Making Your Compilation Protectable
There are ways you can help make your
the more likely it will be copyrightable. The case
compila tion satisfy the minimal creativity
involved a computerized database of state
requirement. If you must compile a list of al
trademarks. The state trademark records were
of anything, don’t simply arrange your data
themselves in the public domain. However,
in alphabetical, numerical, or chronological
the publisher added to each trademark record
order. For example, if you were compiling a
a code indicating the type of mark, modified
bibliography of every book ever written about
the state records’ description of the mark to
the Civil War, you shouldn’t simply list every
conform to standard descriptions, divided
title alphabetical y. Instead, you should employ
the data into separate search fields, and
some selectivity by breaking down your
added search indexes to facilitate computer
bibliography into categories—for instance,
searches of the records. The court held that
books about the causes of the war, Civil War
the publisher’s “selection, coordination,
generals, the naval war, and so on. The more
arrangement, enhance ment, and programming
judgment you use in arranging your data, the
of the state trademark data” satisfied the
more protectable your compilation.
originality and creativity requirements set forth
One of the first post- Feist cases dealing with
in the Feist decision. ( Corsearch, Inc. v. Thomson
electronic databases il ustrates that the more
& Thomson, Guide to Computer L. (CCH) 46,645
“value-added” features a database publisher
(S.D. N.Y. 1992).) In other words, the database
adds to the raw facts contained in a database,
qualified for copyright protection.
CHAPTER 6 | ADAPTATIONS AND COMPILATIONS | 157
order, and no selectivity was required in
amount of creativity was required to select
determining which names and addresses
or arrange the information they contain.
should be included, they would seem to
contain no more creativity than telephone
De Minimis Compilations
book white pages. Examples include: an
alphabetical list of all the Harvard alumni,
De minimis is Latin for trifling or insig-
all the members of the ACLU, or all the
nificant. A de minimis compilation is one
subscribers to Time magazine; and a
that con tains only a few items. Even if a de
mailing list in numerical order according to
minimis compil ation meets the minimal
zip code of all persons who have contributed
creativity requirement, the Copyright Office
more than $1,000 to the Republican Party.
will refuse to register it. The Copyright Office
Parts lists. An alphabetical or numerical
considers a compilation of only three items
list of all the parts in a given inventory
to be clearly de minimis.
clearly fails the creativity test: If the list
is exhaustive, no selectivity is required to
compile it; if it is arranged in alphabetical
Copyright Office Regulation
or numerical order, no creativity is required
to arrange it .
The Copyright Office has issued a regulation
Genealogies. A genealogy (that is, a table
providing that works “consisting entirely
or diagram recording a person’s or family’s
of information that is common property
ancestry) consisting merely of transcriptions
containing no original authorship, such as …
of public records, such as census or court-
standard calendars, height and weight charts
house records, or transcriptions made
… schedules of sporting events and lists or
from headstones in a few local cemeteries,
tables taken from public documents or other
are also deemed by the Copyright Office
common sources” are not protectable and
to lack minimal creativity. On the other
may not be registered. (37 CFR § 202.1(d)
hand, the creativity requirement may be
(1984).) This is certainly true if no creativity
satisfied where the creator of a genealogy
is involved in creating such works. But, of
compilation uses judgment in selecting
course, a table, list, or schedule would be a
material from a number of different sources.
protectable fact compilation if the selection
The Copyright Office will not register
and arrangement of the information it
these items unless the applicant convinces
contained was minimally creative.
the copyright examiner that a minimal
158 | THE COPYRIGHT HANDBOOK
Collective works
selections with explanatory notes. Both the
Col ective works must also meet the minimal
introduction and notes constitute protected
creativity and originality requirements. If little
expression. Thus, if someone copied the
or no selectivity and judgment is required to
entire bibliography they would be copying
protected expression, and therefore
create a col ective work, it may not be protect-
committing copyright infringement.
able. For example, an anthology consisting of
Of course, anyone could still copy the
ten stories in chronological order by the same
individual bibliographic entries so long as
author who wrote only those ten stories in her
they left the protected expression alone.
entire life would probably not be protectable,
because compiling such an anthology would
require no selectivity or judgment.
