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Copyrights In Attorney Work Product Panacea or Pandora’s Box? By Greg Victoroff, Esq. Rohde & Victoroff, Los Angeles, California ©2006 Greg Victoroff, Esq.

I.

INTRODUCTION

Whether they realize it or not, lawyers are writers, artisans hired to compose enlightening pleadings, ingenious contracts and blistering correspondence, on deadline, letter-perfect. One difference between lawyers and other professional writers is that unlike lawyers, writers often control the publication of their writings and get paid when their works are reproduced, distributed or used as the basis for other works. Generally speaking, lawyers don’t. In his article: Protecting the Economic Value of a Law Firm’s Work Product1 written just prior to his appointment to the 11th Circuit Court of Appeals, Judge Stanley F. Birch, Jr. aptly expressed this irony: “Notwithstanding skyscraper offices, the image of the cobbler’s cottage workshop surrounded by shoeless offspring seems more appropriate for the typical law firm of today when it comes to the use of copyright protection.” Skilled lawyers and law firms craft thousands of pages of highly refined documents embodying hundreds of collective hours of research and revisions and years of legal know-how, yet few if any take any measures to manage or protect this valuable work product. As the business of law becomes more competitive, it may be advantageous for lawyers to conduct their law firms like other enterprises doing business in the information age, taking stock of the law firm’s intangible assets such as trademarks, copyrights, trade secrets and other intellectual property, conscientiously managing and preserving the firm’s capital. Benefits of a law firm intellectual property (“IP”) management policy include:

1

National Law Journal, January 23, 1989. The author gratefully acknowledges Judge Birch’s collegiality in the preparation of this article. 1


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preserving countless hours of valuable thought, practical experience, research, investigation, drafting and revisions of associates, law clerks, interns, partners and firm employees; inhibiting the pirating of law firm work product by defecting associates and partners; greater efficiency and productivity for the firm; quality control of firm work product; cost savings to clients; and avoiding potential exposure to unfair competition or anti-trust claims or client claims over issues pertaining to ownership or use of what will hereafter be referred to as “Copyrightable Attorney Work Product” or “CAWP”.

COPYRIGHTABLE ATTORNEY WORK PRODUCT (“CAW P”) A.

ATTORNEY WORK PRODUCT W HICH DOES NOT QUALIFY FOR FEDERAL STATUTORY COPYRIGHT PROTECTION. 1.

Useful Articles

The early case of Baker v. Selden 2 established that “useful articles” (articles that have an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information 3 , such as blank accounting forms) do not qualify for copyright protection. However, as explained by Professor Nimmer, this basic principal of copyright law codified in the current Copyright Act 4 does not preclude legal forms, pleadings, contracts or other legal documents from copyright protection 5 . To the extent such documents “convey information”, they are outside the exclusion for “useful articles” set forth in the current Copyright Act. Other documents which are intrinsically utilitarian in nature, such as a notary’s jurat, a subpoena or summons, may not qualify for copyright protection by virtue of the functionality of the works. 6

2

101 U.S. 99 (1879)

3

17 U.S.C §101

4

17 U.S.C. §§101, 113(b)

5

Nimmer on Copyright §2.18[E]

6

See, Bonazoli vs. R.S.V.P. Int’l, Inc., 353 F. Supp. 2d 218 (2005). 2


2.

Insufficient Originality

Earlier cases holding that legal forms lacked sufficient originality to qualify for copyright protection 7 are no longer binding precedent. 8 One federal court held that a court reporter’s transcript of a witness’ testimony lacked sufficient originality to qualify for copyright protection under the 1909 Copyright Act, and that a witness’ testimony would not be entitled to copyright protection because, as a “public document”, such testimony would be in the public domain. 9 Where part numbers for fasteners were dictated by a numbering system, numbers were not considered original. 10 3.

