Class 26
Copyright, Winter, 2010
Review
Randal C. Picker
Leffmann Professor of Commercial Law
The Law School
The University of Chicago
773.702.0864/r-picker@uchicago.edu
Copyright © 2005-10 Randal C. Picker. All Rights Reserved.
C01 Introduction


Copyright as Instrument: Creation/Use
Tradeoffs
The Key Copyright “Equation”
OWA


+ F + TME = ©
Sec. 102(a): Original work of authorship
fixed in tangible medium of expression gives
rise to copyright
Work v. Embodiment Distinction
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C01 Summary

Originality and Independent Creation
Source-based
system
New to you, not necessarily new to the
world
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C01 Summary

Burrow-Giles (US, 1884)
Early
technology/copyright case
Understanding “authorship”
How can Sarony author if the camera does
the work?
 Authorship as creation and framing of the
image, not just mere fixation
 Distinction between creation and buttonpushing

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C01 Summary

Bleistein (US, 1903)
Lawyers

March 18, 2016
Will be Bad Judges of Quality
“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.”
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C02 Copying

White-Smith (US, 1908)
“The
statute has not provided for the
protection of the intellectual conception
apart from the thing produced, however
meritorious such conception may be, but
has provided for the making and filing of a
tangible thing, against the publication and
duplication of which it is the purpose of the
statute to protect the composer.”
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C02 Summary

1909 Statute Rejects this as Does Current
Statute
The

work is the thing protected
Rogers v. Koons (2d Cir. 1992)
Clean
example of copying the work even
though medium and dimension of physical
embodiment changes
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C03 Idea-Expression
Dichotomy

Ideas v. Inventions
Patents
as how to’s
Not ideas, but actual implementations
(inventions)

Ideas v. Expression
Can’t
copyright ideas, just particular
expressions of those ideas
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C03 Summary

Patents v. Copyrights
Much
tougher filters (novelty,
nonobviousness) for patents
Patents have stronger but shorter protection
(block all other uses, block independent
creation, 20 years)
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C03 Summary

Baker v. Selden (US, 1879)
 “And
where the art it teaches cannot be used
without employing the methods and diagrams
used to illustrate the book, or such as are
similar to them, such methods and diagrams
are to be considered as necessary incidents to
the art, and given therewith to the public; not
given for the purpose of publication in other
works explanatory of the art, but for the
purpose of practical application.”
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C03 Summary

Merger
Unity
of expression and idea puts us to
choice
Merger says protect the idea, and not the
expression
9th Cir. has right approach in Skyy
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C03 Summary

Lotus v. Borland (1st Cir. 1995): Functional
Expression
Even
if interface is expressive, it still
operates as a method of operation under
102(b)
102(b) ensures that we don’t propertize
functionality by protecting expression
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C04 Facts and Compilations

Feist (US, 1991): Two Well-Established
Propositions
Facts not copyrightable
 Compilations are


Feist and Originality
Originality
is a constitutional requirement
Hard work irrelevant, some spark of
originality required
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C04 Summary

Understanding “Facts”
Cultural

Castle Rock Entertainment (2d Cir. 1998)
treats as expressions
Facts

March 18, 2016
Facts?
to Me and Just Me
Nash (7th Cir. 1990) suggests that facts
shouldn’t be understood as universal truths;
instead, facts can be much more
idiosyncratic
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C04 Summary

More Work with Facts: CCC v. Maclean (2d
Cir. 1994)
Raw
data are facts, averages of facts are
facts, predictions that disclose facts reveal
publishable facts
Real predictions, with judgment and
evaluation and sifting and selecting data
aren’t facts
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C04 Summary

Copyrights in Compilations
As
per the definition, meaningful selection,
coordination and arrangement key
Focusing on particular characteristics of the
cars, as Maclean did with The Red Book,
critical
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C05 Derivative Works

Change Critical
v. A.R.T. (7th Cir. 1997) rejects
mounting of notecard on tile as sufficiently
transformative to create derivative work
Understandable given physical baselines
such as framing
Possibly troublesome given importance of
price discrimination
Lee
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C05 Summary

