Copyright Law
Ronald W. Staudt
Class 19
October 31, 2013
Class Overview
Quick Review of Derivative Right and VARA
Distribution Right and First Sale Doctrine
Sects. 106(3) and 109
Importation Right
Sect 602 and Quality King and Kirtsaeng
Derivative Works- Limitations
Family Movie Act
Sanifilms hypothetical, p. 668
Software Adaptations - Sect. 117
Moral Rights
Gilliam v ABC
work?
Lanham Act
Dastar and list of cases pp. 676-7
VARA
Painting, drawing, print, sculpture, photograph
NOT- movies, magazines, posters, databases, ads,
books, diagrams, models, works for hire etc.
A “work of visual art” is—
(1) a painting, drawing, print, or sculpture, existing in a single copy, in a
limited edition of 200 copies or fewer that are signed and consecutively
numbered by the author, or, in the case of a sculpture, in multiple cast,
carved, or fabricated sculptures of 200 or fewer that are consecutively
numbered by the author and bear the signature or other identifying mark
of the author; or
(2) a still photographic image produced for exhibition purposes only, existing
in a single copy that is signed by the author, or in a limited edition of 200
copies or fewer that are signed and consecutively numbered by the author.
A work of visual art does not include—
(A) (i) any poster, map, globe, chart, technical drawing, diagram, model, applied
art, motion picture or other audiovisual work, book, magazine, newspaper,
periodical, data base, electronic information service, electronic publication, or
similar publication;
(ii) any merchandising item or advertising, promotional, descriptive, covering, or
packaging material or container;
(iii) any portion or part of any item described in clause (i) or (ii);
(B) any work made for hire; or
(C) any work not subject to copyright protection under this title.
Phillips v. Pembroke Real Estate
Site-specific v. plop
art, a park as a
sculpture
Public presentation
State’s MAPA- broader
and constitutional
Eastport Park
§ 106. Exclusive rights in
copyrighted works
“Subject to sections 107 through 121, the owner of
a copyright under this title has the exclusive
rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies
or phonorecords;
(2) to prepare derivative works based upon the
copyrighted work;
(3) 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; “
§ 109. Limitations on exclusive
rights: Effect of transfer of particular
copy or phonorecord
(a) Notwithstanding the provisions of
section 106(3), the owner of a particular
copy or phonorecord lawfully made under
this title, or any person authorized by such
owner, is entitled, without the authority of
the copyright owner, to sell or otherwise
dispose of the possession of that copy or
phonorecord.
Distribution Right - 106(3)
Digital technologies, p. 706
Playboy cases and RTC v. Netcom
“Making available” & music sharing
Electra Ent Group and London-Sire Records
• “MediaSentry, posing as just another peer-to-peer user, can
easily verify that copyrighted material has been made
available for download from a certain IP address. Arguably,
though, MediaSentry's own downloads are not themselves
copyright infringements because it is acting as an agent of
the copyright holder, and copyright holders cannot infringe
their own rights. If that argument is accepted, MediaSentry's
evidence cannot alone demonstrate an infringement.”
London-Sire Records 542 F. Supp. 2d 153, 166 (DC Mass 2008)
Electra Ent. V. Barker -
publication and distribution
 “Having accepted that the definition of "distribute" is synonymous
with the definition of "publication," however, liability under Section
106(3) requires that Plaintiffs -- to be faithful to the statute -affirmatively plead that Defendant made an offer to distribute, and
that the offer to distribute was for the purpose of further
distribution, public performance, or public display….
Thus, because Congress did not expressly equate the act of
"offering to distribute . . . for the purposes of further distribution"
to the act of "making available," Plaintiffs' allegations -- insofar as
Plaintiffs wish to hold Defendant liable for acts of infringement
other than actual downloading and/or distribution -- fail to state a
claim.” 551 F. Supp. 2d 234 , 244-5 (DC SD NY 2008)
London-Sire Records
“Making available” & music sharing—
“Plainly, "publication" and "distribution" are not identical. …In this context, that
means that the defendants cannot be liable for violating the plaintiffs'
distribution right unless a "distribution" actually occurred.
…The Court can draw from the Complaint and the current record a reasonable
inference in the plaintiffs' favor -- that where the defendant has completed all
the necessary steps for a public distribution, a reasonable fact-finder may infer
that the distribution actually took place. … Per the plaintiffs' pleadings, each
individual Doe defendant connected to the peer-to-peer, network in such a way
as to allow the public to make copies of the plaintiffs' copyrighted
recordings…Through their investigator, the plaintiffs have produced evidence
that the files were, in fact, available for download. They have also alleged that
sound recordings are illegally copied on a large scale, supporting the inference
that the defendants participated in the peer-to-peer network with the intent that
other users could download from the defendants copies of the plaintiffs'
copyrighted material….At least at this stage of the proceedings, that is enough.
The plaintiffs have pled an actual distribution and provided some concrete
evidence to support their allegation.”” 542 F. Supp. 2d 153, 169 (DC Mass 2008)
Publication 17 U.S.C. 101
“Publication” is the distribution of copies or
phonorecords of a work to the public by sale or
other transfer of ownership, or by rental, lease,
or lending. The offering to distribute copies or
phonorecords to a group of persons for
purposes of further distribution, public
performance, or public display, constitutes
publication. A public performance or display of a
work does not of itself constitute publication.
Making available
 Elektra Ent.- distribution = publication but P did not
allege “offering to distribute..for the purposes of further
distribution.”
 London-Sire Records– electronic file transfers fit within
def. of distribution; Media Sentry proves feasibility of
distribution, allegations and proof raise circumstantial
inference of at least one download
 Capitol Records– WCT and WPPT are not self executing.
”The Court's examination of the use of the term "distribution" in
other provisions of the Copyright Act, as well as the evolution of
liability for offers to sell in the analogous Patent Act, lead to the
conclusion that the plain meaning of the term "distribution" does
not including making available and, instead, requires actual
dissemination. “
First Sale Doctrine
- what is a sale?
Vernor v. Autodesk
Facts re Autocad 14 and eBay
Owner v. Licensee
Wise Factors
• Labeled a license, retain title, return/destruction of prints, no
duplication, licensee to retain copies during agreement.
MAI trio (117 essential step doctrine)
Rule of this case: It’s a license if
• Labeled a license
• Significant transfer restrictions
• Notable use restrictions
Policy arguments
Tiered pricing, increased sales, lower prices, less piracy
D says restrains alienation, ignores economic reality, upsets ALA
First Sale Doctrine –
what is a sale?
UMG Recordings v. Augusto
Facts re promotional cds
No fee, unsolicited, marked with label
“promotional statement”
Owner v. licensee for 109 purposes?
•
•
•
•
•
No prior arrangement
Not numbered or identified or tracked
No explicit acceptance by recipients of license status
Vernor factors?
Return of CD not required.
Digital First Sale– ReDigi in supp. @ p. 77
109(b) – record rental exception
 Notwithstanding the provisions of subsection (a), unless
authorized by the owners of copyright in the sound
recording and in the musical works embodied therein,
the owner of a particular phonorecord may not, for
purposes of direct or indirect commercial advantage,
dispose of, or authorize the disposal of, the possession
of that phonorecord by rental, lease or lending.
 Brilliance Audio
 Soundrecordings of musical works or any soundrecording??? Are audio
books covered?
 Context and legislative history – Congress intended to protect only
sound recordings of musical works.
§ 602. Infringing importation of
copies or phonorecords
(a) Importation into the United States,
without the authority of the owner of
copyright under this title, of copies or
phonorecords of a work that have been
acquired outside the United States is an
infringement of the exclusive right to
distribute copies or phonorecords under
section 106, actionable under section 501.
§ 501. Infringement of copyright
(a) Anyone who violates any of the exclusive
rights of the copyright owner as provided by
sections 106 through 122 or of the author
as provided in section 106A(a), or who
imports copies or phonorecords into the
United States in violation of section 602, is
an infringer of the copyright or right of the
author, as the case may be.
§ 109. Limitations on exclusive
rights: Effect of transfer of particular
copy or phonorecord
(a) Notwithstanding the provisions of
section 106(3), the owner of a particular
copy or phonorecord lawfully made under
this title, or any person authorized by such
owner, is entitled, without the authority of
the copyright owner, to sell or otherwise
dispose of the possession of that copy or
phonorecord.
John Wiley v. Kirtsaeng
Facts
Friends and family buy textbooks in Thailand,
ship them to D in California and he sells them
on eBay.
DC rejects sect 109 defense
$600,000--$75,000/each of 8 titles
“lawfully made under this title…”
109 v. 602 and Quality King
Inportation Right & First Sale
Quality King Distributors v. L’Anza Research
The first sale doctrine is applicable to imported copiesfacts presented are round trip copies made in US and
reimported.
602(a), importation right
106(3), distribution right
109(a) first sale doctrine
Unanimous but J. Ginsburg round trip gloss
John Wiley v. Kirtsaeng-- below
Majority decision:
“The first sale doctrine does not apply to copies manufactured
outside the United States…”
J. Murtha dissent
Statute does not say manufactured in the United States , it says
“lawfully made under this Title.”
Policy reasons and economic justifications
Quality King gloss??
John Wiley v. Kirtsaeng-majority
Holding: reversed--first sale doctrine applies to
copies of a copyrighted work lawfully made
abroad.
“Lawfully made under this title”
2nd, 9th , Wiley and SG—refers to geography
Brief for US as Amicus Curiae 5 and 9th say it refers to
copies made in US or made outside US and sold with
permission in US
D and majority say nongeographic interpretation is
better fit with language, context, c/l history and
practical consequences..
John Wiley v. Kirtsaeng
 Language_ geographic interpretation creates problems, simplicity
and coherence favor D’s interpretation
 Context- 1909 language and 109(c) 109(e) 110(1) and introduction
to 106 cannot support geographic interpretation
 c/l history in Bobbs-Merrill does not preclude d’s interpretation
 ALA, used book dealers, tech companies, consumer goods comps
and museums.—list of horribles
 P says not likely and didn’t follow Scorpio
 Here, we are not sanguine, law has been unsettled, 9th circuit gloss (which
cannot be located in the statute) etc
 Downstream control over authorized imports (no first sale applicable)
John Wiley v. Kirtsaeng
 Quality King dicta about author giving US and British distribution
rights to two different publishers: only the US edition would be
“lawfully made under this title…”—dicta and wrong.
 Market segmentation now in trouble???
 109 undermines domestic segmentation
 Anti trust law disfavors segmentation
 If Congress wants this interest favored, needs to speak more clearly
 Perpetual downstream control worse than lack of market segmentation
 Quality King concession that it is unlikely Congress would write into the
law an incentive for oversees manufacuturing
John Wiley v. Kirtsaeng
 Kegan and Alito- if there is a problem now it was
caused by Quality King which imposed 109 limits on
602. If Quality King were reversed, we would not be
faced with the choice between perpetual downstream
control v. destruction of market segmentation. Lawful
owners of copies made abroad could resell but not
import.
John Wiley v. Kirtsaeng
Dissent by Ginsburg, Kennedy and Scalia
(interesting alliance?)
Quality King dicta better result.
Title 17 has no extraterritorial application
Text exp. Word “under” favors P, consistent with 602(a)(3)
c exceptions
History supports P
International exhaustion?—US takes national exhaustion
position in trade talks.
Antitrust, horribles- where are they?