Copyright Law Kappes Spring 2018
I.
Introduction
a. History of ©
i. Statute of Ann (1710) – Made necessary by the printing press
ii. © Act (1909) – 28 +28 years for all writings of an author; protection began at publication with proper notice. Failure
to affix notice on published works placed into public domain.
iii. © Act (1976) – Life of the author + 50 yrs or 75 years from publication for preexisting works and anonymous or
made for hire works. Lack of notice curable within 5 years of publication; otherwise public domain.
1. Applies to works after 1/1/1978. Attaches at creation, not publication. Expanded categories of subject
matter; formalities, fair use, and statutory licenses.
iv. Berne Convention Implementation (BCIA 1988). Protection begins at creation same duration and notice is option
(but very beneficial/recommended), changes are not retroactive.
v. Digital Millennium © Act (DMCA 1998). Created new access/anti-circumvention rights
vi. Sonny Bono © Term Extension Act (CTEA 1998). Life + 70 years (retroactive) or shorter of 120 years or 95 years
from publication for unknown author or works for hire.
II.
©able Subject Matter
a. Requirements – Original works of authorship fixed in any tangible medium of expression.
i. Works of authorship (human or legal entity)
1. Original
2. Minimally creative
3. Non-exhaustive categories (§ 102(a))
a. Literary works
b. Musical works
c. Dramatic works
d. Pantomimes and choreographic works
e. Pictorial, graphic and sculptural works
f. Motion pictures and other audiovisual works
g. Sound recordings; and
h. Architectural works
4. Does not incl. (§ 102(b)): ideas, procedure, process, system, method of operation, concept,
principle, or discovery.
ii. Fixed in any tangible medium of expression:
1. The work must be fixed in a tangible medium of expression that can be perceived, reproduced, or
otherwise communicated, either directly or with the aid of a machine or device.
b. Originality
i. Burrow Giles Lithographic v. Sarony: Constitution is broad enough to cover an act authorizing © of
photographs, so far as they are representatives or original intellectual conceptions of the author.
1. Photograph is a useful, new, harmonious, characteristic and graceful picture and that plaintiff
made the same…entirely from his own original mental conception.
a. Author is anything owes its origin; maker; one who completes a work of science or
literature. For pictures – must make sufficient choices and control the selection,
arrangement, and coordination.
ii. Bleistein v. Donaldson Lithographing: An illustration designed and produced for use as an advertisement
is not precluded from © protection solely on the basis of its commercial nature.
1. Judges and courts are not in the position to determine what is sufficiently art for ©. Creates
predictability and an even-handed approach.
iii. Meshwerks v. Toyota Motor Sales: A work is a copy and thus not subject to © protection is the work is
intended to exactly duplicate an existing item.
1. Going from one medium to another will not create © protection if you are copying someone
else’s work.
2. Focus is final product not process. The more accurate the model, the less ©able it is.
iv. Gracen v. Bradford Exchange. In the 7th Cir. a (minority) derivative work must be “substantially
different” from the prior work to receive © protection.
v. Derivative work: based upon one or more preexisting works, such as a translation, musical arrangement,
dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment,
condensation, or any other form in which a work may be recast, transformed, or adapted. A work
consisting of editorial revisions, elaborations, or other modifications which, as a whole, represent an
original work of authorship is a derivative work.
Copyright Law Kappes Spring 2018
vi. Compilation: work formed by the collection and assembling of preexisting materials or of data that are
selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original
work of authorship. Compilations of facts are ©able.
1. Collective Work: Subset of compilations. A work such as a periodical issue, anthology, or
encyclopedia, in which a number of contributions, constituting separate and independent works in
themselves are assembled into a collective whole.
c. Originality & Facts
i. Feist Publications v. Rural Telephone: To be granted © protection, works must be original, meaning that
they entail some minimal degree of creativity.
1. If the selection and arrangement are original, these elements of the work are eligible for ©
protection. No matter how original the format, however the facts themselves do not become
original through association.
2. Rejects “Sweat-of-the-brow” concept.
ii. CDN v. Kapes: Valuations can be ©ed based not only on a multitude of data sources, but also on
professional judgment and expertise.
1. Prices are original creations, not un©able facts. Opinions are ©able (price can be opinion of
value).
2. Difficulty moving away from sweat of the brow doctrine.
iii. Nash v. CBS – leads into idea/expression dichotomy
1. © law protects the expression of ideas of facts, but not the underlying ideas or facts themselves.
2. If you hold something out to be a factual matter, it is not ©able.
d. Ideas
i. Idea/Expression Dichotomy – ideas (like facts) are not ©able. Expression is ©able (if otherwise meets
requirements of ©). Idea ---- Expression continuum.
ii. Baker v. Selden: © does not protect an idea, only the expression of an idea.
1. Court does not invalidate the ©. The expression of the idea (accounting book) was ©able, just not
the idea itself – the ledgers. The book as a whole remains ©able.
a. Where the art it teaches cannot be used without employing the methods and diagrams
used to illustrate the book, or such as are similar to them, such as methods and diagrams
are to be considered as necessary incidents to the art.
iii. Nichols v. Universal Pictures – Abstractions Test
1. Generalized abstractions in a work are not ©able. There is a point in this series of abstractions
where they are no longer protected, otherwise the playwright could prevent the use of his ideas.
