IP Copyright Blog Series Pt. 2

Protecting Your

Intellectual Property


This is Part 2 to a three-part series on Copyright Law as it relates to Cyberspace. Please review Parts 1 and 3 for a complete overview.

In the first installment of this blog series, we discussed the basics of Copyright Law as it relates to websites and online content. In this installment, we will look at the nuances of authorship, ownership, transfers and licenses of copyrightable content in the digital world.

Works Created by Multiple Authors

            It may seem fairly straight-forward, but authorship of a copyrighted work can be a tricky subject. Determining legal authorship is important, particularly because ownership of the copyright vests originally in the author of the work. The easiest situations occur when there is one sole author of a work, but this is usually not the case. Most categories of copyrightable works like music, film or even literary works are often the collective product of multiple people. In those instances, determining the “author(s)” can dictate who has copyright ownership of the work, as well as the exclusive rights that go along with it.

Joint Work

            Under 17 U.S.C. § 101, if two or more authors create a work “with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole,” it is known as a “joint work.” It can be difficult to identify whether a copyrightable work is a joint work because there are a number of factors to consider. The most important determinations are whether the authors intended to create a joint work, and whether the resulting product is such that their contributions really did “merge” and are “inseparable.” Under 17 U.S.C. § 201, “authors of a joint work are co-owners of Copyright in the work.”

For example, if you create a web page consisting of words, pictures and music each of which have been created by a different author, is this web page a joint work? The answer is most likely no since all the elements can be separated easily and exist independently of one another. Additionally, the web page as a whole (i.e., the arrangement of the works) is a separate copyright, known as a “compilation” under 17 U.S.C § 101. On the other hand, think about a piece of music where one person played the instruments and a studio engineer placed effects on those instruments. In such a situation, there would be no feasible way to separate their contributions. Consequently, the piece of music would be considered a joint work.

As a practical matter, authors should try and steer clear of engaging in a joint work since they will have to share their rights with others. This means that no one person has sole control over the copyright and any one of the joint authors can exercise their rights as owner of the copyright without the others’ permission. So how do you work with people on projects where your respective contributions will be merged and inseparable without allowing others the ownership rights? An express written agreement for a “work made for hire” will usually do the trick.

Work Made for Hire

            Under 17. U.S.C. § 101, a work made for hire (WMFH) is “a work prepared by an employee within the scope of his or her employment” or a work specially commissioned for use as a contribution to another work, but only “if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” Under 17 U.S.C.  § 201(b), “the employer or other person for whom the work was prepared is considered the author . . . [and] owns all of the rights comprised in the copyright.” Like a joint work, it can be problematic to determine whether a work has been created as a WMFH when there is no express written agreement.

The most crucial determinations to make are whether there was an employee-employer relationship and if so, whether the employee created the work within the scope of their employment. For example, if a manager at a software company tells an engineer employed with that company to create a program for use at work, the resulting program is probably a WMFH, and thus owned by the company. However, if an employee who works in the human resources department at a software company creates a program on his own, it is probably not a WMFH and thus, owned by the employee.

A WMFH agreement is usually what software, music, film and television companies use to ensure that the company commissioning the project own the copyright outright, instead of sharing ownership with the many people who contributed to the work as whole. An important aspect of the protection afforded to copyright owners is preventing others from using the work in a manner of which the owner doesn’t approve. If someone commissions a work and does not have the contributors to the work execute an expressly written WMFH agreement, he or she will have to share the profits from that copyright and will not be able to prevent the contributors from using the work in any way they please. Since a WMFH must exist the moment the work is fixed in a tangible medium, a WMFH agreement should generally be executed prior to completion of the project. In today’s digital world where more and more people are working with one another online from remote locations, it would be beneficial to discuss each party’s expectations of rights prior to beginning the project so there is no confusion when the work is eventually completed.