Controlling New Uses
(7th Cir. 2002): Derivative works
definition critical for setting scope of new
productive uses, such as For Love of
Beanie Babies
But also need to understand scope of fair
use
Ty
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C05 Summary

Skyy I (9th Cir. 2000) and Skyy II (9th Cir.
2003)
Good
discussion of copyright issues for
photographs
Court finds bottle not copyrightable and
label was only text (compare Quality King)
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C05 Summary
Nice
framing of merger doctrine: don’t use it
to prevent copyright in first work, instead
use it as a defense to infringement for
second work
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C06 Characters

Characters
Identifiability
should be critical, through
some combination of name or
characteristics
In Gaiman (7th Cir. 2004), Posner ties a
great deal to illustrations coupled with
names and speech
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C06 Summary
Note
forfeiture regime for unlawful use in
derivative works in 103(a) as seen in
Anderson
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C07 Governmental Works

Governmental Works
Section
105
US governmental works not copyrighted
 Says nothing about state works

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C07 Summary
Two
Approaches
Authorship: Judges and Legislators
 Content Itself

(5th Cir. 2002) (en banc) majority
rejects notion that prior caselaw should turn
on source of author
How do we police takings through
enactment?
Veeck
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C08 Authorship

Key Statutes
Definition

“by or under the authority of the author”
Definition

March 18, 2016
of “fixed”
of “work made for hire”
Employee within scope or nine categories of
commission works pursuant to agreement
addressing status
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C08 Summary
Sec.
201 on Ownership of Copyright
201(a): owner is author
 201(b): hiring party is author for work made
for hire


Consequences
Joint
March 18, 2016
authors both have author status
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C08 Summary
Duration
Life of the author + 70 years for ordinary
work (302(a))
 Lesser of 95 years after publication or 120
years after creation for work made for hire

Termination

March 18, 2016
(203(a))
Termination rights don’t apply for work made
for hire
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C08 Summary

Lindsay (SDNY, 1999)
Nice
case of separating the creative work of
authoring from the fixing in the TME
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C08 Summary

This Test in CCNV v. Reid (US, 1989)
“To
determine whether a work is for hire
under the Act, a court first should ascertain,
using principles of general common law of
agency, whether the work was prepared by
an employee or an independent contractor.
After making this determination, the court
can apply the appropriate subsection of §
101.”
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C09 Ownership

Key Points
Childress
(2d Cir. 1991) offers narrow
sense of joint work/coauthorship
Each needs to make copyrightable
contribution
 Mutual intent to be coauthors

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C09 Summary
Matching
Mutual Intent and Waivability of
Authorship Status

Statute suggests narrow limits on waivability
of authorship status
• WMFH doctrine
• Key is to police waiving of termination rights:
allow assignment but not waiver of authorship

March 18, 2016
Mutual intent test may prevent coauthorship
from arising, as seen in Thomson v. Larson
(2d Cir. 1998)
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C09 Summary
Suggest may see fair number of examples
of “joined and separate” works as in Effects
Associates (9th Cir. 1990)
 Understanding re licensed uses will be key
in those cases
 Effects holds that oral license suffices for
nonexclusive license

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C10 Duration

Authoring Incentives and Present-Value
Calculations
Existing Works v. Future Works

Use Incentives for Existing Works

 Enhanced


March 18, 2016
Uses
Avoid possibly high transaction costs of licensing for
new uses
Elimination of monop should increase consumptive
uses
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C10 Summary

Eldred (US, 2003) and the Constitution
Copyright
Clause
History v. Logic
 What does limited times mean?

