IntroductionI. Constitutional Basis

a. Copyright clause of the Constitution (Art 1, Sec 8, cl 8): i. “Congress shall have the power 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.”

II. Justifications for Copyrighta. Utilitarian Theory – Incentive rational

i. Provides a motivation to produce works by providing a property interest in the worksii. Emphasized by the Anglo-American tradition

iii. Also about the incentive to distribute the work distributors are purely financially motivated (what about the public domain of the internet)

1. At least with books could not recoup fixed cost of paying for the work and set the type without some protection

2. Use the limited monopoly to charge more and recoup investment3. Time-limitation protects the consumer by:

a. Eventually reducing costsb. Reusec. Higher price suppresses demand

iv. This theory makes a lot of sense when thinking of author/creator distribution consumer and less sense in the current economy where distribution is extremely cheap

b. Natural law/Lockean theoryi. The creator has the natural right to the work

ii. Ties into unjust enrichment – one owns one’s body and the works of that bodyiii. This is the view of Continental Europe Civil lawiv. Would tend to argue against durational limits (eventually too hard to find the heirs)

1. Also intangible property rights are different than tangible property2. Intangible right is a public good

III.5 exclusive rights granted by the Copyright Statute (Title 17 U.S.C. Chapters 1-8) a. Reproduce the workb. Right to prepare derivative works (movie version of the book)c. Distribute work to publicd. Publicly perform the worke. Display the work to the public

Requirements for a Valid CopyrightI. Determination of Copyrightability is a mixed question of law and fact that is determined by the judge

in the endII. Fixation

a. Supreme Court has defined writings as any “physical rendering” of the fruits of the author’s creativity

i. Therefore fixation is a constitutional requirement to obtain copyright protectionii. The work is not the physical embodiment, but intangible property contained in the embodiment

b. §102 Subject matter of copyright: “original works of authorship fixed in any tangible medium of expression”

i. Original work of authorship

ii. Fixed in tangible medium of expressionc. White-Smith v. Apollo

i. In order to be fixed a copy must be visually perceptibleii. Player piano rolls were not infringing because the notes were not reprinted

d. 1976 Act provides a new definition of copyi. The work always means the intangible

ii. “Copies are material objects other than phonorecords, in which a work is fixed by any method known or later developed and from which the work can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device. “

e. Midway Manufacturing Co. v. Artic International , Inc.i.  Midway’s video games are fixed in such a tangible medium, reproducible and consistently

repeatable by assistance of a machine or device, so as to be copyrightable and receive Copyright protection.

1. Therefore if the work is reproduced the same way each time, then there is a fixation ii. “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.

f. MAI Systems Corp v. Peak Computer Inc.i. RAM copies are still copies sufficiently fixed for copyright protection, except for exceptions

like servicingg. There is some protection for unfixed works

i. Since 1976 Federal Law governs unpublished worksii. State copyright law still can offer protection of unfixed works – improve comedy, jazz, etc.

1. Only CA has unfixed statutes – but most states would have common-law copyrightiii. Most valuable type of unfixed work is live musical performances

1. Not fixed unless a recording is made2. No federal protection, until we signed a treaty to protect this3. §1101 unauthorized fixation or trafficking in live musical performances is illegal –

antibootlegging statutea. Might be unconstitutional – can’t even be construed as a ‘writing’ (“physical

rendering of the fruit of creative labor”)b. Congress can’t use the Copyright Clause and used the Commerce Clause

instead (also no duration)c. Courts have split on whether this is constitutional (11th Cir – yes, 2nd Cir – no

then yes)4. Bootlegging is bad from a natural right theory, but from a cultural preservation

standpoint it is a good thing.III.Originality

a. §102 requires fixation and original works of authorshipi. Original works of authorship are not defined purposely, same standard of originality as existed

under the 1909 Actii. Arguably this is a constitutional requirement

1. “Authors and their writings” presupposes originalityb. RULE: Original means that the work was independently created by the author and a minimal degree

of creativity

i. Independent creation by the authorii. Minimal degree (modicum) of creativity

c. Justifications for originalityi. Want to protect the public domain

ii. Non-original works do not “promote the progress of science” or the distribution of knowledge wrong, presupposes that only original works can distribute knowledge

iii. A mere sentence is not enough to get copyright protectioniv. Building blocks of expression should not be copyrightable

d. Burrow-Giles Lithographic co. v. Saronyi. Author is “he to whom anything owes its origin; originator; maker; one who completes a work

of science or literature.”ii. Photographs are not per se copyrightable

1. Almost all pictures are because the photographer cannot help but make choices about what to include in the photograph, selection, timing, lighting

2. Cannot copyright the elements of the photographa. Can’t copyright the subject of the pictureb. Thin copyright for un-staged pictures

e. Bleistein v. Donaldson Lithographing Coi. Aesthetic non-discrimination principle: Courts should not judge the worth of pictorial

illustrations ‘outside of the narrowest and most obvious limits…’f. Meshwerks, Inc v. Toyota Motor sales U.S.A., Inc.

i. Independent creation is really a problem – copying the datapoints to faithfully represent the car on a two-dimensional screen

1. No lighting, shading, etc2. No originality3. Not enough for copyright protection4. Chances are that you succeed if you try to avoid originality

ii. RULE: Adding originality is enough for a copyright, but that does not mean the new work is not infringing

IV. Idea-Expression Dichotomya. Policy: preserve the balance between encouragement of competition and protection of works

reflected in the patent and copyright clause.b. Baker v. Selden

i. “The very object of publishing a book on science or the useful arts is to communicate to the world useful knowledge which it contains”

ii. Cannot get a copyright in the method or system, but merely in the expression of the system – Idea/Expression Dichotomy

iii. Usually can’t copyright blank forms, but can if they independently express informationc. Idea/Expression Dichotomy is Codified in §102(b) – “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.”

d. Mannion v. Coors Brewing Co.i. Three protectable elements of photographs

1. Rendition – how the subject is depicted; angle, lighting, filters

2. Timing – being at the right place at the right time (Navy Sailor with nurse photo, and the Zapruder film)

3. Creation of the Subject – creation of the scene that you are photographing (staged photographs)

ii. Specific v. General idea1. More specific the idea, more likely the expression than the idea2. More general the idea, more likely the idea than the expression3. “what is basically at stake is the extent of the copyright owner’s monopoly – from

how large an activity did Congress intend to allow the copyright owner to exclude others?”

e. Merger Doctrinei. If certain types of expression are necessary to protect an idea, then the expression is not

protected by copyrightii. Broad form of merger doctrine (Morrisey) – only a few ways to express an idea, then none

of the expressions are protected by copyrightiii. Narrow form of merger doctrine– merger doctrine applies, but still get a thin copyright that

protects against literal or near-identical copyingV. Work of Authorship

a. 8 categories of works of authorship (Nominally non-exclusive “include:”) – These are broad, overlapping categories

i. Literary worksii. Musical works, including accompanying words §115

iii. Dramatic works, including any accompanying musiciv. Pantomimes and choreographic worksv. Pictorial, graphic and sculptural works §113

vi. Motion pictures and other audiovisual worksvii. Sound recordings §114

viii. Architectural works §120b. Literary Works

i. works other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied

ii. Separate from the method of fixationiii. Include numbers or numerical symbols or indicia – protect math and computer programs

1. Expressed in verbal or numerical symbols or indicia2. Combination, selection gives rise to copyright

iv. Standard form is a bookv. Miller v. Universal City Studios, Inc.

