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Copyrights Outline

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									A. Question: Does Copyright subsist in the work?? B. Copyright law only protects works of authorship, and only when in tangible forms C. OWAFTME – Original Work of authorship fixed in any tangible medium of expression. D. §102 – Subject Matter Of Copyright: In General (a) Copyright Protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid or a machine or device. Works of authorship include the following categories: (list is inclusive, not exhaustive) (1) Literary works; (2) Musical works, including any accompanying words; (3) Dramatic works, including any accompanying music; (4) Pantomimes and choreographic works; (5) Pictorial, graphic, and sculptural works; (6) Motion pictures and other audiovisual works; (7) Sounds recordings; and (8) Architectural works (b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. E. § 202 – Ownership of Copyright as distinct from ownership of material object (a) Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Transfer or ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object F. Ambiguity always lurks when interpreting statutory text G. How much are we willing to protect an author’s expression?? COMMON LAW AND STATUTORY COPYRIGHT A. Issue in these cases is whether the author has abandoned their common law copyright B. Common Law of Copyright – when referred to in these cases, it means state common law principles since there’s no federal common law (a) In each of the following cases, the P is saying that the D violated his rights under state common law of copyright C. 1909 Copyright Act: (a) Publication of a work was the demarcation between common law (state) and federal (statutory) (1) Common law © protects an artist’s right to be the first to publish his work 1. magic moment is when work is publicly displayed;

(2) Once it is published then federal law applies D. 1976 Copyright Act: (a) Replaces the scheme of publication under the 1909 Act, federal copyright protection now begins at fixation (3) See§302(a) “copyright subsists form creation;” see §101, creation “fixation by or under the authority of the author” (4) See also §301(a), common law copyright ends at fixation (5) Hypo: Band is performing Original work which ahs never been fixed or performed before, someone records it without permission. This does not give it copyright protection – for that you need fixation by or under authority of the author E. Pushman v. NY Graphic- SALE- (Pushman sold his painting without any restrictions on the transfer. Now wants to stop reproduction of paintings. Saying that NYGS can’t repro paintings b/c doesn’t own rights to do so) (a) This case was about common law and not federal statutory law b/c this work was never copyrighted under the federal copyright act in effect at that time (6) The publication of a work under the 1909 copyright act marked the boundary between common law rights and federal (7) The sale or publication of your work means that you lose your common law rights in copyright. Thus, whatever your common law rights were prior to publication are gone once publication occurs (b) Overall – under Pushman, the unconditional sale of an… (8) Common law copyright doesn’t disappear, it is simply conveyed along with the unconditional sale of the work without any reservations by the artist attached 1. Reserve your right if you want to preserve it. (9) The narrow holding of pushman case is the repro rights attached to copyright (c) NOTE: 1976 © act changed this publication critical date for common law copyright (d) Pushman under the 1976 Copyright Act (10) Rights start with the author under §201, as the work ahs already been fixed we aren’t dealing with a common law © claim, this is federal (11) Issues becomes does the sale of the material object affect the author’s §106 rights? 1. §202 is critical: transfer of the object in which the work is embodied is distinct from transfer of the copyrighted work itself 2. §204(a) would come into play if there was a “written conveyance” along with the work – conveyance of rights requires signature of the transferor 3. But they could be giving a license which does not require writing, now look to custom in the industry and if anything customarily accompanies this type of sale. (e) First Sale Doctrine - §109 lays out boundaries and rights of the “first sale doctrine” (12) NOTE: Pushman is the COMMON law version of the right to “first publication” which is essentially the opposite of that which is embodied in the Copyright act §109 (f) What about the possibility of the University in Pushman claiming that they had a NONEXCLUSIVE LICENSE (since there was no writing) or right to reproduce his work? (13) Look at §101 definition of “transfer of Copyright Ownership”

F. Chamberlain v. Feldman – PURCHASE- (Manuscript of story written in 1876 but never published was not found among author's effects at his death; in 1945 defendant purchased manuscript and wanted to publish it) (g) The common-law right of first publication, is a right different from that of ownership of the physical paper. The rights don’t necessarily pass with the ownership of the object. The separate common law copyright or control of the right to reproduce belongs to the artist or author until disposed of by him and will be protected by the courts (h) since author never intended publication of manuscript, defendant could not have bought publication rights G. Hemingway v. Random House – SPEECH-(friend of Hemingway wrote articles about him while he was alive. Published Hemingway’s conversational speech in his memoirs. Hemingway wants damages) (a) P’s didn’t bring federal Copyright claim b/c they are still relying on pre-publication rights, which bring in common law copyright (14) Possible Exam Question – After the publication of his words by Hochner, what rights does Hemingway have? (b) RULE: If there is going to be a common law copyright in speech, the speaker needs to break it off from the stream of conversation. This will not create a common law copyright but may begin to rebut the presumption that there is no common law copyright protection in speech. (c) Common law copyright: authors right under state law that lasts indefinitely and protects the first publication of the work. Enables the author to control the first publication of his work. Right is extinguished once the work is published, author must rely on federal statutory law. (d) If Hemmingway had written this stuff down and handed it to Hochner, does this case come out differently? (15) It would seem that he would have common law © protection based on the dicta in this case concerning personal letters – since conveyance of the tangible piece of property does not necessarily convey the common law copyright rights attached therein. (e) Had Hemingway recorded his conversational speech then he would have prevailed on having these common law © rights. However, b/c it was conversational speech that was only oral, no common law copyright existed in it (16) Court highlights 2 specific problems that would arise from attaching common law © to oral conversational speech 1. First amendment issue 2. Don’t want to keep from the public the important thing these 2 intellectuals are saying (f) The court does not NOT actually decide the issue it set out to decide. It says that “assuming in a proper case…” (17) Instead the court decides that b/c Hemindway didn’t fix it in a tangible medium (g) What is the Rule of Law going forward from case? That if there is going to be common law copyright protection in speech, then the speaker must indicate an intention to copyright certain portions that he so desires.





(18) Somehow the speaker breaks off the speech the portions that he intends to protect through common law copyright (h) If Hemingway case was decided under the 1976 Copyright Act – (19) Hemingway himself could make the argument that his oral conversational speech was protected by copyright since it was fixed by Hochner (w/ Hemingway’s permission) as he spoke it. (20) Thus Hemingway is the author and the work is protected by Federal © Law Moment of Fixation (a) Drastic change that came about from the 1976 Copyright Act to define specific end to your state common law copyright and the start of your federal copyright rights (21) Once this “moment of fixation” occurs, whatever rights you have are given to you by way of the federal copyright laws. (22) Made shift from publication-based regime to moment of fixation-regime b/c it was very difficult to determine when something became “published” – this was the source of many conflicting interpretations of the term (b) Effective date of 1976 Act – Jan 1, 1978 Progression to Determine when Federal Copyright Protection Begins: (a) §302(a) - Federal copyright protection begins when a work is “created” (at least for works created after) (b) §101 – a work is created when it is FIRST “FIXED” in a copy or phonorecords (c) §101 – a work is “fixed” when… When do state common law copyright rights end under the Copyright Act: (a) See §§301-302 (b) Until “fixation” – nothing in the Copyright Act annuls or gets rid of state Common law rights (c) NOTE: Common law © would apply to an author’s works that are fixed without author’s permission (23) Therefore – for a live performance, if you record you are violating the author’s common law © MLK v. CBS – SPEECH AND DIST OF COPIES- 1909 Act – (Famous speech was copywritten one month after it was delivered, CBS wanted to do a series including 60% of the speech. Family wanted to prevent broadcast, or otherwise get paid royalties for usage.) (a) b/c didn’t register the speech, this was reason (statutory formality) that he couldn’t sue under federal copyright laws (b) If speech was in public domain before 1/1/78, then federal copyright doesn’t subsist in the speech at all (24) No cause of action under the 1976 © act if the work reached the public domain prior to 1/1/78 (c) Under 1909 Act – consequences of publication were so severe, as understood from this case, that this was partially what spurned the change in the 1976 act (d) NOTE: the SJ posture of this case has a lot to do with the holding (25) Court didn’t actually decide if ultimately there was general publication (facts in dispute), but instead held that on the given facts the only thing the speech amounted to was limited publication (e) RULE:

