COPYRIGHT OUTLINE – Fall 2011 – Brauneis / Oman
Introduction
Current Legal Framework
I.
II.
III.
Constitutional basis for federal copyright law and the powers of the states
a. “To promote the progress of science and useful arts, by securing for limited
times to authors and inventors the exclusive right to their respective writings
and discoveries.”
i. Art. I, Sec. 8, Cl. 8
ii. “Science” refers to all knowledge, including philosophy and literature
(copyright)
iii. “Art” referred to useful art, or the practice of a trade skill
iv. “A science teaches us to know and an art to do”
a. The power to secure for limited times to authors the exclusive right to their
writings is the basis for copyright law
Copyright is a federal law matter
a. Federal copyright legislation preempts any state legislation that conflicts with it
b. Before 1976, federal copyright law did not itself contain any specific directions
with regard to preemption, and courts had to determine on general principles
whether particular state legislation conflicted with federal copyright law
c. District courts have original jurisdiction over actions arising under federal
copyright law
Copyright Act of 1976
a. Not retroactive (older material is governed by the 1909 Act)
b. Replaced the Copyright Act of 1909
i. Became effective on January 1, 1978
c. Occupies almost all of title 17 of the U.S.C.
d. Structure of the act
i. Subject matter and scope of copyright
1. Section 101
a. Statutory glossary (Check here first for term definitions)
2. Section 102: subject matter of copyright
3. Section 106: six exclusive rights that constitute what a copyright
owner owns
ii. Copyright ownership and transfer
1. The issue of initial ownership is common
2. Conveyances of copyright interests
iii. Duration of copyright
1. Section 301: specifies when federal copyright law preempts state
law
2. Different terms of copyright depending upon the initial owner
3. Congress has changed the term of copyright many times
iv. Copyright notice, deposit, and registration
1. Formalities of copyright law
v. Copyright infringement and remedies
1. Litigation
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Theoretical Frameworks
I.
Instrumentalism and economic analysis
a. The goal of copyright is not to protect an author’s labor or personality but to
further the creation and dissemination of knowledge and culture
b. SC has used this language: “ultimate aim is . . . to stimulate artistic creativity for
the general public good”
c. Little consensus about substantive standards: what advances knowledge and
learning?
i. Copyright should thus support the production of lots and stuff
1. The public can then pick and choose what it likes
d. Conventional economic analysis
i. Economic incentive to produce tangible goods means that anyone desiring
them will have to purchase them from the producer since they are
rivalrous and excludable
1. Works of authorship are non-rivalrous
a. “He who receives an idea from me, receives instruction
himself without lessening mine; as he who lights his taper
at mine, receives light without darkening me”
2. Works of authorship are non-excludable
a. Similar to fireworks displays in urban settings
i. No way for the person putting on the show to
charge admission to all
ii. Goods that are non-rivalrous and non-excludable are public goods
1. Lighthouses, government services like defense
2. A serious problem is created – no one will want to create works
since they have no economic incentive
iii. Copyright law creates exclusivity
1. Deadweight loss: setting a book’s price at $20 means there are
those who will not pay, although they would’ve paid something
less (the $8 cost price, for example)
2. Copyright minimalism: costs of granting exclusive rights suggest
that we should only grant just enough rights to induce an author to
create a work
3. Copyright maximalism: answer is not to limit rights, but to extend
them and to decrease negotiation costs and barriers to rights
transfers
e. Incentives independent of copyright law
i. In practice, authors may be able to recover initial costs without legal
protection
ii. State of the art limitations on copying
iii. Lead time
1. Has diminished as tech. developments make copying easier
iv. Special-purpose technical restrictors
v. Social norms
vi. Alternative business models
vii. Government funding and levy systems
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II.
III.
Labor and personality theories
a. Labor: Locke’s theory that the labor of someone’s body belong to him
i. People should own what they have created with their own hands (or
minds)
ii. This approach challenges limited term protection
b. Personality: Kant and Hegel
i. Works of authorship should be protected as means of supporting the
personal development of authors
1. Droits moraux
Political theory and theories of justice
a. Tool to protect democracy
i. Copyright encourages creative expression on a wide array of political,
social, and aesthetic issues
ii. Copyright serves to further the democratic character of public discourse
b. Rawls’ veil of ignorance as applied to authors
The International Context of U.S. Copyright Law
I.
II.
III.
Berne Convention
a. First major multilateral treaty on copyright
i. Adopted in 1886
b. National treatment of foreign authors
i. Copyright law of each country party to the Convention must treat foreign
authors at least as well as domestic ones
c. Substantive requirements
i. Included architectural works and photography as literary and artistic
works
d. United States joined in 1989
i. 1976 Copyright Act removed some obstacles to US membership
1. Set copyright term at Convention minimum of author’s life plus 50
years
2. Made clear copyright would not be forfeited for lack of registration
or deposit
ii. Berne Convention Implementation Act
1. Dropped requirement of displaying copyright notice as a condition
of copyright
2. Dropped registration requirement as a condition of filing an
infringement suit for foreign nations
Special 301 reports
a. Place countries on watch lists for deficiencies in their enforcement of IP rights
NAFTA and TRIPS
a. Linkage of IP issues and international trade
b. One of the major emphases of TRIPS is enforcement
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IV.
Free trade agreements
a. Bilateral agreements
i. Reaching consensus in multilateral fora proved difficult
b. Typically oblige parties to join a variety of existing multilateral copyright and IP
treaties
Basic Hurdles of Copyright Protection
Fixation
I.
II.
III.
Basic requirement
a. Copyright protection subsists, in accordance with this title, in 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 (17 U.S.C.
102)(a))
b. Copyright attaches as soon as work is fixed
i. As soon as author puts down the pen or painter puts down the brush
Reasons for fixation
a. Evidentiary problem with a lack of fixation
i. Without a fixed work, have to depend on the testimony of litigants
b. Aid to dissemination and preservation
i. Goes towards the idea of "promoting the progress of science"
1. Better promoted if it is written down and easily transported around
the world
c. Provides stable notice about what rights are being claimed
i. Acts as a fence marking the author’s intellectual territory
ii. Kind of formality that serves as an (imperfect) proxy about how serious
you are about this work adherence
1. If you weren't serious enough to write it down, perhaps it would've
arisen in conversation anyway and so there is no need for
protection
Definition of fixation
a. A work is "fixed" in a tangible medium of expression when its embodiment in a
copy or phonorecord, by or under the authority of the author, is sufficiently
permanent or stable to permit it to be perceived, reproduced, or otherwise
communicated for a period of more than transitory duration (17 U.S.C. 101)
b. A work consisting of sounds, images, or both, that are being transmitted, is
“fixed” for purposes of this title if a fixation of the work is being made
simultaneously with its transmission (17 U.S.C. 101)
i. A work can be fixed if it is recorded at the same time that it is being
performed
c. Works must be embodied in a copy or phonorecord
i. “Copies” are material objects, other than phonorecords, 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,
either directly or with the aid of a machine or device (17 U.S.C. 101)
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IV.
1. The term “copies” includes the material object, other than a
phonorecord, in which the work is first fixed
2. Copy: printed book, file on a hard drive, handwritten manuscript,
or a film of someone reciting the novel
ii. Phonorecords” are material objects in which sounds, other than those
accompanying a motion picture or other audiovisual work, are fixed by
any method now known or later developed, and from which the sounds
can be perceived, reproduced, or otherwise communicated, either
directly or with the aid of a machine or device (17 U.S.C. 101)
1. The term “phonorecords” includes the material object in which the
sounds are first fixed.
2. Phonorecord: tape, MP3 file
iii. Fritz v. Arthur D. Little, Inc.
1. “Original words spoken aloud can be copied and independently
copyrighted by all, if they have not previously been fixed in a
tangible medium of expression”
d. Oral tradition and the fixation requirement
i. Recovering collectivity: what rights do indigenous groups have to IP when
their tradition is oral?
ii. Lifvon and Enigma
iii. 18 U.S.C. 2319(a): Lifvon never wrote down his songs
1. People do not distribute bootleg tapes of written words
2. Concerts, not poetry, are popular
e. “Sufficiently stable”
i. Definition of “a period of more than transitory duration”
1. Cartoon Network v. CSC Holdings
ii. Strictly speaking, what has to last for a sufficiently long period is not the
copy, but the perception, reproduction, or communication of that copy
f. Situation of classroom note-taking
i. Student taking down notes - getting the information from the professor
orally
1. Not from the video tape camera, which was independently
recording
ii. Can't say that the notes were fixed before the camera - were fixed
concurrently
1. Student's notes thus shouldn't amount to an infringement of a fixed
work
g. Copy” vs. “copyright”
i. The noun copy concerns fixed embodiments of works
ii. The verb to copy concerns the lack of independent creation of a work
Protection against unauthorized fixation
a. 102(a) does not extend protection to unfixed works, but state statutes or common
law may provide greater protection, and 1101(d) explicitly states 1101 does not
preempt state law
b. 1101 extends protection to a limited class of unfixed works
c. United States v. Martignon
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V.
