's Guide to the Practice of Copyright Law, Meaghan Hemmings Kent and Joshua Kaufman guide associates and other attorneys new to the area of copyright law through the often overwhelming process of learning the actual practice of copyright law-pointing out valuable resources, guiding conversations with clients, and provide a jumping-off point to became a better, more efficient, more resourceful, and more sought-after attorney. Book jacket.

Author Biography

Meaghan Hemmings Kent is a senior associate at Venable, LLP, where she focuses her practice on intellectual property litigation, including patent, trademark and copyright claims. She also has experience in trademark prosecution before the USPTO, and proceedings before the Trademark Trial and Appeal Board.
Joshua Kaufman is a partner at Venable, LLP, where he is the head of the firm's Copyright and Licensing group. He counsels and litigates in the fields of copyright, e-commerce, licensing, art, intellectual property, software, on-line issues, trademark, entertainment, media and literary law. Mr. Kaufman was one of the nation's first computer and cyber lawyers. Kaufman is also one of the country's most well-known art lawyers and represents a wide variety of artists, art publishers, art licensing agents and art licensees.

Table of Contents

About the Authors	p. xiii
Acknowledgments	p. xv
Brief Introduction	p. 1
Copyright Basics	p. 3
ACopyright Is a Bundle of Exclusive Rights	p. 3
The Law of Copyright Exists in Statutory and Case Law	p. 4
Copyrights Protect Original Works of Authorship	p. 7
Only the "Expression" of an Original Work Is Copyrightable	p. 8
A "Derivative" or "Compilation" of Copyrightable Works Is Itself Copyrightable	p. 8
Copyright Protection Exists with Creation	p. 9
Registration Enhances Copyright Protection and Remedies	p. 10
Registration Is a Prerequisite to Copyright Litigation	p. 10
Copyrights Are Usually Owned by the Author	p. 11
Under the "Work for Hire" Doctrine, the Employer or Commissioner Owns the Copyright	p. 11
When the Author Cannot Be Located or Identified, the Work Is Called an "Orphan Work"	p. 13
Copyright Protection Lasts for Varying Amounts of Time	p. 14
"Publication" Is a Central Event for a Copyrighted Work	p. 15
Copyright Registration and Notice	p. 19
Copyright Registrations: Explaining the Benefits to a Client	p. 21
The Cost of Registration Is Low	p. 21
The Benefits of Early Registration Are Significant	p. 23
Registration Is Required Before Litigation	p. 24
Registration Allows Recordation with U.S. Customs	p. 25
Copyright Registration: The Guidelines	p. 25
Copyright Registration: The Application	p. 25
The Forms Vary Depending on the Work	p. 25
The Deposit Material Requirements Vary Depending on the Type of Work	p. 26
The Fees Vary Depending on the Method of Registration	p. 28
Copyright Registration: The Method	p. 28
Copyright Registration: Completing the Application	p. 30
The Work Being Registered	p. 30
1a: Work Being Registered	p. 30
1b: Title of the Work	p. 31
1c: Serial Issues	p. 31
1d: Previous or Alternative Titles	p. 31
1e: Year of Completion	p. 31
1f: Date of Publication	p. 31
1g: ISBN	p. 32
1h: Nation of Publication	p. 32
1i: Published as a Contribution in a Larger Work	p. 32
1j: More Regarding Serial Issues	p. 32
1k: Preregistered Works	p. 32
Author	p. 33
2a: Personal Name/2b: Organization Name	p. 33
2c: Doing Business As	p. 33
2d: Year of Birth/2e: Year of Death	p. 33
2f: Citizenship, Domicile	p. 33
2g: Author's Contribution	p. 33
2h: What the Author Created	p. 34
Claimant	p. 34
3a: Personal Name/3b: Organization Name	p. 34
3c: Doing Business As	p. 34
3d: Address	p. 34
3e: Where Claimant Is Not an Author	p. 34
Limitation of Copyright Claim	p. 34
4a: Material Excluded from the Claim	p. 35
4b: Previous Registrations	p. 35
4c: New Materials Included in the Claim	p. 36
