COPYRIGHT OUTLINE Fall 2011 Brauneis / Oman

Introduction Current Legal Framework

I. Constitutional basis for federal copyright law and the powers of the states a. 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. i. Art. I, Sec. 8, Cl. 8 ii. Science refers to all knowledge, including philosophy and literature (copyright) iii. Art referred to useful art, or the practice of a trade skill iv. A science teaches us to know and an art to do a. The power to secure for limited times to authors the exclusive right to their writings is the basis for copyright law Copyright is a federal law matter a. Federal copyright legislation preempts any state legislation that conflicts with it b. Before 1976, federal copyright law did not itself contain any specific directions with regard to preemption, and courts had to determine on general principles whether particular state legislation conflicted with federal copyright law c. District courts have original jurisdiction over actions arising under federal copyright law Copyright Act of 1976 a. Not retroactive (older material is governed by the 1909 Act) b. Replaced the Copyright Act of 1909 i. Became effective on January 1, 1978 c. Occupies almost all of title 17 of the U.S.C. d. Structure of the act i. Subject matter and scope of copyright 1. Section 101 a. Statutory glossary (Check here first for term definitions) 2. Section 102: subject matter of copyright 3. Section 106: six exclusive rights that constitute what a copyright owner owns ii. Copyright ownership and transfer 1. The issue of initial ownership is common 2. Conveyances of copyright interests iii. Duration of copyright 1. Section 301: specifies when federal copyright law preempts state law 2. Different terms of copyright depending upon the initial owner 3. Congress has changed the term of copyright many times iv. Copyright notice, deposit, and registration 1. Formalities of copyright law v. Copyright infringement and remedies 1. Litigation 1

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Theoretical Frameworks
I. Instrumentalism and economic analysis a. The goal of copyright is not to protect an authors labor or personality but to further the creation and dissemination of knowledge and culture b. SC has used this language: ultimate aim is . . . to stimulate artistic creativity for the general public good c. Little consensus about substantive standards: what advances knowledge and learning? i. Copyright should thus support the production of lots and stuff 1. The public can then pick and choose what it likes d. Conventional economic analysis i. Economic incentive to produce tangible goods means that anyone desiring them will have to purchase them from the producer since they are rivalrous and excludable 1. Works of authorship are non-rivalrous a. He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me 2. Works of authorship are non-excludable a. Similar to fireworks displays in urban settings i. No way for the person putting on the show to charge admission to all ii. Goods that are non-rivalrous and non-excludable are public goods 1. Lighthouses, government services like defense 2. A serious problem is created no one will want to create works since they have no economic incentive iii. Copyright law creates exclusivity 1. Deadweight loss: setting a books price at $20 means there are those who will not pay, although they wouldve paid something less (the $8 cost price, for example) 2. Copyright minimalism: costs of granting exclusive rights suggest that we should only grant just enough rights to induce an author to create a work 3. Copyright maximalism: answer is not to limit rights, but to extend them and to decrease negotiation costs and barriers to rights transfers e. Incentives independent of copyright law i. In practice, authors may be able to recover initial costs without legal protection ii. State of the art limitations on copying iii. Lead time 1. Has diminished as tech. developments make copying easier iv. Special-purpose technical restrictors v. Social norms vi. Alternative business models vii. Government funding and levy systems 2

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Labor and personality theories a. Labor: Lockes theory that the labor of someones body belong to him i. People should own what they have created with their own hands (or minds) ii. This approach challenges limited term protection b. Personality: Kant and Hegel i. Works of authorship should be protected as means of supporting the personal development of authors 1. Droits moraux Political theory and theories of justice a. Tool to protect democracy i. Copyright encourages creative expression on a wide array of political, social, and aesthetic issues ii. Copyright serves to further the democratic character of public discourse b. Rawls veil of ignorance as applied to authors

The International Context of U.S. Copyright Law

I. Berne Convention a. First major multilateral treaty on copyright i. Adopted in 1886 b. National treatment of foreign authors i. Copyright law of each country party to the Convention must treat foreign authors at least as well as domestic ones c. Substantive requirements i. Included architectural works and photography as literary and artistic works d. United States joined in 1989 i. 1976 Copyright Act removed some obstacles to US membership 1. Set copyright term at Convention minimum of authors life plus 50 years 2. Made clear copyright would not be forfeited for lack of registration or deposit ii. Berne Convention Implementation Act 1. Dropped requirement of displaying copyright notice as a condition of copyright 2. Dropped registration requirement as a condition of filing an infringement suit for foreign nations Special 301 reports a. Place countries on watch lists for deficiencies in their enforcement of IP rights NAFTA and TRIPS a. Linkage of IP issues and international trade b. One of the major emphases of TRIPS is enforcement

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Free trade agreements a. Bilateral agreements i. Reaching consensus in multilateral fora proved difficult b. Typically oblige parties to join a variety of existing multilateral copyright and IP treaties

Basic Hurdles of Copyright Protection Fixation

I. Basic requirement a. Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device (17 U.S.C. 102)(a)) b. Copyright attaches as soon as work is fixed i. As soon as author puts down the pen or painter puts down the brush Reasons for fixation a. Evidentiary problem with a lack of fixation i. Without a fixed work, have to depend on the testimony of litigants b. Aid to dissemination and preservation i. Goes towards the idea of "promoting the progress of science" 1. Better promoted if it is written down and easily transported around the world c. Provides stable notice about what rights are being claimed i. Acts as a fence marking the authors intellectual territory ii. Kind of formality that serves as an (imperfect) proxy about how serious you are about this work adherence 1. If you weren't serious enough to write it down, perhaps it would've arisen in conversation anyway and so there is no need for protection Definition of fixation a. A work is "fixed" in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration (17 U.S.C. 101) b. A work consisting of sounds, images, or both, that are being transmitted, is fixed for purposes of this title if a fixation of the work is being made simultaneously with its transmission (17 U.S.C. 101) i. A work can be fixed if it is recorded at the same time that it is being performed c. Works must be embodied in a copy or phonorecord i. Copies are material objects, other than phonorecords, in which a work is fixed by any method now 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 (17 U.S.C. 101) 4

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1. The term copies includes the material object, other than a phonorecord, in which the work is first fixed 2. Copy: printed book, file on a hard drive, handwritten manuscript, or a film of someone reciting the novel ii. Phonorecords are material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device (17 U.S.C. 101) 1. The term phonorecords includes the material object in which the sounds are first fixed. 2. Phonorecord: tape, MP3 file iii. Fritz v. Arthur D. Little, Inc. 1. Original words spoken aloud can be copied and independently copyrighted by all, if they have not previously been fixed in a tangible medium of expression d. Oral tradition and the fixation requirement i. Recovering collectivity: what rights do indigenous groups have to IP when their tradition is oral? ii. Lifvon and Enigma iii. 18 U.S.C. 2319(a): Lifvon never wrote down his songs 1. People do not distribute bootleg tapes of written words 2. Concerts, not poetry, are popular e. Sufficiently stable i. Definition of a period of more than transitory duration 1. Cartoon Network v. CSC Holdings ii. Strictly speaking, what has to last for a sufficiently long period is not the copy, but the perception, reproduction, or communication of that copy f. Situation of classroom note-taking i. Student taking down notes - getting the information from the professor orally 1. Not from the video tape camera, which was independently recording ii. Can't say that the notes were fixed before the camera - were fixed concurrently 1. Student's notes thus shouldn't amount to an infringement of a fixed work g. Copy vs. copyright i. The noun copy concerns fixed embodiments of works ii. The verb to copy concerns the lack of independent creation of a work Protection against unauthorized fixation a. 102(a) does not extend protection to unfixed works, but state statutes or common law may provide greater protection, and 1101(d) explicitly states 1101 does not preempt state law b. 1101 extends protection to a limited class of unfixed works c. United States v. Martignon 5

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Fixation and interactive devices a. 102(a) confirms that a work can be fixed on magnetic tape, in flash memory, or in some other medium that needs to be processed by a computer/device before the work is perceived by human beings b. Williams Electronics, Inc. v. Artic International, Inc. Live performances a. A live performance is not fixed if its not transmitted i. Therefore, if an improv piece is not recorded, it has no copyright b. 1101: Anti-Bootlegging Provision: special rule that says that live music performances receive special protection i. Prohibits 3 things without performers consent: 1. Cannot fix the sounds of a live musical performance in a copy or phonorecord, or to reproduce copies 2. Cannot transmit or communicate to public sounds or images of live musical performance 3. Cannot distribute, sell, rent, offer or traffic in any copy or phonorecord described in (a)(1) ii. Argument against 1101(1) and (2) 1. Does not fix the rights for a limited period of time, which may violate the Copyright Clause 2. Constitution refers to "writings of an author" a. Is a musical performance that is not fixed a Constitutional "writing"?