VI.
Fixation and interactive devices
a. 102(a) confirms that a work can be fixed on magnetic tape, in flash memory, or in
some other medium that needs to be processed by a computer/device before the
work is perceived by human beings
b. Williams Electronics, Inc. v. Artic International, Inc.
Live performances
a. A live performance is not “fixed” if it’s not transmitted
i. Therefore, if an improv piece is not recorded, it has no copyright
b. §1101: Anti-Bootlegging Provision: special rule that says that live music
performances receive special protection
i. Prohibits 3 things without performers’ consent:
1. Cannot fix the sounds of a live musical performance in a copy or
phonorecord, or to reproduce copies
2. Cannot transmit or communicate to public sounds or images of live
musical performance
3. Cannot distribute, sell, rent, offer or traffic in any copy or
phonorecord described in (a)(1)
ii. Argument against §1101(1) and (2)
1. Does not fix the rights for a limited period of time, which may
violate the Copyright Clause
2. Constitution refers to "writings of an author"
a. Is a musical performance that is not fixed a Constitutional
"writing"?
Originality
I.
II.
Basic requirement
a. Copyright protection subsists, in accordance with this title, in 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 (17 U.S.C.
102)(a))
b. Works that lack originality are not protected by copyright and nonoriginal
elements of a work are not protected
c. Copyright protection does not extend to every element of the copyrighted
work, only to those that are original
d. “Original” means only that the work was independently created by the author and
possesses at least some minimal degree of creativity
Originality has two requirements (Feist standard)
a. Independent work of authorship
i. The work has to be made from scratch
ii. Does not require novelty
1. Different than patent law, where the standard is “not have been
obvious a the time the invention was made to a person having
ordinary skill”
2. Can merely be an independent creation of a similar entity
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III.
IV.
V.
VI.
a. If two identical works are created independently, each
author would be entitled to his own copyright
iii. The work does not have to be unique or different from preceding works
1. “Similarity to prior works will not, in and of itself, affect the
validity of a particular work’s copyright”
iv. Cannot be a complete copy of another’s work
1. Can be a derivative work
b. Element of creativity
i. Extremely low, but not de minimis
ii. De minimis doctrine: de minimis creativity does not count as original
creativity
iii. A work need not be completely original or even mainly original
1. The originality analysis considers not how much was copied from
others, but whether the author added anything creative
iv. Must be more than a form of expression dictated solely by functional
considerations
1. Words, phrases, titles, slogans, mere variations of typographic
ornamentation lettering or coloring, mere listing of
ingredients/contents don’t have copyright protection
Bleistein v. Donaldson Lithographing Company
a. Advertisements are protected by copyright
b. “It would be a dangerous undertaking for persons trained only to the law to
constitute themselves final judges of the worth of pictorial illustrations, outside of
the narrowest and most obvious limits”
Sweat of the brow
a. Not protected by copyright
b. Cannot win protection by showing an investment of considerable resources
(energy and labor is not enough)
i. Feist: the work that went into gathering the information for thousands of
telephone listings does not qualify the phonebooks for copyright
protection
1. Alphabetical arrangement is not original
Prunté v. Universal Music Group
a. Short words and phrases are not protected by copyright
i. Lack creativity
Photographs can be original
a. A photograph derives its originality in three ways:
i. Rendition: (light, angle, exposure, filters, developing techniques)
ii. Timing: (being at right place at right time)
iii. Creation of Subject: (the subject of a photo can be protected if the
photographer created the scene or subject to be photographed.
b. Mannion v. Coors Brewing Co.
i. Mannion, a photographer is suing Coors for infringement of Mannion's
photo of a famous basketball star
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VII.
Derivative works
a. A work based upon one or more preexisting works, such as a translation, musical
arrangement, dramatization, fictionalization, motion picture version, sound
recording, art reproduction, abridgement, condensation, or any other form in
which a work may be recast, transformed, or adapted. A work consisting of
editorial revisions, annotations, elaborations, or other modifications which, as a
whole, represent an original work of authorship, is a “derivative work.” (17 U.S.C.
101)
b. An author may start with a pre-existing work and either add new material or
modify the old material so as to produce something which is entitled to its own
independent copyright
i. These second generation works are known as derivative works
c. A second generation author is entitled to copyright only in her changes or
additions
i. Not in any elements that were present in the pre-existing work
d. Owner of copyright in the prior work
i. If that owner has not given permission to create the derivative work, the
second generation author is subject to liability for having infringed
copyright in the prior work and ALSO
ii. Forfeits copyright in his own creative contributions to any part of the
derivative work that uses the prior work
e. Pattern of Cases:
i. Work A (the original work)
1. Party A is usually not involved in lawsuit
ii. Work B (purported derivative work)
1. Made under a license if Work A is copyrighted and as a copy of
public domain work if Work A is in the public domain
iii. Work C (allegedly infringing of Work B)
1. Contends that Work B is insufficiently original
f. Batlin & Son, Inc. v. Snyder
i. Pre-dates Feist
ii. For a derivative work to be copyrightable there must be some substantial
difference, not merely trivial originality
iii. Snyder created an Uncle Sam bank and claimed Batlin’s Uncle Sam bank
was an infringement, although Snyder has no valid copyright because
Uncle Sam is in public domain and Snyder didn’t make any changes that
were noticeable to the casual observer
iv. Endorses higher standard than normal
1. Circuit split in how much variation is needed.
2. Higher originality standard would leave more in the public domain.
g. Collective works
i. Both collective works and derivative works use prior works in ways that
infringe copyright in those prior works absent permission, unless those
works are already in the public domain
ii. A collective work merely gathers a number of prior works and presents
them as a collection
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VIII.
1. A derivative work changes or transforms the prior work in some
way
iii. All collective works are compilations
1. Compilations also covers works that gather and organize noncopyrighted material
Scenes a faire
a. Stock characters and settings that are indispensable are not copyrightable
i. Lack originality as they are already in public domain
b. Damsel in distress, knight in shining armor, haunted house, etc.
Fundamental Exceptions to Copyright Protection
I.
II.
The fact that a work as a whole is fixed and original and thus protected by copyright
law does not mean that each and every component of that work is entitled to
protection
102(b) explicitly itemizes the aspects of a copyrighted work that are not covered by
the exclusive rights granted under the law
a. Idea, procedure, process, system, method of operation, concept, principle, and
discovery
Facts and Compilations
I.
Feist Publications, Inc. v. Rural Tel. Service Co.
a. Concerned the extent of copyright protection in Rural Telephone’s telephone
directory white pages listing
i. The raw data was not original to Rural, who listed the names in
alphabetical order
1. This arrangement failed to show even the “minimal creativity”
required for protection
b. Facts are not copyrightable
i. Compilations (databases, maps, almanacs) may be if the selection,
coordination, or arrangement of facts reflects creativity
c. Work formed by the collection and assembling of preexisting materials or of data
that are selected, coordinated, or arranged in such a way that the resulting work
as a whole constitutes an original work of authorship; term includes collective
works (17 U.S.C. 101)
i. To be protectable compilation, the resulting work must be more valuable
to the consumer than the sum of its parts
1. The assemblage of items must have some coherence, and bear
logical relationship to each other
2. Individual parts of a compilation do not have to be copyrightable
themselves
d. Protection for compilation (or derivative work) extends only to material
contributed by author of that work (103)
i. Distinguished from pre-existing material employed in the work
ii. To create a compilation of works that are still copyrighted, you must have
permission from the copyright owner
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II.
III.
Idea/expression analysis
a. A work that primarily conveys unprotected material has more limited protection
than a work that is principally creative expression
b. A.A. Hoehling v. Universal City Studios, Inc.
i. A book about the Hindenburg disaster contained many nonprotected
elements (like facts or theories)
ii. A disaster film was made that copied many specific elements from the
book
1. The elements were not the product of plaintiff’s creativity but facts
and theories from his research
a. Historical theories are treated as facts
c. Read along with Feist: the theory that someone was murdered and the factors
surrounding his death are not protectable elements of a book, but the author’s
expression of that theory and surrounding facts (selection, coordination, and
arrangement of its theories and facts) is protectable
CCC Info Services, Inc. v. MacLean Hunter, Inc.
a. Blue book listings of car values were not reports of actual transactions, but rather
estimates of value, requiring consideration of factors other than sale prices
i. Compilation of used care prices they think will happen over different
geographical areas
b. If the “facts” are based in part on a judgment call by a professional, then it is
copyrightable information
1. MacLean’s predictions were based on market information and
judgment by experienced people
Abstraction and “Ideas”
I.
II.
In no case does copyright protection for an original work of authorship extend to any
idea, procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained, illustrated, or
embodied in such work (17 U.S.C. 102(b))
a. Expression is copyrightable, ideas are not
i. Justification: ideas are building blocks and are in short supply
Protected expression vs. unprotected idea
a. Protected expression includes relatively complex, concrete pattern that are
embodied in a work
i. Each complex pattern is also one of many variations on a simpler pattern
1. As one climbs the ladder of abstraction, at some point one reaches
patterns that are unprotected ideas
b. Nichols v. Universal Pictures Corp.
i. No infringement results if a second author copies general elements but
expresses them in a different form
ii. Stock characters
1. “The less developed the characters, the less they can be
copyrighted”
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III.
