DIGITAL DISSEMINATION OF
CULTURAL INFORMATION:
COPYRIGHT, PUBLICITY, AND
LICENSING ISSUES IN
CYBERSPACE
Marilyn Phelan*
I.
II.
INTRODUCTION..........................................
ApPLICATION OF COPYRIGHT LAWS TO THE
ELECTRONIC AGE. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
III.
194
INTERNET DOWNLOADING OF DIGITAL ART IMAGES AS
197
"FAIR USE"
V.
180
PROTECTION OF ARTIST'S MORAL RIGHT FROM
INTERNET DOWNLOADING. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
IV.
177
EFFECTIVENESS OF COPYRIGHT LAWS TO PROTECT
COPYRIGHTED WORKS IN A BORDERLESS DIGITAL
ENVIRONMENT. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
VI.
202
PROTECTION AND LIABILITY OUTSIDE COPYRIGHT
LAWs-RIGHT OF PRIVACY AND PUBLICITY, UNFAIR
COMPETITION, AND MISAPPROPRIATION................
VII.
LICENSING OF DIGITAL IMAGES........................
VIII.
CONCLUSION............................................
I.
217
224
227
INTRODUCTION
With the shift in the economy to the information age, museums
and other cultural institutions can provide and also market valuable
information assets via the Internet in the form of digital images of
works in their collections. Cultural information has become an inter* Marilyn Phelan, Professor of Law at the Texas Tech University School of Law. Ms.
Phelan received her Ph.D. from the Texas Tech University, and her J.D. (with honors) from the
University of Texas. Ms. Phelan co-chairs the International Cultural Property Committee of the
Section of International Law of the American Bar Association. Ms. Phelan is a member of the
International Bar Association, the American Law Institute, and is a Texas Commissioner to the
National Conference on Uniform State Laws.
177
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nationally sought after commodity. Still, those cultural institutions
that seek to promote the goal of worldwide cultural development
through the digital dissemination of their collections must be concerned with both the protection of their cultural information assets
and with potential liability coterminous with the unlimited ability of a
worldwide populace to copy and transform such information. As cultural institutions respond to the global demand for cultural information and transform works in their collections to digital form for
transmission to the worldwide audience, they must tailor critical copyright, publicity, and licensing issues to a cyberspace environment.
Worldwide electronic communication invites worldwide piracy.l
In addition, an undefined worldwide populace can easily distort art
works that have been reproduced in digital form and violate artists'
moral and publicity rights. 2 Further, because modern artists may have
retained the right to prepare derivative works from their creations,
cultural institutions that have such works in their collections would be
precluded from making reproductions without consent of the artists or
their heirs? The Copyright Term Extension Act of 1998 extended copyright protection to an original work of authorship for the author's or
artist's life plus 70 years. 4 As a result, cultural institutions must seek
permission to disseminate digital images for more works in their collection and for more extended periods.
Copyright laws provide some protection, but also possible liability, for cultural institutions that exhibit their collections on the Internet. Common and state laws relating to right of privacy and right
of publicity create potentialliability.5 Further, as cultural institutions
market digital forms of works in their collections worldwide through
licensing agreements, they must consider means and laws relative to
such licensing.
This article addresses copyright, publicity, and licensing issues
that must be considered in the dissemination of digital images of art
I. Laws do not keep pace with technology. After the home computing and software industry underwent "explosive growth" in the 1980s, the Software Publishers Association reported, in
1992, that software manufacturers lost US $2.4 billion in revenues annually as a result of
software piracy. See U.S. v. LaMacchia, 871 F. Supp. 535, 530 (D. Mass. 1994).
2. See infra text accompanying notes 79-85 and 240-260.
3. See infra text accompanying notes 21-23.
4. 17 U.S.c. § 301(a) (2001) (prior to the effective date of the Copyright Extension Act of
1998, protection was for life plus 50 years. The Copyright Extension Act, Pub. L. No. 105-109,
extended copyright protection 20 years to harmonize U.S. copyright law with the extended coverage adopted by the European Union); see Council Directive, 93/90/EEC, 1993 OJ. (L 290)
series.
5. See infra text accompanying notes 234-253.
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and cultural property collections through the global information infrastructure. The article principally addresses copyright issues through a
consideration of the U.S. Copyright Act, but because cultural institutions disseminate their collections worldwide via the Web, it also considers application of the Universal Copyright Convention,6 the Berne
Convention for the Protection of Literary and Artistic Works,? and
the 1996 World Intellectual Property Organization Copyright, Performances and Phonograms Treaty (WIPO),8 to define the scope of
any international copyright protection9 for cultural institutions exhib6. The Universal Copyright Convention took place in Geneva, Switzerland on September
6, 1952. The Convention, attended by 40 nations (including the United States), was to provide
international copyright protection for artists and authors. Article II of the Convention provides
that published works of nationals of any contracting party shall enjoy in each other contracting
state the same protection as the other state accords works of its nationals that were first published in that state. For an updated version, see 1971 WL 118008 (revised at Paris, July 24,1971).
7. The Berne Convention for the Protection of Literary and Artistic Works took place on
September 9, 1886. The Berne Convention, ratified by over 70 member nations, is a form of
international protection for authors and artists. It is an attempt to reconcile various policies
regarding international copyrights. The Berne Convention recognizes a moral right, or droit
moral, for artists. The United States acceded to the Convention in 1988 by the Berne Convention Implementation Act, but initially did not adopt the concept of an artist's moral right. See
Pub. L. 100-568, 100" Con. 1d Sess. Later, by enacting the Visual Artists Rights Act in 1990,
Congress provided for the moral right for visual artists only for the life of the artist. The Visual
Artists Rights Act added § 106A to the U.S. Copyright Act to provide for a right of attribution
and a right of integrity for visual artists. Article 5 of the Berne Convention provides that authors
who are protected by the Berne Convention have, in countries other than the country of origin,
the same rights that their respective laws grant to their nationals as well as the rights granted by
the Berne Convention.
8. The WIPO Treaty is a special agreement within the meaning of Article 20 of the Berne
Convention. The Treaty provides that countries that are parties to the Berne Convention can
reserve the right to enter into special agreements among themselves, in so far as such agreements grant authors and artists more extensive rights than those granted by the Convention or
contain provisions that are not contrary to the Convention. The United States implemented part
of the 1996 WIPO Treaty in 1998 by enacting the Digital Millennium Copyright Act as an
amendment to the U.S. Copyright Act. Pub. L. 105-304, 105th Congo 2d Sess.
9. 17 U.S.c. §104(b) (providing that published works are subject to protection if:
(1) on the date of first publication, one or more of the authors is a national or domiciliary of the United States, or is a national, domiciliary, or sovereign authority of a treaty
party, or a stateless person, wherever that person may be domiciled; or (2) the work is
first published in the United States or in a foreign nation that, on the date of first
publication, is a treaty party; or (3) the work is a sound recording that was first fixed in
a treaty party; or (4) the work is a pictorial, graphic, or sculptural work that is incorporated in a building or other structure, or an architectural work that is embodied in a
building and the building or structure is located in the United States or a treaty party,
or (5) the work is first published by the United Nations or any of its specialized agencies, or by the Organization of American States; or (6) the work comes with the scope
of a Presidential proclamation).
The Copyright Act further provides that rights in any protected works shall not be expanded or
reduced by virtue of, or in reliance of provisions of the Berne Convention, or U.S. adherence
thereto; see, 17 U.S.c. § 104(c); see also Bridgeman Art Library Ltd. v. Corel Corp., 25 F. Supp.
2d 421 (S.D.N.Y. 1998) (the obligation of the United States under the Berne Convention may be
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iting their collections on the borderless Internet. lO
II.
ApPLICATION OF COPYRIGHT LAWS TO THE ELECTRONIC AGE
As museums and cultural institutions throughout the world utilize
multimedia technology to "open up" their collections to a worldwide
public in an effort to promote universal cultural development, directors of these institutions must balance new rights in valuable digital
information assets with demands of an international audience and the
ability of that audience to copy easily from digital media. At the present time, pre-electronic principles of copyright law must be reconciled with technological capacity to determine copyright protection, as
well as potential liability.
The pre-electronic rule, that copyright protection applies to an
original work of authorship fixed in any tangible medium of expression,l1 has been construed to embrace technological devices. A work
is "fixed" in a tangible medium of expression when its embodiment in
a copy "is sufficiently permanent or stable to permit it to be perceived,
reproduced, or otherwise communicated for a period of more than
transitory duration.'>12 Section 101 of the Copyright Act defines "copies" as material objects "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."13 As the court in Matthew Bender &
Company, Inc. v. West Publishing CO. 14 noted, this definition was "intended to clarify that a work stored on a disk or tape can be a copy of
performed only pursuant to appropriate domestic law; although federal question jurisdiction includes claims arising under treaties, the Berne Convention is not self-executing).
10. See Religious Tech. Ctr. v. Netcom On-Line Communications, Servs. Inc., 907 F. Supp.
1361,1361 (N.D.Cal. 1995) (referring to the Internet as "a worldwide entity whose nature cannot
be easily or simply defined." The court described it as a collection of several thousand local,
regional, and global computer networks interconnected via telephone lines. It noted that the
Internet enables users to share files, search for information, send electronic mail, and log onto
remote computers. The court further commented that it is not a program or a particular computer resource but rather a means to link computer users together. As the court recognized,
"unlike online computer services, such as CompuServe and American On Line, no one runs the
Internet."); see also Religious Tech. Clr. v. Lerma, 908 F. Supp. 1353, 1359 (E.D. Va. 1995)
(concluding that the Internet is "rapidly evolving into both a universal newspaper and a public
forum.").
11. 17 V.S.c. § 102(a); see also Modern Publ'g v. Landoll, Inc., 841 F. Supp. 129 (S.D. N.Y.
1994) (commenting that "a relatively modest amount of originality suffices for copyright
protection. ").
12. 17 V.S.C. § 101.
13. Id.
14. Mattew Bender & Company, Inc. v. West Publ'g Co., 158 F.3d 693, 703 (2d Cir. 1998),
cert. denied, 143 L.Ed.2d 1048 (1999).
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a copyrighted work even if it cannot be perceived by human senses
j
without technological aid. "15
Works of authorship subject to copyright are literary works; musical works (including any accompanying words); dramatic works (including any accompanying music); pantomimes and choreographic
works; pictorial, graphic, and sculptural works; motion pictures and
other audiovisual works; sound recordings; and architectural works. 16
The owner (or co-owners) of a work is the source of copyright ownership.17 For a "work made for hire,"18 an artist's or author's employer
is granted copyright ownership and is regarded as the initial owner of
the copyright unless there is an agreement to the contrary.19 Property
rights of a copyright owner are protected for the owner's life plus 70
years after death. 20
15. Id. at 703 (concluding that CD-ROM discs were copies and that CD-ROM discs could
infringe a copyright even if the embedded information was not perceptible without the aid of a
CD-ROM player); see also Mai Sys. v. Peak Computer, Inc. 991 F.2d 511, 518 (9th Cir. 1993)
(holding that loading of copyrighted software into Random Access Memory (RAM) created a
"copy" of that software).
16. 17 V.S.C § 102(b); but see 17 V.S.C § 105 (exempting works of the federal government
from copyright protection).
17. 17 V.S.C § 201(a).
18. See 17 V.S.C § 101 (defining a "work made for hire" as a work prepared by an employee within the scope of employment, including a work specially ordered or commissioned, but
only if the parties expressly agree in a written instrument signed by them that the work shall be
considered a work made for hire); see also Cmty. for Creative Non-Violence v. Reid, 490 V.S.
730 (1980) (noting that for commissioned works, produced as a result of a special order, the
person commissioning the work is the owner of the copyright only if there is an express written
agreement providing that the work is a work for hire).
19. 17 V.S.C § 201(b).
20. 17 V.S.C § 301(a); see supra text accompanying note 4.
In the case of joint ownership, the 70 years are measured from the date of death of the last
surviving author. For works made for hire, the term is 95 years from the first publication or 120
years from creation, whichever is shorter. For unpublished works in existence on January 1,
1978, the duration of the copyright generally will be computed in the same manner as for new
works-life plus 70 years or the 95 or 120 terms for works for hire. Works that were copyrighted
before 1978 and, thus, had been published by January 1, 1978, are eligible for copyright renewal
for a term of 67 years. 17 V.S.C § 304. Pursuant to the Copyright Term Extension Act of 1998,
copyright in its renewal term will have a copyright term of 95 years from the date copyright was
secured originally.
Prior to the Copyright Act of 1976, statutory copyright protection began on the date of
publication (or the date of registration in unpublished form) and continued for 28 years from
that date. A copyright was subject to renewal for a second 28 years, making a total potential
term of 56 years.
The Copyright Term Extension Act of 1998, which extended copyright protection to an
author's life plus 70 years, does not provide that works that are in the public domain on the date
of enactment of the act become copyrighted works. The Act only extends the term of the copyright for works that were not in the public domain on the date of its enactment.
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The Copyright Act gives a copyright owner the exclusive right to
reproduce copyrighted work in copies, to prepare derivative works
based upon the copyrighted work, to distribute copies of the copyrighted work to the public, to display a work publicly, and in the case
of sound recordings, to perform the copyrighted work publicly by
means of a digital audio transmission. 21 These rights are divisible. If a
modern artist has retained a copyright in a work that is part of a collection, the artist (or the artist's heirs) would have the exclusive right
to make reproductions or prepare derivative works from the original
work. Thus, a cultural institution may not be authorized to reproduce
those works of modern artists that are not in the public domain. If a
work in a collection is not in the public domain, a cultural institution
must secure permission from those artists who retained rights in their
works (or from the artists' heirs) prior to preparing images of such
works. 22 Engaging in or authorizing a reproduction or preparation of
21. 17 U.S.c. § 106; see 17 U.S.c. § 109 (granting the owner of a copy the right to sell or
otherwise dispose of the copy without authority of the copyright owner. This first-sale doctrine
provides that once the owner of a copyright consents to the sale of copies of his or her work, the
copyright holder may not exercise the distribution right as to those copies); Allison v. Vintage
Sports Plaques, 136 F.3d 1443, 1447 (11th Cir. 1998) (stating that any other rule would extend
the copyright monopoly so far as to permit a copyright holder to control the disposition of lawfully obtained tangible personal property.)
A copyright in a contribution is separate and distinct from a copyright in the collective work
as a whole, and in the absence of an express transfer, the owner of a collective work obtains only
limited right to each contribution. 17 U.S.c. § 201(c). In the absence of an express transfer, the
author of a separate individual article that appears in a collection retains all rights in the article
except to the right to reproduce and distribute the contribution as part of the collection work.
Neither the Universal Copyright Convention nor the Berne Convention enumerate divisible
rights as are set out in § 106 of the U.S. Copyright Act. Article IV of the Universal Copyright
Convention gives a copyright owner "the basic rights ensuring the author's economic interests,
including the exclusive right to authorize reproduction by any means, public performance and
broadcasting." Article 9 of the Berne Convention gives authors of literary and artistic works the
exclusive right of authorizing the reproduction of their works, in any manner or form.
Article 6 of the 1996 WIPO Treaty states that authors of artistic works enjoy the exclusive
right of authorizing the making available to the public of the original and copies of their works
through sale or other transfer of ownership.
22. See New York Times Co.. Inc. v. Tasini, 121 S.Ct. 2381, 2384 (2001) (holding that publishers of articles of freelance authors infringed the copyrights of the authors when they placed
copies of the articles with two computer database companies for inclusion into three databases.
The publishers had rights to copy and sell articles of the authors but did not have consent of the
authors to include the articles in the databases. The publishers contended that the "privilege of
reproduction and distribution" accorded them by § 201(c) authorized them to include the articles in the databases. However, the Court ruled that § 201(c) did not authorize the copying at
issue because the databases reproduced and distributed articles "standing alone and not in context, not as 'part of that particular collective work' to which the author contributed...." The
Court stated that a publisher is "privileged to reproduce or distribute an article contributed by a
freelance author, absent a contract otherwise providing, only 'as part of' any (or all) of three
categories of collective works: (a) 'that collective work' to which the author contributed her
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a derivative work and the public distribution of a copyrighted work
without the copyright owner's permission is copyright infringement. 23
The extension of copyright protection to life plus 70 years will include
many more artists' works, and authorization may be required to
reproduce historical documents as well.
A work must have an element of "originality" to be protected. 24
Copyright protection does not extend to ideas, procedures, processes,
systems, methods of operations, concepts, principles, or discoveries. 25
It does not extend to ideas underlying a work or to the functional or
factual aspects of the work. 26 Courts have recognized that works of
work, (b) 'any revision of that collective work,' or (c) 'any later collective work in the same
series.''' Id. at 2389. The Court noted that § 201(c) "adjusts a publisher's copyright in its collective work to accommodate a freelancer's copyright in her contribution." As the Court stated,
should there be a "demand for a freelance article standing alone or in a new collection, the
Copyright Act allows the freelancer to benefit from that demand; after authorizing initial publication, the freelancer may also sell the article to others.").
