SECTION
Subject Matter
TOPIC
Fixation
(embodiment)
CASE
Williams Electronic v. Arctic
International
CT
3d Cir.
YR
FACTS
HOLDING
1982
Williams assert CR over videgame
(Defense Command/DEFENDERS) AV
displays; ∆ says AV displays change with
user input so not "fixed"
AV can be permanently embodied in computer chip so fixation satisfied; sufficiently
permanent and stable enough to be reproduced/communicated for more than a
transitory period
2008
Cable buffer in a DVR system; Cablevision
sends viewing stream and DVR stream;
Cartoon network argues that the buffer
and playback storage are unauthorized
copying, and the playback itself is public
performance
MAI Systems = only on embodiment; fixed if "sufficiently permanent" (like if user
shuts down the computer and the data is still there)
- 1.2 seconds = too transitory! ≠ fixed
- cable buffer can be embodiment, but too transitory for duration
NB
Fixation
Subject Matter
(duration)
Cartoon Network v. CSC
Holdings
2d Cir.
Subject Matter Originality
Burrow-Giles Lithograph v.
Sarony
SCOTUS 1884
Oscar Wilde photograph
Photo = art if "product of… intellectual invention"
- author = originator, maker
- π made picture from "original mental conception, to which he gave visible form by
selecting... aranging"
Subject Matter Originality
Bleistein v. Donaldson
Lithographing
SCOTUS 1903
Chromolithographs (circus
advertisements); ∆ asserts that posters
and advertisements are not original
Advertisements can be "original" if not purely utilitarian
Bleistein "Non-Discrimination Principle"- "It would be a dangerous
undertaking for persons trained only in the law to constitute themselves
the final judges of worth of pictoral illustrations outside of the narrowest
and most obvious limits"
Subject Matter Originality
Alfred Bell v. Catalda Fine Arts 2d Cir.
Mezzotint of original painting in public
domain; Catalda makes prints of π's
mezzotints
Need more than trivial variation
- "sweat of the brow" doesn't warrant protection
- public domain copy is CR'able if distinguishable variation
- exact copy in different medium doesn't warrant CR
Bleistein - "free to copy the original but not copy the copy" (exact copies
are not protected)
Subject Matter Originality
Feist Publications v. Rural
Telephone
Feist uses Rural phonebook listings w/o
permission
Originality requires a "modicum of creativity" (will not grant CR where the "creative
spark is utterly lacking or so trivial as to be nonexistent"
- compilations of facts are CR'able if selected, coordinated, arranged, where work as a
whole becomes an original work of Au'ship
Subject Matter Originality
Mannion v. Coors Brewing Co. SDNY
Subject Matter Originality
Meshwerks v. Toyota Motor
Sales
10th Cir. 2008
1951
SCOTUS 1991
2006
Photographs can be original if:
(1) rendition - angle of shot, light, exposure, etc.
(2) timing - "right place right time"
(3) creation - creation of subject, control over subject being shot
= "independent creative decisionmaking"
NOT original bc creator intended to create an exact copy .'. No independent
Meshwerks wireframes Toyota cars to
expression
painstaking detail; Toyota then uses those
Look at the creator's intent
- "sweat of the brow" is not enough (even if "intensive, skillful, and even creative labor
wireframes for advertisements
is invested" does not mean it's immediately CR'able)
Selden's forms are not CR'able bc Selden's intent was to explain an IDEA (forms =
diagrams that are incident to the idea)
Selden made accounting ledger system;
Merger Doctrine - limited ways to express an idea, so idea and
- "where the truths of a science or methods of an art are the common property of the
Baker then used the ledger system
expression merge into one; .'. Not CR'able
whole world, an Au has the right to express the one, or explain/use the other, in his
own way"
Coors commissioned ad where modeal
was dressed and posed exactly like
Mannion's original photo
Subject Matter
Idea/Expression
Dichotomy
Baker v. Selden
SCOTUS 1879
Subject Matter
Idea/Expression
Dichotomy
A.A. Hoehling v. Universal
Studios
2d Cir.
1980
Hindenberg book by Hoehling; Universal
When Au presents interpretation of historical accounts as FACT, then not CR'able
made a movie based on Hoehling's factual
- wants to prevent chilling effect on historians and historical research
interpretation of what happened
Subject Matter
Idea/Expression
Dichotomy
ATC Distribution v. Whatever
It Takes Transmission
6th Cir.
2005
Car part taxonomy (catalog and
numbering system)
Numbers are not like narratives, but more like an idea (Merger - where limited ways
Taxonomies can be creative endeavors though!
to express the underlying idea, the expression is not CR'able)
Subject Matter
PGS Separability
("Useful Articles")
Mazer v. Stein
SCOTUS 1954
Mazer copied art to make statuette lamp
base
1909 Act ended distinction between "purely aesthetic" and "useful," so Mazer is liable
- CR can cover industrial reproduction of protected articles; "useful articles" can be
CR'd
- physical separability in pictoral, graphic, sculptural (PGS) works
7th Cir.
Denicola TEST - "CR turns on the relationship between work and process of
industrial design" - looks @ the INTENT of the creator + PROCESS of creation
Hungry runway model haircut mannequin (1) is it physically separable?
(2) if not, is it conceptually separable?
- test individual parts first, then the unit as a whole
Subject Matter
PGS Separability
("Useful Articles")
PGS Separability
Subject Matter
("Useful Articles")
Subject Matter Derivative Works
Pivot Point International v.
Charlene Products
Star Athletica, LLC v. Varsity
Brands, Inc.
L. Batlin & Son v. Snyder
2004
SCOTUS 2017
2d Cir.
1976
Cheerleader uniforms designed by Varsity
Brands copied by Star Athletica; does CR
protect the particular combo of chevrons,
zigzags and stripes that characterizes
Varsity’s uniforms? Star Athletica argues
“industrial” design largely influenced by
utilitarian considerations does not
warrant CR protection
Uncle Sam bank mass production (Uncle
Sam is in the public domain)
Star Athletica TEST - a feature incorporated into the design of a useful article is
CR'able only if:
(1) can be perceived as a 2D or 3D work of art separate from the useful article, and
(2) would qualify as a protectable pictorial, graphic or sculptural work (either on its
own or fixed in some other tangible medium of expression) if it were imagined
separately from the useful article into which it is incorporated
If designs “hav[e] . . . graphic . . . qualities . . . [that could be] applied . . . on
a painter’s canvas,” then the test for CR'ability is met!
Standard for derivative works is higher
- reproduction must contain "original contribution not present in underlying work of
art" (for art in the public domain?)
- "more than a mere copy" = substantial variation
- BAD DECISION - dissent says to award thin CR bc otherwise this is passing
judgment (Bleistein ND principle) on Batlin's variations
Merger Doctrine - sometimes the copy gets really thing CR protection
(e.g. 9th Cir. does this)
Scenes a Faire Doctrine - elements that are indispensable or standard
in treatment of a topic (incidents, characters, settings) are not CR'able
Other cases/tests mentioned:
- Kieselstein v. Pearl (2d Cir., 1980) - belt buckles - test for whether
artistic features are "primary" and utilitarian aspects "subsidiary"
- Carol Barnhart (2d Cir., 1985) - torso forms - test for whether it is
conceivable that the expression is separate from utilitarian fxns
- Brandir (2d Cir., 1987) - ribbon racks - test for whether the art is
influenced by the function (applies Denicola test)
"(1) can identify the decorations as features having PGS qualities
(2) if the arrangement of colors, stripes, and chevrons … were separated
from the uniform and applied in another medium (for example, on a
painter’s canvas) they would qualify as 2D works of art. And imaginatively
removing the surface decorations from the uniform and applying them in
another medium would not replicate the uniform itself."