Originality
I. Basic requirement a. Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device (17 U.S.C. 102)(a)) b. Works that lack originality are not protected by copyright and nonoriginal elements of a work are not protected c. Copyright protection does not extend to every element of the copyrighted work, only to those that are original d. Original means only that the work was independently created by the author and possesses at least some minimal degree of creativity Originality has two requirements (Feist standard) a. Independent work of authorship i. The work has to be made from scratch ii. Does not require novelty 1. Different than patent law, where the standard is not have been obvious a the time the invention was made to a person having ordinary skill 2. Can merely be an independent creation of a similar entity

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a. If two identical works are created independently, each author would be entitled to his own copyright iii. The work does not have to be unique or different from preceding works 1. Similarity to prior works will not, in and of itself, affect the validity of a particular works copyright iv. Cannot be a complete copy of anothers work 1. Can be a derivative work b. Element of creativity i. Extremely low, but not de minimis ii. De minimis doctrine: de minimis creativity does not count as original creativity iii. A work need not be completely original or even mainly original 1. The originality analysis considers not how much was copied from others, but whether the author added anything creative iv. Must be more than a form of expression dictated solely by functional considerations 1. Words, phrases, titles, slogans, mere variations of typographic ornamentation lettering or coloring, mere listing of ingredients/contents dont have copyright protection Bleistein v. Donaldson Lithographing Company a. Advertisements are protected by copyright b. It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits Sweat of the brow a. Not protected by copyright b. Cannot win protection by showing an investment of considerable resources (energy and labor is not enough) i. Feist: the work that went into gathering the information for thousands of telephone listings does not qualify the phonebooks for copyright protection 1. Alphabetical arrangement is not original Prunt v. Universal Music Group a. Short words and phrases are not protected by copyright i. Lack creativity Photographs can be original a. A photograph derives its originality in three ways: i. Rendition: (light, angle, exposure, filters, developing techniques) ii. Timing: (being at right place at right time) iii. Creation of Subject: (the subject of a photo can be protected if the photographer created the scene or subject to be photographed. b. Mannion v. Coors Brewing Co. i. Mannion, a photographer is suing Coors for infringement of Mannion's photo of a famous basketball star

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Derivative works a. A work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a derivative work. (17 U.S.C. 101) b. An author may start with a pre-existing work and either add new material or modify the old material so as to produce something which is entitled to its own independent copyright i. These second generation works are known as derivative works c. A second generation author is entitled to copyright only in her changes or additions i. Not in any elements that were present in the pre-existing work d. Owner of copyright in the prior work i. If that owner has not given permission to create the derivative work, the second generation author is subject to liability for having infringed copyright in the prior work and ALSO ii. Forfeits copyright in his own creative contributions to any part of the derivative work that uses the prior work e. Pattern of Cases: i. Work A (the original work) 1. Party A is usually not involved in lawsuit ii. Work B (purported derivative work) 1. Made under a license if Work A is copyrighted and as a copy of public domain work if Work A is in the public domain iii. Work C (allegedly infringing of Work B) 1. Contends that Work B is insufficiently original f. Batlin & Son, Inc. v. Snyder i. Pre-dates Feist ii. For a derivative work to be copyrightable there must be some substantial difference, not merely trivial originality iii. Snyder created an Uncle Sam bank and claimed Batlins Uncle Sam bank was an infringement, although Snyder has no valid copyright because Uncle Sam is in public domain and Snyder didnt make any changes that were noticeable to the casual observer iv. Endorses higher standard than normal 1. Circuit split in how much variation is needed. 2. Higher originality standard would leave more in the public domain. g. Collective works i. Both collective works and derivative works use prior works in ways that infringe copyright in those prior works absent permission, unless those works are already in the public domain ii. A collective work merely gathers a number of prior works and presents them as a collection 8

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1. A derivative work changes or transforms the prior work in some way iii. All collective works are compilations 1. Compilations also covers works that gather and organize noncopyrighted material Scenes a faire a. Stock characters and settings that are indispensable are not copyrightable i. Lack originality as they are already in public domain b. Damsel in distress, knight in shining armor, haunted house, etc.

Fundamental Exceptions to Copyright Protection

I. The fact that a work as a whole is fixed and original and thus protected by copyright law does not mean that each and every component of that work is entitled to protection 102(b) explicitly itemizes the aspects of a copyrighted work that are not covered by the exclusive rights granted under the law a. Idea, procedure, process, system, method of operation, concept, principle, and discovery

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Facts and Compilations

I. Feist Publications, Inc. v. Rural Tel. Service Co. a. Concerned the extent of copyright protection in Rural Telephones telephone directory white pages listing i. The raw data was not original to Rural, who listed the names in alphabetical order 1. This arrangement failed to show even the minimal creativity required for protection b. Facts are not copyrightable i. Compilations (databases, maps, almanacs) may be if the selection, coordination, or arrangement of facts reflects creativity c. 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; term includes collective works (17 U.S.C. 101) i. To be protectable compilation, the resulting work must be more valuable to the consumer than the sum of its parts 1. The assemblage of items must have some coherence, and bear logical relationship to each other 2. Individual parts of a compilation do not have to be copyrightable themselves d. Protection for compilation (or derivative work) extends only to material contributed by author of that work (103) i. Distinguished from pre-existing material employed in the work ii. To create a compilation of works that are still copyrighted, you must have permission from the copyright owner 9

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Idea/expression analysis a. A work that primarily conveys unprotected material has more limited protection than a work that is principally creative expression b. A.A. Hoehling v. Universal City Studios, Inc. i. A book about the Hindenburg disaster contained many nonprotected elements (like facts or theories) ii. A disaster film was made that copied many specific elements from the book 1. The elements were not the product of plaintiffs creativity but facts and theories from his research a. Historical theories are treated as facts c. Read along with Feist: the theory that someone was murdered and the factors surrounding his death are not protectable elements of a book, but the authors expression of that theory and surrounding facts (selection, coordination, and arrangement of its theories and facts) is protectable CCC Info Services, Inc. v. MacLean Hunter, Inc. a. Blue book listings of car values were not reports of actual transactions, but rather estimates of value, requiring consideration of factors other than sale prices i. Compilation of used care prices they think will happen over different geographical areas b. If the facts are based in part on a judgment call by a professional, then it is copyrightable information 1. MacLeans predictions were based on market information and judgment by experienced people

Abstraction and Ideas

I. 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 (17 U.S.C. 102(b)) a. Expression is copyrightable, ideas are not i. Justification: ideas are building blocks and are in short supply Protected expression vs. unprotected idea a. Protected expression includes relatively complex, concrete pattern that are embodied in a work i. Each complex pattern is also one of many variations on a simpler pattern 1. As one climbs the ladder of abstraction, at some point one reaches patterns that are unprotected ideas b. Nichols v. Universal Pictures Corp. i. No infringement results if a second author copies general elements but expresses them in a different form ii. Stock characters 1. The less developed the characters, the less they can be copyrighted

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Characters a. Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co. i. Suggests that characters which are visually or graphically depicted rather than described in words may either be subject to a different, more lenient test of copyrightability or may more easily satisfy a uniform test applicable to all characters 1. They may be more likely sufficiently delineated b. To say that a character is protected by copyright is to say that no one else is free to use a fictional personage with the same mix of traits i. Infringement would not require the use of the same name for the character c. Traditional tests: i. Nichols v. Universal Corp: the character distinctly enough delineated that it is more than a general idea or stereotype? ii. Warner Bros. v. Columbia Broadcasting System: does the character constitute the story being told? (Collapses protection of character into protection of plot) CCC Info Services, Inc. v. MacLean Hunter, Inc.

