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What is the effect of new technology on Copyright?

Client interested in protection: think in terms of use and ability to control, while thinking of ways to protect the work. Nature of Intellectual Property I. Property and Intellectual Property a. What is property? i. The right to possess, use, and enjoy a determinate thing. - Blacks Law Dictionary (8th ed.) ii. Land and anything growing on, attached to, or erected on it, excluding anything that may be severed without injury to the land. Blacks Law iii. Any movable or intangible thing that is subject to ownership and not classified as real property Blacks Law Dictionary (8th ed.) b. What is intellectual property? The thing (or res) is the product of intellectual activity. Two categories: Tangible (physical presence) a. e.g., book, photograph, DVD, sculpture, painting. b. E.g., copyright registrations, trademark registrations, letters patent or patents. c. Commercial importance. Intangible (no physical presence): can only be conceived part of intangible property. Most intangible property (currency, dollars, bearer bonds) is treated like tangible property because it has a physical manifestation/tangible representation. Authors rights/ copyright can be assigned, but author retains certain rights that control how work is exploited because it reflects the authors personality. (like assignments in a lease, or lease in a ownership, carve out portions of interests and retaining others). U.S. - ECONOMIC. We dont buy into droit moral. But, 43(A) of the Lanham Act we allow author to affect 2 of the 4 French rights [paternity or origination and mutilation in Trademark]. French system has 4 rights: recall (earlier work no longer represents creative personality), mutilation, first publication (author determines when it can be first published), and origination. Much stronger system. Rights are not waivable and go on for eternity. U.S. rights are waivable and do not go on to the heirs. British also have a weak system of droit moral. More important divide among the systems. There can be overlapping protection: trademark and copyright in a trademark logo. Standards for infringement: copying and a substantial taking in a qualitative or quantitative sense.

Independent production is always a defense to copyright infringement

Policy considerations: should we protect intellectual property? POLICY comes first and then policy choice is codified into law. There will always be doctrinal policy (the policy of those who made the law judge, legislative, etc. Doctrinal policy is policy identified by the courts as the one representing its opinion). Sophisticated lawyer embraces policy and there is no black letter law. Law is never independent of policy. Countries with a net export of IP will always be pro-IP in relation to countries with net import of IP. Why do we protect copyright? a. Incentive/dissemination (doctrinal approach) copyright provides authors [economic] incentives; encourages better works for dissemination to the masses; copyright as a necessary evil protect to extend needed to provide incentive (societal argument/general welfare for copyright). Congress did not consider this policy and there are few provisions based on it. i. Use v. Payment (use without payment) consider the public, creators and users. ii. Ex ante approach: incentive before the work is created 1. Argued by the creator work needs protection in order to give incentive to create 2. Macro: ex ante takes into account the big picture and the best overall policy for society generally 3. Hansen favors ex ante because he feels it makes sense to encourage creation by offering protection. iii. Ex post approach: incentive AFTER the work is created 1. Will be argued by infringer now that work is created, by not providing protection, it will be more widely disseminated. 2. Micro: Ex post is often argued for a specific instance. Takes into account best policy for specific case after a work has already been created. 3. Hansen disagrees because it fails to look at the whole picture. b. Natural law Lockean analysis; effort creates property right i. Locke: creators have natural property rights as a result of effort which they put into creation of the work. Effort creates ownership. ii. sweat of the brow argument policy only, wiped out by Feist 1. no sweat of the brow in compilation. 2. Not followed today iii. Authors rights (droit dauteur) a view of IP that divorces it from economic interest and other property rules. 1. Continental French view: tied to the authors personality; it is a personal right as opposed to a property right (cult of the intellect/French elitism).

2. Therefore author had right to recall his work if it no longer represented his style. Complete control over work by the intellectual (that calls up monopoly concerns) a. Limited fair use (uphold integrity of authors work; author has control over his work; right is highly personal versus property right) c. Commercial morality/fairness i. Misappropriation ii. Macro: the fairness in general of rewarding work iii. Micro: based on the facts of the case, which party should win? iv. Microanalysis of the two parties in the case; who is the freerider? Is it fair in this particular case? 1. Appeals to gut feelings of juries 2. Judges are strongly opposed to free riders 3. Creator should reap benefits of his work (award for work) v. INS v. AP: AP has two sources of news and INS is a competitor who did not have reporters so it took AP reports out of newspapers and rewrote articles. Had same facts as AP and same stories, but could sell for cheaper on West Coast and not have to pay reporters. AP sued INS. 1. SC ruled for AP even though there was no copyright, but INS was free riding off AP because AP did all the work. 2. Copyright Doctrine at the same time: only protection for expression of facts or ideas, but not facts themselves. 3. Court created new doctrine to reach the result they wanted = misappropriation 4. Commercial morality often works if other policies do not go in your favor. 5. Brandeis dissent: d. Advance technology judge will expand or contract protection depending on its ramification 1. Along same lines of incentive dissemination if the IP is in the technology 2. For mediums that carry IP (i.e. TV, internet, etc.) the courts will reduce IP protection for the works that are used by the medium to promote the advancement of the medium.1 a. Counterargument: open source increased technology with increased access. 3. In cases where the IP is the medium, courts tend to enlarge protection for the works so that there is greater incentive to produce better technology. a. Ex. Overprotect computer technology early to get it going, then back off a little.
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Jane Ginsburg: "new means of dissemination have often escaped the copyright owner's control, as courts or legislatures have been persuaded to exempt, or limit liability in favor of the exploiters of new ways to bring works to consumers."

4. Hansen says this is a strong policy: if a technological work is being copied, there is fear that people will no longer have incentive to advance technology further e. Uphold the independence of artists and natural rights of creators f. Public domain: favorite of academics, want to create more access to information (argue innovation that way). i. Not completely an anti-copyright policy, can be very particular to cases ii. There must be reasons to afford protection; not protection pro se of natural right 1. Derivative works should be given wide latitude 2. Fiction works: nothing is ever truly original 3. Nonfiction: promote dissemination of databases, factual collections, etc. iii. People should not be able to completely free-ride but they should be permitted to use, improve and expand existing works. There are anti-trust concerns in Intellectual Property (are they opposing? They do address each other.) g. Under these concerns: suspicious of IP as stifling competition. i. Using this policy, defendant should be viewed/painted as a competitor instead of a freerider (providing more access and simply profiting from his labor in this facility of access). 1. Against this view: copyright is a type of innovation monopoly which rewards something new; it does not restrict output; it does not harm the public. 2. There is no control over the product itself in the marketplace 3. Independent producers not restrained as in patent 4. Gives rights in something public never had before 5. Copyright laws do not restrict anything that existed before, so there is a net benefit or addition which the public can use. 6. Encourages creation -> leading to more competition. h. Monopolies (IP is a monopoly of sorts, which is why there are requirements in copyright and the protection is limited) restricted output, raised prices. i. Warren Court: anti-IP and monopolistic, so it increased antitrust laws and shut down control that people had over their copyrights. i. Minor: populist argument big is bad, small is good; Court may not buy into it, but Euro courts may use it against U.S. Firms. j. Privacy: unpublished, private instruments; minor nut used occasionally? i. Salinger v. Random House (2d Cir.): Salinger sued author of an unauthorized biography who published excerpts of private letters that Salinger had written, which were later kept in a University library. Court gave protection to Salinger: there is no public right to know that defeats privacy. ii. This analysis really depends on the judge. 1. Privacy/harm: Salinger didnt care about privacy, but bad publicity might harm the sales of Catcher in the Rye.

2. Dissemination: is there harm to the public by protecting Salingers estate? a. Salinger is dead, cannot create anymore but any remaining hidden texts might be kept hidden (ex ante v. ex post) b. Someone might collect the letters for an autobiography, then the public will have a better product. iii. Strategy: talk to the other side, pick out a few paragraphs you like and maybe settle this matter. Methods of Protecting Property including IP A. Self help 1. Retrieval a. All tangible property and that intangible property which has de jure tangible representation (e.g. currency, bearer bonds). b. No retrieval for IP. Cannot retrieve intangible property. Owners of IP are at a disadvantage right off the bat. 2. Prevention a. Can prevent IP theft to some extent (lock up trade secrets, inscription on the Internet). Trademark law has little prevention. B. Judicial process Limitations of Judicial Process as a method of protection 1. Costs a. Expenses b. Delay c. Uncertainty of outcome 2. For IP -- extra level of uncertainty a. Unfamiliarity i. Pre-digital environment ii. Digital environment b. Conceptual complexities a. Hostility to concept of protecting IP as other forms of property c. Difficulties of proof - need expert testimony (difficult, confusion, and $). Specific Enforcement Mechanisms for Protecting IP 1. Courts a. Civil - general route used b. Criminal i. Bootlegging, counterfeiting, criminal liability for willful infringement ii. Most private practitioners dont pursue criminal charges in copyright. Most clients just want it stopped since legal fees can be more expensive than royalties. iii. Owner must have the DA to prosecute, which is generally difficult unless massive piracy, then:

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iv. There are Federal and State laws against willful infringement that are generally only applied in cases of massive piracy. v. Tactic: threaten criminal charges because they have not paid taxes. Tax lawyers rather than criminal may be able to take care of things. vi. RICO actions are also possible (treble damages are threatened if a person does a lot of these actions in a continuous, serious way). U.S. Customs Service cheap method of enforcement a. Goods are confiscated which acts as a real world fine. b. If the owner typically uses customs enforcement it may act as a deterrent. c. Have to fill out forms and identify ports where goods are coming in from, likely foreign manufacturer, and Customs will try to seize with enough information. Self help a. Technological bars to copying: inscription, but generally not successful b. Limiting access (trade secrets) c. Unilateral refusals to deal: somebody is infringing, but are part of a bigger organization where other parts of it do business with the client. i. Tactic: threaten refusal to do business on any level! Very effective and NOT an antitrust violation.

British Origins Printing press, William Caxton, 1476 Royal decree: license, govt. censors Licensing Stationers Company publishing monopoly Star Chamber - Licensing of the Press Act of 1662 - Stationers Company monopoly on printing - Censorship for heresy, sedition, immorality - Expired 1695 Statute of Anne (1710) - Considered first copyright law - 21 years for existing works - 14 years plus 14 years renewal - New estate in copyright in renewal term - Failure to renew, work loses protection Role of Common Law Relationship of Statue of Anne and common law (a) Millar v. Taylor, 4 Burr. (4th ed.) 2303, 98 Eng. Rep. 201 (K.B. 1769) (b) Donaldson v. Becket, 4 Burr. (4th ed.) 2408, 98 Eng. Rep. 257 (H.L. 1774) U.S. developments A. Pre-constitution period B. U.S. Constitution - Art. I, sec. 8, cl. 8: The Congress shall power . . . [t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries; 1. How much should we care what the Constitution says about copyright protection?

1. Raises stake of litigation constitutional issues put the IP issues at risk a. Risk of losing the IP makes the plaintiff more willing to settle i. Toys R Us v. Toppits R Us Dilution claims. Dilution law was preempted by federal trademark law, which raised the stakes of the litigation. Toppits got a huge settlement as a result. 2. Interests judge and clerk a. Individual assignment system is how the case comes in and the judge doesnt care how he gets rid of a case as long as he does. IP lawyer wants to be thought about individually. Judge may have little knowledge or interest in IP, BUT constitutional issue interests the judge and definitely the clerk. Want the case to have its own status and will cause them to slow down and consider the issues carefully. i. Problem with individual assignments is the lack of time and wont research all the issues in your brief. 3. Leverage tool for you and judge in settlement a. Judge may think that the Con law argument sucks, but he may still use it as leverage against other side for settlement. Subtlety is important. ii. Constitutional issues that may be raised by defense: 1. Does the Congress have the power to give copyright protection to the work under Art. I, 8, cl. 8? 2. Assuming Congress has the power, are there other Constitutional prohibitions? 3. Supremacy clause (if plaintiffs claims are based on state law). 2. How should we interpret the words used? The Congress shall have power . . . [t]o promote the progress of science . . . by securing for limited times to authors . . . the exclusive right to their . . . writings . . . ; 1. to promote the progress of science a. If it doesnt promote, Congress went too far. b. Standard = community standards 2. scientia Latin: knowledge 3. scire Latin: to know 4. by securing 5. for limited times a. Life + 70 years, how limited? 6. Eldred v. Ashcroft, 537 U.S. 186 (2003)(7-2)(Ginsburg, J.; dissents Stevens, Breyer)

7. To authors originator of the work; what about works made for hire doctrine. 8. the exclusive right what about compulsory licenses? 9. to their writings why writings; why not works? tangibility requirement a. Burrows-Giles v. Sarony i. Photo of Oscar Wilde based on a painting of Oscar Wilde painted by Sarony ii. Constitution is broad enough to cover an act authorizing c/r of photos as long as the photos represent intellectual concepts of the author 1. Photographer = author 2. Photograph = writing iii. Policy considerations 1. Natural law: favors protection. P put effort tinto his creation by posing Wilde in front of the camera, selecting, and arranging costume and draperies, arranging light/shade. 2. Incentive/dissemination: favors protection ex ante. If photographer not protected, less likely to produce good creative works. 3. Populism: may go against protection. If lithographs are cheaper than photos, denying protection would allow common folk to buy knock offs of elitist works. 4. Commercial Morality: Probably favors protection, but may cut both ways. Photographer put in effort, but lithographer did too it wasnt just the bad free rider reaping the benefits. iv. Hansen: statutory interpretation case that will stretch to give protection based on policy reasons. Not interpreting author and writing narrowly goes along with that. 4. Framers intent: Constitutional provisions No discussion in Art. 1, sec. 8, cl. 8 in constitutional convention. Federalist papers Purpose? How published? Publius John Jay, Alexander Hamilton, James Madison 1. No. 1 (October 27, 1787) 2. No. 85 (May 28, 1788) No. 43 (Madison) Art. 1, sec. 8, cl 8 1. The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a

right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals. The States cannot separately make effectual provisions for either of the cases, and most of them have anticipated the decision of this point, by laws passed at the instance of Congress. 2. Why were copyrights and patents not used in the clause? Commerce Clause to what extent can Congress enact c/r laws pursuant to the CCs broad reach as opposed to the Patent.-C/R clause? argument against says dont use the broad powers in the CC in the face of a very specific grant of power in the C/R clause Federal legislative Acts May 2, 1783, Resolution 1. Encouraging individual states to enact laws a. Federal preemptioni. implicit preemption Supremacy clause ii. explicit when federal statute specifically says state laws in this area are preempted. b. Federal copyright act of 1976 i. Exclusive federal jurisdiction over copyright cases since 1978. c. State- common law copyright for fixed works preempted by Copyright Act of 1976 and for unfixed works, common law may still apply 2. secur[ing] to the authors or publishers 3. Any new books not hitherto printed 4. citizens of the United States 5. term of not less than fourteen years, 6. Renewable if the authors should survive the first term Registration required for protection Clerk of District Court where author resides Payment of fee (60 cents) Owner must publicize registration in newspaper for four weeks 1. Deposit of one copy of work in the Office of the Secretary of State within six months of registration 2. 14 years (first term) 3. 14 years (renewal term) 4. Author if living 5. Must register and publish again 6. within six months of expiration of first term Restricted acts:

1. Print, reprint, publish, or import, or sell with knowledge of infringement 2. Independent creation is always a defense. I. Copyrightability 3 elements required for Copyrightability:2 1) The work must be original. 2) The work must be fixed in a tangible medium of expression 3) The ideas within the work are not copyrightable, but the expression is protectable. A. Originality: Judge made concept based on constitutional requirement of authorship (codified in 102(a) of 1976 Act a) Doctrinal issue: modicum of creativity, at the very least, he has to have done the work himself (independent production) i. Common law doesnt have originality as a standard in copyright (independent effort). ii. Originality means little more than a prohibition of actual copying. No matter how poor artistically the authors addition is. It is enough if it be his own policy for minimal standard of originality/creativity. Most cases will meet the originality standard; it does not extend to require novelty, ingenuity, or aesthetic merit. 1. Almost any distinguishable variation of a prior work will constitute a sufficient quantity of originality. 2. Second circuit was very natural law oriented. iii. Facts are not copyrightable, because no one creates facts. Distinction between originality and novelty: distinction is between creation and discovery. 1. Factual compilations may possess the requisite originality a) Compiler b) Choose which facts to include c) Intellectual use of facts and how to arrange d) Selection or arrangement is protected if made independently by the compiler. b) Policy i. Natural law effort creates property, applying that to intellectual property; standard for originality will be very minimal 1. Two or three states out of 12 protected: maps and charts as well as books. This means they are protecting effort, because there is not much creativity in maps. 2. Bleistein v. Donaldson natural law a) Facts: Circus had a poster and someone copied the poster.

