WSULS Copyright Fall 2012: Introduction to Basic Copyright Concepts

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Wayne State University Law School
Copyright Fall 2012
Rothchild

I. Introduction/Overview of Copyright Act

2 views on Copyright:

Right wing- thinks creations are your property, so there is a natural right to complete ownership of your
intellectual product
1. Rationale: The stronger the copyright, the more stuff will be produced because people will have
incentive to produce more things because it is protected

Left wing- copyright is an evil, its a monopoly.
Rationale: Copyright makes it more expensive for people to get access to works of authorship
We need some level, but the current version is too overprotective and only helps the Disneys of the
world

Two visions of copyright:

Natural rights of the author, aka moral rights
Because you created something you have a natural right to ownership regardless of what the law
says, and you hope the laws will promote that

Utilitarian considerations
We protect copyright because we want to give people an incentive to produce works of authorship

In US the basis is almost always utilitarian, in Europe its natural right basis

What do you have to do to get a valid copyright?
have to "fix" it in any tangible medium of expression: 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.
must be original
used to have to put copyright notice/register for protection (before 1989)

Copyright gives you 5 Basic Rights:
Right to Reproduce
(make copies)
Right to create
Derivative Works
Right to Distribute
Works
Right to Publicly
Display Works
Right to Publicly
Perform Works

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II. Basic hurdles of copyright protection: Fixation, Originality, and
Originality of Derivative Works

Three Requirements for Copyrightable Subject Matter
1) Fixed in a tangible medium of
expression
2) It must be an original work of
authorship
3) Copyright protection for a work
that is both fixed and original will
not extend to elements of the work
that constitute ideas, procedures,
and the like

Fixation

102 (a)- original works of authorship are copyrightable if they are fixed

o 102(a) states that a work must be fixed in any tangible medium of expression to be
protected by copyright.
o Under 101, a work is fixed if it is sufficiently permanent or stable to permit it to be
perceived, reproduced or otherwise communicated for a period of more than transitory
duration. A work consisting of sounds, images, or both, that are being transmitted, is
fixed for purposes of this title if fixation of the work is being made simultaneously with
its transmission.
Doesnt matter what medium, all that is required is a fairly material permanent
form so that it can be perceived with or without the aid of a machine.
Example: Thus, live radio and television broadcasts are embodied in a
''medium of expressionfrom which they can be perceived, reproduced,
or otherwise communicated,'' but the projected sounds and images are
ephemeral, and hence not ''fixed.''

Fritz v. Arthur D. Little, Inc. (1996) (pg 34)

Facts: Fritz gave a lecture. Kiefer added Fritz's lectures into his course. Fritz never fixed the lecture (not
tangible medium).

Issue: Whether there is a copyright in what is delivered orally?

Rule:
works created extemporaneously and not fixed in a tangible medium of communication are not
protectable( 101 definition of fixed)
o e.g., a speech that is delivered extemporaneously; a jazz or dance improvisation

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works may be fixed by someone other than the author, if authorized.
Holding:
Fritz doesn't meet the requirement for fixation.
Fritz did not fix his notes, they were just spoken orally
o If Kiefer independently created notes based on Fritz's oral "creations", then there's no
copyright infringement since it's not a copyrighted source.
Independent creation doctrine- theoretically possible for two authors to create
the same work independently (ex: same riff by two different musicians)
If Fritz had premade notes, then they would be fixed.
o But Fritz had implicitly authorized people to fix his creation by letting them take notes
during the lecture
What if Fritz had delivered the material orally, then Kiefer takes notes, then afterwards Fritz
writes it down?
o Fritz would be the author, because it is his independent creation, and it was eventually
fixed under his authority.
o If Kiefer wrote it down before Fritz fixed it, Kiefer would not be infringing copyright but
he would not be the owner/author.
However, as soon as its fixed, then the author (Fritz) owns the copyright.

Cartoon Network LLLP v. CSC Holdings, Inc. (2008) (pg 39)

Facts: Cablevision had a "remote storage DVR system": customers w/o a DVR system in their homes
could record cable programming on hard drives at a remote location and could access recordings via RS-
DVR software. Copyrighted works are "embodied" in the buffer period.

Issue: Is a transmission of 1.2 seconds long enough to be considered fixed?

Rule: Must be fixed for a period of more than transitory duration.
101( a work is fixed if it is sufficiently permanent or stable to permit it to be perceived,
reproduced or otherwise communicated for a period of more than transitory duration.)

Holding:
A TV program that remains in a buffer for 1.2 seconds is not fixed
o note: the courts interpretation of the 101 definition is questionable
The data here is transitory so it doesn't meet the requirement (only 1.2 seconds).
o class commentary: Transitory = it's about how long it can be perceived, not embodied.
What has to last for a sufficiently long period is not the copy, but the perception, reproduction,
or communication of that copy.
o Also, it's not Cablevision responsible for making these copies, it's the customers pushing
the record button.

Williams v. Arctic International (pg 55)

Facts: Williams (P) had three copyright registrations covering its Defender video game. One covered the
computer program itself and the other two covered the audiovisual effects displayed during the games
attract and play mode. D sells electronic components for video games, including a memory device
with a program virtually identical to Ps. D argues no infringement because Ps work fails to meet the
fixation requirement

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Rule: a computer game is fixed in the ROM chip that contains its code, even though the images
generated by the game code are transient
102(a) (either directly or with the aid of a machine or device)

Holding: Features in a video game that repeat themselves over and over are sufficiently permanent to
be considered more than transitory, the program that operates this function is fixed within the chips
of the game. Even though the images are transitory, its the same as an image in film, its fixed in the
read only chips.
Fixation requirement is met whenever the work is sufficiently permanent to permit it to be
reproduced or otherwise communicated for more than a transitory period
The memory device of the game satisfies the statutory requirement of a copy in which the work
is fixed, so the statute is satisfied

U.S. v. Martignon (2007) (pg 49)

Facts: Martignon owned a record store in NYC. The gov alleged that he sold unauthorized recordings of
live musical performances both at his store and via mail order. He was indicted for violating a federal
criminal statute forbidding such activities.

Rule: Certain live performances are eligible for protection under 1101 of Title 17, which is not a
copyright provision
it is illegal to fix a live musical performance without authorization; 1101
the criminal version of 1101 is constitutional: enactment under Commerce Clause doesnt
conflict with Intellectual Property Clause power

17 USC 1101: provides a civil cause of action for a performer whose performance was recorded
without her consent
18 USC 2319A: provides criminal remedies to the government

Holding:
The law allows the gov't (in criminal version of this) to go after people making unauthorized
fixations since the Constitution enables Congress to "secure rights."
o "Secure" = create, bestow, and allocate, rather than adding protection for separately
created and existing rights.
o The law creates a power in the gov't to protect the interests of the performers, but it
does not grant the performer the right to exclude others from the performance.

17 USC 1101: This anti-bootlegging provision applies only to live musical performances
o the statute creates a cause of action against any person who, without the consent of the
performers, takes any of the following actions:
(1) fixes the sound, or sounds and images of a live musical performance in a
copy or phonorecord, or reproduces copies or phonorecords of such a
performance from an unauthorized fixation;

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(2) transmits or otherwise communicates to the public the sounds, or sounds
and images, of a live musical performance; or
(3) distributes, offers to distribute, sells, offers to sell, rents, offers to rent, or
traffics in any copy or phonorecord fixed as described in paragraph (1),
regardless of whether the fixations occurred in the US.
Despite its placement in Title 17, 1101 is not, strictly speaking, a copyright statute, because live
performances are not fixed in a tangible medium of expression, and therefore do not qualify as
writings under the Copyright Clause.
o The legislative history of 1101 specifically invokes Congresss authority under the
Commerce Clause.
o Nonetheless, courts and commentators have questioned the constitutionality of 1101,
rasing the question whether Congress should be permitted to invoke its Commerce
Clause Power in order to enact copyright-like protection that exceeds Congresss powers
under the Copyright Clause
Originality

The second requirement for copyrightability is that a work be an original work of authorship.
17 U.S.C 102(a).
Originality is both a constitutional and a statutory requirement
The 1976 Act does not indicate exactly what Congress meant by original works of authorship.
The task of interpreting the scope of the statutory grant of copyright protection was left to the
courts.

Basic Requirements For Originality:
independent creation + at least some minimal creativity; Feist Publications, Inc. v. Rural
Telephone Service Co. (1991)

A work's originality itself must exhibit a modicum of intellectual labor in order for the work to constitute
the product of an author. Still, such intellectual labor may be sufficient to establish authorship even if
only slightly greater than de minimis.

Any distinguishable variation of a prior work will constitute sufficient originality to support a copyright
if such variation is the product of the author's independent efforts, and is more than merely trivial. This
doctrine owes its origin in large part to the words of Justice Holmes in Bleistein v. Donaldson
Lithographing Co.

It would be a dangerous undertaking for persons trained only to the law to constitute
themselves judges of the worth of pictorial illustrations, outside of the narrowest and most
obvious limits.

The smaller the effort (e.g., two words) the greater must be the degree of creativity in order to claim
copyright protection.

If two people create the same (or substantially similar) work independently, they may both hold a
copyright on it: novelty is not required (Feist Publications)

Bleistein v. Donaldson Lithographing Co. (1903) (pg 60)


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Facts: Donaldson Lithographic Co. copied in reduced form three chromolithographs that Bleistein had
prepared to advertise Wallaces circus.
Ds argument: This is drawn from life rather than being generated from the imagination

Rule/Holding:
Artistic merit is irrelevant:
o a poster created to advertise a circus has sufficient originality to be protectable under
the Intellectual Property Clause, regardless of any judgments of the artistic merit of the
work
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.
We do not want the government putting a stamp on what constitutes
art.
Copying from real life doesnt defeat originality, since there is always something original in ones
personal reaction to nature
It is not infringing to copy a public-domain item, even if somebody else has already copied it
o Others are free to copy the original. They are not free to copy the copy.
Question of what is original. If you took a picture of Oscar Wilde similar to the
one in the book, you would be infringing on a copyright because you are copying
the original authors original expression.

Prunt v. Universal Music Group, Inc. (pg 65)

Facts: Plaintiff submitted songs for feedback to Universal and alleged that his songs were copied by
Universal Artists.

Rule:
Song titles and short phrases lack sufficient originality to be protectable

Holding:
Why are these things not protected?
o Themes: Not original, used over and over again. You also need certain themes for
movies/songs. E.g. some movies need car chases...if they were copyrighted, then we
couldn't have any more of those movies.
However, if someone copied a lot of unique elements of a particular car chase,
that might be infringement.
The theme itself is not protected, its just an idea (lack of originality and expression).

Policy:
If we grant people a monopoly on these short phrases, it takes too much stuff out of the
available stock in creating new works. And its counterproductive; you would have to get a
license, its inefficient, and bad public policy

Mannion v. Coors Brewing Co. (2005) (pg 72)

Facts: Free-lance photographer (P) took picture of a basketball star. Ds imitated the picture in beer
billboard advertisement.


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Issue: Whether and to what extent what was copied (a photograph) is protected.

Rule: a photograph may satisfy the originality requirement through originality in rendition, timing, or
subject creation
note: timing alone is unlikely to supply the requisite originality

Holding:
3 elements of photographs that make them protectable:
(1) Rendition:
originality of the lighting/shading/angle/use of filters/etc not the scene itself but the effects
that result from all these photography decisions (problematic?)
(2) Timing:
Being at the right place at the right time. Hard work, but not sure if it's original. (e.g. picture of a
fish jumping into a bear's mouth) a little problematic
(3) Creation of the subject:
photographer created the subject and then photographed it so that part is original makes
more sense

Originality and Derivative Works

( 101) Derivative Work: Is a work based upon one or more preexisting worksin which a work may
be recast, transformed, or adapted. A work consisting of editorial revisions, annotations elaborations,
other modifications, which, as whole, represent an original work of authorship. (e.g. translation, musical
arrangement, dramatization, fictionalization, etc).
Based on a preexisting work, not merely inspired by it, but must actually incorporate original
expression in some form. A review that incorporates plot summary and quotes would be
derivative.
o No matter how much and how little, the copyright only protects the new stuff for the
derivative author, but if a derivative work is an infringement it isnt protected.
Originality of Derivative Work: Is there enough originality to support a copyright? Just look at what
derivative author contributed

Under 103, copyright in derivative works extends only to the original material contributed by the
person who created the derivative work.
If the underlying work is in the public domain, it remains so.
If the underlying work is protected by copyright, that copyright is independent of, and
unaffected by, the derivative work copyright.

L. Batlin & Son, Inc. v. Snyder (1976) (pg 83)

Facts:
Uncle Sam mechanical banks were made a long time ago. D obtained copyright of a plastic bank
as a sculpture. It is plastic and shorter than the original, but otherwise the same.
Batlin saw these plastic versions of an Uncle Sam piggy bank that D made, and he wanted to
make the same thing.
o He commissioned someone else to copy Snyder's version of the bank.
Defendant argued: You didn't put enough originality in it to have a protected work. -->

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Infringement here?

Rule:
A reproduction of a work must contain a substantial variation (more than trivial), to obtain
copyright protection
Underlying work of art may be in the public domain, but the reproduction must contain an
original contribution not present in the underlying work of art and be more than a mere
copy

Holding:
a copy of a public-domain Uncle Sam bank is found not to have sufficient originality to be
protectable
o Bank does not meet the requirement for originality, and so cannot be copyrightable
Although the test for originality is a low one, a replica must be more than a mere copy to gain
Originality in a derivative work requires original elements that are not merely trivial here the
plastic model made only subtle, trivial variations for functional reasons that were not sufficient
for copyright protection
o Any variation in the actual design here appears to be done out of making it cheaper to
produce rather than a decision for design.

Dissent: "Substantial variation" standard is too high. Should be "any distinguishable variation" of a
prior work instead. It only takes a small degree of creativity to qualify for a copyright, so it should be the
same for derivative works.

Policy:
Trivial differences: the court is concerned that if it grants copyright for trivial differences, then it
could allow one person to monopolize all public domain works, removing the public benefit.

III. Fundamental exceptions to copyright protection (Facts and Compilations; Abstraction and Ideas;
Characters and Plots)

102(b) of 1976 Act explicitly itemizes the aspects of a copyrighted work that are nonetheless not
covered by the exclusive rights granted under the law.

102(b) states that copyright protection for an original work of authorship does not extend to the
following 8 categories: idea, procedure, process, system, method of operation, concept, principle, or
discovery (courts don't analyze these separately except for "ideas") regardless of the form in which it is
described, explained, illustrated, or embodied in such work.

Facts and Compilations
101: A compilation is a work formed by:
o the [1] collection and assembling of preexisting materials or of data that are
o [2] selected, coordinated, or arranged in such a way that the resulting work as a whole
constitutes
o [3] an original work of authorship.
o The term compilation includes collective works.

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Feist Publications, Inc. v. Rural Telephone Service Co. (1991) (pg 99)

Facts:
After Feist took 1,309 listings from Rurals white pages when compiling Feists own white pages,
Rural filed suit for copyright infringement.

Rule: basic requirements for originality: independent creation + at least some minimal creativity
must have originality in selection/arrangement of the data to be copyrightable.

Holding:
To be copyrightable, a work must be original to the author and possesses at least some minimal
degree of creativity.
o Facts, which do not originate with authors, cannot be said to possess originality.
Factual compilations, on the other hand, may have been made by exerting the requisite
originality if the selection and arrangement are original.
Feist took from Rurals white pages a substantial amount of factual information. But Rural was
not the author of the names, towns, and telephone numbers it presented. Rural simply took the
data provided by its subscribers and listed it alphabetically by surname.
o An alphabetically arranged white pages is not even slightly creative.
o Rural expended sufficient effort to make the white pages directory useful, but there was
insufficient creativity to make original.
Because Rurals white pages lack the requisite originality, Feists use of the listings cannot
constitute infringement.

Low Standard of Creativity: Originality requires . . . some minimal level of creativity. Presumably, the
vast majority of compilations will pass this test, but not all will. *107+
Was there anything original about the listings going into the white pages?
o No, because the selection was just everyone living in a geographical area (already
required by law) and the arrangement was alphabetical (standard arrangement). No
copying of original elements.

Unfair to Compiler of Data?:
It may seem unfair that much of the fruit of the compilers labor may be used by others without
compensation. *T+his is not some unforeseen byproduct of a statutory scheme. . . . It is, rather, the
essence of copyright, and a constitutional requirement. The primary objective of copyright is not to
reward the labor of authors, but *t+o promote the Progress of Science and useful Arts. *103+

Note: look at what was copied, was the arrangement or the selection copied, or was it only a
fact or set of facts

Abstractions and Ideas (Idea/Expression Dichotomy)

Hoehling v. University City Studios, Inc. (1980) (pg 115)

Facts: Hoehling wrote a book about the destruction of the Hindenburg, advancing a theory that
sabotage caused the disaster. Ten years later Mooney published a literary novel advancing the same

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theory. The rights to Mooneys book were sold to Universal Studios. Hoeling sued for copyright
infringement, claiming Mooney copied the plot of his book.

Rule: "Where, as here, the idea at issue is an interpretation of a historical event, our cases hold that
such interpretations are not copyrightable as a matter of law."

Holding: Neither factual information nor interpretations of it can be subject to copyright. Hoehlings
theory was based on interpretation of historical facts, and such facts are not protected by copyright.
Suggests that only works explicitly duplicating prior works will infringe
o Factual information is in the public domain

Scenes a faire- (Things that arent ideas or facts) incidents, characters or settings which are as a
practical matter indispensable, or at least standard, in the treatment of a given topic.
o Because it is virtually impossible to write about a particular historical era or fictional
theme without employing certain stock or standard literary devices, scenes a faire are
not copyrightable as a matter of law
The Merger Doctrine: Applies when it is necessary for the second-comer to use the words of the
first because the idea may not be expressed in another way.

CCC Information Services, inc. v. Maclean hunter (pg 120)

Facts: Car valuations based on Maclean editors' predictions, based on a lot of info sources and their
professional judgment (not historical market prices or mathematical formulas which would be
facts/processes). Also statements of opinion rather than just facts.

Rule: These valuations are protectable because it wasnt just a matter of writing a name and address,
they were coming up with these valuations using their own creative and unique methodologies.

Holding:
District Court: These valuations are protectable
o the district court was simply mistaken in its conclusion that the Red book valuations,
were like the telephone numbers in Feist, pre-existing facts that had merely been
discovered by the Red book editors. *121+
Are these different from facts?
o the valuations themselves are original creations of Maclean.
o Usually with databases, it is only the selection and arrangement that is copyrightable

Hard ideas: those ideas that undertake to advance the understanding of phenomena or the
solution of problems *145+- probably not copyrightable
Soft ideas: those, like the pitching form *in Kregos], that do not undertake to explain
phenomena or furnish solutions, but are infused with the authors taste or opinion. *145-46]

CHARACTERS AND PLOT

Nichols v. Universal Pictures (pg 125)

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Facts: Abies Irish Rose-play about Jewish-Irish Catholic romance. Universal tried to buy the rights, but
negotiations broke down. Universal hired a screen writer and gave them a copy of Nichols script and
asked its writers to write a movie similar to it but not like it, because they couldnt copyright rights to
Abies Irish Rose

Rule:
the "abstractions" approach: you can describe the plot in more/less abstract ways. Depending on how
abstract your description is, copying your description isn't infringement. The more general the premise
is, the less likely it'll be protected. Nobody's been able to establish that boundary clearly though.
In some point of generality you cross from protected expression to unprotectable ideas
Depending on how abstract your description is, then you may only be copying the idea (very
abstract) or expression
It will always be a matter of judgment whether a given amount of nonliteral copying amounts to
infringement- Judge Hand

Holding:
No actionable copying here: In the two plays at bar we think both as to incident and character,
the defendant took no moreassuming that it took anything at allthan the law allowed.
[128]
No verbatim copying of lines, only a similarity of plot and characters (Irish and Jewish family,
their kids falling in love and having animosity between the families).
However, just because there is not literal copying, it does not mean that there is no
infringement
o Once you get away from literal copying then its a coin toss how the case will come out
o the right of protection can't be limited literally to the text.
It is of course essential to any protection of literary property, whether at
common-law or under the statute, that the right cannot be limited literally to
the text, else a plagiarist would escape by immaterial variations. That has never
been the law, but, as soon as literal appropriation ceases to be the test, the
whole matter is necessarily at large, so that, as was recently well said by a
distinguished judge, the decisions cannot help much in a new case. [127]

Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., Inc. (pg 134)

Facts: Honda del sol commercial features character and scene thats clearly a James Bond knockoff.

Rule:
2 tests

(1) Sam Spade "story being told" test --> does the character constitute the "story being told" or is the
character just a chessman in the game of telling the story? (here, James Bond makes the movie).
Certain character traits developed that are unique to the character.
"Audiences don't watch Tarzan, Superman, Sherlock Holmes, or James Bond for the story, they
watch these films to see their heroes at work."
*I+t is clear that James Bond films are unique in their expression of the spy thriller idea. A
filmmaker could produce a helicopter chase scene in practically an indefinite number of ways,
but only James Bond films bring the various elements Casper describes together in a unique and
original way. *136+

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(2) "Character delineation test"
Nichols- the second circuit has adopted an alternative test for determining whether dramatic
characters are protectable under copyright law
copyright protection is granted to a character if it is developed with enough specificity so as to
constitute protectable expression
o This has been viewed to be a less stringent standard than Sam Spades story being told
test

Holding:
"Scenes a faire" doctrine- sequences of events that necessarily result from the choice of
setting or situations, known as scenes a faire, and stock themes or settings that often arise in
works of a particular genre are not protected.
...chase scenes usually aren't copyrightable.
Court holds that James Bond chase scenes are copyrightable because James Bond is in
them. (Rothchild: seems kind of odd. What if you had a chase scene with some
random German guy in a BMW? Not copyrightable because James Bond isn't there?
Shouldn't give people a monopoly on these stock plots).
However, James Bond films represented a fresh and novel approach because they
hybridized the spy thriller with the genres of adventure, comedy (particularly, social
satire and slapstick), and fantasy
Because many actors can play Bond is a testament to the fact that Bond is a unique
character whose specific qualities remain constant despite the change in actors - a
James Bond film without James Bond is not a James Bond film

Literary characters vs. visually depicted: literary characters may have lots of details/expressions added
by the reader (most characters aren't described with that much detail that every reader will have the
same image), but characters that have been graphically depicted such as Mickey Mouse are more easily
protected (Mickey Mouse has been fleshed out more).
Is James Bond a graphical or literal character? Both.
9th Circuit hasn't really said which test is correct, so this Court applies both tests. (Doesn't make
too much sense...if anything passes the "story being told" test, it will pass the abstraction test
too. Pretty conclusory).

Merger

When the idea and its expression are . . . inseparable, copying the expression will not be barred,
since protecting the expression in such circumstances would confer a monopoly of the idea upon the
copyright owner free of the conditions and limitations imposed by the patent law. *144+
quoting Herbert Rosenthal Jewelry Corp. v. Kalpakian
When the idea and its expression are inseparable, copying the expression isn't barred
(protecting the expression in this case would confer a monopoly of the idea, which isn't the role
of copyright).


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CCC Information Services v. Maclean Hunter Market Reports, Inc. (2nd Circuit) (1994) (pg 143)

Facts:
the takings by CCC from the Red Book are of virtually the entire compendium
They are not copying a few entries from a compilation, but rather the copying is so
extensive that CCC effectively offers to sell its customers Macleans Red book through
CCCs database.
D says ideas here = selection of genres in compilations (e.g. best value restaurants). Expression
= valuations.

Rule:
2 types of ideas:
"hard" ideas: ideas that advance the understanding of phenomena or solution of problems
o if hard idea, Court doesn't let the copyright protection apply (Rothchild: seems kind of
perverse).
"soft" ideas: ideas (like pitching form here) that don't purpose to explain certain phenomena or
give solutions, but are infused with the author's own taste/opinion.

