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Copyrights Patents Q&A Trade Secrets Trademarks

What Should I Do to Avoid Infringing Anyone Else’s IP When Releasing a New Product?

Here is a common scenario. Your business is planning to release a new product but wants to avoid infringing anyone else’s IP. What should you do? To avoid infringing anyone else’s IP, you should consider proactive clearance or freedom-to-operate (FTO) efforts, ideally before the new product is commercially launched.  Such efforts are not legally mandated but should be tailored to your businesses’ risk tolerance in light of the typical costs of patent, trademark, copyright, and trade secret litigation.  The scope of these efforts will depend upon the type of IP involved.  Specific efforts may also depend on where you are planning to release the product, geographically. The following discussion focuses on the USA.

General Tips

Consider implementing overarching policies and protocols to reduce IP infringement (or misappropriation) risks. Educate and supervise staff accordingly. Do not simply assume that employees will already understand or care about IP infringement and misappropriation risks.

Make reasonable efforts to avoid infringement, including proactive clearance/FTO efforts where appropriate. But accept, as a cost of doing business, that despite those efforts there will always remain some risk that a “troll” will make an IP infringement claim of dubious merit.  Failing to make reasonable efforts will just make it easier for others to target you with infringement claims that are expensive to defend.

When making goods or materials at the request of a customer (e.g., as supplier for a retailer), be cautious of harsh and potentially predatory indemnity or warranty terms in purchase agreements. These can come into play if the customer is requesting infringement—either intentionally or merely negligently—while passing all infringement liability onto your business.  You might be agreeing to assume IP infringement risks that far exceed the commercial value of the contract. This is also concern where infringement liability may depend on customer actions outside your control.

Patents

For patents, the most common type of patent infringement has essentially a strict liability character and infringement does not depend on whether you had actual knowledge of the other party’s patent(s). However, though knowledge and intent (willfulness) can impact damages. Also, indirect infringement—a category of certain types of infringement—may require knowledge of the patent and that your activities infringe.

Consider a pre-launch patent FTO study that initially involves a search for any potentially conflicting patents, followed by a legal analysis. Proactively performing a patent FTO study allows you to find potentially problematic patents before they find you. That makes possible certain risk reduction efforts, such as an opinion of counsel, a design around, seeking a license, etc.

Trademarks

For trademarks, infringement has essentially a strict liability character and infringement does not depend on whether you had actual knowledge of the other party’s trademark. Liability can arise if there is a likelihood of confusion, even in the absence of any actual confusion by consumers. Trademark infringement does not have to be willful to result in a damages award. Also, there is a presumption that a trademark owner can obtain an injunction against use of an infringing mark.

When adopting new branding, it is not unusual for a first-choice mark (and second-choice…) to be already taken by another business. Many marks are already taken by others, which limits the universe of marks freely available for your business’ use at the time of adoption. It may be preferable to select a different mark from the start than to later re-brand, because re-branding tends to become more burdensome, costly, and disheartening as time passes.

Consider a pre-launch trademark clearance that initially involves a search for any potentially conflicting trademarks, followed by a legal analysis. Such a search should encompass all the relevant jurisdictions (e.g., all countries where your brand or mark will be used). Registration is not required to have enforceable trademark rights in the U.S. So a clearance search should ideally assess possible unregistered marks too.

Copyrights

For copyrights, there must be unauthorized copying of protected expression. Though there can be risks from copying that happens though inattention or negligent conduct. Fair use limits the copyright owner’s exclusive rights, but fair use will not always apply (and usually won’t when simply making commercial use of a work rather than making critical commentary about the work). There are many misconceptions about copyright law. For instance, just because something is available on the Internet does not make it “fair game” for your business’ use—even if denoted as being “free” or “royalty free”.

Have an awareness of copyright infringement risks. Also be aware of the ways that employees might commit infringement. For instance, employees posting materials to online platforms under via company accounts can present copyright infringement risks. Consider ways to educate employees about copyright and supervise employee activities.

Perform copyright clearance for any materials that you did not wholly create yourself that you plan to use, and obtain written permission or a license or assignment of ownership. Retain records of written authorizations. And make sure that you adhere to the terms of any license. Also consider seeking an indemnity for any licensed materials, because you could be licensing materials that are themselves infringing.

Trade Secrets

For trade secrets, there must be misappropriation of secret materials. Though there can be risks from misappropriation that happens though inattention or negligent conduct. However, trade secret misappropriation will generally only arise if your business had received secret information from someone else. This could occur by hiring an employee who knows confidential information from a prior employer.

For trade secrets, review any non-disclosure agreements (NDAs) in place and consider clean room or other protocols if any confidential materials were or will be received by staff. 

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Agreements Copyrights Patents Q&A Trade Secrets Trademarks

How Can My Business Acquire and Own IP Rights?

Some intellectual property (IP) rights arise automatically under certain circumstances while others require affirmative action. 

PRACTICAL TIP: Think about IP early to avoid waiving potential rights and consider the benefits of optional protections.

Copyrights

Copyright attaches automatically to the author when a new creative work (e.g., text, photo, etc.) is fixed in a tangible medium of expression.  Registration is not required for copyright to exist.  Copyright ownership is also independent of possession and ownership of a copy of a work—even the “original” or sole copy. 

Trademarks

Trademark rights can arise through use of a mark in commerce to identify the source of goods or services, provided that the mark is distinctive.  Registration is not required to have enforceable trademark rights in the U.S.  However, registration of a mark, particularly a federal registration on the Principal Register, helps to secure rights through the entire country and over time can limit the possibility for others to challenge the trademark rights in the registration.

Trade Secrets

Trade secret rights can attach to information that derives economic value from not being generally known and not being readily ascertainable so long as you take reasonable measures to keep it secret, meaning the existence of trade secret rights depends on the affirmative steps you take to maintain secrecy. 

Patents

Patent rights require applying for and then obtaining a patent following an examination to determine if the invention satisfies criteria for patentability.  In the U.S., a patent must be applied for within one year of any disclosure, public use, or commercialization of the invention by the inventor. In most other countries, a patent must be applied for before any public disclosure.

International Considerations

Patent and trademark rights are territorial and rights in the U.S. will generally not provide exclusive rights abroad.  Copyright and trade secret rights may have international enforceability in both the U.S. and some foreign jurisdictions. 

Assignments and Licenses

IP rights can also be obtained from others via assignment (i.e., a transfer of ownership) or licensing (i.e., authorization to use the IP without a transfer of ownership).  For many types of IP, assignments must be in writing and/or satisfy other criteria to be valid.  Trademark rights are tied to underlying customer goodwill and cannot be assigned apart from that goodwill.

Employee- and Vendor-Created IP and Joint Development

When employees create things that may be subject to IP rights, the general rule—with some exceptions (notably for copyrightable works made for hire created by an employee within the scope of his or her job duties)—is that the employee rather than the employer is the owner.  Businesses wanting to obtain ownership of employee-created IP should consider a written agreement (e.g., employment agreement) that establishes either an obligation to assign IP (to be followed later by execution of an assignment) or a prospective assignment of any expected future IP.

When hiring a vendor to create or develop something, or jointly developing something with a business partner, consider who will own the IP at the outset. Merely paying for development will not automatically result in the transfer of ownership of vendor-created IP. Joint development can raise complex questions about who will own what, and ownership of particular IP may depend on which person(s) or entity contributed to that particular subject matter in the absence of a written agreement.

A common mistake is to ignore ownership of IP rights until there is infringement or a big business deal. Attempting to “fix” or alter IP ownership after the fact is usually much more complicated than sorting that out from the start of a vendor/partner/employee relationship (or even at the start of a particular project).

Online Resources:

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Copyrights Patents Q&A Trade Secrets Trademarks

How Can I Protect the Design of My Business’ Products?

Intellectual property (IP) rights might allow a business to obtain exclusive rights in some or all aspects of a product. Such IP rights can potentially include patents, trademarks (i.e., trade dress), copyrights, and trade secrets. But the types of IP that might apply will vary depending on the context of the product involved, and may require affirmative action to secure and maintain IP rights.

Consider patentability before any public disclosure or commercialization of a product in order to avoid potential loss of patent rights.  Although other types of IP protection might be available, exclusivity in the design of a new useful product is first and foremost a question of potential patent protection.

Patent Protection

Patents can provide exclusive rights for a limited time in exchange for disclosure of an invention. An inventive product—and/or a process or method associated with making or using it—can be protected with a utility patent.  However, a patent application must be filed within one year of public disclosure or commercialization (or, in other countries, before any public disclosure).  The invention must also satisfy three criteria for patentability: utility, novelty, and non-obviousness. The latter two criteria depend on the scope and content of the prior art.  A patentable invention cannot already be known and must represent a non-trivial advance over what was already known.  These assessments are made in an absolute sense. Prior art is not limited to commercially available products. And it does not matter whether or not the inventor actually knew about the relevant prior art. 