(26) General Publication – when a work is made available to the public without regard for their identity or what they intend to do with the work. They lose common law © and don’t gain federal protection if statutory formalities aren’t complied with prior to publication (27) Limited Publication – communication of contents of a work to a selected group for a limited purpose without the right of diffusion, reproduction, distribution or sale 1. giving a speech, no matter how broad the audience doesn’t count as general publication 2. distribution to news media also not a general publication (f) Fair use Defense – currently showing this speech in an education institution (for instance) would fall under FUD and not constitute infringement L. These initial cases are important for the light they shed on current © act – the older version of the act is not important to us (g) The Hemingway and MLK cases are most interesting b/c they concern public figures that were of great important to society at large, yet we are talking about a statutory system that could essentially prohibit the public from receiving or fully appreciating these figure’s works LIMITS OF STATUTORY SUBJECT MATTER A. Copyrightability a. Must be an OWAFTME b. §102(b) – Places specific limits on Copyrightability i. “in no case does © protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated or embodied in such work.” c. Baker v. Selden – Only 1 way to express system - (Selden filed © claim against Baker for using the method of accounting described in his book and the forms necessary to implement that method. The forms were the only way to express the accounting system. Baker’s forms were slightly different than Selden’s. Merger Doctrine) i. Question: Whether the exclusive property in a system of bookkeeping can be claimed under the law of ©, by means of a book in which that system is explained? ii. Rule: Copyright protects the expression of the system but not the system itself. It would frustrate the purpose of © which is to allow for public dissemination of ideas, while protecting the way they are expressed. iii. System Part: 1. Rule: You can‟t get exclusive right to the system itself..not thru © publishing a book describing the system a. Ex. if you write a book describing how to make a medicine, you don’t then get rights to the underlying medicine. But, do get rights to the description of the system iv. Forms Part: 1. Rule: Don’t get protection in the forms, need the forms for the system a. When the art it teaches can’t be used without the diagram or forms, they are considered necessary incidents to the art and are

thus given to the public…if we protected the forms we would be giving a monopoly ultimately over the system…the forms have merged with the unprotectable system…can’t use the system without the form, that would mean that no one can use the system…giving you something we said we wouldn’t which is exclusive rights over the system. b. The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book c. To give © in forms is to give © in the system v. Merger Doctrine: the forms are so closely linked to the system that we can’t protect them vi. Reasoning: 1. System Part: to give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of © 2. Forms Part: the only way to use the system is to use the forms. If you have © on the forms you could prevent someone from using the system and thus have a monopoly B. Morrissey v. Proctor & Gamble-Limited # of ways to express something – (P had set of rules for running a sweepstakes that they sought protection for. They own © on rules. D used Rule 1 almost exactly) a. Rules: Ideas are not protectable, but the expression is. IF there are only a limited number of ways to express the process, there is a merger as there was in Baker and the expression of how to do it can’t be protected through © i. When the expression is limitless, we will protect the expression ii. When there are only so many ways to express the idea of a sweepstakes and the rules were functional, then we will not protect the expression b/c to do so would grant a monopoly. iii. The more specific and narrow the idea, the easier it is to make the Morrissey argument that there are only so many ways to express the idea and therefore no ©ability. b. Originality and Protectability: ideas are not protectable while expression is. No protection when small # of ways to say it b/c: i. No longer making a creative choice between them, necessity ii. You don’t want the fact that someone was the first to write the rules down to prvent others from running a sweepstakes iii. Would allow someone to get monopoly c. Reasoning: i. There is only one way, or really only a limited # of ways to express it/write the rules – so they are not going to say that the D is infringing…they would end up getting protection over the idea of the sweepstakes itself which is not protectable…we won’t protect those ways of describing it…then we say the

expression has merged with the unprotectable thing and thus itself is not protected by © ii. Ex. recipes – they are a method for making food…you can’t © this under §102(b). if the method for making a certain dessert is not protected then how many ways can you express this – limited…so the expression of the recipe is not going to be protected…so they aren’t protected. However, although the recipe itself may not be protected, a compilation of recipes may be protected (the arrangement, selection, etc) d. Software © ability – merger doctrine says that software isn’t copyrightable b/c there are only a limited # of ways to write a code C. Nichols v. Universal Pictures (P has © in Abie’s Irish Rose play. D produced motion picture. Both depicted conflict resulting from relationship between an Irish Catholic and a Jew. P claimed infringement) a. Court finds no infringement i. Here, no block of text taken, no word for word copying. ii. P asserts they took skeleton of plot – which would be an idea, not expression b. Rule: Substantially Similar Copy-in determining whether a copy has been made, courts assess substantial similarity to the original: i. Abstractions test (Learned Hand): Works can be abstracted on several levels (concept, plot, characters, dialogue, title) and between the levels of abstraction lay the boundaries between ideas and expression. ii. Copyright protection is not limited to the literal text, however protection also does not extend to the ideas of the work. The generalized level of abstraction at which these works are similar is not protectable. iii. when the overlapping levels of abstraction are at the level of ideas, there is no infringement, because there is no copyright in ideas. c. Substantial Similarity Test is whether an average lay observer would recognize the alleged copy as having been appropriated from plaintiff‟s copyrighted work. d. The more developed the characters, the more likely it is copyrightable. The characters must be distinct. e. The more general an idea, the less likely you will be able to convince court is © protected expression f. Must figure out where to draw the line between idea and expression. D. Nash v. CBS (P claimed D infringed his copyright of books he wrote concerning John Dillinger's death. P contended that Dillinger was not shot, as commonly believed, and that he was actually alive and living in Oregon. D used these "facts" in an episode of Simon and Simon. Since D only used the "facts" from P's books, P's copyright was not infringed.) a. Wants court to look at book in entirety, but this would include copyrightable and uncopyrightable i. So court instead divides it up – Judge Hand’s Abstraction Test b. 2 conditions that both must be satisfied for preemption of state law- §301: i. 1) the work in which the right is asserted must be fixed in tangible form and come within the subject matter of copyright as specified in § 102. 1. Nash's books are materials within the subject matter of copyright. ii. 2) the right must be equivalent to any of the rights specified in § 106.

1. A state law right is “equivalent” if: (1) it is infringed by the mere act of reproduction, performance, distribution, or display, or 2. (2) it requires additional elements to make out a cause of action, but the additional elements do not differ in kind from those necessary for copyright infringement.” c. Could try to get under infringement of the order facts/photos were compiled. i. Court says order of photos might be copyrightable, but doesn’t find infringement here b/c D didn’t use selection/arrangement and the photos aren’t his d. Court states as a matter of law, interpretation of historical facts are copyrightable (didn’t have to discuss, but chose to anyways) i. Nash argued his actual literal expression within his interpretation is what was infringed 1. seems that regardless of copyrightability or infringement part, those who base a work on facts receive less protection then those who create fictional works. e. 2 ways of copyright analysis i. Look at what is copyrightable and then look at whether it was misappropriated ii. Look at what was copied and compare it to what is copyrightable (court uses this) COMMERCIAL DESIGNS, USEFUL ARTICLES A. Useful Article Doctrine – The search for conceptual separability – B. O/I: a. only applies to Pictorial, Graphic, or Sculptural (PGS) works (see §101 defs) i. Pictorial, graphic, and sculptural works include 2 dimensional and 3dimensional works of fine, graphic, and applied art, photogrphs, prints, and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including (but not limited to) architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or ultilitarian aspects are concerned; the design of a useful article, as defined in this section shall be considered a pictorial, graphic, or sculptural work only if and to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from and are capable of existing independtly of, the utilitarian aspects of the article… b. §102(a)(5) includes Pictorial, graphic, and sculptural works as types of work that are protected by copyright c. Pictorial, graphic, and sculptural works include 2 dimensional and 3-dimensional works of fine, graphic, and applied art, photogrphs, prints, and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including (but not limited to) architectural plans. The design of a useful article, as defined in this section shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. d. © act provisions -§101 (Conceptual Separability Doctrine – See Denicola Test)

i. A useful article is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally part of a useful article is considered a useful article ii. Pictorial, graphic, and sculptural works include 2 dimensional and 3dimensional works of fine, graphic, and applied art, photographs, prints, and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including (but not limited to) architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or ultilitarian aspects are concerned; the design of a useful article, as defined in this section shall be considered a pictorial, graphic, or sculptural work only if and to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from and are capable of existing independtly of, the utilitarian aspects of the article… e. © act provision - §102(a)(5) – copyright subsists in PGS f. §113 – [Scope of Exclusive Rights in PGS work] i. (a) subject to (b) and (c), exclusive right to repro a copyrighted PGS work in copies under §106 includes right to reproduce the work in or on any kind of article, whether useful or otherwise ii. (b) doesn’t afford to the owner of the copyright in a work that portrays a useful article as such, any greater or lesser rights with respect to the making, distribution, or display of the useful article so portrayed than those afforded to such works under the law, whether title 17 or the common law or statutes of a state, in effect on Dec 31, 1977, as held applicable and construed by a court in an action brought under this title 1. common law reference, common law is confusing 2. “punt” iii. (c) in the case of a work lawfully reproduced in useful articles that have been offered for sale or other distribution to the public, © does not include any right to 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 C. Cases – all build on one another, Dennicola Test is current precedent a. Mazer v. Stein – (P seeks copyright protection in a lamp base that is also a statue of a naked lady) i. Rule: Patentability does not preclude copyrightability as an artistic work. Work of art doesn’t cease to be copyrightable just because it’s embodied in a useful article. ii. THIS CASE IS THE SOURCE OF §102(b) iii. Deletion of fine arts clause is big deal b/c it’s a verbal distinction between purely aesthetic articles and useful works, shows that new statute doesn’t care whether it’s fine art iv. Mazer could have argued: Baker holds that © protection doesn’t extend to patentable inventions and on that basis the intro of the design patent scheme means the subject matter of the design patent regime is outside of © protection

