It is beneficial to have advertising undergo legal review prior to release. Such review should generally cover a number of different concerns, including false advertising, trademark infringement, right of publicity/privacy, copyright infringement, special considerations for regulated industries (i.e., industry-specific laws and regulations requiring certain disclosures, etc.), medium-specific requirements (for commercial email, phone marketing, TV/radio broadcasting, etc.), and more. The following addresses legal treatment in the USA. Laws may differ in other countries. Legal review of particular advertisements should be directed to a knowledgeable attorney in the relevant jurisdiction(s).
Establish Advertising Review Procedures
In general, have a procedure for advertising review before that advertising is released. Be clear about how such protocols apply to business-related social media or other online accounts, which are usually just another form of advertising. Also be clear how these procedures apply to vendors, consultants, and spokespersons operating on your behalf. You very well may be responsible and liable for their actions, and you should not assume they will automatically comply with the law or your own requirements. Periodically check to see that these protocols are actually being followed.
Make sure that appropriate documentation is created and maintained. For instance, require sufficient record-keeping to preserve any licenses, authorizations, releases, objective evidence supporting ad claims, and the like. Retain those records for a sufficient time and in a place where they can be located (by others) if and when needed. Online advertisements may be active for many years, and various portions of ads might be reused for later ones, so such records should ideally be kept as least as long as as the advertising material is in use.
The scope and thoroughness of advertising reviews should take into account the prominence and scope of the advertising. Major mass media ad campaigns deserve extra attention. Also, anything that “feels” questionable, or seems to push boundaries of legal or ethical acceptability, should also receive appropriate review. Lastly, focus should be drawn to things that are most material to prospective consumers.
Many laws regulating advertising exist because businesses often have incentives to be less than truthful or accurate. The point of marketing is to create demand, which can easily turn into a matter of lying or dubiously creating meaning out of nothing. Moreover, marketing and sales people, as individual employees or vendors, may feel pressured to put out legally prohibited or at least questionable content to satisfy management or others. People may also argue for a race to the bottom, pointing to questionable if not clearly illegal conduct by others as justification for doing the same—or worse. On top of that, some illegal advertisements go unpunished simply due to lack of resources by enforcement agencies and there may be arguments to try to get away with something on that basis. Advertising reviews should allow an opportunity to put a halt to efforts that run afoul of the law or that simply put a business in an undesired light (even if legal).
Trademarks
Trademarks should be legally cleared as part of initial selection. That is, make sure you select a mark that will not create a likelihood of confusion with one already in use by another entity. Trademark infringement can arise even if the marks are not identical and even if the goods and services are not the same. This is the best way to avoid infringement allegations. Of course, this is less about use of a mark in a specific advertisement than about overall branding strategies.
Another issue to consider in any given ad is proper usage of your own trademark(s). This is about maintaining rights in your own mark(s). Use your mark(s) consistently, as a source-identifying trademark (as an adjective rather than a noun or verb), and use appropriate symbols (®, ™, SM) or comparable trademark identifications (like “Reg. U.S. Pat. & Tm. Off.”). Even if marketing folks think it is appealing to misuse trademarks in an ad, doing so can damage trademark rights or even result in loss of trademark rights—sometimes called genericide.
The next issue to consider is any usage of someone else’s trademark(s). While comparative advertising is permissible, and nominative or descriptive fair use may apply, intentionally using someone else’s trademark or something confusingly similar to someone else’s mark should receive extra scrutiny. Use of comparative advertising has marketing benefits but also tends to heighten the risk of a legal dispute under trademark and/or advertising law.
To help reduce risks associated with comparative advertising, you should at a minimum make sure statements are not false or misleading (including both express statements and any implied meanings even if not the only possible interpretation), material information is not omitted, comparisons are fair (and not “apples to oranges”), and material support for claims is documented before making them. Consider also the context, and avoid anything that makes a competitor’s trademark more prominent than your own or that otherwise may confuse consumers about the source of the goods or services.
Also think about what you would think if the situation was reversed. That is, what if your competitor was using your trademark in the way you plan to use your competitor’s mark? Would you have concerns?
“Dilution” is another area of law that gives special additional rights to famous brands. Tarnishing or blurring the rights of a famous brand can give rise to liability. Advertising that looks like it rides on or nips at the coattails of a famous brand could give rise to dilution issues, potentially, even if it would not raise trademark concerns for an ordinary, non-famous brand.
False Advertising and Truth in Advertising
The Federal Trade Commission (FTC) has national authority to prevent unfair methods of competition and unfair or deceptive acts or practices in or affecting interstate and foreign commerce. Federal trademark law also allows private businesses to sue on certain false advertising claims. Additionally, states have various advertising, unfair competition, and deceptive trade practices laws. Most of these laws are somewhat open-ended. But, in general, they can apply to advertising and generally require that ads not be unfair or deceptive/misleading.
The standards for truthful advertising can be a little fuzzy. These matters are prone to judgment calls. But some of the most basic considerations and requirements are as follows (see also FAQs from the FTC).
Advertising claims must be substantiated by evidence in advance. It is not sufficient to make a statement based on a hunch that you can (try to) justify it later if needed. This is because advertisers imply that there is a reasonable basis for such a claim. Even statements in ads that later turn out to be true are legally prohibited if there is not a “reasonable basis” for the claims, meaning there is objective evidence that supports the claim. Tests or studies used to support advertising claims must be conducted using methods that experts in the field accept as accurate. They also must be commensurate with the advertising claims actually being made.
Mere “puffery” that reflects a purely subjective claim that consumers would not take seriously/literally is generally permissible without substantiation. For instance, a claim to offering “the best cup of coffee in the world” or that “our widgets are excellent” is often acceptable because consumers will recognize it as a purely subjective statement of opinion. But a claim with an objective (factual) component like “rated the best by most doctors” or “more consumers prefer our widgets to any other” or “our widgets last longer than the most popular brands” would not be seen as mere puffery by consumers. These latter types of objective advertising claims must be both true and substantiated. Context can also matter in these distinctions.
The FTC especially scrutinizes health & fitness and safety claims, for instance, and advertising directed at children (especially those under age 13) is also regulated more. Claims and implications that products are made in the USA, and “green” or environmental-friendliness claims also tend to be areas of frequent concern. Competitors may also take issue with false or misleading comparative advertising claims, which are discussed above with respect to trademarks. Certain types of claims may also implicate other agencies or laws, such as the Food & Drug Administration (FDA), which has other requirements for certain drugs and cosmetics and associated advertising.
Warranties and guarantees are subject to special legal requirements. Some of these pertain to how they are advertised. Others pertain to disclosure requirements for stating the terms and conditions as well as making those available pre-sale.
Endorsements and testimonials, including those by “influencers”, can raise many questions about whether their use is truthful and not misleading. The FTC provides an endorsement guide that is worth consulting. Some common concerns involve failing to disclose that someone is a paid endorser/influencer or misleading consumers about an endorser’s use or familiarity with the product or service in question (or lack thereof).
Copyrights
Copyright clearance is an important part of advertising review. Materials used in ads like photos, graphics, text, etc. that are not completely original creations require permission to be used. Unauthorized use may constitute copyright infringement. Copyright clearance should involve obtaining and documenting—in writing—authorization for use of any copyrighted materials that are used, including legally reasonable verification that the materials are uncopyrighted or have fallen into the public domain.
There are many nuances about who owns copyright and what is permissible to do with someone else’s copyrighted work. When vendors or consultants are involved, and they often are when it comes to ad copy, you do not automatically own the copyright just because you paid for it. There can be implied licenses. But new, unexpected, or gradually expanded use might exceed an implied license. Also, there are many myths about what is legally permitted. For instance, there is no bright-line legal rule that says changing 10% of a copyrighted work or four things in a work—or some other percentage or number—avoids infringement liability.
When you get a license, make sure the scope covers your intended use. It is fairly easy to slip up and get the wrong license, or misunderstand the scope of the license you paid for. Also, consider getting an indemnity from the party licensing materials to you.
Fair use may apply, sometimes. But that is a context-specific, multi-factor analysis without any bright lines. And in the advertising context, the commercial nature of the use is a factor explicitly counted against a finding of fair use by statute. It is true that parody and criticism can occur even in a commercial advertisement as a fair use. Yet such things may only support fair use if they parody or criticize the particular work in question as opposed to merely using it without authorization to parody or criticize something else. There is a tendency for claims of “fair use” to be overused and unjustified in the context of commercial advertisements. Many times, you simply need authorization, such as a paid license.
And, no, just because something was available on the Internet does not mean that is can be freely used in an advertisement.
Rights of Publicity and Privacy
The rights of publicity/privacy are potentially implicated any time advertising materials contain a person’s name or likeness without their consent or authorization. These issues most often arise in the context of the unauthorized commercial use of photos or videos that depict famous people or celebrities or that thrust a private person into the public spotlight.
Review of advertising should include verification that their is an appropriate release from any persons whose name or likeness is used. A release of this sort is sometimes called a “model release”. Although in other industries this might go by other names or be included within another agreement, such as a “materials release” in film or TV productions.
Bear in mind, however, that having a copyright license to a photo, video, or the like is not enough, alone, to clear any right of publicity/privacy issues. These releases and copyright licenses often need to come from different people. For instance, a copyright license or assignment for a photograph would often come from the photographer while the publicity/privacy release would come from the person(s) appearing in that photograph (or a parent/guardian).
Some states have laws limited rights of publicity for deceased people. There can also be exceptions for references to public figures, although those exceptions probably will not apply to commercial advertisements that give the impression of an endorsement or approval.
If obtaining stock images, consult the terms of a license to see if a model release is included. If not, use of the stock photo may still give rise to issues. For example, sometimes a minor celebrity’s likeness might appear in a stock photo unintentionally. Or, as another example, if your intended use would tend to portray the person depicted in a false light, such as implying that the person has a disease, committed wrongdoing, or would embarrass them, there may be a claim for invasion of privacy or a similar “false light” claim.