17 U.S.C. 102(a): "Copyright protection subsistsin original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device."

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v. vi. vii.

Everything was against plaintiffs law and policy i. Sixth Circuit reasoned intrinsic value related to fine art (qualitative) only related to incentive dissemination for fine art. c) Supreme Court on originality: the copy is the the personal reaction of an individual upon nature. Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one mans alone. That something he may copyright unless there is a restriction in the words of the art. d) Holmes analysis: i. No fine arts restriction of pictorial illustrations 1. Constitution doesnt define fine art (the law cant define fine art, so fine art as a category doesnt even matter in the act and congress cant amend it). ii. Even if there were one, plaintiffs picture fits within fine arts restriction iii. Moreover not the province of the courts to make such judgment (because it should be up to the art market not the law to determine what is fine art). Commercial morality fairness tied to effort, if theres a bad guy free riding on a good guy (they created a new doctrine of misappropriation to get him). Sweat of the brow effort creates property over originality Incentive dissemination (utilitarian) not a natural right, incentive to create so that the public can benefit. Incentive for good (elite) stuff, so originality would have to go way up. 1. Problem: todays junk could be tomorrows art; market place should allow autonomy in deciding that, creativity should be rewarded. 2. Wine and cheese judge: subset of I/D. Copyright does not protect the junk, only the snobby, artsy, fancy stuff can be protected. This type of judge would have a high standard (only for what he thinks is good). Advancement of technology originality is not going to play a role. If the technology will benefit the public, then the court will find a way. Protection of competition: high standard to reduce amount of monopolies, reduce the amount of power, allow more people to produce. High standard = nothing ever meets it so everyone can produce. Atari Games v. Oman (page 98) 1. J. Ginsburg (Ct. of Appeals) 2. Copyright office rejected registration of Atari's game "Breakout" on the grounds that it lacked sufficient originality.3 The office was concerned at the time about copyrighting of status screens and computer user interfaces. a) But this view could not be reconciled with protecting games, which are several status screens together.

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"the common geometric shapes contained in BREAKOUT are not copyrightableadding color did not render the work copyrightable, and the individual tones or sounds are not copyrightable."

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General counsel of the C/R office was a traditionalist who thought games should not be protected. 3. The Supreme Court remands the case informing the office that they should have looked at the work as a whole and not the separate images. (i.e. whether the total sequence belies a distinctive arrangement and layout) The case emphasizes the modicum of originality necessary for copyright. a) Analogy: a novel is protected even though the separate words individually are not. (Compilation) 4. Hansen thinks the C/R office screwed this one up. Judge Frank would immediately have protected this. 5. Procedure when rejected for copyright protection, go through the following means a) Administrator/examiner b) Supervisor c) General counsel d) When rejected entirely, dont attack the copyright office in court. Often, the courts pay huge deference to the Copyright office. They have expertise and are well-respected. Wait until infringement occurs, then sue and let the district court judge face the problem. Get judge interested in protecting you rather than attacking the office. Time Inc. v. Bernard Geis P 95 Zapruder film of President Kennedy assassination. 1. Natural no real work, it was happenstance 2. Public domain history, no one should be able to capture history with copyright. Fair use, public interest was paramount to copyright. 3. Commercial he offered to pay and they refused. 4. Dissemination no incentive. Shepard Faireys picture of Obama Hope picture should he get a copyright 1. Judge said, youre going to lose, so settle this case. 2. Public domain policy: derivative work should be protected. Feist Publications 1. White pages of a phone directory. Feist wanted to produce one directory for all counties instead one for each. Feist licensed names from all counties but RTS refused to license. Feist copied it anyway and RTS sued for copyright. 2. Holding: lacked sufficient originality to be copyrightable 3. Originality is a Constitutional requirement; novelty is not. 4. Sweat of the brow does not constitute originality gives too much protection so that (3) above gutted. a) Though Feist gutted it, it still has a future i. Hansen: even if SC says no protection and the policies say it should be, then maybe a judge or jury will find a way to give protection. Decisions are based on policy and precedent together.

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Fixation a) Definition: a work is fixed in a tangible medium of expression when its embodiment is a copy of phonorecord, by or under 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. 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. i. Medium may be one now known or later developed ii. Transitory duration 1. Fleeting images on TV screen, picture in the sand are both transitory 2. How much time is transitory? Policy analysis a) Pro-protection wants low threshold requirements for protection. Anti-protection wants high threshold for protection. b) I/D: fixation does not serve this policy. There can be dissemination without fixation (probably easier to disseminate in some instances). Always helps plaintiff, not the defendant c) Natural law: just as much effort in unfixed works, so fixation does not serve this policy. d) CM/F: policy doesnt cut against fixation, but as a policy, copyright shouldnt require fixation based on copyright as a moral cause. e) Public domain: they want fixation requirement with hope that it will be in the public domain for us. b) Policies do not support fixation. Congress creates a legal fiction in the second sentence of the definition to serve broadcasters. Fixation standard is actually a legal fiction; the second sentence of the definition overrides the fixation requirement. i. Stand up comics and live, improvisational performers satisfy the fixation requirement by video taping a performance. From that point on if they reuse any of the performance they are performing a fixed work. ii. Fixation requires authorization by the author. However, if for example, someone secretly tapes a lecture and attempts to use it, the lecturer can nunc

Protection for fact research even more important in info society than protection for novel iii. S. Ct. does NOT police its IP precedents Hansen: this was dicta, sui generis, on sweat of the brow. If Congress cant protect sweat of the brow under copyright, then maybe it will be protected under the commerce clause. Originality NOT = novelty Works never considered to be original and nor subject to protection: works consisting entirely of information that is common property containing no original authorship, such as: standard calendars, height and weight charts, tape measures and rulers, schedules of sporting events, and lists or tables taken from public documents or other common sources.

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pro tunc4 (now for then) claim that all taping of lectures is authorized, in which case the fixation would allow the lecturer to claim copyright in the tape. 1. Implied authorization if its a situation where I want protection, I would have it by authorizing. c) Fixation does not abide by policy considerations and courts will get around the requirement in the interest of fairness. The arguments in support of fixation stem from economics: i.e. the need for physical boundaries to organize transactions; need to be able to identify works. Fixation is almost never used as a basis to deny Copyrightability however, it may be used as a defense to infringement, in which case the judge may use it to force a settlement. There is a constitutional argument that "writing" implies something tangible but this argument will never decide a case. White-Smith Music v. Apollo Co. (page 74) - Player piano case. - A musical composition is not susceptible of being copied until it has been put in a form which others can see and read, therefore this was not a copy since it is not fixed. - Court adopts the approach that a copy of a musical composition involves a written or printed record of it in intelligible notation and protection does not extend to the intellectual conception apart from the tangible medium in which it is embodied. - The court adopts this approach in the interest of advancing a new technology. New technologies carrying copyrighted material are given wide latitude that might run contrary to the other policies. - Policy: contraction of copyright protection in order to protect the new technology. - Holmes dissented via a concurrence, because there is more weight: anything that reproduces that collection of sounds ought to be held as a copy. Fixed works are preempted by federal law and cannot be protected by state common law copyright. 2. State Common Law Copyright There may be state copyright protection available for unfixed works. California provides for it by statute. Courts are reluctant to use copyright to suppress speech. Estate of Hemingway v. Random House Action by wife of Hemingway to claim copyright in certain conversations that he had which were included in a biography of his life.

Nunc Pro Tunc. Having retroactive legal effect. Legal Fiction created to allow people to later claim after the fact a legal right that was not originally claimed.

ISSUE: Whether to recognize CL CR protection for certain anecdotes, reminiscences, literary opinions and revealing comments uttered but never reduced to writing by EH. HOLDING: No, b/c author had not indicated an intention to claim the utterances in question as his property, by somehow marking them off from the common run of his everyday speech. Wife doesn't like way bio portrays her and EH. She has his letters, says she's inherited the CR he can't quote letters. She's misusing CR for other reasons CL CR recognizes certain kinds of spoken dialogue as eligible for protection, but speaker indicate he intended to mark off the utterance from the ordinary stream of speech that he meant to adopt it as a unique statement and exercise control over its publication New York favors the publishing industry and so refuses to offer such protection, but California favors the creator and so does provide such protection. Furthermore, in this case the wife was attempting to misuse copyright.

Falwell v. Penthouse International Oral interview doesnt come within narrow circumstances that can sustain a CL CR cause of action under fixation issue. Courts are not sympathetic to the copyright of interviews. Fixation and Computer Games (consider in comparison to piano sheet music) i) Difficult because: the time it takes for the images to go across the screen is not enough to be fixationit is like a live broadcast. But legal fiction will consider this fixation. ii) *Midway Manufacturing v. Artic International (82) (Pac-Man knockoff) whether the audiovisual work is a fixation...courts say there is, basically as a way to stop piracy of the video game. Boils down to iii) Stern Electronics v. Kaufman (p. 24 outline): It was thought that misappropriation protection in a computer code wouldnt necessarily protect it from being commercial ripped offsomeone could change the code but still produce the game morality fairness and rip it off. policy incarnate. 2. Dicta: can also get them through the audio/visual display, different from the code that controlled it. 3. Solution: legal fiction stretching the definition of fixation for computer softwarefind it is was fixed (when it went across the screen?) (nunc pro tunc; then is now). 4. If its long enough for someone to copy, its long enough to be fixed. a. Attract mode thats on before someone plays = clearly fixed b. Once someone is playing, same work very likely to never come out more than once. Transitory duration. c. Live broadcasts: live at the MET, Thanksgiving day parade, football game, the NFL copyright notice has no legal effect: not

copyrightable without fixation. IN the opera: distinguish between the underlying work. i) Even if you record the live broadcasting, the broadcasting itself is still not fixed (recording doesnt change the nature where the legal fiction of nunc pro tunc comes in). 5. Almost no policy that supports fixation; courts will struggle for a way to find fixation i) If you are on the other side, good thing to argue is that fixation is constitutionally mandated b/c "writings" = tangible; challenge the second definition of fixation. C. Idea/Expression Dichotomy 102(b) of the Copyright Act says that "In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." Copyright began as a word-for-word protection from copying put in place to protect publishers. The courts then turned the right into one for authors by extending protection to include things such as plot, characters, etc. Copyright protects against a substantial taking of another's work. However, there was recognition that the protection should be for what distinguishes one work from another and not for broad, sweeping themes (e.g. the western novel, love stories, etc.). As a result of this recognition courts developed the Idea/Expression dichotomy where only the results of the authors effort, the individual expression, are protected (originality). - Effort you put into it (character development, plot, surprise endings, etc.) which is the result of your effort is protected. Things that existed before (general themes) are not protected. - Value added: that which you added that did not exist before. Arguments in support of Idea/Expression: (1) Granting monopolies in ideas would reduce the number of works created because each author would have to invest time in creating an original idea or incur expense in obtaining a license to use an idea belonging to a predecessor author. (2) Ideas, by their abstract nature, are often difficult to define for purposes of determining their scope and origination. (3) There is constitutional support in the first amendment for not protecting Ideas. The 1st Amendment provides freedom of speech in order to promote a marketplace of ideas. (4) Idea that when you protect from more that 100% copying by protecting against substantial similarity, you begin to protect ideas, which is against the policies of c/r

Nothing in Constitution that says ideas can't be protected. Can you make a constitutional argument for protection of ideas? First Amendment, marketplace of ideas SCT says idea/expression dichotomy does away w/ all FA concerns; w/o it, would violate FA.

*Can you protect a style? In the art world, there may be a cultural stigma in copying, you cant just copy a style (Dali or Picasso) unless you can do it as well as they can. But there are commercial artists who dont care about respect so much as making money. The argument for them is theyre liberating the style and brings it to people who appreciate qualities of Dali but who cant afford it. Reyher v. Childrens Television Workshop - 2 stories about the idea that a child thinks own Mom is most beautiful woman in the world beauty is in the eye o admitted she only retold a tale she had heard & s stories ridiculously similar 2d Cir (the Circuit on c/r) although there was a substantial similarity b/w & s works, there was no expression taken, only part of the idea, which the law does NOT protect who should win assuming the copying of the idea? What if had come i. natural law -- s minimal efforts should not create a property up with the idea right. Folktale was not her creation, she created details of characters, setting, etc. The Sesame Street one was different, did herself? not take what she created. (public domain?) policies would ii. commercial morality / fairness lot of s effort went into the stop the freerider work Even though iii. incentive/ dissemination (the doctrinal policy) even without c/r, doctrine says folk tales spread, therefore c/r not needed same result The storyteller who turned the folktale into a childrens book, she did create value that wouldve been worth money in real life, but its not copyrightable. Her story was copyrightable, but they took something that was not what she created. A corporation probably never would have appealed this case authors see things differently, less realistic about what's protectable, more emotionally involved Baker v. Seldon (explanation/use dichotomy) Supreme Court 1880 Plaintiff wrote a book describing an accounting system and defendant later published a book that was similar to the plaintiff's, in that it used the same accounting system, but containing different accounting forms. Within the book, the explanation is copyrightable, but the system itself is not.

The court attempts to distinguish patent law from copyright law claiming that copyright protects explanations of uses but that the uses themselves are the subject of patent law.5 B. Functional Works: Often closely integrate idea and expression, and conflict with copyright laws protection of original expression. When dealing with a functional work, court will limit protection to avoid conferring a de facto monopoly over unprotectible utilitarian aspects of the work The court didnt understand copyright, or else would have seen there is no infringement; instead has to create a doctrine of explanation/use. Policy analysis: - Natural law: in terms of effort of creating ledger, no taking because forms were different - Commercial morality/fairness: no free rider because didnt take that which first guy sold to public - Incentive dissemination: we want more versions of this ledger. Under this holding, computer programs could never receive copyright protection because they only exist to be used, there is no merit in simply reading them. People could essentially copy anything that they could find different uses for. (e.g. a sculpture that someone copies and uses as a candlestick holder) The case was later interpreted to stand for Idea/Expression instead of explanation/use. DOCTRINE OF MERGER When there is a LIMITED NUMBER of WAYS to EXPRESS an IDEA, even the expression is not protected because then you would be protecting the idea, which is not allowed. If the idea and expression are merged, there will be no protection of either (if we could distinguish between them, we would protect expression, not idea). Questions to consider: (a) Are the idea & expression inseparable if so, no protection (b) Is there only one way to do it (very rare)? If yes, there is merger and no protection. Use of Merger Doctrine: Courts use it to withhold protection from things they think are JUNK and not worthy of protection! (a) Tool of the wine and cheese judge to get rid of cases on summary judgment (efficient). (b) When there is good stuff copied or there is creator and a free rider, court will NOT use merger doctrine! When there is junk, the court will! Merger doctrine to be determined when a substantial similarity is presented before the court; its a denial that defendant has copied protectable material. (a cover for lack of originality?)

If

"The description of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art itself. The object of the one is explanation; the object of the other is use. The former may be secured by copyright. The latter can only be secured, if at all, by patent."

