I. Elements of Copyright

A. Originality – 17 U.S.C. § 102 Basic Concepts

o Originality, not novelty is required Alfred Bell v. Catalda Fine Arts (copyrighted mesotinted engraving)

Nothing in the Constitution commands that copyright matter be strikingly unique or novel

o Amount of expression required Short words, phrases, and titles are not eligible for protection No bright-line rule for how long something needs to be before it can be

protectedo Amount of creativity required

Numbering systems are almost never subject to protection Feist Publications v. Rural Telephone Service (telephone directory)

o Standard for originality: Independent creation by the author with a minimal amount of creativity

o Not all copying is copyright infringemento Facts are not copyrightable because they are not originalo Compilations are copyrightable if they manifest an original selection, coordination, or

arrangement threshold question: How much judgment was required? Whitepages will NOT likely be protectable Yellowpages WILL likely be protectable (selection, placement, etc.) Selection of baseball cards (depends on how selection was made)

o Rejected “sweat of the brow” doctrine Burrow-Giles Lithographic Co. v. Sardony (Oscar Wilde No. 18)

o Photographs are copyrightable as “writings” Elements of Originality in Photographs

o Rendition: Angle, lighting, shading, exposure, effects, etc.o Timing: Decision to seize a moment in time and reduce it to an imageo Creation of the Subject: Contriving and creating the subject in a particular setting

Bleistein v. Donaldson Lithographing (Wallace circus posters)o Standard for originality is very lowo The words “connected with the fine arts” do not qualify anything other than the word

“works” Meshwerks Inc. v. Toyota Motor Sales (digitized models of Toyota cars)

o Absent any creative elements, a digital representation of an existing item is not copyrightable

o The digital representation is more a tool to be used on the path of copyrightability

B. Fixation– 17 U.S.C. § 102 (see “Fixation” handout) White-Smith Music Publishing v. Apollo (player piano perforated rolls)

o Court refused to grant protection – defined “copy” of a musical composition that is “a written or printed record of it in intelligible notation” sheet music

o Congress responded by adding § 1(e) (now § 115) to include “mechanical reproductions” compulsory license

Did not change White-Smith’s definition of “copy” Midway Manufacturing v. Artic International (Galaxian & Pac-Man video games)

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o A work does not need to be written down or recorded exactly as it is perceived by the human eye as long as it is capable of being “reproduced ... with the aid of a machine or device” § 102(a)

C. Idea/Expression Dichotomy – 17 U.S.C. § 102(b) Baker v. Selden (condensed ledger bookkeeping system)

o The description of an art or system in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art or system itself

Must separate patent and copyright protection Patent: The process itself Copyright: The explanation of the process

o Blank Forms Doctrine: Blank accounting books (i.e., forms) are not copyrightable The Merger Doctrine

o Morrissey v. Procter & Gamble (sweepstakes rules) If there are only a limited number of ways to express an idea, the expression

merges (strong form of merger doctrine)o Herbert Rosenthal Jewelry v. Kalpakian (bee pin)

Copyright allows for copyright protection on the specific expression of the idea, not ALL expressions of the idea

Find the level in which both works are expressed in the same manner EX: If a play is similar on the level of Acts or Scenes, chances are it’s

an idea; if a play is similar on the level of paragraphs and sentences, chances are it’s an expression levels of abstractions

o Alternative theory (narrow form of merger doctrine – more common) If there are only a few ways to express an idea, the protection is very thin and

likely only infringed by direct copying

D. Additional Subject-matter National Origin – 17 U.S.C. § 104

o Most countries are covered by the copyright treatieso Must meet national eligibility requirements

US Government Works – 17 U.S.C. § 105o Works created by federal government officials within the scope of their employment

are not copyrightable Does NOT extend to the states (except for prohibition on statutes and judicial

opinions)o US Government can hold copyrights created by others

II. Works of Authorship Requirement – 17 U.S.C. § 102

A. Literary Works – Defined in 17 U.S.C. § 101

B. Musical Works – Defined in 17 U.S.C. § 101 Characteristics

o Notes and lyrics in whatever form they occuro Generally registered in the form of sheet musico Copyrights are owned by the composer / lyricist (unless otherwise assigned)

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Limited by § 115 (compulsory license) – must first have authorized distribution of phonorecords of a musical work in the US

C. Dramatic Works Characteristics

o Overlaps with most other categorieso Compulsory licenses only apply to non-dramatic works

D. Choreographic / Pantomime Works A series of yoga positions is not copyrightable (barred by § 102(b)) Athletic poses and activities are not choreographic works

E. Motion Pictures/AV Works – Defined in 17 U.S.C. § 101 A performance is not a separable component subject to protection (Garcia v. Google)

F. Sound Recordings – Defined in 17 U.S.C. § 101 Characteristics

o Right is limited to reproduction, distribution, and adaptation/electronic manipulation of the actual fixed sounds

o Fixation of sounds Can be any sounds (e.g., ambient, recorded performance, etc.)

o Copyrights are theoretically held by the performers / sound engineers, but in practice, are often assigned to record labels

o Copyright holders of sound recordings get paid through ASCAP or BMI Membership organization that obtains authorization from member copyright

owners to license public performances of their musical works Organization approaches non-exempted businesses offering blanket licenses

for a single annual fee to perform the works in the repertoire Limited by date

o Works fixed before 2/15/72 Governed by state lawo Works fixed on or after 2/15/72 Governed by federal law

Limited by § 114 (scope of exclusive right)o Can only be infringed by use of actual fixed sounds or manipulation of the actual

fixed sounds and do NOT extend to sound-a-like recordings Imitation is not infringement

o No general public performance right (limited § 106(6)– digital audio transmission)

G. Pictorial, Graphic, and Sculptural Works – Defined in 17 U.S.C. § 101 (see “Useful Articles” handout)

Characteristicso Does NOT include the design of a useful article

Definition of useful article: An article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information

o The pictorial, graphic, or sculpture features must be separable from the useful article EXAMPLE: The hood ornament on a car, the pictorial graphic reproduced on

a coffee mugo NO separate protection for industrial design covered under design patents (hard to

obtain)

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o Limited by § 113 (b) A copyright owner of a drawing or photo of a useful article does not

convey the exclusive to manufacture the useful article depicted in the drawing photo

(c) A copyright owner for protected useful articles cannot prevent the making, distribution, or display of pictures or photographs of such articles in connection with advertisements or commentaries related to the distribution or display of such articles, or in connection with news reports

Method of Analysiso Determine whether the pictorial, graphic, or sculptural work is a useful article

If no, likely protected if it meets the copyright elementso If the work is a useful article, determine whether the utilitarian aspects of the work

are separable from the pictorial, graphic, or sculptural features Determine physical or conceptual separability Review the outcome under all of the suggested tests set out in Pivot Point and

determine which works best for your client (hopefully more than one) and argue that it is the best test(s) to use

Mazer v. Stein (Balinese dancer sculpture used as lamp base)o A sculpture to be used as a lamp base can be copyrightable as a statue, so long as the

statue does not affect the utilitarian function of the lamp or compete in the lamp industry