The ornamental appearance of a useful article can be protected with a design patent if the ornamental design is novel and non-obvious. Design patents can cover surface ornamentations for an article of manufacture, the ornamental shape or configuration of an article of manufacture itself, and combinations of those categories. Abstract designs (e.g., a picture standing alone) are not patentable.

Trade Dress / Trademark Protection

Trade dress (a form of trademark protection) may also protect the distinctive, nonfunctional appearance of a product or its packaging.  However, trade dress protection only arises in aspects of product configuration that serve as a trademark to allow consumers to identify the source of the product. Trade dress never protects functional aspects of product configuration or packaging. In other words, it is limited to aspects that relate to the manufacturer or seller’s reputation and not to the usefulness of the thing itself.

In the U.S., trade dress protection requires achieving acquired distinctiveness once secondary meaning has developed in the minds of consumers based upon substantially continuous exclusive use for a sufficient period of time (generally a minimum of five years).  Trade dress will not provide exclusive rights in product configuration at the time of a new product’s launch, though it might for packaging. 

Copyright Protection

Copyright might apply to certain aspects of products, such as product labels or decorative graphics applied onto a product.  But copyright will not protect useful or functional parts, only those creative aspects that are conceptually separable and capable of existing apart from the useful or functional parts. For example, a lamp that incorporates a sculpture could have copyright protection in the sculptural elements but purely functional electrical components that allow the lamp to illuminate would not have copyright protection. The text of software code can be copyrightable but not the functionality enabled by software (which might be patentable instead).

Trade Secret Protection

Trade secret protection will not apply to publicly visible or readily ascertainable aspects of a product. But things like the “secret formula”, manufacturing methods, or aspects of embedded software might be protectable as trade secrets if they are not generally known and not readily ascertainable and you take reasonable measures to keep such things secret.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Copyrights Patents Q&A Trade Secrets Trademarks

What Are Typical IP Litigation Costs?

Intellectual property (IP) litigation tends to be relatively expensive compared to other types of lawsuits. There are many reasons for that. Though the complexity of the legal issues involved and a tendency for extensive pre-trial discovery and use of expert witnesses contribute to the total costs.

Below are graphs showing average costs through various stages of a an infringement or misappropriation lawsuit in the U.S. A summary graph compares average costs for “small” patent, copyright, trademark, and trade secret cases with less than $1,000,000 at risk. There are also individual graphs for patent, copyright, trademark, and trade secret cases with different amounts at risk, that is, with different amounts of potential damages for infringement or misappropriation (in U.S. dollars). All data comes from the 2021 AIPLA Report of the Economic Survey.

graph of average patent, trademark, copyright, and trade secret litigation costs by stage.  Initial Case Management: $57,000 (Patent), $24,000 (Copyright), $22,000 (Trademark), $60,000 (Trade Secret); Discovery, Motions (incl. Claim Const.): $369,000 (Patent), $161,000 (Copyright), $200,000 (Trademark), $367,000 (Trade Secret); Trial, + Any Appeal: $771,000 (Patent), $1,143,000 (Copyright), $415,000 (Trademark), $776,000 (Trade Secret).
Comparison of Average “Small” IP Lawsuit Costs by Type of Case and Stage
Clustered bar graph of average patent litigation cumulative costs, by stage of case, for cases with less than $1M, $1-10M, $10-25M, and >$25M at risk.  
Initial Case Management: $57,000 	$122,000 	$421,000 	$361,000; Discovery, Motions (incl. Claim Const.): $369,000 	$1,033,000 	$1,621,000 	$3,556,000; Trial, + Any Appeal:	$771,000 	$1,910,000 	$3,728,000 	$5,568,000
Average Patent Litigation Costs
Clustered bar graph of average copyright litigation cumulative costs, by stage of case, for cases with less than $1M, $1-10M, $10-25M, and >$25M at risk.  Initial Case Management: $24,000 	$77,000 	$136,000 	$292,000; Discovery, Motions: $161,000 	$882,000 	$1,125,000 	$2,501,000; Trial, + Any Appeal: $1,143,000 	$1,421,000 	$2,358,000 	$5,778,000
Average Copyright Litigation Costs
Clustered bar graph of average trademark litigation cumulative costs, by stage of case, for cases with less than $1M, $1-10M, $10-25M, and >$25M at risk.  Initial Case Management: $22,000 	$48,000 	$83,000 	$194,000; Discovery, Motions: $200,000 	$514,000 	$837,000 	$1,718,000; Trial, + Any Appeal: $415,000 	$892,000 	$1,592,000 	$3,381,000
Average Trademark Litigation Costs
Clustered bar graph of average trade secret litigation cumulative costs, by stage of case, for cases with less than $1M, $1-10M, $10-25M, and >$25M at risk.  Initial Case Management: $60,000 	$102,000 	$171,000 	$469,000; Discovery, Motions: $367,000 	$977,000 	$1,708,000 	$2,112,000; Trial, + Any Appeal	$776,000 	$1,717,000 	$3,309,000 	$4,582,000
Average Trade Secret Litigation Costs

Additional reports on IP litigation are available from various sources, including PWC’s 2018 Patent Litigation Study and Lex Machina’s 2022 Patent Litigation Report (and infographic), as well as Lex Machina’s 2021 Copyright and Trademark Litigation Report (and trademark infographic and copyright infographic).

Photo of Austen Zuege

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Copyrights Q&A

How Can I Use a Copyright Notice?

Introduction

Copyright notices have some legal value but are often not required in order to have copyright ownership. To understand generally what is meant by a copyright notice, consider the following example:

Example copyright notice: "© 2000 Jane Doe"
Example notice

Copyright notice is optional for works published on or after March 1, 1989 (but was generally required for U.S. works published before then), unpublished works, and foreign works. But despite being optional for new and recent works, including a notice still provides various benefits. Bear in mind that while you probably see copyright notices in many places, ones that you come across (especially online) may not be in the correct form to constitute a formal notice under U.S. law.

We will first look at the benefits of using a copyright notice before turning to the specific elements required for a proper notice under U.S. law and the proper placement of a notice on copies of a given work. Formulating a proper notice for your own work will require gathering some relevant information and making some judgments. As will be seen, there are actually quite a number of factors that need to be considered in order to correctly provide all the required elements of a notice in order to gain all possible legal benefits. But even an erroneous copyright notice might have some value, if only as a potential deterrent against authorized use.

Benefits of Using a Copyright Notice

Although use is optional, providing a copyright notice has a number of practical and legal benefits for the copyright owner, including:

  • Notice makes potential web site visitors aware that copyright is claimed in a given work, that is, it provides a “copy at your own risk” warning that may help discourage infringement;
  • A notice may prevent an accused infringer from attempting to limit his, her, or its liability for certain damages in court based on an innocent infringement defense (17 U.S.C. §§ 401(d) and 402(d));
  • Inclusion of a notice or other copyright management information (CMI) might provide an additional basis for monetary recovery if an infringer removes the notice (or other CMI) having reasonable grounds to know, that it will induce, enable, facilitate, or conceal infringement (17 U.S.C. §§ 1202 and 1203);
  • It identifies the copyright owner for parties seeking permission to use the work (that is, it can help potential licensees find the owner and may prevent the work from becoming a so-called “orphan work”).

Another benefit, of sorts, is that copyright notices can freely be added to a work. A copyright registration is not required in order to utilize a copyright notice. And many times the process is simple enough that nearly anyone can add a copyright notice to a work without assistance. Although some effort is required to gather and confirm the information included in the notice, the cost to actually attached the notice to many types of works may be close to nothing, particularly for text-based works or those in digital formats.

In theory, copyright notices also provide a public benefit by identifying the year of first publication. That information might help determine when copyright in the work expires. But ever since the laws were changed such that omission of a notice (or use of certain erroneous notices) does not result in the loss of copyright, notices ceased to be reliable as an indicator of publication. And on top of that, now that the copyright term for many works is based on the life of the (last surviving) author, rather than publication, the formal elements of a copyright notice, alone, do not allow the term of copyright to be determined—though if an author’s name is listed the notice might help you start to investigate that author’s lifespan.

The Elements of a Proper Copyright Notice

Overview of Basic Requirements

A copyright notice is a statement placed on copies of a work to inform the public that a copyright owner is claiming ownership. A copyright registration is not required in order to utilize a copyright notice. A proper notice (under 17 U.S.C. §§ 401(b) and 402(b)) for a published work consists of three elements that generally appear as a single continuous statement in the following order:

  1. The copyright symbol © (the letter C in a circle), the word “copyright”, or the abbreviation “copr.” (or, for phonorecords, the symbol ℗ );
  2. The year of first publication of the work, though in the case of compilations, or derivative works incorporating previously published material, the year of first publication of the compilation or derivative work is sufficient; and
  3. The name of the copyright owner, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner.

This example shows these three elements in a formal copyright notice:

Example Copyright Notice

We will look at each of these three basic elements of the notice in more detail below. Though the notice generally needs to be in the English language (with foreign words, such as the owner’s name, translated or transliterated into English).