Herbert Rosenthal Jewelry Corp. v. Grossbardt FACTS: D used a rubber mold to duplicate a jeweled bee pin ISSUE: Was the jeweled bee pin copyrightable? HOLDING: No. Where idea and expression are indistinguishable there can be no actionable copying. 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 on the idea Expansion of Merger Doctrine Morrisey v. Procter & Gamble Co. FACTS: P owned CR in set of rules for promotional sweepstakes. D copied one of the rules almost verbatim. HOLDING: The number of ways to express the idea of the sweepstakes rule was limited, therefore the idea and expression had merged. Mere handful of ways to do something merger doctrine applies Who should win? Natural law: Not a lot of effort put in by P. Not much value added either. Commercial morality/Fairness: No free rider, P not losing business Incentive/Dissemination: Copying won't stop sweepstakes None of the policies really support protection P is trying to use CR to get a monopoly on a sweepstakes, which is not what CR is all about But they could have used other words, so court takes merger which doesn't really apply and expands it only a few ways to do something no protection. Hansen says this is crazy and copying would run rampant if taken literally, b/c there are only a few ways to do most everything Taken literally, will end up w/ many holes in CR Can't apply this doctrine much b/c created to deal w/ one particular P much like merger doctrine C. Categories of Ideaswithholding the merger doctrine D. Two Categories; E. Not protected: Ideas that undertake to explain phenomena or solve problems (e.g. identification of symptoms that are the most useful in identifying presence of a particular disease) F. Protected: ideas that do not undertake to explain phenomena or solve problems, but are infused with the authors taste or opinion

G. Facts and Research Facts not protected b/c lack authorship, discovered, not created by the author. (Feist, though cases below are pre-Feist). See Feist case, supra (no sweat-of-the-brow; no copyright protection for facts, copyright protection to arrangement and ordering of facts limited to that which is original work of the author). Research also not protected, though early post-INS cases were protected. Balance: public interest in stimulating creative activity (which research is not) and publics need for unrestrained access to information. Original expression by the author of the results of the research versus the labor of the research. Labor involved in news gathering and distribution is not protected by copyright although it may be protected under a misappropriation theory of unfair competition. Just about every facts and research case will be decided on policy (effort property) Created doctrine: misappropriation (wrong for competitors to free-ride) and sweat of the brow (effort creates protection). Policy: they should be protected. a) i/d: ex ante protection b) CM/F: free rider Miller v. Universal City Studios (p. 35, outline; p. 147, text; 5th Cir. 1981; Judge Roney) ISSUE: Whether a made-for-TV movie dramatizing a kidnapping infringes upon a copyrighted book depicting the unsuccessful ransom attempt. BELOW: Research is copyrightable. Research is more like expression than facts. HOLDING: No. Facts are free so that others can build on them -> wasted effort for someone to go out and do the research. Who should win? Natural law: Some effort, but none of the effort was uncompensated (done for another job (reporter)); didn't take the expression, so we don't need to analyze effort of expression (just facts) Commercial morality/fairness: Didnt write a competing book Incentive/dissemination: Don't have to worry about this, hot news is always going to be covered. Reporter was paid to do the research, and the book was an add on. If he were a freelance writer, result may have been different. More convincing argument when you can show that the only compensation author is getting is from the proceeds from the book, including the subsidiary rights. Financial incentive of copyright is to those who would add to the corpus of existing knowledge by creating original works.

Looking at policy, shouldn't win. And he doesn't win This is pre-Feist, after Feist, it is necessary to argue things such as extent of effort, style, arrangement, and emphasize the wholesale copying of concepts, quotes, etc. INS v. AP: INS rewrote stories from the facts obtained from AP and would sell its news on the West Coast for a cheaper price. (a) Holding: SC creates the doctrine of misappropriation (wrongful taking) for news competitors because OConnor wants to avoid sweat of the brow. (b) Brandeiss Dissent: Wants the news to be disseminated 1. Hansen says that this line of thought is ex poste dissemination to get the result of dissemination of the news. He thinks that it is really ex ante dissemination, which causes reporters NOT to disseminate the news. (c) Policies: AP should win according to natural law, I/D, and CM/F. Doctrine: AP loses because facts are not protected. SUBJECT MATTER OF COPYRIGHT A. Copyright Act of 1976, 17 U.S.C. 102(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible means of expression, now known or later developed, from which they can be perceived, reproduced, otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include: Literary works; musical works, including any accompanying works; dramatic works, including any accompanying music; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; architectural works. 17 U.S.C. 101: Says these examples are illustrative and not limiting. LITERARY WORKS Under 101, literary works include books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, computer programs (VERY BROAD). 1. Are CHARACTERS protected? a. Question: What protection can be claimed for the delineation of a literary character separate and apart from the literary work? Not in the language of 17 U.S.C. 102(a). Characters may be able. Look at the policies. There has not been a case where a court has refused to protect a clearly defined, recognizable character. office WILL NOT register characters, just works! This is because they dont have the resources to check on who is the author of what character.

B.

Ex ante I/D: Author of the character wins Ex poste I/D: User of the character wins (Ex poste is ALWAYS a defendants argument) Natural Law: Authors effort and he wins CM/F: Clear free riding and author wins Public domain: no protection, everyone should be able to use it. Characters only protected to the extent that they represent the whole work. Warner Brothers Pictures v. CBS (9th Cir.): Issue was whether WB gave CBS rights to Sam Spade character. WB was given a contract to do the movie version of the Maltese Falcon and therefore they had the exclusive right to the characters. Thus, CBS could not use it. Holding: Characters can have separate protection IF the character is the whole story. If the character is just a chessman or a vehicle in the story, it is NOT able. Bad result: Court held characters only protected to the extent that they represent the whole work. In reality, this does not help the author because since Sam is not copyrightable, anyone can use him. Court is trying to protect the author, but winds up hurting her. Should have decided that copyright holder could still license character to TV. Following cases usually protected the character. Hansen says that Sam Spade should be protected even under courts analysis because Sam is the whole work/story. Walt Disney v. Air Pirates (9th Cir.): , an underground comic book, portrays Disney characters as doing crazy things like sex and drugs. Disney sues for copyright infringement and argues that none of these characters are the whole story and therefore are not protectible. Holding: should be able to use subsidiary characters because policies outweigh the doctrine set in Warner Brothers here. Disney gets around Warner Brothers by saying that comic book characters contain some unique elements of expression, more so than Sam Spade (which is only an idea). Hansen says that it is ridiculous that comic book characters are unique. Court does not look at the whole story standard, but rather looks at the idea/expression dichotomy. Case should have been decided on pictorial representation, dont have to get into characters. Horribly litigated.

The more detailed and distinct = protected (basically getting rid of the earlier precedent). This is the Learned Hand Analysis. Court says comic characters are more distinguishable than literary characters and give protection for the delineated character. Porn is the REAL ISSUE here. Court protects the characters because it is associated with porn (porno-morality). Policies: 1. CM/F: No free riding really (unless you argue that the underground work potentially destroys the value of the original work via dilution. 2. Natural law: For Disney Defenses for the Air Pirates 1. Fair Use: If judge sees Mickey Mouse as a corporate icon and nothing artistic, she may say fair use. 2. First Amendment Hansen says that characters have basically always been protected, especially since they often are the most valuable thing in the work (and can be licensed out). (c) Walt Disney v. Powell (D.C. Cir.) i. Holding: Each character was treated as its own work for the purpose of statutory damages. Sends message that any character that is worth copying is sufficiently delineated. ii. Legal regime fixture for statutory damages = makes sense policy-wise and reduces the cost of the defendant having to prove which character he did or did not copy. Also, reduces cost of litigation. Great American Hero case: Warner Brothers sued saying that a character was an infringement of their Superman. Court held that there was NO infringement because WB does not have protection for all superheroes that fly, only for their particular Superman. i. Holding: No protection for a whole genre. ii. Hansen says this shows how ridiculous copyright owners can be. The case was stupid and a waste of time. Original work in Public Domain: a. Copyright issue: (sequel) No perpetual copyright of character: Expiration of term of protectionwork in the public domain. i) Sequels: If there is a sequel not in the public domain, the character as it was in the original goes into the public domain, but not the more recent character. b. Trademark issue: (disclaimer) may have a TM in a character as representing a source of origin. TM laws will force user to include disclaimer showing that the character does not come from the original source. TM will not be allowed to trump the original work going into the public domain;

COMPUTER PROGRAMS

i) Silverman v. CBS: copyright on Amos & Andy characters as developed in pre-1948 works in public domain only incremental development of characters in post-1948 works remain protected. TM found to be abandoned through no-use.

(a) Definition in 1976 Act 101(b), as amended in 1980: Computer program is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result. Given protection as copyrightable with the 1980 amendment. (b) Basics of Computer Programming - Directions to a machine on how to operate in a certain way. There are application programs (like word processing) and operating programs. i. Research application program stage designs the program to solve problems. ii. Process system stage plots computer program and charts how the program will work. iii. Coding of the programs. Source codes are in English and Object codes are numbers only. iv. Object code then tells the machine how to operate. (c) History of Copyright and Computer Programs i. Rule of Doubt: In the early days, the benefit of the doubt would go to registration and protection of the computer program, even if there was uncertainty about its copyrightability. ii. Process of 1976 Act: Computer programs came up and the Commission on New Technological Uses (CONTU) was created to report back to Congress on the programs. Assumption was that computer programs were protected under the 1976 Act as a literary work, though nothing was in the Act directly. iii. Final CONTU Report: Wanted to protect computer programs based on a basic economic incentive theory that they reduce costs and increase research. iv. Next question was what kind of protection should they get? 1. Patent Law: Patent protection should be rejected because of the novelty, non-obviousness requirements. BUT, the compound writing of the Constitution to include both patent and may include computer programs as a useful art to be covered by patent and not . This is an interesting argument yet to be made. 2. Sui Generis: It would be efficient to create such a protection regime, but might get it wrong and it would take forever. 3. Copyright (CHOSEN ONE): Advancement of Technology is of interest to everyone. (d) Questions regarding Computer Programs

i. Need originality and fixation. ii. Can it be copyrighted idea/expression. iii. What about utility? (e) First Generation Cases: Protected only the source code (the literal elements) i. Stern Electronics: Audiovisual work on a computer screen is fixed in a permanent form in the programmed memory chip in the computer satisfying the fixation requirement. ii. Apple Computer v. Franklin (3d Cir. 1983): Apple gave out its operating application program so it could sell software to more consumers. Franklin copied the system almost identically, claiming that this was necessary because Franklins application program needed Apples system to run Apples software. Franklins copying enabled it to use the vast # of application programs written for Apple. 1. Holding: Court expanded the scope of protection by stating that operating and application programs are able. 2. This case did everything possible to protect those who made the investments (Apple) and to screw the free-riders (Franklin). 3. Only the code is protected, but does not protect against using it (this would be patent). 4. Policy arguments: Court is concerned with advancement of technology because Apple is the leader in computer industry, is the best able to advance, and thus deserves protection. CM/F-wise, the court despised Franklins free-riding. 5. Limited to the Idea/Expression Dichotomy: Franklin argued that there was only one way to make the operating program (MERGER) and therefore it cant be protected. Court disagreed and protected only the expression in the form of the codes. 6. Comparison to Baker v. Selden: In Baker, court said that the system of bookkeeping was not protectable, just the explanation system was. Thus, blank forms were not protected. Similarly, the actual processing of computer instructions are not able, just the code or actual instructions are. (f) Second Generation Cases: Gave computer programs broader protection by protecting sequence, structure, and organization (SSO) in addition to the source and object codes. i. Whelan Associates v. Jaslow Dental Lab (3d Cir. 1986): Need for a computer program for the efficient operation of a dental lab. Whelan was an employee who did the research and designed the program. She bought out the software from the co. and seeks to sell the software she created to other dental labs. Whelan hires Jaslow to help sell it. He goes to other labs and finds out that the language of the program is for bigger machines than dental

labs have and the program has to be in a different language. With no access to the source code (remember which IS protected), he puts the program in BASIC language and starts to sell it without telling Whelan. 1. Holding: SSO of a computer program is protectable in addition to the source and object codes. a. Message: Everything IS PROTECTED. 2. Policy-wise: Who should win this case? a. Natural Law: Whelan b/c of her effort. Value created shouldnt be taken from someone without authorization; the value is in the SSO. b. I/D: Whelan b/c there would be no incentive to develop the original source code if someone can just translate the source code into another programming language. c. CM/F: Whelan wins because Jaslow is a clear free rider and violated his fiduciary duty! 3. Court wants Whelan to win. Without reference to CONTU and 3rd Cir. precedent, court says that Idea/Expression dichotomy applies. Court compares the program to a novel: you can change the words and still take the plot. The plot is protected. In the computer program, the idea is how to run a dental lab, but the expression is the program itself and should be protected. a. When arguing that it is an expression and not idea, use doctrinal and policy approach. 4. What are the problems of this novel analogy? a. 102(b) of 1976 Act: Specifically prohibits the protection of a system or method of doing things (like a system for how to run a dental lab). If this were a book on how to run a dental lab, you would not be able to stop anyone from using it for efficient running of the lab. According to this opinion you cant use a computer program to run the lab efficiently. System method of operation, however expressed, is not protected. Most people have ignored this saying its just idea expression, but Hansen emphasizes however expressed. b. This analogy goes too far, because in a novel, a line must be drawn between that which is protected and that which is not. Court fails to do so here with programs. - Scenes a faire Doctrine: Aspects of a work which are common to genre and necessary for others to use ARE NOT protected (ex: Westerns in general). 5. Hansen says that the policy result was correct, but reasoning went too far. When the issue went to the 2d Cir. in Computer Associates v. Altai, this case was no longer followed. ii. WILL COME UP AGAIN WITH INFRINGEMENT Computer Associates v. Altai (E.D.N.Y., Pratt & 2d Cir.): CA employee took source code when he went to work for Altai, a competitor. CA alleged CR

infringement and trade secret misappropriation. 2d Cir. REJECTS Whelan as an unsophisticated view of computer programs. Court rejects the Whelan Idea/Expression test (program-idea) as inaccurate and inadequate because that test assumes that only one idea underlies a computer program and fails to recognize that computer program has both textual and behavioral elements. 1. Cannot just look at the idea have to look at the WHOLE program and each module to determine what is copyrightable. a. Hansen says that this will take a huge amount of work to show infringement which requires experts, $, minute analysis, and may discourage people from suing. b. everything is subject to being in public domain, necessary to affect competition, will require a lot of analysis = disincentive for Ps to sue. 2. When operating a program, a user does not know about its text, just its behavior. Court applies principles which limit scope of protection for certain works such as merger, public domain, and scenes a faire doctrine. 3. E.D.N.Y.: Defendants attorney, an antitrust lawyer, got an expert witness for the judge because no one knew . agrees and adopts s experts. Expert goes over stuff with judge and it is impossible for judge to not follow experts. Lesson: get own expert. a. Expert basically wrote opinion = poorly litigated case. b. Drastic knocking down of what is able and P should have won. For competition c. Copyright Act preempted state law trade secret claim won on copyright, lost on trade secret. *Hansen notes that trade secret is not usually preempted under the Act. 4. 2d Cir.: Affirmed EDNY and proposed a test for determining whether two computer programs are substantially similar for infringement. a. Test from Altai: Abstraction-Filtration-Comparison Test (draws on familiar copyright doctrines as merger, scenes a faire, and public domain). 1. Abstraction: Specific concepts are protected, but more general are not. 2. Filtration: These 2 phases sift out elements of allegedly infringed programs that are ideas or taken from the public domain. If anything if left, then best way of performing a particular function goes to 3rd step. 3. Comparison: With the allegedly infringed work. 5. Altai only applies to software! Does not control actions regarding screen displays, i.e. products of computer programs.

6. Hansen says this is an overly restrictive decision for software . With computer programs, push POLICIES or sue for infringement in 3d Cir. instead (Whelan test) where idea/expression is used. 7. Whelan followed: Wont get better computers. Computers will remain very expensive and people will not be able to afford them. Whelans broad protection will lead to no competition. 8. Hansen: This case was completely dominated by the expert and the lawyers lost complete control. The language in this opinion is not understood by anyone and teaches nothing about copyright. a. Message: Everything is NOT protected. Free copying and new development ensues. b. 2d Cir. just wanted to have its way with Whelan; it knew what it was talking about, so did not follow Whelan. On remand, District Court found the trade secret claim was time barred. Texas Supreme Court: SOL discovery rule did not apply to trade secret claims o Hansen: Trade secrets is the most abused protection claim o Most courts have a negative view towards trade secret protection

TODAY: Computer programs are given protected somewhere between Whelan (all protected) and Altai (nothing protected). There is a lot protected, but not everything enough to get the true bad guy. User interface: Screen displays: should icons/user interfaces be protected by copyright? (a) Policies i. Natural Law: Yes for protection. Tremendous effort went into making UIs ii. CM/F: No free-rider. It is fair to use the systems because people are comfortable with the user-friendly interface and no one would use the program if there werent comfortable. iii. I/D: UIs are necessary. There may not be a complex program underneath the interface, so there will always be UIs around (even without protection this is an ex poste argument). Courts would rather have similar UIs floating around for more dissemination rather than given author total control to disseminate. iv. Hansen says that UIs should have less protection. Altai criticism: Lotus Development Corp v. Borland Intern Inc Lotus: not talking about computer programs here but rather the user interface. Competitors want the same interface and compete on efficiency, etc. because clients will be slow to use the same interface and compete on efficiency (clients will not want to learn new interface). The interface has become an industry standard. (more

like an anti-trust case, Lotus says interface is standard thanks to their advertising, etc. therefore should be protected.) Hansen: Keetons policy analysis is anti-competitive. DO NOT need incentives for user interface. There is little free riding because cloners just want the industry standard so that they can compete. At this stage, even if competitors had better interfaces, Lotus would still win. This is USING COPYRIGHT TO ATTAIN A MONOPOLY!! o Altai is of little help in assessing whether the literal copying of a menu command hierarchy constitutes copyright infringement Fact that menu command hierarchy could be constructed differently is immaterial o Abstraction, Filtration & Comparison prevents a court from seeing the forest for the trees, ie big picture but the big picture o Breaking down SSO into components then removing uncopyrightable elements makes unlikely a proper assessment of whether the structure itself is copyrightable, regardless of its using copyrightable elements o Question is whether it is a method of operation not whether MCH incorporates any expression I.E. not a merger inquiry If you followed it, almost nothing would be copyrightable Supreme court, 4 votes for this broad lack of protection. Software patents have more complete protection and are easier to prove.

