Is This Protected? Copyright Issues and Municipalities

By Sara J. Lentini

Without even realizing it, you have probably either encountered or even perpetrated some form of copyright infringement during your daily job functions. Yes, you. It’s scary to think that you’ve committed an illegal act without any knowledge of it being illegal, but the act can be something as simple as playing Bruce Springsteen’s “Born in the U.S.A." at a public fourth of July celebration, using an image of a Norman Rockwell painting to promote a city event or using a Jack Kerouac quote in a library flier. Although music, images and words are constantly being used in public, there are important legal limitations to their use when such use is done without obtaining the rightful copyright owner’s permission. Copyright law dictates both what type of work is protected and also what rights the work’s author has in excluding the public from using his work. Beware of copyright law ignorance because there is a serious price to pay depending on the circumstances of an infringement claim; a single instance of infringement can bring with it a fine anywhere between $750 and $150,000! The first step in understanding what can and cannot be done with copyrighted works is learning the basic principles of copyright law. Avoiding common copyright violations is easier after understanding what and how copyright law protects.

Understanding the Copyright Statute
Simply stated, copyright law protects any original work of authorship fixed in a tangible medium of expression. This sentence may sound intimidating, but what does it really mean? The term “fixed in a tangible medium of expression" means that someone must create something either in paper, recording or any other type of medium. However, the work must be permanent enough so that it can be viewed and reproduced by others. Reproduction is not limited solely to human reproduction; if either a human or a machine could reproduce the work, then the work is considered sufficiently fixed. If a work is fixed in a medium that immediately disintegrates, without allowing enough time for reproduction, then the fixation requirement has not been met.

Conveniently, the copyright statute provides a non-exhaustive list of “works of authorship." Although the statute does not list all the possible types of works, it includes the most common types: literary works, musical works, dramatic works, pantomimes and choreographic works, pictorial, graphical and sculptural works, sound recordings and architectural works. In the case of municipalities, the works most likely encountered daily are literary works, musical works, sound recordings and pictorial, graphical and sculptural works.

Literary works include anything that is not audio or visual but expressed in words, numbers or other types of verbal or numerical symbols. Examples of literary works include traditional books as well as the more modern example of computer codes. Pictorial, graphical and sculptural works include paintings, photographs and sculptures. There is an important difference between musical works and sound recordings; a musical work comprises the notes, tune and melody of a song, the “sheet music," while a sound recording is the recorded rendition of a musical work. When trying to conceptualize the relationship between these two types of works, the musical work can be visualized as the inner circle of a musical piece while the sound recording is the outer circle. The musical work and sound recording of a single piece of music can be owned by different individuals; the writer most likely owns the rights to the musical work but either the writer, producer or record company may own the rights to the sound recording, depending on contractual terms.

As discussed above, the requirements of fixation and works of authorship are fairly easy to comprehend; someone must create something in a way that other people can reproduce it. The term that probably causes the most confusion for people new to copyright law is “originality," however it too is very easy to understand once it is broken down. For the average person, the colloquial meaning of “original" is when something has an element of being revolutionary. But in copyright law, “original" does not have this meaning and instead means only that the work came from, or originated from, the author. In fact, the requirement of originality has been explained by courts as a low standard; as long as an author creates something that is his own, which is not an exact copy of another author’s work or a mere list of facts, then the author has satisfied the “originality" requirement. Exact copies of preexisting works cannot have copyright protection because the author did not create them. Following this logic, both facts used in compilations, such as numbers in a phone book and facts that an author has researched for a thesis, cannot be protected because in both cases the facts did not come from the author himself.

While “fixation," “works of authorship," and “originality" are critical requirements for protection, the most important overall concept of copyright law to remember is that an author cannot protect an idea but can protect his expression of the idea. For example, the novel Moby Dick is about a group of fishermen chasing a whale; this is the book’s idea. But the author, Herman Melville, layered his own personal expressions and thoughts on top of this idea to create a statement about society and human nature. The storyline of hunting a whale cannot be protected, but Melville does have protection in the unique way he expressed the idea. This distinction between what can and cannot be protected is called “the idea-expression dichotomy."

