Copyright Outline

COPYRIGHT LAWWhy is Copyright “hot” today? Marketplace

o Consolidation – consolidated industries to lobby Congress for copyright related legislated Legislation – groups come to an agreement and then bring the idea to the table – who gets in the conversation and who doesn’t Public Rhetoric, cultural practices, legal theory – piracy v. liberty

o Pirates v. Remixers When you:

Download music and software Copy New Yorker cartoons Duplicate articles you’ll read soon Upload pictures of items to YouTube or Facebook

Do you see yourself as a pirate or as doing something socially acceptable and even valuable? Technology

Tim Woo - Larry Lessig – Youhi BenklerDemocratic Culture – she disagrees with most of it – Jack BalkinCopywars – Copyleft

What does the Copyleft Want? A rich public domain Promoting democratic culture A conception of art as: (bottom line for Lessig et al)

o Definitionally expansiveo Non-commercialo Non-commodifiedo Interactiveo Social/politicalo Joint

What are the objecting to?o Expansive claims to propertyo Use of technological protection measures and contract provisions to prevent accesso Increasingly stringent enforcement

Copyright Industries Concerns: Rampant Piracy aided by unstoppable technology greatly reducing economic value of property Industry destabilization with new forms of communication

o Peer to Peero User generated contento Disintermediationo Decentralized Networks

Implications – Questions Raised What is art? Sharing norms? Critique? Public access and authors’ branding/business decisions Access to Knowledge – search and storage, private and public she thinks storage is a huge issue Strategic/political use of copyright ownership Does law matter?

Is it copyrightable?If it is – how owns it?

Is it still covered by copyright?If it is still covered, then is someone else’s use

infringement?If so, is it covered by one of the defenses?

Less about issue spotting – but more analysis and policy issues as to what should and shouldn’t be

coveredIf you go this way rather than that way then this is

why it is bad…

This is intellectual…don’t worry about the doctrine since it is easy to find and a mess

INTRODUCTION: COPYRIGHT IN CONTEXT

Copyright Law is a federal statute codified in Title 17 – granted by Article I of the Constitution “Intellectual Property Clause”The act grants a limited statutory monopoly in original works of authorship that are fixed in a tangible medium of expression.

Copyright does NOT require registration and since 1989 does not require notice on the workOnce an original work of authorship is fixed in a tangible medium of expression, that work is protected by federal copyright law

THE THEORETICAL UNDERPINNINGS OF COPYRIGHT LAWThe fundamental purpose of the US copyright system is to “promote . . . Progress”

1. INCENTIVES FOR AUTHORS AND PUBLISHERS Intangible goods are “nonrivalrous” in consumption and have the characteristic of nonexcludablility (once they are with the public everyone can enjoy them and people cannot be excluded from that benefit) Copyright law exists to provide a marketable right for the creators and distributors of copyrighted works, which in turn creates an incentive for production and dissemination of new works

Trotter Hardy, Property (and Copyright) in Cyberspace Information producers overcome their fear of cheap producing with “some assurance that copying with be limited” Four Part Aggregate Assurance of Limited Copying: (thought of as slices of a pie)

o Entitlement-Like Protection – wide recognition that informational products have an “owner” who has some “rights” that would be violated by unauthorized copyingo Contract – protects because two parties have agreed to treat the product as protectedo State-of-the-Art Copying – technological changes affect this costo Special-Purpose – cable company scramblers and paying to descramble the signal

Julie Cohen: argues that there should also be a “noprotection” slice of the pie which belongs to the public and is essential to achieving copyright’s goal of promoting “progress”

2. AUTHORS’ RIGHTS Utilitarian justification for copyright protection is not the only rationale it could be morally required But the US doesn’t embrace this idea and thus it doesn’t mesh well with European Copyright Laws

John Locke, Two Treaties on Government Adding labor to something makes it your property However applying this idea to intangible property is difficult

Hegel: property is an extension of human autonomy – a person becomes a real self only by engaging in a property relationship with something external

3. A ROBUST PUBLIC DOMAIN Includes works for which copyright protection has expired

Jessica Litman, The Public Domain Authorship is more like transforming and recombining what is already “out there” in some other form The public domain includes works free from copyright – works created before it existed or during and has now expired It also includes parts of copyrighted works that are in the public domain ideas

Wendy Gordon: Lockean Labor Theory also states that the laborer should not do harm to other people’s claim to the common and if it conflicts then the common prevails

4. AN UNCENSORED MARKETPLACE OF IDEAS Professor Neil Netanel argues that copyright should be understood along with the 1st Amendment – and the protection includes the creation and communication of such expression which is important to democracy If this is the case then does gov’t funding for creative works pose a problem?

5. What Progress, and Whose Welfare? Does copyright law necessarily promote general welfare?

William P. Alford, To Steal a Book Is an Elegant Offense

China did not have a concept of copyright protection and copying was accepted and celebrated because of the high value placed on the past Copying was accepted because it paid respect to the works copied and the author’s ability to understand their importance

THE HISTORY OF US COPYRIGHT LAW

1. FROM CENSORSHIP TO MARKETS Started in England and before the printing press there was no need for protection since had copying was so laborious Printing press in 1476 – printers could wait and see if a book was a hit and if so then copy it themselves to take advantage of the market Printers did have a “guild” but if someone outside of the guild printed then they could not regulate their actions However there were printing press patents granted by the crown Created the Stantioner’s Company with the crown allowed to print most of the work and could seek out and destroy unauthorized copies (also a way for the crown to sensor heretical writings) benefited the

publishers and the crown – not the authors and lapsed around 1694 1710 – Statute of Anne – granted an assignable right to authors to control the publication of their writings – meant to be for the encouragement of learning – limited duration (14 years with one 14 yr renewal)

o Even though this was meant to be for the publishers – the language and idea of authorship was a part of the statute and moved the concept of ownership to the author Trying to show that the idea of copyright was not always the protection of authors’ rights the publishing company to maintain monopoly and the crown for censorship

2. PROGRESS, INCENTIVES AND ACCESS The Framers reacted to the English system and specifically stated that copyright must serve a public purpose (not a tool for gov’t censorship) 1790 – the first copyright law and it was for two 14-year terms of protection – also required registration and a deposit with the Secretary of State

o This directly lead to Congress having to establish a library to hold these works Wheaton v. Peters (1834) – established that court opinions are not copyrighted but summaries of arguments could if properly registered Emerson v. Davies (1845) – there is freedom to build upon certain aspects of past works Folsom v. Marsh (1841) – using selections from a previous work “fairly” did not constitute infringement Continuing to expand the right of copyright in the name of Progress

3. COPYRIGHT LAW AND TECHNOLOGICAL CHANGE New Methods of Creating New Works

o The list of works expanded over the years and in 1976 the act was overhauled and instead of listing types of expression it set forth broad categories of content

o Literary workso Musical Works – including accompanying wordso Dramatic Works – including accompanying musico Pantomimes and choreographic workso Pictorial, graphic and sculptural workso Motion pictures and other audiovisual workso Sound recordingso Architectural works (added in 1990)

New Technologies for Distributing and Copying Works Legal Responses to New Technologies

o Extended the public performance rights and created a compulsory license for those who prepared mechanical sound recordings of their works (1909) This was really expansive even though it was shorter in duration Included a renewal process

o Lead to the 1976 Act which defined five exclusive rights of copyright owners which included the creation of derivative works and also created the idea that copyright protection happened as soon as a works was fixed in a tangible medium of expression

The Copyright Legislative Processo The process by the Copyright Office and Congress negotiated compromises among those with an economic interesto Jessica Litman: thinks that this process is bad because the private industries are choosing the legislation and maybe smaller interests are going to be lost

The Copyright Industries New Challenges

Trying to balance the public domain with the right of copyright

Rationales Copyright Protection Utilitarian Incentives/Instrumentalist Rationale

o For what purpose? Progress? What counts?o How much protection? What will provide the right incentives?

What incentives are necessary.o Is inducement needed in fact?

How come the Chinese produced lots of art in the 15th century despite anti-copyright norms Closer to home, won’t Picasso paint and Scorsese direct even if there is no copyright protection?

Will they paint or direct as much? Will protection affect the nature of their work? Are they the only players whose incentives we need to address? If not, who else’s incentives count?

o Have to consider the other players – the industries that rely on the monopoly of the copyright that these artists createo But Breyer says that you don’t’ have to worry about the publishers because the only economic incentive they need is the lead-time advantage

But this isn’t really correct because movie houses rely on the blockbusters to make their money and people can just watch movies online that are also in the movie theatres

o Key Issues of the Inducement Theory Does the IT help us figure out what the optimal level of protection How do we define the level of protection that will induce the optimal level of creative production?

Difficulty 1: how do we define the socially optimal level of creativity? Do we need to? Difficulty 2: how do we assess what is the minimum level of protection necessary to induce such output so we don’t over-protect? Can we do so with empirical certainty? Difficulty 3: instability – new uses and new technologies continuously force us to reconsider the balance

o If inducement is necessary then why is protection limited? Constitution’s limited times means that the public domain is a central part of American copyright, along with protection

Key Point: protected works ultimately become a source of creativity for future generations Why? If we need protection in order to induce creation, then why should it be limited?

Cost Risk of suppression Nature of creativity

Copyright Paradox We permit monopoly in order to benefit the public by insuring access to all sorts of author’s works But we simultaneously limit monopoly because of the worry that the monopoly will itself harm the public by limiting its access Fundamental question that the incentive rational can’t itself answer “how much”?

Natural Rights/Author’s Rights Rationales for Copyright: European theory of copyright Non-instrumentalist approach – authors are entitled to the exclusive use of their creative work as a moral matter Protection of copyright is protecting the dignity of the author herself – the creative work protected as a manifestation of the author’s being

o Alternative strand: author’s labor gives rise to ownership of tangible property Key focus: individual author (rather than public)

Difficulties Posed by Author’s Rights Theories What is individual authorship? Is “the author” dead?

o Authors are making small changes to works done before them in their area and movement. – so you owe to all these people that came before youo The author is dead – a meaning of a book is established by the readers not by the author – the relationship between the reader and author – the author is dead and the meaning is what the readers read

into the book How about corporate ownership? What’s so “yourself” about your “stuff”? Uber-commodity fetishism? Why should creators get value for their labor in this context rather than any others? Bottom line worry: potentially undue authorial control (Think about The Wind Done Gone)

Theoretical Underpinnings of Copyright Law – what the book focuses on Incentives for authors and publishers – traditional points

Authors’’ rights – traditional points A robust public domain – it is about the access for the public of the robust public domain An uncensored marketplace of ideas – the idea of copyright protection should be seen as the engine of free expression Levi thinks that you cannot place this as a zero sum game – the question is how much protection and neither way can answer on its own

THE GROWING ROLE OF INTERNATIONAL TREATIES AND INSTITUTIONS

1. FROM PIRATE TO HOLDOUT TO ENFORCER: INTERNATIONAL COPYRIGHT AND THE US The US copyright law used to exclude foreign authors from protection 1891 – extended protection to foreign authors if their home countries gave comparable protection to US authors national treatment Until 1896 – the Manufacturing Clause stated that foreign works had to be printed in the US

2. THE BERNE CONVENTION The US didn’t sign the Berne Convention for over 100 years – it didn’t want to relax the formalities it imposed with the Berne Convention provided – also provided protection for some works that the US didn’t The Berne Convention Implementation Act of 1988 – made on the changes that were absolutely necessary to qualify for membership No enforcement mechanism

3. THE TRIPS AGREEMENT Pushed by the US – it is with the view that IP protection is a trade issue Establishes minimum universal substantive standards for the protection of IP Includes most favored nation treatment Incorporates the Berne Convention standards – but does not require recognition of moral rights Life + 50

4. COPYRIGHT LAWMAKING AND ENFORCEMENT UNDER THE BERNE CONVENTION AND THE TRIPS AGREEMENT World Trade Organization

o Responsible for administering the multilateral trade agreements concluded in the Uruguay Roundo Forum for negotiations for member states in the Dispute Settlement Understanding (DSU)

WIPO and the 1996 WIOP Treatieso Formed under the Paris Convention for the Protection of Industrial Propertyo Sponsored two treaties designed to address copyright protection

Complexities Entailed by Internationalization The growing role of international treaties and institutions

o Shift in US position from literary pirate to promoter of global adherence to copyright norms Evidence: membership in Berne Convention, central role in TRIPS Limits: minimum standards for Berne implementation

Signal importance of WTO as interpreter and enforcer of international copyright agreements

THE SUBJECT MATTER OF COPYRIGHT LAW: AUTHORS, WRITINGS, AND PROGRESS

THE ELEMENTS OF COPYRIGHTABLE SUBJECT MATTER

Congress is granted with the power to decide what works can be protected by copyright broad leeway (but not infinite) to the definition as policy

Economic Costs to the Exclusive Right of Copyright: Costs of Administration and Enforcement Deadweight losses that result because creators have to price above the marginal cost of their works which will exclude some customers

o Limits the dissemination of the knowledge which could provide the basis for further progress

§ 102 Subject matter of copyright: In general(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

(1) literary works;(2) musical works, including any accompanying words;(3) dramatic works, including any accompanying music;(4) pantomimes and choreographic works;(5) pictorial, graphic, and sculptural works;(6) motion pictures and other audiovisual works;(7) sound recordings; and(8) architectural works.

(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

Notes:

Requirements for Copyrightable Subject Matter

1. FIXATION Most countries’ laws do not contain a comparable provision Europe just says something that can be perceived by others The Berne Convention leaves the decision about whether to require fixation to each of the member countries WIPO and TRIPS don’t mention it Why do we have a fixation requirement?

o We look to more of a utilitarian view of the use of copyright and in order to foster progress we need to have something in a fixed form to claim an ownershipo Europe’s unrecorded performances would be protected but not here – we don’t protect live performanceso Is a good or bad idea to not provide protection for live performances?o There are different norms that some groups have created to bargain for more or less contract terms.o Grounded in the Constitution!

Exclusive right to the writings – it doesn’t say that an author has a right to his story idea – just the writing that she has created You could make an argument that there is no fixation requirement if you define writings as something that isn’t necessarily fixed

What happens when the fixation only fixed to other computers? What happens when you extend fixation to new technologies?

A FUNCTIONAL APPROACH §101: A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be

perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is “fixed” for purposes of this title if a fixation of the work is being made simultaneously with its transmission.

The means to fix doesn’t matter look to the effect produced

The Congress shall have Power . . . To promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive

Right to their respected Writings and Discoveries.

US Constitution, Art. I, §8, cl. 8

In 1909 Act – Congress responded to White-Smith Publishing where a player piano roll was found to not be a copy since the idea of a copy was only an intelligible to a human – the piano communicating with the piano itself which is not communication to a human thus a special statutory provision was created that subjected mechanical reproductions of musical works to compulsory license.

1976 used the fixed definition since the 1909 became difficult with the change of technologies 1976 also extended to unpublished works

Williams Electronics, Inc. v. Artic International3rd Cir. (1982)[48]

COPYRIGHT PROTECTION EXTENDS TO IMAGES IN VIDEO GAMESP video game manufacturer sued a competitor for selling an exact copy of the gameArtic argued that the audio visual effects were not fixed since they change from the users activity

Held: Copyright protection extends to images in video games since the features repeat themselves over and over and are sufficiently permanent to be considered more than transitory Memory of a Computer Game satisfy the statutory requirement of a “copy” in which the work is “fixed”

“Copies” are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “copies” includes the material object, other than a phonorecord, in which the work is first fixed.

“Phonorecords” are material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “phonorecords” includes the material object in which the sounds are first fixed.

Neither of these definitions has the “by of under the authority of the author” language that the fixation definition contains

MAI Systems Corp. v. Peak Computer, Inc.9th Cir. (1994)[51]

LOADING COPYRIGHTED COMPUTER SOFTWARE ONTO A COMPUTER’S RAM CREATES A COPY THAT IS SUFFICENTLY FIXED UNDER THE COPYRIGHT ACTMAI is a software co. and Peak are techniciansDistrict court granted summary judgment in favor of MAI for copyright infringement for Peak running MAI software licensed to Peak customers

Held: the loading of the software by Peak into the RAM was a copy because it could be “perceived, reproduced, or otherwise communicated” and is a violation of MAI’s copyright –affirmed the district court This is a stinky case – MAI could have just contracted with its customers that it would do the service – instead of letting Peak make a business off of service – the court probably should have advised MAI to protect

their work through means other than copyright law This case piggybacks on the fact that a copy was made – which then makes fixation – that is a backwards definition of fixation

If these cases had come out the other way then there would have been a much larger public domain – the fixation requirement would have been a little bit more than just a momentary fixation

A TECHNOLOGY-SPECIFIC APPROACH: TRANSMISSION AND CONTEMPORANEOUS FIXATION, AND THE PROBLEM OF BOOTLEG RECORDINGS From the fixed definition: A work consisting of sounds, images, or both, that are being transmitted, is “fixed” for purposes of this title if a fixation of the work is being made simultaneously with its

transmission. Broadcasting: fixation contemporaneous with transmission Live content transmission should be regarded as fixed assuming copyrightable as “motion picture” or “sound recording” What about a live performance that isn’t being transmitted but being recorded depending on how you read the second sentence the recording can be a fixation of the work being performed but Nimmer

argues that the language sets forth the only circumstances in which the simultaneous recordation concept can effect fixation Caused bootlegging and it wasn’t illegal since the live performance did not have copyright protection 1994 – Congress amended the act for the TRIPS agreement which required protection for live musical performances – Section 1101(a)

o Prohibits the fixation or transmission of a live musical performance without the consent of the performers and also prohibits the reproduction or distribution of copies or phonorecords of an unauthorized fixation of a live musical performance

Bootleg Recordings: section 1101(a) enacted in response to TRIPSo Problems there is no duration limit in 1101! & is specifically adopted to avoid the fixation requiremento US v. Moghadam in 1999 – Constitutional challenge to the amendment since a live performance isn’t fixed – why should it be protected the court concluded that it was a valid exercise of Congress’

commerce powero KISS Catalog v. Passport Int’l Productions: unlikely that Congress had the power pursuant to the Copyright Clause to adopt §1101 but concluded that the Commerce Clause empowered Congress to

adopt that provisiono US v. Martignon (2007): because the law was not given its authority through the Copyright Clause then its limitations did not apply and the provision was a lawful exercise of the Commerce Clause

authority It’s okay to do something under the CC so long as it’s not creating a right that it didn’t have under the Copyright Clause Is this something that is “Copyright Like Right?”

Does it violate one or more specific limits of the Copyright Clause If 1101 is unconstitutional then the US is in violation of TRIPS!

AUTHORSHIP: Urantia Foundation v. Maaherra: civilization based on a religion uploaded the tenants of the religion to a website and the Urantia Foundation tried to sue for copyright infringement but are they actually the

author – or is God?o The work is in a question and answer format – and the foundation created the questions and God gave the answerso But is there an argument that the Gods actually placed those questions in the head of the foundation?

2. ORIGINALITY Requirement for copyrightability to be an “original work or authorship” Berne and TRIPS do not impose such requirements of originality or creativity – they just assume authorial presence 1976 used the term “original works of authorship” and was purposefully left undefined and just incorporate without change the standard of originality established by the courts under the 1909 Act Does NOT include: novelty, ingenuity, or esthetic merit Meaning has varied over time

o First associated with fine arts but actually maps and charts

Three plausible standards for copyright eligibility: Originality, in the sense of independent origination or non-copying Creativity , in the sense of some modest level of imagination or escape from the commonplace Novelty or invention, in the sense (like a patent) or a leap beyond prior art that would not be obvious to a person skilled in that art

Feist Publications, Inc. v. Rural TelephoneSupreme Court (1991)[58]

ORIGINALITY REQUIRES MORE THAN MERE INDEPENDENT CREATION – BUT NOT MUCH MORE

Originality is a Constitutional requirement

Held: telephone white pages directory lacked the minimal originality necessary to qualify for copyright protection

“ORIGINAL” TO WHOM?

Copyrightability of Photographso Constitution permits Congress to protect photos with copyright – “so far as they are original intellectual conceptions of the author”o Justice Miller says he is not ruling on the copyrightability of the ordinary production of a photographo Why was this studio photograph protectable?