1. RULE: Facts, and research, are not copyrightable – despite the sweat of the brow theory and the effort necessary to compile facts

2. Selection and Arrangement of the facts is copyrightablea. Except where the selection and arrangement is necessary to the expression of

the facts (merger doctrine)3. Hindenburg – original theory of the Hindenberg’s demise is not copyrightable, but the

underlying expression isvi. Historical Factual Works

1. A biography of Napoleon is going to be very similar to a myriad of others2. Selection and arrangement are probably going to be similar3. Learned Hand – levels of abstraction analysis

a. text (actual words used) are protectedb. just rewriting each sentence and keeping the same order – infringingc. rewrite all the paragraphs but in the same order – infringingd. rewrite every section but in the same order – borderlinee. rewrite every chapter but in same order – probably not infringingf. Idea of the biography about Napoleon is certainly not protected

vii. Copyright in characters1. Copyright protects characters, because it is very much an expression created and

fixed by the author2. Must be distinctive enough to be more than an unprotectable idea

a. Specific instantiations with well-defined traits are copyrightable3. Learned Hand “If Twelfth Night were copyrighted, it is quite possible that a second

comer might so closely imitate Sir Toby Belch or Malvolio as to infringe but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. These would be no more than Shakespeare’s “ideas”…

4. RULE: Clichés, stock characters, stereotypes (scenes a faire) are not copyrightablec. Musical Works

i. Copyright is in the notes +lyrics, which are separate from sound recordings1. Composer/lyricist own the musical work

ii. Studio owns the sound recordingiii. Compulsory license for non-dramatic musical works

d. Dramatic works, including any accompanying musici. No compulsory license for the works

e. Pantomimes and Choreographic Worksi. Difficulty is fixation

f. Pictorial, Graphical and Sculptural Worksi. §101 definition – “Two-dimensional and three-dimensional works of fine, graphic, and applied

art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings.”

ii. Sculptural works and pictures might be “useful articles” – which are not protected under iii. Most courts have found originality in maps as compilations of factsiv. Mazer v. Stein

1. The design of a useful article shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently from, the utilitarian aspects of the article.

2. After Mazer the Copyright Office promulagated – “If the sole intrinsic function of an article is its utility, the fact that the article is unique and attractively shaped will not qualify it as a work of art. However if the shape of the utilitarian article incorporates features such as artistic sculpture, carving or pictorial representation, which can be

identified separately and are capable of existing independently as a work of art, such features will be eligible for registration”

v. Pivot Point International, Inc. v. Charlene Products, Inc. (6 Separability Tests)1. District Court/Goldstein – “feature is conceptually seperable if it can stand on its own

as a work of art traditionally conceived, and if the useful article in which it is embodied would be equally useful without it”

a. Not equally useful without the features – used to apply makeup2. Physical separability test (gives full meaning to the ‘and’)

a. Can’t separate two-dimensional artb. House report – physically or conceptually separable fromc. Statute – “can be identified separately from and are capable of existing

independently of the utilitarian aspects of the article”3. Kieselstein-Cord v. Accessories by Pearl, Inc. (2nd Cir) -- The artistic features are

“primary” and the utilitarian features “subsidiary”4. Nimmer -- The useful article “would still be marketable to some significant segment

of the community simply because of its aesthetic qualities”5. Dissent in Carol-Barnhart (2nd Cir) -- The article stimulates in the mind of the

beholder a concept that is separate from the concept evoked by its utilitarian function6. Brandir/Denicola (2nd Cir) -- Artistic design was not significantly influenced by

functional consideration (adopted here)g. Motion pictures and other audiovisual works

i. Audio visual works -- series of related images which are intrinsically intended to be shown by the sue of machines and devices together with accompanying sounds

ii. Difficult issue: who is the author (studio usually is listed as the author since most of it as a work for hire)

h. Sound recordingsi. works that are a result of a fixation of a series of musical, spoken, or other sounds

ii. Author = performers and sound engineers (typically work for hire)iii. Reproduction, adaptation, distribution right – no unlimited public performance right

1. Does not extend to imitation or simulationi. Architectural works

i. Added Dec 1, 1990 – limited to buildings designed and fixed after that timeii. Does not extend to pictorial representations of a constructed building

iii. owner of the building has the right to modify without violating an adaptation rightVI. Section 103 Derivative and Compilation Works

a. Copyright in derivative or compilation work only extends to the new, original matter, not in the underlying work in any way and only to the extent that the underlying matter was used lawfully

b. Derivative work: work based on another work, dramatization, translation, motion picture work, sound recording, abridgment/condensation, or any other form in which a work may be recast/reformed/adapted.

c. Two threshold questions for a valid derivative worki.  Was the original work used lawfully (did they get permission from previous copyright owner

from which derivative is based on)? § 106(d)ii. Is their sufficient originality to get a separate copyright?

d. Gracen v. Bradford Exchangei. The originality standard for creating a copyrighted derivative work

1. Alfred-Bell: lithographs of the paintings in public domain are copyrightable, inadvertent originalities are enough distinguishable variation is the test

2. Batlin: must contribute “substantial, not merely trivial, originality” above and beyond the preexisting work Change in medium is not sufficient

e. Compilation:  A work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.  The term compilation includes collective works

f. Feist Publications Inc. v. Rural Telephone Service Companyi. Complete rejection of sweat-of-the-brow

ii. Research is not copyrightable research is just facts (Miller v. Universal City Studios)iii. INS v. AP facts are not copyrightable (misappropriation has been limited to systematic

copying)iv. Congress repudiated sweat of the brow doctrine by changing the copyright act

1. Explicitly “original works of authorship”2. §102(b) makes clear that directories and compilations’ copyright does not extend to

ideas, concept, principle or discovery, etc.3. §103(b) compilations and derivative works only get a copyright in the new material4. Defined compilation in §101 (“(1)a work formed by the assembly of preexisting

material, or data; (2) the selection, coordination, or arrangement of those materials; and (3) the creation, by virtue of the particular selection, coordination, or arrangement, of an ‘;original’ work of authorship.”)

v. RULE: in order to get copyright protection a compilation must have an original selection or arrangement (greater than alphabetical order, for instance)

VII. Registration (pre-1976)a. Federal Statutory Copyright

i. Formalities were more important earlier on (before 1978)ii. Before 1978 there was a dual system of copyright protection

1. Pre-publishing – protected by state law (common law copyright)a. Right of first publicationb. If published with correct copyright notice -- Got federal statutory copyrightc. If published without notice -- Went irrevocably into the public domain

2. Notice =a. “Copyright” or circle cb. The year of the copyrightc. Name of the claimantd. Question becomes when does publication occur

3. Notice must be affixed in a way that is publicly visibleiii. After 1978

1. Still had to have notice on published copiesa. Goes into PD otherwise, unless cured under §405b. Cure:Registration made within 5 years and a reasonable effort is made to add

notice to all copies or phonorecords that are distributed to the public in the US after the omission has been discovered

i. When – usually after legal requirement comes to attentionii. What is reasonable effort?

1. Some say own inventory2. Some say unsold copies (one case says to customers)

iii. Omitted on relatively small number of copies1. Not too large of a percentage2. Not too large of an absolute number

iv. Omitted in violation of express agreement2. Copyright begins at fixation, not publication

iv. Joined Berne convention March 1, 19891. Prohibits conditioning copyright rights on any formalities2. No more notice requirement for copyright

a. Use of notice defendant can’t claim innocent infringement (could reduce damages)

3. Why include?a. Has a deterrent effectb. Laypeople still think that it is required

b. Academy of Motion Picture Arts and Sciences v. Creative House Promotions, Inc.i. RULE: “publication is deemed to occur when by the consent of the copyright owner, the

original or tangible copies of a work are sold, leased, loaned, given away, or otherwise made available to the general public, or when an authorized offer is made to dispose of the work in any such manner even if a sale or other disposition does not occur.”

ii. General publication Puts work into the public domain1. Selling a painting at auction may be general publication2. Giving to a museum might be a select group

iii. Limited publication Does not put into the public domain 1. Distributed to a definitely selected group2. For a limited purpose3. w/out right of further reproduction, distribution or sale

iv. Public performance of a work does not count as a publicationc. “Publication is the distribution of copies or phonorecords of a work to the public by sale or other

transfer of ownership, or 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.”

