The questions surrounding intellectual property are too numerous and varied to be boiled down to a

checklist the way weve done with other "Ten Questions" articles in this issue. Instead, we sat down
with Elliot Zimmermana Florida-based entertainment attorney who has represented clients
including Aretha Franklin and jazz pianist Ahmad Jamal and others in cases involving copyright and
trademarks, and who now specializes in "cyberlaw" legal issues related to the internetto learn a
little bit more about IP issues facing content creators, owners, and publishers.
1. Whats the most important issue related to intellectual property for an online content
publisher?
The first issue is who owns the content. The question of ownership is very technical. Its a jigsaw
puzzle. There are copyrights, trademarks, licenses, and all sorts of things that you need to consider
first to make sure that youre nice and safe.
Copyrights protect original works of authorship that are fixed in a tangible medium of expression.
Trademark laws speak to what branding and names have become indicative of a particular service
or product. In most situations, to work through this youll have to examine all the separate elements
of what youre about to stream.
When youre talking about streaming video, things get especially complicated. Youve got several
separate elements to investigate, including text, art, music, video, photographs, trade and service
marks, rights of publicity, and more. For example, if video is going to be synched with music and
streamed over the internet, youll need a new-media license, a video-sync license, and the rights of
publicity releases for those who appear in the file . . . and thats just for starters.
Then youll need to think about copy protection and other demands made by licensees or owners of
the product.
2. Whats the difference between an assignment, a work made for hire, and a license?
If you want ownership, youll either have to get an assignment or the work will have to be a work
made for hire. If your job is to write copy or produce video and you are a salaried employee who
works regular hours at your employers place of business and your employer withholds taxes and
provides you with the tools of your trade, your works are probably made for hire and belong to the
employer at creation. An assignment is where the creator of the work sells rights to another. Under
U.S. copyright laws, after 35 years, an assignor can make legal moves to regain ownership. Thats
not so with a work made for hire.
If you dont own the content, you need to find out who does! Also, find out what licensing you need
for your intended use, and you need to know what it is youre licensing. Not only the licensor, but the
licensee better be sure as to what hes getting. As a licensee you want to get as much permission
from the licensor as possible.
3. Why should I care so much about getting these ownership issues resolved?
Its something the person should not take lightly, especially since the Copyright Act has such horrible
consequences. You can get sued for up to $30,000 for each instance of infringement. It could even
be innocent infringement. If you play someone elses work without permission or license, if you dont
have ownership and someone else does, youre in trouble whether you did it intentionally or not.
That doesnt mean youre automatically down $30,000, but even if the owners dont go for actual
damages or profits, they can go for statutory damages, which can be anywhere from $750 to
$30,000 per count. If its willful, it can go up to $150,000 per count, plus attorneys fees.
Aside from the civil there are also criminal penalties, including jail time for those people who do
certain criminal acts. Once in a while infringing conduct can turn criminal. Pirating is a criminal
offense. There are state and federal laws regarding intellectual property. The Copyright Act has
criminal penalties. State laws also have criminal penalties.
4. When am I liable for infringement?
Even if you run a blog site and someone uploads copyrighted material to it and you havent made
certain filings with the U.S. Copyright Office for safe harbor, youre in trouble. If youre an online
service provider (OSP), and one of your users posts an illegal MP3, and you basically have no
knowledge of it, but its in a cache and its found on your machine, you have exposure to $30,000
that you could have avoided had you first consulted with a learned attorney. Even if you didn't know,
youre liable for innocent infringement, unless you filed for safe harbor. If you knew, it gets worse.
5. How do sites like YouTube get away with it?
When their users sign on, they swear to all that is holy that they own this stuff, and they control the
rights. If you read the YouTube terms of use, when you take a look at that document, you give
everything except your mothers underwear, usually some kind of perpetual nonexclusive royalty-
free license. In some of these agreements you agree to indemnify them.
Sitting on top of that, Congress, in all its wisdom, said, "You know, no one will ever exchange
information if youve got to check everything out so thoroughly. So, if you are an OSP that filed for
safe harbor and get a notice that someone has posted infringing material on your site, if you take the
infringing material off your site, youre protected." The term "OSP" has not been fully litigated so just
who qualifies is questionable. Whether an OSP is the telephone company, the cable company, the
hosting company, and/or the website owner has yet to be defined. How far down the chain the safe
harbor goes we dont quite know yet.