Views of Originalityo Authorship: one view was a new conception of originality authorship rather than originality and the other was more original in that there was more creativity and novelty in the final producto As originality became more and more of a lower standard the judges began talking about it more and more as a category (even though the content became less significant)

Burrow-Giles Lithographic Co. v. SaronySupreme Court (1884)[59]

OSCAR WILDE: PHOTOGRAPHS EVIDENCING ORIGINALITY AND CREATIVITY IN FEATURES SUCH AS SELECTION OF COSTUMES, POSE AND SUCH ARE COPYRIGHTABLESarony is the photographer and had secured a copyright on “Oscar Wilde No. 18” and burrow-Giles sold 85,000 copies. Sarony sued for copyright infringement and was awarded damagesOn Appeal: Burrow-Giles argued that copyrights cannot be granted for photographs because they do not fall under authors or inventors

(MILLER) - Held: photographs can be copyrightable as the “writing or production” of an “author” this was copyrightable Follows from charts, maps, engravings, cuts, etchings and so on – the photograph is like this Here the photo obviously possessed the characteristics and was copyrightable – Affirmed Expansion of the notion of copyright the process of creating the work seems to play some sort of role in determining a protectable copyright

118 Yale 186 – Copyright

The Court adopted the findings of fact:o The photo was “useful, new, harmonious, characteristic, graceful” ando Sarony made the picture from his mental conception (in posing, costume, drape, and accessory arrangement, light and evocation of desired expression)

How does the “ordinary photo” differ from Sarony’s? Some people have thought that this case was decided in part by a new conception of originality focused more on authorship (with a map – how original can you possibly be?) Notes:

o Photographs are copyrightableo So far as they are original intellectual conceptions of the authoro What does “original’ mean? How high a standard?o Since photography is really a technical medium then the question becomes whether there was enough original contento Miller wouldn’t have found a candid photo to be creative and the subject himself is not copyrightableo What if your process is very thoughtful but the outcome happens to be same as the other persons

The court is not just buying into the process but looking at the work itself some sort of an aesthetic judgment

Bleistein v. Donaldson LithographingSupreme Court (1903)[62]

CIRCUS POSTERS: CHROMOLITHOGRAPHS ARE ENTITLED TO COPYRIGHT PROTECTION EVEN IF DESIGNED FOR ADVERTISING PURPOSESWallace hired Bleistein to produce 3 chromolithographs for advertisement of his circus. Donaldson produced reduced three of them and Bleistein sued for copyright infringementDonaldson won a directed verdict that was upheld on appeal because of the advertisement and not fine arts

(HOLMES) Held: works are not less connected to the fine arts just because they can be used in advertising There might be questions of Wallace’s right to the pictures – but that is for a jury Bleistein Nondiscrimination Principle: dangers of requiring judges to evaluate aesthetic merit

o It would be dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits”o What are the “narrowest and most obvious limits”

The court also notes that the work must be important because the D copied it and it is widely sought after since it is important than it must be copyrightable market-oriented, anti-subjective approach HARLAND – the Constitution only has this protection because we want to promote progress and only when there wouldn’t be any other way of getting this work without the monopoly – but you will get this work

because of the commercial demands you will get advertisement regardless of the copyright What does the following statement in Bleistein do the originality notion?

o Bootstrap: that these pictures had their worth and their success is sufficiently shown by the desire to reproduce them without regard to the P’s rights Open Territory: how far will the definition of originality go?

Dada Movement: Duchamp – the urinal piece as a joke His piece got rejected from the competition and showed that the show was commercial and not cutting edge at all Furry Teacup – this is what the nondiscrimination principle leads to

Mannion v. Coors Brewing CompanyS.D.N.Y (2006)[SUPP 350]

THERE IS A DIFFERENCE BETWEEN PROTECTING THE IMAGE OF A PHOTO AND PROTECTING THE SUBJECT MATTERMannion is freelance photographer of portraits and did a job for SLAM basketball magazine of Kevin Garnett which was printed in the Dec. 1999 issueIn 2001 – Carol H. Williams Advertising (CHWA) developed an idea for a billboard using the photo and gained Garnett’s permission for its use as a mock-upCoors had a new photographer take a similar shot and concept but with more extreme cropping ….Mannion brought this action for infringement

Held: there was a copyright in the original Protectable Elements of Photographs: rendition and timing – protects the image but not others from doing the same / creation of subject – copyright can extend to the subject

o Rendition: originality not of the object but of the angles, lighting, exposure, effects – not what but how it is depictedo Timing: being in the right place at the right time – the image exhibits the originality – not the underlying subjecto Creation of the Subject: the photographer can create the scene or subject to be photographed

Originality of the Garnett Photoo Mannion did orchestrate the scene – and the individual components cannot be separated from the whole – which is original

Notes:o Do these elements help to find originality or does it lower the bar?o Clearly there was copying and the question is whether there was going to be copyrightability does this go beyond what Holmes considers copyrightability?

Note on Nonobviousness and Originality The Copyright Office does not compare applications like the Patent Office Patents require a nonobviousness advance, novelty, and utility

Laureyssens v. Idea Group: can’t compare a copyright to a patent – the puzzle pieces were independently created and had a degree of creativity thus they were copyrightable – IGI still won – their puzzles were substantially different from Laureyssens

MORE THAN MERELY TRIVIALQuestion: should reproductions of public domain art be considered sufficiently original?

Copyright Originality what is the minimum degree of creativity required for copyrightability?

Alfred Bell & Co. v. Catalda Fine Arts2nd (1951)[67]

A COPY OF SOMETHING IN THE PUBLIC DOMAIN MAY ITSELF BE COPYRIGHTED IF THE AUTHOR THEREOF HAS CONTRIBUTED SOMETHING OF HIS OWN THERETO, THAT IS, MORE THAN A TRIVIAL VARIATION POINTS TO PROTECTING THE COPIES OF IMAGES IN THE PUBLIC DOMAINBell made mezzotint engravings of old masters paintings. Catalda used a lithographic process to produce copies of Bell’s engravings. Trial court found that there was a copyright infringement – Catalda argued that the engravings were uncopyrightable because they were of old masters and lacked the requisite originality

Held: the copies had originality from the author in determining the subtleties of the engraving process and thus is copyrightable it was more than a “mere trivial” variation Something recognizably “his own” in this context means “little more than a prohibition of actual copying”

o In the case of maps – later works will be anticipated and still meet the requirements for copyrightability Catalda deliberately copied the mezzotints and are infringers and copyright confers the exclusive right to copy the copyrighted work – a right not to have others copy it NOTE THAT THIS WAS BEFORE FEIST TODAY THIS WOULD PROBABLY NOT BE COPYRIGHTABLE

The Bridgeman Art Library, Ltd. V. Corel CorpS.D.N.Y. (1999)[70]

COPYRIGHT PROTECTION IS NOT AVAILABLE FOR EXACT COPIES OF WORKS OF ART IN THE PUBLIC DOMAIN PERMITS COPYING OF IMAGES OF UNDERLYING WORKS THAT ARE IN THE PUBLIC DOMAINBridgeman (P) held the rights to market reproductions of art owned by museums and other collectors but no longer under copyright protection Bridgeman reproduced CDs of the worksCorel (D) markets software that included the same digital worksTrial court entered summary judgment for Corel

Held: copies of works in the public domain do not get copyright protection unless there is a “distinguishable variation” A “slavish copying” does not get protection A distinguishable variation cannot be just a change in medium

Why should the technology of the reproductions matter? Why should originality in one medium be the same level of originality in another? Does the process matter?

Dan Burk: Method and Madness in Copyright Law: if the intent of the copiers under Bell were to create faithful reproductions then perhaps it shouldn’t be copyrighted and the outcome in the case was perhaps due to rewarding Bell’s labor

Indeterminacy of the Process – another theory in the basis for reasoning in copyright cases

Assessment: How does the copyright standard compare with other areas of intellectual property? What’s the impact of a low standard of originality? Should the copyright standard of originality be heightened

3. THE IDEA/EXPRESSION DICHOTOMY

§102(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

§102(b) has two purposes:1. To define the line between what is eligible for copyright protection and what belongs to the public domain2. To define the line between copyrightable and patentable subject matter

Exclusions: ideas, utilitarian works, facts, systems/processes

This idea is also contained in the Berne Convention, TRIPS, and WIPO

Both economic and non-economic approaches to copyright view the items listed in 102(b) as basic building blocks of copyright expression, and hold that granting copyright in these items would be counterproductive

The idea/expression distinction came way before Baker v. Selden but people use the concept for what is exemplified in the case. The concept is not definable – it is just a metaphor – not a definition Policies boundary between copyright and patent Ensures robust public domain where others scan use same ideas and create other expression

IDEA (noncopyrightable) -------- ---------- GRAY AERA ----------- ------------- EXPRESSION (copyrightable)

FORM V. FUNCTION V. FAIR GAME

Baker v. SeldenSupreme Court (1897)[73]

THE PROTECTION AFFORDED BY A COPYRIGHT ON A BOOK EXPLAINING AN ART OR SYSTEM EXTENDS ONLY TO THE AUTHOR’S UNIQUE EXPLINATION AND DOES NOT PRECLUDE OTHERS FROM USING THE SYSTEM OR THE FORMS NECESSARILY INCIDENTAL TO SUCH USESelden copyrighted a book that contained a system of accounting with special forms. Baker began selling forms with differently arranged columns and headings that achieved the same result

Held: a copyright on a book explaining an art or system does not preclude others from using the system or forms contained in it A copyright on a system or forms would be a patent-type protection without requiring the showing of novelty the copyright protects the explanation of that system Interpretations of Baker: multiple lines of authority derived from Baker:

o Blank forms are not copyrightable – but this isn’t want it really heldo Functional Works – the form itself is designed to achieve a functiono Merger Doctrine – when there is something that can only be expressed in one way or a few ways then we make a social policy decision to say that the expression and the idea have mergedo Non-Copyrightability of Systems

Merger: Morrissey v. Procter & Gamble: instructions for a sweepstakes contest couldn’t be copyrighted if there are only a limited number of ways to express an idea – the idea and expression merge into an uncopyrightable whole

Or offer a “thin” copyright – so thin that only an identical copy is infringement some see this as a defense to infringement rather than a bar to copyright at the outset

§ 202.1 Material not subject to copyright.The following are examples of works not subject to copyright and applications for registration of such works cannot be entertained: (a) Words and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere listing of ingredients or contents; (b) Ideas, plans, methods, systems, or devices, as distinguished from the particular manner in which they are expressed or described in a writing; (c) Blank forms, such as time cards, graph paper, account books, diaries, bank checks, scorecards, address books, report forms, order forms and the like, which are designed for recording information and do not in themselves convey information; (d) Works consisting entirely of information that is common property containing no original authorship, such as, for example: Standard calendars, height and weight charts, tape measures and rulers, schedules of sporting events, and lists or tables taken from public documents or other common sources.

Notes:

Note on Facts and the Public Domain: International News Service v. Associated Press: no property right in the news but there was a “quasi property” right against INS Feist Publications v. Rural Telephone: there was copyright in the compilation of facts

COMPLICATIONS

A.A. Hoehling v. Universal City Studios2nd Cir. (1980)[80]

INTERPRETATIONS OF HISTORICAL EVENTS ARE NOT COPYRIGHTABLEHoehling wrote a book about the Hindenburg advancing a theory of sabotage. Mooney wrote a similar book ten years after but more fictional and the book rights were sold to Universal Studios.

Held: factual information or interpretations of history can be subject to copyright Hoehling’s theory was based on historical facts and are not protected Included that stock narrative bits are not copyrightable as well – like common cultural phrases or locations for story plots scenes a faire

American Dental Asso. V. Delta Dental Plans Asso.7th Cir. (1997)[86]

TAXONOMY CLASSIFICATION GUIDES ARE ORIGINAL WORKS OF AUTHORSHIP, NOT RECORDS OF PROCESSES OR SYSTEMS, AND ARE THUS ENTITLED TO COPYRIGHT PROTECTIONAmerican Dental Association created the Code on Dental Procedures and Nomenclature that included a numbering system of dental proceduresDelta argued that the code is not copyrightable subject matter and the district court granted summary judgment in its favor because it catalogs a field of knowledge

Held: classifications require creativity and are original literary works that may be copyrighted the level of originality required is low and is met here Facts do not supply their own principles of organization classification is a creative endeavor The Code is not a “system” as stated in the copyright act that does not receive protection it is a taxonomy which can be put to many uses one of which may be or include a system but it itself is not Section 102(b) doesn’t allow ADA to sue a dentist for using the Code in her files or for Delta to use the Code in its medical forms but it stops Delta from copying the Code itself or to make and distribute a derivative

work based on the Code

4. DERIVATIVE WORKS AND COMPILATIONS

§ 103 Subject Matter of Copyright: Compilations and Derivative Works(a) The subject matter of copyright as specified by section 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.

(b) The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.

Notes:At what point does a derivative work become a copyrightable work in its own right?

Copyright protection does not extend to any part of a compilation or derivative work in which underlying copyright material “has been used unlawfully”

DERIVATIVE WORKS

A "derivative work" is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a "derivative work". (101)

The international community provides protection for derivative works but just hasn’t adopted that specific language

L. Batlin & Son, Inc. v. Snyder2nd Cir. (1976)[91]

A REPLICA OF A WORK NOT SUBJECT TO COPYRIGHT PROTECTION MUST BE MORE THAN A MERE COPY TO GAIN COPYRIGHT PROTECTIONSnyder obtained a copyright on a plastic Uncle Sam bank that was a replica of an antique cast iron model in the public domain.Batlin also made a replica and made a suit to enjoin the enforcement of Snyder’s copyright after the US Customs Service refused entry to a shipment of Batlin’s banks

Held: although originality is low a replica must be more than a copy to gain protection and some degree of skill must be demonstrated to make the reproduction copyrightable there has to be more than a minuscule variation The reproduction must contain “an original contribution not present in the underlying work or art” and be more than a mere copy This seems to protection against what the court calls “harassment” that could start happening from people to just make very small changes to copyrighted work and pass it off as their own also issues with offering

copyrightability too easily and then there would be many questions as to which copyright the copy has been made from – what exactly would it be infringing Also if you just take a public domain work and add something small to it – then there doesn’t seem like I’m really doing enough to meet a copyright standard anywayDissent: even inadvertent variations to a work in the public domain can form the basis of a valid copyright – courts should not dwell on the purpose for such changes, be they aesthetic or functional

Entertainment Research Group, Inc. v. Genesis Creative Group, Inc.9th Cir. (1998)[94]

INFLATABLE 3D CONSUMES BASED ON COPYRIGHTED CARTOON CHARACTERS ARE NOT SUFFICIENTLY ORIGINAL TO BE COPYRIGHTED AS SEPARATE DERIVATIVE WORKSERG designs and makes inflatable costumes that are purchased by third parties to promote their productsERG and Genesis agreed to market ERG’s costumes and then Genesis went into contract with ERG’s competitor and ERG sued

Held: when considering the originality of costumes based on copyrighted cartoons, any differences based on functionality or mechanics should not be considered Used the Durham test from the 2nd Cir.:

o Original aspects of a derivative work should be more than trivialo Must not affect the scope of any copyright protection in the existing material

Doran v. Sunset House distinction between copyrightability of derivative work based on non-copyrighted work in the public domain and a derivative work based on a preexisting copyrighted worko If derivative work is based on work in public domain proper test for copyrightability is whether the form of the original work is that of the derivative work differ sufficiently – if yes, derivative is

copyrightable

What standard of originality applies to derivative works? (note 1 on 96) Both Batlin and ERG are anxious to avoid giving the first creator of a derivative work “a de facto monopoly” on all subsequent derivative works SHL Imaging, Inc. v. Artisan House (2000): photographs of ornamental picture frames prepared for catalog

o Court discussed a prior case that found a photograph of an object was not a derivative work but it relied on the fact that the bottle itself was not copyrightableo A derivative work must recast, transform, or adopt the authorship contained in the preexisting worko A photograph of Jeff Koons’ “Puppy” sculpture in a park merely depicts that sculpture and does not recast, transform or adapt the sculptural authorship – so it is entirely different and separate from the

authorship of the sculpture Tempo Music v. Morris (1994): rejecting the argument that harmony simply expresses “common musical vocabulary” and holding that whether a particular harmony manifests sufficient originality to be copyrightable is

a question of fact Merkos L’Inyonei Chinuch v. Otasar (2002): found a translation of a Hebrew prayer book to be copyrightable because the process requires exercise of careful literary and scholarly judgment

Pickett v. Prince7th Cir. (2000)[98]

THE OWNER OF A COPYRIGHT HAS THE EXCLUSIVE RIGHT TO PREPARE DERIVATIVE WORKS BASED ON THE COPYRIGHTED WORKPrince has referred to himself as a symbol taking it as his trademark and having copyrighted it as a visual art.In 1993, Pickett made a guitar in the shape of the Prince symbol and showed it to Prince – Prince was then seen using a guitar in his shape.They both sued each otherFunny thing is that the symbol was a public domain image so Prince created a derivative work

(POSNER) Held: the copyright act grants the holder of a copyright the exclusive right to prepare derivative works which does not allow infringement on the copyright of the original Even if Pickett’s guitar can be considered original, it could not have been made without Prince’s authorization Pickett argues under 103(a): protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully reads this as

only forbidding him from infringing the original If there is something that is original about the copyrighted work itself that goes beyond what it has taken without protection – then that should be copyrightable The people who write to book suggest that makers of derivative works goes so far beyond what the original work was to grant it copyrightable and does not need permission But most people go with Posner’s interpretation (page 99 note 2) This is a perfect hypo for a law school exam You have a derivative work and if you read the way that Posner does – then the derivative work person needed protection – but you could argue that the derivative work is so far copyrightable in itself that it finds

that the copyrighted elements amount to fair use and the person does not need permission Can the derivative work gain copyright protection? The funny part is that the whole definition of derivative works includes that it is a variation of something original One of the reasons to have a higher standard of originality is that if you don’t then you’re going to have too much of a mess during trial – it will just be hard to keep track of

Note on Blocking Patents: A preparer of a derivative work has no rights in that work unless it was prepared with the copyright owner’s permission efficiency-based explanation for this rule it is necessary to avoid uncertainty as to the scope

of the copyright owner’s rights Patent system is different for allocating rights in initial inventions and subsequent patentable improvements – the secondcomer who invents a patentable improvement may apply for and receive a patent regardless of

whether the first inventor authorized the improvement The first and improver hold “blocking patents” since the improver may not practice his invention without permission from the first and the first cannot cannot practice the improvement without permission from the

improver usually a cross-licensing agreement happenso This creates efficiency since it encourages the first patentee to bargain with improvers and avoids holdout costs

COMPILATIONS

A “compilation” is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term “compilation” includes collective works. (101) “selection, coordination, arrangement” – could be “every” directory of every shoe store, or “best” directory of all the best shoe stores What about the directories that are valuable because they are complete and comprehensive? The standard of originality in Feist – does that make it hard or easy for these complete collections? it seems that something that is incomplete is easier to copyright than something comprehensive The whole becomes more than the sum of its parts the information could be uncopyrightable but the compilation of it is What happens if the selection of info is creative but the arrangement of it is not? Jane Ginsburg: usually, such claims are pretextual in fact compilations – she thinks Feist is wrong

A “collective work” is a work such, as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole

Berne Convention provides protection for collections while TRIPS provides protections for compilations Sweat of the Brow – 2nd found that it existed and 7th found that it did not which lead to Feist in the Supreme Court

Feist Publications v. Rural Telephone ServiceSupreme Court (1991)[101]

FACT COMPLIATION: TO BE COPYRIGHTABLE, A WORK MUST BE ORIGINIAL TO THE AUTHOR AND POSSESS AT LEAST SOME MINIMAL DEGREE OF CREATIVITYRural published a telephone directory (P) and Feist (D) published specialized area-wide telephone directoriesFeist approached 11 northwest Kansas telephone companies and offered to pay for the right to use their respective white page listings and Rural refused so Feist used them anyway. However, Feist listings included each individual’s street address and most of Rural’s did notRural sued and district court granted summary judgment and COA affirmed – Feist appealed

(O’CONNOR) Held: Originality as constitutional requirement Rejection of sweat of the brow the Constitution rejects this concept Low level of originality required for complications “entirely typical” “garden-variety” white pages ≠ original enough Facts are not copyrightable but compilations of facts generally are Facts meet the constitutional minimum for copyright protection if it features an original selection or arrangement Rural’s telephone directory did not have a sufficient amount of creativity to make it original thus Feist’s use of the listings cannot constitute infringement Copyright rewards originality, not effort

Roth Greeting Cards v. United Card Co.9th Cir. (1970)[106]

NON-FACT MATERIAL: WORKS SHOULD BE CONSIDERED AS WHOLES WHEN DETERMINING WHETHER THEY ARE ORIGINAL AND COPYRIGHTABLERoth (P) produces and distributes greeting cards and brought a copyright infringement action against United (D)Trial court viewed the cards in terms of their separate components considering text and artwork in isolation and found the artwork copyrightable but not infringed and the text not copyrightable

Held: The greeting cards should be viewed as a whole – artwork and text together in “total concept and feel” Of significance was the artwork and text in association with each other and viewed in this way is copyrightable as wholes and the same concept and feel captured by another would be infringementDissent: The text and artwork are separate elements and copyright protection should not extend where neither have been infringed this conclusion results in the whole becoming substantially greater than the sum of its

parts Dissent might be against protecting Roth’s profits

The other side is that Roth didn’t create “cutsie” - the public did and that is the authorships – not in Roth Is the standard for originality lower if a court finds a compilation? Is “total concept and feel” approach appropriate? Why copyrightable in Roth and non-copyrightable in Hoehling? If copyright did not protect compilations, would these works be considered copyrightable under 102(a)? If judges shouldn’t be determining what is art then does this notion of “total look and feel” violate the non-discrimination doctrine

Mason v. Montgomery Data5th Cir. (1992)[108]

COMPLIATIONS OF PICTORIAL INFORMATION GAIN ORIGINALITY SUCH AS TO ALLOW THEM TO BE COPYRIGHTED IF THE SELECTION, COORDINATION, AND ARRANGEMENT OF THE INFORMATION DEPICTED IS SUFFICIENTLY CREATIVEUsing public records, Mason (P) created and published real estate ownership maps for Montgomery County. Landata (D) purchased Mason’s map and by moving the info around and updating the info created its own maps.Mason used and district court found that Mason’s copyright was limited to the actual maps he createdMason appealed arguing that his copyright protected his idea to create the maps based on legal information and the expression of that idea in different ways

Held: The selection of info and the coordination and arrangement of that info can render a map based on public info sufficiently original as to merit copyright protection Mason’s maps were sufficiently creative to make them original complications

Darden v. Peters (4th 2007): P took US census map and added color, shading and fonts – the copyright office rejected the application for copyright and the 4th cir. agreed that it lacked a minimum level of creativity however Darden also had stated in the application that it was a derivative work that was based on a preexisting census map

WHO IS AN AUTHOR?