Ideas and Merger

In addition to the “useful article” and “lack of originality” limitations to copyright protection, a copyright is not available for ideas 11 . Where the expression of an idea becomes inseparable from the idea itself, such as a part numbering system or the depiction of topographical facts on a map, no copyright protection is available. 12 Donald v. Zack Meyers, etc., 426 F.2d 1027 (5 th Cir. 1970); Donald v. Uarco Bus. Forms, 344 F.Supp. 338 (W.D. Ark 1972) aff’d 478 F.2d 764 (8 th Cir. 1973). 7

8

See, Merritt Forbes v. Newman Inv. Sec., 604 F.Supp. 943, 949 (SDNY 1985) [bond offering documents copyrightable]; Prof. Sys. & Supplies v. Databank Supplies, etc., 202 USPQ 693 (WD Okla. 1979) [promissory note, disclosure statement and security agreement held copyrightable]; Miner v. Employers Liab. Ins. Co., 229 F.2d 35 (D.C. Cir. 1956); Brightly v. Littleton, 37 F. 103 (C.C. E.D. Pa 1888). 9

Lipman vs. Massachusetts, 311 F. Supp. 593, 595 (D. M ass 1970); aff’d , vacated on other grounds, 475 F.2d 565 (1 st Cir. 1973). 10

Southco, Inc. vs. Kanebridge Corp., 390 F. 3d 276 (3rd Cir. 2004).

11

17 U.S.C. §102(b)

12

Southco, Inc. vs. Kanebridge Corp., supra.; Kern River, etc. v. Coastal Corp., 899 F.2d 1458 (5 th Cir.) cert. denied. 498 U.S. 952 (1990); Landsburg v. Scrabble, etc., 736 F.2d 485, 488 (9 th Cir. 1984); Whelan Asso. v. Jaslow Dental Lab, 797 F.2d 1222 (3d Cir. 1986); Cooling Sys., etc. v. Stuart Radiator, 777 F.2d 485 (9 th Cir. 1985). But see, American Dental v. Delta Dental, 126 F.3d 977, 980-1 (7 th Cir. 1997) [taxonomy of dental procedures held copyrightable “Classification is a creative endeavor.”]. 3


4.

“Scenes a faire”

Standard language in legal documents which at one time may have been protectible expression may become unprotectible under copyright law if the language is now indispensable. For example, at one time the language used on certificates of service or as a waiver of Civil Code section 1542 in settlement agreements may have qualified as CAWP, but as a result of common usage for decades throughout California, today, such provisions may not qualify as CAW P. 13 5.

Governmental Works

Copyright protection for work product created by judges, magistrates, law clerks or attorneys in the course and scope of employment for the U.S. Government would probably not be available under the “governmental works” exception to copyright protection 14 , but CAWP created by non-employees or independent contractors under a federal contract or grant, or works which are transferred to the U.S. Government by bequest or assignment may be protectible. No copyright protection applies to any federal statutes, laws, treaties or judicial opinions, 15 but the prohibition in section 105 does not affect the copyrightability of works created by state governments. 6.

Fair Use

The current Copyright Act enumerates certain types of works and uses which are considered generally less infringing and more “fair”. Such special “fair” uses include uses of copyrighted works for purposes such as criticism, comment, news

13

See, Nelson v. Grisham, 942 F. Supp. 649, 653 (D.D.C. 1996) [presence in the novel, The Chamber, of media, politicians and jail house personnel, as well as the frenzy with which last minute appeals are made, “are all stock events and scenes that are expected in any book about the representation of a death row inmate”]; Lexmark Int’l. vs. Static Control Components, Inc., 387 F. 3d 522 (6 th Cir. 2004)[Merger and scenes a faire doctrines preclude copyright protection for computer code sequence necessary to unlock a security feature in computer software]. 14

17 U.S.C. §105

15

See, Matthew Bender & Co. vs. West Publishing Co., 158 F.3d 674, 679 (2d Cir.

1998) 4


reporting, teaching, scholarship, or research.16 Notwithstanding that legal briefs, pleadings, memoranda and other CAWP do not fall into any of the aforementioned “fair use” categories, and apparently overlooking the commercial character of the use and the effect of the use on the market for and value of the original, at least one commentator has opined that the broader interests of clients and the public at large in the administration of justice are valid arguments for a finding of fair use.17 7.

