Copyright - William Fisher - 2010 Fall

8/11/2019 Copyright - William Fisher - 2010 Fall

1/33

Table of Contents

WHAT IS COPYRIGHTABLE .................................................................................................... 6 What IS required to satisfy constitutional requirements (Original Works of Authorship): ........................................................................................................................................ 6

Independent Creation .................................................................................................................................. 6 A low threshold of creativity ..................................................................................................................... 6

What is NOT Required: Novelty, Intent to Be Original, Artistic Quality (courtsadhere to aesthetic neutrality), Non -commercial, Lawful content, Effort .................. 6

Applications of these Originality Concepts Photography, Derivative Works ofDerivative works (when original is in public domain) ................................................................... 7

Subject Matter that CAN be Copyrighted .................................................................................... 8 Characters can be copyrighted if they meet (a) Sam Spade Test or (b) Clearlydelineated test ................................................................................................................................................. 8 Photographs consider (a) staging of subject matter, (b) rendition and (c) timing ......... 8 Compilations consider selection, coordination and arrangement (only those thingscan be copyright, not underlying facts/ideas/data). Special rule: No protection forarrangement of historical facts. ............................................................................................................... 8 Architecture including compilations of individually non-protectable elements (whichhave thin copyright protection) and really unique/original designs (which havebroader protection). ..................................................................................................................................... 8 Plots as long as not so abstract as to be an idea ......................................................................... 8 Idea/Expression Dichotomy ideas and facts cannot be copyrighted, only expression . 8 Useful Articles determine if it is useful (not designed to portray itself) and then see ifthere is (a) physical separability or (b) conceptual separability of useful elements ......... 9 Computer Programs Copyright protects literal copying, but weakly protects non-literal elements (e.g., abstraction-filtration-comparison test). Compilation tests arerarely applied (combinations of non-protectable elements). ................................................... 10

What CANNOT be copyrighted .................................................................................................... 11 Scenes-a-Faire .............................................................................................................................................. 11 Expression if it is the only way to express an idea Merger Doctrine (If there are only afew ways of expressing, then thin copyright only for verbatim copies) ........................... 11 Blank Forms as long as they do not convey information ........................................................ 11 Recipes (but not their explanation)..................................................................................................... 11 Methods and their application (as long as there is not a lot of judgment involved) ....... 11 Historical Facts and theories .................................................................................................................. 11 Titles and very short phrases ................................................................................................................. 11 Maps (although in theory could be copyrightable, not in reality) .......................................... 11 Methods of Operation like software command menus ............................................................ 12

Fixation Requirement (fixed in a tangible medium of expression) 2nd

circuitrequires embodiment and duration ......................................................................................... 12 International Framework ............................................................................................................. 12

OWNERSHIP ............................................................................................................................. 13 Authorship ......................................................................................................................................... 13

An author usually translates the idea into a fixed tangible expression, but sometimesclosely directs others (so that they are just the instruments). ................................................ 13


2/33

Joint Authorship: (1) the co-authors intended to be co-authors (one inseparable work),and (2) the co-authors made independently copyrightable contributions (were bothauthors control, holding out and audience appeal) ............................................................... 13 Work-For-Hire: (1) Made by an employee (as in agency common law) in scope ofemployment, or (2) one of 9 works listed in statute and in written contract. Impactsduration, renewal and termination and VARA rights. ................................................................. 13

Formalities (Notice, Registration and Deposit) .................................................................... 14 Modern law does not require notice, and only requires registration and deposit forsuit. Federal copyright protection attaches at time of creation. .............................................. 14

Duration .............................................................................................................................................. 15 Currently life of author + 70 years. Works for hire = 95 years from publication or 120years from creation, whichever ends sooner. ................................................................................. 15

Transfers of Ownership ................................................................................................................. 16 Generally like any other property right, except for the race notice recording system forsuccessive inconsistent tranfsers ......................................................................................................... 16 Exclusive transfers (assignments and exclusive licenses) must be in writing. Non-exclusive licenses can be oral or implied. ......................................................................................... 16 Abandonment of a right must be manifested by some overt act or indication of intentto abandon. Abandonment of some rights is not abandonment of all rights. .................... 17 Those with copyrights in collective works, but not the underlying works, can use thework in revisions or later collective works in the same series. ............................................... 17

Termination Rights ......................................................................................................................... 17 Works created 1978 or later fall under section 203, which opens a 5 years window 35years after transfer in which the transferor can terminate the transfer if he gives notice2-10 years before termination will happen. Cannot be waived by transferor. Do notapply to works-for-hire. Derivative works can continue to be utilized. ............................... 17

ENTITLEMENTS ...................................................................................................................... 18 106(1) Reproduction: Includes (a) mechanical copying and (b) havingcopyrighted material in mind when creating a substantially similar embodiment.Requirements: .................................................................................................................................. 18

(1) Defendant created a copy that is (a ) tangible, (b) fixed (embodied and more thantransitory duration) and (c) intelligible ............................................................................................ 18 (2) Copying-in-fact through (a) Direct evidence (testimony, admission or commonerrors) or (b) Access (either widely disseminated work or chain of events) + probativesimilarity (including unprotectable elements) or (c) striking similarity (some courtslower/remove access requirement in this case)............................................................................ 18 (3) Improper Appropriation/Actionable Copying (a) comprehensive copying, (b)fragmented literal similarity (unless de minimus) or (c) comprehensive non-literalsimilarity (substantial similarity of protectable elements = total concept and feel,extrinsic/intrinsic test, essence of authors expression, market impact, etc). .................. 18 Exception: Owner of a lawfully owned copy (not licensed copy) can make a copy as anessential step in the utilization of the computer program in conjunction with amachine and that it is used in no other manner ........................................................................... 20

106(2) Modification / Derivative Works ................................................................................ 20 For derivative work status: Some courts require originality, some require the works tofit into the words of the statute (recast, transformed or adapted) and some requirefixation (concrete or permanent form). ......................................................................................... 20 106(2) uniquely covers certain situations, including alteration of lawfully obtainedcopies and lack of fixation (not in 9 th circuit). ................................................................................. 20


3/33

Section 110(11) Exception to 106(2) allows making sections of a movieimperceptible during a performance or transmission (not fixed). ........................................ 21 An author of a derivative work holds no copyright in that work if the original pervadesthe derivative work and was used without permission. ............................................................. 21 Section 115: No moral or derivative rights for musical composers/sound recordingartists once they authorize release of one sound recording anyone can cover for acompulsory license (11 cents per mechanical copy) and can include significantvariations (while maintaining the basic melody or fundamental character). ................ 21

106(A) Moral Rights .................................................................................................................... 21 VARA: only for works of visual art (unique wor ks or less than 200 copies) and NOTworks-for-hire (1) controls attribution and forbids an intentional act that prejudicesthe honor or reputation of the artist and (2) protects works of recognized statute from intentional or grossly negligent destruction (even without prejudice). ................... 21 Lanham Act 43(a) reverse passing off does NOT apply to rights of attribution forcopyrighted material (only to the source of the manufacturer).............................................. 21

106(3) Distribution Distribute (proof of actual dissemination, not offer in mostjurisdictions) copies or phonorecords of the copyrighted work to the public by saleor other transfer of ownership, or by rental, lease or lending. ..................................... 22

109(a) First Sale Doctrine exempts lawful owners of lawfully made copies from 106(3)liability for disposing (not reproducing) that copy ...................................................................... 22 Licensees (to have a license: (a) specify it's a license, (b) restrict transfer and (c)impose notable use restrictions (usually more than required by Copyright law)) areNOT covered by the 1 st sale doctrine .................................................................................................. 22 602(a) gives the copyright owner right to prohibit the unauthorized importation ofcopies, but this is limited by 1 st sale doctrine for lawfully owned (not illegal orlicensed) copies produced in the US. .................................................................................................. 22

106(4) Public Performance / 106(5) Public Display .......................................................... 23 Definition of public: (1) In a public place or (2) in any place where a substantialnumber of persons outside a normal circle of family and its social acquaintances is

gathered. ......................................................................................................................................................... 2 It is a Public Performance even if the public is not getting the transmission in thesame time or place ...................................................................................................................................... 23 Exemptions to public performance and display rights: classrooms, distance learning,religious assembly, non-profit, small stores/restaurants, real-space displays ofpaintings. ........................................................................................................................................................ 2

106(6) Exclusive right to perform sound recordings by means of digital audiotransmission. ..................................................................................................................................... 24