2. Abstraction Test: high level abstractions are considered more like ideas and thus not ©able. Low
level abstractions are considered more like expression and more likely ©able.
a. Courts have found sufficient creativity, specificity, originality, you can own a character
like Spider-man, but not a theme.
iv. Kregos v. Associated Press – Merger Doctrine
1. Merger Doctrine: if there are limited ways to express an idea, the idea and expression merge and
neither are ©able. If the idea is limited in how it can be expressed, blocked from protection.
a. Short phrases or words are not ©able.
b. Blank form doctrine: the © office does not register blank forms. If expressive work is
designed to receive info rather than communicate info, considered blank form and w/o ©
protection.
2. The fundamental © principle that only the expression of an idea and not the idea itself is
protectable, has produced a corollary maxim that even expression is not protected in those
instances where there is only one or so few ways of expressing an idea that protection of the
expression would effectively accord protection to the idea itself.
3. Where a selection of data is the first step in an analysis that yields a precise result or even a
better-than-average probability of some result, protecting the expression of the selection would
clearly risk protecting the idea of the analysis.
v. Computer Software (§ 101): a computer program is a set of statements or instructions to be used directly
or indirectly in a computer in order to bring about a certain result. Not a definitive or substantive
definition. Computer programs not explicitly in statute, but courts have decided within the scope of
literary works.
1. Kappes doesn’t agree. Should be protected under patent. But, everyone agrees that verbatim
copying of software is infringement.
Copyright Law Kappes Spring 2018
2. § 117: Limitations on exclusive rights – Computer Programs.
a. Not infringement to make copy of computer program provided: essential step in
utilization of computer program; for archival purposes only and archival copies are
destroyed in even that continued possession of computer program should cease to be
rightful.
vi. Apple Computer v. Franklin Computer – establishes that computer programs can be ©able
1. Both object code and source code qualify as literary works under § 101 of the © Act. There is no
reason to afford any less © protection to the instructions in an operating system program than to
the instructions in an application program.
a. Source code is most valuable to steal – once used, you can understand exactly how
program runs. Object code is binary (0 & 1), used because computers work on electric
signals, but not human readable. Process of conversion is called compiling where source
code becomes object code (one-way). No legal difference between object/source code.
b. Method of Operation v. Instructions. MO are things that happen (push a button).
Instructions cause a MO to be carried out. Instructions are ©able in software.
2. Computer programs are original with very low bar of originality. Incl. graphical elements.
3. Guts Baker v. Selden. Ideas are not ©able, but expression of programs is. Limiting principle is
where they merge.
vii. Lotus Development v. Borland: A computer menu command hierarchy is not ©able because it is a method
of operation.
1. Expressive choices of what to name command terms do not magically change the un©able menu
hierarchy into ©able subject matter.
2. Courts must still inquire whether original expression falls within one of the categories foreclosed
from © protection by 102(b) such as being a method of operation.
e. Useful Article Doctrine
i. Useful-Article Exception: the sign of useful article shall be considered a pictorial, graphic, or sculptural
work only if, and only to the extent that, such a design incorporates pictorial graphic, or sculptural
features that can be separate from, capable of existing independent of, the utilitarian aspects of the article.
ii. Pictorial graphic and sculptural works (PGS): Such works shall incl. works of artistic craftmanship
insofar as their form but not their mechanical or utilitarian aspects are concerned.
1. Useful Article: article having an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey info. Applies only to PGS works and
a. Only if the PGS work has a primary function that is NOT (1) to portray its own
appearance or (2) to convey info; and
b. Only if, and to the extent, that aesthetic features can (1) be identified separately from, and
(2) exist independently of the useful aspects of the article.
i. E.g. Teddy Bear PGS – not useful, primary function to look like bear. Map: PGS,
not useful because portray info. Encyclopedia not PGS, not useful exception.
Aeron Chair PGS, function is sitting – useful. Piano PGS, function create music –
useful. Creator would not want useful cuz rights diminished.
2. Architectural Works are not PGS works
iii. Mazer v. Stein: Mass-produced articles of utilitarian purpose are eligible for © protection.
1. The patentability of [some things] does not bar © as works of art. Neither the © statute nor any
other says because a thing is patentable it may not be ©ed.
iv. Kieselstein-Cord v. Accessories By Pearl – Separability Test
1. Separability Test: is the primary ornamental part separable from the utilitarian function?
a. The conventional test for ©ability of useful articles, namely whether the useful article
contains artistic features that can be identified separately from the article’s function.
b. Maybe can’t physically separate belt buckle, but you can separate the design and the
function. Dramatic expansion that basically means every belt buckle ©able.
2. Physical Separability: Can the useful part be physically separated from the artistic? (lamp base)
3. Conceptual Separability: Can the useful part be conceptually separated from the artistic elements?
(belt buckle) Conceptually separable from their subsidiary utilitarian function.
v. Carol Barnhart v. Economy Cover: A utilitarian article is only ©able to the extent that its aesthetic design
elements can be identified and separated from its utilitarian function.
1. Congress has explicitly refused © protection for works of applied art or industrial design which
have aesthetic or artistic features that cannot be identified separately from the useful article.
Copyright Law Kappes Spring 2018
III.
2. Entire way the 3D mannequin looks is informed by its function of holding garments.
vi. Brandir Int’l v. Cascade Pacific Lumber: A work is ©able if its aesthetic considerations are conceptually
separable from its functional considerations.
