Copyright Law

Class 1: 8/26
IP:
Copyright – most intellectually difficult, least amount of people doing it because clients tend to
not have much money
Trademark – 2nd most $; have to litigate to keep mark
Patent – law is easy, technology isn’t; where you make most $
When you get into practice, as junior you should still have a voice
Copyright clients often small with no money, unlike patents who tend to have $$$
Can I do this on an economic basis? If not, client isn’t represented
many cases are small v. large
Copyright law was a calling, by wannabe creators, who did it because it was interesting
now being done by techies who dislike copyright – copyright gets in way of distribution
Copyright makes us less efficient – both academic & practitioners have techie angle and don’t
believe in copyright
Is IP property? Push to call it something else
Property = land, personal, intellectual [lists Black’s Law definitions]
Personal = can be tangible or intangible
Book: tangible, but text is intangible idea
John Locke: natural labor philosophy – effort creates property
Statute of Anne superseded common law copyright
Intellectual Property: res (thing) product of intellectual activity; intangible but with tangible
embodiment and representations (registrations/patents)
Registrations: very important to laypeople/laylawyers; has psychic and commercial importance
(the joy, meaning and intellectual non-obviousness)
Protecting property methods:
 Self-help – law allows retrieval – can’t with IP because it is intangible
 Prevention – tried with copyright (DRM)
 Retrieval – can’t do
 Only protection is trade secrets
one thing we’ll be discussing is how law is made – state-law concept adopted by feds;
in state court, multinational vs local person created ways for little guy to win – need to protect
carefully
if big vs. small, when thinking about where to sue, go state – but trade secret law is almost
useless – nobody had example of law deviating from purpose because of circumstances
with internet, clients are all over world, need to find right jurisdiction
think about how much you would pay to settle; good guy/bad guy is very important; get clients
off the lies
judicial process: good for lawyers, almost never for clients
limitations: costs (varies on discovery, expert witnesses)
important to decide whether or not to have jury/bench trial

Class #2: 8/28/19

Good habit to review notes before last class to see if stuff doesn’t make sense so you can as
about it
No assignments in supplement – half to look up updates yourself (as in real life)
NITA has trial advocacy workshops
Judicial Process:
Do you want to go to court? Is it last resort? First resort to scare people?
Limitations of judicial process as a method of protection
In copyright law, less big v. small cases than trademark, but still more common than other areas
of law
Some corporate general counsel want IP counsel to bully smaller people; this means sometimes
bringing cases without merit; small parties can use to advantage; more of a jungle than it used to
be; can’t trust the other side; can turn distrust around to be good for you; you want to be
trustworthy
Where should courts be in your thinking? (below is federal – states can be different)
 If you know party won’t settle, first resort
 But most reasonable people sue as last resort; you want to be seen as reasonable/want it
to be known you tried to settle case
 Federal copyright cases get lots of attention, so judges know they will be noticed
Costs of judicial process:
 Clients don’t want hourly basis and junior associates, they want partners and senior
associates and flatter rates; therefore efficiency is necessary to make money; in patent
cases, no one cares about costs because the parties have big pockets
 Expenses = discovery, travel, expert witnesses
 Delay = district cases take on average 2 years, not counting appeals, etc.
Uncertainty of Outcome: juries/judges aren’t there for doctrine, they’re there for policy;
Policy = should; doctrine = must
Trials are like public report cards: everyone knows if you lost; but settlements you can sell as
winning because no one knows details
decisions are difficult to predict based on doctrine but are easier based on policy
Where do you sue? Most sue in the court nearest you so you don’t spend on travel; locals want to
bring case locally and probably should
IP adds extra level of uncertainty:
 Used to be because judges didn’t know IP, but judges/clerks now go through tremendous
efforts to learn
 Two sides: pro-copyright/creator vs. pro-tech/user/public – can make arguments more
uncertain
 Judges absorb culture – C.D. Cal. Is pro-industry (Apple, etc.)
 Unfamiliarity (not necessarily true now)
 Conceptual complexities (trademark: none; patents: just the tech, but the law is simple;
copyright law is complex and can be difficult to explain)
 Difficulties of proof: tangible property is easy to prove is stolen, but designs? You need
circumstantial evidence usually
 Hostility to IP (techie side, NGO, academics who came through tech)
 Pre-digital had less uncertainty, but digital has more
Specific enforcement for protecting IP:
 Courts
o Civil
o Criminal – there are Ds whose biz plan is infringement who wait for injunction
before quitting
 U.S. Customs Service – find out from client how they know about infringement, then hire
specialist P.I.
 Self-help
o Technological bars to copying (have failed)
o Limiting access (trade secrets) – more important today than past because
SCOTUS has screwed up patent law causing investment to leave U.S. – almost
every patentable thing has trade secrets
o Unilateral refusals to deal (never really see in copyright, more in antitrust)

Why do we protect intellectual property?

 Incentivizes
 It’s property!!
 Consumers aren’t neutral if they’re young
 Straight policy – is this right or wrong? Why should we care about this party?
 Policies are important in IP because people have trouble getting head around intangible
property
Policies underlying Copyright Law
Think about what you can argue
Cover almost everything on substantive basis
Major policies:
 Incentive/dissemination (utilitarian) (not framers’ policy, but prominent – only protect to
get people to produce and no further) (macro policy)
 Commercial morality/access is (micro – just the two parties; “D knows stuff and lies;” “P
is suppressing competition”)
 Natural law property right (main policy for years; Locke – effort creates property; still
primary policy behind copyright)
 Advancement of technology (courts tend to protect new tech if it benefits people, expand
what IP can protect; established tech is different) [THIS NEEDS EXPANSION]
 Public domain (academic/NGO) (tech companies)
Minor policy:
 Privacy (EU cares more than US)
Non-substantive copyright policies:

Class #3: 9/4/19

Why do we do takeaways? Immediate feedback lets Hugh correct errors
Policies Underlying Copyright Law:
Minor policy: privacy
Americans don’t care, but rest of world does
Think about regarding international cases, Sandra case(?) (Judge Newman) (sui generis)
(Listing policies because you can figure out where your client is, won’t be caught off-guard)
Non-substantive policies:
1. Good guy v. bad guy: in D.C. almost the entire picture; IP is intangible, easier to try to
translate it into something tangible; design
2. “Homer” – favoring hometown litigant; not in NY/Chi/LA/maybe not MIA, but in other
places, subconsciously people favor
3. Big/small – trademark often, copyright can be big-big, big-medium, etc. but usually not
stark difference, but can be there
4. Lying “nuclear” reaction – lying for personal advantage in case is killer, either lose or get
no remedy; the jury will think you think they’re idiots; with big clients, self0made, they
go through life facing adversity, they think normal rules don’t apply to them; (example:
Chocolate R Us case, they’re sued by Toys R Us who at time were colossus; person
opens shop and gets sued; tells judge she’ll tie herself to door before changing name;
Judge says 1) why me? 2) call Hansen, who took pro bono; originally D said she never
thought it sounded similar – you can’t say that because it sounds like a lie; Hugh says,
you should say no one would confuse me for Toys R Us; she later changed and said she
 thought it sounded cool, she’s just a small company, but she lied; H asked why?; Hugh
made 1A argument; what is role of Con Law? Everyone thinks law school, but if you can
come up with Con argument, it’s good to do even if it’s a losing argument; federal TM
law preempts state law – as it turns out, 10th Cir agreed, didn’t; what matters is, if its
published, the argument will come up more, they’ll have to face it, they’ll settle to get
argument suppressed – usually won’t win but helps
Historical stuff:
1. England & Stationers – our law originates from GB law; stationers were publishers who
got royal decree for monopoly; allowed you to censor seditious work; Shakespeare
protected by them, King James Bible (by royal decree); because stationers wanted to
make Queen happy, they avoided controversy; writers made a stink so Parliament didn’t
renew in 1690; then a free-for-all; stationers would go to Parliament with wife and kids
and say “give us back licenses,” but instead they got
2. Statute of Anne, 1709; first copyright system; amazingly, publishers had rights under
licensing laws, but now AUTHORS have rights; because authors have no economic
power, publishers are still protected. What were England & Church worried about?
Sedition and protestants; then the Star Chamber really suppressed; makers would get
together to form guilds, making and selling rules, normal stuff; Statute of Anne was 14
years of protection + 14 years renewal; why have renewal? Short now, but shorter life
expectancies then, no healthcare; renewal required author to live 14 years; brilliance was
in 14-year term, you can license, but 15th year comes back to author; at this stage of the
game, remarkable
3. Common law – novel idea, brilliant; in GB you didn’t become judge until you got silk;
geographic nobles ran courts; what was King worried about? Overthrow; created King’s
Bench; Parliament was another crazy innovation; commons & lords – what is the law?