§ 201 Ownership of Copyright(a) Initial Ownership.— Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are coowners of copyright in the work.(b) Works Made for Hire.— In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.

Notes:

Many other countries do not recognize employers as authors and only natural persons as authors Berne, TRIPS, and WIPO Treaties refer simply to “authors” and does not specify how it is defined Conceptions of Authorship in other Countries:

o Europe – there is no such thing as copyright ownership by a corporation – it cannot have moral rightso US – much of copyrighted work is actually works for hire – a very large proportion of valuable copyright are works for hireo Developing Countries – ownership of copyright has a lot of spiritual connotations and community authorship – no conception of a sole author

When do problems arise? 1. I get someone to help me achieve what I want to do, but it’s in a medium I’m not terribly familiar with 2. I create the work pursuant to employment 3. The work is created through some kind of collaborative effort between me and some other people

o Issues

Three kinds of authorship recognized in 76 Act: Sole authorship Joint authorship Employer authorship aka “works made for hire”

o Employer is deemed to be author except if otherwise agreed in written instrumentConceptions of Authorship Europeans (continental) think about authorship as a romantic individual authorship notion, so is in contention with American view which gives authorship with economic

o Corporations cant own copyright in Europe—copyright cant vest in a coroporate owner cuz of copyright seen as the individual sole of person expressing themselves US

o Has economic component Developing countries

o No individual authorship—seen as communal

1. SOLE AUTHORSHIP

The Copyright Act does not define “author” is a definition necessary?

Lindsay v. The Wrecked and Abandoned Vessel R.M.S. TitanicS.D.N.Y (1999)[111]

AN INDIVIDUAL WHO EXERCISES A HIGH DEGREE OF CONTROL OVER A PHOTOGRAPH MAY BE CONSIDERED THE “AUTHOR” EVEN WHEN THAT INDIVIDUAL DOES NOT PHYSICALLY SHOOT THE PHOTOGRAPHLindsay (P) developed a film project to explore the Titanic using high illumination lighting equipment and created storyboards on how to shot it with different anglesLindsay then acted as the director, producer and cinematographer of the footage shotThe D’s who actually shot the footage, licensed it to the Discovery ChannelLower court denied D’s motion to dismiss and they appealedConception or Execution?

Held: An author, for copyright purposes, must show originality, conception or intellectual production and Lindsay’s storyboards, designs and specific directions for taking the images is sufficient to demonstrate control and

conception he is the author What’s necessary?

o “High degree of control”?o “The final product duplicates his conception and visions of what the film should look like”?

What if those executing the conception were given lots of discretion? The court says what is necessary is:

o a high degree of control ando the final product duplicates his conception and visions of what the film should look like.

“he did not dive to the ship and himself actually photograph the wreckage.” (p.117) Conception or execution? What if those executing the conception were given lots of discretion?

2. JOINT AUTHORSHIP

A “joint work” is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. (101) It has to be the intention at the time they created the work – can’t bring in a 12 year old author to help with the “lifetime” Inseparable – could be a translation Interdependent – could be music and lyrics What level of contribution is necessary for joint authorship?

Erickson v. Trinity Theatre, Inc.7th Cir. (1994)[113]

A PRODUCT IS A JOINT WORK ONLY IF THE COLLABROATORS CAN BE CONSIDERED AUTHORSErickson (P) a play writer and founding member of Trinity Theatre (D) wrote three plays for the company.After a fight – Trinity stopped royalty payments arguing that it was a co-author and co-owner of the copyright to the plays because various actors had made suggestions that Erickson incorporated during the development

Question is whether the theater company can keep putting on her work? Theater says yes because they are joint authors of her work.Held: Even if several person collaborate with the intention to create a work which is unitary a “joint work” arises only if all collaborators are deemed authors in the sense that each must supply something more tangible

than mere directions or ideas. Professor Goldstein’s copyrightability test which requires that each author’s contribution be copyrightable, provides a far more workable test of when joint authorship has been achieved

o People would never ask for help if it was not for this. joint authorship gives them a 50% claim to the work. By allowing each author’s contribution to be copyrightable, the correct proportion is allotted to each individual for the work they have actually created.

Trinity cannot identify any specific copyrightable contributions made by its purported authors thus it is not a joint author of the plays Notes:

o What level of contribution is necessary for joint authorship? This really is rejecting the idea of looking at the whole and seeing if it is copyrightable – they are looking to the individual contributions and find that ideas are not copyrightable and thus their

contributions cannot be found at the same level of “authorship” What should there be this high threshold?

You want everyone to put in original stuff – what is the incentive/rationale? Every time an author writes something then people who might contribute something small could jump on the author – the author would be scared to ask for help…..

But what if the author is not such a nice guy and really taking ideas from people and not giving the contributors credito Two Reasons Why this Decision is Correct:

Evidentiary problem Incentive Problem Contribution of an idea is a very ambiguous idea also necessary to figure out some sort of certainty with your contributions

What indicates intention to be joint authors?

Aalmuhammed v. Lee9th Cir. (1999)[114]

A PERSON CLAIMING TO BE A CO-OWNER OF A JOINT WORK MUST PROVE THAT BOTH PARTIES INTENDED THE WORK TO BE A JOINT WORKAalmuhammed south a declaratory judgment that he was a co-owner of the copyright in a movie and thus entitled to an accounting of the profits from the movieAalmuhammed was a consultant on Lee’s film about Malcolm X and rewrote certain portions

Held: “a creative contribution does not suffice to establish authorship of the movie” A contribution of independently copyrightable material to a work intended to be an inseparable whole does not make a joint work it had to be intended by both parties to be such Aalmuhammed had no supervisory authority over the film and signed a “work for hire” agreement – thus he was a co-author When you have so many people adding and their contributions are important then who really has the rights? The court looks to who has the final control and decision making less about what people say but who could said “Yes” and “No” A social consideration underlies limitations in the definitions of author and of joint work the ability of an author to collaborate or consult with others without the risk of losing ownership in the work favors the

progress of knowledge Indication of collaboration:

o Hours put into the work—yet is this truly indicative?o Written contract with third parties or the individual—statements made to third partieso Who has the ultimate control--

Comparing these two cases: are Erickson and Aalmuhammed simply focusing on different elements of the definition, or are they interpreting the same element differently?

Collaborative Intent: What happens in other kinds of works that are fundamentally collaborative? Like comic books? Collaboration between the inker, pencil artist, story artist Gamen v. McFarland – Posner expresses doubts that each element should be copyrightable and maybe in certain kinds of works where there is collaboration and where the relationship between the people is large

then maybe we should start out a higher level of presumption for co-authorship

THOMAS V. LARSON: dispute about “Rent” – the story wasn’t all that great so they hired a dramaturge to make it better and she wanted 10% and the author died and the estate refused to give it to her She really made the play into its success – and the play had initially bombed upon its opening The court at the time said that there is nothing as 10% because a joint author would have been 50% - so they found her only to be a dramaturge At the time that she worked on the play – the intent wasn’t to be a joint author

With these cases ou have to look at the intent of both parties and outside evidence like: Contract Co-author contributions were significant in both quality and quantity – but why should this be the standard and how discretionary is that determination? Objective evidence Subjective evidence – third parties claiming what was said to them

Davis v. Blige: 2nd Cir. 2007: [SUPP 355]: a joint owner cannot transfer his right to a copyright to a defendant who is suing the other joint owner – it would violate basic principles of tort and contract law and undermine the policies embodied by the Copyright Act

3. WORKS MAKE FOR HIRE

Economic conception of authorship1976 Act – 2 Prongs:

1. Employee work in scope of employment2. Independent contract work – but limited categories and written agreement needed

1976 reverses the ideas under the 1909 Act:

1909 = no definition of work for hire General presumption that the commissioning party was author of the work made for hire unless parties intended otherwire

Questions that arise: what is an employee? Was the work done within in the scope of employment

Commissioned Works: it is still possible for that work to be a work for hire:1. The work would have to fit within one of the 9 categories – see page 119

What consequences of work for hire finding? Different term – length of the copyright Different renewal parties Not subject to termination provisions

9 Categories – they look mostly like functional works

Most commissioning parties will not be the owner for the work for hire so they are going to ask for a share of profits – assigning rights

Should go back and read the notes from this section?

A. WHO IS AN EMPLOYEE?

Community for Creative Non-Violence v. ReidSupreme Court (1989)[119]

UNDER COMMON-LAW AGENCY PRINCIPLES, ONE WHO CREATES AN ARTWORK AT THE BEHEST OF ANOTHER RETAINS THE COPYRIGHT, UNLESS HE WAS AN EMPLOYEE OF THAT OTHERCCNV (P) nonprofit commissioned Reid (D) to create a sculpture and Reid copyrighted the work

Held: The classification of a particular hired party should be made with reference to agency law Reid was not an employee looked to the common law of agency to determine that in light of various factors (direction over work, skill level, source of tools, location, right to assign additional projects, benefits, tax

treatment) Reid was not an employee It can’t be a work for hire since it doesn’t fall under one of the categories of the 1976 Act Sct trying to determine whether or not any independent contractor works can be considered works for hire under the statute… the four options in the cases from dif jurisdictions – one says if the person paying for the

work has the right to control even if she doesn’t control, then she has ownership rights to it. Other juris. Say the right to control isn’t enough… only if there was actual control. Question: how broadly or narrowly should works for hire be interpreted? 4 options in cases below:

o Supreme Court: “the classification of a particular hired party should be made with reference to agency law”o Revelant agency factors that court looks at: hiring party’s right to control; skill required; source of tools, location; duration of relationship, right to assign additional projects; extent of hired party’s

discretion; method of payment; right to hire assistants; provision of employee benefits; tax treatment of hired party; etc.o Looks at Restatement Third of Agency

Restatement Third of Agency doesn’t mention the factors

Aymes v. Bonelli2nd Cir. (1992)[129]

ALTHOUGH NO ONE FACTOR IS DISPOSITIVE, THE LACK OF BENEFITS EXTENDED TO AN INDIVIDUAL OR THE FAILURE TO PAY TAXES ON AN INDIVIDUAL’S BEHALF IS INDICATIVE OF INDEPENDENT CONTRACTOR STATUSAymes (P) had been hired by Bonelli (D) to create computer programs for D’s swimming pool business – D never paid any of P’s payroll taxes so it looked like he was an independent contractor

Held: No one factor is dispositive to indicate whether an employee is an independent contractor or a standard employee—“no direction concerning how the factors were to be weighed” “It does not necessarily follow that because no one factor is dispositive, all factors are equally important” Here Bonelli was an independent contractor CCNV provided “no direction concerning how the factors were to be weighted” All factors are not of equal weight

Five Factors:o The hiring party’s right to control the manner and means of creationo The skill requiredo Provision of employee benefitso Tax treatment of the hired partyo Whether the hiring party has the right to assign additional projects to the hired party

This court considers provision of employee benefits and tax treatment of the hired party as the most important—does this interpretation undermine the supreme court’s approach in CCNC or not? Does the approach in Aymes further Reid’s goals of predictability and certainty more than Reid’s approach itself? Is the Aymes Court’s emphasis on employee benefits and tax treatment factors sensible? In all industries? What is it that establishes employeeness – but the representations to the gov’t that the employer makes – like with tax treatment Seems to be reducing the focal significance of tax benefits and benefits seems to be putting it more in the direction of formal salary employees this case is friendlier to the independent contractor

Aymes v. Bonelli2nd Cir. (1992)[124]

ALTHOUGH NO ONE FACTOR IS DISPOSITIVE, THE LACK OF BENEFITS EXTENDED TO AN INDIVIDUAL OR THE FAILURE TO PAY TAXES ON AN INDIVIDUAL’S BEHALF IS INDICATIVE OF INDEPENDENT CONTRACTOR STATUSAymes (P) had been hired by Bonelli (D) to create computer programs for D’s swimming pool business – D never paid any of P’s payroll taxes so it looked like he was an independent contractor

Held: No one factor is dispositive to indicate whether an employee is an independent contractor or a standard employee Here Bonelli was an independent contractor CCNV provided “no direction concerning how the factors were to be weighted” All factors are not of equal weight Five Factors:

o The hiring party’s right to control the manner and means of creationo The skill requiredo Provision of employee benefitso Tax treatment of the hired partyo Whether the hiring party has the right to assign additional projects to the hired party

What is it that establishes employeeness – but the representations to the gov’t that the employer makes – like with tax treatment Seems to be reducing the focal significance of tax benefits and benefits seems to be putting it more in the direction of formal salary employees this case is friendlier to the independent contractor

B. WHAT IS THE SCOPE OF EMPLOYMENT?Roeslin v. District of Columbia (p. 132) Restatement §228:

o 1. Is conduct of the kind the employee is employed to performo 2. Does it occur substantially within the authorized time and space limitso 3. Is it actuated, at least in part by a purpose to serve the master?

Why is #3 in copyright law but not trade secret law? Note subjectivity of standard—based on plaintiff’s testimony

Constitutional Statuso Is work for hire notion constitutional?

Is “romantic authorship” required by the constitution?

Avtec Systems, Inc. v. Peiffer4th Cir. (1994)[127]

COPYRIGHT OWNERSHIP DOES NOT VEST AUTOMATICALLY WITH AN EMPLOYER MERELY BECAUSE THE SUBJECT MATTER OF AN EMPLOYEE’S WORK IS OF THE TYPE DONE BY THAT EMPLOYEE IN THE SCOPE OF HIS OR HER EMPLOYMENTPeiffer (D) developed a computer program while employed by Avtec systems and was sued for copyright infringement and counterclaimedD worked on an updated version of the computer program at home and sold the license to market it to another company

Held: The burden is on the employer to show that the work was created to further a corporate goal – here the focus should be on the ownership of the copyright in the original work and not on the updated version The court wasn’t convinced that Peiffer worked on the program to further corporate goals and instead was done as a personal hobby Restatement 228:

1. Is conduct of the kind the employee is employed to perform2. Does it occur substantially within the authorized time and space limits

3. Is it actuated, at least in part, by a purpose to serve the master? Why in trade secret law does #3 not matter?

Note on Employer Ownership of Trade Secrets

Trade Secrets does not look to the intent of the creation thus an employee could end up owning the copyright to something that the employer owns the trade secret

Note on Teacher Exception

Read page 131

C. SECTION 101(2) AND SPECIALLY ORDERED OR COMMISSIONED WORKS

Read page 132

Note on the Mechanics of 101(2) Agreements

4. U.S. GOVERNMENT WORKS

§ 105. Subject matter of copyright: United States Government worksCopyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.

Notes:

What constitutes government work?o Court opinions, federal laws and regulations, official photographs from NASA, etc. any works the fed govt comes up with EXCEPT for stamps.

Read page 134

Note on the Freedom of Information Act (FOIA) and Copyright

ACQUIRING, KEEPING, AND TRANSFERRING COPYRIGHT – NOT TESTED!!!!!!!!!

FORMALITIES

Copyright Act of 1790:

AN OVERVIEW

Formalitieso Publicationso Noticeo Registration

o Deposit1/1/78 – 1976 Copyright Act3/1/89 – Berne Convention Implementation Act

o States that there can be no formalitieso For foreign works no formalitieso Created incentives for formalities in the US

Pre-1976 – 1976 Formalitieso For works created and published before 1978o Whether a work is “published” can be tricky

General Publication Limited Publication

Key to US Law since 1790s designed for certainty and efficiency, but also to keep rich public domain with burden on copyright owners to police rights Some relaxation on formalities under 1976 Act ways to cure failures of notice under 405 – diminished role of publication Further Impetus Berne Convention specifically prohibits formalities US had to reform its approach in order to join Bern Convention in 1989 Berne Convention Implementation Act (BCIA):

o Hybrid incentives – “carrot rather than stick” approach to formalitieso Some distinctions between US and other Berne country works

BCIA – has really shifted the balance between public domain and formal copyright law – this actually takes a lot of works out of the public domain and places burdens on the public to determine if a work is still under copyright in order to use it

o Often the transaction cost of trying to find if a work is useable is very high and it might even have a higher cost to actually use public works

WHAT IS PUBLICATION?

Estate of Martin Luther King, Jr. v. CBS, Inc.11th Cir. (1999)[144]

THE RELEASE OF A SPEECH TO THE NEWS MEDIA FOR COVERAGE OF A NEWSWORTH EVENT IS A LIMITED PUBLICATION UNDER THE COPYRIGHT ACT OF 1909 AND DOES NOT DESTROY COMMON-LAW COPYRIGHT PROTECTIONKing (P) brought suit for copyright infringement against CBS (D) for airing a documentary that featured his famous speech without permission from the estateDistrict court granted summary judgment in favor of CBS holding that wide and unlimited reproduction and dissemination of the speech was general publication and that put it in the public domain

Held: General Publication only happens:

o Where tangible copies of the work are distributed to the public in a way that allows the public to exercise control over the worko Where the work is exhibited in a way that permits unrestricted copying by the public

The mere performance of a speech is not a general publication

NOTICE OF COPYRIGHT

Prior to 1976 Act – the notice had to be on the work and had to be © or “Copyright” otherwise it wouldn’t be statutorily protected No longer required after March 1, 1989 Still a good idea

o With notice, the innocent infringement defense is no longer availableo Promotes protection in non-Berne countrieso Helps availability of full damages

Doesn’t save works published without notice between 1/1/1978 and 3/1/1989

DEPOSIT REQUIREMENTS

1976 Act – 2 copies

REGISTRATION

Optional under the 1976 Acto But US and non-Berne works must be registered in order to bring suit – 411o Other incentives: preservation of © under 405 when no notice; protection of actual owner when wrong name on notice under 406; regis. As prima facie proof of validity; statutory damages and attorney’s

fees Under 1909 Act, had to register in order to file for renewal Benefits to Registration

o Timely registration has evidentiary benefits – see 410 Timely = within five years of first publication

o Timely registration is required for certain remedies (statutory damages and atty. Fees ) 412

RESTORATION OF COPYRIGHT PROTECTION FOR CERTAIN WORKS OF FOREIGN AUTHORS – NOT TESTED!

