Copyright Judd Spring 2010

8/2/2019 Copyright Judd Spring 2010

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Introduction

I. Module I: IntroductionA. Introduction

i. History:1. Statue of Anne

a. Grows from a literal monopoly granted by the British Crown toStationers Company

b. Provided:i. Exclusive printing rights for printed matterii. Explicit goal of information controlcreated choke point

for censorship

c. Rights:i. Right: printing booksii. Term: 14 years + 14 renewaliii. Requirements: registration + depositiv. Infringement: print, reprint, importv. Penalties: forfeiture, destruction, fines

2. Constitutional Mandatea. Article I, Section 8 of US Constitution Empowers Congress

i. To promote the Progress of Science and useful Arts, bysecuring for limited Times to Authors and Inventors the

exclusive Right to their respective Writings and

Discoveries.b. Copyright Statute: 17 U.S.C. 101-810; 1001-1101

3. Constitutional Designa. Congress is enabled, but not required to confer copyrightsb. This is the only specific right granted in the constitution

i. Contrasts with TM law which is enabled through theCommerce Clause

c. Congressional legislation can override state laws via theSupremacy Clause

d. Limited records regarding Founders IntentB. Copyright Acts

i. Initial Act- 17901. Based on Statute of Anne2. Coverage: maps, charts, books3. Right: print, reprint, publish, sell


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4. Term: 14 years + 14 renewal5. Renewal conditioned on authors survival6. Reqts: record title, publish record, deposit work7. Infringement: print, reprint, publish, import, or cause any of these

actions (secondary liability)8. Penalties: forfeiture, destruction, fines9. Expressly excluded foreign (jurisdiction or citizen) works from

coverage

ii. Amendments and Trends1. Subject matter eligible

a. 1802: printsb. 1831: musical compositionsc. 1856: dramatic compositionsd. 1865: photographse. 1870: paintings, drawings, sculpture, models, designsf. 1891: works by foreign authorsg. 1976: removal of most formalitiesh. 1990: architectural structures / plans

2. Entitlements (e.g., derivative works)a. 1856: public performance dramatic worksb. 1870: derivative works (dramatize / translate)c. 1976: termination of transferd. 1990: VARA

3. Durationa. 1831: 28 years + 14b. 1909: 28 years + 28c. 1976: life + 50d. 1998: life + 70 (Eldred)

4. Definition of infringement5. Frequent driver: technological change (piano rolls, jukeboxes, VCRs,

computers, internet, etc.)

iii. Copyright Act of 19761. Defining law for all works created after 1/1/78 and some works

created prior to that date

2. 1909 act is still in effect for many works still in use/circulation3. Features:


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a. Single federal system for all works (published andunpublished)

i. Added coverage for unpublished worksb. Streamlined terms of protection

i. Brings all renewals into single protectionc. Authors inalienable option for termination of transfers

i. This helps guard authors rightsd. Notice provisions

i. Without notice, copyright was forfeitedthis has beenchanged to comply with international regulations

e. Fair use and other limitationsf. New liabilities combined with compulsory licenseg. Establishment of Copyright Royalty Tribunalh. Divisibility

i. Right of distribution, reproduction etc these can be splitup

C. Theories of Copyright (IP) Lawi. Ideas v. Tangible Property

1. Ideas lack excludability2. Possession is non-rivalrous

a. No danger of overuse or overdistributionb. No danger of fighting over who gets to use themc. Everyone can use them without diminishing their valued. Thus, need to justify exclusive rights in ideas, or embodiments

of those ideas, a different way.

ii. Traditional Justifications for IP Protection1. Natural Rights John Locke

a. Sweat of the Brow theorydeserve something as a benefit foryour hard work

b. Limits:i. Tells us rights holders should have control over rights,

but doesnt say how long control should last and who

should benefit

2. Personhood/Personality Theories - Hegel


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a. Certain objects are closely bound up with personhoodbecause they are part of the way we constitute ourselves as

personal entities in the world.

b. Property as a means for self-actualization, personal expressionand individual dignity

c. Rights of integrity and attributiond. Tied up with unfair competition, defamation, privacy and

publicity rights

e. Less applicable to collective efforts and other copyrightableworks that evoke less of a personal touch

f. Moral rights is an outgrowth of this theory of property law3. Utilitarian/Economic Incentive

a. Most common modern justification, especially in the U.S.b. Advancement of public welfare by encouraging artists and

inventors to invest time and resources in their creations

4. Copyright as Monopoly?a. Promoting Creativityb. Public good and free-rider problemc. Thus, to provide incentives, restrictions on free market

competition

d. This limits dissemination of informatione. Balance social costs of IPR v. public interest in creation of

public good

f. Limits on scope, duration and effecti. If so, is it necessary?

5. Landes/Posner Factorsa. Copy not a perfect substituteb. Involvement of some original expressionc. Copying takes timed. Contractual alternativese. Technological fixesf. Owner benefits from copyability enhanced valueg. Benefits beyond royaltiesh. Reduced costs over time volumei. Reduced costs of expression due to technology

6. Virtues


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a. intellectual property is, after all, the only absolutepossession in the world The man who brings out of the

nothingness some child of his thought has rights therein which

cannot belong to any other sort of property. (Ladd, quoting

Shaler.)b. Copyright also is intended to support a system, a macrocosm,

in which authors and publishers compete for the attention

and favor of the public, independent of the political will of the

majority, the powerful, and above all the government, no

matter how unorthodox, disturbing, or revolutionary their

experience views, or visions. (Ladd)

D. Cases: Defining a Work of Authorshipi. Burrow-Giles Lithographic Co. v. Sarony USC 1884

1. PSarony, lithographer & photographer, issue is with Ds lithographiccopies of his photograph of Oscar Wilde

2. Issue on appeal is whether a photograph is copyrightable3. Q is whether a photograph is a writing under the Constitutional

Mandate (Art I, Section 8)

4. The court said that photographs are includedthey are not justmechanical reproductions, there is originality involved in creating a

photograph

ii. Bleistein v. Donaldson Lithographing Co. USC 19031. Wallace commissions circus posters from Bleistein, Bleistein has the

copyright in the poster, Wallace then commissions a second,

similar/identical, poster from Donaldsonthese are

chromolithographs (color posters)

2. Issues:a. Are advertisements worthy of copyright protection?b. Does protecting these advance the congressional goal of

promoting progress in science and the useful arts

3. Holmes- doesnt want judges to determine how good art issets alow bar for protectiononly must be original and a work of

authorship

4. Harlan- Dissent- advertising isnt protectable subject matter, it wouldbe created anyway so protection isnt necessary


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Subject Matter

II. Module II: Subject MatterA. Original Works of Authorship

i. Fixation1. Statutes

a. Copyright Act of 1976 Sec. 102i. (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. Works of authorship include the

following categories:

1. (1) literary works;2. (2) musical works, including any accompanying

words;

3. (3) dramatic works, including anyaccompanying music;

4. (4) pantomimes and choreographic works;5. (5) pictorial, graphic, and sculptural works;6. (6) motion pictures and other audiovisual

works;

7. (7) sound recordings; and8. (8) architectural works.

b. Copyright Act 0f 1976 Sec. 101i. 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. 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.

2. Notes:a. Fixation makes sense as a practical matterneed fixed

product to prove originalityneed a tangible work


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b. Can be any tangible medium of expression, as long as it isexpressed

c. Must distinguish the copyrightable subject matter and theconcrete thing in which it is embodied

d. Must be fixed for more than a transitory periode. Issues arise:

i. Computer codes1. Computer caching- considered fixed, not

merely transitory for the purposes of the

statute

ii. Transient copies3. Live performances

a. A work consisting of sounds, images, or both is fixed if thefixation is made simultaneously with its transmission

b. A recording or broadcast of a live performance is copyrighted,but not the actual performance

c. Bootlegging can be protected under state law or in other wayssuch as TRIPS

d. TRIPS provides civil & criminal protections for unauthorizedfixations, reproductions, transmissions, distributions and sales

of live performances

e. Authorized under Commerce Clausef. Cases:

i. US v. Martignon SDNY 20041. Live performances arent fixed, no protection

without prior fixation

2. Court found that statute in question runs afoulof the copyright clause and that the commerce

clause cannot be used to circumvent the

copyright clause

ii. Kiss Catalog v. Passport Intl Prods CD CA 20051. Court affirmed that congresss utilization of the

commerce clause did not run afoul of the

copyright clause


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2. Court found that congress is not prohibited aslong as it had some constitutional authority to

act

ii. Originality Requirement1. Distinct from Patent Concepts

a. NOT required to be novelb. A work may be original even though it closely resembles other

works so long as the similarity is fortuitous, not the result of

copying.