IV.
Characters
a. Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co.
i. Suggests that characters which are visually or graphically depicted rather
than described in words may either be subject to a different, more lenient
test of copyrightability or may more easily satisfy a uniform test
applicable to all characters
1. They may be more likely “sufficiently delineated”
b. To say that a character is protected by copyright is to say that no one else is free
to use a fictional personage with the same mix of traits
i. Infringement would not require the use of the same name for the character
c. Traditional tests:
i. Nichols v. Universal Corp: the character distinctly enough delineated that
it is more than a general idea or stereotype?
ii. Warner Bros. v. Columbia Broadcasting System: does the character
“constitute the story being told?” (Collapses protection of character into
protection of plot)
CCC Info Services, Inc. v. MacLean Hunter, Inc.
Utility and Functionality
I.
Merger doctrine
a. When there are limited ways to express an idea, the idea and expression merge, so
that people can copy the expression in order to gain access to the idea
i. Doctrine does not authorize copying that goes beyond that necessary to
use an idea
1. Two tea sellers can use pictures of cinnamon sticks on their boxes
of cinnamon tea, but the second cannot copy the first’s expressive
elements of shading, exact forms, and arrangement of elements
b. Thin copyright
i. If limited alternative expression is available, then copyright protection for
the expression is available, but the copyright will be thing
1. Infringement will be found only in cases of verbatim copying
c. Some courts have decided that merger is best approached as defense in an
infringement action
i. Not as a limit on copyrightability in the first instance
d. No protection for “utilitarian” aspects of a work
i. Only on “aesthetic expression” of the work
ii. Baker v. Selden
1. Plaintiff held the copyright on a book explaining an accounting
system, which contained an essay explaining how the system
worked and forms to implement the system
2. Forms were held to be unprotected because use of such forms was
necessary to use the system
3. To prevent copying of the forms would have the effect of
protecting the system
a. Copyright does not protect elements that necessarily flow
from unprotected ideas
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II.
III.
IV.
V.
Blank forms
a. Blank forms and standard product features do not qualify for copyright
i. Codified in the regulations of the Copyright Office
ii. Utilitarian, not aesthetic
b. Utopia Provider Sys v. ProMed Clinical Sys.
Computer programs
a. Code is utilitarian because it makes a machine operate in a certain way
b. Expression adopted by programmer is copyrightable but the process or methods
embodied in program are not
c. Apple Computer v. Franklin Computer
User interfaces
a. The appearance of a program and the various ways in which the user controls it
have come to be known as the user interface of the program
b. A computer programmer may be able to replicate the user interface of another
program without replicating any of its code
Useful articles
a. A “useful article” is an article having an intrinsic utilitarian function that is not
merely to portray the appearance of the article or to convey information. An
article that is normally a part of a useful article is considered a “useful article”
(17 U.S.C. 101)
b. The design of a useful article, as defined in this section, shall be considered a
pictorial, graphic, or sculptural work only if, and only to the extent that, such
design incorporates pictorial, graphic, or sculptural features that can be identified
separately from, and are capable of existing independently of, the utilitarian
aspects of the article
c. Separability
i. Copyright protects only those features of a useful article that “can be
identified separately from, and are capable of existing independently of,
the utilitarian aspects of the article.
ii. Some parts of “useful articles” can be protected
1. Courts look to find “some element that physically or conceptually
can be identified as separable”
iii. Physical vs. conceptual separability
1. When a useful object has an aesthetic component that can be
physically removed without undermining the object’s utility, the
removable piece is entitled to copyright protection
a. Hood ornament of a Jaguar automobile
d. Physical separability - relatively easy
i. Most disputes are about works where there is no physical separability
e. Conceptual separabiity: alternative approaches
i. Psychological test
1. Does the design create in the mind of the ordinary observer two
different concepts that are not inevitably entertained
simultaneously?
2. Mind of the consumer/observer
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VI.
ii. Process-oriented test
1. Are there aspects of the design that were not significantly
influenced by functional considerations?
2. Mind of the designer
3. Pivot Point test
a. Not thinking about making the item useful at all when they
included a particular feature?
b. Mara: purpose was to provide a face and head to teach
students about makeup and hair design
i. Was supposed to have the hungry look of a model
iii. Market test
1. Is there a significant part of the community who would buy the
item, not for its functionality, but for its aesthetic qualities?
f. Mazer v. Stein
i. A lamp base functions to hold the lamp up, but a lamp base comprised of a
dancer statuette is protectable by copyright
ii. A lamp, being useful, is not proper subject matter for copyright while a
statute, being aesthetic, is suitable for copyright
g. Copyright Office 1991 opinion for garments
i. Garment designs (excluded separately identified pictorial representations
of design imposed upon the garment) will not be registered even if they
contain ornamental features or are intended to be used as historical or
period dress
ii. The print of a dress falls under the parenthetical notation
iii. Red vest couple photo
1. Diamond design on the fabric might possibly be copyrightable,
although it's a pretty simple geometric pattern
2. The cut isn't copyrightable under the 1991 opinion
Architectural Works
a. Design of a building as embodied in any tangible medium of expression, included
a building, architectural plans, or drawings. The work includes the overall form
as well as the arrangement and composition of spaces and elements in design,
but does not include individual standard features (17 U.S.C. 101)
b. Any architectural work created before 1990 will continue to be governed by the
pre-1990 law
c. Scope of rights (17 U.S.C. 120)
i. Other people can still take, distribute, and publicly display pictures,
paintings, photos, or other pictorial representations if building is visible
from public place
ii. Owner of building can change or destroy building w/o permission from
copyright owner
iii. Rights only protect aesthetic aspects, not functional ones
iv. No separability requirement
d. “Building:” term encompasses habitable structures that are used, but not
inhabited, like churches, pergolas, gazebos, and garden pavilions
e. Interior architecture can also be copyrighted
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Proving Infringement of the Reproduction Right
Elements of a Case of Copyright Infringement
I.
II.
III.
Two elements
a. Copying material that is
b. Protected (ownership)
c. Parallel independent creation is not copyright infringement
d. Arnstein v. Porter
i. The plaintiff must show that the defendant copied from his work and that
the copying was improper, meaning that was copied was both “too much”
and “the wrong kind of material”
Ownership
a. The work must have a valid copyright and the plaintiff must own the right that is
allegedly infringed upon
b. Where is this requirement found?
i. 106: owner has the right to . . .
ii. 501(a): anyone who violates the exclusive right is an infringer
iii. 501(b): legal OR beneficial owner is entitled, subject to the requirements
of 411, to institute an action for infringement
1. Might be more than one person who has an ownership interest
Copying
a. The defendant must have made a literal copy of the work, created a work by
working from the copyright work, or worked with the copyrighted work in mind
Establishing that the Defendant Copied from Plaintiff’s Work
I.
II.
III.
Direct evidence
a. Eye-witnesses, confessions (extremely rare)
Circumstantial evidence of copying (Rarely direct eye-witness or confession, so must
use circumstantial evidence)
a. Similarity and access
i. First look to see level of similarity
1. Then look at “access” (similarity could be coincidence)
b. The more similarity that can be shown, the less access needs to be shown
Similarity
a. First look at level of similarity, and then if necessary look at access (similarities
could be coincidence)
b. Substantial similarity rule: only substantial similarity is required for
infringement
i. Substantial similarity is a factor issue
1. Should consider only similarities involving protected elements
ii. Would the target audience think the two works are substantially similar?
1. If there is no target audience, look through the eyes of an ordinary
audience
c. Look and feel approach (alternative to substantial similarity)
d. Striking similarity approach (alternative to substantial similarity)
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IV.
V.
VI.
e. PROBATIVE SIMILARITY: similarities between two works to prove/disprove
independent creation
i. Degree of similarity that exists between the copyrighted work and the
allegedly infringing work
 Similarity as to mistakes, defects
 With purely creative works like music, might be as readily available
 Feist: with factual works, might be extremely probative
 Similarities that are otherwise unlikely
 Alternative sources: works in the public domain, natural objects
ii. Factors
1. Uniqueness, intricacy, or complexity of the similar sections
2. Unexpected or idiosyncratic element that is repeated in the alleged
infringing work
3. Appearance of the same errors or mistakes in both works
4. Fictious entries placed by the plaintiff that appear in the
defendant's work
5. Obvious or crude attempts to give the appearance of dissimilarity
f. SUBSTANTIAL SIMILARITY: did the copying that occur rise to the level of
illicit/actionable copying?