Courts try to protect King, but there is no law in almost anything; judges’ view is, what
would public want? That’s the law. Then you got pretty good body of law
4. After Anne comes in, Copyright common law doesn’t disappear – no debate that creator
should have ownership; in House of Lords you have judges’ idea that people didn’t want
is baloney; we did similar thing when copyright law first expired; in GB case, judicial
division said, forever; all they do is end up here, over time, common law expired
5. What are the policies? Natural law, Locke (effort creates property) – not necessarily b/c
of Locke, but it was strong view; in Federalist Papers, Madison talks about copyright as
natural right; creator should get what he creates; strain of righteousness
6. Colonies and the Constitution: how many colonies? 13; GB laws didn’t apply in colonies
because they wanted independence; first you elect our gov, then King has French &
Indian Wars, which George had to pay for, so he wants money out of colonies (via stamp
tax, etc.); the laws didn’t apply, but 12/13 colonies had copyright law; 8 were national,
others were regulated; then we had basic constitutional convention in 1787; what was the
purpose of the Constitution? States preferred articles of Confederation – any state could
say no – every state had to swear they had two things – first thing they did was to throw
out Articles because they needed everything in Constitution is structure (excluding states
 can’t have bankruptcy law & you couldn’t set up property in commons) gave economic
and political autonomy opposite of GB/FR systems where nobles rent out – this is
democratic empowerment of people; other thing is copyright law, thought they didn’t call
it that, they were worried about states getting [] people say … Art I, § 8, cl. 8, people
thought science was patent and useful art copyright, but actually other way around; style
of compound construction fooled everyone; by securing for limited time, assumption it
already exists – not creation but protection; 13 separate colonies can’t enforce
7. How much should we care about what Constitution says about copyright protection? Not
much, says Hugh; Franklin wanted three presidents. Should we be bound to writings?
Should be overall purpose – clear we should have strong copyright protections –
federalist papers say no difference between creators and public and mentions fact that
copyright is natural right – good to know facts but don’t expect anyone to care

Class #4 9/9/19
Going over class takeaways, look until at least 43 min (see notebook for timings)
In terms of IP, we’ve discussed copyright, TM, patent and trade secrets – most difficult
conceptually is copyright – patent law is simple, just difficult technology – if you’re going to
litigate, sometimes advantageous to not have science background – when you become expert,
you know all of this … to litigate you have to go back down to lay level, and some experts can’t
do that so actually litigating doesn’t require science background or if lead lawyer has science
background – conferences are, you can be lost – you should get in habit of spelling out
acronyms, no one says “what does that mean” just shorthand expression – it’s better to get into
habit of explaining them immediately
Don’t be afraid to say “what does that mean” – there may be other people in room who don’t
know
Copyright is toughest intellectually, patent toughest mechanics; trademark is easiest
For policies, to what extent does doctrine trump anything, or do judges reach decision based on
policy grounds?
“should” v. “must” – clients don’t want memo on doctrine, they want to resolve business
problem – docrine is last thing – don’t accept anybody’s view, everything is tested – have to read
casese in this way – how are things decided? Nice thing about fed judges (not state,
administrative, foreign etc.)
IP is form of intellectual thinking, not necessarily imagination; CR & patent exclusively federal,
states still have trademark law but mostly federal – there are times you might want to be in state
court; law of dilution where that is strong but not to general public – federal courts are not
particularly impressed with state law
Don’t use “aforementioned” – use regular language
IP has tangible embodiment and registration (especially for patent)
Litigators have reputation for wanting to sue/settle – don’t want to ALWAYS litigate, but on
other hand, in certain situations you have to sue right away – what you’re thinking about is how
do I solve this?
Criminal – we have examples of people who use work until preliminary injunction then go on
oto use someone else’s license; very rare in world you’ll have anything to do with this
Gross violations
Defendants can make constitutional arguments – value is not to win, but …
1A law is all court-created and has nothing to do with constitution, same with constitutional
criminal law
Constitution is vehicle to do things and Q is whether or not we should
Remember that Madison had to petition for Bill of Rights – framers didn’t want
Madison had to fight for it, only acquired the status, only applied to feds not state govs, more of
a formality
1A in case people didn’t get it, it says specifically about federal gov to make sure it doesn’t
apply to states
Almost like religious requirement – states all had official religion – Congress didn’t want to
mess with state religions – we think there was wondereful civil rights situation but there wasn’t –
gov said something, they’d be tanned and feathered – it’s the elites that have to stop that courts
have been making it up as the go along & say its constitutional right so no one can screw with it;
4A, 5A, 6A, nothing going on for 150 years until Warren court, Holmes did 1A -> you have to
convince court that there’s violation and then do something about it – not normal for courts to
change status quo – existing before lawsuit keeping status quo – courts adopt industry solution if
it goes against statute because industry solution is what people are happy with
Who is player in IP? For most of the world it’s court, often same as industry solutions – why am
I judge? To do justice – thing is convincing court what should be done to provide justice; federal
justices become judges to do justices, to give back, so doctrine gives copyright ownership to
employer; constitution says authors – “work-made-for-hire” will never be held to be
unconstitutional because it works; employers are looking for work where they can do things;
Congress gave it to you, you’re not author, mean (?) on face, but you won’t win – solution
works, but P who owns everything has high risk – this says you have nothing if I win – so no,
courts aren’t going to do it – everyone thinks of Con Law as something they did, but think of it
as way to win case
Constitutional arguments raise stakes of litigation – if you had a 1 in a million chance of
electrocution would you turn them on? it changes the framework if you might lose everything –
if you get into F. Supp., it becomes the argument and it’ll cost more to settle
Interests judge and clerk – can be fun, might help get ruling – are judges always going to say
exactly what’s true? Social lying are things that – legal fiction is a good lie – everyone knows it’s
a lie but we’ll do it (typical example: you get divorced, not filed until after weekend, courts call
it non pro tra (?) – will be recognized as Friday; King Solomon – two women claim baby,
Solomon says hell cut baby in two, liar says no, give it to the other women; S achieved justice
through lie – ends justify means – one way judges do it is decide on policy then write opinion on
doctrine
Goes back to client, might impose settlement
Burrow-Giles v. Saxony (1884): do we care about what happened in 1884?
- SCOTUS case
- imp’t issue of how court deals with something in Constitutional context
Saxony never touched camera – cameraman pushed button
Wilde was in the US to protect his works, US didn’t protect foreign works
the idea of not protecting foreign works was norm until Berne
Judge: Miller
think about what lower court did & why – that’s where you’ll be – do they care about what
Supreme Court does? Each court has its own culture that comes from what they have to do and
what they have to do to get it done – deciding the case first thought is to get rid of you, pressure
you into settlement – should always try to settle before going to court – judge will love it – irony
is people settle for what they’ll settle for in beginning
What do I care about what SCOTUS says? b/c of the [] it often becomes good/bad but you don’t
want to get reversed - -judges care most about what other judges care about them;
Smith v. Jones – affirm/reversed – does it look good if I’m reversed don’t want to be reversed;
have to make life easier by giving them option to do what they want – they don’t care what
SCOTUS says and most IP people have low opinion of court
sort of dilletante dipping toe in water – and I know they don’t police their decisions in IP; every
C of A is its own Sup Ct after that; C of A, what do they do? now only b/c got opinion given a
lot of leeway on how to make decision … [LOTS MISSING]

9/25:
First case, then overview:
Case – almost like cases in news; new cases implicate real-world; wants us to be thinking about
what we do when client comes in, use policy and doctrine as well (least imp’t is doctrine)
Forward v. Thoroughgood: situation where layperson T befriends the leader of a band (F) and is
working to get them noticed and succeeds; F goes on and becomes; T pays for sessions and demo
tape, not just observer; T didn’t contribute in musical sense but managers rarely do, so …
One thing to always think about: could this case be settled early? This case went from 88-93 with
considerable expenses due to delay;
the legal issue here is does T own any copyright? They gave T copies of music they created up
until that time, pretty big deal, not like they had copies and everything else, he had copies; so key
legal issue, what was significance of that? Was that you have done so much we’ll keep you part
of this, in fact we’re giving you these things which are part of us, and well move on together, or
was it something else? Then they get real manager and other things and become more
sophisticated; so we’re talking about the whole thing started what 76? The first time there is an
issue that leads to this case is 88, that’s 12 years, so just on what you read and on facts, who
should win based on facts without law? (should do for every case) just policy equity
T says he wants to sell these things; who should win? David Nimmer, son of Nelvin, wrote
amicus brief for F b/c there was (not great) law that giving tapes (meant a lot, not like now where
there’s 500 ways of doing this); court after court said CR went with that implicitly b/c largely it
was somebody who paid for them to record (or whatever) and question is who owns CR in it?