Although certain old U.S. copyright laws required a copyright notice on published “United States works” in order to preserve copyright ownership, for any work created on or after March 1, 1989 a copyright notice is completely optional. And foreign works never required a notice under U.S. law.

It is possible to distinguish between general and specific copyright notices. A general notice might be applied to an entire book, or appear in the footer of all pages of a web site. Specific notices are directed at some specific part of something, such as an individual photo in a book or on a web page. Specific rather than general notices are usually not required, because the law makes any copyright notice optional. That holds even if a work includes material that is not copyrighted or owned by someone other than the owner identified in a general notice. However, where something includes both phonorecord and non-phonorecord works, multiple notices or at least multiple symbols in a single notice would be needed to fully obtain the legal benefits of notice because of the different requirements for the use of © and ℗ symbols in notices for those different types of works. And specific notices may be required based on the terms and conditions associated with use of particular content (such as license or other contractual terms). Also, U.S. copyright law includes certain prohibitions on removal of copyright management information (CMI), which may necessitate a specific notice in order to be compliant. For instance, frequently used “Creative Commons” copyright licenses (for instance, “CC BY 4.0”) include attribution requirements and prohibit removal of an existing copyright notice. So specific notices are more common when using content owned by someone else. But the explanation that follows applies to both general and specific notices.

Flowchart

The following flowchart explains major determinations that should be made in order to establish the proper information specified in a copyright notice and to affix the notice on copies. It is important to note that the U.S. copyright laws include many special statutory definitions of words, which frequently differ from their meaning in ordinary conversation. Therefore it is critical to check the legal definitions of the words used in this flowchart. Also, there may be situations in which multiple types of works are involved meaning that the flow chart may need to be applied multiple times in order to fully assess proper notice requirements across all of the involved works.

Specific steps shown in this flowchart are explained in greater detail below.

First Element — Copyright Symbol © (or Acceptable Alternative) or Phonorecord Symbol ℗

The first element needed for a proper copyright notice is either the copyright symbol (or something recognized as an acceptable alternative) or the phonorecord symbol. (17 U.S.C. §§ 401(b)(1) and 402(b)(1)). So the first determination is whether the work in question is a “phonorecord” (as defined in 17 U.S.C. § 101: “material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed . . . .”) or something else. Unless the work is an audio recording, it is probably not a phonorecord.

Though keep in mind that there are situations where use of multiple notices encompassing both symbols (© and ℗) are appropriate because both phonorecord and non-phonorecord works are present—like a music album containing a sound recording as well as liner notes. Alternatively, in certain situations involving audio recordings and non-audio works it is fairly common to see a single notice that uses both the © and ℗ symbols immediately adjacent to each other, which is something not explicitly provided for in the statutes but seems acceptable if the year of first publication and owner name are both identical for the phonorecord and non-phonorecord works.

The copyright symbol “©” is the letter C in a circle. The U.S. copyright statutes say that the word “copyright”, or the abbreviation “copr.” are acceptable alternatives to the copyright symbol. Using the letter C in parentheses, “(C)”, is technically not what the U.S. copyright statutes indicate. However, the U.S. Copyright Office has long considered “(C)” to be one of a few acceptable variants. Compendium of U.S. Copyright Office Practices, 3rd Edition, § 2204.4(A).

The phonorecord symbol “℗” is the letter P in a circle. The U.S. copyright statutes do not enumerate any acceptable alternatives. However, the U.S. Copyright Office has long considered “(P)” to be one of a few acceptable variants. Compendium of U.S. Copyright Office Practices, 3rd Edition, § 2204.4(A).

The copyright and phonorecord symbols (© and ℗) can either be copied-and-pasted into a notice or there are keystrokes that can be used to insert it while typing (these keystrokes vary depending on the computer system being used). Many word processing systems will auto-correct a letter C in parentheses sequence to the copyright symbol.

The term “All Rights Reserved” or the like is not an element of the notice prescribed by U.S. law, and it is not an acceptable variant or substitute for the copyright or phonorecord symbols (© or ℗). Instead, such a statement would be considered additional copyright management information.

Second Element — Year of First Publication

The second element of a proper copyright notice is the year of first publication of the work. (17 U.S.C. §§ 401(b)(2) and 402(b)(2)). What does or does not constitute “publication” under the statutory definition in the U.S. copyright laws is not straightforward, especially for digital and online works where the distinction between mere public display and actual publication is not always clear—and courts are divided on that question for works posted to the Internet by the copyright owner. (See Compendium of U.S. Copyright Office Practices, 3rd Edition, Chapter 1900 and § 1008.3 et seq.; and, e.g., Internet Prods. LLC v. LLJ Ents., Inc., No. 18-cv-15421 (D.N.J. Nov. 24, 2020)). But that is the most important consideration for the second element of the notice.

‘Publication’ is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

To perform or display a work ‘publicly’ means—

(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or

(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.”

17 U.S.C. § 101 Statutory Definitions of “Publication” and “To perform or display a work ‘publicly'” (emphasis added)

The U.S. copyright statutes say that in the case of “compilations” or “derivative works” incorporating previously published material, specifying the year (date) of first publication of the compilation or derivative work in the notice is sufficient. In other words, for a derivative work, such as a newer version of previously-published content, the more recent publication year for the newer version can be used. The same goes for a compilation. A “collective work” (in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole) or is a collection and assembling of preexisting materials that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship, is a compilation and the same option to omit the year applies. The statues also say that a single notice is sufficient for a collective work.

If a work is unpublished, there is no year of first publication. The statutory requirements for the form and content of a copyright notice for a published work don’t apply to unpublished works. So copyright owners can technically use any form of notice they wish with an unpublished work. Some say that a copyright notice for an unpublished work should indicate the unpublished nature of the work in lieu of a year. Others say that the term “unpublished work” should be included in the notice in addition to specifying the year of creation. Though out in the real world, it is common to see copyright notices on unpublished works that include the year of creation rather than the year of publication without any express indication of unpublished status (even though this could be mistaken for the year of publication) or that only use the copyright symbol with the owner name. Because U.S. copyright statutes do not address the form of notices for unpublished works, there are no clear consequences to the copyright owner no matter how such copyright notices are formatted.

It is sometimes common to see a range of years used. For published works, the use of a date range is not something expressly addressed in the statute. Though as noted above, if the work is a collective work or a compilation (both of those terms are defined in the copyright statutes), then only the year of first publication of the compilation or collective work (and not those of the preexisting works) needs to be specified. And for unpublished works, there is no year of publication and no specific statutory framework for a proper notice.

The statute regarding copyright notices on (non-phonorecord) copies also includes an odd carve-out. The year (date) of first publication in a copyright notice may be omitted “where a pictorial, graphic, or sculptural work, with accompanying text matter, if any, is reproduced in or on greeting cards, postcards, stationery, jewelry, dolls, toys, or any useful articles.” The term “useful article” has a statutory definition. So, depending on what sort of things the notice is applied to, it may be permitted to omit the year of publication. Though nothing prohibits including the publication year in such a notice anyway.

As a final note, the year is most often provided in Arabic numerals. Sometimes Roman numerals are used instead, most often with films and television programs (a practice that is thought to have originated as deception to obscure the age of the work).

Third Element — Name(s) of Copyright Owner(s)

The name of the copyright owner (or joint owners) is the third required element for a proper copyright notice. (17 U.S.C. §§ 401(b)(3) and 402(b)(3)). This is an area where mistakes are common in corporate settings, usually because of bad assumptions about who is actually the copyright owner.

Firstly, the owner or joint owners each need to be either an individual or a juristic entity (like a corporation). A brand name (trademark) is not a juristic entity, any more than a fictional character in a book or movie is one. The owner has to be a person or entity capable of legally owning property. Though a proper copyright notice can include variants, abbreviations, alternative designations, or pseudonyms of the owner’s name, such as such as a legal assumed name or “dba” (doing business as) for a business. There also is a statutory provision for naming a producer that applies only for phonorecords.

But who is the true owner of a given copyright? This is the part that causes headaches. It might not be clear at all! It might (and often does in commercial settings) require a detailed review of legal provisions in relevant contracts and consideration of the factual context around the creation of the work(s) in question. If the person adding the copyright notice to a work does not know that information or have access to it, then someone else needs to be involved to establish the proper owner name for the notice.

Copyright ownership originally arises in the author(s) under U.S. law, and ownership of copyright is distinct from ownership of material object (a copy, even the sole “original” like a fine art painting). A work created by an individual author in an independent capacity is owned by that individual. Such situations are relatively straightforward. But the inquiry is more complicated in business contexts where corporations, employee/employer relationships, and vendor/contractor outsourcing may be present. A given work may be a “work made for hire” under U.S. law that shifts authorship and ownership of a work away from the individual(s) who prepared it. But work made for hire determinations can be difficult and highly confusing.

