Re: copyrighted forms

On Fri, 8 Oct 1999, John Noble <jnoble[_at_]dgsys.com> wrote:
>
> 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?

I really appreciate Johns' in-depth answer and I will share some more specific information.

The form is an Earnest Money Agreement to Purchase in the State of Alaska. Any broker that is a member of the Multiple Listing Service of Alaska (MLS) is authorized to use the form. Other forms such as Inspection Riders, Agency Disclosures, HUD addendums and others are also part of the library of forms that are created by a forms committee. (side note -- In Alaska it is statutorily allowed to create any devise necessary to transfer real estate as long as one is licensed by the State of Alaska as a real estate licensee or attorney.)

No non-member of the MLS is allowed to used any form and it is stated at the top. There is no restriction on copying the form in any manner as long as the person is a paying member.

I placed the authorized forms in my computer. In addition I created a database that automatically fills out the forms so that typing is entered once and appears throughout the documents necessary to complete a transaction. They can even calculate and amortize loan information in earnest money contracts as well as buyers cost and sellers net sheets. Though I haven't done this, it would be possible to create all deeds of trust, warranty deeds, and riders to Deeds of Trust in one program, even the loan application and necessary forms to follow that through in my State.

I have kept these to myself for about 4 years, but now find others in my industry want them. I have gone to the MLS Board of Directors and asked them if they wanted to sell another form set called Listing Input forms and they said no, but did not care if I did, which I did.

Now I find that other people around the country would like the database forms for their use in their real estate transactions, however I am not a member of those particular MLS's. Since I could do this under a work for hire, which I wouldn't, I could see them using them with no problem as long as they were not prohibited, but could I create them for a nominal fee and then could any one else in that MLS be able to buy them from me?

You must understand that some forms companies have contracted with MLS's to supply their forms on disk, but are not data based.

I understand that anything on this list is not legal advise and I would seek my own counsel, but is it feasible to assume that I could create any form from any source for anybody that is authorized to have the form in the first place and then I owned the derivative work copyright?

I appreciate any further insight on this matter.

Sincerely

Greg Erkins
<gerkins[_at_]gci.net>

PS. If any professor wants to use this scenario as a question in a law test, you have all my rights and my blessings. Received on Sat Oct 09 1999 - 03:48:38 GMT