Courts time after time say in these particular facts implicit ownership is by person who received
item; CR Act of 1976 changed that; doctrine is that everyone who has authorship in that (and
with music that could be engineer, lots of different people when you’re recording who do
something part of authorship, but just because youre in the room, no) and b/c industry definitely
does not accept that; industry rules for theater, movies, music is no, you can identify some
people who have authorship, everybody else doesn’t own anything; all sorts of reasons for this –
how can you be sure who owns it? And so you are subject to lawsuits and uncertainty with that
definition and it’s going to be he said, she said type of situation; industries have said no, who
gets CR is who claims to be author and everyone who helped, good for you and you’re getting
paid for your job
Under doctrine, some people in room get more CR than others; example of Congress on co-
authorship – used to be other just case law, people in room, everyone would have to think all the
people in the room would be authors (i.e. if you’re big author, you have to think it’s joint
authorship before allowed) – now Congress says anyone who contributes is a co-author and the
rule is undivided shares; 2nd cir runs into that with J. Newman, King of CR, said no, the rule is
the big guy has to think it’s a joint work and unless he does, he gets everything; Congress did
this to help little guy, but industry said this is disaster, will never get anybody putting money into
it; Newman goes with industry not b/c it’s what Congress intended but it’s what works b/c
industry has determined it works
But this guy – this was changed is 1909 Act case law is that if you pay for it you give me work,
implicit in it is that you’re giving me CR, is gone, but that was still here at least to be argued
(didn’t see Nimmer brief but that’s probably what he’s arguing); Prof has had these cases and
said to “them” what would you give this guy? There’s a break up, restaurant owner, major
position, manager, what would you give this guy? What does he deserve? Gave me a figure and
that ended up being settlement figure judge agreed to, because rarely is it nothing, rare that one
side has everything, so these cases are perfect for settlement
In this case, if someone said to F, we loved you, you were great, our success was due to you, we
think 1 we still want you to consult with us and we’ll pay you X, this would never happen; but
no, we’re passed him, he’s history, you end up with 5 yrs of lit in which they did not get
attorney’s fees, and Prof thinks it could have been avoided; you read this thing and it looks like F
is bad guy, but they get distracted for 5 years not knowing if this work is coming out and label
not sure what will happen, could hurt reputation – completely unnecessary; sometimes people
just want to be recognized
5 day bench trial; usually bench trials are much shorter than jury trials; why wasn’t there a jury
in this case? Would either side benefit from jury in this case? Jury might find F sympathetic, can
argue band dumped him and leaved him; can end up with decent money, if you can get jury
emotionally; so P (F) should have picked jury; but he has no money, he’s broke, and his lawyer
was somebody who went to Northeastern and Suffolk and probably never tried another case; so
for lawyer, jury would have been very scary; on the other hand, much better case for jury
Why do you think district court and court of appeals, all 3 judges, one very famous judge,
another sitting by designation who went along, and DC, why do you think you read this case in a
book and it seems like the easiest thing in the world, all of the judges agree this guy shouldn’t get
anything; is anything driving these judges or do they want to get doctrine straight? Could be that,
which is why you want jury to get emotionally involved and want right person to win instead of
court who wants to fix doctrine for future cases; motivation of jury is often to do right thing,
while judges want to get the doctrine right regardless of suffering; P might have been jerk, which
can also have adverse effect
He sought en banc – people don’t seek en banc enough, you lose in a C of A, you should almost
always have req for rehearing for particular panel and suggestion for hearing en banc for all the
judges; why? Costs nothing, piece of paper, you’re going to tell panel what you think they did
wrong but not briefing for 12 judges who say they want to do it; one thing is that those 3 judges
now know the whole court will know what they did, so they will look to see if there are mistakes
to correct – could be good correction; what’s the chance of going to the Supreme Court and
going back? The reality is the SCOTUS takes 80 cases/yr out of maybe 20k; not easy to get
embank but if in fact some judge will call someone on panel and have judge change something
on rehearing; you can still get correction so there’s no en banc; correction will always be in favor
of guy who lost; rarely if ever do lawyers do this; why do you think that is? Too many lawyers
think I’m not gonna do anything unless I’m paid; too many clients think they won’t pay unless
something wonderful is going to happen, everyone puts emphasis on wrong thing; lawyers
should do en banc for nothing, very short situation, and if good things happen, you get credit
with client or if they en banc you charge for brief for en banc, but it’s at least twice when Prof
clerked his judge said maybe en banc would be good; if they’re not upset, I guess I should be
upset because there is no motion for rehearing, but if there had been, he might have changed
stuff in opinion; anyway, there’s no good reason not to request rehearing and suggest rehearing
en banc – amount of time it takes is nothing and you can get stuff out of it
What about cert petition to SCOTUS? This whole issue of what is implicit in giving the work
might have actually appealed to Supreme Court; doesn’t cost a lot, a cert petition, you rework
briefs you’ve been doing all along; to some extent, in for a penny, in for a pound; in other words,
do the cert petition
If HCH has music publisher or label on other side, might not want SCOTUS to get anywhere
near case because of the implications of what they might say about what these transactions do;
that may put pressure on label or publisher to settle this thing; you have to think of all those
situations, and key to this is you don’t charge for rehearing or rehearing en banc or for cert
petition because you’ve already done it, and implications can tremendously help you in case, but
client is not going to want to pay after they lost, just want to go home and never think about it
again, so a lot of this is just say no; wrong people to ask of this, they’re not going to know the
possibilities of this; if you do get the stuff, if you get a rehearing you’ll be valuable hero and get
good word of mouth, you would charge for anything in SCOTUS; what you also want as an
attorney is for people to think you’re in it, helps you get a settlement; implications of any of
those being granted for entities are tremendous and they may not want to get bogged down
All F needed was a little recognition; music groups break up for spousal reasons or things that
don’t count for a lot but do in enclosed world; your job as lawyer is to try to get something out of
this for your client; if you want to settle early, that means you don’t have expenses of filing all
these papers over 5 years, but if you take your oath of office to do best for client, you should be
doing it, and that’s great if that’s your reputation; you’ll find that most people after loss are
despondent, but after settlement are okay
p. 41: overview – book confuses criteria and subject matter; subject matter (books maps charts)
and criteria (which books maps charts will be protected); don’t confuse two
subject matter is how big is the universe? In the beginning it was small; over the next ~200
years, gradually when it became issue to reproduce and use, ti was added to CR; 1976 was last
major addition; now, after that there’s nothing that won’t be within subject matter of copyright,
particular thing did not meet subject matter it used to not be copyrightable
criteria: we discussed that; originality, fixation, idea-expression; originality is judge-created,
nowhere else was there originality requirement; fixation nowhere is there a fixation requirement,
idea-expression exists nowhere else; now other Jx are picking up some of these (not fixation) but
does it make any sense not to fix this? Or what is this originality? Hugh example of going into
Africa, analyze all the bugs for 3 years, publish it, it’s copied because lawyer tells them it’s all
facts, this guy didn’t create anything, just observed, and facts are not protected; that’s the
doctrine, facts are not protected; does that make sense that facts are not protected in world as to
right/wrong? If it isn’t, courts will find a way to find originality, fixation is easy, idea of fact-
expression, they’ll find a way and just say it and that’s exactly in this country what normally
happens; then we run into Feist case, where O’Connor flat-out says sweat of the brow; we know
Locke and this country was built on idea effort creates property; BTW is that jury or judge case?
The case of people copying his book? There’s a case which was pending in SCOTUS that was
suspended because they thought it would be determined on sweat of brow; courts and juries think
about who should win as matter of equity or justice but not doctrine; in HCH’s scenario, most
courts will find way for him to win; if there’s …
this is an example of what policy is driving – it could change; may be that culture of public
domain leads to applying different policies to see who wins, but right now SOB is still
intrinsically in people, especially juries;
compilations and derivative works take something else and do something with it; for instance,
motion picture based on novel is derivative work; for CR purposes, must infringe underlying
work; if it’s derivative work, you need a license; if doesn’t infringe, do what you want; but
derivative works infringe unless licenses or in public domain
compilations = facts, this is where SOB comes in; neither compilations nor derivative works
have any effect on CR of underlying work – doesn’t extend or contract term; compilations are
independent works; database directive in EU, if you look at history of it, EU said they don’t need
one b/c CR covers collection of facts and all this other stuff, so …
parodies are derivative works, and would be infringement except that’s where fair use comes in;
fair use turns things that would be infringements into permittable things; one of the reasons
people thought parodies were ok is they made fun of work and author would never license
anyone to do that, therefore we have to allow it if we think parodies are valid to have in public
arena; what happens now is people, because parodies are viewed as okay, call things parodies
which are not parodies; courts can do that to allow the use – in other words, use of doctrine
works both ways, I think this should be allowed, and if you call it parody, everyone is okay with
it without payment for authorization
do dictionaries get CR? Is there selction of arrangement with some originality? What about
individual definitions? Should we protect dictionaries? They’ll be protected;
SMEs don’t want lawyers because they’ll tell them they can’t do stuff; whereas lawyers in major
companies don’t want … doctrinally we don’t do SOB in this country; now it has to be what the
policies are at the time, you have to figure out what the policy is now, have to figure out what
policies are driving those cases; read the facts and figure out who should win; does that work to
explain a lot of things about what’s going on? if it does, pretty good indication that courts are
using policy;
Settlement: my client, I hear their problem, can this be settled? And then you ask client how
would you do this, would you be willing to do this? If you can get rid of case through settlement,
everyone will love you, client, judge, everybody
Duration: how long should CR be? Should be first thing you ask; forever? 14 years with 14
renewal? Life + 70? Life + 50? Part of what a judge/jury think about is how long should it be,
might manipulate rules to achieve whatever policy they think they should get; because if they
think it’s too long, might find other reasons for client to lose case and let other people use it, like
culture of public domain, tech companies who make all sorts of arguments to shorten as de facto
matter; so you have to be aware of that; if you’re on other side, why should it be longer? How
long should you own your house? It’s 100 years old, you shouldn’t even own your house
anymore because person died X years ago; so Mr. J, your house is gone; too bad for you; well,
what if your grandfather produced a novel or book or play or painting? Too bad for you? Can’t
protect it anymore? Has no value? No reason to? It’s unworthy? You know what, do your own
painting; solution isn’t to break into someone’s door and steal someone elses painting, like when
duration expires; making argument to why you turn into tangible; if you’re talking about
creativity, CR is source of it, and public domain, creativity stops because you take things already
in existence, and your children who want to create won’t get jobs because it’ll be cheaper for
producers to use stuff that already exists, so public is deprived
Of course you flip it the other side,

11.6:
The interesting thing about this whole thing is starting with Borland(?) in 1C, things that are
going on that have nothing to do with doctrine but people feel very strongly about
Like the 1C case: Lotus 123: had nothing to do with computer, told user first you do this, this; it
was the user interface and because Lotus was so successful and because all of us; once you learn
one interface, that’s it, won’t learn any others, sao de facto capture of consumers by first, most
popular brand/user interface if the interface is CRP does that stop competition because no one is
going to learn new one? If they’re going to compete on merits instead of interface, can’t protect
for interface;
Keaton, Harvard prof, district court judge, was strongly of view that that’s tough luck: CR is not
a restraint on things, we want everyone to create and compete and the fact that Lotus 123 is pop
is good for them, but he missed point that even if they have better system they can’t sell it
because no one in public is going to switch to it; two specific things: 1 – user interface very
popular and 2 – our friend Keaton – D.Mass. said Dist Court can check this box, but all cases
with this party or other people, clerk is directed to give to person who ticks the box; not often
done but he did it, so Keaton got every single Lotus case, normally random, so no other DC
judge with opinion could be raised, and Keaton was fanatic, and they knew no matter what 1C
did he’d find way to protect, so they found way to say it wasn’t protected at all – this thing is
going on now in Google b/c they know if they remand one way or another they’ll find a way to
help and they should just find way to do own thing; no other circuit court adopted that, it was
alone b/c of peculiar circumstances of case;
Now we have Oracle v. Google and we have what? Peculiar circumstances, the tech industry,
silicon valley: startups, hardcore SV, not even McDougal or Microsoft or something – everyone
copies, there is no constraint on copying what someone else did, there’s no law, and culture is,, is
this is how ou get very fast improvement in products and everyone is in that culture and nobody
sues and there’s no protection so – it’s not as dramatic but when DC says there’s no protection
everyone else would think this is crazy but not there because that opinion might have more
protection than what SV is used to (extreme no-protection) so then you have Google and what is
Google? Are they good or bad guy? Is there one in this scenario? And does it depend on how you
view life, the world, or something else?