Disclaimers
A disclaimer may be helpful but is not a “get-out-of-jail-free” card. Use of a disclaimer will not undo otherwise false, misleading, or confusing ad content. That is to say a disclaimer is only helpful to the extent it is actually effective on the viewing audience. This is something you can generally only speculate about in advance. Accordingly, while a disclaimer may be worthwhile, it may be a helpful exercise to ignore any such disclaimer as part of an initial legal review and consider the other content of the advertisement as if the declaimer was not present at all.
Email Advertisements and Anti-SPAM Law
The CAN-SPAM Act governs commercial advertising emails. Those are emails whose primary purpose is commercial. Emails whose primary purpose is to provide transactional or relationship content (which facilitates an already agreed-upon transaction or updates a customer about an ongoing transaction) or other content (which is neither commercial nor transactional or relationship, such as political campaign information) is not covered by the federal CAN-SPAM laws. States also have various email marketing laws but those are mostly preempted by federal law and therefore inapplicable to commercial emails (except for fraud and deception issues).
General requirements for compliant email advertising, as explained in an FTC guide, include:
Accurately identify the person or business who initiated the message and do not use false header information
Don’t use deceptive subject lines
Clearly and conspicuously disclose that your message is an advertisement (not required if the recipient has previously expressly opted-in to such emails)
Include your valid physical postal address
Include a clear and conspicuous explanation of how the recipient can unsubscribe (opt out) from future messages, such as a reasonably prominent, working “unsubscribe” link
Honor unsubscribe (opt out) requests promptly
Make sure vendors and employees are following the law
One area that can give rise to issues involves use of purchased email lists. Despite the fact that vendors sell them does not mean that it is legal for you to use them in any and every possible way for mass email marketing purposes. It still matters how you send email messages and the specific content of those messages. For instance, use of a purchased list should not override a prior opt-out request. But, on the other hand, use of purchased email lists is not expressly prohibited under CAN-SPAM and prior consent (that is, an opt-in) is not required, so long as the sender (initiator) of the message clearly and conspicuously identifies a commercial email as an advertisement.
In practical terms, mass email service providers may have their own policies that are more restrictive that any applicable laws. Such providers are sensitive to spam reports and may take action to block you or terminate your account if too many complaints are received. That could happen even if complaints fail to allege anything illegal or are baseless (such as a spam report by someone who expressly opted in). For instance, some providers prohibit the use of their services or platform to send emails to purchased email lists—even if laws do not specifically prohibit doing so.
Phone and Broadcast Advertisements
The Federal Communications Commission (FCC) has authority over phone and TV/radio broadcasts. There are additional rules and regulations that apply to advertisements and commercial messages in those formats. For instance, randomly dialed robocalls are generally prohibited. In addition, the FTC maintains a “do not call” registry for telemarketing that must be honored.
Consumer Privacy and Handicap Accessibility
There is also a growing body of laws regulating collection and retention of consumer data, particularly at the state level (e.g., California’s CCPA) and in foreign countries—like GDPR in Europe and PIPEDA in Canada. But some federal laws may apply too. These laws can be implicated by online advertising, for instance. Collection and use of personally identifying consumer information should be scrutinized. In some cases, even laws involving biometric information privacy could be implicated. The sale, purchase, and/or exchange of consumer personal information to or from brokers, business partners, or other third parties and the collection of online ad or web page tracking data are of particular significance here.
Additionally, consider whether online advertisements implicate laws requiring accessibility for persons with disabilities. These can arise from state or federal law, potentially. General online accessibility standards and best practices are useful here, and might be worthwhile to implement even if not strictly required by law for certain commercial advertisements. Bear in mind, however, that “accessibility” is something of a moving target and is not defined by bright lines.
When working with vendors and contractors, be aware that they may try to push compliance burdens onto you via contractual terms. This might even extend to situations where vendors are selling services or tools that cannot conceivably be used in a legally compliant manner, or at least not in ways with any practical value to the advertiser.
Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.
The Digital Millenium Copyright Act (DMCA) created a notice and takedown provision in §512 of the U.S. copyright laws for alleged online infringement. Essentially, online service providers have a safe harbor against monetary liability for infringing materials that their users/customers post online if they comply with takedown notices alleging copyright infringement. These online service providers need to meet certain additional requirements to qualify. But the basic tradeoff is that the online service providers do not have to monitor and screen materials before they are posted if they commit to acting expeditiously on takedown notices.
Requirements for a DMCA Takedown Notice
To be legally effective, DMCA takedown notices must include certain things specified by law, quoted below. There must be a copyright work being infringed. But a copyright registration is not a prerequisite. DMCA takedown notices can be sent even for unregistered copyrighted works. However, fair use must be considered before sending a DMCA notice.
a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following:
(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.
(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.
(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.
(v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.
(vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
The U.S. Copyright Office provides a takedown notice form that can be filled out and sent to an online service provider. But there is no requirement to use that particular form. Any written notice containing the necessary information can be used.
Counter Notices by Someone Wrongfully Accused
A user who believes he or she was wrongfully accused in a DMCA takedown notice that resulted in online materials being taken down can potentially send a counter notice to the online service provider (17 U.S.C. §512(f)). A counter notice is a counter allegation that the material was removed as a result of mistake or misidentification of the material, and a request for reinstatement of that material. After a counter notice is sent, the original accuser (that is, the alleged copyright owner) has 10-14 business days to sue or the online service provider must restore the material.
To be legally effective, DMCA counter notices must include certain things specified by law, quoted below.
a counter notification must be a written communication provided to the service provider’s designated agent that includes substantially the following:
(A) A physical or electronic signature of the subscriber.
(B) Identification of the material that has been removed or to which access has been disabled and the location at which the material appeared before it was removed or access to it was disabled.
(C) A statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled.
(D) The subscriber’s name, address, and telephone number, and a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber’s address is outside of the United States, for any judicial district in which the service provider may be found, and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.
The U.S. Copyright Office provides a counter notice form that can be filled out and sent to an online service provider to request reinstatement of taken down materials. But there is no requirement to use that particular form. Any written counter notice containing the necessary information can be used.
Liability for Notices and Counter Notices
Anyone who “knowingly materially misrepresents” (1) that material or activity is infringing, or (2) that material or activity was removed or disabled by mistake or misidentification, shall be liable for any damages, including costs and attorneys’ fees (17 U.S.C. §512(f)). This allows the alleged infringer to sue for a bad faith takedown notice, or the copyright owner to sue for a bad faith counter notice.
Advantages and Disadvantages of Takedown Notices
An advantage of this system for copyright owners is that if an infringing work is discovered online, a DMCA notice is potentially a low-cost avenue to have it removed. On the other hand, the need to monitor for online infringement and send notices—potentially many of them—can be burdensome. For users, the ease of sending takedown notices can mean they are abused. There can be legitimate questions about independent creation, fair use, the idea/expression dichotomy, uncopyrightable facts or scènes à faire, etc. Sometimes DMCA notices can even be sent in bad faith.
Not all countries have a DMCA-like provision in their copyright laws. So a notice might result in material being taken down in the USA. But infringement may still arise on platforms operated outside the USA. In those situations, other action like a formal lawsuit may be necessary.
A related approach for takedowns of infringing material online involves sending notices to domain registrars and web hosting companies. For web sites hosted in certain other countries this might be the only available option short of litigation.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
Assignments of intellectual property (IP) such as for patents, trademarks, and copyrights are sometimes signed and then an error is later discovered. This is often due to a clerical or typographical error or other inadvertent mistake. For instance, there might be a typo in the number identifying a given patent, patent application, trademark registration, or trademark application in a schedule listing many. It is possible—and beneficial—to correct an assignment to fix such errors, which can then allow correction of any prior recordation of the original assignment. But how can such a correction properly be made? There are a few different possibilities, including using mark-ups or creating a new corrective document.
Marking-Up and Approving Corrections
One approach suggested by the U.S. Patent & Trademark Office (USPTO) (in MPEP 323 & 323.01(b) and TMEP 503.06(b)) and the U.S. Copyright Office (in Compendium 2308.1) for making corrections to an assignment is to have each of the parties conveying the property in question, that is, all of the assignor(s), make and approve corrections on the original signed assignment. This involves the following steps:
Cross out the incorrect text or number (using strikethrough or a conventional proofreader’s delete/dele/deleatur mark through the text with a protruding loop)
Write in the the correct text or number next to the crossed-out information (ideally immediately above it) using printed or typed lettering; use a caret mark or similar line or arrow to show the proper place of insertion, if helpful (a suggested practice if the only or best available space for newly inserted material is in a nearby area spaced from the crossed-out information, such as at a page margin)
Have each and every assignor initial (or fully sign) and date the marked-up corrections; full signatures are also acceptable and are appropriate if multiple signatories have the same initials; if the assignee originally signed the document then the assignee should initial/sign and date the changes too
An example excerpt of a marked-up patent assignment document to correct an error on the original is provided below. In this example, the city of residence (Paris) of one inventor-assignor was incorrect and has been crossed out and the correct city name (Neuilly-sur-Seine) written immediately above it (using deleatur and caret proofreading symbols). Both of the two inventor-assignors (Joe Public/J.P. and Jane Doe/J.D.) have initialed and dated the marked-up change.
Excerpt of example marked-up corrections of error on patent assignment with dated inventor-assignor initials
An advantage of marking up the original assignment is that doing so leaves no doubt that terms of the original assignment are still effective. The mark-ups make explicitly clear what specifically has been corrected. The adjacent initials/signatures and dates also clarify who approved the corrections and when. With the error in the original corrected, the chances that anyone might later cast doubt on the assignment due to that error are reduced or eliminated.
The retroactive (nunc pro tunc) effect of the corrections to the date of the original transfer of rights is inherent in the nature of marking-up and initialing/signing (and dating) changes on the original assignment document. This might be significant if something occurred between the time the original was signed and the time the error was discovered and corrected. For instance, if the original assignment with the error was already recorded, making marked-up corrections on the original facilitates recording the corrected document while making clear what specifically has changed.
The USPTO and the Copyright Office do not expunge or delete the previously recorded document, but instead further record corrected document(s) while noting that it is a corrective recordation. Although, uniquely, the Copyright Office will allow substitution of a corrected assignment within ten (10) business days of the original submission.
