(c) 2004 West Legal Studies in Business A Division of Thomson Learning 1 Copyright –The U.S....

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

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Copyright

– The U.S. Constitution gives power to Congress• “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”

– Copyright Acts of 1790…. 1909 …1976 the Lanham Act

• Copyright law has had to change as technology changed

– Role of courts • Balance the right of the author against the right of

society to have access to copy the work


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Subject Matter of Copyrights

• Literary works• Musical works “Phantom of the Opera”• Dramatic works• Pantomimes/choreographic works• Pictorial, graphical and sculptural works• Motion pictures and audiovisual works• Sound recordings• Architectural works


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Categories Should Be Viewed Broadly.

– Pictorial, graphical and sculptural works include maps and architectural plans

– Literary works include computer programs and most "compilations" • “set of statements or instructions to be used

directly or indirectly in a computer in order to bring about a certain result”


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Work Must be

– Original - not copied, but an independent work

– Creative – not a new idea, but a new expression of the idea

– Fixed in a tangible medium of expression• Embodied in a form which enables it to be

perceived, reproduced, or otherwise communicated for a period of more than transitory duration


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Fixed in a Tangible Medium of Expression

• Any idea, procedure, process, system, method of operation, concept, principle or discovery unless fixed in a tangible form

• The idea that God created the universe is not copyrightable, but an artist’s painting of God creating the universe is copyrightable

• Copyright law protects the expression of the idea, not the idea itself

• Not the dance itself, the visual recording of the dance

• Not the idea for the website design, but the website design coded and fixed in floppy disks, compact disks, or other digital storage devices


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Who Can Claim a Copyright?

• Copyright protection exits from the time the work is created in fixed form. – The copyright in the work of authorship immediately

becomes the property of the author who created the work. Only the author or those deriving their rights through the author can rightfully claim copyright.

• No publication or registration or other action in the Copyright Office is required to secure copyright. – There are, however, certain definite advantages to

registration.


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When is a Work Created” • A work is "created" when it is fixed in a

copy or phonorecord for the first time. – "Copies" are

• material objects from which a work can be read or visually perceived either directly or with the aid of a machine or device, such as books, manuscripts, sheet music, film, videotape, or microfilm.

– "Phonorecords" are • material objects embodying fixations of sounds

(excluding, by statutory definition, motion picture soundtracks), such as cassette tapes, CDs, or LPs.

• Thus, for example, a song (the "work") can be fixed in sheet music (" copies") or in phonograph disks (" phonorecords"), or both.


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Work Prepared Over a Period of Time

• If a work is prepared over a period of time, the part of the work that is fixed on a particular date constitutes the created work as of that date.


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Works for Hire• The copyright vests in the author of

the work.• The author of the work may not be

the creator.– If the employee creates the work as

part of the job, the author is the employer.

– If the work is commissioned work “work for hire,” the author is the employer• Split in circuits: agreement to work for hire

needs to be in writing, but when? Before or after work is made?


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The Copyright Law Defines a “Work Made for Hire"

• (1) a work prepared by an employee within the scope of his or her employment; or

• (2) a work specially ordered or commissioned for use as: – a contribution to a collective work – a part of a motion picture or other audiovisual work – a translation – a supplementary work – a compilation – an instructional text – a test – answer material for a test – a sound recording – an atlas


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“Work Made for Hire”

• If the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire

• Circuit Courts are split as to when the writing has to be made before or after the work has begun


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The authors of a joint work

Co-owners of the copyright in the work, unless there is an agreement to the contrary.


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Requirements for Registration in the Copyright Office

• Completed registration form and a submission of the original work.

• Floppy disk of the Web site is acceptable as the original work

• Copyright office will issue to the owner a certificate of registration

• Certificate is prima facie evidence to prove copyright registration and ownership

• Allows owner to sue in federal court• Allows owner to ask for statutory remedies


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Duration of a Copyright

• Sonny Bono Copyright Term Extension Act (CETA) – Extends copyright protection by 20 years

• Copyright issued before Jan 1 1978: endure for 28 years with option to renew for 67 years

• After Jan 1 1978: endure for the life of the author plus an additional 70 years after the author’s death.