If you’re talking about regular people, or reg CR people, not tech, Google is bad guy: copied
verbatim 37k lines of code w/o paying and they could have created but they wanted to make it
easier for people to buy their product without having to learn their code; techies on various levels
think Oracle is bad guy for interfering with system that’s worked for years except now there’s
someone big losing money and decided to object to it; what about academics? Old academics
who are wannabe creators (like HCH – wanted to be novelist) would side with Google, but new
IP profs come from tech side and teach CR b/c CR gets in the way of tech; in the scientific
community, it’s the best tech, the most efficient copier, and CR gets in the way of that because
you can’t just copy, so you want it to be able to to is hampered by laws; so they have view CR
gets in way of tech advance, much like SV view in which there is no CR among culture; there are
cultures in CR which effect CR & CR-related industries; for instance, choreographers never sue
other choreographers, there’s a culture of what you’re allowed to take; architects never sue
another architects, there’s a culture of what you can take, not looking at CR but looking at what
is proper way to go about it; jazz, R&B, constantly taking riffs and other things from other
people but doing it way that indicates respect, no one thought they can’t do it; then you have, and
one of the reasons we have Blurred Lines, two guys who took aspects of Marvin Gaye – this is
estate, Gaye wouldn’t sue, but when estate comes in all rules are off – there’re all sorts of
ominous – it used to be music was over here, people record it, they do something else – music
can be created now in time it’s being recorded and all sorts of people have influence including
producer, mixer, and you do it and know when it’s too much or not too much … complicated as
to who is author, etc.; so all of a sudden, outsiders come in and say whoa, this is no good, so who
are the two guys? Pharrell Williams and Robin Thicke thought they would win case, but
unfortunately for them RT is bad guy, he lied about creating it while he had nothing to do with
composition, he testified in deposition, makes more people buy it if they think I was co-author;
jury hears this all and part of the problem with this is that he was not a good guy; the rest of the
world thinks hold it, you take all of this that Marvin Gaye did and RT said you can’t look at what
they took, you have to look at what they filed at CRO and that’s a lead sheet which has nothing
to do with anything and the person who did that is just doing it to file and get CRP and therefore
all the extra stuff that came into the performance –
Midnight Train to Georgia used Midnight Train to Houston – might not even recognize the latter
to do with the former, has all sorts of stuff (the Pips, Gladys Knight) she’s doing in it, the extra
noises or whatever you want to call them and yet he gets everything, the credit and all the
money, because industry doesn’t work if you start dividing it, you’ll never figure it all out and no
one is going to put money into it because someone will pop up a year later and say they have
1/20th and you need certainty, so the culture is one person gets credit even if others contribute
and htat’s okay; since a lot of people don’t get credit who should, thicke said it akes no diff, we
don’t treat it as that important because more records are sold or whatever, but then jury comes in
and they’re actually told there’s no infringement, the only thing you can listen to or see is the
lead sheets, and all the stuff Gaye added is not there, so what should happen? These guys on that,
they should win, but jury say this is ridiculous, these people took heart of work and you’re giving
us a rule that says that doesn’t count, we can hear it, they took it, so they do jury nullification –
infringement; usually solved by JNOV but judge went along with it because he was upset and
thought it was ridiculous and 9C also goes along with it, so you can see what happens inside is
fine, but as soon as outside world comes in, different view of what should happen
Oracle v. Google: inside world is taking like crazy, and they’re all there so no one is going to sue
anyone; as soon as someone comes in, and says, whoa, you’re not taking mine, especially the
way you did it, jury says infringement, split on fair use, DC judge (N.D. Cal.) (another thing –
Oracle never should have sued in this district; just because they’re there isn’t good enough
reason); judge says not protectable, overrules jury verdict; goes to Appeals, doesn’t do a lot of
CR (mostly patents); can you imagine bringing this case to ND Cal? It’s crazy; central district,
other places, southern district, northern of Illinois; they did what was natural, went down the
block and filed it, but you can’t do that anymore – got to pick most hospitable venue – if you’re
D, that means declaratory judgment action in most hospitable so that plants it; so the fed cir
which is not in this world (they’re patent people, not CR) look at it (very good judge btw) they
think this DC judge has basically taken over the case, overruling jury and singing the song of
silicon valley rather than what law should be; there is one case that’s important, not on code but
on user interface, which is 1C case Lotus v. Borland which is peculiar for reasons above and not
followed by other courts, so appeals ignores it, reverses, goes down, jury split on fair use, sends
it back on fair use, jury instruction required the jury to find fair use which is crazy – not a fair
use case; goes up to fed cir and says I can’t trust this guy who comes up with rule that doesn’t
send it back so they say as matter of law (unusual) no fair use, rather than sending it back down
b/c they see DC judge will get his opinion one way or the other
SCOTUS denies cert first time up, and that’s why it came back and all this other stuff happened;
Google is seeking cert again, but also on fair use issue; solicitor gen 1st time through said DC
judge, that whole thing wrong, comes up now and says the same thing, and then you have a
bunch of amici on both sides (one on industry that sell/use CR, the other techie companies who
want to be able to use things w/o CRP and academics in culture of public domain); Q is what
will SCOTUS do? we’re waiting on Court decision which is delayed, could mean they’re having
trouble deciding or could mean they’re denying/granting and one or more judges want to dissent
and need more time to write dissent; HCH thought they wouldn’t grant cert (but they did) but
hoped they would; how can they explain why they’re going to grant cert this time? Denying cert
is not a precedent, could be all sorts of reasons
If all Google had to do was create these lines itself, but are saying they couldn’t do it because (as
in Lotus) it’s easier for other consumers to switch to their product if they use part of their
product, but that line of reasoning leads us in bad way unless you have no respect for CR, then it
doesn’t matter
How much does court care about solicitor general’s office? Why do they ask for their opinion?