Utility and Functionality

I. Merger doctrine a. When there are limited ways to express an idea, the idea and expression merge, so that people can copy the expression in order to gain access to the idea i. Doctrine does not authorize copying that goes beyond that necessary to use an idea 1. Two tea sellers can use pictures of cinnamon sticks on their boxes of cinnamon tea, but the second cannot copy the firsts expressive elements of shading, exact forms, and arrangement of elements b. Thin copyright i. If limited alternative expression is available, then copyright protection for the expression is available, but the copyright will be thing 1. Infringement will be found only in cases of verbatim copying c. Some courts have decided that merger is best approached as defense in an infringement action i. Not as a limit on copyrightability in the first instance d. No protection for utilitarian aspects of a work i. Only on aesthetic expression of the work ii. Baker v. Selden 1. Plaintiff held the copyright on a book explaining an accounting system, which contained an essay explaining how the system worked and forms to implement the system 2. Forms were held to be unprotected because use of such forms was necessary to use the system 3. To prevent copying of the forms would have the effect of protecting the system a. Copyright does not protect elements that necessarily flow from unprotected ideas 11

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Blank forms a. Blank forms and standard product features do not qualify for copyright i. Codified in the regulations of the Copyright Office ii. Utilitarian, not aesthetic b. Utopia Provider Sys v. ProMed Clinical Sys. Computer programs a. Code is utilitarian because it makes a machine operate in a certain way b. Expression adopted by programmer is copyrightable but the process or methods embodied in program are not c. Apple Computer v. Franklin Computer User interfaces a. The appearance of a program and the various ways in which the user controls it have come to be known as the user interface of the program b. A computer programmer may be able to replicate the user interface of another program without replicating any of its code Useful articles a. A useful article is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a useful article (17 U.S.C. 101) b. The design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article c. Separability i. Copyright protects only those features of a useful article that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. ii. Some parts of useful articles can be protected 1. Courts look to find some element that physically or conceptually can be identified as separable iii. Physical vs. conceptual separability 1. When a useful object has an aesthetic component that can be physically removed without undermining the objects utility, the removable piece is entitled to copyright protection a. Hood ornament of a Jaguar automobile d. Physical separability - relatively easy i. Most disputes are about works where there is no physical separability e. Conceptual separabiity: alternative approaches i. Psychological test 1. Does the design create in the mind of the ordinary observer two different concepts that are not inevitably entertained simultaneously? 2. Mind of the consumer/observer

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ii. Process-oriented test 1. Are there aspects of the design that were not significantly influenced by functional considerations? 2. Mind of the designer 3. Pivot Point test a. Not thinking about making the item useful at all when they included a particular feature? b. Mara: purpose was to provide a face and head to teach students about makeup and hair design i. Was supposed to have the hungry look of a model iii. Market test 1. Is there a significant part of the community who would buy the item, not for its functionality, but for its aesthetic qualities? f. Mazer v. Stein i. A lamp base functions to hold the lamp up, but a lamp base comprised of a dancer statuette is protectable by copyright ii. A lamp, being useful, is not proper subject matter for copyright while a statute, being aesthetic, is suitable for copyright g. Copyright Office 1991 opinion for garments i. Garment designs (excluded separately identified pictorial representations of design imposed upon the garment) will not be registered even if they contain ornamental features or are intended to be used as historical or period dress ii. The print of a dress falls under the parenthetical notation iii. Red vest couple photo 1. Diamond design on the fabric might possibly be copyrightable, although it's a pretty simple geometric pattern 2. The cut isn't copyrightable under the 1991 opinion Architectural Works a. Design of a building as embodied in any tangible medium of expression, included a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in design, but does not include individual standard features (17 U.S.C. 101) b. Any architectural work created before 1990 will continue to be governed by the pre-1990 law c. Scope of rights (17 U.S.C. 120) i. Other people can still take, distribute, and publicly display pictures, paintings, photos, or other pictorial representations if building is visible from public place ii. Owner of building can change or destroy building w/o permission from copyright owner iii. Rights only protect aesthetic aspects, not functional ones iv. No separability requirement d. Building: term encompasses habitable structures that are used, but not inhabited, like churches, pergolas, gazebos, and garden pavilions e. Interior architecture can also be copyrighted 13

Proving Infringement of the Reproduction Right Elements of a Case of Copyright Infringement

I. Two elements a. Copying material that is b. Protected (ownership) c. Parallel independent creation is not copyright infringement d. Arnstein v. Porter i. The plaintiff must show that the defendant copied from his work and that the copying was improper, meaning that was copied was both too much and the wrong kind of material Ownership a. The work must have a valid copyright and the plaintiff must own the right that is allegedly infringed upon b. Where is this requirement found? i. 106: owner has the right to . . . ii. 501(a): anyone who violates the exclusive right is an infringer iii. 501(b): legal OR beneficial owner is entitled, subject to the requirements of 411, to institute an action for infringement 1. Might be more than one person who has an ownership interest Copying a. The defendant must have made a literal copy of the work, created a work by working from the copyright work, or worked with the copyrighted work in mind

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Establishing that the Defendant Copied from Plaintiffs Work

I. II. Direct evidence a. Eye-witnesses, confessions (extremely rare) Circumstantial evidence of copying (Rarely direct eye-witness or confession, so must use circumstantial evidence) a. Similarity and access i. First look to see level of similarity 1. Then look at access (similarity could be coincidence) b. The more similarity that can be shown, the less access needs to be shown Similarity a. First look at level of similarity, and then if necessary look at access (similarities could be coincidence) b. Substantial similarity rule: only substantial similarity is required for infringement i. Substantial similarity is a factor issue 1. Should consider only similarities involving protected elements ii. Would the target audience think the two works are substantially similar? 1. If there is no target audience, look through the eyes of an ordinary audience c. Look and feel approach (alternative to substantial similarity) d. Striking similarity approach (alternative to substantial similarity)

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e. PROBATIVE SIMILARITY: similarities between two works to prove/disprove independent creation i. Degree of similarity that exists between the copyrighted work and the allegedly infringing work Similarity as to mistakes, defects With purely creative works like music, might be as readily available Feist: with factual works, might be extremely probative Similarities that are otherwise unlikely Alternative sources: works in the public domain, natural objects ii. Factors 1. Uniqueness, intricacy, or complexity of the similar sections 2. Unexpected or idiosyncratic element that is repeated in the alleged infringing work 3. Appearance of the same errors or mistakes in both works 4. Fictious entries placed by the plaintiff that appear in the defendant's work 5. Obvious or crude attempts to give the appearance of dissimilarity f. SUBSTANTIAL SIMILARITY: did the copying that occur rise to the level of illicit/actionable copying? Access a. The more access, the more likely it is that the defendant copied rather than created his work independently i. Cannot copy something you have never seen b. Factors to consider: i. Does defendant possess a copy of plaintiffs work? ii. Widespread public dissemination iii. Chain of custody c. Plaintiff can offer evidence that defendant could have had access i. Jones v. Blige d. All copying is access, but not all access is copying Independent creation a. Defendant can present evidence of independent creation Subconscious copying is still copying a. If a plaintiff had access to defendants work and then after some lapse of time unwittingly uses aspects of the work in creating his own work, he is an infringer b. Bright Tunes Music v. Harrisongs Music Ltd. i. George Harrisons My Sweet Lord was a subconscious copying of Shes So Fine

Does Defendants Copying Constitute Improper Appropriation?