An exact copy in a different medium ≠ CR'able
SECTION
TOPIC
CASE
CT
YR
FACTS
HOLDING
2009
Thomas the Tank Engine photos
Derivative works are NOT subject to more exacting originality requirement
- CR is thin and applies to any original parts
Subject Matter Derivative Works
Schrock v. Learning Curve
International
Subject Matter Compilations (data)
CCC Info Services v. MacLean
2d Cir.
Hunter Reports
1994
Prediction of future car prices = "professional judgment" that is sufficiently original
MacLean Red Book copied by Blue Book;
for thin CR (Red Book sufficiently original)
prediction of future car prices
- Hard facts v. opinion-based
Subject Matter Compilations (data)
Matthew Bender v. West
Publishing
1998
Bender put judicial opinions (not CR'able
West's page numbers merely coincide with arrangement and is not CR'able
material; public domain) on CD-ROM but
- What is CR'able? Summary of cases, selection of cases, headnotes
included the West pagination
7th Cir.
2d Cir.
NB
majority view - same originality standard for derivative works BUT
Batlin implies that derivative works off of work in the public domain
requires substantial variation (higher standard)
Consider: databases only receive thin CR protection (EU allows for
"sweat of the brow")
Subject Matter
Compilations (non- Roth Greeting Cards v. United
9th Cir.
data)
Card
1970
United copies Roth's cards (similar
looking characters and text)
Total Concept / Overall Feel TEST - even if individual elements are not CR'able,
analyze the whole unit (for pictoral works) to assess CR'ability
- card as a whole was CR'able
- protect total concept, look, and feel of the cards
Subject Matter
Compilations (nonSatava v. Lowry
data)
9th Cir.
2003
Satava makes glass jellyfish sculptures
and Lowry copies
Combination of unprotectable elements is elegible for CR ONLY IF numerous enough
elements OR arrangement is original enough
CRO circular - compilations must have ≥ 4 separate elements
- Scenes a Faire - elements that Lowry took are common to forming glass jellies
Authorship
(Ownership)
Sole
SDNY
1999
Cinematographer directs video of RMS
Titanic; sues RMS Titanic for licensing
footage w/o permission
Author = originator, maker (Burrow-Giles)
- Au provided original intellectual conceptions and exercised "high degree of control"
1994
Trinity Theatre claims joint Au'ship of
Erickson work bc actors contributed to
development of the play
1999
Aalmuhammed contributes to Lee's
Malcom X (wrote part of script, translated Creative contributions ≠ joint Au - needs broader and more original control
Arabic, edited) and wants writing credit
Lindsay v. RMS Titanic
Erickson wins
Authorship
(Ownership)
Joint
Erickson v. Trinity Theatre
7th Cir.
De Minimis TEST - only combined product must be CR'able; joint Au's contribution
must be "more than a word or a line"
- Ct says NO! This discourages collaboration!
- each Au's' contributionmust be CR'able
- more predictable
Authorship
(Ownership)
Joint
Aalmuhammed v. Lee
9th Cir.
Authorship
(Ownership)
Works Made For
Hire ("employee")
Community for Creative Nonviolence (CCNV) v. Reid
SCOTUS 1989
"Third World America" sculpture by Reid
for CCNV ownership dispute
Authorship
(Ownership)
Works Made For
Hire ("employee")
JustMed v. Byce
9th Cir.
Byce is family by marriage with Just; Byce 9th Cir. relaxed rules on e'ee v. independent K'or debate - more likely to find as e'ee
work/code for JustMed to create digital
- "startup nature" of business can affect some of the factors listed in CCNV
audio larynx software
- Byce = e'ee bc of tasks, salary, nature of JustMed biz, etc.
Authorship
(Ownership)
Works Made For
Hire ("scope of
employment")
Rouse v. Walter
S.D.Iowa 2007
Rouse = professor at Iowa State
University research project on cattle
scanning (LAIPS, live animal
intramuscular fat prediction software);
creates USOFT too
Rouse loses
- If an agreement alters the "work made for hire" default presumption that e'ee work
belongs to e'or, that agreement must be EXPRESS
- Consider: (1) kind of work e'ee handled to perform? (2) time & space limits? (3)
purpose or motivation to serve e/or?
Statutory
Rights of
Owner
Reproduction (de
minimis copy)
Gottlieb Development v.
Paramount Pictures
SDNY
2008
Silver Slugger pinball machine
appearances in Mel Gibson movie
De minimisTEST - whether the lay observer would not be able to discern any
distinctive elements of the design
- Copying = copy of protected expression + amount copied > de minimis
- Decided from perspective of the average/ordinary lay observer to avoid judge’s
arbitrary judgments
Statutory
Rights of
Owner
Reproduction
(nonexact copy;
copying-in-fact)
Three Boys Music Corp. v.
Michael Bolton
9th Cir.
2000
Bolton claims that he subconsciously
copied the Isley Brothers’ “Love is a
Wonderful Thing”
Statutory
Rights of
Owner
Reproduction
(nonexact copy;
copying-in-fact)
Selle v. Gibb
7th Cir.
1984
Expert witness testifies to the “striking
similarity” of Selle’s “Let It End” and the
Bee Gee’s “How Deep Is Your Love”
Statutory
Rights of
Owner
Reproduction
(nonexact copy;
copying-in-fact)
Ty, Inc. v. GMA Accessories
7th Cir.
1997
Statutory
Rights of
Owner
Reproduction
(Substantial
Similarity)
Nichols v. Universal Pictures
2d Cir.
1930
Statutory
Rights of
Owner
Reproduction
(Substantial
Similarity)
Arnstein v. Porter
2d Cir.
1946
2010
Joint Authorship TEST (1) CR'able work
(2) 2+ Au's
(3) "intent to merge" - intent for contributions to be merged into unitary
whole (look at decisionmaking authority, billing, quantity of contribution,
etc.)
"employee" (§101) has agency common law meaning
Re: tax treatment, e'ees = W2; independent K'ors = 1099
- Nonexhaustive factors: skill required, source of instrument/tools, location of
- Consider: hiring party's right to control, actual control over creation,
work, duration of employment, hiring party's right/discretion to assign add'l projects,
salary, etc.
method of payment, role in hiring, regular business, e'ee benefits, tax treatment
"Teacher" exception - teachers as owners of CR in their writings and
course materials, despite being a full-time e'ee of an institution
- 1976 Act didn't preserve, so potentially up in the air
Consider:
- Extent to which the CR work is copied in the allegedly infringing work
- How readily observable the CR work is
- Length of time the CR work is observable
- Focus, lighting, camera angles, and prominence
"Access" proof?
Absent direct evidence of copying, proof of infringement involves fact-based
- direct evidence
showings:
- circumstantial evidence - (1) a particular chain of events established
(1) ∆ had “access” to π's work, and
between work and ∆’s access to work, (2) work has been widely
(2) two works are “substantially similar”
disseminated (subconscious copying), (3) striking similarity (implied
access)
Consider:
Strikingly Similar TEST - similarities must appear in a sufficiently unique or complex - Unexpected deviations
context to make it unlikely that both pieces were copied from a prior common source - Repeated errors
OR that ∆ was able to compose the accused work as a matter of independent creation. - Sufficiently unique/complex context
- Evidence of relative uniqueness/complexity
“Access (and copying) may be inferred when two works are so similar to each other
J. POSNER re: Preston the pig v. Squealer and not to anything in the public domain that it is likely that the creator of the second
the pig
work copied the first, but the inference can be rebutted by disproving access or
showing independent creation..."