• Periodic grants v. unlimited grants
The

March 18, 2016
First Amendment
Ideas v. Expression
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C11 Proof of Copying

How Do We Do It?
Direct

Evidence Case
“I did it, but it doesn’t matter”
Indirect

Evidence
Two Key Approaches
• Access + Measure of Similarity
• Striking Similarity with Weak/No Evidence of
Access
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C11 Summary

Who decides?: Arnstein (2d Cir. 1946)
 “The
question, therefore, is whether defendant
took from plaintiff's works so much of what is
pleasing to the ears of lay listeners, who
comprise the audience for whom such popular
music is composed, that defendant wrongfully
appropriated something which belongs to the
plaintiff. Surely, then, we have an issue of fact
which a jury is peculiarly fitted to determine.”
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C11 Summary

Unconscious Copying
Bright
Tunes v. Harrisongs (SDNY, 1976)
No aware intent of copying yet court still
finds copying
 What is an author to do?

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C11 Summary

Evidence of Access
Bouchat

March 18, 2016
(4th Cir. 2001):
“ … [T]his court recognizes that striking
similarity is one way to demonstrate access.
Access remains an indispensable part of a
copyright infringement claim.
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C11 Summary

“It is clear that a showing of striking similarity does
not per se relieve the plaintiff of his burden of
establishing access. However, striking similarity is
circumstantial evidence of copying, thereby
supporting an inference of access. What is
important is that the access prong remains intact,
but the level of similarity between the contested
works can be used as evidence of access. Any
finding of access must be reasonable in light of all
of the facts of a particular case.”
Expect
professionals to develop
mechanisms for proof
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C12 Distribution and FirstSale Doctrine

109 and First-Sale Doctrine
 Created
in statute as follow on to Bobbs-Merrill
(US, 1908)

Bobbs as copyright case, not contract case
 Allows
owner of copy of work to sell that work to
others
 Can do more than sell, but music and computer
software amendments restrict rental/lease/lending
rights
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C12 Summary

Perfect 10 v. Google (9th Cir. 2007)
Distinguishes
links from thumbnails on
Google servers
Linking rejected as display or distribution
On the thumbnails:

March 18, 2016
“In sum, based on the plain language of the
statute, a person displays a photographic
image by using a computer to fill a computer
screen with a copy of the photographic
image fixedCopyright
in the
computer’s memory.
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C12 Summary

March 18, 2016
“There is no dispute that Google’s
computers store thumbnail versions of
Perfect 10’s copyrighted images and
communicate copies of those thumbnails to
Google’s users. Therefore, Perfect 10 has
made a prima facie case that Google’s
communication of its stored thumbnail
images directly infringes Perfect 10’s display
right.”
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C13: Fair Use: Parody

The Court’s Analysis in Campbell (US,
1994)
Key
aspect of parody is need to use some
of the work to invoke it
Parody as criticism of a work and as the
“joinder of reference and ridicule”
Not a vision of use simply as best way to tell
story (hence rejection of O.J. Simpson
version of The Cat in the Hat (9th Cir.
1997)).
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C14: Fair Use: Political
Speech

Owning Facts?
Need
to separate out historical facts, not
protected under 102(b), from expressive
material
The trick is what counts as the latter, given
the newsworthiness, certainly for public
political figures, of “Ford thinks X about
Kissinger”
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C14 Summary

Assessing the Fourth Fair Use Factor and
Defining Markets

March 18, 2016
In Harper (US, 1985), effect on first serial
rights, not the overall effect on sales of the
memoirs
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C15: Fair Use: Transaction
Costs

Sec. 108: The Reproduction Right for
Libraries
Doesn’t
alter fair use analysis, see 108(f)(4)
Interesting for the ways in which it frames
acceptable copying by libraries
Can copy destroyed or stolen works only if
can’t get original at fair price (108(c))
 Can copy only one article at a time from
journals (108(d))

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C15 Summary


Can copy entire work for patron only if can’t
get original at fair price (108(e))
Analysis in Michigan Document Services
(6th Cir. 1996) (en banc)
Majority
opinion doesn’t concede that
single-copy private use photocopying is
permissible
But even if it were:

March 18, 2016
Can’t simply scale up legitimate uses
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C15 Summary

March 18, 2016
Reducing in transaction costs from moving
to individual self-copying to delegated
copying via agent to professional copy
services changes importantly scale of
copying and consequences for market for
permission fees
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C15: Summary