Access
a. The more access, the more likely it is that the defendant copied rather than created
his work independently
i. Cannot copy something you have never seen
b. Factors to consider:
i. Does defendant possess a copy of plaintiff’s work?
ii. Widespread public dissemination
iii. Chain of custody
c. Plaintiff can offer evidence that defendant could have had access
i. Jones v. Blige
d. All copying is access, but not all access is copying
Independent creation
a. Defendant can present evidence of independent creation
Subconscious copying is still copying
a. If a plaintiff had access to defendant’s work and then after some lapse of time
unwittingly uses aspects of the work in creating his own work, he is an infringer
b. Bright Tunes Music v. Harrisongs Music Ltd.
i. George Harrison’s “My Sweet Lord” was a subconscious copying of
“She’s So Fine”
Does Defendant’s Copying Constitute Improper Appropriation?
I.
II.
Copying from a copyrighted work is not necessarily infringement
Fragmented literal similarity and de minimis copying
a. Where defendant made only trivial use of the copyrighted work, there is no
infringement (de minimis non curat lex)
b. Gottlieb Development LLC v. Paramount Pictures Corp.
i. Silver Slugger pinball machine in the film What Women Want
15
III.
IV.
V.
ii. The amount of material taken was inconsequential
1. Infringement requires “substantial” similarity
c. Motion pictures, set dressing, and cleared art
i. Major studios have employees who specialize in obtaining licenses to use
copyrighted works in movies
1. They “clear copyright”
ii. Companies offer pre-licensed works for movie appearances
d. Allen v. Scholastic, Inc.
i. Harry Potter and Willy the Wizard
Ordinary and discerning observers
a. Gottlieb: the usual perspective from which similarity is judged is the
ordinary/average observer
b. Allen and Boisson use a “more discerning observer” approach
c. Boisson v. Banian, Ltd.
i. Quilts
d. Look and feel approach
i. Holistic way of looking for substantial similarity
Filtering
a. Computer Associates v. Altai, Inc.
i. Court requires that all non-protectable components of plaintiff’s work be
stripped away to arrive as the “golden nugget” of protected expression
1. Only thereafter will the court determine if defendant is guilty of
improper appropriation
b. Analysis of computer programs
i. Abstraction: “dissect the allegedly copied program’s structure and isolate
each level of abstraction contained within it”
ii. Filtration: examine the structural components at each level of abstraction
and “filter out” those components the inclusion of which was
1. Dictated by considerations of efficiency;
2. Required by factors external to the program, such as
a. Mechanical specifications of computer
b. Compatability requirements of other programs
c. Computer manufacturer design standards
d. Demands of the industry served
e. Widely accepted programming practices;
3. Taken from the public domain
iii. Comparison: compare the code of the programs that remain after the Step
2 filtration process
1. Should we compare them “holistically” or “analytically”?
2. Should we decide whether the “ordinary programmer” would feel
that they’re the same?
3. Should we use experts, and if so, how?
Basic infringement analysis
a. Analyze similarities and differences between details of plaintiff’s and defendant’s
works (e.g., Boisson, Nichols)
16
b. Also articulate similarities, differences in the “look and feel” of the two works,
possibly for particular audience that is the market for the works (children, rap
music fans, classical music fans)
Fair Use
I.
II.
III.
IV.
Introduction
a. Fair use is the only exception that applies across all five exclusive rights and all
types of copyrighted works
b. Allows use of copyrighted works without permission or payment
c. Case-by-case basis
d. Until 1976 Act:
i. Was a judge-made exception; no appearance in statute
ii. Supreme Court had never decided a case about fair use
“The fair use of a copyrighted work, including such use by reproduction in copies or
phonorecords or by any other means specified by that section, for purposes such as
criticism, comment, news reporting, teaching (including multiple copies for
classroom use), scholarship, or research, is not an infringement of copyright. In
determining whether the use made of a work in any particular case is a fair use the
factors to be considered shall include
a. (1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
b. (2) the nature of the copyrighted work;
c. (3) the amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and
d. (4) the effect of the use upon the potential market for or value of the
copyrighted work.” (17 U.S.C. 107)
Reasons for fair use
a. To allow uses that do not reduce the value of the copyrighted work (and hence do
not affect the incentive that copyright provides authors)
b. To allow uses that are productive (that contribute to the progress of science
through added creativity or public benefit)
c. To promote beneficial uses that would otherwise be frustrated by transaction costs
d. Avoid adverse consequences of unenforceable prohibitions
i. Privacy of one's own home - who's going to go after you?
Factors
a. Purpose and nature of the use
i. Private copying is favored noncommercial use (Sony majority)
ii. Consumptive uses are disfavored and productive uses are favored (Sony
dissent)
iii. Transformative work weighs in favor of the fair user
iv. Commercial nature weights against the fair user
v. Parody weighs for the fair user
1. Does not have to be comedic
a. Criticism or comment
17
b. Threshold question: whether a parodic character may
reasonably be perceived
vi. Productive uses (where works are used as part of another activity) are
more likely to be fair use
1. Simple reproduction of copyrighted works is less likely to be fair
use
vii. Uses that attempt to exploit unprotected aspects of the copyrighted work
are favored
1. Reverse engineering
b. Nature of the copyrighted work
i. Factual vs. fictional or creative
1. Use of a factual work is generally more likely to give rise to a fair
use defense
ii. Published v. unpublished
1. 107 amendment: the fact that a work is unpublished shall not itself
bar a finding of fair use . . .
iii. The more creative expression in a work, the more protection it has against
fair use
1. Fair use applies more to thinly protected functional works
(computer programs or useful articles), factual works (databases),
and nonoriginal works
iv. Use of unpublished works weighs against the fair user
1. Author’s right to control first public appearance of his expression
2. Unpublished material is not a bar to fair use, but use of
unpublished material will rarely be found to be fair use
v. Works of fact weighs for fair user
1. Greater need for public dissemination
c. Amount and substantiality
i. Harper Row case
ii. Quantity arguments: percentage of work taken
1. Sometimes must be assessed in light of purpose
a. If parody, can take enough to make work recognizable
b. If search engine, works best if display whole image (but
reduced resolution, loss of details)
iii. Quality arguments: is this the core or kernel of the work?
iv. Extent of permissible copying varies with the purpose and character of the
use
v. Copying the entire work is less likely to qualify for fair use than using
only a portion
1. Particular portion copied is important
2. If the purpose is parody, taking the heart of the original work
weighs less against fair use
a. Harper: taking the heart weighed against fair use
vi. Key is whether the amount taken is appropriate to the favored use
1. Did the copier take an amount that fits the proposed use?
2. Is there an alternative to taking the portion copied?
18
V.
VI.
VII.
3. Is the amount taken likely to diminish a potential market for the
copyright owner?
d. Effect of the use
i. Effect on the value of the original and the value of potential derivative
works markets
ii. Some types of market harm are not cognizable
1. Criticism may decrease sales, but serves the underlying purpose of
copyright to foster exchange of ideas
iii. Transaction costs as a limit on potential markets
1. But this is a shifting target: new technologies might make licensing
of small segments and uses easier
Sony Corporation of America v. Universal City Studios, Inc.
a. The making of individual copies of complete television shows for purposes of
time-shifting (unauthorized home recording of television programs done to watch
the programs at a later time) does not constitute copyright infringement, but is fair
use
b. Balance of factors
i. Making copies is a disfavored reproductive use v. a productive use
(education or creation)
ii. Use was noncommercial and nonprofit v. a disfavored commercial use
iii. Entire amount was copies (disfavored) v. fact that the material had been
broadcast for free viewing
iv. Plaintiss showed no specific market harm or loss of value (key factor)
Harper & Row, Publishers, Inc. v. Nation Enterprises
a. Nation article that included verbatim quotes from President Ford’s unpublished
autobiography did not fall under fair use
b. Balance of factors
i. New reporting (favored use) v. commercial (disfavored)
ii. Took not only facts, which are not protected by copyright, but expressive
elements
iii. Portion taken was small v. portion taken was the “heart” of the book
iv. Specific market harm was shown: loss of prepublication licensing revenue
from Time, who canceled its agreement to print prepublication excerpts
Campbell v. Acuff-Rose Music, Inc.
a. 2 Live Crew made a rap parody version of the song “Pretty Woman” which was a
commentary on both the music and worldview of the original
b. Profit does not make it impossible for a use to be fair
i. Merely one of the components of a fair use analysis
c. Parody must borrow from the original to make its point
i. Is a transformative use
ii. The taking of substantial amounts is not necessarily a bar – amount taken
here was no more than necessary for the favored use of commentary
iii. Compared with satire (which is not targeted at the work borrowed from) ,
which does not require use of the original work to make its point
d. SC held on remand that a key factual issue was whether there was a showing of
market harm
19
Enforcement and Protection Strategies: Infringement and Theories of
Secondary Liability
Direct Infringement
I.
The defendant infringed one of the exclusive rights
Secondary Liability
I.
II.
III.
IV.