Systems, Operating Methods, Process or Procedures, Facts, Other Non-Copyrightable Works.

In addition to ideas being excluded from the scope of copyright protection, no copyright protection extends to inventions,18 procedures, processes, systems, models of operation, concepts, principals and discoveries,19 facts 20 , works not lawfully obtained, works in the public domain (i.e., not protected by copyright), laws,21 obscene works, unoriginal works, titles, names, words, short phrases or the mere listing of ingredients or contents,22 and federal or state court opinions.23 B.

ATTORNEY WORK PRODUCT (“CAWP”) QUALIFYING FOR FEDERAL STATUTORY COPYRIGHT PROTECTION.

Analyzing relevant case law, Professor Nimmer concludes: “There appears to be no valid grounds why legal forms such as contracts, insurance policies, pleadings

16

17 U.S.C. §107

17

Young, David, M., Can The Lawsuit Industry Copyright its Class Action Complaint? Washington Legal Foundation (April 11, 2003). 18

But see, California Labor Code §§2860, 2870, attached hereto.

19

17 U.S.C. §102(b)

20

Feist Pubs. vs. Rural Telephone Service, 499 U.S. 340 (1991)

21

Feist, supra at 348; Veek vs. So. Bldg. Code Congress etc., 293 F. 3d 791, 801 (5 Cir. 2002) (en banc). th

22

37 C.F.R. §202.1 (1998)

23

Banks vs. Manchester, 128 U.S. 244 (1888) 5


and other legal documents should not be protected under the law of copyright.” 24 With sufficient originality and creativity, other attorney-authored documents which could qualify as CAWP include:

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specialized pleadings (i.e., anti-SLAPP suit motions, class action complaints,25 etc.) briefs disclaimers warranties operating agreements licensing agreements employment agreements employee handbooks business forms securities offerings leases correspondence emails law firm marketing materials such as web sites, brochures and newsletters shareholder agreements memoranda retainer agreements professional articles, speeches, books, etc.

WHO OWNS THE CAWP? A.

LAW FIRM OR CLIENT?

Where the client supplies the attorney with prototypes, sample contracts or proposed contract language, such pre-existing material is not part of the attorney’s CAWP, absent a written transfer from the client. But where an attorney or law firm expresses legal concepts in a tangible and original form, federal copyright law protects the original

24

Nimmer on Copyright § 2.18 [E], citing Saenger Organization v. Nationwide Ins. Licensing, etc., 119 F.3d 55, 56 (1 st Cir. 1997). [Dispute over copyright ownership in insurance licensing texts and manuals.] 25

See, Conley, Janet L. Milberg Weiss Tries to Nail Class Action Imitators, Fulton County Daily Report (Nov. 20, 2002) . 6


expression.26 1.

Works M ade for Hire

Under the “work made for hire” doctrine, an attorney’s employer is deemed the “author” and owner of copyrights in writings created in the course and scope of the attorney’s employment .27 But other than in-house counsel and government attorneys, lawyers are usually not a client’s employee, so it is uncommon for the client to be deemed the “author” and owner of CAWP as a “work made for hire”28 . Works which are not copyrightable, which are not original to a law firm’s employee or works which are created outside the course and scope of an employee’s employment also do not qualify as “works made for hire”.29 Instead, the attorney-client relationship is usually governed by contract terms found in the attorney-client retainer agreement. Because transferring ownership of CAWP from the attorney or law firm to the client requires an instrument in writing 30 (either a ‘work made for hire agreement’ or a written transfer) and because attorney-client retainer agreements rarely, if ever, contain such provisions, by operation of copyright law, the attorney, rather than the client, will generally own the copyrights in CAWP. 31 To avoid any ambiguity or misunderstanding, the preferred practice is to set forth clearly in the attorney-client retainer agreement that the law firm or attorney, rather than the client, is the sole and exclusive owner of all CAWP, subject to a non-exclusive