Holding:
Car valuations are soft ideas:
The consequences of giving CCC the benefit of the merger doctrine are too destructive
of the protection the Act intends to confer on compilations, without sufficient benefit to
the policy of copyright that seeks to preserve public access to ideas. *146+
In cases of wholesale takings of compilations, a selective application of the merger
doctrine, withholding its application as to soft ideas infused with taste and opinion,
will carry out the statutory policy to protect innovative compilations without impairing
the policy that requires public access to ideas of a more important and useful kind.
In this circuit, consideration of the merger doctrine takes place in light of the
alleged copying to determine if infringement has occurred, rather than
analyzing the copyrightability of the original work.

Policy
If this compilation isn't protectable, no compilations will be protectable, and Sec. 103 of the
Copyright Act will be illusory.
It is apparent that virtually any independent creation of the compiler as to
selection, coordination, or arrangement will be designed to add to the
usefulness or desirability of his compendium for targeted groups of potential
customers, and will represent an idea. *145+
i.e., expression of idea
D: Idea is "utility of the nine selected stats in helping a fan predict the outcome."
Ct: idea is the "general idea that stats can be used to assess pitching performance."

Morrissey v. Procter & Gamble Co. (1st Cir.) (n.2 on pg 148)

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Facts: P suing D because instructions for a sweepstake contest copied almost verbatim

Rule:
Merger Doctrine- where there are limited ways to express an idea, the idea and the expression
merge and a second party is free to copy the expression in order to have access to the idea.
1) Merger shields verbatim copying from liability even when limited alternative
expressions is available,
2) and merger is not just a defense to liability, but renders the expression
uncopyrightable: for example copyright in the sweepstakes instructions could not be
registered.

Holding:
Court finds that though the contest rule was original, but providing copyright protection is
inconsistent with the public interest. There are a limited way to express this rule, dont want P
to get a monopoly on contest design just because theyve locked up the wording.
If they gave copyright protection to these instructions, what would happen? No one would
be able to have a basic sweepstakes asking for name/number/etc. The law says people
shouldn't have to waste their time to change their wording in something that accomplishes the
same thing. Merger idea works here.
When the uncopyrightable subject matter is very narrow, so that the topic necessarily
requiresif not only one form of expression, at best only a limited number, to permit
copyrighting would mean that party or parties, by copyrighting a mere handful of forms,
could exhaust all possibilities of future use of the substance.

Blank Forms

Baker v. Selden (1879) (Supreme Court) (pg 150)

Facts: Selden copyrighted a book in which he used an introductory essay to explain his system of
bookkeeping after which he included the forms needed to put the system to use. Baker subsequently
began selling forms with differently arranged columns that achieved the same result. Selden sues his for
infringement.

Rule:
"Blank form" rule: Blank account books aren't the subject of copyright. Courts look at the forms and
see if there's enough conveyance of information in the forms to take them out of this rule.

Holding: The protection afforded by a copyright on a book explaining an art or system extends only to
the authors unique explanation thereof and does not preclude others form using the system or the
forms necessarily incidental to such use.
When an art taught by a book can't be used without employing the methods/diagrams used to
illustrate the book, they're considered necessary incidents to the art and thus in the public
domain - no protection. Merger of idea and expression; expression loses its copyright.

15
Copyright does not extend to systems, just the original expression to explain those systems.
o If the law doesnt protect the system, then the diagrams necessary to project the
system arent copyrightable either.
Drawing the line between protected expression and unprotected systems is
extremely difficult.

Policy
We don't want to extend copyright where it gives people a monopoly of ideas. Don't want to give
people an effective patent like this.

Utopia Provider Systems, Inc. v. Pro-Med Clinical Systems, L.L.C. (2010) (eleventh circuit) (pg 158)

Facts: Pro-Med uses a paper template (Pro-Med Maximus) to capture a patient/physician encounter,
and Utopia claims this is copying its own ED Maximus template.
Questions on the form included: where's the pain? how severe is it? did you have contact with
a sick person? etc.

Rule: relevant test is whether the forms convey any information
How does this sort of form convey information? asking the right questions (as opposed to dumb
questions); saying some things and not saying other things.
2 step test: 1) look to whether the headings are anything other than what would be expected on
a medical template, and 2) whether the terms actually convey info to the treating physician
(Rothchild: not sure how we'd get past the first test and not pass the second test).

Holding:
Court says it doesn't convey info - not protected.
Expert witness spoke to whether or not the form conveyed information. Is that how the Court is
supposed to decide a legal issue (this is the ultimate conclusion)? This isn't what an expert
witness is supposed to do. (This is a matter of law, to be decided by the judge. The expert
witness can only talk about factual issues, not legal ones).
o Does the form convey information? Any decent physician knows this information, but
the questions may be a good reminder (reminding them what to ask/check). Is this an
idea or expression?
o Idea = asking patients a bunch of questions to figure out what's wrong is not
protectable. But how about these specific questions?
o Is this form a compilation? It has a lot of words selected and arranged in a certain
way...there's a debate (footnote 18, p. 161).

Computer Programs
Definition: a set of statements or instructions to be used directly or indirectly in a computer in order to
bring about a certain result. 117 limits the copyright holders exclusive rights. Software owners can
make copies to adapt the software and make it run on their machines. They may also take whatever
steps are necessary to repair or maintain the software.

16
Policy: if protect expression, companies can price so that it is cheaper to buy the copy than write the
program, allows authors to protect investment. However, doesnt protect the underlying method of
operation if there is only one way to write commands, want others to be able to build on prior success.

Two Issues:
1) Whether computers should be protected? 2) Whether it was infringement if someone uses a
computer to view or interact with a work?

117. Limitations on exclusive rights: Computer programs
o Computer programs were copyrightable as literary works: literary works include: computer
programs to the extent that they incorporate authorship in the programmers expression of
original ideas, as distinguished from the ideas themselves.
o With the exceptions, under 117, computer programs are just like everything else in the
copyright statute
Unlike conventional literary works, there isnt a large body of work already in
the public domain

Source Code: Short hand code that people can
read intelligible to humans. Computers cant
read, they respond to electronic impulses saying
on or off.

Object Code: Code that a machine can respond to
that consists of endless strings of 1s and 0s
intelligible to computers but not to humans.
Translation is mechanical, not committing
authorship when it translates

o Copyright protects the program as long as it remains fixed in tangible medium of expression
but does not protect the electro mechanical functioning of the machine.
o Confusion of whether computer programs should be considered text or machine.
o Copyrights, Trade Secrecy or some new software specific intellectual property regime
reason copyright is said to be right regime is because it protects the code, and leaves
how the computer functions unprotected. If not limited to code then difficult to
differentiate the code from the method; describe it as causing the computer to do
something.

Apple Computer, Inc. v. Franklin Computer Corp. (pg 165)

Facts: Franklin made computers that were "Apple compatible". Its operating system copied Apple's so it
could use Apple's software/peripheral equipment. The district court denied Apples motion to
preliminarily enjoin Franklin from infringing the copyrights Apple held on 14 programs.
On appeal, the central contention by Franklin was that computer operating system programs, as
distinguished from application programs, are per se uncopyrightable, because such programs
are either a process, system, or method of operation.
o Franklin argues that Computer programs might be protectable if they're in source code,
but not in object code: source code has some English words, but object code is just 0's
and 1's. Franklin said that object codes aren't literary works (literary works are
copyrightable under sec. 102(a)) because the numbers don't mean anything to humans
and don't communicate directly to them.

Issue: If the operating system program is copyrightable, then this is infringement.

17
Difficult to separate function from expression in computer programs since they are primarily
functional.

Rule: court says "literary work" includes numbers and symbols; expands the common usage of "literary
works". So, all computer programs (either source or object code) are "literary works".

Holding:
17 U.S.C. Section 101: Def'n of a computer program - "computer program is a set of
statements/instructions to be used directly or indirectly in a computer." object code =
directly, source code = indirectly.
Franklin wasn't trying to copy the method, just the actual instructions (i.e. distinction between
idea and expression).
But, Apple isn't trying to copyright the method of instructing the computer to perform its
operating functions, but rather the actual instructions themselves.
Court compares the computer program to a book and finds that there is protectable expression.
o Court finds that Apple is protecting the expression by protecting its instruction, not the
method, though no principled distinctions can be drawn between an application and
operating system.
o Court says RAM is a material object that is a work of authorship, so it's copyrightable.
o The fact that the code has utilitarian function doesn't make it unprotectable, because if
other programs can be written to perform the same function, there's no problem.
o If other programs can be written or created which perform the same function as an
Apples operating system program, then that program is an expression of the idea and
hence copyrightable. *170]
The Court found that there was evidence suggesting that there were other
possible ways to write the operating system, so there wasn't a single expression,
and the doctrine of merger didn't apply.
Is there only a single way to express that idea of Apple's operating system? If there is, the two
will merge and there will be no protection. This issue is remanded to the Dist. Ct.

Franklin could have theoretically done some reverse engineering and developed their own program that
was still interoperable with Apple's products, but they chose instead to take the cheaper and easier
route of just taking what Apple had created. That was economically efficient for Franklin, but it didn't
justify their actions.

USER INTERFACE

A computer programmer may be able to replicate the user interface of another program
without replicating any of its code.
The question of the copyrightability- and in turn, the utility- of the user interfaces is thus
conceptually distinct from the same question concerning the underlying program.


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Lotus Development Corp. v. Borland Intl, Inc.

Facts: P sued D because copying the look and feel of its program rather than the underlying code.
Lotuss has a spreadsheet program for users to control via a series of menu commands. D introduced
their own program which had a virtually identical copy of the command hierarchy. D creates a program
that mimics the look but not the text/code. Lotus is trying to protect the look/feel/menu command
hierarchy.

Issue: Are the aspects of the user interface that was copied an unprotectable method of operation?

Rule: A computer menu command hierarchy is not copyrightable subject matter. A menu command
hierarchy is an uncopyrightable method of operation it provides the means by which users control
and operate a programs functional capabilities. It has a mechanical utility, an instrumental role, in
accomplishing the world's work

Holding:
The look/feel/menu command hierarchy is not copyrightable since D didn't copy any of the
original code (just the arrangement of the words on these menus).
o Just as it would be impossible to operate a VCR without buttons, it would be impossible
to operate a Lotus 1-2-3 without employing its menu command hierarchy.
Courts Reasoning:
1. A method of operation is the means by which a user operates something
2. The menu command structure is how a user operates 1-2-3
3. Therefore, the command structure is a method of operation

Applied art: when a design has artistic features but are incorporated into a utilitarian object.
o If you allow a copyright on a utilitarian object, then the copyright is substituting as a
patent. (Hypo: design a new wrench that has some innovations shaped uniquely and
works better. Not novel enough to get patentable or too expensive --> call it a work of
art and register it as a sculpture under copyright? Don't want to allow people to do
this/get around the rules of patent protection!).

Methodology for Infringement:
Figure out what the Copyright
Protects
Figure out whether defendant
copied plaintiffs works
Whether the stuff that defendant
copied is protected

Pictorial, Graphic and Sculptural Works

o Definition of pictorial, graphic, and sculptural works in 101: Such works shall include works
of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are
concerned; the design of a useful article, as defined in this section, shall be considered a
pictorial, graphic, or sculptural work only if, and only to the extent that, 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.

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PGS works are copyrightable except to the extent that they are useful articles: protectable to
the extent that it has distinguishable features capable of protection separate from the useful
part. ( 113). Visual art divided into two categories:
o Ornamental: drawings and photographs are protectable. ( 101(1))
o Utilitarian: includes industrial design, which is protectable only to the extent that the
design has elements that are separable and capable of protection. ( 101(A)). When
something is useful, want people to have to go through the patent system for protection.
If it is not useful in a patent sense then want to be able to protect the creativity.

Mazer v. Stein (1954) (pg 176)

Facts: Stein obtained a copyright on a statuette which was put into mass production and used as a base
for table lamps. Mazer began producing duplicate statuettes for use in table lamps.

Holding:
An article having a utilitarian application may be copyrighted.
An item can fall in both the copyright and patent area.
The copyright act includes statutes the statuette is copyrightable, this being so, their industrial
application did not make Mazers copying any less an infringing act.
If we have an otherwise copyrightable work of art, and if an author wants to publish it as a
useful object, it doesnt automatically make it not copyrightable.
(1) Basically, this case said that just because a thing has a utilitarian use (like being a
lamp or a doorknocker), that usefulness doesn't automatically preclude copyright
protection of the artistic/aesthetic parts of the thing.
(2) Ct. ruling: There is a valid copyright here, because the decorative functions of the
lamp base are independent enough from the functional aspects.

Galiano v. Harrah's Operating Company, Inc. (2005) (pg 181)

Facts: Galiano designed clothes for Harrah's, Harrah's used the designs after the agreement ended.

Issue: Is the design of a uniform copyrightable/within the scope of copyright? May clothing be a
pictorial/graphic/sculptural work?

Rule:
Galiano separability test: whether the useful article would still be marketable to some
significant segment of the community simply because of its aesthetic qualities


20
o pivot point separability test: whether the design elements can be identified as
reflecting the designers' artistic judgment exercised independently of functional
influence. (Court declines to use this)

Holding:
P makes no showing that its designs would be marketable independently of their utilitarian
function as casino uniforms.
Court looks at whether clothing is PGS
If it's a useful article, must do separability determination.
o Ct: It is useful article because it clothes people.
Are the creative elements and industrial design features separable?

Some approaches:
1) whether the artistic features are primary or secondary (e.g. look at the wrench)
2) whether the article stimulates in the mind of the beholder a concept that's separate from the
concept evoked by its utilitarian function
3) whether the design was animated by functional considerations (whether the placement of the
buttons on the uniform had a functional purpose or was just a design choice)

Functionality test (applies to architectural works)
First, an architectural work should be examined to determine whether there are original design
elements present, including overall shape and interior structure. . . . If the design elements are
not functionally required, the work is protectable without regard to physical or conceptual
separability. *192+

Separability: cant tell if an element is copyrightable unless it can be separated from the useful
article and exist independently of the useful article.
o Policy: copyright office will deny copyright registration to a design whenever the effect
of copyright would be to tender a monopoly to manufacture of a useful article.
If there are elements that can be protected without giving exclusive rights to the
useful part, copyright office will register those parts.
o Line drawing limited by imagination of the judge. Court looks for physical separation of
the function from the art.
a. Clothing: designs and patterns designs on fabric are copyrightable as long as show
originality. The clothing itself is not copyrightable.
b. Masks: protectable as sculpture. Costumes for kids protectable as long as dont function as
clothing.

IV. Proving infringement of the reproduction right (Statutory
References Section 106(1); 501)

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The Reproduction Right
Section 106(1) grants to the copyright owner the exclusive right ''to reproduce the copyrighted work in
copies or phonorecords.''
Phonorecords are defined as ''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.
Copies are defined as ''material objects, other than phonorecords, in which a work is fixed by
any method now known or later developed.''
Thus, in order to infringe the reproduction right, the defendant must embody the plaintiff's
work in a ''material object.'' Therefore, the performance or oral rendition of a work does not
constitute a reproduction thereof.

The Substantially Similar Copy
-How you tell that a given work is an infringing copy of a different work

1. Access +
2. Substantial Similarity +
3. Substantial Similarity of protected expression

Proving Infringement: COPYING AS A FACTUAL MATTER

Arnstein v. Porter (pg 197)

Facts:
Arnstein was a songwriter who had published a number of popular songs. He claimed that
another songwriter named Porter had plagiarized some of his songs. He sued for copyright
infringement.
Arnstein argued that Porter had 'stooges' following Arnstein around and had even ransacked his
apartment and stole some of his unpublished songs!
Porter argued that he had never heard any of Arnstein's songs and that he came up with his
songs himself (aka independent creation).
The Trial Court found for Porter in summary judgment. Arnstein appealed.

Issue: Have to determine whether Porters songs are similar to Arnsteins.

Holding:
Two tests:
Ordinary Listener Test: If the songs sound alike, then it could hurt the market for the first song
(one would buy the similar song in place of the original)
Expert Analysis: Are the melodic, rhythmic elements similar, more similar than usual, similar in
ways that make it unlikely that similarities are coincidental
-Look at individual similarities then might miss the overall gestalt of the song.


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First Question: Copying in fact?
o For this expert analysis are very useful
They know how unusual similar portions are
Then try to figure out if that copying is improper appropriation.
o Or You can ask the jury to compare the two songs and ask for a lay listener response.
Threshold question asked to jury if the songs are similar enough to infer
copying.
Some copying is ok, but too much is theft
Rather than relying on battle of experts you can rely on opinion of the community
o Should we pay attention to the two markets? Intent?
o Arnstein Test has been adopted in one form or another by every court
1) 1) Access
a. Dissection to figure out whether the similarities are probative of copying
i. Sources, constraints in genre etc.
2) Substantial Similarity
3) Substantial similarity of protected expression
a. Want to get rid of unprotected stuff to compare the protected stuff

The plaintiff must show (1) that the defendant copied from his work, and (2) that the copying was
improper, meaning that what was copied was both too much and the wrong kind of material

Plaintiff must prove:
1. that defendant copied from plaintiffs copyrighted work
aka factual copying
2. that the copying . . . went so far as to constitute improper appropriation
aka illicit copying or substantial similarity *198+

Proving factual copying
1) Copying as a factual matter
May be proven: directly; via access + probative similarity; or via striking similarity
Analysis and expert testimony permissible
Evidence of access here: many copies of the music out there

2) Copying as a legal matter (illicit copying)
May consist of: (1) literal copying; (2) comprehensive nonliteral similarity; or (3) fragmented literal
similarity
No dissection or expert testimony permissible (except on likely audience reaction)
Because the expert would be giving a legal conclusion which we do not
allow
If the works were so obviously different, the Ct. could direct a verdict/SJ in favor of D, but that's
not the case here. There are some similarities that aren't trifling. There's enough so it should go
to the jury.
Clark dissent: There's very little similarity between these 2 songs; not enough probative similarity to go
to the jury, nor is there too much copying to go to the jury.

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Collapsing the two inquiries
In some cases, the similarities between the plaintiffs and defendants work are so extensive and
striking as, without more, both to justify an inference of copying and to prove improper appropriation.
[199]

Jones v. Blige (2009) (pg 207)

Facts:
P sued Blige (D) for infringement/copying his song. P sent the song demo to a company and
there was evidence the song was opened up/listened to, so P said that D had access to it.
D testified that they never received the song. There was no evidence that the middle agent
passed the song on to D.
3rd party theory (both D and P had some dealings w/the 3rd party and some case law shows
that this is enough evidence for access): D dealt with Universal in some aspects, but they didn't
deal with the 3rd party at all.
P could win without access (by showing striking similarity).

Holding:

Ct: The songs are not so strikingly similar as to preclude the possibility of independent creation.
o Maybe if it were a smaller corporation, there'd be stronger evidence of access, but
Universal is so large...it doesn't make sense that everyone has access to everyone's stuff.
A defendant must first have had access to a copyrighted work to commit copyright
infringement.
o Access is "essentially hearing or having a reasonable opportunity to hear the plaintiff's
work and thus having the opportunity to copy."
Here, even though a copy of "Party Ain't Crunk" was delivered to Universal, the plaintiff's
couldn't prove that the defendant song creators had access. The plaintiff's tried to establish that
it was reasonable that one of the song creators could have gotten a copy of the demo while it
was at Universal, but it couldn't meet the burden of proof here. The plaintiffs even tried to
establish access by virtue of the "corporate receipt" doctrine, but the court refused to adopt this
doctrine. "The plaintiffs... have set forth no evidence tending to show that a reasonable
possibility that their work made its way from the plaintiffs to the creators of 'Family Affair.'"
Furthermore, the Court reasoned that Universal had submitted ample evidence to show that
there was an independent creation because it showed that "Family Affair" was created before
Universal got a copy of "Party Ain't Crunk."

Criticism / Analysis:
The Court seems to be setting a high bar here in terms of what the plaintiff must prove. The
Court says that it's "cautious of making it overly difficult for plaintiffs to establish access where

24
the chain of possession of a work within a corporation is difficult to prove," but nothing it says in
this opinion seems to indicate that it's giving any hope to a plaintiff in White's situation. One
would wonder how someone in his situation could possibly make a showing that meets the
standards of what the court's laying out here without the Corporate Receipt doctrine.
Keep in mind, this is summary judgment here. The court seems to shirk the ideas laid out
beforehand that defendants should seldom be granted summary judgment in copyright
infringement cases.

Bright Tunes Music Corp. v. Harrisongs Music, Ltd. (1976) (pg 215)

Facts:
George Harrison wrote a song My Sweet Lord. George Harrisons song was similar to a top 40
hit in Europe and America. P claims he plagiarized it from their song "He's So Fine".

Rule: Subconscious copying can be an act of infringement.

Holding:
Court allows strong evidence of access to compensate for weak evidence of similarity.
Plagiarism vs. copyright: Plagiarism = copying someone's work and presenting it as your own.
You can have plagiarism without copyright infringement (if you copy it when it's in the public
domain without attributing the source).
Analysis of similarity: four repetitions of motif A followed by four repetitions of B (highly unique
pattern), and in the 2nd use of motif B, there's an identical grace note inserted. Also, the
harmonies are identical.
Access analysis? "He's so Fine" was a big hit and well-known. There was a very reasonable
possibility that he heard the song.

There's enough to show access and it seems plausible.

Do we think these songs are "strikingly similar"?
o Maybe overstated....there are some similarities but the total look/feel don't sound all
that much alike. The songs are pretty simple and short; there are bound to be some
similarities.
Odd/surprising about this case: nobody thinks that Harrison consciously copied this. The judge
thinks that the copying was subconscious. However, he says that it's the very same song and he
had access to it, so this is infringement under the law.
All creators build on what has come before...this may inhibit the creative process. Is he supposed to
think through all the music he knows to make sure he's not copying anything in the future?
Since all the songs are on the web, does that mean there's always access? No - maybe depends
on the popularity of the song/likelihood that it's heard (depends on particular facts/context).

Rationale: Although defendant had not plagiarized the song intentionally, composer's subconscious
mind remembered that a similar song composed earlier had appealed to the audience. His conscious

25
mind did not remember that the composition had already been produced. So, even though
subconsciously accomplished, composition was infringement of copyright.

Price v. Fox Entertainment Group, Inc. (2007) (pg 222)
P is suing Fox, saying they ripped "Dodgeball" off of their screenplay.
Procedural posture: 1) D: we should win because there's no striking similarity between the two
as a matter of law. 2) Even if there is striking similarity, D seeks to preclude testimony of P's
expert

Rule: Various similarities exist, but there are sufficient dissimilarities so it's not "striking similarity"

(Rothchild) Court shouldn't be focusing on the differences; it should be focusing on the similarities
and see if one of them must have been copied from the other.

Proving Infringement: Improper Appropriation

Gottlieb Development LLC v. Paramount Pictures Corp. (2008) (pg 231)

Facts:
P sues D b/c they used the "Silver Slugger" pinball machine in the movie "What Women Want".
[The case was dismissed pursuant to FRCP 12(b)(6)].
The pinball machine was in the background, out of focus.

Holding:
Is there copying as a factual matter? Court: yes (no arguing that the machine was there)
Is it de minimus/trivial? (Did the pinball machine have a substantial part in the movie?) It is de
minimus.
Applicable legal standards: P must show - 1) it was protected expression in the earlier work
that was copied; 2) the amount copied is more than de minimus.
o To determine substantial similarity, court must decide whether the average observer
would recognize the challenged material as having been copied from the copyrighted
work.
There's a difference between factual and actionable copying.

They look at observability, length of time, focus, lighting, camera angles, and prominence.
Here: the scene in question is only 3.5 min; the machine appears sporadically, no more than a
few seconds at a time. More importantly, it's always in the background and never appears by
itself or in a close-up. It's never mentioned and plays no role in the plot.

26
Dist. Ringgold case (use of copyrighted poster in a tv episode): sometimes the poster appeared
at the center of the screen so it was plainly visible. There was also a qualitative connection
between the poster and the show (actually used in the plot).
The average lay observer wouldn't be able to discern any distinctive elements of Gottlieb's
design.
(You would think the manufacturer would be happy about this instead of suing, for getting free
advertising in the movie...)
p.237 n.1: Sometimes the average audience is not the lay observer but someone with
specialized skills (e.g. computer programs or music).

