American Academy of Orthopaedic Surgeons
Intellectual Property Rights: What You Need to Know

What is intellectual property?

The term “intellectual property rights” refers generally to the ownership rights over a creative work. The most common types of intellectual property are trademarks, patents and copyrights. Owning the copyright means you control how the material you create is copied and distributed. Generally, any time you assist the Academy by preparing information or educational materials, you will automatically have copyright protections in the work created. The Academy, therefore, will usually ask you, as the creator of a work, to sign a license or an assignment agreement so that the Academy can copy and distribute your work, along with that of your colleagues.

What is the source of copyright law in the United States?

The primary source of copyright law in the United States is the federal Copyright Act (17 U.S.C. 101 et. seq.) which was enacted under the United States Constitution (Article I, Section 8).

When is a copyright created?

There are two basic requirements to create a copyright. First, the work must be original. Originality only requires that you, the author, contributed something more than trivial variation. Second, the work must be tangible so that it can be perceived, reproduced or communicated. For example, a chapter you submit for an Academy publication or a presentation that is audio taped is copyright protected.

Who owns the copyright?

The person who creates or writes the work is usually the copyright owner. The copyright owner, however, can assign (i.e. transfer) the rights of ownership in the copyright to a third party. For example, a creator of a work can donate to the Academy all of his or her ownership rights in copyrighted material by signing the “Assignment of Rights” form. Once assigned, the Academy would be the sole owner of the copyright.

What rights does the copyright owner have?

The copyright owner has the exclusive right to use and give others permission to use the work. 17 U.S.C. 106. For example, the Academy’s standard “Non-Exclusive License” gives the Academy permission to use copyrighted material for educational purposes only. Since the license is nonexclusive and limited in scope, the creator still retains full ownership rights over the work, including how it can be used in other circumstances.

How long does a copyright last?

The copyright begins when the work is created (not published) and lasts 70 years after the death of the creator. If the creator is a corporation, then the copyright lasts 120 years from the time created or 95 years from its publication, whichever is shorter.

Does having a copy give the owner the authority to use the copyright?

No, ownership of a copy of a copyrighted work (i.e. book, periodical, magazine) does not give the owner of the copy the right to make additional copies. For example, recipients of copyrighted material at an Academy conference may not copy the material without the creator’s permission.

What is an assignment of rights?

This is a complete transfer of ownership from the creator of a work to another. In order to assign rights, the creator must be the sole owner of the work (i.e. not a collaboration) and be willing to seek permission from the new owner to use the work in the future. For example, a creator signing the Academy’s “Assignment of Rights” form permanently gives up all rights. The Academy will typically ask for an assignment of rights for enduring materials such as original articles, papers, and photographs.

What is an exclusive license?

An exclusive license is permission by the creator for use of a work for a particular purpose. The creator still owns the copyright and is merely giving limited authorization for a particular use. It is “exclusive” because, until it expires, the creator does not have the authority to license or assign the work to anyone else. The Academy typically does not use exclusive licenses.

What is a nonexclusive license for copyrighted material?

A non-exclusive license is similar to an exclusive license except that the creator is free to license the work to multiple parties. For example, when an author signs the Academy’s standard Non-Exclusive License, he or she gives the Academy permission to use the copyrighted material for five years for educational purposes through print or electronic distribution. The Academy uses nonexclusive licenses for items such as course materials and outlines.

Is a nonexclusive license necessary to copy a presenter’s material?

Yes. For example, a presenter at an Academy conference is usually asked to sign the Non-Exclusive License so that the presenter’s materials can be distributed to conference participants. A publisher who wishes to use an illustration owned by another publisher must obtain a non-exclusive license for this purpose.

Must all nonexclusive licenses be in writing?

No, but it is a good idea. An implied (i.e. unwritten) nonexclusive license is made when a work is created and delivered at the specific request of another person. A license is irrevocable (i.e. permanent) if the person requesting the work pays the creator. For example, there is likely an implied nonexclusive license if the Academy asks a presenter to prepare information for an upcoming conference and the presenter agrees. Nevertheless, the Academy will very likely ask a presenter to sign the Non-Exclusive License to clarify how the material will be used.

What is permission to print?

The creator of the work retains ownership of the material but grants permission to another to copy the material typically for one time only use. The Academy rarely uses a permission to print form, as other forms of permitting the use of copyrighted material are more effective.

What is a warranty?