1. Denicola Test: if design elements reflect a merger of aesthetic and functional considerations, the
artistic aspects of a work cannot be said to be conceptually separable from the utilitarian
elements.
a. Does not bother with physical or conceptual separability. Test is criticized for being
manipulability. Only considers artists thoughts. Not objective test.
vii. Star Athletica
1. TEST:
a. 1) If perceivable as two- or three-dimensional work of art separate from the useful article;
AND
b. 2) would qualify as a PGS work-either on its own or fixed in some other tangible medium
of expression – if it were imagined separately from the useful article into which it is
incorporated.
2. Result – courts ignore underlying analysis in case because reasoning is convoluted.
f. Fixation
i. Section 101: A work is “fixed” in a tangible medium of expression when its embodiment in a copy or
phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be
perceived, reproduced, or otherwise communicated for a period of more transitory duration. A work
consisting of sounds, images, or both, that are being transmitted, is “fixed” for purposes of this title if a
fixation of the work is being made simultaneously with its transmission.
i. Williams Electronics v. Artic Int’l: An audiovisual © on a computer program that involves user
interaction meets the requirement under the © Act that ©ed material be fixed.
1. Repeated sequence of events will always occur, and many aspects of the gams, such as
background are not interactive in nature. Attract mode – auto player video to attract players to
play the game.
g. Government Works: Federal government is prohibited from obtaining © in works they create, but NOT STATE.
Initial Ownership and Transfer
a. Works Made for Hire: 1) work prepared by an employee within the scope of his or her employment; or 2) a work
specifically ordered or commissioned for use as a contribution to a collection work.
i. Initial ownership – © in a work vests initially in the author(s) of the work. Authors of a joint work are coowners of the ©. WMFH – the employer or other person for whom the work was prepared is considered
the author and unless expressly agreed otherwise in writing signed by parties, owns all the rights.
ii. WMFH Test:
1. Was work created by Employee or Independent Contractor?
a. If Employee…
i. Made w/in scope of employment?
1. No – work owned by creator.
2. Yes – WMFH.
b. If Independent Contractor / Special Commission…
i. Signed WMFH agmt?
1. No – owned by Independent Contractor
2. Yes – Is the work in the 9 categories?
a. Yes – WMFH
b. No – owned by the independent contractor
iii. Community for Creative Non-Violence v. Reid: Absent a written agmt to the contrary, the © Act of 1976
vests © ownership in the actual author or authors of the work unless the material is a “work made for
hire”, in which case the employer or the person for whom the work was created owns the ©.
1. Employee or Independent Contractor Tests
a. Hiring party retains right to control product
b. Hiring party welds control over creation
c. Employee defined under common law rules of agency (no single factor determinative)
i. Hiring party’s right to control the manner and means; skill required; source of
instruments and tools; location of work; duration of relationship of parties;
whether hiring party has right to assign additional products to hired party; extent
of hired party’s discretion and how long to work; method of payment; hired
Copyright Law Kappes Spring 2018
party’s role in hiring and paying assistants; whether work is part of regular
business; whether hiring party is in business; provision of employee benefits; and
tax treatment by hired party.
d. Formal salaried employee
iv. Hi-Tech Video Productions v. Capital Cities/ABC: Because the video was produced in part by
independent contractors, video is not a WMFH and © In video as WMFH invalid.
1. If don’t win on Independent Contractor, can argue: Contract (license or other); Joint author
v. Miller v. CP Chemicals: Development of computer program (to make job easier) within scope of
employment.
1. Incl. acts incidental to authorized acts – within the ultimate objective of the principal and an act
which is not unlikely to be performed by employee. Court basically said that employers time is
24/7.
2. Restatement 2d Agency: Conduct of a servant is within the scope of employment if, but only if:
(a) it is of the kind he is employed to perform; (B) it occurs substantially within the authorized
time and space limits; and (C) it is actuated, at least in part, by a purpose to serve the master.
vi. Roeslin v. District of Columbia: To determine whether the action was incidental to plaintiff’s
employment, a court may consider such factors as whether this was the type of activity commonly done
by the employee and whether it was likely that plaintiff would engage in such an activity.
b. Joint Authorship
i. Joint Author Test:
1. A work prepared by two or more authors;
2. With intention that contributions be merged; and
3. Results in inseparable/interdependent parts of unitary whole
a. Does not matter how much each party contributed, ownership is 50/50.
ii. Nimmer’s De Minimis Test:
1. Anything more than de minimis contribution to the work.
iii. Goldstein’s ©ability Test: (more narrow, majority view)
1. Each author’s contribution must be ©able
2. Intention to be joint authors at the time of creation
iv. Erickson v. Trinity Theatre: A party must show intentional collaboration and an independently ©able
contribution to establish joint authorship. To qualify as an author, one must supply more than mere
direction or ideas.
v. Gaiman v. McFarlane – Exception to Goldstein Test
1. In rare circumstances – none of the contributors create something ©able but the final work is,
then apply the de minimis test.
2. Character idea alone can’t be ©ed, but once specific details added enough to have character ©.
Expressive content without which wouldn’t have been a character at all, merely a drawing.
vi. Aalmuhammed v. Lee: A valuable and ©able contribution to a work does not necessarily constitute
authorship, as it is defined under the statutory definition of a joint work.
