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by Jane D. Tucker
The U.S. District Court for the Eastern District of Virginia recently addressed
the subject of copying of a basic business form. In Phoenix Renovation
Corp. v. Rodriguez [461 F. Supp. 2d 411 (E.D. Va. 2006)], the Court ruled that the copyright of Phoenix
Renovation in an agreement used to set forth the terms and conditions of
work done for customers was infringed by a former employee who started his own
business and modified the agreement slightly for use in his new business.
In order for there to be a copyright in a document, it must be "an original
work of authorship". All that is needed to satisfy the requirement of
originality is that the work possess some minimal degree of
creativity. In other words, "original" in this context means little more
than that there must not be actual copying in creating work. It is not
necessary that the work be registered with the U.S. Copyright Office or that
there be a copyright notice on the document in order for there to be a valid
Under this standard, the Court in Phoenix Renovation Corp. v. Rodriguez
held that the Phoenix agreement was entitled to copyright protection and that
Phoenix possessed a valid copyright in the agreement. The Court then
compared the Phoenix agreement to the agreement being used by the defendants
and found that the two agreements were identical in all material aspects.
Therefore the court held that the defendants had infringed upon Phoenix's
copyright in its agreement.
Because the agreement was not registered with the U.S. Copyright Office,
Phoenix was required to prove actual damages, rather than rely upon the
statutory damages in the U.S. Copyright Act. Because they were unable to
prove that there was a causal link between the infringement and the defendants'
revenue, Phoenix was unable to recover damages from the defendants.
This case illustrates three important facts with regards to copyright
infringement litigation. First, even standard contracts that do not
appear to be original may be entitled to copyright protection. Second,
unless the copyright in the contract is registered with the U.S. Copyright
Office, recovering damages is difficult. Third, and perhaps most
importantly from a practical standpoint, even though the defendants did not
have to pay damages to the plaintiff in this case, they still had to bear the
expense of litigation caused by their use of a copyrighted contract.
These articles are meant to bring awareness to the topic and are not
intended to be used as legal advice. If you have questions about any of the
articles or any other related matters, please contact the author.
Jane D. Tucker is an attorney with Vandeventer Black and concentrates her law practice
in intellectual property, information technology, ERISA, employee benefits,
commercial, and business transactions.
Jane's intellectual property and information technology practice involves
trademark and copyright registration, as well as protection, sale and/or
licensing of all forms of intellectual property, including patents and trade
secrets. Jane was recently named as one of Virginia Business' "Legal Elite" in
the area of Intellectual Property.