Exemptions to 106(6): some non-subscription webcasts that meet preconditions areeither exempt altogether or are subject to compulsory licensing .......................................... 24

DEFENSES.................................................................................................................................. 24 Fair Use ( 107) Non-exhaustive list of 4 factors: .............................................................. 24

(1 ) Purpose and Character of Ds Use: (a) commerciality (including how direct theprofits intermediate use), (b) transformative use (parody in Campbell , satire inBlanche v. Koons , other uses/purposes in Nunez , physical metamorphosis in FreeRepublic (not popular) and good for society in Sony ), (c) good/bad faith and (d)whether Ds use was customary (implied permission) ........................................................... 24 (2) Nature of Ps Work: (a) unpublished /published, (b) factual/creative and (c)computer software ..................................................................................................................................... 25


4/33

(3) Amount taken: (a) qualitative, (b) quantitative and (c) how much is taken relativeto what is nec essary for Ds use ............................................................................................................ 26 (4) Impact on potential market: (a) if Ds use was widespread, (b) impact on derivativework market (not market for criticism) and (c) definition of potential market (includesnew markets created by D? Only those P would likely develop or license? Existingmarkets? Harper now created more expansive reading) ........................................................... 26

Estoppel ............................................................................................................................................... 27 (1) representation of fact (silence doesnt count unless there is a duty) and (2) rightfulreliance thereon and (3) injury or damage resulting from denial by the party makingthe presentation .......................................................................................................................................... 27

Laches .................................................................................................................................................. 27 The opposing party did not assert their rights diligently, and such asserted lack ofdiligence resulted in prejudice to defendant. .................................................................................. 27

Copyright Misuse ............................................................................................................................. 27 (1) P violated anti-trust laws OR (2) P used copyright in a manner violative of thepublic policy underlying system (stimulating artistic creativity for general good) especially limiting for software licenses. Remedy: no enforcement during misuse. ...... 27

SECONDARY LIABILITY ........................................................................................................ 28 Contributory Liability: ................................................................................................................... 28

(1) someone directly infringed, (2) D has knowledge (actual or constructive withCOSNU defense for equipment for constructive knowledge) and (3) D materiallycontributed to unlawful behavior. ....................................................................................................... 28

Vicarious Liability: .......................................................................................................................... 29 (1) Someone directly infringed, (2) D directly profits from the infringement and (3) Dhas the right and ability to control the infringement ................................................................... 29

Inducement: ....................................................................................................................................... 29 One who distributes a device with the object of promoting its use to infring e asshown by clear expression or other affirmative steps taken to foster infringement isliable for the resulting acts of infringement of 3 rd parties. ...................................................... 29

DMCA .......................................................................................................................................... 29 512 Safe Harbors for direct and secondary liability. ....................................................... 29

(a) Passive intermediaries (ISPs) are exempt for people sending infringing materialthrough their lines. ..................................................................................................................................... 29 (b) No liability for passive caching ...................................................................................................... 29 (c) OSPs (who store information for mass distribution to others) are exempt if theycomply with notice and takedown. Requirements: (1) no actual (notice given) orconstructive knowledge (red flag), (2) no direct financial benefit when the serviceprovider has the right and ability to control such activity and (3) upon notification,responds expeditiously to remove or disable access. Other requirements: (a) designatesomeone to receive notices, (b) do not interfere with standard technical devices (e.g.,

encryption) and (c) establish and reasonably implement a repeat infringer policy. ..... 29 (d) Search engines (information location tools) exempt if they comply with notice andtakedown (doesnt cover making thumbnail copies, only running search and linking) 30

New Entitlements............................................................................................................................. 30 1201(a) Gives private rights of action by prohibiting circumvention (the user) andtrafficking in technology allowing circumvention of Access Controls (access to work)............................................................................................................................................................................ 1201(b) Gives Private rights of action by prohibiting trafficking in technology allowingcircumvention of Copy Controls (prevents unauthorized 106 activities). .......................... 30


5/33

Exceptions to 1201: libraries deciding whether to buy, police in an investigation,reverse engineering for interoperability, encryption research and other exemptionsprovided by Copyright Office (e.g., films studies profs behaviors). ....................................... 30 1202 prohibits the removal of copyright management information (does not apply tonon-digital markings signifying ownership) ................................................................................... 31

REMEDIES ................................................................................................................................. 31 Equitable Remedies ........................................................................................................................ 31 Permanent Injunctive Relief: (a) irreparable injury (not presumed by infringement),(b) damages are inadequate, (c) balance of hardships favors P and (d) public interestwont be harmed .......................................................................................................................................... 3 Preliminary Injunctive Relief: same 4 factors as for permanent injunction, plus (e)likelihood of success on the merits. ..................................................................................................... 31

Damages - P can choose Ds profits & actual damages OR statutor y damages. Attorneys fees also available. ..................................................................................................... 32

Actual Damages : (a) Money P would have earned but for Ds behavior lost sales,losses because of reduced prices to compete, loss of price discrimination and (b) Valueof Use theory how much P would have gotten in licensing the work to D (industry

practice, Ps past licensing fees, if P would have been reluctant to license). ...................... 32 Defendants Profits : P points to direct and indirect (with proximate cause) profitsreasonably related to infringement (revenues from sales of infringing or relatedgoods, revenues generated by ads, en hancement of Ds goodwill) and D can subtractout costs and apportionment for Ds goodwill or additions. ..................................................... 32 Statutory Damages: Per work payments - Regular: $750-$30,000, Willful: $750-$150,000, Innocent: $200- 30,000. Depends on deterrence, nature of work, harm to Psreputation, evidence of actual damage (not needed to get statutory damages),continuation of infringement after notice, duration of infringement, etc. .......................... 32 Costs & Attorneys Fees : Available to both prevailing P and D based on frivolousness,motivation in bringing suit, compensation needed, deterrence, etc. Must findspecifically number of hours spent and a reasonable rate. ....................................................... 33

Criminal Sanctions: requires willful infringement (voluntary, intentional violationof a known legal duty subjective test even if unreasonable). ....................................... 33

Outline Skips Theory stuff

o Notes Pages 28-39o Notes Pages 106-107, 110-11o Notes Page 123o Notes Pages 188-190

To prevail in a copyright infringement suit, Plaintiff must show:

1. Material at issue is subject to copyright protection2. Plaintiff owns copyright in that material3. Defendant used material in a way that violates plaintiffs exclusive rights as

set forth in 106 of the Copyright Act.4. Defendant can escape liability with affirmative defenses


6/33

a. Remember: Copyright is a strict liability offense, so distributors andrecipients may be liable even if they dont know about the infringingactivity!

WHAT IS COPYRIGHTABLEWhat IS required to satisfy constitutional requirements (Original Works ofAuthorship) :

Independent Creation

A low threshold of creativityo Feist doesnt make the cut of creativity arranging phone numbers in

alphabetical ordero The bare minimum will depend on social context whats been done and

what is conventional or standard.

Feist Publications v. Rural Telephone Service (SCOTUS 1991) N 8 Rejectssweat of the brow because the touchstone of copyright is originality (not effort).Compilations can be copyrighted because of arrangement/selection andcoordination of facts/ideas. The copyright does NOT extend to those facts/ideas.Alphabetical organization of phone numbers did not meet minimum level ofcreativity necessary for constituti onal originality because it is standard and mayhave been dictated by law.

What is NOT Required: Novelty, Intent to Be Original, Artistic Quality (courtsadhere to aesthetic neutrality) , Non-commercial, Lawful content, Effort

o Novelty is not required, but lack of can be used to undermine claims ofindependent creation or lack of distinctiveness for a fictional characternecessary for copyrightability.

o Intent to be original is not necessary (e.g., you try to copy, but a clap ofthunder moves your hand), but lack of intent to be original may be used toshow lack of creativity.

o Aesthetic/good/beautiful work is not necessary and courts maintainaesthetic neutrality for purpose of copyrightability and in infringementclaims. See Bleistein .

o Some courts tacitly or explicitly make judgments about the quality ofart, and Professor Yen says we should get this out in the open so wecan discuss it freely (e.g., capable of stimulating aesthetic response,intended to be art or recognized in the art community).

o Example: Air Pirates partly lost because court did not consider comicsgood art, or art at all!

o VARA recognizes quality of art when it speaks of works of relativestatute which invites experts to battle about aesthetic quality.


