By Jill M. Goldman, Esq.
As a bank marketer, you already have some knowledge of your institution’s most valuable assets: key customer relationships, bank buildings and facilities, goodwill in the community. It is part of a bank marketer’s responsibility to make sure that these assets are adequately protected. But what do you know about your institution’s intellectual property, specifically its copyrights? Can you say for certain whether your institution even has any copyrightable material?
Whether you know it or not, intellectual property is one of the most important assets that any bank can own. But taking the necessary steps to legally protect what is, in essence, an intangible concept can be a daunting task for anyone, especially marketers, who may not be sure exactly what constitutes intellectual property. So what are the basic concepts that a marketer should know in order to protect the institution’s intellectual property?
When it comes to guarding the bank’s copyrighted materials, they are;
The notion of intellectual property, specifically copyright protection, arises from the U.S. Constitution. The Founding Fathers recognized that in order “to promote the Progress of Science and useful Arts” it would be necessary to grant “Authors and Inventors” the “exclusive Rights to their respective Writings and Discoveries” for a period of time. This protection, which is the foundation of our system of patents and copyrights, allows authors and inventors to create freely without fear of another usurping the fruits of their labor.
The process of how a copyright is created is relatively easy to understand. The Merriam-Webster dictionary defines “creation” as the act of making, inventing or producing. The definition for the creation of a copyright is slightly different: any original idea or work of authorship that is fixed in a tangible medium of expression. The idea expressed in the writing is not subject to copyright; rather it is when “pen is put to paper” that a copyright is created. For example, coming up with the idea for a new type of bank product is not copyrightable. However, the written brochures containing information and descriptions about the new type of bank products are copyrightable.
Of course there are some exceptions to what is and is not copyrightable in the creation stage. Common property that does not contain original authorship, such as standard calendars or lists gleaned from a public document, cannot be copyrighted. Titles, phrases, slogan, lettering, coloring and familiar symbols are also not copyrightable. These marketing and branding tools may, however, be protected by trademark. Business procedures, methods, systems, processes, concepts, principles, discoveries, or devices—the idea for the new bank product or process—may be protected by a patent, but are not copyrightable as well.
A fundamental issue arises every time copyrightable material is created: Who own it? The basic principle is that the creator is the author and owner of the copyright. The exception to this principle is instances of “works made for hire,” which involves materials created by employees or independent contractors.
The “work made for hire” exception recognizes that the employer, and not the employee that created the work, as the owner of the copyright. Materials created for the bank by independent contractors are treated somewhat differently. Here the employer will be the owner under this concept if the created work is specially commissioned from an independent contractor, falls within a statutory defined category of work, and there is a written agreement stating that the material produced is considered a “work made for hire.”
Independent contractors that do not agree in writing to designate the work as such retain all rights to the copyrights despite being commissioned by the employer. Therefore, if an institution wants to maintain ownership of all copyrights created by employees or independent contractors, then they should verify the existence of a written “work made for hire” clause in their contract.
Although no registration or publication is required to secure a copyright (this was secured upon creation), there are some advantages in federal registration with the Copyright Office at the Library of Congress. When a registration is granted by the Copyright Office, it establishes a public record of your claim of copyright. This is required to file a lawsuit in court for copyright infringement. If registered within five years of publication, it becomes prima facie evidence in court of the copyright’s validity and the information contained on the registration certificate. Most importantly, if the registration is made within three months after publication, then statutory damages may be available to the copyright owner in court actions.
However, do not confuse proper registration with what is known as “Poor Man’s Copyright”—an intellectual property urban legend. The myth being that copyright is obtained by mailing a copy of the material through the U.S. Postal System, leaving the envelope unopened, which enables the postmark to serve as “proof” of creation.
Obviously, the “Poor Man’s Copyright” is not a substitution for a valid registration. Proper (and legally recognized) registration is a simple and cost effective process that involves the submission of the appropriate form, depositing one or two copies of the material (depending on type and publication), and remitting the filing fee, which is typically under $50. The Copyright Office’s website (www.loc.gov or www.copyright.gov) is the best resource for instructions, fact sheets, and application forms.
After creation and registration, the copyright owner has the right to fully exploit and use their copyrighted materials, usually through sale, distribution or licenses. At this stage of the game, the question becomes how to best protect your copyright from those who want to take unfair advantage of your institution’s hard work. The simplest way is to print a warning on the material asserting the institution’s ownership rights and whether reproduction and distribution of the materials by others is authorized. While there is no current requirement to display notice of the copyright date and owner, this is a good start for protecting the material.
Another consideration is to rethink how the materials are distributed. Is it a glossy magazine that can easily be photocopied or is it on a type of paper that makes the copies unusable? Is it a PDF online that can be linked to or is it on a secured page that has controlled access? Is it a CD-ROM that contains materials that can be readily burned to another disk or is it locked and protected so that copying is not allowed? By considering a plan of protection can determine how the material is ultimately created.
Furthermore, adequate protection can be accomplished through the bank actively monitoring the use of its copyrights. This can be done in-house or through a watch service firm. Basic monitoring steps can be as simple as regular and routine checks of the Internet for name and product usage. Also, the institution should follow up on the authorized use of licensees and other contracted parties.
One type of use, however, that your institution cannot limit is what is known as “fair use.” This is the concept that allows the minimal use of someone else’s copyrighted materials without permission for the purpose of commentary, parody, news reporting, research or education. The general public’s impression of “fair use” is wholly distinct from the legal definition. “Fair use” under copyright law is viewed not as an exception to copyright infringement, but as a defense to such a claim in court.
By using someone else’s copyright without permission, the person has committed an act of copyright infringement. Although the courts weigh certain factors to determine if the use was fair as a sufficient defense, this is not a protective shield for the general public to assert. The best strategy is to protect the bank’s copyrighted material in the beginning to curb such unauthorized uses.
Enforcement is the final concept that a bank marketer should understand when regarding the bank’s copyrights. Common questions are whether there is an enforcement policy in place or to what extent does the institution enforce its rights? The unpleasant notion of enforcement is a vital necessity for copyright protection.
Enforcement can be as simple as a phone call or email inquiry asking the offending party to cease his or her use. More serious (or persistent) offenses are handled with a formal letter sent from legal counsel or, ultimately, a court action. No matter what the level of enforcement is, it is the responsibility of the copyright owner to enforce its rights.
This means that as a bank marketer, you have an obligation to oversee that the copyrights created and registered by the institution are properly protected and enforced. The oversight responsibilities as a bank marketer are only enhanced by the knowledge of copyright basics. In doing so, the bank marketer is in the best possible position to oversee the institution’s intellectual property assets.
Jill Goldman is an attorney with the American Bankers Association.
This article is for informational and educational purposes only. It is not offered as and does not constitute legal advice or legal opinions. The information contained in the article should not be used as a substitute for seeking professional legal advice. If legal or other expert assistance is required, the services of a competent professional should be sought.