I. II. Copying from a copyrighted work is not necessarily infringement Fragmented literal similarity and de minimis copying a. Where defendant made only trivial use of the copyrighted work, there is no infringement (de minimis non curat lex) b. Gottlieb Development LLC v. Paramount Pictures Corp. i. Silver Slugger pinball machine in the film What Women Want 15

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ii. The amount of material taken was inconsequential 1. Infringement requires substantial similarity c. Motion pictures, set dressing, and cleared art i. Major studios have employees who specialize in obtaining licenses to use copyrighted works in movies 1. They clear copyright ii. Companies offer pre-licensed works for movie appearances d. Allen v. Scholastic, Inc. i. Harry Potter and Willy the Wizard Ordinary and discerning observers a. Gottlieb: the usual perspective from which similarity is judged is the ordinary/average observer b. Allen and Boisson use a more discerning observer approach c. Boisson v. Banian, Ltd. i. Quilts d. Look and feel approach i. Holistic way of looking for substantial similarity Filtering a. Computer Associates v. Altai, Inc. i. Court requires that all non-protectable components of plaintiffs work be stripped away to arrive as the golden nugget of protected expression 1. Only thereafter will the court determine if defendant is guilty of improper appropriation b. Analysis of computer programs i. Abstraction: dissect the allegedly copied programs structure and isolate each level of abstraction contained within it ii. Filtration: examine the structural components at each level of abstraction and filter out those components the inclusion of which was 1. Dictated by considerations of efficiency; 2. Required by factors external to the program, such as a. Mechanical specifications of computer b. Compatability requirements of other programs c. Computer manufacturer design standards d. Demands of the industry served e. Widely accepted programming practices; 3. Taken from the public domain iii. Comparison: compare the code of the programs that remain after the Step 2 filtration process 1. Should we compare them holistically or analytically? 2. Should we decide whether the ordinary programmer would feel that theyre the same? 3. Should we use experts, and if so, how? Basic infringement analysis a. Analyze similarities and differences between details of plaintiffs and defendants works (e.g., Boisson, Nichols)

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Fair Use
I. Introduction a. Fair use is the only exception that applies across all five exclusive rights and all types of copyrighted works b. Allows use of copyrighted works without permission or payment c. Case-by-case basis d. Until 1976 Act: i. Was a judge-made exception; no appearance in statute ii. Supreme Court had never decided a case about fair use The fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include a. (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; b. (2) the nature of the copyrighted work; c. (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and d. (4) the effect of the use upon the potential market for or value of the copyrighted work. (17 U.S.C. 107) Reasons for fair use a. To allow uses that do not reduce the value of the copyrighted work (and hence do not affect the incentive that copyright provides authors) b. To allow uses that are productive (that contribute to the progress of science through added creativity or public benefit) c. To promote beneficial uses that would otherwise be frustrated by transaction costs d. Avoid adverse consequences of unenforceable prohibitions i. Privacy of one's own home - who's going to go after you? Factors a. Purpose and nature of the use i. Private copying is favored noncommercial use (Sony majority) ii. Consumptive uses are disfavored and productive uses are favored (Sony dissent) iii. Transformative work weighs in favor of the fair user iv. Commercial nature weights against the fair user v. Parody weighs for the fair user 1. Does not have to be comedic a. Criticism or comment

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b. Threshold question: whether a parodic character may reasonably be perceived vi. Productive uses (where works are used as part of another activity) are more likely to be fair use 1. Simple reproduction of copyrighted works is less likely to be fair use vii. Uses that attempt to exploit unprotected aspects of the copyrighted work are favored 1. Reverse engineering b. Nature of the copyrighted work i. Factual vs. fictional or creative 1. Use of a factual work is generally more likely to give rise to a fair use defense ii. Published v. unpublished 1. 107 amendment: the fact that a work is unpublished shall not itself bar a finding of fair use . . . iii. The more creative expression in a work, the more protection it has against fair use 1. Fair use applies more to thinly protected functional works (computer programs or useful articles), factual works (databases), and nonoriginal works iv. Use of unpublished works weighs against the fair user 1. Authors right to control first public appearance of his expression 2. Unpublished material is not a bar to fair use, but use of unpublished material will rarely be found to be fair use v. Works of fact weighs for fair user 1. Greater need for public dissemination c. Amount and substantiality i. Harper Row case ii. Quantity arguments: percentage of work taken 1. Sometimes must be assessed in light of purpose a. If parody, can take enough to make work recognizable b. If search engine, works best if display whole image (but reduced resolution, loss of details) iii. Quality arguments: is this the core or kernel of the work? iv. Extent of permissible copying varies with the purpose and character of the use v. Copying the entire work is less likely to qualify for fair use than using only a portion 1. Particular portion copied is important 2. If the purpose is parody, taking the heart of the original work weighs less against fair use a. Harper: taking the heart weighed against fair use vi. Key is whether the amount taken is appropriate to the favored use 1. Did the copier take an amount that fits the proposed use? 2. Is there an alternative to taking the portion copied? 18

V.

VI.

VII.

3. Is the amount taken likely to diminish a potential market for the copyright owner? d. Effect of the use i. Effect on the value of the original and the value of potential derivative works markets ii. Some types of market harm are not cognizable 1. Criticism may decrease sales, but serves the underlying purpose of copyright to foster exchange of ideas iii. Transaction costs as a limit on potential markets 1. But this is a shifting target: new technologies might make licensing of small segments and uses easier Sony Corporation of America v. Universal City Studios, Inc. a. The making of individual copies of complete television shows for purposes of time-shifting (unauthorized home recording of television programs done to watch the programs at a later time) does not constitute copyright infringement, but is fair use b. Balance of factors i. Making copies is a disfavored reproductive use v. a productive use (education or creation) ii. Use was noncommercial and nonprofit v. a disfavored commercial use iii. Entire amount was copies (disfavored) v. fact that the material had been broadcast for free viewing iv. Plaintiss showed no specific market harm or loss of value (key factor) Harper & Row, Publishers, Inc. v. Nation Enterprises a. Nation article that included verbatim quotes from President Fords unpublished autobiography did not fall under fair use b. Balance of factors i. New reporting (favored use) v. commercial (disfavored) ii. Took not only facts, which are not protected by copyright, but expressive elements iii. Portion taken was small v. portion taken was the heart of the book iv. Specific market harm was shown: loss of prepublication licensing revenue from Time, who canceled its agreement to print prepublication excerpts Campbell v. Acuff-Rose Music, Inc. a. 2 Live Crew made a rap parody version of the song Pretty Woman which was a commentary on both the music and worldview of the original b. Profit does not make it impossible for a use to be fair i. Merely one of the components of a fair use analysis c. Parody must borrow from the original to make its point i. Is a transformative use ii. The taking of substantial amounts is not necessarily a bar amount taken here was no more than necessary for the favored use of commentary iii. Compared with satire (which is not targeted at the work borrowed from) , which does not require use of the original work to make its point d. SC held on remand that a key factual issue was whether there was a showing of market harm 19

Enforcement and Protection Strategies: Infringement and Theories of Secondary Liability Direct Infringement
I. The defendant infringed one of the exclusive rights

Secondary Liability
I. II. III. Copyright Act is silent on the issue of secondary liability or what its contours might be Two types of secondary liability: contributory infringement and vicarious liability a. You need a direct infringer for secondary liability Contributory infringement a. One infringes contributorily by intentionally inducing or encouraging direct infringement b. Elements i. Defendant knows or has reason to know of the infringing activity ii. Defendant induces, causes, or materially contributes to the infringement conduct 1. Either provides the means or are a facilitator c. Active inducement is a case-by-case fact inquiry d. Grokster i. Unanimous court found that Grokster was indeed liable for inducing copyright infringement e. Contributory test i. Did the defendant actively encourage or promote infringement by users of the product? 1. If yes, then is a contributory infringer per Grokster (told users that the software was for copying) 2. If no . . . ii. Did the defendant have actual knowledge of specific infringements and the ability to stop them? 1. If yes, then is a contributory infringer per Napster (Napster knew of the infringing songs due to an index file couldve kicked users off) 2. If no . . . iii. Is this particular device capable of substantial non-fringing uses? 1. If no, then is a contributory infringer per Sony (Sony was found not liable because a VCR has substantial non-infringing uses) 2. If yes then not liable Vicarious liability (VL) a. A defendant should not profit from infringement by someone he controls (similar to respondeat superior in tort law) b. Knowledge of the direct infringement is not required

IV.

