Multimedia In Business; Intellectual Property Law

Multimedia law encompasses various traditional laws.  Multimedia works are protected by various areas of intellectual property.  Copyright law, patent law, trademark law and trade secret law affect multimedia development projects.  Moreover, privacy, defamation and libel laws may be involved.  Experienced counsel should be consulted at an early stage of a project because of the myriad of applicable laws.

Multimedia projects may involve copyright and trademark infringement questions.  If infringement is found, a court may prohibit distribution of a company's products and require the company to recall unsold products.  Disputes regarding ownership of software copyrights may require a determination of the status of the creator of software as an employee or independent contractor.  An independent contractor may be a joint owner of the copyright, thereby entitling the contractor to a right to a portion of the profits.
A multimedia developer must avoid infringing intellectual property rights owned by others under patent, trademark, and trade secret laws and should take advantage of these laws in appropriate cases.

Copyright Law
Multimedia projects generally consist of a combination of text, audio, video, graphics and computer software.  Licenses or releases are needed for all copyrighted works used in a project, unless the work is owned by the producer, is in the public domain or its use is a fair use.  Developers and publishers  use copyrights to prevent unauthorized exploitation of their work.  Copyright protection is available for:  (a)  content, such as text, sound recordings and visual images;  (b)  technology such as the software used to develop the product;  and  (c)  the complete multimedia product.

Copyright protection is available for a variety of works of authorship such as the following.  Literary works include, for example, novels, newspaper and magazine articles, computer software, software manuals, training manuals, catalogs, brochures, ads  and business directories.  Musical works include songs, advertising slogans and instrumentals.  Dramatic works include plays and operas, ballets and dance.  Graphic and sculptural works include photographs, posters, maps, paintings, drawings, cartoon strips, statues, paintings, and works of fine art.  Motion pictures and audiovisual works include movies, documentaries, training films and videos, television shows, television ads, and interactive multimedia works.  Sound recordings include recordings of music, sounds, or words.

Registration with the Copyright Office is not required. However, registration is required before an infringement suit may be filed and prompt registration is required to obtain attorney's fees and statutory damages.  An original work is one created by an author who did not copy it from a pre-existing work.  A work is fixed when it is made sufficiently permanent to permit it to be reproduced, or communicated for a more than transitory period.

Originality and the fixation requirements are not rigorous.  A work is fixed by recording it on paper, film, tape, computer disk, CD-ROM or other recording medium.  Minimal creativity is required to meet the originality requirement.  A work can be original although it is not novel or unique.  Artistic merit or beauty are not required.  An original work may incorporate pre-existing material.  If pre-existing material is incorporated in a new work, copyright will cover only the author’s contribution of original material.

Copyright protects against copying the expression in a work, not the idea of the work.  A work may be protected against new works which are substantially similar to the expression.  Exact copying is not required for infringement.  Copyrighted material cannot be simply altered to disguise the copying.  A copyright owner has certain exclusive rights to the copyrighted work.  Any person who violates the owner’s exclusive rights infringes the copyright.  The owner has the exclusive right to reproduce the work, i.e. the right to copy, duplicate, transcribe, or imitate the work in fixed form.  The owner may also modify the work or create derivative works.

Copyright is usually owned by the person or persons who create the work.  If the work is created by employee within the scope of employment as a work for hire, then the employer is considered to be the author and thereby owns the copyright.  If the work is created by an independent contractor for a company, their work is not a work for hire, in which case the company has two choices.  The company may either obtain a written assignment of the copyright or enter into a written work for hire agreement, provided the project is qualified for work for hire status.  In the latter case, the creator should sign a written agreement agreeing that it is a work for hire prior to commencing product development.  In foreign jurisdictions, commissioned work for hire still requires an assignment of rights.

Material created by others is often brought together;  for example, film and television clips, music, graphics, photographs and text may be combined to create a multimedia product.  Third-party material in a multimedia product may be protected by copyright.  Copyrights make it difficult to use content created by others if permission cannot be obtained from the copyright owners.

Using copyrighted material without obtaining permission through an assignment or a license may create substantial liability.  The owner of the copyright may prevent the distribution of a new product and obtain damages for infringement.  An assignment transfers intellectual property rights in a work, although a limited assignment is often given.  A license provides the right to use a work and is typically very restrictive.