Presumably they ask for opinion but in HCH’s experience if the court is really interested the sol
gen’s opinion doesn’t count a lot, but if they don’t know a lot, they’re afraid of taking it; solicitor
general says it’s not important enough issue, it’s fact-specific and court usually only takes things
that have wide berth; clear this is CR violation and no fair use, so on basis of what law should be
Appeals had it right; if they grant cert it’s going to be on CRP not fair use; on fair use, which is
so fact-specific that when you spend all this time on this, thousands of other cases will have
different facts and it won’t matter much what you say;
Read the briefs, read carefully; may be some reference on the exam to the briefs
A derivative work is a transformation, this is word-for-word the same code with no
transformation; you don’t win because you say we didn’t steal everything, we did something on
our own; it’s what you took, there’s no transformation
Underlying policy is effort creates policy, there is policy of incentivization; is this going to hurt
incentivization of people to do this? No because if there’s any company in the world that can do
this, it’s Google, and if you lost some biz you lose some biz; its not like you can do anything you
want because you don’t want to lose biz; incentivization is good policy but never the reason for
CRP; framers didn’t think about incentivization – first CRA covered maps charts and books, and
you don’t need incentivization to make these things, in fact there was no CR and people did this
for hundreds of years; this is property protection, pure natural law property; if you look at case
law, when there’s no incentivization CR shouldn’t be protect, court has protected it; so actually if
they take this case it’ll be the most important CR case in 20-30 yrs because they’ll answer these
Qs of what CR is about; HCH wants us to think about what is happening; you’re out there in
world, uou have to know what IS happening not what SHOULD happen, could be that this
decision could have dramatic effect if court goes Google’s way on other policy issues in CR; if
they deny cert it’ll be strongly of view that what’s been going on for years is what’s right; imp’t
no matter what they do
Academics aren’t interested in money, they want people to steal and read their articles, they want
dissemination of ideas and works; start ups are excited to do this, and this, but if they wanted to
make money they’d be in hedge fund; they want to make money, it’s really about the better
mousetrap; we’re not talking about big boys in SV, we’re talking about start ups; kind of
amazing there’s no concern for trade secrets, patents, just take and do best you can, theory is we
end up with better products; CR & patent law is bad guy for that culture; Microsoft & Google are
way beyond that, they’re closer to what laws are
It’s like a fraternity or tribe or something else, we’re in this together and will be better for it; to
some extent, a human being is a tribal animal, you look at history of humans, it’s basically tribal
(war, religion, politics) just an example of techies being into that
Alito probably recused for having stock in a company (this is why judges recuse)
Lotus is blind leading blind – nobody in SCOTUS knew anything about computers
Preamble says we want a more perfect union, etc.: it’s the purpose of the constitution; if those
words meant something, you could say it doesn’t comport with what framers said constitution
was about; nobody in convention even saw those words; they unanimously voted to add the IP
stuff; nobody knew what this was; it was a way to tell constitutional state conventions what
we’re doing, what its purpose is, or one of its purposes; it is not what framers thought was
necessary; 12/13 colonies already had CRP; what they didn’t have was a national CR to get
protection, so art I sec 8 doesn’t say create, it says secure: CR was given, how to make it better
was purpose of Constitution; secure – make it stronger – national protection for injunctions
rather than individual states; same reason preamble nobody knows it doesn’t count; at least
people voted on it, framers never even saw the language – it came in after the vote; and as HCH
said, Madison was in first Congress and if you look at the papers that were published to convince
people, he said there was no distinction; CR benefits author and people, nothing to worry about,
win-win all around, whereas incentivization is about too much protection, only when absolutely
necessary – that’s not what framers thought; clearly all the contemporary things about CR, ode to
CL CR which was purely natural law protection, went forever originally until 1976 or something,
so whole view of this was property, Locke, (framers probably read Locke) effort creates property
which is what made this country what it is; DP is about life, liberty and property – that shows
how much property is concern to framers; now we want to share and tax and stuff; property was
autonomy that made people free people as opposed to king and nobles and tenant farmers; CR
and patents were considered property
p. 228:
234: Boudin has good concurring opinion: world is changing and this whole idea of everyone
creating; Lotus has its monopoly not just from nature of marketplace but from people not
wanting to change; at least critics had view that no one had better system than Lotus, and if
anyone did, no one would change because they don’t want to learn new interface; that
combination along with DC judge and the DC judge rule where he was going to be king on all
cases of this issue;
238: Google: HCH thinks decision is very good
Pictorial, graphic, sculptural works
Mannion: very rarely is DC judge known for an opinion, but Kaplan is known for a few;
248: photographers are most abused in creative world, make least money, get least respect, can’t
get anyone to listen to them when they think they’ve been infringed; what do you do with
photographers? Register major pictures, that you think will be used most by other people,
register them either individually or in group; if group, give it name of every single photo in
group because if you sue then you say here is the name of the picture, if you come up with nice
little name, the jury can think they don’t know if it was registered; in terms of jury, how many
photographs do you have? Are you really sure that one was in there? Photographers take zillions
of pictures; get it ahead of time because that gets you statutory damages and attorneys fees –
that’s when people will listen to photographer, otherwise they’ll tell you to go jump
Ex.: Muhammad Ali – HCH commutes on LIRR, walks up past Macys, there’s a crowd, literally
bumps in and there’s Ali, HCH says “Champ!” and he was not that … a lot of problems from
boxing, in Macy’s there are massive pictures of Ali, he was coming out with sporting line, this
was big deal; the best sports photographer of time was Hugh’s client; he has famous pic of Ali
standing over Liston; Liston threw fight and Ali knew it, so he wanted Liston to get up to fight;
Hugh gets message from photog that Macy’s took it without paying; photog got a different
lawyer; another photog calls Hugh for a different photo, which was registered; gets settlement of
5k + agreement for photog; Hugh calls up and says he didn’t have registration, gets $250;
registration is core; person on other end knows they’ll have to pay stat damages + attorneys fees,
changes whole psychology of situation, especially for photogs where not a whole lot of money at
stake
How much similarity is there? Is the second photograph infringement of the first? What
happened is, they wanted something cheaper than this photographer; what happens often is
someone gets hired, they give pictures, can’t agree on fee, get someone else and say I want pics
like this; what do you do in these situations? As soon as you get picture and there’s negotiation,
send it into CRO; day they receive it is date, before any infringements and something goes bad;
now you’re in control of situation; as soon as they determine that; other people may make copies,
registration changes whole nature of game

11/25: Infringement – all of these cases are not in the book

First Sale Doctrine: this comes from common law; O of IP in tangible item gets first sale, but
that can be sold by other people all the way around w/o regard to IP; this is something
recognized all over world, we had it very early in CL before statutes; but also over the world and
US is view that if CRO or TMO sells it overseas, that can’t come back into the US without a
license to sell it in US; that was the rule forever until Kirsaeng v. John Wiley & Sons; all sorts of
good reasons for that rule;
Kirsaeng v. John Wiley & Sons: publisher filed action against domestic reseller of textbooks
manufactured for sale abroad alleging CRI b/c they came back into US w/o license; DC:
infringement, statutory damages; D appeals, affirmed by Appeals, SCOTUS grants cert; a
gazillion academic amici briefs on other side, unfortunately all of them did not understand the
issue and gave examples of Jefferson importing library but that was just importing; Q would be if
Jefferson wrote book and sold overseas, could it be imported? For whatever reason, the number
of justices didn’t seem to get this and case was decided that actually first sale doctrine applies
worldwide, so if you sell to any place in world, that thing can be imported into US without being
able to stop it;
there are a number of problems with this: if you sell at low price to developing place (price
discrimination, usually economically good), no one could take that and sell it against you where
market price is higher, but now that’s gone – less will be sold to developing countries and what
happens sometimes is a wholesaler will be given rights to sell to certain countries but wholesaler
doesn’t (says they did, got cheaper price but sell to US) – what you have is bad rule (HCH
thinks) (cases in PPT went other way)
Kagan filed concurring; RBG, Kennedy, Scalia dissent; Kagan said she would dissent but said
SCOTUS decision seems to think it’s OK in dicta – so in effect only 3 justices wanted this rule;
other SCOTUS courts used to look at lower courts and would think twice about reversing if
lower courts were going same way; this court for whatever reason doesn’t care (Breyer among)
what happens before, like everything’s from scratch, despite lack of industry background, you
wind up with screwed up patent law and decisions like this which make no sense
Infringement:
Anyone who violates any exclusive irghts of CRO from 106-118 or 108(6)(a) who imports
copies of phonorecords in US is infringer of CR or rights of author as case may be; registration
of CR is prereq to bringing infringement action; part of first thing you do in IP audit: do you
have anything in CR? If so, get it registered; if infringement commences before registration,
you’re not entitled to statutory damages and usually not attorneys’ fees, which is tremendous
problem especially for smaller CROs; CR office has always said it has to be completed
registration, most courts have done that but some in sympathy for Ps with good cases say as long
as app is filed, that’s enough; SCOTUS took it because it was split in circuits and opinion
followed solicitor general recoomendation that reg has to be completed before can file case; keep
in mind that effective date of registration is date of filing – however long it might take, when you