20

c. Elements i. VL applies only if the defendant gets a direct financial benefit 1. A landlord renting an apartment to a tenant who pirates music CDs is not liable, because he is not receiving any profit from the infringement ii. The defendant must have the right and ability to supervise the direct infringer 1. Number of ways to show the right to supervise a. Formal contract, employment contract or commission, less formal relationships such as promoters

Shielding and Recruiting New Gatekeepers - Digital Millennium Copyright Act

I. II. III. Passed in 1998 Major purpose: to implement two 1996 international treaties the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty Two major provisions a. Creating safe harbors for online service providers (512) b. Protecting against circumvention of technological protection measures (1201) Safe Harbor and Anti-Circumvention Provisions may seem only loosely related a. 512 protects ISPs, web hosting companies, search engines b. 1201 protects technical measures designed to limit access, copying of works c. But its possible to see both as centrally concerned with the recruitment and coordination of new gatekeepers i. To qualify for safe harbors, OSPs must agree to enforce copyright in certain ways ii. Key provisions of 1201 allow copyright owners to require equipment makers to incorporate copy protections in equipment

IV.

Safe Harbors Under 512

I. 512 provides safe harbors from contributory infringement and vicarious liability a. Complying with 512 shields online service providers from CI and VL i. Failing to comply doesnt necessarily subject them to CI or VL 1. Need to consider that separately Four different types of online services a. Transitory digital network communications i. Typically, transmission services b. System caching i. Automatic copying to provide continued access (when network is clogged) c. Information residing on systems at direction of users i. Typically, web hosting d. Information location tools iii. Typically, search engines Some requirements apply to all four categories (512(i)(1)) a. Must reasonably implement a policy of terminating subscribers and account holders who are repeat infringers

II.

III.

21

IV.

b. Must accommodate and not interfere with standard technical measures (e.g., watermarking, encryption) Notice and takedown a. Applies to i. Web hosting services ii. Search engines / linkers b. If receive notice complying with 512, must remove access to material or links, subject to put back notice from alleged infringer

Technical Measures Under 1201

I.

II.

III.

Applies to metadata that is included in digital files and that identifies the copyright owner and may provide licensing information a. Statutory damages: between 2.5K and 25K per act of falsification, removal, alteration b. Does it also apply to old-fashioned visible copyright notices i. Courts are divided c. Fine goes to the government, not the copyright owner Contours of device liability under 1201(a)(2), 1201(b): a. Cannot make or offer devices that are: i. Primarily designed or produced for the purpose of circumvention, ii. Have only limited commercially significant purpose or use other than circumvention; or iii. Marketed for use in circumvention Leveraging device/access control a. Why is prohibition of devices that circumvent access controls the key combination? i. Licensing Leverage: copyright owners can encrypt works (controlling access), and condition license of decryption key to device manufacturers on rights-control design requirements

22

IV.

V.

b. Device/access control leverage makes prohibition of circumventing acts and protection of rights controls relatively unimportant c. Difficult for most people to commit acts of circumvention without commercially manufactured device d. Relatively easy to get enforcement against device manufacturers (while difficult to enforce against individuals who circumvent) e. Rights controls can be enforced as licensing conditions of access keys, so dont need separate legal protection of rights controls Exceptions a. No exception for circumvention in order to make fair use (or other exceptions to exclusive rights in copyright) b. Reverse engineering exception (1201(f)): can circumvent access control measure to computer program to identif[y] and analyz[e] those elements of the program that are necessary to achieve interoperability of an independently created computer program with other programs. (drafted to track Sega v. Accolade) c. Other minor exceptions: nonprofit libraries, archives, educational institutions for acquisition purposes; law enforcement; encryption research Exemptions a. Every three years, Copyright Office determines whether or not more exemptions are needed b. In last round in 2006, Copyright Office created or renewed six exemptions: i. Audiovisual works in library of film or media studies department, for educational use ii. Computer programs and video games in obsolete formats, for archiving iii. Computer programs protected by malfunctioning, obsolete controls iv. Literary works in e-book format, for allowing read-aloud or specialized formats for the blind v. Cell phone computer programs, for the purpose of switching service providers vi. CDs that cause computer security problems, for the purpose of correcting those problems

1909 Act: Publication, Notice, Deposit, and Registration

I. II. Basic framework Publication a. Dividing line between state common law copyright protection and federal copyright protection was publication i. Had to publish with proper notice b. Performances and displays i. Nutt v. National Institute Inc. ii. Letter Edged in Black v. Public Building Commission 1. Picasso case iii. Performance is not general publication c. Distribution i. General publication: tangible copies distributed to the general public who are then allowed to exercise dominion and control over the work OR a 23

III.

work is exhibited and displayed in such a manner as to permit unrestricted copying ii. Limited publication: communicated the contents of a work to a select/limited group for a limited purpose 1. No right to re-distribute iii. Forfeiture required a general publication d. Publication under the 1976 Act i. Dividing line is moment of fixation ii. Publication is still important for: 1. Defining the term of copyright in some cases a. Anonymous & pseudonymous works and works made for hire: the shorter of 95 years from publication or 120 years from creation 2. Determining whether a copyright has any protection under US law if it is published abroad 3. Taken into account when determining fair use 4. Publication in the US triggers mandatory deposit 5. Statutory damages and attorneys fees available only if registration before infringement if unpublished work, or registration within 3 months of publication if published work Notice a. Form and location i. Fitzgerald ii. Year of first publication was also required for printed literary, musical, or dramatic works iii. For some types of works (books, periodicals, and musical works) the statute specified the required location b. When was the work in question published? i. Before January 1, 1978 1. All published copies must have had notice affixed in proper form a. [publication date] [copyright owner name] b. Otherwise copyright protection is forfeited 2. Federal copyright began on publication with proper notice 3. Copyright was generally forfeited for works first published without proper notice ii. Between January 1, 1978 and March 1, 1989 1. Notice required but can cure within 5 years 2. Follow rules in 405 (a) a. De minimis exception: If notice omitted from relatively few copies, no consequences (405(a)(1)) b. If licensee omitted notice in violation of explicit condition in license, then no consequences c. Cure: can avoid forfeiture if i. Register within 5 years after publication of work and

24

IV.

ii. Make reasonable effort to add notice after omission is discovered iii. After March 1, 1989 1. No notice required, but incentives for notice a. If in an infringement action defendant has access to copies with copyright notice, then cant argue innocent infringement i. IN OTHER WORDS: failure to include notice on copy to which infringer had access will permit infringer to request mitigation of statutory damages as an innocent infringer 401(d), 402(d) c. Sections i. 401: notice on copies with year, and name of owner 1. 402: notice on sound recordings 2. Phonorecord is NOT a copy ii. 403: notice for government works. d. Incentives to give notice: no weight shall be given to innocent infringer defense (which can be used to reduce damages) e. Berne convention (Article 5) i. Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention ii. (2) The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work Deposit a. Deposit: a copy of the work b. Failure to deposit will not affect ones ability to enforce the copyright against infringers i. Failure to deposit subjects the violator to a fine c. Must be done within two months d. Copies must be best editions (determined by the Library of Congress librarian) e. Archival deposit for architectural work f. Foreign works i. Deposit requirement applies to works first published abroad as soon as they are republished in the United States ii. Deposit requirement applies regardless of the authors nationality g. Purposes i. Ian action arises from the infringement of the work, the owner may prove that the material that is infringed is exactly the same material for which the owner has secured a registration ii. Assists the Library of Congress in building its collection of works

25

V.

