Contents
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1Introductory Materials
2The Elements of Copyrightable Subject Matter
3Statutory Rights of Copyright Owners
4Direct, Contributory and Vicarious Infringement
5Fair Use and the First Amendment
6Formalities & Duration
7Transfers and Terminations
Introductory Materials[edit | edit source]
Early History and Principles of US Copyright Law:
Wheaton v. Peters33
U.S. (8 Pet.) 591
SYNOPSIS OF RULE: There is NO common law copyright which would offer
protection in perpetuity.
Emerson v. Davies 8
F. Cas. 615
SYNOPSIS OF RULE: The nature of authorship requires some freedom to build on
certain aspects of past works:
Folsom v. Marsh 9 F.
Cas. 341
SYNOPSIS OF RULE: Using selections from preexisting work fairly did not constitute
an infringement of copyright. This marked the beginning of the fair use doctrine in US
copyright law.
'Types of Works Covered by Copyright Act of 1976'[1] as per Section 102(a):
(1) literary works(2) musical works, including any
accompanying words(3) dramatic works, including any
accompanying music(4) pantomimes and choreographic
works
(5) pictorial, graphic, and sculptural works(6)
motion pictures and other audiovisual works;
and(7) sound recordings(8) architectural works
Exclusive rights granted by Copyright Act of 1976 as per Section 106:





(1) the right to reproduce (copy),
(2) the right to create derivative works of the original work,
(3) the right to sell, lease, or rent copies of the work to the public,
(4) the right to perform the work publicly (if the work is a literary, musical, dramatic,
choreographic, pantomime, motion picture, or other audiovisual work), and
(5) the right to display the work publicly (if the work is a literary, musical, dramatic,
choreographic, pantomime, pictorial, graphic, sculptural, motion picture, or other audiovisual work)
The Elements of Copyrightable Subject Matter[edit | edit source]
Introduction to Copyright Law Basic Requirements to Qualify for Copyright Protection:
Constitutional
Basis Art. I, §8, cl.
8:
“The Congress shall have the Power ...To promote the Progress of Science and the
useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right
to their respective Writings and 'Discoveries.”
'Statutory
'BasisCopyright
Act,§102
Subject matter of copyright: In general:(a) Copyright protection subsists, in
accordance with this title, in original works of authorship fixed in any tangible medium
of expression, now know or later developed, from which they can be perceived,
reproduced or otherwise communicated, either directly or with the aid of a machine or
device(b) In no case does copyright protection for an original work of authorship
extend to any idea, procedure, process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it is described, explained
illustrated or embodied in such work.
Therefore, in order to be copyrightable subject mater, a work must be:


Fixed [2] in a tangible medium
Be an original work of authorship
However, regardless of whether the first two elements are met, copyright protection does not extend to:

Elements of the work that constitute ideas, procedures, and the like.
1.
' 'Fixation - 8 pgs.
NOTE: The US is unique in its fixation requirement. The Berne Convention leaves the decision to member
country. Neither the WIPO Copyright Treaty nor the TRIPS Agreement mention it. Is there a constitutional basis
for this (...Writings...)? White-Smith Publishing Co. v. Apollo Co. -OVERTURNED BY COPYRIGHT ACT OF
1967209 U.S. 1 (1908)FACTS: The Supreme Court held that a player-piano roll was not a “copy” of the musical
composition.SYNOPSIS OF RULE: In order for a “copy” of a musical composition to violate the copyright
statute (since amended) it must be “a written or printed record of it in intelligible notation” - i.e. intelligible to a
human reader, not simply to a machine such as a player piano.Williams Electronics, Inc. v. Artic International ,
Inc. 685 F. 2d 870(3d Cir. 1982)FACTS: Williams Electronics, Inc (“Williams”), P, make coin-op arcade games
including most recently DEFENDER.MAI Systems Corp. v. Peak Computer, Inc.991 F.2d 511 (9th Cir.
1993)FACTS: MAI Systems Corp. (MAI) made computers, designed software for them, and serviced their
computers. Peak Computer (Peak) services computers for its clients, including MAI computers. In 1991, a
number of MAI employees went to work for Peak as service technicians depriving MAI of some business. The
use of a MAI computer necessarily creates a temporary copy of some files into the computers RAM (random
access memory). MAI claimed that this temporary copying, which was the result of Peak's technicians booting
up the computer, amounted to a “copying of protectable expression” beyond the scope of a license.” The MAI
software license specifically prohibited 3rd parties from by third partiesDISCUSSION: The Peak technicians
loading of software into the RAM creates a copy under the Copyright Act because the work was “fixed [into the
RAM in a way that] can be perceived, reproduced, or otherwise communicated, either directly or with the aid of
a machine or device.” The court held that despite the fact that RAM is wiped when a compute powers down, it
was still sufficiently fixed because it was “sufficiently permanent or stable to permit it to be perceived,
reproduced, or otherwise communicated for a period of more than transitory duration. As this copy was not
authorized by the copyright holder, MAI, this constituted a violation under the Act.Cartoon Network LP v. CSC
Holdings, Inc.536 F.3d 121 (2d Cir. 2008)FACTS: Cablevision offered a service whereby they were splitting
their feed. Half went directly to the customers. The other half went into a 1.2 second buffer, whereby, if the
customer elected, it would be stored in their dedicated server space. If it wasn't directed to the server's memory
it would be constantly overwritten by new data.SYNOPSIS FOR RULE: In order for copy to qualify
as fixed under the Act, two requirements must be met:
1.
2.
The work must be embodied in a medium such that it can be perceived, reproduced, etc. from
that medium either by man or machine
The work must remain thus embodied “for a period of more than transitory duration”
DISCUSSION: The court held that programming data stored in the buffers were not fixed because it wasn't
there for a period of more than transitory duration. The court here says that MAI was inapplicable because the
court in MAI did not sufficient address the “transitory period” requirement. In dicta, they suggest that even if
they did, because it was stored in the RAM for “several minutes” it probably would not have been disqualified
for being merely “transitory.” The court reads MAI as being for the proposition that loading a program into a
computer's RAM can result in copying that program (as defined by the act), but is not in and of itself evidence
of such.Live Broadcasts:Copyright Act, Sec. 101 states that “a work consisting of sounds, images, or both that
being transmitted [3], is 'fixed' for the purposes of this title if a fixation of the work is being made simultaneously
with its transmission.”
1.
Originality – 10pgs.
According the legislative history of the 1976 Act:“The phrase 'original work of authorship,' which is purposely
left undefined, was intended to incorporate without change the standard of originality [previously] established
by the courts...This standard does not include requirements of novelty, ingenuity or esthetic merit, and there is
no intention to enlarge the standards of copyright protection to require them.”'Feist Publications, Inc. v. Rural
Telephone Service Co. 499 U.S. 340FACTS: Rural Telephone Service Company, Inc. (Rural) was a
public utility providing telephone services in northwest Kansas. State law required them to publish an
annual telephone directory, a white pages for residential numbers and a yellow pages whereby they
could sell advertising space to businesses. Feist Publications (Feist) was a competing, private
telephone directory publisher who specialized in creating directories for much larger geographical
areas, including Rural's along with ten other telephone companies. Because they competed for yellow
pages advertising space, Rural was reluctant to license their white pages listings. Feist then proceeded
to use the information without Rural's consent (including the four fictional listings which Rural had
inserted to detect copying.) Feist also included additional information which supplemented Rural's; for
example they included street addresses.SYNOPSIS OF RULE:
1.
2.
3.
Facts are not copyrightable.
Compilations of facts generally are copyrightable, based on their possession of the requisite
originality. Originality can be found in the way that facts are selected and arranged. This
originality requirement is not particularly stringent. A compiler may settle upon a selection or
arrangement that others have used; novelty is not required.
“Original...means only that the work was independently created by the author (as opposed to
copied from other works), and that it possesses at least some minimal degree of creativity.
The requisite level of creativity is extremely low, even a slight amount “no matter how crude,
humble or obvious” will suffice.
HELD: Feist's compilation of facts did not meet the minimum standard of originality.Burrow-Giles Lithographic
Co. v. Sarony 111 U.S. 53FACTS: Sarony, P, sues Burrow-Giles, D, for violating his copyright in a photograph
of Oscar Wilde.ISSUE: Is a photograph, which is “a reproduction on paper of the exact features of some natural
object of some person,” copyrightable?DISCUSSION: It cannot be said that the image in question is lacking in
originality because the plaintiff “made [a “useful, new, harmonious, characteristic and graceful picture] entirely
from his own original mental conception, to which he gave visible form by posing the said Oscar Wilde in
front of the camera, selecting and arranging the costume, draperies, and other various accessories
and disposing the light and shade, suggesting and evoking the desired expression, and from such
disposition, arrangement, or representation, made entirely by plaintiff, he produced the picture in suit”Bleistein
v. Donaldson Lithographing Co.188 U.S. 239 (1903)FACTS: “The alleged infringements consisted on the
copying in reduced form of three chromolithographs prepared by employees of plaintiff for advertisements of
a circus owned by Wallace”SYNOPSIS OF RULE:
1.
2.
You may not copyright a persons likeness. “Others are free to copy the original [physical
person]. They are not free copy the copy [an image, photograph or drawing of the physical
person]”
Posters, ads, etc. are copyrightable and are not precluded from protection under the Act
merely because they are not of the highest artistic merit. [4]
Categories of Originality Requirements
UK and
Ireland
Required only that “the work originate from the maker and not be copied from another
source”
Italy, France,
et Al.
Required that “the work be of an author's personal expression”
Germany
Required works to pass additional “qualitative or aesthetic tests
Japan
Required a relatively high level of originality in which “thoughts or sentiments are expressed
in a creative way” and “fall withing the literary, scientific, artistic or musical domain.”
1.
Idea/Expression Dichotomy – 18pgs.
Both TRIPS and the WIPO Copyright Treaty state that copyright protection extends to “expressions and not
ideas, procedures, methods of operation, or mathematical concepts as suchSection 102(b) seems to have two
purposes:
1.
2.
To define the line between what is eligible for copyright protection and what belongs tot he
public domain; and
To define the line between copyrightable and patentable subject matter
Baker v. Selden101 U.S. 99 (1879)FACTS: Selden obtained a copyright in a book entitled “Selden's
Condensed ledger, or Book-keeping Simplified,” which provided a detailed explanation of Selden's new ledger
system. He brought suit against Bake for an alleged infringement of his copyright in an to the book. Baker says
that Selden's ledger system is not copyrightable.DISCUSSION: Systems or methods for creating accounting
sheets are not copyrightable, but the books themselves are protectable. The holding regarding no copyright
protection for systems is codified in 102(b). The court here is cautious not to grant copyright to the accounting
system because of fear that the accountant would secure the exclusive right to make, sell, and use accountbooks. Court found the ledger to be a utilitarian object rather than an express work. The court found that it
should not allow a creator of inherently patentable subject matter (i.e. a system or a process) to use CR law to
circumvent the patent system. Blank forms are not copyrightable '[5] (also found in §202.1 Material not
subject to copyright)Merger '[6]: If only a limited few ways exist to express an idea, the idea and expression
merge into an uncopyrightable whole.Morrissey v. Procter & Gamble Co., 379 F. 2d 675 (1st Cir. 1967)FACTS:
The court examined whether instructions for a sweepstakes contest could be copyrightable.SYNOPSIS OF
RULE: “When the uncopyrightable subject matter is very narrow, so that 'the topic necessarily requires' if not
only one form of expression, at best only a limited number to permit copyrighting would mean that a party...by
copyrighting a mere handful of forms, could exhaust all possibilities of future use of the substance.”Fiction v.
Non-fiction and Idea/ExpressionA.A. Hoehling v. Universal City Studios, Inc. 618 F.2d 9722 (2d Cir.),
(1980)FACTS: A.A. Hoehling, P, published a book entitled “Who Destroyed the Hindenburg?” which was a
factual account, written in an objective, reportorial style. This book fingered Eric Spehl as the most likely
saboteur of the airship. Mooney eventually published a book called “The Hindenburg” which was “more literary
than historical.” It centered around the “Spehl-as-saboteur” theory. Mooney concedes that he consulted
Hoehling's book. Universal City Studios, D,bought the film rights to Mooney's book. Hoehling's principal claim is
that Mooney and Universal copied the Spehl as saboteur theory.SYNOPSIS OF RULE:
1.
2.
3.
“Absent wholesale usurpation of another's expression, claim of copyright infringement where
works of history are at issue are rarely successful.
Interpretation, including theories and plots, of an historical event are not copyrightable as a
matter of law unless there is a verbatim reproduction of another work
“Scenes à faire, that is, “incidents characters or settings which are as a practical matter
indispensable in the treatment of a given topic are not copyrightable as a matter of law.”
American Dental Association v. Delta Dental Plans Association 126 F.3d 977 (7th Cir. 1997)FACTS: The ADA
created the Code on Dental Procedures and Nomenclature which classified into groups all dental procedures.
Delta Dental published a work entitled Universal Coding and Nomenclature that includes most of the numbering
system and descriptions from the ADA's Code. Delta argues that the Code is not copyrightable. They
lose.ISSUE: Is a taxonomy copyrightable? The court says yes.DISCUSSION: A taxonomy may be a collection
of facts , however, “ facts do not supply their own principles of organization. A taxonomy is not as system. It
does not come with instructions for use, and instead can be put to an infinite number of uses. While any dentist
may use the notations outlined in the Code, Delta may not copy the Code or make and distribute a derivative
work based on the Code.Southco, Inc. Kanebridge Corp.390 F. 3d 276 (3d Cir. 2004)FACTS: D, a competitor
of P in the fastner business was copying P's part numbers in their catalogs. Plaintiff argued that its part
numbers were highly creative, explaining that in its system of numbering each component of the part number
represented a different aspect of each product (e.g. type of fastener, size, material, etc.DISCUSSION: The
court held that the part number in plaintiff's catalog were not original because the numbers were “rigidly
dictated byt eh rules of P's system.”
1.
2.
' 'Introduction to Copyright Theories – 18pgs.
' 'Authorship – 18pgs.
Section 201 of the Copyright Act recognize three kinds of authorship :
1.
2.
3.
Sole authorship
Joint or co-authorship
“Works made for hire” [7]
Sole AuthorshipLindsay v. The Wrecked and Abandoned Vessel R.M.S. Titanic 52 U.S.P.Q.2d 1609FACTS:
P, under contract with a British television company, directed a documentary film chronicling D's third salvage of
the Titanic. P worked with the ships crew to create a film which he conceived. He is suing D for licensing
footage to The Discovery Channel.SYNOPSIS OF RULE: An author need not have himself created the work,
so long as it is the product of their own “original intellectual conceptions.”DISCUSSION: “Where the P alleges
that he exercised such a high degree of control over a film operation – including the type and amount of lighting
used, the specific camera angles to be employed, and other detail-intensive elements of a film – such as the
final product duplicates his conceptions and vision of what the film should look like, the plaintiff may be said to
be an “author” with in the meaning of the Copyright Act.Joint AuthorshipJoint Work'[8]':“A work prepared by
two or more authors with the intention that their contributions be merged into inseparable or interdependent
parts of a unitary whole.” 17 U.S.C. § 101Erikson v. Trinity Theater, Inc.13 F.3d 1061 (7th Cir. 1994)FACTS:
Karen Erickson prepared three plays for Trinity Theatre, which she helped to found. There was a dispute and
Trinity stopped paying Erikson royalties claiming that it was a joint author and co-owner of the copyright. They
made this assertion based on the fact that Trinity actors had made suggestions which Erikson incorporated into
her play.DISCUSSION: Courts have applied two tests to evaluate contributions of authors claiming joint
authorship:
De minimis Test (not favored by
courts):Requires that only the combined
product of joint efforts must be copyrightable
Copyrightability Test (favored by courts):Requires
that each author's contribution must be
copyrightable independently
Aalmuhammed v. Lee202 F. 3d 1227 (9th Cir. 1999)FACTS: Spike Lee was engaged to make a film based on
the book The Autobiography of Malcolm X. Lee askked Jefri Aalmuhammed to assist him in making the movie
because he knew a great deal about Malcom X. In the course of his help. Aalmuhammed suggested extensive
script revisions in order to ensure religious and historical accuracy. Aalmuhammad then asked for a co-writing
credit but was denied and brought suit claiming joint authorship.SYNOPSIS OF RULE: For a work to be a “joint
work” there must be”:
1.
