BALLER Copyright Outline

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Intro to CR Law
Intro to CR
• What is a copyright?
Sources of o Copyrights protect original works of authorship fixed in a tangible medium of expression
CR Law o Begins upon fixation of original expression
• Subject Matter
o Literary, dramatic, and musical works; pantomimes and choreography; pictorial, graphic and sculptural
works; audiovisual works; sound recordings; and architectural works
• Duration – life of the author + 70 years or 95 years form publication or 120 years from creation, whichever is
less
• Source of law – Constitution Article 1, §8, Clause 8
o The Congress shall have the power… to promote the progress of science and the useful arts, by securing for
limited times to authors and inventors the exclusive right to their respective writings and discoveries
• Standard for infringement - Ownership of valid copyright and violation of an exclusive right (e.g. copying)
• Justifications for Copyright law
o Utilitarian Concept  incentivize artists to create so as to enrich the public domain
o Create an incentive for artists to come up with new works by allowing them time to recuperate the money
invested in the work
 However, this is not entirely true as a lot of artists would continue to create works regardless of
whether they get a copyright or not.
• How else could we protect works if not through copyright?
o Contract Law
 Would create high transactional costs
 The contract would only apply to those who agreed to it (privity of contract)
o Creative common licenses – sets forth rules as to how works can be used…artists can get attribution for the
work
o Right of attribution is a moral right and not part of the US copyright law system
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Threshold Requirements for CR Protection
Elements of §102(a) Copyright protection subsists. . . in original works of authorship fixed in a tangible medium of expression. .
Copyrightab Works of authorship include the following categories.
1. Literary works
le Subject
2. Musical works, including any accompanying words
Matter
3. Dramatic works, including any accompanying music
4. Pantomimes and choreographic works
5. Pictorial, graphic, and sculptural works (remember useful article doctrine….he likes this for exam
questions)
6. Motion pictures and other audiovisual works;
7. Sound recordings
8. Architectural works (plans and buildings)
REQUIREMENTS:
1. Fixation
2. Originality
3. Formalities (most removed after Berne Convention)
Fixation Why do we require fixation?

• Helps from an evidence perspective providing proof that the copyright exists
• Provides scope/boundaries for what the claim of infringement is
• Art 1, §8, Cl 8 says “authors…their respective writings”
o “Writings” Construed to mean any physical rendering of the fruits of intellectual activity.
• HISTORICAL: White-Smith Publishing Co. v. Apollo Co US 1908 (p47)
o Facts: piano roller
o Holding: Player piano copy is not a copy of a musical work because in order to be infringing a
“copy” must be “in a form which [humans] can see and read [like notes on a staff].
o Notes: Congress responded to this case by creating a provision subjecting a compulsory license to
mechanical reproductions of the work; added phrase “now or later developed” to 1976 Act
Functional Approach §101 – A work is “fixed” in a tangible medium of expression when its embodiment in a
copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be
perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work
consisting of sounds, images, or both, that are being transmitted, is “fixed” for purposes of this title if a fixation of
the work is being made simultaneously with its transmission.
• All methods of fixation are either phonorecords or copies
• “Copies” are material objects, other than phonorecords, in which a work is fixed by any method now known
or later developed, and from which the work can be perceived, reproduced, or otherwise communicated,
either directly or with the aid of a machine or device 17 USC §101 (2000)
• “Phonorecords” are material objects in which sounds, other than those accompanying a motion picture
or other audiovisual work, are fixed by an method now known or later developed, and from which the
sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine
or device. 17 USC §101 (2000)
• Distinction between the two - example book can be a printed record but it could also be a phonorecord if
someone reads and records it. A music video would be a copy.
• Authority If someone recorded a lecture without permission - it would not be copyrightable because the
author didn’t authorize, the person may be infringing… however, if it wasn’t fixed anywhere, there would be
no recourse
• Permanent/Transitory: writing in frost in a window? depending on the period it exists and can be
reproduce
• Tangible §102(a) Copyright protection subsists, in accordance with this title, in original works of authorship
fixed in any tangible medium of expression now known or later developed, from which they can be
perceived, reproduced, or otherwise communicated, wither directly or with the aid of a machine or
device”
• Transmission: To “transmit” a performance or display is to communicate it by any device or process
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whereby images or sounds are received beyond the place from which they are sent. 17 USC §101
o If you give a lecture, someone records it simultaneously the simultaneous recorder could be free -
because of the simultaneous requirement (?) Try to Assert a URUGUAY Claim
o Hypo: Broadcast performance with simultaneous recording by artist and audience member?
Courts haven’t addressed this IS IT AUTHORIZED?
• 1101 - Uruguay Round Agreement Act (1994) Limited Exception: Anti Bootlegging Provisions (violation
to have unauthorized recording) Unauthorized Fixation and Trafficking in sounds recordings and Music
Videos
o (a) Unauthorized Acts – Anyone who, without the consent of the performer or performers involved
–
o (1) fixes the sounds or sounds and images of a live musical performance in a copy or phonorecord,
or reproduces copies or phonorecords of such a performance from an unauthorized fixation,
o (2) transmits or otherwise communicates to the public the sounds or sounds and images of a live
musical performance, or
o (3) distributes or offers to distribute, sells or offers to sell, rents or offers to rent, or traffics in any
copy or phonorecord fixed as described in paragraph (1), regardless of whether the fixations occurred
in the United States, shall be subject to the remedies in sections 502 through 505, to the same extent as
an infringer of copyright.
To prevail in a claim of copyright infringement, P must prove ownership of a copyright and copying of
protectable expression beyond the scope of the license.
Originality Originality Definition Originality is a judicial interpretation of constitutional requirement (“author”) and it is more
than mere independent creation
Originality Requirements
• There has to be an independent creation by the author, meaning he cannot copy the work from someone
else, although he can copy works from the public domain
• There has to be a minimal degree of creativity
• No requirement of novelty - just has to be original (not copied)
• Independent creation by author
Burrow-Giles Lithographic Co. v. Sarony US 1884 (p59) Authorship Requirement

• Facts: Oscar Wilde photograph
• Holding: court determined that the constitution is broad enough to cover copyrights of photographs so far as
they are representatives of original intellectual conceptions of the author; they are not simply a mechanical
process of capturing something outside author. Here the selection of the costume, draperies, angles, lighting,
expression, etc was made entirely by the ∏ and is therefore an original work of authorship
Belstein v. Donaldson Lithographic Co. US 1903 (p62)

• Facts: Circus Poster Advertisement
• Holding: copyright okay; it would be a dangerous undertaking for persons trained only to the law to
constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most
obvious limit. You are free to copy the original if it is part of the public domain, but you cannot copy the
copy
More than merely trivial

• Alfred Bell v. Catalda Fine Arts 2d Cir 1951 (p67)
• Facts: mezzotints of great work in the public domain
• Holding: Copyright upheld; an author must have contributed something more than a mere trivial variation,
something recognizable as his own. Unintentional variations are copyrightable as long as they are
substantial departures from the work. Originality in this context “means little more than a prohibition on
actual copying” Devalues copyright and the originality standards. Even unintentional changes can result in
something original
• Note: Intent could be a slippery slope, so courts don’t want to evaluate
Bridgeman Art Library, Ltd. v. Corel Corp. SDNY 1999 (p70)

• Facts: Library had transparencies of public domain works; D copied transparencies.
• Holding: No copyright b/c purpose was to capture work precisely and not add anything new; no distinguishable
variation, as the production of a work of art in a different medium cannot by itself constitute originality; here the
photograph of a painting was nothing more than a “slavish copy”
Policy for not granting copyright for very simple designs
• Problems regarding proof
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• The goal of copyright is to promote expression and if we start providing copyrights to elements of expression
you are limiting what others will be able to use to express themselves
• Typically not copyrightable: rhythm, words, short phrases, names, titles, slogans (37 CFR §202.1 - p78)
Summary of Originality
• Summary of originality with respect to the statutory phrase, copyright subsists in “original works of
authorship”:
o How does photography fit into “writing”?
o The subject of copyright: Congress can authorize copyright in all forms of writing “by which the
ideas of the mind of the author are given visible expression… so far as they are representatives of
original intellectual conceptions of the author”
• Selection and arrangement is the bare minimum for copyrightable work
• Fine art was a false definition - shouldn’t evaluate for that. The fact that it was copied shows that is was
valuable. An advertisement can be copyright without judgment of its aesthetic value Bleistein v. Donaldson
Lithography Co. (CB 62) 1903
Literary Works
Categories • §101 “literary works” are works, other than audiovisual works expressed in words, numbers of other verbal
of symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts,
phonorecords, film, tapes, disks, or chards, in which they are embodied…
Works • Includes computer programs, pictorial, graphic, and sculptural works
that are • Once there are mechanical utilitarian aspects, these aren’t considered part of the copyright
Eligible
for Architectural Works
Protecti Dramatic Works
on Music/Sounds - ‘Sound Recordings” are works that result from the fixation of a series of musical, spoken, or other
sounds, but not including the sounds accompany a motion picture or other audiovisual work…
Pantomimes and Choreographic Works - by video type, or diagram

Motion Pictures and Other Audiovisual Works
§102(a) and 101 - Subject Matter of Copyright: In General

• Audiovisual work  series of related images that when shown in succession, impart an impression of
motion
• 102(a)(5) Pictorial, graphic, and sculptural works  protection extends to purely nonfunctional or
monumental structures and artistic sculpture or decorative ornamentation or embellishment added to a
structure; see §101 - **includes useful articles when design “can be identified separately from, and are
capable of existing independently of, the utilitarian aspects of the article”
• Sound recordings  works consisting of the fixation of a series of sound. Motion picture soundtracks are
protected under the motion picture category
• The list of categories is illustrative and not limited
• Basic questions here:
o Is the incentive of copyright really needed to produce more of a given work
o Is copyright the proper protection for the type of work at issue
Modicum of Creativity
• di minimis Limitation
• Rhythm typically not protectable
• “Words and short phrases such as names, titles, and slogans are not copyrightable”
• __________ : Priceless. There are some things money can’t buy… for everything else there’s MasterCard -
you would get trademark protection
• If you grant protection to the building blocks of creativity, you defeat the purpose.
• Titles, words, not usually protected
Idea/Expres • 17 USC §102(b) In no case does copyright protection for an original work of authorship extend to any idea,
sion 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.
Dichotomy
• Limits the scope of cr protection to the expression of ideas and facts, and excludes the protection of the ideas
of facts themselves. The ideas and facts are part of the public domain
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Baker v. Selden US 1879 (p73)

• Facts: Selden copyrighted a book about a dual entry book-keeping method and the forms in the book. He
was hoping to get protection for the method. Baker created new forms, which were similar but had variations
in terms of the arrangements of columns and headings
• Holding: no copyright protection for something that falls in the realm of patent law b/c you would go
through less rigorous standards and essentially get protection for a longer period of time.
• TODAY: blank forms which are designed for recording information and do not themselves convey
information are not the subject of copyright (37 CFR §202.1(c) - p78)
Facts are NOT copyrightable