2. 2 concepts:a. independent creationb. some minimal degree of creativity

3. Magic Marketing v. Mailing Services of Pittsburgh WD PA 1986a. P- Magic Marketing is an advertising company that does mass

mailings, D used the envelopes for another customer, D

argued the envelopes lacked sufficient originality to merit

protection

b. Court: no protection where the envelop only describes thecontents

c. This case stands for the proposition that while the standardfor protection is low, it is not nothing.

B. Idea/Expression Dichotomy:i. Baker v. Selden USC 1879

1. Selden is an auditor who has created an accounting system andpublished a book about it, Baker took the concept and made a

competing book that uses different forms but the same system

2. S wanted a patent here and failedsome suspicion that S is using to make up for failed patent

3. Court rules for B, since the forms are not severable from theunderlying idea, S doesnt have copyright protection

4. Blank account books are not the subject of copyright5. Seminal case representing the concept that expression & ideas are

different

6. Ideas cannot be copyrighted, only their expression can beii. Bibbero v. Colwell 9th Cir 1990

1. Q regarding the scope of the blank forms rule


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2. P- Bibbero contends that D- Colwell infringed on its copyright byduplicating its blank medical insurance forms

3. Blank forms generally are not subject to copyright protectiona. 37 CFR Sec. 202.1(c)b. (c) Blank forms, such as time cards, graph paper, account

books, diaries, bank checks, scorecards, address books, report

forms, order forms and the like, which are designed for

recording information and do not in themselves convey

information.

4. Bibbero took the information from the AMA to create these superbillforms

5. They were not subject to protection because it is a blank form, not aform containing information (which would be protectable)

a. Copyrightable where text is integrated with the formsC. Facts & Compilations

i. Statutes:1. Copyright Act Sec 101: definition of compilation2. Copyright Act Sec 103: parameters of copyright for compilations

a. (a) The subject matter of copyright as specified by section 102includes compilations and derivative works, but protection for

a work employing preexisting material in which copyright

subsists does not extend to any part of the work in which suchmaterial has been used unlawfully.

b. (b) The copyright in a compilationextends only to thematerial contributed by the author of such work, as

distinguished from the preexisting material employed in the

work, and does not imply any exclusive right in the preexisting

material.

ii. Cases:1. Feist Publications v. Rural Telephone Service USC 1991

a. RTS is local phone company, provides service, assignsnumbers, and is required by law to issue a phonebook

b. Feist sells larger area phonebooks, tries to get phone numbersfrom RTS, who refuses


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c. RTS files suit claiming Feist cant use their phone numbers,they need to collect the information themselves, Feist argues

the numbers arent copyrightable

d. Court affirms that the phone numbers are facts, which are notcopyrightable

i. Protection for compilations only pertains to thegrouping, not the underlying facts

2. Nash v. CBS 7th Cir 1990a. P-Nash publishes books describing what he believes actually

happened to John Dillingerclaims this to be fact/truth

i. He claims that Dillinger wasnt killed, but instead retiredto the west coast

b. D- CBS broadcasts an episode of Simon & Simon thatincorporates some of Nashs facts

c. P says CBS violated his copyrightd. Court finds no violation, because they used Nashs facts, but

not his actual words

i. Court said CBS used Nashs work, as Nash used othersworkas a source of facts & ideas to which they added a

distinctive overlay

ii. CBS used Nashs analysis of history, but not hisexpression

3. Roth Greeting Cards v. United Card Co. 9th Cir 1970a. P- Roth claimed infringement of 7 cards which consisted of

a simple design & a prosaic phrase within

b. Ds cards used the same text, and a similar but not identicaldrawing

c. Court said that pictures are copyrightable, but not the text,however all the elements taken together are protectable

d. Court found infringement because the whole of the card isgreater than the sum of its partsthe overall look and feel of

Ds cards would be recognizable as the same as in Ps cards

4. CCC Information Services v. Maclean Hunter Market Reports, Inc. 2dCir 1994


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a. P- Maclean creates the Red Book, used to value used cars,they use 14 subjective factors to evaluate the cars and

determine price

b. D- CCC created a computer database using the Redbookvalues

c. Court finds this sufficiently original to merit protection basedon:

i. the method used to create the listingsii. Ms use of logic to present the dataiii. The listings were the fruit of professional judgment &

expertise of the editors

5. NY Mercantile Exchange Inc v. Intercontinental Exchange Inc 2d Cir2007

a. Court distinguished CCC and found that merger precludedcopyright protection for the settlement prices NYMEX

calculated each day for futures contracts traded on its

exchange

b. Idea and expression are too close hereanswer would only beexpressed as a particular number, so granting protection

would give NYMEX copyright protection over a particular fact

iii. Copyright Protection of Databases1. Often outside copyright lawthus falls under commerce clause2. Sui generis, sometimes based on tort or misappropriation law3. Impetus for special protection came from EU Database Directive

a. Protection is based on an originality standard similar to Feistb. Rewards creators under a sweat of the brow theoryc. Directive provides a sui generis right against an unauthorized

extraction and reutilization of a substantial part of a database

regardless of the works eligibility for copyright

d. Protection is only available based on reciprocal protection inthe foreign country

iv. Notes:1. Copyrightable elements of a compilation:

a. Selectionb. Coordinationc. Arrangement


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2. To be protectable, a compilation must involvea. The collection & assembly of pre-existing material, facts, or

data

b. The selection, coordination, or arrangement of thosematerials AND

c. The creation, by virtue of the selection, coordination, orarrangement of an original work of authorship

D. Computer Programsi. Statutes:

1. CONTU Report 1979a. Made specific recommendations to amend the copyright act

which were adopted in their entirety

b. Somewhat datednow we assume computer programs are ii. Cases:

1. Apple Computer v. Franklin Computer 3d Cir 1983a. P- Apple, brought infringement suit against D-Franklin for

copying Apples operating system to manufacture an Apple

compatible computer

b. Qs addressed:i. Whether copyright can exist in a computer program

expressed in object code- YES

1. Object code, unintelligible to humans could becopyright protected

ii. Whether copyright can exist in a computer programembedded in a ROM- YES

iii. Whether copyright can exist in an operating systemprogram- YES

1. D argued that operating system isuncopyrightable under doctrine of merger

which states that a work is uncopyrightable if

its idea and expression merge or are so closely

related that one cannot be used w/out the

other

2. D argued there was no other way to create anoperating system that would run apple

software


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3. Court upheld copyrightability of all computerprogramsapplications or operating systems

iii. Method of Operation Cases:1. Lotus Development v. Borland Intl 1st Cir 1996

a. D- copied Lotus command hierarchy of Lotus 123 spreadsheetprogram

b. Q was whether command hierarchy was copyrightable under102(b) or whether it was an uncopyrightable method of

operation

i. 102(b)1. 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.

c. Ds code was different, but the menu was the samed. Court viewed this as an uncopyrightable method of operation,

similar to the buttons on a VCR

i. Under 102(b) even an expressive method of operation isuncopyrightable

2. ADA v. Delta Dental Plan 7th Cir 1997a. ADA publishes a code of all dental procedures which it

classifies into groups, it gives each procedure a number, a

short description, and a long description

b. Q is whether the ADAs taxonomy is copyrightable under102(b)

c. Court found the taxonomy copyrightable because facts do notsupply their own principles of organizationwork of

authorship to organize the procedures, not a method of

operation

d. Under Baker v. Selden, Delta can use the ADA code on forms itcreates for insurance purposes, but it cannot copy the work or

distribute a derivative work


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e. The expression of a system is copyrightable, even if the systemitself is not

E. Derivative Worksi. Statutes:

1. 101- defines derivative work:a. a work based on one or more preexisting works

2. 102(a) gives criteria for subject matter protection and lays out 8categories of protectable works

3. 103(a) - The subject matter of copyright as specified by section 102includes compilations and derivative works

4. 103(b)- The copyright in a compilation or derivative work extendsonly to the material contributed by the author of such work, as

distinguished from the preexisting material employed in the work,

and does not imply any exclusive right in the preexisting material.