MUSICAL WORKS, including accompanying works or lyrics 1. Musical works are NOT defined in the 1976 Act or the House Reports. They ARE defined in the Compendium of Copyright Office Practices II. (a) House Reports: only indicates that words have a broad meaning including electronic and concrete music. 2. Musical works: 17 U.S.C. 102(a)(2) Musical works include: 3 elements to music: o 1) Melody o 2) Rhythm o 3) Harmony There can be originality as to all three. Standard is ordinary observer/ordinary hearer, but experts really rule in these cases (experts listen without knowing the side). Random Hansen note: its good to have the reputation that youll appeal. Always appeal. Copyrightability of derivative works:

Tempo Music Inc. v. Famous Music Corp., 838 F.Supp. 162, 167-168 (S.D.N.Y. 1993)(Sand, J.) (The case concerned the issue of whether the addition of harmony and revised melody to the jazz classic, Satin Doll, are within the scope of copyrighted derivative material; "The court is not convinced that harmony is unprotectable as a matter of law. While we agree that melody generally implies a limited range of chords which can accompany it, a composer may exercise creativity in selecting among these chords. As Strayhorn's expert notes, the choice of chords influences 'the mood, feel and sound of a piece.'. . . Once it is understood that originality, for copyright purposes, looks to creative process rather than novel outcomes or results, it becomes clear that harmony can, as a matter of law, be the subject of copyright." Woods v. Bourne Co., 841 F.Supp. 118 (S.D.N.Y. 1994)(Owen, D.J.) (In attempting to determine the royalties due on the 1926 hit song "When the Red, Red Robin Comes Bob-Bob-Bobbin' Along" the court was forced to define a derivative musical work In order therefore to qualify as a musically 'derivative work', there must be present more than mere cocktail pianist variations of the piece that are standard fare in the musical trade by any competent musician. There must be such things as unusual vocal treatment, additional lyrics of consequence, unusual altered harmonies, novel sequential uses of themes - - something of substance added making the piece to some extent a new work with the old song embedded in it but from which the new has developed. It is not merely a stylized version of the original song where a major artist may take liberties with the lyrics or the tempo, the listener hearing basically the original tune. It is, in short, the addition of such new material as would entitle the creator to a copyright on the new material. 3. Limitation on Rights (a) Mechanical Compulsory License in 115: Involves reproduction rights to make and distribute recordings. Primary purpose must be to distribute recordings to the public for their private use. Automatic license once you release your song that have set fees no negotiation necessary i. Principle: Once work is recorded in a sound version and distributed to the public (CD, record), someone else can cover that song. a. Cover = record song in another sound recording or version. ii. Licensee may not merely duplicate the original sound recording, but must produce something new in the cover. CANNOT change the lyrics or put song into a different genre (may then be a derivative work), but can change the arrangement to accommodate singers key, etc. iii. Ex: George Michael sang Freedom. It is out there, so anyone can sing it according to the compulsory license, just have to pay royalties and follow the rules. iv. Exception: Doesnt apply to parodies or movie soundtracks.

v. Constitutional Issue: If Congress grants exclusive rights, how is the compulsory license allowed? Nimmer says that Congress doesnt have to do anything it can grant or none at all. Congress can do something less than exclusive, like allowing the compulsory license. Congress should be allowed to something between granting exclusive rights and granting nothing. a. Hansen says that this makes no sense. Real argument is that compulsory license is probably unconstitutional but it remains b/c everyone likes it. b. Hansen also says that the industry doesnt stick by the formalities of compulsory licenses and the Harry Fox Agency gives out private licenses. (b) Jukebox Compulsory License in 116, 116A: For non-dramatic musical works embodied in a phonorecord to perform work publicly in coinoperated phonorecord player. i. Under 1909 Act, jukeboxes were not required to have compulsory licenses. a. Congress feared monopolization + wanted technology growth ii. NOW, 116A establishes procedure for negotiated licenses and uses 116 as a default mechanism to be activated if no negotiated license is in place. a. In 1990, statute codified voluntary, private licenses for jukeboxes. iii. Compulsory license only available if establishment with jukebox has no direct or indirect charge for admission. iv. Jukebox operator must file application with office, affix certificate of compliance, and pay royalty. (c) Right to Public Performance of Musical Works: For non-dramatic (i.e. non-opera) works being played in public, authorization is needed. i. ASCAP, BMI, & SESAC give blanket licenses based on the nature of the industry. A sum is paid for the year and music can be played. a. These organizations tend to overdue things (i.e. they sued the Girl Scouts), so legislation was passed to exempt some people, including restaurants of a certain size.(law currently in flux) b. License goes to the physical establishment that holds the performance and not the individual bands. ii. Right to public performance is a Non-exclusive right. D. DRAMATIC WORKS, including any accompanying music 1. Definition: According to the 1976 Act, and both Nimmer & Compendium give similar definitions.

Dramatic works are a composition that: (a) Portrays a story to an audience (visually and/or audibly), and (b) Provides directions whereby a substantial portion of story may be visually or audibly represented to an audience as actually occurring, rather than merely being narrated or described. i. Does NOT include poetry (ex: the Odyssey of Homer) or novels. 2. Music accompanying drama: A composition containing dramatic works with accompanying music (ex: opera, Broadway play). To be protected, music must form an integral part of the drama. (a) Music videos may be a dramatic work/music accompanying drama (in which case music owner can license it directly to MTV and get all the $) or a non-dramatic work (in which case MTV can get a blanket license from BMI or ASCAP and owner will get less $). (b) As long as accompanying music supports dramatic work, there is a story no dialogue is needed. 3. Dramatic vs. Non-Dramatic Works (a) Dramatic works: Much fewer limitations on rights of the client. Client has more control over the dramatic work b/c there are fewer exemptions and compulsory licenses. (b) Non-dramatic works: More use allowed without the owner getting paid. Including blanket licenses through BMI, etc. 4. Policies: Greater protection for dramatic works since one infringement can ruin a show. People dont generally go to more than one show and will just see the infringing show. E. PANTOMIMES & CHOREOGRAPHIC WORKS 1. In General: Added in the 1976 Act and previously were included under dramatic works. (a) Difficulties: Fixation was an issue because this type of work was spontaneous, with a lot of input from others. i. Custom of the industry = one choreographer gets credit, but during litigation other authors would come forward claiming input. ii. Hansen: Utilize contracts or works for hire to clear up the confusion 2. Choreography (defined only in Compendium): The composition and arrangement of dance movements and patterns. Is usually intended to be accompanied by music. Need not tell a story. (a) Originality: Social dance steps, folk dance steps, and ballet steps alike may be utilized as choreographers basic material in much the same way as words are the writers basic material. These popular steps and routines

are NOT copyrightable!! You can use these steps within a larger format that IS copyrightable. (b) Fixation: Videotape and several acceptable techniques. i. Pictograph method of recording dance and other fancy techniques ii. Creators must also be videotaping while they are creating b/c it provides proof of independent creation if you are ever sued, in addition to facilitating fixation. (c) Infringement Horgan v. MacMillan: D published a book of photographs of ballerinas moves during rehearsal. The ballet is new and very popular. Choreographer sues the NYC Ballet who put out the book. The Ballet claims that this is not movement, rather are still photos and that you cannot infringe choreography will still photographs. i. Policies: I/D = Yes; Natural law = Yes; CM/F: Protect the free rider. ii. Holding: 2d Cir. says infringement holding that there was substantial similarity between the choreography and the book. Holds that you dont need to actually reproduce the original, just need a substantial taking. Still photographs can infringe a choreographic work. Fact specific: if you can follow the ballet from book (rather than few scattered photos), more likely that people are buying it because of choreographer. If not, then people are buying it for other reasons (dancers, costumes, etc.). iii. Hansen thinks that the courts will most likely look at who creates and who is using the value without paying for it. The right result will be produced in the real world. iv. Will depend on where the value is added If all the value is things done besides the choreographer, either the choreographer will lose or will get little money out of the litigation. If client is famous and people are attracted to his ballets in particular, litigation will make more sense; newcomer doesn't have as much chance of coming out well from litigation v. This is a derivative work, and as w/ most derivative works unlikely that this is going to keep people from going to see the ballet (can even argue it will increase attendance at ballet, as w/ movie tie-ins) 3. Pantomimes: The art of imitating or acting out situations, characters, or some other events with gestures and body movements. Mime is included (a) Originality: Pantomimes must include more than a few stock gestures. Must be complex to get copyright. Styles of movement (ex: imitating mechanical dolls) are NOT protected. i. However, a significant amount of copyrightable matter in form of specific gestures in such style & embodies in some tangible form may be registered. (b) Fixation: No symbolic notation system for pantomime, but can videotape.

F.

PICTORIAL, GRAPHIC, & SCULPTURAL WORKS 1. Definition 101: Includes two-dimensional and 3-D works of fine, graphic and applied art, photos, prints & art reproductions, maps, globes, charts, diagrams, models and technical drawings, including architectural plans. (a) ALMOST ALWAYS protection is given where it is purely artsy. 2. APPLIED ART: Must be incorporated into something in a functional sense. It is art applied to utilitarian objects (ex: lunch boxes). able if utilitarian article incorporates artistic sculpture which can be identified SEPARATELY, and is capable of existing independently as a work of art. If the art cannot be separated from the utility, no protection given. Can be fairly complex Why does the Office dislike applied art? o Storage (because copyrighted works are supposed to be deposited in the office). o Applied artists are perceived as wanna be artists with applied art seeming like NOT ART at all. o Currently, some of these artists may seem chic for some on the wine and cheese market, but most of its demand is in the industrial design area. (a) Baker v. Selden: (accounting book case idea/expression) Art for use rather than expression (b) Mazer v. Stein (Supreme Court 1954): statues of male and female dancing figures made of semivitreous china used as lamp bases are copyrightable. i. Majority: There is nothing in the statute that precludes art intended for use from being protected. "Patentability of the statues, fitted as lamps or unfitted, does not bar copyright as works of artWe find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration." ii. No standard of copyrightability for applied art was enunciated. iii. Concurs (Black and Douglas): Populists who say that the little guy should the Tiffany lamp as a cheap knock off. iv. Policy analysis for protecting applied art: a. Natural Law: Yes for protection b. I/D: Ex ante = Yes for protection; Ex poste = No protection c. CM/F: Yes for protection d. Populism: No protection. They would deny copyrightability so that everyone can use the item cheaply and so that the hoy peoly can get it. v. Mazer was an easy case because the lamps were art FIRST (sculpture), then made USEFUL. (c) In response to Mazer and increased registrations, Copyright Office Regulations provided criteria for the copyrightability of applied art:

i. TEST: If the sole intrinsic function of an article is its utility, the fact that the article is unique and attractively shaped will not qualify it as a work of art. However, if the shape of a utilitarian article incorporates features, such as artistic sculpture . . . which can be identified separately AND are capable of existing independently as a work of art, such features will be eligible for registration. ii. Broad protection (d) Copyright Act of 1976 incorporated changes: i. If article has any intrinsic utilitarian function, it can be denied protection except if artistic features can be identified separately and are capable of existing independently as a work of art. a. # of works considered useful increases because it is now any intrinsic function needed rather than sole intrinsic function. b. Result: Reduces the amount of works that will receive protection. c. PHYSICAL and CONCEPTUAL SEPARABILITY required that the art can be separated from the utilitarian object. Conceptual art may not be separable, because it may be integrated and people may consider the whole thing as art. ii. Changes utilitarian object into Useful article: An article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a useful article. a. Result: When work is created, must INTEND utility. The fact that something can be taken and given a utilitarian function DOES NOT count. (e) TEST for APPLIED ART i. intrinsic utilitarian function test: For it to be a useful article, it must have an intrinsic utilitarian function. Anything utilitarian can be considered art. This goes too far. Sole intrinsic function is the groundwork for saying that it has to be separable physically or conceptually. Are the following considered useful articles? Toys: 6th Cir. says that a toy airplane is NOT a useful article. Toys do not have an intrinsic function other than the portrayal of the real item. could have gotten a patent. Function of toys is more similar to that of works of art than to the intrinsic utilitarian function of industrial products. Hansen thinks it could be argued the other way. Flags: generally no (weird policy result in Flag fables v. Jean Anns Country Flags and Crafts found flag is a useful article) Halloween costumes: For children, probably have no intrinsic utilitarian function, but for adults maybe if the costume acts as

clothes. No one will try to monopolize the clothing industry with costumes, so we should give copyright protection to the clients artistic creation. Look for conceptual severability. Nose masks: Masquerade Novelty v. Unique Industries Animal nose masks are NOT useful articles, unlike belt buckles which serve another purpose besides their appearance (only function is to convey information. Taxidermy: Superior Form Buildiers v. Dan Chase taxidermy supply copyrightable since finished article is unquestionably a permanent artistic object.

a. NO = End of analysis b. YES = Go to ii ii. To get protection, is the useful article PHYSICALLY & CONCEPTUALLY SEPARABLE? CASE LAW (1) Kieselstein Cord (2d Cir. 1980, OAKES): 2 belt buckles with rifle-based symbols incorporated into the design. Creator gets knocked off by base metal buckles and sues. (a) Issue: Whether the two belt buckles bearing the sculptured designs used for decoration were copyrightable. (b) Holding: Two buckles were copyrightable because the primary ornamental aspect of the buckles is conceptually separable from their subsidiary utilitarian function. Copyrightable as sculptural works. Test should be whether artistic work is conceptually and physically separable from utilitarian aspect not primary and subsidiary. Physical AND conceptual separability of design from useful object. Artist integrated the art into the function; should not have passed the test. (c) OAKES: Wine and cheese judge who likes the buckles because they are fancy and in the permanent MOMA collection. Because the art really is not physically separable, he replaces and with or to get the result he wants. i. Problem: If the buckle is used as bodily ornamentation, then it shows it is integrated and not at all separable. Oakes primary/subsidiary test comes out of nowhere. (d) WEINSTEIN DISSENTS: Masses should be able to enjoy a cheap reproduction. No physical separability because you cant take the lines off the belt buckle. POPULIST Congress is trying to provide something where you can get protection; specifically protecting artistic works that are in utilitarian objects, not favoring cheap reproductions.