A work may be copyrighted even though it does not have a copyright notice on it.  Many published works contain a copyright notice.  A copyright notice is not required to obtain copyright protection for works published on or after March 1, 1989.  However, a copyright notice should be used because it is the best method to notify other parties of the copyright claim and to prevent infringers from arguing that infringement was innocent.

License Agreements
In a license agreement, the copyright owner grants specific rights to use the content and imposes restrictions on the exercise of the rights.  It is essential that the developer obtain all rights necessary to reproduce, adapt, distribute, perform and display the licensed content as part of the multimedia product.  Limitations must not interfere with the product.  It may be important to obtain new media rights because many traditional rights agreements do not cover multimedia content.  For example, the question of electronic rights has been addressed by courts.  Unclear agreements may give rise to liability for copyright infringement, including injunctive relief and liability for damages.

Copyright may be infringed by copying only a small portion of a work.  Copying a small amount of a copyrighted work is infringement if the portion copied is a substantial portion of the copied work.  A written work which copies only a small portion of a copyrighted work may infringe a copyright if the copied portions were important portions of the copyrighted work.  Prudence may dictate that before copying, permission or a license should be obtained.  Merely giving credit to a work's author is not a defense to copyright infringement.

A copyright owner typically requests a license fee.  Generally, liability for copyright infringement is not avoided by altering or modifying the copied work because there will be infringement of the copyright owner's modification right.  A license to use a copyrighted work may not be required in three cases:  (1) if the use is fair use; (2) if the work is in the public domain; or (3) if the work is factual or an idea.
Fair Use  
A license is not required to use a copyrighted work if the use is fair use.  However, it is difficult to determine the fairness of a particular use.  Fair use is more likely when the use is for non-commercial purposes.  Fair use is more likely when the copied work is a factual work not a creative one.  Fair use is more likely when the usage is a small portion of the protected work and it is not of substantial importance.  Fair use is more likely when the new work is not a substitute for the copyrighted work.  A multimedia work may serve traditional fair use purposes such as criticism, comment, news reporting, teaching, scholarship, and research.  Fair use is less likely when the new work is a sold to the public for entertainment purposes and for commercial gain.

A license to use a public domain work is not required.  Public domain works may be used by anyone. No person may claim exclusive rights of copyright for works which are not protected by copyright.  Public domain works include those for which the copyright term has expired, the copyright owner has failed to renew the, or the copyright owner has failed to properly use copyright notice.  A license is not required to copy facts or ideas from a protected work. Copyright for a work does not extend to its facts. 

A copyright license is not required for material which the individual originates.  A copyright may not be owned if the developer hires an independent contractor to create the work or part of it.  Generally copyright in a work is owned by the individual who creates the work, except for full-time employees working within the scope of their employment and copyrights which are assigned in writing.

Patent law protects inventions and processes (utility patents) and ornamental designs (design patents).  Inventions and processes protected by utility patents can be electrical, mechanical, or chemical in nature.  Strict requirements apply to utility patents and design patents.  A utility patent can be granted for an invention which is new, useful, and non-obvious.  The invention must not have been known or used by others in this country before the applicant invented it, and it also must not have been patented in the U.S. or a foreign country before the applicant invented it.  The policy behind the novelty requirement is that a patent is issued in exchange for the inventor's disclosure to the public of the details of his invention.  If the inventor's work is not novel, the inventor is not adding to public knowledge and accordingly should not be granted a patent.

To meet the non-obvious requirement, the invention must be sufficiently different from existing technology and knowledge to the degree that at the time the invention was made, the invention would not have been obvious to a person having ordinary skill in that field.  The policy is that patents should only be granted for significant advances, not for mere technical improvements or modifications of existing inventions.

It is often difficult to obtain a utility patent.  Even if the invention or process meets the requirements of novelty, utility, and non-obviousness, a patent will not be granted if the invention was patented or described in a printed publication in the U.S. or a foreign country more than one year before the application date, or if the invention was in public use or on sale in the U.S. for more than one year before the application date.

A patent owner may exclude others from making, using, or selling the patented invention or design in the United States during the term of the patent.  Anyone who makes, uses, or sells a patented invention or design within the United States during the patent term without permission from the patent owner infringes it even though the person did not copy the patented invention or design or even know about it.  Utility patents are granted for a period of 17 years.  Design patents are granted for a period of 14 years.  Once the patent on an invention or design has expired, anyone is free to make, use, or sell the invention or design.