Transfer of Ownership of Copyright

It’s important to note that a WMFH is different than a transfer of ownership as defined in 17 U.S.C. § 201(d). For one, a WMFH means that the employer or contractor is considered by law to be the original author of the work, while a transferee of ownership is not considered as such. This has major implications due to the fact that an original author of a work gets the full statutory duration of copyright ownership under 17 U.S.C. § 302 (life of the author plus 70 years), whereas a transferee may lose his or her rights down the road. 17 U.S.C. § 203 allows the grantor (or his heirs) to terminate a transfer of copyright between 35 and 40 years from the date of the transfer. In most cases this is not a big issue, however owners of works that stand the test of time (usually very valuable works) can lose a major estate asset due to this technicality, at which point it could become a very big deal. This distinction between a WMFH and a transfer of copyright is especially important given that in the digital age, license agreements and the creation of derivative works are a major source of revitalizing profit from an old copyright.

License Agreements

Before getting into revitalizing an old copyright, we should discuss what a license agreement is exactly, and why the importance of licenses has exploded in the digital age. A license agreement is when the owner of a particular type of intellectual property (licensor) grants a third party (licensee) a right to use the intellectual property for a limited purpose without transferring all the rights of a copyright owner in the process. In the case of copyrights, traditionally common license agreements are generally between owners of content and distributors of that content (think about a book publisher/author who licenses to retailers the right to sell that book in return for a percentage of profits). Copyright license agreements are also common when a content creator wishes to use someone else’s content as part of their work. A good example is a film company who wishes to use a copyrighted song in their film.

17 U.S.C. § 202 provides that the ownership of a copyright is separate and distinct from the material object in which the work is embodied. This is why when you traditionally purchased a physical book or a DVD, you owned the product, not the copyrighted material embodied in it. The digital age however, is changing the way people “purchase” things. You’ve probably bought, streamed or otherwise accessed a song, film, e-book or game through an online provider like iTunes, Amazon, Google Play or Netflix in the past. So where is the physical CD, DVD, hardback book or game cartridge in which the copyrighted material is embodied? Nowhere? So what did you purchase? The answer is nothing. All of those online providers require their customers to execute a “license” or “terms of service” agreement prior to joining up. Therefore, even when you paid $20 for a movie from iTunes and downloaded it to your computer, you really “licensed” it subject to a number of terms and conditions. In the digital age, license agreements are the main way in which companies authorize consumer downloads of copyrighted content.

As stated earlier, license agreements are also important in the creation of derivative works. When a film company wants to make a film like Harry Potter of Hunger Games, it usually licenses the content for the limited purpose of making the film (and possibly merchandising and other means of profit-making endeavors). Licensing content to third parties for the purpose of creating derivative works in contemporary mediums is a major way copyright owners can take full advantage of their copyrights.

This brings us back to the distinction between a WMFH and a transfer of copyright. In the last hundred years, radio, television, film and the internet emerged as mediums of expression previously thought impossible. Large content providers like Marvel and Disney are prime examples of companies that have been able to revitalize the profitability of old copyrights through licensing agreements with companies that specialize in modern mediums and technology. Now, with copyright duration at a historical high, there is no telling what expressive mediums may emerge or re-emerge with new technology (like 3D films) during the life of your copyright in the digital age. So if you’re working with others and wish to own a copyright outright, make sure to discuss your expectations before creating the work (or before it is finished and fixed in a tangible medium) and aim to have a WMFH agreement executed in your benefit if possible.

            Thanks for reading! In the third installment, we will look at the “safe harbors” provided by the Digital Millennium Copyright Act (the “DMCA”). If you have further questions, please call The Deneau Law Firm, PLLC at (480) 306-5977 for an initial consultation.

Tools Of The Trade

I just thought I'd share with everyone a useful Website I've been using lately for bates stamping and marking PDF documents straight to download. It's called Web PDF Tools by Braintrade, Inc. It's fast, easy to use, and there is no login! The company is based here in Arizona. I have not looked at all of their features yet but I did experiment with a nice signature function where you can sign or capture a signature from your smart phone and stamp it right on the signature line of any PDF.