Works of Berne and WTO members Lost US protection due to failure to comply with formalities Restored protection as of 1/1/1996 (for works of most countries) Must still be subject to protection in country of origin Provisions for “reliance parties” business built on the public works Why?

o If these works were thrust out of copyright because of formalities and now that we don’t impose that anymore then they are entitled to be restoredo They did mandate that the country of origin had to recognize the copyright – US wasn’t going to grant more than the original country would

DURATION

THE BASICS OF DURATION

All copyright durations run until the end of the year (305) The Safe Year for Published Works 1922 Unpublished works have different rules, even if prior to 1922 Works from 1935 are still eligible for protection 1935+95=2030 (renewals must have been filed to obtain full protection) Works from 1964 on (so long as subject to protection on 1/1/78) are still eligible for protection 1964 + 95 = 2059 (no renewals need to be filed) Works from 1/1/78 covered by “new” durations

WORKS CREATED BUT UNPUBLISHED PRIOR TO WORKS FIRST PUBLISHED BEFORE WORKS CREATED ON OR AFTER

JANUARY 1, 1978 JANUARY 1, 1978 JANUARY 1, 1978 Life of author +70 years Copyright will last at least until 12/31/2002

o If published prior to 12/31/2002 then copyright until 12/31/2047

o 2002 was added to forestall due process arguments that could arise if works could go from perpetual protection to the public domain without any transition

o 2047 was added to incentivize publication

Publication with proper notice = 28 years Renewal in the final year = 28 years + 19 extension + 20 extension =

67 years total at renewal Total = 95 years (28+28+19+20) Works published prior to the 1923 are in the public domain Works published prior to 1964 the renewal certificate is required 1964 – renewal is automatic If in public domain: remains in public domain unless restored under

TRIPS 1962 – Congress passed “stop-gap” measures to ensure that works

in renewal terms that were scheduled to expire…. Benefits to filing for renewal in last year of first term despite

automatic renewal legislation?o Renewal certificate = prima facie evidence of

validity/factso Availability of statutory damages and attorney’s feeso Derivative works prepared under prior grant can

continue to be used without new permissions (partial legislative end-run around Stewart v. Abend)

Single Author: Life of the author +70 years Joint Authors (not for hire): Life of last surviving author +70 years Anonymous, Pseudonymous, WMFH: 120 years from the year of

creation or 95 from the year of publication – whichever expires first

Problem – when did or does copyright expire in a work first published in 2000? Was it created prior to 1/1/78?

o No – life plus 70o Yes – need to know when the author died and add 70 earso But at least 12/31/2047

Unless it a work for hire, anonymous work or pseudonymous work

Look at paper that I scanned and she handed out – also need to look at the sections

THE POLICY BEHIND COPYRIGHT DURATION

Think about the policy implications – how long should copyright protection last?Netinal – Copyright Law Article – thinking about incentive for copyright – Courts start using a definition of incentive from the Chicago school – what incentivizes you is not what you are going to get paid that year – it is the entire market value of the work – objective concept that doesn’t just look at the value at this moment but includes all the works that that but for your work wouldn’t have been created if you are using this concept then isn’t the artist’s incentive much larger – marker v. economics base – key to the debate

Eldred v. AshcroftSupreme Court (2003)[159]

CONGRESS HAS THE AUTHORITY TO ENACT LEGISLATION THAT EXTENDS COYPRIGHT TERMS FOR BOTH EXISTING AND FUTURE COPYRIGHTSEldred (P) builds off of copyrighted works after they go into the public domain and sued Ashcroft (D) contending that the provisions of the CTEA violated the ConstitutionEldred – represented by Lessig: 1) unconstitutional under the “term limits” of the copyright clause and 2) unconstitutional with the 1st Amendment

(GINSBURG) Held: Court used the rational basis standard of review most differential to Congress ignored the bad smell of why Congress chose this action “Limited Times:” The provisions of the CTEA does NOT violate the Constitution’s limited times prescription because the text of the Constitution as well as history and precedent allow for such an extension and CTEA

is a rational exercise of legislative authorityo It is up to Congress and not the Courts to decide how best to pursue Copyright objectives and there was a rational basis for the conclusion that CTEA promotes the Progress of Scienceo Arguments:

Lessig: why is it inducement to just extend the copyright protection term isn’t Congress going to pull this trick again in 20 years? 1st Amendment: CTEA which extends the terms for both existing and future copyrights, does not violate the 1st Amendment because strict scrutiny should not be applied

o Copyright clause already incorporates its own speech-protective safeguards

o Arguments: Nimmer’s: expressive views are incorporated into the Act fair use/functional-nonfunctional works

(STEVENS) Dissent: Just because Congress has used its authority to enact the 1790 Copyright Act doesn’t mean that it has the right to extend pre-existing federal protections retroactively(BREYER) Dissent: The CTEA’s significant benefits are private – not public and threatens to undermine the expressive values which the Copyright Clause embodies

Notes: If a court starts looking at fair use – then use this case as a way to point out the 1st Amendment allowance for the Act and reasons in support

RENEWALS AND TERMINATIONS OF TRANSFERS

Not going to test on the technical stuff

1. RENEWALS

Will remain part of our system until 2072

Justifications for Renewal Approach in 1909 Act:o Renegotiation right: 2nd bite at apple if work turns out to be a successo Why special status for authors rather than other property owners?o Compare with work for hire provisions where Congress seems less concerned about protecting creators from the consequences of bad bargainso Nimmer says that people don’t value intellectual property in advance – so that is why this renewal approach was createdo Should the author have to be stuck with the contract they entered into for the renewal right? So, Congress granted the opportunity to renegotiate that renewal

Why is renewal relevant to the 1976 Act?o Because of Congressional concerns over reliance interests – pre-1976 workso Renewal scheme from 1909 Act applies to pre-76 workso Termination of transfers scheme applies to later works

Two basic questions at issue in renewals and terminations of transfers:o Should authors and/or their heirs be given any rights to recapture a copyright once it has been granted to someone elseo If such recapture is to be allowed, how should the law treat derivative works created by the grantee before recapture?

Stewart v. AbendSupreme Court (1990)[170]

THE OWNER OF THE COPYRIGHT OF A DERIVATIVE WORK INFRINGES THE COPYRIGHT OF THE UNDERLYING, PREEXISTING WORK ON WHICH THE DERIVATIVE WORK IS BASED IF HE CONTINUES TO USE THE DERIVATIVE WORK ONCE HIS GRANT OF RIGHTS IN THE PREEXISTING WORK HAS LAPSEDWoolrich wrote a story “it had to be murder” and assigns the movie rights to a production company and died before he could file for renewalProduction company assigned its rights to Stewart (D) who made the movie “rear window”

Held: Even though the makers of the movie had obtained authorization form the author to make and exploit a derivative work and distribute copies That authorization expired at the end of the first term of copyright, because the author died before the renewal term began During a first term of copyright – an author can enter into an agreement to assign those renewal rights – this usually happens because they don’t have much in a way of bargaining power in the beginning THIS IS NOT ON THE SIDE OF AUTHORIAL INETNT

So – should you be looking at the author’s intent or should these renewal provisions be cookie-cutter?

Renewal Example: Author writes novel in 1975, assigns “all of my copyright interest” to P in 1976, P publishes book in 1976, P secures copyright registration in 1976, and in 2004 both A and P claim renewal copyright A owns

Renewal term rationale v. theory of derivative rights Stewart v. Abend illustrates the conflict between the renewal term rationale and the statutory support for derivative works

What happens when most of the value of the work is due to the derivative “new matter”? Why should original author get to renegotiate?

2. TERMINATION OF TRANSFERS

1976 Act’s Alternative to Renewal: Recapture Right Two kinds of termination rights and the dividing line is the date of the transfer

TERMINATION OF TRANSFERS MADE AFTER JANUARY 1, 1978

§203

TERMINATIONS OF TRANSFERS MADE BEFORE JANUARY 1, 1978

§ 304 (C) & (D) Just an alternative to the renewal system to give the author an opportunity to

negotiate the transfer Which grants are eligible?

o Transfers made on or after 1/1/78 Who Can Terminate and When

o Author, widow, children (lineal descendants per stripes), executorso Maybe be exercised in a 5 year window beginning at the end of the 35

years from the date of execution of the grant Except if the grant is a first publication grant – then 35

years after publication or 40 years after grant whichever is EARLIER

Notice must be served not less that 2 or more than 10 years prior to the date of termination

Policyo A nontransferable right to terminate 35 years after a grant was madeo Executed by the author at any time during the unitary term

You’re talking about works that were in their previous renewal term and Congress needs to find a way to give them the additional 19 years that it took to negotiate the statute

Which grants are eligible?o Transfers made before 1/1/78o Really about recapturing the extra 39 (19+20) years added in 1976

and 1998 Policy

o Provides author

What about derivative works? Prepared under authority before termination – continue to utilize under terms of grant

MECHANICS OF TRANSFERS

1. EXPRESS V. IMPLIED TRANSFERS

§ 204 Execution of Transfers and Other Documents(a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent.

(b) A certificate of acknowledgment is not required for the validity of a transfer, but is prima facie evidence of the execution of the transfer if —

(1) in the case of a transfer executed in the United States, the certificate is issued by a person authorized to administer oaths within the United States; or

(2) in the case of a transfer executed in a foreign country, the certificate is issued by a diplomatic or consular officer of the United States, or by a person authorized to administer oaths whose authority is proved by a certificate of such an officer.

Notes:

Key Question: how to deal with new technology that is not specified in the terms of grant

Effects Associates, Inc. v. Cohen9th Cir. (1990)[183]

THE TRANSFER OF COPYRIGHT OWNERSHIP MUST BE IN WRITING IN ORDER TO BE VALIDSpecial effects for movie and right to use

Held: Court held that Effect’s conduct constituted a non-exclusive license – an implied license to use the footage and distribute

2. OLD LANGUAGE AND “NEW USES”

Boosey & Hawkes Music Publishers v. Walt Disney Co.2nd Cir. (1998)[189]

WHERE THE LANGUAGE OF A LICENSE IS BROAD ENOUGH TO INCLUDE A NEW USE, THE LICENSE WILL COVER THAT NEW MEDIUM, UNLESS SPECIFICALLY EXCLUDED BY THE GRANTORRite of spring and Fantasia – argued over video release since the license only covered motion pictures

Held: a plain reading of the contract could mean that motion picture also included a video format new technology the nature of which would reasonably fall within the scope of the medium for which the license was originally granted

Which Interpretation of Grants is Better? A strict approach which generally favors the licensor and limits the media use to the literal terms of the agreement OR An approach

Random House v. Rosetta BooksSDNY (2001)[192]

A PUBLISHER’S EXCLUSIVE LICENSE TO PRINT, PUBLISH, AN SELL AN AUTHOR’S WORK “IN BOOK FORM” DOES NOT EXTEND TO EBOOKSAuthors granted license to publish and sell works in book form to Random House and then Rosetta Books licensed with the same authors to release in ebook form

Held: in book form does not extend to ebooksNote on Open Source and Creative Commons [198]New York Times Company v. TasiniSupreme Court (2001)[200]

ELECTRONIC AND CD DATABASES CONTAINING INDIVIDUAL ARTICLES FROM MULTIPLE EDITIONS OF PERIODICALS ARE NOT REPORDUCED AND DISTRIBUTED AS PART OF REVISIONS OF INDIVIDUAL PERIODICAL ISSUES FROM WHICH THE ARTICLES WERE TAKEN, HENCE PUBLISHERS OF PERIODICALS MAY NOT RELICENSE INDIVUDIAL ARTICLES TO DATABASES UNDER THE COPYRIGHT ACT SECTION GOVERNING COLLECTIVE WORKS, ABSENT A TRANSFER OF COPYRIGHT FROM AUTHORS OF THE INDIVUDAL ARTICLES

PROTECTED WORKS AND BOUNDARY PROBLEMS

§ 102 Subject Matter of Copyright: In General(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

(1) literary works;(2) musical works, including any accompanying words;(3) dramatic works, including any accompanying music;(4) pantomimes and choreographic works;(5) pictorial, graphic, and sculptural works;(6) motion pictures and other audiovisual works;(7) sound recordings; and(8) architectural works.

Notes:

(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

Patent is a higher standard to obtain can use Copyright to get a “back-door” patent

USEFUL ARTICLES WITH PICTORIAL, GRAPHIC, OR SCULPTURAL ASPECTS

102: Pictorial, graphic or sculptural work generally copyrightable if they satisfy low threshold of originalityHow can we identify something as a useful work?EXCLUSION for useful articles: below…

101/113: useful articles not copyrightable BUT101: separable elements of the useful article can be copyrightable if they meet the standard (those elements that are pictorial, graphic or sculptural) yet statute doesn’t tell how to determine which characters are separable—left up to case law. Aka: boundary between uncopyrightable works of industrial design AND copyrightable works of applied art.

Why?—congressional concern about monopoly pricing of consumer products. Consumer products would become extremely expensive and copyright should not be used as a tool to do this.

If the pictorial, graphic, or sculptural aspects are “separable” from the useful part of the article then they can be copyrightedPGS WORK?Questions:

1. Is the work a useful article? the Copyright Office has changed its definition of what constitutes usefulness a. OLD: If a works sole function is utilitarian then it would be considered utilitarian can argue that a chair has more functions than just utilityb. NEW: does the article have an intrinsic utilitarian function so long as you can find that a work has an intrinsic function then you are going down the useful article part of the actc. What is the consequence of the Copyright Office change in the definition? Narrows the scope of what you can find copyrightable

2. If Yes, then PGS Separability3. If No, then traditional copyright analysis

PGS WORK? If no:

o Apply originality and fixation requirements as usual for particular subject matter If yes

o Question1: is it a useful article? Shift in copyright office regs from an article with a “sole” utilitarian function to an article with “a” utilitarian function

This expands the copyrightability ex. what about crushed rock bikini?—reference to aqua tint #5—sculpture looked like a bikini, work by someone on an album cover and creator of work said copyright violation! And the court said

its actually not a useful article because you couldn’t wear it without unintended exposure ex. what about toys? Should toys be considered useful works? Or is the little itty bitty railroad just an artistic representation of a useful article? Not really ex. nose mask that people wear for Halloween? Is this useful? Ex. taxidermy form? Without the form, the animal would just be skin flab

o Question 2: if yes apply separability analysis

Congress wants to ensure that useful objects are not hindered by copyrightability – and don’t want extra costs added to the manufacture of these products

BIG ISSUES: Why have a useful article doctrine at all? If people could copyright ex. toaster design, wouldn’t we get more attractive toasters?

o Can you make distinction between industrial design and works of applied art? Is it meaningful to talk about protected applied art and unprotected industrial design and can you make that distinction and still be faithful to Bleistein? How do we avoid using copyright law to get a backdoor patent?

What about taxidermy – the statute says that something that portrays the item that it represents is not useful 2nd Cir. thinks that the fish forms are copyrightable – because it is suppose to represent the item that it is representing

Courts are finding that toys are not utilitarian works

1. “KITSCH” OR “PROGRESS”

Mazer v. SteinSupreme Court (1954)[212]

AN ARTICLE HAVING A UTILITARIAN APPLICATION MAY BE COPYRIGHTEDStatue was used as a base for table lampsStein owned the copyright and Mazer began producing the statues for mass use in the table lampsDistrict Court found infringement and awarded damages and enjoined further infringementCOA affirmed the DC

Held: A subsequent utilization of a work of art in an article of manufacture in no way affects the right of the copyright owner to be protected against infringement of a work of art itself It can still be a copyrightable work even if it has useful aspects(Concurrence): concerned about the amount of things that could still be considered for copyrightability

This was prior to the 1976 where the “intrinsic utility function” was adopted

2. DEFINING USEFUL ARTICLES AND DETERMINING SEPARABILITY

Useful Article – an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information (101)

Big Issues: Why have a useful articles doctrine at all? If people could copyright, e.g. toaster design, wouldn’t we get more attractive toasters? Is it meaningful to talk about protected applied art and unprotected industrial design, and can you make that distinction and still be faithful to Bleistein? How do we avoid using copyright law to get a backdoor patent?

Separability: Physical there is an argument for the idea that this is arbitrary – can’t determine between different kinds of art and what actually determines the separability – glue v. screw

o Mazer Case - lamp Conceptual

o Primary Aesthetic Appealo In inextricably Intertwined this Function this is very narrowo Temporal displacemento Works and they artist

What is the way/test for looking at this issue: (look at questions on page 224) did the creator make decisions for functional reasons or aesthetic reasons (Brandir) how are the consumers looking at the work (Kieselstein) how does the average human being see if the functionality takes a back seat to the upfront aesthetic of the work which one do you see first? (Dissent in Barnhart)

Kieselstein-Cord v. Accessories by Pearl2nd Cir. (1980)[215]

USEFUL ARTICLES ARE COPYRIGHTABLE ONLY TO THE EXTENT THAT THEIR DESIGNS INCORPORATE ARTISTIC FEATURES THAT CAN BE IDENTIFIED SEPARATELY FROM THE FUNCTIONAL ELEMENTS OF THE ARTICLESKieselstein-Cord sued Accessories for copyright infringement on a belt buckle designP’s had copyrights for two belt buckles and they were accepted by the Met for its permanent collectionPearl argued that buckles were “useful articles” with no pictorial, graphic or sculptural features that can be identified separately from and are capable of being used independently of the utilitarian aspects

Held: The separability may occur either physically or conceptually The belt buckles have conceptually separable sculptural elements from their subsidiary utilitarian function They are copyrightable Part of the discussion looks towards what the consumers are doing with the work(Dissent): The form of the buckles is inseparable from their function

Carol Barnhart Inc. v. Economy Cover Corp2nd Cir. (1985)[218]

AN ARTICLE WITH ORNAMENTAL FEATURES INSEPARABLE FROM ITS FUNCTIONAL FEATURES IS NOT COPYRIGHTABLEBarnhart (P) began marketing certain distinctive mannequins for sale to clothing retails and Economy (D) began selling duplicatesBarnhart (P) applied for copyright and then sued for infringementDistrict Court held that the ornamental qualities were in separable from their function and therefore uncopyrightable

Held: The features claimed to be aesthetic or artists are inextricably intertwined with the utilitarian feature to display clothes(Dissent) Looking at it conceptually the features are copyrightable – you could admire the ornamental features without contemplating the function of the mannequins so those features should be copyrightable

Brandir International Inc v. Cascade Pacific Lumber Co.2nd Cir. (1987)[221]

CREATOR/WORK ORIENTED TEST – IF THE DESIGN ELEMENTS OF A WORK ARE PREDOMINANTLY FUNCTIONAL CONSIDERATIONS THAT TRUMP THE ARTISTIC ELEMENTS OF THE WORK , THE WORK IS NOT COPYRIGHTABLEBrandir (P) designed a bicycle rack made of metal tubing – had been designed from sculptures and adapted to serve as functional bike racksCascade (D) copied the designCopyright office denied registration to BrandirDistrict Court agreed

Held: Under the test of Denicola, if the design elements of a work reflect a merger of aesthetic and functional considerations, the artistic elements are not separable and thus the work is not copyrightable(Dissent) The true focus should be on whether the work is perceived as being artistic or merely functional, not on the development process behind the product

3. NEW PARADIGMS?

Note on Design Patents Alternative for copyright of designs You’ll realize that these are a real problem

o they take a long time to get and are expensive (need lawyers) o you can lose them if there is more function than designo they don’t need to have protection for so long since design changes so quickly

Note on Trade Dress Protection limitations

Note on Industrial Design Protection in the EU

Note on Industrial Design Protection Efforts in the US

special protection for semiconductor chips special protection for vessel hulls on ships

J.H. Reichman, Legal Hybrids Between the Patent and Copyright Paradigms bootleg records protection doesn’t have a limitation in time

COMPUTER SOFTWARE

1. TEXT OR MACHINE? Useful work or literary work?

o Early on, not clearly protected. CONTU characterizes as “writing” First generation issues: literal copying of object code (Apple v. Franklin) Second generation issues: non-literal copying—copying of program struction (Cav. Altai, Sofitel v. Dragon Medical, Lotus v. Borland) Is copyright the right rubric for protection?

Apple Computer, Inc. v. Franklin Computer Corp2nd Cir. (1984)[238]

THERE IS NO MERIT TO THE CONTENTION THAT COMPUTER OPERATING SYSTEM PROGRAMS, AS DISTINGUISHED FROM APPLICATION PROGRAMS, ARE PER SE NOT COPYRIGHTABLEFranklin (D) infringed copyrights Apple (P) held on 14 computer programsFranklin argues that the computer operating system programs are distinguished from application programs as process, systems or method of operationDistrict Court thinks that an operating system is part of a machine

Held: There is nothing to suggest that computer operating systems are not copyrightable – Apple just copyrighted the instructions themselves Franklin argues that object code cannot be a literary work if the language only communicates to the computer and not a human 1. Object code copyrightable 2. Operating system programs are not uncopyrightable processes 3. No merger of idea and expression because of need for 100% compatibility. Discussion:

o Differences between Object and Source code Object Code is read by the CPU – set of instructions for the machine Source Code is the translator between the object code the CPU is reading and what the user sees on the screen

o Differences between operating programs and application programs Operating systems are not considered a process because they are basically instructions and that could be written in a manual thus there is no reason to give operating systems less protection

than instructionso Merger Concept

Even if there is only one way to write the code then it still isn’t going to be merged because Apple wants 100% compatibility and it should have known that some parts of the code would have been copied

This established computer concepts in copyright

Copyrightability of a Computer Program Expressed in Object Code

Copyrightability of Computer Operating System Programs

1. “Process”, “System” or “Method of Operation”2. Idea/Expression Dichotomy

2. DISTINGUISHING IDEA FROM EXPRESSION IN SOFTWARE

What happens when you copy more than just lines of code and it includes the look and feel of the program

Computer Associates International, Inc. v. Altai, Inc.2nd Cir. (1992)[243]

TO WARRANT A FINDING OF COPYRIGHT INFRINGEMENT, TO PROTECTABLE, NONLITERAL ELEMENTS OF ONE COMPUTER PROGRAM MUST BE SUBSTANTIALLY SIMILAR TO THOSE SAME ELEMENTS IN THE SECOND PROGRAMCA designed a job scheduling program with a sub-program entitled “Adapter” and Altai made its own called “Oscar”Altai conceded liability for copying the first version of Oscar – but it has rewritten Oscar so that the literal elements were not long substantially similar

Issue: whether and to what extent the “non literal” aspects of a computer program are protected by copyright?

