Amazon Sellers’ Guide: Copyright Law
By: CJ Rosenbaum Esq., Anthony Famularo Esq., Levi Stewart, and RJ Cherpak
Chapter 5: Protecting Your Product & Fighting Infringers ………. 56
I. Why File for Copyright? ……….. 56
II. What Work Products Should be Copyright Protected? ……….. 58
III. How to Secure a Copyright with the USPTO ……….. 59
IV. The Application ……….. 60
V. Mandatory Deposit Requirements ……….. 63
Copyright Law: Chapter 5: Protecting Your Product & Fighting Infringers
I. Why File for Copyright?
A work is covered by copyright protection as soon as the work is fixed in a tangible form that can be perceived either directly or through a machine or device. [1] However, there are significant reasons to file.
Filing for copyright protection is accomplished by submitting the appropriate form and registration fee to the Copyright Office in Washington, D.C., together with one complete copy of the copyrighted work. If the work has not been published, two copies of the copyrighted work are required.
The Register of Copyrights reviews the work and determines if the work qualifies for a copyright and unless the subject matter is not copyrightable, or the claim is otherwise invalid, issues a certificate of resignation.
While registering for a copyright is not required, it provides several benefits. First, registering a copyright allows the Seller to establish a public record of his or her original work.
A registration with the US Copyright Office is evidence of the validity of the copyright if registered within five years of first publication of the work. [2] This can be used to prove that the copyright and the exclusive rights associated with copyright ownership belongs to the seller. Another benefit of filing for copyright is that it gives notice to third parties of the transferee’s interest and all facts stated in the certificate. [3]
Second, registering for a copyright allows the owner of a copyright to take action against alleged infringers in court. [4] For example, a fashion designer who designs a new dress can bring a claim of copyright infringement against another designer who sells a similar design. However, the fashion designer may be barred from bringing a claim of infringement if the dress is not registered for copyright.
The courts in the US are “split” as to what is required for a work to be “registered.” This means that in some areas of the US the law is different than in others. In some parts of the US a pending application is sufficient to use the courts while others require evidence that the Register of Copyrights has approved the application before a claim of copyright infringement can be brought.
Registering for a copyright is generally required for recouping statutory damages and attorney’s fees for acts of copyright infringement that commenced before registration, unless the registration was completed within three months of the first publication of the work.
II. What Work Products Should be Copyright Protected?
The types of works that are typically copyright protected by Online Sellers are images and verbiage. The U.S. Copyright Office defines visual art works as, among other things pictorial and graphic images. [5] Photographic images are included in this definition and are protected by U.S. copyright law as pictorial works.
As with all copyrighted works, a photograph must have be creative to be eligible for copyright protection. This photographic creativity could include:
The photographer’s artistic choices in creating the image, such as selection of the subject matter, the lighting, any positioning of subjects, the selection of camera lens, the placement of the camera, the angle of the image, and the timing of the image. [6]
III. How to Secure a Copyright with the USPTO
An application for copyright registration can be filed by the author or owner of an exclusive work, the owner of all exclusive rights, or an agent on behalf of an author or owner. [7]
An application contains three primary elements: a completed application form, a nonrefundable filing fee, and a nonreturnable deposit-which is a copy or copies of the work being registered with the Copyright Office.
IV. The Application
An application for copyright establishes the facts of the claim, such as the author of the work, the name and address of the claimant or owner of the work, the year of creation, whether the work is published and whether the work includes pre-existing material. Once submitted to the Copyright Office, the application becomes part of the public record and can be viewed by any member of the public.
In registering a claim for copyright, it is important to give clear and accurate information. Filing a complete and accurate claim serves the public interest because it provides potential licensees and other authors with accurate information and reduces the cost of litigation.
Applying Online
An application can be submitted online through www.copyright.gov or by mail on a paper application. The copyright office strongly encourages applicants to apply online to register most individual works of authorship. In some circumstances, an applicant can also register multiple works with one application through the online system. The online system has many benefits compared to submitting the application by mail, “including lower filing fees, faster examination; status tracking, payment by credit card, debit card, or electronic check, and option deposit upload.” [8] For more information about submitting an application online see Copyright Registration (Circular 2) on Copyright.gov.
Applying by Mail
Although the copyright office strongly encourages applicants to file an application online, copyrights can also be registered using one of the fillable PDF forms available on the office’s website. Alternatively, one can print out and complete a blank version of one of the forms. Once the applicant completes the application, he or she sends it in along with a filing fee and deposits it to the Copyright Office. More information about the details of these forms can be found on the Copyright Office website at www.copyright.gov.