An agreed statement concerning the 1996 WIPO Treaty provides that the storage of a protected work in digital form in an electronic medium constitutes a reproduction within the meaning of Article 9 of the Berne Convention. See Agreed Statements Concerning The WIPO
Copyright Treaty, Concerning Article 1(4), adopted by Diplomatic Conference on Certain Copyright and Neighboring Rights Questions, December 20, 1996.
In Allison, 136 F.3d at 1448, the court noted that copyright law is violated not only by
photocopying directly protected works but also by publishing language or images that are substantially similar to that contained in copyrighted work. The court also commented that copyright law protects not only tangible items but an author's or artist's particular expression that is
included in the tangible item.
23. 17 U.S.c. § 501 (holding an infringer is liable for either the copyright owner's actual
damages and any additional profits of the infringer, or statutory damages.); see also 17 U.S.c.
§ 504 (stating that if an artist has retained reproduction rights, a cultural institution should obtain a licensing agreement from the artist or the artist's heirs to reproduce the works.)
24. 17 U.S.C. §102(b); see also Feist Publ'ns v. Rural Tel. Serv., 499 U.S. 340, 345 (1991)
(commenting that the "sine qua non of copyright is originality.").
25. 17 U.S.c. § 102(b).
26. See Feist, 499 U.S. 340 (explaining that the distinction between "originality" and "factual
aspects" of a work is "one between creation and discovery: The first person to find and report a
particular fact has not created the fact; he or she has merely discovered its existence." Id. at 347.
The court ruled that a telephone company's white pages were not entitled to copyright protection because the raw data contained in the listings were not arranged in an original manner and
because the data "lacked the minimal degree of creativity necessary to constitute a copyrightable
compilation of facts." Id. at 362. The court stated that facts are not copyrightable, but that
compilations of facts generally are. Id. at 344).
In Warren Publ'g, Inc. v. U.S., 115 F.3d 1509, 1514 (11th Cir. 1997), the court referred to the
three types of works that are copyrightable-creative, derivative, and compiled. Copyrights in
these works are referred to as "creative, derivative, and compilation" copyrights. The court
noted that a novel is a creative work while a screenplay based on a novel is a derivative work
because it is based on a preexisting work that has been recast, transformed, or adapted. 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 manner that the resulting work as a whole
constitutes an original work of authorship. Id. at 1520. As the court stated in Key Publ'ns, Inc.
v. Chinatown Today Publ'g Enters., Inc., 945 F.2d 509, 513 (2d Cir. 1991), for a compilation to be
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fiction receive greater protection than works that have strong factual
elements, such as historical or biographical works 27 or works that have
strong functional elements. 28 Still, works that are merely compilations
of fact may be copyrightable. 29 A compilation is entitled to copyright
protection if its selection and arrangement of data is originaPO
creative and, thus, copyrightable, the compiler must exercise individual judgment. The compiler
must exercise judgment in choosing which facts from a given body of data to include in a
compilation.
In Control Data Sys., Inc. v. Infoware, Inc., 903 F. Supp 1316, 1322 (D. Minn. 1995), the
court noted that copyright protection extends only to expression and not to ideas and recognized
that it is "somewhat difficult to distinguish between an idea and the expression of that idea."
Still, the court pointed out that the distinction is essential to determine whether a work is
protected.
The court in Nat'l Basketball Ass'n v. Motorola, Inc., 105 F.3d 841, 847 (2C1 Cir. 1997) referred to the "fact/expression dichotomy" as "a bedrock principle of copyright law that 'limits
severely the scope of protection in fact-based works." The court noted that copyright is limited
to those aspects of a work-termed 'expression'- that have an element of originality. Id.
In Kregos v. Associated Press, 937 F.2d 700, 705 (2d. Cir. 1991), the court explained the
merger doctrine, which provides that expression is not protected "where there is only one or so
few ways of expressing an idea that protection of the expression would effectively accord protection to the idea itself."
Article 2 of the 1996 WIPO Treaty states that copyright protection extends to expressions
and not to ideas, procedures, methods of operation or mathematical concepts as such.
27. See Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1263 (2d. Cir. 1986), cert. denied, 481
U.S. 1059 (1987); see also Robinson v. Random House, 877 F. Supp. 830, 836 (S.D.N.Y. 1995)
(holding that an historical fact is not copyrightable and that no biographer holds a monopoly in a
story of a SUbject's life. According to the court, because the retelling of history proceeds in
certain chronological order, there can be no copyright on the sequence of a story's element.
Still, while there is no copyright in the order of presentation of facts, nor in their selection, the
court did hold that the expression of historical facts is protected).
28. See Baker v. Selden, 101 U.S. 99, 104 (1879) (stating that an accounting textbook is
copyrightable even if it is only a "compilation.").
29. See Feist, 499 U.S. at 499 (in a compilation, the author's choices as to selection and
arrangement, if such choices are made independently and entail a minimal degree of creativity,
are sufficiently original that Congress may protect such compilations through the copyright laws.
The Court noted, however, that this type of copyright protection is subject to an important limitation. Copyright protection extends only to those components of the work that are original to
the author).
Article 5 of the 1996 WIPO Treaty provides that compilations of data or other material, in
any form, are protected as such if, by reason of the selection or arrangement of their contents,
the compilations constitute intellectual creations. Article 5 of the Treaty states that the protection does not extend to the data or the material itself and is without prejudice to any copyright
subsisting in the data or material contained in the compilation.
30. Feist, 499 U.S. at 349 (holding that copyright protection would attach to a compilation if
the following three elements were present: (1) the collection and assembly of preexisting material, facts, or data, (2) the selection, coordination, or arrangement of those materials, and (3) the
creation, by virtue of the selection, coordination, or arrangement, of an original work of authorship. Id. at 357. A compiler's choices as to selectivity, coordination, or arrangement, made independently by the compiler, are entitled to copyright. Id. at 348); see also Key Publ'ns, 945 F. 2d
at 513 (the court noted that selection implies the exercise of judgment in choosing which facts
from a given body of data to include in a compilation); see also Matthew Bender, 158 F. 3d at 697
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Generally photographs are copyrightable?1 In Bridgeman Art
Library v. Corel,32 the court addressed the question of whether photographic transparencies are copyrightable. The court decided that
while the "overwhelming majority" of photographs would "reflect at
least the modest amount of originality required for copyright protection,"33 "slavish copying, although doubtless requiring technical skill
and effort, does not qualify."34 The court decided that a "change of
medium alone is not sufficient to render [a product] original and copyrightable."35 The Bridgeman court concluded that reproducing works
in a collection in the form of photographic transparencies, which then
are converted to digital form, without more, would not add the required element of originality to make the reproduction copyrightable.
As one court noted, "the requisite level of creativity is extremely
low,"36 but, according to that court "without some creative spark [the]
labor that goes into independently creating [as opposed to simply reproducing] a work is insufficient to bring that work within the scope of
copyright. "37
(commenting that while works of the federal government are not subject to copyright protection,
they may be included in a compilation).
31. See Rogers v. Koons, 960 F.2d 302, 306-07 (2d Cir. 1991) (recognizing that a photograph
can be an "original work of authorship" protected by the Copyright Act. The court explained
that elements of originality in a photograph included posing the subjects, lighting, angle, selection of film and camera, evoking a desired expression, and almost any other variant involved).
Article 2(1) of the Berne Convention includes as "literary and artistic works," which are
protected under the Act, "photographic works to which are assimilated works expressed by a
process analogous to photography." Article 7(4) provides that the term of protection of photographic works is "a matter for legislation in the countries of the Union," but provides for protection for 25 years. Art IV(3) of the Universal Copyright Convention provides that the term of
protection for photographic works (so far as they are protected as artistic works) shall not be less
than 10 years.
32. Bridgeman Art Library v. Corel Corp., 36 F. Supp. 2d 191 (S.D. N.Y. 1999).
33. Id. at 196.
34. Id.
35. Id. at 198 (setting out three situations in which "there is room for originality" in photographs: (1) There may be originality which does not depend on creation of the scene or object to
be photographed or anything remarkable about its capture and which resides in such speculates
as angle of shot, light and shade, exposure, effects achieved by means of filters, developing techniques, etc. (2) There may be creation of the scene or subject to be photographed. (3) A person
may create a worthwhile photograph by being at the right place at the right time. According to
the court, the merit of the photograph consists of the photographer's capturing and recording a
scene unlikely to recur).
36. See Akatel USA, Inc. v. DGI Techs, Inc., 166 F.3d 772, 787 (5th Cir. 1999).
37. Id.; see also Feist, 499 U.S. at 351-53 (discussing a "sweat of the brow" theory used by
courts interpreting the Copyright Act of 1909 to protect factual compilations. As the Court
noted, the underlying theory was that "copyright was a reward for the hard work that went into
compiling facts." The Court set out flaws in the doctrine, the most glaring being the extension of
copyright protection beyond selection and arrangement to the facts themselves. The Court expressed concern that "sweat of the brow" courts "eschewed the most fundamental axiom of
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The digital images of artworks in Bridgeman, which the court
held were not copyrightable, were substantially exact reproductions of
public domain works albeit in a different medium. The court in
Bridgeman did acknowledge that a copy in a new medium is copyrightable where, "as often but not always is the case," the copies do
contain some identifiable original contribution. 38 Thus, if a cultural
institution adds some element of originality to photographic transparencies of works in its collections, the original element would be
copyrightable.
As computers provide the best method to transmit digital images
of cultural property, the recognition of computer programs as copyrightable material and case law defining the parameters of copyright
protection for computer programs provide guidance in determining
the parameters for copyright protection for digital images that contain
some elements of originality. Computer programs are recognized as
copyrightable literary works and data compilations that constitute intellectual creations. The U.S. Copyright Act was amended in 1980 to
extend copyright protection to computer programs. 39
copyright law-that no one may copyright facts or ideas." The Court commented that these
courts erroneously concluded authors were absolutely precluded from saving time and effort by
relying on facts contained in prior works. The Court opined that "to accord copyright protection
on this basis alone distorts basic copyright principles in that it creates a monopoly in public
domain materials without the necessary justification of protecting and encouraging the creation
of 'writings' by 'authors.'" Id. at 354, quoting 1 M. Nimmer and D. Nimmer, Copyright, § 3.04, p.
3-23 (1997».
In Warren Publ'g, 115 F. 3d at 1514, the court commented that a compiler's choices as to
selection, coordination, or arrangement are the only portions of a compilation that "arguably are
even entitled to copyright protection." The court noted that an analysis of a compiler's acts of
selection are relevant only to determine whether the compiler exercised any individual judgment
that is equivalent to creativity. It decided that, because the industriousness of the collection is
not relevant to a determination of copyrightability, and because a finding of creativity is subjective, a court may "apply a 'sweat' recognition of the developer's labor and ignore the creativity."
Id. at 1519, n. 28; see also Feist, 499 U.S. at 354 (suggesting that the "fruits of one's research" may
be available under a theory of unfair competition).
For further discussion of the so-called "sweat of the brow" equity that goes into creating a
work. see infra text accompaning note 276.
38. Bridgeman, 36 F. Supp. 2d at 199.
39. 17 U.S.c. § 101, and § 117 (adopting changes recommended by the National Commission on New Technological Uses of Copyrighted Works (CONTU). A few other countries provide copyright protection for computer software. Neither the Berne Convention nor the
Universal Copyright Convention provide specifically for protection of computer programs, but
Article 4 of the 1996 WIPO Treaty states that computer programs are protected as literary works
within the meaning of Article 2 of the Berne Convention. Article 4 of the WIPO Treaty provides that such protection applies to computer programs whatever their mode or form of
expression).
Computer software is subject to copyright protection as a "literary work." 17 V.S.c. § 101,
§ 102(a)(1). Literary works are defined as "works, other than audiovisual works, expressed in
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In Sega Enters. Ltd. v. Accolade, Inc. ,40 the Ninth Circuit decided
that a work need not be "directly accessible to humans in order to be
eligible for copyright protection. "41 The court recognized that a
"copy" under the Copyright Act must be fixed in some tangible form,
words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the
material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or
cards, in which they are embodied."
A computer program has been defined as "a set of statements or instructions to be used
directly or indirectly in a computer in order to bring about a certain result." 17 U.S. C. §101; see
Bernstein v. U.S. Dept. of State, 922 F. Supp. 1426, 1436 (N.D. Cal. 1996), affd, 176 F.3d 1132
(9th Cir. 1999), op. w/drawn, 192 F.3d 1308 (9th Cir. 1999) (the court concluded that this statutory language supported the conclusion that copyright protection extends both to source code
and object code. The court noted that source code is essentially a set of instructions used indirectly in a computer because, as the court commented, it must first be translated into object code
to achieve the desired result).
40. Sega Enter. Ltd. v. Accolade, Inc., 977 F. 2d 1510. In Sega, a Japanese corporation and
its subsidiary, Sega of America, developed and marketed video entertainment systems, including
the "Genesis" console, and video game cartridges. Sega licensed its copyrighted computer code
to a number of independent developers of computer game software. The licensees developed
and sold video games in competition with Sega. Accolade, an independent developer, manufacturer, and marketer of computer entertainment software, including game cartridges compatible
with the Genesis console, was not a Sega licensee. Accolade disassembled, used, and modified
Sega's copyrighted code. Accolade released games for use with the Genesis console, but the
games were originally developed and marketed for use with other hardware systems. Accolade
contended that intermediate copying of computer object code did not constitute copyright infringement, but that, if it did, such copying was "fair use." Id. at 1514.
41. Id. at 1519; (developing a method known as the "Abstraction-Filtration-Comparison"
test for evaluating the protectability of elements of a computer program.); see, e. g., Lotus Dev.
Corp. v. Borland, Inc., 49 F.3d 807, 814-15 (1st Cir. 1995); Eng'g Dynamics Inc. v. Structural
Software, Inc., 26 F.3d 1335, 1342 (5th Cir. 1994); Gates Rubber Co. v. Bndo Chem. Indus., Ltd.,
9 F.3d 823 (10th Cir. 1993); Computer Assoc. Int'l Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992).
In Gates Rubber, 9 F.3d at 835 the Tenth Circuit described the test as follows:
First, in order to provide a framework for analysis, we conclude that a court should
dissect the program according to its varying levels of generality as provided in the abstractions test. Second, poised with this framework, the court should examine each
level of abstraction in order to filter out those elements of the program which are unprotectable. Filtration should eliminate from comparison the unprotectable elements
of ideas, processes, facts, public domain information, merger material, scenes a faire
material, and other unprotectable elements with the allegedly infringing program to
determine whether the defendants have misappropriated substantial elements of the
plaintiff's program.
By applying the abstractions test, a computer program can usually be broken into the following
six levels of declining abstraction: (i) the main purpose, (ii) the program structure or architecture, (iii) modules, (iv) algorithms and data structures, (v) source code, and (vi) object code.
In Control Data Sys., 903 F. Supp. 1323, the court commented that the merger doctrine
denies copyright protection to any "expression that is inseparable from or merged with the ideas,
processes, or discoveries underlying the expression." The purpose of the merger doctrine is "to
insure that courts do not unwittingly grant protection to any idea by granting exclusive rights to
the only, or one of only a few, means of expressing that idea." Id.; see also Compaq Computer
Corp. v. Procom Technology, Inc., 908 F. Supp. 1409, 1418 (S.D. Tex. 1995), in which the court
commented that the "doctrine of merger" denies copyright protection to a work if that work is
the only way to express a particular idea. The expression "is viewed as having merged with the
idea itself."
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"from which the work can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or device."42 It concluded that a computer file generated by a disassembly
program, printouts of the disassembled code, and computer files containing modifications of the code satisfied the requirement. 43 According to the court, intermediate copying of a copyrighted computer code
is an act of infringement. 44 It noted that such intermediate copying is
"an initial step in the development of a competing product"45 and
ruled that intermediate copying of computer object code may be an
infringement "regardless of whether the end product of the copying
also infringes those rights. "46 The court in Sega decided that copyright
The Court in Control Data Sys., noted that the "scenes a faire doctrine" prevents a programmer from obtaining a copyright to "expressions that are standard, stock, or common to a particular topic or that necessarily follow from a common theme or setting." Control Data Sys., 903 F.
Supp. at 1323.
After abstraction and filtration, a court would compare the remaining elements with the
alleged infringing program. If the comparison reflected copying of substantial protected portions of a plaintiff's program, the plaintiff would succeed in an infringement claim. Id.
42. 17 U.S.c. § 101. Article 2, paragraph 2 of the Berne Convention provides that it is "a
matter for legislation in the countries of the Union" to prescribe that works are not protected
"unless they have been fixed in some material form."
In Mai Sys. v. Peak Computer, Inc., 991 F.2d at 518, the court ruled that loading of copyrighted software into RAM (the acronym for Random Access Memory) created a "copy" of that
software in violation of the U.S. Copyright Act.