Trademarks and service marks are words, names, symbols, or devices used by manufacturers of goods and providers of services to identify their goods and services, and to distinguish their goods and services from goods manufactured and sold by others.  For trademarks used in commerce, federal trademark protection is available under the Lanham Act.  Many states have trademark registration statutes that resemble the Lanham Act, and all states protect unregistered trademarks under the common law of trademarks.
Words, Names, Symbols, or Devices
Trademark protection is available for words, names, symbols, or devices that identify the owner's goods or services from the goods or services of others.  A trademark that merely describes a class of goods rather than distinguishing the trademark owner's goods from goods provided by others is not protectible.  A trademark resembling a trademark already in use in the U.S. so that it is likely to cause confusion or mistake is not protectible.  In addition, trademarks that are descriptive of the functions, quality or character of the goods or services have special requirements before they will be protected.

Trademark protection is obtained by filing a trademark registration application in the Patent and Trademark Office.  Federal law also protects unregistered trademarks, but such protection is limited to the geographic area in which the mark is actually being used.  State trademark protection under common law is obtained by adopting a trademark and using it in connection with goods or services.  This protection is limited to the geographic area in which the trademark is actually being used.  State statutory protection may be obtained by filing an application with the state trademark office.

Trademark law protects a trademark owner's commercial goodwill, reputation, and investment by giving the owner the exclusive right to use the trademark on the goods or services for which the owner is using the trademark.  Any person who uses a trademark in connection with goods or services in a way that is likely to cause confusion among the public infringes the trademark.  A trademark owner may obtain an injunction against the confusing use of the trademark by others and may collect damages for infringement.

Trade Secret Law
A trade secret is information of any sort that is valuable to its owner, not generally known, and that has been kept secret by the owner.  Trade secrets are protected only under state law.  The Uniform Trade Secrets Act defines trade secrets as information, which may include a formula, pattern, compilation, program, device, method, technique, or process that derives economic worth because it is concealed and not readily ascertainable, provided reasonable efforts to maintain secrecy are taken.

The following technical and business information can be protected by trade secret law:  customer lists; instructional methods; manufacturing processes; and methods of developing software.  Non-patentable inventions and processes may be protected under trade secret law.  Patent applicants generally rely on trade secret law to protect their inventions while the patent applications are pending.

Several factors are generally used to determine whether information is a trade secret:
Is the information known by others outside the business.
Is the information is known by the employees.
What methods are taken to maintain secrecy of the information.
What is the value of the information to the company and its competitors.
What effort and money was spent by the company to develop the information.

Can the information be readily acquired by others.
Trade secret protection is available only when valuable information is kept secret by the owner and the information has value to its owner by providing commercial advantage.  A trade secret is not required to be unique under patent law;  however, information that is known by others is not protected by trade secrecy law.

A trade secret owner may keep others from misappropriating and using the trade secret. Often, trade secret cases involve employees who take their former employers' trade secrets for use in new businesses or for new employers.  Trade secret owners may bring action to stop misappropriation.  Discovery of secret information through independent research or reverse engineering does not constitute misappropriation.  Protection is not available if the owner does not take reasonable steps to keep the information secret.

Rights Of Publicity , Libel And Other Laws
In addition to intellectual property laws, multimedia is affected by laws covering the right of the individual to control his or her image and reputation.  The right of publicity gives the individual the right to control his name, face, image or voice for commercial purposes.  Libel and slander protect an individual against the publication of  falsehoods.  The falsehood must injure his or her reputation or subject the person to hatred, contempt or ridicule.  The individual may obtain monetary losses and damages for emotional distress.

Pre-existing material from television or film involves the rights of entertainment unions to re-use fees.  Union agreements with the film and television studios give union and guild members who worked on a film or television program a right to payment if the work is re-used.  Although the multimedia developer was not a party to these agreements and may not be directly liable for payments, a license from the film and television studio generally makes the developer responsible for them.  The use of several clips may involve a substantial expense.

Multimedia is rapidly expanding in the fields of education, entertainment, information access, training, sales and marketing, and book adaptation.  Diverse media, including text, graphics, animation, video, sound and interactive links, are essential to effective multimedia.  Legal issues in multimedia are complex because of the need to integrate material created by a variety of people and businesses.  Multimedia developers must obtain all necessary rights to use material owned by others in order to avoid incurring substantial liability and jeopardizing their projects.

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