Copyright Office’s response to Mazero If the sole intrinsic function of an article is its utility, the fact that the article is unique

and attractively shaped will not qualify it as a work of arto However, if the shape of a utilitarian article incorporates features, such as artistic

sculpture, carving, or pictorial representation, which can be identified separately and are capable of existing independently as a work of art, such features will be eligible for registration

Pivot Point International v. Charlene Products (cosmetology mannequin heads)o The artistic design of cosmetology mannequin heads was not significantly influenced

by functional considerations copyrightableo Several tests have been suggested for determining when the artistic and utilitarian

aspects of useful articles are conceptually separable: The artistic features are “primary” and the utilitarian features are “subsidiary”

(not helpful) The useful article “would still be marketable to some significant segment of

the community simply because of its aesthetic qualities” The article “stimulates in the mind of the beholder a concept that is separate

from the concept evoked by its utilitarian function” The artistic design was not significantly influenced by functional

considerations (process-based test) most commonly used The artistic features “can stand alone as a work of art traditionally conceived,

and ... the useful article in which it is embodied would be equally useful without it” Defendant friendly

The artistic features are not utilitarian (not helpful)

H. Architectural Works – Defined in 17 U.S.C. § 101 Characteristics

o Category required by the Berne Convention (Effective 12/1/1990) Both the plans and the building was subject to protection

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Prospective ONLYo Prior to the Berne Convention, architectural plans were protected as pictorial works

The actual architectural works (the buildings itself) were not protectedo Limited by Date Prospective protection ONLY

Applies to buildings substantially completed after 12/1/1990 Applies to buildings not published/started prior to 12/1/1990

o Limited by § 120 (a) The copyright owner an architectural work cannot prevent the making,

distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work if the building in which the work is embodied is located in or ordinarily visible form a public place

(b) Notwithstanding 106(2), the owner of a building can destroy or alter a building embodying an architectural work without the consent of the author/copyright owner

Shine v. Childs (Freedom Tower at the WTC)o A model of a proposed design for a building is sufficient to constitute a protectable

“design of a building” and qualify it as an architectural work

I. Derivative Works – 17 U.S.C. § 103 Characteristics

o Not a separate category subset of existing categorieso § 101 Defined as a work based on one or more preexisting works in any form in

which a work may be recast, transformed, or adapted (e.g., translation, musical arrangement, dramatization, fictionalization, motion picture adaptation, etc.)

Protectiono How it arises

Public domain work + originality = derivative work Copyrighted work + originality + lawful copying = derivative work Copyright worked + originality + unlawful copying = derivative work

o Scope of coverage Public domain work: Copyright protection in the newly original material Lawful copying: Copyright protection in the newly original material Unlawful copying: Infringement – no copyright protection

History of the Originality Standard o Alfred Bell v. Catalda Fine Arts (reproduced mesotinted engraving as paintings)

Evidence that the reproductions were not intended to, and did not, imitate the paintings reproduced

Protection for derivative works requires distinguishable variations (even if inadvertent)

o L. Batlin v. Snyder (Uncle Sam coin bank reproduced in plastic) Reproduction in a different medium is not in itself copyrightable Requires substantial, not merely trivial, variation

o Gracen v. Bradford Exchange (Wizard of Oz collectable plates) Derivative works must be substantially different from the underlying works to

be copyrightable Schrock v. Learning Curve International (Thomas the Tank Engine merchandizing)

o Originality requirement for derivative works is not more demanding than the originality requirement for other works (overruled Gracen)

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o Key inquiry is whether there is sufficient nontrivial expressive variation in the derivative work to make it distinguishable from the underlying work in some meaningful way

o Permission by the copyright owner is not required to register derivative works (overruled Gracen) derivative work only needs to be made lawfully, no separate permission required for registration

Durham Industries v. Tomy Corp (wind-up Mickey Mouse figurine)o A figurine version of a cartoon character is not sufficiently original to subject it to

copyright protection more akin to a reproduction rather than a derivative work Court refused to allow one licensee to interfere with the copyright owner’s

ability to license to another licensee Entertainment Research Group v. Genesis Creative Group (8’ tall costumes of characters)

o No separate copyright for costumes based on characters (e.g., the Pop ‘n Fresh Doughboy)

J. Compilation of Works – 17 U.S.C. § 103

III. Ownership & Transfers

A. Initial Ownership In General – 17 U.S.C. § 201(a)

o Copyright in a work vests initially in the author or authors of the worko Authors of a joint work are co-owners of the copyright in the work

Works for Hire – 17 U.S.C. § 201(b)o Characteristics

1909 Act: Any time a work was created at the instance and expense of someone else, that person would be the author of the work

1976 Act: Only works falling in to the following categories would be considered works for hire:

Any work created by an employee within the scope of employment Any specially ordered or commissioned works within one of the 9

categories AND covered by a written agreemento Does NOT include sound recordings or software

Default provisions can be contracted around Separate rights for the ownership of the material object and the copyrighted

worko Community for Creative Non-Violence v. Reid (Third World America statute)

The two clauses in the Works for Hire statute are mutually exclusive Work must fall into one of the two categories to be considered a work

for hire Determined by common law of agency Whether the hiring party’s right to

control the manner and means by which the product is accomplished Relevant factors:

o Skill requiredo Source of the instrumentalities and toolso Location of the worko Duration of the relationship between the parties

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o Whether the hiring party has the right to assign additional projects to the hired party

o The extent of the hired party’s discretion over when and how long to work

o Method of paymento Hired party’s role in hiring and paying assistantso Whether the work is part of the regular business of the hiring

partyo Whether the hiring party is in the businesso The provision of employee benefitso Tax treatment of the hired party

Created by salaried employees made within the scope of employment:o Whether the work was the type the employee was hired to

performo Whether the creation of the work in question occurred

substantially within the authorized time and space limits of the employee’s job; and

o Whether the employee was actuated, at least in part, by a purpose to serve the employer’s purpose

If a work is not a work for hire, the person who paid for the work only owns the tangible object – the copyright is owned by the author

Ineffective works for hire agreements are treated as a transfero Mattel Inc. v. MGA Entertainment (Mattel employee designed Bratz dolls)

Sketches created during employment are owned by the employer but the ideas are not protectable

Any ideas created during employment are not protectable works made within the scope of employment

Infringement requires substantial similarity which requires a higher level of particularity requires more than “depicting young stylish girls with big heads and an attitude”

o Marvel Characters v. Kirby (Kirby created “Avengers”) No termination rights for works made for hire

Collective Works – 17 U.S.C. § 201(c)o Characteristics

Definition: A compilation (selection and arrangement) of works Each contribution is separately copyrightable and owned by the author

of the contribution/employer of the author The compilation is copyrightable as to selection and arrangement and

owned by the author who selected and arranged the works Default implied license for collective works

In the absence of an express transfer of the copyright the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing it as part of that particular collective work and any revision of that collective work

o New York Times v. Tasini (reproduction of articles in electronic databases) A revision of a collective work does not include reproducing individual

articles from past publications the copyright protection only extends to the selection and arrangement, which is not preserved when individual articles are reproduced

Joint Works – 17 U.S.C. § 201(a)7

o Characteristics § 101 Definition: A work prepared by two or more authors with the intention

that their contributions be merged into inseparable or interdependent parts of a unitary whole