Held: Literal elements of computer programs – their source and object codes – are subject to copyright protection Altai made sure that the literal parts of Oscar were not substantially similar to CA’s Adapter Three Step Procedure used by the District Court to determine whether the nonliteral elements of two or more computer programs are substantially similar:

o Abstraction – retrace and map in opposite order the steps the programmer tooko Filtration – take out the elements dictated by external factors and moves taken for efficiency or taken from public domaino Comparison – was there any copying and assessment of the copied portions relative importance with respect to the overall program

Noteso Filtering makes it harder for a Plaintiff to win because it takes out elements that are probably copiedo Those elements of computer programs that are necessarily incidental to its function are unprotectable

How to define? Whelan approach: “purpose” = idea and everything else= expression Yet, this case rejects this interpretation

o Policy conclusions: 1. Extent of protection for non literal program structure is not clear 2. Copyright isn’t “ideally suited” to deal with software

o Substantial similarity test for computer program structures: Abstraction, Filtration, Comparison 1. Dissecting program for abstractions 2. Successive filtration to remove elements dictated by efficiency, elements dictated by external factors, and elements taken from the public domain. 3. Comparison

Is overprotecting software going to lead to inefficient non-standardization. Are we going to lose all of the social effects of standardized communication tools that will enable everyone to be collaboratively brilliant?o Yet programs won’t get written at all without the financial incentive

Softel, Inc. v. Dragon Medical and Scientific Communications, Inc.2nd Cir. (1997)[251]

SIMILARITY OF COMPUTER PROGRAMS CAN CONSTITUTE COPYRIGHT INFRINGMENTSoftel provided imaging software to Dragon and when it was done it tried to erase all the software from Dragon’s system but it couldn’t remove everything

Held: A compilation of non-protectable elements can enjoy copyright protection – examining the individual elements, Softel’s copyright could have been infringed, but Dragon’s compilations could be protected

Lotus Development Corp. v. Borland International Inc.1st Cir. and aff’d by Supreme Court (1995 - 1996)[255]

A COMPUTER MENU COMMAND HIERARCHY IS NOT COPYRIGHTABLE SUBJECT MATTERLotus made its spreadsheet program along with its menu functions and Borland made its own spreadsheet program with the same menu commandsNone of the software was copied just the menu hierarchy and names and macros

Held: A menu command hierarchy is an uncopyrightable “method of operation” as that term is used in 102(b) Concurrence: why should Lotus have a captive audience – people should be able to use the same macros they have already learned on a new program

o Lotus is trying to maintain the monopoly of the market and it doesn’t deserve to have that monopoly because it was the people that developed these macros and learned them

o Lotus is trying to engage in an anti-trust violation If the court would have come out the other way, Borland’s program would have failed because no one wants to take time to learn something new or to re-write the macros. Shouldn’t Lotus get something if it has created an incredibly elegant, easy to use spreadsheet program that hasn’t Majority: menu command hierarchy = uncopyrightable method of operation Boudin concurrence: policy argument Alternative approaches:

o Software patento Trade secret

Altai test applied in Lotus would keep the same holding

3. NEW PARADIGMS? SKIM

Note on Patent Protection for Software There is a move towards considering the patentability of software but the EU doesn’t recognize it

Note on Trade Secret Protection for Software

Note on EU Software Directive

ARCHITECTURAL WORKS – NOT TESTED!!!!

Why are buildings treated so differently from designed toasters?What is a building?

CHARACTERS

There is nothing in the statute that says characters should be copyrightableCharacters now extremely valuable

How to define copyrightability in characters?o “story being told” test?

the great writer (Daschell Hammit) writes the story of the Maltese Falcon does the character constitute the story being told rather than only a chessman in the story.

Sells story to Warner Brothers and WB doesn’t hire him to write the rest of the stories… so needs money and keeps writing stories involving the character—WB sues him saying he sold them the rights to the character

“the characters of the authors imagination always fall into limited patterns… conceivable that character constitutes the story being told, but if only a chessman, not copyrightable.”

o “fully specified” test? What is the level of specificity of delineation test, what kind of medium does that lend itself to?

How long does copyright in character last?

1. EXPRESSION OR IDEA?

Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co.C.D. CA (1995)[280]

A MOVIE CHARACTER CAN BE COPYRIGHTABLE WHERE HE HAS SPECIFIC CHARACTER TRAITS THAT ARE DEVELOPED THROUGH A SERIES OF FILMSHonda made a commercial that had a character in it similar to James Bond

Held: STORY BEING TOLD TEST: Movie Character can be copyrighted in certain circumstances:

o Where the character represents the story actually being told in the film and not merely a “chessman” in that storyo Where the character is graphically depictedo Where the character is especially distinctive

Discusses the Sam Spade case from the Maltese Falcon found that Sam Spade was not copyrightable because he did not constitute “the story being told” Notes:

o Literary characters v. visually depicted characters? Photographic v. graphical visual depictions

o What happens when characters change? does the character transcend the actor? can the character grow and change into different directions Why does this matter? Isn’t just a choice between two tests that doesn’t involve this question? So you could be “fully specified” if you used the actor’s characteristics or the character’s characteristics

o Duration of protection for characters?o Is this a trademark issue area?

Titan Sports, Inc. v. Turner Broadcasting Systems, Inc.D. Conn. (1997)[284]

THE OWNER OF A COPYRIGHT IN WORKS EMBODYING A CHARACTER CAN OBTAIN A COPYRIGHT IN THE CHARACTER ITSELF IF THE CHARACTER IS SPECIFICALLY DELINEATED IN THE WORK AND IS SUFFICIENTLY UNIQUETitan promotes the WWF and Turner owns the WCWTwo former WCW went to wrestle for WWF and WWF created new characters for them.The wrestlers went back to the WCW but continued using the characters except for the name

Held: SPECIFICITY OF DELINEATION - FULLY SPECIFIED TEST: The P bears the burden of demonstrating that the character is specifically delineated in the P’s work and that the delineation was copied and that the character

must have been uniquely developed Razor Ramon and Diesel. Literary characters vs. visually depicted characters?

o Photographic vs. graphical visual depictions Is it odd that cartoon characters are more easily copyrightable than literary characters? What happens when such a character becomes a sterotype (or is drawn from one and further specifies it?) What happens when characters change? What should the duration of character protection be?

Note on fan Fiction on the Internet

2. NEW PARADIGMS?

Note on Trademark and Unfair Competition Law

Note on Rights of Publicity

DATABASES – NOT TESTED!!!!

1. SELECTION, ARRANGEMENT, AND UTILITY

What kind of selection or arrangement exists in databases?o What about electronic? The user has a lot of control over the arrangement

Bellsouth Advertising v. Donnelly Information Publishing [269] Yellow pages information factso The names, addresses, telephone numbers and business types listed in a yellow pages directory are not original elements of a work and are not copyrightable o Selective acts were methods of discovery

Entirely typical for business directory Issue isn’t whether there are other less useful ways of arranging Heading structure dictated by 1) functional considerations; 2) common industry practice

o Dissent: choice of classified headings= ex. of original selectiono Court says the process of selection is not copyrightable—yet then what does the statute mean that you can have a copyright in the selection of some underlying things

CCC Info Services v Maclean Hunter Market Reports [296] Redbook – prediction of the value of used carso Copyright protection does not extend to ideas but does extend to compilations and the expression of those ideaso Used car valuations are not factso Are copyrightable as compilations under Feisto Have not merged—if accept the merger definition, no compliations will get copyrighted because of the way in which these useful sort of compilations are designed (as useful as possible)

Policy argument. Yet on the other hand, not going to say every one of useful compilations of facts can be copyrighted, so will distinguish between dif kinds of ideas. In some will say theres a merger and some

they won’t.--- yet in the past ideas were not copyrighted—the court responds that CCC is right but not because of these different types of ideas, but instead because there really are dif ways to organize things and if chosen particularly interesting and atypical way or organizing, you ought to get some protection for that.

Practical ideas vs. ideas fused with opiniono But copyrightability should depend on what kind of idea animates the compilation

Which is a better approach—CCC or Bellsouth? o Look towards complexity—court assuming tha the kinds of things are an issue in CCC are more complex than the yellow pages o What makes these two decisions consistent?

Database protectiono Maybe create sui generis protection like the EU Database Directive which provides separate protection for extremely hard to put together databases.

All that you must show is that there was a substantial investment

2. WHAT IS A FACT?

What counts as a fact? Different kinds of facts? CDN Inc. v. Kapes Matthew Bender & Co. v. West Publishing

3. NEW PARADIGMS?

Note on the EU Database Directive

Note on Database Protection in the US

THE STATUTORY RIGHTS OF COPYRIGHT OWNERS

§ 106 Exclusive Rights in Copyrighted WorksSubject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

(1) to reproduce the copyrighted work in copies or phonorecords;(2) to prepare derivative works based upon the copyrighted work;(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted

work publicly;(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a

motion picture or other audiovisual work, to display the copyrighted work publicly; and(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

Notes:Most significant is the reproduction right

Should you read 106(2) as having one standard for copyrightability and a completely different standard for infringement? Look at page 386

THE ELEMENTS OF INFRINGEMENT

1. PRIMA FACIE CASE OF INFRINGEMENT

SIMILARITY 2 Different Contexts COPYING: whether the D copied from the P (copying in fact) and IMPROPER APPROPRIATION: whether the D copied enough of P’s protected expression to constitute infringement (most relevant for claims of violations of the right to reproduce the work and derivative works)

To Show Unauthorized Exercise of a 106 Right:1. Copying in Fact – direct or circumstantial evidence (access + substantial (probative) similarity)2. Improper Appropriation – sometimes called improper copying or substantial similarity

UCLA & Columbia Law School Copyright Infringement Project:

Question 1: did the D copy P’s work or create it independently?If there

2. COPYING IN FACT Infringement of the Reproduction Right

It is an EXCLUSIVE right Includes all copies including non-commercial copies are subject to the right Copyright infringement ≠ limited to exact copying Civil copyright infringement = strict liability model Frequently requires reliance on circumstantial evidence Tension with independent creation rule

Defendant’s Arguments : Infringringment Prong 21. D copied uncopyrightable elements such as ideas rather than expression2. The audience would not find the works substantially similar

Three Boys Music Corp. v. Michael Bolton9th Cir. (2000)[315]

THE ACCESS ELEMENT OF A CLAIM FOR COPYRIGHT INFRINGMENT MAY BE SHOWN BY DEMONSTRATING THAT THE ALLEGED INFRINGER HAD REASONABLE ACCESS TO THE COPYRIGHTED WORK “an opportunity to view or to copy P’s work”Isley Brothers wrote and recorded “Love Is a Wonderful Thing” and made it to the charts but not very high in 19661990 Bolton wrote “Love Is a Wonderful Thing” that reached 49 on the charts3 Boys sued for copyright infringementLower court awarded 3 Boys $5.4 mil for copyright infringement

Held: P did not give persuasive arguments to the Court but it did find that there was sufficient evidence to support the jury’s finding of infringement and the court will uphold that Reasonable Access can be shown for circumstantial evidence where:

o a particular chain between the protected work and the allegedly infringing work can be shown ando where the protected work has been widely distributed

What does that mean?o “reasonable” opportunityo “more than a bare possibility”o Access not to be inferred from “mere speculation or conjecture”

What kind of circumstantial evidence is enough?o A particular chain of events is established between the P’s work and the D’s access to that work (such as through dealings with a publisher or record company)o Wide dissemination of P’s work (through sheet music sales, records and radio performances)

If similarities are striking enough, will proof of access be needed? Arnstein & 2 Boys suggest “NO” In Arnstein you have a situation where Porters work is widely disseminated so it could be that the reason you don’t have to show proof of access is the wide spread dissemination of P’s work The Isley Brothers song wasn’t a huge selling album So it looks like when you read the cases that they are saying look at the striking similarities – this is the main question even though there is a question of access

What’s the burden? Selle v. Gibb = to show that independent creation “was not possible” This seems to be playing with who has the burden to show what

Note: 129 songs called “Love is a Wonderful Thing:” have been registered with the Copyright OfficeCopying – Proof Issues

Can you use experts to opine on “copying in fact” – access and substantial (probative) similarity? YESo The expert can look at the music and show that it was unique or had parts from the public domaino They cannot come in under the second prong – under substantial similarity o Under Substantial Similarity – you can only have sociologists that discuss what the average listener will hear

Selle v. Gibb7th Cir. (1984)[318]

INFERENCE OF ACCESS GIVING RISE TO COPYRIGHT INFRINGMENT MAY NOT BE BASED ON MERE CONJECTURE, SPECULATION, OR A BARE POSSIBLITY OF ACCESSSTRIKING SIMILARITY ALONE ≠ ENOUGHSelle composed a song in 1975 and obtained copyright – played it in his band and sent it on a tape to 11 recording companies and only 8 returned it1978 Selle heard the Bee Gee’s song “How Deep Is Your Love’ and thought he recognized the song as his own with different lyricsThere was no direct evidence of access

Held: The evidence of striking similarity was not sufficiently compelling to make the case when the proof of access must otherwise depend largely upon speculation and conjecture Agreed with the lower court that there was no more than a bare possibility that Gibbs could have had access to Selle’s song and this was an insufficient basis from which the jury could have reasonably inferred the

existence of accessNotes: “at least some other evidence which would establish a reasonable possibility that the complaining work was available to the D” Term is often used in “conclusory or circular fashion” How to show “striking similarity”? [320] do these all weigh equally? Or should one like the “unique or unusual motif” be a less of a showing that common errors?

o Wholesaling copying ORo Same “unique or unusual motif” unlikely to come from a prior common source ORo “suspicious snippets” “common errors”

Ty, Inc. v. GMA Accessories, Inc.7th Cir. (1997)[320]

ACCESS AND COPYING MAY BE INFERRED WHEN TWO WORKS ARE SO SIMILAR TO EACH OTHER AND NOT TO ANYTHING IN THE PUBLIC DOMAIN THAT IT IS LIKELY THAT THE CREATOR OF THE 2ND WORK COPIED THE 1ST – BUT THE INFERENCE CAN BE REBUTTED BY DISPROVING ACCESS OR OTHERWISE SHOWING INDEPENDENT CREATIONBeanie Babies created by TyGMA brought its own line 3 years later – the Pig looked almost identical

Held: Not enough evidence of independent creation absence of any evidence of how the designer’s drawing was translated into the Ty design and Ty’s design did not resemble anything in the public domain The more a work is both like an already copyrighted work and unlike anything that is in the public domain – the less likely it is an independent creation

Notes: “[i]f . . . two works are so similar as to make it highly probable that the later one is a copy of the earlier one, the issue of access need not be addressed separately, since if the later work was a copy its creator must

have had access to the original . . . . [W]e do not read our decision in Selle to hold . . that no matter how closely the works resemble each other, the P must produce some (other) evidence of access . . . [A] similarity that is so close as to be highly unlikely to have been an accident of independent creation is evidence of access”

But D may rebut with “proof that [he] could not have seen the earlier [work] or a copy of the earlier one” The fact that the GMA version has toes like the Ty one this is different than what a pig would look like in the public domain

Sheldon v. MGM [323]: Learned Hand’s statement

Compare Selle and Ty Approaches: Are Selle and Ty consistent? Ty distinguishes Selle Should Ty have to show any more than it did? Which rule is better – Selle or Ty – or is one better for certain kinds of works and the other for others? Bottom line in most courts: if striking similarity, important for D to show possible third source

Subconscious Copying The Chiffons’ “He’s So Fine” v. George Harrison’s “My Sweet Lord” do they have the same “total concept and feel?”

Is the subconscious copying rule fair? What is the rationale for liability for subconscious infringement – when the infringer not only doesn’t intend to copy but is unaware that he’s copying Should there be statute of limitations for such claims? What about when someone does a remake of the song?

Note on Documenting Independent Creation

THE REPRODUCTION RIGHT

1. THE “SUBSTANTIALLY SIMILAR” COPY

CLASSIC CASES

Nichols v. Universal Pictures Corp.2nd Cir. (1931)[326]

COPYRIGHT PROTECTION OF LITERARY PROPERTY IS NOT LIMITED TO PROTECTING MERELY THE LITERAL TEXT OF THE WORKTwo different plays

Held: copyright protection cannot be just the literal text – we are going to protect more than that but we still are not going to protect ideas The right cannot be limited literally to the text, or else a plagiarist would escape by immaterial variations BUT D does not infringe if s/he takes uncopyrightable elements Abstractions Test: “Upon any work…a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out ….There is a point in this series of abstractions where they are

no longer protected, since otherwise the playwright could prevent the use of his ideas…Nobody has been able to fix that boundary, and nobody ever can Uncopyrightable Elements: scenes a faire – stock character, situations, plot lines not copyrightable

o A comedy based upon conflicts between Irish and Jews into which the marriage of their children enters is no more susceptible of copyright than the outline of Romeo and Julieto No monopoly in “ethnic comedy”o Thought the P discovered the vein, she should not keep it to herself – so defined the theme was too generalized an abstraction from what she wrote

Process for Substantial Similarityo No infringement if substantial similarity due to uncopyrightable elements, buto No dissection: This [the D’s emotion-comparison chart] is not the proper approach to a solution; it must be more ingenuous, more like that of a spectator, who would rely

Assessment of Abstractions Test: learned hand applied the test and came out the other way in Sheldon v. MGM (noted on page 323)o Sheldon: public domain story; novel; play and movie. The author of the play says that it was infringed by the movie. The makers of the movie say that they properly took the story from the novel and not

from the playNotes: In music there was the popular music chart and the race chart Congress passed a provision that there is a compulsory license for people to do cover versions of songs that have already been published – therefore

because of this license there was an opportunity that was lost for black musicians since the white bands could just do a cover of their song rather than allow them to play their own music in the mainstream market Think about the consequences in doctrine so what is the consequence of Learned Hand’s outcome for this case?

Arnstein v. Porter2nd Cir. (1946)[330]

THE QUESTION OF WHETHER TWO MUSICAL COMPOSITIONS ARE SUBSTANTIALLY SIMILAR IS GENERALLY A QUESTION FOR A JURY AND SHOULD NOT BE DETERMINIED ON SUMMARY JUDGMENTArnstein argued that Porter infringed several musical compositions which had been widely sold and publically performed

Held: decision is for the jury – summary judgment was reversed Focus on the economic value to P’s work of the piece taken by D

o Is the D substituting his work for the P’s and therefore appropriating P’s customers? Looks like focus is on current, existing market: reaction of “ordinary lay hearer” Standard for improper appropriation: “whether D took from P’s works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that D wrongfully

appropriate something which belongs to the P”

Notes: Arnstein was a serial litigant and thought that dozens of people where stealing his music and he wasn’t as famous as these other artists like Porter This is a market-oriented approach is the D taking away the P’s market? Example of Beethoven’s 5th – is the remix actually taking away the market from the original mix

Music is a special art form that the tastes can vary widely - and different styles are going to be appealing to many different markets To what is expert testimony relevant in the Arnstein test of copying + substantial similarity?

o What kind of expert for Prong 1? – you need experts to give a technical opinion since you can always find people who subjectively think that something sounds similaro What kind of expert for Prong 2?

Summary judgment in substantial similarity cases?

Substantial Similarity Market Analysis: Assume copying – substantial similarity?

o Beethoven 5th

o Walter Murphy Band 5th

Is the D’s use damaging the P’s market? Should potential markets be included in the market harm inquiry? Does consumer confusion make sense for music? Isn’t this consumer confusion really borrowed from trademark?