Keep in mind, however, that many aspects of assignments are a matter of state (or foreign) contract law, not USPTO or Copyright Office administrative procedure or even U.S. Federal patent, trademark, or copyright statutory law. Under black letter U.S. contract law, and presumably that of most other countries, it is not permitted to unilaterally modify or alter a contract after it has been signed. That may make the original voidable and may even be considered forgery, unless the assignment expressly permits a particular change (like later inserting application filing details). But having initials/signatures next to the changes from all the parties that originally signed the assignment removes doubt about their recognition of an error in the original and the fact that the correction/amendment was later made with their knowledge and approval. Although any material changes negatively affecting rights of the assignee or others will merit further attention, despite assignor approval.
However, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. Marked up corrections are not needed in that scenario, because the assignment with the error was not yet effective.
Newly-Created Corrective Assignment
Marking up and approving corrections to the original assignment is not those only way to correct errors. An alternative approach is to create a new corrective assignment document and have it signed by all the parties (meaning at least all the assignors). Federal agency guidebooks, in MPEP 323.01(b) (for patent assignments), TMEP 503.06(b) (for trademark assignments), and Compendium 2308.1 (for copyrights), recognize the possibility of such an approach for correcting previously-executed assignments.
For instance, if errors in a signed assignment are lengthy/voluminous, there is little available space to mark-up corrections, or the number of signatories does not leave enough space to add all their initials and dates, then a preparing and signing a new corrective assignment might be preferable to mark-ups. But if the original assignment containing the error was already recorded, or there has already been some reliance on that original assignment, any new “corrective” assignment may need its terms written to explicitly be retroactive to the effective date of the original. It is helpful if the title is identified as a “corrective” assignment too—although more than just the title should be changed. But the effort to create a new corrective document might be greater than using mark-ups.
A retroactive assignment is called a nunc pro tunc assignment, which is latin for “now for then”. These are widely used to correct errors in a prior assignment. The USPTO’s electronic assignment recordation systems EPAS and ETAS even have a special option for these, allowing the earlier date to be specified.
The USPTO describes a nunc pro tunc patent assignment recordation request as “[a] request to record an assignment, which includes documentation of transactions which occurred in the past but have not been made a matter of record in the USPTO.” This description implicitly treats nunc pro tunc patent assignment recordations as being (only) for corrective, confirmatory, or supplementary assignments. It means such a recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the effective date prior to the execution date on which the new assignment document was fully signed).
The USPTO describes a nunc pro tunc trademark assignment as “an assignment that was prepared recently and is being recorded now, but the actual transfer occurred in the past. It is a complete transfer of ownership of trademark rights from the assignor/ (conveying party) to the assignee/ (receiving party). Use this conveyance type if the document being recorded was prepared after the time when ownership was actually transferred and after the time it should have been prepared and recorded, and has a retroactive effect. The execution date is usually later than when the actual transfer of ownership occurred.”
Lastly, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. A nunc pro tunc assignment or other explicit terms to provide a new, retroactive corrective assignment are not needed, because the assignment with the error was not yet effective.
Standing Limitations on Retroactive Patent Assignments
Corrective patent assignments, when necessary, should be completed before commencing a lawsuit for infringement. Courts generally do not allow nunc pro tunc patent assignments to provide retroactive standing to sue for infringement. The execution date on which a nunc pro tunc patent assignment was signed—or the date on which the last signature was obtained if multiple parties sign on different dates—is normally the effective date that controls for matters affecting standing. According to one district court, this also means that any subsequent assignments in a chain of title that were executed before a corrective nunc pro tunc assignment require further corrective action as well, because other purported assignments downstream in the chain were ineffective when executed (nemo dat quod non habet — one cannot give what one does not have). Clearing up chain-of-title issues before bringing suit allows the intended plaintiff(s) to be named, averting a possible ground for dismissal of the lawsuit due to the absence of a necessary party.
But not all nunc pro tunc assignments implicate standing. Minor corrections and supplemental terms may be given retroactive effect. At least one district court has held that correcting a drafting error in a prior assignment with respect to identification of a patent intended to be assigned did not deprive the assignee of standing in a pending lawsuit. And the Federal Circuit has held that retroactively adding the right to sue for pre-assignment infringement does not affect standing.
Practical Tip
There is an old saying that the best time to plant a tree was twenty years ago but the second best time is now. This provides a good analogy here. For assignments, the best way to correct them is to carefully check the information in them to fix any errors before they are presented for signature. In other words, be diligent and try to avoid errors from the start! That sometimes means verifying information provided by others, such as to ensure that legal names are used not nicknames or assumed names, corporations have not merged, dissolved, or changed names, addresses are current, etc. But the next best time to correct errors is as soon as they are discovered. Fortunately, there are ways to do that. Although doing so can become more difficult as time passes. For example, the original signatories can die, dissolve (if a corporation), or become uncooperative, and issues of standing can arise and later chain-of-title corrections might also become necessary that require additional corrective efforts.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
An appropriate response to infringement (or misappropriation) will depend on which type(s) of intellectual property (IP) rights are involved. While some forms of infringement can be enforced by the government, prosecutors rarely take up disputes between competitor businesses. This leaves it up to the IP owner to pursue a civil remedy. Therefore, the first step is generally to conduct your own investigation to ascertain your IP ownership rights, ascertain the identity of the infringing party or parties, preserve evidence of the infringement, and perform a legal analysis to confirm that the conduct in question is prohibited by law. Following an investigation, a cease & desist (demand) letter could be sent, a lawsuit initiated, or possibly other action taken.
Tip: Consider implementing a proactive monitoring program to search for and identify potential infringement of your IP. No one else will identify infringement for you.
As part of your initial investigation of infringement, the legal analysis should consider:
do you have a chain of title to the IP (that is, can you prove ownership)?
does the conduct fall within the scope of your enforceable exclusive rights or is the conduct permitted by law (such as a “fair use” under copyright law)?
did the other party have permission? , perhaps impliedly
what jurisdiction(s) is the infringer located in?
what remedies are available for the type of infringement involved?
Following an initial investigation, which should be performed with the assistance of a knowledgeable attorney, it is common to send a cease & desist or other demand letter. This puts the infringer on notice of the claim of infringement, which can remove innocent infringer defenses going forward, trigger the accrual of damages, etc. A letter might be sent to a publisher, distributor, web host, etc. as well, which can have significance under safe harbor provisions for some types of IP. If a letter is ineffective, or simply not desired, litigation or certain non-litigation action should be considered.
As to litigation, patent and copyright actions are handled exclusively by U.S. federal courts and generally require having a patent or copyright registration (at least for copyrightable United States works) before filing suit. Trademark, trade secret, cybersquatting, and false advertising actions can sometimes be brought in either federal or state court. A trademark registration is not required to bring suit in the U.S. A statute of limitations or equitable limits may apply, such as a 3-year limit for copyright infringement claims and a 6-year limit on back damages for patent infringement.
Remedies may be available outside of courts as well, though often without monetary recovery. For example, administrative agencies such as Customs & Border Protection and the International Trade Commission can block or exclude importation of infringing goods, and a copyright small claims action may be available. Online platforms and marketplaces may also have their own IP dispute resolution procedures and mandatory arbitration (e.g., UDRP, URS) may apply to domain name disputes.
With some exceptions, many IP rights are generally enforceable on a jurisdictional or territorial basis. If infringement implicates activities in another country, the available remedies and requirements to pursue a claim can vary widely and you may need to consult competent foreign legal counsel.
Many IP disputes reach settlements, though it cannot be assumed that parties will be able to reach a pretrial settlement. When considering bringing an infringement or misappropriation suit, bear in mind that awards of attorney’s fees are not always available or likely. The cost to pursue an IP lawsuit might exceed the monetary recovery, though the benefits of stopping infringement or misappropriation may still be worth the unrecoverable expenses of a suit in some situations.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
Here is a common scenario. Your business is planning to release a new product but wants to avoid infringing anyone else’s IP. What should you do? To avoid infringing anyone else’s IP, you should consider proactive clearance or freedom-to-operate (FTO) efforts, ideally before the new product is commercially launched. Such efforts are not legally mandated but should be tailored to your businesses’ risk tolerance in light of the typical costs of patent, trademark, copyright, and trade secret litigation. The scope of these efforts will depend upon the type of IP involved. Specific efforts may also depend on where you are planning to release the product, geographically. The following discussion focuses on the USA.
General Tips
Consider implementing overarching policies and protocols to reduce IP infringement (or misappropriation) risks. Educate and supervise staff accordingly. Do not simply assume that employees will already understand or care about IP infringement and misappropriation risks.
Make reasonable efforts to avoid infringement, including proactive clearance/FTO efforts where appropriate. But accept, as a cost of doing business, that despite those efforts there will always remain some risk that a “troll” will make an IP infringement claim of dubious merit. Failing to make reasonable efforts will just make it easier for others to target you with infringement claims that are expensive to defend.
When making goods or materials at the request of a customer (e.g., private label goods), be cautious of harsh and potentially predatory indemnity or warranty terms in purchase agreements. These can come into play if the customer is requesting infringement—either intentionally or merely negligently—while passing all infringement liability onto your business. You might be agreeing to assume IP infringement risks that far exceed the commercial value of the contract. This is also a concern where infringement liability may depend on customer actions outside your control.
It is also recommended to obtain a business insurance policy with coverage for unintentional trademark and copyright infringement (e.g., “advertising injury” coverage without major exclusions or limiting definitions). However, patent infringement coverage is not found in typical general business policies and is uncommon (because its cost/benefit tradeoff is rarely attractive).
Patents
For patents, the most common type of patent infringement has essentially a strict liability character and infringement does not depend on whether you had actual knowledge of the other party’s patent(s). However, though knowledge and intent (willfulness) can impact damages. Also, indirect infringement—a category of certain types of infringement—may require knowledge of the patent and that your activities infringe.
Consider a pre-launch patent FTO study that initially involves a search for any potentially conflicting patents, followed by a legal analysis. Proactively performing a patent FTO study allows you to find potentially problematic patents before they find you. That makes possible certain risk reduction efforts, such as an opinion of counsel, a design around, seeking a license, etc.
