A question we often get asked by copyright owners and potential copyright defendants alike is whether a copyright registration for a collective work also operates to register the copyrights in the individual component works. This issue most often comes up with respect to registrations for collective works for collections of artwork and photographs, but can really apply to any collective work.
In Alaska Stock LLC v. Houghton Mifflin Harcourt Publishing Co., 747 F.3d 673 (9th Cir. 2014), the Ninth Circuit ruled that the registration of a collective work can, in fact, operate to register both the collective work and, independently, the individual component works in the collective work. As explained by the Ninth Circuit, there are two key elements that must be satisfied for a collective work registration to also operate the individual component works. First, the registrant of the collective work also must own the individual component works. Second, the registrant must comply with the guidelines promulgated by the United States Copyright Office for registering image libraries and other component works.
The Ninth Circuit’s decision in Alaska Stock should go a long way to clarifying this important question of copyright law.
As year-end approaches, it is worthwhile to review the steps that employers should implement to protect their intellectual property:
1. Register!! We cannot emphasize enough that employers should register all protectable intellectual property. That means that all valuable trademarks and copyrights should be registered (the cost to obtain such registrations generally is modest) and patent protection should be explored for patentable inventions. Such registrations can provide valuable remedies in the event an employee should try to misappropriate the employer’s intellectual property.
2. Trade Secret Notice: Some intellectual property owned by the employer may not be appropriate for registration but may nevertheless be valuable as a trade secret. All trade secrets should be clearly identified to employees and they must be warned of the need to keep all trade secrets confidential. Marking documents that contain confidential information and trade secrets is a must.
3. Non-Compete Agreements: Non-compete laws vary from state to state (California is particularly tricky) but the employer should have each employee sign a non-compete agreement to the extent permissible under state law.
4. Confidentiality Policies and Agreements: The employee handbook must clearly spell out the employer’s confidentiality policies. Where appropriate, employees also should be required to sign separate confidentiality agreements.
5. Assignment of Invention Policies and Agreements: The employee handbook also should clearly state the employer’s policy regarding an employee’s obligation to assign inventions, and separate assignment agreements should be used where appropriate.
6. Work Made For Hire Policies and Agreements: Similarly, the employee handbook should clearly explain the employer’s work made for hire policies and employees involved in the creation of works protected by copyright should sign separate work made for hire agreements.