Copyright Infringement I
Intro to IP – Prof Merges
2.16.12
Contracting around termination
events
1938: License to Penguin
1994: “New agreement for continued
publication”; changed the economic terms of
the 1938 Agreement, mostly to Elaine
Steinbeck's benefit, by requiring Penguin to
provide a far larger annual guaranteed
advance, and royalties of between ten and
fifteen percent of retail (rather than
wholesale) sales.
Descent of copyrights
• Steinbeck  widow Elaine  her children
• Excluded other heirs of John Steinbeck,
including his only surviving son, Thomas
• Thomas filed a notice of termination in 2004
and filed suit vs. Penguin
What about the statute?
• “Termination of the grant may
be effected notwithstanding any
agreement to the contrary”
• 17 USC §304(c)(5)
Penguin Group v. Steinbeck,
537 F.3d 193 (2d Cir. 2008).
Critique of Milne/Steinbeck
Peter Menell and David Nimmer, PoohPoohing Copyright Laws "Inalienable"
Termination Rights, 57 J. Copyright
Soc’y 799 (2010)
The Pro- view
THE RIGHT OF TERMINATION IN
COPYRIGHT LAW: THE SECOND CIRCUIT'S
DECISION IN PENGUIN GROUP (USA) INC. V.
STEINBECK BODES WELL FOR AUTHORS, by
Michael A. DeLisa, 43 Loy. L.A. L. Rev. 273
(2009)
On to infringement
• Elements of copyright infringement
• Application of “substantial similarity”
standard
• Different types of subject matter: music,
graphics, computer software
Arnstein v. Porter
• Cole Porter
• Standard for proving infringement
Procedural History
• District court granted defendant Porter’s
Summary Judgment motion
• Can you guess why?
Standard for Infringement
• Copying
• Improper Appropriation
Two elements in Arnstein
(a) that defendant copied from
plaintiff’s copyrighted work and
(b) that the copying (assuming it
to be proved) went so far as to
constitute improper
appropriation. – p. 521
Element 1: Copying: P. 521
• Proof of “access” or other circumstantial
evidence of copying
• “Striking similarity”
– “must be so striking as to preclude the possibility
[of independent creation]”
Element 1: Copying
• Issue of fact
• Evidence here?
– Objective: publication and dissemination of
plaintiff’s songs
– Testimonial: plaintiff’s deposition
Copying facts here
• “Fantastic” evidence
• How to balance with more objective
evidence
– Wide distribution of copyrighted work
– Defendant’s testimony: no actual access
Access & improper appropriation
After listening to the compositions … we find
similarities; but we hold that unquestionably,
standing alone, they do not compel the
conclusion, or permit the inference, that
defendant copied. The similarities, however,
are sufficient so that, if there is enough
evidence of access to permit the case to go to
the jury, the jury may properly infer that the
similarities did not result from coincidence.
-- p. 522
Improper appropriation
• “substantial similarity” – versus “probative”
similarity” (Notes p. 525 )
• Effect on the “lay listener”, the ordinary
audience member, is what counts
• But: expert witness testimony is admissible too
Judge Clark dissent
• Music is intellectual too; three- four- and fivenote sequences are repeated in both
compositions
• But this is not enough
• Arnstein v. Edward Marks, 12 note sequence
infringed
Second v. 7th Circuit on Access
• 2nd: No evidence of access if there is enough
similarity
• 7th: Must show some evidence of access to
support infringement case
• Posner reconciliation - ?
Harrisongs case
Nichols V. Universal Pictures (2d Cir.
1930)
• Did the film
“The Cohens
and the Kellys”
infringe the
play “Abie’s
Irish Rose”?
NY Times
Abie's Irish Rose: Review
Published: May 24, 1922
The play has its little sermon that earned one of
the heartiest bits of applause last night. Priest
and rabbi, it appeared, also had met "over
there." "I gave the last rites to many Jewish
boys," said the fighting chaplain. "And I to many
of your Catholic lads," the Jewish chaplain
replied. "We're all on the same road, I guess,
even though we do travel by different trains."
Judge Hand Opinion
• “It is of course essential to any protection of
literary property, whether at common law or
under the statute, that the right cannot be
limited literally to the text, else a plagiarist
would escape by immaterial variations.”