d. Compilations §404: “A separate contribution to a collective work may bear its own notice of copyright… However, a single notice applicable to the collective work as a whole is sufficient to invoke the provisions of sections 401(d) or 402(d)…”

e. Derivative worksi. Registration of underlying work does not cover the derivative works

ii. Registration of the derivative work if owned by same person as the underlying work is sufficient to protect the underlying work

f. Registrationi. No longer have to register to get a copyright

ii. Advantages to registration1. Presumption of validity [§410(c)]2. Must register US works to sue for infringement [§411(a)]

3. Statutory damages and attorney’s fees requires registration [§412)]

Ownership and TranfersI. Section 201(a) Initial Ownership.--Copyright in a work protected under this title vests initially in the author

or authors of the work. The authors of a joint work are coowners of copyright in the work.II. Section 201(b) Works Made for Hire.--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.

a. Work made for hire is:i.  a work prepared by an employee within the scope of his or her employment; OR

ii. a work specially ordered or commissioned for use (1) as a contribution to a collective work, (2) as a part of a motion picture or other audiovisual work, (3) as a translation, (4) as a supplementary work, (5) as a compilation, (6) as an instructional text, (7) as a test, (8) as answer material for a test, or (9) as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

1. To meet subsection ii the agreement must be signed and be one of the nine enumerated types of works

b. In works made for hire, the employer is treated as the “author” for ownership purposes.c. “Supplementary work" is a work prepared for publication as a secondary adjunct to a work by

another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an "instructional text" is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

d. CCNV v. Reedi. Work made for hire framework:

1. Court should first ascertain if the creator is an “employee” or an “independent contractor” and then apply the appropriate provisions, either 201(a) or 201(b) depending on the outcome of that analysis.

2. If Employee within scope of employment = WFH3. If not look to part b

ii. Scope of employment, several courts look to tripartite test in Restatement (Second) of Agency1. Whether the work was of the type the employee was hired to perform2. Whether the creation of the work in question occurred “substantially within the

authorized time and space limits” of the employee’s job; and3. Whether the employee was “actuated, at least in part, by a purpose to serve” the

employer’s purposeiii. [After extensive discussion of statutory interpretation] Court accepts the common law

definition of employee using the general rules of agency. Relevant factors:1. Skill required2. Source of instrumentalities and tools3. Location of the work4. Duration of the relationship of the parties5. Whether the hiring party has the right to assign additional projects to the third party

6. Extent of hired party’s discretion over when and how long to work7. Method of payment8. Hired party’s role in hiring and paying assistants9. Whether the work is part of the regular business of the hiring party10. Whether the hiring party is in business11. The provision of employee benefits12. Tax treatment of the hired party. (generally determinative)

e. To determine statutory meaning, look at (1) text and structure, (2) legislative history, (3) policy to figure out definitions

III. Collective Works: Works, such as periodical issues, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.

a. RULE: compiler owns selection and arrangement as a whole and each contributor owns the specific art that he/she contributed

b. Default license to distribute the entire collective workc. Tasini Freelancers sued, is the CD Rom/database reproduction of selection and arrangement or the

reproduction of the articlei. Freelancers win not reproducing the selection and arrangement

d. Greenberg v. National Geographic Inc.i. Reproduction of pages was still infringing

1. Could search for articles2. 11th Circuit not within §201(c)3. 2nd Circuit said it was wrong4. 11th Circuit reheard after Tasini within §201(c)

IV. Joint Works: 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. Both author’s must contribute some protectable expression.

a. The contributions must be eitheri. Interdependent – work together but are separable (music and lyrics)

ii. Inseparable – cannot pick out which contribution is whichb. Intention that contributions be merged into a unitary wholec. Childress v. Taylor

i. Test to determine when determining ownership regarding default definition of joint authors 1. Intent to merge?2.  Are contributions copyrightable? (this pulled from the word “authors” in the statute)

a. Policy: it is a good rule as a default rule (since the copyright is 50-50 ownership, it is not fair to award someone 50% ownership when they only contribute 10%)

3. Intent to be co-authors a. Credit that is awarded

ii. Joint authorship functions the same as co-tenancies in property, each author may exploit the work as they please, but may not harm the value of the work

iii. Divisibility = any exclusive rights, or any subdivision rights, may be transferred and owned separately

1.  Transfer of material object does not own the reproduction rights

V. Transfers of Ownershipa. Section 201(d)

i. May be transferred in whole or in part – divisibility permittedii. 1909 Act did not allow divisibility

b. Section 202i. Transfer of the material object does not transfer the copyright

ii. Expressly overruling a New York decisioniii. May publicly display the object

c. Effects Associates, Inc. v. Coheni. Transfers must be in writing, but nonexclusive license does not have to be in writing

ii. Can have an oral agreement confirmed by a writingiii. Can sublicense an exclusive license in most jurisdictions

1. 9th Circuits said that right to sublicense has to be expressiv. New Media problem

1. 9th Circuit – look to the core provision, new media not assigned2. 2nd Circuit – look to anything reasonably included, unless expressly excluded

d. Orphan Works – Works where you can’t find the ownersi. Search the Copyright Office

1. Limit damages except for the use where user has conducted a reasonable search and provides attribution where possible

Exclusive Rights and Their LimitationsI. Reproduction Right (§ 106(1))

a. Right to reproduce the work in copies or phonorecords (works that are fixed)i. right to create new fixation, but doesn’t require distribution or sale; purely private reproduction

is covered; ii. a single reproduction for personal use that is non-commercial are covered under the statute;

iii. also doesn’t say anything about intermediate copying (once you have created a fixation of something, even if it is not what you intended to send to the public, it is covered since it is actionable)

b. Courts have generally held that RAM copies are sufficiently fixed to violate Copyrightc. Buffer copy is not a fixation must be embodiment for more than transitory duration

i. Streaming audio/video is not a reproduction (Cartoon Network)d. Who is liable for direct infringement of the work

i. Setting up a system leads to only contributory liability, which requires knowledgeii. Pressing the record button is the direct liability, which is strict liability (there must be some

volitional act for infringement)II. The Adaptation Right/ Exclusive right to prepare derivative works (§106(2))

a. Often overlaps the reproduction right (making a movie based on the book might violate the reproduction right, adaptation right, or both)

b. Lee v. A.R.T. Companyi. 2nd Cir. RULE: In order to create a derivative work the recasting, transformation or adaptation

must be original enough to create a copyrightable work of authorship1. Court requires the same standard for infringement by creating a derivative work as for

getting a copyright in the derivative work2. 9th Circuit disagrees

c. Galoob v. Nintendo – DJ actioni. Allowed altering of game play by intercepting and changing the bits

ii. Not fixed, the game is fixed, but the altered game is transitoryiii. RULE: a derivative work must be fixed to be protected under the act but not to infringe

1. Statute: 106(2) lacks any reference to tangible copies or phonorecords or fixationa. Work is intangibleb. A work is created when fixed in a copy or phonowork the first time – cannot

create a derivative work without fixation2. Legislative History: adaptation right is be broader than the reproduction right3. Policy: crazy to allow non-fixed work to infringe

iv. RULE: a derivative work must incorporate a protected work in concrete or permanent form1. Directly contradicts the earlier rule2. Statute: only requires “some form” rather than concrete or permanent form3. Has to be reproduced, publicly performed, public distributed, or publicly displayed

basically adaption right is not an independent rightd. Duke Nukem case

i. Creating new levels and altering play of the video gameii. Judge Kozinski says this is infringing, incorporates the original by referencing the art library

on the original CD – creates a sequelIII.Distribution Right (§106(3) and §109)

a. 106(3) – Subject to 107 through 122, the owner of a copyright under this title has the exclusive rights to do and to authorize any of the following: (3) to distribute copies of phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

b. First sale doctrine: The owner of copyright in a work is entitled to control the first public distribution of particular copies or phonorecords of the work, but thereafter the owner of the particular copy is entitled without authority of the copyright owner, to sell or otherwise dispose of the possession of that copy

i. Codified in §109, with exceptions for no renting of music (both musical works and sound recordings), or computer programs

ii. Also grants the right to public display the work one image at a timec. London-Sire Records, Inc. v. Doe 1

i. Distribution right is the right of first public distributionii. RULE: Electronic distribution can violate the distribution right

1. The only issue is whether the files are material the act is written in terms of tangible objects, not electronic files

2. Person requesting the file is violating the reproduction right3. Court holds that what matters is that the phonorecord ends up on the other computer

a. Violates the plain meaning of the statuteiii. Is an offer to distribute a distribution?