Kauai Earth

Kauai Earth

Aloha paper bags! In Kauai I was not offered or given a single plastic bag at any store, and everyone always asked if I really needed a bag at all. This is due to a law passed last year, in which shopping retailers are not to issue plastic bags for purchases. 

The Tempe location for the Deneau Law Firm, PLLC almost ready

Our second location in Tempe

We are getting closer – I did tell you that we are opening another location to better serve our clients, didn't I?

Our Tempe office will be opening soon! It's scary and at the same time exciting, if you know what I mean.

The TI's are at the flooring installation stage. We stopped by to see the progress and get the approval of our biggest fan and critic. We'll keep you in the loop on our progress as we get closer to our move-in. Who knows, we might even have a celebration, of sorts. More to come.

A snap shot in the life of Antonin Scalia

We were all stunned by the untimely death of Supreme Court Justice Antonin Scalia. How will this affect the supreme court decisions? Who will be replacing him and how will that affect the out come of the decisions put forth before the Supreme Court?

So many questions and so few answers.

Knowing that I began looking into how he worked with the other justices and found some pretty interesting information.

Here is a post from CNN politics. Read on - I think you will find this pretty interesting. 

Why Presidents Day isn't really a national holiday

Today being Presidents Day 2016, I wanted to post something to recognize our current and past presidents.

During my research I discovered that this day actually began as a day to honor George Washington and not a national holiday at all. To continue trying to explain which states celebrate it and which ones don't and why I'd be giving you a dizzying amount of facts so here is a link to the Constitution Center blog. 

This holiday started with George Washington

Arizona exports near record $23B in 2015

It's Tuesday afternoon, are you getting ready to pack it in for another day?

Gathering your business tools and organizing them in such a way that you are able to work on work this evening?

Is your company part the $23B in exports in 2015?

Well, then congratulations. All of your hard work is paying off. I think it's worthy to mention that in 2015 Arizona exports have a near record of $23B, according to the recent article written by Erick Jay Toll, Phoenix Business Blog.

I love to think of how progressive our state has become.


Deneau Law Opening Another Location

Watch us grow!

The lease is signed, the tenant improvements are in full swing and we are excited about opening another location. We are in the process of opening a Tempe office to better serve our current and prospective clients. Stay tuned for the rest of the story!

You aren't sure how to get a hold of us? Let's make it easy for you.  Just click here, you will be able to see who we are and what we do and stand for.

Martin Luther King, Jr. Holiday - January 18, 2016

Today, the third Monday in January, we celebrate Martin Luther King, Jr. Day. Rather than recognizing this very important person with just a post as a reminder to everyone who reads this I thought I would include a link to Martin Luther King, Jr. quotes. These quotes are incredible reminders of how we can apply them to our daily lives. Here's to an amazing man and the cause we still fight for even today - January 2016.  Read more.

Shareholders' Dispute

Do you ever wonder if 'the good guys' actually win their court cases? How about winning a just settlement?

Last year The Deneau Law Firm, PLLC.  took on a case where one of two business partners was being denied any ownership interest in said company. The court ruled in favor of our client in a big way. Verdict: $5,000,000.

The Arizona Attorney publication felt this case was important enough that it merited mention in the December 2015 issue. For more information in the case go to Arizona Attorney publication - Millette v. Balda, Maricopa Co. Superior Ct.

Happy New Year - 2016

" Where has this year gone?" That seems to be the most asked question lately and it's so true. As 2015 fades and 2016 is just about to be the new norm, I want to wish you the very best in this new year.

Our firm is positioned to have a break out year, having already filed 4 litigation cases to begin in January and more to quickly follow. You will continue to see great things from us here at Deneau Law. Watch us grow!

May 2016 be as awesome and beyond as 2015 has been. Thank you so much for your support!

Best wishes,

Kindra and our incredible team.

Movie Review: 'Bridge of Spies' offers a compelling look at one lawyer's impact on the Cold War

Law in Popular Culture
Reviewed by Brenan Sharp as seen in the ABA Journal  

This movie is based upon a real-life insurance attorney James Donovan, portrayed by two-time Academy Award winner Tom Hanks.