Trademarks
For trademarks, infringement has essentially a strict liability character and infringement does not depend on whether you had actual knowledge of the other party’s trademark. Liability can arise if there is a likelihood of confusion, even in the absence of any actual confusion by consumers. Trademark infringement does not have to be willful to result in a damages award. Also, there is a presumption that a trademark owner can obtain an injunction against use of an infringing mark.
When adopting new branding, it is not unusual for a first-choice mark (and second-choice…) to be already taken by another business. Many marks are already taken by others, which limits the universe of marks freely available for your business’ use at the time of adoption. It may be preferable to select a different mark from the start than to later re-brand, because re-branding tends to become more burdensome, costly, and disheartening as time passes.
Consider a pre-launch trademark clearance that initially involves a search for any potentially conflicting trademarks, followed by a legal analysis. Such a search should encompass all the relevant jurisdictions (e.g., all countries where your brand or mark will be used). Registration is not required to have enforceable trademark rights in the U.S. So a clearance search should ideally assess possible unregistered marks too.
Copyrights
For copyrights, there must be unauthorized copying of protected expression. Though there can be risks from copying that happens through inattention or negligent conduct. Fair use limits the copyright owner’s exclusive rights, but fair use will not always apply (and usually won’t when simply making commercial use of a work rather than making critical commentary about the work). There are many misconceptions about copyright law. For instance, just because something is available on the Internet does not make it “fair game” for your business’ use—even if denoted as being “free” or “royalty free”.
Have an awareness of copyright infringement risks. Also be aware of the ways that employees might commit infringement. For instance, employees posting materials to online platforms under via company accounts can present copyright infringement risks. Consider ways to educate employees about copyright and supervise employee activities.
Perform copyright clearance for any materials that you did not wholly create yourself that you plan to use, and obtain written permission or a license or assignment of ownership. Retain records of written authorizations. And make sure that you adhere to the terms of any license. Also consider seeking an indemnity for any licensed materials, because you could be licensing materials that are themselves infringing.
Trade Secrets
For trade secrets, there must be misappropriation of secret materials. Though there can be risks from misappropriation that happens though inattention or negligent conduct. However, trade secret misappropriation will generally only arise if your business had received secret information from someone else. This could occur by hiring an employee who knows confidential information from a prior employer.
For trade secrets, review any non-disclosure agreements (NDAs) in place and consider clean room or other protocols if any confidential materials were or will be received by staff.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
Some intellectual property (IP) rights arise automatically under certain circumstances while others require affirmative action.
PRACTICAL TIP: Think about IP early to avoid waiving potential rights and consider the benefits of optional protections.
Copyrights
Copyright attaches automatically to the author when a new creative work (e.g., text, photo, etc.) is fixed in a tangible medium of expression. Registration is not required for copyright to exist. Copyright ownership is also independent of possession and ownership of a copy of a work—even the “original” or sole copy.
Trademarks
Trademark rights can arise through use of a mark to identify the source of goods or services, provided that the mark is distinctive. Registration is not required to have enforceable trademark rights in the U.S. However, registration of a mark, particularly a federal registration on the Principal Register, helps to secure rights through the entire country and over time can limit the possibility for others to challenge the trademark rights in the registration.
Trade Secrets
Trade secret rights can attach to information that derives economic value from not being generally known and not being readily ascertainable so long as you take reasonable measures to keep it secret, meaning the existence of trade secret rights depends on the affirmative steps you take to maintain secrecy.
Patents
Patent rights require applying for and then obtaining a patent following an examination to determine if the invention satisfies criteria for patentability, which include novelty and nonobviousness. In the U.S., a patent must be applied for within one year of any disclosure, public use, or commercialization of the invention by the inventor. In most other countries, a patent must be applied for before any public disclosure.
International Considerations
Patent and trademark rights are territorial and rights in the U.S. will generally not provide exclusive rights abroad. Copyright and trade secret rights may have international enforceability in both the U.S. and some foreign jurisdictions.
Assignments and Licenses
IP rights can also be obtained from others via assignment (i.e., a transfer of ownership) or licensing (i.e., authorization to use the IP without a transfer of ownership). For many types of IP, assignments must be in writing and/or satisfy other criteria to be valid. Trademark rights are tied to underlying customer goodwill and cannot be assigned apart from that goodwill. A “naked” assignment of a trademark without associated goodwill can result in abandonment, as can licensing without quality control.
Employee- and Vendor-Created IP and Joint Development
When employees create things that may be subject to IP rights, the general rule—with some exceptions (notably for copyrightable works made for hire created by an employee within the scope of his or her job duties)—is that the employee rather than the employer is the owner. Businesses wanting to obtain ownership of employee-created IP should consider a written agreement (e.g., employment agreement) that establishes either an obligation to assign IP (to be followed later by execution of an assignment) or a prospective assignment of expected future IP.
When hiring a vendor to create or develop something, or jointly developing something with a business partner, consider who will own the IP at the outset. Merely paying for development will not automatically result in the transfer of ownership of vendor-created IP. Joint development can raise complex questions about who will own what, and ownership of particular IP may depend on which person(s) or entity contributed to that particular subject matter in the absence of a written agreement.
A common mistake is to ignore ownership of IP rights until there is infringement or a big business deal. Attempting to “fix” or alter IP ownership after the fact is usually much more complicated than sorting that out from the start of a vendor/partner/employee relationship (or even at the start of a particular project).
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
Intellectual property (IP) rights might allow a business to obtain exclusive rights in some or all aspects of a product. Such IP rights can potentially include patents, trademarks (i.e., trade dress), copyrights, and trade secrets. But the types of IP that might apply will vary depending on the context of the product involved, and may require affirmative action to secure and maintain IP rights.
Consider patentability before any public disclosure or commercialization of a product in order to avoid potential loss of patent rights. Although other types of IP protection might be available, exclusivity in the design of a new useful product is first and foremost a question of potential patent protection.
Patent Protection
Patents can provide exclusive rights for a limited time in exchange for disclosure of an invention. An inventive product—and/or a process or method associated with making or using it—can be protected with a utility patent. However, a patent application must be filed within one year of public disclosure or commercialization (or, in other countries, before any public disclosure). The invention must also satisfy three criteria for patentability: utility, novelty, and non-obviousness. The latter two criteria depend on the scope and content of the prior art. A patentable invention cannot already be known and must represent a non-trivial advance over what was already known. These assessments are made in an absolute sense. Prior art is not limited to commercially available products. And it does not matter whether or not the inventor actually knew about the relevant prior art.
The ornamental appearance of a useful article can be protected with a design patent if the ornamental design is novel and non-obvious. Design patents can cover surface ornamentations for an article of manufacture, the ornamental shape or configuration of an article of manufacture itself, and combinations of those categories. Abstract designs (e.g., a picture standing alone) are not patentable.
Trade Dress / Trademark Protection
Trade dress (a form of trademark protection) may also protect the distinctive, nonfunctional appearance of a product or its packaging. However, trade dress protection only arises in aspects of product configuration that serve as a trademark to allow consumers to identify the source of the product. Trade dress never protects functional aspects of product configuration or packaging. In other words, it is limited to aspects that relate to the manufacturer or seller’s reputation and not to the usefulness of the thing itself.
In the U.S., trade dress protection requires achieving acquired distinctiveness once secondary meaning has developed in the minds of consumers based upon substantially continuous exclusive use for a sufficient period of time (generally a minimum of five years). Trade dress will not provide exclusive rights in product configuration at the time of a new product’s launch, though it might for packaging.
Copyright Protection
Copyright might apply to certain aspects of products, such as product labels or decorative graphics applied onto a product. But copyright will not protect useful or functional parts, only those creative aspects that are conceptually separable and capable of existing apart from the useful or functional parts. For example, a lamp that incorporates a sculpture could have copyright protection in the sculptural elements but purely functional electrical components that allow the lamp to illuminate would not have copyright protection. The text of software code can be copyrightable but not the functionality enabled by software (which might be patentable instead).
Trade Secret Protection
Trade secret protection will not apply to publicly visible or readily ascertainable aspects of a product. But things like the “secret formula”, manufacturing methods, or aspects of embedded software might be protectable as trade secrets if they are not generally known and not readily ascertainable and you take reasonable measures to keep such things secret.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
Intellectual property (IP) litigation tends to be relatively expensive compared to other types of lawsuits. There are many reasons for that. Though the complexity of the legal issues involved and a tendency for extensive pre-trial discovery and use of expert witnesses contribute to the total costs.
Below are graphs showing average costs through various stages of a an infringement or misappropriation lawsuit in the U.S. A summary graph compares average costs for “small” patent, copyright, trademark, and trade secret cases with less than $1,000,000 at risk. There are also individual graphs for patent, copyright, trademark, and trade secret cases with different amounts at risk, that is, with different amounts of potential damages for infringement or misappropriation (in U.S. dollars). All data comes from the 2021 AIPLA Report of the Economic Survey.
Comparison of Average “Small” IP Lawsuit Costs by Type of Case and Stage
Average Patent Litigation CostsAverage Copyright Litigation Costs
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
Copyright notices have some legal value but are often not required in order to have copyright ownership. To understand generally what is meant by a copyright notice, consider the following example:
Example notice
Copyright notice is optional for works published on or after March 1, 1989 (but was generally required for U.S. works published before then), unpublished works, and foreign works. But despite being optional for new and recent works, including a notice still provides various benefits. Bear in mind that while you probably see copyright notices in many places, ones that you come across (especially online) may not be in the correct form to constitute a formal notice under U.S. law.
We will first look at the benefits of using a copyright notice before turning to the specific elements required for a proper notice under U.S. law and the proper placement of a notice on copies of a given work. Formulating a proper notice for your own work will require gathering some relevant information and making some judgments. As will be seen, there are actually quite a number of factors that need to be considered in order to correctly provide all the required elements of a notice in order to gain all possible legal benefits. But even an erroneous copyright notice might have some value, if only as a potential deterrent against authorized use.