get reg it goes back to that date, you have constructive use before infringement commenced if
someone while pending commenced infringement; getting it filed protects client from subsequent
infringing action before actually registration issues because that goes back to date of filing; intent
to use application in this regard is very important – if you haven’t used it yet, you file, intent to
use, have to have genuine intent, eventually it comes back – you can’t stop people from
infringing as soon as CR office issues you intent to use, can sue and you have registration
Standing: legal or beneficial owner – you have to own CR OR be beneficial owner; beneficial
owner is someone who had ownership (basically authors) and they assign it to someone or
exclusive license; as long as they get royalties and are beenfiting from ongoing basis as opposed
to sale, they are considered beneficial owner and can sue; in real world corps don’t like to sue, so
you have client who is creator, has deal with publisher, publisher publishes, own CR, but client
as beneficial owner can sue; corps don’t like to bring infringement actions but defend against
them all the time; beneficial authorship helps
You need ownership of valid CR registration; registration is prima facie evidence of ownership
and valid CR and anything else you put in application; as you know now, prima facie is treated
as rebuttable presumption which is very good; someone has burden to overcome what you’ve
said in registration; illicit copying by D – sometimes you can copy and it’s not infringement; this
is copying that is determined to be infringement; independent production is OK; patents,
independent production doesn’t matter – you have exclusive use regardless; in CR all you have is
right to stop someone copying, not create same work independently; as Hand says, you can
independently create same poem and sue people who copy from you; extreme example but
shows that what you are protected against is someone copying you; key in infringement is
copying
How do you prove copying? Circumstantial evidence is usually proof (as opposed to admission
or witnessing – someone reading your book is not evidence of copying)
Copying + substantial taking: what is substantial taking? To some extent it’s the eye of the
beholder; used to be quantitative amount – rule used ot be, this is work, how much did you take,
and you quantitative it; if it’s substantial it’s infringement; SCOTUS has said – Ford’s
autobiography’s section on why he pardoned Nixon (to bring country back to normalcy),
newspaper copies it and publishes section (6-7 pages), killed Time Magazine’s distribution of it,
paid publisher 15k for it; this isn’t substantial in 2-1 decision; DC thought it was easy, but 2C
said it was probably fair use, but if not, it’s press, there’s 1A element; SCOTUS says no, this is
substantial taking qualitatively – this is heart of book; small publisher loses
Without direct evidence, almost impossible to prove, but can still claim coercion; HCH mentions
Bronx case: beginning in US attorney’s office, 2 people in office, woman of grandmotherly age
and young kid – all of a sudden announce there have been robberies of their postal store, kid said
he chased them down street; agents said this is suspicious – nobody chases robbers down st in
Bronx; they come in and he confesses, they do audit, things were missing, $X short, according to
confession they were taking money out like loan but put it back at end of month – they said they
were robbed; woman did not confess; go to court, all HCH has to do is put postal agent on stand;
he falls apart, D attorney is all over him, at end of cross he would’ve admitted to killing kid, so
confused – example of truthful witness, kid confesses, truthful witness is discredited; kid takes
stand and says he was chubby, would say anything to get food, which is why he confessed; HCH
does cross, knew kid would lie, so gave him lie, after every sentence or two, he asked if kid
called union rep, said yes, etc.; kid was comfortable with lies, 5 hours later; kid says he went and
ate dinner, judge says stop, cross-examines kid; point is, direct evidence is mess, people can lie –
circumstantial evidence is basically proof of CRI;
access to work, substantial similarity together can be proof of copying; reasonably oppty to view
or hear, and ther’s corporate receipt doctrine: a lot of things people just send in their work; if I’m
budding artist and send to publisher, that creates reasonable oppty to view; if there’s similarity,
you’re building CR case, so if you are repping that type of org, do NOT accept unsolicited work
so you don’t get caught in this OR only take from established agents who screen; agents are part
of agency and won’t screw around; if you’re repping someone unaware of problems, if they’re
just accepting stuff, make sure they don’t
striking similarity is technically: there is no other reason this could’ve happened except for
copying – so striking it would be impossible there wasn’t copying; similarity to some degree is
based on the essentiality of copying; either will be very bad or very good;
the rule was striking similarity by itself didn’t require access; Sully v. Gibb: Bee Gees created
song, Sully listening to radio hears it and says it’s his song; but Gibbs didn’t know of it, but S
sent it to publisher which BG had used at one point; S had expert who actually did opera but not
pop music, said it was strikingly similar; BG had best CRI lawyer who the judge started saying
“move this case along” so he’s thinking judge has already decided before BG presented, must
think BGs win, so they rested w/o presenting experts; juries think no expert? Couldn’t find
anyone to counter expert; don’t try to upset judge, but don’t try to make judge happy without
presenting your evidence; in 7C there’s clearly striking similarity but everybody knows there’s
no access; so court sets precedent that you have to clearly establish access; law was this, they
saw facts which didn’t correspond, 7C changes, reasonable possibility, other courts don’t change
incl 2C; eventually 7C drops reasonable possibility – this is one-off; they were going to
doctrinally lose unless something changed, 7C says OK, not followed by other courts; if trying to
do justice on these facts, change doctrine, but doesn’t mean there will definitely be broader
change; they wanted justice to be done; Newman, same lawyer, in Keiserman cites Sully, but
Newman dismisses it as that 7C case – if striking similarity don’t have to prove anything else;
this is – when judge gets it in his mind one way or another by facts presented to him, they can get
caught up in that and want to reach a result; in Kaiserman, it just so happened the only thing that
the P in this case did was submit (in Brazil or some place) a similar song; when you see these
cases, there’s a piano ro something, you play this or that, counsel for K plays something,
couldn’t tell it was not his song when they played BG; Sully v Gibb is perfect case for striking
similarity but reached wrong result; Newman says almost impossible it wasn’t infringement but
that’s why he did it, b/c its so unlikely he could do it he thought he could get away with it; when
you have judge doing that you can’t win, it’s so ridiculous that something 20 years earlier has
this publisher, to say that’s not enough access; Newman says that’s why he did it; you have to
convince whoever you’re before who should win on facts, that can drive how you apply or create
whatever
Ty Inc v. GMA: striking similarity? Posner: if works are so similar to make to make copying
highly probable, access need not be addressed; gets away from reasonable possibility; strikingly
similar to Ty’s pig but not to public domain; party’s beanbags bear little resemblance to real
pigs; Ds’ pig resembles only Ps, resembles so closely to warrant inference of copying; actual
instruction given to jury is CAN infer, doesn’t say you have to, but as practical matter same thing
Inverse ratio rule: greater similarity, less need to prove access; or vice versa; some courts have
moved away from it recently
Ordinary observer: as we’ll see in later case today, courts are not friends of experts, juries are;
judges don’t trust experts because they’re hired guns and are usually on one side a lot (Ps or Ds);
they’re only going to get hired if they same something good about client’s case, so there’s
financial inventive to find evidence of infringe or no infringe; be aware that as practitioner the
district court judges want experts on both sides NOT b/c they need but so they can cite in
decision for whatever way they go; HCH always asks judges if they’ve ever been influenced by
expert as to existence of infringement, they never say yes; you’re already looking at these things
and everybody already makes up their mind, even members of public with no legal background
come to conclusions;
Sid & Marty Kroft Television Prods. V. McDonald’s Corp. (9c): elites were probably more keen
on TV show than McDs; already thinking McDs is destroying kids’ health, have to be aware of
what juries and DC judge will think of two (or court of appeals) or parties that’s part of what can
lead to result: a jury says McDs you lose, McDs has expert that says the tie isn’t the same, etc.;
you’re always going to have that dissection but you have a rule that the overall picture when it
comes to infringement; any one similarity is … look at slides; no separate 1A defense, following
2C; SCOTUS: idea-expression is enough of 1A consideration in CR cases; Melvin Nimmer is
pro-CR until teaching 1A at UCLA and started thinking that 1A had more intrusion into CR than
it had before, right now doctrine is no separate 1A defense but idea-expression, free movement
of ideas, is how we implement 1A in CR law
Peter Pan Fabrics v. Martin Weiner Corp (2C): what if a lot of this is in public domain? These
are classic cases with classic definitions you should use in practice; overall appearance will …
look at slides, dissection shows one thing, overall shows another; irrelevant; the answer is no,
injunction affirmed; wherever you are in practice, see an opinion, write excerpt down if
judge/court is effective; when you write a brief, you’re not searching, you have everything you
need if you do that while you research: P wins – do you feel good about that? HCH does; Q is
Friendly dissents due to lack of notice; Friendly is brilliant judge, says where is the notice? D
had no notice, and if work goes into notice, work goes into public domain; he’s very thorough,
found that argument and obsessed about it, but no one else did; rest of court says it wasn’t raised
– if you don’t raise issue properly in appellate court, they can’t consider it normally speaking;
missing something is not good – look at all possibilities, look at all doctrine, including lack of
notice, anything, get all doctrine into brief
Almost all of this is before our time: what does that say? Most important things were done before
you were born, but that’s a challenge; you can go out there, think you’ll do important stuff;
Warner Bros v. ABC (2C 1983): WB sued all the time, even when they knew they’d lose; tactic
to disrupt and make Ds pay; you will run into Ps like that (Apple is like that in TMs); show on
ABC – does this look like infringement of Superman? No, regular person puts on suit, bumps
into stuff, has powers though; WB had Superman and sues for infringement; Newman Dist Ct.