To determine whether the quantitative threshold of substantial similarity is met in cases involving
visual works, courts consider the extent to which the copyrighted work is copied in the allegedly
infringing work. The observability of the copyrighted work is critical, and courts will consider the length
of time the copyrighted work is observable as well as factors such as focus, lighting, camera angles, and
prominence. [234]

Literal and Non-literal Copying

Allen v. Scholastic Inc. (2011) (pg 240)

Facts: P claims that J.K. Rowling copied his short book "The Adventures of Willy the Wizard" in her
"Goblet of Fire" book.

Rule/Holding: We have to look at only the protectable elements (total concept and feel test)

Reasoning:
The court conducted the ordinary observer test which asks whether an average lay observer
would recognize the alleged copy as having been appropriated from the copyrighted work.
o The court explained that where the allegedly infringing work contains both protectable
and non-protectable elements, the usual ordinary observer test becomes more
discerning, and requires the court to attempt to extract the unprotectable elements
from consideration and ask whether the protectable elements, standing alone, are
substantially similar.
Applying the ordinary observer test to the protectable elements in each book, the court
compared the total concept and feel, theme, characters, plot, sequence, pace and setting of the
works.
o The court held that, because the works at issue are primarily created for children, the
total concept and feel of the works - rather than their plot and character development -
is the most important factor for purposes of establishing copyright infringement.
o According to the court, the contrast between the total concept and feel of the works is
so stark that any serious comparison of the two strains credulity.
It was just a general story about a wizard. There was little similarity between the plot and
sequence of the books. The allegedly infringing plot features were not protectable. The general
theme of a wizard society is unprotectable.


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Boisson v. Banian, Ltd. (pg 253)

Facts:
P sued D over quilt designs. 6 rows by 5 columns with the alphabet. Many colors and pictures
on them. D even admitted that they used the quilts as a basis for developing their own but they
were dissimilar enough to not constitute infringement.

Court acknowledges that use of the alphabet may not in itself provide a basis for infringement
b/c it's public domain.

Protectable elements: arrangement and shapes of the letters, colors chosen to represent the
letters/other parts of the quilt, the quilting patterns, the particular icons chosen and their placement.
Ct is doing dissection and analysis while claiming they're looking at the general aesthetic.
(Rothchild): Doesn't seem too original...just letters of the alphabet on a quilt with funny
pictures.
Ct: Lower court said that the alphabet, formation of alphabet, and color were in the public
domain - This court says that was erroneous.

Arrangement of letters
Ps obtained valid copyright certificates and their layout required some minimum degree of
creativity (which is all that's required for copyright) presumption that layout is original. So,
Ds bear the burden of proof to show the particular layout isn't original.
Color
P stated she picked the colors on a trial/error basis without referencing other works. Choice of
colors is protectable element.

Substantial similarity: ordinary observer vs. more discerning observer
since only some elements here are protected, the observer's inspection must be more
discerning (can't just be looking at overall aesthetic). The lower court was correct in choosing
that test, but their scope was too narrow.

Holding: The Appellate Court found that many elements of the quilt design like the alphabet are not
copyrightable. However, elements such as the layout and color combinations are.
The Court found that the courts needed to consider the "total concept and feel" of the two
works.

Copying computer programs

Distinguishing Idea from Expression in Software
o It became settled law that both source and object code, whether for operating systems or
applications, are protected by copyright the same limiting doctrines that apply to literary
works generally also apply to computer programs.

Computer Associates International, Inc. v. Altai, Inc.

Facts: Upon discovering that Altai may have appropriated parts of its Adapter program, Computer
Associates sued Altai for copyright infringement and trade secret misappropriation.

28

Holding: To warrant a finding of copyright infringement, the protectable, non-literal elements of one
computer program must be substantially similar to those elements in a second program. It is now well
settled that the literal elements of computer programs, their source and object code are subject to
copyright protection. Altai made sure that the literal elements of its revamped Oscar program were no
longer substantially similar to the literal elements of CAs Adapter.
o Basically, this case said that what the courts need to do is to sift out all elements of the
allegedly infringed program which were ideas dictated by efficiency or external factors, or
taken from the public domain in order to find "a core of protectable expression." At that point
the courts should focus on whether there are substantial similarities between any elements
within this core in the two programs.

Court adopts 3-Part Test Requiring Abstraction, Filtration and Comparison
Abstraction: Retrace and map each
of the designers steps in the
opposite order in which they were
taken during the programs creation
need to be computer literate to
perform this test.
Filtration: Examine structural
components at each level of
abstraction and take out the stuff
that is not copyrightable.

*Uncopyrightable because they
merged, dictated by efficiency,
external factors, or came from
public domain
Compare: Whether Altai copied any
aspect of the protected expression,
as well as an assessment of copied
portions importance with respect
to CAs overall program. Find
copyrightable stuff, and go thru
defendants program and see if it has
been copied

Two Strengths of Analysis
1) Its an adaptation of a traditional copyright analysis 2) It makes sense to computer process professionals
asking meaningful questions to them.
Downfalls: Cumbersome; Dissecting programs

o There is essentially only one way to express an idea, the idea and its expression are inseparable
and copyright is no bar to copying that expression. In computer context, this means that when
specific instructions, even though previously copyrighted, are the only and essential means of
accomplishing a given task, their later use by another will not amount to infringement.

V. Fair use

Top 12 things about fair use
1) Every time you do fair use analysis, you have to look at all 4 factors together
2) The 4 factors in sec. 107 are not exhaustive; you can consider other factors too (Like good faith/bad
faith in Harper v. Row)
3) When looking at character of use under 1st factor....look at whether 2nd user is creating something
new. If yes, then there's a greater chance of public good and also less chance they'll be harming the
original creator
4) When assessing character of use (commercial or not), sometimes court will look at ultimate purpose
of the use, but in other cases it will look at immediate purpose of use (e.g. Princeton copyshop
case...immediate use was to make money).
5) Works that are primarily expressive/creative get more protection against fair use than works that are
primarily factual. Also applies to published/unpublished.
6) Under 3rd factor (trying to figure out if too much of the original was taken), have to keep in mind

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what's reasonable in relation to the purpose of the copying (better justification of copying the good stuff
if you're doing a parody...but satires you don't have any justification for copying the good stuff). (e.g.
Harper v. Row, they took the heart of the material...not justifiable when it's just a verbatim, superceding
publication)
7) When looking at market effect under 4th factor, look at both actual and potential uses/effects on
market. Look at both uses of orig. work and derivative uses. Consider potential/hypothetical uses if the
orig. work is not published (copyright owner has ability to prevent people from using their work even if
they themselves aren't using it). Consider what would be the case if the challenged use became
widespread (aggregate effect).
8) Only certain types of harm are cognizable. Harm that results from something like a negative/critical
review that turns people off is not cognizable under the 4th factor.
9) The fact that the use is commercial doesn't necessarily mean there's a harm under 4th factor. If the
use is transformative, there might not be market harm (Perfect 10 thumbnails case...thumbnails don't
substitute for the full size image). If it's mere duplication, the court will almost always find there's
market harm (exception: Sony case...Court found no market harm b/c of private home use).
10) Burden of proof is on the D in fair use cases b/c it's an affirmative defense.
11) Not everything that imitates something else is a parody (e.g. Dr. Seuss case. Might be viewed
instead as a satire or free-riding work).
12) If the copyright holder has set up a system for licensing fees, that makes a much stronger case for
market harm (they'll say this is how much money I lost b/c D didn't take out a license).

Fair Use
most important limitation on exclusive rights of owner (we use fair use every day by making
copies w/o paying, e.g.). Fair use includes use by reproduction/copying for purposes of
criticism, comment, news reporting, teaching, scholarship, or research...not an infringement.

Sec. 107: 4 factor test:

1) purpose/character of the use, commercial or nonprofit
a. Does the defendant have a good reason to use material? Whether defendant added
something that added value, or whether defendant copied it without adding
anything to it
b. Whether the new work merely supersedes the objects of the original or adds
something new: transformative
i. The more transformative the new work, the less significance the other
factors will have in weighing against fair use
2) nature of the copyrighted work:
a. If work is largely factual research, author probably meant for it to be used, if its
idea/system copyright protection is thinner. Whether its a work that is appropriate
for the use made.
b. More likely to weigh in favor of fair use in cases involving factual works and less if
the work is highly creative
3) amount/substantiality of the portion used in relation to the copyrighted work as a whole:
a. A lot less may have no infringement, a lot more then a court might find fair use.
Quantitative and Qualitative, whether the important part was used
4) effect of the use upon the potential market:
a. If its harmed the market a lot then the use probably wont be fair use
b. Need to consider effect on actual and derivative markets


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Examples of fair use from House Report: parody; copying by library to replace part of a damaged
item; reproduction in legislative or judicial reports; incidental and fortuitous reproduction of a
work in a scene of a news broadcast.

3 situations where fair use is appropriate (policy level):
1) uses that a copyright owner would certainly agree to, at no charge (it would be a waste of
effort to have to seek consent);
2) Uses that the copyright owner would agree to, upon payment of a fee (but the transaction
costs of complying would discourage use);
3) Uses that the owner might not agree to, like parody or criticism (but that copyright law
wants nonetheless to promote)

Fair Use: Time-Shifting

Sony Corp. of America v. Universal City Studios, Inc. (pg 282)

Facts:
D manufacture and sell home video tape recorders
P own the copyrights on some of the television programs that are broadcast on public airwaves
Some members of the general public use video tape recorders sold by D to records some of
these broadcasts, as well as large number of other broadcasts

Issue: Whether the sale of petitioners copying equipment to the general public violates any of the rights
conferred upon respondents by the Copyright act?

Holding: The sale of Ds copying equipment to the general public does not violate the right conferred
upon respondents by the copyright act and is fair use. (The sale of home time-shifting is fair use)

Reasoning:
If the recorder were to make copies for a commercial or profit-making purpose, this use would
be presumptively unfair
But time-shifting for private home use must be characterized as a noncommercial activity, even
though the use is not productive and has no public benefit. So the fair use defense applies

Used the 4-factor test in sec. 107
The first factor requires that the commercial or nonprofit character of an activity be weighed
in any fair use decision
o If petitioners video tape recorders (VTR) were used to make copies for a commercial or
profit making purpose, such use would presumptively be unfair
o District Court: time-shifting for private home use must be characterized as a
noncommercial, nonprofit activity
Time shifting merely enables viewers to see works theyve been invited to
witness in its entirety free of charge - reproduction of that doesnt equate to
unfair use
Another factor: effect on the potential market
o The purpose of copyright is to create incentives for creative work

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o Even copying for noncommercial purposes may impair the copyright holders ability to
obtain the rewards that Congress intended him to have
o But a use that has no demonstrable effect upon the potential market need not be
prohibited in order to protect the authors incentive to create.
o The prohibition of such noncommercial uses would merely inhibit access to idea without
any countervailing benefit
o A challenge to a noncommercial use of a copyrighted work requires proof that either
that the particular uses is harmful, or that if it should become widespread, it would
adversely affect the potential market for the copyrighted work.
Actual present harm need not be shown
Nor is it necessary to show with certainty that future harm will result
What is necessary is a showing by a preponderance of evidence that some
meaningful likelihood future harm exists.
If the intended use is for commercial gain, that likelihood must be presumed
o If the intended use is for noncommercial purpose, the likelihood must be demonstrated

On the question of potential future harm from time shifting
o District Court rejected the argument that people watching via VTR would not be
measured and so the ratings would suffer
District Court rejected the argument that live television or movie audiences will decrease as
more people watch time-shifting devices as an alternative
o However, there is no factual basis for the underlying presumption
Rejected respondents argument that time-shifting will reduce audiences for telecast-reruns,
o However, given current market practices, this should aid plaintiffs rather than harm
them
Rejected argument that theater or film rental exhibition of a program will suffer because of
time-shifting recording of that program
o However, this argument lacks merit
District court concluded that Harm from time shifting is speculative and at best minimal

Dissent:
Although courts have constructed lists of factors to be considered in determining whether a particular
use is fair, no fixed criteria have emerged by which that determination can be made
o The house and senate reports explain that section 107 does no more than give
statutory recognition to fair use doctrine;
o it was intended to restate the present judicial doctrine of fair use, not to change,
narrow, or enlarge it in any way.
The fair use doctrine permits works to be used for socially laudable purposes.
o A productive use, resulting in some added benefit to the public beyond that produced
by the first authors work...here its just for entertainment and so doctrine of fair use
shouldnt apply
Conclude, at least when the proposed use is an unproductive one, a copyright owner need prove
only a potential for harm to the market for or the value of the copyrighted work
o Proof of actual harm or even probable harm, may be impossible in an area where the
effect of a new technology is speculative
Studios have identified a number of ways in which VTR recordings could damage their copyrights
o VTR could reduce studios ability to market their works in movie theaters and through
the rental or sale of pre-recorded videotapes or videodiscs
o It could reduce their rerun audience, and consequently the license fees available to

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them for repeated showings
o Advertisers may be willing to only pay for live viewing audiences, if they believe VTR
viewers will delete commercials or if rating services are unable to measure VTR use; if
this is the case, VTR recording could reduce the license fees the Studios are able to
charge even for first-run showing
District Courts analysis of harm, failed to consider the effect of VTR recording on the potential
market for or the value of the copyrighted work, as required by 107(4).
It is thus apparent from the record and from the findings of the District Court that time-shifting does
have a substantial adverse effect upon the potential market for the studios copyrighted
works.

Fair Use: Published v. Unpublished

Harper & Row, Publishers, Inc. v. Nation Enterprises (1985) (pg 296)

Facts:
o President Ford wrote a book about Watergate and sold it to Harper & Row. People were so
excited to read the book that Harper & Row was able to sell the exclusive right to print an
excerpt to Time Magazine for $25k.
o Somehow, a guy named Navasky who owned a magazine called The Nation got an unauthorized
copy of the excerpt and published it in his magazine.
o Time canceled their deal with Harper & Row.
o Harper & Row sued Navasky for copyright infringement.

Preliminary issues:
o Purposes of the suit was to establish that fair use didnt apply to works that were unpublished
o published vs. unpublished works - why is use less fair if it's an unpublished work?
o Publication of an author's expression before he's authorized its dissemination seriously
infringes the author's right to decide when/whether it'll be made public.
o Can undercut authors right to make money from the work
o Author has privacy rights in a manuscript
o Author may want to revise it etc.
But may want works that are unpublished released
Public needs access to this stuff J.S. Salingers letters, we want access
to them
Holding:
o Fair use traditionally has not been recognized as a defense to charges of copying from an
authors yet unpublished works
o D went beyond simply reporting uncopyrightable information and sought to exploit the headline
value of the infringement, which violated the authors right to control first publication

First Amendment implications:
o Navasky argued that the 1
st
Amendment protected him because Ford was a public figure.
However, the Court found that if you bought Navasky's logic there would be no way for a public
figure to hold a copyright, and that wasn't good for public discourse
o Ct. of Appeals held in favor of Nation because they published memoirs of a President
discussing his official actions, core first amendment speech that should be granted fair
use.
o The S. Ct. disagreed by noting that the idea/expression distinction removes any 1
st


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Amend conflict since copyright protects his expression, Fords right to choose not to
speak or to speak only in the forum of his choosing.

Fair Use Factors: the preamble notes that fair use applies to news reporting, which is what this is.
1. purpose of the use: news reporting
a. Ct: just b/c it's one of those categories, that's not dispositive...need to look at other
factors too.
b. Commercial use? Yes, designed to sell magazines.
c. Every commercial use = presumptively an unfair exploitation [Campbell case negates
this].
d. D is trying to supplant the prerogative of the copyright owner both to license it to TIME
magazine and also to publish the book.
e. D's purpose was to get this out before TIME got its magazine out. [Good faith is not in
sec.107 at all...Courts can take into consideration other considerations aside from
what's in sec. 107. It says "shall include"...but not an all-inclusive list).
2. Nature of the copyrighted work: Unpublished (cuts against fair use) and non-fiction (less scope
for fair use if it's a factual use b/c facts are more important)
3. Amt/substantiality of the portion used: only 13% was used, but what they took was the "heart
of the book" (most important part)
4. Effect on the market/ potential market (ALWAYS the most important factor!!! Can't make it
dispositive b/c they must apply all 4 factors, but it's the most significant one): To negate fair use,
one needs only to show that if the challenged use should become widespread, it would
adversely affect the POTENTIAL market for the copyrighted work (dissent from Sony case
above).

Brennan Dissent:
o Factual nature of the work/how it plays into analysis: Seems like Court is trying to protect the
author's labor/hard work (collecting the facts) rather than the expression of the book, and
copyright law doesn't protect that...they're hindering the dissemination of factual matter.
o Argues that the Nation took unprotectable facts and very little expression. This is not
copyright infringement. Majority over compensating for the taking of valuable material.
Mucking up copyright law by unreasonably narrowing the fair use privilege.
1. Commercial use/pre publication fair use presumptions are unwarranted, inconsistent with the
statute, and unfaithful to congressional intent.
2. Suggest majority could only have reached their decision by ignoring the idea/expression
distinction and blaming D for taking unprotected facts.
3. Brennan proved right in history: OConnor opinion in Feist cites this dissent for support.

Fair Use: Parodies
The Application of the Fair Use Doctrine to the Creation of New Works
1. Parody:
a. Application of the fair use factors:
(1) Purpose of Ds use: parody, a humorous form of criticism, commercial rather than
non-profit/educational.
(2) Nature of Ps work: tends to be well known and popular or else not appropriate.

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(3) Amount Taken: tends to focus on this factor. If take a whole lot, not parody, just
imitation. If take too little, no one will know what you are parodying. Courts try to
determine if D took more than necessary.
(4) Effect on the Market: parody will never fulfill demand for the original, but it may
tarnish the original.
o Different ways a parody can create market or derivative harm:
o 1) substitution and
o 2) changing audience's view of the original (if it's a criticism,
i.e.)...copyright doesn't protect the latter (too bad so
sad). Otherwise, a copyright owner could prohibit critical
reviews/parodies.
o 3) harm to the market for derivative works (other people deterred
from making a parody of this song), in the same genre (rap music
here).

Parody has to comment on the thing that its parodying (and thus be transformative)
o The parody must be able to "conjure up" at least enough of that original to make it
recognizable...the work's most distinctive/memorable features that the parodist can be sure the
audience will know.
o And that is not true of a satire, which is treated differently,
o because Satire has to stand on its own two feet (See Dr. Seuss Enterprises, where the
court rejected a fair use defense because it was not a parody commenting on the
original work. It was more like a satire but it was too similar (didnt stand on its own
two feet)).

Campbell v. Acuff-Rose Music, Inc. (1994) (pg 313)

Facts: dispute over 2 Live Crews spoof of Roy Orbisons Pretty Woman. Roy Orbison wrote Oh, Pretty
Woman and copyrighted it. 2 Live Crew wrote Pretty Woman, which sought to parodied the original
through comic lyrics. They offered to pay a fee, were refused, and attributed credit anyway.
o Trial court said that this was fair use
o 6
th
Circuit said this was a commercial parody, and commercial uses are presumptively unfair

Holding: Supreme Court emphasized that there was no presumption against commercial fair use. Took
back holding in Harper & Row.
1. Purpose of Ds use: fair use available for commercial parody, but first have to establish that the
second work is a parody of the first. Majority finds that this work has enough of a critical
element to qualify as parody, transformative of the first work.
a. If its transformative, not only is the second user adding something to society, but it is
also less likely that it will serve as a substitute for the work and thus it will not interfere
with the rights of the original copyright owner
i. The more transformative of the work, the less significant will be the other
factors
b. Dont want judges in the business of judging humor: court should limit itself to asking if
the parodic character may be reasonably received.
c. There is enough criticism in these lyrics to qualify.
2. Nature of Ps work: Purely entertainment material, meant to be consumed to make money.

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a. Implied consent weak in these circumstances: the fact that the song was popular would
normally count against fair use.
b. Forced consent rationale: makes sense here because most parodies target works that
dont want to be made fun of.
3. Amount Taken: Parody will normally take qualitatively important parts. Have to look not just at
what D took but what he added. Here lyrics transformed the first song, but underlying music
was a closer questions, remanded for determination.

4. Effect on value of the copyrighted work: often seen as the most important factor.
(a) The greater the harm on Ps market, the less likely he is to authorize the use.
(b) Circular:
(i) The fact that D used Ps work proves there is a market of some sort to be
exploited.
(ii) If decide that a license is required, then there is an effect on the market.
(iii) If Ds use is commercial then of course there is a market
(c) Souter removes presumption of harm from commercial use. Fair use is an
affirmative defense, burden of proof is on D to provide evidence. While P must
introduce evidence that markets actually exist.
(i) First time actual evidence of damage has been required.
(ii) Noting that criticism as damage is not cognizable.
(iii) Copyright doesnt protect the market for licensed critical uses: assumes the
owner is not likely to license these uses. The fact that other parodist get
licenses, does not require all others to take these licenses.

Educational Use is not necessarily Fair Use: Accordingly, the mere fact that a use is educational and
not for profit does not insulate it from a finding of infringement, any more than the commercial
character of a use bars a finding of fairness. * Campbell, 318]

Fair Use: New Technologies

Princeton University Press v. MI Document Svcs, Inc. (1996) (en banc) (pg 331)

Facts:
o Professors at U. Michigan would compile a bunch of articles that they wanted students to read
in class, and give them to MDS. MDS would make copies of these articles, bund them up, and
sell them to students for a profit.
o A bunch of publishers, including Princeton, sued MDS for copyright infringement.
o MDS argued that the copying of scholarly articles for academic purposes was protected by the
fair use provision (17 U.S.C. 107).
o The publishers argued that what MDS was doing was not fair use, because (unlike the
professors) MDS was making a profit on the copies. In addition, there existed a mechanism
called the Copyright Clearance Center (CCC) where MDS could buy licenses to make copies.

36
o The other copy stores in the area all bought licenses, so MDS was making an unfair profit by not
doing likewise.
o The fact that some copyshops pay licensing fees doesnt effect the analysis anymore
than the fact that some parodist get licenses.
o The Trial Court said that it was not fair use and found for the publishers. MDS appealed.
o The Appellate Court affirmed.

Holding: The Appellate Court found that based on 107 there is a four-factor test for determining if
something counts as fair use:
o Is the purpose and character of the use commercial or non-commercial?
o The Court found that the articles are noncommercial in nature. However, MDS was
using the articles for a commercial use. Nor had MDS done anything to transform the
original works.
o The nature of the copyrighted work.
o The amount of the original work used.
o The effect on the potential market.
o The Court found that the publishers were making about $500k a year via the CCC. If
MDS's use were found to be non-infringing, then the publishers would lose that market.
o MDS argued that most academic writers aren't paid for their work and publish in academic
journals just to get the fame (and for the public good).
o However, the Court noted that it was the publishers who held the copyrights and it was
the publishers' rights that were at issue, not the original authors.

Is student copying fair use?
1) For educational purposes, but done for own convenience or to save money probably not
2) Nature of the work is factual and informative which opens it to broad copying under fair
use, unless its an item in an anthology, rather than a law review article where the entire
market is predicated on teachers selling students books
3) Copying often involves a great deal, chapters and whole law review articles more than Dr.
Chickerin
4) Effect on market, depends on what you are copying.
-If anthology, if what you were copying significant parts of the casebook, but widespread
copying would destroy the market for textbooks since there is no secondary market for it
-If publishers introduced smart copy-card
-If you can argue the first factor you may be able to shove a court to fit the other factors

Perfect 10, Inc. v. Amazon.com, Inc. (2007)

Google image search: user enters image search request; Google delivers search results page: text, and
graphics instructions (URL where to find the graphics); browser sends automatic request for search
results/thumbnails; Google delivers thumbnails. Then it leads you to the actual page/full size picture.