So far, this article has talked only about the element of validity; what requirements must be met for protection. Once an author has met these requirements, he automatically gets copyright protection even if he never registers with the U.S. Copyright Office, and such protection lasts the lifetime of the author plus an additional seventy years, depending on what time period the work was created: anything created after January 1, 1978 is protected for the author’s lifetime plus seventy years. At the end of this term, works fall into the public domain and can be used freely meaning that the copyright owner’s rights have lapsed and the public can copy, distribute, play or perform the work without needing a license.

Enforcement as a Deterrent to Infringement
But validity is meaningless without the element of enforcement; if an author has no way to protect his work, having a copyright is worthless. Enforcement is therefore crucial and provides a deterrent to infringement. If found guilty of infringement, an infringer may be ordered to either pay the amount of the copyright owner’s actual damages and the profits made from the infringement or pay statutory damages ranging between $750 and $30,000 at the court’s discretion for each case of infringement. In the case of willful infringement, where the infringer knew that he was in violation, statutory damages can climb as high as $150,000 for each case of infringement.

Enforcement is accomplished through a bundle of six exclusive rights given to the author or owner of a copyrighted work; they are called a “bundle" because each of the rights are independent from each other and can be sold, divided and transferred either together or separately. The first three exclusive rights, the reproduction right, adaptation right and distribution right, are universal rights that authors or owners of any type of work possess, while the last three exclusive rights, the right of public performance, right of public display and right to perform by means of a digital audio transmission, are specific rights for specific types of works; both the right of public performance and display only apply to literary, musical, dramatic, choreographic, pantomime and pictorial, graphic or sculptural work and the right to digital audio transmission only applies to sound recording. The reproduction right is the right to reproduce or authorize the reproduction of a copyrighted work. Even if someone other than the copyright owner reproduces a work for only a short period of time and later destroys the reproduction, this transitory reproduction is still a violation of the copyright owner’s reproduction right. The adaptation right is the right to change and transform an existing work to create a new work. The distribution right is the right to distribute copyrighted works to the public by selling the work, transferring the ownership in the work or renting, leasing or lending the work to others. The right to public performance and display is the right to play or show the work in public. The right to digital audio transmission is the right to broadcast the work.

Although these six rights may appear to give very broad powers, they are limited by fifteen exceptions codified in the copyright statute. The two most important limitations for municipalities to consider are fair use and licensing. Fair use is a defense to any alleged violation of any of the exclusive rights. It stands for the principle that, while technically the use is an infringement, such infringement is justifiable. Courts have articulated four factors to look at when determining if a violation is fair use: the purpose and character of the infringing use, the nature of the copyrighted work, the amount and substantiality of the copyrighted work being used and the effect of the use upon the copyrighted work’s market. If the infringement changes or transforms the copyrighted work’s meaning or function, such as a parody, then that weighs for fair use. However, if the copyrighted work is fictional, if the infringer uses either the heart or a large portion of the copyrighted work or if the alleged infringement shrinks or destroys the copyrighted work’s market, then these factors weigh against fair use. Courts can also consider factors outside of the four stated above. In addition to fair use, in the case of using copyrighted music an owner and user may either enter into a voluntary license before an infringement takes place (voluntary licensing is usually done through “performing rights societies" which will be discussed further in this article) or instead be forced by law to enter into a statutory license.

In the case of municipal activities, municipalities will most likely encounter copyright issues when using copyrighted text or pictures in pamphlets and when using copyrighted songs during public events; such uses without the copyright owner’s permission are violations of the author or owner’s exclusive rights described above. When dealing with pamphlets, municipalities may incorporate whole or parts of copyrighted work along with its independent work. By doing so, the municipality is in violation of the reproduction right and could also be in violation of the distribution right. Similarly, when a municipality either plays a copyrighted sound recording or has musicians perform a copyrighted song, the municipality is in violation of the right to public performance and could be in further violation of the reproduction right if the municipality made copies of sound recordings for compilation tapes to be played during an event.