Any author/owner can exploit the rights in the work without the permission of the other(s), however, each author/owner must account to the other(s)

Statute is a default provision – can be contracted around Joint authorship must be voluntary No separability for contributions to a motion picture

Individual contributions are NOT copyrightable, only the work as a whole copyright owner is the producer

o Childress v. Taylor (“Moms” Mabley play) Joint authorship will automatically arise when each of the following elements

are met: Two or more authors (statute) Intent to merge (statute) Contributions are separately copyrightable (caselaw) Intent to be joint authors (caselaw)

o Aalmuhammed v. Lee (Malcom X move – creative control) A substantial contributor is not an author unless all elements for joint

authorship are met An author exercises creative control and objective manifestation of

shared intent (e.g., credits in a film) The audience appeal of the work turns on both contributions

o Community Property Rodrigue v. Rodrigue (5th Cir): An author’s spouse has managerial control

over the copyright, but any proceeds form the copyright must be shared with the non-author spouse

B. Transfers & Licensing – 17 U.S.C. § 201(d) Characteristics

o 1909 Act: Doctrine of indivisibilityo 1976 Act: Rights obtained through copyright protection can be subdivided and

transferred or owned separately License: Non-exclusive permission to use a work Transfer (§ 101): Assignment, mortgage, exclusive license, or any other

conveyance of any of the exclusive rights Exclusive license is the right to exclude others Does NOT include non-exclusive licenses

o § 204(a) – Exclusive licenses/ transfers must be in writing and signed by the transferor (exception: transfers by operation of law)

Non-exclusive licenses are NOT transfers and can be oral or implied “Writing” requirement

Most courts will allow oral transfers substantially contemporaneously confirmed in writing

The terms of any writing purporting to transfer copyright interests, even a one-line statement, must be clear

If the copyright owner appears to have no dispute with its licensee on the matter, it would be anomalous to permit a third-party infringer to invoke § 204 against the licensee

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An exclusive license must be signed by all owners because an exclusive license destroys the value of the copyright to the other owners

The termination of transfers is not governed by § 204(a) need not be in writing

A license is presumed to be non-assignable, non-transferable, and non-sublicensable in the absence of express provisions to the contrary

State law determines contract questions, which includes implied licenses

o New Media Problem Mindful contract drafting Specify whether media now-known or future

developed will be included in the license Effects Associates v. Cohen (horror movie special effects)

o Payment terms are independent covenants are not automatically condition precedents for a license to use the works can be contracted as a condition precedent, but it will not be implied

IV. Publications & Formalities (see “Publication & Formalities” handout)

A. 1909 Act Characteristics

o Dual system of copyright protectiono Strict notice requirements: Copyright [or] © [and] Date [and] Author/Ownero Unpublished works remained protected under common law copyright

Publishing (or registration) divested common law copyright Could register “unpublished” works, which would divest common law

copyright on the date of registration Proper copyright notice resulted in federal copyright Improper copyright notice resulted in irrevocable placement in public domain

Only EXCEPTION is foreign works (restored as of 1995)o Publication Triggers

Selling a painting [at auction] is considered a general publication The general release of a motion picture is considered a general publication

Academy of Motion Picture Arts & Sciences v. Creative House Promotion (Oscar statue)o Definition of Publication: A publication is deemed to occur when consent of the

copyright owner, the original or tangible copies of a work are sold, leased, loaned, given away, or otherwise made available to the general public, or when an authorized offer is made to dispose of the work in any such manner even if a sale or other such disposition does not in fact occur

Definition of General Publication: Occurs when a work is made available to members of the public regardless of who they are or what they do with it

Definition of Limited Publication: Occurs when copies are distributed: To a definitively selected group For a limited purpose, without the right of further reproduction,

distribution, or saleo Burden is placed on the defendant to prove that a general publication occurred

triggering the publication of a work King v. Mister Maestro (MLK’s “I Have a Dream” speech)

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o Public performance or exhibition is NOT publicationo Providing copies of a speech to the media is a limited production, for the limited

purpose of promoting the public performance

B. 1976 Act (Effective 1/1/78) Characteristics

o Definition of Publication: Distribution of copies OR phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending

Offering to distribute copies/phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication

o Publication without notice anywhere in the world placed the work in the public domain, subject to “cure” provisions in § 405/406

C. 1976 Act + Berne Convention Incorporation Act (Effective 3/1/89) Characteristics

o Notice is NO longer required as a condition of copyright protectiono Still recommended

Phonorecords & Sound Recordingso 17 U.S.C. § 303(b): The distribution before 1/1/78 of a phonorecord shall NOT for

any purpose constitute a publication of any musical work, dramatic work, or literary work embodied therein

Benefits to Registrationo § 410(c): Presumption of validity (prima facie evidence)o § 411(a): No civil action for infringement of any US work shall be instituted until

registration has been made Circuits are split regarding when registration has been “made”

o § 412: Must register BEFORE the infringement commenced in order to receive statutory damages or attorneys’ fees – unless registered within 3 months of first publication

D. Miscellaneous Publication of Derivative Works

o The publication of any new work shall not affect the force or validity of any subsisting copyright

However, common law copyright in an unpublished work may be divested if later disclosed in a derivative work

EXAMPLE: Common law copyright in an unpublished screenplay was lost when the screenplay was disclosed in a motion picture the screenplay entered the public domain simultaneously with the motion picture

o Timing Issues A work that would otherwise be considered a derivative work that is published

before the underlying work will render the derivative work the underlying work for the purposes of federal copyright law

EXAMPLE: Publicity materials published without notice prior to the release of the motion picture for which they were publicizing entered the public domain

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Notice Requirement Generallyo A copyright owner is required to affix notice to the copies in such a manner and

location as to give reasonable notice of the claim of copyright General rule: Any location is sufficient to satisfy the legibility requirement if

it is such as to notify a person seeking to copy the work of the existence of copyright

Notice for Compilations and Collective Works o 1909 Act: Courts were split as to what constitutes proper notice

Some courts concluded that a properly affixed general notice from the owner of the collective work would be sufficient to maintain protection for all contributions

Other courts held that under the doctrine of indivisibility, when notice appeared only in the publisher’s name, the author’s work would fall into the public domain unless the author’s copyright had passed to the publisher

o 1976 Act - § 404: A single copyright notice in a collective work protects all of the contributions contained therein

V. Exclusive Rights & Limitations

A. Reproduction – 17 U.S.C. § 106(1) Characteristics

o Treated similarly to the public distribution righto Defined in terms of fixation creation of a copy (tangible object)

§ 101: A work is “created” when: It is fixed in a copy or phonorecord for the first time; or A work is prepared over a period of time, the portion of it that has

been fixed at any particular time constitutes the work as of that time; and

The work has been prepared in different versions, each version constitutes a separate work

o NOT limited to literal reproduction Walt Disney Productions v. Filmation Associates (unauthorized sequels to Disney films)

o Preliminary copies, even if not yet distributed, will violate the Copyright Act unless an exception or limitation applies ANY reproduction will violate