43. See Sega Enter. Ltd. v. Accolade, Inc., 977 F.2d at 1510.
44. Id. at 1520. Accolade contended that § 117 of the Copyright Act, which permits an
owner of a copy of a computer program to copy or adapt the program if the new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with
a machine, authorized it to disassemble Sega's object code in its copyrighted computer program.
The court disagreed. It stated that Accolade's use went "far beyond" that authorized by § 117.
According to the court, "[S]ection 117 does not purport to protect a user who disassembles
object code, converts it from assembly into source code, and makes printouts and photocopies of
the refined source code version." Id.
As the court noted in Sega Enter. Ltd. v. Accolade, Inc., humans cannot read object code.
Id. at 1525. The court pointed out that the use of an electronic decompiler is not absolutely
necessary because trained programmers can disassemble object code by hand (a reverse engineer can work directly from the zeros and ones of object code). However, because even a
trained programmer cannot remember the millions of zeros and ones that make up a program,
the programmer must make a written or computerized copy of the disassembled code in order to
keep tract of his or her work. Id.
45. Id.
46. Id. at 1519. However, the court agreed with Accolade that because its disassembly of
copyrighted object code was the only means of gaining access to the unprotected aspects of
Sega's program, and because Accolade had a legitimate interest in gaining such access (in order
to determine how to make its cartridges compatible with the Genesis console), the disassembly
was fair use privileged by § 107 of the Copyright Act. Id. at 1525. The court stated that if
disassembly of copyrighted object code is per se an unfair use, the owner of a copyright "gains a
de facto monopoly over the functional aspects of his work-aspects that were expressly denied
copyright protection by Congress." Id. The court concluded that "where disassembly is the only
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in a computer program "extends to the object code version of the
program."47
In Lewis Galoob Toys, Inc. v. Nintendo of America, Inc. 48
Nintendo contended that Lewis Galoob Toys' Game Genie, which
permitted players of Nintendo's home video games to alter up to three
features of a Nintendo game, violated Nintendo's copyright. Game
Genie contended its audiovisual displays were not derivative works.
Although the court decided that a "derivative work" need not be
"fixed," it ruled that the Game Genie merely enhanced the audiovisual displays (or underlying data bytes) that originated in Nintendo
game cartridges and that such altered displays did not "incorporate a
portion of a copyrighted work in some concrete or permanent
form."49 The court pointed to computer companies marketing spellcheckers that operated within existing word processors by signaling to
the writer when a word was misspelled. The court decided that "these
applications, as well as countless others, could not be produced and
marketed if courts were to conclude that the word processor and spellchecker combination is a derivative work based on the word processor
alone."so The court stated that the Game Genie was useless by itself
and that it could only enhance, but not duplicate or recast, a Nintendo
game's output. It concluded that the Game Genie did not contain or
produce a Nintendo game's output in some concrete or permanent
way to gain access to the ideas and functional elements embodied in a copyrighted computer
program and where there is a legitimate reason for seeking such access, disassembly is a fair use
of the copyrighted work, as a matter of law." Id. at 1527-28. Thus, the court decided that reverse engineering is permitted under the fair use doctrine. Id. n. 88.
47. Id. at 1520; see Bernstein, 922 F. Supp. at 1429 (quoting from ENCYCLOPEDIA OF
COMPUTER SCIENCE, 1263-64 (Anthony Ralston & Edwin D. Reilly eds., 3d ed. 1995)
Source code is the text of a source program and is generally written in a high-level
language that is two or more steps removed from the machine language which is a lowlevel language. High-level languages are closer to natural language than low-level languages which direct the functioning of a computer. Source code must be translated by
way of a translating program into machine language before it can be read by a computer. Object code is the output of a translation of source code. It is possible to write a
source program in high-level language without knowing about the actual functions of
the computer which carry out the program.
The Bernstein court concluded that both source and object codes to computer software are individually subject to copyright protection; see also NLFC, Inc. v. Devcom Mid-America, Inc., 45
F.3d 231, 234-35 (7th Cir. 1995), cert. denied, 115 S.Ct. 2249 (1995); Johnson Controls, Inc. v.
Phoenix Control Inc., 886 F.2d 1173, 1175 (9th Cir. 1989).
48. Lewis Galoob Toys, Inc. v. Nintendo of American, Inc., 964 F.2d 965 (9th Cir. 1992).
49. Id. at 968.
50. Id. at 969.
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form, nor did it supplant demand for Nintendo game cartridges. 51
Thus, it held that the Game Genie could not be a derivative work. 52
A digital image could be a derivative work. 53 Digital images of
works in a collection recast such works. They are reproductions of a
cultural institution's collections and are in "sufficiently permanent
representation to permit them to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration."54
To be copyrightable as a derivative work,55 preparation must involve
an element of originality. The product must vary significantly from
the underlying work for a court to conclude that the image, albeit in a
different medium, is copyrightable. 56 If a cultural institution adds
51. Id.
52. Id.
53. Id. A derivative work is "a work based upon one or more preexisting works, such as a
translation, musical arrangement, dramatization, fictionalization, motion picture version, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted." 17 U.S.C. §101. A work consisting of editorial revisions, annotations,
elaboration, or other modifications which, as a whole, represent an original work of authorship is
a derivative work; see also Skinder-Strauss Assocs. v. Mass. Continuing Legal Educ., 914 F.
Supp. 665, 679 (D. Mass. 1995).
54. MAl, 991 F.2d 511.
55. See supra text accompanying note 26.
56. See Woods v. Bourne Co., 60 F.3d 978 (2d Cir. 1995)(addressing the issue of copyright
protection for a derivative work. The court commented that to obtain copyright protection for a
derivative work "there must be at least some substantial variation [from the underlying work],
not merely a trivial variation." Id. at 990. The court ruled that for a work to qualify as a derivative work, it must be independently copyrightable. The original aspects "must be more than
trivial." Id. The court noted the opinion in Gracen v. The Bradford Exchange, 698 F.2d 300 (7th
Cir. 1983), wherein the court considered the originality requirement for a painting derived from
a photograph. The court in Gracen stated that the purpose of the term "original" is "not to
guide aesthetic judgment but to assure a sufficiently gross difference between the underlying and
the derivative work to avoid entangling subsequent artists depicting the underlying work in copyright problems." Id. at 305. The court commented that a derivative work "must be substantially different from the underlying work to be copyrightable." Id.).
In Bridgeman, F.Supp. 2d at 423, Bridgeman claimed to have exclusive rights in photographic transparencies of a substantial number of well-known works of art located in museums
around the world. Bridgeman transformed the transparencies into digital images in which it also
claimed exclusive rights. Bridgeman had acquired rights to market reproductions of public domain works of art owned by museums and other collections which it obtained from the owners of
the underlying works or from freelance photographers it hired. Id. Bridgeman maintained a
library of the reproductions in the form of large format color transparencies and digital files.
The photographer claimed a copyright in the photographs and then would assign it to
Bridgeman. Bridgeman would attach a color correction strip to each transparency to ensure that
the image was a genuine reflection of the original work as it existed in the circumstances in
which it was photographed. Id. at 423-24. Bridgeman distributed its images as transparencies
and as digital files on CD-ROM. The high resolution transparencies were made available to
clients through licensing arrangements. Id. at 424. Corel was a Canadian corporation that marketed computer software products. It had a set of CD-ROMs that contained seven hundred
digital reproductions of well-known paintings by European masters. Bridgeman contended that
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some element of originality to photographic transparencies of its
works, such as selecting and compiling facts and events that describe
the works, the cultural institution could copyright the photographic
transparencies as derivative works, and thus, would have a copyright
in the original elements of the digital images. 57 The issue is the degree
of originality required. 58 For example, does including a narrative of
the artist's life and/or a description of the subject of the work constitute originality? Has the copier made some identifiable original
contribution?
Courts have concluded that a copyright in a derivative work is
"thin."59 Copyright in a derivative work only extends to original material contributed by the author of the derivative work, as distinguished from preexisting material used in the work. 60 Thus, there will
Coral had infringed its rights in approximately 120 of its images. It claimed that its transparencies of the public domain works, from which it prepared its digital images, were the only
authorized transparencies of some of the works. Id. The court concluded that "...the images
were copied from the underlying works without any avoidable addition, alteration, or transformation." Id. at 426. The court decided that although designing technology to produce exact
reproductions of documents requires much engineering talent, it did not make the reproductions
copyrightable. It ruled that Bridgeman's images lacked sufficient originality to be copyrightable.
Id. at 427.
57. See Bridgeman, 25 F.Supp. 2d at 427 (deciding Bridgeman's art images lacked sufficient
originality to be copyrightable. It determined that there had to be some independent creation,
or distinguishable variation from preexisting works, something that would set the reproductions
apart from the images of the famous works it copied).
If the preparer of photographic transparencies of works in a collection, that are converted to
digital images, selects and arranges facts and events relating to the artists and the persons who
are subjects of the paintings, the transparencies would be compilations. If the compiler exercises
individual judgment that is the equivalent to creativity, the cultural institution could have a copyright in the compilation.
58. See id. at 195 (quoting Gerlach-Barklow Co. v. Morris & Bendien, Inc. 23 F. Supp. 2d
159,161 (2d Cir. 1927) (stating that "only 'a distinguishable variation'-something beyond technical skill-would render a reproduction originaL") The court held that "sweat of the brow" alone
is not the "creative spark" that is the sine qua non of originality. Id. at 197 (quoting Feist, 499
U.S. at 345).
59. See Feist, 499 U.S. at 349. (stating that notwithstanding a valid copyright, a subsequent
compiler would remain "free to use the facts contained in another's publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and
arrangement.").
60. See 17 U.S.c. § 103(b) (implying no exclusive right in the preexisting material. Further,
the copyright is independent of, and does not affect or enlarge the scope, duration, ownership, or
subsistence of, any copyright protection in the preexisting material); see also Feist, 499 U.S. 353.
(stating copyright protection would extend only to the original elements contributed by the author); see also Skinder-Strauss, 914 F. Supp. 679. Thus, a museum could obtain a copyright only
with respect to those elements materially altering or embellishing the underlying works; see also
Bridgeman, 25 F. Supp. 2d at 426. (discussing that Article 2(3) of the Berne Convention provides that translations, adaptations and other alterations of a literary or artistic work are protected as original works without prejudice to the copyright in the original work).
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be a substantial element of uncopyrightable material in a digital image
of an underlying work if the work is in the public domain.
Assuming a cultural institution has added originality to photographic transparencies of its works to provide it a copyright in some
elements of digital images of the works,61 a notice of copyright ownership, although not required,62 should appear on such digital reproductions to alert computer users that it is claiming a copyright in its digital
images.63
To prevail in a copyright infringement action, a copyright owner
must demonstrate ownership in a valid copyright and an unauthorized
61. Employees of the institution who prepare the reproductions would not obtain a copyright in the reproductions under the U.S. Copyright Act as the reproductions would be works
made for hire for which the museum would have the copyright.
62. 17 U.S.C. § 401(a). Article 15 of the Berne Convention provides that an author can
enforce protected rights where the author's name is indicated or where a pseudonym leaves no
doubt as to the author's identity. It provides that it is sufficient for the author's name to appear
on the work "in the usual manner."
Prior to the U.S. Copyright Act of 1976, publication without the statutory notice caused a
work to fall into the public domain. From 1976 until the effective date of the Berne Implementation Act of 1988, a work became part of the public domain if the copyright owner had authorized
publication of the work without a notice of copyright and failed to register a claim for copyright
in the United States Copyright Office within five years of publication without the notice. Distribution of only a relatively small number of copies without the notice did not cause copyright to
be lost if efforts were made to add the notice later. 17 U.S.c. § 405(a).
The Berne Convention Implementation Act of 1988 has amended the U.S. Copyright Act to
provide that a notice "may" be placed on all publicly distributed copies of a work. 17 U.S.c.
§ 401(a).
While current language in § 401(d) removes the requirement of a notice, it is best to affix a
notice. If a notice of copyright is placed on a published copy of a work, an infringer cannot
mitigate damages based on a claim of innocent infringement. 17 U.S.C. § 401(d).
A cultural institution may wish to display a painting or photograph on the Internet that was
created prior to 1988. Presumably the institution need not seek permission of the artist or photographer if the painting or photograph does not have a copyright notice because, prior to 1988,
the notice was mandatory. Thus, the photograph would be public domain material. Although
the 1976 Copyright Act provided that a work published without a notice would not be in the
public domain if only a few copies were distributed without the notice, the creator was required
to register the work and to make efforts to place the notice on the work later. See 17 U.S.c.
§ 401.
63. The required elements for notice are: (1) The symbol © (the letter C in a circle), the
word "Copyright" or the abbreviation "Copr," (2) the year of first publication of the work; and
(3) the name of the owner of the copyright in the work, or an abbreviation by which the name
can be recognized, or a generally known alternative designation of the owner. 17 U.S.c.
§ 401(b). For a work to be protected under the Universal Copyright Convention, the notice
must contain the letter "c" enclosed in a circle, together with the date and name of the owner.
Copyright Office Circular 38 contains general information about international copyright
protection for United States authors. Circular 38 explains use of the phrase "All Rights Reserved" which often follows the copyright notice. The term provides some advantages for copyright protection for United States authors in South American countries that are parties to the
Buenos Aires Convention of 1920 though not members of the Universal Copyright Convention.
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copying of the original elements of the work. 64 A work is copied illegally if a "substantial similarity" exists between the original and the
alleged copied work. 65 A copyright owner can prove his or her work
was copied by demonstrating an alleged infringer had access to the
copyright owner's work and that the works are similar enough to support an inference the alleged infringer copied the work. 66 There is
"substantial similarity" between an original and a copied work when it
is obvious that the alleged copy was "appropriated from the copyrighted work."67 In Bridgeman Art Library,68 the court stated that if
one who holds a copyright in digital images, "similarity would be
judged only with respect to those elements materially altering or embellishing the underlying works, the public domain paintings."69
Similarity can be both literal and nonliteraL7° Literal similarity
focuses upon copying of direct quotations or close paraphrasing. 71
The nonliteral similarity test "examines whether 'the fundamental essence or structure of one work is duplicated in another.",n
Although copyright automatically inheres at the moment it is created without regard to whether the copyright ever is registered, registration is required to initiate an action for copyright infringement. 73
64. See Feist, 499 U.S. at 361; see also Montgomery v. Noga and Florida Lion's Den Inc., 168
F.3d 1282 (11th Cir. 1999).
65. See Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739 (2d Cir. 1998); see also Key
Publ'ns, 945 F.2d at 514, (explaining that, because in a compilation the components generally are
in the public domain, "a finding of substantial similarity or even absolute identity as to matters in
the public domain will not suffice to prove infringement." The court decided that "what must be
shown is substantial similarity between those elements, and only those elements, that provide
copyrightability to the allegedly infringed compilation.").
66. See Streetwise Maps, 159 F.3d at 747.
67. Id. (quoting Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759, 766 (2d Cir. 1991».
68. See Bridgeman, 25 F.Supp.2d 421.
69. Id. at 428; See also Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, 166 F.3d 65, 71
(2d Cir. 1999) (commenting that quantitative and qualitative analyses rarely are separate and
distilled. It stated that it would not be possible to determine infringement through a simple word
count for "the quantitative analysis of two works must always occur in the shadow of their qualitative nature." The court noted that where a copyrighted work contains both original and unprotected elements, (as would be the case in a digital image containing some originality), a
"higher quantity of copying is required to support a finding of substantial similarity than when
the infringing work is wholly original.").
70. See Castle Rock Entm't, Inc. v. Carol Publ'g Group, 150 F.3d 132, 140 (2d Cir. 1998).
71. Id. at 140.
72. Id.; see also 4 Nimmer on Copyright § 13.03[A].
73. 17 U.S.C. § 411(a); see Montgomery, 168 F.3d at 1292; see also M.G.B. Homes, Inc. v.
Ameron Homes, Inc., 903 F.2d 1486. 1488 (11th Cir. 1990) (holding that the registration requirement is a jurisdictional prerequisite to an infringement suit.).
In The Ernst Hass Studio, Inc. v. Palm Press, Inc. 164 F.3d 110 (2d Cir. 1999), the court
dismissed a copyright infringement claim and awarded sanctions when the copyright was not
registered prior to filing the claim. The complaint based its claim of copyright ownership on the
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A certificate of registration constitutes prima facie evidence of the validity of a copyright and of the facts stated in the certificate.74
Whether filing an application for registration is sufficient to support
the initial filing of a claim of infringement is not clear. Some courts
have held that an action for infringement cannot be asserted unless
the certificate of registration has been issued. 75 Section 411(a) of the
Copyright Act provides that except for actions for infringement of
copyright in a Berne Convention work whose country of origin is not
the United States, an infringement action cannot be instituted until
registration has been made. 76 Some courts have interpreted this language to mean that a copyright owner must "seek" registration as a
prerequisite to an action for infringement so that an infringement action may be commenced once the copyright owner has delivered to
the application, deposit, and appropriate fee to the Copyright
Registrar. 77
III.