2.
3.
A copyrightable work
Two or more “authors” (see Erikson)
The authors must intend [9] their contributions be merged into inseparable or interdependent
parts of a unitary whole.
DISCUSSION: The Court concludes that while Aalmuhammed's contributions were copyrightable, he was not a
“joint author” under the definition of the statute. Relying on Thomson v. Larson the court said that neither
Aalmuhammed, nor Spike Lee, nor WB made any objective manifestation of intent to be coauthors. In fact, Lee
was required to create the work as one “made for hire”Thomson v. LarsonFACTS: Jonathan Larson was a
playwright who created a modern version of La Boheme, a musical called Rent. In the course of creating the
musical, Larson engaged Lynn Thomson for “dramaturgical assistance and research” and crediting her as
“dramaturg.” After Jonathan Larson died of AIDS, Thomson sued to be recognized as a joint
author.DISCUSSION: The Second Circuit held that because she had never sought nor was billed as co-author,
that there was no intent on behalf purported author to be joint authors with Thomson.Works Made for
HirePursuant to § 101 of the 1976 Copyright Act, a“work made for hire” is:


(1) A work prepared by an employee within the scope of his or her employment; or
(2) A work specially ordered or commissioned for use as a contribution to a collective work...(see
page 124)
Community for Creative Non-Violence v. Reid490 U.S. 730 (1989)FACTS: The Community for Creative NonViolence (CCNV) wished to participate in the annual Christmastime Pageant oPeace by sponsoring a display to
dramatize the plight of the homeless. They envisioned a sculpture reminiscent of the Nativity, only it would
feature the modern homeless perched upon a steam-gate pedestal. CCNV contacted James Earl Reid, a
sculptor from Baltimore, and discussed the project with him. No formal written agreement was ever entered
into. CCNV agreed to pay Reid in installments to complete the work. They arranged for him to meet with local
homeless families to serve as models. They also vetoed his desire to cast the sculpture in bronze do to funding
constraints. The regularly checked up on the work and received sketches of the work either to raise funds, or to
approve them. After the piece was initially exhibited Reid took control and refused to return it to CCNV when
requested. He filed the work with the copyright office, as then did CCNV, contending that it was a work made
for hire under the copyright statute and that Reid was an employee. The court concluded in light of the factors
below that Reid was not an employee but rather an independent contractor.SYNOPSIS OF RULE: “In
determining whether a hired party is an employee...[the court considers] among other factors:
1. The skill required2. The source of the instrumentalities
and tools3. The location of the work4. The duration of the
relationship between the parties5. Whether the hiring party
has a right to assign additional projects to the third party6.
The extent of the hired party's discretion over when and
how long to work No factor will be dispositive.
7. The method of payment8. The hired party's
role in hiring and paying assistants9. Whether
the work is part of the regular business of the
hiring party10. Whether the hiring party is in
business 11. The provision of employee
benefits, and12. The tax treatment of the hired
party.
Aymes v. Bonelli980 F.2d 857FACTS: Bonelli (B) hired Aymes (A) to create computer programs for B's
swimming pool business. There was no written agreement. A did most of his programming at B's offices and
using their computers. Despite not being able to program, B dictated what he wanted but A had considerable
autonomy. He was often paid by the hour, but occasionally submitted invoices. A received no health
benefits.SYNOPSIS OF RULE: The following factors will be given more weight [10]than the remaining factors:
1.
The hiring party's right to control the manner and 4. The tax treatment of the hired party
means of creation 5. Whether the hiring part has the right to assign
1.
2.
The skill required additional projects to the hired party.
The provision of employee benefits
Statutory Rights of Copyright Owners[edit | edit source]
1.
Introduction to International Copyrightable -10pgs.
BerneConvention:
Imposed certain minimum standard that it's members had to meet; Called for national
treatement; Provided that copyright enjoyment couldn't be subject to formalities;
Protected new kinds of works like architecture
TRIPSAgreement:
Covered all major categories of IP including patents, copyright and trademark;
member countries could enact measure which exceeded TRIPS minimum
requirements; Incorporated the Berne Convention under Art. 9 (but doesn't require
recognition of moral rights); Provides an enforcement mechanism through WTO
World Trade
Organization
Provides a forum for negotiations between member states, Dispute Settlement
Understanding (DSU); All members agree to binding internation settlement process;
Dispute heard by panels which will then report to the Dispute Settlement Body (DSB);
There is additionally an appellant panel
World
IPOrganization
One of the specialized agencies of the UN; Sponsored the WIPO Copyright Treaty
which the US ratified (recall the database cases); Questions still exist as to how
TRIPS and WIPO treaties deal with one another.
1.

Protected Works -2 pgs.
102. “Works of authorship include the following categories:”
Significance of the
designation?
Defining characteristics?
Short stories,
novels, letters,
computer
programs
None.
Expressed in words, numbers, or
other verbal or numerical symbols
regardless of the medium in which
they are stored
(2) musical
works, including
any
accompanying
words
Songs (but not the
technical
recordings of
those songs)
Where a song has been
publicly distributed they are
subject to compulsory
licensing under §115. This
means people are free to
“cover” the song as long as
they pay royalties and notice.
A work can qualify as a musical
work irregardless of genre It is not
required that they conform to
traditional notions of rhythm,
harmony or melody. If a song has
new lyrics over an old melody,
only the new element is
copyrightable.
(3) dramatic
works, including
any
accompanying
music
Plays,
screenplays,
teleplays (also
sometimes
choreography)
While a work may qualify as
both a musical work and a
dramatic work, if it is also the
latter, it is not subject tothe
compulsory licensing
requirement
The dramatic actions contained
therein are “intended to be
preformed,” as opposed to being
narrated or described.
(4) pantomimes
and
Ballet, mime,
choreographed
Categories:
Examples
(1) literary
works;
None.
Composition and arrangement of
dance movements. Dance
choreographic
works;
professional
wrestling matches.
movements are a combination of
static and kinetic movements in a
certain rhythm and spacial
relationship.They need not tell a
story
(5) pictorial,
graphic, and
sculptural works
Sculpture,
painting,
photographs,
architectural
designs, belt
buckle design,
vodka bottles
If a work is sculptural, it is
necessary to consider the
“separability requirement” for
“useful articles”
“two-dimensional or threedimensional works of fine, graphic
or applied art, photographs, prints
and art reproductions, maps,
globes, charts, diagrams, models,
and technical drawings including
architectural plans.
Movies, TV shows,
video games,
multimedia
slideshows,
animated cartoons
The definition of “work made
for hire” specifically includes
such things as screenplays,
soundtrack compositions and
other works made as part of
motion pictures. Therefore a
screenwriter loses his right to
terminate the transfer of
copyright in the screenplay to
the producers of the movie.
Requires the use of a machine or
device like a projector or electronic
screen to show it. The images
must be related but they need not
be in any particular order. Even if
the content of the images is
dictated partly by the user of the
program (such as the player who
guides the character in a video
game)
(7) sound
recordings
Vinyls, CDs,
MP3s, Booksontape, Recorded
lectures
Pre-1972 sound recordings are
excluded from federal
copyright protection, although
state protection may still apply.
Only literal (exact) copies of
sound recordings are barred.
Copyright holders for sound
recordings do not have public
performance control rights
(although the holder of the
copyright in the underlying
musical work does.)
“Results from the fixation of a
series of musical , spoken, or
other sounds,” regardless of the
media in which it is fixed, be it “
disks, tapes, or
otherphonorecords”
(8) architectural
works
Blueprints
If publicly viewable, anyone
can photograph, and owner
can change
The design of buildings (does not
include interiors or stores in malls,
or bridges, etc)
(6) motion
pictures and
other
audiovisual
works;
1.

Elements of Infringement – 2pgs.
106 Exclusive rights in copyrightable work:
1.
2.
to reproduce the copyrighted work in copies or phono records;
to prepare derivative works based upon the copyright work;
3.
4.
5.
6.
to distribute copies or phonorecords of the copyrighted work to the public by sale or other
transfer of ownership, or by rental, lease or lending
in the case of literary, musical, dramatic and choreographic works, pantomimes and motion
picture... to preform the copyrighted work publicly
in the case of literary musical dramatic and choreographic work, pantomimes and pictorial
graphic or sculptural work including individual images of a motion picture or other audio visual
work, to display the work publicly
in the case of sound recordings to perform the copyright work publicly by means of digital
audio transmission.
The prima facie case of infringement:
1.
2.
Plaintiff must prove ownership of a valid copyright. Registration of the work with the copyright
office is prima facia evidence of both its ownership of copyright and its validity.
Plaintiff must prove defendant violated one of the exclusive rights reserve to the copyright
owner. [11]
Proving copying in fact [12]:
1.
2.
3.
4.
5.
Evidence of direct copying, OR
Circumstantial evidence suggesting that defendant had access to the plaintiff's work, AND
The degree of similarity between the two works so great that it is circumstantial evidence.
Reproduction Rights
Copying in Fact – 9 pgs.
Three Boys Music Corp. v. Michael Bolton212 F. 3d 477 (9th Cir. 2000)FACTS: In 1966, the R&B group the
Isley Brothers released a song called “Love is a Wonderful Thing.” It reached 110 in a chart title “Bubbling
Under the Hot 100” but never was listed on any other top 100 charts. In early 1990, Michael Bolton and
songwriting partner Andrew Goldmark wrote a song called “Love is a Wonderful Thing” which finished 49 th on
Billboard's year end pop chart. Three Boys Music Corp, P, owners of the copyright in the Isley Brother's song
sued Bolton for copyright infringement.SYNOPSIS OF RULE: Circumstantial evidence of access is proven in
one of two ways:
1.
2.
a particular chain of events is established between P's work and D's access to that work
(such as through dealing with a publisher, agent or record company)
the plaintiff's work has been widely disseminated
DISCUSSION: The court relies on the analysis set forth in ABKCO Music. P proffer the argument that (1)
Bolton grew up listening to groups such as the Isley Brothers, (2) DJ's testified that the Isley Brothers were
widely disseminated in the area where Bolton grew up (CT), (3) Bolton confessed to being a fan of the Isley
Brothers, (4) in the work tapes proved by Bolton show that he was concerned that he might have been
infringing on a song by another R&B singer, Marvin Gaye. The court refused to overturn the jury's
determination that Bolton had copied the Isley Brother's work.ABKCO Music, Inc. v. Harrisongs Music, Ltd.722
F. 2d 988 (2d Cir. 1983)FACTS: The Second circuit affirmed a jury's verdict that George Harrison
subconsiously copied The Chiffons' “He's So Fine” when he wrote “My Sweet Lord.DISCUSSION: Harrison
admitted to having heard “He's So Fine” in 1963. The court said that this alone was not proof in and of itself
that there was access. However, this coupled with significant similarity was sufficient to find and
infringement.Selle v. Gibb741 F.2d 896 (7th Cir. 1984)FACTS: Ronald Selle sued the Bee Gees, alleging that
their hit song “How Deep is Your Love” had infringed the copyright of his song “Let It End. While the jury found
infringement, the court granted a motion for JNOV. Selle sent tapes of his song to eleven music publishers.
Eight returned the tapes and three did not respond. At trial a professor of music at Northwestern testified that
“the two songs had such striking similarities that the could not have been written independently of one another,”
but declined to say that the similarities could only have resulted from copying. The court upholds the
JNOV.DISCUSSION: “No matter how great the similarity between the two works, it is not their similarity per
se which establishes access; rather...there must be at least some other evidence which would establish a
reasonable possibility that the complaining work was available to the alleged infringer.Sheldon v. MetroGoldwyn Pictures Corp.81 F.2d 49DISCUSSION: Judge Learned Hand famously stated: “If by some magic a
man who had never know it were to compose anew Keats' “Ode on a Grecian Urn,” he would be an 'author.'
and, if he copyrighted it, others might not copy his poem, though they might of course copy Keats'”Bouchat v.
Baltimore Ravens, Inc.241 F. 3d 350 (4th Cir. 2001)FACTS: Plaintiff alleged that the Baltimore Ravens copied a
logo design that he had submitted to the chairman of the Maryland Stadium Authority (MSA). He could not
prove definatively that the specific piece of paper that he had sent was passed along, but instead based his
claim on the circumstantial evidence of the routine practice of the MSA's office to forward documents received
to the chairman's law office and their, the law office's regular contact with the team's owner.SYNOPSIS OF
RULE: Under the corporate receipt doctrine '[13]', possession of a work by one employee of a corporation
implies possession by another employee who infringes the work.
1.
2.
Improper Copying
The Classic Cases – 7pgs.
Copying is a violation of §106(1). A plaintiff must show that


(1) the D copied copyrightable elements of the work (i.e not elements that are in the public
domain, scenes à faire, ), and
(2) that they copied “too much.”
Nichols v. Universal Pictures Corp.45 F.2d 119 (2d. Cir. 1930)FACTS: P work a play called, “Abie's Irish Rose.”
Universal Pictures, D, released a motion picture entitled “The Cohen's and the Kellys” which D alleged infringed
on his work. Both plays are, broadly speaking, about one Jewish and one Irish Catholic family, who's children
fall in love and marry in secret to the chagrin of their players.DISCUSSION: Learned Hand sets forth what is
called the abstraction test, which he uses to decide whether a defendant has copied protected expression. All
works can be described in increasingly general levels of abstraction (for example Romeo and Juliet could be
described as: a love story between a Montague and Capulet that ends in the man poisoning himself and the
woman stabbing herself. Compared to two kids of feuding families who fall in love and kill themselves.
Compared to, a tale of forbidden love.) No infringement results if a second author copies all those general
elements but expresses them in a different form. To copy at a much more specific level is taking protected
expression Arnstein v. Porter154 F.2d 464 (2d Cir. 1946)FACTS: Arnstein, P, alledged that a numb of his
works have been plagiarized by Cole Porter, D. Some of P's works have been sold, others played on various
radio stations, others P claimed were taken from his apartment when it was burglarized.SYNOPSIS OF RULE:
On the issue of whether there was “too much” copying, the test is the response of the ordinary “lay hearer” and
expert testimony or “dissection” will not be determinative (although admissible) “The question...is whether
defendant took from plaintiff's work so much of what is pleasing to the ears of lay listeners, who comprise the
audience fro whome such popular music is composed, that defendant wrongfully appropriated something which
belongs to the plaintiff.
1.
Contemporary Developments 1. Second Circuit -13 pgs
Steinberg v. Columbia Pictures Industries, Inc.663 F. Supp. 706 (S.D.N.Y. 1987)FACTS: Steinberg, an artist
who created a famous New Yorker cover entitled View of the World, alleges that Columbia Pictures, D,
infringed on his copyright with their promotional poster for the film Moscow on the Hudson. The executive art
director for Columbia admitted that he specifically referred to Steinberg's poster and directed the artist of the
promotional poster to use Steinberg's poster to achieve a more recognizable New York look.SYNOPSIS OF
RULE:
1.
2.
The definition of “substantial similarity” in the Second Circuit is “whether an average lay
observer would recognize the alleged copy as having be appropriated form the copyrighted
work.”
“A copyright infringement may occur by reason of a substantial similarity that involves only a
small portion of each work.”
DISCUSSION: A defendant can not be held liable for for using the idea of a map of the world from an
egocentric myopic perspective. The fact that Moscow in the poster was depicted in substantially large size than
the far off objects in Steinberg's illustration are not enough to prove dissimilarity. “'Substantial similarity' does
not require identity, and 'duplication or near identity is not necessary to establish infringement'.” Defendants
claim that the substantially similar elements (namely water towers, buildings, etc.) are unprotected scenes à
faire, however the court determines that it's not the D's inclusion of these elements that makes the work
substantially similar, but rather their copying of the P's expression of those elements.Boisson v. Banian,
Ltd.273 F.3d 262 (2d Cir. 2001)FACTS: Boisson, P, created two alphabet quilts called “School Days I” and
“School Days II” which she believes Banian, Ltd., D, copied in violation of her copyright. The court ultimately
finds infringements by at least one of Banian's quilts.SYNOPSIS OF RULE:
1.
2.