The copyright in such work is independent of, and does not affect or

enlarge the scope, duration, ownership, or subsistence of, any

copyright protection in the preexisting material.

a. for protection under 103, must still meet the requirements of102

b. can have derivative works in any of the 8 categoriesenumerated under 102

c. new protection for derivative works doesnt affect theprotections of the underlying material, or allow for

appropriation of it or exclusive right to it

ii. Cases1. Batlin v. Snyder 2d Cir 1976

a. Public domain metal mechanical banks of Uncle Sam, D- wentto Hong Kong and made plastic reproductions, D copyrighted

his bank. P also created a plastic bank but was denied

importation rights because of infringement on Ds copyright; P

sought a judgment declaring Ds copyright void

b. Court examined similarities between Ds work and originalc. To obtain copyright in a derivative work, there must be

substantial, non-trivial changes made

d. The court finds these changes were too trivial, functionalchanges do not carry much weight


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e. The court distinguishes from Alva v. Winninger, a case aboutsmall scale reproductions of Rodins Hand of God where great

skill and originality were required to complete the

reproduction

f. Court doesnt want to extend rights when only minisculechanges are made, also, they dont want to give someone like

Snyder rights to something that are in the public domain

g. Dissent:i. Shouldve given D a copyright because any distinct

variation is sufficient originality, if the variation is the

product of the authors independent efforts and more

than merely trivial

ii. Wants to keep courts form judging what is originality2. Gracen v. Bradford Exchange 7th Cir 1983

a. Gracen won a contest and created a painting of Dorothy foruse on commemorative plates, but could not come to terms

with Bradford, so they got someone else to make it, Gracen

challenges Bradford for violating her copyright

b. Court found Gracens paintings, from movie stills, lackedsufficient originality for copyright

c. Court relied on Entertainment Research Group v. GenesisCreative Group Case where creation of 3D costumes ofcartoon characters from 2D drawings lacked sufficient

originality for protection

F. Pictorial, Graphic & Sculptural Worksi. Statutes

1. Sec 102(a)(4) works of authorship include PGS worksii. Photographs

1. Mannion v. Coors SDNY 2005a. Q is use of photograph in Coors ad infringes Ps copyright in a

photograph of Garnett, a basketball star, Ds clearly copied Ps

photo, Q is the extent of Ps protection

b. Mannion took a photo of a basketball star, Coors decided theywanted to use a similar photo for an ad campaign and

recreated a portion of the photograph

c. Court said originality of a photograph can derive from:


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i. Rendition1. Relates to angle, lightingtechnical ability2. Not what is depicted, but how it is depicted

ii. Timing1. Being in the right place at the right time to

capture a particular moment

iii. Creation of the subject1. Creating the scene/subject to be photographed

d. Originality here is based on renditionuse of lighting, andcreation of the subject (man vs sky)

e. Limits to Ps protectioni. No copyright over Garnettii. No copyright over skyiii. Only copyright of the particular scene created

2. Diodato v. Spade SDNY 2005a. Photograph of womans legs and feet and accessories while

she is sitting on the toilet

b. Court found that Diodato had a copyright in the particularexpression of its photograph, but not in the idea/scene

depicted

c. The court found the depiction to be common and predictableand thus not protectable

3. Notes:a. Make an argument over whether the photographer created

the subject

iii. Applied Art1. Mazer v. Stein USC 1954

a. Statuette marketed by Mazer as both a statute and alampbased and was argued it was not copyrightable

b. Court set out separability testi. works of art dont cease to be works of art because they

are incorporated into something useful

ii. they can be protected so far as the work of art can beseparated from the utilitarian function

2. Statute: Sec 101


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a. Such works shall include works of artistic craftsmanshipinsofar as their form but not their mechanical or utilitarian

aspects are concerned; 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, suchdesign incorporates pictorial, graphic or sculptural features

that can be identified separately from, and capable of

existing independently of, the utilitarian aspects of the

article.

3. Notes:a. Test from Mazer v. Steinb. Codified in 1976 Actc. Douglas concurrence from Mazer

i. Raised Qs about whether these kinds of articles(ashtrays, salt shakers, lamps) are writing

4. Fashiona. Masquerade Novelty Inc. v. Unique Industries 3rd Cir 1990

i. Argument that funny nose masks were utilitarian articlesbecause they made people laugh

ii. Court found there were not useful articles, they werepurely artistic and thus werent subject to the

separability test, they were protectableiii. Court said invoking an emotion didnt make something a

useful article

b. Same analysis applied to toys- toy invokes childhood dreamsthus functional and not copyrightable, but the court wouldnt

go there

c. But when it comes to costumesfashioncourts cant getpast the idea that clothing is functional

d. Masks are copyrightable as entertainment, but costumescannot be because they clothe the body

5. Pivot Point Intl Inc v. Charlene Prods. Inc 7th Cir 2004a. Pivot Point created a mannequin head Mara and Charlene

Prods created a similar headLiza, Pivot Point sued on the

basis that Charlene Prods. was infringing.


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b. Court determined Mara was a useful article but then wentthrough separability analysis to see if there could be any

copyright protection

c. Six tests for judging conceptual separability:i. Artistic features primary and utilitarian features

subsidiary (Kieselstein-Cord)

ii. Useful article would be marketable to someone justbecause it is aesthetically pleasing (Nimmer test)

iii. The article stimulates in the mind of the beholder aconcept that is separate from the concept evoked by the

utilitarian function (Newman dissent in Carol Barnhart)

iv. Artistic design not significantly influenced by functionalconsiderations (Denicola test, applied in Brandir)

v. Artistic features can stand alone as a work of art;useful article would be equally useful without it.

(Goldstein test)

vi. Artistic features not utilitarian (Patry test)d. Court finds that particular visage of Mara is protectable,

independent of its use as a hair or makeup display model

because Mara was created as purely an artistic work depicted

to show the hungry model look

i. If there had been more input into designing Maras faceby Pivot Point, it would weigh against protectability

G. Architectural Worksi. Statute: Sec 101

1. Pictorial, graphic, and sculptural works include two-dimensionaland three-dimensional works of fine, graphic, and applied art,

photographs, prints and art reproductions, maps, globes, charts,

diagrams, models, and technical drawings, [including architectural

plans]*. *added in 1988

2. Amended in 1990a. 1976 act applies to anything built before 1990

3. architectural building would qualify as a useful article under Sec. 101a. protection was initially limited to decorative/detachable

features like friezes and gargoyles because they are entirely

separable


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b. plans are not useful articles subject to separability analysisii. Demetriades v. Kaufmann SDNY 1988

1. P designed plans for an expensive one of a kind residence inScarsdale, D had their architect trace the plans and build the same

house a few doors down the street2. The court found the traced plans infringed, but the construction of

the neighboring house did not

a. Can protect plans against copying, but cant protect thecreation of a useful article from those plans absent a design

patent

3. The court enjoined the Ds from further use of the plans, which gavethe Ps what they wanted

iii. Architectural Works Copyright Protection Act 19901. Added to ensure that the US was in compliance with its obligations

under the Berne convention

2. As of 1990, architecture is a separate category for protection, notunder PGS

a. For buildings built or substantially constructed use 1990 test3. Sec 102(a)(8) defines an architectural work as a work of authorship4. Sec 101:

a. An architectural work is the design of a building asembodied in any tangible medium of expression, including abuilding, architectural plans, or drawings. The work includes

the overall form as well as the arrangement and composition

of spaces and elements in the design, but does not include

individual standard features.

5. Test for protection (House Report):a. Are original design elements present?b. If so, are the design elements functionally required?

i. If not functionally requiredprotected as anarchitectural work under 102(a)(8)

ii. If functionally required, must do PGS separabilityanalysis

c. No matter which category you fall under in 102(a) you are stillsubject to the limits of 102(b)

H. Characters


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i. Statute:1. Sec 102 no specific protection, but could fall under protections for:

a. Literary worksb. Dramatic worksc. Motion pictures & other audiovisual works

2. Learned Hand:a. The less developed the characters, the less they can be

copyrighted

3. Must determine when a character is sufficiently developed to meritprotection

a. Avoid protection for stock characters or scene a faireii. Cases:

1. Warner Brothers Pictures v. Columbia Broadcasting System 9th Cir1954

a. Maltese Falcon story is written by Hb. In 1930 H gave WB rights to use MF in movies, tv, and radio.