Sid &Marty Krofft TV Productions v. McDonalds9th Cir. (1977)[333]

WORKS WHICH CAPTURE THE “TOTAL CONCEPT AND FEEL” OF COPYRIGHTED MATERIAL MAY CONSTITUTE INFRINGMENT OF SUCH MATERIALKroffts had a tv show with a character and argued that McDonalds infringed upon one of the characters for their tv commercial

Held: Extrinsic test for similarity in ideas:

o Depends not on the responses of the trier of fact, but on specific criteria which can be listed and analyzed – type of artwork – materials used subject matter and the setting for the subjecto Analytic dissection and expert testimony are appropriateo Question may be decided as a matter of law

Intrinsic test for similarity in expression:o Depending on the response of the ordinary reasonable persono Works should be considered and test not hypercritically or with meticulous scrutiny but by the observations and impressions of the average reasonable reader and spectatoro Analytic dissection and expert testimony are not appropriateo Intrinsic analysis required here because works directed to audience of childreno They have captured the total concept and feel of the Pufnstuf show

Notes: They quote Roth Greeting Cards – which is a copyrightability case – not infringement case

Compare Arnstein an Krofft: Krofft court said no court had improved on Hand test

o But Kroff version = articulated differently Is the Krofft extrinsic test the same thing as the Arnstein focus on copying in fact? Is the Kfroff intrinsic test the same as the Arnstein improper appropriation test?

CONTEMPORARY CASES

Steinberg v. Columbia PicturesS.D.N.Y (1987)[336]

A VISUAL IMAGE THAT WOULD BE RECOGNIZED BY THE AVERAGE PERSON AS HAVING BEEN APPROPRIATED FROM A COPYRIGHT WORK INFRINGES ON THAT COPYRIGHT

TOTAL CONCEPT AND FEEL complete opposite to Computer AssociatesHeld: The term “recognize” hasn’t been a part of the definition before – and this is very different from saying that it displaces the market Is style an element of expression or an idea?

Notes: They quote Roth Greeting Cards – which is a copyrightability case – not infringement case The question is: are you protecting style? Pro Steinberg: there is something expressive in style This seems to go beyond the lay observer test of Arnstein

Framework: When looking at Nichols and what Hand is setting out is that you will never get a brightline answer to the infringement question you have to figure out how to operationalize this goal to find the right place in the

spectrum between literal copying and taking an abstract idea where the right about of inducement is going to be balanced with the right amount of public domain from below The more you protect an underlying work = the more you protect one author = the more you create disincentives for the public domain creation Which test is more in line with copyright goals

o holistic or dissectiono how much of style do you protect

The authors of the book seem to think that an over protection of style think it leads to less art movements v. others who think that masters of a movement should get protection for those styles

What happens if the artist who does the covers for the New Yorker is hired to do a movie poster should the transferee of the work stop the artist from doing work in their own distinctive style?

Boisson v. Banian, Ltd.2nd Cir. (2001)[341]

WHERE A COPYRIGHT HOLDER’S WORK IS NOT WHOLLY ORIGINAL BUT INCORPORATES ELEMENTS FROM THE PUBLIC DOMAIN, INFRINGEMENT MAY BE SHOWN ONLY BY A SUBSTANTIAL SIMILARITY TO THE ELEMENTS PROPERLY COPYRIGHTABLEAlphabet Quilts

Held: Court finds Banian’s quilts to be sufficiently similar to Boisson’s design as to demonstrate illegal copying Substantial similarity = if the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same

o This is the same as the Arnstein standard – yes? Except for the “aesthetic appeal” part More discerning ordinary observer standard adopted when work incorporates public domain elements

o Same as dissection into separate components?o What’s the purpose of this test?

What do we look at “discerningly”?o Total concept and feel instructed by common sense have to look at the arrangement of the wholeo Look at: arrangement, letter shapes, colors, quilting patterns, choice and placement of icons

Notes:o Should you use the “total concept and feel” or the “merger analysis”

The 2nd Circuit Is Boisson a good approach or does it unduly double count public domain material? Question 7 on 345: consider all the 2nd Cir. cases – Nichols, Arnstein, Steinberg, Boisson

o Consistent?o Distinguishable by subject matter?o Would Boisson’s test have changed the result in Steinberg?

Computer Associates v. Altai2nd Cir. (1992)[345]

ELABORATE DISSECTION AND FILTERING OUT Includes in the copyrightable elements external considerationsComputer Program

Held: Court ABSTRACTION –FILTERATION – COMPARISON TEST – for separating idea from expression and determining infringement

FILTRATION: sifting out all the elements which are ideas, or dictated by efficiency or external factors or taken from public domain COMPARISON: did defendant copy “any aspect of [golden nugget]? What was “the copied portion’s relative importance with respect to the P’s overall program”?

o Correct comparison by court? What comparison would CA argue for instead they would want the “total concept and feel”

Notes:o Compare abstraction – filtration – comparison test with other precedent (Nichols, Arnstein, Kroff)o Advantages/disadvantages of different tests for different types of works re: substantial similarityo Compare with Apple v. Microsoft approach (no filtration b/c of concern to protect look and feel but rigorous dissection analysis applied

Expert Evidence:o Because computer programs “likely to be somewhat impenetrable by lay observers”o Court “leave[s] it to discretion of the district court to decide to what extent, if any, expert opinion regarding the highly technical nature of computer programs is warranted in a given case

Cavalier v. Random House9th Cir. (2002)[349]

RANDOM SIMILARITIES SCATTERED THROUGHOUT A WORK DO NOT CONSTITUTE COPYRIGHT INFRINGEMENTMoon Characters for Children’s Book

Held: Court employs the two part analysis for this circuit: Extrinsic Test: determine whether two works are substantially similar objective comparison of specific expressive elements which now includes all “objective manifestations of expression” Intrinsic Test: subjective comparison that focuses on “whether the ordinary, reasonable audience would find the works substantially similar in the “total concept and feel” Extrinsic test has expanded to include all “objective manifestations of expression”

o Why?o How would Boisson Court resolve Cavalier and Swirsky appeals?

What’s the summary judgment standard in Cavalier?

Swirsky v. Carey9th Cir. (2004)[354]

SUMMARY JUDGMENT MAY NOT BE GRANTED ON THE BASIS OF SCENES A FAIRE WITHOUT INDEPENDENT EVIDENCE UNLESS THE ALLEGATION OF SCENES A FAIRE IS UNCONTESTEDCopyright infringement of a song similarity of chorus

Held: Court D argues: seven-note Q 2 page 358 – How does the Swirsky expert’s methodology differ from the analysis in Cavalier? What was the benefit of having an expert testify about substantial similarity? Musical scenes a faire: appropriateness of experts and ability to identify

Variations on Substantial Similarity/Improper Appropriation Nichols: abstractions test Krofft: extrinsic +

Various Tests Maybe explanation for variety is

Wrap up on Infringement of the Reproduction Right Variety of approaches to substantial similarity

o Spectrum: Steinberg (total concept and feel) to Computer Associates (elaborate dissection and filtering) Which approach is better?

o From the point of view of o

Wrap of on infringement of the reproduction right Variety of approaches to substantial similarity

o Spectrum: Steinberg (total concept and feel ) to Computer Associates (elaborate dissection and filtering out) Which approach is better?

o From the point of view of the copyright goals?o From the point of view of the different kinds of works?

o As a practical matter, how you write the jury instruction? At the end of the day – all of these rules/doctrines give you the sense that there is some sort of rigor here and underneath lies the fundamental question: how broad should copyright protection be? How broad

should the public domain be?

2. THE EXACT COPY

The Exact Copy [359] Piracy Cases Cases involving arguably privileged conduct (statutory defenses) Cases of automatic copying generated by downloading

o Should Congress enact a provision that would shield browsing by Internet users? The ordinary conduct of users of licensed software Judicial “schizophrenia” re: ephemeral copies

Total Concept and Feel is not often applied in literary works cases you don’t have the holistic image and there are a lot of variations in what people see in a literary work (works easier with visual works)Lay Observer Test Boisson is a more rigorous standard

§ 117 Limitations on exclusive rights: Computer programsPermits certain reproductions of computer programs but its scope is limited – shelters only the owner of a copy of a computer program

Marobie-FL v. National Association of Fire Equipment DistributorsND IL (1997)[360]

THE INNOCENT INFRINGER AFFIRMATIVE DEFENSE MAY BE RAISED ONLY WHERE THE ALLEGED INFRINGER RELIED ON AN AUTHORIZED COPY OF A WORK THAT OMITTED COPYRIGHT NOTICECip art software

Held: D obtained a copy from an unknown source and should have known that it was unauthorized not entitled to innocent infringer defense

Note on Ephemeral Copies: exemption in the broadcast industry for simultaneous recording/copying

THE DISTRIBUTION RIGHT

§ 106 (3)Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:to distribute copies or

(3) phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

Notes:

The Distribution Right- it does not require reproduction – separate right

When will the copyright owner prefer to sue the distributor rather than the copier?

Is just offering something for downloading – making something available – to be considered a distributionMarobie – FL – demonstrates the breadth and inflexibility of strict liability for copyright infringement based on the mechanical act of reproduction:“when a public library adds a work to its collection……it has completed all the steps necessary for distribution to the public …….unjustly profit by its own omission”See arguments in the Hall Dissent

Copyright owner has the exclusive right to distribute copies or phonorecord of the copyrighted work to the public by sale or other transfer of ownership, or by rental lease or lending This right gives the copyright owner the right to control the first public distribution of the work It does not require reproduction – separate right

o When will the copyright owner prefer to sue the distributor rather than the copier?Importance of the distribution is every more important to day given the amount do digital access

1. WHAT IS A “DISTRIBUTION”?

Marobie-FL v. National Association of Fire Equipment DistributorsND IL (1997)[365]

The unauthorized placing of copyrighted material on a website constitutes a violation of the copyright owner’s exclusive right to distribute its materialCip art software

Held: uploaded files were made available for download by internet users and the server did transmit some of the files when requested

Hotaling v. Church of Jesus Christ of Latter-Day Saints4th Cir. (1997)[365]

A library “distributes” a work, for purposes of the Copyright Act, when it places an unauthorized copy in its collection, includes the copy in its cataloguing system and makes the copy available to the publicLibrary’s copy of genealogical research materials in microfiche form

Held: the issue was that the copy the church was keeping for loan purposes was not the original but a copy it had made prior to the original being destroyed

2. THE FIRST SALE DOCTRINE

First Sale Doctrine (109): exception to 106(3) – allows owner of physical copy to resell or loan work – despite copyright owner’s distribution right But 109 has exceptions too! Congressional limitations on record and software rentals and the European public lending right Does NOT prohibit rental, lease, or lending of phonorecords or computer programs by nonprofit libraries or computer programs embodied in some other machine or product Not applied to digital distribution of works

Bobbs-Merrill Company StrausSupreme Court (1908)[369]

ABSENT PRIVITY OF CONTRACT, THE SOLE RIGHT TO VEND GRANTED TO COPYRIGHT HOLDERES DOES NOT CREATE A RIGHT TO IMPOSE LIMITATIONS ON THE RIGHT OF SALE OF FUTURE PURCHASERSGenesis of first sale doctrine – copyright holder tried to stop book reseller from selling for less than $1

Held: the first sale doctrine does not allow the copyright holder to impose a limitation on the sale of a work in perpetuity

Do you want an expansive 1st Sale Doctrine?

3. UNAUTHORIZED IMPORTATION AND THE FIRST SALE DOCTRINE

Quality King Distributors, Inc. v L’anza Research International, Inc.Supreme Court (1998)[378]

The right of a copyright owner to prohibit the unauthorized importation of copies of its work is subject to the first sale doctrine of section 109(a)Shampoo labels imported back in to the US

Held: 602(a) importation is infringement of 106 right 106 right to distribute is subject to exception 109 109 first sale doctrine = 602(a) does NOT apply to domestic and foreign who import lawfully obtained copies

THE RIGHT TO PREPARE DERIVATIVE WORKS

A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a “derivative work”. (101)

There is a wide range of the amount of the underlying work is incorporated – complete incorporation would be a translation

Focal Issues: Infringement Originality Recasting, adaptation, transformation what does this mean? Framing or linking – should that be considered? Fixation – do they need to be fixed to be infringed Application to situations created by new technologies

1. DEFINING “DERIVATIVE’

History:o Early copyright law: no derivative works righto 1870 – right to reserve right to dramatize or translate author’s workso 1909 grant of right to dramatize, translate, “make any other version thereof, if it be a literary work: to arrange or adapt it if it be a musical work”o 1976 – right to make derivative works extended to all categories of copyrightable subject matter

HR Report explaining derivative work [386]

Goldstein Definition: market justificationo Distinction between the reproduction right and the right to prepare derivative works = the “point at which the contribution of independent expression to an existing work effectively creates a new work for a

different market”o The works at the outer reaches of this realm will often be connected with a license from the authoro THIS RIGHT AFFECTS THE LEVEL OF INVESTMENT IN THE ORIGINAL WORKo THIS RIGHT ALSO AFFECTS THE DIRECTION OF INVESTMENT

Questionso If a works is based on an underlying work and it is a derivative work is that the end of the discussion?o Does there have to be originality in the derivative work?o What about fixation? Can there be infringement by a work that is not fixed?o What is the relationship between the derivative works right and reproduction right?

If the 1976 statute is read literally then it can be read very broadly – so how do we apply the language in real assets

Castle Rock Entertainment v. Carol Publishing Group2nd Cir. (1998)[387]

A DERIVATIVE WORK IN A DIFFERENT MEDIUM CAN BE SUBSTANTIALLY SIMILAR TO THE COPYRIGHTED WORK WHEN THE DERIVATIVE WORK IS BASED ON ORIGINAL, PROTECTABLE EXPRESSION IN THE COPYRIGHTED WORKSeinfeld Aptitude Test

Held: Seinfeld Aptitude Test = substantially similar to Seinfeld show and therefore infringing derivative work Difficulties with applying “standard” substantial similarity tests when works are in different media and different genres YET – SAT = substantially similar to Seinfeld show and therefore infringing derivative work Deriv. work monopoly okay even if author of underlying work “made the artistic decision not to saturate those markets”

o Is decision “artistic”? – doesn’t have to include aesthetic – maybe it does include marketingo What if the decision was economic and business based?

Question 1: how meaningful is substantial similarity here? – note 1 on page 394 The Court Rejected Using These Other Tests:

o Ordinary Observer Test – this doesn’t work because a lay observer might always find an aesthetic feelo Total Concept and Feel Test – the Court didn’t like it because due to the different mediums it will automatically have a different concept and feel this could lead to an abuse of this test because it could

Do we even still need derivative works rights? As long as we have a broad interpretation of reproduction right and performance right then this will cover the “derivative” works right

The reason for having a “derivative” works is that the reproduction and performance rights were much narrower

be used to show that it is automatically different based on the medium the defendant will always win – so it is too narrow of a standard to protecto Fragmented Literal Similarity Test – can’t base the test on literal quotations that are the same – but it is a small enough amount that again it might be hard to find the defendant infringing

Notes: should this just be tossed over to trademark? this is very much like moral rights – and protecting the author and allowing them to have complete control over their brandTrademark and derivative works takes care of the same thing that moral rights cover in Europe Why can’t the D win by saying they are recording facts? – this isn’t a public domain – this is a creative work so is it a fact

Dam Things from Denmark/Troll Company v. Russ Berrie & Comp.3rd Cir. (2002)[391]

AN AUTHOR’S RIGHT TO PROTECTION OF A DERIVATIVE WORK ONLY EXTENDS TO THE ELEMENTS WHICH THE AUTHOR HAS ADDED TO THE WORKTrolls Case

Held: the lower court never compared the two trolls side-by-side Two Inquiries Necessary:

o Originality ando Substantial Similarity

By definition….derivative works are substantially similar to the original work . . . the test for minimal creativity is therefore necessarily separate and apart from the test for substantial similarity … the distinction between the tests for infringement and for originality may be nuanced – but it does exist and must be carefully considered by the court”

If you want to make a claim that something is infringing – you have to show that the derivative work is original This is a restored works case under 104(a)

2. MODES OF TRANSFORMATION

Must a Derivative Work be Original and Fixed to Infringe? Modes of transformation Recasting and Originality:

o Which is the better rule? Contrasting cases re: artwork mounted on tiles: Mirage Editions v. Albuquerque A.R.T.

“another version” of P’s art work = derivative work title prep process = recasting/transforming individual images Lee v. A.R.T.

Card-on-title isn’t copyrightable; framing process doesn’t create derivative work – p’s work isn’t recast, adapted or transformed – “it was not changed in the process” a definition of derivative work that makes criminal out of art collectors and tourists is jarring despite Lee’s gracious offer not to commence civil litigation

A. “RECASTING” AND ORIGINALITY

Mirage Editions, Inc. v. Albuquerque A.R.T. Co.9th Cir. (1988)[396]

A PERSON CANNOT COMMERCIALLY TRANSFER COPYRIGHTED ARTWORKS ONTO OTHER SURFACES WITHOUT AUTHORIZATIONPrinting works from a book onto ceramic tile

Held: the copyrighted prints recast onto ceramic infringed the owners derivative works right the first sale doctrine doesn’t help here – only allows for resale not creation of derivative works

Lee v. A.R.T. Co.7th Cir. (1997)[398]

IN ORDER FOR A WORK OF AUTHORSHIP TO CONSTITUTE A DERIVATIVE WORK, IT MUST POSSESS A SUFFICIENT LEVEL OF CREATIVITYMounting on ceramic tile

Held: Court disagrees with the 9th Cir. and finds that mounting on ceramic tile does not constitution an “original work of authorship” and is no different than mounting a picture in a frame or case Levi thinks this comes out the right way

Why should we read the derivative works in such a way that diminishes the first sale doctrine?Can you look at each book or work and say that it is really a compilation of all the creative parts – and it isn’t just a whole work?Technology will kill the current business model – but then it will be the saving of true copyright property protection – every little bit that is in a work has economic value and the owner should be able to use it this lead to the cultural environmentalism of property theory = Ben Depoorter (property commons and anti-commons piece)

B. REQUIRED FORM?

Must derivative works be fixed to be deemed infringing? Concrete form required?

o Lewis Galoob Toys v. Nintendo – game genie game enhancero Micro Star v. FormGen – Duke Nukem user-created content

Outer boundary of the theory Incorporation?

o Micro Star = outer reaches of adaption right

Lewis Galoob Toys v. Nintendo9th Cir. (1992)[401]

A DERIVATIVE WORK DOES NOT NEED TO BE FIXED, AS DEFINED BY THE COPYRIGHT ACT, TO INFRINGE ON A VALID COPYRIGHTDevice that hooked into the Nintendo and altered the game features

Held: did not infringe upon the work – it did not transform the work No fixation is necessary but then also said that a derivative work must incorporate a protected work in some concrete or permanent form Rejects the market analysis Since the game genie is just an overlay to the game and doesn’t transform the underlying work or create an independent work How is this different from the Seinfeld case? Wasn’t that building upon the underlying work? could this be used to show that Galoob is wrong?

Micro Star v. FormGen9th Cir. (1999)[403]

THE UNAUTHORIED COMMERICAL EXPLOITATION OF COPYRIGHTED COMPUTER GAMES, EVEN HIGHLY COMPLEX GAMES IN WHICH THE USER ACTUALLY PARTICIPATES IN MANIPULATING THE GAME LEVELS, MAY CONSTITUTE INFRINGMENT

Held: Court To qualify as a derivative work:

o Work must exist in a concrete or permanent formo Must substantially incorporate protected material from the preexisting work

They read in fixation requirement into the statute but then the incorporation must be substantial Integrated works: 1) outlink like webpages 2) frame an inline link 3) interact with previously made programs

o All of these works are run by software and will embody its commands in a permanent form – so even if the visuals are not always going to be there the instructions will always be there

Taylor: Professor at Davis talks about derivative works as an overlay right that can be added to all the other rights it is not rational to look at derivatives works in a way that allowed it to be illegal to just imagine a derivative work instead since the other rights require fixation

Is a derivatives work protection justification only market driven? See page 386o Do they harm the market of the original work because they substitute in for the underlying work?o This is a justification for Galoob’s enhancer – it doesn’t take away from the underlying work but does the derivative work infringe only if transforms the underlying work – does it supplant the marketo Protecting derivatives works is a natural rights theory – because it allows the author to protect their right of integrity of the work and it does not allow someone else to hijack the work and make it into

something else this leads to moral rights

Linking and Framing Futuredontics linking webpage pop-up ads

MORAL RIGHTS: THE AMERICAN VERSION – NOT TESTED!!!!!!!