Rights and Permissions Contact	p. 36
Correspondence Contact	p. 37
Registration Certificate Contact	p. 37
Certification	p. 37
Copyright Registration of Computer Programs	p. 37
Expediting Registration	p. 40
Preregistration	p. 41
After the Registration Certificate Issues	p. 43
Copyright Notice Should Be Included on All Works	p. 43
A Copyright Notice Includes Three Elements	p. 44
Copyright Transfer: Licenses and Assignments	p. 47
Ownership of Copyrights	p. 48
Copyright Transfer	p. 48
Assignments	p. 49
Licenses	p. 49
Ownership of the Work Is Not the Same as Ownership of the Copyright	p. 50
An Effective Transfer Requires Two Main Elements	p. 50
A Nonexclusive License Is Not Technically a "Transfer"	p. 51
A Transfer Can Be Recorded with the Copyright Office	p. 52
Effecting a Recordation	p. 52
Advantages of Recordation	p. 53
A Transfer May Be Terminated to Recapture the Renewal Period	p. 54
Drafting Agreements	p. 55
Work for Hire Agreement	p. 55
Assignment	p. 56
Exclusive License	p. 57
Nonexclusive License	p. 59
Licensing in Specific Fields	p. 60
Music Licensing	p. 60
Obtaining the Rights	p. 60
Rates	p. 62
Art Licensing	p. 63
Book Licensing	p. 65
Obtaining Permission to Use a Book or Portions of a Book	p. 65
Publication Agreements and Book Deals	p. 67
Licenses in Educational Settings	p. 69
Licensing in Religious Settings	p. 72
Use of a Person's Image-The Right of Publicity	p. 72
Digital Millennium Copyright Act (DMCA) Take-Down Notices	p. 75
Service Provider Protection through the Safe Harbor	p. 76
Drafting the Take-Down Notice	p. 77
Determine the Designated Agent	p. 77
Required Elements of the Take-Down Notice	p. 77
When to Use This Alternative	p. 78
There Are Negative Implications for Those Who Abuse the Process	p. 79
How to React When a Client's Materials Have Been Subject to a Take-Down Notice	p. 79
Drafting the Counter Notice	p. 80
Preventing a DMCA Take-Down Notice	p. 81
Ensuring Compliance with the DMCA if Your Client Is a Service Provider	p. 81
Cease and Desist Letters	p. 85
The Pros and Cons of a Cease and Desist Letter	p. 86
The Cost of a Cease and Desist Letter Is Lower Than Litigation	p. 86
Cease and Desist Letters Can Garner a Speedier Result Than Litigation	p. 87
Cease and Desist Letters Lack Teeth	p. 87
Cease and Desist Letters Can Instigate Litigation that Your Client May Not Be Prepared For	p. 87
Weighing the Pros and Cons	p. 89
Consider Filing a Complaint Before Sending a Cease and Desist Letter	p. 89
Research to Conduct Before Sending a Cease and Desist Letter	p. 91
Verify that the Work Is Copyrightable	p. 91
Verify the Copyright Ownership	p. 92
Question Any Licensing History	p. 92
Consider the Accused Infringer's Potential Defenses	p. 93
Evaluate Registration	p. 93
Make Sure There Is an Infringement	p. 93
Research the Extent of the Infringement	p. 94
Research the Recipient	p. 94
The Potential Outcomes and Repercussions	p. 94
Drafting the Letter	p. 95
Determining Who Should Receive the Letter	p. 95
Elements to Include in the Letter	p. 97
How to Respond to a Cease and Desist Letter	p. 98
Provide Your Client with a Litigation Hold Notice	p. 100
Copyright Litigation	p. 103
Steps to Take Prior to Filing a Claim for Copyright Infringement	p. 107
Register the Copyright	p. 108
Evaluate Whether There Is a Claim	p. 109
Determine the Ownership of the Copyright	p. 109
Ensure That the Copyright Is Valid	p. 110
Determine Whether You Can Show Copying	p. 111
Access to the Copyrighted Work	p. 111
Substantial Similarity	p. 112
Consider Problems with Your Case and Any Defenses	p. 115
Evaluate the Strength of the Infringement Case	p. 115
Consider the Strength of the Copyright	p. 115
Nonprotectable Elements of a Copyrighted Work	p. 115
The Merger Doctrine	p. 115
Thin Copyrights	p. 116
Consider the Strength of the Infringement	p. 117
Comparing the Works for Substantial Similarity	p. 117
