Re: copyrighted forms

On 10/7/99, Greg Erkins <gerkins[_at_]gci.net> wrote:
>
> Can a person who is authorized to use certain copyrighted forms take
> those forms and put them in a computer program that would generate
> those forms, create a database and use them under fair use?

Two issues here:

To the extent you are relying on the fact that the person is "authorized" to use the forms, the right to publish or distribute them via a computer program will depend on the scope of the authority granted. See, for example, the recent 7th Cir. case holding that a license agreement which granted the licensee broadly-worded authority to reproduce, distribute and "use" a copyrighted work should be construed in the context of the agreement to authorize the creation of derivative works by the licensee. Kennedy v. National Juvenile Detention Assoc. and Illinois Juvenile Justice Commission, No. 98-1458 (7th Cir., July 13, 1999)

The second issue is fair use, which does not depend on any authorization to use the forms in the first place. Either the redistribution is a fair use, or it isn't, without regard to whether you were authorized to use the forms in the first place. This is very circumstance-dependent, and we don't know nearly enough to tell you how to apply the fair use doctrine to the problem you pose. The fact that you have called the original work a "form" suggests that there are issues that need to be resolved before we reach your premise that the form is protected by copyright. (It also suggests that I may be answering some law school exam question here)

> Can that same person sell that newly created program to someone that
> is authorized to use those same forms?

Hmmm. If the person with the program is authorized to redistribute the forms, then it doesn't matter whether the person he distributes them to has prior authority to use them. If the person distributing the forms doesn't have authority to redistribute the forms, then it still doesn't matter whether the person he is distributing them to has authority to use them, except that he can only be nailed for direct infringement and not contributory infringement, which isn't really much help. The distributee's use may be non-infringing, but the unauthorized distribution is still an infringement under the Copyright Act if distribution of the program amounts to distribution of the original work, which I tend to think it would.

> Does not the newly created program belong to the person that developed
> it while the forms on paper without the use of a program still belong
> to the original copyright owner?

The program is a separate copyrightable work, which may or may not be separable from the distribution of the form that it creates. If distribution of the form was authorized by the original copyright holder, then the new copyright in the program belongs to the programmer. However, if, and to the extent it includes or is programmed to "make" unauthorized reproductions of a protected work, I think it may be denied copyright protection (but I'm less than sure about who, if anyone, the copyright in the infringing program, in whole or part, would belong to).

> Would the original copyright owner if they wanted to used the program
> have to pay or be licensed by the person that wrote the program just
> like anyone else?

It depends on the terms of the programmer's supposed authorization to use the form. If the program is an authorized derivative work, then the original copyright holder, absent some further understanding, would have to acquire rights to use the program just like anyone else.

> Would the answer be the same in all countries?

I have no idea. I'm not even sure I got the US law right. But it has been fun. Anybody want to tell me where I went wrong?

John Noble
<jnoble[_at_]dgsys.com> Received on Fri Oct 08 1999 - 19:28:40 GMT