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Constitutional Challenge to the Sonny Bono Copyright Term

Extension Act

• Eldred v. Ashcroft

– Supreme Court found it constitutional – Congress had the power to extend the term


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Exclusive Statutory Rights of a Copyright Owner

• 1. To reproduce the copyrighted work

• 2. To sell, rent, lease, or otherwise distribute copies of the copyrighted work to the public

• 3. To prepare derivative works based on the copyrighted work

• 4. To perform and display publicly the copyrighted work


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Right to Reproduce the Work

• Is downloading and storing a copy in RAM unauthorized reproducing? – No

• 1984 District Ct.: Apple Computer v. Formula International

– Court thought it was not copied when put on ram in electronic form

– Yes • 1993 9th Circuit: MAI Systems Corp v. Peak Computer, Inc.

• Scanning copyrighted printed documents? Yes

• Uploading digital copyrighted files to or downloading from a bulletin board? Yes


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Right of Distribution: Selling, Renting, or Leasing

Copies• Is a bulletin board operator liable for

unauthorized distribution when his clients upload and download copyrighted work?– Yes

• 1993 District court in Florida: Playboy Entertainment, Inc. v. Fena: Unauthorized photographs of Playboy Enterprises were uploaded to a bulletin board system by the defendant’s subscribers, and then downloaded by subscribers.

– Subscribers were copying when downloaded– BB operator was distributing when let others

upload and download


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Right of Distribution continued

• Is forwarded and attached e-mail of copyrighted works unauthorized distribution?– Yes

• Is putting someone else's clip-art on my web page unauthorized distribution? – Yes, because the art can be downloaded by

others• 1997 District court in Illinois Marobie-Fl. Inc. v.

National Ass’n of Fire Equip. Distribs.: – Plaintiff’s electronic clip-art files were placed on the

defendant’s Web page = distribution because they could be downloaded by others from the defendant’s web site


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• Is linking to a surface page of a web site distributing ( or reproducing) someone’s copyrighted web page?– There have been several cases questioning

that linking may be copying another’s homepage to my computer

– No? • Linking to the home page of a web site by giving

the URL (directions) is not copying

– Should a person get permission to link? • Most people who have websites want the public to

link to them, but it is safer to get permission


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• Is it unauthorized distribution to copy someone’s database and sell it? – Not copyrightable

• 1991 U.S. Supreme Court: Feist Publication, Inc. v. Rural Telephone Services Inc.: nothing creative about arranging names alphabetically

– Yes copyrightable• CCC Information services, Inc. v. McAllen Hunter

Market Reports,Inc. 2nd Circuit said: “Red Book” was original because the compilation included the selection of optional features in a unique fashion, made an adjustment for mileage in five-thousand–mile increments and used the concept of an “average” vehicle as the subject of evaluation

– A Database should be designed to be “more than alphabetical” so it is copyrightable


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Right to Prepare Derivative Works

• What is a derivative work ?– a work based upon one or more pre-

existing works, such as a translation, musical arrangement, dramatization fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation or any other form in which a work may be recast, transformed or adopted.


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Derivative Works continued

• Enhancement? Is it unauthorized preparation of a derivative work?– Yes – if have to copy the first one to create the

second enhanced one• Lewis Galoob Toys, Inc. v. Nintendo, Inc. (9th Cir.

1962)– Not infringement because found a way to enhance the

audiovisual displays without incorporating the underlying work in any permanent form

• A website should not be an adaptation of another website – get an indemnity contract with your designer


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Right to Perform and Display Publicly

• Public performance is when the performance occurs at a place open to the public– Columbia Pictures, Ind. v. Aveco, Inc. (3rd Cir. 1986),

defendant improperly authorized public performances by renting videotapes and allowed customers to see the tapes in viewing rooms – rooms were open to the public

• Is displaying someone else’s web material on a monitor for training purposes unauthorized display? Yes

• Is making available a copyrighted videotape over the Internet unauthorized display? Yes

• Is posting someone else’s clip art unauthorized display? Yes– Michaels v. Internet Enter. Group, Inc. (C.D. Cal. 1998)


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Theories of Liability for Copyright Infringement

• Direct Infringement• Contributory Infringement• Vicarious Infringement


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Direct Infringement

• Have to prove:

– 1) Have a copyright – 2) One who with or without intent to infringe

violates one of the copyright owner’s exclusive statutory rights

• Strict liability statute = no need knowledge of infringement or intent to infringe

• However, courts said there had to be some intent when they looked at infringement by service providers


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Contributory Infringement

• A person with knowledge or reason to know of the infringing activity causes or materially contributes to the conduct of the direct infringer.