26

17 U.S.C. §§201(a), (b)

27

17 U.S.C §§101, 201(b)

28

See, note 26, supra

29

Public Affairs Assoc. v. Rickover, 177 F.Supp. 601, 604-605 (D.D.C. 1959) rev’d on other grounds, 284 F.2d 262 (1960), vacated for insufficient record, 369 U.S. 111 (1962), on remand, 268 F.Supp. 444 (D.D.C. 1967). [“[N]o one sells or mortgages all the products of his brain to his employer by the mere fact of employment.”] But see, Miller v. C.P. Chemicals, Inc., 808 F.Supp. 1238 (D.S.C. 1982) [computer program created on employee’s own time and without extra pay deemed within scope of employment]. 30

17 U.S.C § 204(a)

31

17 U.S.C.§ 201(a) 7


license to the client to use specified CAW P for a limited purpose. 32 A sample clause which could be used in an attorney retainer agreement is included at the end of the article. 2.

Ethical Considerations

Applicable Rules of Professional Conduct of the State Bar of California provide that when an attorney-member’s employment is terminated, subject to any protective order or non-disclosure agreement, at the client’s request the attorney shall release to the client all client “papers and property,” including correspondence, pleadings and other items 33 . Because no transfer of copyright is mentioned, because the ownership and transfer of physical property is different from the ownership and transfer of the copyright 34 , and because, as explained above, CAWP is the lawyers or law firm’s property, rather than the client’s, reserving exclusive ownership of the copyright in CAWP does not appear to be a violation of Rules of Professional Conduct Rule 3-700(d)(1). 35 No authority was found on the ethical implications of an attorney’s use of copyright to limit a client’s choice of counsel, restrict how another attorney represents a client or to prevent newly-substituted counsel from using pleadings or other writings prepared by the predecessor attorney or law firm. Notwithstanding the foregoing, an attorneys’ fiduciary duty of complete disclosure to the client of all relevant facts is perhaps the single most compelling reason to set forth CAWP ownership in the attorney-client retainer agreement. 36

32

See, Business & Professions Code §6148 [Contracts for attorneys’ services where the total expense to the client will exceed $1,000 must be in writing and contain detailed information regarding the attorney’s services, compensation and responsibilities.] 33

Rules of Professional Conduct of the State Bar of California Rule 3700(d)(1). See also, Wells Fargo Bank v. Superior Court, (2000) 22 Cal. 4 th 201, Wellpoint Health v. Superior Court, (1997) 59 Cal. App. 4 th 110. 34

17 U.S.C. § 202.

35

Telephone interview between the author and California State Bar Ethics Hotline, December 21, 2005. 36

The relationship between attorney and client is a fiduciary relationship of the very highest in character, and binds the attorney to most conscientious fidelity. Witkin, California Procedure, Attorneys §§118, 128, 157; Goldstein v. Lees, 46 Cal.App. 614 (1975) ; Cox v. Delmas, 99 C. 104, 123 (1893) ; Rules of Professional Conduct Rule 3-300; Anderson v. Eaton, 8


B.

LAW FIRM OR ATTORNEY? 1.

Associates and Employees

Absent employment or a contractual relationship, initially the “author” and “owner” of CAWP is the party that translates an idea into a form of tangible expression entitled to copyright protection. 37 As previously discussed, under the “work made for hire” doctrine of copyright law, a law firm employer rather than an attorney employee is the “author” and owner of the employee-attorney’s CAWP.38 Whether or not an attorney is an “employee” of a law firm or other company depends on an analysis of several common law ‘agency’ factors set forth in Reid 39 and subsequent case law. 40 CAWP created by an attorney who is an officer of a law corporation is considered a “work for hire”of the law corporation. 41 CAWP created by full time associates and in-house counsel generally constitutes work made for hire of the firm.42 2.

Part Time Attorneys, “Of Counsel”

In law firms using part time or “contract” attorneys, or attorneys who are “of 211 C. 113, 116 (1931) ; Wutchumna Water Co. v. Bailey, 216 C. 564, 571, 573 (1932) . 37

See, note 26, supra.

38

See, Community for Creative Non-Violence vs. Reid, 490 U.S. 730, 737

(1989). 39

Supra. at 751-2.