1. Statutory argument: publication and distribution are synonomousa. Publication includes offers to distribute – distribution requires an actual

distribution before violation of the distribution righti. Can use circumstantial evidence of distribution, etc to prove the actual

distribution2. Most courts have held that publication and distribution are not synonomous and that

an offer to distribute does not violate the distribution right

d. Hotaling v. Church of Jesus Christ of Latter-Day Saintsi. RULE: A mere offer to distribute is enough to violate the distribution right

ii. 108(c) – libraries can make 3 copies to replace a copy that is damaged, lost or stolen1. Must make a reasonable effort to find replacement copies at a reasonable price

e. Importation §602 -- “Importation into the United States without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section106, actionable under section 501.”

i. Copyright owner wants to stop parallel imports/grey-market goods (difference in pricing between countries)

ii. “lawfully made under this title” Section 109(a)1. Applies only to the US2. Lawfully made within the US

iii. RULE: If lawfully made in the US and then sold overseas can be brought in as a “grey market”iv. § 602(a)(2)

1. Bars importation and exportation of unlawfully made goods2. Gives copyright owners an exportation right

IV. Public Performance Right (§106(4))a.  “Perform” means to recite, render, play, dance, or act it, either directly or by means of any device or

process 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. Public Performance:i. To perform or display a work at a place open to the public or at any place where a substantial

number of persons outside of a normal circle of a family and its social acquaintances is gathered; OR

ii. To transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process whether the members of the public receive the transmission in the same place or separate places or at the same time or different times

c. Public Performance Right only applies to some categoriesi. Not pictorial, graphic, sculptural works

ii. Not architectural worksiii. Not sound recordingsiv. In 1995 Section 106(6) -- Added a digital public performance right in sound recordings

d. Columbia Pictures Inc. v. Aveco Inc.i. Performance of a film:

1. In case of motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible

2. “To recite, render, play, dance, or act it, either directly or by means of any device or process 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.”

ii. Renting a viewing room to play the video in addition to the video itself is to authorize a public performance of the work.

1. But hotels can loan videos from a library – seemingly inconsistente. Cartoon Network v. CSC Holdings

i. Record and store at a remote location and then retrieve back and watch (replacement for DVR)ii. Not a public performance because each household had a separate copy

f. Exceptions to Section 106(4)i. Section 110(1) Performance in the class

ii. Section 110(2) distance educationiii. Section 110(3) religious servicesiv. Section 110(4) general nonprofit performances

1. Copyright owner can object (no teeth here)2. No compensation for the performers, promoters or organizers

v. Section 110(5) exemption for public reception of transmission on a single receiving apparatus of a kind commonly used in private homes, unless a direct charge made or transmission is further transmitted to public

1. ASCAP kept harassing the larger bars and clubs2. Exempts 50% of all stores and 70% of all restaurants3. ASCAP sued under WTO TRIPS agreement to force a change in the law

vi. Section 110(7) record store for promoting the stuff they are selling (non-dramatic musical works only)

g. First sale doctrine normally does not apply to performance exception is Section 109(e) for coin-operated video games

h. Public performances of non-dramatic musical worksi. Managed by collective rights societies

1. ASCAP – (American society of composers, authors), BMI – (broadcast music inc.,) and SESAC – (society of European stage authors and composers)

ii. Single fee license for all works (percentage of the revenue is generally how the licensing goes)iii. Problem with anti-trust violations

1. Consent decree between societies and governmenta. Must accept all performersb. Prohibited from a contract of over 5 yearsc. District Court has the power to decide the rates

iv. Internet music subscription services1. Must pay for sound recordings – Sound Exchange (RIAA)2. Must pay for musical works also – big 3 above

i. Dramatic Musical worksi. Grand license if telling the story of the work (Grease)

ii. Small license to perform only a specific musical number (Greased Lightning)j. Secondary Transmissions – Handout

i. Retransmissions are also public performancesii. §110(5)(a)

V. Public Display Right (§ 106(5))a. “Display” means to show a copy of it, either directly or 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.

b. Does not include sound recordings or architectural worksc. Limited by the first dale doctrine –109(c)d. Perfect 10, Inc. v. Amazon.com, Inc.

i. The court determines that it is the owner of the server that is displaying the copy that is on the server – Server Test

e. Ringgold v. Black Entertainment Television, Inc.i. Background display of a quilt in a television set was a public display: showing remotely by

projection of more than one image at a time (Meets with 106(5) paragraph 2 clause 2)ii. De minimis

1. Copyright can mean a technical violation of a right so trivial that the law will not impose legal consequences

2. Copying has occurred to such a trivial extent as to fall below the quantitative threshold…required as a legal matter to satisfy the substantive test for actionable copying

iii. RULE: must be observable to be more than De minimis infringementf. Section 114—sound recordings SEE Handout

VI. Moral Rightsa. Moral Rights – Generally

i. The right of integrity -- the right to insist that the work not be mutilated or distortedii. The right of attribution -- The right to be acknowledged as the author of the work and to

prevent others from naming anyone else as the creator, andiii. The right of disclosure -- the right to decide when and in what form the work will be presented

to the publicb. Moral Rights are common in Europe, but are generally not recognized in the United Statesc. Article 6bis of the Berne Convention recognizes moral rights of attribution and integrity

i. US did nothing to enact this (supposedly already protected)1. §43(a) of the Lanham Act – correct attribution and credit2. Gilliam – protects integrity to some extent

ii. No rights under the Berne Convention itself, only if implemented in domestic lawiii. Movie studios are deathly afraid of moral rights

d. State art preservation lawsi. California – can’t destroy it

ii. NY – can’t publicly display mutilated or modified copy and identify it as the work of anothere. Daystar case abrogated the interpretation of the Lanham act and Gilliam that would have given

credence to the idea that the US already protected rights of attribution and integrityf. Section 106(A) VARA

i. Work of visual art – “painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered…”

1. Generallya. Work = abstractionb. Copy = where the work is fixed

2. This defines work as embodied in tangible objectsii. Attribution rights – both positive and negative

iii. Integrity right – prevent any distortion, etc or destruction of a work of recognized statureiv. Rights are not assignable, but may be waivedv. This statute really is an art preservation statute, it does not protect moral right as such

g. Phillips v. Pembroke Real Estate, Inc.i. Rule: work of visual art does not include any poster, map, globe, chart, technical drawing,

diagram, model, applied art, motion picture or other audiovisual work, book magazine,

newspaper, periodical, data base, electronic information service, electronic publication, or similar publication;

ii. Rule: works made for hire are not works of visual artiii. Court holds that site specific works are not protected at all because it would create too much of

a burden on real property rightsiv. Exceptions:

1. 106A(c)(1) Don’t have to maintain the artwork2. 106A(c)(2) trying to maintain the work badly is fine unless gross negligence, and

changing the public presentation is fine3. 106A(c)(3)

v. Section 113(d) – site specific art connected to buildings1. Waiver up front can destroy the art2. Might have to preserve the art in the building if there is no waiver3. Find the artist and give notice, allowing the artist to remove the art at the artist’s own

expenseh. Kelley v. Chicago Park District

i. How to determine if it’s “a work of recognized stature”1. Expert testimony is best2. Recognized and stature may be two different requirements

i. Moral rights summaryi. US is obligated to provide some moral rights protection by the Berne Convention

ii. We are not in compliance with the Berne Conventioniii. Article 6bis is exempted from WTO enforcement of the Berne Convention