Other protections for compilations
Given the limitations on copyright
Compilations containing protected
protection for compilations, and the fact
expression receive greater protection
that some compilations may not qualify for
An author may add protected expression
any protection at all, the owners of valuable
to a fact compilation or collective work.
compilations may wish to find means
If original, such expression is protected
other than copyright to protect their work.
by copyright just like any other original
One means might be contract restrictions
work of authorship. As a result, if protected similar to those employed by the owners of expression is included throughout a
automated databases. For example, books
compila tion, it will be much more difficult
containing fact compilations might be
and risky for users to copy the entire
leased to users on terms similar to database
compilation or large chunks of it. Reason:
licenses. The lease would provide that the
By doing so, they would be copying not
user may not copy the compilation without
only unprotectable
facts but the protected
the owner’s consent. However, there are
expression in the compilation as well.
many unresolved questions about the
enforceability of such contracts. For further
EXAMPLE: Robert compiles a biblio graphy
information, you should see a qualified
containing the titles, authors, and publishers copyright attorney.
of every book published in the United States
on the Civil War (about 50,000 in al ). The
bibliography is simply in alphabetical order,
Preexisting Material in Col ective
so it probably lacks sufficient creativity to be Works Must Be Used Lawful y
protectable. However, Robert also includes
Recall that a collective work is a compilation
an introduction and annotates some of the
in which the preexisting material consists
CHAPTER 6 | ADAPTATIONS AND COMPILATIONS | 159
of separate and independent works that are
EXAMPLE: Assume that El iot compiled an
individually protectable. If such preexisting
anthology of the best short stories of the
material is in fact under copyright, it cannot
1880s (rather than the 1980s). He does not
be published as part of a compilation with-
have to obtain permission to use the stories
out permission from the owner of the right
he selected. The copy right in all short stories
to reproduce the work (presumably, such
written in the 1880s expired long ago, and
permission would have to be paid for). A
they are all in the public domain.
compilation author who publishes such
preexisting material without permission
Use of material created by compiler
infringes on the owner’s copyright and
A collective work may be created from
invites a copyright infringement suit.
preexisting material that the collective work
EXAMPLE: Assume that El iot (the compiler
author created himself. For example, Elliot
of the anthology of the 25 best short
could create an anthology of his own best
stories of the 1980s) obtained permission
short stories. Of course, in this event, the
to republish 24 of the stories, but failed to
author would not need to obtain permission
get permission to publish a story written
to use the material (assuming he still owns
and owned by Tom. Tom is entitled to sue
the copyright).
El iot (and his publisher) for infringing on his
exclusive right to reproduce his story.
Copyright in Preexisting
Permission may take the form of a
Material Unaffected by Inclusion
nonexclusive license to use the material in
in Col ective Work
the collective work, an exclusive license,
The copyright status of the preexisting
or even an assignment of all rights in the
material used to create a collective work
material. See Chapter 8, “Transferring
is unaffected by the collective work’s
Copyright Ownership.”
existence. Thus, if the preexisting material
Use of public domain material
was in the public domain, it remains in the
public domain. If the preexisting material
No permission is necessary if the preexisting was protected by copyright, such protection material is in the public domain. As
continues without regard to the collective
discussed in Chapter 5, “What Copyright
work—that is, the duration of copyright
Protects,” public domain material is not
protection for the preexisting material
protected by copyright; anyone can use it
remains the same, and is unaffected by a
however he or she wishes.
transfer of the compiler’s rights in his or her
compilation.