• Scene a faire Copyright does not extend to incidents, characters, or settings which are as a practical matter
indispensable, or at least standard in the treatment of a given topic
•
A.A. Hoehling v. Universal City Studios 2d Cir 1980 (p80)
• Facts: case about the Hinderburg and its destruction (historical accounts); Hoelhing researched the event and
his theory was copied
• Holding: the copyright protection for historical facts is extremely narrow. Here there was also an issue
about characters or settings, which the court held to be scenes a faire, which are not copyrightable
• Notes: Even if P’s theory was incorrect, still not copyrighable b/c it was asserted as a fact; copyright
protection is not concerned with the “sweat of the brow”, if this was not the case, it would mean that an
author is precluded from saving time an effort by referring or relying on published material
American Dental Association v. Delta Dental Plans Association 7th Cir 1997 (p86)
• Facts: P made taxonomy of dental procedures and D copied most of numbering system and descriptions
• Holding: Copyright upheld; classification involves creativity; facts do not supply their own organization
Merger theory (p77)

• Ideas that can only be expressed in one or limited number of ways: as a policy matter, copyrights will not be
granted b/c doing so would essentially monopolize the idea
• Could be used as a defense
• Morrissey v P&G 1st Cir 1967 - no copyright in sweepstakes contest instructions
• Example: building codes created by 3rd party adopted into law; even though code may have been
copyrightable initially, at time it became law, it is not copyrightable as public should have opportunity to
reproduce codes as they are; any parts not in law could be protected (SBCCI v. Veek)
• Court is less likely to restrict something that is commonly used (e.g. law journal articles)
• Jellyfish Sculpture Case - “Satava may not prevent others from depicting jellyfish within a clear outer layer
of glass b/c the clear glass is the most appropriate setting or an aquatic animal”
• Jeweled bee example - limited ways to express? Not a useful article, is copyrightable (but fashion isn’t - it’s
utilitarian)
Coloring Book
• Copyrightable
• What if you color in the book? Derivative Copyright
Useful • Articles having an intrinsic utilitarian function that is not merely to portray the appearance of the article are
Article called useful articles.
• Is the work a pictorial, graphical, and sculptural work? Is so, is it a useful article?
Doctrine
• Physical Separability – ability to have the works physically separated (Mazer case) Although there are cases
where you could not literally separate the aspects, i.e. carving on a chair
• Conceptual Separability – more difficult than physical separability.
o If the design elements reflect a merger of aesthetic and functional considerations, the artistic
aspects of a work cannot be said to be conceptually separate from the utilitarian elements. If the
design elements can be identified as reflecting the designer’s artistic judgment exercised independently
of functional influences, conceptual separability exists (Bandir)
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o We are basically looking at is the intent of the designer. If they know of the test they will
basically testify that they intended to design a work of art.
• Copyright Office’s test for useful articles is somewhat limited and different than what courts have done
• Compendium 2
Physical separability Mazer v. Stein US 1954 (p212, L119)

• Facts: (lamp case) copyright was obtained for the statuettes without the lamp components. Later the
statuettes were sold as lamp bases and as statuettes
• Holding: Copyright upheld; the court should not make determinations as to what is art and the fact that
something was incorporated in a useful article does not bar protection; physical separability b/c lamp parts
could be removed from statuette
Notes:
• Think of the mickey mouse phone. You can still remove the character and have the phone.
• Physical separability is a bit easier. What about the model of a car?
o We want to encourage different designs of cars and this may be a case where creativity will
happen on its own
o Who may object to providing protection to a real car?
 Consumers
 Insurance companies b/c the replacement parts be part of the copyrightable work and they
don’t want to incur additional costs
Conceptual separability Kieselstei-Cord v. Accessories by Pearl 2d Cir 1980

(p215, L123) -
• Facts: Belt buckles case; the buckle was registered as jewelry and as a sculpture
• Holding: Copyright okay b/c ornamental surface was unrelated to the utilitarian function of the belt. There
was evidence of aesthetic appeal - people wore buckles as jewelry other than at waist
Carol Barnhart Inc. v. Economy Cover Corp 2d Cir 1985 (p218, L123)
• Facts: Human torso mannequin case
• Holding: No copyright; the features claimed to be aesthetic or artistic are inextricably intertwined with the
utilitarian feature, the display of the clothes; appears to be more like physical separability than conceptual
Brandir International Inc. v. Cascade Pacific Lumber 2d Cir 1985 (p221, L124)
• Fact: Bike rack case; designer first made a sculpture without thinking about utilitarian features. However,
he made significant changes in the measurements to make sure bikes would fit on top of or underneath the
rack
• Holding: No copyright b/c the form of the rack was significantly influenced by functional concerns. Here,
the designer had created the sculptures without any thought of utilitarian elements, however, changes were
made, which rendered the work uncopyrightable.
• TEST: adopted Denicola test: if design elements reflect a merger of
aesthetic and functional considerations, the artistic aspects of a work
cannot be conceptually separable from the utilitarian elements.
Derivative §103. Subject matter of copyright: Compilations and derivative works
• (a) The subject matter of copyright as specified by section 102 includes compilations and derivative works,
but protection for a work employing preexisting material in which copyright subsists does not extend to any
part of the work in which such material has been used unlawfully
• (b) The copyright in a compilation or derivative work extends only to the material contributed by the
author of such work, as distinguished from the preexisting material employed in the work, and does not imply
any exclusive right in the preexisting material. The copyright in such work is independent of, and does not
affect or enlarge the scope, duration, ownership, or subsistence or, any copyright protection in the preexisting
material
• Derivatives and compilations are not a distinct category of copyrightable work; they have to be based on
subject matter that is copyrightable
§101 – Derivatives
• A "derivative work" is a work based upon one or more preexisting works, such as a translation, musical
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arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction,
abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A
work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole,
represent an original work of authorship, is a "derivative work".
§106(2) - Exclusive Rights in Copyrighted Works

• Subject to §§ 107-122, the owner of copyright under this title has exclusive rights to do and to authorize any
of the following: . . . (2) to prepare derivative works based upon the copyrighted work
• Requirements:
o Recast, transform, or adapt preexisting work
o Contribute copyrightable (original) expression
L. Batlin & Son Inc v. Snyder 2d Cir 1976 (p91)

• Facts: Uncle Sam mechanical banks case. The metal bank was part of the public domain.
• Holding: No copyright; here the variations were trivial and to grant a copyright to the work would be to grant
a monopoly to a work that was already in the public domain; a considerable higher degree of skill is required,
“true artistic skill,” to make the derivative copyrightable.
• Notes: No statute requiring a higher standard
Entertainment Research Group v. Genesis Creative Group 9th Cir 1997 (p94)
• Facts: three dimensional inflatable costumes of cartoon characters
• Holding: No copyright. The Durham test grants copyright to a derivative work if the form of the underlying
work and the derivative work are sufficiently different  this test CANNOT be applied when the underlying
work is still protected by copyright. The Durham test states that (1) the original aspects of the derivative
work must be more than trivial, (2) the original aspects of the derivative work must reflect the degree to
which it relies on preexisting material and must not in any way affect the scope of any copyright protection in
the preexisting material
• if you give a derivative copyright, will it interfere with the orginal owner’s ability to license?
Gracen v. Bradford Exchange

• Facts: Dorothy plates case. Gracen won the contest and had authority to create the derivative wok, but not the
authority to get copyrights on it.
Pickett v. Prince 7th Cir 2000 (p98)

• -Facts: Prince established the symbol as his trademark and also copyrighted the symbol. ∏ made guitar with
the symbol, but did not receive authorization from Prince.
• -Holding: Unauthorized use of symbol to make guitar infringed Prince’s copyright; b/c the underlying work
“pervaded” the derivative work, guitar-maker could not sustain independent copyright protection for his
creation. The Copyright Act of 1976 gives the copyright owner the exclusive right to prepare a derivative
Compilation §101 – Compilations

s • A "compilation" is a work formed by the collection and assembling of preexisting materials or of data that are
selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original
work of authorship. The term "compilation" includes collective works.
• A "collective work" = Compilatoin is a work, such as a periodical issue, anthology, or encyclopedia, in
which a number of contributions, constituting separate and independent works in themselves, are assembled
into a collective whole.
Requirements for Compilations

• There are three distinct elements needed to qualify for copyrightable compilation
o The collection and assembly of pre-existing materials, facts, or data
o The selection, coordination, or arrangement of those materials, and
o The creation, by virtue of the particular selection, coordination, or arrangement, of an original
work of authorship
Feist Publications v. Rural Telephone Service Co. US 1991 (p101)

• Facts: Rural had to create phone books under state regulations. Feist wanted to create a regional phone book
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and all the telephone companies except Rural gave them permission to use their information so F copied.
• Holding: No copyright in white pages b/c it did not satisfy the minimum constitutional standards for
copyright protection (“selected, coordinated, or arranged” from §101). The selection was merely
alphabetical…there is no creativity, just “typical, garden variety” arrangement.
• Notes: Rejected copyrights for “sweat of the brow” products. In factual works, protection only extends to
parts of work original to author, not facts themselves.
Roth Greeting Cards v. United Card Co. 9th Cir 1970 (p106)
• Holding: the phrases (“I love you”, “I Miss you”, etc) were not copyrightable, but the cards were infringing
b/c the “total concept and feel” of the cards were the same. (There was no claim for copyright in artwork.)
Mason v. Montgomery Data 5th Cir 1992 (p108)

• Holding: Mason’s maps were copyrightable b/c the selection, coordination and arrangement of the
information that he depicted are sufficiently creative to qualify the maps as compilations of facts.
Selection, Arrangement, and Utility

Facts and
Compil Bellsouth v. Donnelly 11th Cir 1993 (p292, L74)
ations • -Facts: D copied both directory listings and classification headings in yellow pages
• -Holding: No copyright b/c classifications were typical; arranged alphabetically, geographically (though one
may argue this is not necessarily typical)
CCC Information Services v. Maclean Hunter 2d Cir 1994 (p296, L74)

• -Facts: D republished P’s Red Book information in various forms through computer database
• -Holding: Copyright upheld b/c values were not reports of historical prices nor mechanical derivations of
such prices; fact that values were numbers was immaterial to originality; values were like opinions, based on
professional judgment and expertise; thus, selection and arrangement was sufficiently original
CDN v. Kapes, 9th Cir 1999 (p300) - what is a “fact”?