40

Martha Graham School, etc. vs. Martha Graham Center, etc., 380 F. 3d 624 (2d Cir. 2004); Shaul vs. Cherry Valley, etc., 363 F. 3d 177 (2d Cir. 2004); Natkin vs. Winfrey, 111 F. Supp. 2d 1003 (N.D. Ill. 2000); SHL Imaging, Inc. vs. Artisan House, Inc., 117 F. Supp. 2d 301 (S.D.N.Y. 2000); Kirk vs. Harter, 188 F. 3d 1005 (8th Cir. 1999); Carter vs. Helmsley-Spear, 71 F.3d 77 (2d Cir. 1995); Niss vs. Columbia Pictures, etc., 57 U.S.P.Q.2d 1346 (S.D.N.Y. 2000)[pre-1976 work]. 41

See, Lulirama Ltd. Inc. vs. Axcess Broadcast Services, Inc., 128 F.3d 872, 875 n.1 (5 Cir. 1997). th

42

See, note 26, supra. 9


counsel” to the firm, whether or not the attorney’s CAWP is a work made for hire of the law firm may turn on a number of facts, such as the firm’s right to supervise and control the attorney’s performance and other common law agency factors enumerated and discussed in Reid. The extent of an employer’s right to supervise and control “professional” employees such as doctors and lawyers where the employee acts autonomously has been questioned in at least one case.43 If the attorney is not an employee, the attorney’s CAWP may still be owned by the firm if the parties agree in a written instrument executed at the commencement of the relationship that the attorney’s CAWP shall be owned by the firm as a work made for hire. 3.

Partners, Shareholders

If a law partner is an employee of a single professional corporation, the CAWP is owned by that corporation as a work made for hire. However, CAWP which is created by ‘law partners’ who are not employees and are not supervised or controlled by the firm, may not be owned automatically by the firm as a work made for hire. For example, an individual attorney/partner in a law partnership may not be considered a common law employee of the partnership and may not be subject to the firm’s supervision or control. In such a case, absent a term in the partnership agreement or other writing executed by the parties that the CAWP is owned by the partnership as a work made for hire for the firm, CAWP created by true partners may not be automatically owned by the firm. Similarly, CAWP created by a partner who is a sole shareholder in a professional corporation which corporation is in turn a partner in a law partnership or a LLP, may not be automatically owned by the firm absent an express, written “work-made-for-hire” agreement. For a law firm to own CAWP created by partners or shareholders who are not “employees”, the firm should obtain written a written “work-made-for-hire” agreement or a written transfer of CAWP from the attorney to the relevant entity or entities to effect law firm ownership. 44 4.

Community Property Rights

See Easter Seal, etc. vs. Playboy, 815 F.2d 323 at 336 n. 21 (5 th Cir. 1987) cert. denied 108 S.Ct. 1280 (1988). 43

44

On notarizing and recording transfers, see 17 U.S.C. § §204(b)(1), 205(a). See also, “Belt and Suspenders” “work-made-for-hire” agreement attached. 10


Under some states’ community property laws, the attorney’s spouse is considered a joint author and co-owner of CAWP created by the attorney during the marriage.45 Other states hold that the authoring spouse retains 100% copyright ownership and management, while the non-authoring spouse retains a right to fifty percent (50%) of any economic benefit from the copyrighted works. 46 Under either interpretation, to avoid potential claims from spouses or former spouses of attorney members, law firms should routinely require spouses of attorneys to execute a written transfer of the spouses’ community property interest in any CAWP created by the attorney in the course and scope of the attorney’s engagement with the firm. 5.

Rights of Attribution

Even after a valid transfer of copyright is effected, attorneys may have quasimoral “authorship” rights which could be infringed if the firm or another attorney is named as the author.47 IV.

FORMALITIES AND ENFORCEMENT A.