If an employee created the work within the scope of his or her employment, then it is a “work made for hire” and the employer is automatically deemed the author and copyright owner. That kind of work made for hire has two components that must both be satisfied: the work must have been prepared (1) by an employee (a status determined under general federal agency law) (2) within the scope of his or her employment. For example, the owner of a startup small business may not be an “employee” if her role is only that of an investor/shareholder without any job duties or receipt of salary/wages. And even someone who is an employee may not have created the specific work(s) in question within the scope of his or her employment. For instance, a work created by a person in her spare time with no relationship to her job duties would not be within the scope of her employment.

If a vendor (or contractor) created the work, then the vendor would usually be the author and own the copyright in the absence of a written assignment—unless authorship and ownership instead reside in the vendor’s employee(s) or subcontractor(s). The mere fact that the vendor/contractor was paid to create the work does not transfer ownership of copyright. Work-made-for-hire provisions dealing with employee-prepared works do not apply because contractors and vendors are not employees. Though work-made-for-hire provisions might make a corporate vendor the owner of works the vendor’s employees prepare. It is possible to agree in writing in advance to make certain types of works a “work made for hire” for which the purchaser is deemed the author (and owner), but only for nine types of works enumerated by statute (17 U.S.C. § 101). If the work is not one of the nine statutory types, a contract with a vendor/contractor (erroneously) purporting to create a work made for hire has no legal effect and ownership still rests with the vendor/contractor (or its employee or subcontractor) until a written assignment is executed.

If there are agreements in place with a vendor/contractor, they may or may not actually transfer ownership of copyright. Sometimes vendor/contractor agreements establish only an obligation to assign (such as when they use language referring to future actions, like “will own” or “will assign”), and therefore require a further written assignment to actually transfer copyright ownership. Or sometimes these agreements include an ineffective work made for hire provision that fails to actually transfer ownership of copyright (because the work is not one of the nine statutory types). Tracking down copyright ownership information can be time-consuming. For instance, master services agreements might incorporate separate “statement of work” documents that identify assigned works and those might all need to be reviewed in order to determine who owns what.

Possible Additional Element — Restrictions/Exclusions, Terms of Use, Etc.

Although the U.S. copyright statutes specify three elements required for a copyright notice, there might be other information included in addition. Only one of these additional elements is required under the U.S. copyright statutes to have a proper notice, and that situation is not common. Though additional elements included along with (or adjacent to) a copyright notice might be desired. The law does acknowledge the potential use of various additional copyright management information (CMI).

For instance, there might be an exclusion stated. A copyright notice with an exclusion is referred to as a restricted notice. A semi-common one, which stems from a statutory requirement for works consisting predominantly of re-used work(s) of the (federal) U.S. Government (for which there is no copyright), is “No claim to original U.S. Government works.” But there could be others, such as “© 2000 Jane Doe, no copyright claimed in illustrations” or “© 2000 Jane Doe, no copyright claimed in public domain photo.” Generally there is no need to include a restriction or exclusion unless the work is predominantly or significantly made up of materials not owned by the entity in the copyright notice.

Different kinds of additional CMI can be provided along with the copyright notice too. For instance explicit statements granting certain authorizations or licenses but prohibiting other things—that is, terms and conditions for use of the work—might be specified adjacent to the copyright notice, if desired.

Placement of a Copyright Notice

A copyright notice needs to be placed on copies of a work in a way that people are reasonably likely to see it. The U.S. statute about copyright notices for most types of works says:

The notice shall be affixed to the copies in such manner and location as to give reasonable notice of the claim of copyright. The Register of Copyrights shall prescribe by regulation, as examples, specific methods of affixation and positions of the notice on various types of works that will satisfy this requirement, but these specifications shall not be considered exhaustive.”

17 U.S.C. § 401(c)

The regulations referred to in the statute are found at 37 C.F.R. § 202.2. They include a large number of examples that pertain to particular types of works in specific ways. There are examples for works in book form, works reproduced in machine-readable copies, contributions to collective works, motion pictures and other audiovisual works, and pictorial, graphic, and sculptural works. But, in general, the acceptability of a “reasonable” notice depends upon its being permanently legible to an ordinary user of the work under normal conditions of use, and on being affixed to copies in such a manner and position that the notice is not concealed from view upon reasonable examination. Where a notice does not appear in one of the precise locations described in the regulation’s specific examples, but a person looking in one of those locations would be reasonably certain to find a notice in another somewhat different location, the Register of Copyrights considers it acceptable.

The regulations give examples of defective notices as:

  • those permanently covered so that they cannot be seen without tearing the work apart,
  • those illegible or so small that they cannot be read without the aid of a magnifying glass (except where the work itself requires magnification for its ordinary use), and
  • those placed on a detachable tag, wrapper, or container that is not part of the work and will eventually be detached/removed and discarded when the work is put in use.

The statutory benefits that arise from use of a copyright notice are not affected by the removal, destruction, or obliteration of the notice from any publicly distributed copies (or phonorecords) done without the authorization of the copyright owner. (17 U.S.C. § 405(c)).

For phonorecord copyright notices, the relevant statute provides that “The notice shall be placed on the surface of the phonorecord, or on the phonorecord label or container, in such manner and location as to give reasonable notice of the claim of copyright.” (17 U.S.C. § 402(c)).

Failure to include a proper copyright notice, or the use of a notice with erroneous information, is more significant for works published before March 1, 1989. There are various additional provisions governing those situations.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Copyrights Q&A

What Are Common Copyright Issues When Using a CMS Like WordPress?

It is very common for individuals and businesses to use a content management system (CMS), like WordPress®, Drupal®, or ConcreteCMSTM, to create and maintain a web site. The original text, photos, graphics, and other content that is paced on such a web site with the CMS is usually copyrighted. But copyright law is challenging. Web developers often do not understand it well. And the terminology used in a CMS system may or may not align with the (disputed) legal meaning given to those same words for copyright purposes. That can cause confusion because web developers and web site administrators often misunderstand the impact of their web site design choices under copyright law. And that law is also not always clear or well-settled—courts sometimes disagree over key points or just have not yet offered definitive interpretations when it comes to online works.

What follows is an overview of two of the most common areas of confusion, using the WordPress CMS as an example. Sure, there many, many other confusing aspects of copyright law that apply to web site development, like whether something constitutes a “work made for hire” when a vendor is involved. But those are topics for another time. The two common areas of confusion addressed here are the meaning of “publication” and the proper form of a copyright notice for works made available online.

What Does It Mean to “Publish” Something Online?

The word “published” does not necessarily mean the same thing under U.S. copyright law that it does in ordinary language. It has a special legal definition for copyright purposes, as discussed below. The question really becomes whether “publish” and “publication” have the same meaning under copyright law as when commonly used to describe features and functionality within the CMS. We will see here that those meanings might be different—and the way the statutory definition applies to online works is disputed. This can make it surprisingly difficult to establish publication dates in order to register a copyright in works created or maintained using a CMS, for instance.

Let’s look at how this confusion about the meaning of “publication” can arise, starting with typical CMS functionality.

“Publish” and “Update” Buttons in WordPress

In a CMS like WordPress, it is easy to create web pages and posts with text and media like photos, video, audio, etc. Those individual posts and pages can have different statuses, allowing them be saved as drafts or made public. The visibility of a given post or page can be specified to be public (rather than private or password protected) and can be made public by clicking a “publish” button along with a “public” visibility setting. Content that the CMS “publishes” goes live on web server, so that web site visitors can view the live content that has been “published”. Though, depending on CMS user privileges (roles), the “publish” button might only be visible to administrators/editors. In any event, CMS functionality generally uses the word “publish” to mean making a page or post live, allowing web site visitors to view it (assuming the visibility of the post or page is not private).

The WordPress CMS allows control over scheduling when a post or page goes live. It is possible to schedule a post to publish as some particular date and time in the future. But it is also possible to backdate the date that appears on the post. That is, the publication date can be set as some time in the past. Clearly this does not mean that the post was really available in the past. But it does mean that the date that appears on a live, visitor-facing page or post is not always accurate with respect to when it was actually first made live and publicly accessible. And, naturally, the date appearing on a page or post will not reflect any prior (or subsequent) offline distribution of the same materials.

Online works are frequently treated as living documents that are revised and modified over time. After the “publish” button has made a given page or post go live online, it can be revised and modified in all sorts of ways. There might be significant changes or additions. WordPress has an “Update” button that works much like the “publish” button to make changes go live online. But when the live version of a post is updated, the date shown on the live post typically does not change (unless a CMS user changes it). The visitor-facing post may not indicate the date changes were made (or what the changes were). Also, an authorship byline may be established when originally made live. If there are later changes, the live, visitor-facing version may not indicate that later changes were made by a different person (or author).

Previously live posts/pages can also be made private or changed to draft status. The CMS can take down content from the live web site. But that might happen only temporarily. The content can be made live again later.