Benefits of Using a Copyright Notice
Although use is optional, providing a copyright notice has a number of practical and legal benefits for the copyright owner, including:
Notice makes potential web site visitors aware that copyright is claimed in a given work, that is, it provides a “copy at your own risk” warning that may help discourage infringement;
A notice may prevent an accused infringer from attempting to limit his, her, or its liability for certain damages in court based on an innocent infringement defense (17 U.S.C. §§ 401(d) and 402(d));
Inclusion of a notice or other copyright management information (CMI) might provide an additional basis for monetary recovery if an infringer removes the notice (or other CMI) having reasonable grounds to know, that it will induce, enable, facilitate, or conceal infringement (17 U.S.C. §§ 1202 and 1203);
It identifies the copyright owner for parties seeking permission to use the work (that is, it can help potential licensees find the owner and may prevent the work from becoming a so-called “orphan work”).
Another benefit, of sorts, is that copyright notices can freely be added to a work. A copyright registration is not required in order to utilize a copyright notice. And many times the process is simple enough that nearly anyone can add a copyright notice to a work without assistance. Although some effort is required to gather and confirm the information included in the notice, the cost to actually attached the notice to many types of works may be close to nothing, particularly for text-based works or those in digital formats.
In theory, copyright notices also provide a public benefit by identifying the year of first publication. That information might help determine when copyright in the work expires. But ever since the laws were changed such that omission of a notice (or use of certain erroneous notices) does not result in the loss of copyright, notices ceased to be reliable as an indicator of publication. And on top of that, now that the copyright term for many works is based on the life of the (last surviving) author, rather than publication, the formal elements of a copyright notice, alone, do not allow the term of copyright to be determined—though if an author’s name is listed the notice might help you start to investigate that author’s lifespan.
The Elements of a Proper Copyright Notice
Overview of Basic Requirements
A copyright notice is a statement placed on copies of a work to inform the public that a copyright owner is claiming ownership. A copyright registration is not required in order to utilize a copyright notice. A proper notice (under 17 U.S.C. §§ 401(b) and 402(b)) for a published work consists of three elements that generally appear as a single continuous statement in the following order:
The year of first publication of the work, though in the case of compilations, or derivative works incorporating previously published material, the year of first publication of the compilation or derivative work is sufficient; and
The name of the copyright owner, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner.
This example shows these three elements in a formal copyright notice:
Example Copyright Notice
We will look at each of these three basic elements of the notice in more detail below. Though the notice generally needs to be in the English language (with foreign words, such as the owner’s name, translated or transliterated into English).
Although certain old U.S. copyright laws required a copyright notice on published “United States works” in order to preserve copyright ownership, for any work created on or after March 1, 1989 a copyright notice is completely optional. And foreign works never required a notice under U.S. law.
The following flowchart explains major determinations that should be made in order to establish the proper information specified in a copyright notice and to affix the notice on copies. It is important to note that the U.S. copyright laws include many special statutory definitions of words, which frequently differ from their meaning in ordinary conversation. Therefore it is critical to check the legal definitions of the words used in this flowchart. Also, there may be situations in which multiple types of works are involved meaning that the flow chart may need to be applied multiple times in order to fully assess proper notice requirements across all of the involved works.
Specific steps shown in this flowchart are explained in greater detail below.
The first element needed for a proper copyright notice is either the copyright symbol (or something recognized as an acceptable alternative) or the phonorecord symbol. (17 U.S.C. §§ 401(b)(1) and 402(b)(1)). So the first determination is whether the work in question is a “phonorecord” (as defined in 17 U.S.C. § 101: “material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed . . . .”) or something else. Unless the work is an audio recording, it is probably not a phonorecord.
The phonorecord symbol “℗” is the letter P in a circle. The U.S. copyright statutes do not enumerate any acceptable alternatives. However, the U.S. Copyright Office has long considered “(P)” to be one of a few acceptable variants. Compendium of U.S. Copyright Office Practices, 3rd Edition, § 2204.4(A).
The second element of a proper copyright notice is the year of first publication of the work. (17 U.S.C. §§ 401(b)(2) and 402(b)(2)). What does or does not constitute “publication” under the statutory definition in the U.S. copyright laws is not straightforward, especially for digital and online works where the distinction between mere public display and actual publication is not always clear—and courts are divided on that question for works posted to the Internet by the copyright owner. (See Compendium of U.S. Copyright Office Practices, 3rd Edition, Chapter 1900 and § 1008.3 et seq.; and, e.g., Internet Prods. LLC v. LLJ Ents., Inc., No. 18-cv-15421 (D.N.J. Nov. 24, 2020)). But that is the most important consideration for the second element of the notice.
” ‘Publication’ is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.
To perform or display a work ‘publicly’ means—
(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or
(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.”
17 U.S.C. § 101 Statutory Definitions of “Publication” and “To perform or display a work ‘publicly'” (emphasis added)
The U.S. copyright statutes say that in the case of “compilations” or “derivative works” incorporating previously published material, specifying the year (date) of first publication of the compilation or derivative work in the notice is sufficient. In other words, for a derivative work, such as a newer version of previously-published content, the more recent publication year for the newer version can be used. The same goes for a compilation. A “collective work” (in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole) or is a collection and assembling of preexisting materials that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship, is a compilation and the same option to omit the year applies. The statues also say that a single notice is sufficient for a collective work.
If a work is unpublished, there is no year of first publication. The statutory requirements for the form and content of a copyright notice for a published work don’t apply to unpublished works. So copyright owners can technically use any form of notice they wish with an unpublished work. Some say that a copyright notice for an unpublished work should indicate the unpublished nature of the work in lieu of a year. Others say that the term “unpublished work” should be included in the notice in addition to specifying the year of creation. Though out in the real world, it is common to see copyright notices on unpublished works that include the year of creation rather than the year of publication without any express indication of unpublished status (even though this could be mistaken for the year of publication) or that only use the copyright symbol with the owner name. Because U.S. copyright statutes do not address the form of notices for unpublished works, there are no clear consequences to the copyright owner no matter how such copyright notices are formatted.
It is sometimes common to see a range of years used. For published works, the use of a date range is not something expressly addressed in the statute. Though as noted above, if the work is a collective work or a compilation (both of those terms are defined in the copyright statutes), then only the year of first publication of the compilation or collective work (and not those of the preexisting works) needs to be specified. And for unpublished works, there is no year of publication and no specific statutory framework for a proper notice.
The statute regarding copyright notices on (non-phonorecord) copies also includes an odd carve-out. The year (date) of first publication in a copyright notice may be omitted “where a pictorial, graphic, or sculptural work, with accompanying text matter, if any, is reproduced in or on greeting cards, postcards, stationery, jewelry, dolls, toys, or any useful articles.” The term “useful article” has a statutory definition. So, depending on what sort of things the notice is applied to, it may be permitted to omit the year of publication. Though nothing prohibits including the publication year in such a notice anyway.
As a final note, the year is most often provided in Arabic numerals. Sometimes Roman numerals are used instead, most often with films and television programs (a practice that is thought to have originated as deception to obscure the age of the work).
Third Element — Name(s) of Copyright Owner(s)
The name of the copyright owner (or joint owners) is the third required element for a proper copyright notice. (17 U.S.C. §§ 401(b)(3) and 402(b)(3)). This is an area where mistakes are common in corporate settings, usually because of bad assumptions about who is actually the copyright owner.
Firstly, the owner or joint owners each need to be either an individual or a juristic entity (like a corporation). A brand name (trademark) is not a juristic entity, any more than a fictional character in a book or movie is one. The owner has to be a person or entity capable of legally owning property. Though a proper copyright notice can include variants, abbreviations, generally known alternative designations, or pseudonyms of the owner’s name, such as such as a legal assumed name or “dba” (doing business as) for a business or the diminutive/short form “Joe Public” instead of the full legal name “Joseph Public”. There also is a statutory provision for naming a producer that applies only for phonorecords.
But who is the true owner of a given copyright? This is the part that causes headaches. It might not be clear at all! It might (and often does in commercial settings) require a detailed review of legal provisions in relevant contracts and consideration of the factual context around the creation of the work(s) in question. If the person adding the copyright notice to a work does not know that information or have access to it, then someone else needs to be involved to establish the proper owner name for the notice.
Copyright ownership originally arises in the author(s) under U.S. law, and ownership of copyright is distinct from ownership of material object (a copy, even the sole “original” like a fine art painting). A work created by an individual author in an independent capacity is owned by that individual. Such situations are relatively straightforward. But the inquiry is more complicated in business contexts where corporations, employee/employer relationships, and vendor/contractor outsourcing may be present. A given work may be a “work made for hire” under U.S. law that shifts authorship and ownership of a work away from the individual(s) who prepared it. But work made for hire determinations can be difficult and highly confusing.
If an employee created the work within the scope of his or her employment, then it is a “work made for hire” and the employer is automatically deemed the author and copyright owner. That kind of work made for hire has two components that must both be satisfied: the work must have been prepared (1) by an employee (a status determined under general federal agency law) (2) within the scope of his or her employment. For example, the owner of a startup small business may not be an “employee” if her role is only that of an investor/shareholder without any job duties or receipt of salary/wages. And even someone who is an employee may not have created the specific work(s) in question within the scope of his or her employment. For instance, a work created by a person in her spare time with no relationship to her job duties would not be within the scope of her employment.
If a vendor (or contractor) created the work, then the vendor would usually be the author and own the copyright in the absence of a written assignment—unless authorship and ownership instead reside in the vendor’s employee(s) or subcontractor(s). The mere fact that the vendor/contractor was paid to create the work does not transfer ownership of copyright. Work-made-for-hire provisions dealing with employee-prepared works do not apply because contractors and vendors are not employees. Though work-made-for-hire provisions might make a corporate vendor the owner of works the vendor’s employees prepare. It is possible to agree in writing in advance to make certain types of works a “work made for hire” for which the purchaser is deemed the author (and owner), but only for nine types of works enumerated by statute (17 U.S.C. § 101). If the work is not one of the nine statutory types, a contract with a vendor/contractor (erroneously) purporting to create a work made for hire has no legal effect and ownership still rests with the vendor/contractor (or its employee or subcontractor) until a written assignment is executed.