find summary judgment for Ds; remember that Ps will face motions to dismiss and summary
judgement earlier on than in olden days;
Newman is giving out guidance to people about what they can do in future: Friendly, Hand did
this too; “if this had been done, maybe this would be infringement” – technically dicta but
leading judges did it; how can it survive summary judgment, Ds character strongly resembled
Superman but displayed trait inconsistent with traditional Superman image – jury would have to
decide; Superman in mental fog in mental fog or other things is still Superman if in fact this
resembles Superman – that can actually increase the possibility of Ds infringing because it could
be Superman in a crisis and people recognize that; it wouldn’t be enough, doesn’t mean it’s OK,
that doesn’t make infringement OK because it’s still Superman, has to be different person from
Superman
Nichols v Universal Pictures (2C 1930): Abie’s Irish Rose was big Bway hit; Universal asked to
do this as movie, were turned down, so they do Cohens and Kellys with same basic idea; who
should win? Not in your favor that you tried to get permission to do show, makes it look like you
really want to do Abie’s; but what is evidence? How the take of whoever is making decision is
very important;
Hand decision: 5 judges of 2C of time were considered more prestigious than SCOTUS at time;
study the synopsis; AI is wiping out the doctrinal lawyer, but that’s not what’s important about a
lawyer; what you are is problem solver in legal area; what that means is you get involved in
projects on ongoing basis; or if this is so important, change it even more so that you’re not going
to end up because infringement damages everything; this is problematical – be aware that it is
and tell people that it is
District court on side of movie company; 2C; this is why people cite this, b/c Hand goes through
whole to-do about infringement; all of these are good quotes, if you’re P but also D; whole
matter is necessary at large (?) case law can’t help much in new case – it’s ad hoc, looking at
facts and making determination – tells you that you really have to focus on facts and make case
based on particular facts of case – doctrine is rarely issue; very famous quote: upon any work …
so you have everything, when you take stuff out you have generic tropes; look at slides great
language: nothing is open and shut, everything is very fact dependent: you have chance to argue
for each side; there are two sides to every question; you can infringe by taking too much of plot,
but characters without plot, probably not, not definitely not;
The broad outline, she can’t protect; stock figures, no; so what was basically taken was some plot
and stock figures, more great language on slides, whatever may be difficulties, we have no Q
of which side of law this case falls – the outline of Romeo & Juliet is copyrightable depending
on how much you take – it’s much more involved than outline of this; West Side Story,
purposefully taken plotline by plotline – if R&J was contemporaneous that would be
infringement and would be derivative work – they were purposely doing that; all the things were
in both; so it was brought down and dissected, more slide talk; “expert witnesses are improper
in infringement trial – confuses issue” – this is the reason expert witnesses used to be used and
these five judges would have transcripts of expert witnesses they would have to use to consider
infringement; they switched to ordinary observer, but this also shows the use of experts; this
today is very strong, but if you think experts are bad person or something, you can quote this
language; what they didn’t like was expert witnesses took it away, just like they didn’t like
summary judgment bc 7A requires questions of fact to go before jury, sum judg took that away
from jury, as did experts b/c they knew juries just pick expert on one side or the other – proof of
hostility; attorneys fees could be a lot
Learned Hand, Swan, both on this case; Hand writing again, goes the opposite, intricate analysis
of two plots, much more involved, not generic characters, and go exactly the opposite, very fact
specific
Kerr v. New Yorker Magazine: Looking at “that”, is there substantial similarity here? On one
side is NYer, fancy schmancy, trying to make it graphic artist; on this side is Steinberg who
made a fortune on picture of Manhattan: pic of Hudson river thinking rest of world is
inconsequential; Owen is judge who writes operas in spare time, and opera people think
everyone else in music is way down here: he’s art-world elitist, keep that in mind: at very
beginning, think lose or appeal? Don’t think about that later on, think about that when you take
case; this is from the opinion slides; compares prestige of one to someone who he thinks is low-
brow, denigrating; but this is what he said, this is what she’s copying; he’s a freelance illustrator
who works … takes as kind of pathetic, never published on cover of magazine, by description of
facts, you can tell which way the judge is going; Owens is wine and cheese judge, she’s wine and
cheese, if you appeal case might go other way – not appealing is a crime, should be part of plan;
Steinberg who did this picture, made a fortune and sued everyone who came close, would’ve
sued if NYer didn’t sue, probably 10 lawsuits filed over this, that’s his signature, NYer doesn’t
sue anybody, why would they sue? Would they be hurt by this? Nobody has seen this, totally
different crowd; doing it because they want to please Steinberg, that’s how much clout he has;
very rare to see publications sue; unless it’s fancy thing the arrangement isn’t protected, but
that’s not true – arrangements are typically protected; judges have personal opinions and they
come out, but you don’t want to be trapped by that, just appeal the decision on that issue, you
would win or at least get past summary judgment – whatever you think of issue, it’s nonsense to
think a juror couldn’t find similarity – what you face when judges get this in their mind

12/2:
Kerr (SDNY): whatever you think of who should win this case, the way the NYer won was
because of Owen who has ideas of fancy schamncy and other stuff: DC judges and CoA get in
mind who should win and that’s pretty much who they’re going to find wins, and how do they do
that? Don’t let it get to jury, they can M2d or sum judg; HCH thinks this was incorrectly decided
especially since no reasonable juror could find substantial similarity, this is what happens: judge
does justice as Solomon, doctrine gets molded to achieve it, if DC judge is used to no appeals,
it’s even worse – this case should have been appealed at minimum to have it come back down
because clearly 2C would say a juror could think there was similarity and then you can achieve
all sorts of things on remand: once judge is pigeonholed, 2C looks to see what judge does with
remand whereas they normally don’t get involved – completely changes power structure to take
appeal in this case which was not taken
Sturoza v. UAE (D.C.): architect is hired, professional relationship broken, someone else brought
in, result is on slides: what are the issues that hit with this? First of all, are there common
features in this architect from this area of the world? If a lot of things have been around for a
long time and you’ll find in common architecture, will be excluded from similarity analysis:
scene a faire (not in architectural context); district court says no, when you look at what are
standard things, this is not infringement: goes to CoA (D.C.); how much credibility does this
circuit have with circuit you’re in? 6C lacks cred, D.C. usually doesn’t get infringement cases,
they have less to do with it and probably as rule there will be less credibility to their decisions;
they reverse; lower court said no reasonable juror, D.C. says there’s overall look and feel
similarity, wasn’t just person going about normal plans, at least enough to be remanded; now this
case went on to where architect, there was order to show cause to point, conservator or someone
else to represent her b/c of mental issues which people below thought were problematical, goes
up and down, finally a situation where she loses – has nothing to do with particular case but end
result in this situation was she did not – as general rule, creators are more emotional, more
involved, more likely to find infringement when technically there isn’t – maybe they got idea
from them and this thing wouldn’t have been made without client’s work and for that they feel
they’ve been wronged but it’s not CRable case so you have to take part of being careful is to
represent law and issues and how everything you say is true, for these reasons there won’t be
infringement – do you still want to go ahead? If so, fine, but you have to protect yourself against
loss without blaming you for loss – not if you have 2 corporations to usually go into that, but this
iwas example of individual P architect who ends up losing b/c her right to be architect in DC was
either never formally done or expired – there’s a ruling that no infringement can exist if she
wasn’t legally entitled to rep them as an architect or have work legally recognized – that’s how
case legally ended up, led to ideas of instability etc. so what you do as lawyer? When you’re
preparing case, where is she admitted to practice, make sure paper trail is taken care of – wasn’t
until remand which is late in the game to bring it up; part of being lawyer is not just thinking
about type of case but everything that can be problem from beginning and make sure you have
(esp in CRP and CRO) a paper trail of client’s license, etc. you have to go back and see this stuff,
you hve to find paper trail from original creator to client which establishes rights in case – if that
had been done, a lot of things including mental health would have not gone so badly for her
Laureyssens v. Idea Group: D knew about Ps foam products and accidentally sold them under
brand, indicating they couldn’t even tell much of a difference; DC finds the way of selling these
things in cellophane wrapper would make consumer think D’s thing was P’s, but in terms of
actual infringement, there were a number of differences – you can’t have monopoly of type of
thing which rings in ears of judges, but there are enough differences; when you have a case that
looks like you’re getting used to CR or TM becoming monopoly on selling type of goods
(patents can) functionality aspect is could someone come along and produce something
differently? Courts are likely to find more differences b/c they don’t want to end up in situation
with monopoly rather than get into complicated issue of useful article or other things there will
be tendency to find small differences that normally wouldn’t make a difference in other cases be
important here; when you’re dealing with client, what cncnerns will you run into and how will
courts deal with it? The DC split the baby, gave prelim injunction against selling it but denied inj
on actual infringement of D’s game; goes up to 2C, Oakes, and reach same result on CRI as DC;
when DC and CoA reach same result, good indication courts will reach that result in future; we
don’t have the goods, but you can imagine; prelim inj vacated but they said no likelihood of TM
confusion, probably not right but didn’t want TM to thwart competition
Original Appalachian Artworks v. Blue Box Factory (SDNY 1983): Cabbage Patch Kids;
looking at dolls pics in slides; 65% of people who saw this thought it was a CPK doll; judge is
Sofaer, very smart, judges who are very smart often go off on own idea without anyone to reel
them back – why you need to appeal – probably big guy, big corp, D was small guy, can’t think
of any other good reason why they wouldn’t find similarity; HCH thinks its substantial taking –
total concept and feel (doctrine created by 9C adopted by others) and substantial similarity
(substantial similarity is substantial taking) – it was for Ps that C&F was created, don’t have to
show it for an infringement, if you can’t show takings are substantial in dissected comparison,
that’s where C&F comes in – not a typical situation where judge just wants one party to win and
clerk used available doctrine; this decision was right before Xmas, so for P they wanted
injunction to stop selling in season, lost that so their economic interest may have died or may
have gotten some sort of settlement or something else happened, but if there was appeal, HCH
thinks it would have been reversed; the fact that if you look at history of case, nothing after in
terms of opinion probably b/c of settlement (probably what happened here); appeal from prelim
injunc is exception to final judgment rule (can appeal if you lose motion – very good thing to do,
if you don’t appeal you tell world you don’t really need injunction) again it’s not very expensive,
just done paperwork for motion, you get into CoA and there’s somebody there trying to settle
case, there’s stuff on your side you better settle this, you lose that motion, should always appeal
Castle Rock v. Carol Publishing (2C 1998): D makes fan-book Seinfeld Aptitude Test: fan use of
favorite show they do for free – tendency to let them do it to drive people to look at show; as
soon as they charge for it, that’s the end of the thing and you get sued; is it infringement? This is
basically … the type of questions … not copying what you see on screen, so should that be
infringement? Is fans showing what they know really an infringement? It’s not copying the script
or anything that makes people see show, just what happened during episode; reason you ask Q is
will this be followed in another court or should this be subject to CRI? One of the things you can
do is, a lot of fans have created these, apparently they didn’t think it was harming anything, they
let it go on, usually infringement you want to stop – wasn’t until they started charging for it; does
that create more harm? Those are the types of arguments D should use; Q is: is there substantial
similarity and if so is that just a fact or if you say this happened it’s an infringement?