• -Facts: D developed computer program to generate retail prices from wholesale prices; D admitted using P’s
wholesale price lists
• -Holding: Copyright upheld; court analogizes to CCC and say CDN uses their judgment to distill and
extrapolate factual data to arrive at prices
Matthew Bender v. West, 2d Cir 1998 (p301, L76-77)

• -Facts: Star pagination case
• -Holding: No copyright of pagination/case info; pages determined automatically by computer
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Authorship
Who is an Author?
Intro There are three kinds of authorship

• Sole Authorship
• Joint or co-authorship
• Employer authorship of works made for hire
§201 - Ownership of copyright

• (a) Initial Ownership - Copyright in a work protected under this title vests initially in the author(s) of the
work. The authors of a joint work are co-owners of copyright in the work.
• (b) Works Made for Hire.— In the case of a work made for hire, the employer or other person for whom the
work was prepared is considered the author for purposes of this title, and, unless the parties have expressly
agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.
• (c) Contributions to Collective Works. . .
• (d) Transfer of Ownership . . .
• (e) Involuntary Transfer . . .
Sole Lindsay v. The Wrecked and Abandoned Vessel RMS Titanic SDNY 1999 (p111)
Ownership • Facts:∏ filmed and directed a British documentary film about the Titanic
• Holding: where a ∏ alleges that he exercised such a “high degree of control” over a film operation (lighting,
angles, etc) such that the final product duplicates his conceptions and visions of what the film should look
like, he may be said to be the author
o
•
Joint • §101 - A “joint work” is a work prepared by two or more authors with the intention that
Ownership their contributions be merged into inseparable or interdependent parts of a unitary
whole.
• Requirements:
o Two or more “authors” - each must contribute something independently
copyrightable
o intention to merge inseparable/interdependent parts of unitary whole (doesn’t have to
be simultaneous intention - e.g., music added to lyrics later)
• Joint Ownership- see §201(a) above
o Each co-owner has undivided ownership in entire work
o Can license or use whole work w/o consent of other joint owners EXCEPT: duty to
account for profits to joint owners and cannot grant exclusive license w/o consent of
all co-owners
1st requirement Erickson v. Trinity Theater Inc 7th Cir 1994 (p113)
• Facts: Erickson prepared three plays for theater, and after some time the theater stopped paying royalties on
performances; D argued it was co- author and co-owner b/c suggestions from Trinity actors were added
• Holding: No joint authorship b/c Trinity could not identify any copyrightable contribution made by its actors;
rejected Prof Nimmer’s de minimis test requires that only the combined product of joint efforts can be
copyrightable and upheld Prof Goldstein’s copyrightability test.
2nd requirement Aalmuhammed v. Lee 9th Cir 1999 (p114) -

• Facts: Lee directed movie Malcolm X. P reviewed the script and suggested revisions, also gave input as to
how to make the movie more authentic
• Holding: No joint authorship b/c no intent; a person claiming to be an author of a joint work must prove that
both parties intended that each other be joint authors. Creative contribution does not suffice to establish co-
authorship.
Works Made §101 - A “work made for hire” is—

for Hire • (1) a work prepared by an employee within the scope of his or her employment; or
• (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a
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Authorship
motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an
instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a
written instrument signed by them that the work shall be considered a work made for hire…
1909 Act
• Employee – presumption that the work prepared by employees within the scope of employment were works
made for hire
• Independent Contractor – presumption that commissioned works were made for hire
1976 Act
• §201(b) Works Made for Hire.— In the case of a work made for hire, the employer or other person for whom
the work was prepared is considered the author for purposes of this title, and, unless the parties have
expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the
copyright.
§105 - Subject matter of copyright: US Gov works
• no protection for US Gov works
• rationales: work is subsidized by taxes so don’t need copyright incentives, want to encourage public access
• consider Veek case (building codes); PubMed case (access one year after publication)
Who is an EMPLOYEE? Community for Creative Non-Violence v. Reid US 1989 (p119)

• Facts: CCNV conceived the idea about a nativity display and contracted Reid to do it, no talk of copyright
• Holding: Reid held to be an independent contractor (not an “employee”) so retained copyright
o There were about four different tests to determine whether the work was made for hire:
 Work made for hire if the hiring party retains control of the product (Right to control)
 If the hiring party has actually wielded control with respect to the creation of the work
(Actual Control)
 Common-law agency law meaning ***Court affirmed this test
 Formal salaried employee test
o Here the court determine that common law agency should govern and determined that Reid was an
independent contractor rather than an employee
Factors to consider when determining if someone is an employee under the law of

agency:
• Right to control manner/means by which product is accomplished, skill required, source of instrumentality,
location of the work, duration of relationship between the parties, hiring party’s right to assign additional
projects, amount of hired party’s discretion, if work is part of regular business of hiring party, method of
payment, tax treatment of the hired party, employee benefits, etc
EXAM NOTE: THERE MAY BE JOINT AUTHORSHIP IN A WORK FOR HIRE
Who is an Employee? Aymes v. Bonelli 2d Cir 1992 (p124)

• Facts: Bonelli hired Aymes to create computer program for a swimming pool business.
• Holding: although Bonelli had the right to control the manner of creation and the right to assign additional
projects, the other factors indicate that Aymes is an independent contractor
• This court held that 5 factors will almost always be significant in every situation
o The hiring party’s right to control the manner and means of creation
o The skilled required
o The provision of employee benefits
o The tax treatment of the hired party (this is a big factor even today)
o Whether the hiring party has the right to assign additional projects to the hired party
What is “SCOPE OF EMPLOYMENT? Avtec Systems, Inc. v. Peiffer 4th Cir 1994 (p127)
• Facts: Peiffer, who worked for computer company Avtec, developed computer software afterhours
• Holding: Not in scope of employment; employer couldn’t prove last two parts of Rest test below
o Restatement §228 - tripartite test:
 Whether work was of type the employee was hired to perform
 Whether creation occurred “substantially w/in the authorized time and space limits” of
job
 Whether employee was “actuated, at least in part, by a purpose to serve” employer’s
purpose
10
Acquiring, Keeping, and Transferring the Rights of CR
Registration Registration
• Under the 1976 Act, registration is voluntary
• However, the copyright owner must register and deposit copies of the work before filing an infringement
action ( §411) and for statutory damages or attorneys’ fees ( §412)
o No jurisdiction in federal courts until application for copyright is filed with the copyright office
(except for foreign authors who can get jurisdiction in fed court without registration)
o If registration is denied, notice must be served on Register of Copyrights and Register may
intervene under §411
• Advantages
o Evidentiary benefits
o Jurisdiction
o Expanded remedial options (statutory damages, attorney fees)
Deposit of a copy of the work with the designated entity

• 1976 Act
o §407 – every person who published something in the US is required to submit two copies of “best
edition” to the library of congress; if no deposit, a demand can be made (punishable).
o §408 – what has to accompany the registration (application, deposit to show the copyrightable
work, check)
o Function of the deposit – one of the reasons copyright began in the first place and this is how the
library of congress came to be
Notice Berne Convention 3/1/ 89 – ELIMINATED notice requirement

• Breakdown:
o Published before 1/1/78: no notice = no copyright (1909 Act)
o Published on or after 1/1/78: no notice = no copyright but 5 yrs to fix under §405(a)
o Published on or after 3/1/89: notice is optional (§§ 401-406)
• General
o §401(b) - Form of notice
o Copyright (©, Copr., Copyright)
o Year of first publication
o Name
o §405 – Remedial provisions (how to remedy a mistake)
• Principle Functions of the notice formality
o Had the effect of placing in the public domain a substantial body of published material that no one
was interested in copyrighting b/c the authors of such materials could simply omit the required notice
o It informed the public of whether a particular work was copyrighted
o It identified the copyright owner
o It showed date of publication
Presence of © notice will defeat an innocent infringement defense
Publication Publication
• Prior to the 1976 Act unpublished works were protected by state common law and publication of such works
destroyed the common law rights. An author could choose to come under federal law for protection, however
if upon publication he failed to comply with the formalities, both common law and federal law protection
were lost. If there was publication without proper notice, the author would lose protection (this is how the
general v. limited publication test came about)
What is a Publication: Estate of Martin Luther King Jr., Inc. v. CBS, Inc. 11th Cir 1999 (p144) -
• -Facts: summary judgment granted that held Dr. King’s speech in 1963 was a general publication
• -Holding: reversed; a performance, no matter how broad the audience, is NOT publication
General publication (rights divested) – When a work was made available to members of the public at large without
regard to their identity or what they intended to do with the work. Public performance or display is not said to be
considered a publication.
• Occurs when
11
o Publications were published such that the public had dominion and control
o Publication such as to permit unrestricted copying of the work by the general public
Limited publication (non-divesting) – Communicated the contents of a work to a select group and for limited
purpose, and without the right of diffusion, reproduction, distribution, or sale.
HYPO: What about publishing work on website? Is this publication?

• For publication:
o A general publication can occur in such a manner as to permit unrestricted copying by public
• Against publication
o Anyone can publish
o There is not really distribution, although you can argue that copies are being made in various
servers
• Could some works be treated different? – if you have to pay to get into the site or need a log in, maybe the
works can be said to be more restricted
Duration • Duration
o Works created today: Life of author + 70 yrs. For corporation, 95 yrs from publication or 120 yrs
from creation, whichever is shorter.
• 1790  14 year term for works published with notice, running from registration extended for another 14
SEE UC years if renewal was timely filed
234!!! • 1831  Extended to initial term to 28 years
• 1909  Extended renewal term to 28 years
• 1976  Changed basic term of 56 years to life of author + 50 years
• 1998  Extended terms of all copyrights by 20 years and changed basic term for new works to life plus 70
• See §§ 301-305
PublishedwithProper Notice Fixed
1923 1964 1/1/1978
Soleandjoint author:
28 –year term, 95yearsrenewal
•Lifeof theauthor +70
extendedto95years automatic
years
if renewal wastimely
filed
Anonymousand
pseudonymousworksand
worksmadefor hire:
•120 yearsfromcreation or
•95yearsfrompublication
(whicheverisshorter)
• Unpublished works (see §303)
o Taking away perpetual protection from the unpublished work
o Congress wanted to serve public by trying to encourage authors to publish their work
12
Unpublishedpriorto1/1/78 and not Unpublishedprior to1/1/78 and
publishedbefore12/31/2002 publishedbefore12/31/2002
Soleandjoint author: Soleandjoint author:

•Lifeof theauthor +70 years, BUT •Lifeof theauthor +70 years, BUT
noearlier than12/31/2002 noearlier than12/31/2047
Anonymousandpseudonymous Anonymousandpseudonymous
worksandworksmadeforhire: worksandworksmadefor hire:
•120 yearsfromcreation or •120 yearsfromcreation or
•95yearsfrompublication(which •95yearsfrompublication(which
everisshorter) ever isshorter)
BUTno earlier than 12/31/2002 BUTno earlier than 12/31/2047
Bright Line Rules
• Before 1923 – anything published before 1923 is in the public domain and nothing else is going to enter the
public domain until 2018
• After 1923 – could get statutory protection by publishing an unpublished work
• For the most part 1976 Act abolished common law copyright (except for unfixed work)….there is no case law
for this
• Everything prior to 1950 were works that were in their initial term at the time the 1976 went into effect…if
properly renewed the Act brought them into the longer protection
• For works after 1950 and before 1964 require the renewal. Automatic renewal applied to works after 1964
Eldred v. Ashcroft US 2003 (p159)

• -acts: This case sought constitutional review of the CTEA under the copyright clause and first amendment
free speech. CTEA increases the terms of copyrights by 20 years. The ∏ believed the 20 year extension
offended the “limited times” provision of the Const and would result in robbing the public from the work b/c
the public would not be able to utilize the work for an extra 20 years (once the work is in the domain you are
promoting science)  QUID PRO QUO ARGUMENT
• Holding: The 20 year extension of CTEA is constitutional b/c congress has the power to decide how the
sciences will be promoted and this was a proper means to the end. Also, CTEA put the US at par with the
rest of the world, was passed b/c of changes into technology, demography, and economy. Also, regarding the
first amendment, the two built-in safeguards are still in place: ideas are still available (idea/expression
dichotomy) and fair use is also.
Transfer RENEWAL AND TERMINATION OF TRANSFERS

For: Renewal:
Licensing • 1909 rules were incorporated into §304(a) but applies only to works created before 1/1/78:
and New • 1st term is 28 yrs, renewal (2nd) term is 67 yrs which automatically reverts to author/family
Media - look • Renewal of these works will be in force until 2072!
• Procedure: file for renewal during 28th yr of 1st term (filed by anyone but must be in the name of one entitled
to the to renew term)
intent of Stewart v. Abend US 1990 (p170, L250)
Parties - • Facts: Woolrich created “It had to be murder” in 1942, he assigned his rights including the renewal term to
See UC 223, De Sylva Productions, who then assigned the rights to Stewart. However, W died and b/c his administrator,
236, 239 Chase Bank, renewed the copyright and assigned the renewal rights to respondent Abend. Abend then sued
Chart Stewart for infringement claiming the right to use the film terminated when W died before renewing
• Holding: The assignment of renewal rights by an author does not defeat the right of the author’s statutory
successor(s) to those rights if the author dies before the renewal right vests. In other words, when the grant of
rights in the preexisting work lapses, the right to use parts of it in the derivative work ceases and continued
use will infringe the preexisting work
• Notes: The renewal right was intended to give a “second bite to the apple” b/c in many instances the
copyright owner was in a poor bargaining position and would see himself as forced to assign all rights of the
copyright. (…termination would be essentially a third bite)
13
Transfer of a copyright
• §201(d)
o allows copyright owner to transfer less than the full ownership interest in the copyright
o provides that each of the exclusive rights set forth in §106 (i.e., reproduction, adaptation,
publication, performance, and display) may be infinitely subdivided and owned and enforced
separately
• §204(a) - “transfer of copyright ownership…is not valid unless…in writing and signed by the owner”
Termination of a transfer PUSHMAN!!!!