If there are agreements in place with a vendor/contractor, they may or may not actually transfer ownership of copyright. Sometimes vendor/contractor agreements establish only an obligation to assign (such as when they use language referring to future actions, like “will own” or “will assign”), and therefore require a further written assignment to actually transfer copyright ownership. Or sometimes these agreements include an ineffective work made for hire provision that fails to actually transfer ownership of copyright (because the work is not one of the nine statutory types). Tracking down copyright ownership information can be time-consuming. For instance, master services agreements might incorporate separate “statement of work” documents that identify assigned works and those might all need to be reviewed in order to determine who owns what.
Possible Additional Element — Restrictions/Exclusions, Terms of Use, Etc.
Although the U.S. copyright statutes specify three elements required for a copyright notice, there might be other information included in addition. Only one of these additional elements is required under the U.S. copyright statutes to have a proper notice, and that situation is not common. Though additional elements included along with (or adjacent to) a copyright notice might be desired. The law does acknowledge the potential use of various additional copyright management information (CMI).
Different kinds of additional CMI can be provided along with the copyright notice too. For instance explicit statements granting certain authorizations or licenses but prohibiting other things—that is, terms and conditions for use of the work—might be specified adjacent to the copyright notice, if desired.
Placement of a Copyright Notice
A copyright notice needs to be placed on copies of a work in a way that people are reasonably likely to see it. The U.S. statute about copyright notices for most types of works says:
The notice shall be affixed to the copies in such manner and location as to give reasonable notice of the claim of copyright. The Register of Copyrights shall prescribe by regulation, as examples, specific methods of affixation and positions of the notice on various types of works that will satisfy this requirement, but these specifications shall not be considered exhaustive.”
The regulations referred to in the statute are found at 37 C.F.R. § 202.2. They include a large number of examples that pertain to particular types of works in specific ways. There are examples for works in book form, works reproduced in machine-readable copies, contributions to collective works, motion pictures and other audiovisual works, and pictorial, graphic, and sculptural works. But, in general, the acceptability of a “reasonable” notice depends upon its being permanently legible to an ordinary user of the work under normal conditions of use, and on being affixed to copies in such a manner and position that the notice is not concealed from view upon reasonable examination. Where a notice does not appear in one of the precise locations described in the regulation’s specific examples, but a person looking in one of those locations would be reasonably certain to find a notice in another somewhat different location, the Register of Copyrights considers it acceptable.
The regulations give examples of defective notices as:
those permanently covered so that they cannot be seen without tearing the work apart,
those illegible or so small that they cannot be read without the aid of a magnifying glass (except where the work itself requires magnification for its ordinary use), and
those placed on a detachable tag, wrapper, or container that is not part of the work and will eventually be detached/removed and discarded when the work is put in use.
The statutory benefits that arise from use of a copyright notice are not affected by the removal, destruction, or obliteration of the notice from any publicly distributed copies (or phonorecords) done without the authorization of the copyright owner. (17 U.S.C. § 405(c)).
For phonorecord copyright notices, the relevant statute provides that “The notice shall be placed on the surface of the phonorecord, or on the phonorecord label or container, in such manner and location as to give reasonable notice of the claim of copyright.” (17 U.S.C. § 402(c)).
Failure to include a proper copyright notice, or the use of a notice with erroneous information, is more significant for works published before March 1, 1989. There are various additional provisions governing those situations.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
It is very common for individuals and businesses to use a content management system (CMS), like WordPress®, Drupal®, or ConcreteCMSTM, to create and maintain a web site. The original text, photos, graphics, and other content that is paced on such a web site with the CMS is usually copyrighted. But copyright law is challenging. Web developers often do not understand it well. And the terminology used in a CMS system may or may not align with the (disputed) legal meaning given to those same words for copyright purposes. That can cause confusion because web developers and web site administrators often misunderstand the impact of their web site design choices under copyright law. And that law is also not always clear or well-settled—courts sometimes disagree over key points or just have not yet offered definitive interpretations when it comes to online works.
What follows is an overview of two of the most common areas of confusion, using the WordPress CMS as an example. Sure, there many, many other confusing aspects of copyright law that apply to web site development, like whether something constitutes a “work made for hire” when a vendor is involved. But those are topics for another time. The two common areas of confusion addressed here are the meaning of “publication” and the proper form of a copyright notice for works made available online.
What Does It Mean to “Publish” Something Online?
The word “published” does not necessarily mean the same thing under U.S. copyright law that it does in ordinary language. It has a special legal definition for copyright purposes, as discussed below. The question really becomes whether “publish” and “publication” have the same meaning under copyright law as when commonly used to describe features and functionality within the CMS. We will see here that those meanings might be different—and the way the statutory definition applies to online works is disputed. This can make it surprisingly difficult to establish publication dates in order to register a copyright in works created or maintained using a CMS, for instance.
Let’s look at how this confusion about the meaning of “publication” can arise, starting with typical CMS functionality.
“Publish” and “Update” Buttons in WordPress
In a CMS like WordPress, it is easy to create web pages and posts with text and media like photos, video, audio, etc. Those individual posts and pages can have different statuses, allowing them be saved as drafts or made public. The visibility of a given post or page can be specified to be public (rather than private or password protected) and can be made public by clicking a “publish” button along with a “public” visibility setting. Content that the CMS “publishes” goes live on web server, so that web site visitors can view the live content that has been “published”. Though, depending on CMS user privileges (roles), the “publish” button might only be visible to administrators/editors. In any event, CMS functionality generally uses the word “publish” to mean making a page or post live, allowing web site visitors to view it (assuming the visibility of the post or page is not private).
Examples of “Publish” Button in “Block” (left) and “Classic” (right) Versions of the WordPress CMS Editor
The WordPress CMS allows control over scheduling when a post or page goes live. It is possible to schedule a post to publish as some particular date and time in the future. But it is also possible to backdate the date that appears on the post. That is, the publication date can be set as some time in the past. Clearly this does not mean that the post was really available in the past. But it does mean that the date that appears on a live, visitor-facing page or post is not always accurate with respect to when it was actually first made live and publicly accessible. And, naturally, the date appearing on a page or post will not reflect any prior (or subsequent) offline distribution of the same materials.
Online works are frequently treated as living documents that are revised and modified over time. After the “publish” button has made a given page or post go live online, it can be revised and modified in all sorts of ways. There might be significant changes or additions. WordPress has an “Update” button that works much like the “publish” button to make changes go live online. But when the live version of a post is updated, the date shown on the live post typically does not change (unless a CMS user changes it). The visitor-facing post may not indicate the date changes were made (or what the changes were). Also, an authorship byline may be established when originally made live. If there are later changes, the live, visitor-facing version may not indicate that later changes were made by a different person (or author).
Previously live posts/pages can also be made private or changed to draft status. The CMS can take down content from the live web site. But that might happen only temporarily. The content can be made live again later.
WordPress CMS administrators and editors can see the version history for a given post or page that tracks “revisions”—some users may be limited to seeing only their own revisions. However, which revision(s) were merely saved with a “draft” status and which revision(s) where made live online by being published or updated is not particularly easy to determine through the standard WordPress user interface. That is especially true, for example, if a post or page was published, then later unpublished, modified, then published again in modified form.
Revision history can allow the CMS username associated with particular changes to be determined after the fact. But if there are shared logins, it might be unclear which individual person or persons (authors) actually made particular changes or additions. Also, different CMS implementations might save only a limited number of historical revisions. So old revision history may no longer be available.
If the CMS doesn’t have all the revision history desired, it may be possible to find earlier version in a public archive like the Internet Archive’s Wayback Machine, assuming the site was crawled by the archive at a relevant time.
It is also possible to go beyond default CMS functionality to create your own archive of revisions. In other words, you can keep your own records outside of the default functionality of the CMS. Though if you want your own archive to have legal evidentiary value you likely want to take steps to ensure that custody of the archive is reliably established and maintained in order to later authenticate it. But that may be more than what is necessary or worthwhile in many situations. There is no requirement to do that for copyright purposes, though if available such records might make information useful for copyright registration easier to find.
“Publication” Under U.S. Copyright Law
U.S. copyright statutes include an explicit definition of “publication”, and a related definition of “to perform or display a work ‘publicly'”:
” ‘Publication’ is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.
To perform or display a work ‘publicly’ means—
(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or
(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.”
17 U.S.C. § 101 Definitions of “Publication” and “To perform or display a work ‘publicly'”
Notice that the copyright law definition of “publication” excludes some things. So the definition is not just a positive definition of what affirmatively is publication. It also is partly a negative definition that explains what is not publication.
The other thing to notice is that this definition is a general one that does not include any Internet-related terminology. There is no reference to web sites, web pages, online streaming, or anything of the sort. That is because the definition came about before the Internet—and even before personal computers and photocopiers were widespread! So a certain amount of judgment is required to determine how online activities using a CMS fit into the definition. A lot of the confusion here stems from the laws and legal definitions being written when “publication” was a complicated process that involved extensive planning and effort. Just think about what goes into publishing a printed and bound book, and how getting it to a different country required physically shipping copies. The idea that something might be published worldwide by just about anyone with no more than a click of a button on an Internet-connected computer was not a possibility at the time the statutory definition was enacted.
The U.S. Copyright Office provides its own further interpretations of the statutory definition of “publication”. Those interpretations draw from legislative history of the U.S. copyright statutes. While it is possible that courts might someday definitively reject some of the Copyright Office’s interpretations, as certain courts already have, they are a good (and perhaps necessary) starting point. Anyway, the Copyright Office’s interpretations start by noting what is implied but not explicitly stated in the statutory definition:
“legislative history explains that ‘a work is ‘published’ if one or more copies or phonorecords embodying [the work] are distributed to the public’ with ‘no explicit or implicit restrictions with respect to [the] disclosure of [the] contents [of that work].’ H.R. REP. NO. 94-1476, at 138 (1976). It also explains that publication occurs ‘when copies or phonorecords are offered to a group of wholesalers, broadcasters, motion picture theatres, etc.’ for the purpose of ‘further distribution, public performance, or public display.’ Id.