v. Effect on Baker: seem to be overruling division between things that are © and patentable. Ability to patent or © doesn’t affect your ability to get other protection vi. Limit: Respondents may not exclude others from using the statues of human figures in table lamps; they may only prevent use of copies of their statuettes as such or as incorporated in some other article 1. artistic articles are protected in form but not their mechanical or utilitarian aspects vii. Therefore, gave © protection ot bases; but limited protection to artistic not functional aspects. 1. if didn’t limit, fraud on public b/c would give a monopoly b. Kieselstein-Cord v. Accessories by Pearl, inc (P had intricate belt buckles that D copied and put in chain store. Original belt buckles were very high end and sold for lots of $) i. Court noted 76 act narrowed scope of doctrine by defining “useful article” as one with an “intrinsic utilitarian function” 1. 102(a): copyright subsists in (5) pgs works – in so far as their form but not their mechanical or utilitarian aspects a. Only considered PGS work if PGS features can be ID’s separately from and are capable of existing independently of utilitarian aspects ii. 4 requirements: 1. 102(a) req’ts: originality, fixation 2. Needs to be a listed work (does it?) 3. Protection for artyness only extends to form, not useful parts 4. Will only be PGS if artsy stuff can be ID’d separately and can exist independently of useful stuff iii. Conceptual Seperability QP: When can a PGS be identified separately from, and capable of existing, independently of the utilitarian aspects of the article?” 1. Can be (1) physical or (2) conceptual a. Copyright can adhere in conceptual separation of artistic elements iv. Test Adopted: rely on popularity of belt for uses other than utilitarian aspect to show seperability 1. post points out how it cannot be the only test b/c it would link ©ability to popularity of an item a. should it be relevant evidence? Yes i. determinative – No. v. Application to Fact: 1. Is this a useful article: yes, belt buckles 2. intrinsic utilitarian function: connects belt, holds up pants 3. P has to show sculpture can be ID’d separate and can exist independent of useful part (buckle) 4. Identify separately and exist independently a. Designed/purchased for reasons other than utilitarian function i. Belt buckles used as ornamentation 5. limitation of Mazer: didn’t care whether it was useful article, here they say it doesn’t matter b/c can’t copyright utilitarian parts

c. Barnhart v. Economy Cover Corporation (copyrightability of mannequins) i. Question: when dealing with a useful article, “the crucial issue in determining their ©ability is whether they possess artistic or aesthetic features that are physically or conceptually separable from their utilitarian dimension” ii. Holding: just b/c aesthetically pleasing features doesn’t mean they automatically get ©. No copyright protection unless the aesthetic or artistic features can’t be ID’d separately from the useful article 1. perspective is that of ordinary person 2. none here b/c not separable iii. Impact of Copyright Notice: this shifts burden from P who normally has to show §102 req’ts are met to D to rebut copyright. This is easy to rebut and not given much authority iv. Distinguished from Kieselstein: ornamented surfaces of K-C belt buckles were not in any respect required by their utilitarian functions, but the features claimed to be aestethic in Barnhart forms were “inextricably intertwined with utilitarian feature, display of clothes” v. Dissent: conceptual separateness: article must stimulate in the mind of the beholder a concept that is separate from the concept evoked by articles utilitarian function d. Brandir International v. Cascade Pacific Lumber Co – DENICOLA TEST- (P made sculpture and then changed that sculpture to make it a bike rack. D copied the sculpture) i. Denicola Test of Conceptual Separability – if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Conversely, where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists” 1. Copyrightability therefore should turn on the relationship between the proffered work and the process of industrial design 2. The dominant characteristic of industrial design is the influence of nonaesthetic, utilitarian concerns” and hence concludes that copyrightability “ultimately should depend on the extent to which the work reflects artistic expression uninhibited by functional considerations a. Post: When compared to Barnhart this is very different way of looking at conceptual separability b/c i. This puts focus on designer’s choices ii. Protection only extends to the artistic elements 3. in analyzing whether a PGS work is “conceptually separable,” this is the test that you use 4. holding: no copyright here b/c the decisions were made were for functional reasons DERIVATIVE WORKS A. 2 roles of derivative works in copyright law: a. §106(2) – [copyright owners has the] exclusive right to create derivative works based upon their copyrighted work(Infringement Questions Implicated)

b. §103- Derivative Works themselves are subject matter of copyright (Originality Questions Implicated) i. (a) protection for work employer derivative works will not extend to works in which such material has been used unlawfully ii. (b) the copyright in a 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 a work is independent of, and does not affect the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material. iii. Meaning: derivative works are also themselves a copyrightable work of authorship c. Derivative Work, Defined §101 – a work based on one or more preexisting works such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other from 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. B. Cases: a. Baitlin & Son v. Snyder (there was a rare piggy bank which was in the public domain. Snyder made a plastic version that was 2” shohrter, attached an umbrella and changed the bag shape. Baytlin made a similar bank, and Snyder had them seized at the border upon import to enforce alleged infringement) i. Holding: not enough originality in the plastic banks to warrant protection as an original work of authorship. There must be substantial variation to take something previously in the public domain and make it copyrightable. 1. need originality, not necessarily novelty a. novelty is the province of patent law 2. mere translation alone doesn’t warrant copyrightability a. must be more than trivial variation b. medium to medium not enough, need artistic skill ii. here the medium changes are trivial as a matter of law iii. higher degree of skill is required, true artistic skill to make a repro ©able iv. Policy: to extend © to miniscule variations would simply put a weapon for harassment in the hands of mischievous copiers in tent on appropriating and monopolizing public domain work v. Originality means that the work owes its creation to the author and this in turn means that the work must not consist of actual coping 1. to support copyright there must be at least some substantial variation, not merely trivial variation such as might occur in translation to diff medium vi. Compare with Hand of God case 1. O/I: need more creativity in the derivative work context to receive © protection 2. Distinguishing factor – “hand of god” required artistic skill to translate, Batlin merely required skill

b. Mirage v ART (Mirage made a book compilation of artwork. D made tiles by ripping out the pages and putting plastic cover on them) i. Rule: placing the art on a tile and putting a clear cofer is an infringing act creating a derivative work b/c the underlying work has been taken without the permission of the author and the work has been “recast, transformed or adapted” ii. This court only focuses on the 1st part of the §101 Derivative work which just required “recasting, transformation, or adaptation”  so if any of these then it’s infringing. 1. the court here separates the 2 functions of derivative works a. infringing work v. copyrightable work iii. here the author is protected by the §109(c) first sale and the and §109(a) public display defenses but that is irrelevant b/c that is not the infringing behavior iv. deals with infringement, not whether the tiles are original works v. This case weighs in favor of artist vi. Looks at process involved as being something that transforms… c. Lee v. ART (Lee is an artist whose work is purchased, recast and then resold) i. D’s are allowed to resell the work under §109(a) “first sale doctrine” ii. Rule: placing the art on a tile and putting a clear coating on it is not a separate original (case never says copyrightable) work, thus not an infringing derivative work. 1. implication: reframing is not enough, there has to be some creative act to infringe on a §106(2) right iii. This court focuses on the 2nd part of the derivative work §101 definition which requires that the contribution create an original work of authorship iv. Case weighs in favor of the public 1. court looked back to whether there was © protection in the first place for the derivative work 2. said it wasn’t derivative work b/c not original, so can’t be infringing of the rights a. 2 prong approach: i. Needs originality, then look to whether it is infringing 3. not a distribution in copies, not a repro, not a violation of the right to display, not a derivative work v. Focus on entire 101 def of derivative work vi. Apply rule that to constitute a derivative work, the work must in fact be “original” vii. 3 explanations for circuit splits: 1. Facts are different 2. Sometime courts resolve questions of fact differently 3. Resolving questions of law differently d. Castle Rock v. Carol Publishing - © infringement case- (owners of Seinfeld copyright sued for infringement b/c D’s made a Seinfeld Aptitude Test that took info from the show (expression?) and used it to test the knowledge of Seinfeld fans) i. 2 step approach to Final Part of © Inquiry 1. Access/Probative Similarities – Is there “actual copying?” a. Established through Direct Evidence of copying (Direct Access)