“The two plays may correspond in plot closely enough for infringement,” but at too
general a level to violate the law bc “the theme was too generalized an abstraction”
- Non-literal infringement/copying - non-literal similarity may occur, even in the
“Abie’s Irish Rose” v. “The Cohens and the
absence of copying-in-fact of CR'd elements, when one work appropriates "the
Kellys” play
fundamental structure or pattern" of another
- Scenes a Faire - stock characters, stereotypes, or general feelings of love ≠
CR'able
“The question, therefore, is whether ∆ took from π's works so much of what is
Arnstein alleged that Porter copied his
pleasing to the ears of lay listeners, who comprise the audience for whom such
songs, and that Porter had hired stooges
popular music is composed, that ∆ wrongfully appropriated something which belongs
to ransack his apartment for song ideas
to π”
Access inference (implied access when strikingly similar)
Theories of infringement:
- Detail-oriented dissection (Satava) - comparison of elements
- Impression-oriented (Roth) - total concept/feel
Valid CR infringement claim = improper appropriation + > de minimis
copying-in-fact
SECTION
TOPIC
CASE
CT
YR
FACTS
HOLDING
NB
1987
New Yorker cover v. “Moscow on the
Hudson
“evidence is so overwhelming that a court would be justified in ordering a directed
verdict at trial”
- Bleistein ND Principle implicated here
- ∆ admitted access and copying; Ct analyzes pictures to find substantial similarity
Total Concept / Overall Feel TEST - even if individual elements are not
CR'able, analyze the whole unit (for pictoral works) to assess CR'ability
- BAD DECISION - Ct erroneously holds that a lesser degree of similarity
is required for infringement when ∆ has admitted access
“ordinary observer” v. “discerning observer” standards for substantial similarity
2001
“School Days” quilts v. Indian ABC quilts
Lay observer - generally, substantial similarity is found where the Lay
observer, unless directed to detect the disparities, would be disposed to
overlook them
- discerning observer test only appropriate when only part of the design is
CR'able (e.g. alphabet constituted part of the design)
Statutory
Rights of
Owner
Reproduction
(Substantial
Similarity)
Steinberg v. Columbia Pictures SDNY
Statutory
Rights of
Owner
Reproduction
(Substantial
Similarity)
Boisson v. Banian
Statutory
Rights of
Owner
Reproduction
(Substantial
Similarity)
Mannion v. Coors Brewing Co. SDNY
2006
Statutory
Rights of
Owner
Reproduction
(Substantial
Similarity)
Cavalier v. Random House
9th Cir.
2002
Nicky Moonbeam v. Good Night Elmo
book case
Statutory
Rights of
Owner
Reproduction
(Substantial
Similarity)
Swirsky v. Carey
9th Cir.
2004
Swirsky wrote a song that was a minor
hit; Mariah Carey wrote a similarIntrinsic TEST = jury = FactQ; not appropriate for SJ
sounding song that also became a hit;
Swirsky sued for copyright infringement.
Statutory
Rights of
Owner
Reproduction
(abstractionfiltrationcomparison)
Computer Associates v. Altai
1992
Altai wrote a derivative program called
OSCAR from Computer Associates’
SCHEDULER program; the program did
the same thing, but only used about 30%
of the code; Computer Associates argues
that OSCAR is “substantially similar” to
SCHEDULER .'. Infringes
Statutory
Rights of
Owner
Derivative Works
Warner Bros. Entertainment v.
SDNY
RDR Books
2008
Harry Potter Lexicon; ruled to be
infringement, but not derivative
Unlawful Appropriation TEST:
Lexicon = Guide and does not “recast, transform, or adapt” HP plot (only presents an
- Quantitatively - how much copying of direct quotations, close
assortment of plot elements); BUT new and different PURPOSE = derivative work
paraphrasing, and other protectable expression
- quantitative test - “a troubling amount of direct quotation or close paraphrasing”
- Qualitatively - reproducing original expression in fragments or in a
- qualitative test - “draws its content from creative, original expression”
different order, does not preclude a finding of substantial similarity
Statutory
Rights of
Owner
Derivative Works
Mirage Editions v.
Albuquerque A.R.T. Company
9th Cir.
1988
A.R.T. cut art prints out of book and
pasted them on tiles
A.R.T. didn't reproduce the work
- A.R.T. has “certainly recast or transformed the individual images by incorporating
them into its tile preparations”
Statutory
Rights of
Owner
Derivative Works
Lee v. A.R.T. Company
7th Cir.
1997
A.R.T. took individual art pieces (as
More like framing a picture; binding prints to tile does not “recast” or “transform” the
opposed to cutting art prints from a book)
work—holding as such would illegalize most art collectors, framers, preparers
and placed onto tiles
Statutory
Rights of
Owner
Derivative Works
Microstar v. FormGen
9th Cir.
1998
"Nuke It" was like a sequel, and “a CR owner holds the right to create sequels”
“Nuke It” expansion pack of user-created
- "Nuke It" exists in a “concrete or permanent form” and “substantially incorporates
levels
protected material” (MAP files contained AV info called up by the original game)
derivative work must exist in a sufficiently stable or permanent form and
must substantially incorporate a protected material from the preexisting
work in a sufficiently stable and permanent form
Statutory
Rights of
Owner
Distribution
Capitol Records v. Thomas
D. Minn. 2008
"Making available" ≠ "distribution"
Soccer mom made 24 music files available - distribution requires dissemination (transfer of ownership) and ≠ publication
over Kazaa
- Charming Betsy Doctrine - adopt the interpretation that allows the US to comply
with treaty obligations
WIPO Article 8 - authors enjoy exclusive right of authorizing any
communication to the public of their works, including the making
available in a way that the public may access these works at a place/time
individually chosen by them
Statutory
Rights of
Owner
Distribution (First
Sale Doctrine)
Bobbs-Merrill v. Straus
SCOTUS 1908
Canonical "First Sale Doctrine" case;
publisher had included instructions to
booksellers not to sell the book for less
than a dollar
§ 109(a) First Sale Doctrine - "[T]he owner of a particular copy or
phonorecord lawfully made under this title, or any person authorized by
such owner, is entitled, without the authority of the copyright owner, to
sell or otherwise dispose of the possession of that copy or phonorecord."
Statutory
Rights of
Owner
Distribution (First
Sale Doctrine)
Capitol Records v. ReDigi
SDNY
ReDigi operates a website offering users First sale doctrine applies ONLY to the particular copy that has been sold by the CR
First Sale Doctrine still protects a lawful owner’s sale of her particular
the ability to resell (and buy) digital music owner
copy (i.e. copy may be sold on the hard-drive, ipod, or other memory
files, including those songs where Capitol - ReDigi service infringes reproduction right by making another copy on cloud server
device onto which the file was originally downloaded.)