Although it is not expressly stated in the statutory definition, the legislative history indicates that publication occurs only (i) when copies or phonorecords are distributed by or with the authority of the copyright owner, or (ii) when an offer to distribute copies or phonorecords to a group of persons for further distribution, public performance, or public display is made by or with the authority of the copyright owner.”
Compendium of U.S. Copyright Office Practices, 3rd Edition, § 1902 (emphasis added) (internal citation truncated)
So far, this seems fine. It is helpful, and uncontroversial, to say that the statutory reference to “copies” includes a single copy and that all this is only about things authorized by the copyright owner. But there is more to the story. The U.S. Copyright Office provides some further guidance regarding the interpretation of publication for works made available online that is less intuitive . It is this next part that is the source of confusion in the web site CMS context.
“As a general rule, the U.S. Copyright Office considers a work ‘published’ when it is made available online if the copyright owner authorizes the end user to retain copies or phonorecords of that work. For example, the fact that a work is expressly authorized for reproduction or download by members of the public or is expressly authorized for distribution by the public creates a reasonable inference that copies or phonorecords have been distributed and that publication has occurred.
Likewise, the Office generally considers a work ‘published’ when the copyright owner makes copies or phonorecords available online and offers to distribute them to a group of persons for purposes of further distribution, public performance, or public display. ***
It may seem odd that allowing the whole world to view or hear a work does not constitute publication of a work, but the statutory definition is clear that the public performance or public display of a work does not, in and of itself, constitute publication.”
Compendium of U.S. Copyright Office Practices, 3rd Edition, § 1008.3(B) (emphasis added)
Confused? Perhaps. Convinced? Maybe, or maybe not. Anyway, this framework raises further questions about the “reasonable” inferences that the Copyright Office says determine whether or not clicking “publish” or “update” on a CMS like WordPress constitutes publication of web site materials under U.S. copyright law. These questions tend to depend on circumstances beyond the mere act of clicking a publish or update button to make materials go live. The Copyright Office says this depends on the substantive content of the web page in question—and potentially also on offline actions regarding distribution of physical copies, if applicable.
When considering potential publication of copyrightable works, it is necessary to remember the statutory distinction between (1) a mere public display versus (2) actual publication. For works available online, the U.S. Copyright Office mostly looks at this in terms of whether there is an express or implied authorization of publication from the copyright owner that goes beyond public display. The Copyright Office does not make that determination for you. But it provides the following guidance about the sorts of factors that it says should be considered that are not explicitly found in the statutory definition.
“A critical element of publication is that the distribution of copies or phonorecords to the public must be authorized by the copyright owner. To be considered published, the copyright owner must expressly or impliedly authorize users to make retainable copies or phonorecords of the work, whether by downloading, printing, or by other means.
A distribution or offer to distribute that has not been authorized by the copyright owner does not constitute publication. Thus, the mere fact that a work is disclosed on the internet does not ‘publish’ the work.The end user’s technical capacity to copy, capture, save, or otherwise reproduce a work in and of itself does not imply that the copyright owner authorized the distribution or publication of that work, unless there is an express or implied-in-fact authorization that supports such an inference. Likewise, the fact that it may be possible for an end user to reproduce or distribute a work that has been authorized only for public display or public performance online does not mean that publication has occurred.
***
While it is often a simple matter to determine whether a distribution of tangible copies was authorized by the copyright owner, it is not always factually clear whether the placement of works online is intended to be an authorized distribution of those works or merely an authorized public performance or public display.“
Compendium of U.S. Copyright Office Practices, 3rd Edition, § 1008.3(C) (emphasis added)
A variety of factors may be relevant in determining whether a copyright owner published website content by impliedly authorizing users to make copies of that content. Examples of factors that may be considered include the following:
• Whether there are indications on the website or webpage relevant to the work indicating that the copyright owner intends for the work to be distributed to the user via download, saving, printing, or emailing, such as the presence of a ‘download,’ ‘save,’ or ’email’ button for a particular work.
• Whether the copyright owner expressly reserved copyright rights in the work or explicitly prohibited the reproduction or distribution of the work in whole or in part.
• Whether the copyright owner employed barriers to the reproduction or distribution of the work, such as technological measures that disable or impair a web browser’s print, copy, and/or save capabilities.
• Whether the copyright owner permitted the work to be streamed or displayed, but did not expressly permit the work to be copied or downloaded.
Compendium of U.S. Copyright Office Practices, 3rd Edition, § 1008.3(C) (emphasis added)
Furthermore, the U.S. Copyright Office considers intermediate or buffer copies made in the course of ordinary online streaming or web site browsing to be “irrelevant” or at least “doubtful” as to an implied authorization to create and permanently retain copies. Compendium of U.S. Copyright Office Practices, 3rd Edition, § 1008.3(E).
All this Copyright Office guidance is not necessarily built on indisputable logic—indeed, some courts have rejected it (though others have adopted it, even if Chevron deference is the only justification given). And the Copyright Office couches much of this guidance in terms of what it believes typical copyright owners would believe, which may not be what all copyright owners actually believe. After all, web pages can be printed using a print function in a browser or a screenshot function of an operating system even if there is no “print” or “save” button on the web page, and site owners might understand the impact of that differently than the Copyright Office claims they do.
The crux of the confusion (and related dispute) comes down to the U.S. Copyright Office’s position that it is necessary to interpret typical web site activities to allow for either public display without publication or true publication.
But one district court decision specifically held to the contrary that
“merely by accessing a webpage, an Internet user acquires the ability to make a copy of that webpage, a copy that is, in fact, indistinguishable in every part from the original. Consequently, when a website goes live, the creator loses the ability to control either duplication or further distribution of his or her work. A webpage in this respect is indistinguishable from photographs, music files or software posted on the web — all can be freely copied. Thus, when a webpage goes live on the Internet, it is distributed and ‘published’ . . . .”
That is, this particular district court ruled that the law is the opposite of what the U.S. Copyright Office’s Compendium guidance says regarding the “publication” status of web pages that are made live on the Internet by the copyright owner. If this ruling was conclusively found to be the law in all U.S. courts, and not merely in some, then confusion over the impact of clicking the “publish” button in a CMS like WordPress would disappear—clicking “publish” in the CMS would always result in “publication” for copyright registration purposes. For this alternate view to prevail, the U.S. Copyright Office would have to change its position and/or have its position definitively overturned by the courts. At the moment, courts are split on this issue.
Summary — “Publication” of Online Materials
So, to summarize, clicking “publish” or “update” in a web site CMS like WordPress to make a page or post go live online may or may not constitute “publication” of those materials for purposes of U.S. copyright law. This is still a legally unsettled question. The U.S. Copyright Office says clicking “publish” or “update” will at least result in a public display of the work(s) on that page or post, but that additional substantive facts determine if that results in “publication” or not depending on whether site visitors are expressly or impliedly allowed to retain a copy of the work (and says that a relatively ordinary web page or post probably would not do that). Keep in mind here that headers, footers, and other materials that are automatically appended to all pages or post by the CMS might influence this determination in the eyes of the Copyright Office, as will reasonably prominent notices or disclaimers (even if their full terms require clicking through to another page). Though a few courts have rejected this Copyright Office position about online publication.
If you want an online work to be considered published in the eyes of the U.S. Copyright Office, the simplest ways to do that are to add some explicit authorization to that effect (in text) or some kind of “print,” “download,” “save,” or similar button.
If you want an online work to be considered unpublished (but you still want them to appear online), the simplest ways to do that in terms of the U.S. Copyright Office’s position are to explicitly identify the work as unpublished or to place explicit restrictions on those materials that limit the terms of use to only public display. Though some courts have rejected this approach and have said posting anything to a live, publicly-accessible web page always constitutes publication for copyright purposes.
When creating web sites and making them available online, the question of whether or not “publication” has occurred may not immediately make any difference. But the question may become significant if a copyright registration is sought. And registration is often important if infringement occurs—registration (or refusal) being a prerequisite to suing for infringement. Lastly, “publication” may determine when the term of copyright expires for certain works.
What has been said above is fairly specific to U.S. law. Foreign countries may have different copyright laws that treat this question differently (or this question might not matter at all in some countries).
Including a Proper Copyright Notice
Copyright notices have some legal value but are not required in order to have copyright ownership for recent U.S. works (relevant U.S. copyright law changed in 1989). They are optional. But including them still provides some benefits. A copyright registration is not required to use a notice. To understand generally what is meant by a copyright notice, consider the following example:
Although use of a copyright notice is optional, providing a copyright notice has a number of benefits, including:
Notice makes potential web site visitors aware that copyright is claimed in a given work, that is, it provides a “copy at your own risk” warning that may help discourage infringement;
A notice may prevent an accused infringer from attempting to limit his, her, or its liability for certain damages in court based on an innocent infringement defense (17 U.S.C. §§ 401(d) and 402(d));
Inclusion of a notice or other copyright management information (CMI) might provide an additional basis for monetary recovery if an infringer removes the notice (or other CMI) having reasonable grounds to know, that it will induce, enable, facilitate, or conceal infringement (17 U.S.C. §§ 1202 and 1203);
It identifies the copyright owner for parties seeking permission to use the work (that is, it can help potential licensees find the owner and may prevent the work from becoming a so-called “orphan work”).
Yet the way that CMS functionality deals with copyright notices ranges from useful, to annoying but workable, to frustrating for all but sophisticated coders. What follows is a discussion of how to provide an accurate copyright notice on web sites managed with a CMS like WordPress. We will first look at typical CMS functionality and then turn to the legal aspects of a proper copyright notice, including the legal and practical benefits of using one.
A CMS like WordPress may provide some mechanism to manually or automatically insert a copyright notice on a web page. The notice might be in a footer or menu that appears with all pages or posts, for instance. But this is not default functionality in WordPress. Rather, the implementation of copyright notices falls to the particular theme used by the WordPress CMS, including a child theme, or to manual insertion by CMS users (including adding text or through coding) or through the use of a CMS plug-in.
So the default copyright notices inserted by a CMS may represent good intentions gone awry. Where problems really arise, though, is when CMS users (wrongly) assume that the CMS and theme defaults are based on the requirements of U.S. copyright law. Often, the CMS theme defaults have no basis in copyright law at all.