i. Admitted by creators of S.A.T. ii. Also, I sent you a copy/my work was in wide circulation b. OR, Probative Similarity i. Showing by indirect evidence, including access to the copyrighted work, similarities that are probative of © between the 2 works and expert testimony c. Quotable’s: i. Probative…is the correct term in referring to the P’s initial burden of showing actual copying by indirect evidence d. In some cases, Access (needed) can be inferred through the quantity of similarities e. Can’t be similarities in unprotected expressions (ex. facts) i. Get around in case b/c say that what appropriated, which appear to be Seinfeld facts, is actually expression f. MUST ESTABLISH BEFORE NEXT PRONG (substantial similarity) i. Quotable: “it is only after actual copying is established that one claiming infringement” then proceeds to demonstrate that the copying was improper or unlawful by showing that the second work bears “substantial similarity” to protected expression in the earlier work. 2. Actionable/Substantial Similarity – Is there “unlawful appropriation?” a. copying amounts to improper/unlawful appropriation, i.e. the 2nd work bears substantial similarities to the protected expression in the earlier work b. 2 components: i. Qualitative 1. concerns the copying of expression, rather than ideas 2. must be sufficient to support a legal conclusion that actionable infringement has occurred ii. Quantitative 1. amount of copyrighted material copied a. amount taken must be more than de minimus 2. look at series as a single work, since the work focuses on the whole series, no basis for looking at each episode ii. in this case it didn’t matter whether the infringing work was a derivative or a reproduction e. Warner Bros. & Rowling v. RDR Books & DOES 110 – (Movie Co and Author of Harry Potter claim that Harry Potter lexicon infringes on their copyright) i. Here 106(1) – Reproduction claim for infringing 1. also looks at 106(2) –derivative works

ii. Standard for © infringing is determining if the latter is substantially similar to the former iii. Same Analysis as in Castle Rock 1. Access/Probative Similarities a. Her book was in circulation b. Lexicon was substantially similar, establishing a prima facie case of copyright infringement. most of the entries had direct quotations or paraphrases, plot details, or summaries of scenes and the encyclopedia's content was drawn from books’ creative, original expression 2. Actionable/Substantial Similarity a. In evaluating the quantitative extent of copying in the substantial similarity analysis in a copyright infringement action, court considers the amount of copying not only of direct quotations and close paraphrasing, but also of all other protectable expression in the original work 3. Possible Defense – Fair Use Doctrine §107 a. The fair use of a copyrighted work ... for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes (very important prong); a. whether and to what extent the new work and its purpose is “transformative” (2) the nature of the copyrighted work; a. In general, fair use is more likely to be found in factual works than in fictional works (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and a. Castle Rock analysis (4) the effect of the use upon the potential market for or value of the copyrighted work. a. Here, You don’t control the market for lexicons as the author of the novel harry potter b. Not losing sales, but losing the right to this license b. The four statutory factors may not “be treated in isolation, one from another”; instead they all must “be explored, and the results weighed together, in light of the purposes of copyright i. Also look at good faith/bad faith as sub-factor 4. Here the lexicon had transformative purpose but wasn’t transformative enough as a reference book, because it copied same original expression.

And it’s not consistently only a reference book, as longest parts had no citations. iv. §106(2) –Derivative Works Analysis 1. This court relies on the fact that a work isn’t derivative simply b/c it is based on a pre-existing work a. The statutory language seeks to protect works that are “recast, transformed, or adapted” into another medium, mode, language, or revised version, while still representing the “original work of authorship.” b. So that means that just recasting into another medium, with nothing else much added, is derivative work i. Ex. transforming to book on tape, or book of all plot summaries. 2. Here, although Lexicon “contains a substantial amount of material” from Harry Potter, the material is not merely “transformed from one medium to another,” By condensing, synthesizing, and reorganizing the preexisting material in an A-to-Z reference guide, it gives the copyrighted material another purpose. The Lexicon no longer “represents [the] original work[s] of authorship. a. This distinction is critical to the difference between derivative works, which are infringing, and works of fair use, which are permissible b. So giving the copyrighted material another purpose brings it out of the realm of derivative works 3. Lexicon is held to NOT be a derivative work so no 106(2) infringement here, only 106(1) reproduction infringement f. Galoob v. Nintendo (Game genie made by Galoob gets inserted with the game and increases strength, lives, etc. Nintendo’s game is copyrighted as an audio/visual work.) i. Falls into 3rd stage of inquiry. ii. Overall, not an infringing work b/c no actual incorporation iii. Rules: 1. The infringing work must incorporate a portion of the copyrighted work in some form 2. a derivative work must be fixed to be protected under the copyright act, but not to infringe. a. The Infringing derivative work: i. Does not have to be fixed ii. Does not have to be created within meaning of copyright act (b/c no fixation needed) iii. Does not have to be registerable iv. BUT – it must incorporate a portion of the copyright protected work in some permanent concrete form 3. not infringing b/c the game genie does not contain a game’s story or “protected expression”; instead, it just slightly alters the code of the game.

iv. Mirage – there they did change the work in a permanent form, had they just been selling lenses to view the work differently, that would not be an infringement g. Microstar v.Formgen – (Microstar had a videogame where they encouraged players to make up their own levels and would post them online. Formogen put them on a CD. Levels include A/V imaged stored in the work.) i. Falls into 3rd stage of inquiry. ii. In this case, the court found infringement. 1. NOTE: this case looks much more like a copying case then a derivative work case. iii. Key Fact: the map files accessed, were part of the game. Therefore, the newly built levels incorporated portions of the duke nukem game (the work), creating infringement iv. Court distinguished Galoob, by labeling game genie as just functioning as a window in the computer program. Here you change the story by creating a sequel to the original work 1. this incorporate previously copyrighted material v. Rules: 1. a work will be considered a derivative work only if it would be considered an infringing work if the material which it has derived from a preexisting work had been taken without consent of a copyright proprietor of such preexisting work (quoting Mirage) 2. to prove infringement, must show substantially similar in both ideas and expression a. Ideas - similarity of ideas may be shown by comparing the objective details of the works; plot, theme, dialogue, mood, setting, characters, etc b. similarity of expression focuses on the response of the ordinary reasonable person, and considers the total concept and feel of the works vi. NOTE: this case asks the question differently (looks for whether rights were violated first [is it derivative] before looking for substantial similarities) 1. other courts look for substantial similarities before the more trivial differences INFRINGEMENT: MUSICAL WORKS AND SOUND RECORDINGS A. Post Notes: a. Statutory Provisions: i. §101 "Sound recordings" are works that result from the fixation of a series of musical, spoken, or other sounds, but not including 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. 1. A "derivative work" is a work based upon one or more preexisting works, such as a translation, musical 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". 2. A “digital transmission” is a transmission in whole or in part in a digital or other non-analog format 3. To “transmit” a performance or display is to communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent. ii. §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, either directly or with the aid of a machine or device. Works of authorship include the following categories: 1. (2) Musical works, including any accompanying words; 2. (7) Sound Recordings iii. §106 Exclusive Rights in Copyrighted Works 1. (1) to reproduce the copyrighted work in copies or phonorecords 2. (2) to prepare derivative works based upon the copyrighted work; 3. (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease or lending; 4. (4) in the case of literary, musical, dramatic and choreographic works, pantomimes, and motion picture and other audiovisual works, to perform the copyrighted work publicly; 5. (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and 6. (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission iv. §114 Scope of Exclusive rights in Sound Recordings 1. (a)The exclusive rights of the owner of copyright in a sound recording are limited to the rights specified by clauses (1), (2), (3), and (6) of §106 [17 USC §106], and do not include any right of performance under §106(4). 2. (b)The exclusive right of the owner of copyright in a sound recording under clause (1) of section 106 [17 USCS § 106] is limited to the right to duplicate the sound recording in the form of phonorecords or copies that directly or indirectly recapture the actual sounds fixed in the recording. The exclusive right of the owner of copyright in a sound recording under clause (2) of section 106 [17 USCS § 106] is limited to the right to prepare a derivative work in which the actual sounds fixed in the sound recording are rearranged, remixed, or otherwise altered in sequence or quality. The exclusive rights of the owner of copyright in a sound recording under clauses (1) and (2) of section 106 [17 USCS § 106] do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording.