Types of infringement
• “block in situ” (in whole), vs.
• “an abstract of the whole”
Nichols : Abstractions test
“Upon any work, and especially upon
a play, a great number of patterns of
increasing generality will fit equally
well, as more and more of the
incident is left out…there is a point
in this series of abstractions where
they are no longer protected.” [since
they are idea]
Abstraction Test
• Abie’s Irish Rose
• Cohens and Kellys
– I. Jewish and Irish
families
– I. Jewish and Irish
families
– One wealthy, one not
– Both poor (at start)
– Strangers to each other
– Long-time enemies
– A. Son and daughter
marry
– A. Son and daughter
marry
– Twins born
– Single child born
Nichols Abstraction Test
I. A. 1. B. 1. 2. II.
I. A. 1. a. b. c. i. B. 1. 2. a. b. i. ii. II.
Nichols Abstraction Test
I. II.
I. A. 1. a. b. c. i. B. 1. 2. a. b. i. ii. II.
Levels Of Abstraction
Story - Main Idea
Plot Outline
Subplots
General Characters and Scenes
Specific Character Elements
Text
Why are “high level” abstractions
of plot not copyrightable?
• Ideas, not expression
• Theory of relativity, or evolution: basic ideas,
too general to be protected
• Similar to section 101 of Patent Act . . .
“Character test”
• Can a character, standing independent from
plot, be copyrighted?
• If so, how? And how far would that copyright
reach?
“Stock Characters”
• Low-comedy ethnic characters
• Example of “scenes-a-faire” – standard
“setups” or scenes
• Drunken Irishman, nosy neighbor, irritating
mother in law, comic sidekick, etc etc
Play it Again, Sam
Ideas cannot be protected
• “[Plaintiff’s] copyright did not cover
everything that might be drawn from her
play; its content went to some extent into the
public domain . . .”
Steinberg v. Columbia Pictures,
Inc. – Problem 4-28
• New Yorker cover, movie poster
Elements
• Ownership
• Copying
– Access
– Improper Appropriation
Analysis
• Lay Observer
• Common sense’ side-by-side comparison
Similarities and Differences
• 4 block view
• Details of distant city?
What do you compare?
• The whole of the copied portions of the
Plaintiff’s work, including individually
uncopyrightable elements like ideas and
scenes a faire?
• OR only the copied portions that are
copyrightable?
Sampling
• Bridgeport Music, Inc. v. Dimension Films,
410 F.3d 792 (6th Cir. 2005).
Bridgeport Music
Bridgeport, compare to Beastie
Boys – IPNTA 5th p. 533-534
• Sound recording (remixes)
• Versus musical composition
• De Minimis doctrine
The letters may have been taken more as a
means of capitalizing on the interest in
Salinger than in providing a critical study of
the author. (Salinger v. Random House, 811
F.2d 90 (2d Cir. 1987).
CONTU Report
National Commission on New Technological
Uses of Copyrighted Works, Final Report
(1979)
Basis for Copyright Act 1980 revisions
CONTU Report
“[C]omputer programs, to the extent that they
embody an author’s original creation, are
proper subject matter of copyright.”
“[C]opyright protection for programs does not
threaten to block the use of ideas or program
language previously developed by others when
that use is necessary to achieve a certain result.
When other language is available, programmers
are free to read copyrighted programs and use the
ideas embodied in them in preparing their own
works.”
-- CONTU Report at 20.
“One is always free to make the machine do the
same thing as it would if it had the copyrighted
work placed in it, but only by one’s own creative
effort rather than by piracy.”
CONTU Report at 21.
The problem with copyright
• The line between unprotectable idea and
protectable expression is (a) difficult to
define, and (b) a crucial “policy fulcrum”
under copyright law
Late 1980s, early 1990s Copyright
Cases
• “Abstraction, filtration, comparison” test:
Computer Associates
The end of copyright’s effectiveness
Peter S. Menell, An Epitaph for Traditional
Copyright Protection of Network Features of
Computer Software, 43 Antitrust Bull. 651
(1998)
Computer Associates v. Altai
• Background
• Facts
• 3-step test
CA test
• Abstraction
• Filtration
• Comparison