7/33

o Dissent in Bleistein thinks that purely commercial works shouldn't becompyrightable because no incentive is needed for their creation.

o Fraudulent material, pornography, child pornography, etc. are all protectedby copyright law.

o Effort is not necessary, and the sweat of the brow line of cases has been

abandoned.Bleistein v. Donaldson Lithographing Co. (SCOTUS 1903) N 7 Copyrightprotected extended to circus ads. Court announces aesthetic neutrality (it wontjudge worth or quality of art) and decides that totally commercial works (ads) arecopyrightable. Dissent: There should be no copyright protection for pure ads.

Applications of these Originality Concepts Photography, Derivative Works ofDerivative works (when original is in public domain)PHOTOGRAPHY:

o Photography was held copyrightable since the picture of Oscar Wilde.o Thus, no one can exactly copy a photograph without copyright infringement.o If its not an exact copy, consider:

o (1) Construction of the matter (staging of subject matter) Subject matter isnt protected unless it is staged

o (2) Rendition (lighting, angle, film type, etc) ando (3) Timing

It is not infringement to recreate the timing (see Mannion ). However, Sahuc v. Tucker (a picture of church in the fog)

court does not explicitly say that rendition and timing can befreely copied. Nevertheless, D wins on substantial similarity.

Mannion v. Coors Brewing Co. (SDNY 2006) N 9 A billboard may besubstantially similar to a photo of Kevin Garnett that it imitated. Considerprotectable elements in a photograph (subject matter staging, rendition, timing) andask at what point the similarities between the 2 photograhps become sufficientlygenerally that there will be no infringement even though actual copying occurred.

DERIVATIVE WORKS OF DERIVATIVE WORKS (IF ORIGINAL IS IN PUBLIC DOMAIN)

o A smaller model (e.g., reduced size Rodin thinker) doesnt have enoughoriginality to sustain a copyright

o In the actual case, court was moved by effort to make and found

differently.o A model in a different medium (e.g., plastic rough copy of metal piggy bank)is protected because there are differences due to choice of medium.

o In actual case, court claimed it was a clumsy copy and gave noprotection.


8/33

Subject Matter that CAN be Copyrighted

Characters can be copyrighted if they meet (a) Sam Spade Test or (b) Clearlydelineated test

o Sam Spade (9 th Cir) Test: Character is protected if he constitutes the story

being told (not just a chessman in the game of story-telling). This test is notas popular.o 2nd Cir. Test: Character is protected if he is developed with enough specificity

that he is clearly delineated. This is easiest for graphic characters. Hard forcharacters played by real people or a series of real actors. Hardest in writing.

MGM v. American Honda Motor Co. (CD Cal 1995) N 2 Honda commercial waspreliminarily enjoined because of likelihood of infringement of James Bondcharacter and scenes from James Bond film. Copying shown circumstantially by (a)access (commercial-maker saw the films and access can be assumed because ofwidespread popularity and distribution) and (b) substantial similarity via the

extrinsic/intrinsic test. No independent creation (because character was calledJames Bob and casting preferences asked for a James -Bond-like character). Nofair use. Copyright owners did not waive their rights by allowing other James BondCharacters to be made or by waiting until December to ask for preliminaryinjunction. Balance of harms tipped in favor of plaintiff (lost licensing anddiminishing value of copyright).

Photographs consider (a) staging of subject matter, (b) rendition and (c) timingSee Mannion .

Compilations consider selection, coordination and arrangement (only those thingscan be copyright, not underlying facts/ideas/data). Special rule: No protection forarrangement of historical facts.See Feist and Intervest Construction v. Canterbury Estate Homes.

Architecture including compilations of individually non-protectable elements (whichhave thin copyright protection) and really unique/original designs (which havebroader protection).Intervest Construction v. Canterbury Estate Homes (11 th Cir. 2008) N 24 Floorplan for a 4 bedroom house did not infringe copyrighted floor plan because therewere enough differences. Copyright only extended to arrangement/coordination ofunprotectable elements, which have thin protection. Separating cop yrightablefrom non-copyrightable elements is a question of law (or at least mixed).

Plots as long as not so abstract as to be an idea See Nichols .

Idea/Expression Dichotomy ideas and facts cannot be copyrighted, only expressionBaker v. Seldon (SCOTUS 1880) N 15 Blank ledgers illustrating new book-keeping concept were not copyrightable because the art of the book-keeping itselfwas not copyrightable (only patentable). If the methods described in the book cant


9/33

be done without copying the pictures, the pictures are in the public domain. Only theexplanation/expression is protected.

Nichols v. Universal Pictures Corp (2nd Cir. 1930) N 15 - Two plays about Jewishand Irish families whose children love, marry and have a kid. Learned Hand sayscopyright is not limited to the literal text. At some point in abstraction of plot, plotbecomes a n idea that in unprotectable even if original and novel. Here, the secondplay only took the idea. No plagiarist can excuse his wrong by showing how muchof his work he did not copy.

Hoeling v. Universal Studios (2nd Cir. 1980) N 16 A theory about Hinenburgdestruction proposed in a historical book was not protected by copyright. Onlyauthors original expression of facts/theories is protected, not including scenes-a-faire.

Alexander v. Haley (SDNY 1978) All similarities in two books about slavery(Roots and Jubilee) were fact, scenes-a-faire, public domain material (e.g., folk-lore), etc. None of those things get copyright protection, so no infringement.

Useful Articles determine if it is useful (not designed to portray itself) and then see ifthere is (a) physical separability or (b) conceptual separability of useful elementsCopyright Statute:

o A useful article is an article having an intr insic utilitarian function that is notmerely to portray the appearance of the article or to convey information. Anarticle that is normally part of a useful article is considered a useful article.

o A useful article can be protected if the pictorial, graphic or sculptural featurescan be identified separately from and are capable of existing independently

of, the utilitarian aspects of the article. What is a useful article?

o Animal mannequins, masks of famous people and toy airplanes are not usefulbecause they are portraying themselves.

o Costumes circuit split about whether they are usefulo A human mannequin is a useful article

Tests for Conceptual Separability:

o Is form dictated by function (e.g., bike rack dictated by function)?o

What is primary, the aesthetic or utilitarian aspects (e.g., belt buckleprimarily aesthetic)?o Market test would people buy it even if it had no utilitarian use?o Is the object beautiful?o Temporal Displacement (focused on the average observer)o Temporal Displacement + added appealo Intent of creator did he have a lot of artistic discretion?o Can it stand on its own as a work of art? (this is a judicial determination)


10/33

Pivot Point International v. Charlene Products (7 th Cir 2004) N 40 - Summarizesconceptual separability tests and finds mannequin head designed by an artist tohave a hungry look protected because artist had a lot of discretion in design.

How Copyright compares to other forms of IP for 3D useful articles:

Design Patents Copyright Trade DressNon-utilitarianRequirements

Ornamental ConceptualSeparability

Non-functional

Other requirements Novel & Non-obvious Originality Distinctiveness(products require2ndary meaning)

Infringement Substantial Similarity Copying Likelihood ofconfusion or dilution

Duration 14 years Life + 70 Years Forever unlessgeneric or abandoned

Computer Programs Copyright protects literal copying, but weakly protects non-

literal elements (e.g., abstraction-filtration-comparison test). Compilation tests arerarely applied (combinations of non-protectable elements).Computer Associates International v. Altai (2 nd Cir 1992) N 49 Applies theabstraction-filtration-comparison test to non-literal elements of a computerprogram and finds no substantial similarity.

Tests for determining substantial similarity of non-literal elements:

o Whelan test (P friendly) identify one purpose/idea for the work andeverything that is not necessary to that purpose is expression.

o Abstraction-Filtration-Comparison Test:o (1) Abstraction identify each level of abstraction from code to

overall program function.o (2) Filtration take away what is idea and what is required or

necessary (e.g., elements dictated by efficiency, computerrequirements, etc) and what is in the public domain.

o (3) Comparison compare the remaining core of protectableexpression to defendants work, taking into consideration howimportant that core is to the plaintiffs work.

Lotus Development Corp v. Borland International (1 st Cir. 1995) N 51 Lotus 1-2-3- s command menu hierarchy was NOT copyrightable subject matter because itwas a method of operation (method by which program is operated and controlled).Therefore, it doesnt matter if there is discretion/expression. Concurrence: Thereare network externalities giving the menu value the users getting used to themand building macros with them!