PROTECTION OF ARTIST'S MORAL RIGHT FROM INTERNET
DOWNLOADING
For contemporary artists in the United States, for modern artists
in most other countries that are parties to the Berne Convention for
the Protection of Literary and Artistic Works, and presumably for all
artists in some countries, such as France and Poland, a computer
user's augmentation or alteration of an image of an artist's work
fact that it was awaiting registration from the Register of Copyrights. The Register of Copyrights later rejected the copyright application.
74. 17 U.S.c. § 410(c) A certificate of registration made within five years after first publication of the work constitutes prima facie evidence of the validity of the copyright and of the facts
stated in the certificate. As the court noted in Autoskill, Inc. v. National Educ. Support Sys. Inc.,
994 F.2d 1476, 1487 (11th Cir. 1993), cerE. denied, 510 U.S. 916 (1993) (No. 93-250), once a party
produces a registration certificate, the burden of disputing the validity of the copyright shifts to
the other party.
In Modern Publ'g v. LandoU, Inc., 841 F. Supp. 129 (S.D.N.Y. 1994), the court commented
that the certificate establishes a presumption of originality in the registered work as only original
works of authorship are entitled to copyright protection.
75. See Fonar Corp. v. Domenick, 105 F.3d 99, 103 (2d Cir. 1997).
76. 17 U.S.c. § 411(a). Section 411(a) also provides that where the deposit, application,
and fee required for registration has been delivered to the Copyright Office in proper form and
registration has been refused, the applicant is entitled to institute an action for infringement if
notice, with a copy of the complaint, is served on the Register of Copyrights.
77. See, e.g., Apple Barrel Prods. Inc. v. Beard, 730 F.2d 384 (5th Cir. 1984); Dominic Murray v. British Broad. Corp., 81 F.3d 287, 291 (2d Cir. 1996).
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would violate the artist's moral right.7 8 Such imaging also may violate
an artist's right of privacy and right of publicity.79
The moral right, or droit moral, is a right long recognized in some
European countries and in those countries that adhere to the Berne
Convention for the Protection of Literary and Artistic Works. 8o Congress ratified accession to the Berne Convention in 1988, but at that
time, did not adopt the concept of an artist's moral right. Later, in
1990, Congress enacted the Visual Artists Rights Act,81 which
amended the Copyright Act to grant certain visual artists a right of
attribution and a right of integrity through the Copyright Act. 82 Although the moral right of a visual artist is protected in the United
78. Under the U.S. Copyright Act, a visual artist retains a right of integrity and a right to
attribution in the artist's work but only for the life of the artist. 17 U.S.c. § 106A. This right
applies to visual artists' works created after the effective date of the Visual Artists' Rights Act,
which was six months after the effective date of its enactment on December 1, 1990, and works
that were created before the effective date of the act but in which title had not been transferred
from the author. It does not apply to any destruction, distortion, mutilation, or other modification of any that occurred before the effective date of the act.
In most other countries that are parties to the Berne Convention, the moral right is maintained until the extinction of the artist's economic rights. Under the Berne Convention, this is 50
years after death; however, the term was extended to 70 years after death for states in the European Union. In France and Poland, an artist's moral right is perpetual. For more discussions, see
Article L.121.1 of the French Code on Intellectual Property and Article 16 of Act of 4 February
1994 on Copyright and Neighbouring Rights (Poland).
79. See infra text accompanying notes 239-260.
80. Article 6(b) of the Berne Convention provides:
Independently of the author's economic rights and even after the transfer of the said
rights the author shall have the right to claim authorship of the work and to object to
any distortion, mutilation or other modification of, or other derogatory action in relation to the said work, which would be prejudicial to his honor or reputation.
81. Pub. L. 101-650. Article 6 is codified at 17 U.S.c. § 106A.
82. See 17 U .S.c. § 101. ("A 'work of visual art' is a painting, drawing, print, or sculpture,
existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or
fabricated sculptures of 200 or fewer that are numbered consecutively by the author and bear the
signature or other identifying mark of the author, or a still photographic image produced for
exhibition purposes only, existing in a single copy that is signed by the author, or in a limited
edition of 200 copies or fewer that are signed and consecutively numbered by the author. A work
of visual art does not include a poster, map, globe, chart, motion picture or does not include a
poster, map, globe, chart, motion picture of other audiovisual work, book, magazine, or electronic publication.").
Only the creator of a work of visual art has the rights conferred by 17 U.S.c. § 106A. As
discussed supra note 7, the U.S. Copyright Act provides that the right exists only for the life of
the artist. An artist may waive a moral right in his or her work by an express agreement in
writing, but an artist may not transfer the right. 17 U.S.C. § 106A(e); see supra note 7; 17 U.S.c.
§106A(e) (transfering ownership of any copy of a work of visual art is not a waiver of the artist's
moral right).
Article 6(b)(2) of the Berne Convention provides that an artist's moral right is protected "at
least until the expiration of the economic rights," but also provides that the right ceases after
death in those countries that do not provide for protection after death of the artist.
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States only for the life of the artist, most countries that are parties to
the Berne Convention protect the moral right for the life of the artist
plus 50 years after death (except for states in the European Union
that have extended protection for 70 years after death).83
An artist's right of integrity is the right of the artist to prevent
distortions of his or her work. 84 This right prevents others from making changes to an artist's work. Thus, in the United States a visual
artist has the right to prevent any intentional distortion, mutilation, or
other modification of his or her work that would be prejudicial to the
artist's honor or reputation but only for the life of the artist. 85
If a computer user downloads an artist's work and subsequently
alters the work, the user has violated the artist's moral right. The dilemma is that an Internet user can easily modify or distort digital
images. Prevention is virtually impossible. 86 Because copyright laws
are not effective to protect an artist's moral right from digital image
downloading, encryption technology should be used to block access to
digital images of artworks. 87 A cultural institution exhibiting works in
83. EC Directive N 93/98 dated October 29, 1993. (providing that moral rights are perpetual in France. Article L.l21-1 of the French Code on Intellectual Property provides that the
right is perpetual, inalienable and imprescriptible. Further, the right is transmissible to an artist's heir and can be granted by will to a third party. Still the EC Directive for member countries
of the European Union would harmonize the authors right at 70 years after death of the artist or
70 years after a work was made available to the public).
84. 17 U.S.c. § 106A(a)(3).
85. 17 U.S.c. § 106A(d). The modification of a work of visual art that is the result of the
passage of time or the inherent nature of the materials is not a distortion or mutilation; see also
17 U.S.c. § 106A(c).
86. Software packages, which permit a computer user to use a mouse to enlarge, shrink,
move, distort, or smudge downloaded digital images, are available.
87. One method of resolving barriers related to copyright protection on the Internet is the
technology created to block or track infringing uses. An example is the "flickering screen," in
which text cannot be saved or printed, and cryptography; see Bernstein" 922 F. Supp. 1429 (discussing cryptography to protect images and messages over the Internet).
Encryption involves running a readable message known as "plaintext" through a computer
program that translates the message according to an equation or algorithm into unreadable
"cipertext." Decryption is the translation back to plaintext when the message is received by
someone with an appropriate "key." The message is both encrypted and decrypted by common
keys.
The Ad Hoc Copyright Coalition has identified four technology approaches to prevent copyright infringement: Cryptolope from IBM, the World Wide Web Consortium's Platform for
Internet Content Selection, Aris Technologies' MusiCode and Bellcore's Flickering Screen.
Cryptolope from IBM is a technology which securely wraps a digital package. It can limit recipients' use of material. The World Web Consortium's Platform for Internet Content Selection
labels infringing web sites and blocks their access.
The Digital Millennium Copyright Act of 1998, which implemented the 1996 WIPO Copyright Treaty, added Chapter 12 to the U.S. Copyright Act to provide that, at the end of the two
year period beginning on the date of the enactment of Chapter 12, persons may not circumvent a
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its collections through digital images over the Internet should protect
the moral rights of the artists in their works by some means of blocking the otherwise unrestrained downloading of such images.
IV.
INTERNET DOWNLOADING OF ART IMAGES AS "FAIR USE"
"Fair use" permits "limited and useful forms of copying and distribution that are tolerated as exceptions to copyright protection."88
Even though a claimant can prove a violation of one of the copyright
holder's exclusive rights guaranteed under the Copyright Act,89 there
is no infringement if the alleged infringer's use is a "fair use."90 A
"fair use" serves as a defense to preclude a finding of copyright infringement,91 The Copyright Act provides that the fair use of a copytechnological measure that effectively controls access to a work subject to copyright protection.
17 u.s.c § 1201(a). The Act prohibits the manufacture, import, offer to the public, or otherwise
traffic in any technology, product, service, device, components, or part thereof that is primarily
designed or produced for the purpose of circumventing a technological measure that effectively
controls access to a protected work and that has only limited commercially significant purpose or
use other than to circumvent a technological measure that effectively controls access to a protected work. 17 U.S.C § 1201(a)(I)(E).
88. Pacific & Southern Co. Inc. v. Duncan, 744 F.2d 1490, 1494 (11th Cir. 1984).
89. See supra text accompnaying note 21; 17 U.S.C § 106 (providing the are the right to
distribute, display, perform, reproduce, as well as to prepare derivative works).
90. 17 U.S.C § 108; see Marcus v. Rowley, 695 F.2d 1171, 1174 (9th Cir. 1983) (defining fair
use as the "privilege in others than the owner of a copyright to use the copyrighted material in a
reasonable manner without his consent, notwithstanding the monopoly granted to the owner.");
Wright v. Warner Books Inc., 953 F.2d 731, 734 (2d Cir. 1991) (ruling that an author's sparing
use of creative expression from unpublished letters and journals of a late author constituted fair
use and was a defense to the charge of infringement as a matter of law. The court noted that the
book did not exploit the literary value of the letters and journals nor did it diminish their marketability. [d. at 739. The court decided that use of portions of the letters and journals was de
minimis and beyond the protection of the Copyright Act. /d. at 740).
The Berne Convention refers to "fair practice." Article 10(1) of the Berne Convention
states: "It shall be permissible to make quotations from a work which has already been lawfully
made available to the public, provided that their making is compatible with fair practice, and
their extent does not exceed that justified by the purpose." Article 10(2) states: "It shall be a
matter for legislation in the countries of the Union, and for special agreements existing or to be
concluded between them, to permit the utilization, to the extent justified by the purpose, of
literary or artistic works by way of illustration in publications, broadcasts or sound or visual
recordings for teaching, provided such utilization is compatible with fair practice."
91. See Robinson v. Random House, 877 F. Supp. 830, 839 (S.D.N.Y. 1995) (commenting
that the fair use doctrine recognizes there are circumstances in which the Copyright Act's stated
goals of encouraging creative and original work is better served by allowing the use of a copyrighted work than by prohibiting such use. The court stated that consent of an author is implied
as to the reasonable use of a copyrighted work since prohibition of such use would inhibit subsequent writers from attempting to improve upon prior works and, thus, would frustrate the very
"ends sought to be attained by the copyright laws." The court decided that, in essence, a fair use
inquiry is whether a reasonable author would consent to the use. As the court affirmed, an
alleged infringer carries the burden of proof to show fair use).
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righted work for "purposes such as criticism, comment, news
reporting, teaching (including multiple copies for classroom use),
scholarship or research, is not an infringement of copyright."92 It sets
out the following four nonexclusive factors which a court must consider in determining fair use: (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. 93
In Castle Rock Entm't, Inc. v. Carol Publ'g Group,94 the court
commented that a critical inquiry under the first factor generally is
whether the allegedly infringing work "merely supersedes" the original work or "instead adds something new, with a further purpose or
different character, altering the first with ... new meaning or message." The inquiry, according to the court, is whether the new work is
"transformative."95 The court in Castle Rock decided that if the secondary use added value to the original work or "transformed the original in the creation of new information, new aesthetics, new insights
and understanding," the fair use doctrine protected the work. 96 The
court opined that "this is the very type of activity that the fair use
doctrine intends to protect for the enrichment of society."97 The court
in Castle Rock commented that the "more transformative the secon92. 17 U.S.C. § 107; see American Geophysical Union v. Texaco Inc., 60 F.3d 913, 915 (2d
Cir. 1995) (considering issues governing the photocopying of entire journal articles for a scientist's own use, either in a laboratory or as part of a personal file assisting that scientist's particular inquiries. The alleged infringer in Texaco was a chemical engineer employer at a corporate
research facility who stayed abreast of developments in his field by reviewing specialized scientific and technical journals. He photocopied individual journal articles in the belief that doing so
would facilitate his current or future professional research. The court ruled that such copying
was not fair use. Id. at 932.); Princeton Univ. Press v. Michigan Document Servs., 99 F.3d 1381,
1383 (6th Cir. 1996) (ruling that a commercial copy shop violated the Copyright Act when it
reproduced substantial segments of copyrighted works of scholarship, bound the copies in
"course packs," and sold the "course packs" for a fee to students for their use in fulfilling reading assignments of professors).
In Campbell v. Acuff - Rose Music, Inc., 510 U.S. 569 (1994) (concluding that parody, like
other comment and criticism, may qualify as fair use. It decided that parody can qualify regardless of whether it is published or performed for profit. The Court decided that parody must
mimic an original to make its point, that a copied work must, at least in part, be an object of
parody).
93. 17 U.S.C. § 107.
94. See Castle Rock, 150 F.3d at 142.
95. Id.
96. /d.
97. Id.
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dary use, the less likelihood that the secondary use substitutes for the
original."98 The court decided that "by the very nature" of transformative endeavors, persons other than the copyright holder would be
"better equipped," and could more likely fill "market and intellectural
niches."99
The digital environment provides valuable classroom teaching
opportunities with the transformation of cultural property collections
into digital forms. The reproduction of copyrighted material for purposes of classroom teaching can constitute fair use, but a finding of a
nonprofit educational purpose does not automatically compel a finding of fair use. lOO The question of how much copyrighting for classroom use is permissible was of major concern to Congress when it
enacted the Copyright Act of 1976, and although it did not include a
provision in the Copyright Act on the subject, it did approve a set of
guidelines with respect to it. lOi These guidelines represent minimum
standards of fair use; they are not binding. 102 The guidelines indicate
that multiple copies for classroom use are permissible if three tests are
met: brevity, spontaneity, and cumulative effect. 103 Spontaneity assumes that the copying was made as a result of a decision to use a
work so close in time to its need that it would be unreasonable to
expect a timely reply to a request for permission. Cumulative effect
requires that the copied material be for only one course. 104
98. Id.
99. Id.
100. See Marcus, 695 F.2d at 1175.
101. ConI. Rep. No 1733, 94th Cong., 2d Sess. 70 at 1976, reprinted in 1976 V.S.CCAN
5810, 5811.
102. See Marcus, 695 F.2d at 1178.
103. Id.
104. Id.; Notes of Committee on the Judiciary, H.R. 1476, 94th CONG., (2d Sess. 1976) (drafting the 1976 Copyright Act, the Copyright Committee recognized a need for greater certainty
and protection for teachers concerning limited copying. In order to meet that need, § 504(c) of
the Act was amended to provide teachers and other nonprofit users of copyrighted material with
broad insulation against unwarranted liability for infringement. Section 504, which provides
remedies for infringement, provides that if an infringer believes and had reasonable grounds for
believing his or her use of the copyrighted work was a fair use, the court must remit statutory
damages if the infringer is an employee of a nonprofit educational institution, library, or archives
and was acting within the scope of employment when the infringing act occurred).
In Marcus, 695 F.2d at 1177, the court found a violation of the copyright act when a school
teacher copied almost 50 percent of the plaintiff's teaching materials into a booklet which she
prepared for her classes. She used the booklet for three school years. The court ruled that fair
use does not cover such extensive use of copyrighted materials.
A library or archive that provides reproducing equipment must display a notice next to the
equipment that the making of copies may be subject to copyright law. 17 V.S.C § 108(f).
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There is a presumption that every commercial use of copyrighted
material is not fair use, and, as some courts have observed, the likelihood that future market harm exists is "implicit in the presumption
that every commercial use is presumptively unfair. "105
A small degree of copying can preclude a defense of fair use if the
copying is the essential part of the copyrighted work. 106 No more of a
work may be copied than is necessary for the particular use. 107
The Supreme Court ruled in 1984 in Sony Corp. v. Universal City
Studios,l°B that home time-shifting of television programs through
videotape recorders was fair use. 109 It decided that copyright holders
who license their works for broadcast on free television "would not
object to having their broadcasts time-shifted by private viewers.'>110
The Court also determined that time-shifting did not cause harm to
the potential market for, or the value of, the copyrighted works. 111
The Supreme Court in Sony noted that copyright holders who licensed
their works for broadcast on free television had "invited" the viewers
to view such works entirely free of charge; thus, when the works were
"time shifted" by viewers through home videotape recorders there
would be a "fair use" exception to a claim of copyright infringement. llZ The Court also determined that because such a use had "no
demonstrable effect upon the potential market for, or the value of, the
copyrighted work," the prohibition of such a use "would merely inhibit access to ideas without any countervailing benefit."l13 The Court
ruled that a "challenge to a noncommercial use of a copyrighted work
requires proof either that the particular use is harmful, or that if it
should become widespread, it would adversely affect the potential
market for the copyrighted work.,,114
105. Sony Corp. of America v. Universal City Studios, Inc, 464 U.S. 417, 451 (1984); Cable/
Home Communications Corp. v. Network Prods., Inc., 902 F.2d 829,844 (11th Cir 1990); Playboy Enters., Inc. v. Frena, 839 F. Supp. 1552, 1558 (M.D. Fla. 1993); Princeton Univ., 99 F.3d at
1383-84 (ruling that the burden of proof is on the copyright holder to show market effect if the
use is a noncommercial one. On the other hand, it held that the burden of proof is on the
alleged infringer if the challenged use is of a commercial nature).
