By Matthew R. Wilmot Schwabe, Williamson & Wyatt, P.C. Copyright Issues for Homeowners’ and Condominium Associations

Overview Introduction to Copyright Law Copyright Claims and Defenses Individual Fact Patterns Conclusion

Introduction to Copyright Law What is a copyright? – Protects original works of authorship fixed in tangible form. Creative “spark” is low. – Protects only the expression – does not protect the ideas or concepts underlying the expression. – Ownership. How do copyrights differ from other IP? – Trademark, patent, trade secret, etc. What rights are granted in copyrights? – Exclusive rights to use, reproduce, prepare derivative works of, distribute, publicly perform, and publicly display the work.

Introduction to Copyright Law What does having “exclusive” rights mean? – Use – Publicly perform – Publicly display – Distribute – Create derivative works Moral rights. – Rights of attribution – Rights of integrity Can be waived.

Introduction to Copyright Law Do copyrights need to be registered? – Technically no, but practically yes. How long do copyright rights last? – 70 years plus the life of the author (subject to exceptions). Do you have to use a © symbol? – Not required, but helpful.

Copyright Claims and Defenses Copyright Infringement. – Test for Infringement : Substantial similarity. – Venue is in federal court. Remedies. – Depends on whether the plaintiff has a registration. Plaintiff’s actual damages and defendant’s profits. Statutory damages. Attorneys fees. Injunctive relief.

Copyright Claims and Defenses Fair use defense (17 U.S.C. § 107). – Multi-factor test. – What are the factors? Purpose and character of the use. Nature of the copyrighted work. Amount and substantiality of the portion used in relation to the copyrighted work as a whole. Effect of the use upon the potential market for or value of the copyrighted work.

Copyright Claims and Defenses Purpose and character of the use. – Commercial use? – Transformative? Nature of the copyrighted work. – Creative versus fact based? Amount and substantiality. – How much of the copyrighted work was used? Effect of the use on the potential market. – How does the work affect sales of the original?

Copyright Claims and Defenses Other defenses: – Copyright invalidity – Independent creation – Scenes a faire/merger – Preemption – Statute of limitations – Copyright misuse – Equitable defenses

Fact Patterns Fact Pattern No. 1: Homeowners’ association is developing a new website and corresponding marketing materials. In need of pictures, HOA’s marketing staff uses “free” photographs obtained from Google Images. These images are then used in the new website and marketing materials.

Fact Patterns Fact Pattern No. 1: – Is this is an infringement? Increased “trolling” as it pertains to photographs/images. – Getty Images. – Does the HOA’s use constitute fair use? – Lessons: Google Images and other images obtained online are not free to use unless the license says so. Look for sites that license use of images for free. Hire own photographer and obtain license directly.

Fact Patterns Fact Pattern No. 2: Condo owners’ association is planning large holiday party for residents and their guests to be held in common area. Guests beyond a certain number will be required to pay a small admission fee. Music at the event will be played from iTunes and CDs.

Fact Patterns Fact Pattern No. 2: – Is this an infringement? License from iTunes is for personal, non-commercial use - does not include right to publicly use. BMI, ASCAP, etc. – Does the COA’s use constitute fair use? – Lessons: Do not promote on social media. Do not charge for food, drink, etc. Hire a DJ or commercial music provider.

Fact Patterns Fact Pattern No. 3: Condo owners’ association wants to show the upcoming Ultimate Fighting Championship pay per view event in common area. In order to save costs, the COA decides to “stream” the event as opposed to ordering the event from a cable provider. In order to generate interest, the association publicizes the event on its Facebook site.

Fact Patterns Fact Pattern No. 3: – Is this an infringement? Also potential violations of the Federal Communications Act, 47 U.S.C. § 605, et seq. and 47 U.S.C. § 553, et seq. – Does the COA’s use constitute fair use? – Lessons: Pay for the event! Do not promote on social media. Do not charge admission or sell food, drinks, etc.

Fact Patterns Fact Pattern No. 4: Homeowners’ association issues RFP for professional services. Business A responds to the RFP, but the HOA selects another contractor to do the work. HOA thereafter copies sections of Business A’s RFP response and uses it in its own documents and internal and external communications.

Fact Patterns Fact Pattern No. 4: – Is this an infringement? Also concerns regarding potential use of confidential information and/or trade secret information. – Does the HOA’s use constitute fair use? – Lessons: Include language that as a condition to responding to the RFP, each respondent licenses the use of the response to the HOA. Also include language to address concerns regarding confidentiality and potential trade secret concerns.

Fact Patterns Fact Pattern No. 5: Condo owners’ association purchases new computers for employee use. Employees load software program previously purchased by COA on to each of the new computers, despite the fact that the license originally purchased by the COA was for a single computer.

Fact Patterns Fact Pattern No. 5: – Is this an infringement? Software is licensed – not purchased. Use must comply with the license. – Does the COA’s use constitute fair use? – Lessons: Develop an internal spreadsheet or other records detailing all licenses and any limitations on those licenses. Carefully transition when purchasing new hardware.

Fact Patterns Fact Pattern No. 6: Homeowners’ association is having its annual meeting. As part of the HOA’s presentation, the HOA president wants to include a funny clip from a recent movie.

Fact Patterns Fact Pattern No. 6. – Is this an infringement? – Does the COA’s use constitute fair use? Use is non-commercial, and the amount of the copyrighted work being used is small. – Lessons: Having fun is ok!

Conclusion Copyright law is a technical area of the law that is replete with technical infringements. However, technical infringements can and do lead to claims. What do you do if a claim is made? Overall strategy depends on: – Whether the claimant has a registration. – Does the registrant have a history of enforcement? – Cost/benefit analysis of engaging counsel.

Questions?

Disclaimer The information included in this document is intended for informational purposes only and is not intended to serve as legal advice regarding specific matters nor should it be construed as a legal opinion. Neither this presentation or this document establish an attorney-client relationship between you and the presenter. The information included in this document should not be used to replace the advice of a licensed attorney.

Matthew R. Wilmot Matthew R. Wilmot is a Shareholder/Partner with the Pacific Northwest law firm Schwabe, Williamson & Wyatt, P.C. Matt specializes his practice in intellectual property matters, including, trademark, trade dress, unfair competition, trade secret, copyright, domain name issues, and litigation of complex intellectual property matters. If you would like more information or assistance, please contact Matt at or him at Admitted to practice in Oregon and California.