(e) Both majority and dissent care little about doctrine and do what they want according to their own policies. (f) Hansen says that applied artists have succeeded by integrating the concept and function of the art. But, courts demand separability. In that case, all pieces of applied art will fail the test and no protection will be given. From a policy point of view, this is not fair and is unnecessary because buckle-like items will not create a monopoly. THE TEST: (2) Carol Barnhart Superimposed upon test (2d Cir. 1985): Mannequin torsos of the male and female bodies not able because the figures are inextricably intertwined with the utilitarian feature of displaying clothes. Distinguished from Keiselstein: ornamental surfaces of belt buckles not required by their utilitarian function. (a) Mansfields Test: the artistic and aesthetic features could thus be conceived of as having been added to, or superimposed upon, an otherwise utilitarian article. i. Test is VERY broad and should protect everything. ii. However, the test fails in this case to give protection to the mannequins, probably because second circuit is into design, not nonhigh art, industrial design oriented. (b) Newmans Dissent/Temporal Displacement Test: The requisite separateness exists whenever the design creates in the mind of the ordinary observer two different concepts that are not inevitably entertained simultaneously. The test is not whether observer will fail to observe the object as a chair, but whether the concept of the utilitarian function can be displaced in the mind by some other concept (Temporal displacement). In the case of the chair, no temporal displacement even when viewing the most artistically designed chair. (thats not true, pharrells hand chair?) i. Test is VERY tough to apply because it is vague, uncertain, subjective, and case-specific. (c) Hansen thinks that mannequins should be protected because the breasts, chest, aspects of the mannequin are not integral to the form. All you need is a triangle to hold the clothes, so the use and the art are conceptually separate. If these were sculptures, then might have been protected. Pivot point Int'l v. Charlene Prods., 816 F. Supp. 1286 (N.D.Ill. 1993)(Nordberg, D.J.)(plastic female mannequin head is copyrightable because the mannequin could stand alone as a traditional work of art, sculpture, and the mannequins usefulness as a hairstand was not dependent on its aesthetic features: "the mannequin could perform its primary function as a featureless plastic oval".) (3) Brandir International v. Cascade (Denicola Approach: if artists original creation could be protected, and it is then applied in utilitarian concept, it is

protected. But if changed to fit into the utilitarian function, then not protected. (2d Cir. 1987, Oakes): Guy went into an artists workshop and sees a certain design. He made a ribbon rack bicycle rack out of it. (a) Holding: Bicycle rack NOT copyrightable. (b) OAKES Test (adopted from Denicola):If design reflects merger of aesthetic and functional aspects, work cannot be conceptually separable from utilitarian elements. Where designers artistic elements can be identified as reflecting the designers artistic judgment exercised independently of functional influences, conceptual separability exists. Depends on the INTENT of the creator. i. If industrial design was the INTENT of the author, then the conceptual separability is killed. ii. Bike rack: Hard to see conceptual separability under any test. Beauty and form are totally merged, which means this will fail under most tests, including Mansfields broad one. iii. PROBLEM: Looking for intent of author encourages artist to lie about the nature of the invention. Under Oakes test, looking for motivation. (c) WINTERS DISSENT: Thinks that majority tracks Carol Barnhart test, while Winter would follow K-C. i. Winter: Anything aesthetically pleasing and not related to functionality is protected. Allow protection for aesthetic elements of a useful article even if those elements simultaneously perform utilitarian functions. The crucial question is whether the design causes an ordinary, reasonable observer to perceive an aesthetic concept unrelated to the articles function (isnt this Newmans dissent in C-B?). ii. He would find no protection. (d) Application of other tests to the Bike rack: i. K-C: Doesnt really apply because there is no conceptual separability. Form and function are completely intertwined. ii. Carol Barnhart: Although broad, there is no conceptual separability of the bike rack; design and utility have total integration. (4) TODAY: Most courts adopt the Mansfield test in Carol Barnhart (superimposed on approach). (5) Hansen: These tests are essentially made up to get credit for them in hopes of making a mark. Bottom Line: i. Representational art: Will be protected completely in applied art, with the exception of the C-B torso case (which Hansen thinks was wrongly decided). For example: no Spiderman on a lunchbox, because Spiderman is

representational and lunchbox would be applied art. Whereas if its just some art and unrecognizable, but if its fancy then it will be protected. ii. Non-representation art: Will be protected, for fancy-shmancy reasons. iii. Non-representational, completely integrated art: Probably not protected (ribbon bike rack). Always try to get experts to testify that it is Good stuff, as it will be protected. Experts cost money and really have nothing to do with the law (although has everything to do with what drives these cases). G. MOTION PICTURE & OTHER AUDIOVISUAL WORKS AUDIOVISUAL WORKS 1. Definition 101: Works that consist of a series of related images which are intrinsically intended to be shown by use of machines or devices, together with sounds, if any (sounds need not be physically integrated with related images). 2. Worlds of Wonder v. Veritel Learning (N.D. Tex. 1986): Teddy Ruxpin was a doll with a tape inside to make him talk. It mouthed different stories. Somebody created different stories and wanted to sell the tapes for the doll. Makers of Teddy want a monopoly on the tapes, so they sue. They argue that making Teddy move and animated is an infringement of an audiovisual work. Stories on tape themselves are not an infringement, but making him move is. (a) Holding: Teddy Ruxpin doll is an audiovisual work, so protection is given and the tapes are an infringement. Broadly construed AV work as a series of related images intended to be shown by the use of machines or devices. Because Teddy moves and talks and there was background music, doll was AV work. (b) Policy: Court struck out against the free-riding tape-sellers. CM/F = stretched the doctrine because of the policy. Clear good guy/bad guy, wanted to protect the TX bearmaker. (if filed in NY, would have been laughable). (c) Hansen says that Teddy clearly IS NOT an AV work. Losing side should have argued policy and that the courts should not allow a monopoly by Teddys people on the doll. i. Hansen: Argument for protection of Teddy is if dirty songs were put into Teddy, which creates a need to keep him pure. 3. Soundtracks accompanying audiovisual work are not subject to musical work compulsory license. (a) Motion picture soundtrack put into a sound recording and sold separately is subject to compulsory license. (b) Music accompanying audiovisual work are audiovisual in themselves, and not subject to compulsory license until they come out on CD. MOTION PICTURES

1. Definition 101: AV works consisting of a series of related images which, when shown in succession, impart impression of motion, together with accompanying sounds, if any. 2. Fixation for publication: Publication includes the offering to distribute copies to a group of persons for purposes of further distribution, public performance, or public display. This presumes that copies are in existence and ready of distribution before a work can be published. 3. Most motion pictures are works made for hire. H. SOUND RECORDINGS 1. Definition 101: A fixation of a series of musical, spoken, or other sounds, but not including sounds accompanying motion picture or other AV works. (a) Typical sound recording = musical work that is performed and fixed into a sound recording. It is almost always a derivative work. (b) Phonorecord: Material on which the work is embodied. CD, record, tape, etc. i. IP = sound recording or the fixation of the sounds into the creative work. Once the sound it fixed, it becomes able. ii. Phonorecord IS NOT the IP. If you own a CD, you clearly dont own the songs. (c) Notice of must be placed on all phonorecords (p in circle). i. P in circle on CD = who owns the sound recording/fixation of the work. ii. C in circle on CD = who owns the underlying musical work. iii. 3 elements of notice a. symbol P in a circle b. year of first publication of sound recording c. name of owner of copyright in sound recording (d) Still need originality and fixation to be protectable. (e) Policy: Sound recordings came about in 1976 Act to prevent pirating (CM/F free riding). Limitations on exclusive rights of sound recording: reproduction, adaptation, and distribution. Mere imitation of recorded performance would not constitute a copyright infringement even where one performer deliberate sets out to simulate anothers performance as exactly as possible. Infringement occurs when you take a substantial portion of it and copy (like recording a song from the radio) 2. Copyrightable Authorship: Author is whomever is responsible for the creative input. Thus, performer in a sound recording is also an author. (a) Sound recording has multiple authors: sound engineer, mixer, etc. House report says it can be the performers themselves.

Hansen thinks that this is wrong because an actor in an audiovisual work is not considered an author. ii. Performers are not authors; what they are doing is fixed, but they are performing. No separate protection for performers so they want to be considered authors. iii. if an actor is an author of a sound recording, by definition that actor would be the author of an audiovisual work (recording of that performance). iv. performer of audiovisual work author BUT performer of sound recording = author. Important to understand this distinction. (Hansen: neither should be considered an author, but if one is the other should be, too.) Never assume that just b/c something is in the House Report a court is going to follow it. Always look at policy. (b) Contracts determine authors, especially when there are multiple authors. i. Producer always wants to get something signed in writing transferring rights as potential author to the producer. Producers contribution may be so minimal that only the performance is authorship. 3. Performance Rights: In U.S., author of sound recording has no right to publicly perform it. WHY? Rights limited to reproduction, adaptation and distribution (a) Because sound recording is really 2 copyrightable works: i. Sound Recording: With performance right, could publicly perform sound recording ii. Underlying Musical Work: With performance right, need a LICENSE to publicly perform it. (b) Exception: Some performance rights in digital performance 4. Digital Sampling: Taking portions of songs out of a sound recording and incorporating it into yours (rap). (a) Infringement: Sampling is a taking of part of the recording, but is it a substantial taking (qualitative and quantitative)? Only way to infringe a sound recording is to actually copy the fixation; the musical work can be infringed by another performance. i. There has been very little litigation, a lot of settling. Judges complained that this was wrong. Result: Industry allows licensing for sampling. Most people want to be sampled for the recognition. Grand Upright Music Ltd. v. Warner Bros. Records, 780 F. Supp. 182 (S.D.N.Y. 1991)(K. Duffy, D.J.)(Rap artist, Biz Markie, sampled the words "alone again naturally"and a portion of the music from Gilbert O'Sullivan's song "Alone Again (Naturally)". The district court referred to the defendant's use of the sample as stealing and granted a preliminary injunction; no subtantive

i.

copyright analysis of the infringement issues)(this case resulted in a move to license sampling in the industry) 5. Sound recording finally added to the list of work for hire. Should have been added a long time ago, but it took lobbyists to step in. I. ARCHITECTURAL WORKS Definition in 1990 Amendment to 101: Architectural work is the design of a building as embodied in any tangible medium of expression including a building, architectural plans, or drawings. 1976 House Report also protects 3-D works as long as they are physically or conceptually separable. Amendment is NOT retroactive. A. Architects dont want complete and exclusive protection. They do so much borrowing that they are of two minds about CR dont want their plans to be totally ripped off (use CR protection for this), but want to be able to take certain things from another work you can borrow but cant take wholesale. (a) Individual, standard features (doors, windows): Not protected. i. Architects are constantly borrowing from each other while creating their own forms. (b) Overall look of the work, that which distinguishes them from others (style?): protected. i. Policy: Fear of monopolization 2. Originality: Only need a minimum amount of originality for . If you take bits and pieces, you need experts to determine how much was ripped off. 3. Actual structure and overall arrangement is protected: Dont want people stealing your total plans. 4. Owner of building embodying an architectural work may make alterations to or destroy the building without consent of author or the owner. (similar to owner of CD may burn, sell or alter it physically) 6.Baker v. Selden: Idea/expression dichotomy does not apply to architectural works. Someone could in theory use architectural plans to build a house and that would not be infringement. Also someone could simply copy the actual 3D standing work. II. Shine v. Childs, 382 F. Supp. 2d 602 (S.D.N.Y. 2005)(interesting case on infringement and summary judgment issues in archictectural works context) architect suing and architect, professor took the work of a student whom he was supervising. Competition related. DERIVATIVE WORKS

VII.

A.

RULES FOR DERIVATIVE WORKS 1. 1909 Act (Old Rule): Could get rights to any part of a derivative work, but you could not get protection if any part was derivative. 2. 1976 Act (New Rule): In a derivative work, can get protection for that which is new from the original work. The new and separate work must be identifiable. (a) Ex: In a translation from English to French, could not sue if someone infringes the French translation. Movie to novel would allow for suit because the entities are distinct. (b) Policies & Derivative Works: CM/F and Natural Law. Combat free-riders and protect effort. Effort is favored over free-riders. (c) Derivative work owners should have chain of copyright title to protect against infringement. (d) Control of Derivative works: Financial aspect and quality control. Dont want the derivative work to reflect poorly on the original author (like moral rights). Ex: dolls for TV programs or movies, short stories made into movies, movies into TV shows and vice versa, etc. Exclusive right to authorize derivative works, then the author of the derivative work holds the copyright in the derivative work. Must get rights from all the works you take substantially from. Without permission to use the underlying work, it would be an infringement: substantial taking.

B.

DEFINITION & SCOPE OF DERIVATIVE WORKS 1. Definition in 17 U.S.C. 101: Derivative work is based upon one or more pre-existing works, such as translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations elaborations or other modifications which, as whole represent an original work of authorship is a derivative work. 2. Scope of Protection: extends only to the material contributed by the derivative work author, as distinguished from preexisting material in the work. Does not affect or enlarge the scope, duration, ownership, or subsistence of any copyright protection in the preexisting material. (a) Derivative author has NO RIGHTS in the underlying work. (b) Derivative author must either base his work on another work in the public domain or obtain permission from the author of the preexisting work.

i. do not need authorization to make derivative work once in public domain. (c) Only NEW work is a separate copyrightable work (3rd edition of book can be protected, but only that which is different from the earlier edition). (d) Motion pictures are often derivative. (e) Natural law policy: if you create value, you should be able to capture value permission for derivative works. HYPO: A creates a work, X takes it w/o authorization and makes a derivative work; Y copies X's work. Should X be able to sue Y for CR infringement? Incentive dissemination: We want X to be able to sue. Natural law: You create something, you should be able to have control over the aspects that you created 1909 Act said no. 1976 Act said yes. (f) no I/D policy very few create a work only thinking theyre creating it because its a derivative work. (g) quality control financial reasons and quality control: if derivative work is bad, then looks bad for original author. (g) Commercial morality fairness controls between two people person who creates and is being ripped off should win. C. LIMITATIONS 1. No protection when taking of underlying work was unauthorized. 2. No protection when underlying work pervades the entire derivative work. (a) Exception: When underlying work is in the public domain. Use of underlying work is informally consented to Owner of copyright in underlying work ratifies use in derivative work. 3. Can a derivative author sue? If he is an infringer, there is a problem because the courts dont want to protect a free rider. Courts WILL NOT protect author of a derivative work if he failed to get permission to make the derivative work. D. ORIGINALITY 1. This is KEY. Based on the VALUE added, is there a modicum of creativity? Low standard of originality: does not require patent novelty no matter how poor artistically the authors addition, it is enough that it be his own. (a) Artistic reproduction which merely makes an exact copy of a prior work would lack sufficient originality. (b) If the copy entails the independent creative judgment of the artist in its production, those aspects will render the work ORIGINAL.

2. Alfred Bell (2d Cir. 1951, Frank): Setting out distinction between originality and patent novelty. Concludes that no matter how poor artistically the authors edition (even if variation is inadvertent), it is enough if it is his own. (a) Low standard of HOLMES, where author contributed more than a mere trivial variation in the pre-existing work. (b) Strong view: Derivative works ARE protected. 3. Cases contrary to the de minimus standard for originality (a) L. Batlin & Sons (2d Cir. 1976, OAKES): Uncle Sam Bank case. Plastic replica of a traditional cast-iron bank is at issue. Y goes to Hong Kong with a metal bank and tells sculptor to reduce it in size and create something to make plastic banks. Y copied Xs cast-iron Uncle Sam bank and starts selling it in a plastic form. Issues: Is there enough originality in the plastic bank, a derivative work, that it is copyrightable? i. 2d Cir. en banc (OAKES): The bank is NOT copyrightable. ii. Holding: To demonstrate originality, the variations from underlying work present in a derivative work should be perceptible by a casual observer. Going from cast-iron to plastic was not substantial enough. iii. Oakes: Ignored Alfred Bell with his wine and cheese approach. Junk = no . Poses fancy-shmancy, 2-fold TEST: a. Independent creation needed b. Some degree of creativity: Substantial (non-trivial) variation from original work, AND/OR True artistic/higher degree of skill in the creation of the variation iv. Case declines to give protection to the labor involved in transferring a work from one medium to another. Here, originality standard not met because variations were merely trivial; physical skill and special training to convert cast iron bank to plastic is not sufficient. v. Policies: Hansen thinks policies point to protection. Without protection, there will be junkier Uncle Sam banks; sculptors wont want to create molds because they are not protectible. a. Populism: public benefits for reproduction. Everyone should get these banks. b. Natural Law: Effort creates property, so the copier should lose. Holmes would say: showed its worth by the fact that it

was copied. J. Frank of Catalda would say protect. Result in this case: majority protects. c. I/D: Incentive to create plastic banks for the common folk. (b) Gracen v. Bradford Exchange (7th Cir. 1983, POSNER): Bradford Exchange had a contest for making the best Wizard of Oz plate, working off photos of the movie. Gracen, an employee, won the competition and was offered a K to do the plate. She rejected the term of the K and they went to hire someone else. Bradford wanted it to look like Gracens, but to do the same but different so as not to get sued. Gracen sues anyway. District Court found for Bradford and Gracen appeals to 7th Cir. (a) Holding: We agree with the District Court that under the test of Baitlin Bank, Miss Gracens painting, whatever its artistic merit, is NOT an original derivative work within the meaning of the Copyright Act. Gracens plate was a non-original work of authorship b/c a derivative work must be substantially different from the underlying work to be copyrightable. if jury cant tell what she did, then burden is on the plaintiff to prove her variation, plaintiff loses. i. Hansen: Posner is totally wrong! Under Baitlin test of true artistic skill, there was artistic value; under Catalda, artistic skill doesnt matter, so shed win. Instead: different from original the purpose of the term in copyright law is not to guide aesthetic judgments but to assure a sufficiently gross difference between the underlying and the derivative work to avoid entangling subsequent artists depicting the underlying work in copyright problems. No faithful work of reproduction would have copyright protection. legal rather than an aesthetic function to prevent overlapping claims trier of fact wouldnt be able to determine (would be hard pressed) to show there was copying from their work, not the original. 1. H says; so? Then wouldnt meet burden of proof, right? Doesnt like this opinion. 2. Problem: how is this encouraging reproductions? If someone else can copy the successful reproductions, why invest in creating reproductions? ii. No one follows this case, not even Posner.