Copyright Act is silent on the issue of secondary liability or what its contours might
be
Two types of secondary liability: contributory infringement and vicarious liability
a. You need a direct infringer for secondary liability
Contributory infringement
a. One infringes contributorily by intentionally inducing or encouraging direct
infringement
b. Elements
i. Defendant knows or has reason to know of the infringing activity
ii. Defendant induces, causes, or materially contributes to the infringement
conduct
1. Either provides the means or are a facilitator
c. Active inducement is a case-by-case fact inquiry
d. Grokster
i. Unanimous court found that Grokster was indeed liable for inducing
copyright infringement
e. Contributory test
i. Did the defendant actively encourage or promote infringement by users of
the product?
1. If yes, then is a contributory infringer per Grokster (told users that
the software was for copying)
2. If no . . .
ii. Did the defendant have actual knowledge of specific infringements and the
ability to stop them?
1. If yes, then is a contributory infringer per Napster (Napster knew
of the infringing songs due to an index file – could’ve kicked users
off)
2. If no . . .
iii. Is this particular device capable of substantial non-fringing uses?
1. If no, then is a contributory infringer per Sony (Sony was found
not liable because a VCR has substantial non-infringing uses)
2. If yes then not liable
Vicarious liability (VL)
a. A defendant should not profit from infringement by someone he controls (similar
to respondeat superior in tort law)
b. Knowledge of the direct infringement is not required
20
c. Elements
i. VL applies only if the defendant gets a direct financial benefit
1. A landlord renting an apartment to a tenant who pirates music CDs
is not liable, because he is not receiving any profit from the
infringement
ii. The defendant must have the right and ability to supervise the direct
infringer
1. Number of ways to show the right to supervise
a. Formal contract, employment contract or commission, less
formal relationships such as promoters
Shielding and Recruiting New Gatekeepers - Digital Millennium Copyright Act
I.
II.
III.
IV.
Passed in 1998
Major purpose: to implement two 1996 international treaties – the WIPO Copyright
Treaty and the WIPO Performances and Phonograms Treaty
Two major provisions
a. Creating safe harbors for “online service providers” (512)
b. Protecting against circumvention of technological protection measures (1201)
Safe Harbor and Anti-Circumvention Provisions may seem only loosely related
a. 512 protects ISPs, web hosting companies, search engines
b. 1201 protects technical measures designed to limit access, copying of works
c. But it’s possible to see both as centrally concerned with the recruitment and
coordination of new gatekeepers
i. To qualify for safe harbors, OSPs must agree to enforce copyright in
certain ways
ii. Key provisions of § 1201 allow copyright owners to require equipment
makers to incorporate copy protections in equipment
Safe Harbors Under 512
I.
II.
III.
§512 provides “safe harbors” from contributory infringement and vicarious liability
a. Complying with §512 shields online service providers from CI and VL
i. Failing to comply doesn’t necessarily subject them to CI or VL
1. Need to consider that separately
Four different types of online services
a. Transitory digital network communications”
i. Typically, transmission services
b. “System caching”
i. Automatic copying to provide continued access (when network is clogged)
c. “Information residing on systems at direction of users”
i. Typically, web hosting
d. “Information location tools”
iii. Typically, search engines
Some requirements apply to all four categories (512(i)(1))
a. Must reasonably implement a policy of terminating subscribers and account
holders who are repeat infringers
21
IV.
b. Must accommodate and not interfere with standard technical measures (e.g.,
watermarking, encryption)
Notice and takedown
a. Applies to
i. Web hosting services
ii. Search engines / linkers
b. If receive notice complying with §512, must remove access to material or links,
subject to “put back” notice from alleged infringer
Technical Measures Under 1201
I.
II.
III.
Applies to metadata that is included in digital files and that identifies the copyright
owner and may provide licensing information
a. Statutory damages: between 2.5K and 25K per act of falsification, removal,
alteration
b. Does it also apply to old-fashioned visible copyright notices
i. Courts are divided
c. Fine goes to the government, not the copyright owner
Contours of device liability under 1201(a)(2), 1201(b):
a. Cannot make or offer devices that are:
i. Primarily designed or produced for the purpose of circumvention,
ii. Have only limited commercially significant purpose or use other than
circumvention; or
iii. Marketed for use in circumvention
Leveraging device/access control
a. Why is prohibition of devices that circumvent access controls the key
combination?
i. Licensing Leverage: copyright owners can encrypt works (controlling
access), and condition license of decryption key to device manufacturers
on rights-control design requirements
22
IV.
V.
b. Device/access control leverage makes prohibition of circumventing acts and
protection of rights controls relatively unimportant
c. Difficult for most people to commit acts of circumvention without commercially
manufactured device
d. Relatively easy to get enforcement against device manufacturers (while difficult
to enforce against individuals who circumvent)
e. Rights controls can be enforced as licensing conditions of access keys, so don’t
need separate legal protection of rights controls
Exceptions
a. No exception for circumvention in order to make fair use (or other exceptions to
exclusive rights in copyright)
b. Reverse engineering exception (1201(f)): can circumvent access control measure
to computer program to “identif[y] and analyz[e] those elements of the program
that are necessary to achieve interoperability of an independently created
computer program with other programs.” (drafted to track Sega v. Accolade)
c. Other minor exceptions: nonprofit libraries, archives, educational institutions
for acquisition purposes; law enforcement; encryption research
Exemptions
a. Every three years, Copyright Office determines whether or not more exemptions
are needed
b. In last round in 2006, Copyright Office created or renewed six exemptions:
i. Audiovisual works in library of film or media studies department, for
educational use
ii. Computer programs and video games in obsolete formats, for archiving
iii. Computer programs protected by malfunctioning, obsolete controls
iv. Literary works in e-book format, for allowing read-aloud or specialized
formats for the blind
v. Cell phone computer programs, for the purpose of switching service
providers
vi. CDs that cause computer security problems, for the purpose of correcting
those problems
1909 Act: Publication, Notice, Deposit, and Registration
I.
II.
Basic framework
Publication
a. Dividing line between state common law copyright protection and federal
copyright protection was publication
i. Had to publish with proper notice
b. Performances and displays
i. Nutt v. National Institute Inc.
ii. Letter Edged in Black v. Public Building Commission
1. Picasso case
iii. Performance is not general publication
c. Distribution
i. General publication: tangible copies distributed to the general public who
are then allowed to exercise dominion and control over the work OR a
23
III.
work is exhibited and displayed in such a manner as to permit unrestricted
copying
ii. Limited publication: communicated the contents of a work to a
select/limited group for a limited purpose
1. No right to re-distribute
iii. Forfeiture required a general publication
d. Publication under the 1976 Act
i. Dividing line is moment of fixation
ii. Publication is still important for:
1. Defining the term of copyright in some cases
a. Anonymous & pseudonymous works and works made for
hire: the shorter of 95 years from publication or 120 years
from creation
2. Determining whether a copyright has any protection under US law
if it is published abroad
3. Taken into account when determining fair use
4. Publication in the US triggers mandatory deposit
5. Statutory damages and attorney’s fees available only if registration
before infringement if unpublished work, or registration within 3
months of publication if published work
Notice
a. Form and location
i. © Fitzgerald
ii. Year of first publication was also required for printed literary, musical, or
dramatic works
iii. For some types of works (books, periodicals, and musical works) the
statute specified the required location
b. When was the work in question published?
i. Before January 1, 1978
1. All published copies must have had notice affixed in proper form
a. © [publication date] [copyright owner name]
b. Otherwise copyright protection is forfeited
2. Federal copyright began on publication with proper notice
3. Copyright was generally forfeited for works first published without
proper notice
ii. Between January 1, 1978 and March 1, 1989
1. Notice required but can cure within 5 years
2. Follow rules in § 405 (a)
a. De minimis exception: If notice omitted from relatively few
copies, no consequences (405(a)(1))
b. If licensee omitted notice in violation of explicit condition
in license, then no consequences
c. Cure: can avoid forfeiture if
i. Register within 5 years after publication of work
and
24
IV.
ii. Make reasonable effort to add notice after omission
is discovered
iii. After March 1, 1989
1. No notice required, but incentives for notice
a. If in an infringement action defendant has “access” to
copies with copyright notice, then can’t argue “innocent
infringement”
i. IN OTHER WORDS: failure to include notice on
copy to which infringer had access will permit
infringer to request mitigation of statutory damages
as an “innocent infringer” 401(d), 402(d)
c. Sections
i. 401: notice on copies with year, and name of © owner
1. 402: notice on “sound recordings”
2. Phonorecord is NOT a copy
ii. 403: notice for “government works.
d. Incentives to give notice: no weight shall be given to innocent infringer defense
(which can be used to reduce damages)
e. Berne convention (Article 5)
i. Authors shall enjoy, in respect of works for which they are protected
under this Convention, in countries of the Union other than the country of
origin, the rights which their respective laws do now or may hereafter
grant to their nationals, as well as the rights specially granted by this
Convention
ii. (2) The enjoyment and the exercise of these rights shall not be subject to
any formality; such enjoyment and such exercise shall be independent of
the existence of protection in the country of origin of the work
Deposit
a. Deposit: a copy of the work
b. Failure to deposit will not affect one’s ability to enforce the copyright against
infringers
i. Failure to deposit subjects the violator to a fine
c. Must be done within two months
d. Copies must be “best editions” (determined by the Library of Congress librarian)
e. Archival deposit for architectural work
f. Foreign works
i. Deposit requirement applies to works first published abroad as soon as
they are republished in the United States
ii. Deposit requirement applies regardless of the author’s nationality
g. Purposes
i. Ian action arises from the infringement of the work, the owner may prove
that the material that is infringed is exactly the same material for which
the owner has secured a registration
ii. Assists the Library of Congress in building its collection of works
25
V.