IP tools used to protect Computer Programs:

o Trade Secrecy problems if people want source code or can reverse engineer


11/33

o Contracts shrink-wrap or click-through problems with 3 rd party privityissues and possibly being struck down as violating public policy.

o Patents more expensive to geto Copyright weak protection (as evidenced through Altai and Lotus ). Also,

hard to enforce. Fair use is also construed broadly in software context (see

sony-conectex ).What CANNOT be copyrighted

Scenes-a-Faire Incidents, characters or settings that are as a practical matter indispensible, or atleast standard, in the treatment of a given topic. This deals with both custom (how itis usually said) and function (the best way of saying something). See Hoeling (Hindenburg case) and Alexander v. Haley (Roots case). Other examples include awoman sitting on a toilet with toes pointed inward in fashion photography and abusiness man standing on ledge looking at his toes.

Expression if it is the only way to express an idea Merger Doctrine (If there are only afew ways of expressing, then thin copyright only for verbatim copies) When the expression and idea are so close that they merge, courts deny protectionof the expression so as not to create a monopoly on the idea. See Alexander v. Haley. Note that when there are only a few ways to express an idea, courts give only thinprotection (protecting only verbatim copying, not paraphrasing).

Thin copyright is a way of giving less protection to things that border on what wedont want to protect like getting very close to a fact or an idea.

Blank Forms as long as they do not convey information

See Baker v. Seldon .Recipes (but not their explanation)

Methods and their application (as long as there is not a lot of judgment involved)See Baker v. Seldon . Sometimes applications of methods can be protected if there is alot of judgment involved (e.g., choosing set number, error range, etc).

Historical Facts and theoriesAs long as something is presented as fact, even if it is a novel historical theory, it isunprotectable.

Titles and very short phrasesIncluding ET Phone Home (a lthough it may infringe on ET character).

Maps (although in theory could be copyrightable, not in reality)Despite having a lot of artistic contribution (e.g., deciding on colors, width of roads,etc), maps are generally not protected. When cartographer names a place himself,everyone can copy it because it becomes a fact.


12/33

Methods of Operation like software command menusSee Lotus .

Fixation Requirement (fixed in a tangible medium of expression) 2nd circuitrequires embodiment and duration

o Occurs in two situations, but fixation is treated identically in both:o (1) To get copyright protectiono (2) To violate 106(1), Defendant must make a copy that is fixed

o 2nd Circuit requireso (1) Embodiment (captured or rendered)o (2) Duration (more than transitory and 1.2 seconds isnt enough)

o For fixation, the fixation cannot be happening at the same time as theperformance for a pre-existing copyright (unless it is sounds/images beingtransmitted simultaneously the NFL exception).

o Separate criminal penalties apply to boot-legging musical performances (notunder the Copyright Act).

International Frameworko Initially, international agreements were based on bilateral agreements

based on the reciprocity principle (we give protection to you if you giveprotection to us).

o Berne Convention (1982)o Based on national treatment principle each member country must

accord residents of all other countries the same protection theyaccord their own citizens.

o Prohibits formalities (notice, registration, etc)o Protects moral rights.o Has no teeth for enforcement.

o TRIPS Agreement o Incorporates Berne Convention by reference EXCEPT for moral rights

provision.o Most favored nation principle if you extend more protection that

you need to any one country, you must extend that heightenedprotection to everyone in the agreement.

o Requires copyrights for computer software.o Has teeth for enforcement.

o WIPO Copyright Treaty (1996) strengthens the rights of authors in theonline environment. Penalizes circumvention of encryption technology.


13/33

OWNERSHIP

Authorship

An author usually translates the idea into a fixed tangible expression, but sometimes

closely directs others (so that they are just the instruments).Lindsay v. The Wrecked and Abandoned Vessel RMS Titanic (SDNY 1999) N 55 Lindsay was still the author of the footage even though he didnt take it himself, butdirected others and closely monitored the lighting, angles, etc. Defendants were notjoint- authors because they didnt have any control (indicating no intent to be joint-authors).

Joint Authorship: (1) the co-authors intended to be co-authors (one inseparable work),and (2) the co-authors made independently copyrightable contributions (were bothauthors control, holding out and audience appeal) Allumuhammed v. Spike Lee, Warner Bros (9 th Cir 2000) N 56 Allumuhammed

was not considered a joint- author because he was not an author he had nocontrol (only helpful tips) and was not the originator or maker of the movie even though he rewrote parts of the script, consulted on Islam and directed somescenes.

Factors indicating authorship:

1. Author superintends the work by exercising control2. Objective intent and manifestation to be co-authors (holding out)3. The audience appeal of the work turns on both contributions and cant be

divided.

Only co-authors c an be subject to an accounting (not licensees). A co-author has anundivided interest in the work and can license it, but must share all profits with theother co-authors.

Work-For-Hire: (1) Made by an employee (as in agency common law) in scope ofemployment, or (2) one of 9 works listed in statute and in written contract. Impactsduration, renewal and termination and VARA rights.Community for Creative Non-Violence v. Reid (SCOTUS 1989) N 59 Reid made amodern nativity scene for CCNV, but it was not considered a work-for-hire becauseReid was not an employee, and the work didnt fall under the specific list of works in101(2). Defines an employee using agency common law.

Avtec Systems N 63 Employee who secretly worked on a better version of theprogram to sell to competitors probably wasnt motivated by a purpose to serve hismaster.

Statute : It is a work made for hire if (1) it is made by an employee in the scope ofemployment OR (2) it falls under the specific list of 9 things and is in a writtencontract as a work-for-hire (collective work, motion picture/audiovisual work,


14/33

translation, supplementary work (foreword, illustration), compilation, instructionaltext, test, answer to test or atlas).

An employee under agency common law has a principal who controls the means andmanner by which the product is accomplished. Factors to consider include (withstarred ones more heavily weighted by 2 nd circuit):

o *Hiring partys right to control o *Skill requiredo Source of the toolso Location of the laboro Duration of the relationshipo *Right to assign additional projectso Control over hours of worko Method of paymento Right to hire assistantso Business of the hiring partyo *Employee benefitso *Tax treatment

Scope of Employment:

o It is of the kind of work the employee is employed to performo It occurs substantially within the authorized time and place ANDo It is actuated ( motivated ), at least in part, by a purpose to serve the master

Ramifications for a work-for-hire (most cant be contracted around) :

o Copyright duration (95 years from publication or 120 from creation)o Employer owns the Copyrighto VARA doesnt apply o Renewal and termination provisions are different

Note: Judicial exception for university professors that their work is not for hire!

Formalities (Notice, Registration and Deposit)

Modern law does not require notice, and only requires registration and deposit forsuit. Federal copyright protection attaches at time of creation.Formalities have softened, but the softening was not retroactive!

For works under the 1909 Regime:

o Unpublished works were only protected by state common law.o At the moment of publication, you only got federal copyright protection if

you complied with formalities (mandatory notice). Otherwise, it fell intopublic domain.

o Mandatory registration and renewal after 28 years, or it fell into the publicdomain.


15/33

o Distinction between general and limited publication. o General Publication meant that if the works wasnt copyrighted, i t

fell into public domain. Occurs when: (1) tangible copies of the work are distributed to the general

public in a way that the general public exercises dominion or

control over the work OR (2) work is displayed or exhibited in such a manner as topermit unrestricted copying by the general public

Even manner and common-sense restrictions oncopying can created implied restrictions.

Performance of a work is NOT a general publication.o Limited Publication Work was given to a select group for a limited

purpose, without the right of diffusion, reproduction, distribution orsale. The work did not fall into public domain.

Estate of Martin Luther King, Jr v. CBS, Inc (11 th Cir 1999) N 69 Kings speech

was not generally published by performance, and the copies given to news mediawere limited to enable reporting. If King had endorsed pamphlets with the speechgiven to the public, that may have been general publication that threw his speechinto the public domain (because he only registered for copyright a month later).

Modern system:

o Federal copyright protection attaches from the moment of creation.o The duration is now life of the author plus 70 years.o Anonymous works, pseudonymous works and works-for-hire last 120 years

from creation or 95 years from publication (whichever ends sooner).

Formalities for works published since 1989 (when US signed Berne Convention):o Notice () is not necessary for protection (although may influence damages

if defendant can get innocent infringement defense).o Registration is required for bringing suit involving US works and for getting

statutory da mages and attorneys fees ando A deposit is required for suit (failure punished with fines).