A warranty is a promise that certain things are true. Warranties are common in an assignment or license as a way to protect the user from third parties who claim their rights have been violated by the content of the work. For example, in the Academy’s Non-Exclusive License, the creator promises that the work is original and does not infringe on the rights of another.

Who owns the copyright for works created by an employee?

The employer automatically owns the copyright to any works created by an employee as part of employment. This is known as the “Work Made for Hire” doctrine and is an exception to the general rule that the creator owns the copyright. A written agreement between the parties is not needed for the employer to own the copyright under this doctrine.

Who owns the copyright for work created for an employer by a consultant?
The consultant owns the copyright unless the parties specifically agree otherwise in writing. For example, the Academy’s standard “Assignment of Rights” contract specifies that the Academy is the owner of the copyright and not the consultant. After the assignment has been made, the Academy is the sole owner of the work and the consultant creator no longer has any ownership rights in the copyright. In other contracts with consultants, it is important to include the statement that the work created by the consultant is a “work made for hire,” owned by the company that hires the consultant.

What items generally do not have copyright protections?

Copyright protections generally do not cover titles, names, short phrases; slogans; blank forms (designed to record rather than to convey information); and standardized materials.

Can an idea by copyrighted?

No, a copyright protects the expression of an idea, but not the idea itself. Copyright protections also do not extend to any procedure, process, system, method of operation, concept, principle, or discovery. 17 U.S.C. 102(b). For example, ideas and facts expressed in an article about an orthopedic procedure are copyright protected. The copyright, however, does not cover the ideas or facts themselves, no matter how creative they may be.

Are works of the United States Government protected by copyright?

No, copyright protections do not extend to works of the U.S. Government. 17 U.S.C. 105. Therefore, nearly all works of the U.S. Government may be reproduced and disseminated without violating a copyright.

How is copyrighted material marked?

Most publications contain the word “copyright” or the symbol followed by the date of the first publication and the name of the copyright owner. The term “all rights reserved” may also be used. Copyrighted material, however, is not required to be marked. A violation of copyright can take place even if the material is not marked or otherwise identified as belonging to the owner. It is not a defense to a copyright violation that the material was not marked.

Must all copyrights be registered?

No, any work that is original and able to be reproduced is automatically copyrighted. However, copyrights may be registered with the U.S. Copyright Office (http://www.copyright.gov) for additional protection. For enduring materials, the Academy typically registers for copyright protection.

Who is liable for violating a copyright?

Anyone who uses information protected by the copyright without permission is liable even if the use is by mistake or accident. Courts may, however, lower the amount of liability depending on culpability (See question below). Consequently, the Academy will usually ask a creator to sign the Assignment of Rights or the Non-Exclusive License to avoid potential liability.

How is a copyright violation proved in court?

The copyright holder will need to prove copyright ownership and an improper copying. Circumstantial evidence (i.e. copy is similar to the original) can be used to prove an improper copying. The copy does not have to be identical to the original but merely substantially similar to prove a violation.

What are the most common defenses in a copyright violation?

The most common defenses for a copyright violation are: fair use; abandonment of the copyright; and misconduct by the copyright holder.

What are the consequences of a copyright violation?

There are both criminal (i.e. jail) and civil (i.e. money damages) for a copyright violation. A criminal violation must be intentional and for financial gain. If convicted, a violator can be imprisoned, fined and have all equipment used in the violation confiscated. A civil violation can result in money fines and the confiscation of all copies.

What is the “fair use” doctrine?

The “fair use” doctrine is the most common defense to a copyright violation. 17 U.S.C. 107. The fair use doctrine allows a person to use copyrighted material for criticism, comment, news reporting, teaching, scholarship, and research without permission from the copyright owner. Caution must be taken, however, when copying without permission since there is always a risk the copyright owner could sue and the alleged violator would have to prove “fair use” as a defense in court.

How is the fair use defense determined by a court?

The court will analyze the following questions in determining fair use:

• Is the violator making money from use of the copyrighted work;

• What type of work is being copied;

• How much of the copyrighted work is being used; and

• What is the commercial impact of the copying on the copyright holder? (This is the most important factor.)

Is it a copyright violation to sell an authorized copy?

No, a copyright owner who sells a copy can not prevent subsequent transfers of that copy. This is known as the “first sale” doctrine. 17 U.S.C. 109(a). For example, the Academy could resell books purchased from a publisher without violating the copyright interest of the copyright owner.

The above information is not intended as legal advice.

2005-2009 by the American Academy of Orthopaedic Surgeons. "All Rights Reserved."