1. Factors for Joint Authorship (in absence of contract):
a. Author superintends the work by exercising control (in many cases control most
important)
b. Putative coauthors make objective manifestations of a shared intent to be coauthors
i. Best objective manifestation of shared intent is contract
c. Audience appeal of the work turns on both contributions and the share of each in its
success cannot be appraised
2. Co-Author Policy
a. High burden for late comers; predictable title (avoid a legal morass); ability to broadly
receive creative input; incentive to contract.
c. Transfer of ©: A transfer of © ownership is not valid unless an instrument of conveyance, or a note of
memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly
authorized agent.
i. Writing Requirement
1. Effects Associates v. Cohen: If © holder agrees transfer ownership, must be in writing otherwise
invalid.
a. Nonexclusive license is not transfer of © ownership; can be oral or implied through
conduct.
Copyright Law Kappes Spring 2018
IV.
V.
ii. Transfer of rights
1. Assignment – a sale or transfer of entire right, title and interest
2. License – grant of a subset of rights under ©
a. Exclusive and nonexclusive
b. Can be limited in time, place, type or right, purpose
c. Can be implied from conduct
3. Transfer of right to exclude must be in writing
Formalities, Duration, Renewal
a. Formalities: Publication, notice, deposit, registration
i. Publication
1. Estate of Martin Luther King, Jr. v. CBS: Only a general publication divested a common law ©.
General publication occurs when a work is made available to public at large (tangible copies) w/o
regard to their identity or what intended with work – such that public exercises dominion and
control over work.
a. A performance of a work (no matter how broad the audience) is not a publication.
b. Non-divesting limited publication communicates contents of a work to a select group for
limited purpose, wo right of diffusion, reproduction, distribution or sale. News media for
enabling contemporary newsworthy event is limited publication.
ii. Notice – after 1989, notice is optional, but recommended. Avoids claims of innocent infringement.
iii. Deposit – required for works published notice of ©. Creation of library of congress. Cannot lead to
invalidation, fines only.
iv. Registration – never a condition of ©ability. Prima facie evidence of ownership and validity. Statutory
damages, attorney’s fees. Required for federal court jurisdiction (e.g., litigation).
b. Duration and Renewal
i. Eldred v. Ashcroft: The © Clause’s requirement that ©s be granted only for limited times does not bar
Congress from extending the terms of existing ©s.
ii. Renewal – for pre-1976 works. (14+14 for 1790-1909; 28+28 for 1909-1976)
1. Accelerates transfer of unimportant works to public domain; second bite of apple for authors –
loss of rights in derivative works. Harsh results for inadvertent failure to renew. Author must be
alive or right passes to spouse, children, etc – estate property right.
2. Fred Fisher Music v. Witmark & Sons (termination right in 1976 overrules this holding)
a. Enforceability of agmt to transfer renewal right. © act of 1909 does no nullify agmts by
authors to assign their renewal interests.
iii. Termination – vests with author and cannot be contracted away. Refer to transfer date, not creation of
work.
1. 203(a)(5) – termination of the grant may be effected notwithstanding any agmt to the contrary,
incl. an agmt to make a will or to make any future grant. Existing derivative works owners
protected. Not for WMFH. Not permitted to non-authors (assignees, heirs, trusts).
2. How to:
a. Transfers made after 1/1/1978:
i. 1) choose termination date: 35-40 yrs after date of transfer
ii. 2) serve notice 2-10 yrs before termination date
iii. 3) follow other procedural requirements (notice of intent w/© office, signed)
iv. In effect, must provide notice between 25-38yrs after date of transfer
b. Transfers before 1978
i. 56 yrs after work first published.
ii. 5 yr window only; 2-10 yr notice requirement; procedural requirements; intestate
succession; no exclusion of third parties executing right
3. Classic Media v. Mewborn: Effective date of termination must fall within the five year period
beginning at the end of 56 yrs from date © originally secured or 1/1/1978 whichever is later.
Exclusive Rights and Infringement
a. Bundle of Rights (§ 106): 1) reproduce in copies or phonorecords [greeting cards, jellyfish]; 2) prepare derivative
works [ceramic tiles]; 3) distribute copies [Aereo]; 4) perform ©ed work (literary, musical, dramatic, and
choreographic works, pantomimes, and motion pictures and other audiovisual) [ Movie rental]; 5) display work
publicly (literary, musical, dramatic, choreographic works, pantomimes, and PSG incl. images of motion picture
or other audiovisual work); 6) perform publicly by digital audio transmission (sound recordings)
b. Elements of infringement
Copyright Law Kappes Spring 2018
i. Copying
1. Direct evidence
2. Circumstantial evidence
a. Access
b. Striking similarity (exclude possibility of independent creation of same result)
ii. Improper Appropriation
1. Taking enough to appropriate the financial returns
2. Substantial similarity
a. Impression oriented / look and feel approach (Roth)
b. Detail-oriented / dissection approach (Satava)
c. Ordinary v. intended observer
d. Altai test
c. Basic Infringement: Copying and Improper Appropriation
i. Arnstein v. Porter: Summary judgment is inappropriate when a case’s resolution depends on the
credibility given to a particular witness’s testimony.
ii. Copying
1. Selle v. Gibb: A striking similarity between two musical works is insufficient to infer ©
infringement without any proof of reasonable access to the allegedly copied work.
a. Must be at least some other evidence which would establish reasonable possibility that
complaining work was available to alleged infringer.
b. More evidence of access – less similarity needed; more similarity – less access evidence
needed.