How to litigate after this case? What to tell a client after this case? Way to argue is that if there are reproductions that need protection, cite 1909 and 1976 Acts, go back to Frank's opinion in Alfred Bell, in Batlin Bank Judge Oakes said where there was true artistic skill that was OK Basically, show your product took work, skill, effort, and D's did not; you created value and D took it w/o authorization and reproduced without skill. need protection to get good reproductions, otherwise no control over good reproductions Industry factor, nurturing and support of artistic community with the work. (b) How should this case have been litigated? i. Judge: Posner should have used the real true artistic skill test and would have found protection for Gracen. B. Colorizing black and white motion pictures; (protected) a. Opposed because 1. Violates the moral rights of those who created the original version; 2. Not copyrightable because lacks sufficient originality. b. Film Industry wanted this were very persuasive with Congress ($$$). Had Copyright office do study, and the result was that colorized movies are protected.

VIII.

COMPILATIONS A. DEFINITION IN 17 U.S.C. 101 (1976 Act): Compilations are subject matter. 1. Compilation is a work formed by collection and assembling of pre-existing materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. (a) Compilation of Facts: NO PROTECTION for FACTS, but selection and arrangement of facts get protected. 2. Collective works are a type of compilation: (a) Collective work: defined in 101: a work, such as a periodical issue, anthology, consisting of separate and independent work in themselves, are assembled into a collective whole. (b) In collective works: All individual works are copyrightable on its own and then they are put together (ex: Law Review). i. Individual and for collected work too. ii. must clear the rights for each individual work: requires consent of the person who wrote the work (implied license, would need more to get exclusive rights). iii. must get the license in writing in order to get exclusive right to publish. iv. exception: work for hire.

2.The in a COMPILATION or derivative work extends only to the materials contributed by the author, as distinguished from the pre-existing material in the work. No exclusive right in the original material. No sweat of the brow (Feist). a. Is there enough originality to support ? Constitutional requirement Congress cant get rid of it even if they want to. b. Novelty two can produce same work as long as it wasnt based on the others work. c. Facts not copyrightable, arrangement is with minimum degree of creativity. B. LIMITATIONS 1. Government works not protected. 2. Works done by government employees during scope of their employment are not able and not protectable. 3. Outside contractor (worker for hire) can have their works covered by the . 4. Govnt can buy a . 5. Private party can have copyrighting of government Ks (reduces govnts costs). 5. Illegal or fraudulent works, & works contrary to public policy historically have no protection. (a) Obscenity never gets copyright protection, even though it should not be copyright law that determines this. Courts say it is not their business to determine in copyright law if the work was obscene. (b) most judges now will say if theres a market for it, and it isnt a snuff film or child porn, then protection will be allowed. But courts usually do not like ruling obscenity trials (high profile, will get a lot of grief no matter how they decide). C. PRE-FEIST 1. SWEAT OF THE BROW: Used to protect EFFORT from infringers. Even when there was no modicum of creativity or originality. 2. Purpose: complete taking of value + no effort by the taker = taker loses. D. FEIST PUBLICATIONS v. RURAL TELEPHONE SERVICES (OConnor) Facts: Feist took some of Rurals white pages when Rural refused to sell them. Rural sued Feist. District Court: Used sweat of the brow and found for Rural. Court of Appeals: Affirmed w/ no written opinion. (a) SC Holding: Reversed (9-0). Rejects sweat of the brow and states that white pages lack sufficient originality to be copyrightable. i. Originality is a constitutional requirement.

E.

POST-FEIST U.S. Payphone Case (former Justice Powell): D accidentally copied a 50 page list of requirements to have a payphone in that state. Published the list, but didnt intend to rip it off. Under Feist, the plaintiffs work should not have been copyrightable as there is little by way of selection and arrangement. Ct. found copyright, because single page per state format was arrangement. The opinion also included sweat of the brow language. All required by law was to have a pay phone listed and someone accidentally copied and published it. (a) Not much originality, but protected under sweat of the brow despite Feist by finding original selection and arrangement. (b) Natural law: inclination to protect effort. d) Selection may be protected by the merger doctrine how else to express the idea? Court says there are other ways to organize the information. Not true, but they will say it to get the result they want.

ii. Originality means only that the work was independently created by the author (as opposed to copied from other works) and that it possesses some minimum degree of creativity. iii. Originality does not signify novelty. iv. Facts are not able, as there are no authors of facts. v. Factual compilations may possess the requisite originality. vi. Sweat of the brow does not = originality. vii. White pages directory lacks originality. viii. White pages may lack originality because state law requires elements in the white pages. ix. DOCTRINE: Copyright in a factual compilation is thin. a. Selective taking from a compilation IS NOT infringement. There is originality. But wholesale taking IS! Despite a valid , subsequent compiler is free to use facts contained in anothers publication to aid in preparing a competing work as long as the competing work does NOT have same selection and arrangement. (b) Hansen: This was the right result b/c Feist was doing a good thing. This was not a TRUE sweat of the brow case because dont need copyrighted white pages (no I/D, compilation done by computer anyway, no sweat of the brow) and no free-riding (Feist offered to pay). (c) Subsequent cases: Protect sweat of the brow if facts and policy show need for protection. Feist is a doctrine that holds no weight. i. BUT, Court will give S/O/B new name, like sui generis (of its own kind) or misappropriation. (d) if you get a massive database ripoff case, there will be a lot of ways to distinguish Feist, doesnt preclude action for unfair competition.

i. ii.

Someones take on something, will not be subject to the merger doctrine. Merger is never used to stop protection thats good. (back to merger doctrine: blocks junk).

2. West v. Mead: Westlaw sued Lexis for using star pagination. Holding: Wests pagination was the result of considerable labor, talent, etc. and it was thus entitled to protection. Rejected Lexis argument that the #s were factual and noncopyrightable. Court said that as a result of the pagination, someone could find the pages and copy the whole volume, so Westlaw wins. (a) West: We will lose all of our hard copy book sales to Lexis and people will get laid off. (b) Hansen: Horrible case! Taking the facts/page numbers is NOT infringement. Nothing here is copyrightable (no authorship or selection/arrangement). (c) SDNY took a similar case and found the opposite way. (f) Cf. U.S. Payphone, Inc. v. Executives Unlimited of Durham, Inc., 18 U.S.P.Q. 2d 2049 (4th Cir. 1991)(Powell, Associate Justice (retired), Sprouse, Haden)(per curiam)(argued 10/29/90, decided 4/29/91)(unpublished opinion not subject to citation in Fourth Circuit)(reference guidebook which provided information for coin-operated telephone market including 51-page section on state tariffs infringed when defendants copied this section verbatim): The evidence suggests that the Tariff Section could have been organized in many different ways and that Payphone expended a great deal of time creating the single-page-per-view format. The Guide, according to Payphone, is the result of hundreds of hours of reviewing, analyzing, and interpreting state tariffs and regulations . . . . During discovery, Payphone produced 2700 pages of documents relating to the review, selection, coordination and arrangement of the compiled data which ultimately it organized in a "simple and readable format" of fifty-one pages. . . . We are persuaded that Payphone's selection and organization of the state tariff material was sufficiently subjective and original to make the Tariff Section copyrightable material and that, therefore, [defendant's] inadvertent copying constituted infringement. Since feist, any taking from directory is infringement without further analysis? Hansen thinks this is wrong. Pay phone loses.

IX.

OWNERSHIP OF COPYRIGHT A. INITIAL OWNERSHIP 1. 201(a): When an individual creates a work at his own instance and expense, he is the author and initial owner of the copyright. 201(a) states 2 well-established principles of copyright law: (a) Source of copyright ownership is the AUTHOR of the work (except for works for hire). (b) JOINT WORK: co-authors of the work are likewise co-owners of the copyright.

B.

JOINT OWNERSHIP 1. Definition in 101 of 1976 Act: A work is joint if the authors collaborated with each other, or if each of the authors prepared her contribution with knowledge & intention that it would be merged with contributions of other authors as inseparable or interdependent parts of a unitary whole. (a) After 1978, this definition applies. (b) Before 1978, 1909 Act definition applies. i. 1909 Act definition: Joint authors did not need intention at time of creation to have joint work. Ex: Write a poem and someone else puts a song to it could be considered joint work. 2. General Principles (a) KEY: INTENTION that the work remain inseparable present at the time the work is done. (i) Usually pretty easy to figure out intent and courts often look at custom of the industry. (b) TENANTS in COMMON: No right of survivorship in this joint ownership, so it descends to heirs. (i) Problem: When one co-owner dies, new co-owner could be someone you dont even know, which means they can modify? (c) Any co-owner may register and renew work, but hold it in constructive trust for other owners. (d) Any co-owner may sue. (e) Each owner has equal, undivided interest in the regardless of amount of contribution (but make sure that of an owner owes 90%, get a K to clear out the rest of contributors). (f) An owner cannot infringe his own . Co-owner cannot be liable for infringement to his co-owner. The only duty joint owners have to each other with respect to their work is to account for profits from its use.

(h) POLICY: Hansen thinks that if possible, avoid co-ownership for your client because you lose all control with co-owners. Anyone can license the work without consent of co-owners, but they have to be accountable for profits. If you are trying to get a license, by law only need permission from one co-owner. As a practical matter, get all to sign off because you dont want to find out later that there was no joint ownership. Also, there can be fights among joint owners, so get the rights from everyone. 3. Joint Works & Derivative Works (a) Co-author of derivative work cannot infringe. like the professors case in Hansens outline, derivative work can also be a joint work, but I guess different principles since here, first, she was held not to be a co author. Childress v. Taylor (2d Cir., Newman): Taylor, who had played Moms Mabley off-Broadway approached playwright Childress to write a play based on Moms Mabley. There was a time constraint and Taylor turned all of her research material over to Childress who wrote the play. Childress filed and received copyright for the play in her name. Subsequently, Taylor decided to mount another production of the play without Childress. Childress sued. Taylor contended that she was a joint author with Childress and therefore shared rights to the play. (c) Holding: Court concluded that Taylor was NOT a joint author because the evidence did not show that Childress had requisite intent. The authors did not intend at the time their work was created for their contribution to be merged into inseparable or independent parts. (d) LESSON: Contributor must be an author and cannot simply contribute ideas (makes sense since ideas are not copyrightable. Must make copyrightable contributions). Look at the i. Custom of the industry (often this controls) ii. Intention of the parties (e) A hiring party does not receive co-ownership. Hansen says to look to K law for giving market power and copyright law to the little guys like Taylor; more like a contractor than a employee.

Good argument for small people b/c don't have market power. But because that small person gets an undivided whole, some courts won't find for them. Newman: Custom in industry is that people who do this assisting work, principle author doesn't want them to be a co-owner. Hansen: but the test shouldn't be what the principle owner wants; this is not what statute requires or says, but attempt to deal w/ equities of "tendency in common" so small guy gets out entirely Representing small people, they have no market power so little you can do for them as a lawyer (those w/o market power usually get a standard contract, that's why CR law designed to protect them). This case goes against that grain, takes protection away from small guy for larger good of not giving small guy of something he didn't contribute to. Trying to get the right result. 4. Does each co-author need minimal creativity, etc.? Can someone be an author if he has ideas and someone else executes them? Does the author have to contribute the expression, idea, or both? (a) Nimmer & Ginsburg: Idea may be enough for protection. (b) Everyone else: To be an author need BOTH the idea and the expression of the idea. X. WORKS MADE FOR HIRE Works made for hire is meant to protect the guy without the market power. the little guy against the bad guy. A. DEFINITION: When the author creates a work at the request of the buyer (either an employer or a hiring party) copyright may under certain circumstances bypass the creator entirely and vest in the buyer. 1. 17 U.S.C. 101: When the following circumstances are met, the buyer is considered the author, a legal fiction, and as an author is entitled to the from the time of creation. A work made for hire is (a) If work is done under employment, its a work made for hire unless there is writing to the contrary. (b) independent contractor: work specially ordered or commissioned for use as one of the recognized categories if the parties expressly agree in a written instrument that the work will be considered a work made for hire. B. INDEPENDENT CONTRACTORS: To what extent can an independent contractors work be prepared by an employee within the scope of his employment? 3 Different approaches to this question until CCNV v. Reid 1. Supervision and Direction Test (2d Cir.):

(a) Independent contractors could be employees under the first subsection when the Ker is sufficiently supervised and directed by the hiring party (gave too much power to the hiring party) (b) If contractor can show actual control, he can be classified as am employer (gave some power back to contracting party). 2. Agency Law Test (5th Cir., DC Cir., CCNV) (a) Specially commissioned works can be employee-employer relationship if the independent contractor would be considered an employee under Agency Law 3. Formal Salaried Employees Test (9th Cir.) (a) Hansen buys this test. Agrees with intent of Congress. (b) First subsection applies only to formal salaried employees and never to independent contractors even if agency law would denominate them employees. (c) Not a salaried employee = not in first part of definition. 4. CCNV v. Reid (big case) (a) Adopted 5th Cir./Agency Test (b) Facts: CCNV paid Reid $15,000 to make a sculpture. Reid created the sculpture (he worked alone, created own hours, and was an expert). He was going to sell it, but gave it to CCNV. When the floor fell off, they sent it back to him and he decided to make reproductions and sell it. Who owns the copyright?? (c) Because he was not an employee (exercised considerable independence in carrying out the project), Reid owned the work, but CCNV owned the physical embodiment. Without any molds, even though he has copyright, he cant reproduce without CCNVs cooperation to allow him to use the physical embodiment. (is that true? He can make an approximate copy) 5. Hansens Summary on Works Made for Hire: (a) Salaried employee within scope of business (b) Independent contractor + writing saying he is a WMH (c) Independent contractor fitting into state definitions of agent XI. OTHER COPYRIGHT CONCEPTS A. DIVISIBILITY OF OWNERSHIP 1. 1909 Act: One owner ONLY. was perceived as an indivisible bundle of rights incapable of being broken up into smaller rights exercised by multiple owners. 2. 1976 Act: All aspects of can be owned separately. (a) Any of the exclusive rights comprised in a copyright . . . may be transferred and owned separately. Owner of any particular exclusive

right is entitled, to the extent of the right, to all of the protection and remedies accorded to the copyright owner by this title. (b) Full ownership right = exclusive right. Have right of reproduction, derivative work, distribution, performance, and display. i. Ex: Paperback owner can sell all rights to paperback (c) Problem: owner can be sued by a lot of people i. Solution: Those with interest in IP should be NOTIFIED so that they can intervene in the case if they want to. Notice = P can avoid suit later on or prevent joining as necessary party. B. TRANSFER OF OWNERSHIP

1. Definition 101: Transfer of ownership is an assignment, mortgage, exclusive license, or any other conveyance, alienation or hypothecation of a or any exclusive rights comprised in a , whether or not it is limited in time, place, or effect. Almost anything but a nonexclusive license can be transferred. (a) Nonexclusive license = NOT ownership. Just allows you to do certain things. Has only a K remedy less valuable and less $. (b) Exclusive license = rights against the WHOLE WORLD. 2. 204: Transfer of ownership is not valid unless instrument of conveyance, or note or memo of transfer is in writing and signed by owner/owners agent. 3. Policy: Always want a chain of writing back from the author. ALWAYS do a search to see who is registered to and who the assignments are made to. Never buy or sell w/o search!! When you buy, always register it with Copyright Office. C. TERMINATION OF TRANSFERS & LICENSES GRANTED BY THE AUTHOR 1. Works created before 1978, under 1909 Act: Provision that 35 years after license, K is terminated and right goes back to author or heirs. Flows from old principle that terms of CR plus renewal. Renewal provision had two things in mind: (1) created a new estate, new clean slate of CR ownership, washed away all previous transactions, gave author or heirs a new shot, usually w/ more market power (when you first create, you have little market power; after time, w/ success of work, author has more market power to help authors who generally have little market power compared to content providers; (2) If it isn't renewed, it clears that work for the public domain. If people not interested enough to renew it, might as well go to public domain. Trouble is, so many things went into public domain b/c didn't know had to renew (ex: "It's a Wonderful Life") (a) Result: Could be copyright death and movie may never be shown again

2. Works created after 1978, under 1976 Act: 1976 Act: Renewal is not a good system, plus we want a worldwide system (life plus 50), but we like the idea of the author getting a second chance. So Congress created termination provision 35 years after grant, can terminate it. Exception: Work-in-the-can provision. If you rights to "Gone With the Wind," under the old system after the first term of renewal the author would get complete ownership of movie and MGM wouldn't get anything after investment. '76 Act says anyone who invested that much money into derivative work shouldn't be completely cut off; success of "GWTW" owes as much to actors as to novel. Often success doesn't come from underlying work but from derivative movie. Those that create a valuable work shouldn't be cut off completely. Congress says, there is no renewal, but w/ termination right after 35 years you can cut off MGM, notify them, lose their exclusive right to make derivative works. Any derivative works they already made, they can continue to make and they have to pay royalties ( never want lump-sum from someone making derivative work, you want royalty payments). So, MGM after termination would not be able to make anything else (derivative works); could continue to show "GWTW" but estate of Margaret Mitchell would have right to make derivative works. Can't stop works in the can from being exploited. Work in the can for derivative works, if that work was already started, can continue under terms of original grant through rest of term of CR (a) 35 years after transfer, author or his heirs could terminate, but the licensee could not make any new derivative works. Any works already on the table can continue to be shown. (b) Ex: MGM had rights to GWTW. When it terminates, they can still show that version of GWTW, but they cannot remake GWTW or make Scarlett after termination unless they got the rights back.