The exclusive rights of the owner of copyright in a sound recording under clauses (1), (2), and (3) of section 106 [17 USCS § 106] do not apply to sound recordings included in educational television and radio programs (as defined in section 397 of title 47) distributed or transmitted by or through public broadcasting entities (as defined by section 118(g) [17 USCS § 118(g)]): Provided, That copies or phonorecords of said programs are not commercially distributed by or through public broadcasting entities to the general public. 3. (c) This section does not limit or impair the exclusive right to perform publicly, by means of a phonorecord, any of the works specified by section §106(4) 4. (d) Limitations on exclusive right. Notwithstanding the provisions of section 106(6)… v. §115 – addressed below B. Two Kinds of copyrightable works of Authorship a. Musical Works i. The owner is the composer or songwriter ii. Whoever is authoring the composition iii. In the music industry, this is often assigned to a music publisher iv. This owner holds all of the rights in §106, except 106(5) 1. this is the display right, which doesn’t apply to this type of work v. and 106(6) doesn’t apply either, this is digital transmission right b. Sound Recordings i. This is authored by the person or persons who make the sounds ii. Can be the performer, or engineer or both iii. Person responsible for the unique set of sounds embodied in the material object iv. Sound fixed into the phonorecord v. This is often held by the record label (by assignment) vi. Owner of the © in the sound recording has the rights that are set forth in §114 vii. This is a severely constricted set of rights that pertain to the sound recording viii. Basically the right to prevent others from duplicating the sounds that are fixed in the phonorecord and reproducing those very sounds ix. You have to actually take these sounds and reproduce them 1. ex. burning a copy of a CD, Sampling c. Digital transmission is defined as a transmission in whole or in part in a digital or nonanalog format. C. Statutory Background: a. §115: Compulsory Licensing of Musical Work b. Class focus on 115(a) i. Only covers non-dramatic musical works (Subset) 1. Covers ordinary songs 2. dramatic musical works are things like songs and words composed for operas, part of a show, etc. ii. The rights of reproduction and distribution are subject to a compulsory license

1. this is a license given to you by law, that the copyright holder cannot withhold, to make and distribute phonorecords of musical works in certain circumstances 2. can do this when phonorecords have been distributed in the US under the authority of the copyright holder (§115(a)(1)(i)) a. once occurs, any other person may receive a statutory license to make and distribute phonorecords of the work b. this is NOT true for anything else in the copyright act except nondramatic musical works c. can only do this if you are planning to distribute to the public for private use (simple as just declaring as much) (§115(a)(1)) i. includes digital phonorecord delivery ii. you might not be able to get a license for making a phonorecord for the purpose of playing it on the radio or putting it in retail stores as background music or elevators 1. no marketable license – beyond trying to sell phonorecords for private use a. if you are going to make a cover version of a phonorecord, then this is what this covers 2. you can do that as long as you don’t change the basic melody or fundamental character of the work and can’t be subject to protection as a derivative of the work a. no protection for this as a derivative work (§115(a)(2)) iii. You don‟t get a license to publicly perform a music work under §115…PERIOD! (§115(a)(2)) 1. also, cannot change fundamental character of song and anything I do change is unprotected!! iv. The Harry Fox Agency is a copyright agency that the copyright owners designate as the body to collect their royalties on these statutory licenses iii. Hypo: Paul Simon write a Musical Work and has authorized someone to record and make sound recordings from it. For someone else to perform a cover and made a CD of that performance. You need a license from Paul Simon for the public performance, but can record and sell the CD’s to the public for private use under §115. 1. See also §1101 below: cannot go to concern and make a recording and then sell the CDs, that is copyright infringement c. §1101: Provides the performers’ rights section - This is an EXCEPTION to compulsory license i. This section covers unauthorized fixation and trafficking in sound recordings and music videos ii. Can’t fix a live performance in a copy or phonorecord without the performer’s permission and then traffic it

iii. You are not an infringer of copyright when you do this, but you are held liable as if you were a copyright infringer iv. This is not an additional copyright, but it is a copyright-like right 1. essentially, a hole in the statute v. The language here is funny b/c you are subject to these remedies even if what you are fixing in the copy is not of a copyrightable work of authorship 1. if you record a live jazz improve performance it is not a copyrightable work of authorship b/c cannot © performance technique, but that is enough to get §1101 protection vi. Essentially: NO bootlegging, NO distributing bootleg vii. Violations get damages under §§502, 505 viii. To get protection the work performed need not be: 1. Copyrightable 2. Previously Fixed ix. Does this Preempt state law? d. Incentive to register your copyright with the © office: i. 115(b)(1) – you can still file for statutory license if no owner on record 1. notice filed must comply with regulations of how it is to be registered and paid ii. 115(c)(1) – copyright owner must be identified to receive royalties, if you are not registered then free statutory license D. Cases and Notes: a. §102: (2) Musical Works, including any accompanying words; (7) sound recordings i. §101: Sound Recordings – works that result from the fixation of a series of musical, spoken, or other sounds but not including the sounds accompanying a motion picture or other sounds but not including the sounds accompanying a motion picture or other A/V work, regardless of the nature of the material objects, such as disks, tapes, or other phonorecords in which they are embodied. ii. DIFFERENCES BETWEEN THE TWO 1. Fixation a. Musical work must be fixed to be protected b. Sound recroding must be fixed to exist 2. Sound Recordings are derivative of musical works a. That means you need to add something to the musical work [Feist, Modicum of creativity is constitutionally required] b. But actually not really, see Bridgeport 3. Rights a. Musical Works owner has protection for the words and music b. Sound Recording owner has 114(a) rights, and c. 106(1) [right to duplicate the sound recording in copies/phonorecords that directly/indirectly recapture the sounds fixed in the recording] and d. 106(2)[right to prepare derivative work in which the actual sounds fixed in the S.R. are rearrange/remixed/otherwise altered in sequence or quality]

e. [(1) and (2) does not extend to making or duplication of another sound recording that consists entirely of another fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording] (§114(b))(meaning – you need to use actual sound recording to infringe) i. §106(3) – to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership or by rental, lease or sale [(1), (2), (3) do nto apply to sound recordings included in the educational television and radio programs distributed or transmitted by or through public broadcasting entities. Provided, that copies or phonorecords of said programs are not commercially distributed by public broadcasting entitles to the general public ii. §106(6) – in the case of sound recording to perform the copyrighted work publicly by means of digital audio transmission [ for exceptions to this see §114(d)] f. No §106(4),(5) rights in sound recordings b. §115: Compulsory license (to create phonorecords from protected musical works) i. Only extends to non dramatic musical works (meaning, not opera or music as part of show) ii. Requirements: 1. phonorecords or copies have been distributed in the US with copyright owners consent (§115(a)(1)(i) 2. Primary purpose must be to distribute it to the public for private use (§115(a)(1)) 3. Cannot change the basic melody or fundamental character of the work (115(a)(2)) iii. What you get: 1. right to make it for the public for private use (115(a)(1)) 2. do not get protection for this as a derivative work (115(a)(2)) 3. this is basically for people to make cover versions of the song (however, you do not get protection in your contributions!) see above 4. do not have the right to perform c. Three Boys Music v. Bolton (Isley Bros wrote “love is a wonderful thing”, this song was released on a 45 in 1966. in 1991, Michael Bolton released a really similar song on CD i. Standard to show Access: opportunity to view and copy P’s work (Sid and Marty Kroft), need a reasonable opportunity/possibility 1. circumstantial evidence of reasonable access: (1) particular chain of events is established between the P’s work and D’s access to the work (dealings with a publisher or, (2) the P’s work has been widely disseminated. a. As a result of widespread copying subconscious infringement can occur

2. Substantial Similarity: “inverse ratio rule” we “require a lower standard of proof of substantial similarity when there is a high degree of acess shown” a. does not mean that a weak showing of access requires a stronger showing of substantial similarity…? b. Striking Similarity: If very little proof of access, can still make your case if you show striking similarity (Selle v. Gibb below) i. If P shows this than D has to show independent creation of prior public source ii. Also, Selle v. Gibb: as a matter of law case can be dismissed for absence of access (see below) c. Substantial Similarity i. Extrinsic Similarity : factual determinations will only be overturned if clearly erroneous 1. Initially, P must ID concrete elements based on objective criteria a. (a) unprotecable elements can be protected if the overall impact and effect indicate substantial appropriation 2. Do an analytic dissection of the work and use expert testimony 3. Need to satisfy before can move to intrinsic ii. Intrinsic Similarity: factual determination that will only be overturned if clearly erroneous 1. subjective inquiry which asks “whether the ordinary, reasonable person would find the total concept and feel of the works to be substantially similar” 3. Standard of Review for overturning jury verdicts: “Substantial Evidence” – that is, such relevant evidence as reasonable minds might accept as adequate to support a conclusion 4. Subconscious Copying: your mind plays a trick on you – you think you invented it (Independent creation) but you have not! d. Arnstein v. Porter- how to show infringement- section 501 i. Facts: Arnstein charges that Porter infringed copyrights to several of his musical compositions, his rights to other musical compositions, and wrongful use of the title of authors. Had to do with several Christian songs. Allegations of 106(1) in this case. ii. Issue: Whether defendant copied from plaintiff’s copyrighted works and whether the copying went so far as to constitute misappropriation? iii. Rule: Elements of copying: (a) evidence may consist of def’s admission that he copied OR of circumstantial evidence – usually evidence of access- from which trier of fact may infer copying. (b) if there is evidence of access and similarities exist, then jury must determine whether similarities are sufficient to prove copying. (c) if no access then similiarities must be so striking as to preclude the possibility that plaintiff and def. independently arrived at the same result.