The right way to format a copyright notice, if one is desired, is addressed below. But purely from the standpoint of using a CMS like WordPress, know that the default copyright notice is probably not correct and will need to be changed. Doing so may not be simple from the standpoint that overriding the default notice established by a theme may not be possible using the CMS’s standard graphical user interface menus. You may need a plugin or have to manually edit the theme’s cascading style sheet (CSS) code.
A potential annoyance here is that unless a plugin or child theme is used to specify the format and content of a copyright notice, be aware that hard-coded changes to a theme’s CSS code used to provide a desired copyright notice (such as in a site-wide footer) will break whenever the theme is updated. So installing theme updates will undo your efforts to hard-code a copyright notice in that theme. This means theme updates might need to be deferred until a CMS user has the time to re-edit the newly-updated theme’s CSS code to reinstate the desired copyright notice.
Keep in mind here that copyright notices can be inserted in all sorts of way for different types of content, and notices that appear in page footers are just one way.
You can generally manually insert copyright notices in the text of individual pages or posts (preferably at the end/bottom). You just need to remember to do it.
You can also insert a copyright notice as a caption or a visible title for a media file. For example, if you have a copyrighted photo, a copyright notice specific to that photo could appear in text adjacent to the photo or overlaid on top of it. Different CMS themes will provide slightly different functionality for doing this. But you can always just put the copyright notice for a photo or graphic in the most nearby text area (preferably at or near the bottom of an image).
Additionally, a copyright notice can be embedded in an image or graphic, such as like a watermark or in a “gutter” area. The advantage of permanently embedding a copyright notice like a watermark in image files is that it cannot be erased easily by a copyist. Though disadvantages are that an embedded copyright notice may obscure the image or create an aesthetically undesired appearance. Sometimes, as a compromise, the notice might appear in a gutter adjoining the perimeter of the photo or graphic, which avoids obscuring the image but still results in a potentially unaesthetic gutter area being visible. Also, a CMS will usually lack built-in functionality to embed a copyright notice in an image file itself. For that, you might turn to an image editing program, like GIMP.
The Elements of a Proper Copyright Notice
A copyright notice is a statement placed on copies of a work to inform the public that a copyright owner is claiming ownership. A copyright registration is not required in order to utilize a copyright notice. A proper notice (under 17 U.S.C. §§ 401(b) and 402(b)) for a published work consists of three elements that generally appear as a single continuous statement in the following order (in the English language):
The year of first publication of the work, though in the case of compilations, or derivative works incorporating previously published material, the year of first publication of the compilation or derivative work is sufficient; and
The name of the copyright owner, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner.
This example shows these three elements in a formal copyright notice:
We will look at each of these three elements of the notice in more detail below. Additional guidance about using copyright notices can also be found here.
Although certain old U.S. copyright laws required a copyright notice on published U.S. works in order to preserve copyright ownership, for any work created on or after March 1, 1989 a copyright notice is completely optional. In practical terms, no original (newly created) online materials require a copyright notice to avoid loss of rights because copyright notice requirements were abolished in the USA by the time the World Wide Web and the modern Internet was operational.
Keep in mind that there might be multiple copyright notices provided on a web site. The examples given here are mostly general copyright notices, such as a single notice that appears in the footer of all posts/pages on a site. Though specific copyright notices can be used for specific elements, such as notices directed specifically (and exclusively) toward particular elements. For example, a web site could include multiple specific copyright notices each applicable only to the text, a particular photo, or all illustrations. Specific notices are not usually required, because the law makes any copyright notice optional. But specific notices may be required based on the terms and conditions associated with your use of particular content (such as license or other contractual terms). U.S. copyright law also has certain prohibitions on removal of copyright management information, which is a key reason specific notices might be needed. So multiple (specific) notices are more common when a site uses content owned by someone else.
U.S. copyright laws state that a copyright “notice shall be affixed to the copies in such manner and location as to give reasonable notice of the claim of copyright.” (17 U.S.C. § 401(c)).
The Register of Copyrights provides some non-exhaustive examples of acceptable placement of a copyright notice in federal regulations. However, no examples are given regarding web site materials or other online works specifically. But the examples given for “machine-readable works” state that the following are acceptable: (i) a notice embodied in the copies in machine-readable form in such a manner that on visually perceptible printouts it appears either with or near the title, or at the end of the work; (ii) a notice that is displayed at the user’s terminal at sign on; and (iii) a notice that is continuously on terminal display. Placement of a notice in a web page footer is likely to be considered “at the end of the work” and therefore is a preferred (and common) location. And, more generally, the regulations say that the acceptability of a “reasonable” notice depends upon its being permanently legible to an ordinary user of the work under normal conditions of use, and on being affixed to copies in such a manner and position that the notice is not concealed from view upon reasonable examination.
The second element of a copyright notice is the year of first publication of the work. As discussed above at length, what does or does not constitute “publication” under U.S. copyright law is not straightforward. But those considerations are the starting point for the second element of the notice.
The U.S. copyright statutes say that in the case of compilations or derivative works incorporating previously published material, the year of first publication of the compilation or derivative work is sufficient. In other words, for a derivative work such as a newer version of previously-published content, the more recent publication year for the newer version can be used. The same goes for a compilation. A web site that is itself a collective work (in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole) or is a collection and assembling of preexisting materials that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship, is a compilation.
If a work is unpublished, there is no year of first publication. The statutory requirements for the form and content of a copyright notice for a published work don’t apply to an unpublished work. So copyright owners have flexibility to use any form of notice they wish with an unpublished work. Some say that a copyright notice for an unpublished work should indicate the unpublished nature of the work in lieu of a year. Though it is also common for a copyright notice for an unpublished work to include the year of creation instead (even though this could potentially be mistaken for the year of publication unless clarification is provided) or to omit the year element entirely with no indication of unpublished status.
When a web site has a single, general copyright notice in a footer or menu that appears on all pages of the site, it is sometimes common to see a range of years used. This is an attempt to accommodate the fact that the notice encompasses a set of different individual web pages and/or other materials like photos that were published in different years. Though for published works, the use of a date range is not something specified in the statute. If you choose to include a general copyright notice with a range of years, the range should at least be accurate and should encompass the relevant years of publication for any published material that the notice is intended to apply to. Though as noted above, if the web site is a collective work or a compilation (both of those terms are defined in the copyright statutes), then only the year of first publication of the compilation or collective work (and not those of the preexisting works) needs to be specified.
The statute regarding the proper format of copyright notices on (non-phonorecord) copies also includes an odd carve-out. The year (date) in a copyright notice may be omitted “where a pictorial, graphic, or sculptural work, with accompanying text matter, if any, is reproduced in or on greeting cards, postcards, stationery, jewelry, dolls, toys, or any useful articles.” It might be argued that any web site graphical user interface or menu is a “useful article” (having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information) that allows omission of the year of publication, though that is something courts have not yet definitively ruled on (despite numerousopportunities).
Name(s) of Copyright Owner(s)
The name of the copyright owner (or joint owners) is the third required element for a proper copyright notice. This is an area where mistakes are common, usually because of bad assumptions about who is actually the copyright owner.
First of all, the owner, or joint owners, each need to be either an individual or a juristic entity (like a corporation). A brand name (trademark) or the title of a web site are not juristic entities, any more than a fictional character in a book or movie is one. The owner has to be a person or entity capable of legally owning property. Though a proper copyright notice can include variants, abbreviations, alternative designations, or pseudonyms of the owner’s name, such as such as a legal assumed name or “dba” (doing business as) of a business.
But who is the true owner of a given copyright? This is the part that causes headaches. It might not be clear at all! It might (and often does) require a detailed review of legal provisions in relevant contracts and consideration of the factual context around the creation of the work(s) in question. If the CMS user adding the copyright notice does not know that information or have access to it, then someone else needs to be involved to establish the proper owner name for the notice.
Copyright ownership originally arises in the author(s). If a vendor (or outside contractor) created the web site materials, then the vendor—or the vendor’s employee(s) or subcontractor(s)—would usually be the author and own the copyright in the absence of a written assignment. If an employee created the web site materials within the scope of his or her employment, then the work is a “work made for hire” and the employer is automatically deemed the author and copyright owner. But work made for hire determinations can be difficult. The owner of a small business may not be an employee. And even someone who is an employee may not have created the specific work(s) in question within the scope of his or her employment. If there are agreements in place with a vendor, they may or may not actually transfer ownership of copyright. Sometimes agreements establish only an obligation to assign (such as when they use language referring to future actions, like “will own” or “will assign”), and require a further written assignment to actually transfer copyright ownership. Tracking down copyright ownership information can be time-consuming. Master services agreements might incorporate separate “statement of work” documents that might all need to be reviewed in order to determine who owns what.
As you can see, there is no way for a WordPress theme’s automatic copyright notice settings to accurately reflect assignments, agreements, or employment conditions that were in place in order for the correct copyright owner to be named. Though for a web site run by a single individual who created all its content personally, the owner will be that individual and this question is not as complicated.
Other Information — Restrictions/Exclusions, Terms of Use, Etc.
Although the U.S. copyright statutes specify three elements required for a copyright notice, there might be other information included in addition.
Different kinds of additional copyright management information can be provided along with the copyright notice too. For instance explicit statements granting certain authorizations or licenses but prohibiting other things—that is, terms and conditions for use of the work—might be specified adjacent to the copyright notice, if desired.
Concluding Remarks
Some of the issues above have to do with the limitations of CMS functionality, including limited copyright notice functionality for many WordPress CMS themes. Other issues stem from the maddeningly convoluted nature of U.S. copyright laws. While adept CMS users can always find away around the limitations of built-in CMS or CMS theme functionality, more novice CMS users may have more difficulty editing the general copyright notice(s) in page/post footers. Though it is always possible to insert specific copyright notices in all sorts of other places.
When it comes to U.S. copyright laws, however, the complexity and confusion comes from the ways the laws were written. Clarifications or simplifications would require legislative changes (and perhaps changes or withdrawal from international treaties). Though bear in mind something Mark Twain wrote: “Whenever a copyright law is to be made or altered, then the idiots assemble.”
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