2. Bright Tunes Music v. Harrisongs Music
iii. Improper Appropriation
1. Impress-Oriented and Detail-Oriented Analysis
a. Roth Greetings Card v. United Card
i. To constitute infringement there must be substantial similarity between works
and that similarity must have been caused by defendant having copied ©’s
creation.
ii. Under dissection method, there would be no infringement. Two works are
remarkably similar to even a casual observer.
b. Satava v. Lowry: A combination of unprotected elements in a work can be granted ©
protection if the work adds original aspects to features in the public domain.
i. Thin © afford to PSG works. Court applied dissection approach. More realistic,
the less protection. Can only receive protection on original elements.
2. Ordinary Observer Test and Alternative
a. Peter Pan Fabrics v. Martin Weiner: Ordinary observer cases are not applicable from
case to case. Economic argument for incentive – more broad than © infringement.
b. Dawson v. Hinshaw: intended observer requires more than ordinary observer.
i. Ordinary observer test sometimes intrinsic or subject test. Involves total concept
and feel without aid of expert testimony. Relevant to know perspective of
specific audience for which product was intended.
c. Computer Associates v. Altai: Elements of a computer program that are necessarily
incidental to its function are similarly unprotectable. Thin © for software under this test.
i. Step One: Abstraction
1. From Nichols. Dissect the original work into the program’s structure and
isolate each level of abstraction within.
ii. Step Two: Filtration
1. Remove any (1) idea/merger, or (20 that dictated by considerations of
efficiency/external factors (scenes a faire), and (3) taken from public
domain.
2. Define what, if any, ©able material author contributed.
iii. Step Three: Comparison
1. Substantial similarity.
iv. Copying and Sound Recordings
1. Exclusive rights – 1,2,3, & 6 – copies, derivative works, distribution, DAT.
2. Different from musical work (song composition), literary work (lyrics)
Copyright Law Kappes Spring 2018
3. Bridgeport Music v. Dimension Films: No de minimus test for sound recordings. But, some de
minimus ok.
a. Infringement occurs only when defendant mechanically reproduces the actual sound
found in a recording. It is perfectly legal to imitate slavishly the recordings of others, as
long as one has permission to record the underlying musical composition.
d. Derivative Works
i. Lewis Galoob Toys v. Nintendo: A derivative work must incorporate a protected work in some concrete or
permanent form. Existence of a market does not determine conclusively whether a work is an infringing
derivate work. Must substantially incorporate protected material from work.
ii. Micro Star v. Formgen: To infringe a protected work under 17 U.S.C. § 106(2), a derivative work must
exist in a permanent, physical form and substantially incorporate protected elements of the protected
work.
1. Similarity of expression focuses on response of ordinary reasonable person and considers the total
concept and feel of the works.
e. Public Display
i. Public – any place where substantial number of persons outside of a normal circle of family and social
acquaintances is gathered OR any place open to public
1. Transmit or otherwise communicate a performance or display of the work…in separate places
and at the same time or at different times.
f. Public Distribution
i. First Sale Doctrine - exists solely as an exception to Public Distribution (Get around by license)
1. Once the © owner places item in stream of commerce by selling it, exhausted exclusive statutory
right to control its distribution.
2. Capitol Records v. ReDigi: First-sale doctrine does not apply to digital music - technologically
impossible.
3. Walt Disney Productions v. Basmajan: To trigger first sale, © owner must part with title to
particular copy.
ii. Importation Rights
1. Kirtsaeng v. John Wiley & Sons: There is no geographical limit for which works fall under the
first sale.
a. After the first sale of a ©ed item produced outside the US, the item can be imported into
the US without violating the © holder’s rights. Effectively limits ability to engage in
price discrimination.
2. Illegally made copies overseas are not importable. Legally made/purchased copies are.
g. Public Performance
i. Perform – language is extremely broad: to recite, render, play, dance, or act, either directly or by means of
any device or process.
1. Columbia Pictures v. Redd Home – MOST PUBLIC
a. VCR centrally located behind the counter and send video signal to viewing rooms is a
public performance.
2. Columbia Pictures v. Aveco
a. To perform for audiovisual work means show images in any sequences or make the
sounds accompanying it audible. Can’t just rent a room and DVD. Still public
performance.
3. Columbia Pictures v. Professional Real Estate Investors – MOST PRIVATE
a. A group of competitors may bring litigation without losing antitrust immunity under the
Noerr doctrine, unless the litigation is objectively without merit.
b. Hotel rooms are considered private homes.
ii. Performance Rights in Sound Recordings
1. Tier 1 – interactive play – choose song and control playback. Express license from sound
recording owner.
2. Tier 2 – compulsory license performances – not controlled by consumer with limits on
preannouncing, # of plays, # of songs by artist or album. Royalties set by Royalty Board.
3. Tier 3 – license free performances – digital over-the-air broadcasts provided without subscription.
Free.
4. Compulsory licenses – musical work only; arise once work has been made public.
iii. Performing Rights Organizations
Copyright Law Kappes Spring 2018
VI.
1. Useful to license musical works (not recordings); ASCAP, BMI, etc.; Blanket licenses distributed
according to formula; coordination of royalty.
h. Liability of Hosting Services
i. Playboy v. Frena: The operator of an online message board is guilty of © infringement if users upload
unauthorized ©ed material onto the message board.