Registration a. Optional: simply makes a record of a pre-existing right b. Steps (under 408): i. Fill out a form ii. Pay a fee ($45 now) iii. Make a deposit 1. One copy for unpublished and foreign material, and two copies for material published in the U.S. iv. May be made at any time during the subsistence of copyright (407) c. Applies to unpublished and published works d. Includes works published abroad e. May be made by copyright owner OR owner of any exclusive right thereunder f. Pre-registration (408(f)) i. May pre-register works with a history of infringement prior to authorized commercial distribution ii. Must file real registration with fee and deposit within 3 months of preregistration g. Incentives to register i. Early registration ensures prima facie proof of validity of the copyright (17 U.S.C. 410(c)) ii. For works of U.S. publication of unpublished works by U.S. authors, registration is a prerequisite to sue for infringement under the Berne Convention/17 U.S.C. 411(a) iii. Statutory damages and attorneys fees may be awarded only if registration is made prior to commencement of infringement (17 U.S.C. 412) iv. Makes a public record of the copyright ownership and provides constructive notice of the document to others c. Registration as a prerequisite to claim of moral rights violation i. Not necessary for any author to register prior to bringing suit for violation of the rights of attribution or integrity in a work of visual art under 106
Works published before 1978 Works published between 1978-Feb. 1989 Notice perfected protection; five years to cure omissions or work falls into public domain Prereq. to suit; fines may be imposed for failure Optional (incentives); prereq. to infringement suit Works published after Feb. 1989 Optional (incentives); unavailability of innocent infringer defense No longer prereq. to suit for non-U.S. Berne works; fines may be imposed for failure Optional for non-U.S. Berne and WTO works; prereq. to suit for U.S. and other foreign works

Notice

Federal copyright protection upon publication with notice; work fell into the public domain with no notice Prereq. to suit; fines may be imposed for failure

Deposit

Registration

Optional until last year of first term; mandatory for renewal of works first published before 1964; prereq. to infringement suit

26

Initial Ownership of Copyright

I. Ownership of copyright a. The current copyright statute declares copyright in a work protected under this title vests initially in the author (17 USC 201) b. Four situations i. Author is an individual ii. Work is a work made for hire 1. Works by employees within the scope of their employment 2. Certain specially ordered or commissioned works a. Express agreement in writing iii. Joint authors with equal, undivided interests iv. Work is a collective work 1. Author of the collective work has a thin copyright in the work as awhole c. No definition of author Sole authorship a. Andrien v. Southern Ocean County Chamber of Commerce Joint works a. A joint work is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole (17 USC 101) b. If a work is deemed to be a joint work, then all co-authors own equal shares in the work unless they have agreed to the contrary i. Even if it is clear that their contributions are not equal ii. Each co-author may grant non-exclusive licenses to others 1. Have to share property c. The authors of a joint work are co-owners of copyright in that work (17 USC 201(a)) d. Is there a requirement beyond that of two or more people having the "intention that their contributions be merged into inseparable or interdependent parts of a unitary whole" (statutory language)? i. Equal interest in work no matter how unequal their contributions were ii. 2nd and 7th Circuits: each author must have further intent to acknowledge the other author(s) as coauthor(s) 1. The party claiming to be an author must prove that both parties intended each other to be joint authors iii. 9th Circuit (Aalmuhammed v. Lee) minority 1. We are textualists 2. Text talks about author - author must superintend the work 3. Other factors: coauthors make objective manifestations of shared intent to be coauthors e. What happens if someone has made independently copyrightable contribution to a work without any explicit agreement, and is denied coauthor status? i. Implied non-exclusive license ii. Subject to less formality iii. Compensation by quantum meruit 27

II. III.

IV.

f. Twelfth Street Rag case (Shapiro, Bernstein, & Co. v. Jerry Vogel) i. The requisite intent to create a joint work did not have to be that of the original composer ii. The intent of the publishing company which acquired the composition and subsequently commissioned the lyrics to create a joint work would suffice g. Gaiman v. Mcfarlane i. Each co-author must contribute expression, and not mere idea 1. Such expression need not be independently copyrightable Works made for hire a. Works created by an employee within the scope of employment OR commissioned works (exclusively requires a written agreement) (17 USC 101) b. The initial ownership of a work sometimes vests in the employer of the person who would otherwise be considered the author of that work c. Subject to different copyright terms (not authors life plus 70 years) i. 95 years from first publication or 120 years from creation 1. Whichever expires first d. Rationale i. Because employers can be held liable for the bad consequences of their employees actions, they should also benefit from the good consequences as a matter of fairness ii. Employers have ultimate control over employees work, which makes it logical to deem them authors even when they do not exercise that control with regard to a particular work iii. Quid pro quo: ownership of creative works in exchange for employee advantages e. Does the written instrument need to be created before the work is created? i. 7th Circuit: Yes ii. 2nd Circuit: Not necessarily, if there was prior oral / implicit agreement f. Status as an employee (employee works) i. Factors (Community for Creative Non-Violence v. Reid) 1. Right to control 2. Actual control 3. Common law agency test a. Hiring partys right to control the manner and means of creation b. Skill required c. Provision of employee benefits d. Tax treatment of the hired party e. Whether the hiring party has the right to assign additional projects to the hired party f. Source of tools g. Location of work h. Duration of relationship ii. Works made for hire under the 1909 Act 1. Definition of a work-made-for-hire was broader, encompassing more works 28

V.

g. Scope of employment (employee works) i. Avtec Systems, Inc. v. Peiffer ii. Factors 1. Work was the type the individual was hired to perform 2. Work was created within the time and space limit of the job 3. Was the product motivated by a desire to serve the employers purposes? a. Software made at night can be within scope if it furthers employers purpose iii. Professorial exception 1. Tradition of treating professors as authors of their scholarship, in spite of their status as university employees 2. Rationale a. Academic freedom b. Personal independence of professors c. University is not in the best position to exploit professional writings h. Commissioned works i. 17 USC 101 definition: the work must fall into one of the nine categories enumerated in that part AND the parties must expressly agree in a written instrument signed by them that the work shall be considered a work made for hire ii. Commissioned works are types of work people dont make for themselves 1. Usually pay up front 2. Economic risk is on the person who hires, not the creator 3. For use as a. Contribution to a collective work b. Part of a motion picture or other audiovisual work, c. Translation, d. Supplementary work, e. Compilation, f. Instructional text, g. Test, h. Answer material for a test, i. Atlas iii. Morris v. Atchity i. Establishing work made for hire status i. Attempt to establish that the creator was an employee ii. Apply law of agency (case-by-case fact inquiry) iii. Argue that work was specially commissioned (must fall into a category) iv. Argue joint authorship Government and legally binding works a. U.S. government ownership of copyright i. Section 105 operates like the work made for hire doctrine: it divests the officer or employee of copyright ownership of works of which he or she would otherwise be considered the author 29

ii. U.S. government works enter into the public domain 1. They are simply not eligible for copyright protection iii. The U.S. government can hold copyrights that are transferred to it iv. Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise (17 USC 105) 1. A work of the United States Government is a work prepared by an officer or employee of the United States Government as part of that persons official duties (17 USC 101) b. State government ownership of copyright i. States cannot claim copyright in primary legal materials such as judicial opinions and statutes ii. With regards to other types of material there is no legal obstacle to state ownership c. Ownership of legally binding works i. Veeck v. Southern Building code Congress Intl, Inc.

Transactions
I. Introduction a. Assignments, licenses, and contracts involving works of authorship i. Not including a non-exclusive license 1. An exclusive license grants permission and makes that permission exclusive, while a non-exclusive license only grants permission b. Ownership of copyright can be transferred in whole or in part via legal means of conveyance, and can be given by a will c. Difference between copyright property right and material object property right i. If an artist sells a unique painting, the artist is still the owner of the copyright although the buy is now the owner of the object d. Assignment and exclusive licenses require the transfer to be in writing i. Nonexclusive licenses need not be in writing and they may be implied by the circumstances e. Transfers of copyright always involve one or more of the exclusive rights of copyright i. A license may provide a right to perform a work, but not to reproduce it or to prepare a derivative work f. Four questions i. What transfers are recognized? ii. What formalities are required for transfer? iii. How do we resolve conflicts between two transfers? iv. How do we interpret ambiguous transfers? A transfer of copyright ownership . . . is not valid unless an instrument of conveyance, or a note or memorandum of the transfer is in writing and signed by the owner (17 USC 204(a))

II.