Infringement ActionsI. Procedural hoops

a. Subject matter jurisdiction federal court only litigation (required by the statute)b. “Arising under” applies to copyright also (Well-pleaded complaint rule)c. Can sue federal government – waived sovereign immunityd. Venue – sue in any district where infringing articles are being suede. Non-exclusive licensees may not suef. Right to jury trial only for damages, not for injunctionsg. Congress cannot waive the sovereign immunity of the states, and thus states are not liable for patent

infringement, unfair competition or copyright infringement unless they have also waived S.I.II. Pleading:

a. Identify the workb. Allege P owns the workc. Allege that copyrights are validly registeredd. Allege acts of infringement by D

III.Elements of Infringementa. Plaintiff must prove (1) ownership in the copyright, and (2) that defendant’s conduct infringes the

copyright in order to win a suitb. Elements of infringment

i. Ownership of a valid copyright – prima facie case accomplished by timely certificate of registration (chain of title also if not the author)

1. “original work of authorship fixed …”2. Compliance with statutory formalities (registration)3. Author was an eligible national4. Prove ownership or transfer from the author

ii. Copying by Defendant1. Direct evidence – admission of copying, eyewitness testimony2. Circumstantial evidence

a. Access to the work – easy to satisfy in most casesb. Probative similarity -- enough similarity to infer copying, but not necessarily

of protected expression i. Negated by evidence of independent creation (usually affidavit of the

author)ii. Negated by evidence of a common source

iii. Improper appropriation – substantial similarity of protected expressionIV. Copying

a. Direct Proof of Copying i. Through admission (may get it but you don’t get it very often)

ii. Eyewitness testimony (again rare)b. Circumstantial

i. Access ii. Probative similarity (enough similarity to infer that one work was copied from the other)

iii. Defense can be that there was independent creation or a common sourcec. Many courts require proof that

i. The defendant had access to the plaintiff’s workii. That defendant’s work is “substantially similar to plaintiff’s

d. Other courts use the Arnstein test (preferred by Ochoa):i. Whether defendant’s work evidences copying of the plaintiffs; and

ii. If so whether such copying amounts to an improper appropriationiii. “Copying” under Arnstein only asks whether there the defendant copied, and thus even proof

of copying uncopyrightable features may suffice for this element.e. Bright Tunes Music Corp v. Harrisongs Music, Ltd.

i. RULE: Subconscious infringement of copyright is nevertheless actionable infringement under copyright law.

1. Disproving subconscious copying is really difficult2. Controversial but well-established

ii. RULE: A defendant cannot copy a work which he is not familiar with, and he cannot become familiar with the allegedly copied work unless he has access to it.

iii. RULE: A copyright infringement plaintiff need to prove that the defendant actually saw the work, but only that the infringer (or an intermediary) had the mere opportunity to see the work. – Bouchat v. Baltimore Ravens, Inc.

iv. RULE: “A mere possibility that such an opportunity could have arisen will not suffice. Rather, it must be reasonably possible that the paths of the infringer and the infringed work crossed.” – Towler v. Sayles

v. RULE: Plaintiff must establish not only access, but also unauthorized use, thus the plaintiff must show some similarity between copyrighted expression in his and the accused works.

f. TY, Inc. v. GMA Accessories, Inc.

i. RULE: Strikingly similarity -- two works may be so similar that they are “strikingly similar” and we can infer copying without proof of access

1. A similarity may be striking without being suspicious, if both works are similar to public domain materials, but there are no similar public domain materials in this case.

ii. RULE: Identity is not infringement, copyright forbids only copying, not independent creation. – Selle v. Gibb

iii. RULE: “The more a work is both like an already copyrighted work and -- for this is equally important – unlike anything in the public domain, the less likely it is to be an independent creation.… circumstantial evidence -- merely probabilistic rather than certain – can confer sufficient confidence on an inference, here of copying, to warrant a legal finding.”

iv. RULE: If two works are so similar as to make it highly probable that the later one is a copy of the earlier one, the issue of access is not important, because access must have occurred in order for copying to occur. – Selle v. Gibb

1. So similar that we can infer access from the obvious copyingv. RULE: “The stronger the similarity between the two works in question, the less compelling the

proof of access needs to be….” Ellis v. Diffie1. RULE: Conversely, “no amount of proof of access will suffice to show copying

where there are no similarities.” – Wickham v. Knoxville International Energy Exposition, Inc.

vi. RULE: Indirect evidence of copying merely shifts the burden of producing evidence, defendant may still rebut the presumption and the burden of persuasion always lies with the plaintiff.

g. Proof of similarity that goes to the issue of copying is a separate inquiry from “substantial similarity” – relevant to whether the defendant’s improper appropriation

V. Improper Appropriationa. “Improper appropriation” requires an improper taking of both kind and amount of material – thus

plaintiff must show “substantial similarity” between defendant’s work and the protected expression in plaintiff’s work

i. IF the defendant has copied only unprotected expression (facts, ideas, public domain material, scenes a faire), there is no liability for infringement.

ii. If the defendant’s work has been so altered that it is no longer substantially similar to the plaintiff’s work, there is no liability for infringement

iii. Verbatim similarity – Literally copied a portion of plaintiff’s workiv. Pattern similarity (comprehensive non-literal similarity) – very similar at the level of structure,

sequence, selection & arrangement, plots, etc1. Must be copying a large portion of the work2. Fragmented non-literal similarities are not enough for infringement

b. Subtractive approach – analytic dissectioni. subtract from the plaintiff’s work non-protected expression (facts, public domain/non-original

material, scenes a faire (standard in the treatment of a given topic))ii. compare what is left to the defendant’s work

1. favors the defendant because there is less left over to compare2. plaintiff argues that this removes the selection and arrangement of the unprotected

elements, missing pattern similaritiesc. Totality of expression approach –

i. Compare the two works as a whole – “total concept and feel” (bad phrase)

ii. How similar are the works as a totality, making sure that the similarity is of protected expression

1. Works well for visual artd. Nichols v. Universal Pictures Corp.

i. At some point the level of abstraction comparing the work will be so vague that it will be all-encompassing and will deal with unprotected expression

1. Does not tell us where to draw the line, but is merely a way to think about idea-expression dichotomy analysis

2. Dialogue – protected3. Sentences – protected4. Paragraphs – protected5. Incidents – Iffy6. Scenes – not protected probably7. Acts – not protected

ii. Levels of abstraction analysis1. Most detailed pattern common to both works2. Then look at how general that level is3. Does not give the answer to the problem, but is a good way to think about whether

what is copied was protected expressioniii. RULE: Characters must be specific to be protected

e. Laureyssens v. Idea Group, Inc.i. Subtraction analysis

1. Subtract out the non-copyrightable material2. Then compare whether there was improper appropriation

ii. Ordinary Oberver RULE: Asks whether substantial similarity as to protected material exists between the works at issue. To that end we determine in most cases whether the “ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeals as the same.”

iii. “More discerning ordinary observer” – excludes from consideration of substantial similarity the non-protected portions of the plaintiff'

1. More discerning about protectable elements2. Appropriate when there is a mix of unprotected expression3. Ordinary observer who can tell the difference between protected and unprotected

expression – judge is the one to determine thisiv. “Intended Audience” Test accounts for the specialized expertise of an “intended audience”

1. Allows expert testimony on improper appropriationa. Used in some types of musical worksb. Always allowed for computer programs

f. Peter Pani. Ordinary observer test

1. Default test2. Becoming quantitative/qualitative similarity in 2nd Circuit – p. 643 n.10

ii. Very significant similarity, despite the difference in each specific element1. Intentionally changed every element of the rug design2. Pattern similarity

g. Tufenkkian Import/Export Ventures Inc. v. Einstein Moomjy, Inc.i. Tufenkian

1. Took half of a field – now asymmetrical2. Elongated the design3. Took out various elements to make the rug more open

ii. Bashian1. Made the rug design more symmetrical2. Copied the same public domain elements, and removed fewer elements

iii. Rule: selection of the public domain original elements is copyrightable (no arrangement here because the same elements were arranged the same way in prior works).

iv. One cannot intentionally change an existing work enough to not be infringing. “No plagiarist can excuse the wrong by showing how much of his work he did not pirate.”