D.

DURATION OF COPYRIGHT 1. Works created on or after January 1, 1978 (a) Life of the author +70 years from fixation. (i) Called the Disney Law because those types of works could endure forever. (ii) We got it from Germany because we wanted $ from them as a trade issue. (b) Multiple Authors: Choose the death of the last author (i.e. you want a young co-author) + 70 years. (c) Anonymous/Pseudonymous Works and Works Made for Hire: 95 years from first publication or 120 years after creation, whichever expires first. (i) HYPO: 50 years after creation, a work is published. It is protected for 120 years (because less than 145), but for another 70 years.

2. Works created before January 1, 1978 and NOT Published (C/L Copyright protected by case law) Ex: Letters of George Washington. Theoretically under CL CR go back to chain of wills to see who owns right to prevent anyone from publishing letters w/o consent (CL CR = right of first publication) '76 Act gets rid of CL CR: Rather than say everyone who thought they had something now has nothing, says that it would be the same term that other works have but should not expire before the end of 2002 GW's letters still have CR until 2002. If you publish it before the end of 2002, get an extra 45 years of CR incentive to get people to publish and allow others to enjoy the works 3. Works protected by 1909 Act on Jan. 1, 1978 (p. 196 of outline). Works in the first 28-year term under 1909 Copyright Act. 17 USC 304 28 years from the date of federal protection plus right to renew for a term of 67 years (39 years added to the 1909 Act Renewal term of 28 years) for a total of 95 years of protection. 4. RENEWAL: Very little practical significance (a) 1909 Act: Author could renew in the 28th year of the first term to get protection for the second or renewal term. PURPOSE: Negated when SC held that authors could also assign the renewal rights when they first assigned rights in the work (Fisher Music Case). (b) Termination of the Grant: Theory was to get back all the rights in a work so that the author could have more market power regarding the work. Stewart v. Abend (SC, 1990) Copyright law represents a battle between creators and users. Effect of renewal upon licensed derivative works already in existence (i.e. work in the can like MGM having rights to show Gone with the Wind). SCs ruling will directly affect only motion pictures based upon underlying works prepared before 1978 where the author granted motion picture rights during the first term (including renewal rights) but died before a proper renewal could be made in the 28th year. (i) Only for pre-1978 works: After the beginning of the second term, there is a totally new estate and no work in the can exception. Heirs get a totally new estate and the motion picture studio must go back to then to work out a new deal. Sometimes leads to death. (ii) Changed under the 1976 Act, but law regarding to removal remained. (iii) Hansen: Be aware that author can assign the renewal term, only in expectancy (there is no market share initially), and if he dies before renewal vests, his heirs get it scot free. If author lives through the removal term, the studio gets it. In real world, very little left that falls into this category, so dont worry about it. If someone sues you and work was created before 1/1/78, all you have to think about was, Did this work go into public domain b/c of failure to renew? As a P, suing, want to make

sure that renewal was taken care of; as someone selling the work, want to make sure renewal was taken care of. Something to flag: Was there a proper renewal E. PUBLICATION 1. More important under 1909 Act: If at the time of publication there was no notice of , then work went into the public domain and cannot be sued for infringement if copied. (a) Just a legal fiction to stop forfeiture. 3. Notice was not as relevant under the 1976 Act and was mostly important as a defense to infringement. Notice continued to be required until March 1, 1989 when the Berne Convention led the U.S. to get rid of any requirement of notice. Although no notice is required, as a practical matter notice should always be given so that infringers cannot feign ignorance. (a) Anonymous, pseudonymous and works made for hire. 17 U.S.C. ' 302(c) [95 years from date of first publication or 120 years from creation, whichever expires first]; Mandatory deposit for Library of Congress. 17 U.S.C. ' 407 [deposit required within three months of publication with failure to comply with deposit subject to fines and cost of purchase of works; copyright protection not affected by failure to deposit]; Used to be very important: If you published, lost CL CR rights, and went into public domain Performance publication; for publication need copies being distributed or sold Because of draconian effect of publication w/o proper notice, courts created various doctrines. Ex: Limited Publication Doctrine: Publication to a group considered limited publication, Ok if no notice on it (group = class, seminar, etc.). Courts didn't want free riders w/ defense that this went into public domain b/c no notice Other times, wanted to be able to sue in federal court even though hadn't fully published the work. Original rule was, if not fully published, no federal protection. New rule to protect the property interests against the free riders. Same publication which wouldn't be enough for you to lose it if you had published w/o notice would be enough for you to sue over it if someone stole it (?) Notice of CR Limited publication w/o notice, did not put work in public domain. Often legal fiction to stop forfeiture Outline goes through cases, not important here, not a big part of today's practice except in regard to infringement action (whether published w/o proper notice in public domain can't be sue for infringement) In terms of advice to give clients, publication doesn't have a lot of relevance mostly relevant w/ regards to defenses to infringement

III. IV.

F.

FORMALITIES 1. Notice: NOTICE IS NO LONGER NEEDED (as of March 1999)! (a) Comes up as a defense to infringement (b) History: Originated in the House of Commons as the view that copyright was a monopoly and therefore bad, but a necessary evil because without it, there will only be works by rich people or patrons of the rich. That would not be healthy for the people or the public. Used lack of notice of publication as a defense to infringement to limit copyright protection. (c) Hansen thinks that there is NO LEGAL CONSEQUENCES to notice, but as a practical matter, should have notice so that no one can claim innocence and so that people know who you are (they can get licenses from you). (d) Standard Notice: owner and year date of first publication/c in a circle. Effect of omission of notice: Omission does not invalidate copyright if 1. notice is omitted from no more than small number of copies distributed to the public; 2. Registration made before or within five years of publication and a reasonable effort made to add notice to all copies that are distributed to the public after the omission is discovered; 3. Notice omitted in violation of an express requirement in writing that, as a condition of the copyright owners authorization to publicly distribute copies, they bear the prescribed notice. (e) Notice as a Defense to Infringement: no actual or statutory damages before actual notice or registration, if infringer can prove he or she was misled by omission; court may allow or disallow infringers profits attributable to the infringement; court may enjoin infringer or in the alternative require a compulsory license for infringer with a reasonable royalty. 2. Mandatory Deposit with the Library of Congress: (a) Purpose: make sure LOC has a complete collection 3. Registration (a) Permissive: Registration NOT a condition of copyright; work has copyright even without registration. (b) Inducements to register: Prerequisite to infringement action- foreign works exemption: Berne Convention works whose country of origin is not the United States. Prerequisite to statutory damages and attorneys fees o Otherwise, tough to prove damages o Many attorneys wont take a case if there is no registration because they are not assured attorneys fees. o Registration must occur before infringement. Do a copyright audit of your clients IP!

XII.

o Grace period: if infringement occurs immediately after publication, copyright owner satisfies prerequisite if registration is made within three months of publication. o No exception for Berne Convention works Constructive motive of transfer (like deeds/property should always check and do search) Practical commercial advantages o Licensing, royalties, barring infringing copies at customs (nip pirating of your work in the bud at customs) Certificate with prima facie evidence of validity of when registration is made before or within 5 years of publication

RIGHTS & LIMITATIONS (1) Which right is implicated in an infringement? (2) If any rights are implicated, are there any specific or general exceptions to those rights that apply? (3) Is there fair use of the right?

Copyright Act of 1976 enumerated 5 exclusive rights of ownership (106) We dont protect only to incentivize creation, but were treating it as a property right. Proof: right to display, because if someone was displaying on the internet, there would be no other way to get it. A. Right to Reproduce Most important right is to be able to reproduce or make copies of a work. Exception: single copy by libraries and archives under certain conditions; temporary recordings of certain performance and displays by transmitting organizations 1. Cover right: 17 U.S.C. 115 compulsory license for making and distributing phono records of non-dramatic musical works available publicly and notice of intention to obtain compulsory license (a) Royalty rate: 115(c) statutory rate (b) Harry Fix Agency: agent for musical publishers who, in lieu of the compulsory license, issue voluntary mechanical licenses with relaxed accounting and reporting requirements, sometimes below the statutory rate. B. Right to Adapt (i.e. Derivative Work Right) 1. To prepare derivative works based upon the copyrighted work 2. Most valuable right to the client, ex: transformers toys much more $ than the cartoon. 3. Licensing tool = so that infringement does not have to be argued all the time. 4. Fits perfectly with the idea that those who create value get protected from competitors and free riders.

Scope is limited: owner of copyright of an original book Dr. Seuss has sole right to make dolls of the cartoon characters therein. Case Law on Hansens Idea of in America: Those who create value get protected from competitors and free riders C. Right to Distribute 1. To distribute copies or phonorecords or the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease or lending. the right to publication only covers distribution to public 2. Important: Often infringer is poor and judgment proof. If there is a DISTRIBUTOR, it is the BIG POCKET that can be sued. 3. Unique to U.S. 4. Limitations: (a) First Sale Doctrine: Once the owner consents to the sale of particular copies or phonorecords of the copyrighted work, owner may not exercise distribution right with respect to those copies/phonorecords (i.e. once work in circulation, cannot be controlled by copyright owner). (i) Ex: In U.S., rental stores are outside the owners protection. (b) Exceptions to the First Sale Doctrine (i) rental of sound recordings by stores meant to protect against borrowing for copying (ii) Computer Programs still has control after first sale (iii) POLICY: threat of piracy to these areas The making available right. Derived from WIPO treaties in 1996. No express amendment of Copyright Act. Distribution was thought to cover it. Now, in the context of peer to peer programs, it has become a contested issue. Does placing a work in a folder that be accessed by others for copying constitute distribution. District courts so far are divided and cautiously approaching the issue. No appellate cases to date on the peer to peer scenario. First sale right does not transfer right to prepare derivative works (c) Exemptions to the above area of RENTALS: (i) Non-profit education (ii) Non-profit libraries (iii) Computer programs that are embodied in a machine that cannot be copied. D. Right to Perform (composers source of income) enforced against venues, not performs 1. The owner of the has the right, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures, and other audiovisual works to perform the copyrighted work publicly.

2. Perform defined: to recite, render, play, dance, or act it, either directly or by means of any devices . . . or to show images in any sequence, etc. If you turn on the radio, youre performing. 3. Publicly defined: (a) To perform it at a place open to the public (NOTE: Does not have to be anyone there, key is that it is open to the public) OR (b) At a place where a substantial number of persons outside the normal circle of family and its social acquaintances is gathered OR (c) To transmit, or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance . . . [meant to get at the cable people, and other types of broadcasters]. no profit necessary 4. Multiple Performance Doctrine: There can be performances at different levels, and everyone down the line who plays the work publicly are liable. (a) BRANDEISs Doctrine: He was anit-IP, Populist and created this doctrine, which jeopardized his Populist spirit. Against his Populist bend, he broadens protection (really he should want less protection so that more things can get out to the public). 5. Limitations: No performance right for sound recordings No performance or display right for electronic audiovisual games intended for use in coin-operated equipment as against owner of copy of such a game Cable TV exemption and compulsory license Jukebox compulsory license Public broadcasting compulsory license There is an exemption for small businesses and restaurants. Communications of a transmission embodying a performance or display of a work by the public reception of the transmission on a single receiving apparatus of a kind commonly used in private homes. E. RIGHT TO DISPLAY PUBLICLY 1. Hansen says little real world application outside broadcast use of image or on-line. (a) Comes into play when the display is transmitted somewhere else. 2. With I/D policy , dont need a display right because dont need it as an incentive to create the works. -Cts will ask if the display is in the background or did it add value (to the TV show for example)

-1st A arguments have no effect 99% of the time F. IMPORTATION - 602 1. Importation as Infringement: Importation without authorization is infringement of the right to distribute copies or phonorecords under 501. Hansen said concern is with KNOCK-OFFS. Exemption: importation under the authority or for use of federal and state governments 2. 9th Cir. = Against importation; 3trd Cir. = anti-IP and ok with importation (allowed certain works to come into the U.S. if there is dual control over the product in both U.S. and abroad back door way into via trademark). 3. Trademark law: parallel imports allowed, if I sell it overseas to a subsidiary, that can be imported back in the country. If product manufactured in U.S., sent abroad and then sent back, this is allowed. If produced outside the U.S, the good could be blocked =Final word . applied parallel imports of goods with labels that have copyright protection, really to protect trademark. G. VISUAL ARTISTS RIGHTS 1. Very limited in graphic arts, rarely real world concern, and can be waived. (a) France: serious about moral rights and cannot waive them 2. Visual Artists Rights Act of 1990 (a) Works of visual arts only covered (b) Rights of attribution and integrity (i) Moral rights that are implicated usually when the work is reproduced and the reproduction has changed it in some way. (c) No criminal sanctions 3. Waiver of moral rights allowed. Often, market waiver has an effect. (a) Working artists almost always waive moral rights by not suing under it because they are afraid that they will never work again. (b) There are market pressures that encourage people to go along in order to get along. If done through a guild, it is ok, but suing outside the industry custom is troublesome. (c) Market pressures may force you to give up legal rights and moral rights. cannot assign moral rights, they go to heirs upon death. XIII. A. INFRINGEMENT 17 USC 501(a) Anyone who violates any of the exclusive rights of the owner as provided by

106-118, or who imports copies or phonorecords into the US in violation of 602, is an infringer of B. registration as a prerequisite to infringement suit (17 USC 411) 1. Cannot be waived by the court and other side may get fees for having to respond to an action than cannot proceed. 2. exceptions: -411(a)- when Register refused to issue registration If registration rejected, you can see. The register has to be notified to come in, they usually dont. -411(b)- when infringement is anticipated of a sounds and images work not yet in existence and which will be fixed during transmission Errors 1. misstatement or typo in registration application will not invalidate nor render registration cert incapable of supporting infringement action 2. fraud or knowing misstatement is reason for invalidation of (Russ Berrie v. Elsner) Standing 1. Legal or Beneficial Owner - no consent from other necessary i. Beneficial owner one who continues to benefit from the use of the work (via royalties, not lump sum payment) 2. Non-parties with interest (17 USC 501(b)) i. Notice, Joinder/intervention provisions. Notice may be required for people who will likely be effected by suit and joinder/intervention for person claiming interest in . ii. A provision that hardly gets used: Plaintiff doesnt want anyone else to come in to divide the damages, and defendants dont want more plaintiffs to get ganged up on. 1. If I were a defendant in the case, then I would ask for it, because: if I were to give up this right then what am I getting out of it? And then you may have a better chance to settle. (because plaintiffs and judges dont want this! So thats a threat to the plaintiff and judge is going to want to settle), and there is no threat to the defendant, because these people probably will never come in. E. Elements in proof of infringement 1. Ownership of a valid Certificate =presumption of validity. Victims, good guys, creators, harm, violated are buzzwords that drives policy in district courts.