The “More Discerning” Observer Test: A “more refined analysis” is required where a
plaintiff's work is not “wholly original,” but rather incorporates element from the public
domain...What must be shown is substantial similarity between those elements and only
tohose elements, that provide copyrightability to allegedly infringed compilation. “ However,
The “Total Concept and Overall Feel” Test: If there are non copyrightable elements in the
work which it is alleged was infringed, the court may not dissect the work, removing those
components and only comparing the copyrightable components. Instead, in order to find
infringement, the “total concept and overall feel created by the two works [must] be said to be
substantial similar.”
Mannion v. Coors Brewing Company3777 F. Supp. 2d 44 (S.D.N.Y. 2006)fFACTS: Mannion was a
photographer who was known for photographing celebrities, including Kevin Garnett which is the subject of the
case at bar. Defendant Carol H. Williams Advertising used the Garnett photograph in one of their advertising
proposals (a so called “comp board”) which they used to solicit bids for the Coors advertisements. The resulting
billboard was similar to the comp, including a black man's muscular torso who is wearing a lot of “ice”, albeit not
KG.SYNOPSIS OF RULE: A photograph may be original in three respects:(1) Rendition: Camera angle, light
and shade, exposure, effects achieved by use of filters, developing techniques, etc. (2) Timing: Being in the
right place at the right time (i.e. Catch of the Day salmon leaping into a bears mouth.)(3) Creation of the
Subject: Posing and costuming a subject or arranging scenery or props.“If the points of dissimilarity not only
exceed the points of similarity, but indicate that the remaining point of similarity are, within the context of
plaintiff's work, of minimal importance...then no infringement results.”DISCUSSION: “The defendants... appear
to have recreated much of the subject that Mannion had created (through use of similar dress and pose) and
then , through imitation of angle and lighting, rendered it in a similar way. The similarities here thus relate to
the Garnet Photograph's originality in the rendition and the creation of the subject and therefore to its protected
elements.”On the question or similarity vs. dissimilarity, the court finds that a reasonable jury could go either
way and therefore no summary judgement could be granted.
1.
Ninth Circuit – 14 pgs.
Roth Greeting Cards v. United Card Co. 429 F. 2d 1106 (9th Cir. 1970)FACTS: Roth, P, sues United Card Co.
for allegedly infringing on Roth's greeting card designs.DISCUSSION: The court says that the “total concept
and feel of the cards of United are the same as the copyrighted cards of Roth. The court accepts United's
argument that “the textual matter of each card...was not original to Roth and therefore not copyrightable.”
However, “proper analysis... requires all of the elements of the card , including (1) text, (2) arrangement of text,
(3) artwork, (4) [interplay] between artwork and text...(5) mood they portray, (6) arrangement of words, and (7)
lettering.” The court finds that taken as whole the works are substantially similar.DISSENT: Judge Kilkenny,
believes that if the text is not copyrightable and the art is similar but not infringing (two points which he and the
majority are in agreement on), than their arrangement cannot create something greater (and copyrightable)
than sum of non-copyrightable parts.Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp. 562
F.2d 1157 (9th Cir. 1977)FACTS: Plaintiffs Sid and Marty Krofft created a children's TV show called H.R.
Pufnstuf. McDonald's advertising firm Needham, Harper & Steers, Inc. created a television ad campaign which
involved fantastical characters in a make believe world called McDonaldland. Plaintiffs sued McDonald's for
infringing on elements of their show.DISCUSSION: The test for significant similarity should be an intrinsic one,
because the subject matter is directed to an audience of children. Court also adopts a “total concept and feel”
test (Roth Greeting Cards) to find for plaintiff:


(1) Extrinsic Test (basically a “copy in fact” test) – Trier of fact compares the works for similarity of
ideas depends not on the responses of the trier of fact, but on the specific criteria which can be
listed and analyzed, specifically expert testimony. This is inappropriate here because the
audience the two works are directed at are children. There
(2) Intrinsic Test (“total concept and feel” test ) – trier of fact must respond to the works as an
ordinary observerr without any analytic dissection or use of expert testimony, to determine
whether defendant took enough of what is pleasing to the audience (in this case children) to be
held liable
Cavalier v. Random House297 F. 3d 815 (9th Cir. 2002)FACTS: Plaintiffs Cavaliers created a children's book
which featured a character called Nicky Moonbeam.. They submitted their materials to defendants Random
House and the Children'sTelevision Workshop on multiple occasions. After taking a meeting with Random
House, they were rejected. Soon after Random House and the CTW releases two books entitled: Good Night,
Ernie and Good Night, Elmo. The trial court granted summary judgement for the defendant's saying that the
two works were not substantially similar.SYNOPSIS OF RULE:
1.
2.
The extrinsic test focuses on “articulable similarities between the plot, themes, dialogue,
mood, setting, pace, characters, and sequence of events in the two works.” put another way,
the extrinsic test “encompasses all objective manifestations of expression. Only those
elements which are protectable will be compared.
The intrinsic test is a subjective comparison that focuses on 'whether the ordinary,
reasonable audience” would find the works to be substantially similar in the “total concept and
feel of the works.”
DISCUSSION: The appeals court agreed with the trial court that when considering the literary work as a whole,
there was no question of triable fact which need be left up to the jury. Many parts of the work (including the
talking moon, the night sky as a setting, etc.) constituted and therefore were not copyrightable. Removing those
elements, the court found significant difference in tone, plot and pacing, even when considering, as is required
with works intended for child audiences, the “total concept and feel” of the work. The court then considered the
individual art works. They find that there are triable issues of fact in at least two elements (the nightlight shape
and the stars sleeping on the clouds during the day.)Swirsky v. Carey376 F.3d 841 (9th Cir. 2004)FACTS: The
dispute is between plaintiff Swirsky, writer of the song “One of Those Love Songs,” preformed by Xscape and
Mariah Carey, who's song “Thank God I Found You” P believes infringes on their copyright. Swirsky employed
the expert testimony of a musicology professor from UCLA who said that the musical structure of the two works
created “the impression of similarity.” The trial court found the professor's methodology flawed and granted
summary judgment for Carey. The court here ultimately determines that after their extrinsic test, there was
enough similarity to send it to the jury to evaluate the intrinsic similarities.SYNOPSIS OF RULE: Courts should
only consider “D's appropriation of the song's compositional elements and must remove from consideration all
the elements unique to plaintiff's performance” Newton v. Diamond 349 F.3d 591(2003)DISCUSSION: The
court again uses the Extrinsic/Intrinsic test. The court says that the testimony of the professor correctly
evaluated the work extrinsically, by examining the structural context of the “harmony, rhythm and meter.” The
court said the trial court erred in that they were too objective in their measure by measure analysis. For
example, the rhythm (½, ½, ¼, ½, ¼) is objectively different from (whole, ¼, ¾) however, depending on the
emphasis placed on each note, the two rhythms can be made remarkable similar so that only a expert upon
hearing the whole work would see the similarity. (However, this is still considered an extrinsic test). In music,
for elements to be scenes à faire they must be unique to genre.
1.
The Exact Copy – 11 pgs.
The Four Types of Exact Copying Cases:
1. Piracy: A fairly straight forward case where D
burned1,000 exact copies of an audio CD for distribution
2. Fair Use Exact Copies: These cases
concern instances of exact copying which D
asserts are fair use under §107, because for
example they were produced for a library.
3. Automatically Created Exact Copies: These cases
involve exact copying as a result of an automated process
such as loading a software program into a computer's RAM
(see MAI Systems v. Peak Computer Corp, §117
exceptions for owners and 3rd party service orgs. like MAI,
not licensees)
4. “Innocent” Exact Copies: Where D relied
on the absence of a copyright notice, and
believed that their copying was therefore
protect. (see 17 U.S.C. §405(b) transcribed in
full on page 338)
Section 114(b) says that sound recording copyright holders only have protection against direct duplications of
the recorded sounds, and NOT “sound alikes,” and neither reproduction rights nor derivative work rights can be
extend to the “making of an independent fixation of other sounds, even though such sounds imitate or simulate
those in the copyrighted sound recordings.”Newton v. Diamond388 F.3d 1189 (9th Cir. 2004)FACTS: P Newton
recorded a song called “Choir.” Newton then sold the sound recording copyright to ECM Records, while
retaining the copyright to the underlying musical composition. Later the Beastie Boys, D, would license the first
6 second of the sound recording for “Choir” from ECM to use in their song “Pass the Mic.”. They never licensed
the use of the underlying musical composition. They The trial court granted D summary judgement as
allowable de minimis use. SYNOPSIS OF RULE:
1.
2.
3.
Fragmented literal similarity exists where the defendant copies a potion of the plaintiff;s work
exactly or nearly exactly, without appropriating the work's overall essence or structure.
Because the degree of similarities is high in such cases, the dispositive question is whether
the copying goes to trivial or substantial elements.
Substantiality is measured by considering the qualitative and quantitative significance of the
copied portion in relation to the plaintiff's [14] work as a whole.
DISCUSSION: The court allows the Beastie Boys to prevail on their motion for summary judgement because
they said that quantitatively, the three note sample, which only appeared once in Choir, constituted only two
percent of the entire work. Qualitatively, it is no more significant than any other portion of the work.Bridgeport
Music, Inc. v Dimension Films410 F.3d 792 (6th Cir. 2005)FACTS: Bridgeport claim to own the musical
composition and sound recording copyrights in “Get Off Your Ass and Jam” by George Clinton. Defendant's No
Limit Films released the film I Got The Hook Up which included in its soundtrack, the song “100 Miles and
Running” which featured a sample from “Get Off Your Ass and Jam.” Bridgeport entered into a Release and
Agreement with the group that created “100 Miles” granting them sample use rights.SYNOPSIS OF RULE: “A
sound recording owner has the exclusive right to “sample” his own recording.” [15]DISCUSSION: Unlike
in Newton, this is a case of infringing only the musical composition (as ECM owned the sound recording
copyright.). Bridgeport and Westbound owned both the musical composition and sound recording copyrights.
1.
2.
Derivative Works
Originality in Derivative Works – 21 pgs.
Alfred Bell & Co. v. Catalda Fine Arts, Inc.191 F.2d 99 (2d Cir. 1951)FACTS: An engraver creates mezzotints
of old masters oil paintings. Through extraordinary and meticulous attention to detail, uncommon to the
standard mezzotint production process, the engraver manages near identical copies of the works (which are in
the public domain and therefore not subject to copyright protection.)SYNOPSIS OF RULE: A copy of something
in the public domain may itself be copyrighted if the author thereof contributes something of his own to the
copy, that is, something more than a “mere trivial” variation. “No large measure of novelty is not
required.”Bridgeman Art Library, Ltd. v. Corel Corp.36 F. Supp. 2D 191 (S.D.N.Y. 1999)FACTS: Bridgeman, P,
had been authorized to prepare reproductions of artworks held in private collections. They alleged that Corel
copied their reproductions which they claimed copyright in.SYNOPSIS OF RULE: This was a different rationale
than Alfred Bell: court says the important thing is what it looks like in the end, not the creative process that you
put into it – here: end product not sufficiently differentDISCUSSION: The found for defendant, calling
Bridgeman's reproductions, “slavish copies: of public domain works of art which lacked sufficient originality for
copyright protection. Only a “distinguishable variation” on public work (i.e. a reproduction altered to an extent
beyond change of media or technical variation) will render a reproduction of a public work original. One reason
for lack of copyright protection for the photos of the works of art is that, although it required skill and effort, it
does not require a spark of originality Would result in monopolization of a public domain workMeshwerks, Inc.
v. Toyota Motor Sales U.S.A., Inc.528 F.3d 1258 (10th Cir. 2008)FACTS: Toyota engaged Meshwerks to create
digital models of its cars for their advertising campaign. While the first step in the digitization process is fairly
non-labor intensive, the remaining work of “sculpting” more intricate elements of the automobile was an
artisanal process involving nearly 80 to 100 hours of work per vehicle. Meshwerks sued Toyota because they
had contracted only for a one time use of its models. The district court granted summary judgement for
Toyota.SYNOPSIS OF RULE: “In assessing the originality of a work for which copyright protection is sought,
we look only at the final product, not the process and the fact that intensive, skillful, or even creative labor is
invested in the process of creating a product does not guarantee its copyrightability.DISCUSSION: The court
does not believe that Meshwerks digital wire frame sculptures constituted independent creations, rather they
were very good copied of Toyota's vehicles. The court, at Meshwerks' behest, relies on Ets-Hokin v. Skyy
Spirits, Inc. There, while the subject of the photographs were merely utilitarian objects (namely vodka bottles),
the court decided that elements of the pictures constituted enough originality for them to qualify for protection;
the plaintiff had made decisions regarding lighting, shading, angle, background and so forth. When the case
came back before the court of appeals it was because the trial court had found that the only element common
to both images was the vodka bottle itself which was non-copyrightable. The court here in Meshwerks, said that
the only common element here was the “car as car” and there were no discernible decisions made by the
plaintiff (absent were lighting,, shading, coloring, etc.)



103. Subject matter of copyright: Compilations and derivative works
(a) The subject matter of copyright as specified by §102 includes compilations and derivative
works, but protection for a work employing preexisting material in which copyright subsists does
not extend to any part of the work in which such material has been used unlawfully.
(b) The copyright in a compilation or derivative work extends only to the material contributed
by the author of such work, as distinguished from the preexisting material employed in the work,
and does not imply any exclusive right in the preexisting material. The copyright in such work is
independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of,
any copyright protection in the preexisting material.
Definitions:Derivative Work: a work based upon one or more preexisting works...which as a whole, represent
an original work of authorship.
1.
Batlin & Sons, Inc. v. Snyder
536 F.2d 486 (2d Cir.)(1976)FACTS: Snyder had arranged for an overseas company to make and import
plastic Uncle Sam banks to the U.S. He received a copyright on the item as a sculptural work. Based on this
copyright, U.S. Customs stopped a shipment of similar banks from coming into the U.S., banks which had been
order by Batlin. Because the idea of the Uncle Sam bank is in the public domain, and this idea is what Snyder
admittedly based his own design, Batlin challenges the grant of copyright.DISCUSSION: The court found that
Snyder's work was not sufficiently original to constitute a copyrightable work. Court cites Alva Studios case
about the “Hand of God”, applying the “sweat of the brow” [16] [17]: principle to afford protection. Court held the
standard of originality was not met because the variations were merely trivial and that the physical skill and
special training to convert the cast iron bank were insufficient to support copyright.DISSENT Disagrees with the
majority's determination that the changes were trivial because they were dictated my material/engineering
concerns. The dissent rightly points out that even miniscule, inadvertent changes from the original work would
be enough to establish originality (see Alfred Bell)Entertainment Research Group, Inc. v. Genesis Creative
Group122 F. 3d 1211 (9th Cir. 1997)FACTS: ERG designed and created 3D inflatable costumes based on 2D
cartoons (for example, a costume of Cap'n Cruch). ERG entered into an agreement with Genesis to market and
distribute their costumes, however, when Genesis entered into an agreement with one of ERG's competitor,
ERG sued for violation of copyright in the costumes. District court found for DSYNOPSIS OF
RULE:Durham test
1.
2.
To support a copyright, the original aspects of a derivative work must be more than trivial
The original aspects of a derivative work must reflect the degree to which it relies on
preexisting material and must not in any way affect the scope of any copyright protection in
that preexisting material.
Also, in evaluating originality, any differences that exist because of functional or mechanical considerations
should not be considered.DISCUSSION: P wanted court to apply the Doran test: Where a derivative work is
based on a work in the public domain, the proper test for copyright-ability is whether the form of the original
work and that of the derivative work differ substantially (from 2D drawing to 3D inflatible sculpture, etc); if so,
the derivative work is copyrightable The court rejected this test, because unlike in Doran, the underlying work
here was not in the public domain. Instead the court relies on the Durham test (which involved the copyrightability of 3D reproductions of Disney characters: court held the toys did not display sufficient originality because
copying from one medium to another requires nothing more than physical as compared with artistic skill).Pickett
v. Prince207 F.3d 402 (7th Cir. 2000)DISCUSSION: §103 of the Copyright Act grants exclusive rights to
copyright owner to prepare derivative works. Pickett could not make a derivate work (a guitar) based upon the
Prince symbol w/o Prince’s permission, even if the new work had some originality. Furthermore, Prince is the
exclusive owner of any unlawfully prepared derivative works (i.e. gets a copyright on the Prince symbol guitar.
1.
The Right to Prepare Derivative Work - 24 pgs.