WordPress CMS administrators and editors can see the version history for a given post or page that tracks “revisions”—some users may be limited to seeing only their own revisions. However, which revision(s) were merely saved with a “draft” status and which revision(s) where made live online by being published or updated is not particularly easy to determine through the standard WordPress user interface. That is especially true, for example, if a post or page was published, then later unpublished, modified, then published again in modified form.

Revision history can allow the CMS username associated with particular changes to be determined after the fact. But if there are shared logins, it might be unclear which individual person or persons (authors) actually made particular changes or additions. Also, different CMS implementations might save only a limited number of historical revisions. So old revision history may no longer be available.

If the CMS doesn’t have all the revision history desired, it may be possible to find earlier version in a public archive like the Internet Archive’s Wayback Machine, assuming the site was crawled by the archive at a relevant time.

It is also possible to go beyond default CMS functionality to create your own archive of revisions. In other words, you can keep your own records outside of the default functionality of the CMS. Though if you want your own archive to have legal evidentiary value you likely want to take steps to ensure that custody of the archive is reliably established and maintained in order to later authenticate it. But that may be more than what is necessary or worthwhile in many situations. There is no requirement to do that for copyright purposes, though if available such records might make information useful for copyright registration easier to find.

“Publication” Under U.S. Copyright Law

U.S. copyright statutes include an explicit definition of “publication”, and a related definition of “to perform or display a work ‘publicly'”:

” ‘Publication’ is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

To perform or display a work ‘publicly’ means—

(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or

(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.”

17 U.S.C. § 101 Definitions of “Publication” and “To perform or display a work ‘publicly'”

Notice that the copyright law definition of “publication” excludes some things. So the definition is not just a positive definition of what affirmatively is publication. It also is partly a negative definition that explains what is not publication.

The other thing to notice is that this definition is a general one that does not include any Internet-related terminology. There is no reference to web sites, web pages, online streaming, or anything of the sort. That is because the definition came about before the Internet—and even before personal computers and photocopiers were widespread! So a certain amount of judgment is required to determine how online activities using a CMS fit into the definition. A lot of the confusion here stems from the laws and legal definitions being written when “publication” was a complicated process that involved extensive planning and effort. Just think about what goes into publishing a printed and bound book, and how getting it to a different country required physically shipping copies. The idea that something might be published worldwide by just about anyone with no more than a click of a button on an Internet-connected computer was not a possibility at the time the statutory definition was enacted.

The U.S. Copyright Office provides its own further interpretations of the statutory definition of “publication”. Those interpretations draw from legislative history of the U.S. copyright statutes. While it is possible that courts might someday definitively reject some of the Copyright Office’s interpretations, as certain courts already have, they are a good (and perhaps necessary) starting point. Anyway, the Copyright Office’s interpretations start by noting what is implied but not explicitly stated in the statutory definition:

“legislative history explains that ‘a work is ‘published’ if one or more copies or phonorecords embodying [the work] are distributed to the public’ with ‘no explicit or implicit restrictions with respect to [the] disclosure of [the] contents [of that work].’ H.R. REP. NO. 94-1476, at 138 (1976). It also explains that publication occurs ‘when copies or phonorecords are offered to a group of wholesalers, broadcasters, motion picture theatres, etc.’ for the purpose of ‘further distribution, public performance, or public display.’ Id.

Although it is not expressly stated in the statutory definition, the legislative history indicates that publication occurs only (i) when copies or phonorecords are distributed by or with the authority of the copyright owner, or (ii) when an offer to distribute copies or phonorecords to a group of persons for further distribution, public performance, or public display is made by or with the authority of the copyright owner.”

Compendium of U.S. Copyright Office Practices, 3rd Edition, § 1902 (emphasis added) (internal citation truncated)

So far, this seems fine. It is helpful, and uncontroversial, to say that the statutory reference to “copies” includes a single copy and that all this is only about things authorized by the copyright owner. But there is more to the story. The U.S. Copyright Office provides some further guidance regarding the interpretation of publication for works made available online that is less intuitive . It is this next part that is the source of confusion in the web site CMS context.

“As a general rule, the U.S. Copyright Office considers a work ‘published’ when it is made available online if the copyright owner authorizes the end user to retain copies or phonorecords of that work. For example, the fact that a work is expressly authorized for reproduction or download by members of the public or is expressly authorized for distribution by the public creates a reasonable inference that copies or phonorecords have been distributed and that publication has occurred.

Likewise, the Office generally considers a work ‘published’ when the copyright owner makes copies or phonorecords available online and offers to distribute them to a group of persons for purposes of further distribution, public performance, or public display. ***

It may seem odd that allowing the whole world to view or hear a work does not constitute publication of a work, but the statutory definition is clear that the public performance or public display of a work does not, in and of itself, constitute publication.”

Compendium of U.S. Copyright Office Practices, 3rd Edition, § 1008.3(B) (emphasis added)

Confused? Perhaps. Convinced? Maybe, or maybe not. Anyway, this framework raises further questions about the “reasonable” inferences that the Copyright Office says determine whether or not clicking “publish” or “update” on a CMS like WordPress constitutes publication of web site materials under U.S. copyright law. These questions tend to depend on circumstances beyond the mere act of clicking a publish or update button to make materials go live. The Copyright Office says this depends on the substantive content of the web page in question—and potentially also on offline actions regarding distribution of physical copies, if applicable.

When considering potential publication of copyrightable works, it is necessary to remember the statutory distinction between (1) a mere public display versus (2) actual publication. For works available online, the U.S. Copyright Office mostly looks at this in terms of whether there is an express or implied authorization of publication from the copyright owner that goes beyond public display. The Copyright Office does not make that determination for you. But it provides the following guidance about the sorts of factors that it says should be considered that are not explicitly found in the statutory definition.

“A critical element of publication is that the distribution of copies or phonorecords to the public must be authorized by the copyright owner. To be considered published, the copyright owner must expressly or impliedly authorize users to make retainable copies or phonorecords of the work, whether by downloading, printing, or by other means.

A distribution or offer to distribute that has not been authorized by the copyright owner does not constitute publication. Thus, the mere fact that a work is disclosed on the internet does not ‘publish’ the work. The end user’s technical capacity to copy, capture, save, or otherwise reproduce a work in and of itself does not imply that the copyright owner authorized the distribution or publication of that work, unless there is an express or implied-in-fact authorization that supports such an inference. Likewise, the fact that it may be possible for an end user to reproduce or distribute a work that has been authorized only for public display or public performance online does not mean that publication has occurred.

***

While it is often a simple matter to determine whether a distribution of tangible copies was authorized by the copyright owner, it is not always factually clear whether the placement of works online is intended to be an authorized distribution of those works or merely an authorized public performance or public display.

Compendium of U.S. Copyright Office Practices, 3rd Edition, § 1008.3(C) (emphasis added)

A variety of factors may be relevant in determining whether a copyright owner published website content by impliedly authorizing users to make copies of that content. Examples of factors that may be considered include the following:

Whether there are indications on the website or webpage relevant to the work indicating that the copyright owner intends for the work to be distributed to the user via download, saving, printing, or emailing, such as the presence of a ‘download,’ ‘save,’ or ’email’ button for a particular work.

• Whether the copyright owner expressly reserved copyright rights in the work or explicitly prohibited the reproduction or distribution of the work in whole or in part.

• Whether the copyright owner employed barriers to the reproduction or distribution of the work, such as technological measures that disable or impair a web browser’s print, copy, and/or save capabilities.

Whether the copyright owner permitted the work to be streamed or displayed, but did not expressly permit the work to be copied or downloaded.

Compendium of U.S. Copyright Office Practices, 3rd Edition, § 1008.3(C) (emphasis added)

Furthermore, the U.S. Copyright Office considers intermediate or buffer copies made in the course of ordinary online streaming or web site browsing to be “irrelevant” or at least “doubtful” as to an implied authorization to create and permanently retain copies. Compendium of U.S. Copyright Office Practices, 3rd Edition, § 1008.3(E).

All this Copyright Office guidance is not necessarily built on indisputable logic—indeed, some courts have rejected it (though others have adopted it, even if Chevron deference is the only justification given). And the Copyright Office couches much of this guidance in terms of what it believes typical copyright owners would believe, which may not be what all copyright owners actually believe. After all, web pages can be printed using a print function in a browser or a screenshot function of an operating system even if there is no “print” or “save” button on the web page, and site owners might understand the impact of that differently than the Copyright Office claims they do.

The crux of the confusion (and related dispute) comes down to the U.S. Copyright Office’s position that it is necessary to interpret typical web site activities to allow for either public display without publication or true publication.

But one district court decision specifically held to the contrary that

“merely by accessing a webpage, an Internet user acquires the ability to make a copy of that webpage, a copy that is, in fact, indistinguishable in every part from the original. Consequently, when a website goes live, the creator loses the ability to control either duplication or further distribution of his or her work. A webpage in this respect is indistinguishable from photographs, music files or software posted on the web — all can be freely copied. Thus, when a webpage goes live on the Internet, it is distributed and ‘published’ . . . .”