Perfect 10 has pics of nude woman and they charge money for people to see them. Google had indexed
those images.

In the absence of an excusing factor, Google would be infringing.

Courts Analysis:
1.purpose/character of use: emphasis that this is transformative. Image may have been created

37
originally to serve as entertainment, aesthetic, or informative function; the search engine transforms
image into a pointer directing user to a source of info (Even making an exact copy of a work may be
transformative as long as the copy serves a different function than the original work).
o Commercial criterion: Dist. Ct. said that Google's use of thumbnails directed users to AdSense
partners containing infringing content. But, Dist. Ct. didn't determine that this commercial
element was significant.

2. Right of first publication: not relevant anymore b/c Perfect 10 has already put this material out on
the internet for its paid subscribers. They're no longer entitled to the enhanced protection available for
an unpublished work (so this factor only weighs slightly in favor of Perfect 10).

3. Amount/substantiality: How much are they using? The whole thing! But it was necessary to copy
the entire image so people can identify it.

4. Market interference: POTENTIAL harm remains hypothetical (Rothchild: doesn't seem to be
consistent w/Supreme Ct's analysis in the Campbell case which takes potential harm into
consideration). Dist. Ct. didn't find that Google users have downloaded thumbnail images for cell phone
use.

Fair Use: Reverse Engineering

Sega Enterprises, Ltd. v. Accolade, Inc. (pg 357) (1992)
Facts: dispute over Accolades reverse engineering of the Sega console to create interoperable,
competing video games. Not possible to reverse engineer software without making copies.

o D wants to make games compatible with Sega Genesis. They had to do reverse engineering of
Sega's video game programs to discover the req's for compatibility w/the Genesis console. Then
they loaded the disassembled code back into a computer and reworked it to make Sega-
compatible games.
o Accolade copied Segas software solely in order to discover the functional
requirements for compatibility with the Genesis console aspects of Segas programs
that are not protected by copyright. *360+
o Sega didn't like this b/c they get licensing fees from people making games for them.
o Accolade considered entering into licensing agreement w/Sega, but decided not to b/c of the
requirement that Sega be the exclusive manufacturer of all games produced by Accolade.
Holding: The Court held that intermediate copying for reverse engineering purposes, to discover the
underlying program, is not infringing. What Accolade did was Fair Use.
Dont get to a fair use analysis unless first prove infringement. Issue is whether Accolade ought to be able to get
around Segas initialization code.
o 117 Limits on exclusive rights: Computer Programs: allows Accolade to make back-up copies and adapt
the programs to use in a computer, but this doesnt cover what they are doing here. Here they are
translating the Sega program. They didnt need to make copies to use the Sega machine.
o Using decompiler program to figure out Segas source code, this creates a copy. Then they print this out,
another copy. These are unauthorized copies and derivative works.
o Revised games written for other machines to include the Sega initialization code: this probably OK.
Under Borland the initialization string is an uncopyrightable method of operation, since it is the only way
to turn on the Sega Genesis console.

38

Fair Use Analysis:
o Is the purpose and character of the use commercial or non-commercial? -Blatantly commercial
o The Court found that while Accolade ultimately intended to make money selling video
games, the direct purpose in copying Sega's code was simply to study the functional
requirements of the console's compatibility.
o In addition, Accolade's work helped the publics because lots of companies started using
their information to make exciting, creative video games.
Copying is intermediate to understand underlying social benefits

o The nature of the copyrighted work. - Entertainment not factual
o The Court found that there were aspects of Sega's code that were unprotected by
copyright. But there was no way to examine them without also copying the copyrighted
parts.
o The Court noted that if someone couldn't look at the code to see the uncopyrighted
parts, then Sega would have a de facto monopoly on things they couldn't legitimately
get a copyright on
o Contains functional aspects that cant be used without copying

o The Court found that there was no other way Accolade could have learned about the
functionality of the console without copying as much as they did copy. While they did
copy the entire code, that didn't mean much because the final product (the video
games) did not contain any infringing material.

o The effect on the potential market.- If this is widespread then no one would buy licenses
o The Court found that Accolade's work did not stop people from buying Sega's video
games. Accolade's games could legitimately compete in the marketplace with Sega's
games, which might reduce Sega's sales. However, this factor wasn't meant to be
applied to competition like that.
o For example, if a company made Pac-man and another company made a Pac-man knock
off, people who bought the knock off wouldn't buy the original because they already
had essentially the same game. However, if one company sold Pac-man and another
company sold Space Invaders, some people would buy both, and people who only
bought one would pick the one they thought was more fun. No one would say, "I don't
need to buy Pac-man since I already have Space Invaders."

Based on their balancing of the four factors, the Court found that Accolade's copying was protected by
fair use.

A. Judge Reinhardt- Bad behavior by copyright owner: attempt to monopolize the market by
making it impossible for others to compete runs counter to the statutory purpose of promoting
creative expression...

B. (Rothchild:) example of 1949 computer...you can figure out how it works by disassembling it
physically and looking at the gears. With current computer code though, you can't see that just
by looking at it. There has to be some copying involved).


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1201 Analysis: legitimate to make copies for reverse engineering if trying to get at underlying unprotectible facts.
Copies made in the course of doing this are OK. Constitutionality of 1201 is questionable.

Sony Computer Entertainment, Inc. v. Connectix Corp (pg 364 note 3)

-Should this have come out a different way?

Facts:
1. Sony made video game consoles and licensed the rights to third-party video game
developers to make games for their console.
2. The video games were designed to only work with Sony's console.
3. Connectix made an 'emulator' program that allowed people to play the video games on a
computer.
4. Connectix got a Sony console, reverse engineered how the code on the computer chips
worked, and then wrote a computer program that would do the same thing as Sony's code.
5. Sony sued Connectix for copyright infringement for copying the code on their computer
chips.
6. Connectix argued that reverse engineering was protected by the fair use provision (17 U.S.C.
107).
7. The Trial Court found for Sony. Connectix appealed.
8. The Appellate Court reversed.

Analysis:
The Appellate Court found that based on 107 there is a four-factor test for determining if
something counts as fair use:
o Is the purpose and character of the use commercial or non-commercial?
The Court found that Connectix's work was 'moderately transformative' because
it let people play games on a platform they couldn't otherwise use.
The Court found that although Connectix's ultimate purpose was selling things,
the direct purpose in copying Sony's code was just to understand how they
worked.
o The nature of the copyrighted work.
The Court found there were unprotectable elements within Sony's chips that
could only be protected by a patent. Since Sony had no patent, Connectix could
use those elements. And the only way to see those elements was to copy all of
the code on the chip.
The Court found that Connectix did copy a substantial portion of Sony's
copyrighted elements. However, that didn't mean much because the final
product (the emulator) did not contain any infringing material.
o The effect on the potential market.
The Court found that Connectix's emulator was a legitimate competitor to Sony.
Any loss that Sony suffered as a result of this competition did not compel a
finding of no fair use.

Based on their balancing of the four factors, the Court found that Connectix's copying was protected by
fair use.

-Courts have generally held that reverse engineering is fair use
-Reverse engineering in order to gain access to underlying material is ok

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VI. Enforcement and secondary liability

Individual, Vicarious, and Contributory Liability
501: an infringer is anyone who violates the exclusive rights in 106, which includes the rights to do or
to authorize. Infringers are those that do or authorize the infringing act (direct liability), and anyone who
supervises the infringing act (vicarious).
Direct liability: imposed on a strict liability basis: doesnt matter if D knew or why they infringed except in
connection with a fair use analysis or calculation of damages. D will be liable even if he believed what he
was doing was legal.
Secondary Liability - Go after someone who assisted/contributed to the infringement but didn't
actually do it.
o Vicarious liability - 2 step test: 1) control/supervision over infringing activity; 2) direct
financial interest in such activities.
imposed on D who did nothing actionable, but had power to stop infringement and
stood to benefit from the infringement. (Nightclub owners).
o Contributory infringement: 1) Knowledge of the infringing activity; 2) some sort of
contribution (induces, causes, or materially contributes to the infringing conduct of
another).
Note that Ds can be held both vicariously and contributorily liable.

Direct infringement

Cartoon Network LP, LLLP v. CSC Holdings, Inc. (2008) (not about secondary liability but primary) (pg
369)
- Who makes the copies on the DVR?
- Dist. Ct. granted SJ for P
- App. Ct. reverses.
They refer to Religious Tech. Center v. Netcom, idea of "volitional conduct" as pre-req for direct
liability.
o Copyright = strict liability statute, but there should be some element of
volition/causation which is lacking where a D's system is merely used to create a copy by
a third party. (Can't hold somebody liable for a tort unless they did it).
o In Netcom case, D didn't do it.
Does that make sense doctrinally? That somebody that sets up something that can cause
tortious harm to others isn't liable just because they didn't directly do anything?
o This court says setting up an automated system and letting it run doesn't equate to
direct liability.
Analogy of DVR with VCR...in both cases, the person who actually presses the button to record
supplies the necessary element of volition.
Analogy of DVR with Kinkos...nobody would say that they are liable for direct infringement for
reproduction made by customers using their copiers (Rothchild: pretty good analogy)
Manufacturer of device isn't doing any copying, just enabling others to do it


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Contributory Infringement & Vicarious Liability :

Fonovisa, Inc. v. Cherry Auction, Inc. (1996) (pg 377) (Secondary Liability)
Cherry Auction = flea market, Fonovisa = Latin/Hispanic music company. Vendors @ Cherry
Auction were selling bootlegged copies of Fonovisa's music at this swap meet. Cherry Auction
didn't do anything about it, so Fonovisa sued.
Vicarious liability - 2 step test: 1) control/supervision over infringing activity; 2) direct financial
interest in such activities. No knowledge requirement! Enough that you have the ability to stop
the infringement and you're making money off of it. Also no employer/employee relationship
requirement.
Here: Cherry Auction did have financial interest. They collected a daily rental fee by the
infringing vendors; an admission fee from each customer; and payments for parking, food, and
other services.
If this is a direct financial interest, what would be an indirect financial interest?
Contributory infringement: 1) Knowledge of the infringing activity; 2) some sort of contribution
(induces, causes, or materially contributes to the infringing conduct of another).
*P+roviding the site and facilities for known infringing activity is sufficient to establish contributory
liability. *382+
Here: Court says that Cherry Auction strived to provide a good environment and market. Setting
up the swap meet and giving them electricity/plumbing is enough to be material
contribution. Knowledge part: no question that there was knowledge. In 1991, the Sheriff's
Dept. raided the swap meet and seized 38,000 copyrighted recordings. But how does Cherry
Auction know that there was still infringement going on in 1995 when the case was
brought? (Rothchild: not exactly clear how to look at the knowledge requirement).

Secondary Liability in the Age of Dispersed Infringement (The age we live in now) (pg 388)

Sony Corp. v. Universal City Studios rule for staple article of commerce doctrine:
"The sale of copying equipment, like the sale of other articles of commerce, does not constitute
contributory infringement if the product is widely used for legit, unobjectionable purposes.
Indeed, it need merely be capable of substantial non-infringing uses." (389)
The Sony court emphasized that the only contct between Sony and the users of the Betamax
that is disclosed by the record occurred at the moment of sale.
o In this scenario- under both vicarious liability/contributory infringement, manufacturers
aren't liable (no control and no knowledge, respectively).
When there is continuing contact between producers and users of a device, producers have
other opportunities to learn of infringing conduct, and it becomes more complicated to
determine when the knowledge element of contributory liability is satisfied.

A&M Records v. Napster (pg 390):
Napster is capable of non-infringing uses but they still lose under Sony b/c there was evidence
they have the actual knowledge needed for contributory negligence.
o Napster is providing the site/facilities needed for infringement as well.
Also found vicarious liable for infringement.
o Napster sold advertising which was displayed to users when they were logged on to the
Napster System; because its advertising sales increased as more users used Napster
more frequently, the court found that it received a direct financial benefit from

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infringing activity.
o The court also found that Napster had both the right and ability to control the
infringement by blocking the exchange of files that had been specifically identified as
infringing.

Inducement:

MGM v. Grokster, Ltd. (2005)(pg 393)

Grokster distributed free software products allowing users to share electronic files via P2P
networks. The computers directly communicate with each other and not through a central
server.
Allegation by MGM that Grokster knowingly/intentionally distributed their software to enable
users to reproduce/distribute the copyrighted movies.
The Ds just put the software into the marketplace and didn't do anything else. 9th Circuit said
that - under existing case law, there isn't the requisite knowledge here.
2. Sup. Ct. said that Ct. App. misapplied Sony. Doesn't have to be specific knowledge of infringement to
be liable.
3. One infringes contributorily by intentionally inducing or encouraging direct infringement, see
[Gershwin], and infringes vicariously by profiting from direct infringement while declining to
exercise a right to stop or limit it . . . . *397+

9th cir misunderstanding of the sony rule: they believed that knowledge of infringement was enough to
find contributory liability, but that is not the case any more. You need more than mere knowledge.

Meaning of the Sony rule: If an article is good for nothing else but infringement, there's no legit public
interest in its unlicensed availability, and there's no injustice in presuming an intent to
infringe. Conversely, if an item has substantial lawful and unlawful uses, liability is limited to cases of
more acute fault than mere understanding that some of the products will be misused. (Knowledge
would not be enough in the latter case. Need something more to impose liability).
"Inducement" rule: "One who distributes a device with the object of promoting its use to infringe
copyright, as shown by the clear expression/other affirmative steps taken to foster
infringement, is liable for the resulting acts of infringement by 3rd parties." (400)
What is not inducement: *M+ere knowledge of infringing potential or of actual infringing uses would
not be enough here to subject a distributor to liability. Nor would ordinary acts incident to
product distribution, such as offering customers technical support or product updates, support
liability in themselves. *400+
3 pieces of evidence of inducement: 1) each company showed itself to be aiming to satisfy a known
source of demand for copyright infringement (i.e. former Napster users); 2) MGM showed neither D
attempted to develop filtering tools to diminish infringing activities using their software; 3) The Ds
(Grokster and StreamCast) make money by selling advertising space/directing ads to comp
screens. Their business model could only succeed with high-volume use, which could only be
infringement.

SAFE HARBOR

512 safe harbor and 1201 and circumvention of technological protection measures
If you would otherwise be liable under existing rules but fit under the safe harbor qualifications,
no liability

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Courts look to see if there is immunity first before going through the secondary liability analysis

Eligibility for 512 safe harbor:
The entity must be a service provider
two different definitions in 512(k)
- k(a) - the term service provider means an entity offering the transmission, routing, or
providing of connections for digital online communications, between or among points specified
by a user, of material of the users choosing, without modification to the content of the material
as sent or received.
-k(b)- the term service provider means a provider of online services or network access, or the
operator of facilities therefor, and includes an entity described in subparagraph (A).

The entity must have, and inform subscribers of, a policy of terminating repeat copyright infringers;
512(i)
Additional requirements for each of the four types of OSP functions

Additional requirements for 512(c), (d):
Additional requirements for hosters and search engines; 512(c), (d)
must designate agent for notifications
upon receiving knowledge of infringement, must take down (looks like contributory
infringement)
cant have financial benefit + ability to control (looks like vicarious liability)

4 types of services = safe harbor:
a) Transmitting: maintaining "pipes" for data to go through
b) Caching: run a server that makes a copy that makes material on the web in order for it to be
physically closer to users who want to access that material
c) Hosting: hosting a site for user-generated content, or "UGC" (e.g. Youtube, Facebook)
d) Linking: search engines
c and d heavily litigated

Notice-and-takedown-and-put back procedure
Copyright owner provides conforming notice to service provider (many req's to be met to count as
notice)
Service provider takes down the infringing material, and notifies the person who posted it
The person who posted it may provide a conforming counter-notification to the service provider
(saying that it's not infringing/denying the notice sent by the copyright owner)
If so, the service provider notifies the copyright owner, and puts back the material if copyright owner
doesn't file an action within 10 days.

Safe Harbor for OSPs

Viacom International Inc. v. YouTube, Inc.
The VIACOM V. YOUTUBE decision, decided: April 5, 2012 by the
Second Circuit out of New York, deals with issues of first impression
related to the DMCA knowledge standard, and issues related to what

44
automated software functions may disqualify a service provider from
the DMCA storage safe harbor.

I. THE KNOWLEDGE REQUIREMENT RULINGS

The DMCA requires the ISP to expeditiously remove or disable the infringing
material when the service provider has "actual" knowledge or "red flag" knowledge
of specific infringing activity on its website or service. This case adds new clarity to
the definition of knowledge and sanctions applicability of a new theory of
knowledge" that is not in the DMCA itself to be applied to DMCA cases.

First, the court rejected Viacoms argument that its estimates of the large amount
of infringing content on YouTube suggest that YouTube was conscious that
significant quantities of material on the YouTube website were infringing. The Court
said,

But such estimates are insufficient,
standing alone, to create a triable
issue of fact as to whether YouTube
actually knew, or was aware of facts or
circumstances that would indicate, the
existence of particular instances of
infringement.
So, mere estimates of the amount of infringing content, by themselves do not
necessarily indicate that the service provider had knowledge.

Second, the Court upholds a large body of precedent that requires the service
provider to remove infringing material only after it has knowledge or awareness of
specific and identifiable infringing activity (as opposed to a general awareness that
infringing material may be present on the website or service). The Courts says:

Based on the text of 512(c)(1)(A),
as well as the limited case law on
point, we affirm that actual
knowledge or awareness of facts or
circumstances that indicate specific
and identifiable instances of
infringement will disqualify a service
provider from the safe harbor.
Third, the Court clarifies the standards for actual knowledge and red flag
knowledge. The Court clearly specified the tests for actual and red flag knowledge.

Actual knowledge = a subject test
Red Flag knowledge = an objective test


45

The Court says:

In other words, the actual knowledge provision turns on whether
the provider actually or subjectively knew of specific
infringement, while the red flag provision turns on whether the
provider was subjectively aware of facts that would have made the
specific infringement objectively obvious to a reasonable person.
The red flag provision, because it incorporates an objective
standard, is not swallowed up by the by the actual knowledge
provision under our construction of the 512(c) safe harbor. Both
provisions do independent work, and both apply only to specific
instances of infringement.

46

The Court listed the previous decisions that looked at the issue (only 3 cases) and said,

While we decline to adopt the reasoning of those decisions in
toto, we note that no court has embraced the contrary
propositionurged by the plaintiffsthat the red flag provision
requires less specificity than the actual knowledge provision.

Fourth, the Court considered an issue of first impression and held that,

*A+although the DMCA does not mention willful blindness, the
willful blindness doctrine may be applied, in appropriate
circumstances, to demonstrate knowledge or awareness of specific
instances of infringement under the DMCA.

Viacom argued that YouTube was willfully blind to specific infringing activity. i.e., it applied the
common law willful blindness doctrine in the DMCA context.

A person is willfully blind or engages in conscious avoidance amounting to knowledge where the
person was aware of a high probability of the fact in dispute and consciously avoided confirming
that fact. The exact meaning of this standard will be litigated in
DMCA cases to come.

Fifth, the Court reaffirmed that Section 512(m) is explicit: DMCA safe harbor protection cannot
be conditioned on affirmative monitoring by a service provider.
II. RIGHT & CONTROL and Automated Software Functions That May Disqualify the Service
Provider from the Storage Safe Harbor.
The 512(c) storage safe harbor provides that an eligible service provider must not receive a
financial benefit directly attributable to the infringing activity, in a case in which the service
provider has the right and ability to control such activity. 17 U.S.C. 512(c)(1)(B). This is called
the right and control provision.

Item-specific knowledge not required for 512(c)(1)(B):
Any service provider that has item-specific knowledge of infringing activity and thereby obtains
financial benefit would already be excluded from the safe harbor under 512(c)(1)(A) for having
specific knowledge of infringing material and failing to effect expeditious removal.

Service providers usually incorporate many automated software functions that run behind the
scenes to make the user experience easier or to decrease load on the providers servers and
resources. The question is whether or not these automated software functions constitute right
and control so that the service provider is disqualified from the storage safe harbor.


47
The Court indicated that, the relevant case law makes clear that the 512(c) safe harbor
extends to software functions performed for the purpose of facilitating access to user-stored
material. Thus, the question for the Courts is to determine if the software functions for that
purpose or for some other purpose (that would disqualify the service provider from immunity).

The Court said,

Accordingly, we conclude that the right and ability to control
infringing activity under 512(c)(1)(B) requires something more
than the ability to remove or block access to materials posted on a
service providers website. MP3tunes, LLC (emphasis added)
(citations omitted).

The remainingand more difficultquestion is how to define the
something more that is required.

The something more means the Court looks to see what the service provider is doing behind
the scenes or in the back end to provide the service to the user. This is a case by case
consideration - it all depending on what the service provider does in each case.

The court ruled that the following automated software functions of YouTube were not
something more which means that by virtue of those functions, YouTube did not have Right
and Control and was still eligible for DMCA protection under 512(c).
A. Transcoding & Playback. The Court found that transcoding and playback were
automated software functions that fell within the Storage safe harbor storage (by reason of the
storage at the direction of a user.). Transcoding involves *m+aking copies of a video in a
different encoding scheme in order to render the video viewable over the Internet to most
users. The playback process involves deliver*ing+ copies of YouTube videos to a users
browser cache in response to a user request. (citations omitted)

B. Thumbnails of related videos. The related videos function involves a YouTube
computer algorithm identifying and displaying thumbnails of clips that are related to the video
selected by the user. Viacom claimed that this practice constitutes content promotion, not access
to stored content, and therefore falls beyond the scope of the safe harbor.

The Court said,

The record makes clear that the related videos algorithm is fully
automated and operates solely in response to user input without the
active involvement of YouTube employees. (citation omitted).

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Furthermore, the related videos
function serves to help YouTube
users locate and gain access to
material stored at the direction of
other users. Because the algorithm
is closely related to, and
follows from, the storage itself, and is
narrowly directed toward providing
access to material stored at the
direction of users, (citation omitted),
we conclude that the related videos
function is also protected by the
512(c) safe harbor.

However, with respect to a function known as third party
syndication, the Court said this software function is the
closest case.
Here is what happened in the Courts words:

In or around March 2007, YouTube
transcoded a select number of
videos into a format compatible
with mobile devices and
syndicated or licensed the videos to
Verizon Wireless and other
companies. The plaintiffs arguewith
some forcethat business
transactions do not occur at the
direction of a user within the
meaning of 512(c)(1) when they
involve the manual selection of
copyrighted material for licensing to a
third party. The parties do
not dispute, however, that none of the
clips-in-suit were among the
approximately 2,000 videos provided to
Verizon Wireless.
The Court sent the issue back down to the District Court (the trial court) and said:

In order to avoid rendering an
advisory opinion on the outer
boundaries of the storage provision, we
remand for fact-finding on the
question of whether any of the
clips-in-suit were in fact syndicated to

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any other third party.

In other words, this is still an open issue for YouTube, yet to be determined.
WHAT HAPPENS NEXT?

The trial court will consider the following issues:
1. Whether, on the current record, YouTube had knowledge
or awareness of any specific infringements (including any clips-
in-suit not expressly noted in this opinion);
2. Whether, on the current record, YouTube willfully blinded
itself to specific infringements;
3. Whether YouTube had the right and ability to control
infringing activity within the meaning of 512(c)(1)(B);
4. Whether any clips-in-suit were syndicated to a third party
and, if so, whether such
syndication occurred by reason of the storage at the direction of the
user within the meaning of 512(c)(1), so that YouTube may claim
the protection of the 512(c) safe harbor.