Section 103(a) of the Copyright Act makes clear that derivative works meeting the statutory standards of § 102
are themselves independently copyrightable and the examples in the definition supplied by §101 indicates that
the de minimis transformation of the underlying work can result in a derivative work.Per House Report
accompanying the 1976 Act:To constitute a violation of section 106(2), the infringing work must incorporate a
portion of the copyright work in some form; for example, a detailed commentary on a work or a programmatic
musical composition inspired by a novel would not normally constitute infringements under this clause.'Castle
Rock Entertainment, Inc. v. Carol Publishing Group, Inc. 150 F.3d 132 (2d Cir. 1998)FACTS: Plaintiff
Castle Rock is the copyright owner of the television series Seinfeld. Defendant Beth Golub wrote a
book of Seinfeld related trivia questions called “The Seinfeld Aptitude Test.”DISCUSSION: The court
employees the Quantitative/Qualitative test of substantial similarites. They find that quantitatively the
work borrows enough copyrightable elements to pass the de minimis threshold. Qualitatively, the work
also meets the threshold set forward by the test. It can not be said, the court determines, that the test
was merely a collection of “facts” because the questions come from :facts: which “owe their origin to
an act of authorship.” The defendants urge the court to employee the Total Concept and Fell test,
arguing that works don't have similar plots (the trivia book has no plot), pacing, theme, etc. However,
the court says that these differences necessarily result from the difference in genre and media. To
allow these differences to be dispositive would undermine the “derivative works” right.Warner Bros.
Entertainment, Inc. v. RDR Books575 F. Supp. 2D 513 (S.D.N.Y. 2008)FACTS: J.K Rowling owns the U.S.
copyright in the book series Harry Potter. Warner Bros. obtained from Rowling the exclusive motion
picture rights based on the series. Rowling also published (and owns the copyright) in two companion
books which serve to catalogue various creatures and characters from the series. Defendant RDR
Books was hoping to publish a book called “The Lexicon” which was to be basedon Seven Vander
Ark's website of the same name. The website was a encyclopedic collection of information from the site
including a list of spells, or characters, magical creatures, etc. Vander Ark was initially hesitant about
publishing a book based on the website, believing that it might infringe on Rowling's copyright,
however, he was assured by RDR (and later indemnified) that it would not be a violation. Many of the
entries on the lexicon's website are word for word quotes, sometimes without attribution, or very
similar paraphrasing of the source text.DISCUSSION: The court employes the qualitative/quantitative
analysis. The court finds that plaintiff's have met the prima facia case of infringement. Quantitatively,
the companion books are reproduced almost in their entirety. Qualitative, while an arrangement of facts
is protectable (Feist), a collection of fictional facts by a third party, without the authorization of the
copyright holder is not protectable.While the court agrees that there is an infringement of reproduction
rights, there is not, as the plaintiffs assert, a violation ofthe derivative work rights. The court place a
good amount of emphasis on the statutory language “A work is not derivative...simply because it is
“based upon” the preexisting works.” Guides, which unlike the one in Twin Peaks (i.e.which don't
provide an elaborate recounting in their plot synopsis”, “don't recast, transform, or adapt the things
which they are guides.” “By condensing, synthesizing, and reorganizing the preexisting material in an
A-Z reference guid, the Lexicon does not recast the material in a medium to retell the story of Harry Potter,
but instead gives the copyrighted material another purpose...to give readers a ready understanding of
individual elements in the elaborate world of Harry Potter. The Lexicon no longer represents the original
work of authorship and is therefore not a derivative work.Lewis Galoob Toys, Inc. v. Nintendo of
America, Inc.964 F.2d 965 (9th Cir. 1992)FACTS: Lewis Galoob Toys manufactured the Game Genie
device for use with the NES. The Game Genie operated by blocking bits of code from the NES
cartridges and replacing it with a new value.ISSUE: Does a derivative work need to be fixed in order to
infringe?DISCUSSION: Derivative works do not require fixation. The court holds that the Game Genie
does not create a derivative work because the resulting “work” is not fixed. These alterations,
occurring in the computer’s processor, remained unfixed, did not modify the data in the game
cartridge, and produced effects that were only temporary. The court found no violation of §106(2) - the
game wasn’t recast, transformed, or adapted and the Game Genie did not incorporate a portion of the
CR work in any form. These enhancing works do not replace the need for the original, unlike the
example of derivative works listed in the statute. Because they cannot stand on their own, they do not
harm the author. The device merely enhances the audiovisual display from Nintendo’s game. The fact
that there was a large market for the device does not enter into the analysis and has no bearing on
whether it’s an infringing work
1.
DMCA Rights – 18pgs
Prohibitions found in 17 U.S.C. § 1201:
Access protection measures
'[18]'
Rights protections measures
'[19]'
Individual acts of circumvention
Prohibition: §1201(a)(1)
Prohibition: None
Manufacturing or offering devices that
circumvent
Prohibition: §1201(a)(2)
Prohibition: §1201(b)
Section 1201(a)'s ban on circumvention of access controls is subject to a grant of rule making authority that
allows the Librarian of Congress, in consultation with the Copyright Office and the Department of Commerce, to
declare exemptions if it finds that particular users are “adversely affected by the prohibition under
[§1201(a)(1)(A)] in their ability to make noninfringing uses of a particular class of copyrighted works. Rule
making will occur every three years:2000 rules:
1.
2.
3.
4.
Literary works whose storage formats had malfunctioned or become obsolete
lists of filtering criteria employed by vendors of software designed to filter undesirable Internet
content 2003 rules:
Computer programs and video games in obsolete formats that require the original media or
hardware as a condition of accessible
literary works distributed in ebook format when all existing ebook editions containted access
controls that prevent the enabling of special access feature for the blind or visually impaired.
2006 rules:
1.
2.
3.
Audiovisual works included in libraries of college or university film/media studies
departments... for “education use in the classroom by media studies or film professors”
Computer programs that enable mobile phones to connect to wireless telephone networks,
“when circumvention is accomplished for the sole purpose of lawfully connecting” to a
network other than the one for which the phone was originally programmed.
Audio and audiovisual works distributed in CD format...when circumvention is accomplished
for food faith testing, investigating and correcting security flaws.
Chamberlain Group, Inc. v. Skylink Tech., Inc.381 F.3d 1178 (Fed. Cir. 2004)FACTS: The technology at issue
was a copyrighted "rolling code" computer program that constantly changed the transmitter signal needed to
open a garage door with the owner's garage door opener (GDO). The competitor's product was a transmitter
that activated the owner's GDO using this rolling code.SYNOPSIS OF RULE: 17 U.S.C. §1201 prohibits only
forms of access that bear a reasonable relationship the protections that the Copyright Act otherwise affords
copyright owners (taking into consideration fair use exceptions to those rights).A plaintiff alleging a violation of
§1291(a)(2) must prove:
1.
2.
3.
4.
5.
6.
Ownership of a valid copyright on the work
Effectively controlled by a technological measure, which has been circumvented
That third parties can now access
Without authorization, in a manner that
Infringes or facilitates infringing a right protected by the copyright because of a product that
The defendant either (1) designed or produced primarily for circumvention, or (2) made
available despite only limited commercial significance other than circumvention; or
(3) marketed for use in circumvention of the controlling technological measure.
DISCUSSION: The appellate court held that the competitor's accused device enabled only uses that copyright
law explicitly authorized, and was therefore presumptively legal. The owner neither proved nor alleged a
connection between the competitor's accused circumvention device and the protections that the copyright laws
afforded the owner that were capable of overcoming that presumption. The owner also failed to show the
necessary fifth element (of the above prima facia case) of its claim, the critical nexus between access and
protection.Lexmark International, Inc. v. Static Control Components, Inc. 387 F. 3d 522 (6th Cir. 2005)FACTS:
Lexmark manufactures printers with two programs on the (1) the toner loading program and the (2) Printer
Engine Program which is stored in the printer itself. Neither of the programs were encrypted. They also
manufacture two types of toner cartridges, one significantly cheaper than the other because it comes with a
shrink wrap agreement that says depleted cartridges must be sent back to Lexmark to be refilled exclusively by
them. In order to guarantee that their customers adhere to this, there is a authentication sequence between
printer and cartridge. Static Control Components, D, manufactures chips that replicate this “secret code” as well
as containing the Toner Load ProgramDISCUSSION: The DMCA requires that technological measure “control
access effectively” and thus it seems clear that this provision does not naturally extend to a technological
measure that restricts one form of access but leaves another route wide open. In order to be covered by the
DMCA a technological measure restricting use must be a use that creates a protected expression, not a purely
functional output.The Toner Loading Program was not protectable under Copyright. In concurrence, this is not
a narrow holding. Companies cannot use the DMCA to create monopolies on replacement parts.
1.
Distribution and Importation Rights – 19pgs
Capitol Records, Inc. v. Thomas579 F. Supp. 2D 1210 (D. Minn. 2008)FACTS: Defendant Jammie Thomas
was sued for allegedly downloading and distributing copyrighted sound recordings owned by plaintiff Capitol
Records on the peer-to-peer application known as Kazaa. The jury in the trial court found that Thomas had
violated both plaintiff's distribution right and reproduction rights and granted statutory damages. The jury
instruction which they received said that “The act of making copyrighted sound recordings available for
electronic distribution on a peer-to-peer network, without license from the copyright owner, violates the
copyright owner's exclusive right of distribution, regardless of whether actual distribution has been
shown.” The only evidence of distribution that the plaintiff produced was that it's agent, MediaSentry copied
songs from defendant. Defendant argued that “dissemination to an investigator acting as an agent for the
copyright owner cannot constitute infringement.SYNOPSIS OF RULE:
1.
2.
3.
The lawful owner of a copyright cannot infringe its own copyright. Olan Mills, Inc. v. Linn
Photo Co.
However, a copyright owner's authorization of an investigator to pursue infringement does
“not authorize the investigator to validate the 3rd party's unlawful conduct.
Plain meaning of distribution: the court says that Congress' decision not to include offers to
[sell, transfer ownership, rent, lease, etc] or the making available of the work indicates its
intent that an actual distribution or dissemination is required in §106(b); the plain meaning of
distribution does not mean “make available”
DISCUSSION: The court rejects the holding in Hotaling, opting instead for the plain meaning articulated above
which does not mean “make available.” The court stresses that P won't be without redress under this reading,
as an uploader may still be found liable for indirect infringement, and the downloader still be found liable for
direct infringement (subject to fair use defenses). The Charming-Betsy doctrine is inapplicable because
theWIPO treaty is not self executing other than through the Copyright Act.Hotaling v. Church of Jesus Christ of
Latter-Day SaintsSYNOPSIS OF RULE: “A library distributes a published work, withing the meaning of the
Copyright Act, when it places an unauthorized copy of the work in its collection, included the copy in its catalog
or index system, and makes the copy available to the public.”First Sale Doctrine 17 U.S.C. §109(a)If you
purchase (as opposed to license) a copyrighted work, the first sale doctrine permits you to resell that book or
load it to another, despite the copyright owner's distribution right. [20]Unauthorized Importation 17 U.S.C.
§602Requires the authorization of a the domestic copyright holder in order to import of copyrighted materials.
This prevents arbitrage (buying in one country at a low price that seller set in expectation that the buyer would
distribute in that country and reselling in another country for a higher price.)Vernor v. Autodesk, Inc.2009 WL
3187613 (W.D. Wash. Sept. 30, 2009)FACTS: Vernor sold stuff on eBay. He bought a number of AutoCAD
packages from Cardwell/Thomas Associates (“CTA”). CTA had purchased from Autodesk, who later sold CTA
an updated version at a discount. As part of that deal, CTA agreed to destroyed the originals, which they did
not do. The parties disagreed over whether Mr. Vernor has a first sale right to resell the Auto-CAD packages,
and they disagree over whether Mr. Vernor's sale are contributory copyright infringment.The court found for
Vernor on both questions.SYNOPSIS OF RULE:
1.
Wise: The court found ownership in each instance in which:
2.
3.
The transferee could, at his election, retain possession of of the transferred copy indefinitely,
and
The copyright holder had no right to regain possession [21]
DISCUSSION: Use of a software product can be licensed while the copies themselves are sold.
uses two test:
1.
2.
22
The court
Wise View: Designating an agreement as a “license” does not determine whether it transfers
ownership. Although an agreement that fails to include a clause reserving title in the
transferred copy to the copyright holder is suggestive of an ownership transfer, that failure is
not dispositive. Similarly, a single, up-front payment by the transferee for a particular copy is
suggestive of a transfer of ownership, but not dispositive. An agreement requiring the
transferee to destroy transferred copies is not dispositive of whether ownership is transferred.
There was one exception in Wise was the Redgrave contract. The court found that of all the
agreements that the Wise panel analyzed, the License is most analogous to the Redgrave
Contract, and thus the licensor transferred ownership in the copy.
The MAI Trio: The court finds the holding in the MAI trio to be irreconcilable with Wise, and
therefore follows follows Wise.
UMG Recordings, Inc v. Augusto558 F. Supp. 2D 1055 (C.D. Cal. 2008)DISCUSSION: The court looked past
the copyright owner's characterization of the transaction as “license” to the “economic realities of the
transaction” in line with the Wise holistic approach.
1.
Performance and Display – 17pgs
“The right of public performance is granted to copyright owners of “literary, musical, dramatic, and
choreographed works, pantomimes, and motion pictures and other audiovisual works.” 17 U.S.C.
§106(4)Section 101 defines “public performance” as”To perform or display a work “publicly means” (1) to
perform or display it at a place open to the public or at any place where a substantial number of persons
outside of a normal circle of a family and its social acquaintances is gathered; or (2) to transmit or otherwise
communicate a performance or display of the work to a place specified by clause (1) or to the public ' [22]', by
means of any device or process, whether the members of the public capable of receiving the performance or
display receive it in the same place or in separate places and at the same time or at different
times.EXCEPTION: Copyright owners of sound recordings are not granted a general public performance right,
but instead are granted a separate public performance right under §106(6); a public performance rights limited
to digital audio transmissions.Cartoon Network LP v. CSC Holdings, Inc.536 F.3d 121 (2d Cir. 2008)FACTS:
Cablevision unveiled a new service called “Remote Service DVR.” Before the service, content providers would
transmit their content to Cablevision who would retransmit to their customers. The new service passed the
transmission stream through two buffers, neither of which maintained the information in them for more than two
seconds. At the DVR subscriber's election, the stream could be redirected to Cablevision's Arroyo servers, a
partition of which was allocated to each subscriber. Cartoon Networks, one of Cablevision's content providers,
alleged that Cablevision's RS-DVR service would directly infringe their exclusive right to both reproduce (both
in the buffer and once memorialized on the Arroyo server) and publicly perform their copyrighted work. The
court ultimately finds for Cablevision.SYNOPSIS OF RULE: The use of a unique copy may limited the potential
audience of a transmission and is therefore relevant to whether that transmission is made “to the
public” [23]DISCUSSION: With regards to the alleged reproduce violation, the court said that the buffer copy was
not “fixed” for more than a transitory duration. With regards to the Arroyo reproductions, these were said to be
made by the Cablevision customers because only they provided the volitional conduct that caused them to be
created. Employing the rule above, the court held that “because the RS-DVR system, as designed, only makes
transmission to one subscriber using a copy made by that subscriber, we believe that the universe of people
capable of receiving the RS-DVR transmission is the single subscriber whose self-made copy is used to create
the transmission.Public DisplaySection §106 grants the right of public display to copyright owners of literary,
musical, dramatic, and choreographic works. Additionally, individual images of a motion picture are protect by
this right. Section §101 defines display as”To display a work means to show a copy of it , either directly or by
means of a film, slide, telvision image, or other device or process or, in the case of a motion picture or other
audiovisual work to show individual images nonsequentially.For example, in Ringgold v. Black Entertainment
Television, Plaintiff Ringgold sued because a poster of her work was used in the background of a television set,
and thus photographed as part of the television program. This was clearly a violation of her public display
rights. However, in Triangle Publications Inc. v. Knight Ridder Newspaper, Inc, the court held that the owners of
TV Guide could not prohibit a publisher of a competing guide from incorporating images of the TV Guide in their
advertisements because “the First Amendment encourages comparative advertising of the sort at
issue.”Section §109(c) allows the owner of a particular lawfully made copy of a work to, without the authority of
the copyright owner, “display their copy publicly to viewers present at the place where the copy is located.” This
is how museums get by.Perfect 10, Inc. v. Amazon.com, Inc.508 F.3d 1146 (9th Cir. 2007)FACTS: Google
image search allows users of Google to search for images on the internet. The results of the images search are
displayed as thumbnails. When a user clicks on the image, the use is directed to whichever 3 rd party computer
is hosting that image. Google's servers do not house any copies of the images. However, when the 3rd party
site is displayed, it is done so with a Google image search frame above the 3rd party site. Google also offers a
“cache” search. Google stores caches of previous versions of websites HTML code. It does not cache images
from sites. However if the owner of the cached site has removes the image from their current version of the
site, but not the image hosting location, cached HTML code could “retrieve” the image and display
it.SYNOPSIS OF RULE: Neither directing users to other image hosting servers nor providing the cached HTML
instructions is not equivalent to showing a copy.DISCUSSION: The court concluded that Google's display of
thumbnail images was fair use. It went on to say that Google's activities do not violate Perfect 10's right to
display (a full sized image image) because Google transmit or communicates only an address which directs a
user's browser to the location where a copy of the full-size image is displayed. While in-line linking and framing
may cause some computer users to believe that they are viewing a single Google webpage, the Copyright Act,
unlike the Trademark Act, does not protect a copyright holder against acts that cause consumer
confusion.United States v. ASCAP485 F. Supp. 2D 438 (S.D.N.Y. 2008)SYNOPSIS OF RULE: The court
expressly rejected ASCAP's argument that downloading constituted a public performance, instead
characterizing such activity as a reproduction.
