Having read the recent Supreme Court decision of Star Athletica v. Varsity Brands and the new unified test for copyright protectability in useful articles, we can now turn to the challenge of what actual changes will result from this opinion. http://www.lanepowell.com/wp-content/uploads/20170329Intellectual-Property-Legal-Update-Spelman.pdf.
While nothing changes with regard to how trademarks are handled in the useful article world, there are some practice tips that will strengthen the opportunity to protect what designs are eligible for copyright. Each of the practice tips below revolves around working proactively. Copyright is a game played proactively for best and most predictable results. These tips are calculated to make that proactivity a system that works in your favor:
1. Document: as you design, keep documentation of the iterative drafts and the dead ends that you consider as well as the final design. If there is a challenge that your design in an infringement, it is useful evidence to demonstrate that you were truly designing new work and that you evolved the final design out a whole field of discarded drafts;
2. Focus: if you do review the current field of existing designs as you search for the new design option, clear the work area of all the prior designs. It is too easy to “borrow” or be “inspired” by existing designs when that prior design is right there in front of you;
3. Register: file copyright applications early and often at the U.S. Copyright Office using the “Electronic Copyright Office” (“ECO”) filing system. Optimally, you will keep a file of the works that you are designing. Filing a batch of new copyright applications every calendar quarter (90 days) is a sure way to be certain that you are going to get the benefits of claiming statutory damages and attorney’s fees in every dispute… And the consequential benefit of having a remarkable archival demonstration of what you are creating and have created;
4. Drive: check to be sure that any license or distribution agreement includes provisions that you are in control of dispute resolution, including litigation. Sometimes found in the “indemnity” clause; sometimes in a separate clause, but do provide for what happens when things go wrong:
5. Notice: while no longer mandatory, there are substantial legal and practical benefits to affixing notice on the article being distributed. For instance, if you are publishing code for 3-D printing, be sure to include a copyright notice in the object code, or as part of the surface of what is “printed”;
6. Clarify Ownership: be sure to clarify who is the claimant/author of the work each time. Who owns the design becomes very important. Remember that independent contractors (those whom you pay using an IRS 1099 reporting form) are the authors of their design unless there is a written assignment to you.
Copyright is stronger and a more reliable as an asset when the ownership and the registration process is faithfully worked through as a standard operating procedure. Proactive habits are pivotal to a viable copyright program.