Getaped.com, Inc. v. Cangemi, 188 F. Supp. 2d 398, 402 (S.D.N.Y. 2002) (emphasis added)

That is, this particular district court ruled that the law is the opposite of what the U.S. Copyright Office’s Compendium guidance says regarding the “publication” status of web pages that are made live on the Internet by the copyright owner. If this ruling was conclusively found to be the law in all U.S. courts, and not merely in some, then confusion over the impact of clicking the “publish” button in a CMS like WordPress would disappear—clicking “publish” in the CMS would always result in “publication” for copyright registration purposes. For this alternate view to prevail, the U.S. Copyright Office would have to change its position and/or have its position definitively overturned by the courts. At the moment, courts are split on this issue.

Summary — “Publication” of Online Materials

So, to summarize, clicking “publish” or “update” in a web site CMS like WordPress to make a page or post go live online may or may not constitute “publication” of those materials for purposes of U.S. copyright law. This is still a legally unsettled question. The U.S. Copyright Office says clicking “publish” or “update” will at least result in a public display of the work(s) on that page or post, but that additional substantive facts determine if that results in “publication” or not depending on whether site visitors are expressly or impliedly allowed to retain a copy of the work (and says that a relatively ordinary web page or post probably would not do that). Keep in mind here that headers, footers, and other materials that are automatically appended to all pages or post by the CMS might influence this determination in the eyes of the Copyright Office, as will reasonably prominent notices or disclaimers (even if their full terms require clicking through to another page). Though a few courts have rejected this Copyright Office position about online publication.

If you want an online work to be considered published in the eyes of the U.S. Copyright Office, the simplest ways to do that are to add some explicit authorization to that effect (in text) or some kind of “print,” “download,” “save,” or similar button.

If you want an online work to be considered unpublished (but you still want them to appear online), the simplest ways to do that in terms of the U.S. Copyright Office’s position are to explicitly identify the work as unpublished or to place explicit restrictions on those materials that limit the terms of use to only public display. Though some courts have rejected this approach and have said posting anything to a live, publicly-accessible web page always constitutes publication for copyright purposes.

When creating web sites and making them available online, the question of whether or not “publication” has occurred may not immediately make any difference. But the question may become significant if a copyright registration is sought. And registration is often important if infringement occurs—registration (or refusal) being a prerequisite to suing for infringement. Lastly, “publication” may determine when the term of copyright expires for certain works.

What has been said above is fairly specific to U.S. law. Foreign countries may have different copyright laws that treat this question differently (or this question might not matter at all in some countries).

Including a Proper Copyright Notice

Copyright notices have some legal value but are not required in order to have copyright ownership for recent U.S. works (relevant U.S. copyright law changed in 1989). They are optional. But including them still provides some benefits. A copyright registration is not required to use a notice. To understand generally what is meant by a copyright notice, consider the following example:

Example copyright notice: "© 2000 Jane Doe"

Although use of a copyright notice is optional, providing a copyright notice has a number of benefits, including:

  • Notice makes potential web site visitors aware that copyright is claimed in a given work, that is, it provides a “copy at your own risk” warning that may help discourage infringement;
  • A notice may prevent an accused infringer from attempting to limit his, her, or its liability for certain damages in court based on an innocent infringement defense (17 U.S.C. §§ 401(d) and 402(d));
  • Inclusion of a notice or other copyright management information (CMI) might provide an additional basis for monetary recovery if an infringer removes the notice (or other CMI) having reasonable grounds to know, that it will induce, enable, facilitate, or conceal infringement (17 U.S.C. §§ 1202 and 1203);
  • It identifies the copyright owner for parties seeking permission to use the work (that is, it can help potential licensees find the owner and may prevent the work from becoming a so-called “orphan work”).

Yet the way that CMS functionality deals with copyright notices ranges from useful, to annoying but workable, to frustrating for all but sophisticated coders. What follows is a discussion of how to provide an accurate copyright notice on web sites managed with a CMS like WordPress. We will first look at typical CMS functionality and then turn to the legal aspects of a proper copyright notice, including the legal and practical benefits of using one.

A CMS like WordPress may provide some mechanism to manually or automatically insert a copyright notice on a web page. The notice might be in a footer or menu that appears with all pages or posts, for instance. But this is not default functionality in WordPress. Rather, the implementation of copyright notices falls to the particular theme used by the WordPress CMS, including a child theme, or to manual insertion by CMS users (including adding text or through coding) or through the use of a CMS plug-in.

Some WordPress themes will insert a copyright notice automatically, often in footer text. But control over that copyright notice might be limited and not particularly straightforward for CMS users uncomfortable with editing code (such as through the WordPress CMS’ theme editor under the “Appearance” menu). This matters because the automatically-inserted copyright notice might be complete wrong! Actually, it probably will be wrong from a copyright law perspective unless you edit the notice in some way. That is because what is often inserted may include a year that automatically updates (and thus has no connection to the dates any particular content experienced “publication” in the legal sense) and may insert automatically the web site’s title as the copyright owner—which may be a brand name rather than a person or corporation that actually owns the relevant copyright(s). Though when they automatically include the copyright symbol “©” or the word “Copyright” that is at least a start.

So the default copyright notices inserted by a CMS may represent good intentions gone awry. Where problems really arise, though, is when CMS users (wrongly) assume that the CMS and theme defaults are based on the requirements of U.S. copyright law. Often, the CMS theme defaults have no basis in copyright law at all.

The right way to format a copyright notice, if one is desired, is addressed below. But purely from the standpoint of using a CMS like WordPress, know that the default copyright notice is probably not correct and will need to be changed. Doing so may not be simple from the standpoint that overriding the default notice established by a theme may not be possible using the CMS’s standard graphical user interface menus. You may need a plugin or have to manually edit the theme’s cascading style sheet (CSS) code.

A potential annoyance here is that unless a plugin or child theme is used to specify the format and content of a copyright notice, be aware that hard-coded changes to a theme’s CSS code used to provide a desired copyright notice (such as in a site-wide footer) will break whenever the theme is updated. So installing theme updates will undo your efforts to hard-code a copyright notice in that theme. This means theme updates might need to be deferred until a CMS user has the time to re-edit the newly-updated theme’s CSS code to reinstate the desired copyright notice.

Keep in mind here that copyright notices can be inserted in all sorts of way for different types of content, and notices that appear in page footers are just one way.

You can generally manually insert copyright notices in the text of individual pages or posts (preferably at the end/bottom). You just need to remember to do it.

You can also insert a copyright notice as a caption or a visible title for a media file. For example, if you have a copyrighted photo, a copyright notice specific to that photo could appear in text adjacent to the photo or overlaid on top of it. Different CMS themes will provide slightly different functionality for doing this. But you can always just put the copyright notice for a photo or graphic in the most nearby text area (preferably at or near the bottom of an image).

Additionally, a copyright notice can be embedded in an image or graphic, such as like a watermark or in a “gutter” area. The advantage of permanently embedding a copyright notice like a watermark in image files is that it cannot be erased easily by a copyist. Though disadvantages are that an embedded copyright notice may obscure the image or create an aesthetically undesired appearance. Sometimes, as a compromise, the notice might appear in a gutter adjoining the perimeter of the photo or graphic, which avoids obscuring the image but still results in a potentially unaesthetic gutter area being visible. Also, a CMS will usually lack built-in functionality to embed a copyright notice in an image file itself. For that, you might turn to an image editing program, like GIMP.

A copyright notice is a statement placed on copies of a work to inform the public that a copyright owner is claiming ownership. A copyright registration is not required in order to utilize a copyright notice. A proper notice (under 17 U.S.C. §§ 401(b) and 402(b)) for a published work consists of three elements that generally appear as a single continuous statement in the following order (in the English language):

  1. The copyright symbol © (the letter C in a circle), the word “copyright”, or the abbreviation “copr.” (or, for phonorecords, the symbol ℗ );
  2. The year of first publication of the work, though in the case of compilations, or derivative works incorporating previously published material, the year of first publication of the compilation or derivative work is sufficient; and
  3. The name of the copyright owner, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner.

This example shows these three elements in a formal copyright notice:

We will look at each of these three elements of the notice in more detail below. Additional guidance about using copyright notices can also be found here.

Although certain old U.S. copyright laws required a copyright notice on published U.S. works in order to preserve copyright ownership, for any work created on or after March 1, 1989 a copyright notice is completely optional. In practical terms, no original (newly created) online materials require a copyright notice to avoid loss of rights because copyright notice requirements were abolished in the USA by the time the World Wide Web and the modern Internet was operational.