1.
2.
Application of Reproduction and Derivative Work Rights to Specific Works
Characters – 8pgs
Metro-Goldwyn-Mayer, Inc. v. American Honda Motors Co.9900 F. Supp. 1287 (C.D. Cal. 1995)FACTS:
Honda, D, created an ad campaign for the Del Sol vehicles which features a spy character with a British accent
escaping from a man who appears to have metal arms that was chasing the spy in a helicopter. MGM, P,
argues that Ds violated their copyright in the James Bond characters as expressed and delineated in P's
sixteen films, not in the character itself. P contends that D's commercial infirnges in two ways (1) by reflecting
specific scenese from the 16 films, and (2) by the male protagonist's possessing James Bond's unique
character traits as developed in the film.SYNOPSIS OF RULE:
1.
2.
'Story Being Told test: A character is protectable if they “constitute the 'story being
told'” but not “if the character is only the chessman in the game of telling the
story.” Warner Bros. Pictures, Inc. v. Columbia Broadcasting System, Inc. [aka
the Sam Spade case.]
'Character Delineation test: Graphic characters are subject to a less stringent test for
protectability because “as a practical matter, a graphically depicted character is more
likely to be sufficiently fleshed out.” Walt Disney Productions v. Air Pirates
DISCUSSION: With regards to the claim of scenes being too similar, the court found that P was likely to
succeed in it's claim, because while the idea of a helicopter chase is not protectable, D's expression is
substantially similar to P's. “A plaintiff who holds copyrights in a film series acquires copyright protection as well
for the expression of any significant characters portrayed therein.” The court holds, therefore, that P's satisfy
the “ownership” prong of the test. The court holds that “the James Bond character is a copyrightable character
under either the story being told test of the character delineation test because James Bond has certain traits
which have been developed over time throught the sixteen films in which he appears ad the fact that so many
actors have played him, contrary to D's assertions, emphasizes how the character is bigger than any one man,
and thus sufficiently developed.Titan Sports, Inc. v. Turner Broadcasting Systems, Inc.981 F. Supp. 65 (D.
Conn. 1997)FACTS: Titan Sports, Inc. runs the WWF; TBS owns the WCW. The WWF employed Scot Hall and
created a character for him to portray called Razor Ramon. Razor Ramon had a specific style of dress, moves,
and personality created by Plaintiff. They also employed Kevin Nash, creating for him the alter-ego of Diesel
The court decided that there could be a set of facts for which relief could be granted and therefore denied the
motion for summary judgement.DISCUSSION: The owner of a copyright in various works embodying a
character can acquire copyright protection for the character itself. However, a plaintiff must still demonstrate
that the character was distinctively delineated in the plaintiff's work, and such delineation was copied in the
defendant's work. The protection is limited to the character as defined by performances in the copyrighted
works. Only a uniquely developed character with some degree of novelty is copyrightable. Copyright law does
not protect characters which are as a practical matter indispensable, or at least standard, in the treatment of a
given subject.Warner Bros. Pictures, Inc. v. Columbia Broadcasting Systems, Inc.216 F.2d 945 (9th Cir.
1954)DISCUSSION: “If Congress had intended that the sale of the right to publish a copyrighted story would
foreclose the author's use of its characters in subsequent work for the life of the copyright, it would seem that
Congress would have made specific the provision therefor.Walt Disney Productions v. Air Pirates581 F.2d 751
(9th Cir. 1978)DISCUSSION:Graphically depicted characters, those that are drawn, garner a kind of graph work
protection. Visually depicted characters in movies employing actors to portay the character may have more
difficulty in obtaining protection (see Titan Sports)
1.
' Compilations and Databases '25 – 19pgs
25 The EU Database Directive is aimed at protecting substantial investments (or “sweat off the brow”)
expended in creating a database. It establishes a two tiered system of protection:
1.
Requires EU Member States to provide copyright protection for databases that “by reason of
the selection or
Rule: The copyrightability of a compilation of facts depends on the selection and arrangement of those facts.
However, even when the arrangement or selection of data is sufficiently original, copyright protection in factual
compilations is described as “thin,” meaning that in order to infringe, the defendant must copy the compilation's
original elements (i.e, its selection or arrangement) exactly or almost exactly.Bellsouth Advertising & Publishing
Corp. v. Donnelley Information Publishing, Inc. 999 F. 2d 1436 (11th Cir. 1993)FACTS: Bellsouth, P, published
a yellow pages for the Miami area. Donnelley published a competing yellow pages for the same metropolitan
region. In order to expand their business, Donnellely engaged Appalacian Computer Services, Inc. (“ACS”) to
create a sales lead list based on the Bellsouth directory. ACS created a database by taking every business
listed in the Bellsouth directory and coding it by business name, address, telephone number, business type and
size of advertisement purchased in the Bellsouth directory.SYNOSIS OF RULE: - “To establish its claim of
copyright infringement, Bellsouth must prove (1) ownership of a valid copyright, and (2) copying of constituent
elements of the work that are original... BAPCO must prove that Donnelley, by taking the material it copied from
the BAPCO directory, appropriated BAPCO original selection, coordination or arrangement”DISCUSSION: The
Court didn’t find sufficient originality in the structure of the compilation headings to be protectable as it could
characterize as obvious, typical or commonplace. “The primary objective of copyright is not to reward the labor
of the author [sweat off the brow] but 'to promote the Progress of Science and the useful Arts.'”CCC Information
Services, Inc. v. Maclean Hunter Marketing Reports, Inc. 44 F.3d 61 (2d Cir. 1994)FACTS: Maclean Hunter
(“Maclean”) publishes the Red Book every few week which sets forth certain projections for the value of used
cars based on make, model, year, condition, etc. CC Information Services (“CCC”) operates a database which
averages the Red Book projections and “Blue Book” projections, from a separate publisherSYNOPSIS OF
RULE: Ideas fall into one of two categories, one protectable and one not:
1.
Those ideas which undertake to advance the understanding of phenomena or the solution of
problems
(such as the identification of the symptoms most useful to diagnosis a particular disease)
1.
Those that do not undertake to explain phenomena or furnish solutions, but are infused with
the author's taste or opinion (such as the effect of a pitcher’s form on whether a game will be
won or lost, or the valuations herein.)
DISCUSSION: The court disagrees with CCC that the Red Book is merely a collection of facts which only has a
thin copyright. The court also disagrees with the assertion that the valuations are uncopyrightable “facts.” The
court says that the valuations are unlike the phone numbers in Feist, but involved weigh a number of competing
factors in order to arrive at the ultimate valuation. Thus, the court says, these valuations are the original
creation of Maclean. The fact that an arrangement of data responds logically to the needs of the market for
which the compilation was prepared does not negate originality;Other aspects of the Red Book listings which
the court said were sufficient original to pass Feist's de minimis threshold including: (1) the selection and
manner of presentation of optional feature for inclusion; (2) the adjustment for mileage by 5,000 mile
increments (as opposed to using some other breakpoint and interval); (3) the use of the abstract concept of the
“average” vehicle in each category as the subject of the valuation; and (4) the selection of the number of years'
models to be included in the compilation.CDN Inc.v. Kapes197 F.3d 1256 (9th Cir. 1999)FACTS: Kapes runs a
coin shop, which trades in antique coins for collectors. He generated and posted a retail price list online which
was based on calculations involving certain wholesale prices that CDN Inc. has created. The court says
thatCDN's prices, which are compilations of data chosen and weighed with creativity and judgment, show
sufficient originality.arrangement of their content, constitute the author's own intellectual creation.
1.
Establishes a new right to prevent unauthorized extraction or re-utilization of the contents of
the database.
SYNOPSIS OF RULE: If prices are determined through the use of judgment and expertise, to distill and
extrapolate from factual data, then the prices are sufficiently original to be copyrightable.Matthew Bender & Co.
v. West Publishing Co.158 F.3d 693 (2d Cir. 1998)FACTS: Matthew Bender & Company Inc. manufactures
judical opinions stored on CD-ROMs. West publishes printed compilations of federal and state judicial opinions.
Bender included West's star pagination in their digital copies of the opinions. West argues that this allows users
of P's CDs to “perceive” West's copyrighted arrangement of cases. The court finds for Plaintiff
Bender.DISCUSSION: West concedes that the pagination of its volumes is determined by an automatic
computer program. Therefore, because they lack any degree of creativity, the page numbers themselves are
not copyrightable. West argues that theoretically one could use the pagination to reconstruct their copyrightable
arrangement. The court rejects this because it's not fixed on the CDs in this manner and that the arrangement
can only be perceived after a person uses the machine to rearrange the material.
1.
Pictorial, Graphic and Sculptural Works – 14pgs
Mazer v Stein347 U.S. 201 (1954)FACTS: Stein produced a sculpture of a nude which he registered with the
Copyright Office as a “work of art.” The statuette was later mass reproduced as used as the base of a lamp.
Mazer later copied the statuette and Stein sued for copyright infringement. Mazer argued that the statuette
when mass reproduced and used as a lamp base, wasn't the proper subject matter of copyright.SYNOPSIS OF
RULE: “A subsequent utilization of work of art in an article of manufacture in no way affects the right of the
copyright owner to be protected against infringement of the work of art itself.”Useful Articles and Determining
SeparabilityCongress sought to codify Mazers holding in the 1976 Act's definition of “pictorial, graphic,
and sculptural works.” Section 101 states in part:Such works shall include works of artistic craftsmanship
''insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful
article '''''[24]''...'' shall be considered a pictorial, graphic, or sculptural work only if,...design incorporates pictorial,
graphic, or sculptural features that can be identified separately from, and are capable of existing
independently of , the utilitarian aspects of the article. According to the House Report:“The test of
separability and independence from the utilitarian aspects of the article” does not depend upon the nature of
the design – that is, even if the appearance of an article is determined by esthetic (as opposed to functional)
considerations, only elements, if any, which can be identified separately from the useful article as such
are copyrightable. And even if the three-dimensional design contains some such element (for example, a
carving on the back of a chair or a floral relief design on silver flatware), copyright protection would extend only
to that element, and would not cover the over-all configuration of the utilitarian article as such.”Summary
of Separability Theories:
1.
2.
3.
Physical Separability – elements, either alone or in combination, which are capable of
independent existence as a copyrightable pictorial, graphic or sculptural work apart from the
utilitarian aspect
Conceptual Separability – if design elements reflect a merger of aesthetic and functional
considerations, the artistic aspects of a work cannot be said to be conceptually separable
form the utilitarian aspects and vice versa (Kieselstein, Carol Barnhart)
Design Process – separability only if the designer is able to make aesthetic choices that are
unaffected by functional considerations. (Brandir)
Kieselstein-Cord v. Accessories by Pearl, Inc.632 F. 2d 989FACTS: Kieselstein-Cord (“KC”) designs
handcrafted belt buckles which have been displayed in the Met, and were registered with the Copyright Office
as “jewelry.” Pearl copied the belt buckle and was sued. They argue that the KC's buckles were not
copyrightable because of lack of separability from utilitarian and aesthetic elements.SYNOPSIS OF RULE:
Separability may be either “physically or conceptually.”DISCUSSION: “We see in appellant's belt buckles
conceptually separable sculptural elements, as apparently have the buckles' wearer who have used them as
ornamentation for parts of the boy other than the waste. The primary ornamental aspect of the Vaquero and
Winchester buckles is conceptually separable from their subsidiary utilitarian function...Pieces of applied art,
these buckles may be considered jewelry, the form of which is subject to copyright protection...The basic
requirements of originality and creativity, which the two buckles satisfy and which all works of art must meet to
be copyrighted, would take the vast majority of belt buckles wholly out of copyright-ability”Carol Barnhart Inc. v.
Economy Cover Corp.773 F.2d 411 (2d. Cir. 1985)FACTS: Barnhart created plastic forms of the human torso
for displaying clothing, etc. Economy Cover Corp. copied Barnhart's forms. The court determines that the forms
do not “posses aesthetic or artistic features which are physically or conceptually separable from the forms use
as utilitarian objects to display clothes.”DISCUSSION: “What distinguishes those buckles [in Kieselstein-Cord]
from the Barnhart forms is that the ornamented surfaces of the buckles were not in any respect required by
their utilitarian functions; the artistic or aesthetic features could thus be conceived of as having been added to,
or super imposed upon, an otherwise utilitarian article”DISSENT: “For the design features to be “conceptually
separate” from the utilitarian aspects of the useful article that embodies the design, the article must stimulate in
the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function...I think
the relevant beholder must be that most useful legal personage – the ordinary reasonable observer”Brandir
International , Inc. v. Cascade Pacific Lumber Co. 834 F.2d 1142 (2d Cir. 1987)FACTS: Steven Levine formed
a sculptural piece from wire. That piece later inspired him to create the “Ribbon Rack,” a functional and
aesthetic bike rack. He tried to copyright it, and was denied by copyright office.SYNOPSIS OF RULE: The court
applies the Denicola test of conceptual separability:
1.
2.
If design elements reflect a merger of aesthetic and functional considerations, the artistic
aspects of a work cannot be said to be conceptually separable form the utilitarian aspects
and vice versa.
Alternatively, if the design elements reflect the designer’s artistic judgment independent of
functional considerations, there is conceptual separability.
DISCUSSION: The Ribbon rack is not copyrightable because its aesthetic aspects are just a product of
industrial design, therefore, no conceptual separability exists. Court found the form of the rack was significantly
influenced by functional concerns so that the artistic elements were not conceptually separate from the
utilitarian Even though the rack may be admired for its aesthetic qualities alone, it remains nonetheless a
product of industrial designForm and function were inextricably intertwined in the rack, and its form was
dictated as much by utilitarian choices as by aesthetic concernsDISSENT: The dissent would have applied the
same test the dissent in Carol Barnhart used, consider how a reasonable person would view the conceptual
separability. Put another way, whether the design of a useful object, however intertwined with its functional
aspects, is perceived as an aesthetic concept not related to the article’s function
1.
Computers – 14pgs
The literal text of source and object code are protected by copyright. Courts say the “non-literal aspects”
of a program are protectable, in a similar way to literary works (i.e. protected both literally and abstractly) (see
CA, Inc. quoting Nichols) Computer Associates International, Inc. v. Altai, Inc.982 F. 2d 693 (2d Cir.
1992)FACTS: Computer Associates (“CA”) created a program called CA SCHEDULER. With this program was
a module called ADAPTER which allows CA SCHEDULER to interface with various operating systems. A
programer left CA to go work for Altai and took some of his code along with him. He modified Altai's version of
CA SCHEDULER, ZEKE, to interface with other operating by using a modified version of ADAPTER, OSCAR.
The Altai programs were not literally similar.SYNOPSIS OF RULE:
1.
2.
3.