WB made a successful movie

c. In 1946, H gave CBS rights to use MF characters in a radioprogramspecifically Sam Spade

d. WB sued for infringemente. Court held that WB had the rights to the MF story, but didnt

have the rights to the MF characters outside the storyf. Case established the story being told test

i. Court held characters had to be practically synonymouswith the story for infringement herecharacters had to

constitute the story being told

g. Criticism that this is a difficult standard to meet2. Anderson v. Stallone CD CA 1989

a. Stallone made Rocky I, II, III, in an interview discussed his ideasfor Rocky IV

b. In 1982 Anderson wrote a treatment for Rocky IV based onthis and discussed it with MGM

c. In 1984, Anderson sought compensation for the use of histreatment in the forthcoming Rocky IV

d. Court held this met both the story being told andspecificity/delineation test from Learned Hand


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i. Rocky characters are highly delineated in US cinemaRocky is not merely a stock character

ii. Characters are so highly developed and central to thefirst three movies that they constitute the story being

told3. Gaiman v. McFarlane 7th Cir 2004

a. M created Spawn comic, invited G to write a script for an issuein 1992oral K, not done as work for hire

b. G introduced three characters: Medieval Spawn, Angela, andCount Nicholas Cogliostro, M drew them

c. Issue is copyright over CogliostroG argues he shares a jointcopyright with M, M argues that C is a stock character and

uncopyrightable

d. Court holds that this is a graphic character, adequatelydelineated and copyrightable

I. Sound Recordingsi. Statute: Sec 102

1. (a) Copyright protection subsists, in accordance with this title, inoriginal 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 device2. sound recordings provide a means to fix a work of authorship so that

it may be protected

ii. Newton v. Diamond 9th Cir 20031. D- Beastie Boys used 6 second flute sample of Ps flute composition.

They licensed the sound recording, issue is with the underlying

composition

2. Here it is necessary to separate the sound recording and theunderlying composition

3. Court finds that the use of the underlying composition is de minimisand finds for D

a. A lot of this is based on the fact that the underlyingcomposition is quite simple and much of the work is based on

a particular performance style


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b. Once you sift out the performance elements, you are left witha very simple composition and Ps only complaint is for a

violation of the 3 note sequence in his composition

c. Once siftedlook to Q of substantial similarity to see ifenough of the original has been appropriated

i. Newtons own experts said that the sound recording is aproduct of Newtons performance techniques, not the

composition

ii. Expert noted that the performance goes beyond thecomposition

d. The court finds the similarity here goes to trivial elementsthe composition

J. Government Worksi. US government works:

1. Sec 105:a. No protection for any work of the US Government, but the US

government can receive and hold copyrights transferred to it

by assignment, bequest, or otherwise

2. Sec 101: defines work of US government:a. A work prepared by an officer or employee of the United

States government as part of that persons official duties

b. Note: copyright can be retained by the individual in workswritten outside the persons official capacities as a civil

servant


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Ownership

III. Module III: OwnershipA. Ownership of Object vs Ownership of Copyright

i. Statutes1. Sec 202

a. Ownership of a copyrightis distinct from ownership of anymaterial object in which the work is embodied. Transfer of

the material objectdoes not of itself convey any rights in the

copyrighted work embodied in the object

2. Sec 201(a)a. Copyright in a work protected under this title vests initially in

the author or authors of the work

ii. Cases:1. Forward v. Thorogood 1st Cir 1993

a. D Throrogood is in a band, P- Forward encouraged and aidedthe band in recording its first album. D was given a copy of the

first tapes as a momento. P wants to publish the tapes, D

seeks to stop P, because the tapes might harm their

reputation. P wants a declaratory judgment that he owns the

tapes.

b. Recordings were made pre 78 so they do not fall under the 76Act. Under the 76 act, there would be no issue

c. P argued that ownership of the tapes conferred him acopyrightcourt said no

d. The creator of a work is presumptively its author and theowner of the copyright

e. Court found that giving P the tapes did not also include theintent to convey the copyright interest to him

2. Lindsay v. RMS Titanic SDNY 1999a. P Documentary filmmaker who planned a shoot of the

Titanic, claims copyright in the documentary footage. D argues

that because P didnt shoot the film himself, he has no rights

b. Court found that where P has a high level of control over theshoot (storyboards, supervising production, directing

cinematography, instructing actual camera people), then he is

an author under the copyright act


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c. Court explained the film was the product of Ps originalintellectual conceptions such that he was an author under the

act

B. Works Made for Hirei. Statutes

1. Sec 101: Defines work made for hirea. prepared by an employee within the scope of employment,

OR

b. specially ordered or commissioned worki. designated category

ii. if the parties expressly agree in a written instrumentsigned by them that the work shall be considered a

work made for hire.

2. Sec 201ba. In the case of a work made for hire, the employer or other

person for whom the work was prepared is considered the

author for purposes of this title, and, unless the parties have

expressly agreed otherwise in a written instrument signed by

them, owns all of the rights comprised in the copyright.

ii. Cases:1. CCNV v. Reid SCT 1989

a. CCNV wanted to design a nativity depicting the homeless for acontest in DC, asked Reid to help sculpt the humans, agreed to

spend $15k on the sculpture + Reid to donate his work

sculpting

b. Reid does sketches, but modifies them after comments bySnyder (CCNV)

c. Q is who owns the statuteReid or CCNVd. Court rules for Reid

i. Court read the definition of employee narrowly, foundReid was not an employee

ii. Only a work for hire if you agree work is for hire andhave it in writing before the work is created

iii. Notes:1. Test to determine work for hire:


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a. Was the work prepared by an employee or independentcontractor?

i. Based on definitions of employee under agency lawb. Then apply appropriate subsection of 101

2. Q is generally when you are acting w/in the scope of youremployment

a. The work was of the type which the individual was hired toperform

b. His or her creation of the occurred substantially within theauthorized time and space limits of the job and

c. The work was actuated, at least in part, by a purpose toserve the interests of the entity.

3. Factors to consider:a. Hiring partys right to control manner & meansb. Skill requiredc. Location and duration of workd. Whether the hiring party has the right to assign other worke. Tax treatment of the hired party

4. Narrow definition of employee meansa. Greater chance of coauthor/owner situation

i. Hired party may be considered to be authorii. Or hiring party may bethis could result in joint work

C. Joint Ownershipi. Statutes:

1. Sec 101a. 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.

ii. Cases1. Thomson v. Larson 2d Cir 1998

a. Thomson assisted Larson with Renti. NYTW advised Larson to get a bookwriter to assist,

Larson agrees to let NYTW hire Thomson as a dramaturg

ii. They work together, but it is all one document retainedby Larson on Larsons computer


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iii. 1995 K btwn Larson and NYTW specifies Larson as soleauthor and gives him approval, control, and ownership

rights

b. Q is the extent of Thomsons rights in the worki. Is she a co-author? -- NOii. Does she retain any rights in the portions she

contributed?Not decided

c. Court finds no co-authorship because the court finds Larsonnever intended such a relationship

d. Policy reasons herei. Want to encourage authors to get help with their work

without losing their rights

ii. Dont want to give that help too much power over thework

iii. Thomson only wanted 16% royalties, usually jointauthors want something higher

e. Standard is that both parties must have intent for jointownership

D. Transfers of Ownershipi. Statutes:

1. Sec 101a. Assignment, mortgage, exclusive license, or other conveyance,

alienation or hypothecation

b. Of a copyright or any of the exclusive rightsc. Limited or unlimitedd. Not including a nonexclusive license

2. Sec 201(d)a. (1) May be transferred in whole or in partb. (2) Any of the exclusive rights, or any subdivision thereof, may

be transferred and owned separately. Recipient entitled, as to

that right, to protection and remedies as copyright owner.

3. Sec 204(a)a. Must be in writing!

ii. Notes:1. Key question: What rights are transferred to whom, under what

circumstances?


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a. Transfer outright vs licensing situationi. This affects who can sue, how long copyright lasts etc

2. Copyright can be transferred in whole or in parta. Any of exclusive rights or parts of thoseb. You can act as the copyright owner as it pertains to that

specific right

3. Under 1909 no transfer and had to publish notice of rights on thework or you would forfeit the copyright

E. Divisibilityi. Statutes:

1. Sec 106: exclusive rightsa. Reproductionb. Preparation of derivative worksc. Distributiond. Public performancee. Displayf. Transmission

2. Can transfer any/all of these rights to different parties3. Prior to 76, copyright was indivisible

a. This had to do with previous notice requirementsb. This new system can make it difficult to obtain rights because

they are more spread outdifficult to know who to askF. Collective Works

i. Statutes1. Sec 101

a. A collective work is a work, such as a periodical issue,anthology, or encyclopedia, in which a number of

contributions, constituting separate and independent works in

themselves, are assembled into a collective whole.

