Sunstein Approach to Copyright Portfolio Development and Management

Copyrighted works are potentially valuable assets, which must be protected and managed accordingly. We devote careful attention to the development of our clients’ copyright portfolios, much as we do their patent, trademark, or trade secret portfolios. Our representation in this area includes securing and maintaining copyright registrations, and enforcing our clients’ copyrights. Whether developing strategies for protecting copyrights in historical photographs of Martin Luther King, the archives and papers of The Edna St. Vincent Millay Society, or the sophisticated computer software of technology companies, we always assess how our legal work advances our clients’ larger goals.

Developing a comprehensive plan and budget. In helping our clients evaluate and protect their intellectual property assets, we review copyrightable materials, associated trademarks, and other intellectual property, determine the scope of the rights that need to be protected, and develop a reasonable budget for protecting them. We also advise our clients to establish internal responsibility for the protection of copyright assets, which can sometimes be accomplished by setting up an internal working group, with one individual acting as liaison with the copyright counsel.

Assessing the value of IP assets. As a first step in developing a copyright portfolio, we guide our clients in assessing the value of their intellectual property, both to themselves and to their competitors. Establishing value is part of a strategic plan that ensures that the most valuable assets are appropriately protected.

Registering copyrighted works. After the works have been evaluated, we establish a plan to register qualified assets with the United States Copyright Office. For example, we help our clients determine whether each version of a software program should be registered or whether, when modifications are made frequently, it is preferable to register versions only on a fixed schedule, such as quarterly or semi-annually. We have extensive experience working with the Copyright Office to register original works of authorship and successfully appealing initial refusals to register. We regularly establish docketing systems for tracking and renewing registrations, as appropriate. We also provide guidance on the use of a copyright notice, and the appropriate format of the notice.

Understanding registration issues. While registration is not required for a copyright to exist in a work, it is a jurisdictional requirement for a U.S. owner seeking to sue for infringement, is necessary for recovering statutory damages, and can be recorded with the U.S. Customs Service (which may seize infringing merchandise). In addition, a certificate of registration issued within five years of the first publication of the work confers a presumption in judicial proceedings that the copyright is valid. On the other hand, because registration requires deposit with the Copyright Office of at least some portion of the work (there are provisions for deleting trade secret information), which becomes part of the public record, there are circumstances where clients may prefer not to register certain works. We guide our clients to the right decision.

Licensing copyrights. Once a copyrightable work has been identified and/or registered, we work with our clients to develop licensing strategies. We draw on our knowledge of the relative merits of exclusive vs. nonexclusive licenses, including the complex issues in the creation of derivative works by licensees, as well as the circumstances that might give rise to an implied license. We also advise our clients regarding copyright assignments, including evaluation of when revocation of a copyright assignment might be available.

Policing copyrights. Portfolio management requires policing these rights. We work with our clients to implement policies for monitoring the field efficiently and uncovering infringement. For example, employees may be educated to be alert to copyright issues when they attend trade shows and review trade magazines and newsletters. If infringement is discovered, we counsel our clients regarding an appropriate enforcement strategy.

Our lawyers’ technical depth and extensive experience developing and managing intellectual property portfolios enable us to assist our clients in enhancing the business value of their copyright assets.

Please contact an attorney in our Copyright Practice Group if you are interested in exploring how we can assist you in connection with copyright matters.

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