Creative Commons is a mechanism that attempts to off-set the over-inclusiveness ofmodern copyright law by allowing copyright owners to surrender some (but not all)of their rights e.g., attribution required, non-commercial use only, no derivativeworks, share and share alike.

Duration

Currently life of author + 70 years. Works for hire = 95 years from publication or 120years from creation, whichever ends sooner.

o Works published before 1923 are in the public domain


16/33

o Works published 1923-1963 are still under copyright (will begin to fall out in2018) and are subject to renewal in 27 th year window. Author cannot assignrenewal term, and in the case that he dies his heirs get it.

o Works published 1964-1977 get automatic renewal, but it still goes to thespouse/kids. Optional voluntary renewal allows the author to renew

between year 27 and 28 (to keep assigners rights). o Works created before 1978, but published after 1978 last for life of author

plus 70 years or until 12/31/2002 (whichever is later) and if published by12/31/2002 they last until 12/31/2047. This is an incentive to publishworks.

o Works created 1978 or later life of author + 70 years.

Eldred v. Ashcroft (SCOTUS 2003) N 74 - Upheld constitutionality of Sonny BonoCopyright Extension Act against claims of 1 st amendment violations, limited timesviolations and rational basis violation for retroactively extending copyrightprotection. Court said no first amendment issues because idea/expression

distinction and fair use incorporate all free speech concerns. Life of author plus 70years is not perpetual, so it is still a limited time. Rational basis exists (e.g., beingequal to Europe, aligning with out dynastic impulses, greater preservation of worksby giving someone an incentive to transfer to a more long-lasting format).Petitioners did not raise the preamble argument or challenge prospective extension.

Transfers of Ownership

Generally like any other property right, except for the race notice recording system forsuccessive inconsistent tranfsersTransfers can include: assigning all rights, exclusive license (must be in writing andsigned), non-exclusive license, willing or passing intestate. All rights can betransferred, or only some (no indivisibility rule).

Successive Inconsistent Transfers (Owner transfers to A, and then to B) have a race notice recording system :

o First to record with the Copyright office gets the rights, as long as B doesnthave knowledge of a previous transfer to A that wasnt recorded.

o However, A will get the rights if he records within one month, even if Brecords first (grace period).

Exclusive transfers (assignments and exclusive licenses) must be in writing. Non-

exclusive licenses can be oral or implied.


17/33

Abandonment of a right must be manifested by some overt act or indication of intentto abandon. Abandonment of some rights is not abandonment of all rights.

Those with copyrights in collective works, but not the underlying works, can use thework in revisions or later collective works in the same series.

NY Times Co v. Jonathan Tasini (SCOTUS 2001) N 79 - Freelance writers whocontributed to print periodicals retained all rights other than those given to printperiodicals under section 201(c). Print periodicals did not have the right to give thearticles to electronic databases that call up the articles in isolation it was not arevision under 201(c) .

Statute: Section 201(c) A publisher has rights under 201(c) absent a contractfrom the independent contractor to use his work in (1) that collective work towhich the author contributed his work, (2) any revision of that collective work OR(3) any later collective work in the same series.

Termination Rights

Works created 1978 or later fall under section 203, which opens a 5 years window 35years after transfer in which the transferor can terminate the transfer if he givesnotice 2-10 years before termination will happen. Cannot be waived by transferor. Donot apply to works-for-hire. Derivative works can continue to be utilized.

Works for hire are not subject to the termination regime! Thus, music recordingstudios are worried about termination rights being enforced in 2013!

Works published between 1964-1977 If an inter vivos transfer is made after 1978,

then section 203 applies. If the transfer was made before 1978, the section 304applies: gives two 5-year windows 56 and 75 years after publication .

Works published between 1923-1963 Section 304 rules apply and renewal rightsapply.

Section 203 and 304 both say derivative works prepared prior to termination maycontinue to be ut ilized. Thus, no problem like occurs in Abend !

Stuart v. Abend (SCOTUS 1990) N 80 Author assigned derivative work rights tomake a movie, but then died before renewal period and the copyright in the originalwork then went to Abend. The makers of the derivative work infringed Abendsrights when they broadcast a movie based on the original work that was lawfullymade. The makers of the derivative work only have a copyright in the elements theyadded, not the elements from the underlying work. SCOTUS does not care that thiscreates a bilateral monopoly with potential extortion or negotiation breakdown.


18/33

ENTITLEMENTS

106(1) Reproduction: Includes (a) mechanical copying and (b) havingcopyrighted material in mind when creating a substantially similarembodiment. Requirements:

(1) Defendant created a copy that is (a) tangible, (b) fixed (embodied and more thantransitory duration) and (c) intelligibleCartoon Networks (2 nd Cir 2008) N 90 Remote DVR challenged on grounds that(1) copy sent from arroyo server to TV is a public performance, (2) subscriber madea copy in the arroyo server in violation of 106(1) (court says subscriber is makingthe copy, so no direct liability and secondary liability claims were waived), (3) copycreated by buffering (court says the copy must be fixed for liability, which requiresembodiment and more than transitory duration, and 1.2 seconds is transitory!)

(2) Copying-in-fact through (a) Direct evidence (testimony, admission or common

errors) or (b) Access (either widely disseminated work or chain of events) + probativesimilarity (including unprotectable elements) or (c) striking similarity (some courtslower/remove access requirement in this case)Three Boys Music Corp. v. Michael Bolton (9 th Cir 2000) N 94 Court generouslyfound both access and substantial similarity for Michael Boltons song infringingIsley Bros. song. Access must be shown to be more than bare possibility.Recognized subconscious copying of music, and finds it important that Boltonthought he was copying Marvin Gaye. Follows inverse ratio rule. Fisher thinks this isweak access and weak similarity very generous court.

Inverse ratio rule: require a lower standard of proof of substantial similarity when a

high degree of access is shown.Opposite inverse ratio rule (rejected in Three Boys ): a weak showing of accessrequires a stronger showing of similarity.

Striking similarity: no access needs to be shown if the works are strikingly similar.

(3) Improper Appropriation/Actionable Copying (a) comprehensive copying, (b)fragmented literal similarity (unless de minimus) or (c) comprehensive non-literalsimilarity (substantial similarity of protectable elements = total concept and feel,extrinsic/intrinsic test, essence of authors expres sion, market impact, etc). Saul Steinberg v. Columbia Pictures (SDNY 1987) Movie poster infringed coverof New Yorker magazine (myopic view of NY) because access is undisputed and, inconnection with the inverse ratio rule, an average law observer would recognizethe alleged copy as having been appropriated from the copyrighted work (their testfor substantial similarity). This case comes close to copyrighting Steinbergs style (the outer border of ). Court rejects equitable defenses such as estoppel (Steinbergwasnt silent he protested) and laches (Steinberg protested within weeks).

Tests for Substantial Similarity:


19/33

o Same aesthetic appeal: the ordinary observer, unless he set out to detect thedisparities, would be disposed to overlook them, an regard their aestheticappeal as the same.

o Total concept and feelo Essence of the authors expression o Extrinsic/Intrinsic test (9

th circuit only) (1) extrinsic test involves objectivesimilarity between elements and combinations of elements (experts

involved) and (2) intrinsic test involves total concept and feel (for the jury todecide). Another variation is that extrinsic = similarity of ideas and intrinsic= similarity of expression (but odd considering idea/expression dichotomy).

o Appropriation: whether an average lay observer would recognize the allegedcopy as having been appropriated from the copyrighted work.

o Market Impact: whether the defendants work would impact Plaintiffsworks market (is it a substitute?)

When there is a lot taken from the public domain (facts, scenes-a-faire, old works,

etc):o Filtration test (very defendant friendly)o Regular substantial similarity test (e.g., total concept and feel)o more discerning observer test (compromise)

Judi Boisson v. Banian (2nd Cir. 2001) N 83 Court finds some infringementbetween quilt designs . Ps quilt has some originality due to arrangement and colorselection for alphabet. Similarities to works in public domain irrelevant becausethere is no access shown (so P has independent creation). Direct copying admitted,and aesthetic appeal test for substantial similarity applied (even though courtpurports to apply discerning observer test because so much is in the publicdomain).

Seth Swirksy v. Mariah Carey (9 th Cir. 2004) N 85 After valid ownership andaccess were admitted, court finds that Ps expert evidence was sufficient to presenta triable issue of extrinsic similarity (objective criteria like title hook phrase, lyrics,melody, cadence) so that summary judgment is inappropriate. Admits that a fewnotes in a row can be copyrighted.