6. What about linking to videos?
What has been uniformly held to be legal is, if the site youre linking to says its OK to link to them,
then you can index their site and provide a link that brings up the linked web page as long as its not
grouped within your framing so that you cant tell where the source of the video is. Framing it inside
your own stuff is impermissible, unless the (originating) site allows it, like YouTube. Indexing and
then providing a link to the site as if it were a phonebook has been held permissible in several cases
so long as you dont make the link look like the content is yours.
7. How can I protect myself when Im licensing content?
Lets say youre a media streamer and you want to have an instructional video on something or
another. Somebody appears at your door. "Hi, Im the production company." "Oh, thats wonderful. I
need some content." "I have this with these rights, and this with these rights." Someone has to go
through what contracts have been signed to be sure of what youre buying, because no matter what
is written and no matter who reviews it, there are always openings. Thats why we have copyright
and trademark insurance. I would investigate insurance, because youre never really safe. Theyll
insure you against claims of copyright infringements and trademark infringement provided you do
certain things. I wouldnt start a streaming business without some insurance.
8. Why is this all so complicated?
A famous judge by the name of Benjamin N. Cardozo compared conduct to law as one would
compare space and timethe theory of relativity. If you have two objects and one moves and the
other moves identically, is there any movement between them? The answer is no, because theyre
moving relatively the same to each other. Law and conduct should strive for that. Law is always
racing to keep up with conduct as it changes.
If you go back to 1909, there was a gaping hole in the Copyright Act. For some reason, player-piano
rolls were not mentioned in copyright laws. The Copyright Act didnt quite catch up to that new
technology. Thats whats happening now. Weve got the digital age of information. Conduct is
changing rapidly. Technology is changing rapidly. And the law is struggling to make no movement
from the governance of this conduct so it will not lose its grip on keeping those who would steal in
check, or those who are not honoring the Constitution.
The Copyright Act is a piece of work. This act changes so much and the conduct changes so much
that you may read a section from year to year and not find a similar word. Also, some passages are
so technical, you might read the same wording 30 times and not fully understand them.
In fact, the Copyright Act has even been brought back from the dead! There was a way you could
actually lose your copyright in the 1980s. (Some horrible things happened to foreign works and to
works that were published without notice.) Some works that fell into the public domain were
"resurrected" in the mid-1990s and restored to full Copyright status. Wow!
At one point, sound recordings were able to be commissioned works for hire. Four times in a three-
year period, Congress changed its mind. (See 17 U.S.C. 101.) The foregoing section has been
changed so much that Congress entered a blurb in the statute informing judges to make nothing of
the fact that at one time certain works were allowed to be commissioned works made for hire, then
not, then again, then not, and so on. Congress basically said, "Forget about what has gone before
and dont try to understand what we intended to do by making so many changes."
9. How can I successfully navigate these thorny, complex issues of copyright and
ownership?
Id hire an attorney. I think its too complicated for somebody without experience to do it. Each
individual project has its own set of parameters depending on what you own, what you dont own,
what you need to license, and what you need to license it for. Even the art of hiring someone to
create things is an issue, whether its a work made for hire or not. The issue of ownership is
tremendous.
I firmly believe that in the cyberworld of today, if youre not an attorney versed in cyberlaw or cyber-
entertainment law, that youre going to have a problem doing it yourself, and I would not recommend
it. An ounce of prevention is worth a pound of cure. Its not what you know thats going to hurt you.
Its what you dont know.
10. What changes might there be in the future, especially as the world becomes a smaller
place?
The world is coming to be a closer place as a result of the sharing of information over the internet.
We have to think of our neighbors more when we fashion U.S. law, and they have to think more
about us as well. Whether well have a uniform act, I dont know, but we are getting very close now
to some general concepts that are true in a majority of the countries, and thats the future because
the internet truly is global. There are some universal truths that exist in copyright law. I do believe,
though, that its only going to get better.