Cartoon Network v. CSC Holdings (remote storage servers instead of in-house DVRs)o Copy is a material object in which a work is fixedo Fixation requires embodiment in a material object for more than transitory durationo Processing / streaming through a buffer (RAM) is not a reproduction because it is

only there for 1.2s at a time (not more than transitory duration)o Direct liability is only incurred by the person who uses the system to make a copy (in

this case, it’s the customer) EXCEPTIONS & LIMITATIONS (NO implied exceptions or limitations)

o Reproduction by libraries and archives – § 108o Ephemeral Copies – § 112o Pictorial, Graphic, and Sculpture Features of Useful Articles – § 113o Sound Recordings – § 114 (see “Sections 114 & 115” handout)

No general public performance right (except digital audio transmission)

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When a sound recording is played on traditional AM/FM radio, the musical work copyright owner gets paid, but the sound recording copyright owner does not

When a sound recording is played on internet/satellite radio, both the musical work and sound recording copyright owners get paid (unless there is an exception)

o Musical Works – § 115 (see “Sections 114 & 115” handout) Harry Fox Agency’s form license replaces the need for a compulsory license

o Public Broadcasting – § 118o Architectural Works – § 120o Reproduction for the Disabled – § 121

B. Adaptation – 17 U.S.C. § 106(2) Lee v. A.R.T. (ceramic tiles made from Blue Monday painting copies ≠ derivative work)

o A derivative work requires that the original work be recast, transformed, or adapted Recast: Traditionally used for sculptures Transformed: Change in image or depiction Adapted: Book to motion picture, etc.

Lewis Galoob Toys v. Nintendo of America (Game Genie cheat cartridge ≠ derivative work)o Fixation of a derivative work is not required for infringement

Derivative works are not framed in terms of fixation (legislative history) Statute does not use “copy,” “phonorecord,” or “create” in the

definition Only refers to “preparing” a derivative work

o A derivative work should be embodied in some tangible form (essentially fixation?) Professor argues that the adaptation right is not separate but coexists with the

other rights a derivative work must be either fixed or publicly distributed/performed in order to be infringing

C. Public Distribution – 17 U.S.C. § 106(3) Characteristics

o Treated similarly to the reproduction righto Exclusive right to distribution of copies OR phonorecords of a work to the public by

sale or other transfer of ownership, or by rental, lease, or lending Either by permanent or temporary transfer

o Ability to control the transfer of physical copies or phonorecords of the work Limited by the First-Sale Doctrine

o Permanent transfers are limited by § 109 (first-sale doctrine) – restricts the copyright owner’s control over dissemination of copies to the first sale or transfer

Limitation on a copyright holder’s distribution and display rights ONLY Only applies to copies that are lawfully made

The burden of proving a copy was lawfully made is on the defendant First sale doctrine does NOT apply to people who have obtained a copy by

rental, lease or lending First sale doctrine does NOT apply to electronic files

No way to electronically transfer the file without reproducing it unless it’s on a tangible object and that tangible object is transferred

o Statutory exemptions from the first-sale doctrine Commercial rental of sound recordings

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Commercial rental of computer softwareo Droit de Suite right

California is the only US state to recognize the resale royalty right (primarily a European right)

Requires payment upon the resale of a work of fine art Defined as an original painting, sculpture, or drawing or an original

work of art in glass The artist (or successors for 20 years after the artist’s death) is entitled

to be paid by the seller a royalty equal to 5% of the gross resale priceo Unless the resale price is >$1,000 and then it’s 5% of the price

previously paid by the seller Requires either that the seller be a resident of CA at the time of the resale, or

the resale must take place in CA London-Sire Records v. Doe 1 (peer-to-peer file-sharing – offers to distribute)

o To constitute a violation of the distribution right, the defendants’ actions must do more than authorize a distribution or made something available – they must actually distribute it

Making a file available for download could lead to contributory infringement if a direct infringement can be proven (requires proof that someone actually downloaded the file unlawfully + knowledge of infringement)

o All distributions to the public are publications, but not all publications are distributions to the public (publication is broader than distribution)

o An electronic file transfer can constitute a “transfer of ownership” What matters in the marketplace is not whether a material object changed

hands, but whether, when the transaction is concluded, the distribute has a material object

Import/Export Rights – § 602o Importation into the US of copies or phonorecords of a work that have been acquired

outside of the US is an infringement of the exclusive right to distribute copies or phonorecords under § 106

o If the copies would have been infringing if the Copyright Act had been applicable, the importation is prohibited

Unlawful copies can be seized at the bordero Quality King Distributors v. L’Anza Research (application of the first-sale doctrine to

copies made within the US) Where a product is lawfully manufactured in the US for export and is subject

to a valid first sale, its subsequent re-importation is permissible under § 109 and does not fall under the § 602 prohibition

o John Wiley & Sons v. Kirtsaeng (application of the first-sale doctrine to copies made outside of the US)

The first-sale doctrine applies to goods manufactured outside of the US, and the protections and exceptions offered by the Copyright Act to works “lawfully made under this title” is not limited to geography

Applies to all copies legally made anywhere, as long as they are lawfully made under the standards of this title

D. Public Performance – 17 U.S.C. § 106(4) Characteristics

o Does NOT apply to: Pictorial, graphic, and sculptural works

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Architectural works Sound recordings

See § 106(6) for digital audio transmission righto § 101 Definition of Perform: To recite, render, play, dance or act a work either

directly by means of any device or process Includes live performances or performances by means of any device or

processo § 101 Definition of Publicly:

Perform or display at a place open to the public Perform or display at any place where a substantial number of persons outside

of a normal circle of a family and its social acquaintances (semi-public) Transmit/communicate a performance or display in a public place Transmit/communicate a performance or display to the public by means of

any device or process Includes asynchronous transmission Does not matter whether it is one person in one place or multiple

people in multiple places Columbia Pictures Industries v. Aveco (video cassette and viewing room rental)

o If any member of the public can rent a viewing room, the space is open to the public and any viewing is considered a public performance

Secondary Transmissions (see “Secondary Transmissions” handout)o Characteristics

The unauthorized transmission or retransmission of a copyrighted work is an infringement

A cable television system is “performing” when it retransmits a broadcast to its subscribers

o EXEMPTIONS / Limitations § 110(5)(A) exempts public reception of transmission on a single receiving

apparatus of a kind commonly used in private homes, unless a direct charge is made or transmission is further transmitted to the public

Basically codified Twentieth Century Music Corp v. Aiken (fast-food chicken restaurant)

§ 110(5) in general provides a whole suite of exemptions by commercial establishments

§ 110(B)(5) added more black-letter exemptions for larger businesses § 111(a)(1) exempts secondary transmissions not made by a cable system that

consist entirely of relaying signals by management of a hotel, apartment house, etc., of local broadcasts to guests or residents, and no direct charge is made to see or hear the transmission

§ 111 in general establishes regulation and compulsory licensing schemes for secondary transmission by cable TV systems

§ 119 establishes a system of compulsory licenses for some transmissions by satellite carriers

§ 122 establishes a royalty-free compulsory license for direct broadcast satellite of local television stations into local markets

o American Broadcasting Co v. Aereo (internet re-transmission equipment) Internet re-transmission is considered a public performance Providing re-transmission equipment does NOT impose liability for public

performance The choice of content is selected by the cable provider

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Making the equipment available is likened to copy shops making copiers available only contributory infringement if known