160 | THE COPYRIGHT HANDBOOK
EXAMPLE 1: Assume again that Elliot compiles
years after they were created. Unless El iot
an anthology of the best short stories of the
purchased all or part of the copyrights in
1880s. All the stories in his anthology remain
the stories, he acquired no ownership rights
in the public domain. The fact that they were
in them by virtue of their inclusion in his
republished in El iot’s anthology does not
anthology.
revive the copyright in the stories.
EXAMPLE 2: Assume instead that El iot
Registering Compilations
compiles an anthology of the best short
stories of the 1980s. All of the stories in the
Fact compilations and collective works
anthology are protected by copyright, so
can and should be registered. This way, if
El iot had to obtain the copyright owners’
someone copies the compiler’s selection and
permission to include the stories in his
arrangement, the compiler will be able to
anthology. The duration of the copyrights
obtain statutory damages and attorneys’
in the stories is not affected by the fact that
fees in an infringement suit. (See Chapter 3,
El iot republished them in his anthology
“Copyright Registration.”)
l
C H A P T E R
Initial Copyright Ownership
7
Independent Authorship by an Individual ..............................................................................162
Works Made for Hire ..............................................................................................................................163
There Are Two Different Types of Works Made for Hire ........................................... 164
Works Created by Employees as Part of Their Job ........................................................ 164
Special y Ordered or Commissioned Works .....................................................................170
Work-Made-for-Hire Agreements ...........................................................................................173
What Happens When a Work Does Not Satisfy the Work-Made-for-Hire
Requirement? ..................................................................................................................................179
Assignment of Rights as Alternative to Reliance
on Work-Made-for-Hire Rule ................................................................................................ 184
Jointly Authored Works ...................................................................................................................... 186
When Is a Work Jointly Authored? .........................................................................................187
Joint Works Compared With Derivative and Collective Works ............................ 188
Joint Authors’ Collaboration Agreement ........................................................................... 189
Joint Authors’ Rights and Duties in the Absence
of a Collaboration Agreement ............................................................................................. 198
162 | THE COPYRIGHT HANDBOOK
Awork that satisfies the three criteria We discuss each of these types of
for copyright protection discussed in authorship (and
initial ownership) in turn.
Chapter 5 (fixation, originality, and
minimal creativity) is protected automatical y
upon creation. At that same moment, the
Independent Authorship
author (or authors) of the work become the
by an Individual
initial owner(s) of the copyright in the work. The individual author of a work is the initial This chapter is about determining who these owner of its copyright when the work-made-authors—and initial owners—are.
for-hire doctrine doesn’t apply and when
It is important to understand who the
there is no joint authorship. The individual
authors/initial owners are for these reasons:
may exercise any of his or her copyright
• Their rights may differ, depending on
rights. For example, the author may reproduce
the nature of their authorship.
and sell the work, or authorize others to do
• Correct identification of the authors/
so—that is, license a publisher. The author
initial owners is required to make a
may also transfer ownership in whole or in
valid copyright registration.
part to others. (See Chapter 8, “Transferring
• The nature of the authorship affects
Copyright Ownership.”) An individual
how long the copyright lasts.
copyright owner can do whatever he or
There are several basic ways to author a
she wants with his or her copyright in the
work and thereby become its initial owner:
United States, being accountable to no one.
• An individual may independently
author the work.
• An employer may pay an employee
Impact of Community Property
to author the work, in which case the
Laws on Copyright Ownership
employer is an author under the work-
In states that have community property
made-for-hire rule.
laws, property that is acquired while people
• A person or business entity may
are married is usual y considered to belong
specially commission an independent
to both spouses equal y. This means that
contractor to author the work under a
individual authors who reside in Arizona,
written work-made-for-hire contract,
California, Idaho, Louisiana, Nevada, New
in which case the commissioning party
Mexico, Texas, Washington, and Wisconsin
becomes the author.
may be required to share ownership of
• Two or more individuals or entities may
their copy rights with their spouses. (See
The Copyright Handbook Page 29