1. Next if copying established, then must decide if illicit copying (unlawful appropriation): the test is the response of the ordinary lay hearer. Dissection and expert testimony are irrelevant here. If copying is shown, improper appropriation need not consist of similarities which would stand alone to prove inference. iv. Need to show that: v. 1)defendant copied from P’s copyrighted work (did he use P’s work or engage in independent creation, no direct evidence he had access to songs) [You need to show copying in order to survive a motion to dismiss] a. look to (1) direct evidence – defendant’s admission that he copied/ eye witness testimony (2) circumstantial evidence (evidence of access and substantial similarity) rd (3) possible 3 Route – striking similarities (Selle case – but striking similarity alone is not enough, need some probability/possibility of access; can support finding of both copying and improper appropriation) b. -objective test – allow expert testimony; look to both copyrightable and uncopyrightable elements vi. 2) Copying went so far as to constitute improper appropriation (only if 1st requirement is met)(must decide whether the defendant has taken too much of P’s copyrightable expression) Improper Appropriation requires SUBSTANTIAL SIMILARITY OF PROTECTED EXPRESSION. If SUBSTANTIALLY SIMILAR will kinda prove access w/o more. a. test is “response of the ordinary lay hearer [or lay observer]” (also referred to as the audience test) b. subjective test – “dissection” and expert testimony are irrelevant; look only to copyrightable elements e. Selle v. Gibb- (use striking similarity to show access)(Compare with above) i. Facts: Selle alleged that the Gibb brothers, known as the Bee Gees, had infringed the copyright of his song. ii. Issue: Whether there was sufficient evidence to permit an inference that b/c of striking similarity of the songs, def’s had access to plaintiffs work? Proof of copying? iii. Held: inference of access established by circumstantial evidence where works are strikingly similar that independent creation is NOT credible iv. ADDL: striking similarities themselves will NOT support a finding of access unless there is at least some other circumstantial evidence from which access could be inferred (“although proff of striking similarity may permit an inference of access, the plaintiff must still meet some minimum threshold of proof which demonstrates that the inference of access is reasonable” v. -“striking similarity” inquiry- as part of the inquiry of fact to determine whether or not D “copied” vi. As a matter of law – a case can be dismissed for absence of access f. Fantasy v. Fogerty (Appealing the award of atty fees to a successful D under §505)

i. §505: In any civil action under [the Copyright Act], the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof. Except as otherwise provided by this title the court may also award a reasonable attorney's fee to the prevailing party as part of the costs. ii. Policy: Fogerty's defense was the type of defense that furthers the purposes underlying the Copyright Act and therefore should be encouraged through a fee award. 1. Copyright Act's primary objective, "to encourage the production of original literary, artistic, and musical expression for the good of the public 2. Lieb factors may be considered but are not exclusive and need not all be met a. Lieb Factors include: frivolousness, motivation, objective unreasonableness,and considerations of compensation and deterrence iii. Evenhandedness means that courts should begin their consideration of attorney's fees in a copyright action with an evenly balanced scale, without regard to whether the plaintiff or defendant prevails, and thereafter determine entitlement without weighting the scales in advance one way or the other. Courts may look to the nonexclusive Lieb factors as guides and may apply them so long as they are consistent with the purposes of the Copyright Act and are applied evenly to prevailing plaintiffs and defendants; a finding of bad faith, frivolous or vexatious conduct is no longer required; and awarding attorney's fees to a prevailing defendant is within the sound discretion of the district court informed by the policies of the Copyright Act. g. Bright Tunes v. Harrissong (Bright Tunes claims D’s “My sweet lord” plagiarizes earlier song based on 2 Music motifs) i. Subconscious copying 1. there was access to the song, but the facts regarding Harrison’s development of his own song show it wasn’t intentional copying 2. “there came to the surface of his mind a particular combination that pleased him as being one he felt would be appealing to a prospective listener; in other words, that this combination of sounds would work. Why? Because his subconscious knew it already had worked in a song his conscious mind did not remember.” ii. Court sti’l held this was infringement. The infringement need not be intentional/deliberate h. Bridgeport Music v.Dimension Films (P owns “get off your ass and jam”. D released a movie which used the hook from the song (what was used was a 3 note progression) i. Changes the sampling market and the role of sound recordings in the copyright framework 1. They already had license granted for Musical Work 2. now when you have §114 Sound Recording, the only issue is if the person took it

ii. Rule: one should not look at whether copying was de minimus when you are dealing with a case of digitally copied sound recording. §114 has no de minimus inquiry 1. To prevent duplication of the actual sounds fixed on the recording, if you have taken those sounds then you have infringed and that’s all that matters a. This is a brightline standard. iii. Court says that originality for a sound recording is met by fixation, they seem to be protecting the physical object here rather than that underlying work as in all of copyright iv. NOTE: if you play this on own guitar then it wouldn’t be infringing. Or if want to use actual recording, then pay the licensing fee. Both ways avoid © infringement. i. Newton v. Diamond (P wrote a song and licensed the recording rights to a 3rd party. Beastie boys licensed from 3rd party the right to sample the digital recording and did so. P sued them for infringement) i. Court had to determine what, if anything, was taken from P’s work. For that they had to “filter out the licensed elements of the sound recording to get down to the unlicensed elements of the composition” ii. Unlike with sound recordings, there is a de minimus inquiry with infringement of musical works (Newton loses b/c 3 minutes is taken from his 30 minute work) 1. De minimus: so meager and fragmentary that the audience would not recognize the appropriation 2. this case suggests that if it’s not De Minimus (let’s say they had used the whole song) you need a license from both Musical Work © holder AND Sound Recording © holder if you want to use the sound recording iii. Newton’s copyright extends only to what is fixed by him in a tangible medium of expression – performance techniques are not included in this and can only be protected through a sound recording copyright 1. here the fluttery playing of flute, not embodied in M.W. so not protected. 2. performance techniques are not protected works of authorship – Baker v Selden they are the way you do it, method of operation does not get protection. j. Hypo: I have a 1957 Sound Recording (there is not sound recording copyright before 1972)(so what you actually have is a phonorecord that contains a performance of a 1957 musical work). In 2008 I place that on my computer and duplicate it. Now there is not originality requirement for sound recordings (Bridgeport). What do you do about the musical work copyright – do not have to worry about that b/c you can get a §115 statutory license. However, this is generally taken away from you by §115 unless the sound recording was fixed lawfully and the making of the phonorecord was authorized by whoever had the license to make the musical work in the first place. As long as copy was authorized you do not infringe SPECIAL ISSUES; DIGITAL COPYRIGHTS A. Shapiro, Bernstein & Co. v. H.L. Green Co (Jalen was manufacturing and selling unauthorized bootlegs of P’s © phonorecords. Jalen was music concenssionaire in Green’s department stores.)

a. VICARIOUS LIABILITY INFRINGEMENT CASE i. Determined Vicarious ability allowed under open language of §101(e) ii. Court developed a 2 part test based on “dancehall” case 1. 1)Principle must retain the ultimate right of supervision over the conduct of agent/contractor and its employees 2. 2) Obtain a direct and obvious financial benefit from infringing activity, have an interest in its success 3. NOTE: there is NO knowledge or intent req’t. The principle doesn’t have to know the agent is infringing in order to be held liable. b. Court focused on the formal licensing agreement between defendant department store (Green) and the direct infringer-concessionaire (Jalen). the concessionaire selling the bootleg recordings had licensing agreement with Green that required Jalen and its employees to “abide by, observe and obey all regulations promulgated from time to time by the Green,” and Green had the “unreviewable discretion” to discharge the concessionaires’ employees. In practice, Green was not actively involved in the sale of records and the concessionaire controlled and supervised the individual employees. i. Deemed the imposition of vicarious liability neither unduly harsh nor unfair because Green had the power to cease the conduct of Jalen (even if they didn’t about it), and because Green derived an obvious and direct financial benefit from the infringement B. Sony Corp. of America v. Universal City Studios, Inc-(D’s sued Sony because VCR they manufactured could potentially be used for © infringement, and D’s thought Sony would be liable for infringement committed by purchasers) a. CONTRIBUTORY INFRINGEMENT CASE b. This is when not your employees, and you have no contact/relationship with infringer i. i.e. Sony and the people who purchase its products ii. TEST: Can be liable for Infringement if: 1. Selling a device that enables others to infringe copyrights 2. If there is no substantial non-infringing use, and this is the only use for this product a. “staple article or commodity of commerce suitable for substantial noninfringing use” is not contributory infringement” iii. Here there are plenty of non-infringing uses for the product 1. © holders who wish to authorize the copying 2. playing own videos, etc 3. Using for the purpose of recording for time-shifting for own private use comes under Fair Use §107, court looks thru the 4 factors, 107(1)-(4) C. Religious Technology Center v Netcom Online Communications Services, Inc-( D sued Internet Service Provider of Bulletin Board System (BBS) and also the operator of the BBS for © infringing materials posted by a user on the site. BBS made copy of doc, and then also sent copy thru channels) a. This case defines the Knowledge Standard for Contributory © Infringement by Internet Service Providers i. Not direct or Vicarious liability here for ISP b. Question: material issue of fact existed as to the ISP's knowledge of the infringing activity, and a material issue existed as to whether the ISP was entitled to a fair use defense