D. Public Display – 17 U.S.C. § 106(5) Characteristics

o Does NOT include sound recordings or architectural workso Congress was concerned with transmissions to a remote location and multiple images

Attempted to eliminate substitutes for purchase without authorizationo Limited by § 109(c)

The owner of a particular copy lawfully made can display that copy publicly, either directly or by the projection of no more than one image at a time to viewers present where the copy is located

Essentially limits public display rights to transmissions, remote displays, or multiple displays

CAN display an image on a single screen to many people, but can NOT display an image on individual screens (creates the situation where you’re displaying multiple images at the time)

Perfect 10 v. Amazon/Google (determining who is “displaying” - thumbnail image search)o In order to incur direct liability for a public display, you must be in possession of a

copy A search engine would not be held directly liable for pointing to images, but

may be contributorily liable if the plaintiff can prove intent De Minimis

o Ringgold v. Black Entertainment Television (poster in the background) The display of a poster in the background of television program is considered

a public displayo Sandoval v. New Line Cinema (photos on a lightboard in “Seven”)

The blurry display of photos in the background of a film is de minimis because the public cannot readily identify the photos

EXEMPTIONS / Limitationso Most of the exemptions or limitations for public performances also apply to public

displays

E. Copyright Management Information (CMI) – 17 U.S.C. § 1202 Characteristics

o Essentially digital terms and conditions o Defined to include title, author, rights owner, performer, “terms and conditions for the

use of the work, identifying numbers or symbols, and “such other information as the Register of Copyrights may provide by regulation”

o Any CMI must be preserved Includes analog as well as digital uses of CMI

o Becoming a popular cause of action REQUIRES intent to facilitate infringement Courts are split as to what the cause of action really entails

Reproducing the original without reproducing the CMI; or Taking the plaintiff’s original and removed something from it

F. Digital Performance of Sound Recordings – 17 U.S.C. § 106(6) (see “Musical Works and Sound Recordings” handout)

Characteristics

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o Only a digital audio transmission right When a sound recording is played on traditional AM/FM radio, the musical

work copyright owner gets paid, but the sound recording copyright owner does not

When a sound recording is played on internet/satellite radio, both the musical work and sound recording copyright owners get paid (unless there is an exception)

o Limited by date Works fixed before 2/15/72 Governed by state law Works fixed on or after 2/15/72 Governed by federal law

o Limited by § 114(d) § 114(d)(1): Over-the-air AM/FM digital broadcast is EXEMPT § 114(d)(2): Imposes compulsory licenses for:

Subscription transmissions (SiriusXM); and Eligible non-subscription transmission (webcasts/streaming services)

§ 114(d)(3): Interactive transmission (negotiated license) Services where you can request that a certain song be played for you

(substitute for a purchase)

G. Moral Rights – 17 U.S.C. § 106A Characteristics / Important Dates

o March 1, 1989 = the date the US joined the Berne Convention Major difference between US and the Berne: US does not expressly recognize

“moral rights” leaves it to the authors to govern moral rights through contracts

o Article 6bis – Berne Convention Right of attribution: right to claim authorship, be identified as the author

Or right not to have name associated with something not authored Right of integrity: right to object to any distortion, modification, or mutilation

which would be prejudicial to the author’s reputationo Visual Artists Rights Act of 1990 (VARA § 106A)

Limited recognition of moral rights in works of visual art More like an art preservation statute

Gilliam v. ABC (de facto moral rights – Monty Python)o A cable company cannot broadcast the work of an author that has been heavily edited

without a significant disclaimer false designation of origin Dastar v. 20th Century Fox (re-edited TV program from public domain without credit)

o False designations of origin do NOT include the origin of intellectual property Limited to the origin of tangible objects

o Lanham Act § 43(a) does not apply to false designation of origin unless it involves goods overrules Gilliam

Phillips v. Pembroke Real Estate (site-specific park sculptures)o VARA rights are not afforded to site-specific art

Cannot create encumbrances on real property interests Serra v. US General Services Administration (pre-VARA Serra work at Federal Plaza in NY)

o Work that was sold cannot be controlled post-sale There is no independent 1A right to have a work maintained indefinitely

Carter v. Helmsley-Spear (ugly walk-through sculpture)o A work for hire is not subject to VARA restrictions

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Martin v. City of Indianapolis (stone sculpture on public land destroyed against contract)o Damages will be awarded to an artist whose work was destroyed in violation of

VARA or in breach of contract EXCEPTIONS

o § 113(d) – Building Incorporation (1) Waiver required to remove work which cannot be removed without

destruction Building owners should ALWAYS obtain waivers for art incorporated

into buildings (2) 90-days notice to remove work which can be removed without destruction

H. METHOD OF ANALYSIS In analyzing whether a copyright owner’s rights have been violated:

o One must first consider whether there has been an unauthorized exercise of one or more of the copyright owner’s exclusive rights as specified in § 106

o One must then consider whether any of the exceptions or limitations in §§ 107-122 applies

In an infringement action, the exceptions or limitations are treated as affirmative defenses

VI. Duration, Renewal, & Termination of Transfers (see “Duration & Renewal” handout)

A. Duration Characteristics

o 1790 = 14 + extension of 14 add’l yearso 1831 = 28 + extension of 14 add’l yearso 1870 = sameo 1909 = 28 + extension of 28 add’l years (max of 56)o 1976 = Life of author + 50 yearso 1998 = Life of the author + 70 years (CURRENT)

Duration of joint works is based on the life of the last living joint author

B. Renewal Characteristics

o In order to renew, the work must have first been validly registeredo Renewal term had to be registered during the final year of the prior term (between the

27th and 28th year anniversary of the date copyright was invested) For works published/registered prior to 1978, renewal was due on the actual

anniversary EXAMPLE

o Registration = 8/1/40o Renewal Due = 8/1/67 – 7/31/68

For works published/registered in 1978, renewal was due during the calendar year before it expired

Who gets to renew?o Default is the author, widow/widower, or heirs

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Federal law preempts wills for works left to someone other than the widow/widower or children (if still alive)

Wills are only honored if no living spouse or childreno Alternative renewal rights – 4 categories in which the owner of the copyright can

renew instead of the author Posthumous works Periodic, cyclopedic, or other composite works Works copyrighted by corporate bodies Works made for hire

Transfers of Renewal Termo Fred Fisher Music v. Witmark (assignment of renewal terms)

An assignment by an author of the renewal term, before the right thereto has vested, is binding on the author

o Miller Music v. Charles N. Daniels (overruled Fred Fisher Music) Author must survive until the renewal term vests contingent assignment

Derivative Workso Stewart v. Abend (derivative work status after renewal)

Assignee of the renewal term may not continue to exploit a derivative work created during the initial term of the copyright if the author dies before the renewal term is secured

Automatic Renewal (1992)o Only applies to works published/registered in 1964 or latero If a renewal was filed, whoever was entitled to the renewal at the time it was filed

would obtain the renewal right If a renewal was never filed, whoever was entitled to renewal at the time the

renewal term began would obtain the renewal righto Benefits to timely filing a renewal anyways

Early vesting vesting occurs when renewal is timely filed and is vested in whoever was entitled to it as of the date filed