1. Basically a don’t copy mandate2. But seems less applicable to pattern copying

v. Some cases hold that as long as the result is not substantially similar, then it doesn’t matter what the alleged infringer started from

vi. Best thing to do is to give the judge excuses to rule in your favor – based on results-oriented reasoning

h. Steinberg v. Columbia Pictures Industries, Inc.i. New Yorker drawing and movie poster

1. “striking stylistic relationship between the posters, and since style is one ingredient of “expression” this relationship is significant.”

2. Similarity of vantage point3. One building is the same

ii. RULE: The copying need not be of every detail so long as the copy is substantially similar to the copyrighted work

iii. RULE: A copyright infringement may occur by reason of a substantial similarity that involves only a small portion of each work.

iv. Result-oriented reasoning, there was copying so the court looks for and finds (to no one’s surprise) substantial similarity

VI. Third Party Liabilitya. Black Letter law (before Grokster)

i. Contributory liability1. Knowledge of the direct infringement2. Induce, encourage, or materially contribute to the infringement

ii. Vicarious liability (Similar to respondeat superior in torts – but is well beyond agency law)1. Direct financial benefit to the vicarious infringer2. Right and ability to control the person doing the infringing (should be principal-agent

relationship)b. DMCA says – service providers are only subject to injunctive relief for four things

i. Transitory Digital Network communicationsii. System Caching

iii. Web hosting if:1. No actual knowledge and take down upon notice2. No financial benefit and no right/ability to control

3. Comply with notice and takedowna. Disable accessb. Send notice to the posterc. Poster has a chance to say that it is not infringing

iv. Information location tools (linking)1. Same as above in web hosting

v. Trades off no liability for service providers for complying with notice and takedownc. Does not make ISPs liable – most of the content-makers are not happy with deal d. Sony Corp of America v. Universal City Studios, Inc.

i. Borrows rules from the Patent statute (codifications of Supreme Court case law):1. §271(b) – active inducement renders one contributorily liable2. §271(c) –a “staple article or commodity of commerce suitable for substantial non-

infringing use is not contributory infringement.”ii. RULE: the sale of copying equipment, like the sale of other articles of commerce, does not

constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes. Indeed, it need merely be capable of substantial non-infringing uses.

iii. Napster -- 9th Circuit – generalized, constructive knowledge of infringement, and materially contributing to the infringement by providing the index

e. Groksteri. Different from Napster because there was no centralized server storing any of the file-sharing

data (indexes, etc.)ii. New theory of liability: Inducement Liability

1. Intent/knowledge that the device will primarily be used for infringement2. Inducing the direct infringement

iii. “One who distributes infringing device with motive to infringe can be held liable (more about what is going on in your head / intent)”

iv. Evidence of inducement1. Trying to serve former napster users – only works if you assume infringement2. Didn’t develop filtering to reduce the amount of infringement – this is not an

affirmative step to stop infringement (alone is not enough, supposedly)3. Revenue model promotes infringement – make money through advertising, thus the

more infringement that occurs the more money that is made (only way to make money on the internet)

Fair Use and DefensesI. Policy Behind Fair Use

a. Want to promote the creation of new worksb. Sometimes subordinate the copyright interest to the public interest

II. Fair use codified in §107 – fair use is not a violation of copyrighta. Six purposes – comment, criticism, newsreporting, teaching, scholarship and research

i. Not automatically fair use if in a categoryii. Not exclusive

b. Four factors – purpose and character, nature of copyrighted work, amount and substantiality of appropriation, effect on potential market.

III.Folsom v. Marsha. To determine fair use

i. Nature and objects of the selection madeii. Quantity and value of the materials used

iii. Degree to which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work

b. Story v. Holcombe – An abridgment of Story’s own memoir was deemed infringingc. Lawrence v. Dana – reproducing the selection and arrangement = infringement

IV. Campbell v. Acuff-Rosea. Purpose and Character of the use

i. Commercial v. Non-profitii. Educational vs. pure entertainment

iii. Transformative vs. reproductive1. Transformative use test – “the more transformative the new work, the less will be the

significance of other factors, like commercialism, that may weigh against a finding of fair use”

a. “Adds something new with a further purpose or different character, altering the first with new expression, meaning, or message;”

b. Just adding originality itself is not sufficientc. Policy – want to create new works, so we allow the use of old works in

transformative manners in new works2. Parody is a transformative use – but not in the statute

iv. Good Faith vs. Bad Faith1. Asking permission should not be held against you; court wants people to ask

permission then use fair use as a fall backb. Nature of the copyrighted work – some works are closer to the core of intended copyright protection

than others (This has the least weight)i. Published v. not yet published

ii. Factual v. fictional/creativec. Amount and substantiality of the portion used in relation to the copyrighted work as a whole

i. Subfactors: Quantitative and Qualitativeii. How much of the work was taken

iii. What part (most important? “Heart”) of the work was takend. Effect on a Potential Market for the copyrighted work or licensed derivative works

i. Policy – don’t want to discourage creating works by diminishing their valueii. Look for effect of widespread use of the work in this type

iii. RULE: if the criticism is effective that is not the type of economic harm, look only to substitution harm of the market

e. RULE: for a parody of the original – there must be a targeted comment or criticism of the original i. “The threshold question when fair use is raised in defense of parody is whether a parodic

character may reasonably be perceived.”ii. Can’t just take a piece and make humor out of it

iii. Not satire – which makes fun of society in a broader way than parody making fun of the work in a targeted way -- Satire needs far less borrowing of expression

f. RULE: commercial use is not presumptively an unfair useg. RULE:A parody must be able to copy at least as much is necessary to conjure up the original

V. Harper & Row, Publishers, Inc. v. Nation Enterprises

a. The Nation uses portions of Gerald Ford’s memoirs in an article, scooping Time Magazine and publishing the article while the underlying memoir book is unpublished

b. Right of first Publicationi. There is a right to control the first publication with respect to the speech

ii. Expanding fair use so far would make it so that any public figure could obtain a valid copyright, but would not have any value in licensing

c. RULE: No independent First Amendment defense to copyright infringementi. Reaffirmed in Eldred in 2003

ii. The First Amendment is adequately protected by the Idea expression dichotomy and by underlying facts not being copyrightable

d. RULE: Recipient of the letters does not own the copyright in the worki. “The fact that a work is unpublished shall not itself bar a work from being fair use…”

e. Essentially if a work that is soon-to-be published is used (scooped) courts will automatically find that the use is not a fair use and is infringing

VI. Castle Rock Entertainment, Inc. v. Carol Publishing Groupa. RULE: where there is no transformative use, the third factor will also weigh against D since no

amount of copying would be necessary to further the Ds purpose (of copying)b. The “facts” in Seinfeld are actually expression because the work is purely fictional and everything in

the show was created by the authorc. RULE: Amount & substantiality -- requires more than substantial similarity, must assess the

percentage usedd. Basically once the court decides that the work is transformative you lose

i. Now is not transformative use only, but something more like transformative purposee. The potential market to license quizzes based on the show weighed heavily here

VII. Kelly v. Arriba Soft Corp.a. Perfect 10 case all over againb. Framework:

i. Purpose and character of the use1. Transformative v. superseding

a. Cannot use the thumbnails in the same manner – the resolution is way too low – not superseding – (Transformative Purpose)

2. Commercial, but makes money by advertising, not by reproducing the imagesa. Indexing the images is what attracts the consumers – selling access to a search

engine, not individual imagesii. Amount and substantiality of the portion copied

1. Copied the entire photo, but have not retained the whole thing2. But did not copy more than was necessary for that transformative purpose3. Now this factor is inextricably linked to factor 1

iii. Effect on Potential market1. This searching helps the market – but only Kelley’s website (But third party

infringing websites certainly don’t help his market)2. Implication is that search engines pointing to your website help the market

a. Wouldn’t work if it was using song in a movieb. Could have charged you a license fee, but not entitled to a license fee if it is a

fair usec. Original opinion held that the linking was direct infringement, but this part of the opinion was

withdrawn and different result in Perfect 10

VIII. Affirmative Defensesa. Defendant can defend on a number of grounds:

i. Consent – I received a licenseii. Duration of the copyright has expired

iii. Copyright forfeited – especially due to formalityiv. Exception §§108-122v. Fair use

vi. Selected specialized defensesb. Misuse

i. Where the owner of a copyright expands his monopoly beyond the subject matter of the copyright