Records holds CRs
- also violates the right of distribution with the electronic file transfer
Statutory
Rights of
Owner
Distribution
(Importation &
Exhaustion)
Kirtsaeng v. Wiley
SCOTUS 2013
First Sale Doctrine applies to goods manufactured outside of US and CR is not
limited by geography
Kirtaeng import Wiley books and resell at
- First Sale Doctrine applies to all copies legally made anywhere (not just in US)
lower price
- wherever a copy of a book is first made and sold, it can be resold in the US w/o
permission from publisher
Statutory
Rights of
Owner
Cartoon Network v. CSC
Public Performance
Holdings
2d Cir.
Cable buffer in a DVR system; Cablevision
sends viewing stream and DVR stream;
Cartoon network argues that the buffer
and playback storage are unauthorized
copying, and the playback itself is public
performance
2d Cir.
2d Cir.
2013
2008
- Discerning observer TEST - filter out the public domain elements and compare
what remains; look at the overall look and feel to look for substantial similarity and
then remove the non-CR'able elements
Coors commissioned ad where model was
Ambivalent about the “dissection” approach
dressed and posed exactly like Mannion's
- protectable elements of the Mannion photograph should NOT be viewed in isolation
original photo
No infringement (random similarities scattered throughout books); where a π satisfies
the Extrinsic TEST, Ct may not grant SJ against π by finding no substantial similarity
as a matter of law (LawQ) under the Intrinsic TEST
- Subjective/Intrinsic TEST - substantial similarity of IDEAS - would ordinary,
reasonable audience would find the works substantially similar in the total
concept/feel?
- Objective/Extrinsic TEST - substantial similarity of EXPRESSION - requires
dissection by expert (plot, theme, mood, setting, pace, characters, sequence of
events)
- Extrinsic TEST allows for prejury dissection and expert testimony
Objective factors to consider:
chords, progression, tempo, key, rhythm, genre, etc.
"Substantial Similarity" abstraction-filitration-comparison TEST for computers:
- (1) Abstraction: “court should dissect the allegedly copied program’s structure
and isolate each level of abstraction contained within it . . . this process begins with
the code and ends with an articulation of the program’s ultimate function”
- (2) Filitration: successively filter out protectable expression from non-protectable
material
- (3) Comparison: compare what is left as the “core of protectable expression”
CR statutes do not create the right to impose a limitation at which the book shall be
sold at retail by future purchasers (no K'ual privity)
To determine whether a transmission is made to the public, consider only the
potential audience for that particular copy of the CR'd work
- playback transmissions are made “to [given subscribers] using a copy made by that
subscriber . . . not ‘to the public’”
For Step (2): filter out...
- Merger,
- Scenes a Faire (mechanical specs of host computer, compatibility
requirements, design standards, industry demands, widely accepted
programming practices),
- Public Domain elements
National Exhaustion - sale within a particular national market exhausts
first sale rights within that particular national market
- International Exhaustion - sale anywhere is exhaustion everywhere
SECTION
TOPIC
CASE
CT
YR
FACTS
HOLDING
NB
(re: DIRECT INFRINGEMENT claim)
Subscribers = PUBLIC
- “Public” means non-owners or possessors of underlying work
- “Public” does not need to be situated together spatially or temporally
"Transmit" = to communicate by any devise or process whereby images
or sounds are received beyond the place from which they are sent
- "Perform" = showing scenes in any sequence and making any part of
them audible
Statutory
Rights of
Owner
Public Performance ABC v. Aereo
SCOTUS 2014
Aereo offers an online live streaming
service of broadcast TV programs
(subscribers can view live and timeshifted streams of over-the-air television
on Internet-connected device)
Statutory
Rights of
Owner
Public Performance Perfect 10 v. Amazon
9th Cir.
2009
Google indexed thumbnails of Perfect 10’s Google has not “fixed” the full-size images anywhere; HTML code calls the images up
models and linked to full-size displays
from locations on the Internet
Statutory
Rights of
Owner
Musical Works,
Sound Recordings
Newtown v. Diamond
9th Cir.
2004
Held de minimis use - “the average audience would not recognize the appropriation”
Sampling; Beastie Boys used a three-note
- sampling involves “fragmented literal similiarity,” and “the dispositive question is
sample from a jazz song
whether the copying goes to trivial or substantial elements”
Statutory
Rights of
Owner
Musical Works,
Sound Recordings
Bridgeport Music v. Dimension
6th Cir.
Films
2005
Sampling; NWA used a George Clinton
sample and admits that NWA used the
sample
Statutory
Rights of
Owner
Moral Rights
Gilliam v. ABC
2d Cir.
1976
Gilliam may sue for derivative work rights from script (he holds uncontested rights)
- allegation of presenting a distorted version of the work will fall under 1125(a)
Monty Python sues over edited version of
(Lanham unfair competition)
show; CR transferred by K
- "right of integrity" claim = must show injury to reputation, balancing... (1) Au’s
view of the harm (subjective) & (2) public view (objective)
Statutory
Rights of
Owner
Moral Rights
(Lanham Act)
Dastar Corp v. Twentieth
Century Fox
SCOTUS 2003
Dastar took an old Twentieth Century
Film series from the public domain and
repackaged it w/o attribution; TWF
argues that this is “false designation of
origin” under Lanham Act
Statutory
Rights of
Owner
Moral Rights
(VARA)
MassMoCA v. Buchel
1st Cir.
2010
"Training Ground for Democracy" Buchel
VARA codifies the rights of attribution and integrity to visual arts and applies to
(famous artist) football-field installation at
unfinished, fixed works
MassMoCA
Statutory
Rights of
Owner
Moral Rights
(VARA)
Martin v. City of Indianapolis
7th Cir.
1999
Martin (local artist, not famous) sues
Indianapolis under VARA for destroying
his sculpture
Infringement
Direct
RTC v. Netcom On-Line
Communications Services
N.D. Cal. 1995
Netcom is not liable, bcsome element of volition or causation is required (or else
Church of Scientology v. alt religion
everyone who loads the posting board is liable for copying)
Scientology BBS; ARS board posted
- “storage on ∆’s system of infringing copies and retransmission to other servers is
excerpts from the work of Hubbard;
not a direct infringement (by BBS operator) of reproduction right when copies are
Church of Scientology suing Netcom (ISP)
uploaded by an infringing user.”
Infringement
Direct
Cartoon Network v. CSC
Holdings
2d Cir.
2008
Cable buffer in a DVR system; Cablevision
sends viewing stream and DVR stream;
Cartoon network argues that the buffer
and playback storage are unauthorized
copying, and the playback itself is public
performance
1996
Cherry Auction is both vicariously and contributorily liable (Evidence of at-will ability Vicarious:
to terminate a tenant supports a finding of right and ability to supervise)
- Legal Right + Practical Ability (to Control)
- Direct financial benefit
Fonovisa (Latin music recordings) v. swap - VICARIOUS - “even in the absence of an employer-employee relationship one may - No knowledge of specific instances requirement
meet (vendor booth fair)
be vicariously liable if he has the right and ability to supervise the infringing activity
and also has a direct financial interest in such activities"
Contributory:
- CONTRIBUTORY - “one who, with knowledge of the infringing activity, induces,
- Knowledge
causes or materially contributes to the infringing conduct of another”
- Induces or materially contributes to
Infringement
Vicarious Liability,
Contributory
Fonovisa v. Cherry Auction
Infringement
Infringement
Vicarious Liability,
Contributory
Perfect 10 v. Amazon
Infringement
Infringement
Vicarious Liability,
Contributory
Perfect 10 v. Visa International 9th Cir.
Infringement
9th Cir.