106. See Meeropol v. Nizer, 560 F.2d 1061, 1071 (2d Cir. 1977); See Playboy Enters., 839
F.Supp. 1552.
107. See Supermarket of Homes, Inc. v. San Fernando Valley Bd. of Realtors, 786 F.2d 1400,
1409 (9th Cir. 1986).
108. See Sony, 464 U.S. 417.
109. Id. at 456.
110. Id.
111. Id.
112. Id. at 449.
113. Id. at 450-51.
114. Id. at 451.
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Although one might conclude from Sony that "time shifting"
through home video recorders would be a "fair use," which would apply to the downloading of digital images from the Internet, more recently, in Religious Tech. Ctr. v. Netcom On-Line Communications,115
a lower court found that, in balancing the various factors, the posting
of copyrighted works on the Internet negated a finding of fair use. 1l6
There is an element of "personal use" involved when users access
the Internet. Indeed a viewer might never consider that making copies of digital images would constitute copyright infringement. Still,
there is no infringement exception in the copyright act for "personal
use."
In Sega Enters. Ltd. v. MAPHIA (Sega 11),117 the court ruled that
although users of Sega games, who downloaded from a bulletin board,
used the games only in their homes, such use would not be fair use.u s
The court decided that because customers of the bulletin board operator could use the operator's files to play the games, they would not
purchase Sega's game cartridges. According to the court, the bulletin
board operator benefited from such use because the ability to upload
and download Sega's games induced sales of the copiers. 119 Further, it
was detrimental to Sega's marketing of its games because it clearly
decreased Sega's salesPo
Section 117 of the Copyright Act provides that an "owner" of a
copy of a computer program may make another copy or adaptation of
the computer program provided that the new copy or adaptation is
used only "as an essential step in the utilization of the computer program in conjunction with a machine."121 Users of the Internet would
115.
1995).
116.
117.
118.
Religious Tech. Ctr. v. Netcome On-line Communications, 923 F. Supp. 1231 (N.D. Cal.
Id. at 1249.
Sega Enters. Ltd. v. MAPHIA, 948 F. Supp. 923 (N.D. Cal. 1996).
Id. at 935.
119. [d.
120. [d.
121. 17 U.S.c. § 117; See Pub. L. 96-517, 96th Cong., 2d Sess. (1980) (creating the National
Commission on New Technological Uses of Copyrighted Works ("CaNTU") to recommend revisions to the Copyright Act to reflect advances in computer technology. CaNTU proposed a
version of section 117 identical to the one enacted except that it recommended that the section
provide that it would not be copyright infringement for a rightful possessor of a copy of a computer program to make another copy or adaptation of that program. Congress substituted the
words "owner of a copy" for "possessor" of a copy); see aisoDSC Communications Corp. v.
Pulse Communications, 170 F.3d 1354, 1361 (Fed. Cir. 1999) (pointing out that restrictions in a
licensing agreement that limits a licensee's right to transfer copies of software or the right to
disclose details of the software to third parties is inconsistent with a right to transfer copies to
third parties. The court held a licensee subject to such licensing restrictions was not an "owner"
under section 117 of the Copyright Act.)
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not be owners of the digital images exhibited on the Web. Thus, this
provision would not permit downloading.
Given the commercial context in which Internet users view digital
images, it may be difficult to fit copying of copyrighted digital works
for personal use into a "fair use" or "personal use" exception.
V.
EFFECTIVENESS OF COPYRIGHT LAWS TO PROTECT
COPYRIGHTED WORKS IN A BORDERLESS DIGITAL
ENVIRONMENT
It often is difficult to identify an Internet infringer or locate the
point of an infringing act for Internet users. Copyright holders have
brought infringement suits against operators of computer bulletin
board services and Internet access providers. Internet service providers may be liable for direct infringement because of their role in copying material when they receive, transmit, and store postings that their
customers make if their customers are, in this process, making copies
of wrongfully posted copyrighted material. 122 Direct infringement
does not require intent or any particular state of mind, so a provider
would be an innocent infringer and only subject to nominal damages if
the provider was unaware of any infringement. 123 Further, pursuant
to amendments to the Copyright Act by the Digital Millennium Act of
1998, discussed infra, a service provider can avoid liability if the service provider did not know an activity on the system or network was
infringing.
In the absence of protection from liability based on a service provider not being aware of an infringing activity on the system, a service
provider may be liable for vicarious and/or contributory infringement
for infringing activities of their subscribers. Vicarious infringement
would occur if an access provider had the right and ability to control a
direct infringer's activities and received a financial benefit from the
122. See LaMacchia, 871 F. Supp. 535 (a student at Massachusetts Institute of Technology
was charged with criminal copyright infringement under the federal wire fraud statute, 18 V.S.c.
§ 1343, when he set up a bulletin board and encouraged his correspondents to upload copyrighted software that other users would download for free. The court decided the defendant's
conduct was not a violation of the wire fraud statute because, according to the court, interference with copyright does not equate easily with theft or fraud. The court decided that copyright
prosecutions should be limited to the provisions in the Copyright Act and other statutes that
explicitly refer to copyrighted works.)
Congress passed the Copyright Felony Act in 1992, as amendments to 17 V.S.c. § 506 and
18 V.S.c. § 2319. 17 V.S.C. § 506(a) provides for felony penalties for copyright infringement
when a defendant infringes a copyright willfully and for purpose of commercial advantage or
private financial gain.
123. See Religious Tech. Clr., 907 F. Supp. 1361.
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infringement. 124 Knowledge is not an element of vicarious liability,
but it is required for contributory infringement. 125 Contributory infringement is limited to situations where the seller has constructive
knowledge that a customer, or a third party, was using the seller's
product to infringe copyright and where the product is "capable of
substantial infringing uses. "126 As the Supreme Court declared in
Sony Corp. v. Universal City Studios,127 contributory infringement "is
merely a species of the broader problem of identifying the circumstances in which it is just to hold one individual accountable for the
actions of another."128 Liability for participation in an infringing activity is established when a person or entity "with knowledge of the
infringing activity induces, causes or materially contributes to the infringing conduct of another."129 Thus, contributory infringement
might result when infringing material is posted on a service provider's
system and the provider is aware of the infringing activity,13°
The Copyright Act does not expressly render anyone liable for
infringement committed by another. l3l Still, the Supreme Court acknowledged in Sony132 that the "absence of such express language in
the copyright statute does not preclude the imposition of liability for
copyright infringements on certain parties who have not themselves
engaged in the infringing activity."133
In addressing the issue of whether Sony had vicarious liability for
copyright infringement for its sale of home videotape recorders, which
were then used to videotape a large number of copyrighted television
programs exhibited on commercially sponsored television, the Su124. See Shapiro, Bernstein & Co. v. H. L. Green Co., 316 F.2d 304, 306 (2d Cir. 1963)
(stating that a direct financial benefit might occur from the service provider receiving payment
from the subscriber.); see also Sega Enterprises Ltd., 948 F.Supp. at 934 (finding a financial benefit to a bulletin board operator. The court concluded that the ability of users to upload and
download copyrighted games induced sales of copiers).
125. See Shapiro, 316 F.2d at 306.
126. See Sony, 464 U.S. at 442.
127. Id.
128. Id. at 435.
129. See Gershwin Publ'g Corp. v Columbia Artists Mgmt, Inc., 443 F.2d 1159, 1162 (2d Cir.
1971).
130. See Netcom, 907 F.Supp. at 1373 (holding that a provider has knowledge when the provider is notified of the infringing activity and fails to take action to prevent further
infringement).
131. See Sony, 464 U.S. at 434 (pointed out the contrast with the Patent Act, 35 U.S.c.
§ 271(b), which expressly "brands anyone who 'actively induces infringement of a patent' as an
infringer." In addition, the Patent Act, 35 U.S.c. § 271(c) further imposes liability on certain
individuals labeled as "contributory" infringers).
132. See Sony, 464 U.S. 417.
133. Id. at 435.
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preme Court ruled that Sony would be liable only if it had sold equipment with constructive knowledge of the fact that its customers might
use the equipment to make unauthorized copies of copyrighted material. 134 As to contributory infringement, the court concluded that the
"sale of an article, which, though adapted to an infringing use, is also
adapted to other and lawful uses, is not enough to make the seller a
contributory infringer."135 Still, the court acknowledged that the contributory infringement doctrine was "grounded on the recognition
that adequate protection of a monopoly may require the courts to
look beyond actual duplication of a device or publication to the products or activities that make such duplication possible."t36 It commented that courts "must strike a balance between a copyright
holder's legitimate demand for effective-not merely symbolic-protection of the statutory monopoly, and the rights of others freely to
engage in substantially unrelated areas of commerce."137 The Supreme Court concluded that the sale of copying equipment would not
constitute copyright infringement if the product was "widely used for
legitimate, unobjectionable purposes."t38
In Cubby Inc. v. Compuserve Inc.,t39 the court refused to hold a
computer service company liable for defamatory statements contained
in a news publication it made available to its subscribers. t40 The computer service company developed and provided computer-related
products and services through an on-line general information service,
or "electronic library," that subscribers could access from a personal
computer or terminal. The court pointed out that distributors of defamatory publications are not liable if they neither knew, nor had rea134. Id. at 439. (showing that there was no precedent in the law of copyright for the imposition of vicarious liability on such a theory).
135. Id. at 441.
136. Id. at 442.
137. Id.
138. Id. at 456. (stating that the product "need merely be capable of substantial noninfringing uses." The Court found that Sony demonstrated a "significant likelihood that substantial
numbers of copyright holders who license their works for broadcasts on free television would not
object to having their broadcasts time-shifted by private viewers. The Court also found that
time-shifting would not cause harm to the potential market for, or the value of, the copyrighted
works. Thus, it ruled, with three Justices dissenting, that Sony's sale of videotape equipment to
the general public did not constitute contributory infringement of copyrights in television
programs).
139. Cubby Inc. v. Compuserve Inc., 776 F. Supp. 135 (S.D.N.Y. 1991).
140. Id. at 142-43. Subscribers to the service paid a membership fee and on-line time usage
fees, in return for which they had access to thousands of information sources available on the
service. Subscribers could also obtain access to over 150 special interest "forums," comprised of
electronic bulletin boards. interactive on-line conferences, and topical databases.
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son to know, of the defamation. 141 The court noted that the computer
service had little or no editorial control over publications it carried as
part of a forum especially when the forum was managed by a company
unrelated to the service. 142 The court decided that, since a computerized database is the functional equivalent of a more traditional news
vendor, the appropriate standards of liability would be whether the
service knew or had reason to know of the allegedly defamatory
statements. 143
In Playboy Enters. Inc. v. Frena,144 the defendant Frena operated
a subscription computer bulletin board service145 which distributed
unauthorized copies of the plaintiff's copyrighted photographs. The
bulletin board service was accessible via telephone modem to customers. Subscribers who logged onto the service could browse through
the service's directories to look at pictures. 146 Customers could also
download the high quality computerized copies of the photographs
and store copied images from Frena's computer onto their home computer. Most images were copies of photographs taken from the plaintiff's copyrighted materials. 147 Subscribers could upload material onto
the bulletin board so that another subscriber, by accessing their computer, could see the materiaU48 Frena did not upload any of the photographs onto the bulletin board and when he was made aware of the
problem, he removed the photographs from the bulletin board service
and began to monitor the service to prevent additional copyrighted
photographs from being uploaded. 149 The court ruled that Frena infringed the plaintiff's copyrights in the photographs. It decided that
Frena had supplied a product containing unauthorized copies of a
copyrighted work. 150 The court determined that the fact that Frena
141. Id. at 139.
142. Id. at 140.
143. Id. at 140-41.
144. See Sony, 464 U.S. 417.
145. See Sega Enters. Ltd. v. MAPHIA, 948 F. Supp. 923 (N.D. Cal. 1994) (demonstrating
that an electronic bulletin board consists of electronic storage media, such as computer memories or hard disk, which are attached to telephone lines via modem devices, and controlled by a
computer and that the use can transfer information over the telephone lines from their own
computers to the storage media on the bulletin board by a process known as "uploading."
Uploaded information is thereby recorded on the storage media. Third party users can also
retrieve information from the electronic bulletin board to their own computer memories by a
process known as "downloading").
146. See Playboy Enters., 839 F. Supp. at 1554.
147. ld.
148. Id.
149. Id.
150. /d. at 1557.
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did not make the copies himself was not important. l5l The court ruled
that Frena infringed upon the copyright owner's display rights. I52 It
held that "the display right precludes unauthorized transmission of the
display from one place to another, for example, by a computer system."153 It referred to the definition of "display" in the Copyright
Act, i.e., any showing of a copy of the work either directly or by
means of a film, slide, television image or any other device or process. I54 Further, the court determined that the display was a "public
display" even though access was limited to paying customers. The
court ruled that it did not matter that Frena may have been unaware
of the copyright infringement for, according to the court, "intent to
infringe is not needed to find copyright infringement. "155
In Sega Enters. Ltd. v. MAPHIA (Sega 1),156 the court ruled that
unauthorized copying of copyrighted computer programs is prima facie an infringement of the copyright. I57 It decided that Sega had established a prima facie case of direct copyright infringement by
establishing that unauthorized copies of its video games were made
when the games were uploaded to the MAPHIA bulletin board. I58 It
noted that the copied games were placed on the storage media of the
electronic bulletin board by unknown users. 159 The court ruled that
Sega also established that unauthorized copies of the games were
made when they were downloaded to make additional copies by users
and that such copying was facilitated and encouraged by the
MAPHIA bulletin board. I60 The court decided that lack of knowledge on the part of MAPHIA was not important because its "role in
the copying, including provision of facilities, direction, knowledge and
encouragement" amounted to contributory copyright infringement. 161
One court refused to follow the decisions in Playboy and Sega I.
In Religious Tech. Ctr. v. Netcom On-Line Communication Servs.
Inc.,162 the court ruled that an operator of a computer bulletin board
service and Internet access providers were not directly liable for cop151.
152.
153.
154.
155.
156.
157.
158.
159.
160.
161.
162.
[d. at 1556.
[d. at 1557.
[d.
17 U.S.C. §101. See Playboy Enters., 839 F.Supp. at 1557.
See Playboy Enters., 839 F. Supp. at 1559.
Sega Enters Ltd. v. MAPHIA, 857 F. Supp. 679.
[d. at 686.
[d.
[d.
[d.
[d. at 687.
See Religious Tech., 907 F. Supp. 1361.
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ies made from the computer. 163 Notwithstanding the court's ruling in
Playboy that a bulletin board service may be directly liable for distributing or displaying to the public copies of protected works, the court
in Netcom held that a bulletin board service would not directly infringe a copyright holder's exclusive right to reproduce a copyrighted
work by its storage of infringing copies and retransmission to other
servers when such copies were uploaded by an infringing user. l64 The
court also determined that the court's decision in Sega I did not support a finding of direct infringement where users who upload files
made copies on a bulletin board service. 165 The court decided that the
mere possession of a digital copy on a bulletin board, which is accessible to some members of the public, does not constitute direct
infringement. 166
The court in Netcom ruled that Netcom was not liable for contributory infringement because Netcom did not know of the infringing
acts before it was notified by the copyright owner. 167 The court ruled
that where a bulletin board service operator cannot reasonably verify
a claim of infringement, either because of a possible fair use defense,
the lack of copyright notices on the copies, or the copyright holder's
failure to provide the necessary documentation to show that there is a
likely infringement, then the operator's lack of knowledge will be
found reasonable and there will be no liability for contributory infringement for allowing the continued distribution of the works on its
system. 168 The court further held that if Netcom had knowledge of
the primary infringer's infringing activities, it would be liable if it "in163. Id. at 1381.
164. Id. at 1371.
165. Id.
166. Id. at 1372 (noting that Netcom, the defendant, did not maintain an archive of files for
its users. Thus, according to the court it could not be "supplying a product." Further, as the
court pointed out. Netcom did not create or control the content of the information available to
its subscribers; it merely provided access to the Internet, whose content was not controlled by a
single entity. The court concluded that although the Internet consists of many different computers networked together, some of which could contain infringing files, it did not "make sense
to hold the operator of each computer liable as an infringer merely because his or her computer
is linked to a computer with an infringing file." The court decided that it "would be especially
inappropriate to hold liable a service that acts more like a conduit" (one that does not itself keep
an archive of files for more than a short duration). The court stated that no purpose is served
"by holding liable those who have no ability to control the information to which their subscribers
have access," even though they might "in some sense" help "to achieve the Internet's automatic
'public distribution' and the users' 'public' display of files.").