1. Knowledge or intent not requirement for infringement. It was the server that distributed and
displayed ©ed materials. Passive operation is enough to infringe.
ii. Religious Technology v. Netcom: An internet service provider is guilty of contributory © infringement if:
(1) the provider had notice that the user was posting infringing material using the provider’s system, and
(2) the provider did nothing to stop the distribution of the infringing material.
1. Direct © infringement cannot be shown if infringing copies of works are incidentally made on
computer servers without any volitional act by the owner of those servers.
2. Volitional conduct requirement: (copy machine analogy)
a. There is a requirement by the host to infringe
b. Active step (not a passive step)
3. No obligation for tech to monitor; duty to act only if aware of infringement.
iii. Cartoon Network v. CSC Holdings
1. A © holder’s reproduction right is not infringed upon if a reproduction of the ©ed work exists for
a transitory period of time.
2. Remote storage to DVR service. Storing copies did not satisfy volitional conduct requirement –
only asserted direct infringement.
a. Right of performance not violated – transmission was unique to one person.
3. Infringing material not fixed for longer than transitory period. Needs to be fixed AND more than
1.2 seconds transitory.
iv. American Broadcasting Companies v. Aereo – overrules Cartoon Network.
1. (1) An audiovisual work is performed when the work’s images are shown or its sound are made
audible. (2) A performance of an audiovisual work is public when the work is communicated to
individuals who do not legally own or possess the underlying ©ed work.
2. Creating a service that allows subscribers to stream television programs online meets the
definition of public performance under © law.
a. Dissent – does not believe Aereo like cable co. Should be analyzed under secondary
liability.
i. Non-Economic Interests (Moral Rights)
i. Gilliam v. American Broadcasting – Editing is unauthorized derivative work
1. Artists have a legal right to require works attributed to them be presented without substantial
alteration.
2. © in underlying script survives intact despite incorporation of that work into derivate work, one
who uses script (even w/permission), may infringe the underlying ©.
a. Unauthorized editing is infringement similar to any other use that exceeding the license
granted.
ii. Visual Artist Rights Act: Rights of Attribution & integrity. Independent of Sec. 106. Visual Art 200
pieces or fewer.
1. Right to prevent intentional distortion, mutilation, or modification prejudicial to honor or
reputation; and
2. Right to prevent destruction of work of recognized stature, and intentional or grossly negligent
destruction of work
3. Restrictions: Does not apply to WMFH; does not apply after author’s death; benefits cannot be
transferred or assigned; right to prevent destruction only applies to “recognized stature”; does not
require registration.
4. Martin v. City of Indianapolis: To sustain a claim for destruction of a work under the Visual
Artists Rights Act of 19990, an artist must show that the art in question is meritorious and that it
is recognized by experts or members of the artistic community.
a. Stature Test:
i. Visual art in question has stature (viewed as meritorious); AND
ii. Stature is recognized by art experts, other members of artistic community, or
some cross-section of society
Defenses
Copyright Law Kappes Spring 2018
a. Fair Use: Section 107: For Purposes such as criticism, comment, news reporting, teaching, scholarship or
research. In determining fair use factors incl.:
i. Factor 1: Purpose and character of the use [by the defendant], including whether such use is of a
commercial nature or is for nonprofit educational purposes
1. Transformative – adds something new – parody, news, comment, criticism
ii. Factor 4: Effect of the use upon the market for or value of the ©ed work.
1. Adverse impact for immediate or subsequent market. Including market for derivates.
iii. Factor 3: Amount and substantiality of the portion used in relation to the ©ed work as whole.
1. Quantitative and qualitative of materials used. Should be no more than necessary (can be lied)
iv. Factor 2: Nature of the ©ed work [of plaintiff].
1. Creative works are entitled to more protection. Works at core of intended © protection.
b. Criticism, Comment, News Reporting, Education
i. Harper & Row Publishers v. Nation Enterprises: The permitted use of a ©ed work is not expanded under
the fair use doctrine even if the subject matter is of high public concern.
a. Under ordinary circumstances, author’s right to control first public appearance of
undisseminated expression will outweigh a claim of fair use.
2. Crux of profit/nonprofit distinction is not whether the sole motive is monetary gain, but whether
the user stands to profit from exploitation of the ©ed material w/o paying the normal price.
ii. New Era Publications v. Carol Publishing: Criticism may impact market for original unpublished work,
but does not necessarily mean work is not fair use.
c. Parody and Transformative Uses: Parody: uses prior composition to comment on work; produces comic effect;
conjures up original work; knowledge of original work by viewers (hard to parody unknown.
i. Satire doesn’t directly conjure up original work, not required for commentary. Satire is not fair.
ii. Campbell v. Acuff-Rose Music – Sup. Ct. remanded (no winner)
1. The commercial nature of a parody is not dispositive in a fair use analysis.
2. More transformative the new work, the less significance of other factors.
iii. Rogers v. Koons: Bad faith weighs against fair use. Parody must be discernable.
d. Duplication of ©ed Works
i. Sony v. Universal City Studios (Betamax): The sale of articles of commerce does not constitute
contributory infringement if the product is widely used for legitimate, noninfringing uses.