2. Sec 201ca. Copyright in contribution v. copyright in collective work as a

whole

b. Unless express transferi. Can reproduce and distribute contribution

1. As part of that collective work2. As part of a revision


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3. As part of a later collective work in the sameseries

ii. Cases1. NYT v. Tasini SCT 2001

a. Case brought by freelancers against NYT and otherpublications for including their works in Lexis and other

databases

b. 201(c) governs protection for collective worksi. 201c adjusts publishers collective copyright if there is

demand for the individuals contribution

c. authors wrote several articles and gave publishers thepermission to publish them in certain newspapers &

magazines, and the publishers have exercised some rights that

106 assigns exclusively to authors in giving the articles to

databases

d. NYT argues that they provided them to the databases underthe 201c revision provision

e. The court says this would only be valid if they were viewablein the same context as originally published

f. The court says the database does not reproduce & distributethe articles as part of the original edition or revision

g. Court says this is not analogous to microfilm/fiche becausethose are presented in original format and the database

articles are not

h. Court says authors have rights here, but this isnt necessarilyan injunction against their inclusion, just must remunerate the

authors

i. Dissenti. Formatting has less importance than the majority

indicates

ii. The real point is that NYT has lent the article itsauthority, which remains regardless of the format

2. Effects Associates v. Cohen 9th Cir 1991a. Cohen paid EA less than the agreed price for special effects

footage that he commissioned and then used the footage

without obtaining a written license or assignment of copyright


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b. Issues:i. Whether a transfer of copyright without a written

agreement is valid under the Copyright Act

c. No dispute that EA owns the copyright in the special effectsfootage and that C copied, distributed, & publically displayedthe work without written authorization

d. C says it is customary in the movie industry to make thesedecisions orally, without written Ks, argues for exception to

204s writing requirement

i. Court says noe. Must comply with 204 requirements, unless party has a non-

exclusive license to use the work

i. Court finds non-exclusive license here1. EA created the work at Cs request and then

handed it over to C

2. This must have implied a license to use thefootage in the movie

ii. Caveat is that because this is a non-exclusive license, EAcan resell these to anyone it wants

3. Cohen v. Paramount Pictures Corp 9th Cir 1988a. Q of whether a license to distribute a film by means of

television includes the right to distribute videocassettesi. Court says NO

b. C is the owner in a copyright of a musical composition- MerryGo Round, granted HJ Pictures a synchronization license to use

it in a film, HJ assigned all the rights to Paramount, Paramount

had videocassette copies made, C sued for infringement

c. License grants exhibition of movie on television, does notexpressly grant videocassette reproduction

d. P argues that videocassette reproduction is the equivalent ofexhibition by means of television, court disagrees

i. TV has ephemeral signalsii. Videocassette viewing is differentmore fixed

e. License is from 1969couldnt have known VCRs woulddevelop like this


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i. Court is unwilling to let P reap all the benefits of this newtechnology

G. Recordationi. Statute: 205(a)

1. Any transfer may be recorded2. Serves as constructive notice of copyright ownership if

a. Specifically identifies the workb. Work has been registered

3. General principles of equity and reliance


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Duration & Formalities

IV. Module IV: Duration, Renewal, & Termination of TransfersA. Duration

i. Eldred v. Ashcroft SCT 20031. Q of whether Congress is exceeding its authority under the Copyright

Clause to extend Copyright duration with Copyright Term ExtensionAct (CTEA) of 1998 which added 20 years to duration for works still in

copyright

2. CTEA applies for new copyrighted works and existing copyrightedworks

3. Q what does for limited Times statement in the Constitution meanif Congress can extend existing copyrights?

a. Argument that by extending existing copyrights, the goal ofusing copyright as an incentive to create is gone

b. Wont create benefit to author, will have negative impact onconsumers

4. Court holds the extension is constitutional finds a rational basis fortheir action

a. One of CTEAs goals is to harmonize with internationalcopyright law

b. Societal factors like increased life expectancy justify longerterms

c. Goal is to equalize protection under the 1909 and 1976 Acts5. Dissent:

a. No quid pro quo here, just an extension of rightsthis isntwithin the scope of US Copyright law

b. Breyer:i. the issue isnt term, its the registration system and

difficulty in finding rights holders

ii. went too far in equalizing protection for works for hire,which is the majority of the works

ii. Duration Takeaways:1. Chart regarding duration lengths2. Every copyright statute has a term based limit

a. 1790: 14 + 14b. 1831: 28 + 14c. 1909: 28 + 28


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i. renewal term was not dependent on authors survival offirst term (new!)

ii. one of three statutorily designated entities could renew1. surviving spouse/children2. authors executor3. authors next of kin, if no will

d. 1976: life + 50 min, life + 70 maxi. introduced life based term, conformed to intl standardsii. unitary system of protection for all works (published &

unpublished)

iii. system is now based on date of creation, not date ofpublication

iv. 303a- when unpublished works are being subsumed intofederal copyright law, in 1978 they are given an

extension to 12/2002

1. if an unpublished work is published between1978 & 2002, it will be protected until 2047

v. 304- extends renewal time to 67 yearsvi. Berne Convention Art 5(2)- removed formalities

vii. retained fixed terms for:1. works for hire

a. can be renewed by whoever owns thecopyright

2. anonymous works3. pseudonymous works

B. Foreign Copyright Restoration & Reliancei. Notes:

1. If something fell into public domain under 1909 Act and you failed torenew, nothing could be done

a. Congress intended people to abide the rules as they existedbetween 1909 and 1976 Acts

2. TRIPS agreement 1/1/96a. Foreign rights holders who had lost their rights due to failure

to renew had their rights restored

3. Harmonized with Berne convention and stopped conditioningprotection on renewing copyright


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ii. Cases:1. Lucks Music Library v. Gonzales DC Cir 2005

a. Similar to Eldridge, case deals with the constitutionality ofURAA, a provision that extends copyrighthere this deals

with the provision that establishes copyright in work that hadpreviously entered the public domain for foreign rights

holders

b. Ps- corporation that sells & rents classic orchestral sheetmusic and a commercial film archive that restores and sells old

footage and films. Both allege that because of the URAA they

may no longer freely distribute works in their portfolios

c. Court finds that the expected benefits for creating works aregreater if congress can remedy the loss of copyright

protection for works that have fallen accidentally into the

public domain

i. However no direct incentive is necessary for the law tostand

ii. One goal here was international parityd. Court discredits the argument that the US has never taken

items out of the public domainthis has happened before

WWI renewals etc

e. Court also says that dictum in a patent case is not applicablebecause the scope of patent rights are so different from

copyright

iii. Reliance Parties:1. For parties who were undertaking activities that would infringe if the

underlying work had been in copyright

2. Gave 12 month grace period to phase out or legitimize work3. Cut off date 12/8/94 to ensure that people didnt game the system

C. Reversions, Revisions & Derivative Worksi. Under 1909 act you got 2 28 year periods, the second period was treated not

like an extension of the first, but like an entirely new period

ii. Issues arise for derivative works when the second period commencesiii. The right to a second term is alienable, but only vests if the author lives into

the second term

iv. Stewart v. Abend SCT 1990


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1. Woolrich publishes a story, It had to be Murder in 1942, in 1945 Wassigned the rights to 6 of his stories, including It had to be Murder

to De Sylva Productions for $9250 and agreed to renew them and

assign them for the second 28 year period

2. In 1953 Jimmy Stewart & Hitchcock obtained the rights from De Sylvafor $10k

3. 1954- Rear Window Movie is produced based on Ws story4. 1968 W died, before he could renew his copyrights, without any

surviving spouse or childproperty is left to a trust, 12/29/69, trust

renewed the copyright and assigned the renewal rights to Abend for

$650 + 10% of all proceeds from exploitation of the story

5. infringements:a. 1971 broadcast of Rear Window on ABC

i. this is settled for $25kb. re-release of Rear Window in theaters and on video

i. this was done in reliance on precedent from Rohauerwhere the 2d Cir said the owner of a copyright in a

derivative work can continue to use the work pursuant

to the original grant, even if the grant has lapsed

6. court finds that allowing Stewart to keep these rights into the secondterm would damage the rights of the original owner

a. giving Stewart these rights would essentially extinguish theoriginal owners rights in the pre-existing work once it is

incorporated into a derivative work, assuming the author

agreed to assign his renewal rights

7. Congress intended, with the renewal period, to give an author asecond chance to control and profit from his work and court is going

to stick with this

a. Any changes would have to be legislativeD. Termination of Transfers

i. Right of recapture created in 1976 act to approximate the system under the1909 act

ii. Extension of second term went from 28 > 40 > 67 yearsiii. Need to have procedures to allow authors to recapture their rightsiv. 2 issues:

1. new, unified term under 76 Act (Sec 203)


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a. author has the right to initiate a recapture proceedinganytime in years 35-40

b. There are some procedural requirements, but anytime withinthis 5 year period, the author can take it back

c. 203b1 provision that allows derivative works to be useddespite recapture

i. legislatively overrules Stewart v. Abend for workscreated after 1/1/78, but for works created from 1909-

1977 it is still good law

2. Windfall extension of second term for 1909 governed works (Sec304c)

a. Allows for recapture of copyright for works that are governedby 1909 law but whose 2d term has been extended

b. Recapture can be exercised anytime between yrs 56-60 (this iswhat would have been the end of the previous term)

E. Formalitiesi. Time periods

1. 1909-12/31/1977 governed by 1909 Act2. 1978-Feb. 1989 governed by 1976 Act3. 3/1/1989 to Present adoption of Berne Convention

ii. Policy Functions1. Protect against inadvertent violations by providing notice2. Protect public domain against deadwood

a. Place a burden on rights holders who wish to take advantageof the legal monopoly of copyright

b. Berne convention prohibits the conditioning of rights onnotice

c. Requiring notice is consistent with US IP law and itsrequirements of fairness

i. Conditioned rights on author/owner taking affirmativesteps to protect her work

iii. Types1. Notice2. Deposit3. Registration4. (renewal)


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5. (recordation)iv. Publication

1. Publication is not a formality, it triggers the need to comply withformalities

2. Publication status of a work is important under the 1909 Acta. Unpublishedpotentially perpetual common law copyrightb. Published with proper notice federal protection & clock

starts ticking

c. Published without proper noticepublic domainv. Estate of Martin Luther King Jr v. CBS 11th Cir 1999

1. MLK brought suit after CBS produced a video documentary, usingportions of I have a dream speech without authorization

2. 8/28/1963 MLK gave I have a dream speech in Washington3. 9/30/1963 MLK sought federal copyright protection for speech,

received certificate of registration on 10/2/1963

a. filed suit to enjoin unauthorized recordings and wonpreliminary injunction in Dec 1963

4. over the course of 20 yrs, MLK family properly protected andrenewed the copyright

5. in 1994 CBS used 60% of the speech in a documentary, didnt seek alicense and refused to pay royalties

6. issue is whether the public performance & dissemination of thespeech divested its common law copyright

a. District Court said it was so widely known that it was in thepublic domain

b. 11th Circuit reversedi. termination is based on the degree of control that MLK

exercised over the speech

ii. a public performance of a speech was not a publication,you needed a written copy for publication

iii. the court said that despite this being a big historic event,they dont want to move away from precedent

vi. Changes under 1976 Act1. Defines publication in Sec 101

a. Publication is the distribution of copies or phonorecords of awork to the public by sale or other transfer of ownership, or


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by rental, lease, or lending. The offering to distribute copies

or phonorecords to a group of persons for purposes of further

distribution, public performance, or public display, constitutes

publication. A public performance or display of a work does

not of itself constitute publication.F. Notice

i. requirements:1. 1909-1977

a. notice had to appear on the workb. had to be in proper form and in proper place as of publication

or else forfeiture

2. 1978-Feb 1989a. required proper notice in proper place on the work, but lesser

consequences

b. no immediate forfeiturei. had five year grace period after date of publication to

cure the failure, register the work, and get notice

3. Feb. 1989-presenta. Cant condition copyright on notice under the Berne

convention

b. Some incentives remain on using proper noticei. If there is notice, the defense of innocent infringement

is unavailable

ii. Note: notice doesnt have to be on the copy the innocentinfringer accessed, it just needs to be widely available so

that the infringer could find the notice if they sought it

ii. Form:1. + year of publication + copyright owner2. must be in a location to give reasonable notice to the user of the

work that there is a copyright

3. must have substantial compliance to obtain the benefitsa. if you list the wrong copyright owner, you can forfeit your

copyright and it can go into the public domain (pre 1989)

b. issues with the date:i. the date can be corrected if it is too earlyii. Example:


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1. book set to be published Dec 2009, but getschanged to Jan 2010 and the copyright notice

isnt changedthis can be cured, but the

copyright term will run from 12/2009

2. if it is the reverse, book is published in Dec2009 and it says Jan 2010, it must be changed

because the act will not tolerate a late

publication date

a. policy reasondont want peoplemaking mistakes to get an extra year

of protection

4. (P) is a symbol related to performance, not in underlying work5. differences between 1909 and 1976 acts in how collective works are

published and treated

a. 1909: need to give notice to the works within the collectivework, as well as the whole collective work

b. 1976: masthead is acceptable for the entire collective work6. if something is first published outside the UScircuit split regarding

notice

a. Twin Books Corp v. Walt Disney Co 9th Cir 1996i. Bambi casefirst published in Germany without notice

in 1923, subsequently published in US with notice in1926

ii. Renewal in 1954 (too late if originally published in 1923)iii. Court held that prior publication outside the US doesnt

take the work outside of copyright protection

b. 1976 Act required notice when a work was published in the USor elsewhere (eliminated 3/1/89)

G. Deposit:i. This is an area that can really harm an authors protectionii. US is adamant about having a full collection of works

1. Want to add to library of congress for completeness2. Want to have a record, helps with tracking down rights holders

iii. Deposit is for archival purposesiv. Deposit is mandatory for US rights holders


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1. Cant be mandatory for foreign rights holders under the BerneConvention

2. Under the Berne Convention, you cant treat foreign rights holdersworse than domestic, but that doesnt mean you cant treat domestic

holders worsev. SHALL (required) to make a deposit within 3 months of publication, unless the

register of copyrights says you dont have to

vi. Copies provided must be the best edition of the workH. Registration

i. Not a prerequisite to copyright protection, but you can be fined for notregistering

ii. Cant condition protection on registration, but there are incentives toregistering

iii. Registration is prima facie proof of validity of your copyrightiv. In the US you cant sue until the work is registeredv. In the US cant get damages or attorneys fees without registrationvi. Statutory damages and attorneys fees are recoverable only if registered prior

to the commencement of infringement

1. Goal is to get owners to register pre-infringement


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Exclusive Rights & Infringement

V. Module V: Exclusive Rights & InfringementA. Exclusive Rights & Limitations

i. Statutes1. 106: defines the scope of the rights

a. reproductionb. preparation of derivative worksc. distributiond. public performance (some works)e. public display (some works)f. public performance by means of digital audio transmission

(sound recordings)

2. 107-122: limitationsii. Notes:

1. Exclusive rights are:a. Independent

i. Can give reproduction rights to one person anddistribution rights to another

ii. Rights can be asserted independently of each otherb. Often overlapping

i. There can be a single act infringing both reproduction &distribution rights

ii. This is the most common overlapping infringementc. Divisibled. Assignable (separately or together)

B. Reproduction Right:i. Seminal rightlike COPYINGii. Can infringe without selling/leasing when you make an infringing copyiii. Dont need to profit from the copy for infringementiv. Copying & Reproduction can be different:

1. Copying a public performance is not an infringement of thereproduction rightthere is no public performance right

2. Only an infringement when there is fixationC. Infringement

i. Definition:1. The unpermitted exercise of an exclusive right accorded to a

copyright owner


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a. Look at what the exclusive right isb. What the underlying work isc. How the right has been exercised without the owners

permission

d. This will be fact specificii. Elements of a prima facie case:

1. P must prove:a. Ownership and validity of the rightsb. Conduct by the defendant that infringes those rights

2. Fundamental Q:a. Did the D take a significant amount of protected material from

the Ps work?

b. Issues arise in defining significant and protectediii. Two step test:

1. Copyinga. Proved by:

i. Admissionii. Caught in the actiii. Circumstantial evidence (most common)

1. To prove, look to:a. Ds opportunity to access infringed workb. Probative similarity (strikingly similar)

2. Improper appropriationa. Taking was impermissible as to kind or amount

i. Ordinary observer would find works substantially similarii. Could be qualitatively or quantitatively impermissible

iv. Similarities:1. Probative:

a. Used alongside access to determine copyingb. Not limited to protectable elements of the workc. Only being used to determine copying v. independent work

2. Substantial:a. Used to determine whether taking was impermissibleb. Ordinary observer standardc. Limited to protectable elementsd. Quantitative and qualitative analysis