Technical Protection Measures

Comparison of 1201 (anticrumvention) with Sony

1201
A device is banned if it:
is primarily designed or produced for the purpose of circumventing
has only limited commercially significant purpose or use other than to circumvent;
or
is marketed . . . for use in circumventing
Sony
A device may be banned if it is not capable of substantial noninfringing uses

3 anticircumvention prohibitions:
Basic provision, 1201(a)(1)(A):
prohibits the act of circumventing an access control
First anti-trafficking provision, 1201(a)(2):
prohibits providing a device that allows access to a protected work
Second anti-trafficking provision, 1201(b)(1):
prohibits providing a device that disables a protection against copying (or other
exclusive rights of copyright holder)


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Section 1201
-Makes it illegal to circumvent technological protection
-Makes it illegal to make or sell or give away or traffic in any technology designed to circumvent
technological protection (encryption)
-Proponents of DMCA
-Important to prevent people from circumventing access controls, otherwise that market place
will never exist
-Meant we had to overrule the Sony standard
-Also prohibit devices designed for other uses, that have limited commercially significant uses
-Sense that 1201 overrules Sony
-If it is a circumvention device it is independently illegal whether or not it has significant non-
infringement uses
-IP equivalent of breaking into someones hous

51

Summary of Anticircumvention Rules Type of technological protection
Access controls Use controls
Type of
prohibition
Against act of
circumvention
1201(a)(1)(A) None
Against trafficking 1201(a)(2) 1201(b)(1)

Access and use controls on an e-book limited to use on one reader, no printing:
A technology that allows you to read it on a different computer is defeating an access control
if you use the technology, you violate (a)(1)(A)
if you traffic in the technology, you violate (a)(2)
A technology that allows you to print out copies is a use control
if you traffic in it, you violate (b)(1)
but if you use it, you dont violate 1201, but you may violate 106

sec. 1201/Circumvention of technological prevention - Not part of Copyright Act (??????)
came about b/c of 2 treaties the US entered in 1996. Requires legal protection against
circumvention of technological prevention measures --> encryption that limits access (e.g.

52
encrypted DVDs makes it hard to copy). If you want to make a copy of it, you have to
circumvent the measures.
software DECSS (remove technological protection on DVDs) --> makers sued and found liable
under 1201.
Why isn't contributory infringement doctrine good enough to meet req's of treaty? Seems good
enough...but Congress decided it wasn't good enough cuz of the Sony rule (a device may be
banned if it's not "capable of substantial noninfringing uses")
under 1201: a device is banned if it: is primarily designed or produced for the purpose of
circumventing; has only limited commercially significant purpose or use other than to
circumvent, or is marketed for use in circumventing.

MDY Industries, LLC v. Blizzard Entertaiment, Inc. (pg 432)

Defendant distributed a play-enhancing bot that circumvented the detection mechanisms
designed to prevent bot assisted players from accessing the plaintiffs online game
The 9
th
Cir. Held that 1201(a) applied even though the circumvention device did not enable
users to infringe any of the plainitffs exclusive rights under section 106. In other words, the 9
th

Cir. Views access as an independent right protected by section 1201

1) Basic provision, 1201(a)(1)(A): prohibits act of circumventing an access control
2) First anti-trafficking provision, 1201(a)(2): prohibits trafficking of tech. in (a)(1)(A)
3) Second anti-trafficking provision, 1201(b)(1): can't traffic in technologies that circumvent tech.
measures that protect a right of a copyright owner (reproduction, distribution, public
performance/display, etc)

Section (a) creates a new anti-circumvention right distinct from copyright infringement, while section (b)
strengthens the traditional prohibition against copyright infringement.
Statutory exceptions in 1201(d) (j):
Nonprofit libraries, archives, and educational institutions
Reverse engineering
Encryption research
Protection of minors
Personal privacy protection
Security testing

Regulatory exceptions to 1201(a)
1.software protected by obsolete or malfunctioning access controls
2.literary works distributed in e-book formats that disable the e-books read-aloud function
3.films on DVD where circumvention is to incorporate short portions of the film into new works for
criticism or comment and educational uses
4.circumventing controls on video games for security testing purposes

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5.software on cell phones that prevents the phones owner from using the phone when the owner
switches to another cellular companys network
6.jailbreaking an iPhone to allow running applications that Apple doesnt approve of

How 1201 addresses fair use:
Anti-circumvention rule doesnt apply to the act of unauthorized copying, so that fair use
remains available as a defense for what you do after you gain access
Allows Register of Copyrights to exempt certain classes of uses from 1201(a)(1)(A)
Includes specific exemptions for uses that Congress deemed fair

VII. Publication, notice, deposit, registration

PUBLICATION AND FORMALITIES
WORKS PUBLISHED BEFORE 1/1/78
Federal protection began on publication with proper notice. Publication without proper notice forfeited
work to public domain
WORKS PUBLISHED BETWEEN 1/1/78 AND 3/1/89
Notice required for all published works. If work published without copyright, copyright must comply
with cure provisions within 5 years or work forfeited o public domain
WORKS PUBLISHED AFTER 3/1/89
Notice is optional. 401404. Lack of notice still may allow the innocent infringer defense. 401(d),
402(d).

Publication Under the 1909 Act: Before 1978, federal copyright protection applied only to published
works and was secured at the time the author published a work with proper copyright notice.
Forfeiture: forfeiture required a "general publication", which mean the work was available to
members of the public without regard to their identity or what they intended to do with the
work; no forfeiture for "limited publications" where the work was only available for selected
persons and for limited purposes
o I.e. if a person sold the story without a copyright notice it would be forfeited but not
if he just gave it to select members for criticism or journalists
The 1909 Act excused the copyright owner if he tried to comply with the notice requirement but
by accident or mistake did not provide notice on particular copies
o Must have attempted to comply, no excuse if the author didn't know

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o Excuses only a small number of copies
o But cannot recover damages from an innocent infringer without notice

Publication Under the 1976 Act: For works published between Jan. 1, 1978 to Feb. 28, 1989,
copyright was expanded to [1] include unpublished works, and [2] began as soon as it was
fixed in a tangible medium of expression.
o Notice on publications still required but omission did not invalidate the copyright if:
Notice only omitted from a small number of copies, OR
Work was registered within 5 years of publication and there was a reasonable
effort to add notice to exiting copies, OR
Notice was omitted by a licensee despite an express contract to do so
Formalities
A. Publication and Notice Before the 1976 Act
1. Policy: copyright is a bargain between the public and creators to incent new works of
authorship dont want to give out rights when they are not needed to incent new works
because exclusive rights tend to diminish access and the publics ability to use the works. In
this context, notice makes sense because want copyright owners to indicate to others when
work was freely available. Here the court is the guardian of the public interest insuring that
it gets its share of the copyright bargain.
a. US is a proud defender of formalities: led to works from other countries falling into the
public domain because couldnt comply.
b. US is a net exporter of copyrighted works: willing to give up formalities to increase this
benefit under Berne. Didnt really give up much, since courts are reluctant to enforce,
makes Berne just cosmetic.
c. Shift in attitude: now concerned more with protecting copyright owners from pirates.
(1) US has broader universe of copyrightability with its low originality and creativity
bar. Only limited by who cares enough to go through the steps to secure copyright
protection. Result is that works have been removed from the public domain,
whether or not they have real value worth protecting.
(2) Feist is an effort to limit the scope of protection by placing a higher bar on
originality.
(3) Old attitude of copyrights bargain to incent works for the public benefit is obsolete:
now believe that commodification encourages the widest possible distribution.
Want to ensure that copyright holders can earn profits from access, believe that
distributors will invest in finding the works and the customers.
2. Formalities have loosened up over the last century:

55
a. Requirement that works copyrighted in the US be printed here was vetoed by Reagan in
1985.
b. 1909 Act: publication with notice entitles the author to copyright, based on
dissemination to the public. If the work was published without notice it fell into the
public domain, placed the onus on the author to notify the public.
(1) 19 required the word copyright, name of owner, date, year of first publication (not
creation).
(2) 20 required notice be placed on the title page or the following page.
(3) Any substantial deviation from these rules was fatal.
(a) Placement: court held notice on the backcover of a pamphlet resulted in
publication without notice, so not copyrighted.
(b) Name: initially held that the name must be of the owner at that moment. Later
loosened up to allow corporations to use their name as alter egos and
pseudonyms.
(c) Collections: allowed single notice in a collection.
(d) Derivatives: allowed the name of just the author and date of publication of the
derivative.
(e) Date errors: not fatal, if earlier, count from first year and end earlier. If later,
count from when the work came into public distribution. Dont want to deceive
the public into believing the copyright will last longer.
3. Publication:
a. Invested publication: transfer of a single copy with notice was sufficient to allow the
author to register copyright.
b. Divested publication: terminated copyright, putting works into the public domain
without notice.
(1) Courts were reluctant to allow transfer of one work to remove copyright
protection. Would prefer to avoid a forfeiture of copyright in works before they
were exploited commercially. Dont want to penalize unsophisticated authors for
failing to put notice on the first copies that left their hands.
(a) Limited publication: distribution to a group for a limited purpose.
(b) General publication: unlimited as to the recipient or as to the purpose of use.
(2) Estate of Martin Luther King, Jr. v. CBS, Inc., 1998: Copies of Kings I Have a
Dream speech were made available to the press before the march and later
republished in the SCLC Newsletter without copyright notice. The trial court held
that the transfer of copies to such a wide audience was general publication and put
the speech in the public domain. The court of appeals held that the speech was of
limited publication, which is not publication for purposes of loosing your copyright.
B. 1976 Act Solutions as to Publication and Notice
1. Publication: Definition and Context

56
a. Definition: the distribution of copies or phonorecords of a work to the public by sale or
other transfer of ownership, or by rental, lease, or lending. The offering to distribute
copies or phonorecords to a group of persons for purposes of further distribution, public
performance, or public display, constitutes publication. A public performance or display
of a work does not of itself constitute publication. ( 101)
(1) The statute doesnt define distribution: but it remains an important pre-Berne
indicator because publication of the work triggers the obligation to deposit a copy
with the Library of Congress.
(2) ER Live: encourage people to tape, no copies were distributed, but copies in the
public domain were authorized by the copyright owner. Not clear if this is
distribution since public performance is not enough.
b. Courts have translated the 1976 as declarative of prior law
(1) Limited v. General Publication: distinction still part of determining publication.
(2) Investive v. Divestive: doesnt count anymore. A work is either published or its not.
(3) Publication requires the authority and consent of the copyright owner.
2. The Notice Requirement: 1978 to March 1989
a. Works first published before 1989 need notice:
(1) Copyrighted works need (c), name, and date (year of first publication).
(2) Phonorecord works need (p), name, and date (since music is not copied).
b. 401 Visually Perceptible Copies and 402 Phonorecords of sound recordings
(1) Distinguishing sound recordings and phonorecords: sound recording is a
copyrightable work, a phonorecord is the medium in which it is fixed. So a CD
contains two protectible works: the phonorecord and the underlying music.
(2) The owner of the work has the right to distribute both, but law has not required
notice of copyright in addition to phonorecords. Sound recordings require a (p), but
its a historical accident that phonorecords were not thought to be a copy so dont
need a (c). So dont have to put copyright notice on phonorecords in order to
protect them.
(3) Works are published whether in copies or phonorecords: when published in copies,
needs a notice, as well as when published in phonorecords. Until 1971, only needed
notice on phonorecords, then statute amended to add sound recordings, making
them copyrightable for the first time. Because Congress didnt want to cause prior
published works to go into the public domain, it didnt require copyright notice on
phonorecords or decide to call them copies.
c. 405 Omission of notice on certain copies and phonorecords: lack of notice is OK if:
(1) Omitted from only a small number of copies.
(2) Registered within 5 years of publication without notice and made a reasonable
effort to add notice to copies published after the omission was discovered.

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(3) Notice has been omitted in violation of an express requirement in writing that, as a
condition of the copyright owners authorization of the public distribution of copies
or phonorecords, they bear the prescribed notice.
d. 406 Error in name or date on certain copies and phonorecords: copyright will
continue to be valid even if incorrect notice is given:
(1) But the copyright holder will not be able to recover from an innocent infringer who
got a license from the wrong holder, unless he has recorded his name in the
copyright office prior to the infringement.
(2) If an earlier date is incorrectly posted on a work for hire, it will lose the years, dated
from when enter distribution.
(3) If an earlier date is incorrectly posted for an individual work, doesnt matter because
copyright still extends to 70 years after the death of the author without regard to
the year of notice.
(4) If the posted date is more than a year after publication, in public domain without
notice refer to 405 to cure.
(5) The copyright notice is still valid even if it lacks name and date of notice, refer to
405 to cure.
e. All of these exceptions made copyright notice unreliable. The public could not assume
that works published without notice were in the public domain, still had to search to
determine if an omission of notice had been cured.
f. There have been no formal requirements since March of 1989 when the US entered the
Berne Convention in an effort to align US copyright law with the rest of the world.
(1) Continuing US anomolies:
(a) Alienability of copyright
(b) Employer can be an author and exercise the authors rights
(2) Incentives to use notice:
(a) Prevent others from being able to claim that they are innocent, good faith
infringers. (Cant be a good faith infringer if relying on lack of notice when
notice is not required). Primarily applies to businesses with little experience in
copyright, or if D got a license from an infringer.
(b) Of course this incentive is weakened in industries commonly protected by
copyright, because infringers should be on notice to check for cure.
C. Deposit and Registration
1. Deposit in Library of Congress
a. Copyright holders must deposit two complete copies within three months of
publication. ( 407)
b. The Library can fine those who fail to deposit ( 407(d))
c. Now that registration is permissive, hinders the collection of works.
2. Registration

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a. Procedure:
(1) Permissive, however, if the copyrightholder is a US Citizen and the work is first
published in the US, he wont be able to sue until the work is registered.
(2) Dont have to register at any particular time, can register the day before going to
court.
(3) There has been no significant drop off in registration since 1989.
b. Registers Authority and Effects of Registration:
(1) For works published before 1989, has curative effect on notice defects.
(2) Evidentiary value of certificate of registration: establishes rebuttable presumption
that copyright is valid. Shifts the burden of proof to D to disprove validity of
copyright. Relieves P of having to prove that his copyright is valid, or that his work is
original, he just has to prove it was copied.
(3) Copyright holders can only recover attorneys fees and damages occurring after
registration.
(4) Courts still harbor the belief that if the work is not registered, it is not covered by
copyright.
(5) Must be registered in order to receive compulsory licensing fees.
(6) Pre-Berne, only US Citizens and nationals need to register to sue.

Publication

Academy of Motion PicturesArts & Sciences v. Creative House Promotions, Inc. (1991)(pg 464)
The Oscar statuette was publicized a lot (displayed on TV, many pictures of it all over the place,
handed out to many people).
Issue: Did the Oscar enter the public domain?
Ct. made a distinction between general/limited publication.
General publication - standard publication. When a work is made available to members
of the public regardless of who they are or what they will do with it.
Limited publication - doesn't count as publication for purposes of losing common law
tangible copies of the work are distributed both (1) to a definitely selected
group (2) and for a limited purpose, without the right of further reproduction,
distribution or sale. White v. Kimmel
How about the fact that it was shown/displayed via TV, why doesn't that constitute publication?
Under common law, mere display/exhibition of an artistic work doesn't count as a
publication. Publishing pics of the statuette doesn't count b/c publishing 2D pics doesn't
constitute publication of 3D objects. (Rothchild: it's the form of the statuette that
matters...not so clear that this rule makes sense/should be followed here).

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Why doesn't distribution of copies count as publication?
The question is whether it's for a select group of people (limited publication or not?) In
a situation like this, the copyright owner isn't trying to make money for it (making copies
to sell it).
If you're only distributing it to a limited group for a limited purpose/not getting financial
benefits, you shouldn't lose copyright protection (not everyone agrees with this
justification but this is what they went with).
These aren't available for anyone to buy - they were only given to winners of the award.
How about the clause "without the right of further reproduction, distribution, or sale"? (from
White v. Kimmel two part limitation test)
The court said there was an implied limitation on the right to sell the work.
implied restriction on recipients' use/distribution of the Oscar before 1941, express
restriction after

Nutt v. National Institute Inc. for the Improvement of Memory ( pg 474) (1929)
Rule: A public performance of a dramatic or musical composition doesn't count as publication.(a
rule from the common law)
Other cases: Showing/projecting a movie, public performance of a musical composition, even if
broadcast on the radio, doesn't make it published.
Why does this rule make sense? If a book seller is obligated to comply with statutory formalities
such as copyright notice, speech writers should have the same obligation.
Speaking the speech is not a publication. Broadcasting it to millions of people by radio/tv
doesn't change anything (just reaching more people than it would otherwise).
How about giving it out to the press in advance? It was distribution to a limited group
for a limited purpose...CL rights not lost.
So if someone gives a speech and doesnt distribute copies, the mere giving of a lecture, as
public as it might be, is deemed to be a limited publication
Policy Rationale why public performance is not a publication: Public performance does not
constitute publication, because in order to sue for copyright infringement you would have to
register it to be able to sue for infringement, but if youre making changes up to the last
moment then it would be difficult to register beforehand

Publication and Notice

Letter Edged in Black Press, Inc. v. Public Building (pg 478)
Did Picasso mean to donate the copyright to the public domain?
Probably, can't give something to Chicago (they're not an entity to give something to)
What does the copyright issue turn on? Limited vs. general publication.
Building commission and artist people no copyright notice on the maquette...no restrictions
on copying the maquette itself. It was a public display with no restrictions on copying. Pictures

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allowed to be taken/published. Officials made uncopyrighted pictures of it available. No
protection available.

So they could either put a notice on it, or register it with the copyright office- to protect it

Sidwell Co., Inc. v. Real Estate Data, Inc. (1987)

Facts:
Sidwell was a printer and distributor of maps
Sidwell entered into a K with Cook County to produce maps for the county
the sample maps, provided by Sidwell, carried a notice identifying Sidwell as the copyright
owner, however the K itself did not provide that Sidwell would own any resulting copyright
Sidwell marketed these maps commercially
A company called Real Estate Data, began selling copies of the maps and Sidwell brought a
copyright infringement suit.
in an earlier appeal in connection with that suit, the seventh circuit ruled that any
copyright in the maps would have belonged to Cook County, as the commissioning
party of the works, under the work-made-for-hire doctrinre in place during the 1909
act.
Holding:
Although the original copyrights would have belonged to Cook County, the copyright notices on
the maps that were distributed by Sidwell indicated that Sidwell was the copyright holder, not
cook county.
in the absence of a prior written assignment of the copyright, this was a fatal defect in
the copyright notices that had the effect of injecting the maps into the public domain
under the 1909 Act, the copyright notice was intended to inform the public of the existence of
the copyright, the time of commencement, and by whom it is claimed
this court has found no cases under the 1909 act indicating that a copyright can survive where,
in the absence of a prior written agreement, the name of an unrelated party appears on a
copyright notice in place of the actual proprietor.

Essentially, by not having the true copyright owners name on the notice, the publication of the subject
matter enters the public domain and loses copyright protection

Shapiro & Son Bedspread Corp. v. Royal Mills Associates (1983)
Shapiro and Royal = competitors in manufacture/distribution of bedspreads. Shapiro created
the Lace Fantasy line of beds. Copyright notice was on a flyer/insert contained in the
packaging of the bedspread
Ct: Under the 1909 copyright law, this is defective/insufficient notice b/c its not affixed to
copies of the works (similar to a detachable tag that can be discarded)

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Dist. from Uneeda Doll Co. v. Goldfarb where the display package with a 3-sided transparent
window was ruled an integral part of the doll since it remained useful as a keeping place for
the doll.
The flyer in the bedspread cant be considered an integral part of the work since theyre
generally discarded after the bedspread is unwrapped
Ruling: The flyer saying Design Copyrighted was considered defective notice; no copyright
protection.

Formalities: registration and deposit
Deposit:
Must deposit the required number of copies in the Copyright Office within 3 months of the date
of publication.
Some things are exempt (like electronic works published in the US only available online)
If deposit isn't made within 3 months, there's a fine (but don't lose protection)

Registration:
- submit form to Copyright Office. They look at it/perform an examination, then provides certificate of
registration (or not). It's very cursory, just a matter of looking to see if there's copyrightable subject
matter and whether the claim accurately describes the subject matter.
- Surprising that registration is considered prima facie evidence of validity of copyright (burden shifts to
D if they argue invalid copyright), since there isn't a heavy examination of the work.
- You have to register before bringing an infringement lawsuit.
sec. 411 - registration and civil infringement actions...ONLY for US works! Foreigners don't have to
register first. (Treating foreigners at least as good as citizens)
- "Pre-registration": you can bring suit before actual registration. Work may not even be completed yet,
and takes time to get the certificate of registration. Under this system, you pre-register online and it's
instantly valid.

Initial Ownership of Copyright
- sec.201(a): Initial ownership of copyright vests in the author.

Deposit

Section 407= mandatory deposit- this requirement can be thought of as one means to further the
constitutional purpose of copyright itself, to promote the progress of Science, U.S. Const., Art. I, Sec.
1. Cl 8,, by making available and preserving in a central location the nations- and much of the worlds-
cultural achievements

Section 408(b)= archival deposit- requires deposit in connection with registration


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Section 407 makes clear that mandatory or archival deposit is not a condition of copyright, which
means that the failure to make the deposit will not affect ones ability to enforce the copyright against
infringers.

Archival deposit requirement applies to works first published abroad as soon as they are republished in
the US
Deposit requirement applies regardless of the nationality of the author

Copyright Office Regulations provide for deposit of online-ony works only upon demand by the
Copyright Office

The government can demand that authors, painters, sculptures, movie producers, sound engineers and
other creators must donate copies of their works to the government, because as Ladd v. Law &
Technology Press held, its analogous to a government fee required as a condition of a statutory benefit.

section 401(a)- a notice of copyright as provided by this section may be place on publicly
distributed copies
401(d)- if you follow the rules for notice, then no weight will be given to a copyright
defendants saying that he didnt realize that it was not copyright protected
section 504(c)(2)- court could reduce award to 200 dollars, but if you put the
notice then the court won't have to reduce to 200 dollars and you can still get
the full amount

VIII: Initial ownership of copyright

Sole and Joint Ownership

Andrien v. Southern Ocean County Chamber of Commerce (1991) (pg 540)
Real estate agent put a lot of hard work into re-creating a map. He made some creative choices
and the originality wasn't the issue here.
Issue: someone was assigned to do the artwork and he just supervised her. Is he the author?
Rule: A party can be considered an author when his expression of an idea is transposed by
mechanical or rote transcription into tangible form under the authority of the party.
Here, Haines' activity didn't intellectually modify or technically enhance any of the concepts
articulated by Andrien. Court considered her just like a secretary who wrote down what she
was told. They didn't think she did anything that would take away authorship from Andrien.


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Aalmuhammed v. Lee (2000)(pg 544)
Aalmuhammed was providing counsel and put a lot of time into a Malcolm X movie (providing
expertise). Lee gave him $25,000, but Aalmuhammed wanted to be considered a joint author.
For a joint authorship, there must be 3 req's met: sec. 101 def'n -
1) must be a work prepared by 2 or more authors,
2) with the intent that their contributions be merged/interdependent.
3) each contribution must be independently copyrightable (not part of the statute)
Can any of Aalmuhammed's contributions be independently copyrightable? Possibly (he added
some scenes and did a lot of other original work). But that's not enough!
First, an author "superintends" the work by exercising control. (Aalmuhammed had no
authority/control).
Second, putative coauthors make objective manifestations of a shared intent to be coauthors
(no manifestation here...Spike Lee wasn't even considered an author, it was WB);
third, the audience appeal of the work turns on both contributions and the share of each in its
success cannot be appraised (not talked about here, but probably satisfied since he made
significant contributions)
Control in many cases will be the most important factor, and he didn't have it here.
Can Aalmuhammed sue WB for copyright infringement? Unlikely. The fact that he worked on
this movie knowing that the whole point was to include his contributions...at least implied
authorization to use the material for that purpose.
The Court found that Aalmuhammed was not 'superintending' anything. He was working for Lee,
the movie's director. Lee controlled all aspects of the movie.
In addition, there was never an intent on the part of Lee or the movie's producers to
make Aalmuhammed a co-author. It was strictly work for hire.
The Court noted that even Lee was under contract with the movie studio in a work for
hire arrangement and so was not even an author himself. It would be absurd to find that
Aalmuhammed was author when Lee was not.
The Court found that it was good public policy to restrict the definition of author. Otherwise
people like Lee would never consult others because they'd be worried about losing control of
the rights. That would make the arts less accurate and interesting.