1. Transformative purpose greatly expands fair use analysis beyond transformative use.
Timeshifting.
ii. American Geophysical Union v. Texaco: In a fair use analysis, the more the alleged infringing use
transforms the original work, the less will be the significance of the other facts, like commercialism, that
may way against a finding of fair use.
1. Photocopying not transformative. Publisher charge more for corporate clients.
e. Aggregative Uses
i. Bill Graham Archives v. Dorling Kindersley: A work is transformative if it adds something new, with a
further purpose or different character, altering the original work with new expression, meaning, or
message.
1. If a ©ed work is used for a transformative purpose, a fair-use analysis favors the creator of the
transformative work rather than the author the ©ed work.
ii. Authors Guild v. Google: The fair-use defense to a © infringement claim applies if a party copies books
to a searchable online database but allows users to view only small portions of the books.
1. Fair use is not a defense to © infringement if the infringer sells the ©ed works for profit without
the © holder’s consent.
2. Creation of full-text searchable allows public to search rapidly within each book for keywords.
Transformative purpose, while not transformative use.
f. Interoperability
i. Sega Enterprises v. Accolade: Where there is good reason for studying or examining the unprotected
aspects of a ©ed computer program, disassembly for purposes of such study or examination constitutes
fair use.
1. (1) legitimate purpose, and (2) no other means to access unprotected ideas.
g. Other Defenses: First Amendment, Misuse, Abandonment, Statute of limitations, independent creation; fraud on
the © office.
i. First Amendment
Copyright Law Kappes Spring 2018
VII.
VIII.
1. Eldred v. Ashcroft: courts rarely permit copying or distribution of protected works on 1A
grounds.
ii. Misuse – © used to control other markets; could be viewed under antitrust; must use product B if using ©
product A.
iii. Abandonment – must intend by objective manifestation to abandon (free is not abandonment)
iv. Statute of Limitations – three years with new accrual
v. Fraud on the © Office – invalidate registration, you cannot enforce ©.
Third Party Liability
a. Vicarious Liability – Respondeat Superior 1) Right and ability to supervise; AND 2) obvious (direct?) financial
interest
i. Shapiro, Bernstein v. H.L. Green
1. Analogies – spectrum of infringement liability
a. Landlord leasing to tenant engaged in illegal behavior (no infringement)
b. Owner of music hall hires band w/ increased profits of Owner’s authority (liable for
infringement)
2. Must first have a primary infringer. Strict liability for vicarious.
b. Polygram International Publishing v. Nevada/TIG: Financial benefits need not be direct, just expect gain
c. Contributory Liability – 1) knowledge of direct infringement; AND 2) material contribution (or inducement) of
infringement
i. A & M Records v. Abdallah: Sued owner of timeloaded audiotapes and duplicating equipment.
ii. UMG Recordings v. Sinnott – Flea Market
1. Actual or constructive knowledge is sufficient for contributory liability; once there is notice,
knowledge presumed.
d. Modern Technology and Third Party Liability
i. Sony Corporation v. Universal City Studios: One who distributes a devise with the object of promoting its
use to infringe © I secondarily liable for the resulting acts of third parties direct infringers.
1. Sale of copying equipment, does not constitute contributory infringement if product widely used
for legitimate unobjectionable purposes.
ii. Metro-Goldwyn Mayer v. Grokster - Inducement
1. One who distributes a device with the object of promoting its use to infringe © is secondarily
liable for the resulting acts of third parties direct infringers. Napster alternative (contributory &
vicarious)
2. Inducement: 1) affirmative intent to assist/active assistance to infringe, 2) direct infringement,
and 3) knowledge.
iii. Perfect 10 v. Visa Int’l Service: A party ay be contributorily or vicariously liable for © infringement, but
only if certain conditions are met.
1. Inducement – purposeful, culpable expression and conduct; stimulating others to commit
infringement.
2. Credit Card companies cannot be said to materially contribute to infringement because no direct
connection to infringement.
Digital Millennium © Act (DMCA) and Internet Service Provider Liability
a.
b.
Title 1: Anti-Circumvention (DRM Circumvention)
i. Preventing unauthorized access (no fair use)
ii. Preventing unauthorized copying (can use fair use defense)
Title 2: Safe Harbors (ISP Immunity)
i. Shields online service providers from secondary liability
1. Immunity requirements
a. Implement & communicate user policy of termination for repeat offenders
b. Configure networks to be compatible with standard technical measures for detecting infringement
c. Appointment of designated agent
d. Compliance w/DMCA notice & takedown scheme
e. Expressly disclaim any monitoring requirements
2. Eligible content
a. ISP has no actual knowledge of infringing materials;
b. ISP not aware of facts or circumstances from which infringement is apparent; or
c. Acts expeditiously to remove/disable access to material.
d. Does not receive financial benefit directly attributable to the infringing activity; AND
e. Upon notification responds expeditiously to remove/disable access to material claimed to be
infringing
Copyright Law Kappes Spring 2018
ii. Four different categories of conduct
1. Transitory communication (512(a)) pass through transmissions of data
2. System caching (512(b)) automatic short-duration storage for efficient operation
3. Info location tools (512(d)) search engine linking to infringing material
4. Storage of info at direction of users (e.g., YouTube) (512(c)) hosting third party websites or content,
different if FB or YouTube place content themselves)
iii. DMCA Takedown Notice
1. Provider must specify © agent
2. Submit notification under penalty of perjury
a. Notification requirements
i. 1) signature of © owner or authorized rep; 2) identifies © work; 3) identifies
material claimed to be infringing; 4) contact info for complaining party; 5)
statement of good faith belief of infringement by complaining party
b. Counter Notification
i. 1) signed by subscriber; 2) identification of material that has been removed or
access disabled; 3) statement of good faith belief that removal was mistake or
misidentification; 4) subscriber’s contact info; 5) subscriber’s consent to
jurisdiction where subscribers is locations or where ISP found
3. If not proper, then will not be considered
4. ISP Action
a. Must promptly notify subscriber that ISP has removed/disabled access to material
b. Upon receipt of counter notification, provide complaining party with copy
c. Replaces or restores access to material 10-14 days after receipt of counter notice absent
notice of filing of court action against subscriber
d. ISP immune to any claim of any improper takedown
c.