• Upon the effective date of termination, all rights covered by the terminated grants revert to the author or
others owning termination interests, subject to certain protections for those who prepared derivative works in
reliance on the original right
• If you convey a painting, you only have conveyed the physical object, NOT the copyright in it (explicitly
stated in 1976 act  you have to convey IP explicitly)
• Transfers before 1/1/78  §304(c) and (d) (TRANSFER MADE BY AUTHOR OR OTHER)
o Who can terminate?
 If the grant was by author, termination by author, widow, children, etc, and executors.
 If the grant was by someone else, all surviving grantors are required to terminate
o When can they terminate?
 §304(c) - 5 yr window beginning at the end of the 56th year from the date of copyright or
1/1/78, whichever is later
o §304(d) - 5 yr window beginning at end of 75 years from date of copyright
 can ONLY be used 1) if the termination rights under §304(c) expired before 10/20/98
(effective date of CTEA) and 2) if the right provided in §304(c) was not exercised
o Must serve notice no more than 2 and no less than 10 years before termination date
o Derivative works - can use if prepared under the grant and before termination (CANNOT
CREATE NEW WORKS AFTER TERMINATION)
o DOES NOT APPLY TO WORKS MADE FOR HIRE OR TRANSFERS BY WILL
o The policy concern here is who should benefit from the lengthening of the renewal terms of 19
years under the 1976 Act and the additional 20 years of CTEA.
• Transfers on or after 1/1/78  §203 (TRANSFERS MADE BY THE AUTHOR ONLY)
o Who can terminate? Author, widow, children, etc., executors
o When can they terminate? 5 yea r window beginning at the end of 35 years from the execution of
the grant
o Exception – if the grant covers a the right of publication, then the window opens 35 years from the
date of publication or 40 years from the date of execution (whichever is earlier)
o Derivative works - can use if prepared under the grant and before termination (CANNOT
CREATE NEW WORKS AFTER TERMINATION)
o DOES NOT APPLY TO WORKS MADE FOR HIRE OR TRANSFERS BY WILL
o The policy concern here is that Congress wanted to give authors a second opportunity to obtain
remuneration for their creative works
14
Statutory Rights of Copyright Holders (Chapter 5/6)
Statutory Rights of CR Holders
• Exclusive Rights: the limited statutory monopoly granted by the Act.

Exclusive • Sticks for all categories of works include the right to:
Rights o reproduce the work
o prepare derivative works based on the work
o publically distribute copies of the work
• For certain categories of works, the rights include:
o public display of the work and/or right to publically perform the work
• Other categories, like sound recordings:
o limits the right of public performance to performance by digital transmission
§106 – Exclusive Rights in Copyrighted Works
• Subject to §§ 107-122, the owner of copyright under this title has exclusive rights to do and to authorize any
of the following:
o Basically - (1) reproduce, (2) prepare derivatives, (3) distribute copies, (4) public perform, (5)
public display and (6) public performance by digital means
Prima Facie Case of Infringement

Proving Two elements of infringement
Infringe • Ownership of the valid copyright
o A certificate of registration issued before publication or within 5 years after the first publication of
ment
the work is prima facie evidence of ownership of the copyright work and its validity
o There is an evidentiary presumption of validity in a registered copyright
o There is still a requirement of registering the copyright before filing suit
• Violated one if the exclusive rights of the copyright owner under §106 (copying by the ∆)
o P must show ∆ obtained the protected expression and used it in the ∆’s work, AND
o P must show that the ∆’s work does not just represent ∆’s independent expression that
coincidentally resembles P’s work (copying in fact)
• Relevant Inquiry
o Whether ∆ copied P’s work
o Whether ∆ copied a sufficient amount of P’s protected expression to constitute infringement
Copying in Fact - ACCESS And SIMILARITY
• Need to show that ∆ had access to P’s work and the degree of similarity between the works
o Inverse ratio rule: The more you have of one the less you need of another, but limited. If you have
no access, similarities do not matter, and if you have no similarities, access does not matter.
• ACCESS
o Evidence that can be used to prove access
o Direct evidence (hard to find/have)
 An admission that the infringer copied (you would do this when you have an affirmative
defense “I copied, but I did not infringe b/c of X”, or when you are arguing that the ∏’s
work is not protected)
 Eye witness to show that there was copying
o Circumstantial evidence
 Wide dissemination can suggest access….look at all the events and establish proof of
access
o Why is proving access so important?
 Without proof of access you need to show very high levels of similarity
 If there is ABSOLUTELY no access, then the later work can be an independent creation,
which would receive copyright
• SIMILARITY
o If the two works are not similar and there is all the access in the world, there is no copying.
o With circumstantial evidence, you can show that you are creating something unique that deviates
from what is in the public domain, and if there is another work with unusual similarities to your work,
then you can argue copying.
Damages
• Statutory if registered, actual damages (loss in sale, etc), injunctive relief (prevent the work from being
15
played, performed, etc)
Three Boys Music Corp. v. Michael Bolton 9th Cir 2000 (p315)
• Facts: Isley Brothers (P) alleged that Bolton copied a somewhat obscure song in making his own song
• Holding: Copying upheld; evidence indicates that there was substantial access of the work through
dissemination and testimony from D that he himself had listened to P’s works; subconscious copying can be
accepted (Learned Hand); strict liability so not consideration for intent!
o Striking Similarity – similarity for which there can be no other explanation other than copying
 Could not have independently created or mere coincidence, there was no prior source
 One thing to keep in mind is that two works may be strikingly similar b/c they are both
copies of a work in the public domain instead of each other.
Selle v. Gibb 7th Cir 1984 (p318, L411)

• Facts: P allege D copied P’s song but song play was limited to Chicago area and D created song in France
• -Holding: No coping; even striking similarity is not enough to infer access without more; here no proof of
access at all and no striking similarity as material was commonplace, lacking complexities
• When analyzing striking similarity, look at the uniqueness of the selections that are asserted to be similar.
An unexpected departure or an error in both works can serve to show this
Ty Inc v. GMA Accessories Inc. 7th Cir 1997 (p320, L411n21)

• -Facts: Ty manufactured Beanie Babies but D denied access to P’s pig.
• -Holding: Access upheld b/c the pigs were very similar to each other and not to anything in the public
domain, D was in same business, P’s beanie babies were well known.
Bouchet v Baltimore Ravins 4th Cir 2001 (p324)

• -Facts: P showed papers trail in routine business and showed regular contact between offices
• -Holding: Copying found; striking similarity was sufficient to sustain verdict where access was possible
Defenses Defenses
• Invalid copyright
• Independent creation
• Authorized by license
• Copied but excused under an exception (fair use, first sale, etc in §§ 107-122)
As defense attorney
• you can find the same composition of notes in other works and argue that this was scenes a faire.
• Could have copied from the public domain instead of the P’s work. (See STRIKING SIMILARITY in 3 Boys,
below)
• There was independent creation
• There was no access of the work b/c ∆ was isolated for X number of years
Innocent infringer
Any person who innocently infringes a copyright in reliance upon an authorized copy from which the copyright
notice has been omitted and which was publically distributed by the authority of the copyright owner incurs no
liability for actual or statutory damages for an infringing act committed before receiving actual notice that
registration of the work has been made if such person proves that he or she was mislead by the omission notice.
See §405(b).
First Sale Doctrine - Defense for Distribution right - see Distribution Right - Below
Fair Use
Parody - Satire
The §106(1) - exclusive right to reproduce the copyright work in copies or phonorecords (or authorize)
Reproductio The Substantially Similar Copy
• P must show that the ∆ copied protectable expression
n Right
• This is a question of fact
Elements of a claim for copyright infringement (Basically the 2nd circuits view)
1. Ownership of Copyright
16
2. Unauthorized exercise of a right under §106
a. Did the ∆ copy the P’s work?
i. Direct evidence (admission by deft, or documentary/testimonial evidence) or
ii. Circumstantial evidence consisting of
1. Access
2. Probative similarity  summary judgment stops here
b. AND did the ∆ improperly appropriate the P’s work
§108 - exception
• that allows libraries to reproduce copies or phonorecords of a work or to distribute such copies if it is not for
commercial purposes, the library is open to the public, and a copyright notice is placed on the copy. Also
allows for the reproduction and distribution of unpublished works for the purpose of preservation of the work.
Can also reproduce published works solely to replace a damaged, deteriorating, or lost copy.
• These activities are limited as to not become substitutes in the market for copyrighted works
COMPARISON OF 2nd VS 9th Cir:

• 2nd Cir does more filtration and taking out unprotected elements as a legal matter
• 9th Cir does extrinsic copying, expert testimony at front end of analysis
• But same goal: what is protectable and how does it compare
Summary of substantial similarity or improper appropriation

• Abstraction
• Ordinary observer
• Extrinsic/Intrinsic
• Total Concept and Feel
• Indented audience –
o Children for the Kroft case.
o Confusion is more of a trademark issue, not copyright.
• More discerning observer
• Abstraction/Filtration/Comparison
EXACT COPY
• Types of copying cases
o Piracy cases (e.g., D burns 5,000 unauthorized copies of cds)
o Privileged cases - where D engages in privilege conduct and infringement hinges on rules that
govern defenses afforded in copyright law (e.g., D alleges his conduct is excused by §107 for fair use)
o New third group has risen from technology changes
 Example – copies that are made automatically (e.g. copies that are made in RAM when
you install software - MAI Systems v. Peak)
– Congress amended §117 to authorize third party service organizations to
maintain or repair any computer that lawfully contains and authorized copy of
the software BUT scope is limited
Ephemeral Copies (p363)
• Congress considers ephemeral copies to include copies or phonorecords of a work made for purposes of later
transmission by a broadcasting organization legally entitled to transmit the work
• §112(a) exempts a transmitting organization entitled to transmit a display or performance of the work to the
public from liability for making one copy or phonorecord
o Conditioned on the organization refraining from making any other copy and is limited to use of
the copy solely for the transmitting organization’s own transmission within the area
o THIS EXCEPTION DOES NOT APPLY TO MOTION PICTURES AND AUDIO VISUAL
WORKS
• §118 has an additional exception for a public broadcasting entity
Classic cases
Nichols v. Universal Pictures 2d Cir 1930 (p326, L414)
• -Facts: play with Jewish/Catholic; alleged substantial similarity of a Jewish/Catholic movie
• -Holding: No infringement; the common plot is like an idea, and the characters and expression are different
in each work (idea/expression dichotomy); characters can be protected, but the less developed they are the
less they can be copyrighted (think of a drunk, a prostitute…these are scenes a faire); abstraction test: the
court looked at the plot, then the subplot, the general characters, the specific character elements, and the
precise literal text
o Two part tests - must prove:
17
 Copying from P (expert testimony okay)
 “Illicit Copying” - If copying shown, then whether the copying amounted to an improper
appropriation (relates to ordinary lay hearer’s response; expert testimony is irrelevant)
Arnstein v. Porter 2nd Cir 1946 (p330, L422)