The Fourth Factor, Again
 Critical
point of separation between dissents and
majority opinion is how we should judge market
impact
 The market for the original work itself or for the
adjacent market for permissions
 Focusing on the latter confers broad authority on
copyright holders to constrict fair use by making
markets in the desired uses
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C15 Summary

Sega v. Accolade (9th Cir. 1992)
Approves
intermediate copying to get at
functionality buried in copyrighted code
102(b) assigns property rights in that
functionality to the public
Uses fair use to protect the intermediate
copying that gets us to that functionality
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C16 Third-Party Liability

Key Idea
Circumstances
under which we want to
make a third party liable for another
person’s conduct
Might do this to incentivize the third-party as
a copyright enforcer
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C16 Summary

The Result in Sony (US, 1984): Two Key
Outcomes
Home
Time-Shifting as Fair Use
The Substantial Noninfringing Use Test
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C16 Summary

Grokster (US, 2005)
3-3-3
analysis on Sony
Sup Ct adds inducement analysis from
271(b) of the Patent Act to copyright law
Parallels move made in Sony itself (which
did the same thing with 271(c))
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C17 Enforcement and
Damages

Variety of Statutory Remedies
Sec.
502: Injunctions
Sec. 503: Impounding and destroying
Sec. 509: Seizure and forfeiture

Sec. 504 Damages
Damages
+ Profits or Statutory Damages
Designed to ensure no harm but also by
grabbing profits to induce users to negotiate
up front.
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C17 Summary

Davis (2d Cir. 2001)
“
… [W]e can see little reason not to
consider the market value of the uncollected
license fee as an element of ‘actual
damages’ under § 504(b).”
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C17 Summary

Frank v. MGM (9th Cir. 1985)
1.

2.
Joint Production and Costs
To what extent should we attribute joint
costs—the indirect costs—to this particular
show?
Joint Production and Profits
Suppose show is a loss leader, so that MGM
can make money on gambling
 How do we calculate profits?

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C17 Summary
3.
Allocating Profits from Mix of Infringing
and Non-Infringing Work
Pro rata: 100 minutes of show, 11 minutes
of Kismet: 11/100 of the profits?
 Market test: After dropping Kismet, profits
continued as before, so Kismet didn’t
contribute to profits?

March 18, 2016
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C18 DMCA

Use v. Access
Copyright
proper says little about access
rights; just addresses legal and illegal uses

DMCA
Validates
a set of locks, as to both access
and use
Breaking control measure is separate
violation
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C18 Summary

Sony and the DMCA
RealNetworks
v. Streambox: DMCA creates
separate violation for circumvention,
independent of Sony analysis

Universal City Studios v. Reimerdes (SDNY
2000) (2d Cir. 2001)
Finds
posting of DeCSS and linking to it to
be violation of DMCA
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C19 Music

AHRA (RIAA v. Diamond, (9th Cir. 1999))
Alternative
approach to copyright
Royalty system on devices and media in
exchange for private copying right for music
in Sec 1008
PC clearly excluded from system; does that
mean that songs can be laundered through
the PC to be loaded on the Rio? Court says
yes.
March 18, 2016
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C19 Summary

Separating Musical Works and Sound
Recordings
102(a)(2)
vs. 102(a)(7)
Important differences regarding scope of
control over public performance right (full
right for musical works under 106(4), much
more narrow right for sound recordings
under 106(6)
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C19 Summary
Key
differences on 106(1) and 106(2) rights,
with 114 narrowing those rights for sound
recordings

March 18, 2016
Critical for protecting independent creation
of other sound recordings
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C19 Summary

Sec. 115’s Compulsory License for Covers
Creates
right of use to make covers of
musical works after first distribution of
phonorecord
Historical artifact of transition from WhiteSmith regime to 1909 Copyright Act
March 18, 2016
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C19 Summary

Music Sampling
 Scope
of De Minimis Exception for Use of
Copyrighted Works (Newton v. Diamond (9th Cir.
2003))

Asserts de minimis copying idea to allow small uses
of underlying musical composition
 Remixing
Limits of Sec. 114 (Bridgeport v.
Dimension Films (6th Cir. 2005))

