Famous Last Words March 2011

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DISCLAIMER: This column is intended for general educationaland entertainment purposes and is not legal advice. Every situation is unique. Anyone entering into a contract should have a lawyer who can provide counsel.

Jim Charne,

Attorney at Law

March, 2011

Famous Last Words

By Jim Charne, Attorney at Law

 What Can You Copyright?

Dear Jim:

We’ve got designs, game ideas, game names, and demos we need to protect. How do we copyright this stuff?

Creative

Dear Creative:

Copyright protection vests in the creator of an “original work of authorship from the time it is first fixed in a tangible form of expression.”

So at its most basic, there is no need to “copyright” the work – it is automatically protected.

I did say that this is at its “most basic,” – because copyright is an enormously complicated field.

I can provide some general guidelines and rules here. It is always a good idea to consult with an experienced copyright lawyer who can help with your specific needs.

The United States Copyright Office (copyright.gov) is a great place to start. Download Circular 1, “Copyright Basics,” (http://www.copyright.gov/circs/) for a good overview of what can and cannot be protected, and how to go about the task at hand.

Consider each clause in the description above to decide whether your work can be the subject of copyright:

1. The work must be “original.” That means it is new to you and not based on another work. If you draw extensively from earlier work, you may not reach the threshold for originality. A work that is based upon, or takes elements from, an earlier work may be a “derivative work.” The owner of the original work can determine whether to permit derivative works.

But, on the other hand, if your work were to be exactly the same as that of another author, if you were to write a screenplay for “Star Wars” but you had absolutely no access to the other work, each would be consider an “original work.” This is one of the reasons why companies establish “clean rooms” for certain development projects -- to protect against “contamination” of the work or project.

2. Is it a “work of authorship?” In my own practice, I used to take this for granted. In case law, the threshold for what constituted a “work of authorship” is set pretty low. There have to be minimal choices made by the author. However, to my surprise, and to clients’ chagrin, I’ve experienced several instances where the Copyright Office has rejected applications to register works because it has found insufficient “authorship” in the piece to qualify. This generally occurs when we are trying to register a minimalist work. I’ve argued that the lack of work is, itself, a creative decision, and that meets the fairly low threshold for recognition as “work.” Sometimes this argument prevails, other times, not.

3. Is the work set in a “tangible form of expression?” We stated above that copyright subsists when a work is fixed. That means there is no copyright in an idea, a discussion, a pitch, a meeting, or any oral expression. Copyright does not attach until the work is in that “tangible form.” This is a reason why I always recommend that clients prepare a leave-behind document covering any pitch they may have made in a meeting.

Even if you meet the above standards, titles of works, names, and slogans can neither be the subject of copyright, nor registered. No copyright exists in the title, “Gone With the Wind,” or “The Godfather,” or “Halo,” or “Call of Duty,” or “World of Warcraft,” or “Famous Last Words.” However, before anyone decides to go off and develop a competing game or movie, or novel, or column using one of these titles, be aware that other branches of IP law, most certainly trademark, can protect these names.

Provided you have a tangible expression of your work, the best way to protect it is to register the copyright with the Copyright Office.

These days registration is best handled on-line. Download Circulars 42-66, as needed from http://www.copyright.gov/circs/. These excellent publications provide information on how to register your work. Different types of works have different requirements.

Use of the Electronic Copyright Office can save money in lower filing fees, and speed turnaround for your registration. Since the opening of the Electronic Copyright Office, it has taken as long as 18 months (!!!!), in my own experience, for a paper application sent by snail mail to be processed and a Certificate of Registration issued!

Finally, you should consider whether or not to register, altogether. Registration has great benefits. The Certificate is the equivalent of the deed to your house. It shows an effective date on which the application was received by the Copyright Office, creates a (rebuttable) presumption that the applicant owns rights, and may provide protection against later claims that the work infringes.

Registration is also a statutory requirement to bring an infringement action, and, if the registration took place before the infringement, the road to damages is much easier, with the possibility is open to also recover attorneys’ fees.
But the competing consideration is that a deposit copy must be filed with each copyright registration application. This deposit becomes a public record. If you have a document, design, or other work you want to maintain in confidence, registering the work will expose it to anyone who searches for it at the Copyright Office.

While the public nature of the deposit may give pause to potential registrants, if the work you are looking to register is computer software, check circular 61 (http://www.copyright.gov/circs/). Registration of computer programs does not require a deposit of the full source code so secrecy may be maintained.

Copyright is only one part of an overall IP strategy for your work. But it is a good first step in building value and staking your claim to your work.

Jim's Bio

Jim Charne practices law in Santa Monica, CA (www.charnelaw.com) where he represents developers, designers, composers and other clients in the games industry.  Jim has been a frequent speaker at GDC, is active in IGDA from whom he received an “MVP” Award at GDC 2006, in 2010 will chair the Practicing Law Institute video game law segment the week after GDC at its annual Entertainment Law Symposium in New York, and is a member of the Advisory Board of G.A.N.G.  Jim served as President of the Academy of Interactive Arts and Sciences from 1998 to 2001.

Is there language in your contract that has you scratching your head?  Found something confusing or worse?  Send it to “Famous Last Words” for developer-oriented analysis.

Famous Last Words is intended for general educational and entertainment purposes and is not legal advice.  Every situation and circumstance is unique.  Anyone entering into a software-related contract should have an experienced lawyer who can provide counsel throughout the process.

©2011 Jim Charne.  All rights reserved.