Sotomayor: awards sum judg for producers, no reasonable juror could find any other result, both
quantitative and qualitative components were sufficient, no fair use, Ds appeal, what would be
interesting, another thing that isn’t done which should be done is put in request for rehearing en
banc, why do it? For same reason you should appeal, b/c HCH’s experience is 1) they don’t want
whole court to make judgments about decision and change some things to make more favorable
to you to avoid rehearing en banc, 2) what do judges want? Do justice, and what people think
about them – not lawyers, not public, but other judges – so rehearing en banc is like asking for
report card on judges on this case, which worries them a bit; won’t grant en banc but might think
they screwed up on case; you can get rehearing which might get you something they weren’t
willing to give you to begin with; as practical matter, circuits have reputations at certain points
about how freq they’ll do one (2C rarely does them now, used to do a lot); one of the things
people say in 2C is let it go to SCOTUS, but they only take so many cases; HCH has work, this
will be additional work, won’t get fewer cases, so just a lot more work – am I interested enough
to want to do it? HCH has actually heard judges say they were surprised to not face one, but
there was no piece of paper – clients might not want to spend money, which is weird b/c it’s just
a sheet of paper and you want that reputation to seek rehearing en banc, you want people to
know you’ll appeal sum judg, decisions and seek rehearings – helps you with that, but how do
judges know about lawyers? Who do they talk about? Do they talk about lawyers that appear
before them? Yes, if the lawyer is very good or very bad or is doing something different –
spreads your reputation around courthouse; another reason to be very good
Steinberg v. Columbia Pictures (SDNY 1987): NYer v. movie ad; usually publications don’t sue
for infringement; NYer didn’t – who sued? The person who created the cover and owned CR,
Steinberg, who sued a gazillion people over this, made a small fortune; this was considered the
NYer, as representing the NYer – this is the world, Manhattan, Hudson River to Pacific Ocean, if
it happens outside NY it doesn’t count; reverberated around as something NYers like (in mid
70s, less self-obsessed now) as a result a lot of people use it and Steinberg sued; movie poster
used similar imge with Manhattan and Moscow(? Look at slides); what’s your advice to CRO?
Steinberg wants to sue whole world knows if you come close and let them know; but if it was
just somebody, and notice NYer isn’t suing, they don’t sue, publishers don’t sue, authors have to,
but book often gives right to publisher and gets royalties, pub is beneficial owner, but allows
author to sue even tho CR is in name of pub; so, this shows how in a lot of these things, different
people have different views – as sophisticate, try to figure out what motivates P to sue, what will
court think about it; there could be judges who think “c’mon you can’t take a joke? This is a
waste of time; this lasts 2-3 months and its gone, doesn’t persevere, so you might have DC judge
of that view and then have CoA take broader view, or: you get Stanton, solid judge, sum jud
granted for P: DC judges do this for less work, if they don’t grant SJ there’s a trial, so bias of DC
judge is to get rid of it as soon as possible, whether that’s 12b6 or SJ; have to have rep of
appealing so judges know they can’t get rid of you, it’ll come back to them, now they’ll look at
you and appellate judges will look closer at decision; fair use, parody, any of those other things?
Its amazing how many decisions are not appealed, clients get sick of things; you have financially
included in package an appeal, the way you can do it secretly is charge more than normally, this
would cover cost of appeal: look, I’ll appeal, if we lose you pay nothing, if we win, you pay X;
you may say OMG, I wont make money, but no, you’ll improve your reputation with clients and
courts, which will help you
Tufenkian Import/Export Venturs (2C 2003): another example of these rugs which will look a
certain way; just looking at it, because trier of fact is supposed to mentally take out things which
are standard in rugs/arch/something else, gives lots of discretion to trier of fact to do something
without – can say there wasn’t enough change or this or this; both juries and judges don’t always
make determination of substantial taking or similarity, get idea of who should win which leads
them to see what they want to see; it’s hard for us to figure out what these things look like, not
easy in classroom setting, but people who make rugs certainly know; you want to get out of
client how much is really different? If we want settlement, they have to change X amount, tell
me how much of this would have to change to make you happy; in that context, figure out what
they’re worried about, get real world what matters; gets client to think about what they’re willing
to live with, abstractly what differences; this is competing, reason you do this is are they trying
to stop competitor or do they really think they’ve taken non-standard things? If you tell them
stuff, gives you tremendous advantage with judge;
Sotomayor: DC is like get out of here, this is ridiculous, sum judg, no reasonable juror could find
infringement; this shows you have to have creator on stand, so creator can explain effort and
differences from the standard; DC thought it was easy case; in 2C, yes, this is unusual case, not
easy because of this, so either something else was going on or the testimony of creator; what
does that tell you about CR lit? to some extent, it’s hard to predict, but obviously things said or
done in both places or not done, DC in these cases pretty much way Hugh would go, CoA
especially now 20-25 cases sitting, 4 or 5 day range, used to be opinion in every case; now, out
of 20, usually no more than 15-16 opinions, the rest are just orders: this is the facts, we hold this;
sometimes they do it because its easy, sometimes its because they’re conflicted, but everyone can
agree on this resolution without having to say why: saves work, also avoid appearance of 2C
conflicting all the time; if we have opinion, there might be concurrence or dissent, so as a result
when they write opinion they have all the time in the world, whereas they used to run around like
crazy to write opinion for every case; the presiding judge does all the orders, so the other 2
judges basically, they eacb have 2 opinions to wrte in 5 weeks so they can look more carefully
than in past; fed CoA judge is now literally part-time judge, more time is put into decisions with
opinions so they might spend more time than previously; btw, oral argument, courts aren’t crazy
about them b/c they get doctrine and by time they get to oral arg they know the doctrine, they
don’t need oral arg of doctrine, tey want to know why they should reach decision; you want oral
arg but you’re not going to repeat, you have to do doctrine in briefs, but you should also do these
are the facts, X should win for these reasons, and these are the doctrines that do it; oral arg is all
those policy reasons, don’t waste it on doctrine unless judge asks; look at SCOTus transcripts:
look at how many Qs are doctrine vs policy/factual (most are policy/factual);
Fair use: only country in world that has it, other countries are trying to do things sort of like it,
many just say “this is infringement, these are specific escapes actually set out”; system was
created here, British system, CL system, where judges make it up; Parliament was in session 3.5
days (exaggeration); Congress when first formed country at most was 2 months that Congress
met, weren’t doing anything really to speak of, everything was left to courts/judges, so what’s an
infringement? What’s a defense? All those were created by courts in CL, was accepted; so most
infringement law was CL, whether TM or CR, and there was CL CR, and it lasts forever, the
creator had CL CR and it just lasts forever; that then changed to where if it’s published, it has to
fed CR around 1820s, but unpublished lasts forever; so the thumb is not down on scale of
incentivization but protection of works, however there’s another side and fair use is completely
CL, just judges saying this shouldn’t be infringement, look at all facts, and that’s wha they do; if
you look at all the facts, there was copying, might be substantial taking, we need a doctrine that
says even when you have that it still can be a fair use; why do we have all these laws and
changes? Because we’ve always been, relatively speaking, a litigious society: sue; supposed to
be you don’t like a SCOTUS decision, you get the legislature or Congress or whoever to change
the law b/c rare for SCOTUS to say something is Const, but you can’t really do that, basically
you go out, hand out new election, this person, to change the law – how often does that happen
practically? BTW, how much do judges respect what legislatures do? how much do people
respect what legislatures do? if you took a poll of every country you’re in on woman’s right to
choose, this could be decided by governors, state leg, congress, pres or sup ct, what do you think
most people generally speaking would say (ignoring present polarization)? How would SCOTUS
answer that? Look at all they’ve created out of nothing: doctrine of right of privacy, called such
because everybody can agree on that, instead of right of autonomy, judges find or create doctrine
based on facts; now, in CR, you know what, this should be infringement, or maybe we should
allow parodies, and so they just started saying it’s a fair use, completely out of whole cloth