European Notion: rights of personality/not economic rightso Paternity righto Integrity right

Theories for protection under US Law: K, unfair competition tort, Lanham Act – see Gilliam but see Dastar Post-Berne Legislation: VARA

o Limited to works of visual art; doesn’t apply to works for hire Note: TRIPS specifically excludes the moral rights provision of the Berne Convention why because the US had a big hand in drafting it

1. THEORIES FOR THE PROTECTION OF MORAL RIGHTS UNDER US LAW

Gilliam v. American Broadcasting Comp2nd Cir. (1976)[409]

UNAUTHORIZED EDITING FOR REBROADCASTING OF A TELEVISED PROGRAM CONSTITUTES COPYRIGHT INFRINGMENTMonty Python – ABC edited out 25% for TV viewing

Held: where a licensee is granted permission to air a derivative work, the license does not automatically confer the right to edit the work Included violation of the Lanham Act – which is normally used in trademark law – here because ABC advertised that he aired a Monty Python and it did not because of all the editing

2. THE VISUAL ARTISTS RIGHTS ACT - VARA

VARA was the first federal copyright legislation to grant protection to moral rights. Under VARA, works of art that meet certain requirements afford their authors additional rights in the works, regardless of any subsequent physical ownership of the work itself, or regardless of who holds the copyright to the work. For instance, a painter may insist on proper attribution of his painting and in some instances may sue the owner of the physical painting for destroying the painting even if the owner of the painting lawfully owned it.

VARA exclusively grants authors of works that fall under the protection of the Act the following rights * right to claim authorship * right to prevent the use of one's name on any work the author did not create * right to prevent use of one's name on any work that has been distorted, mutilated, or modified in a way that would be prejudicial to the author's honor or reputation * right to prevent distortion, mutilation, or modification that would prejudice the author's honor or reputation

Additionally, authors of works of "recognized stature" may prohibit intentional or grossly negligent destruction of a work. Exceptions to VARA require a waiver from the author in writing. To date, "recognized stature" has managed to elude a precise definition. VARA allows authors to waive their rights, something generally not permitted in France and many European countries whose laws were the originators of the moral rights of artists concept. [1]

In most instances, the rights granted under VARA persist for the life of the author (or the last surviving author, for creators of joint works).

Carter v. Helmsley-Spear2nd Cir. (1995)[415]

A WORK MADE FOR HIRE IS EXCLUDED FROM THE DEFINITION OF VISUAL ART PROTECTED BY THE VISUAL ARTISTS RIGHTS ACTCommissioned works installed in a building

Held: the works were found to be works for hire

Can VERA claims be applied to Micro Star – or the tiles case? If you interpret derivatives works all the way to the boundary (broadly) and VERA the same way – will you be having any real effect on artistic practices – or the types of artistic works that will be made – the

commercialization model that is now museum money should you take an industry specific approach to moral rights and that there is more moral rights in some kinds of industries than in others – some kinds of customs in some than others or not who is going to interpret the customs? What about areas that are new and unestablished arts? Like technology changes like second life? What happens with the old practices shift based on the new?

Martin v. City of Indianapolis7th Cir. (1999)[418]

For the purposes of VERA protection, two elements must be satisfied for a work to be of “recognized stature”1) The work must have merit or intrinsic worth2) The work must be recognized by art experts, members of the artistic community, or society

City demolished sculpture in the quest for acquisition of the property for urban renewalHeld: Court concluded that the work was protected under VERA – Martin relied on newspaper and magazine articles and letters in support of the work – is this really enough to show “recognized stature”?

3. THE RIGHT OF ATTRIBUTION REVISITED

In copyright law, attribution is the requirement to acknowledge or credit the author of a work which is used or appears in another work. Attribution is required by most copyright and copyleft licenses

Dastar Corp v. 20th Century FoxSupreme Court (2003)[423]

Section 43(a) of the Lanham Act does not prevent the unaccredited copying of an uncopyrighted workTelevision series repackaged for video

Held: Lanham Act is a federal remedy against a “false designation of origin” what is origin? Because Dastar took works that were in the public domain, copied it, made modifications and produced its very own series of videotapes since he is the manufacturer he is the origin of the good to hold that the origin is the author of the idea would create a perpetual patent and copyright They don’t make any mention the underlying work because the work was already in the public domain – so they sue for a violation under the Landham Act they were misrepresenting the origin of the goods This is incredibly important in how it affects VERA – so the only thing keeping us now in-line with the Berne Convention is derivative rights

Lemley – copyright owners rights on the internet – law review article

THE PUBLIC PERFORMANCE AND PUBLIC DISPLAY RIGHTS – READ ALL OF THIS CLOSELY

It used to be that the reproduction right was the most important one in the music industry but now it seems to have shifted to the public performance right and perhaps the distribution right

1. PUBLIC PERFORMANCE

To “perform” a work means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.

To perform or display a work “publicly” means — (1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

Right of public performance is a recently recognized righto Right to perform dramatic composition – 1856o Right to perform musical composition – 1897o 1909 Act – performance right recognized only for dramatic works and musical compositions + and limited to controlling only “for profit” public performances

For profit includes restaurant music (Herbert v. Shanley – page 427)o 1976 Act: eliminated “for profit” limitation on the performance right

Increased the categories of works subject to performance and display rights: literary, musical, dramatic and choreographic works, pantomimes, motion pictures and other audiovisual works Central Issue: what constitutes “public” performance?

o 101 definitionso Turning on a radio or TV = public performance of works being broadcast

Shift from the “for profit” test for liability to the current focus under the 1976 Act on characteristics of place and/or audienceo Definition page 428o Columbia Pictures v. Redd Horne: “in store rental” of tapes open to the public even though movies seen in private booths in the store

What constitutes “public performance”? Shift from the “for profit” test for liability to the current focus under the 1976 Act on characteristics of place and/or audience

o Columbia Pictures v. Redd

Columbia Pictures Indus. v. Redd Horne3rd Cir. (1984)[428]

A VIDEO RENTAL PROPRIETOR MAY NOT EXHIBIT VIDEOS TO THE PUBLIC WITHOUT AUTHORIZATIONIn store rental of tapes open to the public even though movies seen in private booths in the store

Held: Court said that showing a video to the public is a violation of 106 – for public performance Privacy is just an additional feature which doesn’t change the character of the public performance In all of these cases the courts seem to be worried about market substitution that might arise

Renting videotapes for home viewing ------------------------------------- rental for viewing in small booths at store open to public Continuum

Hypos on page 431: Rentals from store desk/video players in booth Rentals from hotel desk/VCR at hotel desk found to be infringement Rentals from hotel desk/VCR in hotel room found to be NOT infringement Inmotion pictures: movies/DVD players rented in airports, viewed in flight, dropped off at destination

Perform: to perform a work means to recite, render, play, dance, or act it either directly or by means of any device or process or in the case of a motion…(101)

To perform or display a work publicly means: To perform or display it at any place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered or (Redd Horne) To transmit or otherwise communicate a performance or display of the work to a place specified by clause 1) or to the public by means of any device or process, whether the members of the public capable of receiving

the performance or display receive it in the same place or in separate places and at the same time or at different times

2. PUBLIC DISPLAY

To “display” a work means to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images nonsequentially. (101)

Right of Public Display: 106(5): Confined to literary, musical, dramatic and choreographic works, pantomimes, and pictorial, graphic or sculptural works, including the individual images of a motion picture or other audiovisual work

Perfect 10 v. Amazon.com9th Cir. (2007)[SUPP 370]

Because images were not stored by Google/Amazon there was no public displayGoogle Image Search – thumbnail images stored on 3rd party computers – Amazon used Google’s services in agreement to manage its search results

Held: because the webpages were only instructing users computers to link to the pictures – all HTML instructions – no infringement – also the publisher’s computer is the one that stores the images – not Google “While in-line linking and framing may cause some computer users to believe they are viewing a single Google webpage, the Copyright Act unlike the Trademark Act does not protect a copyright holder against acts

that cause consumer confusion.”Contributory Infringement: TEST: did Google have knowledge? Could take simple measures to prevent further damage? Failed to take such steps the District Court didn’t fully consider the facts – this was remandedVicarious Infringement: Google’s supervisory powers are limited because it lacks the ability to analyze all the information – NOT vicarious liable

The contributory infringement piece is a ticking time bomb and as technology gets better then it could be a larger issue

109(c) – if you have a purchased copy then you are entitled to display it publicly but no more than one image at a time

Note: with the internet you always have overlapping issues so the theoretic question is: will relying the public display right protect users in the digital age?

3. PUBLIC PERFORMANCE, PUBLIC DISPLAY, AND THE INTERNET

Publicly: which includes transmissions to individuals in their own homes – includes the internet

Most cases on the internet involve the reproduction right - not the public display right which is happening all the time

Video Pipeline v. Buena Vista Home Entertainment (aff’d by 3rd Cir. 2003) [434]: previews of motion pictures available for home distribution started streaming on the internet – found to be violation of public performance and public display rights

4. LIMITATIONS ON THE PUBLIC PERFORMANCE AND PUBLIC DISPLAY RIGHTS

110 Exemptions Legislative approach issue Policy Question: new exemptions because of technology? Or compulsory licensing approach?

o Some people don’t like the compulsory licensing – it doesn’t allow the copyright owner any control over what happens with their worko Response to that is to limit the compulsory licenses

Note on Distance Education Issues

Note on Cable and Satellite Retransmission Rights

5. INTERNATIONAL TREATMENT OF PUBLIC PERFORMANCES AND PUBLIC DISPLAYS

Wrap up on performance and public display rights:

Should posting works on the web ever be exempt from infringement liability? What about more limited web displays? Does the TEACH Act represent good policy? What about linking/framing? What about on-the-fly editing?

COPYRIGHT AND THE MUSIC INDUSTRY

1. INTRODUCTION TO THE “PLAYERS” IN THE MUSIC INDUSTRY

Players: songwriter, recording artist, music publisher, record companies, collective rights organizations, other licensing entities Section 106(1) gives the owner of a copyright the exclusive right to reproduce the copyrighted work in phonorecord

o However, that exclusive right is modified by the compulsory license provision of section 115

2. REPRODUCTION, PUBLIC DISTRIBUTION, AND DERIVATIVE WORK ISSUES

MUSICAL WORKS AND SECTION 115 = COVER VERSIONS

Phonorecord is a physical thing that contains two copyrightable items: 1) musical composition (literary work) and 2) recorded performance of that work (sound recording) This does NOT allow you to use the actual work – you can only make your own recording of the song – it doesn’t matter if your song sounds identical to the originial Sound Recording: Distinct from the underlying musical composition – so that the compulsory license that you get to cover a song does not give you a right to copy anyone else’s sound recording – what it gives is the

right to make your own recording (cover records) Compulsory license under 115: “cover” provision – a musical composition that has been reproduced in phonorecord with permission and has been distributed to the public may generally be reproduced on other

phonorecord by other persons if they notify the copyright owner properly and pay a specified royalty

o Applies only to non-dramatic musical workso Compulsory licensee has a limited right to arrange the work to fit his/her style of performance

Are compulsory licenses justified? Maybe for fears of monopoly back in 1909 – but is that still the case – is the nature of market power in the current music industry – does it allow for the same kinds of bad things that monopolists can do – is it time to get rid of the compulsory license? Maybe the current conditions don’t involve the same kind of control so are they still necessary

Only covers non-dramatic work dramatic works like opera music or potentially a soundtrack that is an integral part of the work cannot be covered by this license and the copyright owner and user have to negotiate the terms

why is it that so few people use the compulsory license regime and instead jump to the harry fox system – this is due to transaction costs – if we are going to some compulsory license regime then will that create the incentive for a private system that will allow for less transaction costs?

Notes from page 449: what if Cake’s recording closely imitates Gaynor’s version? No royalties for Gaynor. What if Cake’s recording is played over the radio – who gets royalties? The radio station only has to pay HF but not the owner of the sound recording – only the copyright owner – public performance rights. What if the radio station simultaneously webcasts the recording?

SOUND RECORDINGS AND SECTION 114 Sound recordings and Section 114: status of “sampling” Only protects the elements of the sound recording itself Most of the time this is signed away by the artist to the recording company essentially then you are talking about big companies fighting it out – not the individual artists This isn’t like 115 – this for sampling if you are going to have trademark values then deal with it in trademark Historically limited – only federally recognized as of 1972 Digital Performance Right in Sound Recordings Act of 1995 (DPRSRA) provides a limited performance right in sound recordings.

SAMPLING MUSICAL WORKS AND SOUND RECORDINGS

Newton v. Diamond9th Cir. (2004)[450]

THE DE MINIMIS USE OF A COPYRIGHTED MUSICAL COMPOSITION DOES NOT CONSTITUTE INFRINGEMENTNewton sued the Beastie Boys for infringement when they used some short portions of his copyrighted music in their song

Held: no reasonable jury could find the sampled portion of the song to be quantitatively or qualitatively significant portion of the song as a whole

Bridgeport Music v. Dimension Films6th Cir. (2005)[455]

WHEN AN ALLEGED INFRINGER DOES NOT DISPUTE THAT IT SAMPLED A COPYRIGHTED SOUND RECORDING, A SUBSTANTIAL SIMILARITY OR DE MINIMIS ARGUMENT MAY NOT BE USEDBridgeport owned the copyright to George Clintons song and Dimension Films use a riff from the song in several different places in the movie

Held: a sound recording owner has a right to sample his own recording of a song – but he just has to pay for that right

THE AUDIO HOME RECORDING ACTIs this the right way to approach regulation in the copyright area?Very narrow fix to the issue – allows consumers to make analog or digital audio recordings of copyrighted music for their private noncommercial use

Balancing the interests: Compulsory licensing Royalty pool - manufactures pay a royalty for each recording device sold

PUBLIC PERFORMANCE

MUSICAL WORKS, ASCAP AND BMI

Note on Section 116: jukebox compulsory license permitted operators of jukeboxes to engage in public performances of copyrighted musical works so long as they paid a statutorily set fee and attached a certificate to the jukebox

SOUND RECORDINGS AND PUBLIC PERFORMANCE BY MEANS OF A DIGITAL AUDIO TRANSMISSION

Note on the Small Webcaster Settlement Act of 2002

SECTION 110 LIMITATIONS REVISITEDWTO says that section 110 violate part of our obligations under the treaty – we say we are trying to deal with this and that remains our position

Music Industry Wrap-Up Rules development not top down, but by accretion responsive to technological change Key: Lobbying

o Think about interests of playerso Think about selection bias re: participants

Is this institutional design the right way to implement the statute? Are we handing the rights to the right parties?

THE DIFFERENT FACES OF INFRINGEMENT

Who is an infringer? Direct Infringement Liability

o Who counts as a direct infringer in light of changed technology?o Liability via authorization?

Indirect Infringement Liabilityo Keys: deep pockets – entities in a position to stop direct infringers – more at stake? Try to deter the parties in the chain that have more to lose – since the infringer usually doesn’t have much to loseo Quite broad in principle (pebbles thrown into a pond)

DIRECT INFRINGEMENT

Religious Technology Center v. Netcom On-Line Communication ServicesND CA (1995)[473]

BULLETIN BOARD OPERATORS AND INTERNET ACCESS PROVIDERS DO NOT DIRECTLY INFRINGE COPYRIGHT WHERE THRID-PARTY USERS UPLOAD INFRINGING COPIES ONTO A WEBSITE BULLETIN BOARDChurch of Scientology – former minister posted portions of a copyrighted work on a bulletin board website – the website provider was asked to stop the infringer and they refused

Held: Operators of the website were not direct infringers Are computer owners (or possessors) liable for copies made on their computers by third parties? What are the distinctions between bookstores, which are liable for infringing distribution (question 2, page 476) and entities like Netcom?

o They are just like the makers of a photocopying machine – not actually infringing – a bookstore has more control over what they are selling – active participation unless users posting on a bb

Copyright is a strict liability statute: a claim for direct infringement does not require any showing of intent or any particular state of mind

Note on Infringement by AuthorizationDirect-ish: Infringement by authorization? Congress’ intent: authorization of an infringing act result in liability for contributory infringement (not direct infringement on its own) But what if the only act in the US is authorization?

VICARIOUS LIABILITY AND CONTRIBUTORY INFRINGEMENT

What policies should guide liability for those who are not direct infringers but who in various ways participate in or enable infringing activity? How broadly should liability extend?

“Secondary Liability” – Indirect liability for infringement

Fonovisa, Inc. v. Cherry Auction, Inc.9th Cir. (1996)[480]

1) ONE MIGHT BE VIACARIOUSLY LIABLE FOR COPYRIGHT INFRINGEMENT IF HE HAS THE RIGHT AND ABILITY TO SUPERVISE THE INFRINGING ACTIVITY AND ALSO HAS A DIRECT FINANCIAL INTEREST IN SUCH ACTIVITIES2) ONE WHO, WITH KNOWLEDGE OF THE INFRINGING ACTIVITY, INDUCES, CAUSES OR MATERIALLY CONTRIBUTES TO THE INFRINGING CONDUCT OF ANOTHER MAY BE HELD LIABLE AS A CONTRIBUTORY INFRINGERLike a flea market and the operator allowed vendors to openly sell counterfeit recordings of latin music copyrighted by Fenovisa

Held: Cherry Auction has sufficient control over the direct infringers, the vendors, to police their activities – it also received substantial financial benefits from the infringing sales from the daily fees Fonovisa alleged both control and direct financial benefit sufficient to state a claim for vicarious copyright infringementElements of vicarious liability: Ability to supervise/control + direct financial interest

o What do these standards mean post-Fonovisa?Elements of contributory copyright infringement Knowing contribution to infringing conductShould the Fonovisa court have been more interested in the potential non-infringing uses of swap meets? Sony Beta Max caseWhat if there was a landlord who was being held responsibility for the drug-dealing happening in his apartments? Why is there an inability to control? The infringing activity is a draw – and they wouldn’t have come otherwise – people know they can get infringing stuff there so it can be seen that they received financial benefit from the infringing sales

Notes: provide a forum and support for the infringing activities vicariously liable can you no longer be passive?

Religious Technology Center v. Netcom On-Line Communications ServicesND CA (1995)[483]

LIABILITY FOR CONTRIBUTORY INFRINGEMENT PERTAINS WHEN THE D HAS KNOWLEDGE OF THE INFRINGING ACTIVITY AND SUBSTANTIALLY CONTRIBUTES TO THE INFRINGEMENT, WHEREAS VICARIOUS LIABILITY ARISES WHEN THE D HAS THE RIGHT AND ABILITY TO CONTROL AND RECEIVES A DIRECT FINANCIAL BENEFIT FROM THE INFRINGMENTP holds the copyrights to the works of Hubbard – the founder of the Church of Scientology

Held: the ISP may be contributory negligent but not vicariously liable ISP still has control over the system Received notice of the infringing use had knowledge No direct benefit financially from the infringing postings

Elements of Contributory Infringement: Knowledge of infringing activity + induces, causes or materially contributes to infringement

o How applied? Knowledge = notice + failing to take measures to preventElements of Vicarious Liability: Right and ability to control infringer’s acts + direct financial benefit knowledge is NOT an element

o How applied? Could control but no direct financial benefit so no vicarious liability because fees fixed

Does Fonovisa override any of the reasoning in Netcom? See re vicarious liability

Are Fonovisa and Netcom doctrinally similar?

Contributory Infringement v. Vicarious Liability:Are these distinct concepts? Do Fonovisa and Netcom cases treat them distinctly?

o Are knowledge and the right to control synonymous? If one exist, must the other also exist? Question 2 486 Do the elements of contrib. infr and vicar liable produce perverse incentives? Is ignorance bliss? Is that good?

LIABILITY OF DEVICE MANUFACTURERS

How far to extend secondary liability? How about “tertiary” liability: the investors in Napster? After all, but for them, there wouldn’t have been such a service

Sony Corp v. Universal City Studios (Supreme Court 1984): Betamax VCR – the system was capable of commercially significant noninfringing uses

Sale of copying equipment not contributory infringement “if the product is widely used for legitimate, unobjectionable purposes” Test: capable of “substantial non-infringing uses” To discuss in next section: private copying for time shifting purposes – Fair Use – why is this fair use? We would have watched it anyway and they still see the advertising they would have seen if they had watched

it in real time Sony standard presents complexities in digital copying contexts

Napster – 9th Cir. : 489 Contributory liability when notified + ability to purge files Vicarious liability because financial benefit from ad sales + right/ability to control infringement

Aimster – 7th Cir. page 489 Contributory liability not avoided by structure Encryption based strategy = willful blindness could not be used to avoid contributory infringement liability Even if showing of non-infringing uses – D has to show “disproportionately costly” to eliminate or reduce But, unlikely to find vicarious liability Posner is not fond of finding for vicarious liability in this situation so he would look to a richer contributory liability standard The facts pointed to an “invitation to infringement”

Metro-Goldwyn-Mayer Studios Inc. v. Grokster, LtdSupreme Court (2005)[490]

One who distributes a device to promote its use to infringe copyright, as shown by affirmative steps to foster infringement, is liable for the resulting acts of infringement by third parties

Held: based on inducementGrokster structured its architecture to avoid any centralization

Notes: Levi thinks these cases can be looked at in two different strands: Do all the cases point to knowledge of infringing uses as a key element for liability? Can you think of substantial non-infringing uses that we don’t want to shut down?