Castle Rock v. Carol Publishing (2 nd Cir. 1998) N 87 Seinfeld Aptitude Testunlawfully copied Seinfeld TV show and was not fair use even though it did notdiminish Seinfelds profitability (and may have incr eased it). Substantial similarity

analysis found quantitative (more than de minimus fragmented literal similarity)and qualitative copying. Other tests for substantial similarity not analyzed becauseof the differences in the medium/genres. Fair use analysis: (1) work was nottransformative because it was repackaged entertainment, (2) fictional facts is atcore of copyright, (3) amount taken shows that the purpose of the use was justentertainment and (4) Effect on potential market must factor in (a) if everyone did itand (b) value/market of derivative works.


20/33

Exception: Owner of a lawfully owned copy (not licensed copy) can make a copy as anessential step in the utilization of the computer program in conjunction with amachine and that it is used in no o ther manner

106(2) Modification / Derivative Works

For derivative work status: Some courts require originality, some require the works tofit into the words of the statute (recast, transformed or adapted) and some requirefixation (concrete or permanent form) .

106(2) uniquely covers certain situations, including alteration of lawfully obtainedcopies and lack of fixation (not in 9 th circuit).106(1) v. 106(2)

o 106(1) covers verbatim copies. 106(2) does not.o 106(1) and 106(2) both cover translations, abridgements, adaptations, etc

(as long as it incorporates enough to be substantially similar).o 106(2) (but NOT 106(1) covers:

o Contracts/licenses that only cover verbatim copies, but not derivativeworks

o Termination rights in 203/304 do not prevent uses of derivativeworks (but do prevent copies under 106(1)).

o Alteration of a lawfully obtained copyo Absence of fixation (although not in 9 th circuit)

Annie Lee v. A.R.T. Company (7 th Cir 1997) N 98 Legally purchased copies of awork mounted on tiles and sold were not derivative works they are likeframing/mounting. Changes in the work do not have originality necessary for protection, indicating no derivative work. Even if originality is not a prerequisite fora derivative work, the words of the statute do no support a finding here (recast,transformed or adapted).

Note: on the exact same facts, the 9 th circuit found a 106(2) violation anddistinguished the tiles from framing because it was hard to remove.

o CleanFlicks case was a 106(2) violation even with Annie Lee s more generousholding because it was abridgements.

Micro Star v. Formgen (9 th Cir. 1998) N 98 Product with 300 user-createdlevels for Duke Nukem was a 106(2) violation because files were (a) fixed and (b)described the screen (the story) substantially incorporated protected materialfrom the pre-existing work (satisfied extrinsic/intrinsic substantial similarity test).

Rowling v. RDR N 100 Harry Potter Lexicon infringed 106(1) because it took toomuch text from original work, but was not a 106(2) violation because a lexicon to afictional world is not a derivative work.


21/33

Section 110(11) Exception to 106(2) allows making sections of a movie imperceptibleduring a performance or transmission (not fixed).

An author of a derivative work holds no copyright in that work if the original pervadesthe derivative work and was used without permission.

For example, the Prince guitar case.Section 115: No moral or derivative rights for musical composers/sound recordingartists once they authorize release of one sound recording anyone can cover for acompulsory license (11 cents per mechanical copy) and can include significantvariations (while maintaining the basic melody or fundamental character).

106(A) Moral Rights

VARA: only for works of visual art (unique works or less than 200 copies) and NOTworks-for-hire (1) controls attribution and forbids an intentional act that prejudicesthe honor or reputation of the artist and (2) protects works of recognized statute from intentional or grossly negligent destruction (even without prejudice).There are VARA exemptions for:

o Changes for the purposes of preservationo Results of the passage of time or the inherent nature of the materials

VARA rights can be waived in writing , but cant be transferred or assigned

1st circuit has said that VARA doesnt apply to site -specific art (e.g., art that must bein a garden).

Jan Randolph Martin v. City of Indianapolis (7 th cir. 1999) N 113 Outdoorstainless steel structure was of recognized stature ((a) meritorious and (b) viewedas such by experts or a segment of society) based on newspaper articles. There wasno waiver of VARA by a contract which was not fulfilled allowing D to removesculpture with notice.

Lanham Act 43(a) reverse passing off does NOT apply to rights of attribution forcopyrighted material (only to the source of the manufacturer)Dastar Corporationn v. 20 th Century Fox (SCOTUS 2003) N 113 Lanham Act43(a) does NOT prevent unaccredited copying of a work . Dastars sales withoutproper credit to Fox did not constitute reverse passing -off (misrepresentingsomeone elses goods or services as its own). 43(a) only has to de al with the originof the physical product (the manufacturer), not the creator of the underlying IP. Nospecial rule for communicative products (products valued not for their physicalqualities, but intellectual content) because that will interfere with Copyright law(create perpetual Copyright!). Once in public domain, the IP is free!


22/33

106(3) Distribution Distribute (proof of actual dissemination, not offer inmost jurisdictions) copies or phonorecords of the copyrighted work to thepublic by sale or o ther transfer of ownership, or by rental, lease or lending. Hotaling v. Church of Jesus Christ of Latter-Day Saints (4 th Cir 1997) N 117 Plaintiff learned of copies over 3 years ago (so 106(1) violations were past SOL), butclaimed that there was a violation of 106(3) by having unauthorized copies inmicrofiche at main library. Court finds 106(3) violation even without proof ofpeople looking at the microfiche because it was enough that the library offered it tothe public. Dissent: There was no distribution because there was no transfer, rental,lease or lending. Plus, there was no evidence anyone looked at the infringing copy!

109(a) First Sale Doctrine exempts lawful owners of lawfully made copies from 106(3)liability for disposing (not reproducing) that copyRentals of CDs are excluded from the 1 st sale doctrine because there was a businessmodel of people renting CDs and copying them.

Licensees (to have a license: (a) specify it's a license, (b) restrict transfer and (c)impose notable use restrictions (usually more than required by Copyright law)) areNOT covered by the 1 st sale doctrineTimothy A. Vernor v. Autodesk (9 th Cir. 2010) N 118 Autodesks software wasdistributed pursuant to a limited license agreement, which makes purchaserslicensees and not owners. Thus, the 1 st sale doctrine doesnt apply and the essentialstep defense cannot be invoked. This is a narrow reading of first sale doctrine thatencourages price discrimination.

Price Discrimination: changing different consumers different prices for the samegood or service. Alternatively, charging different prices that are not explained by the

cost of the versions of the good/service that is supplied (e.g., coach/business class).Versions of Price Discrimination:

o 1st Degree charging each buyer exacting what he is willing and able to payo 2nd Degree inducing buyers to reveal their resources and preferences (e.g.,

with versioning like business and coach)o 3 rd Degree Separate people into rough categories (e.g., senior and student

discounts).

Contracts may allow copyright owners to price discriminate even with a broad 1 st sale doctrine, but are limited by: requiring acceptance, privity problems, otherlimitations on contract (e.g., public policy, unconscionability), lower damages.

602(a) gives the copyright owner right to prohibit the unauthorized importation ofcopies, but this is limited by 1 st sale doctrine for lawfully owned (not illegal orlicensed) copies produced in the US.Quality King v. Lanza Research International (SCOTUS 1998) N 124 Lanzahad US made products with some sold at a premium in US stores (bound by contractnot to sell in low-end stores) and some sold more cheaply abroad. SCOTUS finds that


23/33

the 1 st sale doctrine limits 602(a) importation rights and allows people to buycheaper US made products abroad and sell them in the US. This is decided by puretextual analysis, not policy considerations. 602(a) still protects against licensees,bailees, unlawfully owned copies, pirated copies and copies made abroad.

106(4) Public Performance / 106(5) Public DisplayDefinition of public: (1) In a public place or (2) in any place where a substantialnumber of persons outside a normal circle of family and its social acquaintances isgathered.

It is a Public Performance even if the public is not getting the transmission in thesame time or placeSee Cartoon Network (Arroyo server sending the copy to the TV is not a 106(4)violation because it is not public one copy only goes to one person).

Columbia Pictures v. Redd Horne N 131 - Private viewing booths in movie rentalstore was a 106(4) violation because the store was public and the same copy wasbeing transmitted to many people at different times. This was not exempt by 1 st salebecause 106(3) was not involved no lending or transfer of possession.