17 USC 201(a)- copyright vests initially in the author
the authors of a joint work are co-owners of copyright in that work
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, even if it is clear that their contributions are not equal
Each co-author may grant non-exclusive licenses to others, allowing them to use the work at
whatever price he deems appropriate, subject to a duty to share profits with other authors

Gaiman v. McFarlane (pg 553)

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"There has to be some original expression contributed by anyone who claims to be a co-author,
and the rule (we'll consider an exception momentarily) is that his contribution must be
independently copyrightable".
Gaiman described, named, and wrote the dialogue for the characters. But is the dialogue part
of the character?
Seems weird that the work of the penciler wouldn't have sufficient originality standing on its
own (their interpretation of Gaiman's descriptions).

Is the dialogue part of the character-
the outcome is that a contributor to a work like this can become a co-author even if everyone
agrees that what was contributed was not copyrightable
exception to the general rule that each co author has to have an independently
copyrightable contribution to the work

Facts:
P= Gaiman, D= McFarlane
Gaiman brought suit under the copyright act against McFarlane seeking a declaration that he
(Gaiman) owns copyrights jointly with McFarlane in certain comic-book characters.
McFarlane began publishing a series of comic books called Spawn, which at first he wrote and
illustrated himself
They were criticized for bad writing, so McFarlane sought out top writers each to write a script for
one issue of Spawn
Gaiman was one writer.
He accepted the invitation and wrote the script for Spawn issue number 9
Their contract was oral and there was no mention of copyright
Gaimans script introduced 3 new characters- Medieval Spawn, Angela, and Count Nicholas Cogliostro
Gaiman described, named, and wrote the dialogue for them, but McFarlane drew them
Gaiman contends that he and McFarlane are joint owners of the copyrights on the 3 characters by
reason of their respective contributions to joint (indivisible) work.
McFarlane concedes Gaimans joint ownership of Angela, but not of the other two.

Issue: Does Gaiman have joint ownership of the copyright with McFarlane

Holding: yes

Reasoning:
There has to be some original expression contributed by anyone who claims to be a co-author,
and the rule (well consider an exception momentarily) is that this contribution must be
independently copyrightable.
But where two or more people create a character jointly in such mixed media as comic
books and motion pictures and succeed in creating a copyrightable character, it would

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be paradoxical if though the result of their joint labors had more than enough originality
and creativity to be copyrightable, no one could claim copyright.
The decisions that say generally, that each contributor to a joint work must make a
contribution that if it stood alone would be copyrightable werent thinking of the case in
which it couldnt stand alone because of the nature of the particular creative process
that had produced it.
The finished product is copyrightable yet one can imagine cases in which none of the separate
contributions of the 4 collaborating artists would be
The writer might have contributed merely a stock character (not copyrightable, as were
about to see) that achieved the distinctiveness required for copyrightability only by the
combined contributions of the penciler, the inker, and the colorist with each
contributing too little to have by his contribution alone carried the stock character over
the line into copyright land
Gaimans contributions may not have been copyrightable by itself, but his contribution had
expressive content without which Cogliostro wouldnt have been a character at all, but merely
a drawing

The Gaiman court states that each co-author must contribute expression, and not mere idea, but that
such expression need not be independently copyrightable.
However, a requirement of independent copyrightability is probably the majority rule.

Works made for hire

Community for Creative Non-Violence v. Reid (1989) (pg 559)
"As a general rule, the author is the party who actually creates the work, that is, the person who
translates an idea into a fixed, tangible expression entitled to copyright protection. sec. 102."
Issue: whether the sculpture made by an artist is considered "work made for hire" by the
organization hiring him.
Once we know a work is for hire, it goes to sec. 201(b) employer/hiring person is considered
the author. Unless the parties have expressly agreed otherwise, the hiring party owns all the
rights in the copyright.
Section 101 defines work made for hire- 2 categories
(1) a work prepared by an employee within the scope of his or her employment; or
(2) Nine categories of specially commissioned works (sec.101(2)): a contribution to a
collective work; part of a motion picture/other audiovisual work; a translation; a
supplementary work; a compilation; an instructional text; a test; answer material for a
test; an atlas.
[How did these 9 categories come to be? 1963 proposal explicitly excluded commissioned
works; book publishers objected. 1964 proposal included all commissioned works (if parties so
agreed); authors objected; in 1965, publishers and authors compromised, in a horse trade; four
categories of works added; In 1966, House Committee added four more categories; one more
category later added.]

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To determine whether Reid was an employee, they looked at the common law Restatement of
agency (definitions of employer/employee).
Court found this artist was an independent contractor rather than an employee. He was hired
for only one specific task for a limited time, he worked in his own studio with his own materials,
and he was a skilled sculptor.
Court rejected P's argument that ability to control determined whether the work was made for
hire (that was just one factor to look at, contained in the Restatement of Agency)...weird that
they rejected this because this is the first factor listed.
Right to control work being performed, skill required, source of instrumentalities and
tools, location of work, duration of relationship, right to assign additional projects, hired
party's discretion, method of payment, role in hiring and paying assistants, regular
course of employer's business, payment of employee's benefits and taxes. (pg 566)
Rothchild: This 13-factor test is kind of ridiculous/doesn't do a very good job enhancing predictability.
Courts can weigh certain factors more and just decide however they want.
The dispute was originally about who gets possession of the sculpture. CCNV wanted it back but
Reid wanted to hang onto it.
Settlement: Reid gets to claim he made it (even though CCNV had substantial involvement of it),
but CCNV gets sole possession of the physical sculpture. Reid gets exclusive right to make 3D
copies of it. Either of them can make 2D copies (pictures). Each party got some of what they
wanted.

Avtec Systems, Inc. v. Peiffer (1995) (pg 570)
Peiffer = employee of Avtec. He made a computer program, and Avtec wants to claim
authorship under the "work for hire" doctrine. Issue is whether this program was made under
the scope of employment.
Look to CL for test to see whether this program was made within the scope of employment (2nd
Restatement of Agency). 3 factor test:
1) work was of the type for which Peiffer was hired to perform;
2) Peiffer's creation of the Program occurred "substantially within the authorized time and space limits"
of his job;
3) was "actuated, at least in part, by a purpose to serve" Avtec's interests.
Court analysis:
1st element undisputed.
2nd element not met (Dist. Court isn't clearly erroneous so App. Ct. won't overrule it)...it was
off-duty, at his own home with his own equipment, without supervision, not directly related to
any specific task he was assigned to.
3rd element: "appreciable" motivation (perceptible but not quite substantial). This doesn't
mean that the slightest motivation is sufficient to satisfy this test, otherwise this would be
impossible for an employee to ever refute. Court says Dist. Ct. isn't clearly erroneous (standard
of review). They say evidence that Peiffer might've been motivated to serve Avtec's interests
relates to incidents that occurred AFTER the initial fixing of the program (after he had already
created the program/the actual creation was his own motivation and unrelated to the company).

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Rothchild: development of technology has an impact on this rule (2nd rule may be irrelevant
now since people work at home with laptops and such)

Morris v. Atchity (2009)(pg 580)
Morris = author, wrote book "Jesus Augustus", enters into agreement with company to prepare
a novel based on her non-fiction work titled "The Ashes of Christ".
She's suing Writer's Lifeline, a company and not a person, for using the work in an unauthorized
manner.
Court: It's not a specially commissioned work.
The work was not one of the specially commissioned works, it may have been if it was translated
into another language, but not a fictionalization of it.
No one is contending that the writers life line is the employee
A novel does not fall within any of these two categories of works for hire in section
101
The derivative work was not to be added to the original work as a supplemental text.
also, the derivative work was not compiling any preexisting materials; rather, the
editorial agreement commissioned a compelling dramatic story
Thus P has not established ownership of the Derivative work via the work for hire doctrine.
Court: It's not a specially commissioned work.

Legally binding works

Veeck v. Southern Building Code Congress International, Inc (pg 590) (2003)
Person posted a non-commercial website containing info about N. Texas. He purchased model
building codes from SBCCI and cut/pasted the text onto his site (even though the licensing
agreement said no copying).
Original author: SBCCI, private non-profit entity. They develop model business codes for the
purpose of being enacted by municipalities. Very technical/complex. State lawmakers don't
have much expertise in this stuff so it's a big benefit for small towns.
Dist. Ct. ruled in favor of SBCCI
Ct. App: 8 to 6 decision, reversed.
4 arguments/bases to decide the issue of whether the laws are copyrightable:
1) The law is per se non-copyrightable; see Wheaton v. Peters, Banks v. Manchester
One of the parties in Wheaton v. Peters argued that statutes aren't copyrightable, the other side
acknowledged but tried to distinguish.
Banks: whatever judges do in their official capacity can't be copyrighted. Therefore, the law isn't
copyrightable. [They jumped from decisional law to statutory law here, saying both aren't
copyrightable]

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SBCCI argues 2 holdings from Banks: 1) judges don't need incentives to write their opinions.
Here, SBCCI argues it depends on copyright incentives to preform their public service. 2) people
have to be able to freely access the law. SBCCI says there is public access to its codes (Rothchild:
not sure what they mean, b/c they charge $72 for the codes).
Ct's response: minimum accessibility isn't enough (go to town hall and look it up) - the concept
of Due Process is too narrow. "Citizens may reproduce copies of the law for many purposes, not
only to guide their actions but to influence future legislation, educate their neighborhood
association, or simply to amuse." In re judge's incentives: the people are the real authors of the
laws (think of it like works made for hire; the people are the ultimate employers of the
lawmakers). Since the legislature can only do its work with the consent of the people,
everything they do is an act of the people. THIS is what Banks is based on (not based on the
need for economic incentives for gov't employees to do their work)
2) The code, once enacted, is a fact; idea merges with expression
Veecks argues once the code becomes law, it becomes fact, which isn't copyrightable. Also,
there's only one way to express the meaning of the building codes, the "idea" embodied in the
law, so the idea and expression merge. (Rothchild: seems like the law is more an existing thing
in the world, not a fact).
3) This case is different from situations where gov't merely references an external standard
CCC and Practice Management: the alleged infringers cited to the Red Book and Practice
Management, and they were held liable. Distinction from this case: the referenced works in
those cases were created by private groups for reasons other than being incorporated into the
law. Here, SBCCI operates with the sole motive/purpose of creating codes that will become
obligatory in law. (Rothchild: some difficulty with the Court's argument analytically).
4) Policy: SBCCI doesn't need the incentives
SBCCI argues that w/o full copyright protection, SBCCI will lack the revenue to continue this
public service of code drafting, so it needs the copyright incentives.
Ct: SBCCI has survived and grown for more than 60 years without having copyright protection.
Second, there should be mutual cooperation...the success of voluntary code-writing groups is
attributable to the tech. complexity of modern life. Third, SBCCI could easily publish these codes
with "value added" (commentary, questions, answers, etc.) and charge money for interpretive
info about the codes.

Dissent:
Veecks claim cannot be based on a violation of procedural due process, because he was not
denied access to the codes by either the towns or SBCCI and Veecks has not pointed to any state
actor who has purportedly denied him due process.
SBCCI is a private sector, not for profit organization, which relies for its existence and continuing
services, in significant part, on revenues from sale of its model codes.
The copyright systems goal of promoting the arts and sciences by granting temporary
monopolies to copyright holders was not at stake in Banks because judges salaries
provided adequate incentive to write opinions.

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Without private code creating entities, the federal government would be forced to author their
own regulations, which would inefficiently expend the time and resources of the legislative and
executive bodies of these governmental entities, not to mention the question of available
expertise.
Ultimately, taxpayers would end up paying for a service that is currently provided efficiently,
expertly, and at no expense to them

IX. Transactions

6 stages of a transaction
1) Determining whether a transaction is necessary
2) Finding a person/organization that will sell/license the necessary rights
3) Determining whether that party has satisfactory title
4) Figuring out how copyright rules and other considerations may affect the structure of the deal
5) Considering how the terms of the deal need to be expressed
6) Documenting and recording the deal

Orphan works

Orphan work: Copyrighted work where you can't locate the owner/can't get a license to use it. Or, a
work you don't know is copyrighted or not. Even if it's in the public domain and you're not sure, you
can't use it b/c you're not sure if the copyright owner will show up and sue for infringement.
- Basic idea: if you use an old work in good faith and can't find the owner, and if you're found to be
infringing, the penalties are greatly reduced (ongoing policy problem that hasn't been solved)

Transfer Formalities
sec. 201(d): ownership of a copyright may be transferred in whole or in part by any means of
conveyance (like ownership of any other thing/property). Transfer of copyright defined (section 101):
assignment...exclusive license...of a copyright or of any of the exclusive rights of a copyright (NOT
including a nonexclusive license).
When you transfer a non exclusive license, you are not transferring copyright ownership
Transferring a non exclusive license doesnt exclude granting the license to someone
else, the license is the permission, i.e. a promise not to sue you for engaging in the
conduct that is licensed
Copyright is indivisible.

Transfers and assignments

Effects Associates, Inc. v. Cohen (1990)

sec. 204: transfer of copyright must be in writing (applies only to exclusive licenses)

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Cohen = movie producer/director, hired Effects to make special effects for his movie - they had
an oral agreement. Cohen wasn't satisfied, didn't pay Effects the full amount, and Effects sues
for copyright infringement (Cohen shouldn't be able to use effects without paying full amount).
Issue: Did Effects transfer to Cohen the rights to use the footage?
Ct: Copyright transfer must be in writing.
But....is there a nonexclusive license?
Rule: "A nonexclusive license may be granted orally, or may even be implied from
conduct. Effects created a work at D's request and handed it over, intending that D
copy and distribute it." The only reason Effects created this footage in the first place
is b/c D asked for it.
The Court found that since Effects made the footage to Cohen's specifications and gave
it to him, there was an implied license to use it. Since Effects couldn't give an implied
exclusive license, they must have just given Cohen a nonexclusive license.
That means that Effects was free to sell the footage to other people for use in other
movies (if that's worth anything).
Did Effects intend to give away the rights without getting the full amount for it? No, but Ct. says
that's a factual matter, not a copyright matter. Court doesn't want to grant an implied condition
precedent.
Effects did not expressly state any conditions on using their effects only if they satisfy
preceding conditions. (To call it condition precedent would say that Cohen would be
licensed to use the film only if they agreed to pay the contract amount, but Cohen didnt
say that, all that was said was can I use the film and Ill pay you money).
There was no preceding conditions that had to be met, it was interpreted as not imposing any
condition on the non exclusive license.
Court interprets this as not imposing any conditions on using the nonexclusive license.
Effects can still sue in state court for a contract claim, that Cohen didn't pay the full price agreed
upon.
What can Cohen do (Effects v. Cohen) since he has a nonexclusive license? He can incorporate
the special effects into the film (but not keep using those effects in other film because that
would exceed the scope of the license).

Hypo: Suppose Effects had validly transferred copyright to Cohen for use in a movie to be distributed in
N. America only. Could Effects then license another movie producer to use it in a film to be distributed
in Japan only? Can Effects divide the copyright rights? Yes, set of exclusive rights and different parts can
be given to different people.
What other rights would Cohen gain if he became an owner of copyright? He can exclude other
people from using the work (sec. 106 of Copyright Act, the core of what copyright is); bring
infringement actions. (Nonexclusive licensees can't bring actions)
Why wasn't this a work for hire since Effects made it for Cohen? Effects wasn't an employee
under Cohen and there's supposed to be a written agreement (there wasn't).
n.2 (629), sec. 202: transfer of ownership of any material object (including the copy in which the
work is fixed), doesn't itself convey any rights in the copyrighted work embodied in the object.

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How is this consistent with Cohen's ruling (transferred nonexclusive license)? It wasn't the mere
handing over of the object that gave the license, it was the context.

Breach and infringement

When is Breach an Infringement?

Jacobsen v. Katzer (2008)
Appellees offered competing software product based on the original. Ps sued them for
copyright infringement, but Appellees argued they had a license to use the material so they
can't be sued for infringement. Katzer argues the terms don't limit the scope of license but are
just covenants providing contractual terms for use.
Language of the license: license is given PROVIDED THAT... No license unless certain
conditions are met (user inserts prominent notice in each changed file stating how/when the
user changed the file, AND at least one of 4 more conditions).
Question of interpretation of contract language.
Ct. ruling: There was infringement here.

As long as the licensee remains within the uses allowed by the licenser, then the copyright
owner cannot sue him.
But if the licensee goes beyond what he is allowed to do with the license, then the copyright
owner can sue for copyright infringement

Alternative copyright licensing survey

Alternative Copyright Licensing Schemes
This is not doing away with copyright and throwing these materials into the public domain, but
rather its using the copyright law to make those materials more available
Using copyright law to enforce openness, to make sure that anyone can get access to the source
code and modify the source code, but if they do that they have to release what they have done
free of charge so other people can benefit from it
Free software doesnt mean people are giving away software for free, but rather they are
licensing it on terms that allow people to use and modify the source code
This is done through recursive licensing and viral licensing
A way of structuring a license agreement so that a person who engages in some
conduct thats allowed by the license agreement is required to put the same
provision in whatever he releases so the next generation will have the same
rights to modify that code that he was able to modify

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Creative Commons is also pretty popular

Bartsch v. Metro-Goldwyn-Mayer, Inc. (1968) (pg 658)

Owners of a play transfer rights to Bartsch, who assigned to WB, who assigned to MGM.
Language from Bartsch to WB: similar to the language from the owners to Bartsch. "...the
motion picture rights throughout the world...to project, transmit, and otherwise reproduce the
said musical play..." seems to incorporate everything granted in the original grant to Bartsch.
WB presumably assigned to MGM all the rights they attained from Bartsch.
Issue: Does MGM have the rights to broadcast this movie on TV (it's licensing TV broadcasters to
use it)?
This is a derivative work based on the German play (like a movie based on a book).
Bartsch: Showing it on TV wasn't in the scope of the rights granted.
The rights granted = very convoluted language.
Dist. Ct. looked at language: "authorization 'to project, transmit..by the art of cinematography or
any process analogous thereto...'"
Ct. App. says it seems like a completely different thing, not analogous enough because it's "near
miraculous". (Rothchild: not very satisfying reasoning...we should think about what a copyright grantor
would've meant by using the word "cinematography" and then ask whether telecasting is analogous)
"cinematography" = taking the picture...
Ct. analysis: 2 arguments from case law:
1) An all-encompassing grant found in one provision must be limited by the context created by other
terms of the agreement indicating that use of the material in only one medium was contemplated
Ct rejects b/c the words of B's assignment were designed to give assignee the broadest rights
possible.
2) At the time of the grant in 1930, no one was thinking of TV cuz it wasn't a widespread means of media.
Therefore, it couldn't have been the intent of the parties to assign TV rights.
Ct rejects. During the 1930s, knowledgeable people in the motion picture industries like Bartsch
recognized the future potential for TV
Bartsch's other argument: In 1930 WB often attempted to obtain an express grant of TV rights
from others and it failed (Rothchild: seems like a reasonably strong argument)
Ct rejects, says maybe WB tried to be tactical and stick with the broader language (speculation)
Court focuses on: "The authors grant B "the motion picture rights...throughout the world",
including the right to "exhibit such motion picture photoplays throughout the world."
Possible principles of interpretation:
1) narrow interpretation of license language: license will be held to include a particular use only if it's
within the unambiguous core meaning of the term and exclude any uses which lie within the ambiguous
penumbra

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2) broad interpretation: licensee may properly pursue any uses which may reasonably be said to fall
within the medium as described in the license.
Ct ruling: Court chooses the second interpretation, so TV rights fall under the scope of the
assignment.
If the language is broad enough, then the burden is on the grantor to limit the scope.

What is the justification for the broad interpretation of license language-
One aspect is the utilitarian aspect- promote the progress of arts and sciences
The narrower interpretation might exclude anything that comes along that is a
derivative
Pg 664 note 3- the problem with the narrow interpretation is that you would have to
have both MGM and Ms. Bartsch agreeing because each of them would own different
parts of the copyright. MGM owns the movie and Bartsch on that assumption would
own the television rights and its less likely that they would agree, and therefore less
access to the public
The other point the court makes is that if the words are broad enough to cover a new use it
seems fairer that the framing of the words should fall on the grantor
The granting party that rights the license agreements- the burden is put on the K to
make it clear as possible- since the grantor of the license is presumably the one that
drafted the license agreement you should construe it against the grantor where there is
ambiguity
Is the broader interpretation a neutral approach that favors neither licensors nor licensees- not
really
it seems like the broader approach favors licensees, and the narrower version seems
like it favors licensors

Contributions to collective works: Copyright in each separate contribution to a collective work is
distinct from copyright in the collective work as a whole, and vests initially in the author of the
contribution. In the absence of an express transfer of the copyright or any rights under it, the owner
of copyright in the collective work is presumed to have acquired only the privilege of reproducing
and distributing the contribution as part of that particular collective work, any revision of that
collective work, and any later collective work in the same series. ( 201(c))
(1) Tasini v. NYT, 1999: Freelance authors sued the Times for licensing their works to
online publications without their permission. Contracts were silent on the issue and
had not contemplated online possibilities. Arguments revolve around
interpretation of 201(c):
(a) Within the scope of 201(c): Online versions are just revisions of the original
article. NYT licensing whole paper to Lexis. Policy leans toward interpreting
contract to include online versions, otherwise effort to track down each author
will make useful archiving unavailable or available but very expensive. Dont
need to give the authors royalties as an incentive for creation.

74
(b) Not within the scope of 201(c): online publishing is not the same as
republishing the whole work. When consumer calls up the article, not calling up
the collective work. Digital works provide a clean slate allowing the publisher to
profit from licensing the authors work in a way that conflicts with the authors
expectation of profiting from his own work. The author could individually
license his retained rights, the publisher should have to share some of the profit
with the author.
(i) 2d agreed that online publication was not within the scope of 201(c): if
find that its covered then the residual non-exclusive rights are meaningless
to the author, not much left for him to exploit.
(ii) Result is that NYT now requires its freelancers to sign over all of their rights
in work for hire contracts.


75
Duration

DATE OF WORK

PROTECTED FROM TERM
Published before 1923 In public domain None
Published from 1923 - 1963 When published with notice
1

28 years + could be renewed for 47 years, (now
67 years). If not renewed it is in public domain
Published from 1964 - 1977 When published with notice
28 years for first term; + automatic extension of
67 years for second term
Created before 01/01/78, but not published 01/01/78, (by 1976 Act)
Life + 70 years, OR 12/31/2002, whichever is
greater
Created before
01/01/78, but published between then and
12/31/2002
01/01/78, (by 1976 Act).

(Works Published between 01/01/78 -
03/01/89 need Notice or Cure)
Life + 70 years OR 12/31/2047 whichever is
greater
Created On or After 01/01/78.
When work is fixed in tangible medium of
expression.

(Works Published between 01/01/78 -
03/01/89 need Notice or Cure)
Life + 70 years
3
(OR if work of corporate
authorship, anonymous, or pseudonymous: the
shorter of 95 years from publication, or 120
years from creation
2

1. Under the 1909 Act, works published without notice went into the public domain upon publication. Works published without notice
between 1/1/78 and 3/1/89, (date of the Berne Convention Implementation Act), retained copyright only if registration was made within
five years OR See 17 U.S.C. 405.

2. Works for hire, anonymous and pseudonymous works also have this term. 17 U.S.C. 302(c).
3. Term of joint works is measured by life of the longest-lived author.

- All terms expire at end of Calendar year ( 305).