Keep in mind that there might be multiple copyright notices provided on a web site. The examples given here are mostly general copyright notices, such as a single notice that appears in the footer of all posts/pages on a site. Though specific copyright notices can be used for specific elements, such as notices directed specifically (and exclusively) toward particular elements. For example, a web site could include multiple specific copyright notices each applicable only to the text, a particular photo, or all illustrations. Specific notices are not usually required, because the law makes any copyright notice optional. But specific notices may be required based on the terms and conditions associated with your use of particular content (such as license or other contractual terms). U.S. copyright law also has certain prohibitions on removal of copyright management information, which is a key reason specific notices might be needed. So multiple (specific) notices are more common when a site uses content owned by someone else.

U.S. copyright laws state that a copyright “notice shall be affixed to the copies in such manner and location as to give reasonable notice of the claim of copyright.” (17 U.S.C. § 401(c)).

The Register of Copyrights provides some non-exhaustive examples of acceptable placement of a copyright notice in federal regulations. However, no examples are given regarding web site materials or other online works specifically. But the examples given for “machine-readable works” state that the following are acceptable: (i) a notice embodied in the copies in machine-readable form in such a manner that on visually perceptible printouts it appears either with or near the title, or at the end of the work; (ii) a notice that is displayed at the user’s terminal at sign on; and (iii) a notice that is continuously on terminal display. Placement of a notice in a web page footer is likely to be considered “at the end of the work” and therefore is a preferred (and common) location. And, more generally, the regulations say that the acceptability of a “reasonable” notice depends upon its being permanently legible to an ordinary user of the work under normal conditions of use, and on being affixed to copies in such a manner and position that the notice is not concealed from view upon reasonable examination.

The first element needed for a proper copyright notice is the copyright symbol (or phonorecord symbol instead, if applicable), or something recognized as an acceptable alternative. The copyright symbol “©” can either be copied-and-pasted or there are keystrokes that can be used to insert it while typing (these keystrokes vary depending on the computer system being used). Many word processing systems will auto-correct a letter C in parentheses sequence to the copyright symbol, but the WordPress CMS will not. Using the letter C in parentheses, “(C)”, is technically not what the U.S. copyright statutes indicate. However, the U.S. Copyright Office has long considered “(C)” to be one of a few acceptable variants. Compendium of U.S. Copyright Office Practices, 3rd Edition, § 2204.4(A).

Year of First Publication

The second element of a copyright notice is the year of first publication of the work. As discussed above at length, what does or does not constitute “publication” under U.S. copyright law is not straightforward. But those considerations are the starting point for the second element of the notice.

The U.S. copyright statutes say that in the case of compilations or derivative works incorporating previously published material, the year of first publication of the compilation or derivative work is sufficient. In other words, for a derivative work such as a newer version of previously-published content, the more recent publication year for the newer version can be used. The same goes for a compilation. A web site that is itself a collective work (in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole) or is a collection and assembling of preexisting materials that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship, is a compilation.

If a work is unpublished, there is no year of first publication. The statutory requirements for the form and content of a copyright notice for a published work don’t apply to an unpublished work. So copyright owners have flexibility to use any form of notice they wish with an unpublished work. Some say that a copyright notice for an unpublished work should indicate the unpublished nature of the work in lieu of a year. Though it is also common for a copyright notice for an unpublished work to include the year of creation instead (even though this could potentially be mistaken for the year of publication unless clarification is provided) or to omit the year element entirely with no indication of unpublished status.

When a web site has a single, general copyright notice in a footer or menu that appears on all pages of the site, it is sometimes common to see a range of years used. This is an attempt to accommodate the fact that the notice encompasses a set of different individual web pages and/or other materials like photos that were published in different years. Though for published works, the use of a date range is not something specified in the statute. If you choose to include a general copyright notice with a range of years, the range should at least be accurate and should encompass the relevant years of publication for any published material that the notice is intended to apply to. Though as noted above, if the web site is a collective work or a compilation (both of those terms are defined in the copyright statutes), then only the year of first publication of the compilation or collective work (and not those of the preexisting works) needs to be specified.

The statute regarding the proper format of copyright notices on (non-phonorecord) copies also includes an odd carve-out. The year (date) in a copyright notice may be omitted “where a pictorial, graphic, or sculptural work, with accompanying text matter, if any, is reproduced in or on greeting cards, postcards, stationery, jewelry, dolls, toys, or any useful articles.” It might be argued that any web site graphical user interface or menu is a “useful article” (having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information) that allows omission of the year of publication, though that is something courts have not yet definitively ruled on (despite numerous opportunities).

The name of the copyright owner (or joint owners) is the third required element for a proper copyright notice. This is an area where mistakes are common, usually because of bad assumptions about who is actually the copyright owner.

First of all, the owner, or joint owners, each need to be either an individual or a juristic entity (like a corporation). A brand name (trademark) or the title of a web site are not juristic entities, any more than a fictional character in a book or movie is one. The owner has to be a person or entity capable of legally owning property. Though a proper copyright notice can include variants, abbreviations, alternative designations, or pseudonyms of the owner’s name, such as such as a legal assumed name or “dba” (doing business as) of a business.

But who is the true owner of a given copyright? This is the part that causes headaches. It might not be clear at all! It might (and often does) require a detailed review of legal provisions in relevant contracts and consideration of the factual context around the creation of the work(s) in question. If the CMS user adding the copyright notice does not know that information or have access to it, then someone else needs to be involved to establish the proper owner name for the notice.

Copyright ownership originally arises in the author(s). If a vendor (or outside contractor) created the web site materials, then the vendor—or the vendor’s employee(s) or subcontractor(s)—would usually be the author and own the copyright in the absence of a written assignment. If an employee created the web site materials within the scope of his or her employment, then the work is a “work made for hire” and the employer is automatically deemed the author and copyright owner. But work made for hire determinations can be difficult. The owner of a small business may not be an employee. And even someone who is an employee may not have created the specific work(s) in question within the scope of his or her employment. If there are agreements in place with a vendor, they may or may not actually transfer ownership of copyright. Sometimes agreements establish only an obligation to assign (such as when they use language referring to future actions, like “will own” or “will assign”), and require a further written assignment to actually transfer copyright ownership. Tracking down copyright ownership information can be time-consuming. Master services agreements might incorporate separate “statement of work” documents that might all need to be reviewed in order to determine who owns what.

As you can see, there is no way for a WordPress theme’s automatic copyright notice settings to accurately reflect assignments, agreements, or employment conditions that were in place in order for the correct copyright owner to be named. Though for a web site run by a single individual who created all its content personally, the owner will be that individual and this question is not as complicated.

Other Information — Restrictions/Exclusions, Terms of Use, Etc.

Although the U.S. copyright statutes specify three elements required for a copyright notice, there might be other information included in addition.

For instance, there might be an exclusion stated. A copyright notice with an exclusion is referred to as a restricted notice. A common one, which stems from a statutory requirement for works consisting predominantly of re-used work(s) of the (federal) U.S. Government (for which there is no copyright), is “No claim to original U.S. Government works.” But there could be others, such as “© 2000 Jane Doe, no copyright claimed in illustrations” or “© 2000 Jane Doe, no copyright claimed in public domain photo.” Generally there is no need to include a restriction or exclusion unless the work is predominantly made up of materials not owned by the entity in the copyright notice.

Different kinds of additional copyright management information can be provided along with the copyright notice too. For instance explicit statements granting certain authorizations or licenses but prohibiting other things—that is, terms and conditions for use of the work—might be specified adjacent to the copyright notice, if desired.

Concluding Remarks

Some of the issues above have to do with the limitations of CMS functionality, including limited copyright notice functionality for many WordPress CMS themes. Other issues stem from the maddeningly convoluted nature of U.S. copyright laws. While adept CMS users can always find away around the limitations of built-in CMS or CMS theme functionality, more novice CMS users may have more difficulty editing the general copyright notice(s) in page/post footers. Though it is always possible to insert specific copyright notices in all sorts of other places.

When it comes to U.S. copyright laws, however, the complexity and confusion comes from the ways the laws were written. Clarifications or simplifications would require legislative changes (and perhaps changes or withdrawal from international treaties). Though bear in mind something Mark Twain wrote: “Whenever a copyright law is to be made or altered, then the idiots assemble.”

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Copyright Pitfalls: Ways to Avoid Copyright Infringement and Ownership Disputes

A version of this article appeared in AIPLA’s Innovate Magazine in October 2021.


Mark Twain observed that “[o]nly one thing is impossible for God: to find any sense in any copyright law on the planet.”[i]  From the standpoint of individuals and small businesses, Twain’s observation might ring true.  Not only do some people have difficulty distinguishing between what they feel copyright law ought to entail and what it actually does entail, there are many genuinely ambiguous and confusing copyright issues that arise from everyday practices.  What follows is a collection of observations about a few common copyright infringement pitfalls, meant as a practical reference for those who wish to avoid finding themselves embroiled in an avoidable copyright dispute.