• -Facts: P alleged that ∆’s work was a plagiarism from his songs. Some of the songs alleged to be infringed
had been widely disseminated; some had never been published or publically performed
• -Holding: Remanded b/c P had at least raised issues of access.
Sid & Marty Krofft Television Production Inc. v. McDonald Corp. 9th Cir 1977 (p333, L422)
• -Facts: HR Pufnstuf vs McDonaldland TV commercials
• -Holding: Infringement upheld; the intrinsic test is the appropriate test to use b/c ∆’s do not dispute they
copied the idea. The facts show that the ∆’s work captured the total concept and feel of P’s work, so a
finding of infringement was not clearly erroneous
o Extrinsic Test – tests for similarity of ideas and does not depends on the responses of the trier of
fact. Can look at criteria such as the type of artwork, the materials used, the subject matter, setting,
etc. Also, analytic dissection and expert testimony are appropriate and this is a question that can be
decided as a matter of law
o Intrinsic Test – tests for similarity in expression and depends on a reasonable person. Here,
expert testimony and analytic dissection are irrelevant.
Contemporary Cases
• Summary judgment - A court may determine non-infringement as a matter of law on a motion for summary
judgment when the evidence is so overwhelming that a court would be justified in ordering a directed verdict
at trial, it is proper to grant summary judgment
Steinberg v. Columbia Pictures Industries SDNY 1987 (p336)

• -Facts: D admitted to have referred to P’s New Yorker cover when designing the poster for Moscow movie.
• -Holding: Summary judgment granted; access and enough similarity even though not identical duplication
Boisson v. Banian 2d Cir 2001 (p341, L425n78)
• -Facts: alphabet quilt case
• -Holding: Copying upheld; even tho the alphabet is in the public domain, arrangement/shapes/colors must be
considered & court finds “enormous amounts of sameness”; a more discerning ordinary observer test applies.
Computer Associate International, Inc. v. Altai, Inc. 2d Cir 1992 (p345, L417)
• -Facts: At issue is D’s software which was developed by simply telling programmers the functional
requirements; P argued software was same “structure” even if no direct copying of program code
• -Holding: No infringement; in abstraction-filtration-comparison test, comparison part looks for substantial
similarity; in this case, a comparison of the two works after filtration revealed that virtually no line of code
was identical in the works, that a few of the lists and macros were similar, but the rest were either in the
public domain or dictated by functional concerns.
Cavalier v. Random House 9th Cir 2002 (p349)

• -Facts: Cavalier developed children story books and presented them to Random House, who rejected them
and later on published its own books
• -Holding: affirmed in part, reversed in part, and remanded
o LAW ON SUMMARY JUDGMENT
 Although summary judgment is not highly favored in issues of substantial similarity, it is
appropriate if the court can conclude after viewing the evidence and drawing inferences
in a matter most favorable to the non-moving party, that no reasonable juror could find
substantial similarity of ideas and expression
 On summary judgment only the extrinsic test matters for the comparison of literary
works. If the Cavaliers show issues of fact under extrinsic test, then the SJOL motion
must be denied
o TESTS - 9th cir moves closer to other circuits by modifying its extrinsic/intrinsic test
 Extrinsic Test - objective comparison of specific expressive elements that focuses on
similarities between the plot, theme, dialogue, mood, setting, pace, characters, etc
– Encompasses all objective manifestations of expression
– The court must disregard the non-protected elements when applying this test
 Intrinsic Test – subjective comparison that focuses on whether the ordinary, reasonable
audience would find the works substantially similar in the total concept and feel of the
18
works
o Comparison of the Literary Works
 On summary judgment, only the extrinsic test matters for comparison of literary works.
If the Cavaliers show issues fact under the extrinsic test, then the inquiry of the intrinsic
test is left to the jury
 Basic plots and ideas are not protected under copyright law. Also, here the sky, the
setting, etc are all scenes-a-faire and the mood, pace, and dialog of the stories is different
 There is no issue of fact on whether the literary works are substantially similar under an
extrinsic test
o Comparison of the Individual Art Works
 The court looked at the moon light in the back cover
– The concept of the built-in light is not copyrightable, but the choice of where to
place the light, the smiling face of the moon, the encircled star “on” button, etc
is. - differences do not support SJ for D
 The illustration of the stars relaxing on clouds
– The facial features and curves of the stars are different, but there are striking similarities
in the arrangements of the clouds, the dress of the stars, etc to survive the question of SJ
 The illustration of the stars being polished
– Not enough similarities to go to jury
Swirsky v. Carey 9th Cir 2004 (p354)
• -Facts: P alleged that D’s song infringed P’s song; summary judgment was granted for D based on P’s expert
testimony relating to the substantial similarity of the songs
• -Holding: Reversed SJ; extrinsic test for similarity of ideas and expressions is measured by external, objective
criteria; here expert’s methodology was not inherently unsound, court cannot compare pitch sequences and
disregard other elements of compositions, and scenes a faire analysis did not consider the different fields of
music and different time signatures.
Marobie FL v. National Association of Fire Equipment Distributors ND Ill. 1997 (p360) EXACT COPY
• -Facts: P developed software clip art. NAFED obtained copies from unknown source and posted on webpage.
• -Holding: Granted SJ for P b/c as a matter of law, innocent infringer defense may only be raised when
infringer relied on an authorized copy that omitted the © notice; here the reproduction right took place
when the clip art was downloaded to a server or unto a computer.
The §106(3) - exclusive right to distribute copies or phonorecords to the public by sale, transfer, rental, lease, or lending
Distribution (or authorize); see §101 “publication” - includes offer to distribute.
• Even single copy can suffice!
Right
• Often goes with reproduction right (unauthorized copy) but flexibility to sue distributer rather than copier.
Marobie FL v. National Association of Fire Equipment Distributors ND Ill. 1997 (p360, immediately above)
• -Holding: The placing of files on the web violate the exclusive right to publically distribute clip art
Hotaling v. Church of Jesus Christ of Latter-Day Saints 4th Cir 1997 (p365, L318n146)
• -Facts: D obtained authorized copy of P’s microfiched genealogy for main library and made copies for branch
libraries; after complaint from P, D destroyed copies but a paper copy was found by P and main library
retained an unauthorized copy allegedly b/c it had inadvertently destroyed original copy.
• -Holding: Reversed SJ for D in part; AN OFFER TO DISTRIBUTE IS SAME AS DISTRIBUTING; library
added work to its collection, listed the work in the index or catalog system, and made the work available to
the borrowing or browsing public.
The First §109(a) . . . the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized
Sale by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the
Doctrine possession of that copy or phonorecord . . .
Notes:
• Affects only right to distribute, no other rights under §106.
• Does not apply where there is no privity of contract or where you are not the owner, but for example you are
a licensee (think of the software context)
Why is the first sale doctrine important?
• Alienation of property
• From a commercial standpoint, it gives way to new businesses (bookstores, amazon.com, ebay, etc)
• Avoid waste
Limits on the First Sale Doctrine (p371)
• The first sale doctrine does not apply to rental of sound recordings and computer programs (L323)
19
o §109(b) – provides that owners of phonorecords could not for the purposes of direct or indirect
commercial advantage, dispose of, or authorize the disposal of the phonorecord by rental, lease, or
lending. This section also encompasses rental of computer software
o The statute however, does not prohibit rental, lease, or lending of phonorecords or computer
programs by nonprofit libraries
• The policy behind this is the ease of copying and distribution of these works due to technological
advancements and the economic impact of such copying (not very costly to reproduce)
• Video games and books on tape DO come under the first sale doctrine
Bobb-Merrill Company v. Straus US 1908 (p369, L319n153) - First Sale Doctrine - codified in §109(a)
• -Facts: Bobb-Merrill placed a notice on novel Castaway that it could not be sold for less $1; P sold books to
wholesaler who sold book to D; D sold book for less than $1
• -Holding: there is no right to impose such notice as to limit the price at which the book will be sold to those
with whom there is no privity of contract
Unauthorized Importation and the First Sale Doctrine

• §602(a) - Importation into the United States, without the authority of the owner of copyright under this title,
of copies or phonorecords of a work that have been acquired outside the United States is an infringement of
the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501.
Exceptions include private use, government use, education, etc
• Judicially construed to be limited by §§ 107-122 (Quality King, below); if goods are made abroad and
imported, then goods may be barred under §602(a) since such goods would not be “lawfully made until this
title” under § 109.
Quality King Distributors v. L’anza Research International US 1998 (p378, L326)
• -Facts: P has copyright on labels of shampoo; P sells to domestic distributors who agree to sell within limited
areas and to foreign markets; goods were sold from P in US to UK and eventually back to D in the US.
• -Holding: 1st sale doctrine applies; where a product is lawfully manufactured in the US for export and subject
to valid 1st sale, its subsequent reimportation is permissible under §109 and thus not w/in prohibition of
§602(a); consider contract law options
RIGHT TO RIGHT TO PREPARE A DERIVATIVE WORK

PREPARE A • §106(2) - exclusive right to prepare derivative works based upon copyrighted work (or authorize)
• §103(a) of the copyright act makes clear that a derivative work meeting the statutory standard of §102 is
DERIVATIVE
independently copyrightable and under §101 the underlying work must be recast, transform, or adapt (de
WORK minimis) to result in a derivative work
• B/c some degree of copying takes place in a derivative work, it is difficult to determine whether the
derivative or the reproduction right has been infringed
• Whether a work has be fixed to infringe is an open question, some legislative history seems to indicate that
fixation is not required and finds support in this assertion for this in that the derivative right is broader than
the reproduction right, which does require fixation.
Paul Goldstein (p386)
• Believes that derivate rights affect the direction and level of investment in a copyrighted work and looks at
the problem from an economic standpoint by saying that an author will invest more in his work if he can have
all the markets and benefit from them
• The problem with this analysis is that it only works for expected markets. Once we start asking about
unexpected markets and people coming up with new uses that the original copyright owner would not have
thought of.
Castle Rock Entertainment v. Carol Publishing 2d Cir 1998 (p387)