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v. Inverse Ratio Rule (from Arnstein v. Porter):1. Probative similarity can prove access2. Greater the similarity, the less need to prove access3. But still need to show that there was some possibility that D could

have accessed the work4. This is a hard standard for P to meet5. If you can raise any doubt regarding Ds access, then you cant infer

access

vi. Improper Appropriation:1. Substantial similarity among protectable elements2. As ascertained by ordinary observer3. Watch for:

a. Idea/expression dichotomy (stock characters, scenes a faire)b. Common sources in the public domain

4. Watch for over dissectiona. Whole is greater than the sum of its partsb. Look at individual elements, but you need to determine if as a

whole it is infringing

vii. If P proves copying & improper appropriation, burden shifts to D foraffirmative defenses (fair use etc)

D. Cases: Access & Probative Similarity:i. Arnstein v. Porter 2d Cir 1946

1. Claim against Cole Porter for infringement based on Begin theBeguine, claim it plagiarized The Lord is My Shepherd etc

2. Claims access to the underlying work based on their having been abreak inwhich wouldve given D access, no evidence that D broke in

ii. Bright Tunes Music Corp v. Harrisongs Music Ltd SNDY 19761. Action claiming George Harrison infringed song by Mack

infringement of Hes So Fine with song My Sweet Lord

2. So similar that the court infers copying, even though D denied it3. Intent to infringe doesnt matter4. This is very circumstantial

iii. Ty Inc v. GMA Accessories 7th Cir 19971. Court said that you could determine the entire access question based

on striking similarity, as long as there was no evidence of a public

domain work which inspired both works


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iv. Ringgold v. Black Entertainment TV Inc 2d Cir 19971. Q of de minimis standard for copying2. Issue is that a poster of one of Ringgolds quilts was shown in a tv

show, she sues for infringement

3. Too insignificant to be copyingv. Peter Pan Fabrics v. Martin Weiner Corp 2d Cir 1960

1. Issue related to using fabric, printed with a copyrighted design, in adress

2. Court said fabric, as clothing is not protectable because they areuseful articles, but the prints are copyrightable

3. Ordinary observer standard might change with respect to themediumQ of what ordinary observer would see as aesthetically the

same & different

vi. Nichols v. Universal Pictures Corp 2d Cir 19301. P- author of a play Abies Irish Rose, D- produced a movie The

Cohens & the Kellys, P alleges infringement

a. Both are generally about intermarriage btwn a Jew & an IrishCatholic, and antics with their families

2. Court compares the plots, finds only general similarities andsimilarities between 4 charactersbut says these are easily

distinguished

3. Court sets the bar for analyzing similaritieslevel of abstraction touse and then continues to decide the case, instead of remanding

vii. Sheldon v. MGM 2d Cir 19361. Similar to Nichols, but here there is a historical story, a book, a movie,

and then a second moviethe question was where the infringement

came from

2. By changing the level of abstraction in the case, it would changewhich of the works it came from

E. Cases: Substantial Similarityi. Approaches:

1. Look at similarity of work as a whole2. Remove non-copyrightable elements and evaluate the works3. The approach used will often be outcome determinative

ii. Steinberg v. Columbia Pictures Industries SDNY 1987


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1. P alleges D drew promotional poster for Moscow on the Hudsonbased on an illustration he drew for the New Yorker

2. D admits that he referenced Ps illustration in creating the posteraccess is established

3. Q is substantial similaritya. No liability for using an idea of the map of the world from an

egocentrically myopic perspectiveQ is whether it has gone

beyond idea to copying expression

4. Court finds certain elements substantially similarthe blocksdepicted, the style of depiction, the style of labeling

5. D copied buildings that P createdPs own creative expressioniii. Computer Associates v. Altai 2d Cir 1992

1. P- CA accuses D- Altai of infringing its product Adapter with itsproducts Oscar 3.4 and 3.5

a. Oscar 3.4 was written based on knowledge of Adapterincluding copying 30% of Adapters code

b. Once D realized there was infringement, they rewrote it andcreated 3.5

c. CA is upset because they simply re-wrote the program to dothe same thinghowever the literal elements are no longer

the same

2. Q was how far copyright should go in protecting the non-literalelements of a program

3. Three stages of analysis:a. Abstraction

i. Abstract the program into various layers of generalityb. Filtration

i. Merger doctrine can be used to filter out thenonprotectable elements

1. elements of the program dictated by efficiencyor factors external to the program (mechanical

specs, compatibility reqs), or from the public

domain

c. Comparisoni. Compare the remaining elements for similarity


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4. After court completed the A-F-C test, the court found that there werenot sufficiently similar elements to uphold a finding of infringement

5. Case narrows the scope of protection for non-literal components ofcomputer programs

iv. Matthew Bender v. West Publishing 2d Cir 19981. P- MB publishes CDROMs of judicial opinions, sought a declaratory

judgment that using star paginations wont infringe Wests copyrights

in compilations of judicial opinions

2. 2d Cir decided that star pagination didnt create a copy of the Westreporters

a. West argues that a user could use the star paginations toresequence the CDROM to match the West Reporter

b. Generally, it is possible for a work stored on tape to be aninfringing copy, even when it cant be perceived by human

senses w/out technological aid

c. However, the only way to infringe the Ds works is torearrange them, discarding how MB fixed them

d. Would only be infringement, if it was the same arrangementwithout manipulating the data

3. Using this case: need to look carefully at what the allegedly infringedwork is and how the allegedly infringing work resembles it

v. Cartoon Network v. CSC Holdings 2d Cir 20081. D- CSC wants to offer a new DVR system, P- CN claims this would

infringe. Customers select what to record, CSC records the programs

and stores it on a central hard drive and then customers can select

playbackthis new DVR resembles a video on demand service, more

than a regular set-top DVR

2. 3 claims of infringement:a. 1.2s buffered recordings are unlawful reproductions

i. Buffer recording is made, without customer requestalleged infringement of reproduction right

ii. Definition of fixed states the fixation must be embodiedfor a period of more than transitory durationis this

more than transitory?


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iii. Court finds that no copy is held for more than 1.2seconds, and is rapidly overwritten as it is processed

this is transitory

iv. Thus no embodiment and no copyingb. hard disc on CSCs server infringed by creating playback copies

i. this is definitely a copy that is unauthorized and of morethan transitory duration

ii. Q here is who is responsible for making the copies1. Court finds insufficient volition on the part of

CSC for them to be a direct infringer

2. Leaves an open Q of contributory liability forproviding a system whereby others can infringe

a. But Ps expressly disavowed thecontributory liability theory

c. transmission to public at a later date infringed publicperformance right (considered later)

vi. Notes:1. When analyzing a reproduction infringement problemgo to the

statute

a. How have courts interpreted the statuteb. What tests have been applied? Are they consistent?c. Does the kind of work at issue affect the analysis?

F. Preparation of Derivative Worksi. Statute:

1. 106(2): right to prepare derivative works based upon the copyrightedwork

2. 101: definition:a. A derivative work is a work based upon one or more

preexisting 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

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.


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ii. Notes:1. This may overlap the reproduction rightbut also may be broader2. Different requirements for reproduction & derivative work3. The preparation of a derivative work, such as a ballet, pantomime, or

improvised performance may be an infringement even though thereis no fixation

iii. Case:1. Horgan v. Macmillan Inc 2d Cir 1986

a. P- estate of Balanchine, D- authors, publishers, andphotographers who created a book detailing the story of the

Nutcracker and devotes most of its pages to Balanchines

Nutcracker

i. Book includes 60 photographs with text interspersedii. Ds obtained permission from NYC Ballet but not

Balanchines estate

b. Ps argue the book is an unauthorized derivative workc. District Court found for Ds, said that because the staged

performance couldnt be reproduced from the photographs, it

wasnt an infringement

d. The court of appeals reversedsaid the district court appliedthe wrong test.

e. The test isnt whether you could recreate the underlying work,but whether the new work is substantially similar to the

underlying work based on the ordinary observer standard

iv. Infringement Practice Problems:1. X secures a copy of the copyrighted motion picture film of the

assassination of President Kennedy, taken at the scene by Zapruder

and makes a direct copy

a. Infringement of reproduction right, this is an actual copy2. X, standing a few feet away from Zapruder, films the same sequence

of events with his own camera

a. No infringement. Z has copyright over his particular angle andwhat he covers, but not the underlying subject matter. The

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3. X reposes Oscar Wilde to match the Sarony photograph and takes hisown still photograph, this one in color. (Assuming Saronys

photograph is still in copyright).

a. S has copyright in the subject matter because he has createdthe pose

b. This would be a jury Q to determine the extent Xs photo wasa copy/based on the earlier work.