Registration
a. Optional: simply makes a record of a pre-existing right
b. Steps (under 408):
i. Fill out a form
ii. Pay a fee ($45 now)
iii. Make a deposit
1. One copy for unpublished and foreign material, and two copies for
material published in the U.S.
iv. May be made “at any time” during the subsistence of copyright (407)
c. Applies to unpublished and published works
d. Includes works published abroad
e. May be made by copyright owner OR owner of any exclusive right thereunder
f. Pre-registration (408(f))
i. May pre-register works with a history of infringement prior to authorized
commercial distribution
ii. Must file real registration with fee and deposit within 3 months of preregistration
g. Incentives to register
i. Early registration ensures prima facie proof of validity of the copyright
(17 U.S.C. 410(c))
ii. For works of U.S. publication of unpublished works by U.S. authors,
registration is a prerequisite to sue for infringement under the Berne
Convention/17 U.S.C. 411(a)
iii. Statutory damages and attorneys’ fees may be awarded only if registration
is made prior to commencement of infringement (17 U.S.C. 412)
iv. Makes a public record of the copyright ownership and provides
constructive notice of the document to others
c. Registration as a prerequisite to claim of moral rights violation
i. Not necessary for any author to register prior to bringing suit for violation
of the rights of attribution or integrity in a work of visual art under 106
Works published before 1978
Notice
Federal copyright protection
upon publication with notice;
work fell into the public
domain with no notice
Deposit
Prereq. to suit; fines may be
imposed for failure
Registration
Optional until last year of first
term; mandatory for renewal of
works first published before
1964; prereq. to infringement
suit
Works published
between 1978-Feb.
1989
Notice perfected
protection; five years
to cure omissions or
work falls into public
domain
Prereq. to suit; fines
may be imposed for
failure
Optional (incentives);
prereq. to
infringement suit
Works published after
Feb. 1989
Optional (incentives);
unavailability of
innocent infringer
defense
No longer prereq. to suit
for non-U.S. Berne
works; fines may be
imposed for failure
Optional for non-U.S.
Berne and WTO works;
prereq. to suit for U.S.
and other foreign works
26
Initial Ownership of Copyright
I.
II.
III.
Ownership of copyright
a. The current copyright statute declares copyright in a work protected under this
title vests initially in the author (17 USC 201)
b. Four situations
i. Author is an individual
ii. Work is a work made for hire
1. Works by employees within the scope of their employment
2. Certain specially ordered or commissioned works
a. Express agreement in writing
iii. Joint authors with equal, undivided interests
iv. Work is a collective work
1. Author of the collective work has a thin copyright in the work as
awhole
c. No definition of author
Sole authorship
a. Andrien v. Southern Ocean County Chamber of Commerce
Joint works
a. A joint work is a work prepared by two or more authors with the intention that
their contributions be merged into inseparable or interdependent parts of a
unitary whole (17 USC 101)
b. If a work is deemed to be a joint work, then all co-authors own equal shares in the
work unless they have agreed to the contrary
i. Even if it is clear that their contributions are not equal
ii. Each co-author may grant non-exclusive licenses to others
1. Have to share property
c. The authors of a joint work are co-owners of copyright in that work (17 USC
201(a))
d. Is there a requirement beyond that of two or more people having the "intention
that their contributions be merged into inseparable or interdependent parts of a
unitary whole" (statutory language)?
i. Equal interest in work no matter how unequal their contributions were
ii. 2nd and 7th Circuits: each author must have further intent to acknowledge
the other author(s) as coauthor(s)
1. The party claiming to be an author must prove that both parties
intended each other to be joint authors
iii. 9th Circuit (Aalmuhammed v. Lee) – minority
1. We are textualists
2. Text talks about author - author must superintend the work
3. Other factors: coauthors make objective manifestations of shared
intent to be coauthors
e. What happens if someone has made independently copyrightable contribution to a
work without any explicit agreement, and is denied coauthor status?
i. Implied non-exclusive license
ii. Subject to less formality
iii. Compensation by quantum meruit
27
IV.
f. Twelfth Street Rag case (Shapiro, Bernstein, & Co. v. Jerry Vogel)
i. The requisite intent to create a joint work did not have to be that of the
original composer
ii. The intent of the publishing company which acquired the composition and
subsequently commissioned the lyrics to create a joint work would suffice
g. Gaiman v. Mcfarlane
i. Each co-author must contribute expression, and not mere idea
1. Such expression need not be independently copyrightable
Works made for hire
a. Works created by an employee within the scope of employment OR
commissioned works (exclusively requires a written agreement) (17 USC 101)
b. The initial ownership of a work sometimes vests in the employer of the person
who would otherwise be considered the author of that work
c. Subject to different copyright terms (not author’s life plus 70 years)
i. 95 years from first publication or 120 years from creation
1. Whichever expires first
d. Rationale
i. Because employers can be held liable for the bad consequences of their
employees’ actions, they should also benefit from the good consequences
as a matter of fairness
ii. Employers have ultimate control over employees’ work, which makes it
logical to deem them authors even when they do not exercise that control
with regard to a particular work
iii. Quid pro quo: ownership of creative works in exchange for employee
advantages
e. Does the written instrument need to be created before the work is created?
i. 7th Circuit: Yes
ii. 2nd Circuit: Not necessarily, if there was prior oral / implicit agreement
f. Status as an employee (employee works)
i. Factors (Community for Creative Non-Violence v. Reid)
1. Right to control
2. Actual control
3. Common law agency test
a. Hiring party’s right to control the manner and means of
creation
b. Skill required
c. Provision of employee benefits
d. Tax treatment of the hired party
e. Whether the hiring party has the right to assign additional
projects to the hired party
f. Source of tools
g. Location of work
h. Duration of relationship
ii. Works made for hire under the 1909 Act
1. Definition of a work-made-for-hire was broader, encompassing
more works
28
V.
g. Scope of employment (employee works)
i. Avtec Systems, Inc. v. Peiffer
ii. Factors
1. Work was the type the individual was hired to perform
2. Work was created within the time and space limit of the job
3. Was the product motivated by a desire to serve the employer’s
purposes?
a. Software made at night can be within scope if it furthers
employer’s purpose
iii. Professorial exception
1. Tradition of treating professors as authors of their scholarship, in
spite of their status as university employees
2. Rationale
a. Academic freedom
b. Personal independence of professors
c. University is not in the best position to “exploit
professional writings”
h. Commissioned works
i. 17 USC 101 definition: the work must fall into one of the nine categories
enumerated in that part AND the parties must expressly agree in a written
instrument signed by them that the work shall be considered a work made
for hire
ii. Commissioned works are types of work people don’t make for themselves
1. Usually pay up front
2. Economic risk is on the person who hires, not the creator
3. “For use as
a. Contribution to a collective work
b. Part of a motion picture or other audiovisual work,
c. Translation,
d. Supplementary work,
e. Compilation,
f. Instructional text,
g. Test,
h. Answer material for a test,
i. Atlas”
iii. Morris v. Atchity
i. Establishing work made for hire status
i. Attempt to establish that the creator was an employee
ii. Apply law of agency (case-by-case fact inquiry)
iii. Argue that work was specially commissioned (must fall into a category)
iv. Argue joint authorship
Government and legally binding works
a. U.S. government ownership of copyright
i. Section 105 operates like the work made for hire doctrine: it divests the
officer or employee of copyright ownership of works of which he or she
would otherwise be considered the author
29
ii. U.S. government works enter into the public domain
1. They are simply not eligible for copyright protection
iii. The U.S. government can hold copyrights that are transferred to it
iv. Copyright protection under this title is not available for any work of the
United States Government, but the United States Government is not
precluded from receiving and holding copyrights transferred to it by
assignment, bequest, or otherwise (17 USC 105)
1. A “work of the United States Government” is a work prepared by
an officer or employee of the United States Government as part
of that person’s official duties (17 USC 101)
b. State government ownership of copyright
i. States cannot claim copyright in primary legal materials such as judicial
opinions and statutes
ii. With regards to other types of material there is no legal obstacle to state
ownership
c. Ownership of legally binding works
i. Veeck v. Southern Building code Congress Int’l, Inc.
Transactions
I.
II.