C.

D.

A. Illicit copying by defendant: Direct and circumstantial evidence Which is better? Circumstantial b/c almost impossible to cross examine Especially in IP, circumstantial is better Direct = "I saw him reading my novel" direct evidence of access, not of copying; usually direct evidence of copying is in form of admission (usually pretty good evidence) If it is circumstantial, need two things: Access (really, access plus evidence probative of copying) Reasonable opportunity to view or hear work, bare possibility is not enough Bare possibility might be enough (despite doctrine) where there is tremendous similarity really is a sliding scale Corporate Receipt Doctrine (bottom, p. 261) This is where you can help your client; often in entertainment industries people come up w/ similar plots, etc. Doctrine can create access. Send this in, they received it, no one looks at it but still access requirement is met when you think they've copied your work. If there is substantial similarity lots of trouble for corporation. If you are an outside contractor who never deals w/ the office, that's one thing; but if you do go to the office to talk to creative people, that's enough. To stop this doctrine put up wall so no one from creative output (people hired to create) has access to this unless it goes through a filter. Some companies simply return every unsolicited work, only accept through agents (agents are in effect a filtering device of credibility, and in community so likelihood of lawsuit is less). Or, take everything and returned as soon as rejected and sent back (like book publishers used to do). Easier to throw it out, but that's where you can get into trouble b/c they will say you really didn't throw it out. Similarity Substantial similarity or probative evidence of copying (doesn't have to be substantial similarity at all). If you put a false name in a directory and they copy that, that is probative evidence of copying, don't have to show substantial similarity Striking Similarity: Where there is striking similarity, don't have to prove access (at least in 2d Cir.; p. 263, outline). Theory: works are so similar that no reasonable explanation other than copying; so not fair to P to require proof of access. A lot of flaws with this doctrine creates almost patent-like protection (don't have to copy to infringe a patent, can independently produce; not the case for CR). Selle v. Gibb (p. 263, outline, should say 7th Cir, not 2d Cir.; case about Bee Gees "How Deep Is Your Love" infringement of Selle's song). Bee Gees claimed independent creation, even had tape of production which is usually pretty good evidence. Had an expert who said striking similarity. Osterberger just cross examined, didn't put in his own expert; jury thought he didn't put expert on b/c couldn't find

anyone found for P. Clearly no access shown and good evidence of independent creation, just striking similarity. District court granted JNOV b/c clearly there wasn't access and similarity was just coincidence would have created patent-like protection and that's not what CR is all about. Tape of production influenced court and jury, jury would have gone along w/ it if there was an expert. Appellate court went further: Usually doctrine of striking similarity allows inference of copying; 7th Cir. said no inference of copying w/o some reasonable evidence of access (Hansen says this is a really good ruling). Then, Judge Newman (Gaste v. Keiserling, 2d. Cir., p. 260 of outline) says jury reasonably found access where P alleged D obtained copy of his song through publisher who received copy 20 years ago. Court below didn't even give a proper striking similarity instruction, jury finds infringement. Court gives proper instruction in 2d Cir. (p. 263). But Newman says jury didn't have to find access. Arguments like this from Newman are troubling. So, 2d Cir. and most of country saying striking similarity does preclude any reasonable possibility of independent creation, don't need access. 7th Cir. do need reasonable showing of access. How do you argue this case to a jury (where there really is striking similarity)? Don't make P look like bad guy b/c jury will sympathize w/ little guy, so say he is a good guy and should be upset, but law is not just b/c you have the same song you share in the success of that song; he had same song but no one bought it, Bee Gee's song bought b/c of their reputation, etc. Say, if they copied I would be for them 100% but they didn't copy. Substantial taking- initially just quantitative, then also included qualitative. Determined by ordinary lay observer Peter Pan v. Martin Weiner Created by Learned Hand: harm to commercial marketplace, so consumer view is most important. (Hansen: CR is not unfair competition!) exception for computer cases too complicated in Wheland Case i. Experts can testify as to copying, not as to sub taking. As a practical matter they do both! ii. If the similarities are substantial, in which no other explanation can be possible (reasonable possibility of access to avoid. Greater access, less substantial similarities needed to show copying). Circumstantial evidence to prove copying. iii. If similarities are striking, trier of fact can determine? i. 2. Summary Judgment now more appropriate for i. Used when not a lot of merit. Courts think that creators are not rational litigators and bring baseless lawsuits: Creative people think there is copying there is not. Not a bad tactic to file motion for SJ b/c forces judge to get on top of the law, even if you lose the motion you've got the judge on your side and will push for

settlement for you. It's a device, costs a little money, but good way to teach the judge the law when you are in a court that doesn't know CR Defense: Fair use Four factors to determine whether use is fair ( 107)

This is just a preamble, doesn't mean any of those things are necessarily fair use. Courts say if it falls into one of those categories, it probably is fair use 4 factors to determine whether fair use these factors consider everything Purpose and character of use (D's use): Profit/non profit. Case law has broadened to non-profit, profit isn't negative, but nonprofit is plus in terms of fair use. Profit doesn't mean the company is nonprofit; means the use is nonprofit. Harper & Row Publishers v. Nation Enterprises (O'Connor) (p. 281, outline) See p. 283 for how to determine fair use: Profit/nonprofit distinction = whether the user stands to profit from exploitation of the work w/o paying; Character and purpose of use (good guy/bad guy, trying to supplant CR holder's commercially valuable right great to use this SCT language to argue good guy/bad guy) Catholic Church putting on Jesus Christ Superstar, it is non-profit organization, but is not a non-profit use. Shows court's inclination to limit fair use. Nonprofit use = anywhere where no customary fee (ex: book review) Fact that you are charging probably weighs in, but not determinative of whether profit/nonprofit Nature of CR work (P's work): Generally speaking, creative more protected than factual. (Fiction = creative = subject to more protection than factual works.) Weakest of factors in terms of real-world effect Amount and substantiality of portion used in relation to CR work as a whole: Focuses on how much of P's work used (might be a big part of D's work and a small part of P's what we focus on is what percentage of P's work it was that was taken). Before photocopying, etc. used to be that if you took the whole work it could never be a fair use. Now you can take the whole work in very limited instances, almost always advancement of technology cases The more you take the worse it is for fair use; the less, the better for this defense This is an affirmative defense, so had to have substantial taking to even argue fair use. SCT also talked about how much P's work makes up D's work (O'Connor messed this up a little in SCT opinion). If large part of D's work is P's work, goes against fair use. If small part of D's work is P, in favor of fair use. Courts often look at this idea under third factor but technically goes under first factor Effect of use upon potential market for or value of work: Probably the most important factor; SCT once said it was then waffled. Don't have to have demonstrated the harm, it's potential harm. Fits w/in thesis that those who create value can protect against competitors and free riders (those getting value of work w/o paying for

it). So usually those two (competitors and free riders) are not going to get benefit of fair use. Often, others might. Economic argument House Report has examples of fair use (p. 268, outline) they don't even consider you can use the whole work, shows how restrictive Congress was in thinking about this H. Economic analysis of fair use (p. 269) Chicago School finds fair use to be very limited Fair use = zero-price compulsory license Compulsory license disfavored b/c the best way to negotiate is through the market, so the government will skew the market b/c it will set the price w/o the market. So only have situations of market failure or where transaction costs are so high and know ex ante that CR holder wouldn't sue (ex: excerpts for book review make sense, cost will hinder the amount of book reviews) (see p. 270, outline) 7th Cir is big law and economics circuit, but Hansen says no matter where you use it it can't hurt you (makes you look sophisticated even to those that don't use it). Don't necessarily use it w/ a jury. Don't say it controls case, but say there is no fair use and this comports w/ economic theory or the reverse if you are D. Never see this analysis by CR litigants Case law Time Inc. v. Bernard Guis (Kenney assassination film footage) took pictures of images and then had someone draw them pro his book. Ct ruled s use as fair use because: Under Natural Law policy there was little or no effort in making the film because it was simply a fortuitous creation of value. - Under Commercial Morality/Fairness, the defendant was willing to pay for rights to use the film and was not then a typical free-rider. - Under Incentive/Dissemination - There is not a need to create incentives through copyright for home movies because people generally do not profit from them and will make them anyway. The court finds fair use. Note: Generally, when a copyright owner suppresses a work instead of disseminating it courts are likely to find fair use. (i) There is a public interest in having the fullest information available on the murder of President Kennedy. Thompson did serious work on the subject and his theory is entitled to public consideration. (ii) While Thompson's book could have been published without the Zapruder frames, the explanation is easier to understand with them.

(iii) There seems to be little, if any, injury to plaintiff. (A) parties. No direct competition between

(B) Effect of defendant's use on plaintiff's future book or film projects is speculative. (C) Defendant's use is more likely to enhance value of copyrighted work. Fair use should be more narrow: in case of market failure: if cost of getting permission is more expensive than the value of use. Gaste v. Kaiserman, 863 F.2d 1061, 1066-67 (2d Cir. 1988)(Newman, J.)(jury reasonably found access where plaintiff alleged that defendant-songwriter obtained a copy of his song through the defendant's publisher who had received a copy of plaintiff's song nearly 20 years earlier); [B] "Corporate receipt doctrine." [I]f the defendant is a corporation, the fact that one employee of the corporation has possession of plaintiff's work should warrant a finding that another employee (who composed defendant's work) had access to plaintiff's work, where by reason of the physical propinquity between the employees the latter has the opportunity to view the work in the possession of the former.

Gaste v. Kaiserman, 868 F.2d 1061 (2d Cir. 1988)(Kaufman, Newman, Garth)(striking similarity can, by itself, prove copying and unlawful taking; it can cerate an inference of copying if that inference is reasonable in light of all the evidence; "A plaintiff has not proved striking similarity sufficient to sustain a finding of copying if the evidence as a whole does not preclude any reasonable possibility of independent creation; jury is only permitted to infer access, it need not do so). Selle v. Gibb, 741 F.2d 896 (2d Cir. 1984)(Wood, Cudahy, Nichols)(striking similarity alone may not prove access, "plaintiff must always present sufficient evidence to support a reasonable possibility of access because the jury cannot draw an inference of access based upon speculation and conjecture alone). Create evidence before litigation recording creation. Substantial taking Forget the 9th circuit test. Williams & Wilkins Co. v. United States the Dred Scott decision of copyright Determined that it is fair use for a library to loan out non-returnable copies of articles. Holding. Defendants copying is a fair use. (A) NIH and NLM are nonprofit institutions devoted to scientific progress. (B) Both libraries had established and enforced appropriate limitations on the duplication. (C) Library photocopying has been going on until recently with apparent acceptance. (D) Medical science would be seriously hurt if the library photocopying were stopped.

(E) Williams & Wilkins has failed to prove its claim of past and potential economic harm from the photocopying. Sony Corp of America v. Universal City Studio use. (A) Unauthorized time-shifting is a fair (I) Factor 1. The nature of the use is noncommercial, nonprofit activity which leads to presumption of fair use. (A commercial or profitmaking use "would presumptively be unfair.") (II) Factors 2 & 3. "When one considers the nature of a television copyrighted audiovisual work, and that time-shifting merely enables a viewer to see such a work which he had been invited to witness in its entirety free of charge, the fact that the entire work is reproduced, does not have its ordinary effect of militating against a finding of fair use." (III) Factor 4. "A challenge to a noncommercial use of a copyrighted work requires either that the particular use is harmful, or that it would adversely affect the potential market for the copyrighted work." Plaintiffs fail to meet this burden of showing potential harm from timeshifting.

(IV) "When these factors are all weighed in the `equitable rule of reason' balance, we must conclude that this record amply supports the District Court's conclusion that home timeshifting is fair use. In light of the findings of the District Court regarding the state of the empirical data, it is clear that the Court of Appeals erred in holding that the statute as presently written bars such conduct." A. Napster actual knowledge required -ignored Sony case

(Harper and row publishers, Inc. v. Nation Enterprises, 471, U.S. 539 (ii) Holding. The Nation article was an infringement; the requirements of the affirmative defense of fair use were not met. (A) Unpublished works are subject to fair use defense. (B) The First Amendment is not an additional defense to infringement and its principles are subsumed in the idea/expression dichotomy of copyright. (C) The First Amendment supports the right of first publication of the copyright owner. (D) Fair use is an affirmative defense and a mixed question of law and fact. (E) Purpose of the Use. The Nation's use was commercial: The crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price.

Also, court should look to propriety of defendant's conduct and purpose to supplant copyright holder's commercially valuable right. (F) Nature of copyrighted work. Scope of fair use is narrower for unpublished works. (May be broader for factual works than works of fiction or fantasy.): The right of first publication encompasses not only the choice whether to publish at all, but also the choices when, where and in what form first to publish a work. (G) Amount and substantiality of portion used. What the Nation took was the "heart of the book." (I) Effect on market. Most important factor. Not only potential injury here, but actual injury--the loss of $12,500 payment from Time. Salinger case usually will find fair use for quoting words, but he was recluse. Factors: unpublished works unlikely copied as fair use, so this weighs in Salingers favor Amounts and substantiality of the portion used: if not heart then at least important part of the book Effect on the market: 1) potential market is proper focus and Salinger has right to change his mind. Public awareness has to wait either permission or expiration of his copyright term. Decided on privacy policy- Ct ruled it as an infringement Pillsbury Co. v. Milky Way Production fair use looks good, but enjoined for anti-dilution.

Hansen says this case would have turned out the other way today Pornographic depiction of the Pillsbury doughboy value judgment of the depiction has no place in the analysis, but enjoined for violation of Georgias anti-dilution statute. Harper & Row v. National Enterprises - Fords memoirs publisher sold exclusive pre-publication excerpt to Time, but The Nation got hold of a copy and printed it first. -Ct ruled it as an infringement -fundamentally at odds with scheme of to accord lesser rights in those works that are of greatest importance to the public (compare with Time inc case) -unpublished works ARE subject to fair use defense -1st A is not an additional defense to infringement and its principles are subsumed in the idea/expression dichotomy -1st A supports right of first publication of the owner -there were directly competing and the economic harm was loss of $12.5K payment from Time. Williams v. US - , publisher of medical journals sues NIH library for photocopying for staff. -Ct ruled Fair use non-for profit use limitations on duplication (<50 pages, single copy) no economic harm medical science would be hurt if this was an infringement Dissent we are making the Dred Scott decision of copyright law. Sony v. Universal City Studios (The Betamax Case)- sued Sony, who manufactured Betamax, b/c people taped their programs off TV using sonys device. Under a theory of contributory infringement - are not liable for contrib. b/c the VCR is capable of substantial non-infringing uses -home use =non-commercial, nonprofit presumption of fair use -no economic harm Campbell v. Acuff-Rose Music - 2 life crew case -parody falls under fair use b/c owner would never license it -Ct did not actually rule it as fair use, they remanded for determination of harm to the potential rap market of pretty woman

-Case settled. Hansen doesnt actually think there was enough parody here but ruled for the minority group in this case and wants to consider context. Parody must attack original work itself in some way Remedies Permanent injunctions have to go through all injunctions, no presumption of irrevocable harm. In reality, people are getting preliminary injunctions Damages and profits? Difficult to prove how this affected my market; market experts are exceedingly expensive. Statutory damages were put in (bad guy v. good guy) Attorneys fees usually for prevailing parties. Substantial taking value of taking in an amorphous way (Seinfeld case); focus on value. II. XI. Remedies A. A. Injunction - 17 U.S.C. 502 Preliminary Injunction: Must show irreparable injury,6 combined with either a probability of success on the merits, or a fair ground for litigation and a balance of hardships in plaintiff's favor. Permanent Injunction: Normal rule is that a permanent injunction flows from a finding of infringement. B. B. Damages 504(c) - Statutory Damages (paid per work infringed not per copy made) Willful infringement may result in treble damages Costs and attorneys fees may be given even to the defendant if there is a finding that the suit was frivolous.

Irreparable harm is presumed if there is a prima facie case of infringement.