Where only the sound recording is licensed, the issue is whether the use
of the underlying composition is substantial enough to sustain a claim of
infringement
- "substantiality" is measured by considering the qualitative and
quantitative significance of the copied portion in relation to copier's work
as a whole
"Get a license or do not sample"
- Performers may duplicate the work (record the work themselves) w/o actually
copying
- Market will control license prices
- Sampling is never accidental
moral rights do not exist in U.S. CR law. but contents that “the economic
incentive for artistic and intellectual creation that serves as the
foundation for American copyright law cannot be reconciled with the
inability of artists to obtain relief for mutilation or
misrepresentation . . . .”
“origin” = “the producer of the tangible product sold in the marketplace”
- right to copy and to copy w/o attribution passes to the public upon expiration of CR
- Lanham Act does not grant a moral right of attribution for public domain works
Martin did not prove "willful" destruction of his sculpture
"Recognized stature" TEST:
- Au of a work of visual art shall have the right to prevent any destruction of a work of
- Visual arts viewed as meritorious
recognized stature, and any intentional or grossly negligent destruction of that work
- Recognized by art experts, other members of the art community
is a violation of that right
Infringement is STRICT LIABILITY
- Policy - Imposing liability here would not serve a deterrent effect, and
would hinder the expansion/uses of the Internet
An intermediary (technology developer/ISP) is not directly liable for infringement
where it is not responsible for the volitional act that causes the infringing conduct
- "transmission to public" - must discern who is capable of receiving the performance
being transmitted
- Here, only specific customer who made the specific copy .'. ≠ "public performance"
No affirmative duty for ISPs to monitor sites (3P websites posting infringing
thumbnails and images)
9th Cir.
2007
ISPs w/ knowledge of specific instances have an obligation to take
affirmative steps to remove content
Google indexed thumbnails of Perfect 10’s
- CONTRIBUTORY - Ct remands for factual inquiry into whether Google had
models and linked to full-size displays
CONTRIBUTORY - ISP’s “knowing failure to prevent infringing actions”
“reasonable and feasible” means for limiting access to infringement
can create liability; computer system operators with actual knowledge
- VICARIOUS - Google does not contract with image posters, and filtering technology
may be liable
is not available; advances in filtering tech could create liability!
2007
CONTRIBUTORY liability requires “direct connection” to infringement
- Here, cc companies did not have this connection; did not help locate and are not
Visa continues to process credit card
used to distribute the images
payments to websites that infringe Perfect
10's IP after Perfect 10 notified them
VICARIOUS liability requires “right and ability to control”
about those infringing websites
- “the mere ability to withdraw a financial ‘carrot’ does not create the ‘stick’ of ‘right
and ability to control’”
J. KOZINSKI (Dissent) - cc companies “knowingly provide a financial
bridge between buyers and sellers of pirated works”
SECTION
TOPIC
CASE
CT
YR
FACTS
HOLDING
YouTube not liable
Viacom sued YouTube alleging that
YouTube engaged in infringement by
allowing users to upload and view Viacom
videos
- YouTube knows there’s infringement but this general knowledge isn’t enough to
make them responsible for their users’ infringement
DMCA § 512(c)(1)(A)(ii) (“red flag test”) - no duty to monitor BUT, if
- YouTube must have a specific awareness of specific instances of infringement and no ISP becomes aware of red flag, then ISP lose safe harbor if takes no
right to control the infringing activity
action
- Control satisfied by ability to control the conduct (not just block access) = high
- subjective awareness - whether service provider was aware of red flag
levels of control, purposeful conduct, or direct involvement with infringing activity
- objective awareness - whether infringing activity would be apparent to
a reasonable person
9th Cir. affirmed - fair use arises procedurally as an affirmative defense
AND CR holders have a "duty to consider — in good faith and prior to
CR owners must consider fair use before issuing DMCA takedown notices
sending a takedown notification—whether allegedly infringing material
constitutes fair use"
Infringement
OSP Liability
(DMCA)
Viacom International v.
Youtube
2d Cir.
Infringement
OSP Liability
(DMCA)
Lenz v. Universal Music
N.D. Cal. 2008
"Let's Go Crazy" Prince song in the back
of Youtube video of young kids gettin' it
Infringement
Device Mfr Liability
Sony v.Universal City
("Inducing")
SCOTUS 1984
Sony Betamax case; device mfr
Infringement
Device Mfr Liability
MGM v. Grokster
("Inducing")
SCOTUS 2005
Liability fordecentralized P2P file-sharing
Grokster mere conduit of illegal activity (not facilitator like Napster) and not directly
service (e.g. Kazaa, Morpheus) premised
liable for infringement (no actual knowledge, did not partake, did not monitor)
on objective promotion or inducement of
infringement
Infringement
OSP Liability
("Inducing")
Columbia Pictures Industries
v. Fung
9th Cir.
Infringed! Added factors to "inducing"
7 film studios sued Gary Fung, the owner
- DMCA safe harbor does not apply, bc Fung had "red flag" knowledge
of isoHunt (bitTorrent), for contributory
- VICARIOUS - financial benefit (revenue stream dependent on broad availability of
infringement of CR'd works
infringing materials) + ability to control (went beyond just removing access)
Fair Use
Cultural
Interchange
Harper & Row Publishers v.
Nation Enterprises
Fair Use
Cultural
Interchange
Campbell v. Acuff-Rose Music
2012
2013
VCRs have “commercially significant noninfringing uses” and .'. not liable for
contributory infringement
SCOTUS 1985
Nation leaked some of President Ford’s
forthcoming biography
Harper wins;
(1) purpose/character of use - Nation wanted to make money
(2) nature of CR'd work - CR narrower wrt unpub'd work
(3) amount/substantiality used - exact quotation of qualitatively important
passages
(4) effect on market - Ford lost serialization deal with Time magazine
SCOTUS 1994
"Oh, Pretty Woman" song (rap); Roy
Orbison v. 2 Live Crew
(1) transformative use - rest of the lyrics are satirical; different meaning/message
(2) published
(3) parodies must mimic original
(4) successful parodies may naturally damage the commercial value of the original
work they lampoon, but not likely a market original owner would enter
(1) SAT is not “transformative” and therefore not a parody (if anything, the SAT is
more of an homage)
(2) work was fictional, pub'd
(3) infringement was substantial (Qualitative & Quantitative)
(4) market effect was clear - is a market Seinfeld might want to enter
Fair Use
Cultural
Interchange
Castle Rock Entertainment v.
Carol Publishing
2d Cir.
1998
Seinfeld Aptitude Test (S.A.T.)
Fair Use
Cultural
Interchange
Bill Graham Archives v.
Dorling Kindersley
2d Cir.
2006
work was transformative and fair use
(1) images were shrunk and mixed in w/ other images, constituted an inconsequential
"Illustrated Trip" book; collage of Grateful
part of the work
Dead images used some Bill Graham
(2) use was transformative; historical rather than creative use
photos
(3) use of entire photographs was necessary for any use at all
(4) negligible
Fair Use
Cultural
Interchange
Cariou v. Prince
2d Cir.
2013
Prince (appropriation artist) takes "Yes
Rasta" pics and uses them to make art;
exhibits and then sells
1992
Accolade reverse-engineered and
“disassembled” Sega games in order to
make its own compatible cartridges
Looks at "transformativeness" of Prince's art ("reasonably be perceived")
- most of Prince's works were "transformative" to a "reasonable observer" .'. fair use
- held that district court erred in saying that the only way a work can be
transformative is if that work comments on the original work (too narrow!)