After 3 grueling years of law school and passing the bar, lawyers often discover that the cases they'd like to tackle aren't necessarily the ones which put enough food on the table. It's very difficult to come across and try a case which eventually goes before the highest court in the land, much less one bearing both historical and international significance. 

The gist of the story is in 1957, the New York State Bar approached Donovan to represent an alleged Russian spy to give the appearance of-but not to actually provide-a fair trial. Refusing to be part of the charade, Donovan provides zealous representation for his client, taking the case all the way to the U.S. Supreme Court. 

The rest is history and a must see, especially for lawyers.

An attorney should always defend the right of the client to be heard.  

Community Property Earnings Not Reachable to Satisfy Spouse's Separate Premarital Debt

Robertson Court Determines that a Husband’s Community Property Earnings are Not Reachable to Satisfy Wife’s Separate Premarital Debt – By Jane Joyce, Paralegal

In January of 2013 SPQR Venture, Inc., an Arizona Corporation, represented by Scottsdale Attorney and Councilwoman Lisa Borowsky, filed lawsuit in the Maricopa County Superior Court against Andrea and Bradley Robertson, husband and wife, represented by Phoenix Attorney Steven Feola, to garnish the wage income of Bradley in order to satisfy a premarital judgment debt against Andrea while simultaneously accusing them of fraudulently hiding assets.

Formerly known as Andrea Weck, Andrea and her previous husband Michael Weck saw considerable financial troubles, evinced by the number of lawsuits they incurred during the mid-2000’s.

Several judgments were entered against the couple and by the end of the decade they had divorced and Andrea was remarried to Bradley Robertson.

SQPR, not being the original Plaintiff to the action, became the Judgment Creditor by virtue of a transfer.  They filed civil suit CV2014-0341 against the Robertsons to collect on over $545,133.84 from Bradley’s income since Andrea did not have any income to report.

The trial court granted the Robertson’s Motion for Summary Judgment and SPQR appealed the decision.

On May 12, 2015 the Arizona Court of Appeals, Division One, handed down an opinion affirming the trial court’s ruling.

The basis for this decision is as follows:

The Robertson’s collectively had 5 children including a special needs daughter requiring a full time caretaker.

Andrea was a stay at home mother performing the full time caregiver services to their special needs daughter. 

Bradley was the sole provider of household income.

SPQR argued that because Andrea’s contribution to the community was non-monetary, but provided value that could be quantified, a portion of Bradley’s income equivalent to the value Andrea provided, was therefore collectable.  The court rejected this notion.

The court cited Hines v. Hines to discredit this creative approach.  The Hines court found that Arizona Revised Statutes 25-215(B) – the statute whose interpretation was in dispute – clearly precludes assignment of non-debtor spouse’s income or wages to satisfy a separate premarital debt of the other spouse.

In short Andrea could only be liable to the extent of her own contribution to the community property which would have been her separate property if single.

Essentially the new spouse cannot be held liable for the old spouse!  Or more accurately, the new community cannot be liable for another community by virtue of a member of the community having previously been a part of the other.

The Plaintiff attempted to push the square through the round hole but ultimately it just wouldn’t go.  Monetary contributions to the community (marriage) are not liable for the debts against a previous community (marriage) except to the extent any of those contributions would be the individual’s property.

For example had Andrea contributed to the community property $100,000.00 cash which was her separate property as a single woman before the marriage, then SPQR would’ve been able to collect upwards of $100,000.00 from the Robertson’s.  Or had she earned $100,000.00 while married to Bradley, that amount also would have been collectable.

As to the claim of fraud, the court found Bradley could not be fraudulently transferring his income in violation of Arizona Law, because he himself was not the Judgment Debtor, only Andrea was, and he could transfer the funds as he saw fit

The lines of collection were nearly blurred beyond recognition but the court wisely decided to preserve the current structure instead.