Filing Fee
The copyright office charges a nonrefundable filing fee as part of each application. These fees are subject to change. For information about current registration fees Copyright Office Fees (Circular 4) on copyright.gov. [9]
For online applications, payment can be made by credit or debit card, electronic check or Copyright Office deposit account. If the applicant submits a paper form, he or she can pay by deposit account, check, or money order. For more information about deposit accounts, see How to Open and Maintain a Copyright Office Deposit Account (Circular 5) on copyright.gov. [10]
V. Mandatory Deposit Requirement
A deposit copy must be submitted along with every application. The term deposit, as used here, refers to the completed copy of the work or works which must be submitted along with the application to the Copyright Office and to the payment of the filing fee. Once a deposit is submitted to the Copyright Office, the application becomes part of the public record and can be viewed by members of the public upon request.
The Copyright Office uses the deposit to examine the work and to maintain a public record. The deposit requirement varies depending on the nature of the work.
Therefore, applicants will submit a different version of the deposit depending on:
· Whether the work is published or unpublished;
· Whether the work is in physical or digital format;
· Whether the work was published in the United States or a foreign country.
Some factors for Amazon Sellers to consider when selecting and submitting the deposit copy are included below. For more complete information about the Copyright Office’s deposit requirement, see Copyright Registration (Circular 2) and Chapter 1500 of the Compendium on copyright.gov. [11]
Unpublished and Online Only Works – One Copy Needed
For unpublished works and works solely published online, the applicant must submit one complete copy of the work. The copyright office’s website strongly suggests uploading the file containing the work through its website, rather than submitting them on a flash drive, or other physical storage device. A complete list of acceptable file types that are fit for upload can be found on the Office’s website.
Mandatory Deposit Requirement – Two Copies for Published Works
As per the Copyright Act, the Library of Congress has the authority to demand any work published in the United States for its collection and use. This authority is called the “mandatory deposit requirement.”
When a work that is subject to the mandatory deposit requirement is registered, one must submit two complete copies of the “best edition” of the work within three months of first publication. The “best edition” of a work is “the edition, published in the United States at any time before the date of deposit, that the Library of Congress determines to be most suitable for its purposes.” [12]
If two or more editions of the same version of a work were published in the United States before the date of deposit, the owner is responsible to determine which edition is best. This means color instead of black and white, a physical copy of the work instead of a digital copy, and archival quality paper rather than less permanent paper. For more information on which edition of a work constitutes the best edition, see Best Edition of Published Copyrighted Works for the Collections of the Library of Congress (Circular 7B). [13]
The mandatory deposit requirement is separate from the deposit requirement included in the registration process. The owner of copyright or of the exclusive right of publication may comply with the mandatory deposit requirement either by submitting the best edition of the work when registering the work with the Copyright Office, or without seeking a registration of the work, solely for the purpose of filling the mandatory deposit requirement. The mandatory deposit clause is for the purpose of ensuring the Library of Congress holds copies of every copyrightable work published in the United States for its collections and for use by other libraries.
The mandatory requirement only applies to works published in the United States. Therefore, unpublished works and works published outside of the United States are not subject to this requirement.
Per the Copyright Office’s regulations, there are several categories of published works that are also exempt from the mandatory deposit requirement. Some examples of the types of works that are exempt are jewelry, dolls, toys and games, packaging materials and online only electronic works, except for electronic serials that have been demanded by the copyright office. For a complete list of works exempts from the mandatory deposit, see Mandatory Deposit of Copies or Phonorecords for the Library of Congress (Circular 7D) on www.copyright.gov. [14]
Copyright Law: Chapter 5
[1] Copyright in General, Copyright.gov (last visited July 27, 2018), https://www.copyright.gov/help/faq/faq-general.html#mywork.
[2] 17 U.S.C. § 410(c).
[3] William C. Holmes, 1 Intellectual Property & Antitrust Law § 4:7 (2018).
[4] Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010) (quoting 17 U.S.C. § 411(a)).
[5] U.S. Copyright Office, Visual Art Works 2 (2017), https://www.copyright.gov/comp3/chap900/ch900-visual-art.pdf.
[6] Id.
[7] Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007).
[8] Id.
[9] Copyright Office Fees, Copyright.gov (last visited July 27, 2018), https://www.copyright.gov/circs/circ04.pdf.
[10] How to Open and Maintain a Copyright Office Deposit Account, Copyright.gov (last visited July 27, 2018), https://www.copyright.gov/circs/circ05.pdf.
[11] Copyright Registration, Copyright.gov (last visited July 27, 2018), https://www.copyright.gov/comp3/chap1500/ch1500-deposits.pdf.
[12] Best Edition of Published Copyrighted works for the Collections of the Library of Congress, Copyright.gov (last visited July 27, 2018), https://www.copyright.gov/circs/circ07b.pdf.
[13] Id.
[14] Mandatory Deposit of Copies or Phonorecords for the Library of Congress, Copyright.gov (last visited July 27, 2018), https://www.copyright.gov/circs/circ07d.pdf.