IX.
Title 3-5: Additional Provisions
i. Computer maintenance and repair; boat hulls; distance learning – public performance exception)
d. Viacom v. YouTube: The safe harbor in the Digital Millennium © Act requires actual knowledge or awareness of
specific infringing activity. Willful blindness.
Anti-Circumvention and Anti-Trafficking
a.
b.
Digital Rights Management (DRM) Technologies
i. Encryption (e.g., DVDs)
ii. Watermarking (e.g., digital photos-visible; digital signatures – invisible)
iii. If you can use DRM effectively, you can shortcut the legal process (self-help beyond scope of ©)
iv. Problems: consumer pushback, new rights (access, use), prohibition of fair use, easy circumvention.
Anti-Circumvention
i. Civil damages
ii. Criminal penalties up to $500k and 5 yrs imprisonment
iii. Exceptions: non-profit libraries and archives, law enforcement, reverse engineering for software compatibility,
encryption research, security testing, etc. No exceptions apply to trafficking.
c. Anti-Trafficking
i. Universal City Studios v. Reimerdes: Under the © Act, creating or distributing technologies designed to
circumvent technologies that limit access to ©ed material is prohibited.
1. To the extent that Sony protected substantial non-infringing technology, DMCA overruled.
ii. Chamberlain Group v. Skylink Technologies: Under the © Act, the plaintiff bears the initial burden of
proving that a defendant’s technology allows unauthorized access to a protected work in a way that
infringes a valid ©.
1. Plaintiff must prove:
a. 1) ownership of valid ©; 2) effectively controlled by technological measure that was
circumvented; 3) third parties can now access; 4) w/o authorization in a manner that; 5)
infringes or facilitates infringing a right protected by © act because of a product that; 6)
defendant either (i) designed or produced primarily for circumvention, (ii) made available
despite only limited commercial significance other than circumvention, or (iii) marketed
for use in circumvention of the controlling technological measure
iii. MDY Industries v. Blizzard Entertainment: DMCA creates new property right – right to prevent
circumvention of access controls, broadly works protected under title 17
1. To effectively control access to work, technology measure must in the ordinary course of
operation, require application of info or a process or a treatment with the authority of © owner to
gain access to work.
Copyright Law Kappes Spring 2018
X.
XI.
Remedies
a. Injunctive Relief
i. TRO/Preliminary Injunctions: Likelihood of success on the merits, length of time that takes to ask for
TRO matters, length of infringement matters
ii. Permanent Injunctions
1. Irreparable injury - Generally not presumed after eBay; may be more likely if defendant can’t pay
damages
2. Money damages inadequate to compensate
3. Balance of hardships
4. Pubic interest:
iii. Metro-Goldwyn Mayer Studios v. Grokster: One who distributes a device with the object of promoting its
use to infringe © is secondarily liable for the resulting acts of third parties direct infringers.
b. Money Damages (always ask for interest for damages!)
i. Profits, damages to plaintiff, costs, treble damages, attorney’s fees
1. Frank Music v. Metro-Goldwyn Mayer: When calculating damages for © infringement based on
the defendant’s profits, courts should incl. direct and indirect profits attributable to the
infringement, along with prejudgment interest.
ii. Statutory Damages
1. Liable for $750 - $30k per song, feature film, etc. illegally traded as the court considers just.
a. Up to $150k per title if intentional or willful
2. Columbia Pictures Television v. Krypton Broadcasting: A © holder may seek statutory damages
for each infringed work.
iii. Impoundment and Destruction, 17 USC 503(a), or transfer to plaintiff
Steps of a © Case
a. Always existence of a valid ©
i. Original works of authorship
1. Not copied from another
2. Minimally creative
ii. Fixed in a tangible medium
iii. Specific exclusions
1. Facts & ideas that are not expression
2. Useful articles
3. Other 102(b) exclusions
b. Was there infringement?
c. Do I have a special defense (fair use, etc.)
d. Result?
Duration
Works created on or after
1978
Works created but not
published before 1978
Works published between
1964 and 1977
Woks published between
1923 and 1956
Works published before 1923
Start
Fixation
Jan. 1, 1978
Publication
Publication
Term
Individuals
Life of author plus 70 yrs
Works made for hire,
95 years from publication
anonymous works,
or 120 years from fixation,
pseudonymous works
whichever is shorter
Life of author plus 70 yrs, but © lasts until Dec. 31, 2002. If
published before 2002, then until Dec. 31, 2047.
28 yr initial term
67 yr renewal term,
automatic
28 yr initial term
67 yr renewal term, but
only if properly renewed
No copyright protection