167. Id. at 1374.
168. Id.
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duces, causes or materially contributes to the infringing conduct" of a
primary infringer,169 but its participation must be substantial. 170
In Fonovisa v. Cherry Auction Inc., 171 the Ninth Circuit prescribed an alternative lower standard for determining when a provider
would be liable for contributory infringement. l72 According to the
Ninth Circuit, "merely providing the means for infringement may be
sufficient to incur contributory copyright liability."173 In a later case
involving Sega Enterprises, Sega Enters. Ltd. v. MAPHIA (Sega //),174
the court adopted the lower standard as set out in Fonovisa to find the
bulletin board operator liable for contributory infringement,175 The
court in Sega // decided the bulletin board operator knew or had reason to know of its users copying Sega's games. 176 It determined that
the operator could track user uploads and downloads. l77
The court in Netcom precluded copyright liability for an Internet
service provider for user infringement unless the provider had knowledge of infringing activities of its subscribers. The court's opinion in
Netcom contrasted with some courts' opinion that an Internet access
provider should be liable for copyright infringement upon on-line service even when the provider had no knowledge of, or participation in,
the infringement and exercised no control over the content of its service. The problem, of course, is that the sheer volume of transmissions makes it extremely difficult, if not impossible, for service
providers to police infringing activities on the Internet.
169. Id. at 1375.
170. Id. at 1376-77 (discussing possible vicarious infringement based on Netcom's relationship to the primary infringer. The court decided there was a fact issue regarding Netcom's right
and ability to supervise the conduct of its subscribers but decided that Netcom did not have a
direct financial benefit from the infringing activities of its users. It pointed out that Netcom
received a fixed fee from its subscribers and that there was no evidence that it benefited from an
"easy, regulation-free Internet access" that would attract copyright infringers to its system).
171. Fonovisa v. Cherry Auction Inc., 76 F.3d 259 (9th Cir. 1996).
172. Id. at 264.
173. Id.
174. See Sega Enter. Ltd. v. MAPHIA, 948 F.Supp. 923.
175. Id. at 932-33.
176. Id. at 933.
177. Id. (determining that the operator would be liable under the alternative and higher
standard of "substantial participation" as set out in Nelcom. The court noted that the operator
"did more than provide the site and facilities for the known infringing conduct." The court
pointed out that the operator "actively solicited users to upload unauthorized games, and provided a road map on his BBS for easy identification of Sega games available for downloading."
The court also noted that the operator "offered copiers for sale to facilitate playing the
downloaded games.").
The court in Sega 1/ agreed with the decision in Nelcom that a bulletin board operator
would not be liable for direct infringement if it is not shown the provider directly caused the
infringement.
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The Digital Millennium Copyright Act of 1998 amended the U.S.
Copyright Act to provide that a service provider will not be liable for
damages for copyright infringement by reason of the provider's transmitting, routing, or providing connections for, material through a system or network controlled or operated by the service provider, or by
reason of the intermediate and transient storage of that material
under the following circumstances: (1) transmission of the material
was initiated by or at the direction of a person other than the service
provider, (2) transmission, routing, provision of connections, or storage was carried out through an automatic technical process without
selection of the material by the service provider, (3) the service provider did not select recipients of the material except as an automatic
response to the request of another person, (4) no copy of the material
made by the service provider of such intermediate or transient storage
was maintained on the system or network in a manner ordinarily accessible to anyone other than anticipated recipients, and no copy was
maintained on the system or network in a manner ordinarily accessible to such anticipated recipients for a longer period than was reasonably necessary for the transmission, routing, or provision of
connections, and (5) the material was transmitted through the system
or network without modification of its contentYs A service provider
is not liable for copyright infringement by reason of the storage at the
direction of a user of material that resides on a system or network
controlled or operated by the service provider if (1) the service provider does not have actual knowledge that the material or an activity
using the material on the system or network is infringing, (2) in the
absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent, or (3) upon obtaining such knowledge or awareness, acts expeditiously to remove, or
disable access to, the material, (4) does not receive a financial benefit
directly attributable to the infringing activity in a case in which the
service provider has the right and ability to control such activity, and
(5) upon notification of claimed infringement responds expeditiously
178. 17 U.S.c. § 512(a)-(b) (stating that a service provider also is not liable under the act if
the material was made available on-line by a person other than the service provider, the material
was transmitted from that person through the system or network at the direction of that person,
and the storage was carried out through an automatic technical process for the purpose of making the material available to users of the system or network who, after the material was transmitted, requested access to the material).
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to remove, or disable access to, the infringing material or the material
that is subject to infringing activity.179
In addition to the problem of a copyright owner identifying an
Internet infringer and locating the point of an infringing act, a copyright holder also must confront the difficult problem of determining
the proper forum and choice of law for an infringement claim. Suppose a copyright holder who resides in Country X, and has a work
copyrighted under the laws of Country X, contends that an alleged act
of infringement of the copyrighted work occurred in Country Y.
Should the copyright holder bring an infringement action in Country
X or in Country Y?
The principle of "national treatment" provides that authors and
artists should enjoy the same protection for their works in other countries as they do in their own country. This principle was developed
pursuant to the Berne Convention180 and the Universal Copyright
Convention. 18l Most U.S. courts have ruled that the principle implicates a "rule of territoriality."182 According to the Ninth Circuit, this
rule specifies that the applicable law in an infringement action would
be the copyright law of the state in which the infringement occurred,
not that of the country of which the author is a nationaU83 However,
the Second Circuit disagrees. 184 According to the Second Circuit in
Itar- Tass Russian News Agency v. Russian Kurrier, Inc. ,185 the principle of national treatment does not express any choice of law rule.
Rather, according to the Second Circuit, it "simply requires that the
country in which protection is claimed must treat foreign and domestic authors alike. "186 The Second Circuit explained that, because cop179. 17 U.S.c. § 512(c)-(d) (applying the same exceptions from liability to a service provider
referring or linking users to an on-line location containing infringing material or infringing activity by using information location tools, including a directory, index, reference, pointer, or
hypertext link.
180. See Berne Convention, Article V(2).
181. See Berne Convention, Article II. See discussion in dissenting opinion in Creative Tech.,
Ltd. v. Aztech Sys. PTE, Ltd., 61 F.3d 696, 705 (9th Cir. 1995).
182. See, e.g., Subafilms Ltd. v. MGM-Pathe Communications Co., 24 F.3d 1088 (9th Cir.
1994), cert. denied, 115 S. Ct. 512 (1994) (No. 94-546); Creative Tech., Ltd. v. Aztech Sys. PTE,
Ltd., 61 F.3d 696.
183. See Aztech, 61 F.3d at 705.
184. See har-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82 (2d Cir. 1998).
185. Id. at 90.
186. Id. at 90. (according to the Second Circuit in Itar, the Berne Convention cannot be the
source of law because it is not self-executing. Further, according to the Second Circuit, because
the U.S. Copyright Act has no choice of law provision, the matter is left to federal common law.
The Second Circuit decided that the result would be that the applicable law would not necessarily be the same for each element of a copyright claim).
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yright is a form of property, a court should decide which law governs
copyright infringement by determining the interest of the parties
based "on the law of the state with 'the most significant relationship'
to the property and the parties."18?
A majority of courts that have addressed the issue of the proper
forum for an international copyright infringement action have concluded that U.S. copyright laws do not have extraterritorial effect,188
A majority of U.S. courts have required an author or artist to pursue a
remedy in the country in which the copyright infringement occurred
rather than the country with the most significant relationship to the
property and/or the parties. Unfortunately, some courts in the United
States have neither applied the territoriality principle to protect foreign authors from infringing acts occurring in the United States nor to
protect American authors from infringing acts occurring abroad.
In Subafilms, Ltd. v. MGM-Pathe Communications CO.,189 the
Ninth Circuit ruled that infringing acts that take place entirely abroad
do not state a claim for infringement under the U.S. Copyright Act
even if the acts are authorized in the United States. 190 The court decided that an authorization within the United States of entirely extraterritorial acts does not confer a cause of action under U.S. copyright
laws. 19t The court was not impressed with the copyright owner's contention that failure to apply the copyright laws extraterritorially would
187. ld. The Second Circuit set out as relevant factors, the nationality of the authors, the
place of initial publication, and the country of origin as determined under the Berne Convention.
Id. Article 5 'II 4 of the Berne Convention defines the country of origin of a particular work as
the country in which the work first was published. Art 3 'II 3 defines published works as "works
published with the consent of their authors, whatever may be the means of manufacture of the
copies."
188. See, e.g., Robert Stigwood Group, Ltd. v. O'Reilly, 530 F.2d 1096, 1101 (2d Cir. 1976),
cere. denied, 429 U.S. 848 (1976).
189. See Subafilms, 24 F.3d 1088.
190. Id. at 1098-99. (in Subafilms, the musical group "The Beatles," through Subafilms, Ltd.,
entered into a joint venture in 1966 with the Hearst Corporation to produce the animated motion picture entitled "Yellow Submarine." Over the next year, Hearst negotiated an agreement
with United Artists Corporation to distribute and finance the film. Pursuant to the agreements,
UA distributed the motion picture in theaters and later on television. With the advent of the
home video market in the early 1980s, UA entered into several licensing agreements to distribute a number of its films on videocassette. It did not license "Yellow Submarine" because of
uncertainty about whether the agreements provided for home video rights to distribute the film.
Subsequently, UA's successor company, MGMlUA Communications Co., authorized its subsidiary to distribute the motion picture for the domestic home video market. The mm was then
distributed around the world through international videocassette distribution. Subafilms and
Hearst brought suit against MGMlUA, contending that the videocassette distribution of the motion picture, both foreign and domestic, constituted copyright infringements and a violation of
the agreements).
191. Id. at 1090, 1099.
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have a disastrous effect on American industry and that other remedies, such as suits in foreign jurisdictions or the application of foreign
copyright laws by American courts, were not realistic alternatives. 192
While the court acknowledged that the "central thrust" of the multilateral treaties, the Universal Copyright Convention and the Berne
Convention, is the principle of 'national treatment,'193 the court was of
the opinion that the treaties adequately provided for protection in a
foreign nation of work of a citizen of another country generated in the
citizen's country.194 The court commented that an American national
would receive the same protection in a foreign nation that the foreign
nation accorded to works of its nationals. l95 The court pointed out
that the "applicable law is the copyright law of the state in which the
infringement occurred, not that of the state of which the author is a
national or in which the work was first published."l96 Thus, even
though infringing acts were "authorized" in the United States, because the actual infringing act itself occurred abroad, the court refused
to adjudicate the infringement claim. l97
The court in Subafilms pointed out its concern that application of
U.S. copyright law to acts of infringement that occur entirely overseas
could have the effect of disrupting a "stable international intellectual
property regime."l98 It decided that the "national treatment" principle of Berne implicates a "rule of territoriality," and, thus, avoids conflict of laws problems. 199 Still, the Ninth Circuit Court of Appeals,
which decided Subafilms, subsequently dismissed a copyright violation
claim brought by two foreign companies for alleged copyright violations occurring in the United States. In Creative Tech., Ltd. v. Aztech
Sys. PTE, Ltd.,200 the Ninth Circuit applied the doctrine offorum non
conveniens to rule that it was not "convenient" for it to hear a copyright infringement claim of a foreign company even though the alleged infringing act occurred in the United States and even though the
foreign company had a U.S. copyright. 20l
192. Id. at 1095.
193. Id.
194. Id.
195. Id.
196. Id. at 1097.
197. See also Kolbe v. Trudel, 945 F. Supp. 1268, 1270 (D. Ariz. 1996); Iverson v. Grant, 946
F. Supp. 1404, 1412 (D. S.D. 1996).
198. See Subafilms, 24 F.3d at 1097.
199. Id. at 1097-98.
200. See Creative Tech., 61 F.3d 696.
201. Id. at 704.
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In Aztech, Creative Technology, a Singapore company which designed and manufactured computer software program, contended that
Aztech, another Singapore company, was distributing similar software
in the United States and was infringing Creative's U.S. copyright. 202
The Ninth Circuit decided the High Court of Singapore could enjoin
Aztech's infringing conduct in Singapore and that the Singapore court
would be the best court to hear the claim.203 The Ninth Circuit asserted that "lack of extraterritorial reach" should not prevent the
High Court of Singapore from applying United States copyright law to
determine damages from copyright infringement occurring in the
United States. 204 The court ruled that "national treatment" and "territoriality" are choice of law principles and do not preclude the application of the forum non conveniens doctrine to a copyright action filed
in a U.S. court by a foreign person even though the alleged infringement occurred in the United States. The court concluded that the Singapore Copyright Act provided an "adequate alternative forum in
which to adjudicate Creative's United States copyright infringement
claim."205 It commented that the Singapore Act offered Creative an
"adequate alternative remedy independent of United States copyright
law" and that a Singapore court "would be free to apply United States
copyright law" should the need arise. 206
According to a majority of the Ninth Circuit, the forum non conveniens doctrine does not guarantee a claimant "its choice of law, or
even that United States law will be applied in the alternative forum. "207 Thus, while the Ninth Circuit had ruled in Subafilms that
infringing acts that take place abroad cannot be litigated under the
U.S. Copyright Act, it ruled in Aztech that a U.S. court can dismiss an
infringement claim brought by a foreign person for infringing acts that
take place wholly within the United States because, it decided, a foreign court is better able to hear a claim regarding acts occurring solely
within the United States.
In a dissenting opinion in Aztech,208 Justice Ferguson stated:
I must admit that I am astounded when I read that it is not convenient to try an American copyright case in an American court for
copyright infringement that takes place solely in America. I am also
202.
203.
204.
205.
206.
207.
208.
Id.
Id.
Id.
Id.
Id.
Id.
/d.
at 699, 705.
at 702.
at
at
at
at
704.
702.
701.
704-9.
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astounded by a decision that the convenient place to hold the trial is
in Singapore, particularly when the majority have not the slightest
idea that a court in that nation would even recognize an American
copyright.209
Justice Ferguson noted that the principle of "national treatment" developed pursuant to the Berne Convention does grant a foreign author the right to pursue a remedy in the country in which an infringing
act occurred. 210 He advocated that American courts should permit
foreign copyright owners the same opportunity given American copyright owners to litigate their claim in the United States when the alleged infringement occurred in the United States. 211
In Allarcom Pay Television, Ltd. v. General Instrument Corp.,212
the Ninth Circuit Court of Appeals reaffirmed its position that for
U.S. copyright law to apply, at least one alleged infringement must be
completed entirely within the United States, and that mere authorization of extraterritorial infringement is not a completed act of infringement in the United States. 213 In Allarcom, a Canadian provider of
subscription television programming brought a copyright violation
claim against a manufacturer of satellite signal decoder and a company that provided subscription television programming in the United
States. 214 Although the Ninth Circuit recognized that the alleged infringers either initiated a potential infringement in the United States
by broadcasting the copyrighted signal or they authorized persons in
Canada to engage in infringement, the court ruled that because, in
either case, the potential infringement was only completed in Canada
once the signal was received and viewed, the U.S. copyright law did
not apply.215
The Ninth Circuit later ruled that U.S. copyright law does apply
to transmissions to foreign countries that are made possible by infring209. Id. at 705.
210. Id. at 705-6.
211. Id. at 706. (providing within the U.S. Copyright Act that a published work is subject to
copyright protection if the work is a Berne Convention work or the work is first published in the
United States or in a foreign nation that, on the date of first publication, is a party to the Universal Copyright Convention. It also provides that a work is protected if on the date of first publication, one or more of the authors is a national or domiciliary of the United States, or is a national,
domiciliary, or sovereign authority of a foreign nation that is a party to a copyright treaty with
the United States. 17 U.S.C. § 104(b). However, the act provides that any rights in a work
eligible for copyright protection under the U.S. Copyright Act will not be expanded or reduced
by virtue of the Berne Convention. 17 U.S.c. § 104(c».