• -Facts: P produces Seinfeld. D published the SAT, a trivia game regarding Seinfeld
• -Holding: Infringement b/c the SAT borrows exclusively from Seinfeld, it is likely to fill a market niche that
P would in general develop and here there was no parody; court uses substantial similarity test, see below
Possible Tests to determine if there was infringement
• Substantial Similarity Requires that the copying be quantitatively and qualitatively sufficient to support
the legal conclusion that infringement has occurred.
o The qualitative component concerns the copying of expression, and the quantitative component
concerns the amount of copyrighted expression that is copied, which must amount to more than de
minimis.
o Here more than de minimis copying satisfying the quantitative threshold and SAT copied
expression from Seinfeld satisfying the qualitative requirement (e.g. questions of SAT are not of the
actors or the number of days it took to shoot the series, but of the characters and events in Seinfeld)
20
• Ordinary observer test - two works are substantially similar where the ordinary observer, unless he set out
to detect the disparities, would be disposed to overlook them and regard the aesthetic appeal of the two works
the same
o Here we have a TV series and a book so this test does not really help. There is of course the aesthetic appeal of the cover of
the books which is a plain copy of Seinfeld
• Total concept and feel test analyze the similarities in aspects such as the theme, characters, plot, sequence,
pace, setting etc of both works
o Argued by D but here we have different media and genre, so this test is not helpful
• Fragmented literal similarity test – focuses upon copying of direct quotations or close paraphrasing
• Comprehensive non-literal similarity test – analyze whether the fundamental essence or structure of one
work is copied on another
Policy
• it would not serve the ends of copyright law if artists were denied their monopoly over derivative versions of
their creative works b/c they made the decision not to saturate those market
Dam Things from Denmark aka Troll Company v. Russ Berrie & Company 3d Cir 2002 (p391, L270)
• -Facts: D manufactured trolls under license from P’s licensee; licensee went bankrupt and D continued to
make trolls using molds from P but D claimed he eventually modified trolls; prel injunction was issued
• -Holding: Remanded to consider whether D’s trolls where derivatives or even copies of P’s restore work
• The standard for “substantial similarity” for infringement is subtly different and separate from the test for
“minimal creativity” in assessing whether a derivative was created
• §104A(d)(3)(A) creates an exception b/c the creator of the derivative work based upon a restored work is
considered a licensee
Modes of Transformation Mirage Editions v. ART 9th Cir 1988 (p396, L302) -
-Facts: D purchased books, cut out artwork, and made ceramic tiles
-Holding: Infringement of derivative right; held that D had “recast” or “transformed” images;
no bar by 1st sale doctrine b/c doctrine only applies to distribution right, not derivative right
Modes of Transformation Lee v. ART 7th Cir 1997 (p398, L303)
• Facts: same facts as Mirage above
• Holding: No infringement b/c derivative work was not “prepared” in tiling process and titles were not
independently copyrightable; court analogizes to framing of a painting
• Notes: rule from 9th Cir would create weird results (e.g. notes in text book creates a derivative)
Required Form Lewis Galoob Toys v. Nintendo of America 9th Cir 1992 (p401, L301)
-Facts: Game Genie allows the player to alter features of a video game by blocking a value
and replacing it with a new value; does not alter the date that is stored in the game cartridge
and its effects are temporary
-Holding: No derivative work in this case b/c game itself was not recast, transformed, or
adapted and did not incorporate any portion of the copyrighted work; Game Genie serves
only to enhanced but a derivative work must incorporate the protected work into some
concrete or permanent form - BUT SEE MICROSTAR, below.
Required Form Micro Star v. FormGen Inc 9th Cir 1998 (p403, L301)
• -Facts: user-created levels on Duke Nukem video game were downloaded and sold on CD by D; levels where
MAP files with did not contain any of the copyrighted art images but were instructions about where to place
et art pulled from source library
• -Holding: Infringement b/c audiovisual displays from MAP files constituted derivative works (analogy to
sheet music); a derivative work must exist in a concrete or permanent form and must substantially incorporate
protected material from the preexisting work (this is a transition point….this is not really said in the
GALOOB case and appears to do away with incorporation requirement)
Public • §106(4) – exclusive right, in the case of literary, musical, dramatic, and choreographic works, pantomimes,
Performanc and motion pictures and other audiovisual works, to perform work publically (or authorize)
• §106(5) – exclusive right, in the case of literary, musical, dramatic, and choreographic, works, pantomimes,
e and
and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other
Display audiovisual work, to display the work publically (or authorize)
Rights • §106(6) - exclusive right, in the case of sound recording, to perform the work publically by means of digital
audio transmission (or authorize) - NOTE: no right to public “display”
• §101
o To “perform” a work means to recite, render, play, dance, or act it, either directly or by means of
any device or process or, in the case of a motion picture or other audiovisual work, to show its images
in any sequence or to make the sounds accompanying it audible
o To “display” a work means to show a copy of it, either directly or by means of a film, slide,
21
television image, or any other device or process or, in the case of a motion picture or other audiovisual
work, to show individual images non-sequentially
o “Publicly” means (1) to perform or display it at a place open to the public or at any place where a
substantial number of persons outside a normal circle of the family and its social acquaintances is
gathered, or (2) 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 are capable of receiving the performance or display receive it in the same place or in separate
places and at the same time or at different times
• Limitations: (includes all of §107-§122 but main limitations below)
o §107 - fair use
o §109(c) allows someone who owns a copy of the copyright work to publically display the work to
viewers present at the place where the copy is located.
 Does NOT apply to cases where the person has obtained possession of the copy from the
copyright owner through rental, lease, loan, or otherwise, without acquiring ownership of
it - §109(d)
o §110 - Exemptions of certain performances and displays (L334)
 (1) - Education (face-to-face) and (2) - Distance learning
 (3) - Religious service and (4) - Certain non-profit performances
 (5)(A) - Homestyle exception: transmission of a single receiving apparatus is ok unless
you directly charge for viewing the transmission or if you further transmit the
transmission to the public
 (5)(B) - Business exception: transmission ok but cannot charge admission or retransmit,
have to meet certain area limitations or limit number of speaker/tv size; conflict with
foreign systems!
 (6) - Agricultural and Horticultural Fairs
 (7) - Retail sales of sheet music and phonorecords
 (8) - Transmission of non-dramatic literary works for Handicapped
 (9) - Transmission of dramatic works for Handicapped
 (10) - Veterans and Fraternal Organizations
 (11) - Allows individuals to skip objectionable content in
authorized movies (ClearPlay technology)
o Limitations on music/sound recordings - § 114 and §115 (below)
o §111 - Compulsory License for cable retransmission;
o §119 - Compulsory License of satellite retransmission
Public Performance Columbia Pictures v. Redd Horne Inc. 3d Cir 1984 (p428, L332)
• -Facts: D operated video store with in-store viewing rooms
• -Holding: Public performance found b/c store was public so size/composition of audience was irrelevant (if
place is not public, then size/composition is determinative); no 1st sale defense b/c D retain dominion and
control of the tapes (not the same as renting or leasing the work after purchasing it)
Public Display Ringgold v BET 2d Cir 1997 (note p432) -
• -Facts: Poster displaying work used in background scene on a TV program
• -Holding: No dispute as to “copying” so focus on deminimis use and fair use; poster was a focal point in
scene
Copyright Overview (p444)

and The • Any piece of recorded music has two copyrights: (1) musical work and (2) sound recording.
o Music work: sheet music with lyrics if any, recording or videotape of song, piano player roll
Music
o Sound recording (§101): fixation of a series of musical, spoken, or other sounds, but not including
Industry
the sounds accompanying a motion picture or other audiovisual work, regardless of the nature of the
material objects, such as disks, tapes, or other phonorecords, in which they are embodied
• Harry Fox licenses the right to record and reproduce in phonorecords (i.e. fixed sound recordings) millions of
musical works as well as the right to distribute them; includes synchronization licenses for putting music to
motion picture
• Mechanicals b/c they involved the mechanical reproduction of musical works
• Copyright owners of musical works have the right of public performance, therefore permission will be needed
from them if no other exception applies. HOWEVER, there are collective rights organizations (CRO) that
have licensed the right to administer public performance rights and can authorize public performances for
millions of copyrighted works
• Example: Radio stations engage in public performance of both musical work and sound recordings
o For the musical work they will have to pay a compulsory license.
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o No general public performance right for sound recordings.
 If the performance is by means of digital audio transmission (e.g. webcasting), then
authorization for the sound recording is necessary - §106(6).
 There are no CROs for sound recordings, so you would have to get permission from the
copyright owner if one of the exceptions does not apply to your public performance
• Example: Cover band in restaurant
o Restaurant needs license for musical work under §115 (can get blanket license from CRO)
REPRODUCTION, PUBLIC DISTRIBUTION, AND DERIVATIVE WORK ISSUES

• SEE TABLE P445 FOR INTERPLAY OF RIGHTS AND LIMITATIONS!!!
• Musical Works and § 115 (p447)
o “Mechanicals” compulsory license - applied to any phonorecord and includes distribution of
phonorecords through digital download
o digital phonorecord delivery (DPD) = each individual delivery of a phonorecord by a digital
transmission of a sound recording which results in a specifically identifiable reproduction
o Allows for player piano rolls, CDs, cassettes, etc, and “cover” songs (covers are not derivatives!)
• Sound recordings and § 114 (p449)
o Reproduction right
o Must be actual sounds; “sound alikes” do not infringe
o Congress was focused on stopping piracy, not imitations
o There is indication that congress was concerned about safeguarding our musical heritage
• Derivative right
o Only infringe if you rearrange, manipulate, etc the actual sounds of the sound recordings
o §114 requires that the actual sounds fixed in the sound recording be rearranged, remixed, or
otherwise altered in sequence or quality to qualify as a derivative work of a sound recording
• Digital Performance Right in Sound Recordings Act of 1995 (codified in §114) formed a 3-tier system for
categorizing digital transmissions based on the likelihood of affecting phonorecord sales.
o Least likely to affect sales  exempt
o Transmissions that may harm sales are within the scope of the right, but subject to a statutory
license
o Transmissions with the most potential to reduce phonorecord sales are fully within the control of
the copyright owner
• Chapter 10 of title 17 and §1008 - Audio Home Recording Act (p458)
o Dealt with DAT technology but left out computer so largely irrelevant now
o Had three key elements:
 SCMS technology allowed 1st generation copies but prevented subsequent copies
 created royalty pool based on each blank sold (regardless of what consumer intended to
do)
 excused from liability consumers engaged in certain activities as well as manufacturers of
devices
• Rio case (p461) - device needed computer so wasn’t a “digital audio recording device”
Sampling Musical Works and Sound Recordings

• Sampling entails the incorporation of short segments of prior sound recordings into new recordings
• Like a new collection of sounds
• **Only infringes sound recording but must be actual copying (not “sound alikes”)
De miminis for sampling Newton v. Diamond 9th Cir 2004 (p450, L419n52) -
• -Facts: Beasty Boys obtained a license to sample the sound recording but not musical work of P’s song
• -Holding: No infringement b/c sampling was de minimis (use is de minimis only if the average audience
would not recognize the appropriation); court filtered out elements of sound recording to determine what was
unique to the performance (most of what was unique was captured in sound recording).
Fragmented Similarity -
• when D copies a portion of P’s work exactly (or nearly) without appropriating the work’s overall
essence/structure. When the degree of similarity is high the question is whether the copying goes to
trivial/substantial elements. Measure substantiality by quantitative + qualitative analysis
No de minimis in sampling, case criticized Bridgeport Music v. Dimension Films 6th Cir 2005 (p455) -
• -Facts: D sampled George Clinton work in song for movie. Appears to have had license to musical work and
23
an oral synchronization license but no other license to the sound recording.
• -Holding: Reversed SJ for D; no deminimis in sampling cases b/c sound recordings have less rights than other
works so you should protect it more strongly; did suggest that court should consider §107 defense on remand.
24
Fair Use
Limiting Doctrines
• Authorizes users of copyrighted works to copy, distribute, or publically display or perform portions of works
Summary and sometimes even entire works without incurring liability for infringing the cr owner’s exclusive rights
§107 – Limitations on exclusive rights: Fair Use (codified Folsom v Marsch CCD Mass 1841 (p527))
Fair Use • The fair use of a copyrighted work… for purposes such as criticism, comment, news reporting, teaching,
scholarship, or research is not an infringement of copyright. In determining whether the use made of a work
in any particular case is a fair use the factors to be considered shall include:
See o (1) Purpose and character of the work, including whether such use is of a commercial nature or is
Comput for nonprofit educational purposes
er o (2) The nature of the copyrighted work
Outline o (3) The amount and substantiality of the portions used in relation to the copyrighted work as a
too whole, and
o (4) The effect of the use upon the potential market for or value of the copyrighted work
Purpose and character of using the expression of another (Purpose of what was copied - in SW an intermediate
step might not be bad)
• focus on D and his use
• was use transformative or does the new work merely supersedes the objects of the original?
• was use socially productive?
• was use commercial or non-profit?
• did D act in good faith? was original obtained lawfully?
Nature of original
• examine characteristics of work use
• was work predominately creative or factual?
• was it published or not?
• was it freely available for use by public?
Amount/substantiality of use compared to whole