4. An artist paints a cubistic version of the (copyrighted) Saronyphotograph of Wilde.

a. This would be a derivative work, if you could establish it wasbased on the Sarony photograph based on substantial

similarity standard.

b. The Q would be whether the painting was so separatelycopyrightablethat it is no longer derivative and thus did not

infringe.

v. Lee v. ART Co. 7th Cir 19971. P- Lee, creates artwork, D- bought artwork, glued it to tiles and resold

them. P contends this was an infringing derivative work

2. Court said this is no different than selling a framed print (once youhave already paid for the print)it is not infringement

a. Changing the way a work will be displayed is not infringementb. If you havent created a new work, then there is no

infringement of the derivative works right

vi. Micro Star v. Formgen Inc 9th Cir 19981. P- creator of Duke Nukem video game, which encourages users to

create their own levels and share them online. D creates and sells a

CD containing 300 levels

2. 9th cir creates a test for derivative works:a. the work must exist in concrete or permanent formb. the work must substantially incorporate protected material

from the preexisting work

3. Court finds Micro Star infringeda. Court likens what MS did to creating sequels, infringing on

Formgens storytelling

vii. Limitations: Family Movie Act of 2005


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1. Court made an exception for devices that enabled users to skip overscenes of sex & violence in films played in their own homes

G. Distribution & Importationi. Statutes:

1. Sec 106(3)a. 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

2. Sec 109(a): First Sale Doctrinea. Notwithstanding the provisions of section 106(3), the owner

of a particular copy or phonorecord lawfully made under this

title, or any person authorized by such owner, is entitled,

without the authority of the copyright owner, to sell or

otherwise dispose of the possession of that copy or

phonorecord.

ii. Notes:1. Often coupled with reproductionreproduction without distribution

is likely not financially viable/worth a lawsuit

a. Usually the focus is on whether the copies were a violation ifso the sale is as well, if not then it isnt

2. There are some cases where only the distribution right is involveda. Ex: purchasing videos and renting them to customers without

authorizationno infringing copy, but infringing distribution

3. Digital distribution:a. First sale doctrine does not apply to digital distributionb. The dissemination of digital works affects the distribution

rightgenerally unauthorized distribution

iii. Cases:1. Fawcett Publications v. Elliot Publishing Co SDNY 1942

a. P- magazine publisher & author of Wow comics publication, D-bought copies of comics secondhand and combined them

together into Double Comics and resold the compilations

b. Q is whether D violated Ps right to publish & vendc. Court held that D has not made copies, but resold the work

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d. Court also held that right to vend is limited to first physicalsale

e. Court finds for D2. Elektra Ent. Group v. barker SDNY 2008

a. Court found that electronic file transmission was infringingb. The court equated the distribution right with publicationc. Court did not grant Ds 12b6 motion, but required P to amend

complaint to allege that D made an offer to distribute

3. London-Sire Records v. Does D Mass 2008a. Court rejected publication theory, but held for P on the basis

that D had taken all the steps necessary to make distribution

possible and thus should be deemed to have distributed

digital files

H. Importationi. Statutes:

1. 602(a)(1)a. importation is an infringement of exclusive right of

distribution

b. this pertains mainly to works created outside the US andimported in

c. works created in the US, exported, and re-imported do not fallunder this statute

ii. Cases:1. Quality King Distributors Inc v. Lanza Research International SCT 1998

a. P- Lanza manufactures hair products in the US, some fordomestic sale, some for international sale. Internationally

bound products are discounted. UK distributor sold them to

someone in Malta who then sold them to D (QK)

b. Court finds that 602(a)(1) doesnt apply to worksmanufactured in the US and reimported, only to the

importation of foreign created works

c. Selling re-imported goods is legal under the first sale doctrineI. Public Performance

i. Statutes:1. 106(4): performance rights


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a. in the case of literary, musical, dramatic, and choreographicworks, pantomimes, and motion pictures and other

audiovisual works, to perform the copyrighted work publicly;

b. Note: PGS, sound recordings, and architectural works are NOTincluded

2. 106(6)a. in the case of sound recordings, to perform the copyrighted

work publicly by means of a digital audio transmission.

b. Note: applies only to sound recordings3. Sec 101: Definitions:

a. Perform:i. to recite, render, play, dance, or act it,ii. either directly or by means of any device or processiii. or, in the case of a motion picture or other audiovisual

work, to show its images in any sequence or to make the

sounds accompanying it audible.

b. Publicly:i. to perform or display it

1. at a place open to the public or at any placewhere a substantial number of persons outside

of a normal circle of a family and its social

acquaintances is gathered; OR2. to transmit or otherwise communicate a

performance or display of the work

a. to a place specified by clause (1)b. or to the public,c. by means of any device or process,

whether the members of the public

capable of receiving the performance or

display receive it in the same place or in

separate places and at the same time or

at different times.

c. Transmit:i. To transmit a performance or display is to

communicate it by any device or process whereby


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images or sounds are received beyond the place from

which they are sent.

ii. Cases:1. Columbia Pictures v. Aveco 3rd Cir 1986

a. P- claims that D- an establishment which allows groups to renta video & viewing room violated the public performance right

b. Q is whether the viewing rooms, limited to family & socialacquaintances, violates the public performance right

c. Court finds for Psrequirement of public performance is thatthe performance be in a space open to the public, not that the

public place be crowded

d. Court says first sale doctrine doesnt apply becausedistribution and public performance rights are severablejust

because you have waived distribution, doesnt imply waiver of

public performance

e. the fact that they authorized/facilitated the viewing wassufficient for liabilityeven though they didnt control the

actual viewing

2. Cartoon Network v. CSC Holdings 2d Cir 2008a. Q of whether watching previously recorded programs on ones

DVR would infringe the public performance right

b. Court says Q of public performance is defined by the universeof persons capable of receiving it

c. In this casethe subscriber is receiving the copy thesubscriber madethis is not to the public

J. Public Displayi. Statutes:

1. 106(5): Display rightsa. 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, to display the copyrighted work

publicly

b. Note: includes PGS works, excludes: motion pictures, soundrecordings, architectural works

2. 101: Display:


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a. To display a work means to show a copy of it, either directlyor 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.

3. 101: Publicly:a. to transmit or otherwise communicate a performance or

display of the work

i. to a place specified by clause (1)ii. or to the public,iii. by means of any device or process, whether the

members of the public capable of receiving the

performance or display receive it in the same place or in

separate places and at the same time or at different

times.

4. 109 Limitationa. (c) Notwithstanding the provisions of section 106(5), the

owner of a particular copy lawfully made under this title, or

any person authorized by such owner, is entitled, without the

authority of the copyright owner, to display that copy publicly,

either directly or by the projection ofno more than one image

at a time, to viewers present at the place where the copy is

located.b. (d) [Applies only to those persons who ownthe copy at issue,

not to those who have leased, rented, etc.]

ii. Cases:1. Perfect 10 v. Amazon 9th Cir 2007

a. Q was whether providing thumbnail low resolution photos aspart of Google searches infringed display rights or was fair use

b. Court held that Google was not displaying or communicating acopynot infringing

K. Moral Rightsi. Statutes:

1. Comes out of international law, no US law directly on point2. Cobbled together via US patchwork quilt of rights

a. Exclusive right to derivative worksb. State laws on moral rights


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c. State unfair competition lawsd. Contract lawe. Lanham Act (federal unfair competition statute)

3. Most Common Moral Rights:a. Right of integrity (to protect against mutilation/distortion)b. Right of attribution (paternity) (to be acknowledged as author)

i. Positive- acknowledgement for work youve madeii. Negative- right not to be acknowledged for a work you

havent made

ii. Cases:1. Gilliam v. ABC 2d Cir 1976

a. D- ABC displayed Monty Python videos, BBC knew that editswould be made to length and content, P- Monty Python

troupe did not know, show was aired with 25% missing

b. Ps argued infringement of the integrity of their workc. Court grants injunction for the mutilation of Ps work

i. Not actually a remedy under copyright lawiii. Visual Artists Rights Act (VARA) 1990 Sec 106A

1. Scopea. Nod to those calling for explicit recognition of moral rights in

U.S. copyright law

b. Applies only to works of visual artc. Essentially confers rights of integrity and attributiond. Subject to some exceptionse. Term: life of the author (for post-amendment w

Copyright Judd Spring 2010

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