Abstraction: Dissect the allegedly copied program's structure, in a manner that resembles
reverse engineering, and isolate each level of abstraction contained there in (at each
module).
Filtration '[25]': Examine the structural components at each level of abstraction to determine if
they:
1. Were dictated by consideration of efficiency [26], so as to be necessarily
incidental to the idea.
2. Required by factors external to the program itself [27], or
3. Taken from the public domain and are hence non-protectable expression
Comparison: Comparing the residual elements, after filtration, of the program at each level
of abstraction. In computer cases, it is up to the trial court whether experts can be used
and Arnstein's layperson rule doesn't apply.
DISCUSSION: Before getting into the test above, the court first addresses the idea v. expression dichotomy in
light of Baker v. Selden (about the accounting forms) and Whelan. The court recognizes that computer
programs present a unique challenge. “The line between idea and expression may be drawn with reference to
the end sought to be achieved by the work in question. In other words, the purpose or function of a utilitarian
work would be the work's idea, and everything that is not necessary to the purpose or function would be part of
the expression of the idea.” Ultimately the court finds this idea/expression unworkable in the context of
computer programs. The court then creates the three step test above.Softel, Inc. v. Dragon Medical and
Scientific Communications, Inc. 118 F. 3d 955 (2d Cir. 1997)FACTS: Softel, P, and Dragon Medical and
Scientific Communication, Inc., D, were in a long term business relationship in which P created certain
programs for D. The relationship ended up souring and the parties parted ways. After separating, Dragon
created its own programs which P believe were significantly similar to their programs.SYNOPSIS OF RULE:
Even if, in applying the “abstraction-filtration-comparison” test a program is found to be made up of wholly
unprotectable individual elements.modules, their organization can be protected.DISCUSSION: The court uses
the Altai “abstraction-filtration-comparison.” The test, the court says, shows that “allegations of infringement
based on similarities in architecture cannot be ignored merely because many or all of the design elements that
make up that architecture are not protectable when considered at the lower level of abstraction.” “Even if there
were a few ways to design such a program, it does not seem likely that Dragon would have to use an identical
structure and copy approximately fifteen out of fifteen comands.” They held that the trial court erred in not
conducting the Altai analysis at the highest level of abstraction. They say, “an original arrangement of
uncopyrightable or public domain works – even facts – is as a compilation in the computer context as it is
elsewhere in copyright law. Thus, individual program elements that are “filtered” out at one level may be
copyright when viewed as part of an aggregate of elements at another level of abstraction.” Here, “the court
credited Dragon's expert testimony that each of the four design elements was pervasively used in the industry,
but did not address the issue of whether the choice and combination of the elements was commonplace.”
Direct, Contributory and Vicarious Infringement[edit | edit source]
1.
Traditional – 34pgs
Direct
Infringement
Strict liability
Contributory
Infringement
A defendant will be a guilt of contributory liability if they:1. Have knowledge of the
infringing activity; and2. Induce, cause or materially contribute (Visa) to the infringing
conduct of another.
Vicarious
Infringement
A defendant will be a guilt of vicarious liability if they:1. Have the right and ability to
control the infringing activity; and2. Have a direct financial interest [28]in such activity.
NOTE: In UMG Recordings, Inc. the court expressed disfavor with liability for vicarious support of vicarious
infringers.Religious Technologies Center v. Netcom On-Line Communication Services, Inc. 907 F. Supp. 1361
(N.D. Cal. 1995)FACTS: Plaintiff Religious Tech Center own the copyright in publications related to
Scientology. Defendant Erlich was critical of the church and shared his criticism on a internet bulletin board
system (“BBS”). Erlich also posted parts of the copyrighted work on the BBS run by Defendant' Klemesrud
called “support.com.” Klemesrud's BBS connected to the internet through Defendant Netcom.SYNOPSIS OF
RULE:
1.
2.
Direct infringement doesn't require intent or particular mens rea, but willfulness affects the
award of stat. damages.
That there are infringing copies of the work stored on D's system which are retransmitted to
other servers, does not evidence direct infringement by the BBS operator of the right
to reproduce the work if uploaded by a 3rd party
Fonovisa Inc. v. Cherry Auction, Inc.76 F.3d 259 (9th Cir. 1996)FACTS: Cherry Auction, Inc, D, ran a large
swap meet. Vendor's paid D a fee to rent stalls at the meet; shoppers paid an entrance fee; and D covered the
expense of providing parking, etc. A number of vendors were selling infringing copies of Fonovisa's sound
recordings.SYNOPSIS OF RULE:
1.
2.
Even in the absence of an employer-employee relationship one may 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.
“[O]ne who, with knowledge of the infringing activity, induces, causes or materially
contributes to the infringing conduct of another, may be held liable as a contributory
infringer.” Gershwin.
DISCUSSION:With regards to the first element of vicarious liability, the court says that D had the right to
terminate vendors for any reason whatsoever and through that right had the ability to control the activities of
vendors on the premises. With regard to financial interest, the court said that “the sale of pirated recordings and
Cherry Auction swap meet is a “draw” for customers, [just as] the performance of pirated music in the dance
hall cases and their progeny. Plantiff have stated a claim for vicarious copyright infringement.The court then
examines the claim of contributory infringement. On the element of material contributions, the court says: “it
would be difficult for the infringing activitiy to take place in the massive quantities alleged without the support
service provided by the swap meet. These services include, inter alia, the provision of space, utilities, parking,
advertising, plumbing and customer.” The element of knowledge was not contested. The court says this is
therefore sufficient to establish contributory negligence.Perfect 10, Inc. v. Amazon.com, Inc. 508 F. 3d 1146
(9th Cir. 2007)SYNOPSIS OF RULE:
1.
2.
Contributor Liability: “A computer system operator can be held contributory liable if it
'has actual knowledge that specific infringing material is available using its system, and can
'take simple measure to prevent further damage' to copyrighted works, yet continues to
provide access to infringing works.” Napster, Netcom
'Vicarious Liability: “A plaintiff must establish that the defendant exercises the
requisite control [29] over the direct infringer and that the defendant derives a direct
financial benefit from the direct infringement.”
DISCUSSUION: “One who, with knowledge of the infringing activity, induces, causes or materially contributes
to the infringing conducts of another may be held liable as a 'contributory' infringer.” Gershwin Publishing Corp.
v. Columbia Artists Management, Inc.“If a computer system operator learns of specific infringing material
available on his system and fails to purge such material from the system, the operator knows of and contributes
to direct infringement.” Napster. Here the court said that if Google had knowledge of the infringement, the fact
that the directed customers to the 3rd party sites met the burden of “material contribution.With regard to the
vicarious liability charge, the court said that Google did not have the requisite legal authority to stop 3 rd party
infringers. Nor, said the court did they have the practical ability. The current technology did now allow Google to
compare the allegedly infringing images against a database of copyrighted works to determine if there was
infringement.Perfect 10, Inc. v. Visa International Service Association494 F.3d 788 (9th Cir. 2007)FACTS:
Perfect 10, Inc., P, is suing Visa, D, because Visa because the process payment for websites which are
infringing P's copyright. P had previously alerted D of the infringing sites. P hopes to hold D liable for
contributory and vicarious infringement.DISCUSSION: With regards to the contributory infringement, the court
says that there is insufficient evidence of material contribution. “Perfect 10 has not alleged that any infringing
material passes of P's payment networks, or that D's systems are used to alter or display the infringing images,
nor are D's systems used to locate the infringing images (like inAmazon.com)...While P has alleged that D
makes it easier for websites to profit from this infringing activity, the issue here is reproduction, alteration,
display and distribution., which can occur without payment. Even if infringing images were not paid for, there
would still be infringement. [Thus] there is an additional step in the causal chain...D makes it easier to for
infringement to be profitable, which tends to increase financial incentive to infringe, which in turn tends to
increase infringement.” The court says that this is not sufficient to prove material contribution, or in turn
contributory liability.”With regards to the allegation of vicarious copyright infringement, the court says that D did
not have the right and ability to control the infringing activity. Relying on Amazon.com, the court says that
Google's right to terminate an AdSense partnership does not give Google the right to stop direct infringement
by third party websites. Likewise here, D has no ability to directly control the activity, and the mere ability to
withdraw a financial “carrot” does not create the “stick” of “right and ability to control” that vicarious infringement
requires.Employer/Employee LiabilityAccording to Nimmer on Copyright, an employee is not personally liable
for infringement if the infringing “act was required of him as a part of the duties of his employment, and if,
further, he was not permitted to exercise discretion, judgement or responsibility in the conduct of such duties.
However, an employee who in the exercise of his authority commits or determines that his employer (corporate
or otherwise) shall commit an act that constitutes an infringement will be held jointly and severally liable with his
employer.Device Manufactures and Liability for Inducing Infringement
Sony Corp. of America v.
'Universal City Studios,
Inc.464 U.S. 417 (1984)
“The sale of copying equipment does not constitute contributory infringement if
the product is widely used for legitimate, unobjectionable purposes. Indeed, it
need merely be capable of substantial non-infringing uses.”
A&M Records, Inc. v.
Napster, Inc.
“Once Napster had been notified of specific infringing files being traded on its
system, it could be held contributorily liable for infringing the copyrights in those
works...Absent
239 F.3d 1004 (9th Cir.
2001)
specific information which identifies infringing activity, a computer system
operator cannot be liable for contributory infringement merely because the
structure of the system allows for the exchange of copyright material.”
In re Aimster Copyright
'Litigation334 F. 3d643
(7th Cir. 2003)
Aimster's encryption-based strategy amounted to willful blindness, and could not
be used to avoid contributory infringement liability. In light of Aimster's software
tutorial, which the court characterized as an “invitation to infringement,” Aimster
had the burden to show that its service currently had substantial non-infringing
uses, and to provide “evidence concerning the frequency of such uses. However,
the court suggested that even if Aimster produced sufficient evidence of noninfringing uses, to avoid liability it also would need to “show that it would have
been disproportionately costly to eliminate or substantial reduce the infringing
uses.
Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd. 545 U.S. 913 (2005)FACTS: In the wake of Napster's
demise, two companies began to create replacement programs, namely Grokster and Morpheus. The
companies sent targeted ads to former Napster users highlighting the similar functions and uses of their
products and Napster's.SYNOPSIS OF RULE:
1.
2.
“Advertising an infringing use or instructing how to engage in an infringing use, shows an
affirmative intent that the product be used to infringe, and a showing that infringement was
encouraged overcomes the law's reluctance to find liability when a defendant merely sells a
commercial product suitable for some lawful purpose.”
“One who distributes a device with the object of promoting its use to infringing copyright, as
shown by clear expression or other affirmative steps taken to foster infringement, is liable for
the resulting acts of infringement by thirds parties.” [30]
DISCUSSION: “Nothing in Sony requires courts to ignore evidence of intent if there is such evidence, and the
case was never meant to foreclose rules of fault-based liability derived from the common law.” “Where an
article is 'good for nothing else' but infringement...there is no legitimate public interest in its unlicensed
availability and there is no injustice in presuming or imputing an intent to infringe.”
1.
Section 512 – 14pgs
Generally, §512 establishes “safe harbors” that provide immunity [31] from infringement liability under certain
circumstances for a s “service provider” [32] that engages in the following activities:
To avoid liability...
1. Transitory digital
network communications
Section §512(a)
(a) The transmission must be initiate by someone other than the OSP and must
be carried out through an automatic process(b) The OSP must not select the
recipient except through an automatic process(c) The OSP must not maintain a
copy accessible to anyone other than the recipients (d) The OSP must transmit
the material without modifying its content.
2. System cachingSection
§512(b)
(a) The cached material must be made available by someone else, transmitted
from that person to the recipients at the recipient's direction and the storage is
automatic, AND(b) The OSP must further comply with “conditions” imposed by
the copyright owner (including password protection and deadlines for
refreshing or updating the cached copy), AND(c) The OSP must disable access
to cached material upon notice that a court has ordered the cached material
removed from the originating website.
3. Storing information on
its systems at the direction
of users Section §512(c)
(a) The OSP must designate an agent to receive notification of claimed
infringement from copyright owners [33], file that designation with the Copyright
Office, and make it publicly available.(b) The OSP must not have “actual
knowledge” that the material is infringing or “awareness of facts or
circumstance from which infringing activity is apparent.(c) If the OSP does have
knowledge, they must act quickly to remove/disable access to the material.(d)
The OSP must not obtain a “financial benefit directly attributable to the
infringing activity, in a case in which the service provide has the right and ability
to control such activity.
4. Providing information
location tools like hypertext
linksSection §512(d)
(a) The OSP must designate an agent to receive notification of claimed
infringement from copyright owners, file that designation with the Copyright
Office, and make it publicly available.(b) The OSP must not have “actual
knowledge” that the material is infringing or “awareness of facts or
circumstance from which infringing activity is apparent.(c) If the OSP does have
knowledge, they must act quickly to remove/disable access to the material.(d)
The OSP must not obtain a “financial benefit directly attributable to the
infringing activity, in a case in which the service provide has the right and ability
to control such activity.
Responsibilities under §512:
Complaining Party
OSP
Notice of infringement to OSP
must include contact information
for the complaining party; must
identify the allegedly infringing
material with information
sufficient to permit OSP to locate
it; and must state that the
complaining party “has a good
Upon receipt of a notice from the
complaining party, the OSP must move
expeditiously to remove the infringing
material. If the OSP decided to remove
the material, it must take reasonable
steps to promptly notify the subscriber
of the removal. §512(h) provides a
subpoena mechanism to get subscriber
information by court order. [34]Upon
receipt of a counter notification, the
OSP must notify the complaining party
Subscriber
If the subscriber wishes, he or
she may furnish a
counternotification that
identifies the material; states
under penalty of perjury that
the subscriber has a good faith
belief that it was removed by
mistake
faith belief” that the material is
unauthorized.
and must restore the material within 10
business days unless it first receives
notice that a lawsuit has been filed.
Fair Use and the First Amendment[edit | edit source]
1.
Introduction
Statutory Limitations on Exclusive Rights:
Simple Bright Line Rules
Complex and Technical Bright Line
Rules:.
Fair Use:
Examples:1. Section §114(a): The
reproduction and derivative work
rights belonging to the copyright
owner of a sound recording do not
include “sound alike recordings”2.
Section §109: The first sale doctrine
says that the right of public
distribution does not include the
subsequent sales or, for most
works, rentals, after the copyright
owner has parted with title to a
particular copy of a work.
Examples:1. Section § 110(5)(B):
which allows certain small businesses
to play nondramatic musical works by
turning on the radio or television
despite the public performance right.2.
Section § 114(d): Which allows certain
types of digital audio transmissions of
sound recording despite the rights
granted in §106(6)3. Section § 111:
Which allows for certain broadcast
retransmissions despite the public
performance right.4. Section § 512:
Which allows for certain temporary
copies to be created by ISPs.
Examples:Section §107
confers upon the cours the
ability to decide whether a
particular activity should be
within the copyright holders
rights or if that particular use
is subject to “fair use
exceptions”
Folsom v. Marsh9 F. Cas. 342 (C.C.D. Mass. 1841)FACTS: P had written a twelve volume, 7,000 page
biography of President Washington D had copied 353 pages from P's work to create a two volume work. The
court rejected a “fair abridgment” claim and in doing so laid the foundation of the US fair use
doctrine.DISCUSSION: “In short, we must often, in deciding questions of this sort, look to the nature and
objects o the selections made, the quantity and value of the material used, and the degree in which the use
may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.”Section §107.
Limitation on exclusive rights: Fair use:Not withstanding the provision of section 106 and 106A, the fair use of a
copyrighted 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. In
determining whether use made of a work is any particular case is a fare use the factor to be considers shall
include:
1.
2.
3.
4.
5.
'the purpose and character of the use, including whether such use is of a commercial
nature or is for nonprofit education purposes – MOST IMPORTANT
'the nature of the copyrighted work
'the amount and substantiality of the portion used in relation to the copyrighted work as
a whole; and
'the effect of the use upon the potential market for or value of the copyrighted work.MOST IMPORTANT
Public Discourse
Harper & Row, Publisher, Inc. v. Nation Enterprises 471 U.S. 539 (1985)FACTS: After President Ford left office
he entered into a publishing agreement with Harper Row, P, for his autobiography.As his memoirs were
nearing completion, P, negotiated a prepublication licensing agreement with Time magazine, whereby Time
would have the exclusive right to publish approximately 7,500 words of the autobiography in their magazine
before publication. Before this occurred, however, The Nation, a competing publication receive the advance
copy of the memoirs and published certain sections about the Watergate scandal and Ford's pardon of Nixon.