Performing Rights Societies
There are various ways to deal with these alleged violations. For violations associated with using copyrighted text or pictures, one possible defense is fair use. For violations stemming from performing copyrighted songs, there are various organizations that have established voluntary licensing for the use of both musical works and sound recordings. These organizations are called “performing rights societies" and provide licensing for public performances of non-dramatic musical works; the three performing rights societies are: The American Society of Composers, Authors and Publishers (ASCAP), Broadcast Music, Inc. (BMI) and Society of European Stage Authors and Composers (SESAC). Authors or owners of copyrighted works grant a society a nonexclusive license to their right of public performance and the society in turn grants licenses to the public to use all the songs in the society’s music catalog on behalf of the authors or owners, or the society’s “members." ASCAP and BMI are the two major societies and do most of the licensing. An additional society, The Recording Industry Association of American (RIAA), grants licenses for public performances of sound recordings. These societies have two primary jobs; first, they act as a “middle man" between the copyright owner and public in granting licenses and second, they act as copyright “watch dogs" constantly surveying for possible infringement of their members’ copyrights.

This article will focus on ASCAP, as it is oldest of the performing rights societies and has the largest music catalog. ASCAP was founded in 1913 as a means for writers and publishers of songs to effectively grant licenses for the use of their works. With the advent of ASCAP, licensing became easier for both the copyright owner and the public. It was increasingly difficult for copyright owners to know who was performing their work and where their work was being performed and was also costly and tiring for the public to seek out each individual copyright owner to obtain a license for a single piece of music. Now, with one organization overseeing licensing for a vast number of copyrighted music, licensing became centralized and much more efficient for both the copyright owner and public.

There are two types of licenses available: a blanket or per-program license. A per-program license only gives the licensee the right to publicly perform music during set regularly scheduled time periods. For example, the per-program license was created for the situation where a television program, that normally does not perform music, might have a scheduled segment where music is used once a week. In contrast, a blanket license is a license to perform for an unlimited number of times all the music in a society’s music catalog for a set duration, usually one year. The blanket license fee is calculated using many factors including the nature of the licensee, with similar licensees having the same rate, and also the expected size of the audience exposed to the performance. Blanket licenses are by far the most popular choice for both the societies and public.

Once contacted by a performing rights society, such as ASCAP, it would be prudent to agree to the licensing fee as the consequence of refusing the license is much worse than the initial license fee. When ASCAP first detects an organization or establishment using and performing copyrighted works without a license, it first contacts the user to introduce the licensing terms. If the user refuses to obtain a license, ASCAP will again contact the user to further explain copyright law and the need for a license. Usually, after this second communication the user complies with the licensing terms. However, if the user again refuses a license, ASCAP will eventually bring suit for copyright infringement and almost always is awarded judgment in its favor; the awarded damages usually includes an injunction against the user to continue to perform copyrighted works, attorney fees, litigation costs and also statutory damages ranging between $250 and $10,000 for each case of infringement. In the case of statutory damages, the ASCAP usually asks for damages that are more than what a license would have cost but not as high as the possible maximum damages award. By doing so, ASCAP makes it clear that it is wiser to pay the initial license fee than taking a chance on winning an infringement suit. It is safer for a municipality to pay the initially proposed blanket license fee, because once ASCAP has contacted the municipality, the organization has clearly become aware of possible copyright infringement being committed by the municipality and, if the blanket license is refused, ASCAP will undoubtedly focus its attention on the infringer in preparation for future litigation. At this point, litigation is not a question of “if" but “when."

Once municipalities understand what works are copyrighted, the various author or owner rights and the defenses to infringement, the anxiety over possible copyright litigation should greatly lessen. While this article is only meant to be a brief introduction and does not cover many other important copyright issues, understanding these basic points will hopefully cause greater consideration of using copyright works and avoid inadvertently violating copyright owners’ rights. Knowing what actions to take when dealing with copyrighted works is just another important step in successful municipal planning.

Sara J. Lentini is a 2008 J.D. Candidate at Franklin Pierce Law Center and holds a Bachelor of Arts degree from Tuft University. She hopes to practice in Intellectual Property.

Article Topics: