Copyright Outline (Fall 2009) – Jennifer Tam
Introduction
I.
Copyright law in general a.
copyright is about property rights in expressive works i.
in rem rights  rights that avail against the rest of the world ii.
cannot just go around giving people property rights, many people are immediately subject to them b.
what does copyright mean? i.
copyright law creates and protects rights in original works of authorship ii.
copyright is essentially a bundle of rights in literary, musical, choreographic, dramatic, and artistic works
1.
the rights are exclusive and avail against the rest of the world
2.
6 specific rights iii.
copyright law today encompasses most literary, artistic, and musical works, but also architectural works and computer software and some kinds of databases
1.
rights also expanded: derivative works rights, performance rights, and display rights  the right to use (and to authorize the use of) the work iv.
copyright is a form of legal adaptation, a response to new technologies in the reproduction and distribution of human expression (and the social, cultural, and economic trends of those technologies) c.
federal copyright law i.
purpose: protects expressive, original works of authorship ii.
term: length of the author's life plus 70 years iii.
how to get a copyright
1.
copyright does not spring into existence as a result of an official decision, but originates in the creative act in an author a.
the work must be: i.
original (originates with the author)
I.
II.
not copied also implies creativity ii.
fixed in tangible medium of expression
I.
pretty flexible
2.
subsequent registration of a copyright with the Copyright Office enhances the value of an owner's right, but is not the source of it iv.
defending a copyright
1.
scope of right is very broad: 6 exclusive rights, moral rights (important in other countries)
2.
important exception for infringement is fair use
II.
Intellectual property law a.
in general, is comprised of 3 different branches i.
what they all have in common is that they protect rights in information ii.
subject matter is intangible, not physical
1.
creates boundary problems, definition problems
2.
not standard assets b.
the 3 branches of intellectual property law i.
patent law = limited "monopoly" for new and inventive products, process, and designs ii.
trademark law = prohibition on product imitators, to prevent passing off goods and services as products of others iii.
copyright law = protection of "original works of authorship" c.
federal patent law i.
purpose: protects innovative products, processes, compositions of matter, and product designs
1.
creates a limited monopoly in return for disclosure of the patentee's discovery ii.
term: generally 20 years from the date on which the application for the patent was filed
1.
14 years from issuance for design patents iii.
how to get a patent
1.
claimant's rights depend wholly on a government agent (the U.S. Patent and Trademark Office)
2.
need to apply with the U.S. Patent Office a.
undergo a review process b.
must specify what you're claiming (what you want to be protected) to the examiner c.
must explain what your contribution is, over the status quo of the prior art
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3.
process is time-consuming and expensive a.
patents must be applied internationally, too iv.
types of patents
1.
utility patents a.
invention must be: i.
new (contrast to copyright, which only requires "original") ii.
useful (invention must work as described in the patent application and must confer some technological benefit upon humankind) iii.
non-obvious (examine scope and content of prior art, differences between prior art and claim, and level of ordinary skill of a worker in the discipline) iv.
a product or process
2.
plant patents a.
given for discovering and asexually reproducing new and distinct plant varieties
3.
design patents (only a 14 year term from grant date) a.
given for new, original, and ornamental designs for articles of manufacture v.
defending a patent
1.
can bar others from manufacturing, selling, and importing the patented invention
2.
very few defenses for the defendant
3.
the Patent Act allows for injunctions up to 3x damages for certain infringements
4.
appeals can be taken to the Court of Appeals for the Federal Circuit
5.
in litigation, the patentee runs the risk of having the patent invalidated, even after incurring the expense of obtaining the patent d.
federal trademark law i.
purpose: protects symbolic information that signifies the origin of goods and services
1.
essence of a trademark right is in use of the mark
2.
a mark can be a word, symbol, or device used as a brand for a product or service, so long as it is used by a business to distinguish its goods or services from those of others a.
a proxy for a company's goodwill b.
began as a branch of consumer protection law, to prevent consumer confusion i.
originates in common law c.
has changed now – identifying marks themselves have become extremely valuable i.
Google's trademark is worth $66 billion ii.
term: infinite
1.
can be abandoned by non-use or can fall to public domain if it no longer distinguishes the goods or services (ex: aspirin, trademark name becomes the generic name of the product) a.
generic if it no longer distinguishes the brand from the product or process (as opposed to distinguishing the brands from each other) iii.
how to get a trademark
1.
the right springs directly from the claimant's qualifying use of a mark on a product, with or without later confirmation of an official registration a.
the substantive right to preclude others from using the mark vests only when the use has been demonstrated
2.
can file with Trademark Office, too a.
can register it before using it, too, but must use it within a few years b.
the Lanham Act established registration system for trademarks and confers procedural advantage in litigation to registered trademarks c.
is optional, but get more advantages i.
constitutes constructive notice to the rest of the world ii.
evidences ownership iii.
can help to establish priority in other countries
I.
help show "first in time" iv.
invokes federal jurisdiction over trademark, puts you in federal court
3.
trademark must be: a.
non-deceptive b.
not confusingly similar to another mark c.
not merely descriptive of the goods or deceptively mis-descriptive of them iv.
defending a trademark
2

1.
get exclusive right to use the mark in connection to your products and services, and right to bar others from using an identical mark or a similarly confusing mark in connection with their product and service
2.
trademark is infringed when a 3 rd party, without authorization, uses a confusingly similar mark on similar goods or services a.
test is whether the concurrent use of the 2 marks would likely cause consumers to be mistaken or confused about the source of origin or sponsorship b.
a lot of litigation about what is confusingly similar
3.
generally, the parties must be competition a.
in 1995, Congress passed a provision adding protection for "famous" marks against dilution, which doesn't require competition b.
only injunctive relief is available, unless the wrongful use was willful e.
state intellectual property law i.
unfair competition laws (complement to federal trademark law)
1.
provide a cause of action when one company passes off its goods or services, or itself, as something or someone else
2.
protects businesses from wrongful, unethical, or deceptive business practices adopted by competitors a.
torts-based body of law
3.
evoked a lot in trademark infringement suits a.
often go together ii.
trade secrets laws (complement to federal patent law)
1.
protect commercially valuable information that is not widely known to the public and whose holder adopted reasonable measures to maintain its secrecy a.
most famous example is the Coca-cola formula i.
instead of patenting it, they use trade secret protection
2.
covers broader subject matter than patents a.
extends to customer lists, marketing plans/strategies, know-how, and other info b.
any formula, pattern, device, or compilation of information which is used in one's business, which gives that person an opportunity to obtain an advantage over competitors who do not know or use it
3.
does not necessarily imply exclusive rights, though a.
>1 person knowing it does not disqualify it as a trade secret, as long as not public
4.
another difference from patent is that it does not require disclosure a.
that's what patent is all about – exchange of disclosure for a temporary monopoly b.
trade secrets are the mirror opposite i.
protection exists as long as it is not public
5.
trade secret term is for however long the secret lasts a.
infinite in principle
6.
trade secrets have the attributes of property, and can be licensed, taxed, and inherited
7.
can only be enforced against improper appropriation (theft or breach of contract) a.
often said to protect a relationship than a property interest iii.
common law copyright
1.
now almost entirely preempted by federal law a.
note that under the 1909 Copyright act, unpublished works were given protection under state common law copyright
2.
the 1976 Copyright Act now protects works as of their creation a.
§ 301, establishes its preemption b.
states can no longer regulate any topic that has been addressed by the federal
Copyright Act
3.
still has some power a.
state copyright law may be invoked, still, in reference to works of expression that have not been fixed i.
ex: improvisations, extemporaneous speeches that haven't been recorded b.
but not nearly as important as it used to be iv.
right of publicity
1.
an intangible right recognized by the courts in 1953
2.
the right to enjoy the economic value associated with a celebrity's name, likeness, image, voice, or any other evocation of the celebrity's traits
3

a.
right that celebrities have
3.
prohibits appropriation of the plaintiff's name or likeness for commercial benefit a.
harm occurs because the celebrity has been deprived of a property right in the fruit of her labors – the ability to exploit her name or likeness commercially
4.
more an absolute right than trademark or unfair competition rights  based on theory of unjust enrichment
5.
action only requires theft of good will by the defendant's unauthorized use of the plaintiff's name or likeness
6.
continues to develop and grow as an area of law v.
misappropriation (the big umbrella)
1.
the broadest and vaguest doctrine under state law
2.
traces back to INS v. AP, 248 U.S. 215 (1918), in which "hot news" stories from the AP service were beat to publication by INS a.
activities deemed to be a new variety of unfair competition called "misappropriation" b.
created a quasi-property right in the news i.
a right that avails only against some people ii.
the public is free to discuss news, but competitors do not have the same rights
3.
something can still be invoked in both state and federal court a.
any type of IP case b.
the more recent history of the doctrine in courts is mixed
4.
most likely cases when: a.
1) the plaintiff, by substantial investment, has created a valuable intangible not protected by patent, trademark, copyright, or breach of confidence laws b.
2) the intangible is appropriated by the defendant, a free rider, at little cost c.
3) the plaintiff is injured and jeopardized in continued production of the intangible f.
international copyright i.
there has never been a "universal" copyright system
1.
instead, the author who wishes to protect his work abroad must typically look to the pertinent national laws of the countries where production is sought
2.
these national laws, in turn, are stitched together by a series of international agreements prescribing the conditions under which countries must give recognition under their domestic laws to works of foreign origin
3.
"formal reciprocity" of protection: that works originating in a signatory state would be assimilated, for purposes of domestic law, to those created by nationals of another signatory ii.
the Berne Convention
1.
the oldest and preeminent multinational copyright treaty
2.
campaign in the 1850s to establish world-wide recognition that copyright is a natural and indefeasible right which arises in the first instance (without state intervention) from the very act of "authorship" itself
3.
created the 1886 Act of the Berne Convention for the Protection of Literary and Artistic Works
4.
but it did not create a universal law of copyright
5.
premised on principle of "national treatment"
6.
evolved over more than a century, and has greatly improved the level of protection for copyright worldwide a.
established an international copyright regime which is truly multilateral (rather than bilateral or regional) i.
Convention "minima" supplement the principle of national treatment by setting a "floor" below which signatory countries may not go in extending protection to qualifying foreign works iii.
in 1891, the "Chace Act" was an amendment to U.S. copyright law, allowing the President to extend protection, by proclamation, to works originating in particular foreign countries (in return for those countries' protection of U.S. authors) iv.
the Paris Act of 1971 = current text of the treaty, to which the U.S. has adhered
1.
administered by the World Intellectual Property Organization ("WIPO") a.
intergovernmental organization with headquarters in Geneva
2.
subject matter: every production in the literary and artistic domain, whatever mode or form
3.
basis: must be given to published or unpublished works of an author who is a national of a member state
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4.
preclusion of formalities: requires protection in foreign countries without any administrative formalities
5.
minimum term of protect: life plus 50 years, or 50 years from publication for cinematographic works and anonymous works
6.
exclusive rights granted are similar to those in § 106 of the 1976 U.S. Copyright Act
7.
have fair use exception
8.
enforcement: Article 33(1) provides for the submission of disputes among member states to the jurisdiction of the International Court of Justice in the Hague a.
usually don't take it there, so it ends up being policed by the member countries' domestic laws v.
in 1988, the Berne Convention Implementation Act passed in the U.S.
1.
the 1976 Act eliminated many of the impediments to Berne administration from earlier
Background
I.
History of copyright a.
began with the printing press i.
allowed works to become more easily reproducible ii.
makes expressive works more valuable, easily disseminated and sold
1.
but then other people could copy and sell the work, too b.
in 1557, in response, the Crown passed an act i.
feared the dissemination of materials against the church and crown ii.
gave a monopoly to the Stationare's (?) Company to print and copy works c.
in 1694, the monopoly expired i.
the Company lobbied for the extension of the monopoly ii.
the Crown didn't listen d.
in 1710, have the first copyright law in the Western tradition, the Statute of Anne i.
the Statute of Anne in 1710, the first English copyright act
1.
subject matter only concerned printed books
2.
amounted to the exclusive right to print and publish it ii.
the trigger to get protection was publication iii.
the list of exclusive rights primarily contained the right to make copies iv.
duration of 14 years
1.
could add another 14 year term if the author was still alive e.
in 1790, in response to the Copyright Clause, the first Copyright Act is passed i.
Constitution gave Congress power to promote 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 ii.
the protected areas included maps, charts, and books iii.
the trigger to get protection was publication
1.
subsequently two other methods were added: a.
registration b.
deposit (in the Library of Congress) iv.
the exclusive rights included the right to print, reprint, publish and vend v.
duration of 14 years (plus 14 years again) f.
in 1901, major revision to the Copyright Act i.
significant expansion to the subject matter (all works of an author) ii.
triggers were notice (publication), registration, and deposite iii.
exclusive rights added adapt, translate, deliver, read and present, perform iv.
protection term was doubled to 28 years (plus 28 years) g.
brings us to the current state of things – the 1976 Copyright Act i.
subject matter becomes open list that includes:
1.
literary works
2.
musical works
3.
dramatic works
4.
graphic or sculptural works
5.
motion pictures and audiovisual works
6.
sound recordings
7.
architectural designs ii.
the triggers required are:
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1.
fixation
2.
note that: a.
registration and deposit now optional b.
no need for publication or notice iii.
original term was life plus 50 years, but was amended h.
in 1998, the 1976 Act was amended i.
the term is amended to life plus 70 years ii.
enactment of Digital Millennium Copyright Act as an amendment
1.
§ 1201 of the DMCA a.
ban on circumvention of technological protection measures employed by content owners
2.
§ 512 of the DMCA a.
liability of internet service providers (ISPs) imposed b.
but created a safe harbor for a compromise i.
protected ISPs from damages if they comply with conditions listed in the statute i.
copyright protection has expanded in all dimensions i.
subject matter, triggers (more minimal, less prerequisites, easier to gain protection), exclusive rights, terms (getting longer) ii.
sources of expansion
1.
more interest groups have stakes in its development
2.
technology is expanding a.
more ways to spread information, need more ways to protect authorship
II.
Theories behind copyright a.
utilitarian conception (incentive theory) i.
strongly linked with the language in the Constitution's Copyright Clause, and remains dominant in
American judicial opinions
1.
says its purpose is to promote creative works a.
not really focusing on the authors per se
2.
a means  ends structure
3.
want to encourage the science and arts because it's good for society
4.
focus on reaching a certain desirable result for society at large, instead of the author ii.
premised implicitly on economic reasoning
1.
starts with concept of public goods (in the economic sense) a.
have two characteristics i.
non-rivalrous consumption
1.
note that this characteristic does not exist for intangible/info goods a.
anyone can use the good, infinitely ii.
non-excludability of benefits (very difficult or expensive to prevent free riders from enjoying the good)
1.
ex: national defense can be enjoyed by anyone in the country, even if they do not pay their taxes iii.
if works of the mind are brought to the market, because they are intangible, they become a public good
 so the author gets an insufficient return and will not be incentivized to create
1.
underproduction problem
2.
original authors bear the costs of creation and production (their time, resources, labor, etc.)
3.
copiers do not have to incur those costs a.
can charge a lot less (or nothing) b.
huge cost advantage, supplemented by informational advantage (can see how popular the work will be, how much the demand is) i.
already know the Mann curve when they operate
4.
authors will never be able to recoup their initial investment in the creation of the work because the copiers' copies will drive the value of the work down to nothing
5.
so the authors will just not write the book – not worth it iv.
the solution is to provide special incentives for the desired activity – copyright law
1.
solve the "public good" problem by recognizing a property right in the work, but the exercise of that monopoly is carefully circumscribed through regulation a.
tries to give authors a period of exclusivity, so that they will have opportunity to profit from their work
6

b.
formal recognition of property rights to create incentive for authors to produce expressive works c.
society will suffer without this protection, since fewer works will be made
2.
but balance ideas like originality, idea/expression dichotomy, and fair use since the copyright monopoly is limited in time v.
criticisms of this theory
1.
there are other inherent incentives in making a creative work a.
people want fame, recognition, respect b.
human beings like to do creative things just to do them (enjoyment), creativity is embedded in humanity i.
hardwired to be creative (per Lessig, Benkler) ii.
ex: YouTube, blogs c.
people like to contribute to community (altruism) d.
works are sometimes criterion of job, advancement, etc.
2.
there are some works that might not help society (no value) or might hurt it (negative value) vi.
most influential theory in U.S. copyright law b.
natural law conception (Locke's labor theory) i.
natural rights or inherent entitlement ii.
just as old as the utilitarian view, but is not as prominent in the U.S. (but in other countries) iii.
premised on the idea that individual who has created a piece of music/art should have the right to control its use and be compensated for its sale
1.
like a farmer is paid for his crops
2.
the author has enriched society with his contribution, so he has a fundamental right to obtain a reward commensurate with its value iv.
trying to figure out how resources move from the commons to private property v.
explaining the acquisition process
1.
1) ownership over one's body (at the very minimum we own our bodies)
2.
2) ownership of one's labor a.
labor is produced by our bodies
3.
3) by mixing labor with unowned/common resources, one establishes private property in the resources vi.
he put some limitations on his theory
1.
cannot commit waste
2.
must leave as much and as good for others a.
the second limitation shows that he didn't really think it through – no physical resources can be consumed without reducing consumption opportunities for others vii.
application to copyright theory
1.
can say that we are surrounded by a universe of expressive building blocks (notes, colors, shapes, letters)
2.
mix the author's own mental labor and physical labor with those blocks, then creates a property right in the resulting expressive work
3.
what about Locke's limitations? a.
don't really take anything away when create an expressive work b.
independent creations (even if they create identical works) are allowed under copyright laws c.
limited in time, so returns to the commons eventually viii.
problems of application of labor theory in modern law
1.
we don't use labor as the keystone of the law (no investment of labor required) a.
photography doesn't require much labor b.
case: Feist Publications v. Rural Telephone i.
if all you did was invest a lot labor but lack a measure of creativity, you will not get any protection ii.
even though there no question that you put a lot of effort into the process
2.
multiple authors can participate in a creative process, but very few will receive property rights in the final product
3.
fits pretty well, but there are some places where it doesn't quite work ix.
does appeal to our sense of fairness
1.
that labor and time spent deserves reward and ownership c.
Hegel's personality theory
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i.
extension of Locke is Hegel's Personality Model
1.
trying to protect "moral" rights – the author's rights of "integrity" and "attribution"
2.
protecting the works as an extension of the author's personality ii.
started with physical property, but extended those theories to copyright iii.
believed that external objects are essential for the constitution of the self iv.
the key element is the human will and personality
1.
property is essential for the constitution of the self or for human flourishing
2.
express or present yourself to the rest of the world
3.
note Hegel was actually very against slavery, because cannot own people with their own personalities v.
societal recognition is important to the process of self-actualization  legal protection represents society's stamp-of-approval and recognition of the self vi.
application to copyright theory
1.
perhaps expressive works embody to a greater extent the personality of the author
2.
should distribute more copies so that more people will know about you and you will flourish
3.
the linkage between the author and the work should never be severed
4.
touchstone here is originality, which is consonant with the law a.
moral rights are also consistent vii.
problems of application of personality theory in modern law
1.
multiple authors mean there are multiple personalities reflected in the work, and how should the rights in the work be allocated?
2.
copyright nowadays protect functional work (ex: software) that do not necessarily incorporate the author's personality a.
their creation is guided by function b.
might be able to argue that even in software that the personality can come through
3.
the right also ends at some point, severing the connection between author and work (but they are also dead at that point) viii.
this theory is very influential
1.
courts do believe that there is something unique about each author which qualifies them for copyright protection d.
Netanel's democratic paradigm i.
two purposes for copyright law
1.
productive function a.
imports the incentive theory's arguments b.
this is just phase one, though
2.
structural function a.
is more important b.
copyright law guarantees democratic rule c.
the key is not the number of expressive works, or whether they are high or low quality, but what is really important is enabling and supporting an independent, creative sector that need not rely on the good graces of the government d.
can provide the citizenry with constant informational and artistic feed that is necessary to maintain a democratic society e.
other rhetorics i.
rhetoric of misappropriation
1.
appeals to "fairness"
2.
one person cannot profit unfairly from the intellectual labor of another ii.
rhetoric of the public domain
1.
promotion the limitation on copyright
2.
arguing the limit on copyright is part of the constitutional scheme
3.
robust, open market is a good in its own right
4.
the non-property-ness of some information can promote various good social and cultural ends iii.
new economic rhetoric
1.
copyright is necessary to prevent free rides from undermining the market in creative expression, notwithstanding a concern for copyright's "social cost"
2.
copyright is a mechanism for market facilitation – moving creative works to their highest socially valued uses iv.
rhetoric of social dialogue and democratic discourse
1.
perceives a nexus between "social dialogue" and the creative process
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2.
must reinforce the elaboration of new communications technologies
3.
promoting openness, freedom, and diversity of expression v.
rhetoric of "deference"
1.
judicial deference – in the way the law has been previously developed and interpreted
Prerequisites of Copyright Protection
I.
Requirements of copyright protection a.
the Copyright Act of 1976 establishes fundamental prerequisites for copyright protection i.
originality ii.
fixation iii.
a modicum of creativity (implied) b.
1976 Act, § 102(a): i.
"Copyright protection subsists . . . in the original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device."
Fixation
I.
Fixation, generally a.
a work is incapable of protection under federal law unless it is "fixed" in a "tangible medium of expression" i.
the medium can be one "now known" or "later developed"
1.
phonorecords are the embodiment of musical works
2.
copies are embodiments of all other works ii.
fixation is sufficient if the work "can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device" b.
fixation is important on two different dimensions i.
copyrightability ii.
infringement
1.
one of the exclusive rights of the author is to control the making of copies
2.
if someone makes an unauthorized copy of the work, then they have infringed a.
they "fixed" without permission
II.
Source of fixation requirement a.
originates from the Copyright Clause of the Constitution i.
allows Congress to make laws to protect the "Writings" of authors ii.
evidentiary reasons
1.
certainty to actors
2.
reduces adjudication costs to fact finders
3.
ensures that there are claims for things that can actually be copied or stolen iii.
gives notice to the rest of the world iv.
adds value by allowing more people to access and consume the work v.
creates markets for the copyrighted works
1.
better to be traded, need some physical embodiment of the good b.
fixation's qualities i.
durable, long-lasting ii.
the law gives 3 requirements
1.
embodiment in a physical object a.
originally, performances and speeches were not copyrightable but Act was later amended in 1989 to prohibit bootlegging, without fixation by author b.
Title 17, § 1101 prohibits the practice of bootlegging i.
not fixed, has no authority under the Copyright Clause of the Constitution ii.
is under the Commerce Clause power (only for recordings that move through commerce) – U.S. v. Martignon (2d. Cir. 2007)
2.
authorization (by or under the authority of the author) a.
ex: student can't copyright his notes if the professor forbids note-taking
3.
sufficiently permanent to allow the work to be perceived, reproduced, or communicated, directly or indirectly, with the aid of a machine, for a period of more than a transitory duration a.
the "with the aid of a machine" language was a result of White-Smith Music
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III.
The fixation floor  not transient a.
note the House Report on this Act says that transient images do not satisfy fixation b.
there is supposed to be a floor on fixation c.
MAI Systems Corp. held that turning on a computer counted as fixation!  Congress responded i.
passed the Computer Maintenance Assuring Act (1998) ii.
became § 117(c) of the Copyright Act iii.
exempts service shops from copyright infringement if
1.
the copy is made solely by virtue of activating the computer,
2.
copy isn't being used for any other purpose and is destroyed, and
3.
service doesn't activate any software unnecessary for performance of the service iv.
saved the industry for computer repair v.
but MAI is still important because it set the fixation bar really, really low
1.
for infringement analysis, at least
2.
affects scope of protection d.
despite MAI, the fixation standard for copyrightability purposes should still be higher? i.
have different policy considerations in each analysis ii.
copyrightability is about requirements for gaining protection
1.
might want to make it more difficult to obtain protection
2.
cost to society, etc.
3.
but once you have it, probably want a wide scope of protection power e.
state law protections for unpublished works (unfixed) i.
California
1.
protects unfixed works
2.
amended its literary property state law
3.
Cal Civ. Code § 980(a)(1), 2003 ii.
New York
1.
done through their case law
2.
Hemingway v. Random House
IV.
Related cases a.
Goldstein v. California (note case – "writings") i.
412 U.S. 546 (1973) ii.
Supreme Court held "Writings" to mean any "physical rendering" of the fruits of the author's creativity b.
White-Smith Music Publishing Co. v. Apollo Co. (note case – piano rolls) i.
209 U.S. 1 (1908)
 reflects an early reluctance to deal with copyright cases involving new modes of information storage.
The
1976 Act aimed to correct this tendency by exploiting more fully the potential of the “Writings” requirement. This case predates, and was partially overruled by the 1909 Act, and that didn’t deal with protectability even when it was good law. The reason is that, although the OUTCOME of the case was overruled by the 1909 Act, its WAY OF THINKING survived until the 1976 Act was passed, and even beyond. This case is an example of the “artificial and largely unjustifiable distinctions” that the fixation requirement in the 1976 Act was intended to avoid. ii.
iii.
this way of thinking lasted until the 1976 Act was passed iv.
dispute about the player piano's perforated rolls that would let the piano automatically play the songs written by the appellant (assignee of Adam Geibel, a composer) v.
opinion  affirming the Circuit Court
1.
in considering the act, it seemed "evident that Congress has dealt with the tangible thing, a copy of which is required to be filed with the Librarian of Congress"
2.
in a broad sense a mechanical instrument which produces a tune copies it, but this is a strained and artificial meaning a.
not a copy which appeals to the eye
3.
not susceptible to being copied until it has been put in a form which others can see and read a.
perforated rolls cannot be read, even by those who make them b.
they do produce the same musical tones, but they are not copies within the meaning of the copyright act vi.
class notes
1.
defense argues that the perforated rolls are not writings because they are not intelligible to people, not readable
2.
the Supreme Court agreed because it's not a writing or copy, so no infringement
10

3.
Copyright Act was amended after
4.
case was overturned, and this case would be an infringement today c.
Midway Manuft'g Co. v. Artic Int'l, Inc. (PacMan and PuckMan)
Citation
Facts
Issue
History and
Precedent
Court's
Ruling
Class Notes
Midway Manufacturing Co. v. Artic International, Inc.
547 F. Supp. 999, aff'd. 704 F.2d 1009 (7 th Cir. 1982)
Midway produces video arcade games, including Galaxian and Pac-Man
the games run via computer programs on ROMs, processed by a CPU, to display images on the game screen
Midway brought suit, alleging that Artic sells two video devices which violate its rights in the Galaxian and Pac-Man games
1. Whether video game images constantly being recreated by a ROM program can be considered "fixed" as to be protected by copyright.
Copyright Act, 17 U.S.C. § 102(a) o the work must be "fixed in any tangible medium of expression, now known or later developed, from which [it] can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device"
Copyright Act, 17 U.S.C. § 101 o meaning of fixed o "sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration"
Judge Decker, in favor of Π
Fixation requirement does not require that the work be written down or recorded somewhere exactly as it is perceived by the human eye.
plaintiff has successfully demonstrated all elements necessary for issuing a preliminary injunction are present in this case, and is granted
while Artic's argument has a certain facial validity, it nonetheless fails
"purely evanescent or transient reproductions" referred to by Congress referred to those arising from live telecasts or performances that are nowhere separately record
the technology involved is different from that of videotape, but Congress has allowed for it (later developed medium of expression)
the defendant, Artic, is arguing there is not adequate fixation here o the computer images on the ROMs are not fixed, they're constantly being regenerated by the computer o the skill level of the player affects the progression of the game
doesn't matter, the court says o there is enough repetition of the images and content that it counts as being fixed o the key/central elements are stored on the ROMs and that is good enough o not everything needs to be stored
this decision really helped this new developing industry
-
d.
MAI Systems Corp. v. Peak Computer, Inc. (note case – turning on computer) i.
991 F.2d 511 (9 th Cir. 1993) ii.
MAI is alleging that Peak is liable for copyright infringement for turning on the computer when they fix them (the copy of a program is fixed when the computer is turned on)
1.
alleged that a copy of the software was being transferred from the storage device onto the computer CPU by turning it on
2.
the copy disappears the moment the computer is turned off iii.
the 9 th Circuit found that the temporary copy was good enough for fixation
1.
sufficiently permanent to be perceived by users and is therefore copyright infringement iv.
fixation is coming up in the context of infringement
11

1.
in contrast to Midway, this is an infringement case, not a copyright case (it's already known that the software has a copyright) v.
Parchomovsky: this is a terrible decision
1.
MAI gets a monopoly over the services (servicing of the computers) e.
Hemingway v. Random House (note case - speeches) i.
244 N.E.2d 250 (N.Y. 1968) ii.
oral works or utterances may be protected if:
1.
1) speaker shows clear intention to attain protection
2.
2) speaker must clearly mark off parts intended to be protected iii.
Parchomovsky: do we really need it?
1.
has a chilling effect on speeches
2.
the fixation standard is already so low
3.
can't do it case by case, have to do it categorically – cost of doing this seems to outweigh benefit
4.
it's easy to just write it down
Originality
I.
Originality, generally a.
requires two factors i.
independent creation by the author ii.
a modicum of creativity
1.
most people don't list this as separate requirement b.
very low creativity standard i.
if make it higher, maybe would be excluding things that people would consider art and creative ii.
otherwise would be interjecting some subjective judgment of what is creative iii.
would make the process unbelievably time-consuming to judge every copyright request iv.
better to let everything in – let every work be copyrighted when created, remember
1.
we screen ex-post instead with infringement cases v.
"useful arts" requirement
1.
also does not establish any effective bar (see Bleistein) c.
what likely will fail for creativity i.
fragmentary words and phrases ii.
short slogans iii.
slight variations on musical compositions or stand up routines iv.
alternations of business forms
II.
Originality is not a shield a.
only is relevant for copyrightability, not infringement b.
in the copyright context, you may have enough originality to get protection, but it does not immunize you from infringement suits c.
a good defense is independent creation
III.
Photographs a.
photos of the exact same thing i.
each have their own individual copyright? even of the same thing? ii.
in older law, only artistic photos were entitled protection
1.
later dropped iii.
another rule was that you could not copy the copy (the photograph), but you can recreate the original
1.
re-enact the scene, not infringing in that case
2.
this long-standing principle still applies to large, immovable objects
3.
but when it comes to staged photos like in Sarony and Mannion, the rule changes and it's highly doubtful that it applies
IV.
Related cases a.
Atari Games Corp. v. Oman (note case – Breakout game) i.
888 F.2d 878 (D.C. Cir. 1989) ii.
produced a game called Breakout iii.
said there is nothing creative about this game – all these individual components are well-known
1.
not original enough iv.
the court rules for Atari
1.
the components of a game should be viewed as a whole
2.
the Copyright Office erred by focusing on the individual components on a standalone basis
12

3.
that's not how the originality analysis should be viewed
4.
even simple shapes, when combined in a distinctive manner, can be original  selection and arrangement, combination of elements can be enough to get protection b.
Acuff-Rose Music, Inc. v. Jostens, Inc. (note case – "got to stand for something") i.
155 F.3d 140 (2d Cir. 1998) ii.
attempted to claim a copyright on the phrase "you've got to stand for something or you will fall for anything" iii.
so John Cougar Mellancamp used a slight variation of this phrase iv.
because of the widespread use of the phrase, the plaintiff failed to prove that he originated the phrase v.
Parchomovsky: this is a good decision, need to have some screening for such cases
1.
if you have a copyright, you get a license to sue others
2.
ex-post screening is a good thing
3.
he'd be able to sue everyone who said that phrase c.
Burrow-Giles Lithographing Co. v. Sarony (Oscar Wilde photo)
Citation
Facts
Issue
History and
Precedent
Court's
Ruling
Burrow-Giles Lithographic Co. v. Sarony
111 U.S. 53 (1884)
Sarony is a photographer, with a large business in New York, who took a portrait of Oscar Wilde o he took the steps necessary to obtain copyright of the photograph
the lithographic company made and sold copies of the photograph
Sarony brought suit, claiming copyright violation
1.
Whether photographic works are copyrightable, despite the fact that the subjects of the photos are pre-existing and that the machine does the rendering.
the Copyright Clause of the Constitution
Class Notes
Justice Miller, in favor of Π
The Constitution is broad enough to cover authorizing the copyright of photographs, so far as they are representatives of original intellectual conceptions of the author.
judgment of the circuit court is affirmed
the first Congress of the United States amended the copyright statute to include maps and charts o these men were contemporaries of the Constitution, so their amendment should be given great weight o did not seem to matter that the maps and charts represented real things – if photography had been an art then, it would have been included, too
this work is the plaintiff's intellectual invention – arranging and disposing light and shade, suggestion and evoking the desired expression, arrangement of the setting, etc.
the court in the original trial found in favor of the plaintiff
the defense argues o a photograph is a mechanical reproduction of a subject/person/object that already exists in the real world o two arguments stemming from this
 1) is not a "writing" under the Constitution
 2) fails authorship requirement
the court's response o 1) is a "writing"
 the revised statute includes maps and charts – which are also portrayals of real things
 Congress always deemed that maps would be protected, and if those are, so are photographs
 probably the only reason they weren't is because the technology hadn't been developed yet o 2) a photographer can be an author
 in the composition and arrangement of a photograph,
13

there is human authorship
 being a photograph does not disqualify it, can be an original work of art
decision seems to resonate well with the personality theory o discusses the mental conception of the photographer o the unique character of the photographer – his personality o Sarony saw something in his mind's eye, made it into a photo
also seems to agree with labor theory o Sarony worked to make the photograph d.
Mannion v. Coors Brewing (note case – athlete billboard) i.
377 F. Supp. 2d 444 (S.D.N.Y. 2005) ii.
protected elements include:
1.
composition of elements in the photo
2.
camera angle
3.
posing of subject
4.
lighting iii.
did not copy the photo, but copied the same setting with a different human model iv.
the court found infringement with their photos (p. 110) of the plaintiff's work
1.
when it comes to staged photographs, the breadth of the protection is greater e.
Bleistein v. Donaldson Lithographic Co. (circus ad)
Citation
Facts
Issue
History and
Precedent
Court's
Ruling
Concurrence or Dissent
Bleistein v. Donaldson Lithographic Co.
188 U.S. 239 (1902)
the defendant copied in reduced form three chromolithographs prepared by the employees of Donaldson Lithographic
the lithographs were advertisements for a circus, and depicted drawings of various acts being performed at the circus
the company brought suit for copyright infringement
1.
Whether advertisements (or little value illustrations) qualify for copyright protection.
Burrow-Giles Lithographing Co. v. Sarony o constitutional protection does not limit the useful to that which satisfies immediate bodily needs o also not affected by the fact that, if it be one, that the picture represents actual things
Justice Holmes, in favor of Π
There is no reason to doubt that these prints in their ensemble and in all their details, in their design and particular combinations of figures, lines, and colors, are the original work of the plaintiff's designer.
A picture is nonetheless a picture, and nonetheless a subject of copyright, that it is used for an advertisement.
judgment of the Circuit Court of Appeals is reversed, cause remanded to
Circuit Court with directions to set aside the verdict and grant a new trial
we see no reason for taking "connected with the fine arts" as qualifying anything except the word "works"
these chromolithographs are "pictorial illustrations" and the antithesis to
"illustrations or works connected with the fine arts" is not works of little merit or of humble degree, it is "prints or labels designed to be used for any other articles of manufacture"
it would be a dangerous undertaking for persons trained only in the law to constitute themselves final judges of the worth of pictorial illustrations
Harlan (and McKenna), dissenting
if a picture has no other use than that of a mere advertisement, and no value aside from this function, it would not be promotive of useful arts
if a mere label simply designating or describing an article to which it is attached, and which has no value separated from the article, does not come within the constitutional clause upon the subject of copyright, it
14

must follow that a pictorial illustration designed and useful only as an advertisement, and having no intrinsic value other than its function as an advertisement, must be equally without meaning
promoting the progress and science and useful arts does not embrace the mere advertisement of a circus
Class Notes is an advertisement in the scope of copyrightable subject matters? o answer (according to Holmes' majority) is yes
court is not going to judge whether something is an useful art o not going into value judgment o work is no less connected to the fine arts just because it is designed to attract customers or to promote the sale of a product
 a picture is a picture, regardless of how it is use o so Holmes cautions that judges should not evaluate the merit of
General Limitations on Copyright an expressive work
Harlan's dissent o a mere advertisement is not covered by the Copyright Clause of the Constitution
 that clause was meant to promote the advancement of science and useful arts
 a commercial work, a mere advertisement, does not do that, and does not deserve protection o this smacks of elitism (he knows what fine art is)
I.
Idea/Expression Dichotomy a.
ideas are not copyrightable i.
inhibit discourse and discussion, the person who has the idea copyrighted is the only one who will be able to talk about it or discuss it
1.
the social cost would be enormous
2.
need to be able to have people discuss it ii.
it's hard to define what an idea is
1.
they're abstract and amorphous, hard to delineate their boundaries
2.
hard to protect, the administrative cost would be enormous
3.
but there's a problem  if can't define "idea," where does "expression" begin? a.
even under current system, still have problems b.
need to figure out where the expression is, and where the distinction lies iii.
optimal choice of assets (asset configuration)
1.
in designing property systems, need to decide what underlying asset is
2.
some are more suitable for protection than others
3.
could have decided that idea is the basic unit of property, but instead took the next step – the expression
4.
don't want people to just stop at an idea, want to broaden and encourage, make people express b.
the idea/expression dichotomy expressed in Baker v. Selden i.
copyright protects the expression of an idea but not the idea itself ii.
any ideas contained in the work are released into the public domain, and the author must be content to maintain control over the form in which he first clothed his ideas iii.
there may be a possibility of protecting disclosure of the idea to others under circumstances that suggest a confidential relationship or might imply a contract
1.
this would be under state property protection, not federal copyright law iv.
***copyright law does not protect ideas, only expressions of ideas c.
there are multiple implications to Baker v. Selden i.
the most straightforward statement is that "blank account books are not the subject of copyright"  the
Blank Form Doctrine
1.
most courts and the U.S. Copyright Office's regulations (37 C.F.R. § 202.1(c)) bar protection for
"blank forms . . . which are designed for recording information and do not in themselves convey information")
2.
extension of the basic principle that originality is the touchstone of copyright protection – works in which the creative spark is utterly lacking or so trivial as to be nonexistent are not protected ii.
but the Court in Baker also seems to assume that the accounting book (comprised mostly of forms) was copyrightable but the copyright was not infringed
15

1.
if the information cannot be used without "employing the methods and diagrams used to illustrate it," then those methods and diagrams are free to the public for purposes of "practical application" – but not for the purpose of publication in other works explanatory of the art
2.
1) perhaps this was a distinction between the rights protected under patent and copyright a.
patent does enable the exclusion of others from making, using, or selling a patented invention, including its underlying idea
3.
2) this has also been interpreted to mean that certain kinds of works, intended for practical application, are characterized by a high degree to integration between their ideas and the mode of expression  so for these works, Baker creates exception for "takings for application or use" a.
key examples are accounting forms and computer programs
4.
3) Nimmer's treatise on copyright interprets the holding as a takings "for practical application" in situations where the use of the "art" or idea, which the copyrighted work explains, necessarily requires a copying of the work itself a.
when there is only one way to express a given idea, the plaintiff's copyright in the work as a whole does not protect the idea against use by others
5.
4) or perhaps the Court recognized intuitively that there were only so many ways to express the idea of accounting books (only so many ways to arrange the ledger), so that if an author could copyright all the possible permutations, he'd have a copyright over the idea itself d.
related cases i.
Baker v. Selden (account books)
Citation
Facts
Issue
Court's
Ruling
Class Notes
Baker v. Selden
101 U.S. 99 (1880)
plaintiff, Selden, obtained copyright for book he wrote, explaining and exhibiting a peculiar system of bookkeeping (had sample ledgers in book)
also took the copyrights of several other books, containing additions to and improvements upon said system
filed a complaint against the defendant, Baker, for an alleged infringement of these copyrights
1.
Whether the conceptual ideas contained within a bookkeeping book are protected by copyright law – whether the exclusive property in a system of bookkeeping can be claimed, under the law of copyright, by means of a book in which that system is explained.
Justice Bradley, in favor of Δ
Whilst no one has a right to print or publish his book, as a book intended to convey instruction in the art, any person may practice and use the art itself the use of the art is a totally different thing from a publication of the book explaining it.

The description in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art itself.
decree of the Circuit Court reversed and the cause remanded with instructions to dismiss complainant's bill
where the truths of a science or methods of an art are the common property of the whole world, any author has the right to express the one, or explain and use the other, in his own way
a clear distinction between the book, as such, and art which it is intended to illustrate – no one would contend that the copyright of the treatise would give exclusive right to the art or manufacture described therein o that is the province of letters patent, not of copyright
the very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains – object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book
plaintiff's book has: o introductory essay explaining the system o appendix with a lot of blank forms
defendant did not copy the plaintiff's explanation but used similar forms
(some of the headers had been changed)
court finds no infringement
16

o cannot copyright an entire accounting system by explaining the method of bookkeeping in a book
 cannot copyright an idea, you'd have a monopoly over the whole system o can copyright your explanation of it
 since the defendant didn't copy the essay, there is no infringement
not every taking/borrowing will be considered a copyright infringement o true, he did use those forms o but first must decide what elements of the plaintiff's work are entitled to copyright protection and only these elements cannot be taken without permission
the rules we can get from the case o the idea/expression dichotomy: cannot copyright an idea, can only copyright your original expression of that idea (not the underlying idea) o the merger doctrine: protection will be withheld from original expression when the expression and the underlying idea merge o patentable subject matters cannot be claimed under copyright law o blank forms are not copyrightable
 most straightforward and narrow holding of this case
 the internal regulations of the Copyright Office exclude forms from copyright (27 C.F.R. § 202.1(c)) ii.
Eldred v. Ashcroft (note case – term extension)
1.
537 U.S. 186 (2003)
2.
recently, the Supreme Court identified this idea/expression distinction as one of the two major copyright doctrines that protect the values of the First Amendment
3.
1) the idea/expression distinction and 2) the fair use doctrine iii.
Herbert Rosenthal Jewelry Corp. v. Grossbardt (note case – bee pins)
1.
436 F.2d 315 (2d Cir. 1970), p. 124
2.
the plaintiff produces jeweled bee pins
3.
plaintiff charges defendants with infringing its copyright in a bee-shaped pin made of gold
4.
the circuit rules for the defendant, saying that the bee pins are just an idea, and the defendant only copied an idea which he was free to copy a.
there is no great difference between the products than the difference that can exist between jewel-encrusted bee pins
5.
many people view this as a merger case, too
6.
interestingly, a year earlier, brought a suit against a different defendant who created a rubber mold that could make exact replicas of the pin a.
the court in that case found infringement b.
very unsympathetic defendant i.
did not add anything original of his own ii.
perhaps fairness intuitions also play a role in these outcomes iv.
Satava v. Lowry (note case – jellyfish sculpture)
1.
323 F.3d 805 (9 th Cir. 2003)
2.
plaintiff made a jellyfish sculpture, encased in glass, and sued defendant who made similar
3.
case went the way of an idea/expression suit
4.
court found that it could not be protected under the idea/expression dichotomy a.
held plaintiff possesses "a thin copyright that protects against only virtually identical copying" b.
the expression of the defendant was not identical i.
easier to gear the court towards idea/expression when the defendant did work of his own
II.
Merger Doctrine a.
merger i.
occurs when there is only one or two ways of expressing a given idea ii.
as a result, none of the expressions are protected iii.
merger is not a technical doctrine, is a policy tool
17

1.
court is striking fine balances b.
idea/expression compared to merger
Idea Idea i.
idea/expression doctrine = many ways to express, unlimited
1.
all of the methods of expression are copyrightable
2.
this is addressing a larger issue a.
is about scope ii.
merger = the number of ways of expression of an idea are limited
1.
so nothing is protected
2.
because the number of ways of expression are so close to the idea itself, then it's better to not protect the expressions at all so that the idea can be communicated openly
3.
this is addressing a different issue than idea/expression doctrine a.
is about copyrightability iii.
practical implications between the two doctrines is huge
1.
in suit, idea/expression loss is better for the plaintiff because can still protect the expression against other people
2.
merger is an extreme result  ends up opening up the entire idea and all expressions c.
related cases i.
Morrissey v. Proctor & Gamble (note case – sweepstakes language)
1.
379 F.2d 675 (1 st Cir. 1967)
2.
the plaintiff sues, alleging defendant copied its sweepstakes rules a.
the defendant had copied the rules verbatim
3.
court finds no infringement a.
finds it on grounds of merger! b.
the plaintiff's idea can be expressed in only in a limited number of ways, and therefore there should be no protection
4.
is this really merger? a.
there's no point, waste of resources to rewrite b.
the language would become more complicated and complicated, and people can't understand it c.
want to be clear and effective expression, don't want to be monopoly on the clear rules
(only a few ways to express it clearly) i.
makes it harder on the consumers ii.
CCC Information Services, Inc. v. Maclean Hunter Market Reports, Inc. (note case – Red Book)
1.
44 F.3d 61 (2d Cir. 1994)
2.
Maclean is the publisher of the Red Book, a compendium of used car prices
3.
sues CCC, after CCC took its entire price compilation and put it on a computer database a.
as defense, claiming that the compilation of prices are facts and they cannot be copyrighted, only so many ways to say it
4.
brings up similar fairness issues of INS v. AP
5.
the court held that there was a copyright infringement a.
but how did they get there?  if there is any merger, it'd be here b.
not very clean decision, problematic c.
distinguished between "hard ideas" (ideas that undertake to advance the understanding of phenomena or solutions to problems, math or science) and "soft ideas" (ideas that are infused with the author's taste or opinion) i.
used car prices fall into the second category
1.
more art than science d.
for soft ideas, the court was willing to suspend the merger theory e.
bolsters argument by referring to incentive theory i.
would completely undercut incentive to find used car prices f.
also points to notions of fairness g.
bent the law a little, and reached the result it wanted to
6.
this case is the mirror image of Morrissey
III.
Government Works - § 105
18

a.
the 1976 Act unambiguously provides in § 105 that copyright protection "under this title is not available for any work of the United States Government" i.
§ 101 defines the "work of the United States Government" as "work prepared by an officer or employee of the United States Government as a part of that person's official duties" ii.
note this is the federal government b.
requirements i.
1) prepared by an officer or an employee of the U.S. government (use the agency test from labor law) ii.
2) as a part of that person's official duties c.
exceptions i.
§ 105 does not bar copyright protection for works created for the government by independent contractors (Schnapper v. Foley) ii.
does not extend to works created by employees of the U.S. Postal Service iii.
15 U.S.C. § 290(e) specifically provides that the Secretary of Commerce may secure copyright on behalf of the United States in "standard reference data" compiled and evaluated by the National Institute of
Technology and Standards in different areas of science and engineering
1.
to promote the dissemination of this data by facilitating its licensing to private publishers iv.
the National Technology Transfer and Advancement Act of 1995 (15 U.S.C. § 3710) was intended to assure that private industry "partners" of federal scientific agencies could enjoy title to patents in inventions arising out of Cooperative Research and Development Agreements (CRADAs), and that federal government employees could receive royalties from their inventions under the same circumstances v.
by its own terms, it only applies to the federal government, so no restrictions are placed on state and government ownership by this § itself
1.
provisions of state law may dictate public availability, too d.
statutes and ordinances = the law i.
these types of government works are part of the public domain and cannot be subject to copyright ownership by any government
1.
copyright is an exclusion doctrine, and we want no one excluded, want everyone to have access to the laws ii.
citizens must have free access to the laws governing them
1.
all matters being produced by the government are important to institution of democracy
2.
government is not a private actor, is an entity belonging to the people
3.
people elect officials and vote  perhaps the public is the ultimate authors iii.
a grey area is when the statute or ordinance is drafted by a private party e.
state laws i.
a longstanding judicial tradition precludes copyright protection in state laws, regulations, and court decisions ii.
by virtue of judicial tradition, we have unimpeded access to laws and court decisions  viewed as inherently public, and not entitled to copyright protection f.
foreign documents i.
the reach of § 105 was not intended to affect the U.S. copyright status of foreign government documents ii.
works by most other countries' governments are copyrighted at home, and can be protected in the
United States as well g.
collaborations i.
the normal rule is that works of U.S. government are not protected under copyright ii.
but when a private individual or company collaborates with the government, is a case of joint authorship  does it change the underlying policy?
1.
patents a.
the National Technology Transfer and Advancement Act (NTTAA) i.
assures that private industry partners can secure patent protection
2.
copyrights a.
not as clear, so similar act that takes care of the copyright question b.
contractual provisions become very important i.
the way that the ownership of copyright is taken care of in the contract can affect how the court will analyze the situation after the fact c.
although there isn't a clear answer, the contract agreement affects the willingness of the court to recognize copyright protection h.
commissioned works i.
becoming a very widespread phenomenon
19

ii.
the government relies more and more on private companies as far as production of standards is concerned
1.
standards = building codes, product safety codes, accounting principles, etc.
2.
government is outsourcing the drafting a.
then enacts those standards written iii.
becomes a part of the law, but was written by a non-governmental entity
1.
also not freely available i.
related cases i.
Wheaton v. Peters (note case – federal statutes)
1.
33 U.S. (8 Pet.) 591 (1834)
2.
federal statutes, regulations, and judicial opinions are not subject to government copyright ownership ii.
Matthew Bender & Co. v. West Publishing Co. (note case - headnotes)
1.
158 F.3d 674 (2d. Cir. 1998)
2.
"value-added" materials, such as summaries and headnotes, are subject to private copyright protection iii.
Schnapper v. Foley (note case – independent contractors for govt)
1.
667 F.2d 102 (D.C. Cir. 1981)
2.
§ 105 does not bar copyright protection for works created for the government by independent contractors
3.
case was about a television documentary produced by public broadcasting entities iv.
Veeck v. Southern Building Code Congress International (privately drafted codes)
Citation
Facts
Issue
History and
Precedent
Court's
Ruling
Veeck v. Southern Building Code Congress Int'l, Inc.
293 F.3d 791 (5 th Cir. 2002)
plaintiff Veeck owns and runs a non-commercial website that provides information about northern Texas
he was not able to easily locate the 1994 edition of the Standard Building Code written by the defendant, SBCCI, so he eventually bought the model codes directly from SBCCI for $72
even though the software came with a licensing agreement, he cut and pasted the text onto his website – he did not identify them as written by SBCCI, but correctly identified them as the building codes of Anna and Savoy, Texas
1.
Whether a privately-written code, later adopted into state law, is subject to copyright enforcement.
Wheaton v. Peters o "no reporter has or can have any copyright in the written opinions delivered by this Court" o "the law" in the form of judicial opinions may not be copyrighted
Banks v. Manchester, 128 U.S. 244 (1888) o denied a copyright to a court reporter in his printing of the opinions of the Ohio Supreme court o whatever work judges perform in their official capacity cannot be regarded as authorship under the copyright law o the whole work done by the judges constitutes the "authentic exposition and interpretation of the law, which, binding every citizen, is free for publication to all, whether it is a declaration of unwritten law, or an interpretation of a constitution or statute"
Building Officials and the Code Adm. V. Code Technology, Inc., 628 F.2d 730
(1 st Cir. 1980) o the metaphorical concept of citizen authorship of the law, together with the important and practical policy that citizens must have free access to the laws which govern them
Judge Jones, in favor of Π
SBCCI is creating copyrightable works of authorship when they write and public model building codes  when those codes are enacted into law, however, they become to that extent "the law" and may be reproduced or distributed as the law of those jurisdictions.
as the organizational author of original works, SBCCI indisputable holds a
20

Concurrence or Dissent
Class Notes copyright in its model building codes
we read Banks, Wheaton, and related cases consistently to enunciate the principal that "the law," whether it has its source in judicial opinions or statutes, ordinances or regulations, is not subject to federal copyright law o codes are "facts" under copyright law – the unique, unalterable, expression of the "idea" that constitutes local law
as governing law, pursuant to Banks, the building codes of Texas cannot be copyrighted o is not about author's incentives (utilitarian) or adequacy of access (due process) arguments o Banks declares at the outset of its discussion that copyright law in the
United States is purely a matter of statutory construction
the lawmakers represent the public will and the public are final "authors" of the law – even when a government body decides to enact proposed models of building codes, it does so based on legislative considerations
disagree that the question of public access can be limited to the minimum availability that SBCCI would permit
Judge Higgenbotham, dissenting
would affirm the judgment of the district court
it is undisputed that Veeck copied the copyrighted product of SBCCI
that parts of the copyrighted material contain the same expressions as the codes of two Texas cities is no defense unless the cities' use somehow invalidates SBCCI's copyright
a complex code, even a simple one, can be expressed in a variety of ways
not yet willing to embrace that invalidity of copyright is the inevitable consequence of code adoption
rather, conclude that Veeck violated the explicit terms of the license he agreed to when he copied model codes for the internet and decide no more
Judge Weiner, dissenting
in holding Veeck under the discrete facts of this case, the majority had to (and did) adopt a per se rule that a single municipality's enactment of a copyrighted model code into law by reference strips the work of all copyright protection,
ispo facto
believe that for this court to be the first appellate court to go that far is imprudent
as Veeck cannot legitimately find a safe haven in any of his affirmative defenses, the district court's order should have been affirmed
Veeck, who ran a non-commercial website, purchased a copy of the building codes directly from SBCCI o had no choice, had to purchase to get access
trial and Fifth Circuit panel ruled in favor of SBCCI, and Fifth Circuit rehearing en banc o found no liability, ruled for Veeck on two separate grounds
 1) the law is not protected under copyright
 the law, whether articulated in judicial opinions or in legislative acts or ordinances, is in the public domain and thus not amenable to copyright protection  the building codes of the two towns are no exception to the general rule
 in a democratic system, the people are the authors of the law and should therefore have free access to it
 once something is made into law, cannot claim copyright in the expression
 2) the merger doctrine
 even if the code comes under the copyright law, copyright protection should be withheld in this case on grounds of merger
 there is only one precise way to express what the law
21

is
 once the work is enacted into law, once it gains status v.
P of the law, it becomes the law (merger occurs) o protection can no longer be claimed r a
dissenting opinions c o dis-incentivizing these companies from helping the government to draft these standards and regulations (which the government is i t increasingly relying on private actors to do) c o believe the majority opinion is overbroad and overreaching o must afford protection to such codes and other standards that were e produced by private companies
M g m
is copyright really needed? o ex ante contracting – can decide how much effort to put into production of standards because already getting paid for it o even if there is no free market on the good…
.
t  this is a form of soft lobbying – they get input in their own regulations
 there are other complimentary services you can sell
I n
 explanations of the code, headnotes, etc. o the standards are common f  they aren't identical, but they're probably not too different o
. Corp. v. Amer. Med. Ass'n (AMA) (note case – medical procedure coding system)
1.
121 F.3d 516 (9 th Cir. 1997)
2.
the Circuit affirmed a ruling that the AMA did not lose its copyright in medical procedure coding system when the system became required by government regulations
3.
why? their reasoning: a.
regulatory agencies could terminate agreements or adopt regulations requiring private standards-setting companies to increase access or facilitate access b.
courts could enlarge the defense claims (fair use and due process) c.
legislatures can adopt compulsory licensing agreements to enable greater access
4.
all these mechanisms seem costly to implement a.
depend on push/pull of politics b.
litigation especially is costly (not easy to prove fair use) i.
people would probably end up paying, in practice, because cheaper than court c.
would not implement any of these mechanisms, would just pay for the copy
Subject Matter – Works of Authorship
I.
Works of authorship, generally a.
the product of the mind that is protected by copyright is not the medium of expression, but rather the intangible expression itself, apart from the material object i.
making a distinction between the copyright of the work of authorship (the song) and the material object in which the work is fixed (the record) b.
§ 102(a) of the 1976 Act originally listed 7 categories of works of authorship i.
added an 8 th category (architectural works) in 1990 ii.
categories are narrower (many works fit that within the description of the category are denied protection by virtue of other statutory provisions) and broader (works addressed in other §§ of the Act like compilations and derivative works are merely examples of the categories) iii.
the list is not closed – "illustrative and not limitative"
1.
flexible to adopt the law to new technologies and media
2.
Congress took pains to ensure that qualifying works would be protected regardless of their mod of fixation, whether or not the means were known or developed when the Act passed
3.
conceptually streamlined – consistent in separating works of authorship from the material objects (ex: a novel is always a literary work, even if it is read into a sound recording)
Literary Works and Computer Programs
I.
Literary works - § 102(a)(1)
22

a.
work other than audiovisual work, expressed in words, numbers, or other verbal/numerical symbols/indicia i.
includes classic conceptions like novels, poems, etc. ii.
does not connote any criterion of literary merit or qualitative value – it includes catalogs, directories, and similar factual/reference/instructional works and compilations of data iii.
also includes computer databases and computer programs to the extent they incorporate authorship in the programmer's expression of original ideas iv.
note the difference between the work and the physical embodiment (chattel)
1.
a novel is protected, the expression itself, but not the book a.
you own the book, you don't own the copyright in the novel that the book contains
2.
copyright law does not protect physical objects b.
facts in fiction i.
the history itself is not copyrightable, but the expression of it is
1.
cannot copyright the facts, only the expression of those facts
2.
 this is a scope rule
3.
this impacts the derivative works right a.
classic example is books made into movies ii.
the fact/expression distinction would be imperiled if research is held to be copyrightable
1.
particularly strong public interest in having access to facts a.
something to be gained in allowing people to discuss history freely
2.
merger argument – only so many ways to state history, ideas and expression tend to merge a.
seems to be kind of a weak argument
3.
the 1 st Amendment considerations that support limited protection
4.
historical works are really sweat works – are labor intensive, but that is not enough to make them original a.
mechanical exercise b.
discovery is arguably not creation, not original c.
but what about Locke's labor theory – it takes a lot of work to uncover facts, and without protection for that work, maybe no one will do it iii.
this would be applicable even if the historical account is highly speculative (Nash)
1.
applies if you claim your account is real
2.
probably not applicable to alternative history or historical fiction iv.
is there originality in selection and arrangement of facts?
1.
maybe if you don't follow the actual straight timeline – that arrangement may be protected against people copying the same arrangement v.
is also applicable for works that expense practical advice (Landsberg) c.
titles and slogans i.
per the 37 C.F.R. § 202.1, "words and short phrases such as names, titles, and slogans" are not subject to copyright
1.
no protection granted for literary and pictorial styles, titles, and typefaces ii.
generally speaking, courts have followed
1.
some notable exceptions (Kamar Industries, Raffoler) iii.
even if can't get copyright, trademark or unfair competition may still apply iv.
in some cases, copying a title may be given some weight in ultimate question of "substantial similarity" d.
characters i.
distinction between literary and pictorial/animated characters
1.
never any doubt that pictorial characters have protection a.
courts have generally had little trouble holding that pictorial/graphic characters are protected under copyright b.
implication that picture has some unique element of expression, moreso than a desc i.
distinction is not dispositive, however c.
also have possibility of trademark protection d.
such characters amazingly valuable i.
for Disney, Mickey Mouse is worth around $8 billion
2.
literary characters more complicated a.
question of whether copyright protects the characters described and prevent others from using them in different works ii.
there is a new genre developing of borrowing characters from well-established stories
1.
ex: Pia Pera wrote "Lo's Diary," a retelling from Lolita's perspective
2.
probably falls under "fair use" exception
23

3.
scope is important a.
if we decide literary characters are copyrightable, independently of their context, then their use in different settings still counts as infringement iii.
distinction between stock characters and central characters
1.
stock characters are not protected
2.
ex: a detective vs. Inspector Cluseau from "The Pink Panther"
3.
stereotypical voodoo priestess not protected, a stock character - Jones v. CBS (S.D.N.Y. 1990)
4.
a character of a typical city boy in a rural environment not protected - Smith v. Weinstein
(S.D.N.Y. 1984) iv.
the two tests for finding protected characters
1.
delineation test (Nichols) a.
 only well-delineated characters may get copyright protection
2.
story being told test (Warner Bros.) a.
 only characters that constitute the story being told, and are not a vehicle or chessman for telling the story, may be entitled to copyright protection v.
any case giving a straight rule about literary characters?
1.
Silverman v. CBS only discussed in dicta that literary characters are protected
2.
Salinger v. Colting found infringement of both character and book e.
note that contract law, unfair competition law, trademark law, and the performer's right of publicity can all help to protect items that copyright does not
II.
Computer programs - § 102(a)(1) a.
task of writing software can be divided into 6 parts i.
1) goal – what the program is supposed to do ii.
2) task definitions iii.
3) flow charts iv.
4) data structures that are accompanied by algorithms v.
5) create source code vi.
6) translate the source code into object code (machine language)
1.
the zeros and ones b.
the right way to deal with software development concerns? i.
all aspects of code are protected, but when it comes to infringement analysis, the court narrowed down the scope of copyright protection granted to software
1.
counterbalanced by redesigning the scope**
2.
**scope is very much affected by functionality concerns ii.
restriction of software copyright never materialized in a practical way in terms of functional vs. expressive software
1.
just academically a.
Nimmer proposed only protecting software that gives us expressive outlets (not functional or utilitarian software, like those that control A/C units, etc.) b.
Mennell (Berkley) proposed shifting evidentiary burden to software producer or code writer and require them to prove that the allegedly infringed elements were not dictated by functionality concerns c.
work of a highly influential Commission on New Technological Uses of Copyrighted Works (CONTU) swayed a lot of the judicial opinions about copyrightability of computer programs i.
at the time of their deliberations, the circumstances under which inventions utilizing computer programs would be eligible for patent protection were uncertain  today is well established d.
the problem of the Apple Computer case was that the commercial value of a computer program is not in "source code" but in machine-readable "object code" form (encoded on magnetic tape or a computer chip) – and whether copyright protection went this far i.
the proposition seems clearly established today e.
the "first generation" of software protection vs. "second generation" i.
concerned with making a binary choice as to the protectibility of programs in machine-readable form ii.
one of the more important "second generation" questions was the extent to which computer programs would be protected against "non-literal" infringement
1.
nowadays, have a narrower view of the scope of protection for computer programs iii.
another "second generation" issue was the scope of copyright protection for computer screen displays
1.
user interfaces (how a program works), for example
2.
popular formats tend to become the standard for the industry
3.
since the case of Lotus Development Corp. in 1995, there has been little litigation about it
24

iv.
another "second generation" issue is the extent to which copying is allowable for the purposes of
"reverse engineering"
1.
decompiling or disassembling the object code to produce a version in human-readable language
2.
necessarily involves making a copy of the program
3.
a lot of courts have carved out an exception for the activity under the fair use doctrine v.
final issue of "second generation" is microcode
1.
microcode = a series of instructions that tell a microprocessor which of thousands of transistors to actuate in order to perform the tasks directed by the macroinstruction set
2.
programmer is more constrained in creating microcode
3.
has been held to be copyrightable, but there are idea/expression and merger issues that arise f.
the Office of Technology Assessment, an advisory body to Congress, in 1986 concluded that copyright may not after all be the most appropriate form of legal protection for computer programs
III.
Related cases a.
Chase-Riboud v. Dreamworks, Inc. (note case – Spielberg historical movie) i.
987 F. Supp. 122 (C.D. Cal. 1997) ii.
scope of copyright in historical accounts "is narrow indeed" iii.
the historical facts and theories (in this case, Spielberg's film "Amistad") may be copied, as long as the defendant does not bodily appropriate the expression of the plaintiff iv.
each historian may view a subject differently, may devise different explanations of the same occurrence v.
this came down to the rule established Miller
1.
facts aren't protected, only expression is protected vi.
if the Miller plaintiff had written an original story, the case would have come out totally differently b.
Miller v. Universal City Studios, Inc. ("based on a true story")
Citation
Facts
Issue
History and
Precedent
Miller v. Universal City Studios, Inc.
650 F.2d 1365 (5 th Cir. 1981)
Miller, a reporter for the Miami Herald, covered a story about a college girl who was abducted and buried alive in a capsule with a crude lifesupport system, which kept her alive for 5 days underground before her rescue
the book was copyrighted, along with a condensed version for magazines
in January 1972, a Universal producer read the condensed version and thought the story would make a good movie – tried to seek an agreement for purchase of the movie rights, but no agreement with Miller was reached
the movie was still completed and aired as an ABC movie of the week
1.
Whether a made-for-television movie dramatizing real events infringes upon a copyrighted book explaining the same events.
Burrow-Giles Lithographic Co. v. Sarony o author is one to whom anything owes it origin
Nimmer on Copyright o a discoverer merely finds and records – he may not claim that the facts are "original" with him although there may be originality and hence authorship in the manner of reporting (the
"expression" of the facts)
Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir.
1966) o expressly rejects the idea that historical research is copyrightable o we cannot subscribe to the view that an author is absolutely precluded from saving time and effort by referring to and relying upon prior published material – such a wasted effort that the proscriptions against the copyright of ideas and facts are designed to protect
Hoehling v. Universal City Studios, Inc., 618 F.2d 972 (2d Cir.), cert. denied, 449 U.S. 841 (1980) o holding that factual information is in the public domain and each defendant had the right to avail himself of the facts contained in the plaintiff's book and to use such information, whether correct or incorrect, in his own literary works
25

Court's
Ruling
Class Notes o protection of copyright owner has never extended to history, be it documented fact or explanatory hypothesis o the cause of knowledge is best served when history is the common property of all
Judge Roney, in favor of Δ
A fact does not originate with a book describing it or with the person who
"discovers" it.
conclude that the verdict for plaintiff must be reversed and cause remanded for a new trial, district court erred in instructing jury that research is copyrightable
wind the approach taken by the Second Circuit in Hoehling and
Rosemont to be consistent with the purpose and intended scope of protection under the copyright law – line drawn between copyrightable facts and copyrightable expression of facts serves an important purpose
 balancing the public interest in stimulating creative activity against the public's need for unrestrained access to information
law is clear that facts are not entitled to such protection
no rational basis for distinguishing between facts and the research involved in obtaining facts
court found no infringement o only used the facts that the author had used, did not use any of his expressions o court determines that the defendants used the research of the author, but did not lift any protected expression
 facts cannot be appropriated under the copyright law system
 facts fall on the idea side of the spectrum o our fairness intuitions do point the other way, though o it may be desirable to extend copyright to historical research, but it cannot be squared with existing copyright doctrine and prior precedent
 would be limiting access and use of historical facts
 need to maintain a balance between uncopyrightable facts and copyrightable expression
 balancing public interest in having unimpeded access to facts and interest in incentivizing authors to engage in research and uncover facts for us
this case is still good law c.
Nash v. CBS, Inc. (note case – movie about Dillinger theories) i.
899 F.2d 1537 (7th Cir. 1990) ii.
plaintiff wrote a story about John Dillinger, famous gangster iii.
CBS based a movie on this author's account iv.
tried to argue that his account was not conventional v.
court held that it doesn't matter – no infringement, still a factual work d.
Landsberg v. Scrabble Crossword Game Players, Inc. (note case – Scrabble tips) i.
736 F.2d 485 (9 th Cir. 1984) ii.
wrote tips about how to win Scrabble games iii.
held to not be protected  practical advice is considered to be a fact e.
Universal City Studios, Inc. v. Kamar Industries, Inc. (note case – "I love E.T." shirt) i.
217 U.S.P.Q. (BNA) 1162 (S.D. Tex. 1982) ii.
held that plaintiff was likely to succeed on a claim that the defendant had infringed its copyrights by using the phrases "I love E.T." and "E.T. phone home" iii.
talking about the merchandising market
1.
misappropriation and equity notions f.
Raffoler, Ltd. v. Peabody & Wright, Ltd. (note case – advertising slogans) i.
671 F. Supp. 947 (E.D.N.Y. 1987)
26

ii.
granted protection to advertising slogans such as "Why are we giving away _____ for only $_____?" and
"This is not a misprint." iii.
more of an outlier iv.
Parchomovsky: really no need to produce an incentive here, not that original g.
Nichols v. Universal Pictures Corp. (note case – feuding families play) i.
45 F.2d 119, 121 (2d Cir. 1930) ii.
Judge Learned Hand's dicta iii.
explained that question of characters depends on how far they have been fleshed out for the audience iv.
 the delineation test
1.
"it follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly"
2.
it seems that, to the extent that the character is delineated in the original work, it passes into public domain along with the work, and receives no continuing protection in the subsequent derivative works h.
Warner Bros. Pictures v. CBS (note case – Sam Spade character) i.
216 F.2d 945 (9 th Cir. 1954) ii.
character in question was Sam Spade from "The Maltese Falcon" iii.
held that the contract had failed to convey exclusive rights in the character because the character per se was not copyrightable iv.
the court uses a different test form Nichols  not just delineation, must be the story v.
 the story being told test
1.
suggested (arguably also in dicta) that the copyright in a literary work covers only the fiction character that "really constitutes the story being told" rather than serving as merely a
"chessman" or vehicle for telling the story i.
Silverman v. CBS, Inc. (note case – Amos 'n' Andy characters) i.
870 F.2d 40 (2d Cir. 1989) ii.
indirect protection iii.
the Circuit decided that the defendant, who was planning to stage a musical comedy, had no right to imitate the details of the characters featured on the "Amos 'n' Andy" television programs, to the extent that the details were original to those programs
1.
court also noted that the programs were derivative works, based on old radio scripts iv.
implied that the characters had fallen into the public domain since the radio program  to become public, implication that they had been protected at some point j.
Salinger v. Colting (note case – Catcher in the Rye, later) i.
2009 WL 1916354 (S.D.N.Y. 2009) ii.
the defendant authored a book called "60 Years Later: Coming Through the Rye"
1.
meant to be a sequel to "The Catcher in the Rye"
2.
originally wrote under the pen name of J.D. California
3.
main concept was to revisit the protagonist of the original book, 60 years later iii.
the court ruled for Salinger
1.
found that the defendant had borrowed extensively from the original book chiefly by using the central character, who was the focal point, and central themes
2.
found infringement of both the character and the book iv.
defendant tried to argue fair use and parody  all arguments were rejected by the court k.
Apple Computer, Inc. v. Franklin Computer Corp. (copyright in program)
Citation
Facts
Issue
Apple Computer, Inc. v. Franklin Computer Corp.
714 F.2d 1240 (3 rd Cir. 1983)
Apple manufacture and markets personal computers, related peripheral equipment, and computer programs
Franklin, a much smaller company, manufactures and sells the ACE 100 personal computer, and was designed to be "Apple compatible" so that their software and equipment could be used with the ACE 100 – copied the Apple operating system in an effort to achieve compatibility o copied the object code of Apple's operating system
parties agree that the 14 computer programs at issue are operating system programs
1.
Whether copyright can exist in a computer program expressed as object code.
27

History and
Precedent
Court's
Ruling
Class Notes
2.
Whether copyright can exist in a computer program embedded on a
ROM.
3.
Whether copyright can exist in an operating system program.
4.
Whether independent irreparable harm must be shown for a preliminary injunction in copyright infringement actions.
Williams Electronics v. Artic Int'l, Inc., 685 F.2d 870 (3 rd Cir. 1982) o the copyrightability of computer programs is firmly established after the 1980 Amendment to the Copyright Act
Mazer v. Stein, 347 U.S. 201 (1954) o rejects the argument that things cannot be copyrighted because they are "purely utilitarian works" and really trying to get at the art that they contain o unlike a patent, a copyright gives no exclusive right to the art disclosed – protection is given only to the expression of the idea, not the idea itself
Judge Sloviter, in favor of Π
Defendant's contentions that operating system programs are per se not copyrightable is unpersuasive.
The statutory definition of a computer program (as a set of instructions to be used in a computer in order to bring about a certain result) makes no distinction between application programs and operating programs.
Believe that the 1980 amendments reflect Congress' receptivity to new technology and its desire to encourage, through copyright laws, continued imagination and creativity in computer programming.
we conclude that the district court proceeded under an erroneous view of the applicable law and reverse denial of preliminary injunct and remand
clear from the language of the 1976 Act and the legislative history that it was intended to obliterate distinctions engendered by White-Smith Music
Publishing
believe that the line must be a pragmatic one, which also keeps in consideration the preservation of balance between competition and protection reflected in the patent and copyright laws
the district court has made no findings as to whether some or all of
Apple's operating systems represent the only means of expression of the idea underlying them – cannot be decided at appellate level
Franklin raises four defenses in response to Apple's suit o object code isn't copyrightable o programs embedded in a ROM are not fixed o an operating system is a process/method of operation and isn't entitled to copyright protection o merger
 the idea behind Apple's operating system merged and isn't protected
court's responses to the arguments o computer programs are now included in the Copyright Act, and just because object code is written in numbers doesn't mean that it's not copyrightable
 the Act specifically includes literary works expressed in
"numbers" or other numerical symbols or indicia
 literary works are no longer confined to Hemingway's
"For Whom the Bell Tolls" o just because it has to be accessed via machine, doesn't mean it is not fixed
 minimalistic requirement  embedding in a computer
ROM satisfies fixation requirement
 no real issue with fixation here o there are processes, but the object code is essentially instructions for the process and the function of the operating system
 the idea/expression dichotomy
28

o o
 Apple cannot claim the method as such
 but Apple can claim the copyright over the expression of it
– the object code – written to operationalize the method
 similar to Baker the expression of the operating system can be done in a number of ways, so no merger (p. 154-55)
 the idea being discussed right now is how to achieve compatibility between an operating system and applications
 this can be done in other ways than just Apple's
the heart of this case was the object code o there was no real doubt that the all the other stages of the software process were subject to copyright protection o if had come out the other way, operating systems would not have been copyrightable  huge impact on software industry
 real world consequences are intimidating
 for merger, don't go into how many ways operating systems can be expressed, but dismiss the claim pretty abstractly, just to get rid of it
Parchomovsky: was Apple wise to sue Franklin? o maybe it's not so wise to limit the dissemination of your operating system – then limit your sales of software applications they learned their lesson – their compatible iPod hardware now, coupled with their protected music and iTunes program
Musical Works and Sound Recordings
I.
Musical works - § 102(a)(2) a.
one of the types of works listed in § 102 that are left undefined, because they have "fairly settled meanings" i.
copyright covers both the tune and the lyrics of a song
1.
if music and lyrics are authored by different people, then have joint-authorship work a.
from the moment the song was fixed, each of the authors co-own an undivided interest in the entire copyright over the song i.
tenancy in common (no right of survivorship) b.
unless agree differently contractually, each will have a 50% undivided interests in the entire work ii.
the 1976 Act also now protects motion picture soundtracks (didn't before) as a separate registration item iii.
arrangements of musical works are protected under § 103(a) as derivative works b.
fixation may be accomplished in various media (paper or electronic recording) c.
originality requirement may be satisfied through melody, harmony, or rhythm, individually or in combination i.
originality is an issue in instances in which a musical work incorporates public domain sources or is
"popular" in character (ie – is relatively so simple that the genre itself permits a limited and familiar number of useful elements) ii.
taking the lyrics or the music alone of a work can infringe
1.
ex: "You've Got to Stand for Something" d.
have often been featured in many decisions parsing the copyright concept of "joint authorship" e.
in musical works, one of the most valuable exclusive rights granted by copyright is the right to prepare and distribute "mechanical reproductions" i.
recognizes the right of the musical work owner in § 106 of the 1976 Act f.
under some circumstances, uses of musical works would not be infringement, even if those uses would be considered infringement for other works i.
the "compulsory licensing" provisions of § 115
1.
gives the creator the "first bite of the apple" of authorizing the creating and distribution of phonorecords
2.
allows you to record and release any musical work that was already recorded and distributed in the United States with permission from the author
29

3.
work can only be rearranged only to the extent necessary to conform it to the style or manner or interpretation of the performance involved without changing the basic melody or fundamental character of the work a.
if change the music significantly, then back in the world of property rights b.
 so cannot change too much
4.
if you comply, you have to pay a certain fee ($0.091 for songs shorter than 5 minutes and $1.75 per minute for songs longer than 5 minutes x the number of records sold) ii.
if only performing the song, then only need to seek permission, no mechanical license
II.
Sound recordings - § 102(a)(7) a.
defined as "works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work, regardless of the nature of the material objects, such as discs, tapes, or other phonorecords, in which they are embodied" i.
a performance "captured" ii.
protects the particular recording, not the song being recorded (the "musical work") or the physical object in which the recording is embodied (the phonorecord) iii.
relatively new subject matter, was only recognized in 1972, after an epic campaign by the recording industry due to piracy of music
1.
the Sound Recording Amendment Act, which carried over to the 1976 Act
2.
wanted copyright not just in the musical work, but in the captured performance, as captured in an LP or CD
3.
under § 114, the duplication of a sound recording fixed on or after the effective date of the 1971
Act is an infringement, not only of the rights of the songwriter and the songwriter's publisher, but also of all other persons holding a copyright in the sounds recorded a.
protection differs from other subject matter protections  an unauthorized duplication of a sound recording is an infringement, but rerecording another performance of it (even with the same artists and engineers) is not
4.
the lack of a general public performance right a.
when radio stations play a record, they must pay royalties to the owner of the song (not of the sound recording) b.
compromise struck c.
copyright owners in sound recordings do not have the right or power to control public performances (ie – radio play), so the radio stations didn't have to pay both the owner and the music label to play a song b.
originality arises from the performers or the work of the record producer who administered the recording i.
owner = producer or music label ii.
determined by "the employment relationship and bargaining among the interests involved" c.
arise out of "joint authorship" of those who participate in the phonogram production process (employees of production companies which acquire the resultant copyrights by virtue of assignment or by operation of the
"work for hire" doctrine) i.
note phonorecords may "fix" a number of distinct and different works simultaneously – musical works, literary works, and sound recordings d.
difference between sound recordings and musical works i.
musical work is
1.
the melody and harmony and lyrics, as created by the composer
2.
created by a composer
3.
comprised of musical notes and words ii.
sound recording is
1.
the "rendition" of the song as embodied in the recording
2.
created by the vocalist/instrumentalist/musical director/sound engineer, who make a derivative performance of the song
3.
comprised of a unique aggregation of sounds e.
example: Interscope's recording of "I Got a Feeling" by the Black Eyed Peas from their album, "The E.N.D." – who do you need permission from to do the following acts? i.
copyright in musical work (Black Eyed Peas)
1.
print or post lyrics
2.
copy or download the song
3.
sing, a live performance
4.
sample a part of the sound recording
5.
use the song in a movie/audiovisual work
30

ii.
copyright in sound recording (Interscope)
1.
(no need to ask about lyrics)
2.
copy or download the song
3.
(karaoke is okay without permission, so long as not using the real song as a backup)
4.
sample a part of the sound recording
5.
use the song in a movie/audiovisual work f.
must satisfy the ordinary prerequisites for a copyright i.
fixed in a tangible medium of expression ii.
original
1.
the source of originality may be the lead performer's rendition or the record producer's selection and mixing of sound
Dramatic and Choreographic Works
I.
Dramatic works - § 102(a)(3) a.
not defined, but widely accepted that a dramatic work relates a story by acting or singing rather than narrating i.
includes musicals and operas b.
important to distinguish between the copyright in the dramatic performance and the copyright in the underlying work, if there is one i.
can happen that a dramatic work may be predicated on a pre-existing work (like a literary work or a musical work) c.
music accompanied drama may be copyrightable on its own d.
category is important because, in addition to the basic work, there is another copyright in the performance itself i.
became an issue in New York when directors started claiming copyright protection in their specific design ii.
some of the defenses/exclusions/limitations that apply to one work may not apply to another
1.
ex: compulsory license in music recordings only applies to non-dramatic works
II.
Choreographic works - § 102(a)(4) a.
§ 102(a)(4), House Report defines choreographic works as composition and arrangement of dance movements and patterns, and pantomime as the performance of imitating or acting out situations or characters or some other events (must be done with gestures or body movement) b.
scope of protection issue i.
stop-moves are not protected ii.
social dance steps and simple routines are also in the public domain and thus not copyrightable
1.
but if such steps or routines are incorporated into a more elaborate or original arrangement, the outcome will be copyrightable iii.
ex: the Macarena
1.
per Parchomovsky, is probably not original enough to be protected a.
originality is very minimal b.
how low to lower the threshold?
2.
consequences of protecting it would be terrible iv.
ex: the juggler
1.
likely could argue choreographic work (performing in time to Beatles' song) a.
or maybe a dramatic work b.
or maybe add a new category of subject matter
2.
other people have copied this routine, tried to make it a parody in order to fall under fair use a.
implication then that they believe it's copyrighted c.
fixation issue i.
may be satisfied by filming it or taping it ii.
other ways to notate the performance iii.
important to distinguish between how you fix the work and the way in which you can infringe a work in this category that was fixed already
III.
Related cases a.
Horgan v. MacMillan, Inc. (note case – photos of ballet) i.
789 F.2d 157 (2d Cir. 1986) ii.
held that still photographs may infringe upon a copyright in a choreographic work iii.
at issue were still photos of a ballet performance iv.
this is infringement, distinct from fixation
31

Pictorial, Graphic, and Sculptural Works
I.
Pictorial, graphic, and sculptural works - § 102(a)(5) a.
protected in § 102(a)(5) of the 1976 Act i.
defined by means of an illustrative list in § 101 ("two-dimensional and three-dimensional works of fine, graphic, or applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings") b.
the issue of originality (2D works, maps and charts) i.
difficulty in identifying and specifying the elements of originality upon which map copyright is founded ii.
critics have argued that some works falling under this category (maps and charts) lacked the requisite level of originality to merit copyright protection, as they were mere depictions of earthly facts iii.
construing the 1909 Act, one strain of case law held that a cartographer must engage in at least a modicum of direct observation (Amsterdam) iv.
case law under the 1976 Act had begun to reject this approach in map cases, recognizing that originality analysis in this particular subject matter context requires reference no only to the character of maps as pictorial works, but also to the reality that such works are – in addition – factual "compilations" within the meaning of § 101 (Hamilton, Sparaco)
1.
Hamilton refused to withhold protection completely from maps, holding that arrangements and combinations of fact deserve protection as long as they are not merely trivial variations of information already in the public domain a.
choice of scale, color, symbols, what to include and not include
2.
Sparaco decided portion of site plan setting forth the existing physical characteristics of the site according to cartographic features is not entitled to copyright protection a.
rights of way, topography of area b.
but proposals for detailed improvements of the site, specifications, structure positions, placement of utilities, creation of copyright, landscaping suggestions  all entitled to copyright c.
site maps or site plans used for building, are entitled to copyright protection, but courts drew distinction in Sparaco v.
Parchomovsky: unintended consequence of map protection  include fake streets and landmarks, dilute quality of work just to get protection
1.
is a "detection" device
2.
compromising quality of information to some degree to take advantage of the copyright protection
3.
there maybe is no real advantage to protect this area, but courts protecting it because of the strong historical basis behind it c.
the issue of functionality (3D articles) i.
usually a problem with "useful articles" or utilitarian items ii.
how to not protect the functional elements and protect the aesthetic design
II.
Useful articles a.
§ 101 definition: having an intrinsic, utilitarian function i.
if found to be an "useful article," the protected only to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from the utilitarian features
1.
can identify either physical or conceptual separability a.
physical separability is never a problem, an easy case b.
conceptual separability is a challenge
2.
an article is not useful if its only function is to convey information a.
limitation is apparently to exclude literary works, such as directories and textbooks, and some pictorial works ii.
nothing in pre-1976 American copyright law barred protection for otherwise qualified works that were also "useful articles" iii.
but following Mazer, Copyright Office adopted a regulation setting forth its understanding of the case
1.
if the sole intrinsic function of an article is its utility, the fact that the article is unique and attractively shaped will not qualify it as a work of art
2.
if a shape of a utilitarian article incorporates features, like sculpture or pictorial representation, which can be identified separately and are capable of existing independently as a work of art, such features will be eligible for registration b.
a two-step analysis
32

i.
1) is the article useful?
1.
don't forget the first part of the useful article test (Masquerade Novelty) ii.
2) is it possible to establish physical or conceptual separability?
1.
if yes, then there is protection
2.
if no, then there is no protection c.
conceptual separability i.
by its definition, the 1976 Act indicates that the design of a useful article may itself qualify as such a copyrightable work only to the extent that it incorporates artistic features "that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article"
1.
conceptual separability = can be identified separately from
2.
physical separability = is capable of existing independently of ii.
Paul Goldstein (Stanford): suggested that test should be different and that conceptual separability should be found when the artistic features can stand alone as a work of art traditionally defined and the useful article will be equally useful without it
1.
criticisms a.
red alert – what does "traditionally defined" mean? i.
dangerous, slippery slope ii.
requires judgments to make decisions based on their opinion of what traditional art means b.
all useful articles will still be useful, does not add anything to the test d.
why we need this rule i.
useful articles are the traditional ambit of patent law, trying not to take it over
1.
cannot circumvent the more stringent requirements of patent law by getting a copyright, is not something we want to encourage
2.
functionality is not what copyright is trying to protect ii.
do not want to create a monopoly on something you want to use daily iii.
there are markets for these goods already
1.
if something is useful, they're going to make it anyway, no need additional incentive to create aesthetically-pleasing design
2.
competition is a very strong force that already drives innovation a.
lead time and other market factors can encourage incentive to innovate in order to get to market first
3.
have trademark and unfair competition to protect market products iv.
when we get to musical and literary and audiovisual works, the cost of reproduction is very low, and we need to worry about unauthorized copies
1.
in this context, copying is more expensive a.
not prohibitively expensive, though
III.
Related cases a.
Amsterdam v. Triangle Publications (note case – "sweat of the brow") i.
93 F. Supp. 79 (E.D. Pa. 1950) ii.
part of strain of case law interpreting the 1909 Copyright Act iii.
the publisher of the map in question obtains originally some of that information by the sweat of his own brow, must engage in some direct observation iv.
 "the sweat of the brow" standard
1.
rested ultimately on a concern that a less onerous test would encourage real or apparent monopolization of valuable factual information b.
United States v. Hamilton (note case – copied map) i.
583 F.2d 448 (9 th Cir. 1978) ii.
rejected the defendant's argument that the map copied was not subject to copyright because it was simply a synthesis of information already in the public domain iii.
require only that they display something original iv.
held that arrangements and combinations of facts are copyrightable so long as they are not merely trivial variations of information within the public domain c.
Sparaco v. Lawler, Matusky, Skelly, Engineers LLP (note case – city planning on a map) i.
303 F.3d 460 (2d Cir. 2002) ii.
court held that, while a surveyor's use of standard cartographic symbols was not original, detailed plans for proposed physical improvements (parking lots, drives, curbs, walkways, utilities, walls, landscaping, etc.) constituted protected expression
33

iii.
court distinguished an earlier case rejecting copyright in plans that conveyed only general ideas about how a site might be developed d.
Mazer v. Stein (sculptures as lamps)
Mazer v. Stein
Citation 347 U.S. 201 (1954)
Facts
Issue
Court's
Ruling
Concurrence or Dissent
plaintiffs are partners in the manufacture and sale of electric lamps, and created an original works of sculpture in the form of human figures, using clay model technique
statuettes, without lamp components added, were submitted by plaintiffs to the Copyright Office for registration as "works of art"
statuettes were sold in quantity throughout the U.S. as both lamp bases and statuettes
defendants are partners that make and sell lamps, who copied the statuettes without permission
1.
Whether works of art that are intended for practical use (as lamps) may be copyrighted.
Justice Reed, in favor of Π
We do hold that the patentability of the statuettes, as lamps or not, does not bar copyright as works of art  neither the Act nor any other says that because a thing is patentable/useful it may not be copyrighted.
contemporaneous and long-continued construction of the statutes by the agency charged to administer them that would allow the registration of such a statuette as in question here
legislative history of the Act show that "works of art" are terms that were intended by Congress to include the authority to copyright these statuettes
individual perception of the beautiful is too varied a power to permit a narrow or rigid concept of art  depends solely on statutory interpretation
Justice Douglas, concurring
important constitutional question underlies this case
is a sculptor an "author" and his statue a "writing" within the meaning of the Constitution – have never decided that question
not obviously so, and it is time we came to the problem full face – I would accordingly put the case down for reargument
Class Notes defendant claiming abuse of copyright protection – cannot extend to mass-produced useful articles even if they contain some artistic merit o using the copyright to obtain a monopoly on production o wants categorical exclusion – mass-production articles are not protected
the Court looks to language of the Act and held the statuettes were copyrightable o nothing in the Act indicates that useful articles are not copyrightable by definition o even though design patent is applicable, doesn't mean copyright law is not
established NO categorical exclusion of useful articles o under some circumstances, useful articles may be entitled to copyright protection
 but does not say what those cases are e.
Pivot Point International, Inc. v. Charlene Products, Inc. (mannequin head)
Citation
Facts
Pivot Point International, Inc. v. Charlene Products, Inc.
372 F.3d 913 (7 th Cir. 2004)
Pivot Point develops and markets educational tools and techniques for hair design industry
34

Issue
History and
Precedent
Court's
Ruling o in mid-1980s, designed a mannequin head that would imitate the
'hungry look' of high-fashion runway models o worked with a German artist, Horst Heerlein, to create an original sculpture of a female human head ("Mara") o obtained a copyright registration for the design of Mara
Charlene, a wholesaler of beauty products displayed its own "Liza" mannequin, which was very close in appearance to Mara
Pivot Point brought suit for copyright infringement, after Charlene refused to stop importing and selling the Liza mannequin
1.
Whether the Mara mannequin – a sculpture meant for practical use – is subject to copyright protection. a.
question of statutory interpretation
Superior Form Builders v. Dan Chase Taxidermy Supply Co., 74 F.3d 448
(4 th Cir. 1996) o fish and animal mannequins are not useful articles o any utilitarian aspect of the mannequin exists 'merely to portray the appearance' of an animal
Mazer v. Stein o obvious test is to rely on the capacity of the artistic material to be severed physically from the industrial design
other tests that have been suggested o the artistic features are "primary" and the utilitarian features are
"subsidiary" (Kieselstein-Cord v. Accessories by Pearl,Inc., 632
F.2d 989 (2d Cir. 1980)) o the useful article would still be marketable so some significant segment of the community simply because of its aesthetic qualities (Nimmer on Copyright) o the article stimulates in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function
(Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d
Cir. 1985)) o the artistic design was not significantly influenced by functional considerations (Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834
F.2d 1141 (2d Cir. 1987)) o the artistic features can stand alone as a work of art traditionally conceived and the useful article in which it is embodied would be equally useful without it (Goldstein on Copyright) o the artistic features are not utilitarian (Patry on Copyright)
Judge Ripple, in favor of Π
Conceptual separability exists, therefore, when the artistic aspects of an article can be "conceptualized as existing independently of their utilitarian function"
(Carol Barnhart)  if the elements do reflect the independent, artistic judgment of the designer, conceptual separability exists. o conversely, when the design of a useful article is as much the result of utilitarian pressures as aesthetic choices, then not conceptually separable
conclude that the Mara face is subject to copyright protection
meets the requirements for conceptual separability and is subject to copyright protection o not difficult to conceptualize a human face independent of all of
Mara's specific facial features – another model can portray the
"hungry look" of a runway model o can be conceptualized as existing independently from its use in training because it is the product of Heerlein's judgment – didn't constrain him in how to design the head o product of a creative process unfettered by functional concerns  its sculptural features can be identified separately from, and are capable of existing independently of, its utilitarian aspects
reverse the judgment of the district court and remand the case for trial on
35

Concurrence or Dissent
Class Notes
Pivot Point's infringement claim
Judge Kanne, dissenting
Mara is not copyrightable, no matter which test is applied
has only functional attributes
any physical separation of a portion of her would not be independent of her utilitarian aspects  the use of a mannequin head in beauty school
lies in its aesthetic qualities
if we look at the "process" that led to Mara's creation, it is undeniable that, from the beginning, Pivot Point intended Mara to serve a function purpose and commissioned her creation to fulfill that purpose
design patent, trademark, etc. are available to address the concerns about questionable business practices of Charlene (which are not relevant to copyright)
would affirm the district court's summary judgment in favor of Charlene
district court found that the mannequin head could not be copyrighted o is a useful article o no conceptual separability
at the 7 th Circuit, majority opinion o is a useful article
 court is assuming for the sake of analysis that it is o but there is conceptual separability
 seem to combine a couple of tests  Brandir (work reflects artistic expression) and Carol Barnhart
(separable) and Ripple (work reflects artistic expression uninhibited by functional considerations) o Mara is copyrightable because sculptural features distinct from utilitarian functions, developed without functional guidelines
the dissenting opinion o seems to be following Goldstein o argues that the test the majority uses bears tenuous relationship to statutory language o notes majority's analysis was influenced by the fact that the plaintiff is bringing up unfair competition – equitable
considerations, because unsympathetic defendant, and swayed majority to find conceptual separability  this is inappropriate f.
Masquerade Novelty, Inc v. Unique Industries, Inc. (note case – nose masks) i.
912 F.2d 663 (3 rd Cir. 1990) ii.
court considered copyright of plaintiff's "nose masks" (noses of different animals) iii.
nose masks are not utilitarian objects per § 101
1.
that ends the analysis  no need to look into separability iv.
held that if the masks were considered "useful" (to make people laugh), effective separation of form and function would be difficult, but rejected the "useful" premise v.
that nose masks are meant to be worn by humans to evoke laughter does not distinguish them from clearly copyrightable works of art like paintings – its artistic elements could not have been separated from the emotional effect its creator hoped it would have on persons viewing it g.
Whimsicality, Inc. v. Rubie's Costume Co. (note case - costumes) i.
891 F.2d 452 (2d Cir. 1989) ii.
court stated bluntly that the Copyright Office considers costumes to be wearing apparel and consistently rejects applications to register them
1.
Copyright Office later clarified and stated that masks are not useful articles, but maintained that costumes serve a dual purpose (are useful articles subject to separability analysis) h.
Esquire, Inc. v. Ringer (note case – light fixture design) i.
591 F.2d 796 (D.C. Cir. 1978) ii.
court considered copyrightability of a light fixture iii.
the conceptual separability test used here
1.
exists when disaggregation of object's useful and decorative features could be imagined, but for some practical reason, are not carried out
36

iv.
court held that the lamp was not copyrightable v.
held that the relevant portion of the House Report indicated unequivocally that the overall design of a utilitarian object, even if it is determined by aesthetic considerations, is not eligible for copyright vi.
implies that conceptual separability can exist only where the physical disaggregation of an object's useful and decorative features could be imagined but, for some practical reason, cannot be accomplished
1.
ex: removal of an incised bas relief from the wall of a building i.
Kieselstein-Cord v. Accessories by Pearl, Inc. (note case – belt buckles) i.
632 F.2d 989 (2d Cir. 1980) ii.
claims of copyright in decorative belt buckles iii.
the conceptual separability test used here
1.
exists when artistic features are primary and utilitarian features are subsidiary iv.
held the belt buckles were copyrightable, but the majority seems to have doubted that the buckles had much to do with holding up anyone's pants  the "primarily ornamental aspect" of the buckles is conceptually separate from their subsidiary utilitarian function
1.
princes ranged between $177.50 and $6,000.00 dollars
2.
displayed in the Met museum, sold in high-fashion stores, used other than around the waist j.
Carol Barnhart Inc. v. Economy Cover Corp. (note case – mannequin torsos) i.
773 F.2d 411 (2d Cir. 1985) ii.
involved four life-size human torso forms made of styrene, which were designed and used to display sweaters, blouses, and dress shirts iii.
the majority's test
1.
conceptual separability exists when artistic aspects can be conceptualized as existing independently of their utilitarian function a.
 Parchomovsky: this test doesn't say anything at all!
2.
find not copyrightable a.
size and form are dictated by the utilitarian function b.
held that the features are inextricably intertwined with the utilitarian feature, the display of clothes iv.
the dissent's test
1.
conceptual separability exists when an article stimulates in the mind of the beholder a concept that is separate from the concept evoked by the utilitarian function
2.
said that the relevant beholder must be that the most useful legal personage – the ordinary, reasonable observer a.
whether the utilitarian function can be displaced in the mind as a concept of art b.
majority rejected this test as a "non-test" k.
Brandir International, Inc. v. Cascade Pacific Lumber Co. (note case – bike rack) i.
834 F.2d 1142 (2d Cir. 1987) ii.
about design of a bicycle rack constructed of metal tubing bent to create a serpentine form iii.
court adopted test for "conceptual separability" from utilitarian aspects
1.
exists when design reflects artistic judgment exercised independently of functional elements iv.
court finds that the bike rack is not copyrightable v.
because the artist had modified his original sculpture in order to produce a more useful bike rack
Audiovisual Works
I.
Motion pictures and audiovisual works - § 102(a)(6) a.
§ 101 defines audiovisual works as a projection of related images which may be accompanied by sounds in addition to films i.
"audiovisual work" = series of related images which are intrinsically intended to be shown by the use of machines and devices such as projectors, viewers, or electronic equipment ii.
this subject matter category includes any set of related images presented sequentially and serially at a predetermined order or at random
1.
any relatedness would do a.
"related" images requirement has been read to mean that the images were meant to be seen by the same viewers b.
schedule that is shown with a news broadcast counts
2.
serial is not necessary for the images to be presented serially (in a fixed, invariable order) a.
audiovisual display of a video game is okay
37

iii.
it wasn't until 1912, the Townsend Amendment, that Congress provided express protection – became §
102(a)(6), which protected the umbrella category of motion pictures and other audiovisual works b.
originality may be found in individual images or in their arrangement, or alternatively, in overall production i.
quantum-of-originality ii.
even if the individual components are not unique, if combination is unique, then can be original enough
1.
ex: the Breakout video game c.
question of authorship i.
movies are made by a lot of people, many contribute to their production ii.
not easy to determine who the authors are when so many people are involved iii.
one way out is label every production person an author, but can dilute the value of the work iv.
another way to solve this problem, most works in this genre are works made-for-hire, whose copyright is owned by the movie studio (to preserve its value)
Architectural Works
I.
Architectural works - § 102(a)(8) a.
§ 102(a)(8), which protects the design of buildings as embodied in any tangible medium of expression, including the building itself, the models, or the drawings i.
recognized and added in 1990, Congress passed AWCPA
1.
protects all works created on or after December 1, 1990
2.
also extends to buildings whose plans were ready on the effective date, and whose construction was completed by 2003 ii.
what "building" means
1.
according to the House Report, "building" is a habitable structure, as well as structures used but not habitable by human beings a.
ex: churches, gazebos b.
architectural design of a store enclosed in a shopping mall does not count - Yankee
Candle Company (D. Mass. 1998) i.
mall as a whole may be copyrighted, but an individual store is not ii.
Parchomovsky: not sure that other courts would follow, seems like an outlier iii.
what "design" means
1.
refers to overall form as well as the arrangement and composition of spaces and elements in the design, but not standard features b.
another two-step analysis for architectural works i.
1) are there original design elements? ii.
2) are they dictated by functional considerations?
1.
 there is no conceptual separability requirement here
2.
but this second step is still not a straightforward examination, must go into what motivated the design elements
3.
can't copyright functional things a.
safety issues, utility issues, cannot give someone a monopoly over the safest design c.
the scope of the architecture works protection, § 120(a) i.
some scope limitations ii.
permits the making of pictorial representations of structures with 2 caveats:
1.
building must be ordinarily visible from a public space
2.
does not apply to 3D models of buildings iii.
the extension of protection does not apply just to the high end, but also the low end
1.
so copyright protection also came to protect mundane and ordinary buildings, which is one downside of adding the category
2.
in Richmond Homes v. Raintree, court recognized copyrightability of a mass-produced development home a.
although the features of the structure were standard, there was sufficient originality in the way they were put together
3.
Parchomovsky: upside is far from clear  buildings did not visibly improve d.
note § 120(b) allows the owner of a building to destroy or make alterations in a building embodying an architectural work
II.
Related cases a.
Shine v. Childs (twisting skyscraper)
Shine v. Childs
38

Citation
Facts
Issue
History and
Precedent
Court's
Ruling
Class Notes
382 F. Supp. 2d 602 (S.D.N.Y. 2005)
Shine is suing Childs for copyright infringement
Shine is a student of architecture at Yale's Masters of Architecture
Program – the "Shine '99" and Olympic Tower designs were developed for a class o panel of architects, including Childs, judged and praised his work for the Olympic Tower
Shine alleges he created original designs for a skyscraper that Childs saw and later copied in the first design plan for the Freedom Tower at the
World Trade Center site
copyrighted his Olympic Tower and Shine '99 design and later brought action against the defendants
1.
Whether the plaintiff has a valid copyright in his architectural design.
2.
Whether the defendants infringed on that design.
the Architectural Works Copyright Protection Act (AWCPA) was adopted in 1990 by Congress to amend the Copyright Act and add architectural works as a new category of copyrightable material o the overall form as well as the arrangement and composition of spaces and elements in the design of an architectural work may be the subject of a valid copyright
Sparaco v. Lawler, Matusky & Skelly Eng'rs LLP, 203 F.3d 460 (2d Cir.
2002) o once a design includes a specific expression and realization of ideas, copying constitutes infringement
Boisson v. Banian, Ltd., 273 F.3d 262 (2d Cir. 2001) o certificates of copyright registration constitute prima facie evidence of the validity not only of the copyrights, but also of the originality of the works
Judge Mukasey, in favor of Π
both Shine '99 and the Olympic Tower are worthy of protection under the
AWCPA – although Shine '99 is certainly a rough model, it is more than a concept or idea, it is a distinctive design for a building o after passing of AWCPA, clear that architectural works are protected under the Copyright Act o statute nowhere states or implies that only designs capable of construction are worthy of protection – irrelevant
plaintiff need not clear a high bar in order for his architectural works to qualify as original o twisting towers have been build before, but defendants do not present any evidence that the particular combination of design elements in either building are unoriginal o these works have at least the mere "dash" of originality required for copyrightability, not to mention that they are both already copyrighted, and are therefore prima facie original
granted summary judgment for defendants, in part, finding a lack of probative similarity between the Shine '99 and the Freedom Tower
denied summary judgment for defendants, in part, finding that reasonable jurors could disagree as to the substantial similarity between the Olympic Tower and the Freedom Tower
copyrightability issue o design is entitled to protection o clear from AWCPA, doesn't matter if the design cannot actually be used to construct the building
 no basis whatsoever for defendant's argument
 the act protects the design of the building in any tangible medium of expression
 compare to prior cases before AWCPA, in which buildings were subject to being in the sculptural
39

o original enough works category, and a model is good enough
 is a very low bar
 the combination of unoriginal elements may, by itself, satisfy the originality requirement
 defendants failed to show that Shine's particular combination of elements existed in prior works
functionality issue o there is some disagreement about functionality in this case
(plaintiff's expert challenging the defendant's argument), so it's not an issue that can be decided on summary judgment
 issue of material fact that is open, so remanding
infringement issue o the design of the tower was later modified
 the final design bore little resemblance to the plaintiff's tower o the fact that one person's design was a step along the way to the final design, that's not a good defense
 the fact that it was used at any point can give rise to a lawsuit b.
Leicester v. Warner Bros. (note case – Batman wall) i.
232 F.3d 1212 (9 th Cir. 2000) ii.
the § 120(a) exception for buildings – the scope of the architecture works provision iii.
but the "building" in this case was a "streetwall" that was part of a courtyard adjacent to a building in downtown LA, used in the movie, "Batman Forever"
1.
the streetwall was part of a sculptural work in a courtyard called the Zanja Madre
2.
"Batman Forever" producers got permission from the property owner to film in that building, but the artist hadn't given permission iv.
movie people argued that the artistic work is an integral part of the building, and the building is located in a public place  no infringement under § 120(a) v.
artist argued that the courtyard is a sculptural work that exists independently of the building, and §
120(a) doesn't apply, so no permission to film there
1.
not difficult to show conceptual separability either vi.
the Circuit found that the courtyard was part of the building and an architectural work, subject to §
120(a) provisions
1.
meant that Warner Bros. could take advantage of the privilege and did not commit copyright infringement
2.
3-judge panel found three ways
3.
Rymer: streetwall matches the building and gives impression that the building continues to the end of the property line, towers were designed to appear as part of the building, and have functional purpose of channeling traffic into the courtyard, not conceptually separate from the building
Subject Matter – Second Generation Works
Compilations
I.
Derivative works and compilations, generally a.
§ 103 protects "compilations and derivative works" as special forms of the "works of authorship" categories i.
even though derivative or compilation, still are types of literary, musical, and other categories of works ii.
"first generation" works: composed essentially of materials created by their authors iii.
"second generation" works: based on pre-existing matter
1.
includes both derivative works and compilations
2.
the "first generation" inspiration a.
can come from public domain materials  no infringement issue b.
can come from independently created expressive works  this is where infringement issues may arise b.
 so long as the author of a derivative work or compilation incorporates preexisting matter and satisfies both the fixation and originality requirements, the work qualifies for copyright protection under Section103(a)
40

i.
originality can be found in selection and arrangement and in their own original additions c.
scope of protection i.
§ 103(a): withholds copyright protection, from parts incorporating copyrighted materials unlawfully ii.
§ 103(b): protection extends only to material contributed by author and NOT to any preexisting material
1.
is independent of, and does not affect or enlarge the scope/duration/ownership/subsistence of any copyright protection in the preexisting material
2.
the copyright office's practices (C.F.R. § 307): 4 or less additions are insufficient, need 5 or more iii.
the major issue that arises with derivative works and compilations is the extent to which the matter contained in the work – the preexisting matter and the matter contributed by the derivative/compilation author – is protected by the copyright in the work as a whole
II.
Derivative works a.
"derivative work" in § 103 is a category of works which are potentially protectable under copyright law, provided that the constitutional and statutory prerequisites for protection are fulfilled i.
the subject matter of the copyright in § 102 includes derivative works (§ 103(a)) ii.
on the flip side, in § 106(2), derivative works can constitute infringement when undertaken without a copyright owner's authorization b.
the scales of originality
 public domain works
Bell Batlin minimal originality high originality
1.
Alfred Bell & Co. v. Catalda Fine Arts, Inc. a.
originality = slight as it might be, intended or not b.
Parchomovsky: this is a bad idea – want public domain materials to be free to the public's use, and minor alterations to a classic work of art should not give the alterer the copyright i.
ex: copy of Mona Lisa with a freckle added
2.
L. Batlin & Son, Inc. v. Snyder a.
536 F.2d 486 (2d Cir. 1976) b.
court revised the standard from Bell c.
originality = substantial, not merely trivial difference
 copyrighted works
Durham ERG Saturday Gracen minimal originality high originality
3.
Durham Industries, Inc. v. Tomy Corp. a.
originality = showing of artistic skill, not just physical skill b.
about 3D versions of Disney characters
4.
Entertainment Research Group, Inc. (ERG) v. Genesis Creative Group, Inc. a.
originality = 1) more than trivially original and 2) clear indication of original contribution b.
Parchomovsky: the second part of this test is also a very high bar
5.
Saturday Evening Post Co. v. Rumbleseat Press, Inc. a.
originality = some incremental originality
6.
Gracen v. Bradford Exchange a.
originality = substantial difference b.
Parchomovsky: it's better to use substantial difference rather than evaluate the artistic originality, better for 3 rd parties c.
derivative works' original material "used unlawfully" i.
under § 103(a), copyright in a derivative work does not extend to any part of the work in which the preexisting material was used unlawfully ii.
see Anderson v. Stallone iii.
 if § 103(a) denies protection, then all that second-generation content created goes to the ownership of the author of the underlying work
1.
makes sense, authors of original works are granted the power to control derivative works (§
106(2))
41

d.
miscellaneous derivative works issues i.
importance of avoiding "overlapping" claims
1.
which is why there is a relatively high threshold for derivative work copyrightability a.
to minimize transaction costs b.
the costs of determining infringement would be prohibitive ii.
the more extensive a copyright is, the more inhibited is the literary imagination (Posner)
1.
reason for narrowing the scope of copyright law e.
related cases i.
Doran v. Sunset House Distributing Corp. (note case – derivative works' originality)
1.
197 F. Supp. 940 (S.D. Cal. 1961)
2.
rejected the conclusion of the district court that if the form of the derivative work and the underlying work are sufficiently different, then the derivative work is original enough to be copyrightable
3.
found more similarities than differences in the given forms ii.
Alfred Bell & Co. v. Catalda Fine Arts, Inc. (note case – mezzotints of old masters)
1.
191 F.2d 99 (2d Cir. 1951)
2.
suit concerned mezzotint engravings based on "old masters" (famous paintings whose term of protection had long expired)
3.
plaintiff was free to adapt the works, and attempt to secure protection for the derivative works produced
4.
in determining whether the mezzotints were sufficiently original, the court held that they are a.
the Act provides for the copyrighting of "translations or other versions of works in the public domain" – mezzotints were such "versions" b.
originated with those who made them  even if their variations are inadvertent, the copyright is valid iii.
Durham Industries, Inc. v. Tomy Corp. (note case – Disney plastic toys)
1.
630 F.2d 905 (2d Cir. 1980)
2.
the court rejected a claim of copyright in licensed 3-inch wind-up plastic toys based on Disney characters
3.
expressed the standard for derivative works as: a.
1) original aspects must be more than trivial b.
2) original aspects 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 iv.
Entertainment Research Group, Inc. (ERG) v. Genesis Creative Group, Inc. (note case – giant Doughboy)
1.
122 F.3d 1211 (9 th Cir. 1997)
2.
endorsed the Durham test
3.
denied a claim of copyright in an 8-foot high costume designed based on advertising characters like the Pillsbury Doughboy and Geoffrey Giraffe
4.
distinguished from Doran, in which the preexisting work was taken from the public domain and not copyrighted itself – found this difference to be critical
5.
if a derivative work copyright were granted too readily, the owner of the underlying work would effectively be prevented from permitting others to copy her work since the 1 st derivative work holder would become the de facto monopolist, due to her considerable power to interfere with the creation of subsequent derivative works from the same underlying work
6.
to extend copyright to miniscule variations would simply put a weapon for harassment in the hands of mischievous copiers intent on appropriating and monopolizing public domain work v.
Saturday Evening Post Co. v. Rumbleseat Press, Inc. (note case – derivative works' originality)
1.
816 F.2d 1191 (7 th Cir. 1987)
2.
in dictum, the court observed that derivative works are copyrightable provided the derivative work has some incremental originality, citing Gracen and Durham vi.
Gracen v. Bradford Exchange (Wizard of Oz plates)
Citation
Facts
Gracen v. Bradford Exchange
698 F.2d 300 (7 th Cir. 1983)
in 1976, MGM licensed Bradford Exchange to use characters and scenes from The Wizard of Oz in a series of collectors' plates
Bradford invited several artists to submit paintings of Dorothy, with the understanding that the artist who submitted the best painting would be
42

Issue
History and
Precedent
Court's
Ruling
Class Notes offered a contract for the series o said they wanted "your interpretation" but must "evoke all the warm feeling the people have for the film and its actors"
Gracen won the contest, but didn't like the terms of the contract and refused to sign
Bradford turned to another artist, Auckland, who had not been a contestant, and offered him the contract and gave him Gracen's painting to help him
Auckland completed the series, but Gracen had obtained a copyright on her painting and brought suit against MGM, Bradford, Auckland, and plate manufacturers
MGM and Bradford counterclaimed, alleging that Gracen infringed the movie copyright by showing her drawing to people whom she was soliciting for artistic commissions
1.
Whether there is enough difference between the derivative work and the underlying work to satisfy the statutory requirement of originality, and thus make a derivative work copyrightable in its own right.
2.
Whether Gracen was licensed (by agreement with Bradford) to exhibit the painting and copyright it.
Copyright Act, § 106(2) o copyright owner's bundle of rights includes the right "to prepare derivative works based upon the copyrighted work"
Copyright Act, § 103(a) o 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 o (meaning that Gracen could not copyright her works unless she had authority to use the copyrighted material from the movie)
L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir. 1976) o a derivative work must be substantially different from the underlying work to be copyrightable
Judge Posner, in favor of Δ
Artistic originality is not the same thing as the legal concept of originality in the
Copyright Act  in derivative works, meant to prevent overlapping claims. o purpose of the term in copyright is not to guide aesthetic judgments but to assure a sufficiently gross difference between the underlying and derivative work o requirement of originality is significant
affirm judgment dismissing complaint  agree with district court that
Gracen's painting, whatever its artistic merit, is not an original derivative work within the meaning of the Copyright Act o drawn from the movie, do not consider a picture created by superimposing one copyrighted photographic image over on another to be "original"
grant of summary judgment on the counterclaim was erroneous 
Bradford had apparent authority to promise the painting to Gracen, so there is a genuine issue of material fact concerning the scope of her implied license to exhibit the painting o although Bradford did not authorize Gracen to sublicense the copyright, there can be no serious doubt of its authority to do so o find no evidence to support the idea that Bradford "bought"
Gracen's painting for $200  in promising Gracen that she could keep the painting, must have known she would exhibit it to advance her career as an artist
Bleistein is not applicable here
Bradford counterclaims Gracen is violating the copyright on the movie o not clear that she had the right to exhibit her painting, who owns the copyright?
43

o controlled by contract law, implied license
 Posner says there was a nonexclusive oral license
 the issue for Posner is the scope of the license – what was
Gracen allowed to do? – is a question of interpretation
 concludes that, in the absence in an agreement to the contrary, Gracen at the very least as a right to 1) keep the painting, 2) exhibit it, and 3) use it to advance her career
 contract is important
Gracen claiming that Auckland's version is infringing on her copyright on the painting  does she have one, in the first place? o there are two steps here, too o first, Posner looks at the license to figure out whether Bradford had licensed a copyright to Gracen  concludes that no, it's unreasonable to assume that the license went that far and that
Bradford licensed her a copyright in her rendition o next, Posner looks at the copyright law  concludes that her painting was meant to copy photographs from a movie, and was not sufficiently original to be copyrightable on its own
 all artists in operated with same goal in mind: to create a painting that closely resembles the characters from The
Wizard of Oz ("evoke the warmth")
 in the world of art, there is a trend called super-realism, which emphasizes the important of tiny differences, but that will not work in the world of law
 even though have perceptible differences because it's a painting, still copying a picture  engaged in basically a reproduction
 was not like she was drawing from real life
 the work must be substantially different to be original for copyright law
 this painting is not substantially different, and not copyrightable
Posner was concerned with enough originality because… o if give subsequent artists copyrights for minor alterations, then they might have overlapping claims over the same original work o worries of the subsequent creators
 information costs: if want to create your later version, will be harder to know from whom to get permission
 would worry about suits coming at you from unknown sources
 transaction costs: if want to get permission, must get the okay from more and more rights-holders o can also raise adjudication costs for courts
so Posner raises the originality bar
Parchomovsky thinks he's right, but this is not exactly the standard adopted by all other courts in regards to originality vii.
Anderson v. Stallone (note case – Rocky IV script)
1.
11 U.S.P.Q.2d (BNA) 1161 (C.D. Cal. 1989)
2.
a compilation which unlawfully uses preexisting material could qualify for partial protection, but a derivative work that does so could not
3.
Anderson wrote a movie script for Rocky IV without permission, and Stallone did not approve of treatment, and sued
4.
court ruled for Stallone a.
about the same characters in the same setting b.
impossible to separate the unlawful parts from the lawful ones c.
in the case of a movie script, the entire work is contaminated
44

d.
as a result, Anderson has no right in the movies script because nothing is independently protectable
5.
practical result is that, if Anderson has no rights in his script, then Stallone can use it viii.
Dam Things From Denmark v. Russ Berrie & Co., Inc. (note case – troll dolls, grandfathering)
1.
290 F.3d 548 (3d Cir. 2002)
2.
about the copyrightability of whether the defendant's versions of the plaintiff's shock-headed troll dolls constituted "derivative works" – because any derivative works that had been prepared when the plaintiff's works were in the public domain were "grandfathered" when the plaintiff's works had their copyrights restored by § 104A
3.
the Third Circuit rejected the district's "substantially similar" conclusion and remanded a.
 a work which makes non-trivial contributions to an existing one may be copyrighted as a derivative work and yet, because it retains the same aesthetic appeal of the original work, render the holder liable for for infringement when published without permission b.
the fact that the two companies' dolls have the "same aesthetic appeal" or "are very similar in appearance" does not rule out the applicability of the safe harbor for derivative works
III.
Compilations a.
works formed by the collection and assembly of preexisting materials or of data that are selected, coordinated, and arranged in such a way that the resulting work as a whole constitutes an original work of authorship i.
preexisting materials brought together by the compiler may include separate and independently copyrightable works b.
original arrangement i.
as noted in Feist, an arrangement may lack originality if it is traditional or commonplace ii.
per Matthew Bender, creativity in arrangement is a product of 3 factors (p. 682)
1.
number of options available a.
no exercise of creativity when the options are too limited
2.
external factors that limit the viability of certain options (effectiveness or functionality, remember the sweepstakes rules)
3.
prior uses that render certain selections "garden-variety" c.
soft vs. hard facts i.
originality standard is satisfied where the compiler's claimed "original" contribution is subjective and evaluative
1.
remember CCC Information Services (Red Book of used car values) a.
in that case, the Second Circuit distinguished between "building block" matter (subject to merger because it must be freed up to assist the understanding of future thinkers) and "approximative statements of opinion" (which are infused with the author's taste and judgment and need not be categorized as subject to merger)
2.
see CDN Inc. v. Kapes d.
copyright claims in judicial reports i.
headnotes, summaries, and other matter added by publishers are protectable (West Publishing Co. v.
Mead Data Central, Inc.) ii.
smaller changes are likely not (Matthew Bender & Co., Inc. v. West Publishing Co.) e.
related cases i.
Leon v. Pacific Telephone & Telegraph Co. (note case – telephone directory)
1.
91 F.2d 484 (9 th Cir. 1937)
2.
Feist expressly disapproves of this ruling
3.
court found Leon liable for producing a numerical telephone directory by making unauthorized use of the alphabetical directory prepared and published by the plaintiff a.
found that the plaintiff's large expenditure of time, energy, and money entitled it to the protection of the copyright laws b.
getting out a directory is an expensive, complicated, well-organized endeavor, requiring skill, ingenuity, and original research ii.
Eckes v. Card Prices Update (note case – baseball card price guide)
1.
736 F.2d 859 (2d Cir. 1984)
2.
about a baseball card price guide – found to be protected
3.
even courts disinclined to the "sweat of the brow" theory remaining willing to protect factual compilations in appropriate circumstances iii.
CDN Inc. v. Kapes (note case – coin collectors guide)
1.
197 F.3d 1256 (9 th Cir. 1999)
45

2.
applied the rule of CCC
3.
held that a guide to collectible U.S. coins was copyrightable compilation as a product of the creative process
4.
process to arrive at wholesale prices began with examining the major coin publications to find relevant retail price information  CDN's prices represent its best estimate of the value of the coins iv.
Feist Publications, Inc. v. Rural Telephone Service Company, Inc. (phone book copying)
Citation
Facts
Issue
History and
Precedent
Court's
Ruling
Feist Publications, Inc. v. Rural Telephone Service Co., Inc.
499 U.S. 340 (1991)
Rural is a certified public utility that provides phone service to several communities in northwest Kansas, and publishes a phone directory of yellow and white pages
Feist is a publishing company that specializes in area-wide telephone directories and cover a larger geographic area o is not a phone company, so obtains approval from the phone companies and offers to pay for the right to use their white pages listings
out of all 11 companies, only Rural refused to license its listing, but left a gaping hole in its directory, so used the listings without consent o hired personnel to investigate the listings and obtain additional information
Rural sued for copyright infringement
1.
Whether telephone directory white pages – the names, towns, and telephone number listings – can be copyrighted.
Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985) o most fundamental axiom of copyright law is that "no author may copyright his ideas or the facts he narrates" o President Ford could not prevent others from copying bare historical facts from his autobio, but could prevent others from copying "subjective descriptions and portraits of public figures"
Burrow-Giles o one who discovers a fact is not its maker or originator o the discoverer merely finds and records o originality is a constitutional requirement
Jeweler's Circular Publishing Co. v. Keystone Publishing Co., 281 F. 83
(2d Cir. 1922) o sweat of the brow doctrine o the man who goes through the streets of a town and puts down names of each of the inhabitants, with their occupations and their street numbers, acquires material of which he is the author
Justice O'Connor, in favor of Δ
Originality, not "sweat of the brow" is the touchstone of copyright protection in directories and other fact-based works.
Facts are never original, so the compilation author can claim originality, if at all, only in the way the facts are presented. o originality requirement is not particularly stringent, only requires that the author make the selection or arrangement independently
judgment of the court of appeals is reversed
the names, towns, and telephone numbers copied by Feist were not original and not protected by the copyright in Rural's directories
to establish infringement, two elements must be proven o ownership of a valid copyright
 Feist concedes that Rural's directory, as a whole, is subject to valid copyright o copying of constituent elements of the work that are original
 Rural essentially concedes the point by referring to the names, towns, and numbers as "preexisting material"
 the selection, coordination, and arrangement of Rural's white
46

Class Notes pages do not satisfy the minimum constitutional standards for copyright protection
 just takes data and lists it alphabetically
 are entirely typical, garden-variety white pages directory, devoid of even the slightest trace of creativity
 copyright protects only those constituent elements of a work that possess more than a de
minimis quantum of creativity
sweat of the brow doctrine has numerous flaws  extends copyright protection to the facts themselves, and eschews the must fundamental axiom of copyright law, that no one may copyright facts or ideas o Copyright Act of 1976 changed language to indicate that it did not support this conception
O'Connor finds no copyright for the labor, does not follow the "sweat of the brow" doctrine o concerned with copyright law turning into a general misappropriation law o not every act of copying is actionable o must instead have a minimal level of creativity, effort alone is not enough
 gets this frm Constitution's language in Copyright Clause o individual entries in this case does not amount to a copyright infringement
 no originality in selection or arrangement
result is that anyone wanting a copyright after this opinion must show a modicum of creativity o  reoriented copyright law, in a way
Parchomovsky: O'Connor's reasoning is sound/correct, but difficult case o inconsistent with our moral and fairness intuitions o labor theory seems to be at odds with this ruling o incentive theory also seems to be at odds with this ruling
 maybe will have no incentive to produce any listings or databases like this in the future
 but these concerns have not materialized, far from it
 there are other ways to protect these databases o decision was a lot more important in terms of establishing the legal standard for obtaining protection
 note that  if DO NOT have that modicum of creativity, then you may have merger v.
Key Publications, Inc. v. Chinatown Today Publishing Ent., Inc. (note case – Chinatown phonebook)
1.
945 F.2d 509 (2d Cir. 1991)
2.
applied the Feist definition of originality
3.
the defendant copied a very large number of entries from the original publication
4.
found that it satisfied the Feist creativity requirement a.
the plaintiff selected from a multitude of businesses to create a directory of interest to the Chinese community  exercise of judgment, similar to winnowing process in
Eckes, together with the arrangement of the directory, was held to be sufficient for copyrightability purposes b.
BUT found no infringemt, even though defendant copied 1,500/plaintiff's 9,000 entries i.
Parchomovsky: maybe that's how you split the difference as a judge vi.
Bellsouth Advertising & Publishing Corp. v. Donnelly Info. Publishing, Inc. (note case – yellow pages)
1.
933 F.2d 952 (11 th Cir. 1991), vacated, 977 F.2d 1435 (11 th Cir. 1993)
2.
accepting that the "yellow pages" may be copyrightable in some instances
3.
but found insufficient originality in the actual work in the suit vii.
Assessment Technologies of Wisconsin, LLC v. WIREdata, Inc. (note case – real estate data)
1.
350 F.2d 640 (7 th Cir. 2003)
47

2.
plaintiff created a computer program to facilitate the collection and storage of real estate data by municipal tax assessors
3.
court held that the underlying data was factual information that was no copyrightable under
Feist, and therefore the plaintiff could not prevent municipalities from extracting and copying the data for the defendant, so long as the defendant sorted the data differently viii.
West Publishing Co. v. Mead Data Central, Inc. (note case – star pagination)
1.
799 F.2d 1219 (8 th Cir. 1986)
2.
about Lexis' use of "jump cites" which are based on the pagination of West's physical reporters, using "star pagination" a.
argument was that, by using the pagination, Lexis copied West's distinctive and original arrangement of the cases
3.
West won preliminary injunction against Lexis
4.
court found that West "easily" met the intellectual-creation requirements of a "modicum" of intellectual labor
5.
also no allegation here that West copies its cases from some other source – requirement of originality poses no obstacle to copyrighting the arrangements
6.
Parchomovsky: doesn't like it, thinks subsequent courts did better in deciding, but this case is out there ix.
Matthew Bender & Co., Inc. v. West Publishing Co. (case reporter notes)
Citation
Facts
Issue
History and
Precedent
Court's
Ruling
Matthew Bender & Co., Inc. v. West Publishing Co.
158 F.3d 674 (2d Cir. 1998)
HyperLaw makes two compilations on CD-ROM that cover the same cases as West's Supreme Court Reporter and Federal Reporter
Hyperlaw intends to add cases that it could not obtain directly from the courts, and wants to do this by copying West's case reports after redacting the syllabi, headnotes, and key numbers
Hyperlaw thus brought suit for declaratory judgment that its redacted versions of West's case reports contain no copyrightable material
1.
Whether the additional items that West adds to cases (aside from the syllabi, headnotes, and key numbers) demonstrate sufficient originality and creativity to be copyrightable.
Feist o originality standard requires that the work result from independent creation and that the author demonstrate that such creation entails a modicum of creativity o the creative spark is missing where 1) industry conventions or other external factors dictate selection, or 2) the author made obvious, garden-variety, or routine selections o listings in alphabetical order are entirely typical, and gardenvariety
BellSouth Adver. & Publ'g Corp. v. Donnelly Info. Publ'g, Inc. o listings with obvious headings like "Banks" lack creativity when they are so obvious and result from certain standard industry practices
Judge Jacobs, in favor of Π
In compilation, creativity inheres in making non-obvious choices among more than a few options – selection from among 2-3 options, or of options that have
been selected countless times before and have become typical, is insufficient. o protection of such choices would enable a holder to monopolize widely-used expression and upset balance of copyright law
Creativity of selection and arrangement is a function of: o the total number of options available, o external factors that limit viability of certain options and render others noncreative, o and prior uses that render certain selections "garden variety".
affirmed, the district court did not clearly err in concluding that elements of West's case reports that HyperLaw seeks to copy are not copyrightable
none of those 4 factors exhibit enough creativity, alone or together
48

Concurrence or Dissent
Class Notes o one useful way to appreciate how little creativity inheres in
West's citation decisions is to consider what West's competitors would have to do to avoid an infringement claim if we were to find these citations copyrightable
does not matter whether the cases are derivative works or compilations
(elements of both)
Judge Sweet, dissenting
because the majority imposes a standard that demands significantly more than the "modicum" of originality required by Feist and Rural, and more than the "non-trivial" variation required by this court, I dissent
well-established that the required level of creativity is extremely low
here, West has made choices to make its reporters and citation system valuable  involve assessments of readability, clarity, completeness, availability of sources, and other subjective considerations  express thought and are not inevitable (like in Key Publications)
selections must be considered as a whole, not individually
there are a sufficient number of ways to express the idea here, to preclude a ruling that the idea has merged with expression
to the extent that the West selection may seem obvious to those familiar with legal sources, it may be because of West's success in the market  there is no support for the proposition that becoming an "industry standard" obligates them to donate material to the public domain
claiming additional copyrights in additions of certain factual information o rearrangement of headers – parties, court and date o certain counsel information o annotations reflecting prior and subsequent developments
(amendments, denial of rehearing, etc.) o editing of parallel and alternate citations to cases
court's majority finds no copyright in the additional 4 categories o none of them support a claim for protection o lack that minimal creativity
 when comes to selection or arrangement of information, creativity lies in the making of non-obvious choices from
among more than a few options
 note the parallel to merger doctrine here
 otherwise would allow compiler to copyright widely used expression and would upset balance of copyright law
 creativity in arrangement is a product of 3 factors (p. 682)
 in this case, only have a few options, dictated by conventions of industry, the choices that West made were not original
 in conformity with Bluebook, etc.
 anyone else would come up with the same result
the dissent is not happy o says majority raised the originality bar o even though no change warrants copyright protection on a standalone basis, together, the combination clears the bar
why was West fighting for the 2 nd category of changes/additions to be protected? o worried that competitors would copy the cases from West o it's easy to redact the syllabi, headnotes, and key numbers o much more difficult to change all the smaller changes that West made o it's a nightmare, would discourage others from copying and competitors would go out of business
49

Ownership and Transfer
I.
Ownership, generally - § 201 a.
(a): work authored by 1 or more individuals i.
single author works: author owns initial copyright (can always assign or transfer copyright to others) ii.
two or more author works: work will be considered a "joint work" and the copyright will be owned jointly by all relevant authors (who are considered tenants in common)
1.
arrangement will apply unless there is a contract providing otherwise
2.
note that contractual arrangements hover over in the background of ownership b.
(b): a work made for hire (WMFH) i.
has been created in the service of another individual or firm ii.
unique because the initial copyright will vest in the individual or company in whose service the work was made, not the maker
1.
deviation from background rule specified in § 201(a) c.
(c): collective works i.
compilations, collections, or anthologies comprised of multiple individually-copyrighted works ii.
every contributor makes a copyrightable contribution, but have one more copyright in the collective work as a whole
1.
usually held by the editor, if it's a book, in the selection and arrangement of the materials
2.
also gives a few special privileges
Works Made for Hire
I.
Works made for hire - § 201(b) a.
the § 101 definition gives two options, can be either: i.
a work prepared by an employee (need employment) within the scope of his employment (need scope)
1.
cumulative conditions ii.
a work specifically commissioned or used as 1) a contribution to a collective work, 2) part of a motion picture or other audiovisual work, 3) a translation, 4) a supplementary work, 5) a compilation, 6) an instructional text, 7) a test, 8) an answer material for a test, or 9) an atlas, by explicit agreement of the parties in a written instrument that the work be considered a work made for hire
1.
the list of 9 does not really matter much a.
the contract is clearly binding anyway  it's an assignment, does not need to fall into the 9 and be labeled a "work made for hire" to be validly assigned b.
most of the controversy is about employment c.
the scope of employment test (not discussed in Reid) i.
using the R.2d Agency 3-part test
1.
whether the work is of the type the employee was hired to perform
2.
whether the work was created substantially within the authorized time and space limits of the employee's job
3.
whether employee was actuated, at least in part, by an intention to serve employer's purpose ii.
contract is important  to deal with scope of employment problems, you can contract for the work to be a work for hire, then don't have to go into the question and don't have to go to court
1.
especially when talking about blanket assignments of rights and intellectual property
2.
can be taken care of when the employee is hired d.
the teacher exception i.
know that they are hired to teach and to do research and publish ii.
but a judge-made exception carves out a special arrangement for professors to entitle them to the copyright in their writings
1.
formulated by Posner and Easterbrook, who are both faculty at University of Chicago e.
trade-off between getting copyright via contract assignment and via work-made-for-hire classification  works made for hire are different from all others in 2 respects i.
the protection term for works made for hire is 95 years from the date of publication or 120 years from creation date (whichever is shorter)
1.
different duration than other works ii.
works made for hire are not subject to the termination provisions under § 203 and § 304  may be terminated between 35-40 years after the effective date of the transfer
1.
Congress thought that authors should have a "second bite" of the apple, so added these provisions into the Act
50

2.
why such a big difference between 95 and 35? a.
the commercial value of most works will last for only about 35 years b.
only becomes important for very high-value works f.
commissioned works (not employee works), two views on how the agreement fits in i.
the 2 nd Circuit way of thinking: as long as parties agree orally prior to the creation of a work, that it is made for hire, the written agreement may be executed after the agreement has been completed ii.
the 7 th Circuit way of thinking: went the other way and required that the written agreement must precede the creation of the work
II.
Related cases a.
Avtec Systems, Inc. v. Pfeiffer (note case – programmer at home) i.
21 F.3d 568 (4 th Cir. 1995) ii.
a computer program authored by an employee working from home after working hours iii.
court ruled that the work fell outside the scope of employment
1.
because employee was not compensated for hours spent developing the program, the program was unrelated to any projects of the employer, developed independently without consulting the employer, not assigned by employer, and without any desire on the part of the employee to benefit the employer b.
Cramer v. Crestar Financial Corp. (note case – program made by IS director) i.
67 F.3d. 294 (4 th Cir. 1995) ii.
a computer program created by company's director of IS iii.
court ruled that this program was within the scope of the employment
1.
because developed within authorized time and space limits of employee's job, developed at least in part to promote the employer's interest, headed a team of employees that worked on the same problem that the software solved
2.
overall facts and circumstances compelled it to reach conclusion that was a work made for hire iv.
contrast to Avtec, decided same day, different result c.
Community for Creative Non-Violence v. Reid (homeless nativity)
Citation
Facts
Issue
History and
Precedent
Community for Creative Non-Violence v. Reid
490 U.S. 730 (1989)
CCNV and Snyder (member/ trustee) conceived idea to create a sculpture of a nativity scene but they would be black, homeless persons over a steam grate (to be called "Third World America") o hired Reid, artist, to sculpt the human figures – he donated his services to the group o CCNV would do the grate, pedestal, etc.
Reid created the sculpture over a period of less than two months o Reid did all creative handiwork and sculpting o Snyder added the steam grate, pedestal and writing and chose the medium – basically provided guidance, directed content, etc.
dispute arose when Reid refused to return the sculpture after exhibit
(concerned the road tour CCNV wanted would destroy/damage it), and wanted to take it on tour himself
both he and CCNV filed for copyright protection
1.
Whether Reid was an employee of CCNV for purposes of the Copyright
Act's "works for hire" definition.
2.
Whether the sculpture was a work for hire, belonging to CCNV.
the Copyright Act o exception for works made for hire (§ 201(b))
 if the work is for hire, the employer or other person for whom the work was prepared is considered the author and owns the copyright, unless there is a written agreement to the contrary o work for hire happens in 2 circumstances (§ 101):
 work prepared by employee within scope of his/her employment (101(1))
 work specially ordered or commissioned for use as a contribution to a collective work, translation,
51

Court's
Ruling
Class Notes supplementary work, compilation, instructions, etc. if the parties expressly agree in a written instrument (101(2))
four tests for determining whether a person is an employee under the
"work for hire" provisions in the Act o whenever the hiring party retains the right to control the product o when the hiring party has actually wielded control with respect to the creation of a particular work o when work is made under the common law agency meaning of
"employee" o when work is made by "formal, salaried" employees
Judge Marshall, in favor of Δ
Agree with the Court of Appeals that the term "employee" should be understood in light of the general common law definition of agency (the 3 rd test), since the
Act does not define "employee" explicitly.
affirm judgment of the Court of Appeals
agree with the Court of Appeals that Reid is not an employee of CCNV but an independent contractor  so CCNV is not the author of the sculpture (but may be a joint author, to be determined on remand) o control over work is not dispositive o Reid supplied his own tools, worked in his own studio, worked for CCNV for less than 2 months, o CCNV had no right to assign additional projects , paid him a
$15,000 sum dependent upon completion of a project, is not a business, and did not pay payroll or SS taxes for him
clearly does not satisfy the terms of § 101(2), no written agreement between the parties
throughout negotiations, never contracted or talked about copyright ownership
CCNV is trying to argue that it was a "work for hire" and Reid was an employee of theirs and the work was made within scope of employment
court uses the common law agency test to figure out whether Reid was employee o the test focuses on the right and power to control the hired party
(the means and manner by which the work or product was accomplished) o 12 factors: level of skill, source of instrumentalities and tools, location of work, duration of relationship, ability to assign additional projects to hired party, extent of hired party's discretion, method of payment, hired party's role in hiring and paying assistance, whether work is part of regular business of hiring party, whether hiring party is in business, provision of employee benefits, tax treatment
 Parchomovsky: problematic because we don't know how to weigh these factors against one another, so must choose which factors are more dispositive
 2 nd Circuit tends to focus on formal pay arrangements, incentivizes employers to be fair to their employees (give salary and benefits to the employees in order to get the copyright) o find that Reid was an independent contractor (p. 262) and this is not a work made for hire
 Reid owns the physical expression of the work, so he owns the sculpture
 if had been found to be a work made for hire, then CCNV would be the sole owner of the copyright
did not decide this, but hold open possibility that this may be a jointly authored work
the result would be different, though – both parties would be equal owners of the copyright
52

More than 1 Author
I.
Joint works - § 201(a) a.
defined in § 101 as 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 i.
the size of each contribution does not generally matter in determining joint ownership, but must be copyrightable in its own right ii.
until recently, there was no substantial difference of opinion among the various courts which have decided "joint authorship" cases turning on the issue of how substantial each contribution is
1.
see Gaiman b.
tenants in common in the copyright i.
rights
1.
no right of survivorship
2.
each has an independent right to use the work and license it to 3 rd parties
3.
no author acting alone can grant an exclusive license in the work a.
because then would be granting more than you own yourself
4.
neither a joint author nor her licensees may ever be liable to the other authors for infringing the copyright in the work ii.
duties
1.
each joint author had a duty to account for profits to the other coauthors for their share of profits from licensing and from self-use
2.
no coauthor may authorize the destruction of the work a.
copyright analog to the duty to not commit waste c.
intention requirement has had a long history, and until 1955, the case law contemplated a preconcerted common design or intent on the part of the authors, at the time of creation of the joint work i.
see Shapiro, Bernstein & Co. d.
related cases i.
Gaiman v. McFarlane (note case – comic book characters)
1.
360 F.3d 644 (7 th Cir. 2004)
2.
Posner posited an exception to the "general rule" for situations in which uncopyrightable contributions combine to form a copyrightable work
3.
a comic book writer/illustrator recruited a writer (Gaiman) to devise special new characters 
Gaiman claimed a share of proceeds and joint authorship of the characters
4.
stated that the character, once drawn and named and given speech, he became sufficiently distinctive to be copyrightable
5.
although Gaiman's contribution was not copyrightable by itself, his contribution had expressive content without which the character wouldn't have been a character at all, but just a drawing  found that Childress did not apply ii.
Erickson v. Trinity Theatre, Inc. (note case copyrightability requirement)
1.
13 F.3d 1061 (7 th Cir. 1994)
2.
argument for copyrightability requirement – leads to greater judicial and administrative efficiency
3.
enables parties to predict whether their contributions will entitle them to copyright protection as a joint author a.
allows contributors to avoid post-contribution disputes concerning authorship and to protect themselves by contract iii.
Shapiro, Bernstein & Co., Inc. v. Jerry Vogel Music Co., Inc. (note case - Twelfth Street Rag)
1.
221 F.2d 569 (2d Cir.), modified on rehearing, 223 F.2d 252 (2d Cir. 1955)
2.
about a piano solo being written with intent to add lyrics, but assigned rights to publisher, who later commissioned a lyricist
3.
the Second Circuit relaxed their standard finally – don't need to have a specific person or work that you intend to join
4.
holding that, even if at the time one element of a putative joint work was created there was no intent to contribute to such a work, if at any time thereafter the author or his assignee carried out that intention, the resulting combination would be a joint work iv.
The Philadelphia Orchestra Ass'n v. The Walt Disney Co. (note case – Fantasia orchestra)
1.
821 F. Supp. 341 (E.D. Pa. 1993)
2.
shows proposition that "work for hire" trumps "joint authorship"
53

3.
involved the orchestra's claims that to a share of profits from the home video release of Disney's
"Fantasia"
4.
denied summary judgment on the theory that the orchestra was a "joint author" and the court concluded that the under "work for hire" there was a firm presumption that the one who commissioned the work was to be the author a.
using the "instance and expense" test from Picture Music, Inc. v. Bourne, 457 F.2d 1213
(2d Cir. 1972) v.
Aalmuhammed v. Lee (note case – adding to Malcolm X)
1.
202 F.3d 1227 (9 th Cir. 2000)
2.
individual added bits of creative material and dialogue to Malcolm X, made final cut of movie a.
spoke in Arabic to locals, taught actors how to properly pray as Muslims, etc.  these alone aren't enough to support claim of copyrightability b.
Aalmuhammed submitted evidence that he rewrote several passages of dialogue that appeared in the movie, that he wrote scenes relating to Malcolm X's pilgrimage that made the final cut i.
under Childress, these are clearly copyrightable contributions
3.
the 9 th Circuit granted summary judgment to the defendants a.
found that he did make valuable contributions to the film, but he was not a joint author b.
held that authorship is not the same thing as making a copyrightable contribution c.
going back to Barrow-Giles, author is person to whom the work owes its origin, and who superintended the whole work – the mastermind i.
 in a movie, absent contractual provisions to the contrary, authorship is generally limited to the top of the screen credits
1.
producer, director, star, or screenwriter
2.
someone with artistic control ii.
"author" becomes harder to apply as the number of contributors increases
1.
Feist standard is too broad and indeterminate to determine the authorship of a movie project d.
putative coauthors must provide an objective manifestation of shared intent to create the work (like producing a contract to this effect) i.
 Aalmuhammed produced no evidence of this, and he was not a mastermind of the movie ii.
Aalmuhammed was subject to Spike Lee's control
4.
Parchomovsky: thinks he should have won under copyrightable contribution, but not intent, and maybe burden shifts to Spike Lee to prove that he didn't infringe by using
Aalmuhammed's material a.
maybe court was concerned about the impact of the movie industry vi.
Childress v. Taylor (joint Jackie Mabley play)
Citation
Facts
Issue
History and
Precedent
Childress v. Taylor
945 F.2d 500 (2d Cir. 1991)
Taylor, actress, had the idea to make a play based on Jackie "Moms"
Mabley and approached Childress, a playwright to write it, based on
Taylor's research
Childress didn’t originally want to do it but then agreed
Childress wrote the play and Taylor alleges she contributed a lot, such as research, interviews to ascertain characters, facts, jokes, and other ideas
(p. 273) o their agents never came to an agreement about the ownership
relationship deteriorated and Taylor hired Caldwell to write another play featuring "Moms" o Taylor gave him Childress’ script and advised as to changes
Childress sued Taylor, alleging infringement of copyright
3.
When a contributor to a copyrighted work can be considered a joint author with equal ownership of the copyright.
the Copyright Act, § 101 o joint work is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or independent parts of a unitary whole
54

Court's
Ruling
Class Notes o definition concerns creation of the work, not the circumstances under which it may be jointly owned
committee reports on the Act o work is "joint" if the authors collaborated with each other, or if
each of the authors prepared his or her contribution with the knowledge and intention that it would be merged with the contributions of other authors  touchstone here is the intention
at the time the writing was done
Judge Newman, in favor of Δ
What distinguishes the writer-researcher relationship and from the true joint author relationship is the lack of intent of both participants to regard themselves as joint authors.
judgment of district court affirmed  Taylor's claim of co-authorship was properly rejected, and with the rejection of that claim, summary judgment for Childress was properly entered on her copyright and unfair competition claims
persuaded to side with the position taken by the case law and endorsed by the agency administering the Act  insistence on copyrightable contributions by all putative joint authors (will prevent spurious claims) o strikes appropriate balance between domains of both copyright and contract law
equal sharing of rights should be reserved for relationships in which all participants fully intend to be joint authors
satisfied that district court was correct as to both issues of contributions not being copyrightable and the lack of evidence of Childress' intent to enter into a joint authorship
test applied o each author must make a copyrightable contribution, in its own right, individually
 note that each author does not have to make an equal contribution o each and every author must have intended to create a joint work
 at the time of the contribution/creation, all authors must have intent to make a joint work
 note: distinguish between intent and fulfillment of the combination (ex: lyrics, timing)
 do not have to have a specific intent to collaborate with a particular person
court found that neither condition was met (although it would have been enough if one hadn't been met) o Taylor's contribution to the project was not copyrightable (are facts and research) o Childress did not share the requisite intent to collaborate with
Taylor and make a joint work
important ruling, followed by many courts after
trying to discourage spurious claims with first prong of test o the easier it is to claim that you are a joint author, then would increase transaction costs and would create conflict and diminish value of the work o do not want to enlarge the number of authors unnecessarily o when become a joint author, get equal rights in the copyright, even though the contributions may not be equal
II.
Collective works a.
defined in § 101, essentially an aggregation of independently copyrighted contributions (ex: encyclopedias, dictionaries, newspapers) i.
this is not a "joint work"
1.
there is no intent of each individual author to merge their contributions into a whole
2.
adds an additional copyright on top of all the components for the collective work
55

b.
§ 201(c) deals with ownership of copyright in a contribution and in the collective work in which it appears i.
grants the author of the collective work the privilege to reproduce and distribute:
1.
the collective work itself
2.
any revision thereof a.
what "revision" means  see Tasini v. New York Times
3.
any later collective work in the same series ii.
establishes basic principle that copyright in the individual contribution and copyright in the collective work are separate and distinct, and the author of the contribution is the first owner of copyright in it iii.
also, in conjunction with § 404, preserves the author's copyright in a contribution even if the contribution does not bear a separate notice in the author's name, and without requiring any unqualified transfer of rights to the owner of the collective work
1.
presumes that, unless there has been an express transfer of more, the owner of the collective work acquires only the above 3 privileges c.
related cases i.
Tasini v. New York Times Co. (note case – freelance journalists)
1.
533 U.S. 483 (2001)
2.
a group of freelance journalists sued the NY Times after it licensed all its content to producers of CD-ROMs and computer databases a.
journalists saying can't do that because their content is individually copyrighted
3.
NY Times is saying it's a revision of the collective work
4.
the Supreme Court ruled in favor of the freelancers (7-2), Ginsburg for majority a.
held that what NY Times did fell outside the scope of § 201(c) and constituted infringement b.
in order to include the individual contributions in the databases, they were stripped of all editorial content (not presented in the same way as in the paper) c.
were offered clear of the context of the original periodical editions d.
impossible to view the databases that aggregated all the daily versions of the NY Times as a "revision" or a new version e.
refused to interpret § 201(c) broadly
5.
this case has limited applicability a.
Parchomovsky: victory for those freelancers, but as a consequence of this ruling, freelancers as a whole may be worse off b.
the newspapers as a result will ask for full assignment of copyrights c.
the bargaining power is with the newspaper
Transfer of Rights
I.
Transfer of rights a.
parallel systems i.
the copyright – copyright law
1.
§ 201(4): ownership of a copyright or any part of it may be transferred by any means of conveyance or by operation of law – may be mortgage, license, bequeath, etc. a.
record transfers with the Copyright Office ii.
the physical object – property law
1.
§ 202: transfer of the physical object in which the copyrightable content is embodied, does not affect a transfer of the copyright ownership b.
§ 204, combined with transfer definition in § 101, provides that any transfer of a copyright, except a nonexclusive license, must be in writing (or requires a written instrument) and must be signed by the owner i.
want clear indication of intent to transfer the copyright ii.
transfer of license may be effected orally, no writing required c.
§ 205, provides that transfer may be recorded (like in property law) i.
would want to record in order to notify 3 rd parties ii.
these are rights in non-tangible objects, so it's harder to keep track of ownership (contrast to a house) iii.
recordation must describe work with sufficient specificity and the work must be registered with the
Copyright Office prior to recordation
Duration of Copyright
I.
Duration and termination a.
in 1790, started with a relatively short duration term, 14 years + 14 years
56

b.
in 1909, doubled the terms so that it became 28 years + 28 years c.
in 1976, became life of author + 50 years i.
discussion in House Report of Act, reasons for change in term
1.
changing from system of renewals to system based on life of author
2.
7 reasons on p. 115 in text d.
in 1998, extended the life + 50 years term by another 20 years i.
the Sonny Bono Copyright Term Extension Act ii.
the life in joint works is measured by the life of the youngest author iii.
the term for works for hire, anonymous or pseudonymous works = 120 years from creation or 95 years from publication
II.
Related cases a.
Eldred v. Ashcroft (extending copyright term)
Citation
Facts
Issue
History and
Precedent
Court's
Ruling
Concurrence or Dissent
Eldred v. Ashcroft
537 U.S. 186 (2003)
Congress passed the Copyright Term Extension Act (CTEA) in 1998 to extend the copyright terms by 20 years, for existing and future copyrights
petitioners are individuals and businesses whose products or services build on copyrighted works that have gone into the public domain
1.
Whether the CTEA's extension of existing copyrights exceeds Congress' power under the Copyright clause.
2.
Whether the CTEA's extension of existing and future copyrights violates the First Amendment.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) o the Copyright Clause is both a grant of power and a limitation o the constitutional command is that Congress, to the extent it enacts copyright laws at all, create a system that promotes the progress of science o also stress that it is generally for Congress, not the courts, to decide how best to pursue the Copyright Clause's objectives
Harper & Row Publishers, Inc. v. National Enterprises, 471 U.S. 539 (1985) o Framers intended copyright itself to be engine of free expression o by establishing a marketable right to the use of one's expression, copyright supplies the economic incentive to create and disseminate ideas
Justice Ginsburg, in favor of Δ
Hold that Congress acted within its authority and did not transgress constitutional limitations.
Guided by test, history, and precedent, we cannot agree with the petitioner's submission that extending the duration of existing copyrights is categorically beyond Congress' authority under the Copyright Clause.
affirm the judgment of the court of appeals
wisdom of Congress' action is not within our province to second guess
petitioners fail to show how the CTEA crosses a constitutionally significant threshold with respect to "limited Times" that the earlier Acts did not – those acts did not create perpetual copyrights
when, as in this case, Congress has not altered the traditional contours of copyright protection, further First Amendment scrutiny is unnecessary
reject proposition that a quid pro quo requirement stops Congress from expanding copyright's term in a manner that puts existing and future copyrights in parity
Justice Stevens, dissenting
majority's conclusion rests on the mistaken premise that this Court has no role in reviewing congressional grants of monopoly privileges to authors
issuance of a patent is appropriately required as quid pro quo – fairness considerations against ex post facto laws and laws impairing obligations of contract would presumably disable Congress from making such a retroactive change in the public's bargain with an inventor  these same
57

Class Notes considerations should protect members of the public from copyright monopolies
a categorical rule prohibiting retroactive extensions would effectively preclude perpetual copyrights, which are against the textual requirement of the Copyright Clause
Justice Breyer, dissenting
no legitimate, serious copyright-related justification for this statute
the present statute primarily benefits holds of existing copyrights – does nothing to advance arts
the present extension will produce a copyright period that, even under conservative assumptions, is worth more than 99.8% of protection in
perpetuity (effectively perpetual)
advances in technology seem to argue against extension
plaintiffs, who made a living off of public domain materials, arguing: o extension to already-existing works violates the quid pro quo underlying the copyright law system
 people created these works with the assumption and expectation of life + 50 years  get a windfall if get more protection after the fact of creation o wanted "limited times" in the Copyright Clause to mean that terms of protection, once fixed, are inalterable
 cannot extend it retroactively
Ginsburg is writing the majority opinion  rejects plaintiff's arguments o based the decision on text, history, and precedent
 plaintiff's proposed interpretation is inconsistent with plain meaning of "limited"
 limited does not mean fixed or inalterable
 an unbroken Congressional practice of extending term for preexisting works whenever an extension is granted
 whenever Congress has done this before, they had done it retroactively, too
 has been done with patents
 judicial precedents confirm the power of Congress to extend copyright protection o note that Ginsburg is assuming that the authors are the only ones who can distribute the work – but competition, once in the public domain, may create efficient distribution, too o majority applies a "rational basis" standard to analysis
 in con law, basically means the challenge will lose
dissenting opinions o Stevens: extending protection would ignore the interest of the public to having access to a rich and vibrant public domain, need building blocks for future creativity
 retroactive extension is not fair to the public o Breyers: most of the value of the copyright is front-loaded (also considering time value of money), and so this extension gives writers perpetual protection, essentially
 even under current term, the value of the copyright term covers 99.8% of the value of a perpetual copyright  incentive effect is very small for the new writers
 even under rational basis standard, there is no advancement of a constitutionally legitimate interest
so why retroactivity? copyright is supposed to be about encouraging creativity  who's pushing for the extension? o estates of successful authors o owners of copyrights that remain successful even after protection term – this is not about incentive for future works production
 ex: Mickey Mouse
58


 all about keeping this revenue-generating asset and keeping it from falling into the public domain but wait, Mickey Mouse is also a trademark, what is the incentive? (  trademark only protects against commercial uses)
Formalities
I.
Formalities, generally a.
the United States formally abolished all the formalities - no need for registration, deposit, or notice i.
bent to some considerable foreign pressure b.
deposit, §§ 407-408 i.
the act of publication imparts a duty on the copyright owner to deposit two copies or phonorecords of the best edition of the work ii.
deposit works with Library of Congress within 3 months of publication date iii.
historically, this requirement served two purposes
1.
enrich Library of Congress
2.
create a repository of all the copyrighted works iv.
failure to comply with this duty to deposit does not result in a loss of protection, but is enforced through a graduated series of fines
1.
can still sue people, regardless
2.
also, there are some exemptions a.
3D sculptural works b.
advertising material c.
individual contributions to collective works, as long as the entire work is deposited c.
registration, §§ 409-412 i.
copyright owner can register her work at any time during the protection term ii.
why register
1.
mere act of registration creates a presumption of validity (§ 410(c)) a.
there's no examination – like with patents
2.
registration is a pre-requisite for filing an infringement action (§ 411(c))
3.
registration is a pre-condition for receiving statutory damages and attorney's fees (§ 412) iii.
bottom line is that you have to register
1.
even though you are protected without registration, you can't do anything about it without registration d.
notice i.
can have full protection without a notice ii.
but bars putative infringers from claiming "innocent infringer" status and protection under § 405 iii.
Parchomovsky: should just have the formalities enforced, would not get rid of notice requirement
1.
doesn't see formalities as a huge requirement on the authors
2.
but if you look at the effect it has on the broader public, it helps a lot – to know the date of fixation, etc.
3.
maybe it's in authors' self-interest that they register, so no need to enforce? not sure reasoning
The 6 Exclusive Rights + 1
Exclusive Rights of the Copyright Act
I.
Exclusive rights, generally a.
six fundamental exclusive rights given to copyright owners recognized in § 106  comprise the "bundle" of rights that is copyright i.
entitle the copyright owner to do and to authorize the following:
1.
(1) reproduction
2.
(2) adaptation
3.
(3) publication
4.
(4) performance
5.
(5) display
59

6.
(6) digital performance for sound recordings (new, added later) ii.
are cumulative and may overlap in some cases iii.
each of the rights may be subdivided infinitely, each subdivision may be owned + enforced separately iv.
only six, but the rights of authors are very, very broad v.
may be transferred by the author to others
1.
note that the § 106 language says the author has the right to do or to authorize whatever activity b.
are subject to the limitations in §§ 107-122 of the Act c.
the "architecture" of exclusive rights i.
meant to be limited to the limitations/exceptions of §§ 107-122 ii.
specific claims for additional limitations, qualifications, and exemptions must be subjected to the legislative process and assessed on the whole evidence from all interests d.
analyzing a violation of rights, the steps: i.
1) consider whether there has been an unauthorized exercise of one or more of the copyright owner's exclusive rights, specified in § 106 ii.
2) once a prima facie case has been established, then must consider whether any of the exceptions or limitations in §§ 107-122 applies
1.
these are treated as affirmative defenses e.
Calabresi and Melamed - property rules, liability rules, and inalienability rules i.
divided the law of entitlements into those groups; claiming the law can protect entitlements in one of those three ways
1.
when protected under a property rule, a violation entitles the holder to injunctive relief against the transgressor a.
in effect, gives the holder ability to set the price for the use of the relevant entitlement b.
holder is price-setter
2.
when protected under a liability rule, a violation entitles the holder to collect damages against the transgressor a.
not injunctive relief b.
a 3 rd party is the price-setter i.
judge, administrative agency, or a private party
3.
when protected under an inalienability rule, the items are kept off the market entirely and protected by criminal sanction a.
no transfer is allowed to others, are not appropriate subjects of commerce ii.
 rights listed in § 106 are examples of property rules
1.
gives the author injunctive relief
2.
as a result, whoever wants to use your copyright must negotiate with you and you get to set the price iii.
 run into some liability rules in §§ 107-122, 6 examples in the Act
1.
have 6 compulsory licenses, which are examples of liability rules a.
force the copyright owner to transact to licensee based on a price that someone else sets i.
have to give access
2.
1) cable television license (§ 111) a.
establishes a compulsory license for secondary transmissions by cable TV systems
3.
2) digital performance right in sound recordings (§ 114) a.
establishes a statutory license for some operators of non-interactive digital transmission services (ie: webcasters)
4.
3) reproduction of phonorecords (§ 115) a.
authorizes the reproduction of phonorecords that contain recordings of musical works
5.
4) noncommercial use (§ 118) a.
authorizes licenses of commercial works in noncommercial settings
6.
5) satellite retransmission license (§ 119) a.
statutory license for secondary transmissions by FCC-approved broadcast stations for viewing in the private home or in commercial establishinments
7.
6) the local to local satellite retransmission license (§ 122) a.
statutory license, satellite retransmission for local TV signals into other local markets iv.
these statutory licenses were the result of a compromise between different industry interests – exist because they involve serious and extended battles between the content industry and other industries, trying to suspend the property rule protection and go into liability rule regime f.
related cases i.
Universal City Studios, Inc. v. Sony Corp. of America (note case – exclusive rights framework)
60

1.
659 F.2d 963 (9 th Cir. 1981)
2.
the statutory framework is unambiguous
3.
the grant of exclusive rights is only limited by the statutory exception
4.
the judiciary should not disturb this carefully constructed statutory scheme in the absence of compelling reasons to do so
II.
The reproduction right - § 106(1) a.
"copies" defined in § 101 includes material objects in which the words, images, sounds, etc. subject to copyright are fixed by any method now known or later developed i.
makes the rights in § 106 notably open-ended, grants owner full control over making of copies ii.
owner controls reproduction of the work in diverse media (adaptation right is closely linked to this) iii.
a single act of infringement may violate all rights at once – the reproduction right, the adaptation right, and the public distribution right
1.
infringement of the reproduction right are often accompanied by infringement of §106(3), the distribution right
2.
example of violations of the reproduction right NOT involving distribution = downloading song for own use from a website b.
limitations on the reproduction right i.
all are very narrowly tailored and specific ii.
§ 108: exemption for libraries and archives
1.
§ 108A: a library must meet 3 basic conditions a.
must have no direct or indirect commercial advantage for the library b.
library must be open to the public c.
all new copies made must bear the copyright notice of the original work
2.
§ 108B: if conditions met, the library can make up to 3 copies of the published or unpublished work for preservation purposes or to replace a damaged/lost copy, if, and only if, replacement cannot be made at a reasonable/fair price a.
even then, copies in digital format can only be made available on the premises b.
can copy at request of patron if: i.
copy made will be owned by the patron and library believes it will be used for study or research ii.
maximum amount allowed is a single contribution to a collective work or a small part of any other copyrighted work
1.
if request exceeds this amount, then the library must be convinced that a copy may not be obtained at a fair price
3.
exemption modified significantly by Title IV of the DMCA (see p. 452-53) iii.
§ 112: exemption for broadcast organizations
1.
allows broadcast organizations (that secure permission to broadcast a work, license, etc.) to make a single copy of the work in order to facilitate delayed broadcasts a.
non-permanent, the copy must be destroyed within 6 months of broadcast unless it is preserved only for archival purposes b.
ex: radio station recording some works and rebroadcasting them iv.
§ 113(c): establishes that when a copyrighted work is lawfully incorporated into a useful article, then it will not be a copyright infringement to make/display/distribute pictures of the useful articles in advertisements/feature stories/news reports v.
§ 117: authorizes owners of computer software to make a single copy of the software if they are the lawful owners of it, provided that doing so is essential for putting the program to personal use or for archival purposes (see below) vi.
§ 121: allows certain nonprofit and governmental agencies the right to reproduce or distribute copies and phonorecords of a published nondramatic literary work for use by blind or disabled
1.
added in 1996 by Congress vii.
limitations already discussed before
1.
§ 114(b): limits infringements of copyright in sound recordings to direct, mechanical reproductions
(not a re-performance of the recording) a.
creates a different scope of protection for sound recording copies
2.
§ 115: creates the mechanical license (the "cover" license) which enables subsequent artists to adapt a musical work that was distributed lawfully to the public in the United States in their own style, as long as they don't change the basic character of the song c.
enforcement of the reproduction right i.
legal right is only as valuable as one's ability to enforce it
61

ii.
Copyright Clearance Center ("CCC"): a nonprofit organization founded in 1978 to serve as the intermediary between publishers and users in the photocopying of protected works
1.
beginning in 2002, CCC began granting case by case permissions for digital reproduction and distribution of copyrighted materials
2.
users may request permission to e-mail or fax materials or post them on their Internet sites d.
electronic reproduction (§ 117) i.
computers can make 2 types of electronic reproductions
1.
permanent form, in a hard disk or "flash" memory, which persist even when the power is turned off (computers cannot directly manipulate this data)
2.
temporary form, in Random Access Memory (RAM), which requires electricity to function and disappears when the computer is turned off a.
the digital information on hard disk is downloaded into storage in RAM in order for the computer to process it ii.
after CONTU report, Congress replaced § 117 with 117(a) and 117(b):
1.
§ 117(a)(1): permits one who owns a copy of a computer program to make or authorize the making of another copy or adaptation of that program if, but only if, such a new copy or adaptation is created as an essential step in the utilization of a computer program
2.
§ 117(a)(2): permits a new copy of the program to be made for archival purposes, not just utilization a.
how broadly or narrowly this is interpreted varies across states
3.
§ 117(b): governs further distribution of copies or adaptations made pursuant to 117(a) a.
permits the utilization copy to be sold, leased, or transferred b.
the archival copy must be destroyed upon transfer of the program e.
related cases i.
Walt Disney Productions v. Filmation Associates (character sketches)
Citation
Facts
Issue
History and
Precedent
Court's
Ruling
Walt Disney Productions v. Filmation Associates
628 F. Supp. 871 (1986)
Disney's full-length animated films are usually based in part upon a preexisting work (usually in the public domain)
Filmation also produces animated films, and on or about February 1985, it announced its intention to produce and distribute animated films called its "New Classics Collection," based in part upon the same pre-existing sources as Disney o Filmation began production of a fully-animated motion pictured entitled "The New Adventures of Pinocchio"
Disney brings suit alleging Filmation's Pinocchio movie utilizes a substantial amount of the copyrighted materials  their script, story board, story reel, models and designs are tangible and permanent reproductions of characters and scenes constituting copies of material copyrighted by Disney
1.
Whether intermediate works, en route to the completion of a final work, can infringe on a copyright.
the Copyright Act, §§ 101-914 o copies are material objects in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated
 includes material object in which the work is first fixed o work is fixed when it is sufficiently permanent to a permit it to be perceived, reproduced or otherwise communicated
Sony Corp. v. Universal City Studios, 464 U.S. 417 (1984) o the right of reproduction affords a copyright owner protection against an infringer even if he does not also infringe the right of distribution
Judge Stotler, in favor of Π
The preliminary works created in production of a final one can constitute infringing copies within the meaning of the Act. o that the articles may never be published or may be prepared only
62

for the use of Filmation's animators does not obviate the possibility of infringement
defendants' motion for summary judgment is denied
also no defense that the expressions may be embodied in a different medium (not a motion picture)
where the work sued upon is not a "completed" story, but a series of depictions and other works, comparison of the expressions made be made in the form they are presented
issue of infringemt of Disney's copyright remains question for trier of fact o Filmation's alternative argument – that its creations are not substantially similar as a a matter of law – is unconvincing
Class Notes issue is what is the scope of this exclusive right? is intermediate copying
(draft ideas) actionable? o Filmation has made preliminary drawings, sketches, etc. that employ the Disney copyrighted characters o to defend the suit, Filmation responds that Disney has no right to act, since what Filmation has done is only intermediate copying
court holds that intermediate copying is actionable o because the copying Filmation had done thus far was fixed, it counts
Parchomovsky: thinks that it would have been a good idea to exempt
Filmation o the court is too focused on fixation (since what they had done was fixed, it was infringement) o companies like Filmation should be able to use the Disney animated characters as a source of inspiration, so long as the final product was not infringing o Disney shouldn’t be able to act until there is a final product that infringes o the infringement scope shouldn't go so far as to cover inspiration
intermediate copying is actionable
main holding  fixation is the touchstone of infringement under the reproduction right (§ 106(1))
unseen consequence of the Filmation holding -- when content is passing through the internet, intermediate copies are being made along the way automatically o it required Congress to intervene o basically, Congress established safe harbors for ISPs o outside of the ISP safe harbors, intermediate copying is still actionable ii.
MAI Systems Corp. v. Peak Computer, Inc. (note case – turning on computer)
1.
991 F.2d 511 (9 th Cir. 1993) – discussed before
2.
court held that a company that provided service for computer hardware systems was guilty of copyright infringement when it "booted up" computers running the plaintiff's copyrighted operating system without permission
3.
overruled by the Digital Millennium Copyright Act, authorizing the making of ephemeral reproductions for purposes of computer repair and maintenance iii.
Religious Technology Center v. Netcom On-line Communications Services, Inc. (note case – Church of
Scientology online board)
1.
907 F. Supp. 1361 (N.D. Cal. 1995)
2.
the Church of Scientology sued various parties who had provided a former Church member with electronic means to disseminate proprietary Church documents – that Netcom had provided Internet access for computer bulletin board, which made documents available online
3.
court noted that Netcom's computers automatically copied any messages posted and stored them for 11 days
4.
held that Netcom was not directly liable for copyright infringement a.
there should still be some element of volition or causation which is lacking where a defendant's system is merely used to create a copy by a third party
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iv.
CoStar Group, Inc. v. LoopNet, Inc. (note case – ISP liability)
1.
373 F.3d 455 (4 th Cir. 2004)
2.
court rejected the argument that Netcom had been superseded by the enactment of § 512 (which created new limitations on copyright infringement by ISPs, following Netcom view)
3.
the court endorsed and expanded Netcom's holding that an ISP could not be held liable for direct infringement based on the automatic, temporary reproduction of data transmitted by its users unless there was "some element of volition or causation" present a.
 this holding has proven influential in subsequent cases v.
Ticketmaster Corp. v. Tickets.Com, Inc. (note case – searching for ticket sales)
1.
2000 U.S. Dist. LEXIS 12987 (C.D. Cal. 2000)
2.
the defendant used search programs to search the web for information about tickets for sale
3.
relying on 'fair use' doctrine as a defense
III.
The adaptation right - § 106(2) a.
secures to the copyright owner the exclusive right "to prepare derivative works based on the copyrighted work" i.
overlaps with the reproduction right to some extent
1.
it is broader than reproduction, in the sense that reproduction requires fixation in copies or phonorecords ii.
expands the dominion of the copyright owner beyond simple copying, very important – very broad b.
to be an infringement, the "derivative work" must be based upon the copyrighted work i.
must incorporate a portion of the copyrighted work in some form ii.
right is infringed when a 3 rd party makes an unauthorized derivative work in which a preexisting work is "recast, transformed, or adapted" iii.
includes translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, etc., or any other form c.
the disclosure paradox (Arrow) – if disclose, you have nothing left to sell i.
law requires you to tell copyright owner and seek permission for production of a derivative work ii.
if tell idea, there will be no advantage and you'll lose out and can't sell anymore iii.
but hard to negotiate without disclosing the idea iv.
try to protect this with intellectual property law v.
maybe make a triple originality standard – one for infringement, one for derivative work, and one for a sufficiently original work (so original) that it is its own work
1.
does not buy you an independent copyright, but maybe gets you immunity
2.
if want to incentivize people to make highly original works, it may be a good idea to formalize this higher originality standard a.
increases administrative cost – can courts make good decisions with this standard?
(Parchomovsky thinks they can) vi.
there are a lot of policy options at play here d.
related cases i.
Lee v. A.R.T. Company (art on ceramic tiles)
Citation
Facts
Issue
History and
Precedent
Court's
Ruling
Lee v. A.R.T. Company
125 F.3d 580 (7 th Cir. 1997)
Annie Lee creates works of art, which she sells through her firms
Deck the Walls, a chain of outlets for art, buys her works and sold some of her notecards and small lithographs to A.R.T. Company
A.R.T. mounted Lee's notecards onto ceramic tiles, sealing them with a transparent resin, and resold them
1.
Whether mounting artwork on tile, without altering the work, constitutes an adaptation/derivative work and a copyright violation.
Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1314 (9 th Cir.
1988), Munoz v. Albuquerque A.R.T. Co., 38 F.3d 1218 (9 th Cir. 1994) o acknowledge that framing and other traditional means of mounting and displaying art do not fringe authors' exclusive right to make derivative works
Judge Easterbrook, in favor of Δ
If framing process does not creative a derivative work, then mounting art on a tile, which serves as a flush frame, does not create a derivative work.
agree with the district judge that there is no distinction between framing and affixing to a tile
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Class Notes
card-on-a-tile could not be copyrighted independently of the note card itself
the notecards and lithographs were not "transformed" in the slightest o the art was bonded to a slab of ceramic, but it was not changed in the process  it still depicts exactly what it depicted when it left
Lee's studio
Lee's artwork also does not fall under the Visual Artists Rights Act of
1990, since the work must be part of a limited edition (200 copies or fewer) and signed and consecutively numbered by the author, so cannot claim a damage to reputation
court is looking at direct language of the statute o not transformed or recast, is not a derivative work o this is the same as preparation or mounting, no infringement
first sale doctrine implicated  how much change had been made, was it enough to qualify as a derivative work such that it is not under first sale exception?
this case is not about fixation (like Filmation), but about originality o A.R.T. is arguing that their tiles are not original enough to qualify as a derivative work o Lee's answer is that even alterations that are not original enough to qualify your work as derivative may still be infringing
 there is a dual originality standard (one for copyrightability and one for infringement purposes) o  Easterbrook finds that the change is so minimal that, even if there was a lower standard for infringement, it would not be met
– does not matter because even Lee's minimal threshold would not be reached
in fashioning the law, we need to consider two populations of people o skimmers who profit off of other people's works o regular people who are just using the works for their own personal enjoyment o what did A.R.T. do that was so wrong?
 found a "new use" for the work
 they paid for it, changed it, and marketed it o how much power do we want to give the copyright owner
 basically, all exclusive rights to the product (the position that Congress took in copyright law)
 this is an unusually broad power
IV.
The distribution right - § 106(3) a.
very broad definition b.
gives owner exclusive right to distribute copies or phonorecords of the work by sale or other transfer of ownership, or by rental, lease, or lending c.
limitations on the distribution right i.
§ 109(a): the first sale doctrine
1.
allows for resale or disposal in whatever manner they want a.
gives the primary market to the copyright owner, but gives the secondary market to the buyer of the work
2.
without this right, cannot resell or even gift anything
3.
but must not alter the copy, or § 109(a) will not apply a.
question becomes what is a change i.
highlighting in a textbook is probably not ii.
but only very minor changes will qualify b.
in Lee, can resell, because mounting is not counted as an alteration by the court
4.
possible that you can get around it by: a.
contract  incorporating language into sale of the copy, attempt to annul the privilege b.
license  classifying the transaction not as a transfer of ownership but as a license, so that § 109(a) doesn't apply at all i.
§ 109(a) only applies to subsequent owners
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5.
note the first sale privilege has limitations, too a.
§ 109(b), which prohibits the rental, re-release, or loan of sound recordings for commercial gain i.
In 1980s, music industry jumped on top of businesses that attempted to rent music (LPs and CDs) in the same way they rented movies b.
§ 109(b) was later expanded to include the rental of computer software i.
one important exception is the renting out of machines – if you rent a whole computer, it's okay that there's software installed in it ii.
just cannot offer software independently of the computer on which it runs c.
§ 602(a): the anti-importation provision i.
prohibits, with several limited exceptions, the importation of legally-made copies of a copyrighted work ii.
exceptions: importation authorized by a governmental body, importation of a single copy for personal use, and importation by non-profit educational organizations iii.
 this seems to conflict with § 109(a) – how broad is their scope? d.
related cases i.
Ford Motors Co. v. Summit Motor Products, Inc. (note case – gratuitous transfer)
1.
930 F.2d 277 (3d Cir. 1991)
2.
even a gratuitous transfer of a single copy may be sufficient to violate § 106(3), a broad construction again ii.
Playboy Enterprises, Inc. v. Russ Hardenburgh, Inc. (note case – image on online board)
1.
982 F. Supp. 503 (N.D. Ohio 1997)
2.
making a digital image file available to subscribers of a computer bulletin board infringes the distribution right iii.
Hotaling v. Church of Jesus Christ of Latter-Day Saints (genealogy in library)
Hotaling v. Church of Jesus Christ of Latter-Day Saints
Citation
Facts
Issue
118 F.3d 199 (4 th Cir. 1997)
Hotalings compiled and copyrighted a number of genealogical research materials, published in microfiche form
the Church of LDS bought a single legitimate copy of the microfiche and added it to its main library's collection in Utah (black background)
the Church made microfiche copies of the works without the Hotalings' permission and sent copies to several of its branch libraries throughout the country (purple backgrounds)
Donna Hotaling learned of the copies and asked them to stop, and All-
Ireland Heritage (the marketer) brought an unsuccessful copyright suit against the Church, and the Church recalled and destroyed the copies it made
Donna visited the main library and examined the copy they had on file – purple background – which the Church says it kept because they destroyed the original inadvertently
1.
Whether the availability of a work at branch libraries constitutes public distribution such that there is copyright infringement.
Court's
Ruling
Judge Butzner, in favor of Π
Hold that a library distributes a published work, within the meaning of the
Copyright Act, when it places an unauthorized copy of the work in its collection, includes a copy in its catalog or index system, and makes the copy available to the public.
reverse the district court's summary judgment for the library and remand the case for further proceedings
agree with the Hotalings – when a public library adds a work into its collection, lists the work in its catalog system, and makes the work available to the borrowing/browsing public, it has completed all the steps necessary for distribution to the public
Hotalings also presented sufficient evidence to create a genuine issue over whether the copy Donna Hotaling examined in the main library was being distributed to the public in 1995, which provides a timely basis for
66

Concurrence or Dissent
Class Notes her suit
Judge Hall, dissenting
because the works are for research, the libraries do not permit materials to be checked out and used by a member of the public off-premises – is this "lending"? I think not
plaintiffs do not have any evidence that anyone used or looked at an infringing copy during the limitations period
the current law does not deem this sort of use an infringing "distribution" and there is no evidence of such use in this case, in any event
starts with a lawful copy that was purchased, but made copies of it to distribute to their branch libraries
simply having a copy in their permanent collection, and making it available to the public, counts as distribution to the public
dissent thinks this is inconsistent with the language of the Copyright Act o was a research library, work not allowed to leave the premises – this does not count as "lending" or "rental" o no record that anyone ever looked at the copy
this is at the limits of distribution, broad construction (see L'Anza) iv.
Quality King Distributors, Inc. v. L'Anza Research Int'l, Inc. (note case – shampoo in Malta)
1.
523 U.S. 135 (1998)
2.
L'Anza produces hair products, and attaches labels to their products (the labels are copyrighted)
3.
Quality King buys the hair products in a foreign country (Malta) and reimports them into the
United States, and undercuts them by 35-40% in California
4.
L'Anza sues for copyright infringement, via the label
5.
Quality King claims protection under first sale doctrine (109(a))
6.
L'Anza argues that the anti-importation provision (602(a)) controls over the first sale doctrine
7.
the Supreme Court reversed and ruled that § 109(a) controls, effectively eviscerating all meaning from § 602(a) a.
so 109(a) also applies to sales made in foreign countries
8.
Parchomovsky: very interesting implications a.
L'Anza is engaging in price discrimination in different markets, and their business model is premised on this, to increase their profits b.
Quality King is engaging in arbitrage c.
all this depended on the copyrighted label
9.
criticisms of this case afterwards a.
parade of horrible predictions never happened b.
can change the label, put it in a foreign language, change the color or format c.
arbitrage is easily resolved in most cases
V.
The public performance right - § 106(4) a.
grants copyright owner the right to perform the work in public i.
§ 101 definition: performance rendered in a public place where a substantial number of unrelated persons perceive it
1.
performance transmitted/broadcast/communicated to the public
2.
meaning of perform = to recite, render, play, dance, or act a work, either directly or by means of any device of process, including systems not yet in use or even invented
3.
meaning of public = includes both: a.
performances in public places b.
transmissions
4.
is not limited by a requirement that the performance by "for profit"  so any unauthorized performance is prima facie infringement  must look for an exemption, or will be subject to liability ii.
none of the other rights have this distinction between public and private, but it matters here – you can perform anything for your private enjoyment, without worrying about infringement iii.
construed a little more narrowly – applies only to musical and dramatic works, choreographic works and pantomime, and audiovisual works
1.
compilations and derivative works are not mentioned, though b.
performance rights societies
67

i.
the biggest challenge in this right = detection and enforcement
1.
unlike the § 106(1)-(3) rights, these performances are ephemeral, leave no trace
2.
could have a lot of infringements without anyone knowing about it
3.
performance rights collectives/societies formed in response ii.
first was American Society of Composers, Authors, and Publishers (ASCAP), formed in 1914
1.
later joined by Broadcast Music, Inc. (BMI), in 1941 and SESAC, Inc. iii.
collective enforcement
1.
music composers and publishers pool the rights to the use of their works, enforce their performance rights effectively on a collective basis
2.
ASCAP and BMI track the usage and charges fees, and then is divided among all the members a.
charge their members fees (on a graduated scale based on industry groups and wealth) b.
but the division is not very precise c.
members are still better off than they would be without them
3.
each group has a huge pool of protected works, and use blanket licenses to grant access to all songs in the repository a.
including songs that will later become part of the pool during the length of the license
4.
dramatically lowers transaction costs iv.
it’s a combination of property and liability rights?  copyright owners chose to give up some of their dominion (their public performance right) to an organization in order to be able to enforce it and get some money back from the usage v.
antitrust concerns
1.
the performance rights houses have tremendous market power
2.
can charge you a higher price for the convenience of getting a blanket license
3.
a lot of suits pursued against them a.
as a result, cannot license music in films (soundtracks) (controlled by a different org)
4.
 they fix a colossal market failure (inability to enforce public performance), but at a price (the antitrust issue) vi.
international phenomenon, different societies around the world, pay each other for licenses, too
1.
other countries just have one, but United States has two (ASCAP and BMI)
2.
sometime around the 1940s, the radio industry refused to pay ASCAP and created its own repository (BMI) c.
limitations on the public performance right i.
§ 110, 11 types of exemptions of public performance from the scope of the performance right
1.
(1): face to face teaching in nonprofit institutions
2.
(2): instructional transmissions via digital media a.
the performance must be: i.
under the supervision of an instructor ii.
related to material covered in the instruction/class iii.
addressed to students who are enrolled in the class b.
closely related to § 110(1)
3.
(3): works of religious nature in services
4.
(4): live performances without commercial advantage to anyone a.
must show that there is no direct or indirect admissions charge OR the net proceeds of the performance will be used exclusively for educational, religious, or charitable purposes and not for private financial gain
5.
(5): mere receptions of broadcasts in a public place a.
ex: radio station or TV station that is broadcasting a game – content you are free to watch at home – but a restaurant is showing it b.
§ 110(5)(A): covers non-musical works i.
standard based model of safe harbor ii.
allows proprietors to show these games as long as they use technology and equipment of the type commonly found in American homes (ex: TV) iii.
interesting because it is a moving standard iv.
putting stores on same footing as American homeowners c.
§ 110(5)(B): covers musical works i.
rule based model of safe harbor ii.
goes the other way, specifies a very detailed and rule-oriented arrangement iii.
proprietors must be no bigger than a certain amount of square feet, must have no more than a certain number of speakers, and other details
68

d.
creates two safe harbors i.
but there's a cost (ex: having advanced equipment attracts more customers)
6.
(6) annual agriculture and horticultural fairs
7.
(7) performances in connection with the sale of phonorecords and players, and sheet music
8.
(8) noncommercial broadcasts of literary works to the deaf and blind
9.
(9) nonprofit performances of dramatic works transmitted to the blind be radio subcarrier
10.
(10) certain performances conducted by veterans' and fraternal groups, and college fraternities and sororities, for charitable purposes a.
apparently, a qualifying organization need not devote its activities exclusively to charitable purposes, so long as the proceeds from the sponsored performance are used exclusively for charitable purposes
11.
(11) making imperceptible limited portions of a motion picture during a performance in or transmitted to a private household for private home viewing a.
added in 2005 to permit the use of devices that skip over certain content during the playback of a motion picture b.
note that transmissions to private households qualify under the definition of "publicly" ii.
§ 116A: establishes a new system for jukebox performances based on voluntary negotiations between copyright owners and jukebox operators (no more compulsory license) iii.
§ 118: provides a statutory license for the use if published, non-dramatic musical works and published pictorial/graphic/sculptural works by noncommercial public broadcasting entities
1.
may be superseded by voluntary negotiations d.
related cases i.
Columbia Pictures Industries, Inc. v. Aveco, Inc. (movie rental rooms)
Citation
Facts
Columbia Pictures Industries, Inc. v. Aveco, Inc.
800 F.2d 59 (3d Cir. 1986)
defendant is a business that rents video cassettes of motion pictures, for a fee, and rents private rooms for viewing those cassettes, also for a fee o rooms allow customers to have complete control over the playing of the cassette o practice is to not let unrelated groups of customers share a viewing room while a video is being played
Columbia brought copyright infringement action against Aveco
Issue
History and
Precedent
1.
Whether showing videos in separate rooms for rent still constitutes
"public performance" such that there is a copyright violation.
Columbia Pictures Industries v. Redd Horne, 749 F.2d 154 (3d Cir. 1984) o playing a video cassette constitutes performance under § 101 o situation in which the videos were located in the stores' central areas, and clientele had no control over the players o observation that two components of the public performance right were in dispute – whether a place is open to the public, and the size and composition of the audience o found the entire store, including the viewing rooms, to be a place open to the public – even though the viewing rooms were closed to other members of the public
House Report No. 1476 o a person who lawfully acquires an authorized copy of a motion picture would be an infringer if he or she engages in the business of renting it to others for the purposes of an unauthorized public performance
the Copyright Act, § 109(a) o the first sale doctrine prevents the copyright owner from controlling future transfers of a particular copy of a copyrighted work after he has transferred its "material ownership" to another
Court's
Ruling
Judge Stapleton, in favor of Π
Aveco, by renting its rooms to members of the general public in which they may view performances of copyrighted video cassettes, obtained from any source, has authorized public performances of those cassettes  this is a violation of
69

Class Notes
Columbia's § 106 rights and is properly enjoined.
The Copyright Act does not require that the public place be actually crowded with people  it is this availability that makes it public. o Aveco was willing to make a viewing room and cassette available to any member of the general public with the inclination to avail himself of this service
affirm order of the district court
agree with district that Aveco, by enabling its customers to perform the video cassettes in the viewing rooms, authorizes the performances (but must also be "public")
first sale doctrine is inapplicable to cases about public performance – transfer of ownership of a copy of a work does not affect the public performance right
Columbia says this violates their exclusive right to control public performances o note that Aveco is not "performing" the work, but it is
"authorizing" the use by their customers
 case not of direct liability, but secondary liability
 the dominion of copyright owners extends beyond the
court finds infringement in that Aveco is making copyrighted movies available to the public for viewing, and providing rooms in which they can be viewed immediate infringer and can pursue private actors who facilitate or seem to authorize the infringement o doesn't matter that the rooms were closed off
how far does this rule go? o see Professional Real Estate and OnCommand ii.
Columbia Pictures Industries, Inc. v. Prof. Real Estate Invest., Inc. (note case – VCRs and rental library in hotel)
1.
866 F.2d 278 (9 th Cir. 1989)
2.
a hotel that allowed patrons to view movies by equipping every room with a VCR and maintained a library
3.
the 9 th Circuit ruled that the hotel did not violate the public performance right
4.
it's not easy to reconcile these cases a.
Professional Real Estate was thought to be different because the library was in a different place and it was more difficult for the patrons to access the videos – matters how much you facilitate or materially contribute to the use by end users b.
definition of "public" is very expansive here iii.
OnCommand Video Corp. v. Columbia Pictures Industries, Inc. (note case – digital rental in hotel)
1.
777 F. Supp. 787 (N.D. Cal. 1991)
2.
a hotel that offered a central computerized system that enabled guests to select films for viewing in the privacy of the rooms
3.
court held that this violated the public performance right
VI.
The public display right - § 106(5) a.
the Act explicitly grants to copyright owners the exclusive right to display publicly certain types of works i.
also applies to projections of an image on a screen or any other surface, and to transmissions of any such image by electronic or other means ii.
limited in scope – only applies to works of authorship in literature, music, drama, pantomime and choreography, pictorial/graphic/sculptural works, and individual images contained in motion pictures/audiovisual works
1.
applies to everything but sound recordings and architectural works b.
limitations on the right i.
an unauthorized display will not infringe on the copyright unless it is done publicly
1.
public when work is placed in a place open to the public or is transmitted to the public (same as the public performance definition, essentially) ii.
de minimis infringement (see Ringgold and note cases)
1.
to strike down petty or trivial alleged infringements, substantive test
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iii.
§ 109(c): permits owners of lawfully made copies to display the copy publicly, either directly or indirectly, by projecting it to viewers present at the place where the copy is located
1.
ex: in a gallery, but restricts showings of the copy by any indirect means, such as transmission by TV or electronic media to a public located elsewhere
2.
can project the image to viewers, but only if they are in the same room
3.
face-to-face displays iv.
§ 110 limitations, some:
1.
(1) face to face teaching
2.
(2) instructional transmission
3.
(3) religion service
4.
(5) reception of broadcasts in a public place (Aiken) v.
others  § 111: cable transmissions, § 112: ephemeral recordings, § 118: public broadcasting, § 119: satellite transmissions, § 122: local to local retransmissions c.
implications of the Ringgold ruling i.
TV producers must make sure that they have permission for their scenery ii.
expensive, but this is what they have to do iii.
has interesting implications for modern day – rise of YouTube iv.
Parchomovsky: these incidental unintentional infringements should not be actionable, we're in an era of user-generated content
1.
these people don't know copyright law and don't suspect that they are infringing d.
related cases i.
Thomas v. Pansy Ellen Prods., Inc. (note case)
1.
672 F. Supp. 237 (W.D.N.C. 1987)
2.
held a display at a members-only trade show was a "public display" ii.
Ringgold v. Black Entertainment Television, Inc. (painting in a TV show)
Citation
Facts
Issue
History and
Precedent
Ringgold v. Black Entertainment Television, Inc.
126 F.3d 70 (2d Cir. 1997)
Faith Ringgold is a successful contemporary artist who created and owns the copyright in a work of art entitled "Church Picnic Story Quilt"
although she owns the copyright, the work itself was owned by the High
Museum of Art in Atlanta, Georgia o had non-exclusive license to reproduce the art as a poster and to sell those reproductions
HBO and BET produces "ROC" a television sitcom, in which a "Church
Picnic Story Quilt" poster was used as a part of a set decoration, 1 episode o was shown as a part of a 5 minutes scene in a church o shown total of 9 times, aggregate duration of 26.75 seconds o some shots had the picture at the center of the screen, but no dialogue, action, or camera work particularly calls the viewer's attention to the work
1.
Whether the use of the poster as a background set decoration was de minimis.
2.
Whether the use of the poster fell under fair use.
de minimis non curat lex ("the law does not concern itself with trifles") o insulates from liability those who case insignificant violations of the rights of others o significance in 3 respects
 technical violation of a right so trivial that the law will not impose legal consequences
 copying as occurred to such a trivial extent as to fall below the quantitative threshold
 the work makes such a quantitatively insubstantial use of the copyrighted work as to fall below the threshold required for actionable copying
37 C.F.R. § 253.8 (1996) o Librarian of Congress provides for royalties to be paid by public broadcasting entities for the use of pictorial and visual works o distinguishes between background and featured display (higher
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Court's
Ruling
Class Notes royalty rate for the featured displays)
 background = full-screen for 3 seconds or less
 featured = full-screen for more than 3 seconds
Judge Newman, in favor of Π
Is not de minimis  if follow the CFR guidelines, the poster is more than a
"background" work and is clearly visible for 26-27 seconds. o the de minimis threshold for actionable copying of a protected expression has been crossed
judgment of the district court is reversed, and the case is remanded
fair use is open  Ringgold's copyright claim should be returned to the district court to afford an opportunity for further development of the record and sensitive aggregate assessment by the fact-finder of the fair use factors in light of the applicable legal principles
artwork showed 9 times for fractions of seconds each time, for about 26-
27 seconds total
artist brought suit for the background display, alleging infringement of public display right
BET defended by arguing that their use of the quilt was de minimis (non curat lex) o this claim doesn't happen a lot in copyright law o "the law does not concern itself with trifles"
court declares that this is not de minimis o does not want to use the de minimis doctrine to screen out minor technical violations in the context of copyright infringement suits o so unless BET can prove fair use, then this is infringement iii.
Knickerbocker Toy Co. v. Azrak-Hamway International, Inc. (note case – display card of toy)
1.
668 F.2d 699 (2d Cir. 1982)
2.
the Second Circuit rejected a toy manufacturer's claim based on a photograph of its product in an office copy of a display card of a competitor's product, where the display card was never used commercially iv.
Sandoval v. New Line Cinema Corp. (note case – photographs in "Seven")
1.
147 F.3d 215 (2d Cir. 1998)
2.
where certain photographs of the plaintiff appeared for less than 30 seconds as transparencies in a "light box" in the background of a scene from the motion picture, "Seven"
3.
court of appeals found de minimis copying a.
falls below the quantitative threshold of substantial similarity b.
not displayed with sufficient detail for the average lay observer to identify even the subject matter of the photographs, much less the style used in creating them v.
Gordon v. Nextel Communications (note case – illustration in TV commercial)
1.
345 F.3d 922 (6 th Cir. 2003)
2.
plaintiff's illustration was displayed on the wall in the background of a TV commercial
3.
held that the "background" use was de minimis (following Ringgold court), even though the regulation would have required payment of a royalty from a public broadcaster vi.
Newton v. Diamond (note case – 3 note sampling)
1.
349 F.3d 591 (9 th Cir. 2003)
2.
court held that the digital sampling of a 3-note sequence from a musical work was de minimis
VII.
The digital performance of sound recordings right - § 106(6) a.
recognized first in 1995, when Congress passed Digital Performance in Sound Recordings Act of 1995 i.
subsequently amended § 114, and created a scheme b.
divides the world of digital performance into 3 different categories i.
digital rebroadcasts of radio (AM/FM programs)  largely exempt (§ 114(d)(1))
1.
because of the radio industry, compromised with music industry ii.
non-interactive, non-subscription-based digital transmissions (Internet radio, webcasting)  compulsory license arrangement
1.
must not play more than 3 from the same album or 4 by the same artist, in any 3 hour period
2.
also must not announce songs to be played (their program) in advance
3.
then must pay the compulsory license fee, an increasing fee a.
$0.0008 to $0.0090 per listener, per song, with a minimum amount of $500/year
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4.
all borne out of political compromises with radio industry a.
music industry did better here because they were able to act in time, before the Internet industry could gather its power together b.
worried about people not buying music anymore i.
Parchomovsky: all this was supposed to prevent you knowing in advance what song is coming up next, but this isn't really a risk
5.
Congress created copyright royalty judges (CRJs) iii.
interactive services in subscription-based digital transmissions  standard license
1.
barely used  all the smaller actors would rather not be interactive, they can fall under the compulsory license c.
related cases i.
Arista Records v. Launch Media (note case – Yahoo tailored radio)
1.
No. 07-2576-cv (2d Cir.)
2.
Yahoo! program, Launchcast a.
first asks users to pick a musical genre b.
then asks users to rank the songs in the genre (1-100) c.
based on picks, the software profiles, it choose the music it thinks is right for you
3.
Arista says this is interactive service
4.
the Second Circuit held it wasn't a.
turned to language of § 114(j)(7) i.
a service is interactive only if a user can either request and receive a particular sound recording or receive a transmission of a program specifically created for him/her b.
concluded users couldn't select a particular song and didn't have requisite degree of control to turn the service into an interactive one c.
added that the degree of control here is no different from a traditional radio station listener expressing a preference for a country station or a classic rock station
Moral (Personal) Rights
I.
Moral rights, generally a.
general right, that treats the author's connection to her work as not a mere economic interest, but rather as an inalienable, natural right, arising from a conception of the work as an extension of the author's personality i.
continuing interest, allows the author to control certain uses of the work itself, even after transferring economic rights to others ii.
Parchomovsky: suggest you think about these rights as "personal" rights – personal to the creator, and continue to exist even after the creator/author transfers the economic rights
1.
under Calabresi and Malamed, these are inalienable rights b.
the types of moral rights i.
the right of integrity
1.
entitles author to prevent mutilations or distortions of her work
2.
ex: Henry Buffet made a sculpture out of a refrigerator, sold at auction, and the buyer cut it into
6 pieces and resold the pieces a.
Buffet invoked his moral rights and stopped the buyer from carrying out his plan ii.
the right of attribution
1.
empowers author to demand to be acknowledged as the creator of the work and to prevent others from naming anyone else as the creator iii.
the right of disclosure
1.
endows author with the power to decide when, and in what form, the work will be disclosed to the public iv.
less common moral rights:
1.
the right of withdrawal: the right to recall all existing copies of a work a.
if, for example, the author's views on the subject matter should radically change b.
rarer, fairly extreme c.
if the author decides to exercise this right, must compensate the owner of the copy
2.
the right to prevent excessive criticism: the right to be free from vexatious or malicious attacks on a work, on the basis that the work constitutes an extension of its creator's person c.
moral rights is very strong in Europe and hadn't been recognized for a long time in the United States i.
the Berne Convention, Article 6bis
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1.
recognizes the moral rights of attribution and integrity
2.
requires all signatories to protect these moral rights in their domestic laws
3.
but the Berne Convention Implementation Act of 1988 in the United States took the "minimalist" approach and did not legislate in the field of moral rights
II.
Protection outside the Copyright Act a.
legal theories like contract, unfair competition, defamation, and privacy (especially "false light" privacy) b.
the Lanham Act § 43(a) and unfair competition law i.
see Gilliam, Huntsman, and Dastar c.
state art preservation laws i.
various states decided to afford some protection to moral rights ii.
meant to fill in the gap in moral rights not covered by other bodies of law – fine art iii.
under New York law (example of state law emphasizing reputation)
1.
have the Artists' Authorship Rights Act, effective January 1, 1985 a.
no person other than the artist or someone acting under the artist's authority may display publicly or publish a work of fine art or a reproduction thereof "in an altered, defaced, mutilated or modified form" if the work is i.
displayed as being the work of the artist ii.
damage to the artist's reputation is reasonably likely to occur therefrom
2.
recognizes rights of: a.
integrity i.
prohibits display or publication of works in an altered/defaced/mutilated form if damage to the artist's reputation is reasonably likely b.
attribution i.
does not cover works prepared under contract for advertising or trade use ii.
its application is limited to works of fine art, knowingly displayed in a place accessible to the public, published, or reproduced in the state of New York
3.
see Wojnarowicz iv.
under California law (example of state law protecting the work of art itself)
1.
have the California Art Preservation Act, effective January 1, 1980 a.
prohibits intentional physical defacement, mutilation, alteration or destruction of a work of fine art by any person except the creating artist who owns and possesses the work
2.
note that display is not an element here, like it is in New York a.
in New York, can do whatever you want to an artwork as long as it's not on display v.
handful of states have passed similar laws to California and New York
1.
subject to federal preemption, on the basis that the right to prevent deforming changes overlaps with the right to prepare derivative works under the 1976 Act
III.
Protection within the Copyright Act a.
the Visual Artists Rights Act of 1990, federal law enacted by Congress (now § 106A) i.
works protected: works of visual art  paintings, drawings, prints, sculptures and still photographic images produced for exhibition purposes only and existing in single copies or in limited editions of 200 or fewer copies
1.
does not include any poster, map, globe, chart, technical diagram, model, applied art, motion picture or other audiovisual work, book, magazine, database, electronic publication, any merchandising or advertising item or packaging
2.
also excludes all works made for hire ii.
rights of attribution and integrity
1.
attribution: right 1) to claim authorship of the work, 2) to prevent use of her name as author of any work she did not create, 3) to prevent use of her name as the author of the work in the event of a distortion, mutilation, or other modification
2.
integrity: right to prevent any intentional distortion or mutilation that may be prejudicial to the artist's reputation and to prevent any destruction of a work of "recognized stature" a.
what does recognized stature mean?  see Martin b.
in a way, extending moral rights protection, American courts are forced to do what they don't want to do – they have to make value judgments of the art i.
only alterations that will hurt the artist's reputation will be actionable ii.
need to figure out which works have "recognized stature" iii.
despite Justice Holmes' famous warning in Donaldson, cannot avoid it iii.
scope: author of visual work has these rights, even without a copyright
74

iv.
exceptions, found primarily in § 106(c)
1.
modification due to passing of time (natural wear and tear) or inherent nature of materials
2.
modification as a result of conservation measures or of public presentation (lighting, placement)
3.
reproductions or other uses of protected works in forms not protected by VARA (in a nonvisual art? maybe in a book, tiny little sculptures made of plastic) v.
duration: for the life of the artist
1.
copyright terms are unaffected by this
2.
VARA protection came into effect on June 1, 1991 a.
the rights under Section106A apply to works created after that date, and endure for the life of the author i.
in joint works, is measured by last surviving artist b.
for works created earlier, there is a possibility of protection, but it is harder i.
eligible for protection if the artist has not parted with the title to the copy or copies of the work ii.
in such a case, the protection term would be life plus 70 years vi.
transfer: rights cannot be transferred, but can be waived expressly in writing vii.
preemption: preempts any legal or equitable rights under state law equivalent to those created by the
Act's new provisions
1.
nothing in the Act annuls or limits an state laws or remedies with respect to causes of action or violations of state-law-created rights b.
conflict with 2 bundles of rights i.
granting rights of attrib and integrity to artists might conflict with distribution + marketing of works ii.
economic rights are transferrable and the moral rights are not
1.
could create potential conflict of claims, particularly with the right to make derivative works
2.
when you transfer the economic "bundle," derivative works right is one of those rights a.
but if it is a work that qualifies under VARA, must be very careful about the alterations you make b.
the author maintains the moral rights and the transferee has the economic right to adapt iii.
what can you do to resolve the conflict?
1.
maybe have author waive their VARA rights a.
release their rights and consider them vanished b.
can also view it as a consolidation the moral and economic rights in the transferee c.
murals under § 113 i.
if the mural can be removed without being destroyed
1.
must inform the artist and must wait 90 days
2.
if the owner made a good faith attempt to notify the artist, and haven't heard back, can go ahead and remove the work ii.
if the mural cannot be removed without being destroyed
1.
law requires that artist consent to eventuality of mutilation or destruction in a signed document
2.
more complicated
3.
goes back to the importance of waivers ex ante
IV.
Related cases a.
Gilliam v. American Broadcasting Cos., Inc. (note case – Monty Python cut) i.
538 F.2d 14 (2d Cir. 1976) ii.
ABC obtained a license to broadcast several taped shows created by Monty Python
1.
license provided that the shows were to be broadcast in their entirety, except for minor editing to adapt the programs for commercials iii.
ABC ended up cutting 24 minutes from each 90-minute program iv.
the plaintiff's right to prevent distortion of their work was held protected under both the Copyright Act and § 43(a) of the Lanham Act
1.
court held that the cutting violated the terms of the license and likely constituted an infringement of plaintiff's adaptation right through creation of an authorized derivative work
2.
also held that the cutting violated the Lanham Act because the abridged version constituted a false designation of origin – ABC had deformed the work and presented the plaintiffs as authors of a work which was not their own v.
the leading case for de facto moral rights protection vi.
but consequences of this case are not that great, since policymakers and courts have been reluctant to find a § 43(a) violation in absence of the kind of severe distortion that existed in Gilliam
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b.
Hunstman v. Soderbergh (note case – skipping on DVD players) i.
2005 WL 1993421 (D. Colo. 2005) ii.
about edited motion pictures, action for declaratory judgment of noninfringement, brought by Clean
Flicks, a video retailer, against Hollywood directors and movie studios iii.
studios counterclaimed for infringement and directors counterclaimed under Lanham Act § 43(a) iv.
while summary judgments were pending, Congress intervened on behalf of some (but not all) of the alleged infringers
1.
protected those whose technology did not create a "fixed" copy of the derivative work but instead instructs the DVD player to skip temporarily certain scenes and sounds
2.
also amended Lanham Act to permit sale of such technology so long as "clear and conspicuous notice" of the alterations is given c.
Dastar Corp. v. Twentieth Century Fox Film Corp. (note case – remove credits on TV show) i.
539 U.S. 23 (2003) ii.
that a TV show, on which the copyright had expired, had its author credit removed and was being marketed without attribution to the plaintiff iii.
Supreme Court held unanimously that it was not a "false designation of origin" under the Lanham Act
1.
would create a "spectacular species of mutant copyright law that limits the public's federal right to copy and use expired copyrights" d.
Wojnarowicz v. American Family Assn. (note case – offensive artwork pamphlet) i.
45 F. Supp. 130 (S.D.N.Y. 1990) ii.
an artist sued to prevent the AFA from reproducing cropped images from his work in a pamphlet to stop public funding of "offensive" artwork iii.
court found that the pamphlet did not violate the Lanham Act (because it was non-commercial) or the
Copyright Act (because of fair use), but it granted an injunction under the New York AARA iv.
held that extracting fragmentary images from complex, multi-imaged collages clearly alters and modifies such work and that the plaintiff's reputation was harmed because the pamphlet implied that the plaintiff's work consists primarily of explicit images of homosexual sex activity v.
rejected the First Amendment defense, noting that defendants are free to criticize and condemn the artwork, but may not present cropped works as the complete works of the plaintiff e.
Phillips v. Pembroke Real Estate, Inc. (sculpture garden)
Phillips v. Pembroke Real Estate, Inc.
Citation
Facts
Issue
History and
Precedent
Court's
Ruling
459 F.3d 128 (1 st Cir. 2006)
Phillips was an well-known artist, who designed and made a series of sculptures and stonework for Eastport Park in South Boston
Pembroke leases the land on which the Park is built from the
Massachusetts Port Authority, and decided to alter the Park in 2001
as a part of the redesign, wanted to remove Phillips' work, and he objected and filed suit in federal district court, seeking relief under VARA and MAPA (Massachusetts Art Preservation Act)
1.
Whether the removal of site-specific art destroys it such that there is a violation of rights under VARA.
VARA o author of a work of visual art shall have the right to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor o no modification, alteration, destruction is allowed except that such is permitted when a result of the public presentation, including lighting
and placement, § 106A(c)(2)
United States v. Texas, 507 U.S. 529 (1993) o the Supreme Court emphasized the principal that statutes which invade the common law are to be read with a presumption favoring the retention of long-established and familiar principles, except when the statutory purpose to the contrary if evident o in order to abrogate a common-law principle, the statute must speak directly to the question addressed by common law
Judge Lipez, in favor of Δ
VARA does not protect site-specific art at all.
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Class Notes o does not protect site-specific art and then permit its destruction by removal pursue to the public presentation exception o one inescapable fact about this history – the concept of sitespecific art is never mentioned by name, which confirms our sense of VARA's plain meaning
we ultimately agree with Pembroke's position that there is no basis for
Phillips' claim that VARA establishes 2 regimes (one for free-standing art and one for site-specific art)
VARA's plain language requires us to reject the district court's approach
do not denigrate the value or importance of site-specific art, but conclude that VARA's plain language does not protect it o Congress should rewrite it if they meant to include it o courts cannot rewrite the statute under the guise of statutory interpretation
Phillips is arguing that he made "site specific" art
Phillips argues that changing the location of the sculpture infringed his
VARA rights o also arguing infringement under MAPA (Massachusetts law)
the district court found a MAPA violation, but no VARA infringement o because, although VARA applies to site specific art, what the owner did is exempted under § 106(c)(2) o § 106(c)(2) does not apply to site specific art
the 1 st Circuit says what the district court did makes no sense o how can it apply and not apply? o refuses the artist's invitation to establish a dual regime under
VARA for site specific art, and non-site specific art o say that VARA does not apply to site specific art at all f.
Martin v. City of Indianapolis (note case – "recognized stature") i.
192 F.3d 608 (7 th Cir. 1999) ii.
Martin was an artist that created a sculpture, "Symphony #1" iii.
City promised artist that if they needed the lot, they'd give him 90-day notice iv.
they didn't follow through with promise, and destroyed sculpture to take the lot, without his approval v.
question became was the work of "recognized stature" – what is the evidentiary burden?
1.
can ask experts, or ask the public vi.
court found that the evidentiary burden is quite light and the artist prevailed
1.
the sculpture met the necessary requirement, even though the evidence was several newspaper/magazine articles that gave the sculpture lukewarm praise, and some letters
Infringement Actions
I.
Bringing suit, generally
(including director of art at Indiana University)  just some experts a.
core concept of infringement is always the same: an unpermitted exercise by the defendant of a right in a copyrighted work accorded to the plaintiff by the Copyright Act itself b.
question is first who can bring an infringement lawsuit i.
§ 501(b) states that the legal or beneficial owner of an exclusive right under the act is entitled to institute an infringement action
1.
term "beneficial owner" covers, among other things, the author who parted with the legal title for %-based royalties that are calculated based on sales a.
Cortner v. Israel (2 nd Cir. 1989)
2.
licensees: only exclusive licensees can bring suit for infringement
II.
Proving the claim a.
plaintiff must prove: i.
ownership of a valid copyright
1.
originality, modicum of creativity, fixation, compliance with formalities (especially important to register work to bring suit) ii.
infringing conduct by the defendant
1.
copying
77

a.
found when have 1) access to the plaintiff's work and 2) substantially similarity to the plaintiff's work b.
issue is not whether the defendant copied a sufficient amount to constitute infringement, but only whether the defendant copied, rather than independently created c.
note that for songs: the fact that it is not a direct copy does not let you off the hook (it's either 2 infringements or 1 – musical work, or musical work and sound recording)
2.
"improper appropriation" a.
is a separate matter – plaintiff must show that the taking was impermissible as to both kind and amount, need lifting of some protected elements b.
not all copying is copyright infringement b.
infringement prong #1: copying, access and similarity i.
strict liability standard and no proof of actual copying needed
1.
most times, it's very hard to prove actual copying
2.
so err on the side of over-inclusive, rather than under-inclusive ii.
the way to prevail is to show circumstantial evidence
1.
 access and similarity become proxies for copying a.
in Harrison, they found access based on the commercial success of the original song i.
this finding should not be taken lightly—the non-successful song will not win most times
2.
there is an inverse relationship – the stronger the similarity, the less proof of access is required a.
BUT one cannot eliminate need to show both b.
even if super similar, need access requirement i.
otherwise independent creation can't be a defense c.
also need substantial similarities i.
more indicative of copying in certain works than in others ii.
in literary works, less likely that strong similarities will occur without copying iii.
not true of music, more likelihood that things will be independently created c.
defending against infringement (the copying prong) i.
independent creation
1.
only works when can produce documentation of independent creation and no reliance on prior work (helps if the prior work was unknown or had little access to it)
2.
see Selle v. Gibb ii.
prior common source
1.
the defendant can attempt to show that both works were based on 1 common source from the public domain
2.
see Ty, Inc. v. GMA Accessories iii.
it is also possible to argue that you copied, but not from the plaintiff
1.
is a risky move in a trial
2.
might want to arguie this point because you are already involved in a lawsuit  maybe the 3 rd party is less likely to sue you, or maybe want to reduce the expected damages to be paid d.
infringement prong #2: improper appropriation i.
must also show the defendant lifted protected elements from your work, copying alone is not enough ii.
two types of copying
1.
verbatim similarity (the defendant took protected expression literally)
2.
pattern similarity iii.
two approaches to the analysis
1.
subtractive approach a.
the allegedly infringed work is analyzed first in order to determine what elements of the work are protected b.
1) sift out the unoriginal elements (public domain materials), matters of historical or contemporary facts, ideas, clichéd language, and "scenes a faire" (stock elements, ex: yellow taxi cabs and skyscrapers in New York) c.
2) take what is left – the protected elements – and compare it to the defendant's work, to determine whether the defendant appropriated any of those elements
2.
totality approach a.
adopted by California courts, and the 9 th Circuit
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i.
these courts criticized subtractive approach for being unduly restrictive, and may often miss the fact there was originality in the arrangement of unprotected elements, which may itself be copyrightable b.
the works must be compared in their entirety i.
see Krofft case
3.
Parchomovsky: totality approach is more favorable to plaintiffs a.
a lot of times, outcome of the case may be determined by the approach the court takes iv.
substantial differences
1.
do they matter? can a defendant say that they added so much originality that they have their own copyrightable work?
2.
Judge Learned Hand answered this question, in this case, in the negative – said it does not matter how much the defendant added a.
"no plagiarist can excuse the wrong by showing how much of his work he did not pirate" b.
introduced to the world "the abstractions test" (Nichols) i.
contrast that opinion to Warner Bros. v. ABC e.
direct infringements of software i.
over time, courts narrowed down the copyright protection given to software ii.
the protection of non-literal elements is limited iii.
trend to narrow down protection also happened on graphic user interfaces (GUI) f.
related cases i.
Daly v. Palmer (note case – dramatic effect taking)
1.
6 F.Cas. 1132 (C.C. S.D.N.Y. 1868)
2.
a claim of infringement of the plaintiff's play "Under the Gaslight" by the defendant's play
"After Dark" was grounded not on the taking of dialogue, but instead on the "dramatic effect" of one scene
3.
nature of infringement was the dramatic effect produced by what is done by movement and gesture – the subject matter protected was the action and drama portrayed ii.
Arnstein v. Porter (note case – circumstantial evidence of copying)
1.
154 F.2d 464 (2d Cir. 1946)
2.
test based on whether there was copying by the defendant
3.
copying almost always is proved by indirect (circumstantial) evidence of the defendant's infringement activity, simply because direct is not available a.
only in unusual cases will defendant admit to copying
4.
presume copying when have proof that the defendant had access to the copyright, coupled with some degree of similarity between the works that is "probative" of copying iii.
Bright Tunes Music Corp. v. Harrisongs Music, Ltd. (subconscious copying)
Citation
Bright Tunes Music Corp. v. Harrisongs Music, Ltd.
420 F. Supp. 177 (1976), aff'd sub nom. ABKCO Music, Inc. v. Harrisongs Music,
Facts
Ltd., 722 F.2d 988 (2d Cir. 1983)
Harrison wrote a successful song, "My Sweet Lord," which the plaintiffs claim is plagiarized from an earlier successful song, "He's So Fine" performed by the Chiffons and composed by Ronald Mack (owned by
Bright Tunes)
use the same motif and patterns of motifs
Harrison claimed that he was aware of the song, "He's So Fine" (which had been successful more than 10 years prior) but claimed that he and his band had composed the song independently without reference to the earlier work
Issue
History and
Precedent
Court's
Ruling
1.
Whether Harrison copied the earlier song in his composition.
Sheldon v. Metro-Goldwyn Pictures Corp., Northern Music Corp. v.
Pacemaker Music Co., Inc. o infringement of copyright is not made less so if done unintentionally
Judge Owen, in favor of Π
Even unconscious copying is infringement of copyright.
find for the plaintiff on the issue of plagiarism, and set action down for
79

Class Notes trial on issue of damages and other relief to which the plaintiff may be entitled
apparent from the extensive conversation between the court and Harrison that neither Harrison nor Preston were conscious of the fact that they were using the "He's So Fine" theme, but it is perfectly obvious to the listener that in musical terms, the two songs are virtually identical except for one phrase
conclude that Harrison did not deliberately use the music of "He's So
Fine" but his subconscious mind thought the combination was pleasing because he had heard it before
it is clear that "My Sweet Lord" is very same song with different words
the court found that there was infringement o found that Harrison did it subconsciously, believed him that he didn't do it intentionally o but Harrison had access to the song, and he knew about it and was exposed to it o copying is copying
this suit establishes 2 things o the Copyright Act establishes strict liability
 also covers subconscious copying o only way to defend is if:
 there is a prior common source
 there is independent creation
 the burden is on the defendant, and the defendant needs to show that she created her work independently iv.
Selle v. Gibb (note case – independent creation)
1.
741 F.2d 896 (7 th Cir. 1984)
2.
Selle brought suit against the BeeGees, claiming "How Deep is Your Love?" infringed his song,
"Let It End"
3.
the jury found for the plaintiff, but the district court judge granted the defendants' motion for judgment notwithstanding the verdict
4.
the 7 th Circuit affirmed a.
Selle's song never achieved public acclaim, only performed 2-3 times in the Chicago area i.
the plaintiff sent copies to 11 music publishing companies, 8 of which returned the material to him and the remaining 3 did not respond b.
the BeeGees were able to produce evidence documenting their creation of their song and nothing indicated reliance on the plaintiff's song
5.
this is a case where independent creation was found v.
Ty, Inc. v. GMA Accessories, Inc. (Beanie Baby pigs)
Citation
Facts
Issue
History and
Precedent
Ty, Inc. v. GMA Accessories, Inc.
132 F.3d 1167 (7 th Cir. 1997)
Ty, the manufacturer of Beanie Babies, contends that GMA is copying its copyrighted toy pig (Squealer) and cow (Daisy) with their own toy pig
(Preston) and cow (Louie)
Ty began selling its Beanie Babies in 1993 and popularity of line induced
GMA to bring out its own line of bean-bag animals 3 years later
1.
Whether the Preston pig is a copy of the Squealer pig.
Selle v. Gibb, 741 F.2d 896 (7 th Cir. 1984) o if independent creation results in an identical work, the creator of that work is free to sell it o copying entails access, so if two works are so similar as to make it highly probable that the later one is a copy of the earlier one, the issue of access need not be address separately o inference of copying could be rebutted by proof that the creator of the later work could not have seen the earlier one
CMM Cable Rep, Inc. v. Ocean Coast Properties, Inc., 97 F.3d 1504 (1 st Cir.
80

Court's
Ruling
Class Notes
1996, Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119 (2d Cir.
1994) o issue of copying can be broken into 2 subissues: 1) whether the alleged copier had access to the work that he is claimed to have copied and 2) whether he used his access to copy
Judge Posner, in favor of Π
Two pigs are so nearly identical that if the second is a copy of the first, the second clearly infringes Ty's copyright.
Cannot claim independent creation or common source, either, because GMA's pig is strikingly similar to Ty's pig but not to anything in the public domain— neither of them look like real pigs.
unbelievable that a substantial company like GMA, in the same line of business as Ty, could not have located and purchased a Ty toy if they wanted to copy it
although the designer claims to never have looked at Ty's pig, the final
GMA product looks closer to Ty's than to her sketch drawing o her affidavit is weak evidence if independent creation o absence of any evidence of how her drawing translated into the production model, combined with the strong similarity of the model to Ty's, overbore the weak evidence of the affidavit
Posner finds infringement o he finds "striking" similarity o he finds access – Ty's products are very successful and can be found anywhere o also finds no common source, even though both based on pigs
 no way GMA copied from a real pig, as opposed to Ty's
 they are similar to one another, not to real-life pigs
note that the designer gave an affidavit that she didn't copy o Posner found that this was weak evidence, just a stage in the production process o the design sketch was very different from the final toy o could be possible that changes were made subsequently, and the end result is where the similarity lies vi.
Nichols v. Universal Pictures Corp. (note case – feuding families play)
1.
45 F.2d 119 (2d Cir. 1930)
2.
movie based on a play, with feuding fathers (one Irish and one Jewish) and their children falling in love and getting married  "Abe's Irish Rose" and "The Cohens and the Kellys"
3.
court found no infringement a.
the two plays at bar we think both as to incident and character, the defendant took no more than what the law allowed i.
the stories are quite different b.
granting that the plaintiff's play was wholly original, and assuming novelty is not essential to copyright, there is no monopoly in such a background c.
theme was too generalized an abstraction from what she wrote – it was only a part of her "ideas"
4.
Judge Learned Hand introduced to the world "the abstractions test" a.
upon any work, and especially upon a play, an increasing number of generalities will fit as more and more incidents are left out i.
getting to the broad idea of what the play is "about" ii.
the idea at the core of the expressions b.
there is a point in this series of abstractions where they are no longer protected – otherwise the playwright will be able to copyright his ideas c.
all the defendant did was copy the theme/idea of a love story between a Jewish person and an Irish person and their feuding families i.
the play/movie themselves were quite different ii.
since storylines are not protected, it is okay
5.
seems like Hand was using the subtractive approach a.
did not explicitly say so
81

b.
accomplishing the same goal – separating the protected from the unprotected elements
6.
Parchomovsky: the problem is that this test doesn't do anything at all a.
does not tell you what the line is, don't know how to draw line between protected and unprotected expression b.
does not add much to the analysis, not very useful c.
gives you another way to look at the problem, but doesn't help you get to a solution d.
and then Hand, in a different case, seems to use the totality approach! vii.
Peter Pan Fabrics, Inc. v. Martin Weiner Corp. (note case – clothing patterns)
1.
274 F.2d 487 (2d Cir. 1960)
2.
about two "converters" of textiles used in the manufacture of women's dresses a.
converters buy uncolored cloth, imprint the cloth with ornamental designs, and then sell the cloth to dressmakers
3.
court held that there was infringement a.
using totality approach, whether an ordinary lay person would view fabrics as same b.
the vantage point of the ordinary observer, not interested in art expert's opinion c.
one cannot say how far an imitator must depart from an undeviating reproduction to escape infringement d.
should consider the uses for which the design is intended, estimate how far its overall appearance will determine the aesthetic appeal when the cloth is made into a garment e.
both designs have the same general color, and that arches, scrolls, rows of symbols resemble each other although not identical f.
however, an ordinary observer, unless he set out to detect the disparities, would be disposed to overlook  that is enough
4.
test for infringement is necessarily vague
5.
subsequent cases enriched the analysis a little, and the standard is muddled viii.
Warner Bros. v. American Broadcasting Cos. (note case – "Greatest American Hero")
1.
720 F.2d 231 (2d Cir. 1983)
2.
Greatest American Hero infringing on Superman
3.
court thought that the numerous differences served to undercut the substantial similarity a.
differences may matter more when graphic or 3D works are concerned b.
if you look at it from this point of view, maybe totality test will favor the defendants – add enough to seem different
4.
contrast to Hand's opinion ix.
Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp. (note case – kids shows)
1.
562 F.2d 1157 (9 th Cir. 1977)
2.
McDonald's was found to have infringed plaintiffs' "H.R. Pufnstuf" children's television show by the production of their "McDonaldland" television commercials
3.
9 th Circuit held that because the Pufnstuf show targeted children and children are less discriminating, means that the similar standard should be lower
4.
found that the ordinary reasonable person, let alone a child, could tell the difference, even though small details were different
5.
it is clear to us that defendants' works are substantially similar to plaintiffs' – they have captured the "total concept and feel" of the Pufnstuf show x.
Atari v. North American Phillips (note case – kids can't tell dif, video games)
1.
672 F.2d 607 (7th Cir. 1982)
2.
video games appealed to an audience that was fairly undiscriminating in their choices
3.
Parchomovsky: this is strange, children know exactly what differences are between games xi.
Dawson v. Hinshaw Music, Inc. (note case – ordinary people tell dif?)
1.
905 F. 2d 731 (4th Cir. 1990)
2.
if the intended audience of the work possesses specialized expertise that ordinary people lack, the court must take that into account xii.
Matthews v. Freedman (note case – souvenir t-shirts)
1.
157 F.3d 25 (1 st Cir. 1998)
2.
ways to evaluate copying, choosing an approach greatly affects the outcome a.
totality/additive approach: goes with the overall look and feel of the works i.
 more likely to find infringement in this case ii.
even if all elements are clichéd and unoriginal, may be originality in aggregate b.
subtractive approach: take out the non-copyrightable elements and compare i.
there's nothing protectable
82

3.
court found no infringement in this case a.
found that the elements appropriated were unprotected ideas, but no protected expression was lifted
4.
Parchomovsky: thinks it's a good case a.
need to be serious about protecting ideas b.
so even when people copy ideas, we cannot protect the harmed party c.
hard because fairness intuitions point us in the other direction xiii.
Steinberg v. Columbia Pictures Industries, Inc. (note case – New Yorker cover)
1.
663 F. Supp. 706 (S.D.N.Y. 1987), p. 644-45 in the text
2.
"The New Yorker" cover, produced in 1976, famous to this very day a.
"A Parochial New Yorker's View of the World"
3.
a film, "Moscow on the Hudson," used similar design for their movie poster a.
had access  when the artist of the poster was instructed to make the poster, was given
"The New Yorker" cover to draw from
4.
court found infringement a.
defendant copied plaintiff's artistic style b.
sketchy, whimsical style that became one of Steinberg's hallmarks c.
vantage point that shows wide cross-street opening onto a river d.
buildings are also similar, although not based in reality
5.
Parchmovsky: disagrees with decision a.
court pushed envelope too much b.
artistic styles should not be protected c.
could argue on totality approach that the defendant's work is infringing, but the court here chose to work with the subtractive approach, and stretches it too far (is an outlier) d.
not enough protected elements taken  buildings don't look that similar to him, and those 4 blocks are a standard view and river is part of topography of Manhattan, it's an island xiv.
Computer Associates Int'l, Inc. v. Altai, Inc. (ADAPTER program)
Citation
Facts
Issue
History and
Precedent
Court's
Ruling
Computer Associates Int'l, Inc. v. Altai, Inc.
982 F.2d 693 ( 2d Cir. 1992)
Computer Associates (CA) made a copyrighted computer program, CA-
SCHEDULER, to be used to schedule computer tasks
CA-SCHEDULER contained a valuable sub-program, ADAPTER, wholly integrated in the main program, that translates that language of a given program into the particular language that the computer's operating system can understand
Altai recruited a CA employee to develop their own OSCAR program, but unbeknownst to Altai, the employee used the CA ADAPTER code, which is present on OSCAR 3.4
when Altai discovered the use of CA code, it rewrote the program to eliminate literal duplications of the code, into OSCAR 3.5
CA still brought suit for copyright infringement
1.
Whether and to what extent the "non-literal" aspects of a computer program are protected by copyright.
Nichols v. Universal Pictures Co. o of course essential to any protection of literary property that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations
Baker v. Selden, Mazer v. Stein o copyright does not protect an idea, but only expression of idea o Congress made no special exception for computer programs
Feist Publications, Inc. v. Rural Tel. Serv. Co. o the Supreme Court has emphatically reiterated that the primary objective of copyright if not to reward the labor of authors o substantial effort alone cannot confer copyright status on an otherwise uncopyrightable work
Judge Walker, in favor of Δ
So long as the appropriated material consists of non-protectable expression, this
83

Class Notes
result is neither unfair nor unfortunate. – it is the means by which copyright advances the progress of science and art
we discern no error on the part of the district judge, let alone clear error o the overlap between the programs was dictated by the nature of the programs with which they were designed to interact and thus not protected by copyright o the two programs' organizational charges were so simple and obvious to anyone exposed to the operation of the programs
(flow naturally from the works' theme rather than the author's creativity)
developed 3-step test for ascertaining substantial similarity for non-literal elements of computer programs o 1) abstraction: dissect the copied program's structure and isolate each level of abstraction contained within it; begin with code and end with articulation of program's ultimate function, retract and map each of the designer's steps o 2) filtration: move from conceptual to concrete, examine the structural components to determine whether they are copyrightable, each case requires its own fact-specific investigation
 remove "ideas," elements dictated by efficiency (such that there is merger), elements dictated by external factors
(like the scenes a faire doctrine), elements taken from the public domain o 3) comparison: once sift out the non-copyrightable elements, compare those remaining elements with the copying program
what we're trying to establish now is the test for software infringement o Whelan's test (3 rd Circuit): tried to apply idea/expression dichotomy to software, non-literal elements are protectable, then found infringement in a lot of cases
 idea = purpose or function of the problem, not protected
 everything else = copyrighted expression
the 2 nd Circuit in this case does not follow Whelan and finds it overbroad o Parchomovsky agrees
instead, adopts a 3-step test that was later endorsed by other circuits – is basically the subtraction approach as applied to software o abstraction: break program down into constituent parts
 courts conceptually reverse-engineer the software, beginning with the code and ending with the ultimate function of the program o filtration: sift out parts/elements that are un-protectable
 for each level of abstraction, take out the unprotected elements
 unprotected elements:
 incorporated ideas
 expression necessarily incidental to the ideas
 public domain material
 elements dictated by efficiency concerns
 elements dictated by external factors such as the mechanical specifications of the computer
 elements dictated by compatibility requirements
 elements dictated by industry standards/needs o comparison: compare what is left of the plaintiff's program
 based on the comparison, determine whether there was an infringement xv.
Gates Rubber Co. v. Bando Chemical Industries, Ltd. (note case – abstraction levels of program)
1.
9 F.3d 823 (10th Cir. 1993)
2.
10 th Circuit enumerated 10 levels of abstraction
84

a.
main purpose: function or what it is intended to do b.
program structure and architecture: description of how the program operates in terms of the modules employed and how they interact with one another i.
usually represented in flow charts c.
modules: typically has two components – operations and data types i.
operation: similar to the main purpose, except on the micro level, about how the module is supposed to function ii.
data types: define the type of item or information on which the function should be performed d.
algorithms and data structures i.
algorithms: series of steps that accomplish a certain operation ii.
data structures contain values, variables, etc. e.
source code: in programming language f.
object code: in binary language xvi.
Lotus Dev. Corp. v. Borland Int'l, Inc. (note case – copying computer file menu)
1.
799 F. Supp. 203 (D. Mass 1993)
2.
copied menu command hierarchy, similar to GUI
3.
whenever opened Borland program, would see same stream as if you were working with the
Lotus program  copied the user interface
4.
interesting move from a business standpoint a.
we become sensitive to the concept of switching costs b.
no one wants to switch to Borland, so that's a barrier to entry c.
the solution is to copy the Lotus interface, but not the entire software d.
users know they won't have to learn anything knew, so they'll give Borland a shot
5.
the court held no infringement because their menu command hierarchy is a method of operation and, in many ways, the Lotus menu command hierarchy is like the buttons on a VCR a.
Lotus might be able to get around this ruling by making menu "artistic", aesthetic input
6.
concurrence by Judge Boudin a.
suggested to introduce a privileged use doctrine b.
should require each company that wants to do what Borland did to add something new c.
very aware of minimizing learning costs, but wants to send a message that you cannot just appropriate, but must add something original to the pool of knowledge i.
advance the ball a little bit
7.
Parchomovsky: likes Boudin's original viewpoint, but hard to apply
III.
Contributory and vicarious infringement a.
two types i.
contributory liability: a person may be held contributorily liable if, 1) with knowledge, the person 2) induces/facilitates/materially contributes to an infringement by a 3 rd party
1.
conditions of contributory liability for infringement a.
knowledge of infringement b.
induced, facilitated, and materially contributed to infringement by 3 rd party
2.
note that we've already covered an example of this in Aveco ii.
vicarious liability: a person who has 1) power or ability to control the direct infringer, and 2) some financial benefit from the infringement
1.
conditions of vicarious liability for infringement a.
right and ability to control the infringing activity b.
direct financial benefit from the infringing activity b.
coming from law of torts i.
importation into copyright law changed the scene ii.
dramatically expanded scope of infringement
1.
does not add any exclusive rights, but adds more people to the pool of potential defendants
2.
can go after corporations that did not directly infringe the copyright, but fall into liability because of their actions in support of the infringement
3.
this can create a cascade of lawsuits, so must draw the line somewhere iii.
under secondary liability, must limit the class of people liable
1.
do not want copyright owners to overreach c.
file sharing i.
interface between copyright law and technology
1.
until about 20 years ago, technological developments fell under patent
85

2.
but this all changed with the development of secondary liability for copyright ii.
there are two options that the music industry has:
1.
direct infringement suits against end users
2.
secondary infringement suits against software companies a.
these seem to be the better choice of suit b.
deeper pockets, have money to pay damages c.
cost-effective litigation, only pursue 1 lawsuit, hard to find individual end-users d.
appears more fair and even, less reputation concerns e.
software companies are the gatekeepers i.
decide the design of the technology  important because affects what happens later (ex: VCRs can be simple players, and not recorders) ii.
contractual interface, allows for cost spreading  can distribute cost to users by raising the price d.
related cases i.
Fonovisa, Inc. v. Cherry Auction. Inc. (piracy at swap meet)
Citation
Facts
Issue
History and
Precedent
Court's
Ruling
Fonovisa, Inc. v. Cherry Auction. Inc.
76 F.3d 259 (9 th Cir. 1996)
plaintiff, Fonovisa, is a California corporation that owns copyrights and trademarks to Latin/Hispanic music recordings
defendant, Cherry Auction, operates a swap meet in Fresno, California o vendors pay a daily rental fee to the swap meet operators in exchange for booth space o Cherry Auction supplies parking, conducts advertising, and retains the right to exclude any vendor for any reason, at any time, and can exclude vendors for patent and TM infringement o Cherry Auction also receives an entrance fee from each customer who attends the swap meet
Cherry Auction and its operators were aware that vendors in their swap meet were selling counterfeit recordings in violation of Fonovisa's trademarks and copyrights
1.
Whether Cherry Auction can be liable for the copyright infringement of its vendors, when it only supplies the swap meet space for rental.
Shapiro, Bernstein and Co. v. H.L. Green Co., 316 F.2d 304 (2d Cir. 1963) o suit against owner of a chain of department stores where a concessionaire was selling counterfeit recordings o the normal agency rule of respondeat superior imposes liability on an employer for copyright infringements by an employee o tried to fashion a principle for enforcing copyrights against a defendant whose economic interests were intertwined with the direct infringer's but who did not actually employ direct infringer
Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 443
F.2d 1159 (2d Cir. 1971) o 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 lacked formal, contractual liability to control direct infringer o nevertheless, the court found vicarious liability based on defendant's "pervasive participation in the formation and direction" of the direct infringers, including promoting them
(creating an audience for them)
Judge Schroeder, in favor of Π
Plaintiffs have stated a claim for vicarious copyright infringement - Cherry
Auction controlled and patrolled, 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. o analogy to absentee landlord is not in accord with the facts alleged below
86

Class Notes o Cherry Auction promoted the swap meet and controlled access of customers to the swap meet area o as the promoter and organizer of the swap meet, Cherry Auction wields the same level of control over the direct infringers as did the Gershwin defendant o reap substantial financial benefits from admission fees, concession stand sales, and parking fees, all of which flow directly from customers who want to buy the counterfeit recordings at low prices o the sale of pirated recordings at the Cherry Auction swap meet is a "draw" for customers
no question that plaintiff adequately alleged the element of knowledge in this case – have little difficulty in holding that the allegations in this case are sufficient to material contribution to the infringing activity o it would be difficult for the infringing activity to take place in the massive quantities alleged without the support services provided by the swap meet o Cherry Auction actively strives to provide the environment and the market for counterfeit recording sales to thrive – its participation cannot be termed "passive"
the court finds vicarious liability o have control  Cherry Auction promoted the swap meet and could control access to the swap meet (entrance fees), and had right to terminate vendors o have benefit  got entrance fees, rental fees, and parking fees
 court interprets "direct financial benefit" very broadly
 no direct linkage needed, any enhancemt will do
 ***sale of infringing copies enhanced the attractiveness of the defendant's swap meet to consumers, that is enough
the court finds contributory liability o had knowledge  police had raided swap meet for this before o had facilitated  without aid of defendant, the infringing activities could not have happened on such a large scale
 also failed to comply with prior requests for information about vendors, and hid their entities
points to remember o don't need to prove both, one is enough, but in most cases, courts try to find both o for there to be secondary liability, must identify direct infringement first
 if there is a fair use claim for direct infringer, cannot have liability for secondary infringer o now copyright owners have an option to sue the direct infringer or a broader class of those contributing to the infringement
 don't have to do both, either ii.
Sony Corp. of America v. Universal City Studios, Inc. (Betamax)
Citation
Facts
Issue
Sony Corp. of America v. Universal City Studios, Inc.
464 U.S. 417 (1984)
Universal City owns the copyrights on some of the television programs that are broadcast on public airwaves
Sony Corp. manufactures and sells home video tape recorders
average number of the public uses a VTR to record a program he cannot view as it is being televised and then to watch it once at a later time =
"time-shifting" practice o enlarges the television viewing audience
1.
Whether the sale of petitioner's copying equipment to the general public
87

History and
Precedent
Court's
Ruling
Concurrence or Dissent violates any of the rights conferred by the Copyright Act.
Kalem Co v. Harper Brothers, 222 U.S. 55 (1911) o the Court held that the producer of an unauthorized film dramatization of the book, "Ben Hur," was liable for his sale of the motion picture to jobbers, who arranged for the commercial exhibition of the film o producer had personally appropriated the copyright owner's protected work, and, as the owner of the tangible medium of expression upon which the protected work was recorded, authorized that use by his sale of the film to jobbers
contributory copyright infringement o contributory infringer was in a position to control the use of copyrighted works by others and had authorized the use without permission from the copyright owner
Dawson Chemical Co. v. Rohm & Hass Co., 448 U.S. 176 (1980) o in contributory infringement cases arising under the patent laws, the Court has always recognized critical import of not allowing patentee to extend monopoly beyond limits of his specific grant o these cases deny the patentee any right to control the distribution of unpatented articles unless they are 'unsuited for any commercial non-infringing use'
Justice Stevens, in favor of Δ
The sale of copying equipment, like the sale of other articles of commerce, does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes infringing use.
 it need merely be capable of substantial non-
judgment of the Court of Appeals is reversed o their holding would enlarge the scope of Universal City's statutory monopolies to encompass control over an article of commerce that is not the subject of copyright protection – beyond the limits of the grants authorized by Congress
there is no basis in the Copyright Act upon which Universal City can hold
Sony liable for distributing VTRs to the general public
only contact between Sony and users of Betamax are at moment of sale
if vicarious liability is to be imposed, it must rest on the fact that it has sold equipment with constructive knowledge of the fact that its customers may use that equipment to make unauthorized copies of copyrighted material  there is no precedent in the law for imposition of vicarious liability on such a theory
staple article of commerce doctrine must strike a balance between a copyright holder's legitimate demand for effective protection of the statutory monopoly, and the rights of others freely to engage in substantially unrelated areas of commerce
Universal City has no right to prevent other copyright holder from authorizing the use of Betamax for their programs, and the district court's factual findings reveal that even the authorized home time-shifting of the programs is legitimate fair use
Justice Blackmun, dissenting
agree with the Gershwin court that contributory liability may be imposed even when the defendant has no formal control over the infringer
a finding of contributory infringement has never depended on actual knowledge of particular instances of infringement – it is sufficient that the defendant have reason to know that infringement is taking place
it is only with the aid of the Betamax or some other VTR that it is possible today for home television viewers to infringe copyright by recording offthe-air
recognize, however, that many of the concerns underlying the "staple article of commerce" doctrine are present in copyright law as well
conclude that if a significant portion of the product's use is non-infringing,
88

Class Notes the manufacturers and sellers cannot be held contributorily liable
proportions of VTR recording that is infringing is ultimately a question of fact, and would remand this case for further consideration
plaintiffs claiming that Sony is facilitating copyright infringement by district court rules for Sony, finding home use to be fair use
9 th Circuit reverses, finds no "home use" exception in the Copyright Act
 question is when are manufacturers of dual-purpose (infringing and non-infringing) technologies liable for infringements by end users
this decision was decided by Supreme Court by a narrow margin, 5-4
Stephens' majority o test chosen is that there is no liability if technology is "capable of substantial non-infringing use"
 this is a safe harbor provision  telling you when you are not liable, not when you are
 if you stay within the provision, you are okay o find no contributory infringement under that test o the non-infringing uses of a VCR
 significant % (9-10%) of content owners do not object
 most people use a VCR to do time-shifting*, which is held by the court to be fair use
 *time-shifting is harmless activity because:
 simply allows viewers to watch shows at a later time, there is no loss to the copyright owners
 have nothing to complain about from timeshifting practices
 Parchomovsky: but what about the calculating people you lose because they know they have a
VCR to tape it?  clearly a loss here
Blackmun's dissent o did not like majority's test, want actual use test o doesn't matter what the VCR is capable of, but what people are really using it for
Parchomovsky: note this safe harbor really helped the technology sector o there is a potential in the "capable" wording
 the users control how much the technology is used for infringing purposes – they have control in the end
 but the manufacturers' configure design and capability
 need to make these design decisions much earlier
 need to get funding and investors earlier, before users can even get their hands on it, so need to show that fall in the safe harbor beforehand o there is some balance here  but also needs to show significance somewhat, the significant % iii.
A&M Records, Inc. v. Napster, Inc. (note case – file sharing)
1.
239 F.3d 1004 (9th Cir. 2001)
2.
this case was superseded by Grokster
3.
the program was called Music Share, and it was a 1 st generation program a.
centralized, would find your files in a designated directory b.
the file names would be uploaded onto the Napster system, and other users can get those lists and download from the other person's computer c.
also provided "hot list" – alert you of users with similar tastes when they logged on
4.
at district court a.
grants broad preliminary injunction from facilitating the distribution of musical works and sound recordings by its users
5.
at 9 th Circuit a.
was more careful, looked at contributory and vicarious infringement
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b.
contributory: found actual knowledge of exchange of infringing material and provided site and facilities for direct infringement i.
without Napster's support services, users could not find and download these files with the ease that Napster boasts ii.
looking at the language of Fonovisa iii.
found that Napster could block access but failed to remove the material c.
vicarious: ample evidence that Napster's future as a company depended upon the size of its user base and found right to control access and express reservation of rights policy (allowing it the right to refuse service and terminate accounts if it believes that users engage in copyright infringements) i.
again looking at Fonovisa, finding benefit based on increased attractiveness of software because of the illegal files ii.
court found that, to escape liability, Napster had to police uses to the fullest extent of the power it reserved
1.
 turning a blind eye for the sake of profit gives rise to liability
6.
note about this case a.
court rejected all of Napster's defenses b.
but what happened to the Sony safe harbor? i.
the technology of file sharing is neutral ii.
allows you to share legal and illegal content alike iii.
the 9 th Circuit completely overlooked Sony c.
real world effect: the lesson that software makers learned from this case was to develop a new generation of software that was decentralized  no one knows where the content sits  leads to Grokster iv.
Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd. (P2P file sharing)
Citation
Facts
Issue
Court's
Ruling
Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd.
125 S. Ct. 2764 (2005)
Grokster and StreamCast distribute free software products that allow computer users to share electronic files through peer-to-peer networks, so called because users' computers communicate directly with each other, and not through central servers
although the software can be used to share any time of digital file, they have prominently employed those networks in sharing copyrighted music and video files without authorization
a group of copyright holders, including MGM, sued Grokster and
StreamCast for their users' copyright infringements
1.
Under what circumstances the distributor of a product capable of both lawful and unlawful use if liable for acts of copyright infringement by 3 rd parties using the product.
Justice Souter, in favor of Π
Hold that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by 3 rd parties. o premises liability on purposeful culpable expression and conduct, and thus does nothing to compromise legitimate commerce or discourage innovation having a lawful promise
agree with MGM that the Court of Appeals misapplied Sony, which it read as limiting secondary liability quite beyond the circumstances to which the case applied o Sony barred secondary liability based on presuming or imputing intent to cause infringement solely from the design or distribution of a product o 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 o where evidence goes beyond a product's characteristics or the knowledge that it may be put to infringing uses, and shows
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Concurrence or Dissent
Class Notes statements/actions directed to promoting infringement, Sony's staple-article rule will not preclude liability
here, summary judgment record is replete with other evidence that
Grokster and StreamCast, unlike the manufacturer and distributor in
Sony, acted with a purpose to cause copyright violations by use of software suitable for illegal use o each company showed itself to be aiming to satisfy a known source of demand for copyright infringement (Napster) o neither company attempted to develop filtering tools or other mechanisms to diminish infringing activity using their software o Grokster and StreamCast make money by selling advertising spaces  the more that the software is used, the more ads are sent out, and the greater the advertising revenue becomes
the more artistic protection is favored, the more technological innovation may be discouraged, the administration of copyright law is an exercise in managing the trade-off
Justice Ginsburg, concurring
that in Sony, there was a strong evidentiary basis for finding substantial non-infringing uses, whereas here there is no finding of any fair use and little beyond anecdotal evidence of non-infringing uses
Justice Breyer, concurring
agree with the Court that the distributor of dual-use technology may be liable for the infringing activities of 3 rd parties where he or she actively seeks to advance the infringement
disagree with reversal of summary judgment – the Court of Appeals' conclusion has adequate legal support
when measured against Sony's underlying evidence and analysis, the evidence now before us shows that Grokster passes Sony's test—whether the product is capable of substantial or commercial significant noninfringing uses
Grokster uses P2P networks on decentralized networks
interestingly, the 9 th Circuit ruled in favor of the defendants based on the
Sony safe harbor rule o technologies here were capable of substantial non-infringing uses o due to decentralized nature of the program, the knowledge requirement was also missing (as opposed to Napster) o find no liability for contributory infringement
Souter's majority o bases liability on the inducement rule
 distributing technology with object of promoting its use to infringe copyrights as shown by clear expression or other affirmative steps taken to foster infringement
 this is an intent rule, something new
 before this, only looked at whether or not technology was capable of infringing/noninfringing use
 not changing weight of dual-purposes, but adding intent
 have never had intent-based rule in copyright o how to prove intent
 establishes evidentiary standard as a proxy for intent
 marketing campaign
 could be inferred to be encouraging infringemts
 mentioned "Napster," trying to capture market
 business model

 court infers that they are benefiting from infring based on volume, because advertising revenue increases as users increase
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 internal communications/correspondence
 indicated that these companies were trying to fill
Napster's place
 Napster was mentioned in their e-mails
 did not try to diminish infringing activity by developing filtering tools o finds liability based on this inducement rule
 he also adds that the incentive for secondary liability finding is strong here because there is no recourse against the direct infringers o tries to distinguish Sony, says independent of Sony decision
 different because VCR was used for time-shifting purposes, and no evidence that Sony attempted to promote VCR for illegal taping
 Parchomovsky: this was incorrect o Sony advertised to users to make their own personal libraries
 admonished 9 th Circuit for construing Sony too broadly
 nothing in it requires court to ignore evidence of intent and impose liability where intent exists
Ginsberg's concurrence o distinguishes Sony on evidentiary basis
 Sony had solid evidence of substantial non-infringing use
 Tech companies claim that 10% of files are non-infring, but did not produce evidence to support this claim o need to req serious evid for any claim of a safe harbor under Sony
Breyer's concurrence o accepts Souter's inducement theory o but finds that the Sony rule protects innovation
 clear, strongly innovation protecting, allows industry to operate, forward-looking, takes into account the limitations of judges
 admits judges are not omnipotent, don't underst new tech the best, they are not positioned to compare infringing and non-infringing uses
 under Sony only required to find a substantial non-infringing use o modification of Sony like Ginsberg wants would weaken law's ability to protect innovation
 if need to introduce stronger evidence, the law is harder to apply, and is weaker as a result o if we go in the direction of changing Sony standard, the gain in expressive output from authors would probably not outweigh the loss in technological innovation
 there are 3 reasons
 copyrighters can go after infringers under other bodies of law
 copyrighters can adopt techn responses to piracy
 copyrighters can use innovative marketing strategies to dim the allure of illegal file-sharing
 balancing copyright owners versus tech developers
implications of this case o what is left of the Sony safe harbor?
 the court did not openly overturn Sony
 one interpretation  Grokster carves into the safe harbor: if you don't induce and you have evidence of substantial non-infringing use, then you can still have safe harbor
 other interpretation  nothing is practically left, hard to
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prove no intent
 hard to manage correspond among employees
 hard to fund your company without advertising
(which implies that you like infringement because you want to increase users) o why are music sales still dropping then?
 music sales peaked in 1999, still dropping
 these companies have no deep pockets
 not cost effective – cos. like Napster keep cropping up
 reputation still being negatively impacted
 pushed technology companies to make designs less friendly to authors o so now, after pursuing companies didn't work, copyright owners are pursuing direct infringements
 note case: Sony BMG v. Joel Tanenbaum (2009)
 downloaded 30 songs, ordered to pay $675,000
($22,500/song)
 statutory damages provisions that allows courts to grant up to $150,000 per infringement if the infringement was willful
 doesn't endear music industry to public, but creates deter o music has changed
 in past, music was a bundled good – came on an album
 had to buy the whole thing to get the 1 song you wanted
 now the model is the iTunes model, where music is distributed on a per song basis  if you want access to a song you like, you just buy that 1
 net increase in your own welfare
 don't have to buy the songs you didn't want
 music industry would have never allowed iTunes to do this song-per-song before file sharing arose
 but it's better to pay $0.99 than to get it for free
 and our fear of suit will make us pay the $0.99, too
 reached an equilibrium
IV.
Circumvention of technological protection measures (hacking) a.
tried and failed in the 1980s i.
many software manufacturers tried to prevent copying through technological means, including encryption and password protection ii.
these measures were unsuccessful:
1.
hackers were able to defeat each new measure almost as soon as it was released
2.
some courts held that it was lawful to sell products which helped consumers to circumvent a.
because under § 117, consumers had right to make a backup/archival copy of program
3.
techn measures often rendered software inconvenient to use, which harmed its market share iii.
by the end, of the 1980s, many software makers decided these measures weren't worth the effort b.
the WIPO Copyright Treaty, article 11 i.
called for national legislation to provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures used by authors in the exercise of their rights ii.
implemented in the United States in Title I of the Digital Millennium Copyright Act of 1998  added
Chapter 12 of Title 17
1.
the two policy concerns that Congress sought to address were: a.
promoting the growth of e-commerce b.
protecting the rights of copyright owners
2.
emergence of digital media threatened the structure of traditional copyright law, and Congress wanted to address these concerns a.
reproduction right: digital media enables us to create perfect copies of protected works i.
clearly a concern for the content industry b.
distribution right: can distribute thousands of copies of copyrighted content very easily i.
Parchomovsky: this is a huge impact
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c.
Chapter 12 (§ 1201) i.
is not copyright legislation, is "paracopyright legislation" ii.
new and independent set of regulations on activities related to the use of copyrighted works, in addition to those of copyright law itself
1.
traditional exclusive rights of copyright owners in §§ 107-122 do not necessarily apply here
V.
the Digital Millennium Copyright Act of 1998 (DMCA) a.
changed several important things in our copyright system, 3 major changes b.
1) Copyright Management Information (CMI) (§ 1202) i.
the least controversial section ii.
to protect the integrity of the information copyright owners choose to embed in digital copies
1.
digital technology allows for encoding of great amounts of information, which can be embedded in the files that contain copyrighted works a.
can detect infringement more easily, can find the end users iii.
specifically forbids the provision of false CMI or the removal or alteration of CMI with the intent to induce, enable, facilitate, or conceal infringement
1.
ex: changing data embedded in order to make it easier to copy
2.
this sounds like a derivative work
3.
note case: The Associated Press v. Shepard Fairey a.
the Obama Hope poster b.
allegations of deleting of all the meta data on the photo c.
Fairey claims that the poster was not done digitally, so maybe no § 1202 claim iv.
limitations
1.
exempts broadcasters from requirement to reproduce CMI about identity of performers, writers, and directors (§§ 1202(c)(4) and 1202(c)(5))
2.
private information about consumers cannot be included in definition of CMI (combination of
§§ 1202 and 1205 working together) a.
when legislation was passed, some concern that content owners will embed private information about their consumers and claim that no one can touch it because of CMI b.
when passed, legislature clarified that private information is not CMI c.
2) ban on circumvention of technological protection measures (§ 1201) i.
by far the most controversial aspect ii.
goes a little bit further and prohibits anyone from tampering, changing, or circumventing any technological measures used by content owners to protect access and use of their content iii.
about effective safeguards (technological protection measures – TPMs)
1.
effectiveness standard/threshold is very low a.
just because it can be hacked, does not mean not effective
2.
includes those based on encryption, scrambling, authentication, or some other measure that requires use of a key iv.
distinction between access and use control measures
1.
users who have lawfully gained access can exercise their privileges, and if want to make fair use of it, they can do that as long as access was gained lawfully
2.
so Congress wanted to maintain that traditional view here in designing this act
3.
Parchomovsky: they didn't succeed here a.
the line between measures that control access and control use is very blurry v.
there are 3 basic prohibitions in § 1201:
1.
prohibition on the circumvention of access control measures (§ 1201(a)(1)(A)) a.
"no person shall circumvent a technological measure that effectively controls access to a work protected under this title" b.
emphasis on access c.
"effectively" is not a high bar d.
access must apply to some copyrighted content
2.
prohibition on provision of technologies that circumvent access control measures (§ 1201(a)(2)) a.
meant to prevent dissemination of these hacking technologies to other people (to prevent enabling the people who don't understand how to hack) b.
ban on manufacture and trafficking of any technology that 1) is primarily designed to circumvent a TPM, 2) has only limited commercial purpose other than for circumvention, or 3) is consciously manufactured for the purpose of circumvention c.
don't have to meet all 3 conditions, enough that 1 is met
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3.
prohibition on provision of technologies that circumvent measures that safeguard against infringing uses (§ 1201(b)) a.
has same language as § 1201(a)(2), but modifies it to apply to safeguards against infringing uses b.
use control measures c.
isn't this all already covered by secondary liability? what's the point? i.
changes the balance against Sony's safe harbor ii.
now does not matter whether there is a significant non-infringing use, so long as designed to be a circumventing technology iii.
overrides Sony, follows more Grokster d.
*note these measures may not reach general-purpose consumer elect like PCs and VCRs vi.
exceptions and limitations
1.
for law enforcement purposes (§ 1201(e))
2.
for libraries and education institutions seeking to make purchase decisions (§ 1201(d))
3.
for encryption research (§ 1201(g)) a.
must contact copyright owner and inform him/her of intent to engage in that research
4.
for reverse engineering activities undertaken to achieve interoperability (§ 1201(f))
5.
for computer security testing (§ 1201(j))
6.
Parchomovsky: conspicuously missing from these is fair use a.
if allow, Congress thought that it would open the floodgates for fair use defenses b.
so fair use does not apply under the DMCA d.
3) creation of safe harbors for Internet Service Providers (§ 512) i.
see handout ii.
this section has nothing to do with § 1201 iii.
ISPs seemed like an easy target for copyright owners, because have money, so concerned about protecting them iv.
fortunately, they're also politically influential and got Congress to help v.
establishes 4 safe harbors for ISPs if meet two general conditions:
1.
must adopt and reasonably implement a policy for terminating subscribers who repeatedly engage in online infringements
2.
must refrain from interfering with any standard technical measures designed to protect or identify the copyrighted works a.
 be passive, don't touch anything b.
just there to let the content pass through vi.
then, the safe harbors you get are:
1.
transitory communications
2.
system caching
3.
storage of information on systems at the direction of its users
4.
information location tools vii.
as far as those activities are concerned, content owners cannot go after ISPs for monetary relief (can ask for an injunction)
1.
so to sue for damages, must go after the end users viii.
as a result of this provision, created the notice-and-takedown practice
1.
content owners can alert ISPs to existence of infringing material and occurrence of infringement and ask them to take down the content or remove the user e.
ex: someone buys a DVD i.
can she circumvent authentication technology that controls access to the content?  no, § 1201(a)(1)(A) ii.
can she circumvent copy control tech to make a fair use of movie?  yes, in principle, if she knows how
1.
no prohibition on direct circumvention use control technology iii.
can she manufacture/market a device that circumvents the access control measure?  no, § 1201(a)(2) iv.
can she manufacture/market a device that circumvents the copy control measure?  no, § 1201(b) f.
related cases i.
RealNetworks, Inc. v. Streambox, Inc. (RealMedia hack)
Citation
Facts
RealNetworks, Inc. v. Streambox, Inc.
2000 WL 127311 (W.D. Wash. 2000)
RealNetworks, Inc. makes audio and video content available through the internet by streaming, via the encryption techniques used in their software programs
Streambox, Inc. provides software products for processing and recording
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Issue
History and
Precedent
Court's
Ruling
Class Notes audio and video content, including streamed content over the Internet o the Streambox VCR mimics a RealPlayer and circumvents the authentication procedure (the Secret Handshake), and then ignores the Copy Switch so that an end-user can download
RealMedia files even if the content user does not allow it
 acts like a black box
 circumvents both access and copy protection o the Streambox Ripper is a file conversion application that allows conversion of files from RealMedia to other formats o the Streambox Ferret is a plug-in application that changes the
RealPlayer's graphical user interface and adds a button to switch between Snap! search engine and the Streambox search engine
1.
Whether reasonable likelihood of proof of success on claims under
Section 1201 is entitled to presumption of irreparable harm.
2.
Whether a preliminary injunction should be entered to enjoin Streambox from selling and promoting its 3 contested products.
Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., 964 F.2d 965 (9 th
Cir. 1992) o the court held that the manufacturer of a product that altered the audiovisual displays of a Nintendo game did not commit contributory copyright infringement because the altered displays do not incorporate a portion of a copyrighted work in some concrete or permanent form
Judge Pechman, in favor of Π
conclude preliminary injunction should be entered to enjoin Streambox
VCR and Ferret during pendency of this action (not the Ripper, though)
the Streambox VCR o Meets the first test for liability under the DMCA since it primarily is designed to circumvent the access control and copy protection measures that RealNetworks affords to copyright owners. o Second basis for liability is met because portion of the VCR that circumvents Secret Handshake has no significant commercial purpose other than to enable users to access and record protected content. o here, copyright owners have specifically chosen to prevent copying (contrast to Sony) o Copy Switch is also "effectively protects" because it restricts and limits the ability of people to make perfect digital copies of a copyrighted work o also have shown irreparable harm  will undermine confidence in RealNetworks' clients
the Ripper o Has legitimate purposes and commercially significant use. o little evidence that content owners use Ripper as a technological measure to prevent end-users from making derivative works o functions as a converter, not as a copier
the Ferret o Conclude that RealNetworks has raised serious questions going to the merits of the claim – have proffered evidence that end-users who install the Ferret are violating a license agreement.
RealNetworks allows users to see the copyrighted content but not to download it o RealMedia files: encoded music and video files o RealServer: the means by which Real Networks transmits the files over the web o RealPlayer: the software users on the receiving end use to play
RealMedia files
 software uses a "Copy Switch" intended to bar users from copying and a "Secret Handshake" to decode the
RealMedia content
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 the Snap! a contracted search engine added on their player, used to locate and retrieve files
the court holds that: o the Streambox VCR circumvents both technological measures, and clearly violates the anti-circumvention provisions of DMCA
 primarily designed to circumvent the access control and the copy protection measures of RealNetworks o Streambox, by offering it to users, also trafficked in it and violated the DMCA o Ripper does have a significant purpose other than circumvention
– to convert different file formats
 conversion can be used outside of this narrow context
 format, as such, is not a TPM  that is too broad
 cannot claim that format itself is a protection measure and every time someone changes it, they circumvent? no, this is too much o Ferret is not a problem under the DMCA, but under the
Copyright Act § 106(2), right to make a derivative work
 consumers who install the Ferret modify the graphic user interface (GUI), which is protected, such that they are creating a derivative work ii.
Universal City Studios v. Corley (DeCSS blogger)
Citation
Facts
Universal City Studios, Inc. v. Corley
273 F.3d 429 (2001)
plaintiffs are movie studios who had asked computer industries to develop the Content Searchable System (CSS), the encryption technology that motion picture studios place on DVDs to prevent unauthorized viewing and copying
Corley publishes a print magazine and maintains an affiliated website geared towards hackers
posted a copy of the description computer program "DeCSS" on his website, which was designed to circumvent CSS o the DeCSS program was developed by Johansen, a Norwegian teenager, and became widely available on the Internet o decryption program executable on Microsoft's OS
article by Corley detailed CSS hack and movie industry shut down efforts o posted copies of object and source code of DeCSS with the article o linked to other websites where DeCSS could be found
plaintiffs wrote cease and desist letters to Corley, and the sites refused to remove the DeCSS, and the plaintiffs brought an action seeking injunctive relief against Corley and others
Issue
History and
Precedent
1.
Whether First Amendment issues related to posting and linking to circumvention materials are valid.
Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573 (2d Cir. 2000) o taking an "evolutionary" approach to the task of tailoring constitutional rules to novel technological circumstances, favoring
"narrow" holdings that would permit the law to mature on a caseby-case basis
Univ City Stud, Inc. v. Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000) o require clear and convincing evidence that those responsible for the link know at the relevant time that the offending material is on the other side, know that it is circumvention technology that may not lawfully be offered, and create/maintain the link for the purposes of disseminating that technology
Court's
Ruling
Judge Newman, in favor of Π
the anti-trafficking and anti-circumvention provisions of the DMCA are
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Class Notes not susceptible to the narrow interpretations urged by defendants o Section 1201(c)(1) simply clarifies that the DMCA targets the circumvention of digital walls guarding copyrighted material, but does not concern itself with the use of those materials after circumvention has occurred o Section 1201(c)(4) language is clearly precatory – Congress could not "diminish" constitutional rights of free speech even if it wanted to o flaw in individual fair use argument in that it misreads Section
1201(a)(3)(A), and in any event, defendants offer no evidence that plaintiffs had authorized DVD buyers to circumvent encryption technologies for use on multiple platforms
Posting prohibition is content-neutral, and need not employ the least restrictive means of accomplishing the governmental objective. o need only avoid burdening substantially more speech than is necessary to further the government's legitimate interests o  the prohibition against posting DeCSS satisfies that standard
Linking prohibition difference because linking has both a speech and non-speech component (conveys information, but also brings content of another web page to the user's screen). o  the DMCA, as applied to the linking, served substantial government interests and was unrelated to the suppression of free expression
round 1: Corley and his friends posted the entire DeCSS code on his hacker website o suit was brought and district court issued injunction from him posting the DeCSS code on his site
round 2: Corley addressed all users of the site and asked them to post the code, and he linked to all the mirror sites (linking isn't posting!  ) o judge issued a second injunction for linking
now we're at the appeal o most direct challenge of the DMCA, claiming it was unconstitutional o the Copyright Clause claim: can lead to depletion of the public domain, and so is a violation of the "limited times requirement"
 companies can take public domain materials, that are not protected, and use a TPM to restrict access to those materials
 so § 1201 allows you to appropriate public domain materials o the First Amendment claim: code is protected speech and
Congress should not be able to prevent the dissemination of
 if code is protected as copyrightable, why isn't code protected speech?
 also tries to argue the DMCA was unconstitutional because it does not allow for a fair use exception
 hard to argue because it presupposed fair use is part of the constitutional design envisioned by the framers
Copyright Clause argument shot down o there was no proof at all that the DMCA leads to depletion of the public domain
First Amendment argument also rejected o code does come under the protection of the First Amendment, but there is an issue with the scope of the protection
 allow it to be disseminated creates hazards for society above and beyond the speech element, then chaos will result – people can break security codes of ATMs, banks, etc. and claim First Amendment protection
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o  code is both expressive and functional o this is content-neutral regulation that targets non-speech elements
 when regulation by govt is content-based, then subject to strict scrutiny standard (and likely to be invalid)
 Turner test: if it's a content-neutral restriction on speech and only has an incidental effect on the speech elements, then is okay if:
 1) promotes a substantial government interest
 2) not burden substantially more speech than is necessary to further the government interest o there is a lot of room here for the govt o all need to show is that DMCA doesn't burden more speech than necessary o govt likely to always win under this test o regulating posting is fine under the Turner test o linking test is slightly different
 require clear and convincing evidence that those responsible for the link:
 knew of the presence of the offending technology on the linked-to site
 knew that the technology on that site is illegal
 created and maintained the link for the purpose of disseminating the offending technology
 under this test, Corley can be enjoined
 Parchomovsky: note that the knowledge and evidence requirements are very high for this test
 the district court judge thought about this test a lot and the Second Circuit approved it
 do not want people to just be infringing by linking, so it is an intent-based test o the fair use challenge
 court finds no authority for Corley's proposition that fair use is a constitutional requirement
 the very predicate of the argument is invalid
 also find it beyond the scope of the present argument because Corley never raised a fair use defense
 also, at the time of the suit, there was little data about the impact of the lack of fair use exception in the DMCA
 also, fair use does not imply a privilege to copy a work in its original format
 Parchomovsky: this is a weak argument, but matters little
Fair Use and Affirmative Defenses
I.
Fair use, generally a.
fair use is the strongest and most widely used defense in copyright i.
developed in courts of equity, and remains an equitable rule (fairness considerations and attempt to do justice between parties) even though codified b.
fair use codified in § 107 i.
preamble lists 6 uses that are presumptively fair
1.
the presumption is pretty weak a.
these are not safe harbors, courts give these some weight, not a lot b.
cannot rest on the fact that the use is one of the ones listed, is just the starting point ii.
the 6 uses
1.
1) criticism, 2) comment, 3) news reporting, 4) research, 5) scholarship, 6) teaching
2.
this list is merely illustrative, and is not exhaustive
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3.
things they have in common a.
enhance the public interest, non-commercial usually, have public and educational use b.
have transformative nature, add to the pool of expression c.
referential , need to rely on pre-existing materials, is in nature of the activity iii.
the four tests of fair use (see below)
II.
Purposes and justifications a.
purpose of fair use i.
a safety mechanism for courts to prevent copyright law from going wrong ii.
Second Circuit explained fair use as permitting "courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which the law is design to foster"
1.
Iowa State Univ. v. ABC (2d Cir. 1980) iii.
Parchomovsky: is a striking doctrine
1.
essentially sanctions non-consensual takings/uses of copyrighted expression
2.
can be analogized as a private takings power
3.
taking of tangible property vs. taking of expressive property a.
identity of taker i.
tangible: the government ii.
expressive: private actors, the fair users b.
compensation given i.
tangible: "just compensation," market value ii.
expressive: nothing, it is free
4.
not a limitless power, though b.
justifications behind fair use i.
concerns about censorship
1.
suppressing comment or criticism about their works
2.
copyright owners overreaching
3.
First Amendment implications, free speech ii.
differences in the nature of the asset
1.
non-rivalry in the consumption (owners can still use the work while other people are using it, too)
2.
possibility for more or improved expression through access and use of pre-existing expression a.
increasing use creates more (contrast to depletion of physical goods) iii.
transaction costs
1.
very influential justification (article by Wendy Gordon, in the 1980s)
2.
changes the valuation – even if a person is willing to pay a certain price for a use, the author's asking price + the transaction costs will put the price over what the user is willing to pay a.
20 < 18 + 10
3.
in a world with fair use, the owner does not lose anything, non-rivalry resource a.
net +20 for the world
4.
in a world without fair use, the user does not want to go through with it a.
net 0 because nothing happened
5.
illustrates how fair use can promote efficiency, increases use without harming the owners
6.
is this an effective theory? a.
technology is constantly lowering transaction costs b.
the institutional limitations of courts i.
in the real world, we don't really know what the reserve price of user really is ii.
it is not in reality so easy to identify this gap in which fair use would be worthwhile
III.
Four-factor test of fair use - § 107 a.
1) the nature and purpose of the allegedly infringing use i.
commercial = bad for fair use / non-commerical = good for fair use ii.
transformative uses = good for fair use / superseding uses = bad for fair use
1.
transformative is taking preexisting expression, adding or altering it, and creating something different a.
origins in English common law b.
the level of difference varies
2.
superseding is taking the preexisting expression and trying to usurp it without adding to it b.
2) the nature of the allegedly infringed (original) work i.
factual works = good for fair use / non-factual works = bad for fair use
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1.
as far as factual works are concerned, access is more important
2.
want public to have greater access to factual works than to non-factual ones
3.
result means greater protection to non-factual uses, counterintuitive ii.
published works = good for fair use / unpublished works = bad for fair use
1.
for a while, courts categorically refused to acknowledge fair use when work was not published
2.
tendency was so strong that Congress amended § 107, providing explicitly that just because the work was not published, it was not a bar to finding of fair use a.
want to respect autonomy of author and choice to publish b.
do not want people to force authors to publish c.
Parchomovsky: there is a strong argument against this rule i.
by incentivizing publication, increase pool of knowledge for the world c.
3) the amount and substantiality taken i.
focus on proportionality: trying to determine the amount that the defendant took relative to the entirety of the original ii.
quantitative dimension
1.
taking more = worse for fair use / taking less = better for fair use iii.
qualitative dimension
1.
taking most valuable part of the work ("the heart") = worse for fair use a.
ex: the pointing part of the Sistine Chapel
2.
cherry-picking the best parts d.
4) the effect on actual and potential market for the copyrighted (original) work i.
negative impact = worse for fair use / positive impact = better for fair use ii.
potential markets concerns the right to make derivative works, about the whole package of incentives to the copyright owner iii.
court must take into account the fact that they are sanctioning a whole range of uses when approving iv.
there is a link to the 1 st prong
1.
transformative use may help with positive impact
2.
more likely that a superseding use will take away market e.
problems of the 4 factor test i.
unclear how to weigh the factors in relation to each other
1.
courts refuse to say which test dominates, flip-flop around
2.
in 1980s, courts seemed to think that commercial use was dispositive, until Acuff-Rose decision ii.
Parchomovsky: using an equitable test makes the outcomes really uncertain iii.
hard to predict where courts will go, no clear answer, depends on how you argue it iv.
from the case law, it seems like factors 1 and 4 are more important, and 2 is less important v.
Parchomovsky: the analysis of market effect is sketchy, in practice
1.
nothing really substantive in the analysis
2.
just need to show that you have lost a sale
3.
courts just buy the arguments made without too many questions asked
IV.
Parody a.
distinction between parody and a satire i.
both use pre-existing material to make a new point ii.
a satire takes a pre-existing work to pass criticism on some external phenomenon, aspect of life iii.
a parody takes a prior work and targets that very work iv.
if there are elements of both, then the work should be treated as a parody
1.
because bottom line is that it's still criticizing the original b.
why do satires get less protection than parody? i.
the public benefit of parody is not the source of distinction ii.
to parody something, you require that specific work to make the point
1.
it's a bilateral monopoly
2.
to make a satire, you do not have to access a particular work (any song would do) iii.
parodies usually make fun of or criticize the original, and no copyright owner would allow that to happen, would never give permission
1.
if they do, they will exert some censorship over the parody
2.
if you want parodies to have "bite" and real commentary, need to do it through fair use
3.
there are certain types of transaction costs that will never go away (some will be corrected by technology, but this is not one of them) c.
Parchomovsky: Campbell case changed the face of fair use i.
until this case, system was applied uniformly across all works
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ii.
this case bifurcated the works
1.
if you can show parody, you will win  a parody safe harbor
2.
if you can't, you will lose iii.
problem with safe harbors is that you create discontinuity in the law iv.
side effect is that everyone's going to argue that they are a parody
1.
does the post hoc justification matter?
2.
the point of property rights is to encourage transactions a.
if you require that you must permission and cannot pursue anything (cannot argue fair use) if denied, then it would create ex ante incentives for people to circumvent the permission requirement b.
Parchomovsky: this would be bad, do not want to discourage transactions with rights holders i.
do not penalize people who try to do the right thing
V.
New technologies a.
the Internet was a new kind of technological challenge to the fair use doctrine b.
Kelly raised issues under the copyright management provisions of § 1202, but on appeal it was decided primarily on fair use grounds
VI.
Related cases a.
Harper & Row Publishers, Inc. v. Nation Enterprises (Ford's unpublished memoir)
Harper & Row, Publishers, Inc. v. Nation Enterprises
Citation
Facts
471 U.S. 539 (1985)
Gerald Ford contracted with Harper & Row to write his memoirs
as the book was nearly completion, Harper & Row contracted with Time to have excerpts published in an issue about 1 week from the release of the entire book
an undisclosed source provided a stolen copy of the unpublished manuscript to The Nation, a magazine, which wrote an article about Ford that lifted directly from the manuscript
as a result of The Nation's article, Time cancelled its agreement
Harper & Row brought suit for copyright infringement
Issue
History and
Precedent
Court's
Ruling
1.
To what extent does the "fair use" provision of the Copyright Revision Act of 1976, § 107, sanctions the unauthorized use of quotations from a public figure's unpublished manuscript.
Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975) o rights conferred by copyright are designed to assure contributors to the store of knowledge a fair return for their labors
American Tobacco v. Werckmeister, 207 U.S. 284 (1907) o under common law copyright the property of the author in his creation was absolute until he voluntarily parted with the same o fair use doctrine was predicated on the author's implied consent to
"reasonable and customary" use when he released his work for public consumption o traditionally not recognized as a defense for charges of copying from unpublished work
right of first publication implicates a threshold decision by the author whether and in what form to release his work
Wooley v. Maynard, 430 U.S. 705 (1977) o freedom of thought and expression includes both the right to speak freely and the right to refrain from speaking at all
Justice O'Connor, in favor of Π
Taking verbatim excerpts from an unpublished manuscript is not fair use, and judgment of Court of Appeals is reversed and remanded.
agree with Court of Appeals that copyright is intended to increase and not impede the harvest of knowledge – but believe the Second Circuit gave insufficient deference to the scheme established by the Copyright Act for fostering original works that provide the substance of this harvest
The unpublished nature of a work is a key, though not necessarily determinative, factor – tending to negate a fair use defense.
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Concurrence or Dissent
Class Notes o author's control of first public distribution implicates his personal interest in creative control but his property interest in exploitation of prepublication rights o author's right to control first public appearance will outweigh a claim of fair use
even though newsworthy, defendants do not assert any actual necessity for circumventing the copyright scheme with respect to the types of works and users at issue here o no legitimate aim is served by preempting the right of first publication o fact that the words themselves are newsworthy is not independent justification for unauthorized copying o see no warrant for expanding the doctrine of fair use to create what amounts to a public figure exception to copyrights
fair use analysis o purposes of use  commercial, user stands to profit from exploitation of the copyrighted material o character of use  knowingly exploited a purloined manuscript o nature of copyrighted work  greater need to disseminate factual works than fiction or fantasy, but The Nation was not just reporting but copying the expressive elements and subjective views of Ford, also took from an unpublished work (scope of fair use of an unpublished work is narrower) o amount and substantiality of portion used  The Nation took what was essentially the heart of the book, although it only quoted a few lines directly, expressive value and key role o effect on market  single most important element of fair use, did impair marketability – in fact, Time cancelled its serialization, need only show that the use should become widespread and would adversely impact the potential market of the original
Justice Brennan, dissenting
the Court holds that The Nation's quotation of 300 words from an unpublished 200,000 word manuscript infringed the copyright, even though the quotations related to an historical event of undoubted significance
progress of arts and sciences and the robust public debate essential to an enlightened citizenry are ill served by this constricted reading of the fair use doctrine
The Nation article used 300-400 words from the manuscript, and the total article was about 2,250, making 13% lifted from the manuscript
O'Connor's opinion o frames the analysis around the right of first publication
 saying that the right of first publication is different from the § 106 rights in that only 1 person can be the first to publish
 this infringement is more severe, taking away that right from the owner o the First Amendment in relation to infringement case
 court suggests that Congress already incorporated First
Amendment considerations when writing Copyright Act
 ex: idea/expression dichotomy
 if strengthen fair use too much by bringing in First
Amendment, will weaken incentive to create
 public figures will not want to write memoirs o the fair use analysis itself
 nature/purpose of use  does not seem to matter much that it is the news, a commercial use, just quotes passages
(not very transformative), The Nation acted in bad faith,
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knew they had received a stolen manuscript and went ahead with use anyway
 nature of the work  a factual work, but that does not seem to matter much, is unpublished
 amount of use  only used 1% of the manuscript,
O'Connor does something different – looking at the amount of the use in the allegedly infringing use, was 13% of the article, this is a new analysis, had not been done before this case
 but O'Connor focused on qualitative aspect, not quantity – they took the heart of the work and the only reason anyone would buy the memoir
 effect on the market  lost a contract with Time magazine, lost $25,000 o Brennan's dissent strongly disagrees with majority
 argues that fair use analysis by the majority is unduly restrictive
 overprotective approach of majority jeopardizes the robust public debate that the First Amendment is supposed to foster
 goes against the basic idea/justification of copyright law, and impedes, rather than promotes, the progress of science and the useful arts o Parchomovsky: this case is very important
 added 3 factors that did not appear in § 107 itself
 1) bad faith on part of defendant is a central part of the fair use analysis o it colored O'Connor's view of the case and her analysis
 2) adding a dimension to 3 rd prong by looking at proportionality in reference to the defendant's work, too (2 benchmarks, now, not 1)
 3) industry standards of practice o ex: scooping the news in journalism o didn't end up affecting subsequent case law too much
 think these additions are legitimate
 fair use was born as an equitable doctrine o in equity, good and bad faith make all the difference in the world o fits into the overall framework
 defendant proportionality, less clear this was needed
 industry standards isn't very new, but also not known sometimes so not dispositive
 this case is a closer call than O'Connor made it out to be
 the use is transformative, not highly so, but The
Nation clearly added content to the parts it took o the commercial aspect came to dominate
O'Connor's analysis
 work is factual and that should help the fair use o this really is newsworthy – why Ford decided to pardon Nixon – public really cares about it o the unpublished nature of it also colored her analysis o this is not the classic case of unpublished works – this book was about to be
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published
 1% is not a lot o what is the "heart"? the "heart" here is purely factual, not the expression o this is about history, it's about something that can't be protected – facts of history o it could be that The Nation helped to stimulate interest and publicity in sale of the book  this never even entered into analysis, which was lopsided b.
Castle Rock Entertainment, Inc. v. Carol Publishing Group (Seinfeld trivia book)
Citation
Facts
Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc.
150 F.3d 132 (1998)
Golub wrote a Seinfeld trivia book, "The Seinfeld Aptitude Test" ("The
SAT"), which is distributed by Carol Publishing Group
contains color photos and questions and answers about events and characters depicted on the sitcom, "Seinfeld" o although she wrote the false answers for the multiple choice, the correct questions and answers all source a moment from a
Seinfeld episode
at first, did not provoke a challenge from producers, and no evidence that the book detracted from profitability of show
Castle Rock, the producer and copyright owner of each episode, brought suit, claiming copyright infringement
Issue
History and
Precedent
1.
Whether a trivia quiz book about a television sitcom takes enough protected expression from the original that it would be infringing the copyright of the show.
2.
If so, whether such book would constitute fair use of the show.
Ringgold v. Black Entertainment Television, Inc. o sets a quantitative copying threshold
Arica, Inc. v. Palmer, 970 F.2d 1067 (2d Cir. 1992) o the ultimate test of fair use is whether the copyright law's goal of promoting the progress of science and the useful arts (Copyright
Clause) would be better served by allowing the use than by preventing it
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)
Court's
Ruling o the amount of use in the fair use test (3 rd factor) must be examined in context, and rests upon inquiry of whether the extent of copying is consistent with or more than necessary to further the purpose and character of the use o the effect of the use on the market in the fair use test (4 th factor) must take account of harm to the market for derivative works
(those markets that creators of the original works would in general develop or license to others to develop)
Judge Walker, in favor of Π
The trivia book in this case is not a commentary or criticism of the show, and is not protected under fair use.
"The SAT" has copied from Seinfeld o copied 643 fragments form the show o the characters and events spring from the imagination of
Seinfeld's authors, and the book plainly copies copyrightable, creative expression (not like they are copying an idea) o easily passes threshold of substantial similarity between the contents of the book and the show
the fair use analysis o purpose/character of use  any transformative purpose
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Class Notes possessed by the book is slight to non-existent, reject argument that the book was created to educate viewers or to criticize the show, plain purpose is to satisfy fans' passion
 just because derivative, not necessarily transformative o nature of the work  fictional nature of original work remains significant, where the secondary use is at best minimally transformative o amount of use  the fact that the book has little transformative purpose gives little justification for the extent of copying found in the book, purpose was entertainment and not commentary o effect of use on the market  "The SAT" substitutes for Seinfeld's derivative market, although Castle Rock has expressed little interest in this kind of derivative work, copyright law must respect that choice of the original author
 the concern is not destruction of market itself but whether the secondary use substitutes for the market
(including the derivative market) of the original work
initially, the reaction from Seinfeld executives was positive
but then Castle Rock decided start to be more selective with their market and was thinking about entering it itself, sue for copyright infringement
the fair use analysis o nature/purpose of use  a commercial use, but not dispositive, court seems to focus more on the fact that it is non-transformative
 defendants tried to argue 1) that it was a work of comment/criticism/scholarship, like a review, and 2) that it was an exercise in deconstruction to expose show's
"nothingness"
 these arguments did not sit well with the court, summarily dismissed, held that the book merely repackages the TV series and only minimally alters
Seinfeld's expression
 found minimal transformation o nature of the work  fictional work, less subject to fair use o amount of use  found that too much was taken, took 643 segments from the TV series, if this is a criticism about "nothing," then you don't have to take this much (court is using defendant's transformation argument against them) o effect on the market  substitution of a potential derivative market for the copyright owner to exploit
Parchomovsky: this presents basic dilemma of who should have control over the derivative market, how much flexibility should be given to the owner to exploit the § 106(2) right o argument can be made that the court could have recognized fair use – this derivative market does not matter much to whether or not Seinfeld would continue to be produced, does not matter much to 3 rd parties
this is a case of cultural platforms o certain expressive works become so popular, so influential, that they become cultural staples o Parch is arguing that such works should get less protection o the most successful works should be more easily accessible and more leniently used, and fair use should be more easily granted o the value to the public of being able to use these works is very high – if we restrict speech about them, the loss is significant
what is bothersome about this case is that it has to do with unjust enrichment o making a profit at the expense of Castle Rock o but if not making a profit (e-mailing trivia questions to your friends), not charging a price, the circulation is much more
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widespread because it is free c.
Hustler Magazine, Inc. v. Moral Majority, Inc. (note case – Hustler caricature) i.
796 F.2d 1148 (9 th Cir. 1986) ii.
Falwell made over 1 million copies of a "Hustler" caricature of him and sent it to his followers for fundraising purposes iii.
9 th Circuit held that the use was fair
1.
equitable rule of reason
2.
after weighing all 4 factors, found it to be okay d.
Time, Inc. v. Bernard Geis Associates (note case – stills from film into book) i.
293 F. Supp. 130 (S.D.N.Y. 1968) ii.
defendant used pictures/stills from a "Time" film in a book iii.
found that the use of the work was fair
1.
the right of the public to know outweigh copyright owner's interest in protecting the copyright e.
Campbell v. Acuff-Rose Music, Inc. (Pretty Woman parody)
Citation
Facts
History and
Precedent
Court's
Ruling
Concurrence or Dissent
Campbell v. Acuff-Rose Music, Inc.
510 U.S. 569 (1994)
Orbison and Dees wrote a rock ballad, "Oh, Pretty Woman" and assigned their rights to Acuff-Rose Music
Campbell and others, known collectively as 2 Live Crew, a rap group, wrote a song, "Pretty Woman," which was intended to satirize the original
notified Acuff-Rose of their song, and credited Orbison for the original, and said would be willing to pay a fee for the use
Acuff-Rose's agent refused permission, but 2 Live Crew still released the song on their album
nearly a year later, Acuff-Rose brought suit for copyright infringement
House Report on Copyright Act o § 107 was meant to restate the present judicial doctrine of fair use, not to change, narrow, or enlarge it in any way o calls for a case-by-case analysis o the four statutory factors may not be treated in isolation, and all are to be explored and results weighted together in light of the purposes of the Copyright Act
Justice Souter, in favor of Δ
Hold that a parody's commercial character is only one element to be weighed in a fair use inquiry, and that insufficient consideration was given to the nature of the parody in weighing the degree of copying.
fair use analysis o purpose/character of use  parody has an obvious claim to transformative value o nature of work  Orbison's song falls within the core of copyright's protective purposes, but this does not help much in cases of parody o amount of use  the Court of Appeals was insufficiently appreciative of parody's need for the recognizable sight or sound of the original, must only be no more than necessary
 copying does not become excessive in relation to parodic purpose merely because the portion taken was the original's heart o market effect of use  to the extent that the opinion below evaluated the effect on parodies of "Oh, Pretty Woman," the court erred, and must consider substantial harm to the rap music derivative market (for which there was no evidence, must evaluate on remand)
 do not suggest that a parody may not harm the market value, but difference between destroying it with criticism of parody rather than substitution
Justice Kennedy, concurring
parody may qualify as fair use only if it draws upon the original composition
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Class Notes to make humorous or ironic commentary about the same
it is not enough that a parody use the original in a humorous fashion, however creative – parody must target the original and not just its general style or society at large
future courts must take care to ensure that not just any commercial take-off is rationalized post hoc as a parody
asked for rights to use the song at the beginning, seemed like they wanted to record their own rap version of the song
the basis of the parody claim = play on words, substituting predictable/bland lyrics with shocking ones o trying to comment on unoriginality and simplistic lyrics of original
(like the Seinfeld nothingness argument)
the Supreme Court decides this is a parody, and is fair use o 2 Live Crew's version may reasonably be viewed as such
 Parchomovsky: reasonableness stand is appropriate here o 2 Live Crew juxtaposes the romantic musings of a man whose fantasy comes true with taunting and demands for sex
the fair use analysis o purpose/character of use  it is commercial but it is a parody, has transformative value, so commercial purpose should not have too much weight, should instead focus more on the transformativeness
 parodies are inherently transformative, are the pinnacle of transformativeness, large public benefit/value from existence of parodies o nature of work  commercial and published song, also creative and not factual, typically this is a strike against fair use, but not in case of parody
 court finds that this factor is irrelevant in parody cases o amount and substantiality of use  took the baseline and some lyrics, and structure of song
 in parody, allowed to take more of original in order to conjure up the original, must assure identification
 but court does not stop there  however much more beyond the minimum permissible depends on specific circumstances of every case
 parodies can take heart of original, do not have to settle for bare minimum necessary to assure identification, no constraint, everything is context-specific o effect on market  generally, commercial is a negative strike
 court identifies two markets effected
 direct market: no harm o difference between substitution and destruction o parody song is not meaning to substitute the original, targeting a different audience o harm resulting from people disliking the original song, after the parody, is not legally cognizable
 indirect market: not enough evidence shown, remand o market for derivatives (in this case, rap song derivatives) o Acuff trying to argue that they want to license another rap version, and song took that market
note this can't qualify for mechanical license because you cannot substantively change the original f.
Suntrust Bank v. Houghton Mifflin Company ("The Wind Done Gone")
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Citation
Facts
History and
Precedent
Court's
Ruling
Concurrence or Dissent
Suntrust Bank v. Houghton Mifflin Co.
268 F.3d 1257 (11 th Cir. 2001)
Suntrust Bank is a trustee of the Mitchell Trust, which holds the copyright for "Gone With the Wind," one of the best-selling books in the world o manages the copyright and approves derivative works
Randall, author of "The Wind Done Gone," claims her novel is a critique of the original's depiction of slavery and Civil-War era American South o to that end, she appropriated characters, plot, and major scenes from "Gone With the Wind"
Suntrust asked her publisher, Houghton Mifflin, to refrain from publishing and distributing Randall's book, but they refused
Suntrust filed an action alleging copyright infringement, violation of the
Lanham Act, deceptive trade practices; filed motion for TRO and preliminary injunction
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) o the Supreme Court held that a parody, although not specifically listed in § 107, is a form of comment and criticism that may constitute fair use of the copyrighted work being parodied o parody, which is directed toward a particular literary or artist work, is distinguishable from satire, which more broadly addresses the institutions and mores of a slice of society o a parody needs to mimic an original to make its point o parody must at least be able to conjure up enough of the original work to make the object of its critical wit recognizable
Judge Birch, in favor of Δ
Copyright does not immunize a work from comment and criticism.
Just because a parody must borrow elements from an existing work, it does not mean that every parody is shielded from a claim of copyright infringement as a fair use.
fair use analysis o purpose and character: undoubtedly a commercial product, but for-profit status is strongly overshadowed and outweighed in view of its highly transformative use of Gone With the Wind's copyrighted elements o nature: there is a hierarchy of copyright protection in which original, creative works are afforded greater protection than derivative works or factual compilations – this factor given little weight in parody cases, since parodies almost invariably copy publicly known, expressive works o amount: a use does not necessarily become infringing the moment it does more than simply conjure up another work, rather once enough has been taken to assure identification, how much more reasonable will depend on the overriding purpose and character of the parody to the original o effect on market: evidence of how much other derivative works pay is not indicative, instead depends on likelihood to displace sales, which is not shown here
Judge Marcus, specially concurring
want to write separately to emphasize that, on this limited record,
Suntrust has fallen well short of establishing a likelihood of success on its copyright infringement claim
stress 3 points o district court erred by finding that the critical or parodic element of "The Wind Done Gone" is anything but clear-cut; it is unequivocally a parody o in service of this parody, Randall radically reshapes what she borrows from Mitchell; the purpose and nature prong of fair use analysis is not a close call, clear cut
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Class Notes o the preliminary record, if anything, suggests that "The Wind
Done gone" will not act as a substitute for Mitchell's original; the two books aim at different readerships
what Alice Randall took o mentioned Gone With the Wind in the introduction o copied core characters (with different names), character traits, and relationships o copied dialogue? (Randall did not admit to this)
the district granted the injunction  this is a big deal! does not usually happen that a book is forbidden from publication
the 11 th Circuit characterizes this case as a parody (Randall wins!) o looks at history of copyright law  finds 3 goals: promotion of learning, protection of public domain, and protection of rights of authors o the fair use analysis, replicating the analysis from Campbell
 purpose/character of use  commercial, but particularly transformative because it is a parody
 nature of work  original, creative work, but it is a parody, so this is less relevant
 amount and substantiality of use  a parodist can take as much as necessary to assure identification of the original, no need to take absolute minimum, can take the heart
 effect on market  again see this policy of the courts not finding a cause of action for harm to market has a result of parodies
the copyright law cannot be used to protect an artist's reputation or view of the world o the estate refused to license the work with certain worldviews
(with same sex or biracial relationships) o trying to suppress certain viewpoints o there is bad faith here too, unclean hands (like O'Connor's view of defendant in Harper Row) o if this an equitable doctrine, let's look at the equity on both sides
this book didn't sell well o had to market itself as a parody, hurts the sale of the work o public thinks that a parody should be funny, and may be less inclined to buy it o Parchomovsky: does not think we should stamp it with the term
"parody" just to get fair use protection, should have gotten fair use protection regardless
 if not for Campbell, would never need to call it a parody
 should do away with this parody distinction g.
Ty, Inc. v. Publications Int'l, Ltd. (Beanie Babies Collectors Guides)
Ty, Inc. v. Publications Int'l, Ltd.
Citation
Facts
Issue
292 F.3d 512 (7
th Cir. 2002)
Ty manufactures Beanie Babies, a collectible plush toy, each copyrighted as a "sculptural work" by Ty
Publications Int'l (PIL) published a series of books about Beanie Babies, containing color photographs of them o "For the Love of Beanie Babies" – text is childish and secondary to the full-page color photographs o "Beanie Babies Collector's Guide" – small paperback book with small print, oriented towards adult collectors, with information about the secondary market values and retirement dates, etc.
Ty brought suit for copyright and trademark infringement
1.
Whether the books containing color photographs of Beanie Babies fall
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Court's
Ruling
Class Notes under the fair use exception.
Judge Posner, in favor of Δ
"For the Love of Beanie Babies" might be thought essentially to be just a collection of photographs of Beanie Babies, which have been conceded to be derivative works.
But the collectors' guides are not derivative works. o do not recast, transform, or adapt anything o very much like a book review, which cannot be supposed to be a derivative work o collectors' guides are critical and evaluative as well as purely informational, and an owner of a copyright does not confer a legal right to control public evaluation of the work o Ty is attempting to control the collectors' guides market as well by prohibiting the use of the color photographs – a guide without any would not do well in the market
the four factors of fair use are things to be considered, and are not exhaustive, so Ty cannot defend only by arguing that some or even all of them favor them
while summary judgmt may not be warranted with regard to all books, it might be warranted for some (like "For the Love of Beanie Babies")
instead of looking at 4 factors of fair use, looks at economic theory o finds that there are uses that substitute for the original (not fair) and uses that complement the original (fair)
 substitutes: nails and screws, coffee and tea, one product's increased demand decreases demand for other
 complements: nails and hammers, coffee and sugar, one product's increased demand also increases the demand for the other
two books at issue o "For the Love of Beanie Babies"
 finds this to be unfair use
 just photo collections, copies of the derivative works o "The Beanie Babies Collector Guide"
 Posner calls this a book review (Parch: this is more of a product review)
 finds this to be fair use
Posner's new unique spin  this is not just about parody o there are products out there that are similar – book reviews, product reviews, commentary, etc. that are supposed to help the public to purchase – should not only be controlled by the copyright owner o there are a lot of value to the book reviews o cannot be entrusted to copyright owners, we want an independ. market for review and criticism, same value as parody o should drop this binary distinction between parodies and everything else
should grant fair use protection to uses that would not happen by permission  need to build consumer trust and info to public o as a whole, will make industry more profitable o would be better off when have independent review, rather than biased
Parchomovsky: case is important, shows a change that gets us out of the parody/everything else bifurcated system o but this is not a huge innovation, didn't rewrite the 4 factor test o he just collapsed entire test into the 4 th prong (the market effect) h.
Kelly v. Arriba Soft Corp. (online thumbnails)
111

Citation
Facts
History and
Precedent
Court's
Ruling
Class Notes
Kelly v. Arriba Soft Corp.
336 F.3d 811 (2003)
Kelly is a professional photographer who has copyrighted many of his images of the American West, which are located on his website or other websites with which he has a license agreement
Arriba Soft operates an internet search engine o engine crawls the web, downloads and creates thumbnails of images online, which can be clicked to enlarge into the original size, and creates a link back to the original source
when Kelly discovered this copying of his photographs, he brought suit
Nunez v. Caribbean Int'l News Corp., 235 F.3d 18 (1 st Cir. 2000) o the First Circuit found that copying a photograph that was intended to be used in a modeling portfolio and using it instead in a news article was a transformative use o creating a new meaning or purpose for the work
Sony Computer Ent. America, Inc. v. Bleem, 214 F.3d 1022 (9 th Cir. 2000) o Bleem copied "screen shots" from Sony computer games and used them in its own advertising, it was a fair use o in finding that the first factor weighted in favor of Bleem, court noted that the comparative advertising redounds greatly to the purchasing public's benefit with very little corresponding loss to the integrity of Sony's copyrighted material
Judge Nelson, in favor of Δ
The creation and use of the thumbnails in the search engine is fair use. o purpose/character of use  found to be transformative, made smaller lower-res images for an entirely different function, informative not aesthetic, was commercial but not very exploitive in nature (not trying to sell Kelly's images) o nature of work  photographs are generally creative, and were published, in favor of Kelly o amount and substantiality of use  weighs for neither party, although he copied the whole thing, it was reasonable to do so for his purposes, and he copied smaller versions o effect of the use upon potential market  did not harm market or value of images, thumbnails are not a substitute for the full-size and guided users to his site, rather than away
however the district court should not have decided whether the display of larger image is a violation of Kelly's exclusive right to publicly display his works  so remand for further proceedings o the parties never moved for summary judgment on this claim and
Arriba never conceded prima facie case as to the full-size images
first issue is thumbnails, downloaded from other websites  fair use o purpose/character of use  find use is commercial, but non-
exploitative, thumbnails serve no aesthetic purpose, unlike originals, and are transformative
 the use does not displace any sales, images were in reduced form, and do not harm business of Kelly – no person would prefer them over the original, and it was impossible to blow up the thumbnail
 is transformative – Arriba's website totally dif purpose
 does not adopt a narrow focus and only look at expression, but instead, looking at the technology
(search engine) as a whole
 if you want to have image search engines, must allow thumbnails o nature of work  find some weight to Kelly, this is a creative and original work o amount and substantiality of use  find used as much as
112

necessary (taken from parody analysis) – neutral
 given the technology, have to use image in its entirety, is a visual work, cannot just give a piece of an image o effect on market  find no negative effect on the market, no substitution in sales, and can only help Kelly
second issue was the in-line linking (framing), which would show the original image inside the Arriba webpage (why?  trying to make sure your own ads are seen)  implying no fair use o purpose/character of use  commercial, and not transformative, does not add anything to the search engine o nature of work  find some weight to Kelly, this is a creative and original work o amount and substantiality of use  too much was taken o effect on market  negative effect on market, because Arriba gets advertising revenue that the artist could have otherwise gotten, keeping users on their own site
113

Copyright Outline (Fall 2009) – Jennifer Tam
I.
Copyright law in general ........................................................................................................................................................................ 1 c.
federal copyright law ........................................................................................................................................................................... 1
II.
Intellectual property law ........................................................................................................................................................................ 1 c.
federal patent law ................................................................................................................................................................................. 1
d.
federal trademark law.......................................................................................................................................................................... 2
e.
state intellectual property law ............................................................................................................................................................ 3
f.
international copyright ........................................................................................................................................................................ 4
I.
History of copyright ................................................................................................................................................................................. 5
II.
Theories behind copyright ..................................................................................................................................................................... 6 a.
utilitarian conception (incentive theory) ........................................................................................................................................... 6
b.
natural law conception (Locke's labor theory) ................................................................................................................................. 7 c.
Hegel's personality theory .................................................................................................................................................................. 7
d.
Netanel's democratic paradigm .......................................................................................................................................................... 8 e.
other rhetorics ....................................................................................................................................................................................... 8
I.
Requirements of copyright protection ................................................................................................................................................. 9
I.
Fixation, generally .................................................................................................................................................................................... 9
IV.
Related cases....................................................................................................................................................................................... 10 a.
Goldstein v. California (note case – "writings") ............................................................................................................................. 10 b.
White-Smith Music Publishing Co. v. Apollo Co. (note case – piano rolls) ............................................................................... 10
c.
Midway Manuft'g Co. v. Artic Int'l, Inc. (PacMan and PuckMan) .............................................................................................. 11 d.
MAI Systems Corp. v. Peak Computer, Inc. (note case – turning on computer) ....................................................................... 11
e.
Hemingway v. Random House (note case - speeches) .................................................................................................................. 12
I.
Originality, generally ............................................................................................................................................................................ 12
III.
Photographs ........................................................................................................................................................................................ 12
IV.
Related cases....................................................................................................................................................................................... 12 a.
Atari Games Corp. v. Oman (note case – Breakout game) ........................................................................................................... 12
b.
Acuff-Rose Music, Inc. v. Jostens, Inc. (note case – "got to stand for something") .................................................................... 13 c.
Burrow-Giles Lithographing Co. v. Sarony (Oscar Wilde photo) ............................................................................................... 13
d.
Mannion v. Coors Brewing (note case – athlete billboard) ........................................................................................................... 14 e.
Bleistein v. Donaldson Lithographic Co. (circus ad) ..................................................................................................................... 14
I.
Idea/Expression Dichotomy ................................................................................................................................................................. 15
d.
related cases ........................................................................................................................................................................................ 16 i.
Baker v. Selden (account books) .................................................................................................................................................. 16
ii.
Eldred v. Ashcroft (note case – term extension) ........................................................................................................................ 17 iii.
Herbert Rosenthal Jewelry Corp. v. Grossbardt (note case – bee pins).................................................................................. 17 iv.
Satava v. Lowry (note case – jellyfish sculpture)....................................................................................................................... 17
II.
Merger Doctrine ..................................................................................................................................................................................... 17
c.
related cases ........................................................................................................................................................................................ 18 i.
Morrissey v. Proctor & Gamble (note case – sweepstakes language) ..................................................................................... 18 ii.
CCC Information Services, Inc. v. Maclean Hunter Market Reports, Inc. (note case – Red Book) ..................................... 18
III.
Government Works - § 105 ............................................................................................................................................................... 18
i.
related cases ........................................................................................................................................................................................ 20 i.
Wheaton v. Peters (note case – federal statutes) ........................................................................................................................ 20 ii.
Matthew Bender & Co. v. West Publishing Co. (note case - headnotes) ................................................................................ 20 iii.
Schnapper v. Foley (note case – independent contractors for govt) ....................................................................................... 20 iv.
Veeck v. Southern Building Code Congress International (privately drafted codes) .......................................................... 20
v.
Practice Mgmt. Info. Corp. v. Amer. Med. Ass'n (AMA) (note case – medical procedure coding system) ...................... 22
I.
Works of authorship, generally ........................................................................................................................................................... 22
I.
Literary works - § 102(a)(1) ................................................................................................................................................................... 22
II.
Computer programs - § 102(a)(1) ......................................................................................................................................................... 24
III.
Related cases....................................................................................................................................................................................... 25
114

a.
Chase-Riboud v. Dreamworks, Inc. (note case – Spielberg historical movie) ............................................................................ 25 b.
Miller v. Universal City Studios, Inc. ("based on a true story") ................................................................................................... 25
c.
Nash v. CBS, Inc. (note case – movie about Dillinger theories) ................................................................................................... 26 d.
Landsberg v. Scrabble Crossword Game Players, Inc. (note case – Scrabble tips) .................................................................... 26 e.
Universal City Studios, Inc. v. Kamar Industries, Inc. (note case – "I love E.T." shirt) ............................................................. 26 f.
Raffoler, Ltd. v. Peabody & Wright, Ltd. (note case – advertising slogans) ............................................................................... 26
g.
Nichols v. Universal Pictures Corp. (note case – feuding families play) .................................................................................... 27 h.
Warner Bros. Pictures v. CBS (note case – Sam Spade character) ................................................................................................ 27 i.
Silverman v. CBS, Inc. (note case – Amos 'n' Andy characters) ................................................................................................... 27 j.
Salinger v. Colting (note case – Catcher in the Rye, later) ............................................................................................................ 27 k.
Apple Computer, Inc. v. Franklin Computer Corp. (copyright in program) ............................................................................. 27
I.
Musical works - § 102(a)(2) ................................................................................................................................................................... 29
II.
Sound recordings - § 102(a)(7) .............................................................................................................................................................. 30
I.
Dramatic works - § 102(a)(3) ................................................................................................................................................................. 31
II.
Choreographic works - § 102(a)(4) ....................................................................................................................................................... 31
III.
Related cases....................................................................................................................................................................................... 31 a.
Horgan v. MacMillan, Inc. (note case – photos of ballet) .............................................................................................................. 31
I.
Pictorial, graphic, and sculptural works - § 102(a)(5) ....................................................................................................................... 32
II.
Useful articles ......................................................................................................................................................................................... 32
III.
Related cases....................................................................................................................................................................................... 33 a.
Amsterdam v. Triangle Publications (note case – "sweat of the brow") ..................................................................................... 33 b.
United States v. Hamilton (note case – copied map) ..................................................................................................................... 33 c.
Sparaco v. Lawler, Matusky, Skelly, Engineers LLP (note case – city planning on a map) ..................................................... 33
d.
Mazer v. Stein (sculptures as lamps) ............................................................................................................................................... 34 e.
Pivot Point International, Inc. v. Charlene Products, Inc. (mannequin head) ........................................................................... 34
f.
Masquerade Novelty, Inc v. Unique Industries, Inc. (note case – nose masks) ......................................................................... 36 g.
Whimsicality, Inc. v. Rubie's Costume Co. (note case - costumes) .............................................................................................. 36 h.
Esquire, Inc. v. Ringer (note case – light fixture design) ............................................................................................................... 36
i.
Kieselstein-Cord v. Accessories by Pearl, Inc. (note case – belt buckles) .................................................................................... 37 j.
Carol Barnhart Inc. v. Economy Cover Corp. (note case – mannequin torsos) .......................................................................... 37 k.
Brandir International, Inc. v. Cascade Pacific Lumber Co. (note case – bike rack) ................................................................... 37
I.
Motion pictures and audiovisual works - § 102(a)(6)....................................................................................................................... 37
I.
Architectural works - § 102(a)(8) .......................................................................................................................................................... 38
II.
Related cases ........................................................................................................................................................................................... 38 a.
Shine v. Childs (twisting skyscraper) .............................................................................................................................................. 38
b.
Leicester v. Warner Bros. (note case – Batman wall) ..................................................................................................................... 40
I.
Derivative works and compilations, generally ................................................................................................................................. 40
II.
Derivative works .................................................................................................................................................................................... 41
e.
related cases ........................................................................................................................................................................................ 42 i.
Doran v. Sunset House Distributing Corp. (note case – derivative works' originality)....................................................... 42 ii.
Alfred Bell & Co. v. Catalda Fine Arts, Inc. (note case – mezzotints of old masters) ........................................................... 42 iii.
Durham Industries, Inc. v. Tomy Corp. (note case – Disney plastic toys) ............................................................................. 42 iv.
Entertainment Research Group, Inc. (ERG) v. Genesis Creative Group, Inc. (note case – giant Doughboy) ................... 42 v.
Saturday Evening Post Co. v. Rumbleseat Press, Inc. (note case – derivative works' originality) ..................................... 42 vi.
Gracen v. Bradford Exchange (Wizard of Oz plates) ................................................................................................................ 42
viii.
Dam Things From Denmark v. Russ Berrie & Co., Inc. (note case – troll dolls, grandfathering) .................................. 45
III.
Compilations ...................................................................................................................................................................................... 45 e.
related cases ........................................................................................................................................................................................ 45 i.
Leon v. Pacific Telephone & Telegraph Co. (note case – telephone directory) ..................................................................... 45 ii.
Eckes v. Card Prices Update (note case – baseball card price guide) ..................................................................................... 45 iii.
CDN Inc. v. Kapes (note case – coin collectors guide) .............................................................................................................. 45
iv.
Feist Publications, Inc. v. Rural Telephone Service Company, Inc. (phone book copying) ................................................ 46
v.
Key Publications, Inc. v. Chinatown Today Publishing Ent., Inc. (note case – Chinatown phonebook) .......................... 47 vi.
Bellsouth Advertising & Publishing Corp. v. Donnelly Info. Publishing, Inc. (note case – yellow pages) ....................... 47 vii.
Assessment Technologies of Wisconsin, LLC v. WIREdata, Inc. (note case – real estate data) ..................................... 47
viii.
West Publishing Co. v. Mead Data Central, Inc. (note case – star pagination) ................................................................ 48 ix.
Matthew Bender & Co., Inc. v. West Publishing Co. (case reporter notes) ........................................................................... 48
115

I.
Ownership, generally - § 201 ................................................................................................................................................................ 50
I.
Works made for hire - § 201(b) ............................................................................................................................................................. 50
II.
Related cases ........................................................................................................................................................................................... 51 a.
Avtec Systems, Inc. v. Pfeiffer (note case – programmer at home) ............................................................................................. 51 b.
Cramer v. Crestar Financial Corp. (note case – program made by IS director) ......................................................................... 51 c.
Community for Creative Non-Violence v. Reid (homeless nativity) .......................................................................................... 51
I.
Joint works - § 201(a).............................................................................................................................................................................. 53 d.
related cases ........................................................................................................................................................................................ 53 i.
Gaiman v. McFarlane (note case – comic book characters) ...................................................................................................... 53 ii.
Erickson v. Trinity Theatre, Inc. (note case copyrightability requirement) ........................................................................... 53 iii.
Shapiro, Bernstein & Co., Inc. v. Jerry Vogel Music Co., Inc. (note case - Twelfth Street Rag) ........................................... 53 iv.
The Philadelphia Orchestra Ass'n v. The Walt Disney Co. (note case – Fantasia orchestra) .............................................. 53
v.
Aalmuhammed v. Lee (note case – adding to Malcolm X) ...................................................................................................... 54 vi.
Childress v. Taylor (joint Jackie Mabley play) ........................................................................................................................... 54
II.
Collective works ..................................................................................................................................................................................... 55
c.
related cases ........................................................................................................................................................................................ 56 i.
Tasini v. New York Times Co. (note case – freelance journalists) ........................................................................................... 56
I.
Transfer of rights .................................................................................................................................................................................... 56
I.
Duration and termination ..................................................................................................................................................................... 56
II.
Related cases ........................................................................................................................................................................................... 57 a.
Eldred v. Ashcroft (extending copyright term) .............................................................................................................................. 57
I.
Formalities, generally ............................................................................................................................................................................ 59
I.
Exclusive rights, generally .................................................................................................................................................................... 59
e.
Calabresi and Melamed - property rules, liability rules, and inalienability rules ..................................................................... 60 f.
related cases ........................................................................................................................................................................................ 60 i.
Universal City Studios, Inc. v. Sony Corp. of America (note case – exclusive rights framework) ..................................... 60
II.
The reproduction right - § 106(1) ......................................................................................................................................................... 61 b.
limitations on the reproduction right .............................................................................................................................................. 61
e.
related cases ........................................................................................................................................................................................ 62 i.
Walt Disney Productions v. Filmation Associates (character sketches) ................................................................................. 62
ii.
MAI Systems Corp. v. Peak Computer, Inc. (note case – turning on computer) .................................................................. 63
iv.
CoStar Group, Inc. v. LoopNet, Inc. (note case – ISP liability) ................................................................................................ 64 v.
Ticketmaster Corp. v. Tickets.Com, Inc. (note case – searching for ticket sales) .................................................................. 64
III.
The adaptation right - § 106(2)......................................................................................................................................................... 64 d.
related cases ........................................................................................................................................................................................ 64 i.
Lee v. A.R.T. Company (art on ceramic tiles) ............................................................................................................................ 64
IV.
The distribution right - § 106(3) ...................................................................................................................................................... 65
d.
related cases ........................................................................................................................................................................................ 66 i.
Ford Motors Co. v. Summit Motor Products, Inc. (note case – gratuitous transfer) ............................................................ 66 ii.
Playboy Enterprises, Inc. v. Russ Hardenburgh, Inc. (note case – image on online board) ................................................ 66 iii.
Hotaling v. Church of Jesus Christ of Latter-Day Saints (genealogy in library) ................................................................... 66
iv.
Quality King Distributors, Inc. v. L'Anza Research Int'l, Inc. (note case – shampoo in Malta) .......................................... 67
V.
The public performance right - § 106(4) ............................................................................................................................................. 67 b.
performance rights societies ............................................................................................................................................................. 67
d.
related cases ........................................................................................................................................................................................ 69 i.
Columbia Pictures Industries, Inc. v. Aveco, Inc. (movie rental rooms) ................................................................................ 69
ii.
Columbia Pictures Industries, Inc. v. Prof. Real Estate Invest., Inc. (note case – VCRs and rental library in hotel) ........ 70 iii.
OnCommand Video Corp. v. Columbia Pictures Industries, Inc. (note case – digital rental in hotel) .............................. 70
VI.
The public display right - § 106(5) .................................................................................................................................................. 70
d.
related cases ........................................................................................................................................................................................ 71 i.
Thomas v. Pansy Ellen Prods., Inc. (note case) .......................................................................................................................... 71 ii.
Ringgold v. Black Entertainment Television, Inc. (painting in a TV show) ........................................................................... 71
iii.
Knickerbocker Toy Co. v. Azrak-Hamway International, Inc. (note case – display card of toy) ....................................... 72 iv.
Sandoval v. New Line Cinema Corp. (note case – photographs in "Seven")......................................................................... 72 v.
Gordon v. Nextel Communications (note case – illustration in TV commercial) ................................................................. 72 vi.
Newton v. Diamond (note case – 3 note sampling) .................................................................................................................. 72
VII.
The digital performance of sound recordings right - § 106(6) ................................................................................................... 72
116

c.
related cases ........................................................................................................................................................................................ 73 i.
Arista Records v. Launch Media (note case – Yahoo tailored radio) ...................................................................................... 73
I.
Moral rights, generally .......................................................................................................................................................................... 73
II.
Protection outside the Copyright Act ................................................................................................................................................. 74 b.
the Lanham Act § 43(a) and unfair competition law ..................................................................................................................... 74 c.
state art preservation laws ................................................................................................................................................................ 74
III.
Protection within the Copyright Act .............................................................................................................................................. 74 a.
the Visual Artists Rights Act of 1990, federal law enacted by Congress (now § 106A) ............................................................ 74
b.
conflict with 2 bundles of rights ....................................................................................................................................................... 75
IV.
Related cases....................................................................................................................................................................................... 75 a.
Gilliam v. American Broadcasting Cos., Inc. (note case – Monty Python cut) ........................................................................... 75
b.
Hunstman v. Soderbergh (note case – skipping on DVD players) .............................................................................................. 76 c.
Dastar Corp. v. Twentieth Century Fox Film Corp. (note case – remove credits on TV show) .............................................. 76 d.
Wojnarowicz v. American Family Assn. (note case – offensive artwork pamphlet) ................................................................ 76 e.
Phillips v. Pembroke Real Estate, Inc. (sculpture garden) ............................................................................................................ 76
f.
Martin v. City of Indianapolis (note case – "recognized stature") ............................................................................................... 77
I.
Bringing suit, generally......................................................................................................................................................................... 77
II.
Proving the claim ................................................................................................................................................................................... 77
b.
infringement prong #1: copying, access and similarity ................................................................................................................ 78 c.
defending against infringement (the copying prong) ................................................................................................................... 78 d.
infringement prong #2: improper appropriation ........................................................................................................................... 78
f.
related cases ........................................................................................................................................................................................ 79 i.
Daly v. Palmer (note case – dramatic effect taking) .................................................................................................................. 79 ii.
Arnstein v. Porter (note case – circumstantial evidence of copying) ...................................................................................... 79 iii.
Bright Tunes Music Corp. v. Harrisongs Music, Ltd. (subconscious copying) ..................................................................... 79
iv.
Selle v. Gibb (note case – independent creation) ....................................................................................................................... 80 v.
Ty, Inc. v. GMA Accessories, Inc. (Beanie Baby pigs)............................................................................................................... 80
vi.
Nichols v. Universal Pictures Corp. (note case – feuding families play) ............................................................................... 81
vii.
Peter Pan Fabrics, Inc. v. Martin Weiner Corp. (note case – clothing patterns) ............................................................... 82 viii.
Warner Bros. v. American Broadcasting Cos. (note case – "Greatest American Hero") .................................................. 82 ix.
Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp. (note case – kids shows) ....................................... 82 x.
Atari v. North American Phillips (note case – kids can't tell dif, video games) .................................................................... 82 xi.
Dawson v. Hinshaw Music, Inc. (note case – ordinary people tell dif?) ................................................................................ 82 xii.
Matthews v. Freedman (note case – souvenir t-shirts) ........................................................................................................ 82
xiii.
Steinberg v. Columbia Pictures Industries, Inc. (note case – New Yorker cover) ............................................................ 83 xiv.
Computer Associates Int'l, Inc. v. Altai, Inc. (ADAPTER program) .................................................................................. 83
xv.
Gates Rubber Co. v. Bando Chemical Industries, Ltd. (note case – abstraction levels of program).............................. 84
xvi.
Lotus Dev. Corp. v. Borland Int'l, Inc. (note case – copying computer file menu) .......................................................... 85
III.
Contributory and vicarious infringement..................................................................................................................................... 85 c.
file sharing ........................................................................................................................................................................................... 85
d.
related cases ........................................................................................................................................................................................ 86 i.
Fonovisa, Inc. v. Cherry Auction. Inc. (piracy at swap meet) .................................................................................................. 86
ii.
Sony Corp. of America v. Universal City Studios, Inc. (Betamax) .......................................................................................... 87
iii.
A&M Records, Inc. v. Napster, Inc. (note case – file sharing) ................................................................................................. 89
iv.
Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd. (P2P file sharing) ............................................................................. 90
IV.
Circumvention of technological protection measures (hacking) .............................................................................................. 93
V.
the Digital Millennium Copyright Act of 1998 (DMCA) ................................................................................................................ 94 b.
1) Copyright Management Information (CMI) (§ 1202) ................................................................................................................ 94 c.
2) ban on circumvention of technological protection measures (§ 1201) .................................................................................... 94
d.
3) creation of safe harbors for Internet Service Providers (§ 512) ................................................................................................ 95 f.
related cases ........................................................................................................................................................................................ 95 i.
RealNetworks, Inc. v. Streambox, Inc. (RealMedia hack) ........................................................................................................ 95
ii.
Universal City Studios v. Corley (DeCSS blogger) ................................................................................................................... 97
I.
Fair use, generally .................................................................................................................................................................................. 99
II.
Purposes and justifications ................................................................................................................................................................ 100 a.
purpose of fair use ............................................................................................................................................................................ 100 b.
justifications behind fair use ........................................................................................................................................................... 100
117

III.
Four-factor test of fair use - § 107 .................................................................................................................................................. 100
IV.
Parody ................................................................................................................................................................................................ 101
V.
New technologies ................................................................................................................................................................................. 102
VI.
Related cases..................................................................................................................................................................................... 102 a.
Harper & Row Publishers, Inc. v. Nation Enterprises (Ford's unpublished memoir) ............................................................ 102
b.
Castle Rock Entertainment, Inc. v. Carol Publishing Group (Seinfeld trivia book) ................................................................ 105
c.
Hustler Magazine, Inc. v. Moral Majority, Inc. (note case – Hustler caricature) ..................................................................... 107 d.
Time, Inc. v. Bernard Geis Associates (note case – stills from film into book) ......................................................................... 107 e.
Campbell v. Acuff-Rose Music, Inc. (Pretty Woman parody) .................................................................................................... 107
f.
Suntrust Bank v. Houghton Mifflin Company ("The Wind Done Gone") ................................................................................ 108
g.
Ty, Inc. v. Publications Int'l, Ltd. (Beanie Babies Collectors Guides) ........................................................................................ 110
h.
Kelly v. Arriba Soft Corp. (online thumbnails) ............................................................................................................................ 111
118