This caused Time to cancel the purposed prepublication and not pay the $12,5K advance they had agreed
to.DISCUSSION:Purpose of Use: The Nation when beyond simple reporting uncopyrightable information and
actively sought to exploit the headline value of its infringement, making a “news event” out of its unauthorized
first publication of a noted figure's copyrighted expression. The Nation's use had not merely the incidental effect
but the intended purpose of supplanting the copyright holders's commercially valuable right of first publication.
“Fair use presupposes 'good faith' and 'fair dealing'Nature of Work: The fact that the plaintiff's work is
unpublished...is a factor tending to negate the defense of fair use. [35] The authors right to control the first public
appearance of his expression weighs against such use of the work before its release. The fact that the author is
a public figure does not create a special fair use exception. The law generally recognizes a greater need to
disseminate factually works than works of fiction or fantasy.Amount Used: The Nation took what was
essentially the heart of the book. A taking taking may not be excused merely because it is insubstantial with
respect to the infringing work. In view of the expressive value of the excerpt ant their key role in the infringing
work, SCOTUS could not agree with the CoA that the “magazine took a meager, indeed infinitesimal amount of
Ford's original language.”Effect upon Potential Market '[36]: To negate fair use one need only show that if
the challenged use “should become widespread, it would adversely affect the potential market for the
copyrighted work. This inquiry must take account not only of harm to the original but also of harm to
the market for derivative works.Castle Rock Entertainment v. Carol Publishing Group, Inc. 150 F. 3d 132
(2d Cir. 1998)DISCUSSION:Purpose of Use '[37]: The The SAT's use is commercial, at most, “tends to weigh
against a finding of fair use.” Campbell. The court said that any transformative purpose possessed by The
SAT is slight to non-existant. The SAT's author, described th trivia quiz book not as a commentary or
a Seinfeld research tool, but as an effort to “capture Seinfeld's flavor in quiz book fashion. A secondary work
need not necessarily transfrom the original work's expression to have a transformative purpose.Nature of
Work: The scope of fair use is narrower to fiction works, such as Seinfeld, than to factual work.Amount Used
'[38]: The facts here weigh against fair use.Effect upon Potential Market '[39]: Unlike parody, criticism,
scholarship news reporting, or other transformative uses, The SAT substitutes for a derivative market that a
television program copyright owner such as Castle Rock “would in gneral develop or license other to develop.
Although Castle Rock has evidence little if any interest in exploiting this [Seinfeld trivia] market...the copyright
law must respect that creative and economic choice.Núňez v. Caribbean International News Corp. (El vocero
de Puerto Rico) 235 F. 3d 18 (1st Cir. 2000)FACTS: Núňez, P, was a photographer and took modeling pictures
of Miss Puerto Rico, including one nude. There pictures leaked and there was an intense public debate
regarding the appropriateness of this conduct my Ms. Puertor Rico. El vocero published the pictures without
permission.DISCUSSION:Purpose of Use: El Vocero did not manufacture newsworthiness, as it sought not to
“scoop” appellant by publishing his photograph, but merely to provide news reporting to a hungry public. El
Vocero did not merely “supersede the objects of the original creation,” but instead used the works for “a further
purpose” giving them a new “meaning or message” It is this transformation of the works into news – and not the
mere newsworthiness of the works themselves – that weighs in favor of fair use under the first factor of §107.
Appellee's good faith also weighs in its favor on this prong of the fair use test...(1) El Vocero attributed the
photographs to P, (2) El Vocero obtained each of the photographs lawfully. In sum, the highlighting of the
photograph on the front cover of El Vocero exposes the commercial aspect of the infringing use, and counts
against appellee. However, the informative nature of the use, appellee's good faith, and the fact that it would
have been difficult to report the news without reprinting the photograph suggest that on the whole, this factor is
either neutral or favors a finding of faire use. Nature of Work: The photos could be categorized either as
factual or creative. Given the difficulty of characterizing the “nature” of the photographs, the court find that the
impact of their creativity on the fair use finding is neutral. The works were not “unpublished” in the same way
as Harper & Row, they were hardly confidential or secret, as was Ford's manuscript.Amount Used: El
Vocero admittedly copied the entire picture; however, to copy any less than that would have made the picture
useless to the story. As a result, this factor was of little consequence to the Court's analysis. Effect upon
Potential Market: Because the only discernible effect of the publication in El Vocero was to increase demand
for the photograph, and because any potential market for resale directly to the newspaper was unlikely to be
developed, this factor favors a finding of fair use.Bill Graham Archives v. Dorling Kindersley Ltd.448 F.3d 605
(2d Cir. 2006)FACTS: Dorling Kindersley (“DK”) published a visual retrospective of the Grateful Dead
called Greatful Dead: The Illustrated Trip. Dk attempted to license a handful of posters from Bill Graham
Archives (“BGA”) but they two parties couldn't agree on a price [40]. DK then proceeded to use the posters
anyways.DISCUSSION:Purpose of Use: DK's actual use for each image is transformatively different from the
original expressive purpose. Courts have frequently afforded fair use protection to the use of copyrighted
material in biographies, recognizing such works as forms of historical scholarship, criticism, and comment that
require incorporation of original source material for optimum treatment of their subjects. The fact that DK
significantly reduced the size of the reproduction weighs in favor of a fair use finding. DK's collage layout
ensures that the images at issue are employed only to enrich the presentation of the cultural history of the
Grateful Dead, not to exploit copyrighted artwork for commercial gain... BGA's images constitute an
inconsequential portion of Illustrated Trip. The extent to which unlicensed material is used in the challenge work
can be a factor in determine whether a biographer's use of original material has been sufficiently
transformative. Regarding the fact that Illustrative Trip was a commercial use, the issue is not whether the sole
motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted
material without paying the customary price.Nature of Work: The creative nature of artistic images typically
weighs in favor of the copyright holder, but when it is used for transformative purposes, this factor is less
significant.Amount Used: Even though the copyrighted images are copied in their entirety, the visual impact of
their artistic expression is significantly limited because of their reduced size.Effect upon Potential
Market: Impairment must be demonstrated to a traditional market, not a transformative market. A copyright
holder cannot prevent others from entering fair use markets merely “ by developing or licensing a market for
parody, news, reporting, education or other transformative uses of its own creative work. Castle Rock.NOTE:
In Ty, Inc. v. Publications Int'l Ltd. the court held that complementary copying is fair but substitutional is not.
1.
Transforming Creative Works
Campbell v. Acuff-Rose Music, Inc.510 U.S. 569 (1994)FACTS: Roy Orbison write a song called “Oh Pretty
Woman” and sold the copyright to Acuff-Rose Music, P. Campbell, D, was a member of the rap group 2 Live
Crew. They, D, initially approached P to get a license to do a parody version of the song, to which P refused.
After they were rebuffed, they went ahead and published their parody version anyways.DISCUSSION: The fair
use doctrine ...requires courts to avoid rigid application of the copyright statute when...it would stifle the very
creativity which the law is designed to foster. The four statutory factors [may not] be treated in isolation, one
from another. All are to be explored, and the results weighted together, in light of the purposes of
copyright.Purpose of Use '[41]: Parody has an obvious claim to transformative value. However, if the
commentary of the “parody” has no critical bearing on the substance or style of the original
composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in
working up something fresh, the claim to fairness in borrowing from another work diminishes
accordingly (if it does not vanish), and other factors, like the extent of its commerciality loom larger.
Parody needs to mimic an original to make its point, and so has some claim to use the creation of its
victim's imagination, wheras satire can stand on its own two fee and so requires justification for the
very act of borrowing. The language of the statute makes clear that the commercial or nonprofit
educational purpose of a work is only one element of the first factor enquiry into its purpose and
character.Nature of Work: The court doesn't think this factor has any significance in the analysis.Amount
Used'[42]: When parody takes aim at a particular original work, the parody must be able to “conjure up” at least
enough of that original to make the object of its critical wit recognizable, but it is importance that “no more was
taken than necessary.Effect upon Potential Market: The court says that the proper inquiry hear is the
potential effect of 2 Live Crew's parodic rap song on the market for non-parody, rap versions of “Oh, Pretty
Woman.” A parody may very well harm the market for a work that it's critiquing (“lethal parody, like a scathing
theater review”), however this is not a harm cognizable under the Copyright Act. The effect on P's ability to
license the rights for a parodic version of the song is not the proper inquiry because of the unlikely hood that
creators of an imaginative work will license critical reviews or lampoons...removes such uses from the very
notion of potential licensing markets.
1.
Research, Private Use
Perfect 10, Inc. v. Amazon.com, Inc.508 F. 3d 1146 (9th Cir. 2007)SYNOPSIS OF RULE: Use of thumbnail
images is a fair use primarily based on the transformative nature of a search engine, its benefit to the public,
and lack of harm to the potential markets.DISCUSSION:Purpose of Use: Google's use of thumbnails is highly
transformative because Google's use servet ad different function than Perfect 10 – improving access to
information on the internet versus artistic expression. With regard to the fact that Google benefits from its
AdSense program, the court says that the significantly transformative nature of Google's search engine,
particularly in light of its public benefit, outweighs Google's superseding and commercial uses of the thumbnails
in this case Nature of Work: The fact that the Perfect 10 works are creative in nature as opposed to fact
based, weighs slightly to P Amount Used: This factor favored neither partyEffect upon Potential Market:
Because thumbnails were not a substitute for the full-sized images, they did not harm the photographer's ability
to sell or license his full-sized images.Sony Corporation of America v. Universal City Studios, Inc. 464 U.S. 417
(1984)FACTS: Sony Corp., D, developed the BetaMax, a video tape recorder which was used by some
consumers to record broadcasts of Plaintiff Universal's programs. P sued for copyright infringement under the
theory of contributory infringement.SYNOPSIS OF RULE: A challenge to a noncommercial use of copyrighted
work requires proof either (1) that the particular use is harmful, or (2) that if it should become widespread, it
would adversely affect the potential market for the copyright work. Actual present harm need not be show. Nor
must future harm be shown with absolute certainty, only a preponderance of the evidence.DISCUSSION:
Under the Patent Act, “the sale of copying equipment does not constitute contributory infringement if the
product is widely used for legitimate unobjectionable purposes. The court must only consider whether
a significant number of uses would be non-infringing. The court determined that by far the most popular use of
the BetaMax was “time shifting.” The court considers this use in two manners:Authorized Time-Shifting: The
court notes that there a large number of television shows of which viewers are authorized to copy as they see
fit. Notably, Mr. Rodgers and representatives of the MLB, NFL, NBA and NHL said they had no objection to the
recording of their programs for time-shifting purposes. The court stresses that while this is evidence that there
are a potentially significant number of non-infringing uses, it in no way provides carte blanche to time shift
programs for which authorization has not been granted. Third pary conduct would be wholly irrelevant in an
action for direct infringement.Unauthorized Time-Shifting: The court notes that §107 makes certain “fair use”
exceptions to the exclusive rights listed in §106. Among the factors that would suggest fair use, the court
focuses on the “non-profit character of an activity” and the “effect of the use upon the potential market.” The
court is generally unpersuaded by Universal's claims that (1) library building cuts into their home video market,
and (2) reduces the number of views of the “live” broadcast and therefore decrease ad revenue. The court
holds, on §107 and public policy grounds, that “home timeshifting is fair use.”DISSENT: The dissent would
employ the productive use test, requiring some added benefit to the public (a “socially laudable purpose”) in
order to receive fair use protection.Market Failure Theory (see page 588): Copyright markets will not always
function adequately and market flaws might preclude achievement of desirable consensual exchanges. In
those cases, the market cannot be relied on to mediate public interest in dissemination. There are three types
of market failure:
1.
2.
3.
Market Barriers: Where transaction costs exceed the benefits of a bargain, thus no
transaction. (i.e. “home use”)
Externalities: Where the benefits to the public exceed the means of the user to negotiate (i.e.
“research use”)
Anti-Dissemination motives: Where the copyright owner has an incentive to prevent licensing
(i.e. “criticism”) American Geophysical Union v. Texaco, Inc.
60 F.3d 913 (2d Cir. 1995)FACTS: Texaco was sued by 83 publishers of scientific and technical journals.
During the suit the parties agreed that they would take one Texaco scientist, Chickering (“C”), at random as a
representative sample. The facts show that C photocopied approximately eight articles from the Journal of
Catalysis. The record shows that the articles were not used, but rather were primarily made just for “future
retrieval and reference;” or rather the purpose of adding to C's office “library.” The court finds for the publishers
primarily on justification of effect upon the potential market and purpose of use.DISCUSSION:'Purpose of Use:
The court says that because Texaco was not gaining directly or immediate commercial advantage from
the photocopying at issue in this case, it would not be accuarate to conclude that Texaco's copying of
eight particular Catalysis articles amounted to “commercial exploitation. Texaco's photocopying is
more appropriately labeled an “intermediate use.” However, the court need not ignore the for-profit
nature of Texaco's enterprise. The photocopying could be labeled “a factor of production” and thus
weighs slightly toward publishers. The court rejected Texaco's argument that the use was
transformative, stating that it was merely materially transformative.Nature of Work: The court
recognizes that the works at issue are predominantly factual and thus favors Texaco.Amount Used:
Texaco argues that the photocopying of each separate article amounted only to a minimal copying
from the entire journal. The court dismisses this stating that each work is independently copyrightable
because it is a discrete “original work of authorship.” While Texaco copied the entire article, this does
not preclude a fair use finding.Effect upon Potential Market '[43]: The court says that the publishers
complaints about lose journal subscriptions is of only a minimal harm to them. The court however is more
persuaded by the publisher's claims of lost revenue from individual photocopying licenses (provided for through
a licensing clearinghouse, CCC) [44]. They say “the publishers have demonstrated a substantial harm to the
value of their copyrights through Texaco's copying.Princeton Univ. Press v. Michigan Document Services,
Inc. (MDS) 99 F.3d 1381FACTS: Professors were using a commercial copy shop to create reproduction of
excerpts of copyrighted material from a number of sources as part of course packs for students. The court
found that this was not protected by fair use.SYNOPSIS OR RULE:
1.
2.
Professors may make single copies of book chapters, newspaper and periodical articles,
short stories, and drawings in the previously mentioned sources for “scholarly research or use
in teaching or preparation to teach a class”
Professors may make multiple copies for classroom use provided they meet spontaneity and
brevity requirements:
1. Copying is spontaneous if the “inspiration and decision to use the work and
the moment of its use for maximum teach effectiveness are so close in time
that it would be unreasonable to expect a timely reply to a request for
permission.”
2. Limits copying from the same author, collective work or periodical volume
3. There shall not be more than nine instances of multiple copying during one
class termination
4. Each copy must contain a copyright notice
5. The student may not be charged more tha the cost of copying
6. The copying must not substitute the purcahse of books, publisher's reprints
or periodicals.
DISCUSSION: The “Agreement on Guidelines for Classroom Copying…” was incorporated by Congress into
the legislative history of the 1976 Act. “
Formalities & Duration[edit | edit source]
The Copyright Act of 1790 required compliance with certain formalities in order to receive copyright protection.
These formalities were (1) publication; (2) notice; (3) registration; and (4) deposit with a designated entity.
However, the Berne Convention expressly prohibits member countries form conditioning copyright protection
on adherence to formalities.Formalities by Act
Copr. Act of...
1790
1909
Publication [45]
Notice [46]
Registration [47] [48]
Deposit
Yes
Publishes a copy of the
records of copyright
received fro the clerk in
at least one domestic
newspaper within two
months from the date of
record and continuing
for four weeks
thereafter.
Title of the work only to
the clerk's office in the
district court.
The work itself
did not need to
be deposited.
No, if not
reproduced for
sale and
registered. Spec.
mentions
lectures, plays
music and
motion pictures
Required proper notice
of copyright attached to
the work itself in the
form of “Copyright” or
“Copr.” followed by the
name of the claimant.
Print, musical and
dramatic material also
required the year to be
attached. All other
works could use the ©
symbol but the full
name had to appear on
the work somewhere.
Registration was
optional during the first
term, failure to register
was a bar to any
copyright infringement
action. The claimant
also had to register to
renew for second term.