Duration
1976 Act provided for a basic term of protection of life of author plus 50
years, and for works made for hire or anonymous works, 100 years from
creation or 75 years from publication, whichever is shorter
As a result of the Bono Act, current duration of copyright protection is 20
years longer than that adopted under the 1976 Act
Works created on or after 1/1/78
Single author: life + 70
Joint authors: life of last surviving author + 70
Work made for hire/anonymous work: 120 years from creation or
95 years from publication, whichever is shorter
Works first published before 1/1/78
28-year term and 28-year renewal term
1976 Act extended protection by an additional 19 years to the
renewal term
Possible total term of 75 years (after Bono, 95 years)
Works published prior to 1923 are in the public domain
Works published in or after 1923 have potential total
duration of 95 years

76
Works created but unpublished prior to 1/1/78
Same duration rules: life + 50 (70)
But also applied a minimum term of protection for previously
unpublished works
Works created prior to 1978 but not published as of then
endures for the term otherwise provided, but not before
12/31/02
Additional 25 (45) years if work were published before
12/31/02

Duration

Two basic categories of works for duration purposes:
1. works created starting Jan. 1, 1978
2. works created before Jan. 1, 1978

1. Works created starting Jan. 1, 1978
When did author die?
Is it a WMFH?
When published?
Published with notice?

Duration rule for WMFH (post-CTEA)
Work created in 1980
If published in 2000:
term ends 2095, 95 years post-publication

2. Works created before Jan. 1, 1978
Published with notice?
Was copyright renewed (if published pre-1964)?
Date of publication
Published by Jan. 1, 1978?
If not, published by Dec. 31, 2002?

Categories of works created before Jan. 1, 1978

77
Published before 1923
Published 1923 -1963
Published 1964-1977
Created pre-1978 but not published by that date

Duration rule for works created pre-1978 but not published by then
Created 1920, author dies 1980, never published
life + 70 = 2050
This is later than Dec. 31, 2002, so minimum term inapplicable
Created 1920, author dies 1925, never published
life + 70 = 1995
This is earlier than 2002, so gets the minimum term ending 2002
Created 1920, author dies 1925, published in 2000
life + 70 = 1995
Since the work was published by 2002, gets the minimum term ending 2047

Little additional incentive from longer term
*A+n advantage that is to be enjoyed more than half a century after we are dead, by somebody,
we know not by whom, perhaps by somebody unborn, by somebody utterly unconnected with
us, is really no motive at all to action. *not in CB+
Thomas Macaulay (1841)

Eldred v. Ashcroft (pg 696)
P's arguments:
1) Extension violates "limited times" provision of Copyright Clause
Ct: The fact that the term has been lengthened doesn't mean it's not "limited time" ("limited
time" just means fixed).
2) Regulation of speech violating 1st Amendment
Ct: No conflict...one thing Copyright clause does is to promote creation/publication of free
expression. But when, as in this case, Congress hasn't altered the traditional contours of
copyright protection, further 1st Amendment scrutiny unnecessary.
Breyer Dissent: It's a "tax on readers" --> royalties that may be highe3r than necessary to evoke creation
of the relevant work; and req that one seeking to reproduce a copyrighted work must obtain the
copyright holder's permission.

Petitioners argument essentially reads into the text of the Copyright Clause the command that a time
prescription, once set, becomes forever fixed or inalterable. The word limited, however, does not
convey a meaning so constricted. *698+

Congresss historical practice:

78
History reveals an unbroken congressional practice of granting to authors of works with existing
copyrights the benefit of term extensions so that all under copyright protection will be governed
evenhandedly under the same regime. *698+

Encouraging restoration?:
Older films, such as those from the 1920's, are constantly deteriorating and in need of restoration. . . .
Because the CTEA extends the copyrights on many of these films for 20 more years, Moviecraft will be
unable to restore these films and many of them will be lost forever. If a surviving print of one of these
works from the 1920's were discovered by Moviecraft, it could not be restored because Moviecraft
could not exploit the film without authorization of the copyright owner. To acquire copyright clearances
often is impossible.
Eldred v. Ashcroft Complaint

No Conflict With the First Amendment:
The Copyright Clause and First Amendment were adopted close in time. This proximity indicates that,
in the Framers view, copyrights limited monopolies are compatible with free speech principles. Indeed,
copyrights purpose is to promote the creation and publication of free expression. *703+

Traditional Contours:
But when, as in this case, Congress has not altered the traditional contours of copyright protection,
further First Amendment scrutiny is unnecessary. *704+

Stevens dissenting:
Ex post facto extensions of copyrights result in a gratuitous transfer of wealth from the public to
authors, publishers, and their successors in interest. Such retroactive extensions do not even arguably
serve either of the purposes of the Copyright/Patent Clause. *not in CB]

Breyer dissenting:
A tax on readers
royalties that may be higher than necessary to evoke creation of the relevant work;
and
a requirement that one seeking to reproduce a copyrighted work must obtain the
copyright holders permission *707+

Congress passed the Sonny Bono Copyright Extension Act of 1998 (CTEA), which extended the
copyright of all works by 20 years.
This had the practical effect of stopping everything from entering the public domain for
the next 20 years.
Eldred, who maintained a library of works in the public domain sued.
Eldred argued that CTEA was unconstitutional because the Intellectual Property Clause
(Art. 1, 8, cl. 8) only empowers Congress to extend copyrights for "limited times."

79
In addition, Eldred argued that the CTEA was a violation of the 1st Amendment because
it is a regulation of speech, and that it violated public trust by transferring public
property into private hands with no rational basis.
The Trial Court found CTEA constitutional. Eldred appealed.
The Trial Court found that the new copyright durations were still a 'limited' time, they
were just a longer limited time.
The Appellate Court affirmed. Eldred appealed.
The US Supreme Court affirmed.
The US Supreme Court found that the Copyright Act had been amended (and durations
extended) a number of times in the past, so Congress had set a precedent that they
could extend the duration.
In a dissent it was argued that it is highly unlikely any artist will be more inclined to produce
work knowing their great-grandchildren will receive royalties, so CTEA did not achieve the goal
of copyright law (encouraging creation of new works).
In addition, the dissent felt that the retroactive copyright extension was pointless
because those works have already been produced.
"How will extension help todays Noah Webster create new works 50 years
after his death?"
After this decision, a number of private copyright agreements (like Creative Commons) started
to appear by people concerned with the extent of the copyright system.

Limitations on Transfer

Renewal terms

Fred Fisher Music Co., Inc. v. M. Witmark & Sons (1943)
Authors of "When Irish Eyes are Smiling" under K with music publishers Witmark. Graff (one of
the authors) and Witmark made agreement, giving all rights, title, and interest to Witmark,
including rights to secure all copyrights and renewals of copyrights in the songs.
Agreement was recorded in the Copyright Office
Witmark renewed when the first time was up
Graff then went in and claimed the renewal for himself and assigned to someone else (thinking
he should be able to get away with it)
Witmark sued
Issue: whether one can assign his renewal interests during the initial copyright term
Ct ruling: Nothing that says you can't assign the renewal interests in the Act. [Rothchild: opinion
should've stopped here b/c that's all they needed].
Then court looks at legis. history...they did not refer to the author's "assigns" (only widow/children).
(That doesn't necessarily mean that it's prohibited though)

80
For renewals: Mark Twain didn't make money out of "Innocents Abroad" for the first term, but
the second term he made all the profits.
There are policy reasons cutting both ways for allowing or prohibiting renewal assignment. If
Congress wanted to prohibit assignment of renewal rights, they would have said so explicitly.

Miller Music Corp. v. Charles N. Daniels, Inc. (1960)
Black assigned renewal rights to Miller (before renewal term took effect), and Black died before
the end of the first 28 years. Statute sec. 24 of 1909 Act says it goes to executor/next of kin if
no widow/children.
Charles N. Daniels (nephew) claims the statute grants to them: Black Executor Nieces and
Nephews
Miller claims that there was already a prior assignment
Statutory Successors
1) The author, if living; but if not,
2) the widow/widower/children of the author; if none,
3) the executors of the author's will; but if no will,
4) the author's next of kin
Ct. rule: "Next of kin" takes precedence over prior assignments to the contrary. Charles Daniels
wins
These results follow b/c there was only a mere expectancy of renewal/assignment (only
effective if the expectancy came into effect)
What if the author disliked widow/children and wanted to give to someone else? Can't do it
under the statute
Policy of the Copyright Act that surviving spouse/children/next of kin get the renewal term even
if contrary to wishes of copyright owner.
There's really no way for an assignee to a renewal term to be sure he's going to have the rights
for sure (author can die before term ends).
Close decision (5-4). Some say it couldn't have been Congress' intention to grant to author's
heirs whom he hates and deny the good faith assignees.
p. 740 n.3: Presumption against transfer of renewal interest - courts tend to construe any
ambiguous assignment of language as not assigning the renewal right. (e.g. "I assign copyright
interests to x") Interpreted to mean only the first term of 28 years, not the renewal term
(don't want authors to inadvertently give away too many rights).
Does this help or hurt the copyright owner? In some ways, might hurt owner by reducing value
of renewal term.

Stewart v. Abend (pg 742) (1990)


81
Author wrote "It Had to be Murder", sold story with renewal rights, died before he could renew.
Executor = Chase bank, for benefit of Columbia University. Chase assigned renewal rights to
Respondent Abend for $650 plus 10% of all proceeds
People who got the renewal rights say derivative work "Rear Window" can't distribute without
paying
Issue: Petitioner Stewart just wants to be able to continue showing their movie (they put so
much work into this movie and relied on the fact they had the right to distribute). They concede
Abend has the right to license another company to make another movie based on "It Had to be
Murder", but they just want to show their movie.
Court ruling: Policy reasons cut both ways. Congress made their decision; not for us to change
what they did b/c we disagree with their policy determination. Stewart was infringing by using
the derivative work.
How about argument that the result that this one person can prevent this movie from being
shown? Isn't that contrary to purposes of the Copyright Act? Ct: They can work something out
with Abend (assume that everyone will be reasonable).
Since 1992, renewal = automatic. But still could apply for renewal term. If Stewart registered
for renewal term instead of letting it happen automatically, they'd retain the rights to keep
showing the movie. But they way they did it, Stewart loses.
Mere fact that derivative work is in pub. domain isn't enough to use the original and make your
own derivative work - also need to look to see if the original work is in the public domain.
if there is a derivative work that is in the public domain you are copying, you also need
to see if the original work that its from is also in the public domain.
if the original work is not in the public domain then you are infringing
Technical conundrum: if the author applied for renewal term when he was supposed to, but he
dies before the start of the renewal term? Renewal term remains a mere expectancy until the
first day of the 29th year. If author dies before then, it doesn't come into effect. Conflicting
case law about who gets the renewal term. Congress resolved this legislatively: depends on
whether there was auto renewal or whether person actually registered work for renewal during
first term. If no one applied for renewal, it goes to whoever was entitled as of Day 1. If author
applied, then the assignee gets it.

XI. Reproduction, distribution, and adaptation rights

Public distribution and the first-sale doctrine

The reproduction right
Pg 784 exceptions to the six exclusive rights
The reproduction right
Section 117- important exception for computer software/use

82
Essential step doctrine- you can use a computer program without infringing
copyright because whenever you use a program it gets copied on to RAM and
that is making a copy, so in the absence of permission to do this, you would
technically be infringing copyright, but this is an exception (codified in 117)
117(c)- the computer maintenance rule
you are allowed to copy a program into RAM if you are doing maintenance on,
in order to avoid losing the software from the computer
so the above are limitations on the exclusive right to reproduction
other than fair use, most of the exceptions to section 106 rights are pretty narrow
librarires, federal recordings, etc.
112: limitation; doesnt apply to audio-visual works.
pg 788- illustration of why we need section 112- you can make a temporary copy or ephemeral
recording to enable a time shifting of the broadcast and there are various limitations on the
scope of the right
audiovisual works is treated differently from other types of works- section 112 starts out
by saying except in the case of a motion picture or audiovisual works)
sometimes dramatic works are treated differently as well in the statute

section 102(a)- listing off diff types of works that can be protected by copyright
musical works is one of those subject matters of copyrights
sound recordings is also on there
both musical works and sound recording are works of authorship that are protectable but they are
two different things that can be protected in different ways
musical work is the composition- the notes, the words, nothing that you can touch, its the
composition
but when you write down the notes of a musical work on a piece of sheet music, that is
not a musical work but rather a copy
copy is a defined term in section 101- material objects, other than
phonorecords, in which a work is fixed
you can fix a musical work in a piece of paper and have a copy, but you can also fix a musical
work on a cd, tape, hard drive, etc. but that object we do not call a copy but rather a
phonorecord
a phonorecord- a material object in which sounds, other than those accompanying a
motion picture or other audiovisual work, are fixed
so essentially something in which sounds are fixed
so in addition to musical works there are sound recordings
sound recording- section 101 def- works that result from a fixation of a series of musical.
Spoken, or other sounds, but not including the sounds accompanying a motion picture
or other audiovisual work
sound recordings are treated differently from musical works
historically they werent protected, not until 1971

83
now the protection of sound recordings is more limited than the protection of musical
works
section 106(4)- there is a public performance right for musical works but not sound recordings
so if you perform a piece of recorded music publicly, and you dont have permission of
the copyright owner, you may be infringing the copyright of the composer of the
musical work but you are not infringing the copyright of the singer or producer (or
whoever owns the copyright in the sound recording), unless its a sound recording
performed by means of digital transmission
the protection of sound recordings is diff from the protection of musical works, there is
no general public performance right to sound recordings, and a limited digitial
transmission rights to sound recordings
you can have a physical object that contains two works at once, any time you have a musical
rendition on a cd, one is the musical work and one is the sound recording
They are both protected from reproduction
so if you make a copy- you are infringing the copyright of the musical copyright and the
sound recording copyright

the first sale doctrine- 106(3)- has to do with the public distribution right
can be by sale, by other means of transferring ownership (by gift, rental, lease, or lending)
public distribution right, usually if there is an infringement of the public distribution right then
there usually is an infringement of the reproduction right

significant limitation on the public distribution right- first sale doctrine- 109(a)
once you have sold a copy or phonorecord, you have lost your public distribution right as to that
particular copy or phonorecord (the technical term is exhaustion)- so the owner of the copy can
publicly distribute it without your authorization
if we didnt have the first sale rule then you wouldnt be able to sell a used book, for
example
you also would not be able to have libraries, a library is lending copies of literary works
which is a public distribution, so without the first sale rule that wouldnt be allowed
just because you now own a copy, doesnt mean that you can make further copies or
derivative works, you couldnt publicly perform it, you cant make movies from it
all the rights are still retained by the copyright owner, its only the public distribution
right which is limited by the first sale rule
what doesnt qualify you as a owner- if you are simply lent something (being a bailee), if
someone rents you a movie you cannot rent it to someone else,
so even though a copyright owner has a public distribution right, he looses that right as it fits in
the provision of 109
lawfully made is required
you can sell the copy, rent the copy, dispose of it in any of those ways without the
permission fo the copyright owner

84

Kirtsaeng v. John Wiley
involved someone who bought textbooks, had textbooks shipped to him, the books were
published outside the US, and were published for use outside the US
he thought that he could make money by reselling
the publisher sues him, and he says you cannot sue me look at the first sale doctrine, im the
owner of the copy
however, although they were lawfully made, they were not made under this title (109
requirement), so therefore its not within the scope of the first sale rule and the public
distribution right remains with the copyright owner
lawfully made under this title- meaning that its made with authorization in the untied states

first sale rule is an exception to the public distribution act

109(b)- exceptions to the first sale rule
(b)(1)(a)- sound recordings and computer programs- if you are the owner of a copy of a
computer program or a phonorecord of a sound recording, you can sell it if you want, but you
cannot get rid of it through rental, lease or lending
exceptions for nonprofit libraries
exceptions for video games, computer programs embodied in a machine or product and
which cannot be copied during the ordinary operation or use (i.e. you can rent a car)

UMG Recordings v. Augusto (pg 804)

Issue: who is the owner of the copy?
its possible to distribute copies so that the recipient does not acquire title that would make the
first sale rule goes into effect
the CDs are dispatched to the recipients without being tracked or counted, they just sent them
out without a prior arrangement and they didnt keep track of the copies, it certainly means that
they were not being careful, but it doesnt necessarily mean that that factor of not keeping track
of the discs is enough to show that title to the copies was transferred (according to professor).
Professor thinks: that courts will not rely on the idea that not keeping track of
merchandise could transfer ownership
Unordered merchandise statute- if someone sends you something in the mail, and you didnt
order it, you own it. You dont have to pay for the thing that was sent to you if you didnt order
it
The way it applies here: these discs are being sent out to music people unordered, and
so the music recipients were owners of these copies, and they could transfer them to
Augusto and Augusto had the benefit of the first sale rule

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The statement on the CD says if you accept the cd then you agree with the license
terms- the court said that is not enough to create an acceptance because there is no
response
But professor doesnt agree: he thinks they did something, they accepted the CD and
used the discs and thus agreed to the terms. Professor thinks that arguably it did form a
K in terms of the license agreement
K issue- shrink wrap contracting
The court uses several different types of reasoning and then goes and talks about the district
courts reasoning and doesnt like the district courts reasoning even though they came to the
same result
The district court looked at Wise
Wise said that if the recipient doesnt have to return the copy, then they are the owner
of the copy
But the appellate court said no, and reconsidered that and has a different rule now
The fact that the recipient never has to return the copy, the phonorecord, does
not show by itself that they are the owner of the copy
Its relevant, not determinative, but we can take that into account
The court cites the three element rule from vernor, on the bottom of pg 808-809, but they say
that it may not apply in this circumstance and why there is transfer of ownership in this case

Vernor v. Autodesk (this is the main rule, the UMG case is the exception)

Three step process to determine if a software user is a licensee rather than an owner:
o 1) copyright owner specifies that its a license not a sale
o 2) significantly restricts the users ability to transfer software
o 3) imposes notable use restrictions

the software in this case was held to be that the ownership was not transferred
there doesnt have to actually be a sale for the first sale rule to apply, it can be a gift

Professor thinks that most of the courts get it wrong when dealing with software and first sale rule:
from the start they go wrong when they ask if this is a sale or if this is a license
because this is a false distinction. Software for example, there is both a sale and a
license. Typically the physical medium, the cd, is sold. But the copyright of the computer
program is not sold. The recipient receives a license to make certain uses of the
copyrighted program.
So there is two different transactions going wrong
But there really is a sale, there is a sale of the physical object, and a license to
make use of the computer program
They also get wrong that you can license a physical object. Example, this disc is not sold but
licensed to you.

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There is no such thing as licensing an object. License means permission. But you cannot
license a physical good. You can rent, lease, lend it, but you cannot license a physical
good
The software developers have just invented that term to confuse the courts
So if they say in the license agreement, that a disc is licensed to you that they
havent transferred ownership, they could do this by a rental program. But this
is too cumbersome keeping track of those physical object. But that would be the
legitimate way from preventing the first sale rule from applying in these
transactions
The first sale rule only applies if you are an owner of the copy, but if you are using a cloud
service, you never have a copy of the software
Professor thinks that the criterion the district court relied on in UMG, regarding the WISE case,
that if someone gives you a physical item in return for money then you are the owner of it
A lot of courts go wrong in analysis of the first sale rule because they forget about the
distinction between a copy and work of authorship. And they talk about the ownership of the
work as if that were the criterion, rather than ownership of the object.
The criterion in the statute is ownership of the material object.

First sale exceptions

How to kill the used book market:
state on the notice on the outside of the shrinkwrapped book:
1) "this book is licensed to the user, not sold."
2) "this book may not be transferred to any other user without the advance written approval of West
Publishing, Inc."
3) "this book may be used by a single user only, and only w/in the US and its territories and possessions
Difficulties: enforcement, market constraints (students would buy the books from other companies
possibly - although the profs choose which books to use)

Brilliance Audio, Inc. v. Haights Cross Communications, Inc. (2007)
Ds were allegedly repackaging, relabeling, and renting out Brilliance's audiobooks. Ps never
authorized Ds to do this.
Brilliance argues exception to the first sale doctrine for sound recordings of literary works based
on sec. 109(b): owner of the copy can resell, but can't rent it out.
poorly drafted provision. 2 phrases that are apparently contradictory:
1) exception from first sale rule applies to any sound recordings (and comp programs)
2) only sound recordings of musical works
Ct solution: look at legislative history for help.
Ct. rule: First sale rule invented by SC in 1908 = part of the traditional bargain process. Publisher
gets to decide when to first sale copies to the public. Once it has made that decision, it has

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gotten all its reward under the Copyright Act and then the right shifts to the owner of the copy.
(General rule: If you own a thing, you can do whatever you want with it)
1984 Record Rental Amendment: "unless authorized by the owners of copyright in the sound
recording and in the musical works embodied by therein, the owner of a particular phonorecord
may not..."
economic justification for public lending: copyright owner gets some royalties every time the
material is lent. The amount received will be reflective of how valuable the material actually is
to society.
(how about private lending? this logic should apply to that too...lending to a family member = giving
more money to the publisher? hard to enforce that though)
sec. 109(c): display right - owner of a copy is entitled to display that copy publicly, either directly
or via projection.

First sale and importation

Quality King Distributors, Inc. v. L'anza Research Int'l, Inc. (1998)
L'anza's mad b/c they only sold their shampoo in the US to certain salons (marketing scheme).
The products that went around the world and came back were being sold at a discounted price.
They claim infringement of the copyrighted text of the label on the shampoo bottles.
What provision of the Copyright Act was being infringed? sec. 602 (prevents importation to the
US w/o consent of the copyright owner and makes reference to distribution right). Also 501
(right to sue), and sec. 106 (distribution right).
Application of 602(a) here: Sup. Ct. rule - b/c of the first sale doctrine, 602(a) doesn't apply (no
right to prevent distribution after selling it off to someone). [reversing Dist./App. cts]
Ct. accepts argument that 602(a) is infringement of distribution right under 106 under 106, all
exclusive rights are limited by secs. 107-122.
Other argument: 1) statutory exceptions to 602 would be superfluous if first sale doctrine is
applicable - an importation implies that there's going to be a first sale. Ct. lists other
situations where first sale rule would still apply (pgs. 824-25); 2) text of 501: anyone who
violates under sec. 106 OR imports under sec. 602.... (makes it look like they're separate things).
Ct. says that 602 explicitly says it's subject to 106, AND if it's not subject to 106, it loses all the
limitations under 106 either (like fair use in sec. 107).
This was a poorly drafted statute that can't really be reconciled.
Ginsburg concur: only applies to roundtrip occurrences, not to copies manufactured outside the
US and then imported.

The adaptation right

Lee v. A.R.T. Co. (1997)

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Lee = artist who sells her art through outlets. A.R.T. bought some notecards/lithographs (with
Lee's original work on them) from the outlets and mounted them on ceramic tires and resold
them.
P alleges these are derivative works that can't be resold.
Ct: These aren't derivative works b/c they're not transformative (not original work of authorship,
nor did it recast, transform, or adapt P's work). "No one believes" a museum violates sec.106(2)
when it frames a painting in a museum.
(Rothchild: he is assuming the answer w/o providing any justification for it..not very
compelling reasoning).
Definition of "derivative work":
1) to be derivative work, it has to be based on a pre-existing work and transformed/recast/adapted in
some way.
2) to be a derivative work, it has to itself constitute an original work of authorship (certain level of
originality by the second user required)
P focuses on the 1st sentence, D focuses on the 2nd one
Ct: Don't have to choose sides. Even if we go w/P's focus, P loses b/c the works were not
transformed, recast, or adapted. (Rothchild: not very obvious. Seems like a conclusory
statement).
p.835: they're paying Lee for every tile they're making, so she's getting paid the same way she
would if they wanted to reproduce her work photographically and paid her a royalty (typical way
of licensing a work). As economic matter, doesn't make sense to give her a right to control this
use of the copies.
so why would she make a big deal about this? Maybe moral rights (being able to control your own
works). J. Easterbrook says no moral right in U.S. here.