c. Things Necessary/Test: i. 1) Direct Infringement Requirement 1. Before one can be held liable for contributory copyright infringement, another must have committed direct copyright infringement ii. 2) The Knowledge Standard 1. Knowledge of the infringing activity is required for a finding of contributory copyright infringement. This knowledge of the infringing activity can be actual or constructive. Must be at a time when you can do something about the infringement. 2. The knowledge requirement is met by showing either what the accused infringer actually knew or what he should have known. This is a higher standard than is required by direct copyright infringement a. "A person possessing information that objectively indicates the existence of direct infringement may be considered to have constructive knowledge of the infringement even if he is actually unaware of the infringement." b. NOT STRICT LIABILITY 3. Not liable if: BBS operator cannot reasonably verify a claim of infringement, either because of a possible fair use defense, the lack of copyright notices on the copies, or the copyright holder's failure to provide the necessary documentation to show that there is a likely infringement 4. there must be more than just a notification of infringement from a copyright owner to meet the knowledge element iii. 3) The Substantial Participation Requirement 1. Inducing, causing or materially contributing to the infringing activity creates the element of substantial participation required for contributory infringement. The participation element and the knowledge element are directly interrelated. "The closer the defendant's [participation is] to the directly infringing activity, the stronger the inference will be that the defendant knew of the activity a. Here: Netcom did not completely relinquish control over how its system was used, it would have been able to take simple measures to prevent further damage, assuming knowledge iv. 4) Fair Use Defense 1. Look at 4 factors in the statute D. A&M Records v. Napster- (Using Napster Centralized Server and Software users could make copy and distribute ©ed materials, thus infringing. Too much to go after individual users, so D sued Napster for Contributory and Vicarious liability) a. Napster did not fall under any Fair Use defenses or within any Safe Harbors i. They never stored the files, but provided users with a way of connecting and sharing files b. Requirements For Secondary Infringement i. 1) Direct Infringement 1. Can’t have secondary without having direct. Yes there’s direct here; copying and distributing rights infringed. ii. 2) Affirmative Defense: Fair Use Defense

1. Napster doesn’t fall under Fair Use defense – go through 4 factors iii. 3) Contributory Infringement [“one who, with knowledge of the infringing
activity, induces, causes or materially contributes to the infringing conduct of another]

1. Knowledge Prong a. “knew or had reason to know” i. Napster had actual and constructive knowledge of infringements 2. Material Contribution/Substantial Participation Prong a. “[w]ithout the support services Napster provides, Napster users

could not find and download the music they want so much ease”

b. So this yes, Napster materially contributes iv. 4) Vicarious Infringement [defendant “has the right and ability to supervise the
infringing activity and also has a direct financial interest in such activities.”]

1. Financial Benefit Prong a. Napster financially benefits from exploitation of the infringed materials. The more works, the bigger userbase. 2. Supervision/Control Prong a. Napster retains the right to control access to its system, and didn‟t
exercise its power to police system To escape imposition of vicarious liability, the reserved right to police must be exercised to its fullest extent. Can‟t just turn blind eye The mere existence of the Napster system, absent actual notice and Napster's demonstrated failure to remove the offending material, is insufficient to impose contributory liability



4. RULE: Once imputed with knowledge, but keep substantially contributing to distributing infringing material – liable. E. MGM. v. Grokster – (After Napster, Grokster came along with no centralized server and a no revenue model. Instead of running service, they are distributing software and not participating further than that. Software let users connect to each other and put adware in the software in order to generate revenue.) a. Sony rule limits imputing intent from the characteristics or uses of a distributed product. But nothing in Sony requires courts to ignore evidence of intent if there is such evidence. b. Court created new theory: The INDUCEMENT THEORY i. One who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties. 1. Must be purposeful, culpable expression and conduct ii. Three Things to look at 1. Evidence of Intent to Infringe a. Here, Grokster was aiming to satisfy a known source of demand for copyright infringement: advertised its OpenNap program to Napster users 2. Unlawful Purpose a. Grokster acted with a purpose to cause copyright violations by use of software suitable for illegal use, as evidenced by the following: (1) endeavored to be Napster replacement; (2) no attempt to develop

filters to diminish infringing activities; (3) ads placed made them profit from high volume use 3. Active Steps a. proving that an inducing message was sent out was the best, but not only, way of showing that active steps were taken with the purpose of bringing about infringing acts, and of showing that infringing acts took place by using the device distributed. c. Conclusion: liability for inducing infringement will not be on the basis of presuming or imputing fault, but from inferring a patently illegal objective from statements and actions showing what that objective was. They must hang themselves with their own words F. §512 – SAFE HARBORS – SEE STATUTE PACKET FOR FULL STATUTE a. Hendrickson v. eBay- (© owner of motion picture brought infringement action against eBay, which had listed offers to sell allegedly infringing copies, and its employees) i. Ebay is a service provider under §512(k)(1)(B) 1. #1 Most important first step: Must decide if D is Service Provider before continuing analysis. B/c if not SP, then no safe harbors. 2. qualify under protection of §512(c) – “Information Residing on Systems or Networks at direction of Users” a. Claim: infringing by sale/distribution of pirated “manson” videos using “materials” posted on eBay’s site 3. 3 Requirements for Safe Harbor set out in §512(c)(1) a. 1) service provider must demonstrate that it does not have actual knowledge that an activity using the material stored on its website is infringing or an awareness of “facts or circumstances from which infringing activity is apparent. i. Alternatively, the service provider must show that it expeditiously removed or disabled access to the problematic material upon obtaining knowledge or awareness of infringing activity b. 2) service provider must show it “does not receive a financial benefit directly attributable to the infringing activity” if the service provider has “the right and ability to control such activity c. 3) service provider must show that it responded expeditiously to remove the material that is the subject of infringing activity upon receiving notification of the claimed infringement in the manner described in § 512(c)(3). i. rights holders must provide written notification to the service provider's designated agent. And also substantially comply with 6 elements of §512(c)(3) ii. if the © holder's attempted notification fails to “comply substantially” with the elements of notification described in subsection (c)(3), that notification “shall not be considered” when evaluating whether the SP had actual or constructive knowledge of the infringing activity under the prong #1 iii. Must provide written notification BEFORE filing suit

b. Perfect 10, Inc. v CCBill LLC – (P10 is suing CCBill & CWIE for © infringement for providing web services and payment services to websites that posted images stolen from Perfect 10’s magazine and website) i. To be eligible for any of the safe harbors SP must have “adopted and reasonably implemented, and informs subscribers and account holders of the service provider's system or network of, a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider's system or network who are repeat infringers.” - §512(i) 1. Implements = SP „implements” a policy if it has a working notification system, a procedure for dealing with DMCA-compliant notifications, and if it does not actively prevent copyright owners from collecting information needed to issue such notifications ii. MUST HAVE DESIGNATED AGENT 1. §512(c)(2) – in order to qualify for safe harbor/limited liability, must have someone designated and need to have their info available on the website iii. in order for a website to qualify as a “red flag” of infringement, it would need to be apparent that the website instructed or enabled users to infringe another's copyright iv. §512(a) has more restrictive definition of “service provider” than the rest of the Safe Harbors c. Viacom v. Youtube Complaint – See Class Notes TERMINATION OF TRANSFERS, ASSIGNMENTS, LICENSES
§201. Ownership of Copyright (a) Initial Ownership – the authors of a joint work are co-owners of copyright in the work (b) Works made for hire - work made for hrie, 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 (c) Contributions to Collective Works – Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution (d) Transfer of ownership a. (1) may be transferred by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession §202. Ownership of Copyright as distinct from ownership of material object Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; §203. Termination of Transfers and Licenses Granted by the Author (a) In the case of any work, other than a work for hire, the exclusive or non exclusive grant of a

transfer or license of copyright or any right under the copyright executed by the author, on or after Jan 1, 1978 excluding transfer by will, is subject to termination under the following conditions listed  You can terminate a grant in any work (other than work for hire), any grant (other than those done in will) that were done after 1-1-78  When can grant be terminated? o As of 5 year period starting 35 years after date of transfer  How you terminate o Advance notice in writing, stating effective date of termination  Termination of the grant may be effective notwithstanding any agreement to the contrary


This is an Inalienable right to terminate

§204. Execution of transfers of copyright ownership (applies only to exclusive licenses) (a) a transfer not valid unless in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent (b) a certificate of acknowledgement is not required for the validity of a transfer, but is prima facie evidence of the execution of the transfer if – --Corporations can hold copyrights and be authors of woks for hire. Term is in 301(c) – “© Anonymous Works, Pseudonymous Works, and Works made for hire – In the case of an anonymous work, a pseudonymous work, or a work made for hire, the copyright endures for a term of 95 years from the year of its first publication, or a term of 120 years from the year of its creation, whichever expires first.”