Required prompt
deposit of “two
complete copies
of the best
“published”
edition” of the
work with the
Copyright Office.
The CO could
demand deposit
and fine and
forfeit claim if
failed to comply.
1976(Eff.Date
ofJan. 1,1978)
No. Replaced
publication
requirement with
a fixation
requirement.
Berne
Conv.ImplimtAct
of1989
Requirements similar to
1909, however,
protection would not be
lost by failing to include
a copr. notice if only a
few copies were
distributed without
notice, or if registration
occurred within 5 years
and a reasonable effort
to cure omission
Optional, however,
like1909, required
registration before an
infringement suit could
be initiated. Could
occur throughout term.
Works published after
March 1, 1989 no
longer required a
copyright notice.
However, presence of a
notice would defeat a
defendant assertion of
innocent infringement.
For works of
BerneCon. members
(but not US) an
infringe. suit can occur
without first registering
the work. However,
w/oregistration, no
stat.Damages or attny
fees.
Same as 1909,
however, failure
to comply only
resulted in a fine,
NOT forfeiture of
the copyright.
Deposit for
registration also
satisfied this req.
Duration by Act:
Works...
Duration
First Published
Before January 1,
1978
Created but
Unpublished before
January, 1, 1978
Works Created on
or After January 1,
1978
As modified by the Sonny Bono Copyright Term Extension Act:• If created by a single
author, the term is the life of the author plus 70 years.• If created by joint authos, the
term is the life of the last surviving author plus 70 yrs.• Anonymous works, a
pseydonymous work, or a work made for hire endures for a term of 120 years from the
year of creation or 95 years from the year of publication, which ever expires first.
The Policy Behind Copyright Duration:The Constitution requires that the exclusive rights granted to authors
be for limited times. However, the lengthening duration of CR results in the slower entry of works into the public
domain and as a result of the Sonny Bono Term Extension Act, no additional works of authorship will enter the
public domain until January 1, 2019. The shift in duration from a dual term to a unitary term resulted from an
increased desire to harmonize U.S. law with CR protection schemes in other countries. Berne requires a
minimum term if protection of life plus 50 yearsRenewals: the 1909 Act’s duration scheme applies to works
created before the effective date of the 1976 Act; the renewal terms of these works will be in force until the year
2072 (1977 + 95)
1.
2.
Works published or copyrighted before January 1, 1978: 1909 Act set up statutory protection
for two consecutive terms: a first term of 28 years, measured from the date of publication, and
a second or renewal term of 28 years = total of 56 years. The renewal term reverted to the
author automatically, if he properly filed for renewal registration during the 28th year. Failure
to comply with renewal formalities resulted in the forfeiture of copyright to the public domain
Changes to renewal registration requirement under the 1976 Act:
1. Second term of the copyright was lengthened from 28 to 47 years (§304(a))
– is now 67 years after the 1998 amendments.
2. 1992: automatic renewal for all works. So for works published between
1964 and 1977, an author will enjoy a full (95 years) term, without having to
file for renewal during the 28th year
3. Works in their second term as of January 1, 1978: found in works in their
second or renewal terms between December 31, 1976 and December 31,
1977. The second term lasted 47 years, 19 years longer than the 28 year
renewal term of the 1909 Act. Extension of the term was automatic, and the
CR owner needed to do nothing to receive the extra 19 years
4. With the passage of the CTEA in 1998, 20 years are added to the 47 year
renewal term. With the renewal term extended to 67 years, the term of CR
for 1909 Act works now totals 95 year
Stewart v. Abend: If an author dies before the renewal period, then the assignee may continue to use the
original work only if the author’s successor transfers the renewal rights to the assignee. So long as the preexisting work remains out of the public domain, its use is infringing if one who employs the work does not have
a valid license or assignment for use of the pre-existing work. Thus, continued distribution of the derivative
work violated the rights of the owner of the pre-existing work because his rights are not extinguished in the
renewal period even if the work is incorporated into a derivative work.
Transfers and Terminations[edit | edit source]
1.
Transfer
Section §204. Execution of Transfers and other Documents(a) A transfer of copyright ownership 51, other than
by operation of law, is not valid unless an instrument of conveyance 52, or a note or memorandum of the
transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized
agentSection§205(d) sets forth the order for determining which claim prevails between two conflicting
transferees:As a preliminary matter, the transfer first executed and recorded withing one month of its execution
(or withing two months if executed outside the U.S.), and that satisfies the requirements of §205(c)(registration
of the work and proper identification of the work) prevails. The first transfer will still prevail if, notwithstanding
expiration of the time frame, it is nevertheless recorded before a later transfer. The later transfer will prevail if
the recipient (1) properly recorded it before the earlier transfer was recorded; (2) took the transfer in good faith,
for valuable consideration, or on the basis of a promise to pay a royalty; and (3) had no notice of the earlier
transfer. Finally, §205 provides that whether recorded or not, a nonexclusive license prevails over a conflicting
transfer of copyright ownership if the license is in writing and signed by the owner of the rights or her duly
authorized agent, so long as the license was taken (1) in good faith before the conflicting transfer was recorded
and (2) without notice of the conflicting transfer.Security Interests:Authorities generally agree that to perfect a
security interest in a copyright, the secured party should file with the Copyright Officer. The Ninth Circuit said
however that because the Copyright Act provides “constructive notice” only for registered copyrights, the UCC
governs perfection and priority of security interest in unregistered works. A least one case held that even when
the collateral is not the copyright itself, but rather the royalties generated by the copyright, the filing should still
be made with the Copyright Office.Asset Marketing Systems, Inc. v. Gagnon542 F.3d 748 (9th Cir.
2008)FACTS: Gagnon was an at-will, independent contractor for Asset Marketing Systems (AMS). In the
course of their relationship, Gagnon created various computer programs for AMS. The only signed document
between the parties was a Technical Services Agreement (TSA) which said that “[Gagnon] will provide [AMS]
with specific add-on products to enhance [AMS].” The TSA expired 53 but the relationship continued for a little
while before it soured and Gagnon sued to prevent AMS from continuing to use the programs.SYNOPSIS OF
RULE: An implied license is granted when:
1.
The licensee request the creation of a work
2.
3.
The licensor makes that particular work and delivers 54 it to the licensee who requested it,
The licensor intends that the licensee-requestor copy and distribute his work. 55
DISCUSSION: The court looks to Effects Associates, Inc. v. Cohen, whereby a film producer hired Effects to
create some footage for them. The court there found an implied license had been granted because the footage
was generated at producer's request with the intent that it be used in the film with no warning that use of the
footage would constitute infringement. The relevant intent is the licensor's objective intent 56 at the time of
creation and delivery of the software as









51 Because of the broad definition of “transfer of ownership” contained in §101, the Copyright
Act's writing requirement applies not only to a complete transfer of copyright ownership, but also
to exclusive license of some or all of the §106 rights and to the use of the copyright as security for
a loan.
52 There are benefits to recording this transfer with the Copyright office, namely Recordation
establishes a priority of ownership in the event of conflicting claims
53 Though exclusive license must be in writing, grants of nonexclusive licenses need not be in
writing.
54 Delivery is not dispositive, but one factor that may be relied upon in determining if an implied
license has been granted.
55 This prong is not limited to copying and distribution, but may include use, retention, and
modification rights.
56 The First and Fourth Circuits consider the following factors to determine intent:
(1) Whether the parties were engaged in a short-term discrete transaction as opposed to an
ongoing relationship;
(2) Whether the creator utilized written contracts...providing that copyrighted material could only
be used with the creator's future involvement or express permission
(3) Whether the creator's conduct during the creation or delivery of the copyrighted material
indication that use of the material without the creator's involvement or consent was permissible.
manifested by the parties' conduct. A nonexclusive license supported by consideration is a contract and
therefore irrevocable.Unspecified Duration in Implied LicenseThe case law on duration and revocability of
implied licenses is muddled. At least one court has held that an unspecified duration means a minimum
duration of 35 years should be impliedSub-licensing and Implied LicensesIn Gardner v. Nike, Inc. the Ninth
Circuit held that an exclusive licensee may not transfer the licensed rights without the consent of the original
licensor because §201(d)(2) only conferred the 'protections and remedies' afforded a copyright owner under the
1976 Act, not the rights.” A logical implication from Gardner is that rights obtained pursuant to any license,
including an exclusive license, may not be sub-licensed without authorization from the copyright owner.Boosey
& Hawkes Music Publishers, Ltd. v. The Walt Disney Company 145 F.3d 481 (2d Cir. 1998)FACTS: Disney
made a film called Fantasia which synched animated films over classical musical works including
Stavinsky's The Rite of Spring (“Work”). The Work was in the public domain in the US, but in order for Walt
Disney to exploit internationally, they secured the rights from Stavinsky “to [the]...use...of the musical
composition in synchronism or timed-relation with the motion picture” in :in any, manner, medium or form.”
When Walt Disney released the film on home video, Stavinsky's estate sued saying that home video use was
not transferred.SYNOPSIS OF RULE: Licensee may properly pursue any uses which may reasonably be said
to fall within the medium as described in the license [49]” Bartsch v. Metro-Goldwyn-Mayer, Inc. 391 F.2d 150
(2d Cir. 1968)DISCUSSION: There are two approached to future uses:
1.
2.
According to the first view, “a license of rights in a given medium (e.g. 'motion picture rights')
includes only such uses as fall within the unambiguous core meaning of the term (e.g.,
exhibition of motion picture film in motion picture theater) and excludes any uses that lie
within the ambiguous penumbra (e.g. exhibition of motion picture on television). Cohen v.
Paramount Pictures Corp.
The second view, preferred by Nimmer, is that “the licensee may properly pursue any uses
that may reasonably be said to fall writing the medium as described in the license.” “When a
license includes a grant of rights that is reasonably read to cover a new use (at least where
the new use was foreseeable at the time of contracting), the burden of excluding the right to
the new use will rest on the grantor.” Bartsch v. Metro-GoldwynMayer, Inc.
The court concludes that the burden fell on Stravinsky, if he wished to exclusde new markets arising from
subsequently developed motion picture technology, to insert such language of limitation in the license, rather
than on Disney to add language that reiterated what the license already stated. Neither the absence of a future
technologies clause in the Agreement nor the presence of the reservation clause alters that analysis. The
reservation clause stands for no more than the truism that Stravinsky retained whatever he had not
granted....Random House v. Rosetta Books, LLC150 F. Supp. 2D 613 (S.D.N.Y. 2001)FACTS: Random House
had entered into a number of publishing agreements with authors such as William Styron and Kurt Vonnegut to
“print, publish and sell the work in book form.” Rosetta entered into agreements with the same authors for
publishing of ebooks. Random House sued for infringement claiming that they had the exclusive right to publish
ebooks.DISCUSSION: The court engages in construction of the agreement and found that “the most
reasonable interpretation of the grant in the contracts at issue to 'print, publish and sell the work in book form'
does not include the right to publish the work as an ebook. In New York, a written contract is to be interpreted
so as to give effect to the intention of the parties as expressed in the contract's language. The court must
consider the entire contract and reconcile all parts, if possible, to avoid an inconsistency. Because the authors
specifically reserved certain rights, it evidences an intent by these authors not to grant the publisher the
broadest rights in their works. “A reasonable person 'cognizant of the customs, practices, usages and
terminology as generally understood in the particular trade or business” also would tend to believe that “book
form” is not synonymous with ebooks. In Field v. True Comics, the court held that “the sole and exclusive right
to publish, print and market the book.” Bartsch can be distinguished on four grounds:
1.
2.
3.
4.
The language conveying the rights in Boosey and Bartsch was far broader than here.
The “new use” in those cases – i.e. display of a motion picture on television or videocassette
– fell squarely withing the same medium as the original grant. (“videocassettes and laser
discs as “subsequently developed methods of distributing a motion picture”)
The licensees in the motion picture cases have actually created a new work [incorporating]
material from the licensor.
The courts in Boosey and Bartsch were concerned that any approach to new use problems
that “tilts against licensees [here, Random House] gives rise to anti-progressive incentives,”
insofar as licensees “would be reluctant to explore and utilize innovative technologies.”
However, in this action, the policy rationale of encouraging development in new technology is
at least as well served by finding that the licensors – i.e. the authors – retain these rights to
their works.
Reproduction and Distribution
in Phonorecords
Other Reproduction.Creation
of Derivative Works
Public Performance.
Musical Works
Statutory right: §106(1) &
(3)
Statutory right: §106(1)
& (2)
Specific limitations on §106
rights:§115 – Compulsory
license [50]§1001-1008 - Audio
homeRecording Act (AHRA)
Specific limitations on §106
rights:None
Specific limitations on
§106 rights: §110 –
Various limitations
Rights administered by:Music Publishers- Copright
Office (§115;AHRA)- Harry
Fox Agency
Rights administered by: Music Publishers
Rights administered
by: - ASCAP, BMI,
SESAC
Statutory
right: §106(4)
Statutory right: §106(1) &
(3)
Statutory right: §106(1)
& (2)
Specific limitations on §106
rights:§114(b) – “Sound
alikes” notcovered§10011008 - AHRA
Specific limitations on §106
rights:§114(b) – Actual
sounds must be reproduced
Specific limitations on
§106 rights: §106(6) &
114(a) – digital
transmissions
only§114(d)-(j)
exemptions
Rights administered by:Record Labels- Copright
Office (AHRA)
Rights administered by: Record Labels
Rights administered
by:- Record LabelsSound Exchange (§114
statutory license)
Sound 'Recordings
1.
Statutory
right: §106(6)
Termination & Damages
Grants made after 1/1/1978. §203Not available for works for hireAfter 35 years can be
revisited/renegotiatedDerivative works can continue to be exploitedGrants made before 1/1/1978. §304(c).Term
after 1998: 28 +67 (28+19+20)=95Can terminate once: after the end of the 28 yearsIf in to the 19 years when
the Sony Bono Copyright Extension Agreement adopted can terminate before 20th yearWho can terminate?
1.
2.
Sole Authorship: Termination can be authorized by the author, or if dead, his widow (or
majority of kids and widow).
Joint Authorship: If more than one author, a majority of the authors, (majority of authors) no
idea on if only two authors.
Remedies and Relief:Civil Remedies are granted under:1976 Act: §§502-505VARA: §§502-05 DMCA: §1203'
Injunctions§502, 1203(b)(1)
Actual Damages & Disgorgement of
Profits§504, 1203(b)(3)&(c)
An author may be granted a temporary restraining order (TRO) or
a preliminary injunctions. Parties seeking the injunction will have
to prove (1) irreparable harm, and either (2a) likelihood of
success on the merits, or (2b) sufficiently serious question points
to the merits and the balance of hardships tips to the case for an
injunction.To be granted permanent injunctions, parties must
show:1. Irreparable harm (may be presumed, see eBay v.
MercExchange, L.L.C.)2. Remedies at law are inadequate3.
Balance of the hardships4. Public interest not dissevered.Abend
v. MCA (1998)The CoA said that they would not issue an
injunction because they think that the work that was produced is
not merely the primary contribution of Abend, and they don't want
to deny access to the public merely because there is a need to
get permission from the author. It will be sufficient to get damages
for Abend. (which sounds like a compulsory license). See
also Campbell v. Accuff-Rose'Impoundment and Disposal:
Authorized by §503, 1203(b)(2) & (6)
Actual Damages: This may include market harm, lost license
revenue, etc.Profits:Frank Music v. MGM: Frank Music owned
the rights to Kismet. The MGM Grand, a Vegas casino, preformed
the songs from Kismet as part of a review called “Hallelujah
Hollywood.” The court said that in addition to a pro-rated amount
(reflecting the percentage of the revue made up by Kismet songs)
Frank Music additionally gets part of the “indirect profits” (i.e. a
portion of the gambling proceeds.
StatutoryDamages,PunitiveDamages
andAttorney's Fees
Statutory Damages: Provide a mechanism to recover damages
even where actual damages are insufficient. This provides a
strong incentive to restrain from infringing. Recall registration
requirements though.Punitive Damages: Punitive Damages are
extremely controversial. Some courts say if you get statutory
damages, you are absolutely precluded from recovering punitive
damages.Attorney's Fees” The prevailing party get's attorney's
fee's.
The Statute of Limitation for all copyright infringement cases is 3 years.