1. Attempting to use copyright to obtain a patent-like monopoly (Alcatel)2. Can’t use a copyright to gain control over something outside the scope of copyright

protectionii. A D is shielded from an infringement suit if misuse can be shown

iii. Alcatel – telephone switching systems monopoly obtained by using copyrighted software and an exclusive license agreement that the software is only to be used on Alcatel’s hardware (must buy replacement hardware from the software manufacturer)

1. Exclusive right in the software to get a monopoly in the hardware2. Cannot enforce copyright while it is being misused

iv. Anti-circumvention misuse – can’t circumvent software1. Can’t control the market for replacement garage openers with copyright on software

v. RULE Misuse applies only as long as the copyright is being misusedvi. RULE: Misuse does not require a formal antitrust violation – only attempting to extend the

monopoly through improper meansc. Statute of Limitations

i. A P must bring suit in a limited period of time: 3 years for civil actions and 5 years for criminal actions

ii. Time period usually accrues upon discovery of the infringing actsiii. However, in a recent decision outside the copyright context the Supreme Court decided that the

time period begins accruing from the time of the wrongful activ. 2nd Circuit – infringement is a continuing activity and can recover for series of actions if sue

within 3 years of the last actionv. Also applies to claims of co-ownership – some courts hold that forever barred if don’t sue

within 3 years of them claiming sole ownershipvi. Must register within the statute of limitations

d. Lachesi. Equivalent to the statute of limitation in applied to equitable claims

ii. Standard: “Unreasonable delay in bring an action that causes some prejudice to the D”1. Waiting to let the other party build up their business2. Has only been applied in the co-ownership of James Bond Case

e. Estoppeli. Knew of the infringement

ii. Objectively intended its conduct to be acted upon or the copyright owner such that the alleged infringer has a right to believe it was so intended

iii. The alleged infringer is ignorant of the true factsiv. The alleged infringer relies on copyright owner’s conduct to his detrimentv. Field v. Google – intentionally failing to use standard no-archive internet protocol

f. Abandonmenti. Vs. Forfeiture which involved the publication of a work without notice

ii. Abandonment requires intent by the copyright owner to give up the copyright (mere non-exploitation by the copyright holding is not abandonment)

g. Fraud on the copyright officei. If in the registration process P intentionally misstated facts, that had the copyright office

known, would not have granted the copyrighth. Innocent intent is not a defense

i. copyright is a strict liability C/Aii. However can mitigate statutory damages

Duration and TerminationI. Duration

a. Why have a duration limit at alli. Constitution says so

ii. Monopoly imposes costs, and don’t want that to continue longer than is necessary to reward the author/publisher

iii. US has a utilitarian view iv. Want a public domain for promoting creativity and the creation of new works

b. 1909 Act – 28 years and possible 28 year renewali. Fred Fisher Music – contracts assigning the renewal term are binding, so long as the author

lives until the end of the original term (right is conditional), if the author does not live to the end of the original then the statutory heirs get the renewal term – Stewart v. Abend

c. 1976 Act – gets rid of the renewal term for new worksi. For works created on or after Jan 1, 1978:

1. Individual author §302(a) – Life of the author plus 70 years 2. Joint work §302(b) – Life of the last surviving author plus 70 years3. Work made for hire §302(c) – 95 years from first publication, or 120 years from

creation (whichever is shorter)4. Anonymous or pseudonymous work – same as works for hire

ii. Works created before Jan 1, 1978, but first published after that date1. If published by Jan 1, 2003 §303(a)

a. Same as works created after Jan 1, 1978, except there is a statutory minimum that the term shall not expire before December 31, 2047

2. If not published before 2003 §303(a)a. Same as works created before Jan 1, 1978, except shall not expire before

December 31, 2002iii. First published 1964 - 1977 renewal becomes automatic §304(a)

1. Get 95 yearsiv. For works published between 1923 and 1964 §304(b)

1. Get 28 years + 67 (if properly renewed)v. Work published/registered in the US before 1923 is in the public domain §304(b)

II. Renewala. Who gets the renewal term

i. Author is the defaultii. If author is deceased, then widow/widower and children

1. Preempts state law to the contrary – statutory mandate2. Two courts of appeal have held its per stirpes

iii. Executor of the will, if no surviving spouse or childiv. Next of kin by state law of intestate succession if no will, and no surviving spouse or childv. Public domain otherwise

b. Four exceptions to the renewal successioni. Posthumous work

1. No assignment made during the author’s lifetimeii. Periodic, encyclopedic, collective works

iii. Works copyrighted by corporate bodiesiv. Works for hire

1. Employees and commissioned works2. Proprietor gets the renewal

c. Epoch Producing Corp v. Killiam Shows, Inc.i. “A general transfer by an author of the original copyright without mention of renewal rights

conveys no interest in the renewal rights without proof of a contrary intention.”d. Incentives for renewal under the 1976 act

i. 3 incentives to register the renewal1. Presumption of validity2. Statutory damages and attorney fees3. Stewart v. Abend – get the benefit of this rule, and can negotiate with the owner of the

derivative workii. RULE: If the renewal term is not registered, then a derivative work prepared in the initial term

will not have to pay the owner of the renewed copyrightIII.Termination

a. RULE: Cannot assign the right of termination in advanceb. Siegel v. Warner Bros. Entertainment Co.

i. Termination applies only in the United Statesii. Terminating the original work does not prevent the owner of derivative works prepared under

the original assignment from exploiting the derivative worksc. Pre 1978 transfers -- §304(c)

i. Made by author or the survivors, and not a work for hire or disposition by willii. Persons who may exercise termination

1. Author. Joint authors termination is by each individual portion of the rights, not treated as tenants in common.

2. Author’s survivors who own the termination right once the author diesa. Widow/widowerb. Children (per stirpes)c. Executor if no children or surviving spouse

iii. Exercised in a five year window, beginning whichever comes later”1. Jan 1, 19782. End of the 56th year from original date when copyright was secured3. Under the conditions specified in §304(d) – (terminate with regard to last 39 years of

the renewal – the extension)a. Work must be subsisting in the renewal by October 27, 1998b. The §304(c) term must not have expired by that date

c. Owner of termination must not have previously exercised the 304(c) termination rights

iv. Notice of termination1. Signed by the persons entitled to terminate, or their agents2. Served between 2 and 10 years before date of termination3. Notice must be recorded with Copyright Office prior to effective date

v. 39 year extension of Copyright in 1976 cannot be assigned away by an advance grant or an agreement to make a will

1. Ability to terminate 39 year extension does not affect agreements to transfer the original renewal term

vi. Once terminated majority as above may make further grants1. No grant until termination becomes effective, except with the original grantee

d. Post 1978 transfers -- §203i. Applies so long as grant is made by author and not a work for hire or disposition by will

ii. Persons who may exercise termination1. Author. Joint authors termination is by majority vote.2. Author’s survivors who own the termination right once the author dies

a. Widow/widowerb. Children (per stirpes)c. Executor if no children or surviving spouse

iii. Exercised in a five year period beginning 35 years from the date of execution1. 40 years from grant or 35 years from first publication if the grant included the right of

publicationiv. Notice of termination

1. Signed by the persons entitled to terminate, or their agents2. Served between 2 and 10 years before date of termination3. Notice must be recorded with Copyright Office prior to effective date

v. Can exercise termination regardless of any agreement to the contraryvi. Once terminated majority as above may make further grants