Things to know about sec. 115 (compulsory mechanical license):
1) applies only to nondramatic musical works
2) right is to make/distribute phonorecords, not copies
3) right is only to make and distribute, not to perform or prep derivative works
4) there must first be an authorized public distribution of phonorecords
5) primary purpose req
6) making an arrangement is permissible (but can't butcher it...can't change basic melody/fundamental
character of the work...e.g. doesn't allow what Live Crew did to "Pretty Woman")
7) must serve the copyright owner w/timely notice

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Sampling

Newton v. Diamond (pg 847) (2004)
Newton gave license for sound recording of "Choir" to ECM Records, who gave license to Beastie
Boys. He still has the rights to the composition.
Beastie Boys is using 3 notes/2% of "Choir" throughout their song.
Substantial similarity analysis: filter out similarities between unprotected elements and only
look at the protected elements. Court must filter out/ignore elements of copying attributable to
the sound recording.
Rule: 1) test for de minimus: only if the average audience would not recognize the
appropriation; 2) whether the copying goes to trivial or substantial elements (considering
qualitative/quantitative significance of the copied portion in relation to the P's work as a whole,
not in relation to the copied work as a whole). Doesn't matter that it runs throughout the
whole Beastie Boys song if it's not a significant part of "Choir".
This was only 2% of the recording and wasn't a particularly significant part of the song
(according to an expert, doesn't go to the heart/hook of the song), so it was de minimus.
Compare to Gottlieb (pinball) case...observability, length of time pretty good correspondence.
The Court noted that Diamond had a license to use Newton's performance, he just didn't have a
license to use the underlying composition. Therefore, in order to be infringement, the sample
had to be such that the average person would recognize that the notes were written by Newton.
Newton had argued that his flute playing technique was unique and that people could
tell he was playing just by listening to how the notes were sounded. But the Court found
that didn't matter because it was only the underlying notes that were the basis for the
infringement claim.
Newton should probably have added annotations to his sheet music so that his
unique play style would have been described in the underlying composition.
That would have granted him the protection he was looking for.
Dissent: There was expert testimony on the other side saying that the composition itself was
unique/distinctive enough, so the case shouldn't be decided on SJ. (Rothchild: even if the
segment was distinctive here, it had to have more than 2% to be significant).

sec. 114(b): exclusive rights of the owner of copyright in a sound recording (under clause 1 of sec.
106/reproduction right) don't extend to making/duplication of separate, independent sound recording
that's fixed.
If you make your own independent sounds in a sound recording, no matter how closely you imitate
another sound recording, you don't infringe (as long as you don't copy the actual sounds/bytes).
(There's a difference between infringing a sound recording and infringing a musical work).

Bridgeport Music, Inc. v. Dimension Films (2005)

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"I Got the Hook Up" movie soundtrack in "100 Miles" song copied riff off of "Get Off" by George
Clinton Jr. It was a digital, direct sampling (undisputed).
2-second sample copied, pitch lowered, and "looped" to extend to 16 beats. Appears 5 places in
"100 Miles" (each segment about 7 secs).
Dist. Ct: This was de minimus and also not substantially similar
P: No substantial similarity/de minimus analysis should be used when D acknowledges it digitally
sampled a copyrighted sound recording
App. Ct: Agree with P. If it's not entirely of an independent fixation (sec. 114(b)), there's
infringement.
Difference between capturing the actual sounds vs. imitating independently
Policy reasons to interpret statute this way: get a license or do not sample (very simple).
Fair use defense is still available; Dist. Ct. can consider this on remand (one factor of fair use:
substantiality of the use). (Rothchild: If this knocks out de minimus, doesn't it also knock out fair
use?)

The appellate court said that the de minimis copying rule does not apply to sound recordings,
since the copyright on sound recordings is limited. Other types of copyrighted works are
protected from reproduction of any significant aspect of the works, while sound recordings are
only protected against unauthorized duplication of the actual recording.

The world at large is free to imitate or simulate the recorded performance.

The court relied upon 17 U.S.C. 114(b), which gives a sound recording copyright owner the
exclusive right to duplicate the sound recording and also gives the copyright owner the
exclusive right to create derivative works in which the actual sounds fixed in the sound
recording are rearranged, remixed, or otherwise altered in sequence or quality. Thus,
unauthorized sampling, no matter how minor, is an infringement.

Public Performance/Display Rights
"perform" (sec. 101): recite, render, play, dance, or act the work, directly or by means of any
device/process (or in motion pictures, showing its images in any sequence or make the
accompanying sounds audible).
Showing one frame of a movie is not a performance; it's a display ("display": show a copy of a
work/show individual images nonsequentially).
sec. 106: copyright owner controls public performance right. applies to literary, musical,
dramatic, and choreographic works, pantomimes, motion pictures, other audiovisual works

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(why aren't sound recordings included here? Rothchild: As pub. policy matter, Congress didn't
want to include these. Radio stations have to pay royalties for musical compositions, but not for
the sound recordings).
sound recordings not protected at all until 1972.
There's performance right for sound recordings if they perform them by means of digital audio
transmission.
What can't you perform? PGS or architectural works (they can be displayed though)
When you use a tv or radio, you're "performing" for purposes of copyright. Don't need a license
b/c you're not publicly performing it. Private performances not covered.
"public" (sec. 101): perform/display at a place open to the public/other place where subst.
number of ppl outside a normal circle of a family/its social acquaintances is gathered; or
transmit performance/display of the work to public place/to the public (only has to be
transmitted to people CAPABLE of receiving performance, don't need them to actually receive.
Also, they don't all need to be in the same place/time).

XII. Public performance and display rights

Public

Fermata International Melodies, Inc. v. Champions Golf Club, Inc. (pg 895) (1989)
- Rule: Restaurant of a private golf club is a semi-public place (substantial number of persons outside the
normal circle of a family/its social acquaintances) (sec. 101)
performances in semipublic places such as clubs, lodges, factories, sumer camps, and
schools are public performances subject to copyright control.

Cartoon Network v. CSC Holdings, Inc. (2008) (pg 897)
Issue: whether the showing of recorded DVR programs are public performances
There's a separate copy made each time an individual subscriber pushes a button. When the
subscriber wants to play the program, it's that specific copy that's played - it's not sent to
anyone else.
Is sending out all these individual programs considered public?
Ct App.: "performance" = watching the recorded program on the unit when the user asks for it.
Is this a transmission under the transmit clause?
No, b/c the recordings are all separate/unique.
(Dist. Ct: "performance" is the actual program (same movie), going to a large number of people).
App. Ct: If this were the case, then every performance would be a public one.
App. Ct. discredits House Report that says that it's a public performance even if no one tunes in
Is this inconsistent with giving public performance rights to the copyright owner? (It would've
gone the other way if there was only one copy of the movie made). (Rothchild: seems odd from
the standpoint of copyright policy).


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The display right

Public Performance/Display
Display right: only real significance is with transmissions (109(c) exemption allowing most in-
person displays vs. transmitted, public displays of copyrighted works) prevents many
everyday activities from being considered infringement (like taping cartoon outside office door
or wearing designed clothing)
Transmissions via internet more problematic than tv transmissions (more control over internet
transmissions; more likely to serve as a substitute for a hard copy. In old days, you would
purchase hard copies).
RAM copies doctrine isn't very significant (idea that every time something's copied to RAM on
comp it's copied and prima facie infringement without permission) don't need that doctrine
b/c we have the display right. Every time something goes on your screen, that's potentially
infringement of display right (RAM copies doctrine = superfluous now).
Because of the display right a decision (by a court or Congress) that temporarily storing
data in RAM does not generally constitute the making of a copy would not leave
copyright owners defenseless in the modern world of computer networks.
Since transmitting a copyrighted work for viewing over the Internet generally
involves making a public display, the public display right will generally allow the
copyright owner to hold the transmitting party liable for making such
transmissions without authorization, regardless of whether any data is stored in
RAM during the transmission, or whether that storage infringes the
reproduction right.

Limitations on the public performance and display rights

Section 110 exemptions (see handout)

Perfect 10, Inc. v. Amazon.com, Inc. (pg 912) (2007)
Case about searches/Perfect 10's copyrighted images. Google displaying thumbnails.
Issue: is display right being infringed?
Copies of thumbnail images stored on Google servers. But in-line linking: images coming from
third party websites. Who's responsible for a display via website image?
Rule: The server test - the entity operating the server that actually serves up the image is
responsible for the display. (But the entity that provides a link to a website holding an infringing
image is NOT responsible for the display that results where a user clicks on a link)
Is Google doing any more than Cablevision with its DVR (how can we distinguish? Is this
volitional activity by Google?)? Seems the same...setting up the system and doing nothing.
The website publisher's computer, rather than Google's, stores/displays the infringing image.


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On appeal, the Ninth Circuit upheld the district court's decision that the hyperlinks were not infringing on Perfect
10's copyright. It agreed with the district court's assessment that infringing websites existed before Google and
would continue to exist without Google, thus it was not a contributory infringer. Furthermore, Google had no
control over infringing sites and could not shut them down, so any profits it may or may not extract from users
visiting those sites did not constitute vicarious infringement.

The court also agreed that including an inline link is not the same as hosting the material yourself. So in the case of
framing, while it may "appear" that Google was hosting infringing material, it was only hosting a link to the
material which the browser interpreted should appear in a certain way.[2]

The Ninth Circuit did, however, overturn the district court's decision that Google's thumbnails were infringing.
Google's argument, which was upheld by the court, was a fair use defense. The appellate court ruled that Google's
use of thumbnails was fair use, mainly because they were "highly transformative." Specifically, the court ruled that
Google transformed the images from a use of entertainment and artistic expression to one of retrieving
information, citing the similar case, Kelly v. Arriba Soft Corporation. The court reached this conclusion despite the
fact that Perfect 10 was attempting to market thumbnail images for cell phones, with the court quipping that the
"potential harm to Perfect 10's market remains hypothetical."[3]

The court pointed out that Google made available to the public the new and highly beneficial function of
"improving access to [pictorial] information on the Internet."[1][3] This had the effect of recognizing that, "search
engine technology provides an astoundingly valuable public benefit, which should not be jeopardized just because
it might be used in a way that could affect somebody's sales." [4]

Google also raised a Digital Millennium Copyright Act (DMCA) safe harbor defense in respect to the issue of
hyperlinks, which Perfect 10 contested. However, the court did not reach an opinion on the matter as it found that
Perfect 10 was unlikely to succeed on the matters of contributory and vicarious liability because of the other
arguments.[1]
Simpleville Music v. Mizell (2006) (pg 920)
Live radio broadcast of copyrighted music that's being performed in a church
Why doesn't the exception apply? It's been transmitted to the public at large as opposed to just
being performed to the people at the service.

Morganactive Songs, Inc. v. Padgett (2006)(pg 923)
Charity benefit event at a bar.
Issue: whether proceeds actually went to charity (indirect admission charge to pay for drinks)
testified that there was a net loss after donating to charity and paying for drinks/food. Argued that
she shouldn't be kept from using this exemption.
Money collected via alcohol sales > alcohol costs + what she gave to charity...she also testified
during deposition that the proceeds didn't go to charity (she retracted the statement later but
the Court wouldn't accept it).
(Rothchild: court didn't analyze this situation correctly??????. She did this for a commercial
purpose/got an indirect commercial advantage...getting good publicity for her bar by doing the
fundraiser there).
110(4) "commercial advantage"

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Broadcast Music, Inc. v. Claire's Boutiques, Inc. (1991) (pg 925)
Chain store Claire's - each store has read the homestyle provision (110(5)(A)) and complied. BMI
says no; they look at Claire's chain as a whole which has thousands of speakers.
P: This exception is meant for small establishments like a restaurant, not for big corporations
that can pay a licensing fee
Issue: Do you aggregate all the stores in a chain for purposes of transmission analysis?
Rule: Ct. says they look at the stores individually.
(They looked at legislative history but they shouldn't have since there wasn't ambiguity).

Performing rights organizations
For band/performer to play at a public venue, they must secure a license from ASCAP, BMI, etc.
or else they're infringing. The venue purchases an annual performing rights license (the band
doesn't need to worry about it, but is responsible if it's at a place without a license like
club/hotel/arena).
Exception: ASCAP forbidden from licensing pub. performances of music in connection w/the
movie industry.

Digital Performance Right for Sound Recordings

Arista Records, LLC v. Launch Media, Inc. (2009)
Launch operated internet radio website (LAUNCHcast)
1) Exempt from the performance right (blanket license- does not involve sound recordings)
- non-subscription broadcasts (i.e., regular broadcaster that broadcasts digital signals)
- a transmission within a business establishment
- a transmission to a business establishment for use in the ordinary course of business (e.g. Muzak)
2) subject to statutory license (but still protected transmission) (statutory licensing fee set by
copyright royalty board)
- non-interactive webcasting
- satellite radio
- cable TV music channels
- but many conditions apply for entitlement to the statutory license
3) Non-exempt, and not subject to statutory license (negotiate for individual licensing fees for each
sound recording)
- interactive services
- non-interactive services if advance program scheduled is published, too many cuts from a record
played together, etc.

How does the court determine if it's an "interactive service"?
Statute: 17 USC 114(j)(7): enables a member of the public to receive a transmission of a
program specially created for the recipient, or on request, a transmission of a particular
sound recording...which is selected by or on behalf of the recipient.

95
Ct: LAUNCH has a very complicated algorithm to determine which song to play next and the
user can't control it.
Ultimate criteria: whether or not Launchcast substitutes for buying records (conclude
that it doesn't).
(Rothchild): the court's discussion/analysis is completely wrong/illegitimate. They should just
read the first sentence of the statute and stop right there (transmission is specially created for
the recipient)
Subscription service? Transmission that's controlled and limited to particular recipients, and is
paid for
not a broadcast; it's a webcast
Broadcast transmission? Terrestrial broadcast station licensed by FCC (not satellite)
This case is not in category 1; it's category 2.
SoundExchange (Perf. Rights Org. for sound recordings): collects royalties based on public
performances of sound recordings. Distribute money as prescribed by statute in 114(g) to diff.
categories of recipients. 50% of royalties go to copyright owner of sound recording. 45% goes to
recording artist. 5% goes to backup musicians/vocalists. Artists/rights holders must register for
SoundExchange to get paid.
Hypo (p. 959 n.4): streaming music site on demand; how many licenses do you need?
Interactive service (not subject to statutory license)...SoundExchange administers statutory
license (so they wouldn't do this consensual licensing...casebook is wrong). In this case you
need a category 3 license, not category 2 (so you need to negotiate for a license).

Remedies
17 USC 504: infringer liable for either actual damages/any additional profits of the infringer, OR
statutory damages (copyright holder can choose) --> statutory damages = 30k for infringement,
150k for willful infringement usually. Go for this if you won't make much money from the
copyright works, or if it's not possible to calculate the fair market value.
If you want to get statutory damages or attorney's fees for a published work, you have to
register the work in a timely manner (before infringement commenced...3 month grace period).
Unpublished work: similar, but no 3 month grace period.
register the works ASAP!
sec. 411: you can wait until you have been infringed to register. Can't bring suit until then
though. And if after 3 months, you don't get statutory damages/attorney's fees.

XIII. Remedies
Actual damages

Banff Ltd. V. Express, Inc. (pg 964)


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Defendant Express, a retail clothing chain, infringed the copyright of plaintiff Banff in the pattern of a
fishermans sweater by selling a knockoff version of that sweater. The jury awarded plaintiff $200,685 in
actual damages.

Issue: Was there a causal connection between the infringement and the copyright owners losses to
warrant an award for actual damages?

Holding:
Section 504(b) enables a prevailing plaintiff "to recover actual damages suffered by him or her
as a result of the infringement.
A copyright owners actual damages are equal to the profits she would have accrued but for
defendants infringement.
The plain language of 504(b) contemplates that actual damages are only available where there is
a causal connection between the infringement and the copyright owners losses.
Evidence at trial indicated that it was highly unlikely that Express would have bought sweaters
from Banff.
Express had never done any business with the division of Banff that designed the fishermans
sweaters.
The two parties sold different products at significantly different prices and had different
demographics
Banff offered little evidence that it could have supplied the quantity of sweaters express
needed.
Express purchased between 39,262 and 40,137 of the knockoff sweaters
By contrast, Banff sold only about 400 of its cotton sweaters
Expresss motion for a new trial on Banffs claim for actual damages is granted.

if you can't prove lost sales or lost opportunities to license, figure out the fair market value
(what a reasonable user would pay)

Infringers Profits

Caffey v. Cook (2006)(pg 970)
Caffey developed idea for show "Three Mo' Tenors". Caffey registered copyright for the show
and it eventually got canceled.
Ds performed their own shows without Caffey's permission - he sues them for damages
Choice between compensatory and statutory damages - Caffey chooses compensatory.
statutory: up to $30k, up to $150k if willful. Could be $180k (6 infringements x $30k, maybe even 180
x 3 for 3 tenors?) NO b/c Copyright Act says only 1 statutory award per work - 6 performances =
copies of the same work. Statutory = $30k or $150k.
Maybe since there was $330k gross revenue, they thought they would get more money via
compensatory damages.
Compensatory: 1) infringer's profits attributable to infringement; 2) copyright owner's actual
damages (example: see slide)
actual damages drops out quickly b/c Caffey's author fee was only $93.75 per performance.

97
1st thing P must do: show gross revenue reasonably related to infringement (even though
statute doesn't seem to indicate it needs to be related)
Davis case (980 n.4): P = maker of weird eyewear
This is an easy case: just look at the revenue from the shows: $330k
Next step: Ds need to prove deductible expenses - expenses like salaries/other direct costs;
allocated overhead; income taxes; profit attributable to other factors
Direct costs/Overhead: prorated. 1/17th of the amount attributable to infringing
performances since they performed 17 concerts.
Income tax deduction: it's like another expense - makes sense it'd be a deduction
Profit attributable to other factors: not all revenue from the show was made from
infringing the copyright. Always a mixture of infringing/non-infringing conduct (Ds'
talent; association w/"The Three Tenors"; the songs; everything else not included in the
thin copyright)
Judge determined "other factors" = 2/3, so P only gets 1/3

Actual damages: real question - what's the fair market value of a license fee to put on a show?
Court concluded 6 shows = $34k...license should've been way more than $93
p.983 n.6: example: profit = $3k ("profits of the infringer"), license fee = $2.5k (actual damages)
can't recover $5.5k (of the 3k, 2.5k was the unpaid license fee)
can recover 3k total

Statutory damages

Bryant v. Media Right Productions, Inc. (pg 984)
Bryant entered into agreement w/Media Right to market their album.
Copyrights were registered to both the album as a whole and the individual songs
They specifically didn't give Media Right the rights to make more copies of the albums (Bryant
would provide the copies if more were needed)
Media Right entered into agreement with Orchard Agreement to distribute albums. 4 years
later, Orchard made digital copies of the album to sell online (didn't inform Media Right or
Appellants). They made $12.14 from physical sales and $578.91 from digital downloads. Media
Right didn't pay Appellants the $331.06 they were entitled to.
Dist. Ct. awarded statutory damages of $2400
Issues w/award: Appellants argue 1) Ct. erred in refusing to grant separate statutory damages
for each song on the album; 2) Ct. erred in findings on intent; 3) Ct. erred in determining amt of
damages
App. Ct: Copyright Act only allows one award of statutory damages for any "work" infringed - all
parts of a compilation = one work. Only 1 statutory damage award.

98
Contrary authority: alternative view - if each part of the compilation is worth something on its own
("independent economic value" test), the parts can be considered individually. App. Ct. says they can't
deny the plain statutory language. Congress can rewrite if they want to.
Innocence: Agreement stated Orchard could distribute the albums by any means including
digital Orchard reasonably relied on the agreement language (Not clear error for Dist. Ct. to
find innocence)
Willfulness: Not unreasonable for Maxwell not to have anticipated that the Orchard Agreement
granted Orchard the right to distribute digital copies of the albums
Calculation of statutory damages: defer to Dist. Ct's discretion. $2.4k based on meager profits
from infringing sales and no deterrence needed
Dist. Ct. didn't abuse its discretion when deciding not to award attorney's fees (appellee's
defenses not objectively unreasonable)

Attorney's Fees

Matthew Bender & Company, Inc. v. West Publishing Co. (2001)
Dist Ct awarded attorney's fees against West.
App. Ct: You can do that sometimes, but the ground on which attorney's fees were rewarded
isn't defensible here.
Something that supports awarding attorney's fees: losing party = objectively unreasonable (not
present here) perfectly reasonable for West to adopt the legal position it did (it got dissenting
opinions here)
Another valid ground for awarding attorney's fees: losing party's unreasonable CONDUCT during
trial (not present here). If you're a copyright owner, you're not required to cooperate with
someone you think is infringing.
Remand to Dist. Ct. to determine if there was any other specific pre-litigation misconduct by
West

Injunctions
Salinger v. Colting (2010) (pg 100)
Colting wrote sequel to Catcher in the Rye; Salinger didn't like this so he wanted a preliminary
injunction against Colting to bar him from producing/selling the books
Dist. judge was applying existing rules in 2nd Circuit in a copyright case --> presumption of
irreparable harm to copyright owners who show a likelihood of success on the merits when
seeking a preliminary injunction
App. Ct: Can't presume irreparable harm in a patent or copyright case. Have to go through the
whole 4-factor test (equitable standard) to determine whether an injunction is warranted.
4 factor test:
1) likelihood of success on the merits or sufficiently serious questions going to the merits to make them
a fair ground for litigation and a balance of hardships tipping decidedly in favor of the P
2) P demonstrates he'd suffer irreparable injury in absence of injunction
3) balance of hardships tips in P's favor

99
4) Public interest wouldn't be disserved by issuance of preliminary injunction
Analysis of 2nd/3rd factors: Can't presume irreparable harm to copyright owner who's
established likelihood of success absent preliminary injunction, but almost always there is
irreparable harm. Proving loss of sales due to infringement is always hard.
Remanded to Dist. Ct. to go through the 4 factors

Criminal Offenses see page 1011

XIV. Preemption

Orth-O-Vision, Inc. v. Home Box Office (1979) (pg 1063)

Contractual relationship between Orth-O-Vision and HBO to distribute HBO's programming.
Ortho stopped paying HBO and stopped supplying HBO w/monthly subscriber reports req'd by K
even though it kept marketing HBO's program service to subscribers
Public performance right issue (CL claim of "misappropriation") --> copyright claim in disguise
HBO's state law claims are clearly preempted by Copyright Act unless they involve rights "not
equivalent" to exclusive rights of copyright in 17 USCA 106.
Ct: CL unfair competition doctrine HBO relies on is equivalent, if not identical to copyright rights
recognized in fed statute.
HBO's motion for SJ denied

Toney v. L'Oreal USA, Inc. (2005)
Model Toney sued companies for using her image without her permission. She brought claim
under IRPA (Illinois Right of Publicity Act) --> grants individuals right to choose whether/how to
use their identity for commercial purposes. Need written consent to use their identity for
commercial purposes
Not a work w/in subject matter of copyright b/c Toney's identity isn't fixed in a tangible medium
of expression as defined in 17 USCA 102(a). --> the subject matter of such a claim isn't a
particular photo/picture of P. The very identity/persona of the P as a human being is protected
here.
A persona can't constitute a "writing of an author" w/in meaning of Copyright Clause of
Constitution
Unlike copyright law, "commercial purpose" is a req'd element of IRPA (this is the "extra
element" that makes it different from the copyright claim)

Pro-CD, Inc. v. Zeidenberg (1996)
P produced phone directory on CD-rom. Sells it for commercial and non-commercial use.
Z buys the non-commercial (cheaper) one and uses it commercially.

100
Ct: limitation to non-commercial use is part of the license terms that apply to Z's use of
copyrighted work.
State law claim: breach of K.
Z says you can't bring breach of K claim b/c it's preempted by sec. 301.
Is it fixed in a tangible medium? Yes. Within one of the subject matters in sec. 102 or a
compilation/derivative work? Not one of the subject matters, but yes, it's a compilation.
Does the state law protect rights equivalent to sec. 106 rights? Copyright = rights against the
world, Ks only affect their parties; strangers may do as they please (so, Ks do not create
exclusive rights but copyrights do).
(Rothchild: bad way to reason out this case...this is just about who the rights apply to, but not
the actual content of the rights).
"Extra element" here that makes the claim qualitatively different from copyright claim: show K
existed (consideration, mutual assent)
Some commentators: since it's shrinkwrap, there's no actual consent. Anyone who uses it is
subject to it, so it's not a qualitatively different claim than copyright.

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