If you don’t file for a renewal, the renewal vests on the date the renewal term begins (becomes an issue if the author dies before the renewal term begins)

Stewart v. Abend is only available if a timely application for renewal was filed during the final year

Otherwise a derivative work prepared during the initial term may continue to be used under the terms of the grant during the renewal term

Presumption of valid renewal Can obtain statutory damages and attorneys’ fees

C. Restoration (Effective 1/1/96) (see “Duration & Renewal” handout) Characteristics

o Copyrights that had once fallen into the public domain have been restored to protected works zombie copyrights

o Article 18 of the Berne Convention requires retroactive US protection to works still under copyright in their source country

Adopted under § 104A of the Copyright Acto Requires at least one foreign author and the work was published in a foreign country

but was NOT simultaneously published in the US (within 30 days)o Applies to work that fell into the public domain due to:

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Non-compliance with formalities Pre-1972 sound recordings Foreign source without a prior treaty

o Lasts for as long as it would in the US had it not fallen into the public domain to begin with same duration as domestic work

o Ownership is determined by the rights granted in the source country Reliance Parties

o Definition: Someone who relied on the fact that the work was in the public domain prior to restoration

o Prior to lawsuits filed for restored works, the foreign owner must provide the alleged infringer with actual/constructive notice of intent to enforce the restored copyrights

o Alleged infringers who receive notice could NOT make any additional copies and had one year to sell existing inventory

o Owners of derivative works can continue to exploit the work upon payment of reasonable compensation (negotiated or determined by a court)

D. Termination of Transfers (see “Termination Review Questions” handout) Characteristics

o Provides authors with a 5-year window during which he could terminate a transfer and recapture rights

§ 203(a) – Termination statute for works created in 1978 or later (termination for new grants)

Depends on when the grant being terminated occurred § 304(c) – Termination statute for works created prior to 1978

Created a termination right at the beginning of the extension of the renewal term

Attempted to keep agreements under settled expectations but put conditions on the renewal term extension

o Congress expressly provides that termination can be effected notwithstanding any agreement to the contrary

NO assignment of termination rights in advance Parties CAN at any time agree to voluntarily terminate an existing grant and

negotiate a new one, thereby causing another 35-year period to start running under § 203

Requires that the author still have it in his power to terminate at the time and the author was leveraging his termination right to negotiate a better deal goals of the termination provisions have been acheived

o Unlike renewal, termination is NOT automatic Method of Analysis

o Identify the rights being transferredo Determine which statute applies by determining when the grant occurredo Determine the termination window according to that statute

It would also be helpful to determine the date on which the renewal would be effective – be mindful of who is eligible to file the renewal AND whether that person has filed the renewal

EXAMPLE: If the renewal date would the the end of the 28th year and the work was published July 1, 1960, the renewal date would be December 31, 1988. If the author died before the renewal date, the only person that can renew is the author’s spouse (or surviving children if spouse dies)

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Reminder: Renewal must be filed anytime during the calendar year in which the initial term expires (§ 305)

EXAMPLE: If the renewal date would be December 31, 1988, the renewal must have been filed any time during the 1988 calendar year

o Select the effective dateo Calculate the window in which to serve the termination notice (2-10 years prior to

effective date)o Determine on whom the notice needs to be servedo Record the termination notice with the Copyright Office

§ 203 Analysis / Noteso Identify the rights being transferredo Determine the date of the grant to be terminated

For grants covering initial publication rights, the termination window opens 35 years from the date of publication OR at the end of 40 years from the date of the grant, whichever term ends earlier

o Add 35 years to that date to determine when the termination window opens Window closes 5 years later

EXAMPLE: Window opens on July 1, 1995 and closes on June 30, 2000 (according to the prof / July 1, 2000 according to the Copyright Office)

See notes above for renewal term reminderso Determine a date in the termination window in which to serve notice (between 2 and

10 years prior to the effective date)o If properly terminated under § 203(a), the work will enter the public domain 95 years

after the date on which copyright protection vested o GENERAL NOTES

§ 203 does NOT apply to dispositions made by will (no termination right) Termination rights are separate from renewal rights – renewal rights

dispositions by will are preempted, termination rights are not § 203 does NOT apply to works made for hire (no termination right) § 203(a)(2) addresses apportionment of the survivors’ termination interests § 203(b)(1) addresses the effect of the termination on derivative works

Statute is ambiguous regarding the status of derivative works created after notice of termination but before actual termination likely treated as being created before termination

§ 304 Analysis / Noteso Determine the date of the grant to be terminatedo Add 56 years to that date to determine when the termination window opens

Window closes 5 years later EXAMPLE: Window opens on July 1, 1995 and closes on June 30,

2000 (according to the prof / July 1, 2000 according to the Copyright Office)

See notes above for renewal term reminderso Determine a date in the termination window in which to serve notice (between 2 and

10 years prior to the effective date)o If properly terminated under § 304(c), the work will enter the public domain 95 years

after the date on which copyright protection vested § 305 extends copyright protection until the end of the 95th year

EXAMPLE: Protection for a copyright published on July 1, 1939 will expire on December 31, 2034 (enters the public domain on 1/1/2035)

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o If not eligible to terminate under § 304(c), determine eligibility under § 304(d) § 304(d) is limited to works whose copyright was first secured between

January 1, 1923 and October 26, 1939o Conditions for termination under § 304(d):

Currently in the renewal term on October 27, 1998 Ability to terminate expired prior to October 27, 1998

Be mindful of notice dates – just because the termination window expires after 1998, doesn’t mean that this option is forfeited

EXAMPLE: If the termination window runs from July 1, 1995 to June 30, 2000, the last possible date to serve notice (and effectively terminate) is June 30, 1998 eligibility remains intact

Owner can NOT have exercised his § 304(c) righto If eligible for termination under § 304(d), add 75 years to the date the copyright

protection vested to determine when the termination window openso If properly terminated under § 304(d), the work will enter the public domain 95 years

after the date on which copyright protection vested § 305 extends copyright protection until the end of the 95th year

EXAMPLE: Protection for a copyright published on July 1, 1939 will expire on December 31, 2034 (enters the public domain on 1/1/2035)

§ 305 does NOT apply to termination windows (only initial and renewal terms)

§ 305 ONLY applies to works eligible for termination under § 304 grants occurring after 1978

Siegel v. Warner Bros. Entertainment (Superman & DC Comics)o Works created prior to the termination date remain intact – any works created after

the termination date are recaptured by the author / successors

VII. Infringement Actions ( see “Infringement” handout )

A. Procedural Requirements

B. Types of Infringement Literal Copying

o Method of Analysis: Determine which (if any) exclusive rights have been violated Non-Literal copying (essentially the preparation of an unauthorized derivative work)

o Method of Analysis - Plaintiff must prove 3 elements: Ownership of a valid copyright Copying Improper Appropriation of Protected Expression

C. Ownership of a Valid Copyright Plaintiff has the burden of proof § 410(c): Registration certificate provides prima facie evidence of validity of the copyright

and all facts stated in the certificate

D. Copying Characteristics

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o Plaintiff must prove copying in one of two ways: Direct evidence admission by defendant or witness testimony Indirect/circumstantial evidence inferred from access + similarities