REGISTRATION

Copyright registration form “TX” is the appropriate form for registration of CAW P with the U.S. Copyright Office in Washington, D.C. Although registration is not a prerequisite to copyright ownership, registration is required to bring an infringement action 48 and to recover attorneys fees and statutory damages. 49 Registration forms are available at the Copyright Office website www.copyright.gov. If CAWP to be registered

45

See, In re Marriage of Worth, 195 Cal App 3d 768 (1987)

Rodrigue vs. Rodrigue, 55 U.S.P.Q 2d 1321, (5th Cir.2000); Polacheck, The UnWorthy Decision: The Characterization of Copyright as Community Property, 17 COMM/ENT 601 (1995). 46

See, Oddo v. Reis, 743 F.2d 630 (9 th Cir. 1984); Gilliam v. ABC, 538 F.2d 14, 24-25 (2d Cir. 1976); Granz v. Harris, 198 F.2d 585 (2d. Cir. 1952); Fullett v. Arbor House, 208 U.S.P.Q. 597(SDNY 1980); Smith v. Montoro, 648 F.2d 602 (9 th Cir. 1981); 17 U.S.C. §160A [works of visual art]; But see, Dastar Corp. v. 20th Century Fox, 123 S.Ct. 2041 (2003). 47

48

17 U.S.C. §411(a)

49

17 U.S.C. § 412 11


contains confidential information, through a Request for Special Handling, redacted version of the CAWP can be deposited with the Copyright Office to preserve the client’s confidential information or law firm’s trade secrets.50 B.

ENFORCEMENT 1.

Internal Enforcement

Law firms should establish written IP/CAWP management policies which include ‘work-made-for-hire’ language in all employment agreements with full and part time staff, associates, clerks, interns, and other law firm personnel, and provisions in law firm operating and partnership in agreements transferring ownership of CAWP from the partner or member who created it and their spouse, to the firm. Attorney retainer agreements should expressly set forth that the firm, rather than the client, retains ownership of all CAWP. 2.

Outside Enforcement

Affixing a proper statutory copyright notice 51 such as :“© 2005 Rohde & Victoroff” on law firm emails, memoranda, specialized pleadings, law firm brochures, newsletters, web sites, articles, MCLE materials, and other law firm proprietary documents is not only good marketing for the firm, a prominent copyright notice inhibits the unauthorized use of firm work product by competitors and defecting attorneys and clients. Although not mandatory, using a copyright notice also provides the statutory benefits of additional damages for willful infringements and helps overcome the defense that the

50

Under certain circumstances, special relief from deposit requirements may be requested for any published work not exempt from mandatory deposit. Requests are most frequently based on undue burden or cost to a copyright owner but may also be based on confidentiality and preservation of trade secrets. The grant of special relief is discretionary with the Copyright Office and will depend on a careful balance of the acquisition policies of the Library of Congress, the examining requirements of the Copyright Office (if registration is sought), and the hardship to the copyright owner. Requests must set forth specific reasons why special relief should be granted and must be signed by or on behalf of the owner of copyright or the owner of the exclusive right of publication in the work. A sample of such a Request for Special Relief from the copyright registration deposit requirement is attached hereto. 51

17 U.S.C. §401 12


infringement was innocent.

52

Liability for the unauthorized use of CAWP by former employees, associates, members, shareholders and partners may be based on copyright infringement as well as breach of confidentiality, non-disclosure, non-circumvention or non-appropriation provisions in law firm employment, partnership, operating and shareholders’ agreements. After a firm member has ceased employment, CAWP rights should be protected and enforced through exit interviews, termination letters and cautioning letters to the attorney’s new employer. 53 Once an infringement has been discovered, written “cease and desist” demands may be sent by certified mail, return receipt requested prior to filing suit. The statute of limitations for copyright infringement expires 3 years after the claim accrues. 54 V.

CONCLUSION

Copyrightable attorney work product is a valuable law firm asset which should be protected, managed and enforced. Attorneys should follow the advice they would offer to any business client: inventory and preserve all firm assets including all copyrights and other intangibles and design and implement a comprehensive IP protection policy to avoid waste and improve law firm efficiency and profitability.

52

17 U.S.C. §504(c)(2).

53

Sample exit letters and letters to new employers are attached hereto as exhibits.

54

17 U.S.C. §507(b). 13


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Copyrights in Attorney Work Product: Panacea or Pandora's Box?