Introduction
a. Assignments, licenses, and contracts involving works of authorship
i. Not including a non-exclusive license
1. An exclusive license grants permission and makes that permission
exclusive, while a non-exclusive license only grants permission
b. Ownership of copyright can be transferred in whole or in part via legal means of
conveyance, and can be given by a will
c. Difference between copyright property right and material object property right
i. If an artist sells a unique painting, the artist is still the owner of the
copyright although the buy is now the owner of the object
d. Assignment and exclusive licenses require the transfer to be in writing
i. Nonexclusive licenses need not be in writing and they may be implied by
the circumstances
e. Transfers of copyright always involve one or more of the exclusive rights of
copyright
i. A license may provide a right to perform a work, but not to reproduce it or
to prepare a derivative work
f. Four questions
i. What transfers are recognized?
ii. What formalities are required for transfer?
iii. How do we resolve conflicts between two transfers?
iv. How do we interpret ambiguous transfers?
A transfer of copyright ownership . . . is not valid unless an instrument of
conveyance, or a note or memorandum of the transfer is in writing and signed by
the owner (17 USC 204(a))
30
III.
IV.
V.
Finding the owner
a. Can be hard to find the owner of copyright
i. No requirement of publication with notice
1. A work published without any indication of the identity of the
copyright claimant may still be under copyright
ii. No renewal
1. Renewal is automatic for all works copyrighted between 1964 and
1977 (1992 Copyright Renewal Act)
2. No renewal requirement at all for works created in or after 1978
(1976 Copyright Act)
iii. Longer terms
b. Orphan works: copyrighted works of which the owners cannot be found
i. Copyright Office of the U.S. Report on Orphan Works 2006
ii. Orphan Works legislation has been introduced a number of times, but
never passed
1. Recent bills provided that they would not take effect until 2013
unless Copyright Office certified earlier that at least two privatelyrun searchable image databases were available
2. House bill required user to file Notice of Use with Copyright
Office to benefit from limitations on remedies
3. Major opposition: photographers, graphic designers, textile
designers
Indivisibility under the 1909 Act
a. Doctrine of indivisibility of copyright rejects partial assignments of copyrights
i. Requires a proprietor or assignee of a copyright to hold nothing less than
all the rights in a copyrighted work
b. A transfer of the entire copyright in a work did not need consideration to be
enforceable
i. Transfer of property, not a contract
ii. The transfer of anything less than the entire copyright (in time, geographic
area, rights) was merely a license, and hence a contract
c. Standing: only an assignee of the entire copyright could bring an infringement suit
d. Notice: had to be given in the name of the author or an assignee of the entire
copyright
i. Notice in the name of a licensee was ineffective and could result in loss of
the copyright
e. Necessary formalities: signed writing required for assignment of entire copyright,
not for anything less
f. Revocability: licenses only irrevocable if in exchange for consideration
i. Transfers can be gifts
g. Nontransferability of licenses: licenses presumed to be personal to the licensee
Divisibility under the 1976 Act
a. Copyright is divisible by right, time, and geographic area (201(d)(2))
b. Any of the exclusive rights comprised in a copyright may be transferred and
owned separately
i. Can carve up copyright ownership as much as you want
31
VI.
VII.
ii. This is usually done through licenses
c. Standing: the owner of any exclusive part of a copyright may sue for
infringement of that part
i. Nonexclusive licensees still cannot bring infringement suits (501(b))
d. Notice: For works published after 3/1/89 (effective date of BCIA), notice is
optional, but does foreclose innocent infringer defense (§§401(d), 402(d))
i. Under §404(a), single notice in collective work suffices for all
contributions
e. Necessary formalities
i. Under §§204(a), 101:
1. A transfer of exclusive copyright rights is valid only if:
a. In writing and
b. Signed by the owner of the rights conveyed
ii. Nonexclusive rights may be transferred orally
iii. Effects Associates v. Cohen
1. An oral attempt to transfer copyright or an exclusive license will
be treated as a nonexclusive license
2. Default rule: terms will be independent covenants rather than
conditions
3. Acceptance of partial payment will preclude revocation of license
f. Revocability: nonexclusive rights revocable if no consideration
g. Transferability: nonexclusive rights may still be presumed to be nontransferable
(conflict of authority)
h. Semantics
i. Assign: used in connection with the transfer of an entire copyright
1. Of all the rights granted by copyright law with respect to a
particular work
ii. License: used in connection with the transfer of anything less than all of
those rights
Breaching and infringement
a. Jacobsen v. Katzer
Alternative copyright licensing movements
a. Use copyright law and licensing to promote alternative visions of the production,
distribution, and use of software and other creative works
b. Open software: keeping source code available so that others can see how a
program is written, learn from it, and modify it
c. Copyleft
i. Use of copyright licensing to keep software free even after it has been
modified and to provide an incentive for authors of modifications to keep
those modifications free as well
ii. Viral or recursive licenses
1. Include terms which mandate the use of the license with successive
generations of modifications to a work
32
VIII.
IX.
d. Creative commons licensing
i. Formulated a number of licenses that allow creators to retain certain rights
(i.e. the right to attribution or the right to control commercial uses) while
allowing other uses of their works
ii. Wikipedia is an example
Recording and title assurance
a. Transfers may be recorded
b. Recording serves as constructive notice
Scope of copyright licenses
a. New technologies
b. Statutory presumptions
i. New York Times Co. v. Tasini (could a contract allowing a freelance
writer's article to be included in the N.Y Times also allow the article to be
posted online?)
1. Oral contract granting first publication rights
2. "Judges look at authors like special wards of the court, similar to
children or drunk sailors"
Copyright Duration and Related Limitations on Transfer
Duration
I.
Current scheme: works created on or after January 1, 1978
a. 1976 Act: term of the author’s life plus 50 years
i. Works published or registered before January 1, 1978 would be protected
for a maximum of 75 years from the date of publication or 100 years from
the date of creation, whichever comes first
b. Replaced the 1909 Act’s maximum 56-year term
i. (28 years with a renewal term of 28 years)
c. Sonny Bono Copyright Term Extension Act of 1998
i. Extended the term of all existing and future copyrights by a period of 20
years
ii. Retroactively extended terms of previously granted copyrights to a
maximum of 95 years
1. Added 20 years to the 75 years the 1976 Act had given to pre-1978
copyrights
iii. One of the purposes: harmonize US terms with EU’s terms
iv. Copyright in a work created on or after January 1, 1978 . . . endures
for a term consisting of the life of the author and 70 years after the
author’s death
d. Milne v. Stephen Slesinger
e. No works were removed from the public domain
f. All copyrights run until the end of the calendar year in which they would
otherwise expire
g. Joint works
i. Life of last author plus 70 years
h. Set term of 95 years for some works
i. Anonymous works, pseudonymous works
33
II.
III.
IV.
V.
i. Works made for hire
i. 95 years from the date of first publication or 120 years from the date of
creation, whichever expires first (17 USC 302(c))
j. Justification for longer copyright
i. Increased life expectancy
ii. Longer commercial life of many works
iii. Short copyright terms don’t really benefit the public and may actually
restrain dissemination of works
iv. Elimination of the need for renewal applications
1. Eliminate need to focus on technicalities
v. Compensation for the abolition of common law copyright
vi. Harmonization with international copyright norms
1. Made it possible for the US to join the Berne Convention
k. Constitutionality of unlimited term renewals
i. Constitution: "limited terms" for copyright
1. After the term expires, the public domain falls into the public domain
ii. Eldred v. Ashcroft
1. The Sonny Bono CTEA is constitutional
Filing for renewal
a. Under the 1909 Act, it was necessary to file a renewal certificate during the last
year of the initial 28 year term to secure the 28 year renewal term
b. The 1976 Act did not change that requirement
i. For works copyrighted before 1978, it remained necessary to file for
renewal in the 28th year to get the renewal term
c. In 1992, Congress made renewal automatic
i. For works copyrighted from 1964 to 1977, renewal is automatic
Works published before 1923
a. No longer under copyright – in the public domain
First U.S. copyright statute (1790)
a. Potential term of 28 years
i. 14 year initial period from publication
ii. 14 year renewal period
b. 1831: same renewal period, increased initial term from 14 to 28 years
1909 Act
a. Initial term of 28 years from publication (or registration for some unpublished
works)
b. 28 year renewal period
34
DATE OF WORK
PROTECTION BEGINS
DURATION
General Rule: Life of author + 70
years
Created 1/1/78 & after
On date of fixation in tangible
form
Joint Works: Life of last surviving
author + 70 years
Works For Hire, Anonymous &
Pseudonymous Works: 95 years
from publication or 120 years from
creation, whichever is shorter
Created before 1978, but published
between 1/1/78 & 12/31/2002
Upon creation under common law;
1/1/78 under 1976 Copyright Act
Life of author + 70 years or
12/31/2047, whichever is longer
Created before 1978, but not
published
Upon creation under common law;
1/1/78 under 1976 Copyright Act
Life of author + 70 years or
12/31/2002, whichever is longer
Published from 1964 to 1977
Upon publication with copyright
notice (if published without notice,
may be in public domain)
28 year initial term + 67 year
automatic renewal term
Published from 1923 to 1963
(copyright not renewed)
In public domain
Expired
Published from 1923 to 1963
(copyright renewed)
Upon publication with copyright
notice
28 year initial term + 67 year
renewal term (renewal registration
was filed during 28th year of initial
term)
Published before 1923
In public domain
Expired
Related Limitations on Transfer
I.