Summary of music business model:

o Composer/Song-writer has a copyright, which is licensed to music publisher(includes reproduction licenses for sheet printers, record companies, etc andderivative work licenses for performers).

o Record companies own copyrights in sound recordingso Public performance rights for musical compositions are licenses separately

through blanket license companies. These issues blanket licenses to radiostations and big stores.o Radio stations do not need to get licenses from record companies for

performances of sound recordings.

Summary of movie industry model:

o Producer gathers rights (from novelists, record companies, musicpublishers) and hires people (actors, screenwriters, directors) and grantsglobal license to the movie studio

o The studio licenses theatres, HBO, airlines, TV, cable companies, etc

Perfect 10 v. Google (9 th Cir 2007) Thumbnail images were a 106(1) and 106(5)violation (but excused by fair use because it was a different purpose and sociallybeneficial) and in-line linking or framing was not a 106(5) violation because it wasnot present ation of a copy resident on Googles servers.


24/33

Exemptions to public performance and display rights: classrooms, distance learning,religious assembly, non-profit, small stores/restaurants, real-space displays ofpaintings.

106(6) Exclusive right to perform sound recordings by means of digital audio

transmission.Exemptions to 106(6): some non-subscription webcasts that meet preconditions areeither exempt altogether or are subject to compulsory licensingThese preconditions include: cant announce the program in advance, cant playmore than 3 songs by same composer in an hour, include technology to deter hometaping, etc).

DEFENSES

Fair Use (107) Non-exhaustive list of 4 factors:General exemption to ALL 106 rights

(1) Purpose and Character of Ds U se: (a) commerciality (including how direct theprofits intermediate use), (b) transformative use (parody in Campbell , satire inBlanche v. Koons , other uses/purposes in Nunez , physical metamorphosis in FreeRepublic (not popular) and good for society in Sony ), (c) good/bad faith and (d)whether Ds use was customary (implied permission) Commerciality:

o Profit-makingo Whether D is exploiting and profiting without paying the customary price

(thus, if there is no license fee customarily, no commerciality)o Saving expense of purchasing (thus, commerciality even without profit-

making!)o Some courts consider distance between violation and profit (e.g.,

intermediate copying)

Transformative Uses:

o Parody: o Campbell implied only satire and not parody was transformative

Roger v. Koons applied this and found no transformative usebecause Ds work wasnt commenting on Ps work (only usingit as a vehicle).

Cat NOT in the Hat found not fair use because use of Ps workwas satire.

o Castle Rock (Seinfeld case) no parody because court doesnt believeDs assertions.

o Suntrust (Gone with the Wind case) found parody even withouthumor.


25/33

o Naked Gun using Pregnant Demi Moore picture was parody because areasonable viewer would reasonably believe that the workreasonably criticizes Ps work.

o Food Chain Barbie was parody o Satire and Pure Criticism

o Blanch v. Koons satire is also transformative o Pure criticism (e.g., using Imagine juxtaposed with Stalin troops) is

also transformative.o Creative Metamorphosis (requires physical altering of Ps work)

o Free Republic Conservative site that posted NY Times articles forcriticism was not fair use because they werent altered. This iscriticized and not widely accepted!

o Other Purposes/Uses:o Nunez (1 st Cir 2000) P (fashion photographer) took a modeling

picture of a nude woman who becomes Miss Universe and it becomesa controversy and the picture is used in a newspaper discussing the

controversy. Fair use because it is transformative original use wasadvertising, new use is news.

o Unauthorized use of student essays by anti-plagiarism company wasfair use because it was for valid social purpose and different use.

o Perfect 10 : Thumbnail images copied (106(1)) and displayed (106(5))was fair use because it was (1) socially beneficial and (2) a differentpurpose.

o Gaylord other purposes defense fails because court finds that bothD and P had the purpose to honor Korean War dead.

o Socially valuable Sony and Perfect10

Blanch v. Koons (2nd

Cir 2006) N 153 Koons use of part of Blanchs picture in hisappropriation art was fair because (1) (a) it was highly transformative (satire commenting on society), (b) commerciality is discounted by high transformation, (c)failure to seek permissi on is not per se bad faith, (2) Ps work was creative, but thatis discounted when Ds work is highly transformative, (3) D didnt take more than heneeded and didnt take a lot of creative elements and (4) no market harm.

Gaylord v. United States (Fed. Cir. 2010) N 154 No fair use (despite no marketharm!) when US Postal Service used a picture of Gaylords Korean War Memorial ona stamp because (1) stamps were commercial and there was no transformative usesince they both had the purpose of honoring Korean War soldiers, (2) sculpture was

expressive/creative, (3) 14 out of 19 soldiers were used and had same focus/subjectmatter as sculpture and (4) no market impact for derivative works.

(2) Nature of Ps Work: (a) unpublished/published, (b) factual/creative and (c)computer softwareViolations for Computer software are more likely to be fair use because (1) there is agreater need to reveal unprotected functional features and (2) patent protection isavailable.


26/33

Sony Computer Entertainment v. Connectix Corp (9 th Cir 2000) Connectixsintermediate copying (106(1) violation) of Sonys program to reverse engineersoftware that plays Sony games on a computer was fair use because: (1) it wascommercial, but indirect profit because of intermediate use, (2) software is farfrom core of copyright and copying is a necessity to get at uncopyrightable

ideas/methods, (3) all of the program was copied several times, but none appearedin Connectixs final product and (4) Connectix is a legitimate competitor

(3) Amount taken: (a) qualitative, (b) quantitative and (c) how much is taken relativeto what is necessary for Ds use

(4) Impact on potential market: (a) if Ds use was widespread, (b) impact on derivativework market (not market for criticism) and (c) definition of potential market (includesnew markets created by D? Only those P would likely develop or license? Existingmarkets? Harper now created more expansive reading)

o Spectrum of potential market everything from existing market all the way

to value of the work even if there is no market.o Most courts take intermediate approach and say markets P would in generaldevelop of license.

o Link to factor 1: many courts find there is no potential market intransformative uses!

Sony Corp v. Universal City Studios (SCOTUS 1984) N 137 Sonys Betamax VCRdid not create contributory infringement (because it was capable of substantialnon- infringing uses) because unauthorized time -shifting is fair use: (a) private,non-commercial, (b) no likelihood of harm and no past harm proven, (c) expandedviewing audience benefits society. Dissent: Blackmun says time-shifting should notbe fair use because (a) it is a consumptive unproductive use, (b) the work is highlycreative, (c) it was a complete verbatim copy and (d) the potential market shouldinclude the new market of time-shifters willing to pay.

Harper & Row v. Nation Enterprises (SCOTUS 1985) N 140 The Nationinfringed Harper & Rows copyright (106(1) and 106(3)) in Fords memoir and itwas not fair use because (1) the use was commercial and bad faith, (2) Ps work wasunpublished and the part taken was the most expressive, (3) low quantity butheart was taken and (4) Expansive reading of potential market and there wasclear damage because Time cancelled its contract! 1st amendment argumentsrejected because and Fair Use already embody them.

Luther R. Campbell v. Acuff-Rose Music (SCOTUS 1994) N 141 2LiveCrewsparody of Pretty Woman was fair use because (1) parody is transformative(criticizes underlying work, not just satire) and commercial prong should bedownplayed, (2) Work is highly creative, but all parodies take expressive works, (3)Amount taken was no more than necessary to do parody (which usually had to takea lot to evoke the original) and (4) there is no protectable derivative market forcriticism, only those markets that creators of the original would e likely to license ordevelop. Not all parody automatically is fair use must do whole analysis.


27/33

Estoppel

(1) representation of fact (silence doesnt count unless there is a duty) and (2) rightfulreliance thereon and (3) injury or damage resulting from denial by the party makingthe presentation

See Saul Steinberg v. Columbia Pictures (the New Yorker cover case)Laches

The opposing party did not assert their rights diligently, and such asserted lack ofdiligence resulted in prejudice to defendant.See Saul Steinberg v. Columbia Pictures (the New Yorker cover case)

Unlike trademark law, copyright owners maintain their copyright ev en if they dontgo after everyone who infringes.

Copyright Misuse

(1) P violated anti-trust laws OR (2) P used copyright in a manner violative of thepublic policy underlying system (stimulating artistic creativity for general good) especially limiting for software licenses. Remedy: no enforcement during misuse.Anti-Trust violations include: price-fixing, tying one product to another lessdesirable product, sham litigation.