“Free” Materials

“Free” photo and clipart websites and similar archives are used at your own risk.  Unless provided with full indemnity, which usually is not provided, ordinary users are liable for infringement if the “free” image website did not actually have permission to use and distribute the image(s) in question.  Put another way, just because a web site claims to grant free use of images that appear on the site does not mean that the site operators actually have the authority to grant such permission for a given image—the site operator or whoever uploaded an image to the site might be an infringer.  In some instances, there may even be reason to suspect that the alleged owner is aware of the presence of materials in a “free” repository—or was even responsible for placing the materials there—and seeks settlements in bad faith or through outright fraud.[ii]  

Will an “innocent infringer” defense help in these situations?  Not against liability.   Though it potentially limits statutory damages.[iii]  How much it might limit statutory damages is discretionary, it may not limit actual damages,[iv] and it will not prevent an injunction.  In pragmatic terms, innocent infringement defenses do very little in the face of nuisance settlement demands from copyright owners engaged in troll-like enforcement activities. 

“Creative Commons” (CC) licenses are another area where materials turn out to be less usable than believed.  There are different types of CC licenses and a given work subject to one kind of CC license may not permit your intended use, especially if your use is “commercial” in nature.  And, as discussed below, removal of copyright management information (CMI) from CC works is still a potential source of liability.

Moreover, even where a copyright owner freely grants use of a particular image, if it is an image of a person or derivative of another work—like a photo of a sculpture, painting/mural, clothing design, etc.—then separate authorization or release of a right of publicity/privacy (a so-called model release) for the depicted person or copyright authorization for the depicted work may still be required.  Very likely any such additional authorization(s) must be sought from a different person or entity. 

Licensing Stock Images

Many stock image providers offer what seem like intentionally confusing licenses.  “Royalty free” images (and music) are not actually free but rather are usually subject to lump sum license payments—advertisements about the provider’s license terms may be confusing if not outright misleading.  Many stock image providers also offer different types of licenses that are difficult to differentiate.  For instance, the least expensive types of stock image licenses often do not cover use for “merchandising”, use on more than a specified number of hard copies, use with video production budgets over a certain threshold, etc.  Understanding which type of license addresses your particular intended use may not be simple.  Yet, if you purchase an incorrect license you may find yourself in the position of having made an unlicensed use. 

Lastly, stock image providers may not offer indemnity or, if they do, it might be provided at levels well below statutory damage maximums.[v]   Therefore, if you license an image only to later discover that the image provider was not authorized to license that image you could find yourself in a lawsuit with a monetary exposure that may exceed your apparent culpability.  

Outside Contractors and Ownership

You need a written assignment to own copyright in outside contractors’ work.  This holds even when an outside contractor was specifically hired to create copyrightable works, such as advertising copy, software code, photos, videos, etc.  While “works made for hire” are initially owned by the employer, absent a written agreement to the contrary,[vi] that ownership provision only applies when the work is created by an employee within the scope of his or her job duties or if there is a written work-made-for-hire agreement and the work falls within nine statutory categories of works (and, chances are, it probably does not fall in one of those categories).[vii]  In single-member LLCs and similar small businesses where the owner’s status as an “employee” may be in doubt under agency law, and there is no employment or other applicable agreement in place to clarify, then the ownership of copyrights created by such a person may be subject to dispute at some point. 

Outside vendors, like marketing companies, will sometimes have service agreements with their customers stating that the customer will own all of the work product, but such language may be phrased in the future tense, which is generally not sufficient to constitute an assignment of copyright—in such cases only a contractual obligation to assign has been established and an additional written assignment is required for the customer to actually obtain ownership of particular copyrights, though this may vary under state law.[viii] 

Failure to own a copyright prevents enforcement against infringers.  So, if a business hires an outside photographer to take photos for the business’ web site, if a competitor copies any of them the business may find that it does not own the copyrights in the photos and therefore cannot assert infringement until ownership is secured. 

DMCA Takedowns

The Digital Millennium Copyright Act (DMCA) includes a “safe harbor” notice-and-takedown provision in 17 U.S.C. § 512.[ix]  Takedowns can be powerful tools against online piracy but can also be abused or misused.  There are also known scams involving infringers of a copyright using takedown notices to seek nuisance settlements from third parties (who may be protected by fair use) and allegations of usage to silence critics

CMI, Circumvention, and Repair Issues

Liability for knowing removal or alteration of copyright management information (CMI) is set forth under 17 U.S.C. § 1202.  CMI includes the title, author or copyright owner names, and terms and conditions for use.  While the law requires removal to be knowing, rather than unwitting or unintentional, and further requires knowing or having reasonable grounds to know that doing so will induce, enable, facilitate, or conceal an infringement, copyright owners sometimes broadly assert CMI removal to seek additional damages or as a fallback position when substantive infringement claims are unavailable.[x] 

Section § 1201 limits “circumvention” of a technological measure that effectively controls access to a copyrighted work, unless the Library of Congress grants an exception.  Product/repair manuals, error code outputs generated by diagnostic tools, and/or diagnostic tools themselves may be subject to anti-circumvention restrictions stemming from copyright, which can impact the ability to repair a purchased item.  Aside from Section 1201 anti-circumvention exemptions, state right to repair law may provide some counterbalance.  

End user license agreements (EULAs) also bridge copyright law and contract law and attempt to circumvent the first sale doctrine (more generally, exhaustion of rights).  They may limit or prevent the use of unauthorized repair sources or transfer/resale, even if the enforceability of such EULA terms might be questioned in some jurisdictions. 

Predatory Contracts

Finally, buyers sometimes request products from vendors while specifying product requirements (e.g., a fabric pattern or decorative image, included text or video) for which the buyer may not have rights.  That is, the buyer may be requesting an infringing knock-off product without explicitly saying so—and possibly without realizing that copyright infringement is being requested.  All liability for copyright infringement may nonetheless be placed on the vendor by a purchase agreement, including a buyer indemnification that overrides the Uniform Commercial Code (UCC).[xi]  Such agreements might be called predatory contracts where they give the appearance of an opportunity for the vendor when, at bottom, they are really vendor liabilities and the buyer is shifting a greater risk to the vendor than the value of the contract. 

Photo of Austen Zuege

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.


Endnotes:

[i] Mark Twain, Mark Twain’s Notebook (A.B. Paine, ed., 1935) quote reprinted at <http://www.twainquotes.com/Copyright.html>.

[ii] See also U.S. v. Hansmeier, No. 19-2386 (8th Cir., Feb. 10, 2021); Jason Mazzone, “Copyfraud,” 81 N.Y.U.L.R. 1026 (2006).

[iii] 17 U.S.C. § 504(c)(2).

[iv] Actual damages may be low or difficult to establish.  See, e.g., On Davis v. The Gap, Inc., 246 F.3d 152, 165 (2d Cir. 2001); Gregerson v. Vilana Fin., Inc., No. 0:06-cv-01164, 2008 U.S. Dist. LEXIS 11727, *14-15 (D. Minn., Feb. 15, 2008).

[v] General business insurance polices may cover non-willful copyright infringement, such as under “advertising injury” provisions. See, generally, David A Gauntlett, IP Attorney’s Handbook for Insurance Coverage in Intellectual Property Disputes (2nd ed., ABA 2014).

[vi] 17 U.S.C. § 201(b).

[vii] 17 U.S.C. § 101; see also Z. Peter Sawicki et al., “Copyright Ownership: A Mere Handshake Isn’t Good Enough” AIPLA Innovate (Sept. 24, 2018).

[viii] E.g., TD Bank N.A. v. Hill, 928 F.3d 259, 274 (3d Cir. 2019); cf. IpVenture, Inc. v. Prostar Computer, Inc., 503 F.3d 1324, 1327 (Fed. Cir. 2007) (interpreting “agree to assign” as requiring subsequent written instrument to effectuate assignment of patent rights).

[ix] See also U.S. Copyright Office, “Section 512 of Title 17: A Report of the Register of Copyrights” (May 2020).

[x] See, e.g., Philpot v. WOS, Inc., No. 1:18-cv-00339, 2019 WL 1767208 (W.D. Tex. April 22, 2019); Mango v. BuzzFeed, Inc., 970 F. 3d 167, 171 (2d Cir. 2020) (A plaintiff must prove the following: (1) the existence of CMI in connection with a copyrighted work; and (2) that a defendant distributed works or copies of works; (3) while knowing that CMI has been removed or altered without authority of the copyright owner or the law; and (4) while knowing, or having reasonable grounds to know that such distribution will induce, enable, facilitate, or conceal an infringement.); Stevens v. Corelogic, Inc., 899 F.3d 666, 673-75 (9th Cir. 2018) (there are two scienter requirements and for the second the copyright owner “must provide evidence from which one can infer that future infringement is likely, albeit not certain, to occur as a result of the removal or alteration of CMI” “such as by demonstrating a past ‘pattern of conduct’ or ‘modus operandi’, that the defendant was aware or had reasonable grounds to be aware of the probable future impact of its actions.”). 

[xi] UCC § 2-312(3) (2002) (“a buyer who furnishes specifications to the seller must hold the seller harmless against any such [infringement] claim which arises out of compliance with the specifications”).