Access = opportunity to view or experience the work Similarity = Probative similarity or Striking similarity

o Probative similarity: reasonable inference that the jury could determine copying

o Striking similarity: both works are so strikingly similar that copying must be inferred

Can overcome “access” requirement DEFENSES

o Independent creationo Common sourceo Consent (affirmative defense)o Exemptions or limitations found in §§107-122

Bright Tunes Music v. Harrisongs Music (George Harrison’s My Sweet Lord)o Subconscious copying can result when it is very likely that D has heard the original

song and D’s song is so similar that it is unlikely to have been independently created TY Inc. v. GMA Accessories (beanie babies and replicas)

o A similarity so close as to be highly unlikely to have been an accident of independent creation is evidence of access

Striking similarity is a game of probabilities Must be similar to each other but different from other items in the public domain

E. Improper Appropriation Traditional Approach (subtractive/analytic dissection)

o Step 1: Allegedly infringed work is analyzed to determine which aspects are protected by copyright and which aren’t

o Step 2: Compare the protected aspects against the defendant’s work Disadvantage is the relative inability to perceive selection or arrangement

protections Must be substantial similarity of protected expression

Alternative Approacho Review the works as a whole (“total concept and feel” method)

Advantage of being able to perceive patterns Disadvantage is the possibility of protecting unprotectable content

Viewing Standardo Whether an ordinary observer, unless he set out to detect disparities, would be

inclined to overlook them and to regard their aesthetic appeal as the same Roth Greeting Cards v. United Card (your absence is raising hell with my sex life)

o Traditional approach was unable to discern the patterns (i.e., phrases, snarky feel) but the “total concept and feel” approach included the greeting card line as a whole so the court considered it infringing

Sid & Marty Krofft Television Productions v. McDonalds (H.R. Pufnstuf vs. McDonaldland) Nichols v. Universal Pictures (Abie’s Irish Rose vs. Cohens & Kellys)

o The more specific you can be about the similarities in abstraction, the more likely it is that the expression was appropriated

High level of abstraction is more likely to be ideas Dialogue (low level of abstraction)

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Characters Plot Theme (high level of abstraction)

Peter Pan Fabrics v. Martin Weiner (textiles used for womens’ dresses) Laureyssens v. Idea Group (foam rubber puzzles – 3D cube or flat)

o If there is enough similarity that would raise an inference of copying, but the copying performed was that of the idea, not the expression, there is no improper appropriation

Tufenkian Import/Export Ventures v. Einsten Moomjy (Tibetan style carpets)o Improper appropriation can include the selection or arrangement of a work when the

selection and arrangement is preserved and is creative and original to the infringed work

VIII. Secondary Liability

A. Theories of Liability Contributory Infringement

o Fonovisa v. Cherry Auctions (swap meet retailers selling counterfeit records) Knowledge of infringing activity Inducement, encouragement, or material contribution

Vicarious Liabilityo Fonovisa v. Cherry Auctions (swap meet retailers selling counterfeit records)

Right and ability to control the infringing conduct (policing) Direct financial benefit

B. Liability Limitations for Internet Service Providers (ISPs) (see “Section 512” handout)

§ 512 – Digital Millennium Copyright Acto Provides safe harbors for several categories of activity that might otherwise render a

service provider directly, contributorily, or vicariously liable for copyright infringement

Transmission and transient storage of copyrighted material System caching Storing material for users (web hosting) Providing information location tools

o No duty to patrol but must implement Notice & Take-Down provisions to take down anything a copyright owner notifies as infringing

Religious Technology v. Netcom On-line Communication Services (Scientology vs. ISP)o No direct liability for webhosting serviceso Could be vicariously liable if the ISP obtained direct financial benefit

Viacom v. YouTube (public performance liability from web hosting)o ‘By reason of storage’ includes giving the public access to the material being stored

No public performance liability for people who publicly display or perform the content stored

o Actual knowledge provision turns on whether the provider actually or ‘subjectively’ knew of specific infringement

o The red flag provision turns on whether the provider was subjectively aware of facts that would have made the specific infringement ‘objectively’ obvious to a reasonable person

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C. Sale of Copying Devices Sony Corp of America v. Universal City Studios (the ‘Betamax’ case)

o The making of individual copies of complete television shows for purposes of time-shifting does NOT constitute copyright infringement fair use

Borrowed an analogy from patent law (§ 271(c)) – providing a staple article of commodity or commerce that is suitable for substantial, non-infringing use, there is no liability for contributory patent infringement

o Manufacturers of home video recording devices, such as Betamax or other VCRs cannot be liable for [contributory] infringement

Excludes computers MGM Studios v. Grokster (peer-to-peer file sharing)

o Peer-to-peer file sharing companies could be sued for inducing copyright infringement for acts taken in the course of marketing file sharing software

The rule on inducement of infringement as developed in the early cases is no different today – advertising an infringing use or instructing how to engage in an infringing use, show an affirmative intent that the product be used to infringe, and a showing that infringement was encouraged overcomes the law’s reluctance to find liability when a defendant merely sells a commercial product suitable for some lawful use

Did not use Sony to decide this case on the basis of the device, but rather imputed intent to infringe inferred intent

D. Anti-Circumvention Provisions § 1201 – Digital Millennium Copyright Act

o Provides three new causes of action (in addition to infringement) § 1201(a)(1): Prohibits circumvention of technological protection measures

that effectively control access to a copyrighted work EXAMPLES: Password protection, encryption, scrambling, etc.

o Obtaining a password illegally is not circumventiono Requires technological circumvention

Prohibits hacking Applies to access control measures

§ 1201(a)(2): Prohibits the trafficking of devices or software that allow people to circumvent technological measures

Prohibits selling or distributing devices or software allowing people to hack

Applies to access control measures § 1201(b): Prohibits the trafficking of drives or software allowing people to

circumvent copy control measures Applies to copy control measures

o Carves out exceptions to § 1201(a)(1) – (see “Exemption to Prohibition” handout) Delegates rulemaking authority to Copyright Office (triennial reviews)

Depends on evidence that fair use rights will be harmed within the next three years establishes that certain kinds of circumvention conduct is lawful (for three years)

o Must start from scratch each time requires new evidence every three years

University City Studios v. Corley (hacker magazine distributed DeCSS code)o Communication of a computer program is a form of speech protected under the 1A

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o Any law that regulates such communication may be permissible under content-neutral restrictions if it meets intermediate scrutiny

A content-neutral laws will survive if: It serves a substantial governmental interest The interest is unrelated to the suppression of free speech It is narrowly tailored to meet that burden

IX. Fair Use & Affirmative Defenses

A. Fair Use Elements

o Purpose & Character of Use Transformative vs. Superseding Non-Profit vs. Commercial Educational vs. Entertainment Good Faith vs. Bad Faith

o Nature of the Copyrighted Work Fact/Non-Fiction v. Fictional/Creative Published vs. Soon-to-be Published

o Amount and Substantiality of Portion Copiedo Effect on Potential Market

Harper & Row Publishers v. Nation Enterprises (Ford memoirs / Nixon pardon)o The author’s right to control the first public appearance of his expression weighs

against fair use before it’s first release Bill Graham Archives v. Dorling Kindersley (Grateful Dead biography)

o Use of promotional posters in a biographical timeline constitutes a fair use Kelly v. Arriba Soft Corp (visual image search engine)

o Reproduction of images for use as thumbnails in a search engine constitutes fair use The image displayed is smaller and lower quality, which is not a substitute for

the original Authors Guild v. Google (GoogleBooks)

o Unauthorized digitizing of protected works, creation of a search functionality, and display of snippets of text from those works constitutes a fair use

