Chapter 11DEFENSES

TO INFRINGEMENT

What Is a Defense?

A legal reason that the Plaintiff’s claim is not valid.

Defenses to Infringement

• 1) Statute of Limitations

• 2) Abandonment of Copyright

• 3) Independent Creation

• 4) Fair Use

• 5) De Minimis Copying

• 6) Innocent Intent

1) Statute of Limitations

Time limitation on when you can sue for Infringement

1) Statute of Limitations

A statute of limitation sets a time limit on when a plaintiff can sue for copyright infringement.

1) Statute of Limitations

The statute of limitations for copyright infringement is 3 YEARS from when the infringement should reasonably have been discovered.

Time runs from the date of the last infringement.

“Tolling” of Statute of Limitations

Sometimes a court will extend the 3-year statute of limitations, called “tolling” the statute.

Statute of Limitations CaseMerchant v. Lymon

FACTS: In 1956, Frankie Lymon and the Teenagers had a hit song, “Why Do Fools Fall in Love.” In 1956, the owner of the band’s record label registered the copyright to the song, listing Frankie Lymon and himself, George Goldner as co-authors of the song.

Merchant v. Lymon, cont.

In 1964, George Goldner sold his record label and his music publishing company to Morris Levy, who owned Roulette Records. At that time, Goldner filed an amendment to the copyright registration, removing his name and listing Morris Levy as co-author.

Merchant v. Lymon, cont.

In 1987, two members of the band sued Frankie Lymon’s widow and Morris Levy.The band members claimed that the amended copyright registration was wrong, because they and Frankie Lymon should have been listed as co-authors, not Morris Levy.The first issue in the case: Was the band members claim barred by the 3-year statute of limitations.

Merchant v. Lymon, cont.

The song’s copyright was registered in 1956, so the 3-year statute of limitations would have expired in 1959. The band members argued that the statute should be “tolled” for 2 reasons:

1) In 1956 they were only 15 years old, so the statute should be tolled until 1961, when they were 21 and had the legal capacity to bring a lawsuit.

Merchant v. Lymon, cont.

2) From 1969 to 1984, they were afraid to bring a lawsuit because Morris Levy had threatened to kill them.The trial court held for the plaintiffs and defendants appealed. The appeals court held that it was proper to toll the statute of limitations from 1956 to 1961. But the band members should have sued then, not waited 26 years until 1987.

Another Example of Tolling

Australian artist cuts a song copyrighted in the U.S. without obtaining a license and without the copyright owner’s knowledge. Record is released only in Australia in 1990. If the CR owner doesn’t find out until 1999, the court might toll the statute until 1999.

2) Abandonment

Two Elements:

Copyright owner must INTEND to abandon his rights in the work and must MANIFEST this intent by some overt act.

Can include language on copies: “This work is dedicated to the public domain and is not protected by copyright.”

3) Independent Creation

If the Defendant can prove that he created his work independently, rather than by copying the Plaintiff’s work, he will not be liable for copyright infringement.

Methods of Proof: Date on copyright registration certificate. Dated notes or sketches.

4) Fair Use

A privilege that allows someone other than the copyright owner to use the work. It is a defense that must be raised by the Defendant.

Fair use is decided by considering several factors, on a case-by-case basis.

Section 107 of the Copyright Act sets out the factors to be considered.

4) Fair Use

Key: There must be a public interest that outweighs the copyright owner’s rights.

Example: Free Speech, Teaching, News Reporting, etc.

Section 107: Fair Use Provision

Lists 6 purposes: Criticism, comment, news reporting, teaching, scholarship and research.

Page 208.

These 6 uses will usually be allowed.

Fair Use is an “equitable rule of reason”

Section 107: 4-Factor Test

• 1) Purpose and character of the use, including whether for profit or nonprofit.

• 2) Nature of the copyrighted work.

• 3) Amount and substantiality of the portion used in relation to the whole copyrighted work.

• 4) Effect of use on market for or economic value of the work.

Section 107: 4-Factor Test

The court must consider each of the 4 factors, and any other factors that are relevant.

Courts give most weight to the 1st and the 4th factors.

Examples: Pages 207-213.

Fair Use is Not a Right

Remember that Fair Use is not a right, Fair Use is a defense to copyright infringement.

It is an affirmative defense, which means that the defendant must raise it (bring it up).

Fair Use Cases

Italian Book Corp. v. ABC

Sandoval v. New Line Cinema

Twin Peaks Productions v. Publications Int’l

Bridgeport Music v. UMG Recordings (217)

“Atomic Dog” - “Body Bumpin’”

Parody as Fair Use

Definition of Parody:

The use of a copyrighted work in order to criticize or make fun of the work.

Parody v. Satire

Satire makes fun of anything else, such as society.

Parody as Fair Use

A parody song makes fun of another song.

Parody Cases

Fisher v. Dees (Page 216)

“When Sunny Gets Blue”

“When Sonny Sniffs Glue”

Parody Cases

Berlin v. E.C. Publications (Page 216)

“A Pretty Girl is Like a Melody”

“Louella Schwartz Describes Her Malady”

Parody Cases

Elsmere Music v. NBC (Page 217)

“I Love New York”

“I Love Sodom”

Parody Cases

Walt Disney Prod. v. Mature Pictures

“The Mickey Mouse March”

used as the soundtrack to a pornographic movie, The Happy Hooker.

Parody Cases

MCA v. Wilson (Page 217)

“The Boogie Woogie Bugle Boy

of Company B”

“The Cunninglingus Champion

of Company C”

Parody Cases

Campbell v. Acuff-Rose Music ( 217)

“Pretty Woman”

“Pretty Woman”

Analysis at Pages 214-216.

Campbell v. Acuff-Rose

Key: The most recent U.S. Supreme Court case on parody.

First Issue: Is the song a legal parody?

Second Issue: Does Fair Use apply?

5) De Minimis Copying

The amount copied is too small to be considered infringement.

6) Innocent Intent

If the infringer was not aware and had no reason to believe that his acts were an infringement.

Not a total defense, but court can reduce money damages to $200.