30

III.

IV.

V.

Finding the owner a. Can be hard to find the owner of copyright i. No requirement of publication with notice 1. A work published without any indication of the identity of the copyright claimant may still be under copyright ii. No renewal 1. Renewal is automatic for all works copyrighted between 1964 and 1977 (1992 Copyright Renewal Act) 2. No renewal requirement at all for works created in or after 1978 (1976 Copyright Act) iii. Longer terms b. Orphan works: copyrighted works of which the owners cannot be found i. Copyright Office of the U.S. Report on Orphan Works 2006 ii. Orphan Works legislation has been introduced a number of times, but never passed 1. Recent bills provided that they would not take effect until 2013 unless Copyright Office certified earlier that at least two privatelyrun searchable image databases were available 2. House bill required user to file Notice of Use with Copyright Office to benefit from limitations on remedies 3. Major opposition: photographers, graphic designers, textile designers Indivisibility under the 1909 Act a. Doctrine of indivisibility of copyright rejects partial assignments of copyrights i. Requires a proprietor or assignee of a copyright to hold nothing less than all the rights in a copyrighted work b. A transfer of the entire copyright in a work did not need consideration to be enforceable i. Transfer of property, not a contract ii. The transfer of anything less than the entire copyright (in time, geographic area, rights) was merely a license, and hence a contract c. Standing: only an assignee of the entire copyright could bring an infringement suit d. Notice: had to be given in the name of the author or an assignee of the entire copyright i. Notice in the name of a licensee was ineffective and could result in loss of the copyright e. Necessary formalities: signed writing required for assignment of entire copyright, not for anything less f. Revocability: licenses only irrevocable if in exchange for consideration i. Transfers can be gifts g. Nontransferability of licenses: licenses presumed to be personal to the licensee Divisibility under the 1976 Act a. Copyright is divisible by right, time, and geographic area (201(d)(2)) b. Any of the exclusive rights comprised in a copyright may be transferred and owned separately i. Can carve up copyright ownership as much as you want 31

VI. VII.

ii. This is usually done through licenses c. Standing: the owner of any exclusive part of a copyright may sue for infringement of that part i. Nonexclusive licensees still cannot bring infringement suits (501(b)) d. Notice: For works published after 3/1/89 (effective date of BCIA), notice is optional, but does foreclose innocent infringer defense (401(d), 402(d)) i. Under 404(a), single notice in collective work suffices for all contributions e. Necessary formalities i. Under 204(a), 101: 1. A transfer of exclusive copyright rights is valid only if: a. In writing and b. Signed by the owner of the rights conveyed ii. Nonexclusive rights may be transferred orally iii. Effects Associates v. Cohen 1. An oral attempt to transfer copyright or an exclusive license will be treated as a nonexclusive license 2. Default rule: terms will be independent covenants rather than conditions 3. Acceptance of partial payment will preclude revocation of license f. Revocability: nonexclusive rights revocable if no consideration g. Transferability: nonexclusive rights may still be presumed to be nontransferable (conflict of authority) h. Semantics i. Assign: used in connection with the transfer of an entire copyright 1. Of all the rights granted by copyright law with respect to a particular work ii. License: used in connection with the transfer of anything less than all of those rights Breaching and infringement a. Jacobsen v. Katzer Alternative copyright licensing movements a. Use copyright law and licensing to promote alternative visions of the production, distribution, and use of software and other creative works b. Open software: keeping source code available so that others can see how a program is written, learn from it, and modify it c. Copyleft i. Use of copyright licensing to keep software free even after it has been modified and to provide an incentive for authors of modifications to keep those modifications free as well ii. Viral or recursive licenses 1. Include terms which mandate the use of the license with successive generations of modifications to a work

32

VIII.

IX.

d. Creative commons licensing i. Formulated a number of licenses that allow creators to retain certain rights (i.e. the right to attribution or the right to control commercial uses) while allowing other uses of their works ii. Wikipedia is an example Recording and title assurance a. Transfers may be recorded b. Recording serves as constructive notice Scope of copyright licenses a. New technologies b. Statutory presumptions i. New York Times Co. v. Tasini (could a contract allowing a freelance writer's article to be included in the N.Y Times also allow the article to be posted online?) 1. Oral contract granting first publication rights 2. "Judges look at authors like special wards of the court, similar to children or drunk sailors"

Copyright Duration and Related Limitations on Transfer Duration

I. Current scheme: works created on or after January 1, 1978 a. 1976 Act: term of the authors life plus 50 years i. Works published or registered before January 1, 1978 would be protected for a maximum of 75 years from the date of publication or 100 years from the date of creation, whichever comes first b. Replaced the 1909 Acts maximum 56-year term i. (28 years with a renewal term of 28 years) c. Sonny Bono Copyright Term Extension Act of 1998 i. Extended the term of all existing and future copyrights by a period of 20 years ii. Retroactively extended terms of previously granted copyrights to a maximum of 95 years 1. Added 20 years to the 75 years the 1976 Act had given to pre-1978 copyrights iii. One of the purposes: harmonize US terms with EUs terms iv. Copyright in a work created on or after January 1, 1978 . . . endures for a term consisting of the life of the author and 70 years after the authors death d. Milne v. Stephen Slesinger e. No works were removed from the public domain f. All copyrights run until the end of the calendar year in which they would otherwise expire g. Joint works i. Life of last author plus 70 years h. Set term of 95 years for some works i. Anonymous works, pseudonymous works 33

II.

III. IV.

V.

i. Works made for hire i. 95 years from the date of first publication or 120 years from the date of creation, whichever expires first (17 USC 302(c)) j. Justification for longer copyright i. Increased life expectancy ii. Longer commercial life of many works iii. Short copyright terms dont really benefit the public and may actually restrain dissemination of works iv. Elimination of the need for renewal applications 1. Eliminate need to focus on technicalities v. Compensation for the abolition of common law copyright vi. Harmonization with international copyright norms 1. Made it possible for the US to join the Berne Convention k. Constitutionality of unlimited term renewals i. Constitution: "limited terms" for copyright 1. After the term expires, the public domain falls into the public domain ii. Eldred v. Ashcroft 1. The Sonny Bono CTEA is constitutional Filing for renewal a. Under the 1909 Act, it was necessary to file a renewal certificate during the last year of the initial 28 year term to secure the 28 year renewal term b. The 1976 Act did not change that requirement i. For works copyrighted before 1978, it remained necessary to file for renewal in the 28th year to get the renewal term c. In 1992, Congress made renewal automatic i. For works copyrighted from 1964 to 1977, renewal is automatic Works published before 1923 a. No longer under copyright in the public domain First U.S. copyright statute (1790) a. Potential term of 28 years i. 14 year initial period from publication ii. 14 year renewal period b. 1831: same renewal period, increased initial term from 14 to 28 years 1909 Act a. Initial term of 28 years from publication (or registration for some unpublished works) b. 28 year renewal period

34

DATE OF WORK

PROTECTION BEGINS

DURATION General Rule: Life of author + 70 years Joint Works: Life of last surviving author + 70 years Works For Hire, Anonymous & Pseudonymous Works: 95 years from publication or 120 years from creation, whichever is shorter

Created 1/1/78 & after

On date of fixation in tangible form

Created before 1978, but published between 1/1/78 & 12/31/2002 Created before 1978, but not published

Upon creation under common law; 1/1/78 under 1976 Copyright Act Upon creation under common law; 1/1/78 under 1976 Copyright Act Upon publication with copyright notice (if published without notice, may be in public domain) In public domain Upon publication with copyright notice

Life of author + 70 years or 12/31/2047, whichever is longer Life of author + 70 years or 12/31/2002, whichever is longer 28 year initial term + 67 year automatic renewal term

Published from 1964 to 1977

Published from 1923 to 1963 (copyright not renewed) Published from 1923 to 1963 (copyright renewed)

Expired 28 year initial term + 67 year renewal term (renewal registration was filed during 28th year of initial term) Expired

Published before 1923

In public domain

Related Limitations on Transfer

I. If authors made bad deals, they/their successors get three possibilities to renegotiate before the end of the copyright term a. Renewal b. Extension-windfall-recovery terminations of pre-1978 transfers 304(c)-(d) c. Second-bite terminations of post-1977 transfers 203(a) Renewal a. Fred Fisher: If author survives to beginning of renewal period, advance agreement to assign renewal period is enforceable b. Miller Music: If author does not survive, successors designated by Copyright Act take free of advance agreements to assign i. Under 1992 Act, if file optional renewal within last year of initial term, renewal rights will vest as of time of filing c. Stewart v. Abend: If successors take renewal period due to death of author, authorized derivative works made during initial term cannot continue to be exploited without successors permission 35

II.