B. Other Affirmative Defenses Copyright Misuse

o Forbids the use of the copyright to secure an exclusive right or limited monopoly not granted by the Copyright Office and what it is contrary to public policy to grant

EXAMPLE: Software licensing that restricts use to that manufactured by the software company

o Analogous to the patent misuse defense recognized by the Supreme Court Statute of Limitations

o Civil actions: Three years from the date on which “the claim accrued” Discovery rule probably applies time runs from when the plaintiff learns of

the infringement or could have learned of it through the exercise of reasonable diligence

o Criminal actions: Five years from the date on which the “cause of action arose” Latches

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o Unreasonable delay combined with prejudice to the defendant is grounds for dismissal

o Only applies to equitable remedies cannot be used to bar damages Estoppel

o When the alleged infringer can show that: The copyright owner knew of the facts of infringement The copyright owner intended its conduct to be acted upon

o Different than latches Abandonment or Forfeiture

o Abandonment = Voluntary and affirmativeo Forfeiture = Involuntary (by operation of law)

Fraud on the Copyright Officeo Not a defense copyright is strict liabilityo Could be taken into account in fashioning the remedy for statutory damages

Only applies in situations of improper copyright notice

X. Remedies & Preemption

A. Remedies Statutes

o § 502: Preliminary and permanent injunctionso § 503: Impoundment and dispositiono § 504: Monetary remedies

§ 504(b): Actual damages + infringer’s profits (to the extent they don’t overlap)

§ 504(c): Statutory damages Limited by § 412 (registration)

o § 505: Costs and attorney’s fees (discretion of district court?) Limited by § 412 (registration)

o § 506: Criminal penalties Injunctions

o Characteristics Preliminary injunctions are requested at the outset and are often dispositive

Requires assessment of likelihood of success on the merits Permanent injunctions are requested after a finding of infringement and was

traditionally automatic irreparable harm was presumed on a finding of infringement

Burden of proof is on the moving party Only requires prima facie case of infringement Aligns with burden of proof at trial

o eBay v. MercExchange (patent case that abrogates presumption of irreparable harm for permanent injunction)

RULE: A plaintiff must show all four of the following elements in order to obtain a permanent injunction:

Probability of irreparable injury Inadequate remedy at law Balance of hardships in favor of injunction Public interest

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o Salinger v. Colting (Catcher in the Rye sequel – abrogates presumption of irreparable harm for copyright / preliminary injunction)

eBay rule applies to copyright cases for both preliminary and permanent injunctions

Irreparable harm : Harm that cannot be remedied at law (monetary damages) Irreparable injury and inadequate remedy are considered the same

element Market and reputational harm are sufficient to constitute irreparable

harm Balance of hardship : Analysis of injury to the plaintiff without the injunction

against the injury to the defendant if the injunction is wrongfully issued Public interest : Assessing the public interest in the availability of the work

Impoundment & Dispositiono Characteristics

Impoundment: Preliminary equitable remedy requiring that the infringed copies be seized prior to trial

Disposition: Permanent equitable remedy allowing the destruction of infringed copies after trial

o Standard is the same as preliminary and permanent injunction respectively Statutory damages

o Plaintiff may elect one of two options at any point before final judgment (can ask the jury to calculate both and then choose the larger of the two)

§ 504(b) – Actual damages + infringer’s profits Cannot overlap

§ 504(c) – Statutory damages Easier than proving damages under § 504(b) Calculated per work infringed (not per infringement)

o Single award of damages ranging from $750-$30,000 Minimum can be mitigated down to $200 with proof of

innocent infringement Not available if P used proper copyright notice

Maximum can be aggravated up to $150,000 with proof of willful intent (P has burden of proof)

o Awards are based on the number of defendants One award for jointly and severally liable defendants Separate awards can be issued against individual

defendants who are not jointly and severally liableo Courts can use discretion when determining award of damages

Can request jury trial for damages Juries consistently award higher damages than courts

are willing to Limited by the Due Process Clause

o Cannot be so severe and oppressive as to be wholly disproportionate to the offense and obviously unreasonable

o Doesn’t really help in peer-to-peer file sharing caseso Columbia Pictures v. Krypton Broadcasting (rebroadcasting classic TV programs)

Episodes of a TV series are considered individual works infringed A TV series is generally NOT considered a ‘compilation’ under §

504(c)(1)

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Willfulness : requires the plaintiff to prove that the defendant knew what he was doing was unlawful

o Polar Bear Productions v. Timex Corp (“PaddleQuest” promotion video for Timex watches)

Standard for Actual Damages Hypothetical license transaction

o What a hypothetical licensor/licensee would agree to Fair market value

o Can be based prior licensing models/benchmark licenseso Can include proposed license fees from failed/prior

negotiations Standard for Infringer’s Profits

Plaintiff must show a causal nexus between the infringement and the gross revenue

Infringers bear the burden of apportioning the profits that were not the result of the infringement

o Double-counting Plaintiff can only recover profits that are not taken into account when

computing actual damages Extraterritoriality

o Subafiles v. MGM-Pathe Communications (Yellow Submarine animated film) RULE (9th Cir.): Authorizing sales is not direct infringement; only

contributory infringement and cannot impose liability for contributory infringement unless the underlying conduct is infringing

o Pursing foreign infringement in US federal courts Can ask a US court to apply foreign law (requires subject-matter jurisdiction) Can use diversity to get into federal court

Or go to state court without diversity Can use supplemental jurisdiction if there is a cause of action for domestic

infringement (requires personal jurisdiction)

B. Preemption & State Law Remedies Characteristics

o Arises from Supremacy Clause (Art VI, clause 2) Does not divest States’ power from regulating IP

o Codified in § 301 Any state law rights equivalent to exclusive rights specified in § 106 for

copyrightable works are governed by this Title and all other state law is preempted

o “Equivalent to Exclusive Rights” Any of the elements required for copyright infringement PREEMPTED Any elements different or in addition to those required for infringement? NOT

PREEMPTED Must change the nature of the cause of action, not merely the scope

o Trade secret is NOT preemptedo Breach of contract is typically NOT preemptedo Misappropriation claims are PREEMPTEDo Conversion of tangibles is NOT preemptedo Conversion of IP is typically PREEMPTED

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o Trademark law is NOT preempted Katz, Dochtermann & Epstein v. HBO (“It’s not TV. It’s HBO” ad campaign)

o RULE: A state law claim is NOT equivalent to any of the exclusive rights protected in § 106 if it includes an “extra element” instead of or in addition to an exclusive right

§ 106 Reminder: Reproduction, adaptation, public performance, public display, or public distribution

Bowers v. Baystate Technologies (shrink-wrap EULA)o The prohibition on reverse engineering encompasses more than copyright protection

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