212. Allarcom Pay Television, Ltd. v. General Instrument Corp., 69 F.3d 381 (9th Cir. 1995).
213. Id. at 387.
214. Id. at 383-84.
215. Id. at 387.
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ing acts of copying within the United States. 216 In Los Angeles News
Servo v. Reuters Television Int'l,217 a news organization produced video
and audio tape recordings of newsworthy events, copyrighted the
works and licensed them for profit. 218 Reuters, a television news
agency that gathers and provides audiovisual and other news material
to its subscribers for an annual fee, transmitted the works to subscribers in Europe and Africa. The court ruled that the transmission was
made possible by infringing acts of copying in the United States. 219
As the court noted, the satellite transmissions "were merely a means
of shipping the unlicensed footage abroad for further
dissemination. "220
In Murray V. British Broad. Corp.,221 the Second Circuit Court of
Appeals dismissed a copyright infringement claim brought by a British
national against a corporation organized under the laws of the United
Kingdom and its U. S. subsidiary.222 The court ruled that the doctrine
of forum non conveniens applied to permit the court "to resist jurisdiction" because, according to the court, dismissal would "best serve the
convenience of the parties and the ends of justice."223 While recognizing that there is "ordinarily a strong presumption in favor of the plaintiff's choice of forum," and that a plaintiff's "choice of forum should
rarely be disturbed," the court commented that a foreign plaintiff's
"choice of forum is entitled to less deference."224 Still, the court also
recognized that a foreign plaintiff's choice of forum must be given
some weight because, as the court stated, "dismissal for forum non
conveniens is the exception rather than the rule. "225
216. Los Angeles New Servo v. Reuters Television Int'l, 149 F.3d 987 (9th Cir. 1998).
217. Id.
218. Id. at 990.
219. [d. at 992.
220. [d.
221. Murray v. British Corp., 81 F.3d 287 (2d Cir. 1996).
222. See id. at 289 (filing of a claim by plaintiff because a contingent fee arrangement was not
available in the United Kingdom for this type of litigation).
223. [d. at 290.
224. [d. (citing the decision of the U.S. Supreme Court in Piper Aircraft Co. v. Reyno, 454
U.S. 235,255 (1981) in which the Supreme Court had emphasized that the rule is not based on a
desire to disadvantage foreign plaintiffs but rather on a realistic prediction concerning the ultimate convenience of the forum:
[w]hen the home forum has been chosen, it is reasonable to assume that this choice is
convenient. When the plaintiff is foreign, however, this assumption is much less reasonable. Since the central purpose of any forum non conveniens inquiry is to ensure that
the trial is convenient, then a foreign plaintiff's choice deserves less deference.
225. See Quackenbush V. Allstate Ins.Co., 517 U.S. 706 (1996), the Supreme Court noted that
the common-law forum non conveniens doctrine "proceeds from the premise that only in rare
circumstances can federal courts relinquish their jurisdiction in favor of another forum." The
Supreme Court stated that forum non conveniens decisions should be determined by conve-
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The foreign claimant in Murray argued that the court should give
it the same deference given domestic plaintiffs because of the Berne
Convention, to which both the United States and the United Kingdom
are signatories. 226 The court disagreed, ruling that a declaration of
"national treatment" as set out in Berne does not imply a principle of
"equal access to courts."227 The Second Circuit stated that the "longestablished practice" is that drafters of international agreements explicitly declare when they are seeking equal access to national
courts. 228 In dismissing Murray's claim, the court maintained that the
"Berne Convention's national treatment principle insures that no matter where Murray brings his claim, U.S. copyright law would apply to
exploitation of the character in this country.,,229 Consequently, according to the court, any interest of the United States in the application of its laws would not be "ill-served by a lawsuit in an English
forum. "230
In Curb v. MCA Records, Inc.,231 the court rejected the Ninth
Circuit's ruling in Subafilms that, in cases of foreign infringement, authorization in the United States is not an act of infringement that occurs within the United States to make the U.S. Copyright act
applicable. The court in Curb declared:
A better view, one supported by the text, the precedents, and ironically enough, the legislative history to which the Subafilms court
cited, would be to hold that domestic violation of the authorization
right is an infringement sanctionable under the Copyright Act. .. 232
nience to the parties and practical difficulties that can attend adjudication of a dispute in a certain locality, such as evidentiary problems, unavailability of witnesses, difficulty of coordinating
multiple suits, etc.
226. Murray, 81 F.3d at 290.
227. Id. at 291.
228. Id.
229. Id. at 293.
230. Id. at 290-295 (denying the claim, the Second Circuit noted that the Berne Convention,
Article V(2), provides that "the extent of protection, as well as the means of redress afforded to
the author to protect his rights, shall be governed exclusively by the laws of the country where
protection is claimed." The court ruled that it would not construe "a simple declaration of 'national treatment' to imply a principle" of equal access in the absence of an explicit provision in
the Berne Convention. The court in Murray noted that most witnesses and physical and documentary evidence were located in England. In balancing the interests, the Second Circuit decided that the convenience of the parties and the ends of justice would best be served by
dismissing the action brought in the United States).
231. Curb v. MCA Records, Inc., 898 F. Supp. 586 (M.D. Tenn. 1995). Curb allegedly violated MCA's copyright in recordings by distributing MCA's copyrighted recordings abroad.
232. Id. at 595.
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Thus, the court ruled that an infringer's "act of authorizing the distribution of copyrighted recordings for sale to a worldwide public was
sanctionable under the U.S. Copyright Act."233
The court in Curb would localize infringement. The court stated
that an infringer "need only transmit by wire or telefax to start the
presses in a foreign land."234 It criticized the court's decision in
Subafilms because it decided Subafilms "ignores this economic reality."235 The court commented that a phone call to a state in the
United States could result in liability, whereas a call to a foreign country "results in riches."236 The court recognized that in "a global marketplace," this literally is "a distinction without a difference."237
As the court recognized in Curb, an "authorization" of an infringing act should be a violation of the copyright law because such an act
"commences a course of infringing conduct without regard for
whether eventual exploitation is to take place at home or abroad. "238
Unquestionably, a court in the country where an authorization of an
infringement takes place should be willing to address a copyright infringement claim, but, in addition, countries and their courts must begin to recognize an international system that effectively provides one
law for copyright infringement claims in the borderless cyberspace
environment.
VI.
PROTEcrION AND LIABILITY OUTSIDE COPYRIGHT LAWSRIGHT OF PRIVACY AND PUBLICITY, UNFAIR
COMPETITION, AND MISAPPROPRIATION
The right of privacy and right of publicity grant state law protections, and corresponding liabilities, outside copyright law. Unlike
copyright protection, which provides uniformity through a federal law
that preempts often inconsistent state provisions, the scope of the
right of privacy and publicity developed from the common law is subject to variable definitions under state laws. 239
233. Id. at 596.
234. Id.
235. Id.
236. Id.
237. Id.
238. Id.
239. In Allison, 136 F.3d at 1446-47, the court noted that sixteen states have judicially or
statutorily recognized the right of publicity as such and that an additional nine states have statements that cover most aspects of the right of publicity.
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One court240 defined the right of privacy as "the right of a person
to be free from unwarranted publicity or exploitation of one's personality, the publicizing of one's private affairs with which the public has
no legitimate concerns, or the wrongful intrusion into one's private
activities in such manner as to outrage or cause mental suffering,
shame or humiliation to a person of ordinary sensibilities. "241 The
right of privacy is a personal one that is not assignable and does not
survive death. 242
In Benally v. Amon Carter Museum of Western Art,243 members
of a Navajo tribe brought a right of privacy suit against a museum for
releasing a photograph of them without their authorization. 244 Although a "person of ordinary sensibilities" probably would not object
to reproductions of the photograph in question, which was a unique
rendition of a Navajo mother and child in native dress, members of
the Navajo tribe did object because of traditional Navajo belief that
publication of photographs can have bad effects on persons in the
photograph. 245 The important question raised, but not decided, in
Benally was whether a court should enlarge the concept of "a person
of ordinary sensibilities" to encompass the sensibilities of a special
class of persons, such as members of the Navajo nation, in determining whether a right of privacy was violated.
The unauthorized use of a photograph can be a violation of a
right of publicity as well as the right of privacy. In Martin Luther
King, Jr., Crr. for Soc. Change v. American Heritage Prods., Inc.,246 the
court ruled that the appropriation of another's name and likeness
240. See Phillips v. Smalley Maint. Servs., Inc., 435 So. 2d 705, 708 (Ala. 1983).
241. Id. at 708. See also Allison, 136 F.3d at 1446.
242. See Pirone v. MacMillan, Inc., 894 F.2d 579, 584 (2d Cir. 1990); Gruschus v. Curtis
Publ'g Co., 342 F.2d 775, 776 (10th Cir. 1965).
243. Benally v. Amon Carter Museum of Western Art, 858 F.2d 618 (10th Cir. 1988).
244. Id. at 619-21. The plaintiffs had been photographed in native dress by Laura Gilpin.
Although they gave Gilpin permission to take the photograph, they had not authorized publication or public exhibition of the photographs. A photograph titled "Navajo Madonna," which
became part of Gilpin's collection, was later published on a postcard, in three books, in
magazines, and was exhibited at least 35 times throughout the United States. Upon Gilpin's
death, the photographs were bequeathed to the Amon Carter Museum. Museum officials spent
considerable time in Santa Fe, New Mexico, transferring and cataloging the negatives for use in
the museum and for producing a documentary film about Gilpin and her work. The plaintiffs
complained of the museum's exhibiting the photograph and publishing reproductions in several
magazines. The Court ruled that the plaintiffs could sue the museum in New Mexico because the
museum had conducted "business" in New Mexico.
245. Id. at 621.
246. Martin Luther King, Ir. v. Am. Heritage Prods., Inc., 694 F.2d 674 (11th Cir. 1983).
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without consent, whether in a photograph or a sculpture, for financial
gain violated a public figure's right of publicity.247
A commercial appropriation right of privacy prohibits the appropriation to another's economic advantage of one's name or likeness. 248
This right is similar to, and generally is referred to, as a right of publicity.249 Some courts have held that the right of publicity is a property
right that extends after death. 250
The right of publicity developed to protect the commercial interest of famous persons in their identities. 251 It protects one's pecuniary
interest in the commercial use of one's name or likeness. 252 It is the
right to control and profit from the commercial use of one's name or
likeness. 253 The theory of the right is that a celebrity's identity can be
valuable in the promotion of products and the celebrity has an interest
that may be protected from the unauthorized commercial exploitation
of that identity.254 The right of publicity differs from the right of pri247. Id. at 680; see also Haelan Labs., Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866, 868 (2d
Cir. 1953) (ruling that "in addition to and independent of" a right of privacy, a person "has a
right in the publicity value of his photograph, i.e., the right to grant the exclusive privilege of
publishing his picture, and that such a grant may validly be made 'in gross,' i.e., without an
accompanying transfer of a business or of anything else.").
248. See Allison, 136 F.3d at 1447.
249. Id. at 241; see also Wendt v. Host Int'! Inc., 125 F.3d 806, (9th Cir. 1997); Haelan Labs.,
Inc., 202 F.2d 866. (recognizing the "right of publicity").
250. See Memphis Dev. Found. v. Factors, Etc., Inc., 616 F.2d 956 (6th Cir. 1980); Sinkler v.
Goldsmith, 623 F. Supp.727 (D. Ariz. 1985) (ruling that the right of publicity did not survive the
death of the owner); but see Factors Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215 (2d Cir. 1978);
Martin Luther King Jr., Cent. for Soc. Change v. Am. Heritage Prods, Inc., 694 F.2d 674, 681
(holding that the right of publicity does survive death. The court in Martin Luther King Jr.,
decided the right was assignable during the life of a celebrity and also is inheritable. The court
opined that if the right of publicity dies with the celebrity, the economic value of the right would
also die with the celebrity. It commented that "the celebrity's untimely death would seriously
impair, if not destroy, the value of the right of continued commercial use." The court also stated
that a person "who avoids exploitation during life is entitled to have his image protected against
exploitation after death just as much if not more than a person who exploited his image during
life.").
251. See Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983).
252. See Haelan Labs. 202 F.2d at 868.
253. See Memphis Dev. Found., 616 F.2d at 958.
254. In Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 563-4 (1977) (recognizing the
right for a performer in a "human cannonball" act who sought damages from a television broadcasting company that, against his wishes, videotaped his entire performance and played the
videotape on a television news program. The Supreme Court decided that the broadcast of a
film of the performer's entire act posed a substantial threat to the economic value of that performance. According to the Court, the performer's act was the product of his own talents and
energy, the end result of much time, effort, and expense, and that much of its economic value lay
in the right of exclusive control over publicity given the performance. As the Court stated, if the
public can see the act free on television, it will be less willing to pay to see it).
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vacy (the right to be left alone) in that it provides a person the ability
to control use of that person's identity in commerce. 255
Copyright laws protect an artist's expression of an idea in a tangible form, such as a painting or a sculpture. 256 On the other hand,
because the right of publicity protects against an unauthorized use of a
celebrity's name or image,257 the availability of protection under a
right of publicity is not limited to a tangible medium of expression. 258
Protection under a right of publicity creates a common law monopoly that effectively removes some works from the public domain. 259 Because the right of publicity may provide economic
protection to an artist should the artist's name or product be used in
any unauthorized manner,260 a possible violation of this somewhat illdefined right also must be considered in preparing digital reproductions of collections.
Unfair competition issues surface if an artist's work is presented
in a distorted form. 261 There is a violation under the Lanham Act 262 if
255. See Cardtoons, L.c. v. Major League Baseball Players Ass'n, 95 F.3d 959, 967 (10th Cir.
1996).
256. Allison, 136 F.3d at 1448 (commenting that copyright also protects an artist's right of
expression included in the tangible form).
257. In Genesis Publ'ns, Inc. v. Goss, 437 So.2d 169 (Fla. Dist. Ct. App. 1983); Goss v. Genesis Publ'ns, Inc. 449 So.2d 264 (Fla. 1984) (without permission, the defendant published plaintiff's photograph for use in a commercial advertisement in defendant's magazine. The court held
the publication was an invasion of privacy. 437 So.2d at 170. The court noted that while the
plaintiff consented to be the subject of a photograph, she never authorized use of the
photograph).
Because the right of publicity protects against an unauthorized use of an image, a celebrity
could control when, and if, his or her image can be distributed. However, in Allison, 136 F.3d
1443, the court ruled that the first-sale doctrine (see discussion as it relates to rights held by a
copyright holder at note 21) applies to the right of publicity. As the court stated in Allison, a
holding that the first-sale doctrine limits the right of publicity would not eliminate completely a
celebrity's control over the use of his or her name or image. A celebrity would continue to enjoy
the right to license the use of his or her image in the first instance, and, thus, would enjoy the
power when, of if, the celebrity's image would be distributed.
258. See Carson, 698 F.2d at 837.
259. Id. at 840. Justice Kennedy expressed concern, in a dissenting opinion, that a right of
publicity creates a monopoly to the protected individual that is potentially broader that the copyright law. Another problem, according to Justice Kennedy, is that the public generally is unaware of the claimed right.
260. In Uhlaender v. Henricksen, 316 F. Supp. 1277, 1280 (D. Minn. 1970) (holding that the
right of publicity protects pecuniary, rather than emotional interests).
261. In Jaeger v. American Int'l Pictures, Inc.. 330 F. Supp. 274 (S.D.N.Y. 1971) (stating that
a work that bore an author's name but severely garbled, distorted. or mutilated the work, provided the author with a cause of action under the tort of unfair competition); Gilliam v. Am.
Broad. Cos. Inc., 538 F.2d 14 (2d Cir. 1976) (recognizing that relief had been granted for misrepresentation of an artist's work by relying on the law of unfair competition. The court noted that
the tort of unfair competition can be used to vindicate an author's personal right to prevent
presentation of his or her work to the public in a distorted form. The court found a violation of
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a representation of a product, although technically true, creates a false
impression of the product's origin. Thus, in Gilliam v. American
Broad. Cos. ,263 the court ruled that an obligation to mention the name
of an author or artist carried the implied duty not to make changes to
the work as would render the credit line a false attribution of
authorship.264
Some courts have addressed the issue of whether a false copyright notice is actionable under the Lanham Act as a false designation
of origin?65 A few courts have ruled that placing a copyright notice
on an infringing product can be a false designation of origin actionable
under the Lanham ACt. 266 This possibility presents a caveat to cultural institutions that place a copyright right notice on digital images
of works in their collections if the images have no original element.
In Bridgeman Art Library v. Corel Corp.,267 the court discussed
whether one could make a trademark or comparable use of a copyrighted image, which would serve as a trademark, that would provide
a cause of action under the Lanham ACt. 268 This might be a possibility
if the images bore trademarks or service marks of the cultural institution?69 If the images are copyrightable and are associated with the
cultural institution, copying of the images could be a violation of the
the Lanham Act, 15 U.S.C. § 1125, the federal counterpart to unfair competition, when American Broadcasting Companies edited versions of three separate programs originally written and
performed by a group of British writers and performers known as Monty Python).
Protection now generally would be through the moral right of an artist. See supra, note 81
and accompanying text, the moral right of an artist has been recognized since 1990 when § 106A
was added to the Copyright Act.
262. See Lanham Act, 15 U.S.c. § 1125.
263. See Gilliam, 538 F.2d 14.
264. Id. at 24; see also Eden Toys, Inc. v. F10relee Undergarment Co., Inc., 697 F.2d 27, 37
(2d Cir. 1982) (holding that F10relee had made a false designation of origin of a character on its
night shirts that resembled the "Paddington Bear," or a false description, and that it had violated
the Lanham Act).