II.
If authors made bad deals, they/their successors get three possibilities to renegotiate
before the end of the copyright term
a. Renewal
b. “Extension-windfall-recovery” terminations of pre-1978 transfers – §304(c)-(d)
c. “Second-bite” terminations of post-1977 transfers – §203(a)
Renewal
a. Fred Fisher: If author survives to beginning of renewal period, advance
agreement to assign renewal period is enforceable
b. Miller Music: If author does not survive, successors designated by Copyright Act
take free of advance agreements to assign
i. Under 1992 Act, if file optional renewal within last year of initial term,
renewal rights will vest as of time of filing
c. Stewart v. Abend: If successors take renewal period due to death of author,
authorized derivative works made during initial term cannot continue to be
exploited without successors’ permission
35
III.
IV.
V.
i. Under 1992 Act, this is only true if file optional renewal; if fail to file,
derivative works can be exploited during renewal term without successor’s
permission
Extension-windfall-recovery
a. Purpose: to allow authors to share in the windfall created when Congress
extended renewal term to 47 years, and then 67 years
b. Applicable to transfers made before 1/1/1978 (effective date of 1976 Act)
c. Timing
i. Involves termination windows and filing windows in advance of chosen
termination dates
ii. Termination windows
1. §304(c) termination window: 56-61 years after copyright was
secured
2. §304(d) Additional termination window: 75-80 years after
copyright was secured if:
a. 56-61 year window expired before the passage of the
CTEA in 1998, and
b. Had not exercised termination right within that window
iii. Filing windows
1. Filing window: between 2 and 10 years before chosen date within
termination window
Second-bite terminations of post-1977 transfers – §203(a)
a. Purpose: to allow authors to renegotiate deals that turn out to have produced
unexpected benefits for assignees and licensees
b. Applicable to transfers made on or after 1/1/1978 (effective date of 1976 Act)
c. Timing
i. Termination window between 35-40 years after the transfer was made
1. Or in the case of publication rights, the earlier of 35 -40 years after
publication or 40-45 years after the transfer
ii. Filing window 2 -10 years before chosen termination date
Works for hire
a. The ability to avoid termination of transfer rights
36
106 Rights
The Reproduction, Distribution, and Adaptation Rights, and the Visual
Artists Rights Act
Reproduction Right
I.
II.
III.
Owners of copyright have the exclusive right to do and to authorize reproduction of
the copyrighted work in copies or phonorecords (17 USC 106(1))
Not limited to public acts
a. A defendant can infringe by making a copy alone in her office
Exceptions to the reproduction right
a. Most important general limitation: only encompasses act of fixation in additional
copies
b. 107: fair use
c. 117: three exceptions for copies of computer programs made as an essential step
in using those programs
d. 113(c): pictures/photographs of useful articles that have been offered for sale or
distribution to the public, if the pictures or photographs are used
e. 108: libraries and archives for the purposes of research and archiving
f. 112: ephemeral recordings
g. 121: copies of literary works made in specialized formats exclusively for blind
and disabled people
37
Distribution Right
I.
II.
III.
IV.
106(3): owner of copyright has the right to distribute copies or phonorecords of the
copyrighted work to the public by sale or other transfer of ownership, or by rental,
lease, or lending
Meaning of “distribution to the public”
a. Private sale or gift would not infringe
b. Capitol Records Inc. v. Thomas
i. Merely “making available” copyrighted material by connecting a
computer on which copies are located to the Internet does not count as a
distribution
WIPO Copyright Treaty
a. WCT Art. 6(1): “Authors of literary and artistic works shall enjoy the exclusive
rights of making available to the public of the original and copies of their works
through sale or other transfer of ownership.”
b. WPPT Art. 8(1): “Performers shall enjoy the exclusive rights of making available
to the public of the original and copies of their performances fixed in phonograms
through sale or other transfer of ownership.”
First sale doctrine
a. Once you buy a copy, have a right to the physical copy
i. Can distribute or display it (not copy, adapt, or publicly perform it, unless
protected by fair use, permission, or something else)
ii. Exceptions to this rule
1. Sound recordings and computer programs
a. Restriction applies to rental or lending for commercial
exchange
2. Provision excludes nonprofit schools and libraries
3. Exception does not apply to computer programs embodied in
machines, where the program cannot be copied in ordinary
operation (cars to microwave ovens)
a. Videogame players also contain software that runs them
4. Audiobooks
a. Record rental exception does not apply to audiobooks, so
that businesses may rent audiobooks without infringing
(Brilliance Audio v. Haights)
i. Court saw the question as whether the exception to
first sale applies to all sound recordings or sonly
sound recordings of musical works
1. Relied on statutory language
b. The owner of a lawfully made copy or phonorecord may sell or otherwise dispose
of that copy or phonorecord (17 U.S.C. 109(a)) and may display the copy to the
public (17 U.S.C. 109(c))
c. Protects only the owner of a particular copy or phonorecord
i. Someone who rented a video cannot rent it to someone else
d. Copy must have been lawfully made
i. If the copy was an infringing copy, the owner would have no rights under
first sale
38
e. Importation
i. First sale authorizes the owner of a lawfully made copy to import that
copy (Quality King Distributors v. L’Anza)
ii. Despite the fact that 602 provides unauthorized importation of copies or
phonorecords infringes the public distribution right
iii. Holding was limited to reimportation of copies lawfully made in the U.S.
1. Whether first sale protects importation of authorized copies made
outside the U.S. remains an open question
2. Some courts have held that first sale does not apply to copies made
overseas, because they are made beyond the reach of U.S.
copyright law and as such are neither lawful nor unlawful
Adaptation Right
I.
Right to make a derivative work
Public Performance and Display Rights
Public Performance Right
I.
II.
III.
IV.
Public performance
a. In the case of literary, musical, dramatic, and choreographic works, pantomimes,
and motion pictures and other audiovisual works, to perform the copyrighted
work publicly (17 U.S.C. 106(4))
b. 101: to perform or display a work "publicly” means
i. To perform or display it at a place open to the public or at any place
where a substantial number of persons outside of a normal circle of a
family and tis social acquaintances is gathered; or
ii. To transmit or otherwise communicate a performance or display of the
work to a place specified by clause 1 or to the public . . .
Performance: recite, render, play, dance, or act it – either directly or by means of any
device or process
Most prominent omission from list of works: sound recordings
a. Percentage of top 100 Billboard songs written or co-written rose from 7 to 88%
from 1950 to 2004
Limitations
a. Private performances do not implicate the rights of the copyright owner, never
require a license, and are not infringing
Display Right
I.
II.
III.
To publicly display the work, in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and pictorial, graphic, or sculptural works,
including the individual images of a motion picture or other audiovisual work (17
U.S.C. 106(5))
Display: to show a copy or it, either directly or by means of a film, slide, television
image, or any other device or process or, in the case of a motion picture or other
audiovisual work, to show individual images nonsequentially
106(5) is mainly about transmissions
39
IV.
Limitations
Remedies
Damages: Compensation and Restitution
I.
II.
III.
IV.
Damages
a. Greater of:
i. Plaintiff’s actual damages (lost profits)
ii. Defendant’s profits
b. Statutory damages
i. Provide monetary awards to plaintiff even in the absence of proof of
plaintiff’s losses or defendant’s profits
Actual damages
a. Banff, Ltd. V. Express, Inc.
b. Reasonable license fees as measures of damages even if cannot prove lost sales or
opportunities to license?
i. 2nd Cir.: yes
ii. CA District Court: no
c. Recovery of damages and profits limited by three-year statute of limitations?
i. 2nd and 9th Cir.: yes
ii. 7th Cir.: no (if you can show continuing wrong)
Profits
a.
Statutory damages
Attorneys’ Fees
I.
Plaintiffs must have registered the infringed work before the commencement of the
infringement
Equitable Relief
I.
Equitable relief
a. Permanent
i. Injunctions against infringement
ii. Destruction or disposition of infringing copies and tools
b. Provisional: maintain the status quo while the case is being litigated
i. Preliminary injunctions
ii. Impoundment orders
Criminal Offenses
I.
II.
Criminal Infringement
Other Infringement
40


What gets copyright protection?
o Ch. 2: original works of authorship
What do you need to do to get it?
o Ch. 2: fixation
o Ch. 7: under 1909 Act, publication with notice
What is the scope of copyright protection?
o Ch. 3: limitations: facts, ideas, functionality
o Ch. 4: exclusive rights (reproduction), copying in fact, substantial similarity
o Ch. 5: fair use defense
Who is the initial owner of copyright?

How can copyright be licensed or transferred?

How long does copyright protection last?


Who is responsible for copyright infringement?
o Ch. 6: secondary liability; safe harbors; access and technical protection measures
What remedies can you get against infringers?

What further rules are there about obtaining the assistance of courts


41