Public policy violations: software licenses forbidding licensee to develop competingsoftware, use competing copyrighted product ( Practice Management ) or usesoftware on competitors device.

Open questions : Is it misuse to suppress criticism of ones copyrighted work, grosslyexaggerate copyright holders rights, buy another copyright to suppress competingwork?

Misuse remedy: P may not assert against anyone until it is purged itself of allmisuse (during misuse for some time afterward). This may bar claims because of 3year SOL.

Practice Management Info Corp v. The American Medical Assn (9 th Cir 1997) N160 - AMA misused its copyright when it gave a license to government on thecondition that it not use any other competing work. Misuse does not invalidatecopyright, but precludes its enforcement during the period of misuse. Therefore,Practice Management can copy it and AMA cannot enforce its rights.


28/33

SECONDARY LIABILITY

Contributory Liability:

(1) someone directly infringed, (2) D has knowledge (actual or constructive with

COSNU defense for equipment for constructive knowledge) and (3) D materiallycontributed to unlawful behavior.o Sony Betamax : one is not liable for contributory liability for equipment if it is

capable of substantial non-infringing uses (COSNU).o Unclear whether this applies to vicarious liability, and whether it

applies if there is actual (not just constructive) knowledge ofinfringement for contributory liability.

o Fonovisa (9 th Cir 1996) Flea market operator has contributory liability (forproviding site and facilities) and vicarious liability (if market is moreattractive because of violating merchandise).

o Napster (2001) sampling songs (listening once to determine if you wantto buy it) is not fair use. Therefore, there were a lot of direct infringers.COSNU defense helped with constructive knowledge, but Napster had actualknowledge because it knew titles of songs that were infringing. Therefore,there was contributory liability. For the same reason, Napster hadsupervisory control and there was vicarious liability.

o Aimster (2003) Finds Contributory Liability - Since operators didnt knowwhat was in contents of shared files, no COSNU defense for constructiveknowledge (court tweaks Sony and requires proof of legitimate uses, notpossibility) and there was material contribution by providing active supportin tutorials. Dicta says that when there is a lot of illegality, D has the burdenof showing it would have been too costly to change the system.

o Grokster (2005) 9th Cir found no contributory liability (COSNU defense, noactual knowledge and D didnt provide site and facilities) and no vicariousliability (no monitoring or supervisory relationship and no control other thanshutting down the whole system). SCOTUS introduces the concept ofinducement to find liability.

o Bertelsmann Settlement (2006) Case settled (and so never adjudicated) fortertiary liability for loaning money to Napster (assisting Napster in assistingits users to violate laws).


29/33


30/33


31/33

made collaborative play possible (not controlling access to the server, but the pieceof the game that makes it possible to play on the server). This is a 1201 violation.

1202 prohibits the removal of copyright management information (does not apply tonon-digital markings signifying ownership)

Textile Secrets International v. Ya-Ya Brands, Inc. (C.D. Cal. 2007) N 174 No1202 violation when Ya-Ya removed the side material on fabric containing copyrightinformation because DMCA only applies to Copyright Management performed bytechnological measures of automated systems (not those added, even by digitalmeans, by a person).

Fisher says 1202 usually arises when stripping metadata from a picture (like thewatermark with Copyright owners name).

REMEDIES

Equitable Remedies

Permanent Injunctive Relief: (a) irreparable injury (not presumed by infringement), (b)damages are inadequate, (c) balance of hardships favors P and (d) public interestwont be harmed Traditionally, injunctions were granted pretty automatically in Copyright cases.That seems to be changing.

Exceptions to Plaintiff-friendly application of injunction:

o Abend (9 th Cir 1988 Rear Window case) Although the continued

distribution of Rear Window was a violation of short story copyrightowners rights, court only ordered damages (no injunction) because so man ypeople invested and relied on the movie.

o Tasini (SCOTUS 2001 NYTimes articles in LexusNexus Case) althoughfreelance copyright owners rights are violated when works are included inelectronic database, they only get damages (not injunction) because it is inthe public interest to have comprehensive databases.

o eBay v. MerExchange (SCOTUS 2006) In patent case, injunctive relief is notautomatic for a finding of infringement. Irreparable harm is not assumed byinfringement. Courts seem to be applying this to as well.

Preliminary Injunctive Relief: same 4 factors as for permanent injunction, plus (e)likelihood of success on the merits. Salinger v. Colting (2 nd Cir 2010) Applies eBay to Copyright and preliminaryinjunctions. Affirms lower courts ruling that Salingers suit against 60 Years Lateris likely to succeed on the merits (valid copyright in book and character andsubstantial similarity to both and no fair use (1) notransformation/parody/critique, (2) Catcher in the Rye was fictional (jumps overpossible problems with it being autobiographical), (3) more was taken than needed


32/33

to critique and (4) it hurt market for derivative works, but not original). Remands toconsider other eBay factors, including irreparable harm (e.g., loss is difficult tomeasure, possible market confusion, loss of 1 st amendment freedom and right not tospeak, etc), balance of hardships tipping in Ps favor and the public interest(promoting store of knowledge, free expression distinct from parties interests).

Damages - P can choose Ds profits & actual damages OR statutory damages.Attorneys fees also available.

Actual Damages: (a) Money P would have earned but for Ds behavior lost sales,losses because of reduced prices to compete, loss of price discrimination and (b) Valueof Use theory how much P would have gotten in licensing the work to D (industrypractice, Ps past licensing fees, if P would have been reluctant to license).

Defendants Profits : P points to direct and indirect (with proximate cause) profitsreasonably related to infringement (revenues from sales of infringing or relatedgoods, revenues generated by ads, enhancement of Ds goodwill) and D can subtractout costs and apportionment for Ds goodwill or additions.Frank Music Corp v. MGM, Inc. (9 th Cir. 1989) N 183 - P won for infringement ofhis play Kismet by a show at MGMs hotel. P was awarded 75% of direct profits fromthe Kismet Act and 2% of indirect profits (hotel and gaming profits). Indirect profitsfor MGM Grands parent, M GM Inc, are too tenuous (no proximate cause). P gotprejudgment interest, which was available under 1909 Act to prevent unjustenrichment. Attorneys fees require a specific finding of hours spent and areasonable rate. Parent here is liable for infringing acts of subsidiary because therewas substantial and continuing connection between the two with respect to theinfringing acts.

Statutory Damages: Per work payments - Regular: $750-$30,000, Willful: $750-$150,000, Innocent: $200-30,000. Depends on deterr ence, nature of work, harm to Psreputation, evidence of actual damage (not needed to get statutory damages),continuation of infringement after notice, duration of infringement, etc. Sony BMG Music Entertainment v. Joel Tenenbaum (D. Mass July 2010) N 184 Court lowers statutory damages award against an individual (who admitted towillfully copying 30 songs on a peer-to-peer network) from $675,000 to $67,000because it was an excessive award that violated DP. Rejects contention that thereneeds to be more than nominal damages to award statutory damages. ConsiderBMW factors for when an award is excessive: (1) reprehensibility of Ds misconduct

(physical harm or economic? Repeated or isolated incident? Intentional malice ormere accident?), (2) Disparity between actual or potential harm and punitivedamages and (3) difference between punitive damages and civil penaltiesauthorized or awarded in comparable cases. Although this award was withinstatutory limits, Congress probably didnt intend the high end for an individual whodidnt get any pecuniary gain from infringement.


33/33

Costs & Attorneys Fees : Available to both prevailing P and D based on frivolousness,motivation in bringing suit, compensation needed, deterrence, etc. Must findspecifically number of hours spent and a reasonable rate.Fantasy, Inc. v. John C. Fogerty (9 th Cir. 1996) N 186 Court awarded Dattorneys fees despite the fact that Ps suit was blameless (not frivolous or in bad

faith) because D furthered the purpose of copyright, he prevailed on the merits (nota technicality like SOL), the benefit from successful defense was not insubstantialcompared to the costs of litigation and the award will have no chilling effect orinequity because P can afford it. Award without interest is affirmed because both Pand D should be treated equally, and attorneys fees and interest awards are in thediscretion of the court.

Criminal Sanctions: requires willful infringement (voluntary, intentionalviolation of a known legal duty subjective test even if unreasonable).US v. Dennis Moran (D. Neb. 1991) N 187 Morans practice of insuring hismovies was not a willful violation because he thought it was legal, and thus althoughhe had intent to copy he didnt ha ve intent to violate the law.

Copyright - William Fisher - 2010 Fall

Documents