Evaluating the Extent of the Infringement	p. 118
Determine and Research the Defendant(s)	p. 119
Consider Where to File	p. 120
Impose a Litigation Hold	p. 121
Drafting, Filing, and Serving a Complaint	p. 122
Venue and Jurisdiction	p. 122
Subject Matter Jurisdiction	p. 122
Personal Jurisdiction	p. 123
Venue	p. 124
Factual Background	p. 125
Causes of Action	p. 125
Filing the Complaint and Additional Materials	p. 128
Civil Cover Sheet	p. 128
Summons	p. 129
Corporate Interest and Financial Interest Disclosure Statement	p. 129
Copyright Form-AO121	p. 129
Service	p. 130
Amending the Complaint	p. 131
Preliminary Injunctive Relief	p. 131
Temporary Restraining Orders	p. 131
Preliminary Injunctions	p. 132
When Your Client Receives a Complaint	p. 133
Service	p. 133
Insurance Issues	p. 134
Litigation Hold	p. 136
Receiving an Amended Complaint	p. 136
Initial Dispositive Motions	p. 137
Motions That Must Be Filed Before Answering	p. 137
Personal Jurisdiction	p. 137
Improper Venue	p. 138
Motions That May Be Filed Before Answering	p. 138
Subject Matter Jurisdiction Can Be Raised Before Answering or Any Time Thereafter	p. 139
Timing of Motions and Answers	p. 139
Answering, Defenses, Counterclaims	p. 140
Answering	p. 140
Affirmative Defenses	p. 142
Statute of Limitations	p. 143
Abandonment or Forfeiture of Copyright	p. 144
The Work Is in the Public Domain	p. 144
Independent Creation	p. 145
Fair Use	p. 146
License or Implied License	p. 147
Merger Doctrine or Unprotectable Elements	p. 148
Fraud on the Copyright Office	p. 149
Unclean Hands	p. 150
Copyright Misuse	p. 150
Innocent Intent	p. 150
Equitable Estoppel	p. 151
Counterclaims and Crossclaims	p. 151
Remedies	p. 153
Monetary Damages	p. 153
Costs and Attorneys' Fees	p. 156
Injunctions	p. 156
Destruction of the Infringing Goods	p. 158
Discovery	p. 158
Rule 26 Disclosures	p. 160
Written Discovery	p. 160
Plaintiff's General Requests	p. 161
Defendant's General Requests	p. 163
Interrogatories	p. 164
Creation of the Work	p. 165
Validity	p. 166
Ownership	p. 166
Infringement	p. 167
Damages	p. 168
Defenses	p. 169
General Discovery	p. 170
Counterclaims	p. 170
Requests for Admission	p. 171
Requests for Production of Documents and Things	p. 175
Creation of the Work and Validity	p. 177
Ownership	p. 178
Infringement	p. 178
Damages	p. 180
Defenses	p. 181
General Discovery	p. 181
Counterclaims	p. 182
Confidentiality Agreements/Protective Orders	p. 182
Responding to Written Discovery	p. 182
Interrogatories	p. 183
Requests for Admission	p. 186
Requests for Production of Things and/or Documents	p. 187
Subpoenas	p. 189
Issuing a Subpoena	p. 189
Responding to a Subpoena	p. 192
Depositions	p. 192
Who to Depose	p. 192
When to Take the Depositions	p. 193
Noticing the Deposition	p. 194
Depositions of an Organization	p. 195
Preparing to Take a Deposition	p. 195
Creation of the Work	p. 196
Validity	p. 196
Ownership	p. 196
Infringement	p. 197
Damages	p. 197
Defenses and Counterclaims	p. 197
Taking a Deposition	p. 198
Defending a Deposition	p. 203
Discovery Disputes	p. 205
Motions to Compel	p. 205
Protective Orders	p. 206
Experts	p. 207
Types of Experts	p. 207
Locating an Expert	p. 208
Communications with an Expert	p. 210
Expert Reports	p. 211
Deposition of an Expert	p. 212
Motions to Exclude Experts	p. 213
Dispositive Motions	p. 214
Hearings	p. 216
Settlement and Mediation	p. 217
Pretrial	p. 220
Trial and Preparing for Trial	p. 222
Post-Trial	p. 223
Equitable Relief	p. 223
Relief from Judgment	p. 224
Collecting on a Judgment	p. 225
Recovering Fees and Costs	p. 225
United States Customs and the International Trade Commission	p. 231
U.S. Customs Recordal	p. 232
Recordal	p. 232
Enforcement	p. 234
International Trade Commission	p. 235
Appendix	p. 239
Table of Cases	p. 307
Index	p. 313
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