• To have contributory infringement, some one must have directly infringed


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Vicarious Infringement

• Company receives direct financial benefit from the infringement by another party and has the right and ability to supervise the infringement activity – no knowledge or participation necessary


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Are Internet Service Providers Operators Liable for Direct Infringement When Their

Clients Infringe?

• Religious Tech. Ctr. V. Netcom On Line Communications Servs., Inc. – RTC and BPI had copyrights in the unpublished and

published works of L. Ron Hubbard, the late founder of the Church of Scientology.

• Dennis Ehrlich is a former minister of Scientology turned vocal critic of the church

• He has the Usenet news group alt.religion.scientology and online forum for discussion and criticism of Scientology

• He posted parts of the works of Hubbard• He gained access through Thomas Klemesrud’s computer

BBS• Klemesrud operates the BBS and is not directly linked to the

Internet, but gains connection through the facilities of Netcom On-Line Communications


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1995 Religious TechnologyFound Differently Than

Playboy Enterprises v. Fern • Religious Technology found there

had to be some volition or causation for a service provider to be liable for direct infringement,

• (reproducing and distributing) even though it was a strict liability statute.


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1998 Congress reacted to Religious Tech. by passing DMCA

• Digital Millennium Copyright Act provides “safe harbors” from infringement liability to online service providers (OSPs or ISPs).

• It codified the case law: the OSP is a mere conduit of posted copyright material by others, similar to a library or bookstore.


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Not liable under DMCA if:

• Adopt and implement reasonable policies providing for the termination of users who repeatedly infringe upon the rights of others

• Accommodate and do not interfere with copyright owners’ standard technical measures used to protect and identify copyrights– Then can:

• Store bulletin board material• Let caching happen on the system• Transmit and route the material


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Could a Bulletin Board Operator or a Service Provider be Liable for

Contributory Infringement When Its Clients Infringe?• Yes

– 1996 Sega Enterprises v. Maphia When a person has knowledge that a user is copying a document or could monitor such activity and carelessly avoided doing so, there is contributory copyright infringement

• Sega has copyright on game programs• Maphia is BB managed by Chad Sherman• BB is linked to Pshchosis, operated by Caffeine, part of a

network called PARSAC. • Users of Sherman’s BBS would transfer online, unauthorized

versions of Sega games through uploading to MAPHIA, and downloading from it.

• Sega sued them all for copyright, trademark infringement and unfair competitions asking for injunction and summary judgment


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Sega continued

• Court looked to Religious Technology v. Netcom and found that the BB operator was not liable for direct infringement

• But court recognized that Sherman in Sega could be contributorily liable– With knowledge of the infringing activity,

induces, causes or materially contributes to the infringing conduct of another


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Employer/manager could be contributorily liable

• For contributory infringement, if a manager knows that an employee is consistently using e-mail to forward or attach copyrighted material to others and allows this to continue– Sherman provided facilities, direction,

knowledge, encouragement, and sought profit

– Sherman was liable


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Defenses to Copyright Infringement

• Fair Use• First Sale Doctrine• Public domain• Can copy it on one’s own computer to use it• Can make a back-up copy• Can claim “no knowledge” that it was

copyrighted and avoid the willful provision– if “circled c” is on the work – cannot claim no

knowledge


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“Fair Use” Test Used by Courts

• (1)More “informational and factual it is, the more likely it is to be able to be “fair use”

• (2)Amount and substantiality of the copied material in relation to the whole.– Marcus v. Rowley and Encyclopedia Britannica Ed., Corp.

v. Crooks• Can’t copy large portions of a work

• (3)Impact of the use on the potential market value of the copyrighted work– If you copy too much, people will not have to buy the

work


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Copyright Infringement Case Using the “Fair Use Defense”

• Sony Corp. v. Universal City Studios, Inc. (U.S. 1984)– If it is used for commercial purpose, the

presumption is that it is not fair use and defendant must rebut – which Sony did • by showing Betamax had other major uses:

