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Tech & Sourcing @ Morgan Lewis

TECHNOLOGY, OUTSOURCING, AND COMMERCIAL TRANSACTIONS
NEWS FOR LAWYERS AND SOURCING PROFESSIONALS

The U.S. Copyright Office recently released a third-edition public draft of the Compendium of its practices for comment. The final version is targeted for release in December and will serve as a guide to fundamental principles of copyright law and a technical manual regarding copyright registration, documentation of copyright ownership, and recordation of copyright documents, including assignments and licenses. With the last edition published more than 20 years ago, we have summarized below some notable new aspects, particularly with respect to changes driven by the Internet and new technologies.

Notable principles include the following:

  • Determining whether a work has been published is important for ownership, fair use, duration, enforcement, notice, and registration purposes. Under the new Compendium, the temporary digital copying of a work solely to display it is insufficient authorization for the work to be deemed published. Instead, the author or copyright owner must clearly authorize the reproduction or distribution of that work (such as posting content to a website that is accessible to the general public).
  • The new Compendium confirms that website users are “authors” of their original user-generated content (UGC) for copyright purposes. Therefore, to obtain ownership of the copyright in the UGC, a website needs a signed agreement that transfers the user’s rights and, therefore, should include an assignment provision in its “click through” terms of service. If the website owner desires to file an application to register that UGC, it must name the authors in the application and maintain records of the authors who transferred ownership rights. At the very least, the website owner should consider including in the terms of service a nonexclusive license to copy, distribute, and create derivatives of the UGC.

Copyright protection exists without registration, but registering a U.S. work is required to file a lawsuit for infringement, and registration can provide certain benefits to the owner. For example, if the work is registered before the alleged infringement, the owner can seek statutory damages and make a claim for attorney fees. Some notable issues regarding registration from the new draft Compendium include the following:

  • “Website content” that can be registered is material that is perceptible to website users; however, content that is perceptible to users only after download or separate purchase is not included in the website content registration and needs to be separately registered.
  • Because websites often change over time, website content being registered must exist at the time the application is received, and the applicant should identify the specific version of the work being claimed. The website owner should consider registering the original version as well as all subsequent versions as derivative works. As with source code, the Compendium provides guidance for registration where the original version is no longer available.
  • Domain names and hyperlinks are not protected by copyright and cannot be registered; however, website content that contains URLs can be protected and registered.
  • Website photographs and graphics can be registered, but the copyright office will not register a website’s format or layout—such as the arrangement of text boxes, windows, and borders—because it takes the position that such arrangements are not original works of authorship.