1. No grant until termination becomes effective, except with the original granteee. Five step process:

i. Determine which statute §203, §304(c) or §304(d) applies1. Interest that was terminated under §304(c) and has been regranted may be terminated

again under §2032. §304(d) limited to works first copyrighted between Jan 1, 1923 and October 26, 1939

ii. Calculate when the termination window opens and closes1. §304(c) window begins on the 56th anniversary of copyright date2. §304(d) opens on the 75th anniversary of the copyright date

iii. Select effective date of termination within that windowiv. Serve notice between 2 and 10 years prior to the effective datev. Record a copy of the notice in the Copyright Office before the effective date

RemediesI. §§502-506

a. §502 Injunctions (preliminary and permanent)i. Preliminary Injunction:

1. Irreparable harm AND2. Likelihood of success on the merits OR Serious questions on the merits and the

balance of hardships tips strongly in the movant’s favorii. 9th Circuit:

1. Likelihood of success on the merits and the possibility of irreparable injury OR2. Questions going to the merits and the balance of hardships tips sharply in the

movant’s favor (inherently requires strong harm to the movant)iii. Permanent Injunction Factors:

1. Irreparable harm

2. Inadequate remedy at law3. Balance of hardships tips strongly in the movant’s favor4. Public interest

b. §503 Impoundment and Dispositioni. Usually only verbatim copying with fly-by-night infringers

1. Want ex parte relief 2. Rule 65

c. §504 Monetary Remediesi. §504(b) Actual Damages + Infringer’s profits

1. Unless they overlap – lost salesii. §504(c) Statutory Damages

1. Alternative to actual damages2. Can wait until the end of the trial to elect for statutory damages3. Subject to §412 – only registered works can get statutory damages

d. §505 Costs and Attorney’s Feesi. Can recover costs as prevailing party

ii. Can recover Attorney’s fees (subject to §412)iii. SCOTUS – defendant’s should be able to get attorney’s fees too, even without showing that the

claim was frivolous 1. Purpose of the Copyright Act in demarcating the scope of the monopoly is also served

by vigorous defensee. §506 Criminal Liability

i. 18 U.S.C. §2319ii. RULE: Only for willful infringement – “With knowledge that copyright infringement is

occurring” (know that you are infringing)iii. RULE: No longer have to be doing this for commercial gain – thresholds for amount of

copying for criminal penalties to attachiv. Almost never are there big criminal penalties

1. Only for clear-cut verbatim piracyII. Injunctions

a. Paramount Pictures Corp. v. Carol Publishing Groupi. RULE: to get a preliminary injunction a party must show:

1. Irreparable harm AND2. Likelihood of success on the merits OR Serious questions on the merits and the

balance of hardships tips strongly in the movant’s favorii. Irreparable harm – basically a likelihood of success on the merits leads to a presumption that

irreparable harm exists1. This is fairly constant in IP cases2. Something that cannot easily be compensated with monetary damages

a. But this case really doesn’t fit this standardiii. Likelihood of success on the merits spawns a mini-bench trial

1. Consider both the prima facie case and the likelihood of defenses succeedingiv. SCOTUS has said that in patent cases must apply the factors for permanent injunctions in the

Ebay case – continuing royalty (don’t know if this will change what happens in copyright cases)

III.Statutory Damages

a. Single award of statutory damages per work infringedb. Range $750 to $30,000 – subject to section 2 (maximum goes to $150,000 for willful infringement

and minimum to $200 for innocent infringement (only if no notice))c. All parts of a compilation or derivative work are a single work for statutory damagesd. Purpose:

i. Essentially can be a substitute for punitive damagesii. Make sure that a plaintiff gets something

e. Columbia Pictures v. Krypton Broadcastingi. RULE: the proper test of what is a single work or a compilation/anthology for the purpose of

statutory damages is whether each work has an independent economic value and is, in itself viable

ii. RULE: CD is a compilation of songsiii. RULE: supreme court limit on punitive damages has not been applied to statutory damages

IV. Preemption 17 U.S.C. §301a. On Jan 1, 1978 all rights equivalent to the rights in §106 protecting the same subject matter in §102

and§103 were extinguished, whether the works were created before or after that date and whether the works were unpublished or published.

b. Does not annul State law rights/remedies with respect to:i. Subject matter that does not come within §§102 and 103

ii. Causes of action arising from undertakings before Jan 1, 1978 (moot now)iii. Activities violating rights not equivalent to those in §106iv. State and local landmarks, historic preservation, zoning, or building codes, relating to

architectural works under section 102(a)(8)c. State law rights/remedies with respect to sound recordings fixed before February 15, 1972 will not

be annulled until February 15, 2067d. Does not anull rights/remedies under other Federal statutese. The scope of Federal preemption is not affected by the Berne Conventionf. Similar to (b) for VARA

V. Preemption under the 1976 Acta. RULE: The Supremacy Clause dictates that federal statutes preempt state law when the state law

stands as an obstacle to the accomplishment and execution of the purposes and objectives of Congress.

b. RULE: Preemption under the 1976 Acti. The state law protects the same rights as conferred by §106

ii. The state law protects the same subject matter as is provided for by §§102-103c. Misappropriation:

i. Came about in INS v. Associated Press – natural rights theory, worried about removing the incentive to create valuable things.

ii. ELEMENTS:1. The plaintiff has created an intangible product through extensive time, labor, skill,

and money2. The free riding defendant, a competitor, makes use of that product and gains a special

advantage because the defendant is not burdened with the same costs of production (Some courts focus on unjust enrichment rather than a competitive relationship between D and P)

3. The plaintiff suffers commercial damage4. Some courts require the information to be time sensitive5. Some courts require that the free-riding would “so reduce the incentive to produce the

product or service that its existence or quality would be substantially threatened.”d. Katz, Dochtermann & Epstein, Inc. v. Home Box Office

i. RULE: A the scope of preemption under §301 is not the same as the scope of copyright protection, and the former is in fact broader than the latter.

ii. RULE: both the copyrightable expression, and the uncopyrightable ideas that underlies it, falls within the “subject matter of copyright” for preemption purposes

1. “As long as a work fits within one of the general subject matter categories of section 102 and 203, the bill prevents the States from protecting it even if it fails to achieve Federal statutory copyright because it is too minimal or lacking in originality to qualify, or because it has fallen into the public domain.”

iii. Extra Element Test: a state law claim is not equivalent to any of the exclusive rights if it includes an extra element in addition to or instead of acts defined in §106… which changes the nature of the action so that it is qualitatively different from a copyright infringement claim.

1. An action will not be saved from preemption by elements such as awareness or intent, which alter the action’s scope but not its nature. The court must consider what the plaintiff seeks to protect, the theories in which the matter is thought to be protected and the rights sought to be enforced.

2. RULE: Does the extra element change the nature of the conduct, not what is in the head but the actual action

iv. RULE -- States cannot provide copyright-like protection to subject matter that fails to achieve copyright protection for lack of originality or falling into the public domain, or is an exclude matter (ideas, concepts, discoveries).

v. A number of cases hold that conversion is not preempted where it requires an extra element of unlawful interference with the physical object embodying the work

e. Bowers v. Baystate Technologies, Inc.i. RULE: most courts to examine the issue have found that the Copyright Act does not preempt

contractual constraints on copyrighted articles.1. The copyright act does not prevent the contract claims prohibiting reverse

engineering, even though that is normally a fair use.2. There is mutual assent and consideration here

a. Let use software in consideration for money and not reverse engineeringii. RULE: The test for preemption by copyright law, like the test for patent law preemption,

should be whether the state law “substantially impedes the public use of the otherwise unprotected” material. – Bonito Boats

iii. ProCD – shrink-wrap contracts are binding. Rights under private contract and copyright simply are not equivalent.

iv. Allowing shrink-wrap licenses seemingly enables expression providers to prohibit by contract even fair-use copying or retransmission, and thus to defeat Congressional purpose in the Copyright Act

v. Ebay v. Bidder’s Edge – using webcrawlers to patrol internet was actionable under state law, including trespass to chattels. The use of webcrawlers deprived E-bay of some portion of the physical asset of servers.