• was amount used more than necessary or reasonable in relation to the purpose?
• was amount qualitatively significant (“heart” of work)?
• was amount quantitatively significant (%)?
Effect on potential market/value of original

• does use supersede original?
• does use affect traditional or likely markets of original?
• does use affect value of work?
• are there derivative or established license markets that are affected?
• does use affect an ancillary market and what’s the relative importance of this market in relation to the
purpose of that use?
• To negate fair use one need only show that if the challenged use should become widespread, it would
adversely affect the potential market for the copyrighted work
Transformative versus Derivative
• To the extent that you added something to the work in a new way, think of the kind of market that the new
work created and whether it was reasonable and customary for the copyright owner to have a right to it
• If we are dealing with parody we are entering field of unanticipated market that the copyright owner would
not reasonably and customary have a right to. Unlikely that he will use his own work and ridicule it.
• Also keep in mind that the Campbell court put emphasis on the transformation of the work. In the
technology case there is an emphasis on the transformation of the use of the work.
o In the reverse engineering you get to functional elements  this intermediate use is looked at as a
transformative use. Usually the end product of D does not contain any copyrightable material from P’s
work
o Chapter 12 in the MCA has an exception for reverse engineering and in the legislative history they
specifically mentioned Sega
Harper & Row Publishers v. Nation Enterprises US 1985 (p531)

• -Facts: Pres Ford contracted with H&R to published his yet unwritten memoirs. H&P granted exclusive rights
25
Fair Use
to license pre-publication excerpts to Time. Before the Time article published, an unidentified source
brought a copy of the manuscript to the Nation which published an article about the memoirs. Time refused
to pay.
• -Holding: Not fair use b/c not “news” (it was more than news). Publication of an author’s expression before
he has authorized its dissemination seriously infringes the author’s right to decide when and whether to make
the work public. The court also refused to extend fair use to create a public figure exception to copyright b/c
this would serve as a disincentive to write.
o Purpose of the Use – the Nation went beyond simply reporting information and sought to exploit
the headline value of its infringement. Here the publication had the intended purpose of supplanting
the copyright holder’s commercially valuable right of first publication
 Even though this was “news reporting”, here the court put a lot of emphasis on the fact
that this was obtained under less than acceptable circumstances.
 Also, the Nation was deriving a commercial benefit from this (they were not a non-profit
entity). There was a value to this, one that Time paid for
o Nature of the Copyrighted work – the Nation used descriptions that went right to the author’s
expression. Also, the fact that a work is unpublished is a critical element of its nature
 Dichotomy of published versus unpublished works
 There is a first amendment right, but it includes the right to speak and not to speak
 The court looks at whether the work was factual or fictional.
 This is more like a continuum….we are usually not going to deal with pure facts as these
are uncopyrightable to begin with.
 In this case the work was factual but Nation also took Ford’s expression
o Amount and Substantiality of the Portion Used – the Nation took 300 words of 200,000, but it was
essentially the heart of the book. The passages quoted were the most powerful in those chapters
o Effects on the Market – there is certainly the tangible monetary effect of Time canceling the
contract with H&P and refusing to pay.
Parody
• Whether the parodist has appropriated a greater amount of the original work than is necessary to recall or
conjure up the object of his satire
• The essence of the parody focuses upon the characters’ wholesome personalities (and not their appearance)
o The ∆ desire to make the best parody is balanced against the © owner in his original expression
o In the absence of special need for accuracy, images cannot be copied in their entirety; parodist can
only take what is necessary to place the image firmly in the audience’s mind and those elements that
are to be parodied.
Satire - can stand on its own two feet so requires more justification for the act of borrowing than parody
Campbell v. Acuff-Rose Music US 1994 (p538)

• -Facts: 2 live crew case and “Pretty Woman”; D asked but was denied permission to use work
• -Holding: Fair use, no infringement.
o Purpose of the Use – whether the new work merely supersedes the objects of the original creation
or instead adds something new with a further purpose or different character, altering the first with new
expression, meaning, or message  is the use transformative This is key!!!
o Satire versus parody
 Here, there was a parody, which is a literary or artistic work that imitated the
characteristic style of an author or a work for comic effect or ridicule
 Satire – uses the original merely to get attention or to avoid drudgery in working
something fresh; it can stand on its own two feet. You are using someone else’s work for
your own view
 There is a view of finding a parody when in doubt; this is consistent with 1st amendment
and promoting creativity
o Here 2Live Crew contacted the © owner and asked for a license, but they denied it, which can
show good faith. Can also argue that there was bad faith b/c they went expressly against the © wishes
not to use the copyrighted work. Under this view you cannot use the excuse of having an implied
license.
o Nature of the Copyrighted work – here the work was certainly copyrightable, but this factor is not
of much use, as a parody essentially copies a lot of the work
o Amount and Substantiality of the Portion Used – can look at quantitatively and qualitatively, but
parody presents a problem b/c it must be able to conjure up at least enough of the original to make the
object of its critical wit recognizable.
26
Fair Use
 Here 2 Live Crew copied the first line and then sharply departed from the lyrics, it added
a scraper, introduced other sounds, etc
o Effects on the Market – not enough evidence as of now…this was left to be resolved on remand
 Copyright law does not protect a © owner b/c a criticism resulted in less demand for the
work
New Era Publications v Carol Publishing Group 2d Cir 1990 (p548)

• -Facts: D wrote book criticizing Mormons and used quotes from Hubbard’s work
• -Holding: All factors favor D
o Purpose – critical biography, affidivat of D shows use was legitimate purpose of making a point
that Hubbard was charlatan and Church is a cult; favors D
o Nature of Original - had to tell if quotes are fact or fiction but on balance, court rules factual or
informational; favors D
o Amount and Substantiality - small overall percentage (8%+) and not the “heart” of works; favors
D
o Effect on Market - skeptical that unfavorable biography would affect favorable biography; favors
D
Castle Group Entertainment v. Carol Publishing 2d Cir 1998 (p551)

• -Facts: SAT Seinfeld case (also a derivative right case)
• -Holding: Not fair use
o Purpose of the Use – use was not transformative, no conclusion that the SAT sought to educate,
criticize, parody, comment, report upon, or research Seinfeld. If anything it praised the TV series
o Nature of the Copyrighted work – the scope of fair use is somewhat narrower with fictional works
o Amount and Substantiality of the Portion Used – the inquiry is whether the extent of copying is
consistent with or more than necessary to further the purpose and character of the use. The court
weighted this factor against fair use b/c the work was not transformative
o Effects on the Market – the SAT substitute for a derivative market
Nunez v. Caribbean International News Corp 1st Cir 2000 (p554)

• -Facts: P was a photographer who took photographs of Miss Puerto Rico. Without P’s permission, three
photographs appeared in El Vocero along with several articles about the controversy.
• -Holding: Factors weight in favor of D
o Purpose of the Use – here the works were used to inform and the appellee reprinted the pictures to
put the articles in context, transformative use in that El Vocero used the works for a further purpose
giving them new meaning or message, El Vocero attributed the photographs to D showing good faith,
the photographs were obtained lawfully.
o Nature of the Copyrighted work – these photos could be characterized as factual or creative,
therefore the court found the impact of their creativity as neutral. It mentioned that the work was not
confidential and there were no non-disclosure or no-resale agreements
o Amount and Substantiality of the Portion Used – El Vocero had to copy the entire photo, therefore
this factor was of little consequence to the analysis
o Effects on the Market – Here there was no effect on P’s market, the purpose of that dissemination
is to publicize and a poor reproduction in a news paper should not change the demand for the portfolio
American Geographical Union v. Texaco 2d Cir 1995 (p585)

• -Facts: Texaco’s scientists were copying articles from science journals
o Purpose of the Use – favors P; to have the article available when needed, but they seem to serve
as additions to the scientists’ office libraries rather than spontaneous copying
 Commercial Use – Texaco was not gaining direct or immediate commercial advantage
here. However, they could be seen as a factor of production b/c scientists used the
articles for Texaco’s product - therefore indirect benefit.
 Transformative Use – there was no transformative use, just photocopying
 Reasonable and customary practice - insubstantial today b/c of advent of photocopying
o Nature of the Copyrighted work – favors D; the articles are factual, so less protection
o Amount and Substantiality of the Portion Used – favors P; only small % of number of articles
BUT copied each article entirely; each article enjoys copyright protection
 Effects on the Market – favors P
27
Fair Use
 Sale of Additional Journal Subscriptions – only slight favor for P in a few
lost subscriptions
 Licensing revenues – there was a workable market for institutional
users to obtain licensing fees for the right to produce their own copies
 Reasonable and customary markets that are created need to be taken
into account
– Creation of any market does not equate to a loss of fair use.
Princeton University Press v. Michigan Document Services 6th Cir 1996 (p591)
• -Facts: Commercial copyshop reproduced copyrighted works w/o paying royalties
o Purpose of the Use – mechanical transformation of copying excerpts of books is not creative
o Nature of the Copyrighted work – P’s works are creative
o Amount and Substantiality of the Portion Used – D copied between 5 – 30%
o Effects on the Market –
 The copyright holder has the burden of proofing market effect if the use is
noncommercial. On the other hand if the use is commercial, the user has the burden
(citing Sony v Universal)
 Here there was a market for selling the permission to reproduce works.
o The court also referred to the Classroom Guidelines which allow for copies of works for classroom
use provided certain conditions are met.
28
Technological Protections
Technological Protections
• Digital technologies enable instantaneous, mass distribution of perfect copies. Cr industries have sound
Technologic additional protection for their works though technological protection measure (encryption) and expanded
al legal rights
Protecti
ons
§1201 - Circumvention of copyright protection systems (codified DMCA)