“time shifting” which was a substantial non-infringing use

– Manufacturers of VCRs were not liable for copyright infringement


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First Sale Doctrine

• When lawfully acquired, the owner of a copy is entitled, without authority, to sell that copy

• This doesn’t work with electronic works– When you sell a book you don’t have it

any longer. – When you sell an electronic copy or give

it away, you can still have the original


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Public Domain

• All the works of the U.S. Government• Works whose copyright term has

expired– See case challenging the extension of

copyright terms


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Remedies for Infringement

• Monetary damages: profits of defendant

• Statutory damages:– $750-$30,000– Willful up to $150,000– Attorney’s fees– PI or TRO

• Pay $118,000,000


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Not liable under DMCA if:

• Can:• Store bulletin board material• Let caching happen on the system• Transmit and route the material

• If:– Adopt and implement reasonable policies

providing for the termination of users who repeatedly infringe upon the rights of others

– Anti-Circumvention of “Digital Locks”• Accommodate and do not interfere with copyright

owners’ standard technical measures used to protect and identify copyrights


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Anti-Circumvention of Digital Locks

• DMCA defines the distribution of circumvention tools – the manufacture, import, offer to the

public, to provide or otherwise traffic circumvention tools

– Universal v. Corley• Corley used a computer program called

DeCSS to decrypt the DVD content


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DMCA Safe Harbors

• Network system providers are exempt if provider– Uses proper notification of its policy regarding

alleged copyright infringement and establishes a company agent to be notified in the event of such infringement

• What about search engines, Internet service providers, hosting services, web sites with multiple links? – They should not be liable for contributory

infringement if they comply with DMCA


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A&M Records, Inc. v. Napster, Inc. (9th Circuit 2001)

• Court: issued preliminary injunction: probably copyright contributory infringement and vicarious infringement – While it waited for trial – Napster making deals w/ big music companies– Clones: Aimster.com, iMesh.com, BearShare.com,

LimeWare.com– Gnutella technology– Groove: researchers are using pcs for massive

computing to do cancer research, etc.

• Court ruled against Napster before it had all its deals done


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International Regulation and Enforcement of Copyright law

• TRIPS Agreement on trade-related Aspects of Intellectual Property– WTO treaty


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The Berne Convention for the Protection of Literary and Artistic

Works (Berne convention)

– National treatment– Non conditional protection – no formalities– Protection independent of the country of

origin– Common rules – basic minimum criteria and

procedures for granting literary artistic rights • Wang Meng v. Century Internet Communications

Technology – China• Int’l Federation of the Phonographic Industry v.

Olsson Sweden


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European Union Copyright Directive (EUCD)

• Passed by European Parliament 2001• Provides harmonization of copyright

protection for right holders• Establishes a universal definition of non-

commercial private copying• Authorizes the imposition of penalties for

decrypting• Can do limited replication for transient and

incidental purposes (to transmit)• EU members comply by summer 2002


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WIPO Copyright Treaty (WCT)

• 1996 builds on The Berne Convention• When infringement occurs is left to

individual state’s national law• But, all states must provide that there

is infringement when there is circumvention of anti-piracy technologies (decrypting)

• States must have enforcement procedures, none set out for all


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WIPO Performances and Phonograms Treaty

• 1996 Gives performers the right to control public distribution, manipulation, and rental rights of their works– Record company needs performer’s

permission to distribute

• Performers’ rights regulated by nation where he has rights


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Extraterritorial Enforcement of Domestic Copyrights

• Enforcement of U.S. copyright law elsewhere?

• U.S. judiciary is reluctant to extraterritorial enforcement– Subafilms Ltd., v. MGM-Pathe Communications

(1994)• U.S. copyright law did not extend to conduct engaged

in wholly beyond U.S. Borders, such as distribution of the film Yellow Submarine

– But - Steele v. Bulava Watch Co. (1952)• Infringement in Mexico, used U.S. law because of the

multiple contacts defendant had with the U.S.


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Multifactored Test Developed from Steele

• Vanity Fair Mills, Inc. v. T. Eaton Co. – Does defendant’s conduct have a

substantial effect on U.S. commerce?– Is the defendant a U.S. citizen?– Would extra territorial application

conflict with any 6 trademark rights established under foreign law?

(c) 2004 West Legal Studies in Business A Division of Thomson Learning 1 Copyright –The U.S....

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