265. See Lipton v. Nature Co., 71 F.3d 464, 475 (2d Cir. 1995) ruling that the defendants
infringed the plaintiffs copyright in a book of animal terms by creating a line of merchandise
that utilized the terms. The merchandise bore copyright notes in the defendants' names. The
district court had concluded that the copyright notices defendants placed on their infringing
merchandise constituted false designations of origin with the meaning of § 43(a) of the Lanham
Act. However, the court of appeals reversed, deciding that a false copyright notice alone could
not constitute a false designation of original under the Lanham Act); See also Kerr v. New
Yorker Magazine, Inc., 63 F.Supp.2d 320 (S.D. N.Y. 1999).
266. See, e.g., Mfrs. Techs., Inc. v. Cams, Inc., 706 F. Supp. 984, 1004 (D. Conn. 1989); Sunset
Lamp Corp. v. Alsy Corp., 698 F. Supp. 1146, 1153 (S.D.N.Y. 1988).
267. See Bridgeman, 25 F.Supp. 2d 421.
268. Id. at 429. However, the court noted that Bridgeman did not make such a claim. The
court decided that Brigeman's images were not service marks of its client museums.
269. Id.
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Lanham Act. 270 On the other hand, if the images are exact reproductions of public domain works, albeit in a different medium, according
to the court in Bridgeman, the images are not copyrightable. In that
case, an image could be used "in a manner that would engender confusion as to the copyright holder's association with or sponsorship of a
product for which the image appeared, and thus, there might be a violation of the Lanham Act in a different context."271
The doctrine of unfair competition by misappropriation was established by the Supreme Court in Int'l News Servo V. Assoc. Press. 272
The Court ruled in Int'l News Servo that misappropriation "is the act
of converting to one's own use and profit the product of another's
labor."273 A state law misappropriation claim generally includes the
following elements: 274 (1) a person or entity generates or collects information at some cost or expense, (2) the value of the information is
highly time-sensitive, (3) the unauthorized use of the information is in
direct competition with the product or service offered by the creator
of the information, and (4) the ability of other parties to "free-ride"
on the efforts of the creator of the information would so reduce the
incentive to produce the product or service that its existence or quality
would be substantially threatened or so little profitable as to cut off
the service in effect by rendering the cost prohibitive in comparison
with the return. In Alcatel USA, Inc. V. DGI Techs., Inc.,275 the Fifth
Circuit commented that while federal copyright law "focuses on the
value of creativity, state misappropriation law is specifically designed
to protect the labor--the so-called 'sweat equity' that goes into creating a work.,,276
The difficulty in seeking protection of "sweat of the brow" work
embodied in a reproduced work under a misappropriation doctrine is
that such an action may be preempted by the Copyright Act. The
court in Alcatel USA concluded that, despite "the seemingly divergent
purposes of federal copyright law and state misappropriation law," the
270. Id.
271. Id.
272. 248 u.s. 215 (1918).
273. Id. at 240.
274. See Nat'l Basketball Ass'n, 105 F.3d 841.
275. See Alcatel USA, 166 F.3d 772.
276. Id. at 788. See supra note 37 for discussion of the "sweat doctrine."
The court in Alcatel USA, set out elements of the claim under Texas law: (I) the creation of
a product through extensive time, labor, skill and money: (2) the use of that product in competition with the creator, thereby giving the user a special competitive advantage because the user
was burdened with little or none of the expense incurred by the creator of the product; and (3)
commercial damage to the creator of the product. {d.
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rights protected under these laws are equivalent and, thus, a state misappropriation claim is preempted by the Copyright Act. 277
State law actions under unfair competition or misappropriation
claims are preempted by the U.S. Copyright Act if two elements are
present. 278 The rights asserted under state law must be rights that are
equivalent to those protected by the Copyright Act. 279 In addition, the
work involved must fall within the "subject matter" of the Copyright
Act. 280 In Kodadek v. Via Com Int'l, Inc.,281 the court dismissed an
unfair competition claim because the court decided the claim was
based solely on rights equivalent to those protected by the federal
copyright law. 282 In Nat'l Basketball Ass'n v. Motorola, Inc.,283 the
court dismissed a misappropriation claim because, according to the
court, it was preempted by the Copyright Act. 284 The court rejected a
"partial preemption doctrine."285 The court decided that § 301 of the
Copyright Act bars state law misappropriation claims with respect to
uncopyrightable as well as copyrightable elements. 286 It determined
that adoption of a partial preemption doctrine would "expand significantly the reach of state law claims and render the preemption in277. See Alcatel USA, 166 F.3d at 788; see also DSC Communications, 170 F.3d at 1376 (ruling that a trade secret misappropriation under Virginia law is not preempted by section 301 of
the Copyright Act because it "requires 'misappropriation' of information, either by a person
who used improper means or by a person who knew or had reason to know that the information
was derived through improper means or from or through a person who owed a duty not to reveal
it, or by accident or mistake.").
278. See Kodadek v. MTV Int'l, Inc., 152 F.3d 1209 (9th Cir. 1998).
279. 17 V.S.c. § 301(a); see Kodadek, 152 F.3d at 1212.
280. See 17 V.S.c. § 301(a); see T.B. Harms Co. v. Eliscu, 339 F.2d 823, 828 (2d Cir. 1964),
cert. denied, 381 V.S. 915 (1965) (No. 1006) (holding that an action arises under the Copyright
Act if, and only if, the complaint is for a remedy expressly granted by the act, or requires construction of the act, or presents a case where the distinctive policy of the act requires that federal
principles control disposition of the claim).
281. See Kodadek. 152 F.3d 1209.
282. See Alcatel USA, 166 F.3d at 772, 788-89 (holding that an action for misappropriation
under Texas common law of unfair competition was preempted because, according to the court,
misappropriation does not require any element beyond those required for copyright infringement); Wendt v. Host Int'!, Inc., 125 F.3d 806, 810 (9th Cir. 1997) (stating that a right of publicity
claim is not preempted by the federal copyright act if the claim contains elements that are different from copyright infringement, but if all a plaintiff is seeking is to prevent a party from exhibiting a copyrighted work, the plaintiff is "making a claim equivalent to an exclusive right within
the general scope of copyright."); Baltimore Orioles, Inc. v. Major League Baseball Players,
Ass'n, 805 F.2d 663, 675 (7th Cir. 1986) (ruling that a challenge to a television broadcast of live
games without consent as a right of publicity violation, was preempted).
283. See Nat'l Basketball Ass'n, 105 F.3d 841.
284. Id. at 848.
285. Id.
286. Id. at 849.
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tended by Congress unworkable. 287 It was of the opinion that public
domain material should not be protected by permitting state law to
grant exclusive rights in that materiaJ.288 Thus, according to the court,
the "subject matter of copyright" that is preempted by § 301 must include all works of a "type" covered by the Copyright Act if the works
are not protected directly by the act,z89
VII.
LICENSING OF DIGITAL IMAGES
If a cultural institution has not added the originality required to
obtain a copyright in digital images of works in its collection, it nonetheless may be able to obtain exclusive rights to its "sweat of the
brow" skills in making reproductions by licensing dissemination of the
images. A cultural organization that makes reproductions of its works
through photographic transparencies would then authorize others to
use the reproductions, or exclude access to such reproductions, by an
access contract or a license. An access contract would permit "online" and Internet services while a license would permit access to, and
downloading of, software into a licensee's system and the continuing
right to use the software after it is downloaded. 290 A license of digital
images defines the product, distinguishes between single use and network use, consumer use and commercial use, and between private use
and the right to public display.291
A common type of software license is one often referred to as a
"click-wrap" license. 292 A click-wrap license presents the user with a
message on the user's computer screen. It requires the user to manifest assent to terms of a license agreement by clicking on an icon. The
product cannot be obtained or used unless and until the icon is
clicked. 293 The few courts that have considered the validity of such
agreements have held them valid and enforceable. 294
287. Id.
288. /d.
289. Id.at 850.
290. See discussion in reporter's notes to Unif. Computer Transactions Act, National Conference of Commissioners on Uniform State Laws, 1999, p. 21.
291. See ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th CiT. 1996).
292. See Specht v. Netscape Communications Corp., 150 F. Supp. 2d 585, 593 (S.D. N.Y.
2001).
293. Id.
294. Id. See, e.g., In re RealNetworks, Inc. Privacy Litig., 2000 U.S. Dis!. Lexis 6584 (N.D.
Ill. 2000); Hotmail Corp. v. Van Money Pie, Inc., 1998 U.S. Dis!. Lexis 10729 (N.D. Cal. 1998),
cited in Specht, 150 F. Supp. 2d at 593.
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In ProCD, Inc. v. Zeidenberg,295 the court ruled that purchasers
of computer software were bound by the software's shrink-wrap licenses as a matter of contract law. 296 The court ruled that the Copyright Act did not prevent the shrinkwrap licenses from being
enforceable. 297 The court decided that shrink-wrap licenses facilitate
distributions of object code "while concealing the source code (the
point of a clause forbidding disassembly)" and "serve the same
procompetitive functions as does the law of trade secrets."298 It noted
that such licenses may provide other benefits for consumers, such as
the right to make extra copies, the right to use the software on multiple computers, and the right to incorporate the software into the
user's products. 299 The court decided that "whether a particular license is generous or restrictive," a contract is not equivalent to the
exclusive rights within the scope of copyright law and, thus, may be
enforced. 30o
As the court in ProCD ruled, rights created by contract are not
equivalent to the exclusive rights within the general scope of copyright. 30t The court in ProCD 302 referred to a copyright as a "right
against the world" and stated that "silence means a ban on copying."303 Contracts, on the other hand, do not create "exclusive
rights."304 As the court stated, they affect only parties to the contract;
strangers may do as they please. According to the court, a licensee is
restricted by a license agreement and is subject to contract law while
295. See ProCD, 86 F.3d 1447.
296. See id. at 1455; see also Hill v. Gateway, 105 F.3d 1147, 1149 (7th Cir. 1997) ; Brower v.
Gateway, 676 N.Y.S.2d 569 (N.Y.App. Div. 1998). One court refused to enforce a shrink-wrap
license agreement. The district court in Klocek v. Gateway, Inc., 104 F. Supp.2d 1332 (D. Kan
2000), stated it would not follow ProCD and Hill.
297. Id.
298. Id.
299. Id.
300. Id. at 1454 (stating that while a copyright is a "right against the world," contracts generally affect only their parties. Thus, according to the court, contracts do not create "exclusive
rights.").
301. Id. See also Nat'l Car Rental Sys., Inc. v. Computer Assocs. Int'l, Inc., 991 F.2d 426, 433
(8th Cir. 1993) (concluding that contractual restrictions on the use of computer programs constitute the extra element that makes the cause of action "qualitatively different from one in copyright." The court ruled that when a licensee uses software in a manner inconsistent with the
terms of a licensing agreement and fails to comply with provisions governing the assignment or
transfer of rights and duties established under the agreement, the cause of action is not preempted); Taquino v. Teledyne Monarch Rubber, 893 F.2d 1488, 1501 (5th Cir. 1990); Acorn
Structures, Inc. v. Swantz, 846 F.2d 923, 926 (4th Cir. 1988).
302. See ProCD, 86 F.3d at 1454.
303. Id.
304. Id.
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copyright infringement is beyond the scope of a license.3°5 Still, as the
court noted in Microsoft Corp. v. Harmony Computers & Electronics,306 a claim against an alleged infringer who is not a party to a license agreement must be a claim under the copyright law rather than
the law of contracts.307
The National Conference of Commissioners of Uniform Laws
adopted the Uniform Computer Information Transactions Act in
1999. One purpose of the new uniform act is to reduce the uncertainty as to the validity of shrinkwrap licenses. Drafters of the Act308
noted that, while the new digital environment has increased the risk of
unfair copying, licensing contracts to market such images provide the
producers of cultural information a means to enforce exclusivity, and
thus, to limit use of such information. The drafters 309 point out that
many access contracts do not depend on intellectual property rights.
The owner of a computer system has a fundamental right to exclude
others from access to its system, and thus, can condition the terms by
which it permits access. 310
The Uniform Computer Information Act defines the law relating
to computer information transactions in those states that have
adopted the Act. As provided in the Act, transactions in computer
information, which focus on information and rights to use it rather
than the tangible media containing the information, will be agreements enforced as contracts. 311 A person who acquires computer information may own a diskette that contains the information (the
tangible media) but not own the information associated with it. To
use the computer information, one must copy it (into a machine).312
Use of the information must be the focus of a computer information
305. Id.; see also Bourne v. Walt Disney Co., 68 F.3d 621, 631 (2d Cir. 1995) (noting that
copyright disputes involving the scope of an "alleged infringer's license present the court with a
question that essentially is one of contract: whether the parties' license agreement encompasses
the defendant's activities. ").
306. Microsoft Corp. v. Harmony Computers & Electronics, 846 F.Supp. 208 (E.D.N.Y.
1994).
307. Id. at 213; see also Fitzgerald Publ'g Co. v. Baylor Publ'g Co., 807 F.2d 1110, 1113 (2d
Cir. 1986) (stating that a licensee who has failed to satisfy a condition of a license agreement, or
who has materially breached the agreement, "has no right to give a sublicensee under which the
sublicensee can take cover in a copyright infringement case." Thus, according to the court, both
licensee and sublicensee can be held liable for acting without authorization and thereby infringing the licensor's copyright).
308. Unif. Computer Transactions Act, Reporter's Notes at § 105.
309. See supra note 308, Reporter's Notes at § 102.
310. Id.
311. See supra note 308, Reporter's Notes at § 103.
312. Id.
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transaction subject to the Computer Act. The Act does not apply to
the "information," which is protected by the Copyright Act if it has
elements of originality, but rather to the transactions focused on the
information, which are subject to contract law. When computer information is licensed separately, it is subject to the Act. 313
VIII.
CONCLUSION
Directors of cultural institutions must be aware of copyright issues when they open art and cultural property collections to cyberspace, not only as to the protection, or lack thereof, provided to them
by the copyright law, but also as to the legal consequences and possible liability should they reproduce artistic works in their collections
without permission. Thus, rights of artists or their heirs must be determined and proper consents obtained if a cultural institution does not
have full copyright ownership. Further, because the Internet provides
a means for others to reproduce and/or to distort artworks, cultural
institutions must consider technological means to protect their rights,
as well as those of their artists, from consumer downloading.
313. Id. at § 103(e). Parties in a state that adopts the Uniform Computer Transactions Act
may agree that the Act governs a computer information transaction in whole or in part or that
other law governs the transaction. Section 105(d) of the Act permits electronic records to suffice
for a required writing. Section 109 addresses choice of law issues.
The parties to a licensing agreement may choose the applicable law. In the absence of a
choice of law term, an access contract or a contract providing for electronic delivery of a copy
will be governed by the law of the jurisdiction in which the licensor is located when the agreement is made. A consumer contract that requires delivery of a copy on a physical medium will
be governed by the law of the jurisdiction in which the copy is or should have been delivered to
the consumer. In all other cases, the contract will be governed by the law of the jurisdiction
having the most significant relationship to the transaction. Section 109(c) provides that if the
jurisdiction whose law governs is outside the United States, the law of that jurisdiction governs
only if it provides substantially similar protections and rights to a party not located in that jurisdiction. Otherwise, the law of the jurisdiction in the United States, which has the most significant relationship to the transaction, governs. Section 110 of the Act permits parties to a
computer transactions information contract to choose an exclusive judicial forum (unless the
choice is unreasonable and unjust).
Section 501(b) of the Act provides that transfer of a copy does not transfer ownership of
informational rights. Reporter's Notes pursuant to § 808, relating to a licensor's damages for
breach of a licensing agreement, recognize that a licensor may have remedies under other law. It
notes the primary source as intellectual property law and points out that breach will introduce
the possibility of an infringement claim if (a) the breach results in cancellation of the license and
the licensee's continuing conduct is inconsistent with the licensor's property rights, or (b) the
breach consists of acting outside the scope of the license and in violation of the intellectual
property right. Reporter's Notes comment that intellectual property remedies do not displace
contract remedies because they deal with different issues and recognize that the two remedies
may raise dual recovery issues in some cases.
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State laws that grant famous persons, such as well-known artists,
a right of publicity in the commercial exploitation of their works must
be considered. The common law right of privacy and the commercial
appropriation right of privacy, the right of publicity, are caveats to the
institution should it disseminate digital images that identify persons in
an objectionable manner or that exploit the commercial likeness of
names or personalities.
There is no effective international copyright protection. Directors of cultural institutions must rely on other means to protect their
works from unauthorized copying. Until courts give proper recognition to provisions of international conventions providing international
copyright protection, encryption technology to block access to digital
images and "click-wrap" licenses314 may be the only mechanisms to
protect works placed on the internet.
314. See Specht, 150 F.Supp. 2d 585; In re RealNetwork, 2000 U.S. Dist. Lexis 6584 (N.D. Ill.
May 11, 2000); Hotmail Corp., 1998 U.S. Dist. Lexis 10729 (N.D. III. May 11,2000).
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