March 18, 2016
Relies on 114 use of remixing language to limit
nonconsensual sampling of sound recordings
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C20 Video

Controlling the Multiplication of Use
Sec.
106(4) right to perform publicly right
separates private, presumptively limited
use, from mass use
Broadcasting as a form of copying exposure

Cartoon Network (2d Cir. 2008)
Just
March 18, 2016
the VCR case again with a long cable?
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C21 Online Distribution

Scope of 512 Protection
Statute
creates safe harbors for critical
steps in moving packets across the internet,
storing them and helping people find them
March 18, 2016
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C21 Summary

Perfect 10 v. CCBill (9th Cir. 2007)
Offers
narrow interpretation of financial
benefit language in 512; requires that the
infringing activity be a direct draw
Distinguishes hyperlinking from rest of
business and suggests that even if
hyperlinking protected under 512(d) that
doesn’t confer protection on the rest of the
business
March 18, 2016
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C21 Summary

YouTube
How
will Sony, Grokster and 512 apply to
user-posted video content?
Does YouTube just store per 512(c)? Or
does it distribute, display or perform in
addition to storing videos?
March 18, 2016
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C22 Copyright Misuse


Evolving common law doctrine
Basis for Liability: Use copyright
to
block competitor (Practice Management
(9th Cir. 1997))
To control public domain content
(WIREdata (7th Cir. 2003))
To block criticism (Video Pipeline)
March 18, 2016
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C23 State Law Claims

Sec. 301
Key
move in 1976 Act
Switch from publication to fixation reduces
role for state copyright law
 Federal law kicks in much earlier

301
recognizes continued role for state law
copyright for unfixed works
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C23 Summary

Misappropriation Test in NBA v. Motorola (2d Cir.
1997): Five Elements
 Plaintiff
gathers info at a cost
 Info is time-sensitive
 Defendant free-rides on plaintiff’s efforts
 Defendant’s service competes with that offered by
plaintiff
 Free-riding would “substantially threaten” plaintiff’s
incentives to produce the product in question
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C23 Summary

Contracts
(7th Cir. 1996) suggests strong
continuing role for contractual controls over
copyrighted works
Key point is absent of equivalence with
copyright
ProCD
Copyright good against all
 Contract just as to parties

March 18, 2016
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C24 International Issues

Separating Foreign and Domestic Markets
Sec.
602 blocks importation of certain works
Two Cases of Interest
Round-trip case: Quality King (US, 1998)
analysis says that 602 doesn’t block
importation in this case
 Foreign-production case: Importation
blocked

March 18, 2016
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C24 Summary

March 18, 2016
Odd result, as pushes producer wanting
US/foreign price discrimination to move to
technical market separation (DVD regional
encoding) or to producing works to be sold
in foreign markets in those markets
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C24 Summary


How should we enforce copyright with
multiple jurisdictions?
Two Paths
Sue

March 18, 2016
as foreigner in other country
Need to understand treaties and
conventions
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C24 Summary
Sue
in home country and take judgment to
foreign country

That requires assessment of extent to which
domestic law applies to acts outside the
country (extraterritoriality)
• Subafilms (9th Cir. 1994) tells us US copyright
law doesn’t apply outside the country
March 18, 2016
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C24 Summary

Also requires assessment of whether foreign
country will recognize domestic judgment
• Saw version of this for US recognition of French
judgment in Saul Louis Feraud v. Viewfinder (2d
Cir. 2007)
– Key question is how public policy exception should
apply to intersection of copyright and First Amendment
March 18, 2016
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C25 Copyright and the
Constitution

Martignon (2d Cir. 2007)
Finds
power under Commerce Clause to
pass 18 USC 2319A notwithstanding that it
is of unlimited duration

March 18, 2016
Key issue is extent to which one
constitutional provision—the Copyright
Clause—limits power under a second, here
the Commerce Clause
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78
C25 Summary

Golan (10th Cir. 2007)
Finds
First Amendment limits on 104A
attempted restoration of copyright foreign
works that had entered public domain by
accident
March 18, 2016
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