ON-LINE SERVICE PROVIDER LIABILITY [501] – NOT TESTED!!!!

Note on Section 512: Establishes “safe harbors” that provide immunity from infringement liability under certain circumstances for a “service provider” that engages in

o Transitory digital network communicationso System cachingo Storing information on its systems at the direction of userso Providing information location tools like hypertext links

Note on Identifying the Direct Infringer Verizon’s fight to keep its users anonymous

CRIMINAL INFRINGEMENT – NOT TESTED!!!!!

The 1976 Act does have criminal liability for infringement done “willfully and for purposes of commercial advantage or private financial gain”Felonies for mass infringing amounts of copies

United States v. MoranN NB (1991)[513]

Liability for criminal copyright infringement requires a showing that the infringement was a “voluntary, intentional violation of a known legal duty”Video store – made copies to “insure” himself against customers stealing the videos

Held: for it to be willful there needs to be an intent of infringement – Moran thought he was doing something legal to protect his business

United States v. LaMacchiaN MA (1994)[516]

In the copyright act, Congress specified the criminal penalties for copyright infringement, and these specific penalties should not be supplemented without Congressional actionMIT student created bulletin board

Held: the gov’t cannot hold someone under a charge that is not listed under copyright in response Congress enacted the No Electronic Theft (NET) Act

Note on the internet-Era Amendments to the Copyright Felony Provisions

ANOTHER LIMITATION ON COPYRIGHT: FAIR USE

Notes: these cases are unpredictable Challenges of Fair Use from Professor Paul Goldstein There are different kinds of contexts for which people want to use other people’s works – and each of these contexts have different social norms

A. FAIR USE IN COMPARATIVE PERSPECTIVE

Judge made doctrine

§ 107 Limitation on Exclusive Rights: Fair UseNotwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;(2) the nature of the copyrighted work;(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

Notes:

B. THE DIFFERENT FACES OF FAIR USE

3 Major Categories of Fair Use Cases Identified in the Casebook:1. Cultural Interchange: uses that further the development of common culture entertainment, connection, human interaction

a. How far should fair use privilege uses in the name of cultural progress go?2. Technical Interchange: cases relating to the interoperability of computer software and hardware reverse engineering – almost anti-trust cases

a. Consumer benefits, necessity of standardization 3. Market Failure of “Productive Consumption”: cases developing a theory for the recognition of fair use

a. But if the market can actually deal with situations where the work could be fair use then the market should control – fair use should have a bigger footprint rather than just in the face of market failure

1. CULTURAL INTERCHANGE

There is a hidden cost to unpredictability people are probably not using some works that are fair use for fear of being sued – so the common cultural works suffer as a result from this risk adverse fear and behavior

Harper & Row Publishers v. Nation EnterpriseSupreme Court (1985)[531]

PUBLICATION OF PORTIONS OF A WORK SOON TO BE PUBLISHED IN NOT FAIR USEFord’s manuscript quoted in magazine

(O’CONNOR) Held: the notion behind copyright fair use is allowing someone to use the work in a situation where the copyright holder would likely grant the use it is not reasonable to expect a copyright holder to allow another to “scoop” it by publishing his material ahead of time

Four Factors to Consider:o Purpose of the Use usually fair use works do not compete economically with the copyrighted worko Nature of the Copyrighted Worko Amount and Substantiality of the Portion Usedo Effect on the Market this use lessened the market value of the copyrighted work

Levi was very upset by this outcome and thought that Nation should have won

Comment on page 534: should the original artist have to ask permission to allow for the parody? should you recognize a custom of permission asking? Then how should it come out when the artist denies the right?

(BRENNAN) Dissent: why is 300 words of a 200,000 manuscript infringement?

Campbell v. Acuff-Rose Music, Inc.Supreme Court (1994)[538]

THE COMMERCIAL PURPOSE OF A WORK IS ONLY ONE ELEMENT OF THE INQUIRY INTO THE WORK’S PURPOSE AND CHARACTER FOR FAIR USE PURPOSESTwo Live Crew CaseDefining the outer limits of parody

(SOUTER) Held: reversed to evaluate the song including the other factorsQuestions to Ask:

Why is parody the paradigmatic FU situation? it is criticism and you have to copy a certain amount of the original to make the commentary and you would never get permission for the use Is FU to be limited to parody post-Campbell? Why about the shirt away from the “conjure-up” test of prior parody cases? The Court here does not look at the question addressed in Castle Rock – whether the original artist was going to try to get into the market that the new work captured the market of Comment on page 540: if Holmes is right about infringement in that Courts should not be determining what is good art – and maybe it is right to say that courts should not be able to cut off people getting

copyrights just because they don’t like the work – does this analysis apply to fair use? The court doesn’t even assess this idea – and just assumes the application of the nondiscrimination principleo Is the nondiscrimination principle right to apply to fair use? Even though it is usually applied to copyrightability? This would lead to judges making social calls on works

Kennedy’s Statement in His Concurrence: the fair use factors keeps parody within the proper limits fair use is an affirmative defense so doubts about whether a given use is fair should not be decided in favor of the self-proclaimed parody….any parody can be interesting and if we allow any weak transformation to be a parody and undermine the goals of copyright not assured that the song is a fair use and the discussion of the factors could lead the district court to find that the song is not a fair use seems to want a parody to be a higher standard of commentary on the original work – and not just handed out easily and allowing for works to just make money by loosely calling itself a parody

Harper & Row Campbell v. Acuff-Rose MusicMajority Dissent

Nation made “news event” out of its authorized first public action; its use was commercial (standard = “whether the user stands to profit from exploitation of the copyrighted material without paying the customary fee” – see connection to Factor 4); purloined/no good faith; no independent commentary, research or criticismNews v. Independent Commentary

News reporting is in preamble to 107; manuscript ≠ illegal

Purpose & Character Test: the more transformative the work, the less will be the significance of other factors (commercialism)

Transformative Character

Parody v. SatireParody is covered by fair use because it needs the original work to make its point and Satire can stand on its own – it is broader in that it is commentary on society as a whole – doesn’t need a work But what if this parody is taking away the owner’s derivative market?

Unpublished & FU is narrower w/r/t unpublished works; use “exceeds that necessary to disseminate the facts” [534]

No presumption against fair use of unpublished works; given impending publication, interest in confidentiality was outweighed by public value in dissemination

Nature Test: some works are closer to the core of intended copyright protection

If parody, this factor not as important b/c parodies invariably copy publicly known expressive works

Heart of the Book 300 out of 200,000 = quantitatively infinitestimal and qualitatively “not gratuitous in relation to the news reporting purpose”

Amount Taken Extent of permissible copying varies w/purpose & character of useContext is key (this grants a lot of discretion to the judges)

Parody may require use of “heart of the work”

Must be tied to first factorMarket Effect

“undoubtedly the single most important element

of fair use” [535] is this still true post-

Campbell?

Defendant must show “favorable evidence” about relevant markets: market for original + market for derivative works

When use is transformative, usually no substitution

Harm causes by criticism is not cognizable

If you look at the cases – it seems as if market harm is extremely important – but the question is – what is the market? Fair use market? Derivative works market?Do you include all potential markets?

In every fair use case – you can show there has been some adverse effect on the market

Fair use is an example of how the copyright law has balanced the needs of the public and the author – and the more you constrain the public works then the more you tip the balance between the owners and public

What makes the parody so special? It is out of necessity – that in order to do a parody you have to use some of the underlying work?

Parody: literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule. Copyright law recognizes that a parodist must use some elements of a prior author’s composition in order to create a new one that comments on that author’s work. It needs to mimic an original to make its point, but it may or may not be fair use depending on whether it could be perceived as commenting on or criticizing the original.

Satire: in which prevalent follies or vices are assailed with ridicule – or are attacking through irony, derision , or wit

By definition, isn’t every satire at least in some way a parody?Dr. Seuss Case: OJ Simpson trial – used the rhyme scheme in the cat in the hat – example of a situation that is a satire that is not actually focusing on the underlying work

1st Amendment Argument: question as to if there are other avenues to express your dissent? Is it necessary to use the work in order to make your commentary? Who is to say what is adequate?

The Wind Done Gone: how far should we extend parody to serious works constituting “transgressive readings?” The court finds that there is a finding of fair use – why? The court discusses parody and says that parody for uses like under Campbell can be extended to non-funny works A parody if its aim is to say something critical about the underlying work then it can still be parody and useable as fair use even if the underlying work is a work of fiction rather than scholarly article It just has to be a fictional or artistic critique – scholarly, news, novel – doesn’t matter for the application of fair use as long as it is a critique Is it necessary to quote the prior work? She does “transgressive rewriting” she uses the rewriting to criticize the racial issues held within the book – so why shouldn’t it be fair use just because she wrote it in story

form?

What about Harry Potter’s book written from Voldermort’s view? What would be the point of a book written from his prospective…it wouldn’t be scholarly…should this fit or not fit within this transgressive rewriting?

New Era Publications Int’l v. Carol Publishing Group2nd Cir. (1990)[548]

CIRITICAL BIOGRAPHIES FALL COMFORTABLY WITHIN THE FAIR USE PROVISIONS OF THE COPYRIGHT STATUTEChurch of Scientology – quoted widely Hubbard’s works in make his points

Held: not copyright infringement “purposes such as criticism . . . scholarship, or research, is not an infringement of copyright”1. Bios in preamble & use to “make his point”2. Factual and informational + customary3. % acceptable + works published4. No impact on market for authorized bio

Why did the church of scientology sue for copyright infringement? They didn’t want the religion criticized

2nd Cir had a big difficulty with what to do with unpublished works:

Harper & Row: the unpublished nature of the work is a key, through not necessarily determinative, factor tending to negate a defense of fair use One response: was quotation necessary to prove facts or simply chosen to “enliven the text?” 2nd Cir. and the New Era cases

o Why is the publication status the key?o What about the 1st amendment and P’s attempts to use copyright as a sword, to deflect criticism?o 107 Amendment makes the unpublished fact a key but not determinative – like Harper & Row?

Castle Rock Entertainment v. Carol Publishing Group2nd Cir. (1998)[551]

One factor of an analysis of fair use is whether the new work has a transforming purpose, that is, whether it adds something new, with a further purpose, to the original workBook of trivia questions about the Seinfeld show

Held: the quiz book did not add something new and lacked a transformative purpose “cashing in” or “participating”? Castle Rock: how did the court define the following?

o Transformativity did not add something newo Nature of the work – fictionalo Portion Used: significant portion directly from the series

o Potential market the copyright holder could have developed this derivative market ( even though the copyright holder did not have any interest in exploiting that market) Could you argue that the SAT quiz is a parody?

Nunez v. Caribbean International News Corp1st Cir. (2000)[554]

The reproduction of photographs for a good-faith newsworthy purpose constitutes fair useMiss Universe Puerto Rico for her modeling portfolio – she was nearly nude in one of them – the photographer sued for the printing of the photos in the newspapers

Held: the use of the photos in the newspaper was to “inform” and to “gain commercially” with its publication of the photos Photos used not only to titillate, but to inform, transformed into news Both factual and creative Copying less than whole would have made picture useless to story No market for sale of these pictures (including sale to other newspapers)

What is “transformativity”? Should transformativity be extended to uses in different contexts? Or should the works be transformed themselves to be fair use? Cases extending transformativity:

o Bill Graham Archives: o Grateful Dead [SUPP]o Perfect 10 [SUPP]

Sony Case discussed in Campbell: pay attention to the court’s use of transformative use

This gives us an opening about what transformativity means

When you look at his question within the internet

Bill Graham Archives v. Dorling Kindersley Limited2nd Cir. (2006)[SUPP 387]

Grateful Dead book with event poster reproductions and tickets – reduced form

Held: that it was fair use Purpose of the Use transformatively different from the original - for historical artifact Nature of the Copyrighted Work – artistic expression and promotion Amount and Substantiality of the Portion Used reduced the size – less than 1/5 of 1% of the book just because they copied the entire work doesn’t necessisarily weigh against fair use – sometime you have

to copy the entire work to make a fair use of the image (Nunez) Effect on the Market does not exploit the use of BGA’s images as such for commercial gain

o “the crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price” from Harper

Tension between fair use and moral rights of an author – the right to integrity includes the right to object to modifications of the copyrighted work and also to any “distortion” or “mutilation” of the work these modifications may result in the creation of derivative works and may then be excused by the fair use doctrine

Note on Fair Use and the 1st Amendment

2. TECHNICAL INTERCHANGE

Reverse engineering as fair use : it is used to promote expansive access to functional type works so that the interoperability of computer software cases is where these issues arise

Sega Enterprises Ltd. V. Accolade9th Cir. (1992)

Disassembly of a copyrighted object code is a fair use of the material if it is the only means of access to uncopyrighted elements of the code and there is a legitimate reason for seeking such access

[562]Held:FAIR USE ANALYSIS1. purpose and character does the copier have a legitimate reason? wanted to become a legitimate competitor in the field of Sega compatible video games (making more expression available to the public)2. nature of the work must be afforded a lower degree of protection than more traditional literary works because they contain unprotected aspects that cannot be examined without copying3. amount used the disassembly should receive little weight4. effect on market may have an effect but probably very little

Sony v. Connectix9th Cir. (2000)[567]

Intermediate infringement of copyrighted materials where the final product does not contain infringing material is likely to be viewed as fair useConnectix took Sony’s software BIOS and used it to create a video game system on Macs

Held: Sony’s BIOS is far removed from the core of intended copyright protection because it contains unprotected aspects that cannot be examined without copying – the final product did not contain infringing materialFAIR USE ANALYSIS1. purpose and character wholly new product from Sony’s PlayStation2. nature of the work video game software3. amount used copied the whole thing4. effect on market wholly new product despite its similarities to the uses and functions of the PlayStation – less likely to cause a substantially adverse effect on the potential market for the PlayStation

There should NOT be a provision in the copyright law that prevents competition

Perfect 10 v. Amazon9th Cir. (2007)[SUPP 392]

Google’s use of showing thumbnail images of full-size images

Held: Court also held that in-line linking was not a public display – only transmitting HTML instructions not the image itselfDISPLAY RIGHT: SERVER TEST: display is the act of serving content over the web – physically sending ones and zeros over the internet to the user’s browser where is the information held? Google DID store the thumbnails – direct infringement (District Court) Google DID NOT store the full-size images – not direct infringeDISTRIBUTION RIGHT: did not distributeFAIR USE: relied on Arriba’s transformative use of the thumbnails1. purpose and character electronic reference tool search engine may be more transformative than a parody because a search engine provides an entirely new use for the original work while a parody typically has

the same entertainment purpose as the original work2. nature of the work creative3. amount used necessary to copy the entire image4. effect on market doesn’t hurt the market and declined to address the use for cell phone images

Conclude that significantly transformative nature of Google’s search engine, particularly in light of its public benefit outweighs Google’s superseding and commercial uses of the thumbnails in this caseCourt Holds: vacated the preliminary injunction against Google on the issue of the thumbnails – fair use

Google image search is making copies of the pictures in a thumbnail form The court is focusing on largely the public use of this search engine Just like in Kindersly – how far is the court going to allow transformation? Because they can’t substitute for the original market OR if a work is being used in a different context for a different purpose then that aut to be transformation – conceptualized transformativity the court reads this second factor as whether it has been published or unpublished – it scews the interpretation of factor 2 use of the whole picture – is it necessary to the D’s use? yes – Google does have to use it – otherwise you can’t recognize the picture is there a harm to the market – what about the cell phone download market – the court sidesteps this question and said that the customers haven’t shown

Levi’s questions: what if this service is not just an indexing service – but a comparison shopping service?

Goldstien: thinks that the Court didn’t analyze the case correctly thinks that this is NOT transformation – just moving from one medium to another – which shouldn’t be fair use

Some critics argue that we should get rid of transformativity as a factor because it really doesn’t help us interpreting fair use

How should it be interpreted and what its scope should be with these cases – there is a possibility of going either way the internet is highly regulated by private power through the search engines they completely determine how knowledge is searched, found, used, remixed so a social argument that the new technologies

provide is the necessity of the index for being able to deal with this mass of material out there and the need to have some way of organizing if Google cannot stop people from illegally uploading copyrighted material – then the index function might be tainted – then what we are talking about is not putting too much restriction on the indexing then this is

why the Court is just focusing on the usefulness of indexing issue of social access why should this use be considered fair – contextual? Then how do you characterize the context to come out one way or another

3. MARKET FAILURE OR “PRODUCTIVE CONSUMPTION”

Productive Consumption: (Blackmun) fair use promotes external benefits that everyone can value if it is not productive consumption then why should we grant fair useMarket Failure: if there is too high of a transaction costs to deal with the market failure then there will be more fair use?

Sony v. Universal City StudiosSupreme Court (1984)[576]

The marketing of videocassette recorders does not infringe on the copyrights of recorded worksBetamax

(STEVENS) Held: home off-air recording of publically broadcast television programs is fair use because it is noncommercial (first factor) and there is no evidence of meaning likelihood of future harm ( fourth factor)TIME SHIFTING IS FAIR USE

It is copying of the whole work with absolutely no transformation entire copyingAlso – not just time shifting you can fast forward through the advertisingThere is a market out there for secondary markets for the shows on DVDRepurposed broadcast programming moved to cable

Focused on the fact that the use was noncommercial – so what is commercial? Go to American Geophysical Union

Puts the burden on the P!

FAIR USE ANALYSIS1. purpose and character there are noninfringing uses2. nature of the work throws out conclusory3. amount used throws out conclusory4. effect on market private time shifting is noncommercial in effect

Interesting that the court did not look to intent like they did with Napster and Grokster

Note on Productive Consumption

Note on Market Failure Theory: Wendy Gordon – market failure theory to explain the outcome of some fair use cases [583] Fair Use should be awarded when

o Market failure is presento Transfer of the use to defendant is socially desirableo An award of fair use would not cause substantial injury to the incentives of the P copyright owner

Lydia Pallas Loren criticized courts for using the market failure approach and that high transactions costs does not encompass the full range of considerations that a proper fair use analysis should address [597]

American Geopysical Union v. Texaco, Inc.2nd Cir. (1995)[585]

the practice of circulating copies of scientific journals so that employees may copy articles contained therein does not constitute a fair useMakes an infringement argument – but in fact it was fair use analysis

Held: not fair use

Did not look to Sony for guidance

FAIR USE ANALYSIS1. purpose and character even though it wasn’t a commercial use the company itself was commercial they didn’t look just at his department but the organization as a whole – expansive use2. nature of the work factual works3. amount used whole amount4. effect on market looked at the permission market and it showed market harm

Dissent: thought that the market harm was a circular argument

Princeton Universtiy Press v. Michigan Document Services6th Cir. (1996)[591]

The reproduction of copyrighted educational materials into coursepacks by a commercial copyshop for sale to students does not constitute a fair use

Held: not fair use There is no blanket immunity for copies for classroom use

FAIR USE ANALYSIS1. purpose and character commercial use2. nature of the work copyrightable3. amount used 5-30% - but the professors took the most important parts that had significant value in relation to the works4. effect on market use was noncommercial so the copyright owner has the burden of showing the market effect of the use – if it is commercial then the alleged infringer has the burden if the copy shops do not

have to pay the licensing fees then it does affect the value of the works

Do you like the productive use or market failure theory of fair use? Fair use could be diminished

Note on Texaco, MDS, and the Debate Over Market Failure Theory

A&M Records v. Napster9th Cir. (2001)[600]

The retransmission by a service of original works and the free distribution of those works to users of the service does not constitute fair use

Held: no transformative use

How far should the arguments about “productive consumption” reach? There is something productive in the social network and the opening up of the possibility of creative remixing and social cohesion

FAIR USE ANALYSIS1. purpose and character retransmits original works in a different medium2. nature of the work copyrightable3. amount used whole amount4. effect on market harms the recording companies’ market by reducing audio CD sales

Possible theories of fair use: fair use plays a role in copyright principally to the extent that it cures “market failures” fair use can be theorized as a species of justifiable ……………………………..

TECHNOLOGICAL PROTECTION MEASURES – NOT ON TEST

DMCA: why isn’t decryption fair use? The encryption also seems to limit the limited times argument – unconstitutional?

REMEDIES FOR COPYRIGHT INFRINGEMENT – NOT ON TEST

Civil Remedies:o Preliminary and permanent injunctions (502) ( why is this justifiable when we have the 1st Amendment?)o Impoundment and the destruction of infringing articles (503)o Monetary damages, including the copyright owner’s actual damages plus the infringer’s profits, or statutory damages (504) ando No punitive damages

Criminal penalties: see 506(a)