III.

IV.

V.

i. Under 1992 Act, this is only true if file optional renewal; if fail to file, derivative works can be exploited during renewal term without successors permission Extension-windfall-recovery a. Purpose: to allow authors to share in the windfall created when Congress extended renewal term to 47 years, and then 67 years b. Applicable to transfers made before 1/1/1978 (effective date of 1976 Act) c. Timing i. Involves termination windows and filing windows in advance of chosen termination dates ii. Termination windows 1. 304(c) termination window: 56-61 years after copyright was secured 2. 304(d) Additional termination window: 75-80 years after copyright was secured if: a. 56-61 year window expired before the passage of the CTEA in 1998, and b. Had not exercised termination right within that window iii. Filing windows 1. Filing window: between 2 and 10 years before chosen date within termination window Second-bite terminations of post-1977 transfers 203(a) a. Purpose: to allow authors to renegotiate deals that turn out to have produced unexpected benefits for assignees and licensees b. Applicable to transfers made on or after 1/1/1978 (effective date of 1976 Act) c. Timing i. Termination window between 35-40 years after the transfer was made 1. Or in the case of publication rights, the earlier of 35 -40 years after publication or 40-45 years after the transfer ii. Filing window 2 -10 years before chosen termination date Works for hire a. The ability to avoid termination of transfer rights

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106 Rights

The Reproduction, Distribution, and Adaptation Rights, and the Visual Artists Rights Act Reproduction Right
I. II. III. Owners of copyright have the exclusive right to do and to authorize reproduction of the copyrighted work in copies or phonorecords (17 USC 106(1)) Not limited to public acts a. A defendant can infringe by making a copy alone in her office Exceptions to the reproduction right a. Most important general limitation: only encompasses act of fixation in additional copies b. 107: fair use c. 117: three exceptions for copies of computer programs made as an essential step in using those programs d. 113(c): pictures/photographs of useful articles that have been offered for sale or distribution to the public, if the pictures or photographs are used e. 108: libraries and archives for the purposes of research and archiving f. 112: ephemeral recordings g. 121: copies of literary works made in specialized formats exclusively for blind and disabled people

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Distribution Right
I. 106(3): owner of copyright has the right to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending Meaning of distribution to the public a. Private sale or gift would not infringe b. Capitol Records Inc. v. Thomas i. Merely making available copyrighted material by connecting a computer on which copies are located to the Internet does not count as a distribution WIPO Copyright Treaty a. WCT Art. 6(1): Authors of literary and artistic works shall enjoy the exclusive rights of making available to the public of the original and copies of their works through sale or other transfer of ownership. b. WPPT Art. 8(1): Performers shall enjoy the exclusive rights of making available to the public of the original and copies of their performances fixed in phonograms through sale or other transfer of ownership. First sale doctrine a. Once you buy a copy, have a right to the physical copy i. Can distribute or display it (not copy, adapt, or publicly perform it, unless protected by fair use, permission, or something else) ii. Exceptions to this rule 1. Sound recordings and computer programs a. Restriction applies to rental or lending for commercial exchange 2. Provision excludes nonprofit schools and libraries 3. Exception does not apply to computer programs embodied in machines, where the program cannot be copied in ordinary operation (cars to microwave ovens) a. Videogame players also contain software that runs them 4. Audiobooks a. Record rental exception does not apply to audiobooks, so that businesses may rent audiobooks without infringing (Brilliance Audio v. Haights) i. Court saw the question as whether the exception to first sale applies to all sound recordings or sonly sound recordings of musical works 1. Relied on statutory language b. The owner of a lawfully made copy or phonorecord may sell or otherwise dispose of that copy or phonorecord (17 U.S.C. 109(a)) and may display the copy to the public (17 U.S.C. 109(c)) c. Protects only the owner of a particular copy or phonorecord i. Someone who rented a video cannot rent it to someone else d. Copy must have been lawfully made i. If the copy was an infringing copy, the owner would have no rights under first sale 38

II.

III.

IV.

e. Importation i. First sale authorizes the owner of a lawfully made copy to import that copy (Quality King Distributors v. LAnza) ii. Despite the fact that 602 provides unauthorized importation of copies or phonorecords infringes the public distribution right iii. Holding was limited to reimportation of copies lawfully made in the U.S. 1. Whether first sale protects importation of authorized copies made outside the U.S. remains an open question 2. Some courts have held that first sale does not apply to copies made overseas, because they are made beyond the reach of U.S. copyright law and as such are neither lawful nor unlawful

Adaptation Right
I. Right to make a derivative work

Public Performance and Display Rights Public Performance Right

I. Public performance a. In the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly (17 U.S.C. 106(4)) b. 101: to perform or display a work "publicly means i. To perform or display it 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 tis 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 . . . Performance: recite, render, play, dance, or act it either directly or by means of any device or process Most prominent omission from list of works: sound recordings a. Percentage of top 100 Billboard songs written or co-written rose from 7 to 88% from 1950 to 2004 Limitations a. Private performances do not implicate the rights of the copyright owner, never require a license, and are not infringing

II. III.

IV.

Display Right
I. To publicly display the work, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work (17 U.S.C. 106(5)) Display: to show a copy or 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 106(5) is mainly about transmissions 39

II.

III.

IV.

Limitations

Remedies Damages: Compensation and Restitution

I. Damages a. Greater of: i. Plaintiffs actual damages (lost profits) ii. Defendants profits b. Statutory damages i. Provide monetary awards to plaintiff even in the absence of proof of plaintiffs losses or defendants profits Actual damages a. Banff, Ltd. V. Express, Inc. b. Reasonable license fees as measures of damages even if cannot prove lost sales or opportunities to license? i. 2nd Cir.: yes ii. CA District Court: no c. Recovery of damages and profits limited by three-year statute of limitations? i. 2nd and 9th Cir.: yes ii. 7th Cir.: no (if you can show continuing wrong) Profits a. Statutory damages

II.

III. IV.

Attorneys Fees
I. Plaintiffs must have registered the infringed work before the commencement of the infringement

Equitable Relief
I. Equitable relief a. Permanent i. Injunctions against infringement ii. Destruction or disposition of infringing copies and tools b. Provisional: maintain the status quo while the case is being litigated i. Preliminary injunctions ii. Impoundment orders

Criminal Offenses
I. II. Criminal Infringement Other Infringement

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What gets copyright protection? o Ch. 2: original works of authorship What do you need to do to get it? o Ch. 2: fixation o Ch. 7: under 1909 Act, publication with notice What is the scope of copyright protection? o Ch. 3: limitations: facts, ideas, functionality o Ch. 4: exclusive rights (reproduction), copying in fact, substantial similarity o Ch. 5: fair use defense Who is the initial owner of copyright? How can copyright be licensed or transferred? How long does copyright protection last? Who is responsible for copyright infringement? o Ch. 6: secondary liability; safe harbors; access and technical protection measures What remedies can you get against infringers? What further rules are there about obtaining the assistance of courts

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