Disassembly (reverse-engineering) is fair use where it is necessary to gain access to a
work for independently creative purposes
Fair Use
Technology
Sega Enterprises v. Accolade
9th Cir.
(1) purpose -“modestly transformative” bc permits PlayStation games on the
computer; favors Connectix
(2) nature - disassembly necessary to access the work; favors Connectix
(3) substantiality - entire BIOS copied; favors Sony
(4) market effect - transformation takes it out of Sony’s market
Ct rules in favor of Google on the merits of its “significant transformative use” against
Perfect 10’s hypothetical mobile phone use
Fair Use
Fair Use
Technology
Technology
Perfect 10 v. Amazon
Author's Guild v. HathiTrust
9th Cir.
2d Cir.
2007
2014
(1) purpose - “highly transformative”; indexing for search; favors Google, outweighs
Google indexed thumbnails of Perfect 10’s
“superseding” mobile phone and commercial use
models and linked to full-size displays
(2) nature - images are “creative in nature”; slightly favors Perfect 10
(3) substantiality - entire photo must be copied for use; neutral factor
(4) effect on market - thumbnails may be used on mobile phones, but impact is
hypothetical; neutral factor
Libraries + Google created a search
database of scanned books which shows
number of times a term appears in books
and what page
NB
DMCA § 512(c)(A)(i) - service provider needs “actual knowledge”; must
show that service provider had specific knowledge of specific
infringement
(1) purpose - Full-text searchable database is quintessentially transformative use
and result of word search is different in purpose, character, expression, meaning and
message from book
(2) nature - limited, bc transformative purpose (Cariou)
(3) substantiality - 100% text reasonably necessary (Library purposes)
(4) effect on market - secondary use is not a substitute for the original, little harm
Staple Article of Commerce Doctrine - "if the product is widely used
for legitimate, unobjectionable purposes… need merely be capable of
substantial noninfringing uses" then NO LIABILITY
Doctrine of Inducement - “one who distributes a device with the object
of promoting its use to infringe copyright, as shown by clear expression
or other affirmative steps taken to foster infringement, is liable for the
resulting acts of infringement by third parties”
4 elements to Inducement:
(1) distribution of a device or product
(2) actual infringement - users of isoHunt infringed by uploading
torrents
(3) object of promoting its use to infringe CR - "Box Office movies"
(4) causation - just need show acts of infringement by 3Ps
CR is allied with 1Am.!
NO "public figure" exception - public interest concern was important
wrt Kennedy assassination video; nonfiction generally gets more fair use
"Parody" special consideration! - “Parody needs to mimic an original
to make its point, and so has some claim to use the creation of its victim’s
imagination”
cf. Satire “can stand on its own two feet and so requires justification for
the very act of borrowing”
SECTION
Due Diligence
Due Diligence
Due Diligence
Litigation
Litigation
Litigation
Litigation
TOPIC
Formalities
Duration
CASE
Estate of Martin Luther King
Jr. v. CBS
Eldred v. Ashcroft
Renewals
Stewart v. Abend
Jurisdiction
Bassett v. Mashantucket
Pequot Tribe
Standing
Standing
Standing
Eden Toys v. Florelee
Undergarment
Schloss v. Sweeney
Chavez v. Arte Publico Press
CT
YR
FACTS
HOLDING
NB
General publication occurs:
11th Cir. 1999
MLK maintained copyright in his speech;
CBS aired without asking permission;
issue is “whether the public delivery of
Ct holds that King’s oral delivery ≠ general publication
the speech… constituted a general
- distribution to news media is only limited publication
publication of the speech so as to place it
in the public domain”
SCOTUS 2003
Eldred maintained a website of public
domain works; sued on grounds that the
1998 Copyright Term Extension Act
(CTEA) was unconstitutional
Ct holds CTEA complies with the “limited times” clause; also is rational in order to
comply with the Berne Convention and “in light of demographic [e.g. longevity],
economic, and technological changes”
- extended CR is generally compatible with First Amendment
SCOTUS 1990
Woolrich wrote some murder mysteries
and sold (assigned) the rights to make a
movie based on his story (derivative
work); Woolrich died before CR ran out,
and Abend bought the rights from
Woolrich's estate; Abend renewed the
copyright, but refused to assign it to the
movie studio. When the studio licensed
the movie to be shown on tv, Abend sued.
“if the author dies before the renewal period, then the assignee may continue to the
CR owner's right to permit the creation of a derivative work passes to the
use the original work only if the author’s successor transfers the renewal rights to the
heirs of the Au of the work, who are not bound by the original Au's
assignee”
agreement to permit such use
- Woolrich's promise (to renew for another 28 years and assign to movie studio) was
an unfulfilled contingency, which is not binding under the principles of K law
- “control of the work reverts back to the Au, or author’s successors,
when renewal comes up. This protects the Au (and heirs) from being
ONLY RELEVANT FOR WORKS PRODUCED BEFORE 1976!
deprived of the surprising value of the work.”
2d Cir.
2000
Ct holds that the Schoenberg test is too vague and not in accord with fed jx; reaffirms
Bassett wrote a movie about the Pequots; T.B. Harms test as appropriate, and finds that Bassett’s claim falls under §1388 (SMJ)
the Pequots terminated contract and
produced a version of her movie w/o
T.B. Harms (2d Cir., 1964) TEST:
permission
a suit “arises under” the CR Act if (1) the complaint is for a remedy expressly granted
by the Act, OR (2) the complaint asserts a claim requiring construction of the Act
1982
Paddington Bear creators licensed the
design to Eden in the U.S.; Florelee made
a “knock-off” pattern on some underwear;
Florelee claims that Eden does not have
standing to sue, since it was not the
exclusive licensee of the Paddington
design on underwear (agreement was
informal and would not stand up under
the written instrument requirement)
2d Cir.
N.D. Cal. 2007
5th Cir.
2000
Au of book re: James Joyce's daughter;
threatened with CR suit by Joyce Estate;
material that arguably should have fallen
under the aegis of fair use was stripped
from the book; Au created electronic
supplement to book to house potentially
infringing material
(1) “if tangible copies of the work are distributed to the general public in
such a manner as allows the public to exercise dominion and control
over the work”
(2) “if the work is exhibited or displayed in such a manner as to permit
unrestricted copying by the general public”
DISSENTS:
- J. STEVENS - Congress has “failed to protect the public interest in free
access to the products of inventive and artistic genius”
- J. BREYER - [rational basis review] (1) extended term benefits are
private, not public; (2) threatens to undermine expressive values of
copyright; (3) unsupported by objectives in IP clause
Schoenberg (2d Cir., 1992) TEST for CR/K claims:
(1) is claim “merely incidental” to CR?
(2) does the complaint allege a breach of K licensing/assigning the CR?
(3) is the breach so material as to create a right of recission?