Technologic • Two important distinctions:
al o Distinction between technological controls that restrict ACCESS and that prevent VIOLATIONS
of exclusive rights
Protecti
o Distinction between individual ACTS OF CIRCUMVENTION and manufacture/distribution of
ons and TECHNOLOGIES DESIGNED TO CIRCUMVENT technology protection measures
DMCA Access “Copy”
Controls Controls
Anti - §1201(a)(1) NONE - No prohibition on the conduct of
Circumvention Prohibits the conduct of circumventing circumventing (individual hacking) of “copy”
(individual hacking) of access protection measures in §1201
protections measures *Can hack a copy protection if it is not
otherwise an infringement of copyright
Anti- Trafficking §1201(a)(2) §1201 (b)(1)
Prohibits the trafficking in devices that Prohibits the trafficking in devices that
circumvent access protection measures, circumvent “copy” protection measure, e.g.,
e.g., DeCSS on DVDs, smart cards, Streambox’s device that allowed the saving of
warez sites offering passwords or serial RealNetwork’s streaming content
numbers
Prohibited Devices:
• Devices are banned if they:
o are primarily designed or produced for the purpose of circumventing OR
o having only limited commercially significant purpose or use other than circumventing OR
o are knowingly marketed for use in circumventing
Savings Clauses:
• Nothing affects rights, remedies, limitations, or defenses to infringement, including FAIR USE
• Nothing enlarges or diminishes vicarious or contributory infringement
• Nothing requires that devices be designed to respond to a particular technological measure
• Exception: Macrovision
• Limitations:
o Noninfringing use (conduct only)
o Library browsing (conduct only)
o Law enforcement, intelligence, etc
o Reverse engineering (decompilation)
o Encryption research (access protection only)
o Smut (access protection only)
o Privacy (conduct only)
o Security Testing (access protection only)
o §1201(a)(1) rule making every 3 yrs to review if this subsection has had any present or likely
adverse effects on noninfringing uses
Universal City Studios Inc v. Reimerdes SDNY 2000 (p609)
• -Facts: D posted DeCSS to allow circumvention of CSS protection system on DVDs and “linked” to other
sites
• -Holding: DeCSS is “technology” and is designed primarily to circumvent CSS so it violates §1201(a)(2)(B)
and Ds intent in creating it is irrelevant; not under §1207(f) for reverse engineering b/c someone else did that
and even if they did, it was not “solely” to achieve interoperability with Linux; fair use does not apply b/c Ds
are note sued for infringement but are sued for providing technology to circumvent control access technology
under §1201(a)(2); linking to other sites is equivalent to transferring DeCSS.
29
Infringement Lawsuit (Chapter 10)
Infringement Lawsuit
Definition
Direct • §501(a) Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106
Infringe through 122 or of the author as provided in section 106A(a), or who imports copies or phonorecords into the
US in violation of section 602, is an infringer…
ment
Strict Liability -
• does not require intent or any particular state of mind (although willfulness is relevant to the award of
statutory damages) but see Netcom below.
See
Comput
er
Cases
• Procedural Matters - Exclusive federal court jurisdiction - Standing

Procedure
Civil INJUNCTIVE RELIEF

Remedies • §502 - authorizes temporary and permanent injunctions to prevent or restrain copyright infringement
• §1203(b) - authorizes temporary and permanent injunctions for violations under §1201 (circumvention of
copyright protection systems) and §1202 (integrity of copyright management information)
Factors under eBay v. Mercexchange to determine whether injunctive relief is appropriate
• whether there is a significant threat of irreparable harm
• Balancing the harm to the P and the harm to the D if the injunction were granted
• Probability that the D would prevail
• Public interest
Property View
• When you look at something as a property interest, the most important element is the right to exclude
• You tend to come out on the side of allowing the © owners to maximize their right and tend to look against
infringers as being involved in a taking of the © owner’s property
• There are some characteristics of IP that are similar to property (transfer, licensing, selling, etc)
Tort View
• From a liability perspective, we can look at this from a torts view
Universal City Studios Inc v. Reimerdes SDNY 2000 (p772)

• -Facts: D posted DeCSS to allow circumvention of CSS protection system on DVDs and “linked” to other
sites
• -Law: Injunctive relief is appropriate if there is a reasonable likelihood of future violations absent such relief
and if the P lacks adequate remedy at law
• -Holding: D would continue to violate law unless enjoined b/c D were in the business of disseminating info to
assist hackers; P would not have adequate remedy b/c of difficulties in calculating actual damages and
determining what is an “offer” of DeCSS.
Abend v. MCA Inc 9th Cir 1988 (p774)

• -Facts: Rear Window film case?
• -Holding: Court must consider D’s investment in $, effect, and talent in determining remedy; where great
public injury would be worked by an injunction, the court may award damages or a continuing royalty instead
of an injunction in such special circumstances (and this case has special circumstances)
o Rather than imposing injunctive relief the court imposed economic damages  judicial
compulsory license
Economic Actual Damages and Profits §504(b)

30
Infringement Lawsuit (Chapter 10)
Remedies • A P may want to go with this measure if
o You have not registered prior to the infringement
o If the profits were very high
• Actual damages – there must be a showing of loss of licensing, loss of sale, etc
• Profits – there is a lot of burden shifting in the proof of assessing which profit will be awarded to the P
o Caution – do not double count profits in profits and actual damages
Statutory Damages §504(c)
• In lieu of actual damages and profits, P may elect statutory damages at any time before final judgment
o Not less than $750 or more than $30k - §504(c)(1)
• REQUIREMENT: §412 - Need to have registered the copyright before infringement, 3 months after
publication of the work, or 1 mo after P learns of infringement
• Advantages:
o Actual damages and profits may be hard to prove
o You don’t really have to prove harm (often used in internet context)
• The statutory damages award is based on the number of works infringed, not on the number of infringements
e.g. if 1 work infringed 1000 times, then only 1 award of statutory damages
• Willfulness and Innocent Infringement - §504(c)(2)
o Did D know what they were doing? There must be a showing also of a bad act such as piracy, etc.
o Up to $150k for willfulness and not less than $200 for innocent infringement (court’s discretion)
o Princeton case- there was no willfulness b/c D truly believed they were engaging in fair use
Attorney’s Fees §505
• Court’s discretion for recovery of full costs and reasonable attorney’s fees
• Appealable on abuse of discretion
Actual Damages Frank Music Corp. v. Metro-Goldwyn-Mayer 9th Cir 1989 (p777, L443)
• -Facts: D infringed P’s songs by including them in a Las Vegas show w/o prior authorization
• -Holding: P can recover actual damages suffered and any profits that are not computed on actual damages;
The court calculated direct profits by isolating the infringing act and assigning a percentage of profit to the
work used. The court also calculated indirect damages by awarding 2% of the casino and hotel profits
attributed to the promotional value of show.
Actual Damages Hamil America v GFI 2d Cir 1999 (p780)
• -Facts: D infringed P’s floral fabric patterns and sold garments made of infringing fabric
• -Holding: Remanded for recalculation; D’s profits are calculated as gross sales minus costs of production and
sale, costs include Sheldon two-step procedure (1st step: determine overhead expense categories actually
implicated; 2nd step: determine fair, accurate and practical method of allocating implicated overhead); P’s lost
profits used less abstract calcultion from D’s sales b/c of absence in more reliable evidence of P’s lost profits.
Actual Damages LA News v Reuters 9th Cir 2003 (p785) -
• -Issue: can P recover actual damages for acts of infringement occurring mostly outside the US
• -Holding: a claim for profits from infringement abroad will be allowed if a predicate act of infringement took
place in US
Actual or Statutory Storm Impact v Software of the Month ND Ill 1998 (p788)
• -P requested the greater of actual or statutory damages; court found statutory damages greater so awarded this
to P
Statutory damages, what is “one work” Columbia Pictures TV v Krypton Broadcasting 9th Cir 1997 (p791) -
• -Each TV episode (not each series) constitutes a separate work b/c different episodes were broadcast over
course of time, viewers may watch one or twenty episodes, and each episode is separately produced
Fees and costs Fantasy v Fogerty 9th Cir 1996 (p795)
• Facts: D found to not infringe work
• Holding: no requirement of culpability on part of losing party required to award attorney’s fees; Supreme
Court “even-handed” approach gave factors to help determine award: (1) encourage production of original
literary, artistic, and musical expressions for good of public, (2) fact that Ds as well as Ps may hold
copyrights and Ds range from corporations to starving artists, (3) need to encourage Ds who seek to advance
a variety of meritorious copyright defenses to litigate them to the same extent that Ps are encouraged to
litigate meritorious claims of infringement, and (4) fact that a successful defense may further policies of
copyright as much as successful prosecution of infringement; even-handed approach starts w/o consideration
for who won
31

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Threshold Requirements for CR Protection

Fixation Why do we require fixation?

Burrow-Giles Lithographic Co. v. Sarony US 1884 (p59) Authorship Requirement

Belstein v. Donaldson Lithographic Co. US 1903 (p62)

More than merely trivial

Bridgeman Art Library, Ltd. v. Corel Corp. SDNY 1999 (p70)

Pantomimes and Choreographic Works - by video type, or diagram

§102(a) and 101 - Subject Matter of Copyright: In General

Baker v. Selden US 1879 (p73)

Facts are NOT copyrightable

Merger theory (p77)

Physical separability Mazer v. Stein US 1954 (p212, L119)

Conceptual separability Kieselstei-Cord v. Accessories by Pearl 2d Cir 1980

§106(2) - Exclusive Rights in Copyrighted Works

L. Batlin & Son Inc v. Snyder 2d Cir 1976 (p91)

Gracen v. Bradford Exchange

Pickett v. Prince 7th Cir 2000 (p98)

Compilation §101 – Compilations

Requirements for Compilations

Feist Publications v. Rural Telephone Service Co. US 1991 (p101)

Mason v. Montgomery Data 5th Cir 1992 (p108)

Selection, Arrangement, and Utility

CCC Information Services v. Maclean Hunter 2d Cir 1994 (p296, L74)

CDN v. Kapes, 9th Cir 1999 (p300) - what is a “fact”?

Matthew Bender v. West, 2d Cir 1998 (p301, L76-77)

Intro There are three kinds of authorship

§201 - Ownership of copyright

2nd requirement Aalmuhammed v. Lee 9th Cir 1999 (p114) -

Works Made §101 - A “work made for hire” is—

Who is an EMPLOYEE? Community for Creative Non-Violence v. Reid US 1989 (p119)

Factors to consider when determining if someone is an employee under the law of

EXAM NOTE: THERE MAY BE JOINT AUTHORSHIP IN A WORK FOR HIRE

Who is an Employee? Aymes v. Bonelli 2d Cir 1992 (p124)

Acquiring, Keeping, and Transferring the Rights of CR

Deposit of a copy of the work with the designated entity

Notice Berne Convention 3/1/ 89 – ELIMINATED notice requirement

Presence of © notice will defeat an innocent infringement defense

HYPO: What about publishing work on website? Is this publication?

PublishedwithProper Notice Fixed

1923 1964 1/1/1978

Soleandjoint author: Soleandjoint author:

Eldred v. Ashcroft US 2003 (p159)

Transfer RENEWAL AND TERMINATION OF TRANSFERS

Termination of a transfer PUSHMAN!!!!

Statutory Rights of CR Holders

• Exclusive Rights: the limited statutory monopoly granted by the Act.

Prima Facie Case of Infringement

Selle v. Gibb 7th Cir 1984 (p318, L411)

Ty Inc v. GMA Accessories Inc. 7th Cir 1997 (p320, L411n21)

Bouchet v Baltimore Ravins 4th Cir 2001 (p324)

COMPARISON OF 2nd VS 9th Cir:

Summary of substantial similarity or improper appropriation

Arnstein v. Porter 2nd Cir 1946 (p330, L422)

Steinberg v. Columbia Pictures Industries SDNY 1987 (p336)

Cavalier v. Random House 9th Cir 2002 (p349)

Unauthorized Importation and the First Sale Doctrine

RIGHT TO RIGHT TO PREPARE A DERIVATIVE WORK

Castle Rock Entertainment v. Carol Publishing 2d Cir 1998 (p387)

Copyright Overview (p444)

REPRODUCTION, PUBLIC DISTRIBUTION, AND DERIVATIVE WORK ISSUES

Sampling Musical Works and Sound Recordings

Amount/substantiality of use compared to whole