“If Paddington granted Eden an informal license to sell Paddington Bear products in
the market in which Florelee sold—adult clothing—and that informal license was later
post hoc agreements ok for standing!
confirmed in writing signed by Paddington, Eden may sue in its own name”
- informal agreements may be grounds to sue if the licensor confirms the
- “the ‘note or memorandum of the transfer’ need not be made at the time when the
agreement post hoc in writing
license is initiated; the requirement is satisfied by the copyright owner’s later
execution of a writing which confirms the agreement”
In 9th Cir., π must (1) demo "real and reasonable" apprehension that π will be subject
to liability if π continues to mfr the product that (2) ∆ caused by its actions
- Ct holds that Au has real and reasonable apprenehsion of CR liability that ∆ caused
by their actions
"π does not need to being distribution of potentially infringing product to have
controversy ripe for declaratory judgment adjudication"
- product presented to the court must be the same product that will be produced if
granted declaration of noninfringement
Chavez brought suit against publishing
CR infringement claim can not be brought against a state entity bc 11Am. provides
arm of the University of Houston to
Invalidates the abrogation provisions of the Copyright Remedy
immunity to the state
enforce her right in a her CR'd work; UH
Clarification Act ("CRCA") of 1990
- property interest in a CR is not a property right protected by Section 1 of the 14Am.
publishing her book w/o her consent
Litigation
Timing
Reed Elsevier v. Muchnick
SCOTUS 2010
Under §114, registration or
preregistration is a prerequisite for filing
a civil suit; dispute arose regarding
federal jdx over a class of πs that included
unregistered CR holders; issue of whether
registration constitutes a “jurisdictional
requirement” that would remove
unregistered CRs from the federal courts?
Litigation
Timing
Petrella v. MGM
SCOTUS 2014
Petrella died in 1981, renewal rights
reverted to his heirs (Stewart v. Abend);
daughter managed to renew screenplay &
sued MGM for "Raging Bull" movie
(exploitation of derivative work)
Litigation
Timing
Feltner v. Columbia Pictures
TV
SCOTUS 1998
Feltner's TV stations running shows (but
if there is to be an award of statutory damages in a CR infringement case,
delinquent on royalty payments so license
then the opposing party has the right to demand a jury trial
revoked); Columbia sue Feltner
“If the Legislature clearly states that a threshold limitation on a statute’s scope shall
count as jurisdictional, then [proceed] . . . But when Congress does not rank a
statutory limitation on coverage as jurisdictional, court should treat the restriction as federal courts may exercise jurisdiction over CRs that are not
nonjurisdictional..."
registered
- §411(a) is not clearly labeled as jurisdictional, is not located in a jdx-granting
provision, and “admits of congressionally authorized exceptions”
equitable defense of laches is not available to CR ∆s in claims for damages
- laches cannot be invoked as a bar to pursuing a claim for damages brought w/in
§507(b)’s 3-yr window
- in extraordinary circumstances, laches may, at the very outset of litigation, curtail
the relief equitably awarded
equitable defense of laches is not available to CR ∆s in claims for
damages
SECTION
TOPIC
CASE
CT
YR
FACTS
HOLDING
NB
Ct holds that refraining from injunction is consonant with the CR Act’s remedial
scheme and does not amount to “compulsory license” .'. Galloway retains the right to
sell his house
Litigation
Remedies
(injunction)
Christopher Phelps &
Associates v. Galloway
4th Cir.
Litigation
Remedies
(injunction)
MGM v. Grokster
N.D. Cal. 2007
Litigation
Remedies
(injunction)
Perfect 10 v. Google
Litigation
Remedies
(damages)
Bouchat v. Baltimore Ravens
Football Club
Litigation
Remedies
(damages)
Frank Music v. MGM
Litigation
Remedies
(damages)
LA News Service v. Reuters TV
9th Cir.
International
2007
(1) “irreparable injury often derives from the nature of CR violations” insofar as they
Galloway built a retirement home from
deprive the CR holder of exclusive rights - π win
Phelps’s plans without permission; Phelps (2) damages are usually inadequate to remedy CR violations and “would entail a
seeks to enjoin future sale of the home
substantial amount of speculation and guesswork” - π win
(3) injunction against sale “would neither undo the prior infringement, nor diminish
the chances of future copying,” and would be a comparatively “draconian” burden
insofar as π has a substantial interest in living in and selling his house - ∆ win
(4) injunction would punitively undermine “an ancient reluctance by the courts to
restrain the alienability of real property,” disserving the public interest - ∆ win
Ebay (US, 2006) factors:
(1) irreparable injury
(2) damages are inadequate to compensate
(3) balance of hardships favors injunction
(4) public interest would not be disserved by a permanent injunction
Liability fordecentralized P2P file-sharing
service (e.g. Kazaa, Morpheus) premised
on objective promotion or inducement of
infringement
Ct rejects MAI approach - skeptical that all infringement is “irreparable” and can
MAI (9th Cir., 1993) rule as an alternative to Ebay - “a permanent
support a presumption of injunctive relief
injunction will be granted when liability has been established and there is
- but in this particular case, there is a showing of irreparable harm, and an injunction
a threat of continuing violations”
is granted under Ebay
2011
[same issue as Perfect 10 v. Amazon]
Preliminary Injunction (4 factors):
(1) that the π is likely to succeed on the merits,
9th Cir. (in accord w/ 2d Cir.) decided that finding “likelihood of success on the
(2) that π is likely to suffer irreparable harm in the absence of
merits” NO longer automatically leads to a finding that the π would suffer irreparable
preliminary relief,
harm if an injunction is not granted
(3) that the balance of equities tips in π favor, and
(4) that an injunction is in the public interest
4th Cir.
2003
Bouchat created the Ravens logo; asserts
that lower court failed to attribute
statutory presumption that infringer’s
revenues are entirely attributable to
infringement
No presumption that infringer's revenues = wholly attributed to infringement
- ∆s are entitled to SJ “with respect to any given revenue stream” if:
(1) there exists no conceivable connection between the infringement and those
revenues
(2) despite the existence of a conceivable connection, only speculation is offered in
regard to a causal link
9th Cir.
1989
MGM used parts of “Kismet” (MGM's
motion picture based off of a musical
drama) w/o license in a MGM Grand
musical revue "Hallelujah Hollywood"
direct profits - modifies lower court award as “clearly erroneous”; “Act IV was
essentially ‘Kismet’” and plaintiffs’ contribution should be set at 75%
indirect profits - upholds lower court award of 2% of total casino operations
prejudgment interest - remands to lower court to enter an award of prejudgment
interest, which should “ordinarily be awarded” consistently with the Act
2003
2 video recordings (beatings in 1992 LA
riots) by LANS; NBC copies in US, sends
via satellite to Euro org; Euro org makes
copy and transmits to Reuters; Reuters
then shows these videos via feed to its
subscribers
Where acts of CR infringement occur mostly was outside US, a CR holder is entitled
to recovery of the infringer’s profits attributable to the extraterritorial infringement,
but not actual damages for injuries the infringements caused overseas
- Ct carved out a narrow exception to the general rule against extraterritorial
application by allowing recovery of the infringer’s extraterritorial profits, but
disallowing recovery of actual damages resulting from the infringement
no rational deterrent function, consistent with the enforceable scope of
U.S. copyright, would be served by making an infringer, whose de minimis
domestic act of infringement leads to widespread extraterritorial
infringement, liable for the copyright owner’s entire loss of value or profit
from the non-actionable overseas activities
- recognized that the resulting over-deterrence might chill the fair use of
copyrighted works in close cases
Evenhanded approach - πs and ∆s are to be treated alike, but attorney's fees are
only awarded based on equitable discretion
- "Equitable discretion" isn't a precise rule or formula, but there are many
considerations that could be used to make the determination
- FACTORS (non-exclusive) - "frivolousness, motivation, objective unreasonableness
(both in the factual and in the legal components of the case), and the need in
particular circumstances to advance considerations of compensation and deterrence"
Other approaches:
- Dual standard - prevailing πs were generally awarded fees as a matter
of course, while prevailing ∆s had to show that the original lawsuit was
frivolous or brought in bad faith
- British rule - prevailing party automatically receives fees.
9th Cir.
DISSENT:
Walker (4th Cir., 1994) implies BOP shift to ∆ to prove by a
preponderance that certain profits are not attributable to infringement
Litigation
Remedies
(attorney's fees)
Fantasy v. Fogerty
9th Cir.
1996
Fogerty wrote a song and then sold the
rights to it to Fantasy; Fogerty later wrote
a similar song and Fantasy sued for CR
infringement (Fantasy was accusing
Fogerty of plagiarizing himself!)
Litigation
Remedies
(attorney's fees)
Positive Black Talk v. Cash
Money Records
5th Cir.
2004
"back that ass up" v. "back that azz up"
Applies Fogerty factors re: §505 to find that lower ct did not abuse discretion in
finding that ∆s were not entitled to atty's fees
An award of atty's fees to the prevailing party in a CR action is left to ct
discretion but "is the rule rather than the exception and should be
awarded routinely"
Contract
Transfer
(Implied License)
Asset Marketing Systems v.
Gagnon
9th Cir.
2008
Gagnon developed custom software for
AMS through a technical service
agreement; dispute arose over the
assignment of rights to the software once
agreement ended
3 prongs were upheld!
- especially wrt to (3) - “Gagnon granted AMS an unlimited, nonexclusive license to
retain use, and modify the software”
- bc consideration was paid, license was irrevocable
3 prongs for implied license:
(1) did the licensee request the creation of the work?
(2) did the licensor deliver it to the licensee?
(3) did the licensor intend that the licensee copy and distribute the work?
Contract
Transfer
New York Times v. Tasini
(Revision Privilege)
Contract
Boosey Hawkes Music
Publishers v. Walt Disney
Company
New Uses
SCOTUS 2001
LexisNexis case; NYT argued that
submission of articles to the Lexis
database constituted a “revision” under
§201(c), allowing NYT to maintain
ownership in the new medium
2d Cir.
Rite of Spring and Fantasia; Stravinsky
argues that license to use the Rite of
Spring only extended to movies and not
videos; K gave license “to record in any
manner, medium or form” and stipulated
that music “may be used in whole or in
part and may be adapted..."
1998
NYT, in licensing back issues of the newspaper for inclusion in electronic databases
such as LexisNexis, could not license the works of free-lance journalists contained in
the newspapers
- database is not a revision, but like a new form of library in which all individual
articles are available
- NYT is liable for infringement by submitting the articles to be published in an
entirely new form
DISSENT:
transfer of NYT issue into a “collection of files” constitutes a revision
n. 4:
Ct held that evidence that a “nascent market” for video tapes existed as early as 1939
"Motion picture producers would be reluctant to explore and utilize
- “the burden fell on Stravinsky, if he wished to exclude new markets arising from
innovative technologies for the exhibition of movies if the consequence
subsequently developed motion picture technology, to insert such language of
would be that they would lose the right to exhibit pictures containing
limitation in the license”
licensed works."
- presumption in favor of distributors - if had to renegotiate all rights
- broad language put burden on licensor to foresee technological developments
every time they developed new technology, might not develop new tech
SECTION
TOPIC
CASE
CT
YR
FACTS
Contract
New Uses
Random House v. Rosetta
Books
SDNY
2001
Random House K gave the right to “print, publish and sell the work in book form”
ebook case; Au's K'd with Rosetta to make - Ct finds that this is limited, by definition, to old-style books; also, separate clauses
ebooks; Random House sued for
about braille books, etc., implied that other forms were not covered
infringement, tortious interference with K - Ct holds that correct remedy for breach of non-compete clauses would be a suit
against the Au's
Contract
Licensing
Vernor v. Autodesk
W.D.
Wash.
2009
Vernor re-sold copies of AutoCAD on
US v. Wise (9th Cir., 1977) interpreted licensing Ks to determine whether they
EBay; AutoCAD argues that it never
constitute transfers of ownership
“sells” software to anyone, only licenses it - Ct applies to find that AutoCAD Licenses were transfers
Contract
Licensing
Jacobsen v. Katzer
Fed. Cir. 2008
For-profit model RR computer program
used open source program during
development; did not follow instructions
(re: attribution, etc.) for using the code
"CR holders who engage in open source licensing have the right to control the
modification and distribution of CR'd material”
- Ct holds for CR holders who “expressly stated the terms upon which the right to
modify and distribute the material depended and invited direct contact if a
downloader wished to negotiate other terms”
Contract
Misuse
Video Pipeline v. Buena Vista
3d Cir.
Video Pipeline offers short previews of
Disney movies online; claims that Disney
is misusing its CR via restrictive Ks that
limit criticism (Ks maintain that websites
featuring previews cannot also feature
criticism)
Ct extends Misuse Doctrine to CR and holds that it may be applicable outside of
anticompetitive situations
- does not rule against Disney here, since there is no evidence that the K clauses limit
the public’s ability to obtain criticism
- misuse may only be used as a defense
Misuse Doctrine - courts “may appropriately withhold their aid where
the π is using the right asserted contrary to the public interest”
- SCOTUS has not recognized CR misuse as a doctrine, bc usually related
to allegations of anticompetitive behavior
Contract
Misuse
In re Napster Copyright
Litigation
N.D. Cal. 2002
Napster brings suit in regard to a
restrictive contract it entered into with
MusicNET (prevents Napster from
obtaining individual licenses from
MusicNet competitors)
“Antitrust violations can give rise to copyright misuse if those violations offend the
public policy behind the copyright grant” (Lasercomb)
- wrt Napster’s motion for further discovery, Ct holds that Ks raised "specter of
possible antitrust violations" related to CR market power dominance
- Napster can proceed
∆ must establish a nexus between the anticompetitive actions and the π's
power over the material
SDNY
Hackers created “DeCSS” to break
encryption on DVDs; argued did not
violate DMCA and that DMCA violates
1Am.
2003
HOLDING
Access v. Copy
Protection
Universal City Studios v.
Reimerdes
2000
- usually Ks are construed against the drafters
Ct recognizes that the MAI (trio series of cases) conflict with Wise by
deferring to CR holder’s characterization of licensing agreements, so Ct
chooses Wise
hackers argue:
(1) CSS did not “effectively control” access bc they were able to break it;
Ct says "whether or not it is a strong means of protection” doesn't matter
(1) that computer programs are protected speech, but does not decide on 1Am. issue
(2) the created DeCSS within the meaning of §1201(f) (reverse
with DVD copying
engineering for interoperability); Ct says “neither of the ∆s . . . was
(2) “there may be no... liability for linking to a site containing circumvention
involved in good faith encryption research”
technology... absent clear and convincing evidence that: (a) ∆ knows the tech is on the
(3) fair use; Ct says that Congress has essentially prohibited fair use of
site, (b) ∆ knows the tech is illegal, AND (c) D∆intends to distribute it"
encrypted copyrighted material through the DMCA
Violated §1201(a)(2)
Technological
Protections
NB
Boosey distinguishable because (1) rights granted were broader, (2) the
movie-to-video transition is less significant, but also (3) the movie was a
separate work from the music, and (4) “it cannot be said that licensees
such as book publishers and movie producers are ipso facto more likely to
make advances in digital technology than start-up companies” (counters
n. 4)