A. §204 requires written instrument of conveyance to transfer copyright B. New Use Cases – because of the duration of copyrights and the growth of technology there will be new technology introduced and the issues becomes what you intended about your copyrighted material in relation to new technology not considered in negotiating the agreement. a. Cohen v. paramount –(VCR was not invented at time of licensed. K had a reservation of rights provision) i. 2 arguments here: 1. Distribution by video is not part of the K, not bargained for and not compensated in the fee 2. It says TV, VCR is part of it ii. Issue is do we renegotiate the deal or not, who pays? Cohen court is pro Licensor (Federal copyright law exists to give copyright holders exclusive rights) Unless those things are specifically in the K, you should not divest the authors rights. Cannot take away their opportunity to get profits and participate in unforeseen markets. 1. PRO LICENSOR COURT 2. court looks to see whether the parties could have bargained for the right 3. Counter: Pro Licensee- cannot deprive a contracting party of the rights reasonably found in the terms of the contract it negotiates iii. Court will impose principals in favor of copyright holder b. Boosey and Hawkes v. Walt Disney (P gave a license to use song in Fantasia, this did not include distribution in videocassette) i. Bartsch court analysis: licensee[s] may properly pursue any uses which may
reasonably be said to fall within the medium as described in the license. If the words are broad enough to cover the new use, it seems fairer that the burden of framing and negotiating an exception should fall on the grantor

1. Reinterpretation of Bartsch court: if the contract is more reasonably read to convey one meaning, the party benefited by that reading should be able to rely on it; the party seeking exception or deviation from the meaning reasonably conveyed by the words of the contract should bear the burden of negotiating for language that would express the limitation or deviation 2. saying we are not favoring either, the burden is on the licensor to show that the right licensee is using is not in the K 3. Analysis: a. Look at the language of the contract b. Read in favor of the licensee (PRO LICENSEE)

C. NY Times Co. v. Tasini –( free lance authors wrote articles for the NY times. NY times gave the rights of their papers to appear on Lexis. However, on Lexis you could view individual articles and search by author. This was not viewed as a newspaper page) a. Two separate works here i. Compilation/Collective Work 1. Author of a collective work only got the right to reproduce and distribute the compilation 2. Here they were reproduced clear of the context provided by the original periodicals ii. Individual works b. Pre 1976 Act i. needed to have authors name and copyright notification to protect and if published without it, work would fall to public domain c. After 1976 Act i. 404(a) – single notice on a collective work is enough ii. 201(c) – in the absence of an express transfer of the copyright or any of the rights under it, the owner of a copyright in a collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of the particular collective work, any revision of collective work and any later collective work in the same series. After selling to collective work. Freelancer may also sell article to others. 1. Databases not protected under this b/c reproducing and distributing articles standing along and not in same context, and not as part of original collective work, revisions of CW, and not in same series as CW iii. These 2 statutes together preserve the author’s copyright in contribution to collective work D. Effects Assiciates v. Cohen (movie maker made oral agreement with special effects company. He only paid half and told them he did not like it but used it anyway. Nothing said here about who owns the copyright) a. Transfer of copyright requires writing and will be construed strictly under §204(a) i. This is only for exclusive licenses though. b. Nonexclusive licenses may be implied through conduct or transferred orally (this is done with §101 removing nonexclusive licenses from scope of §204) i. court concludes that they have an implied license (looking at totality of the circumstance, i.e. standard business practices) 1. cohen is okay but can’t sue for infringement of the stuff they have license to. Only the copyright owner can sue for infringement 2. §501(b): legal owner (person who own it through the license) or beneficial (has an ownership interest) owner of the (c) can both sue for infringement E. Nelson-Salabes Inc. v. Morningside Dev., LLC (Architectural firm which had been retained to provide assistance in design of assisted care facility by facility's original developer brought copyright infringement suit against affiliated corporations which, respectively, owned and developed facility, and corporations' principal.) a. Pulled out 3 step test from Effects Associates case to determine if there is implied nonexclusive license

i. an “implied nonexclusive license” for use of an otherwise copyright protected work is created “when: 1. (1) a person (the licensee) requests the creation of a work, 2. (2) the creator (the licensor) makes that particular work and delivers it to the licensee who requested it, and 3. (3) the licensor intends that the licensee copy and distribute his work a. Copy and distribute = the creator of a protected work must intend that its copyrighted drawings be used on the project for which they were created, independent of the creator's involvement 4. Third prong has a very important INTENT COMPONENT in the test ii. To determine if the prongs are met examine the totality of the circumstances surrounding. 1. Our analysis of these decisions thus suggests that the existence of an implied nonexclusive license in a particular situation turns on at least three factors: a. (1) whether the parties were engaged in a short-term discrete transaction as opposed to an ongoing relationship; b. (2) whether the creator utilized written contracts, such as the standard AIA contract, providing that copyrighted materials could only be used with the creator's future involvement or express permission; and c. (3) whether the creator's conduct during the creation or delivery of the copyrighted material indicated that use of the material without the creator's involvement or consent was permissible. INTERNATIONAL COPYRIGHT A. Berne Convention 1989 a. Problems: i. Article 5: copyright protection shall not be subject to any formalities ii. Article 6: independently after the author economic rights and even after the transfer of said rights, the author shall have the right to claim authorship of the work and to object to any distortion mutilation and other modification fo the said work which would be prejudicial to his honor and reputation – moral right concept. b. Important changes i. National treatment: promise of non-discrim against foreign copyright holders, will give them the same rights you give your copyright holders ii. Remedies: action by another country in international court of justice iii. TRIPS: violations can be brought by private parties in the WTO c. Copyright infringement in US courtrooms i. Court must have subject matter jurisdiction over the claim 1. diversity a. someone from US v. foreign someone 2. Federal Question a. For this, infringement must have occurred in the US ii. Berne Convention is not an international copyright statute. It preserves the right of individual nations and their providence to declare their own copyright law

1. §104(c) – no right or interest in a work may be claimed by virtue or in reliance on the Berne convention 2. Meaning you cannot bring moral rights claim, right of attribution claim and cite Berne as the source of law B. Jurisdictional Provisions a. 28 USC §§1331, 1332, 1338 i. §1331: The district courts shall have original jurisdiction of all civil actions arising
under the Constitution, laws, or treaties of the United States. ii. §1332: (a) The district courts shall have original jurisdiction of all civil actions where the matter in controversy exceeds the sum or value of $75,000, exclusive of interest and costs, and is between-(1) citizens of different States; (2) citizens of a State and citizens or subjects of a foreign state; (3) citizens of different States and in which citizens or subjects of a foreign state are additional parties; and (4) a foreign state, defined in section 1603(a) of this title, as plaintiff and citizens of a State or of different States iii. §1338: The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases

C. § 104 – Subject Matter of Copyright: National Origin a. (a) unpublished Works – the works specified by §102 and §103, while unpublished are subject to protection under this title without regard to the nationality of domicile of the author b. (b) Published Works – The worked specified by §102 and §103, when published are subject to the protection of this title if – i. (1) on the date of the 1st publication, author is a national domiciliary of US or treaty party or is a stateless person (regardless of domicile) ii. (2) work is first published in the US or treaty party or, 1. a Work that is published in the US/treaty party within 30 days of being published in a nontreaty party will be considered first published in US or treaty party iii. (3) work is a sound recording first fixed in a treaty party or, iv. (4) work is a PGS incorporated in an architectural work located in US or treaty party v. (5) first published by UN of any specialized agency vi. (6) work comes within scope of presidential proclamation D. Itar – Tass News Agency v. Russian Kurier, Inc-(Publishers of foreign newspapers and
magazines, foreign news service, and foreign writers' union brought copyright infringement action against American newspaper and its publisher, alleging copying of plaintiffs' news articles.)

a. Parties: P – Russian. D – US b. Infringement happened in the US i. P is not protecting their Russian copyright here, but rather their US copyright courtesy of §104 ii. You get protection in the US not b/c Russian says it does but because US law says it does c. Choice of law Principals (US LAW PRINCIPLES)

i. Part of US is a choice of law principal that says we will sometimes apply the law of other countries to determine ownership of copyright ii. Three Issues 1. Copyrightability a. §104 sends you to §102 and §103 b. US law applies 2. Ownership of Copyright a. US choice of law principals say to look at the state with the most significant relationship to the property and the parties. i. Here that points to Russian Law 3. Substantive Rights a. i.e. §106 rights b. applicable law is the copyright law of the state in which the
infringement occurred***

E. London Film Productions v. Intercontinental Communications-( British corporation against New
York corporation alleging that latter violated former's British copyright in certain motion pictures in Chile and other South American countries)

a. Parties: P is from UK, D is in NY (Diversity of Citizenship) b. Infringement occurred in: Chile i. Thus – matter arises under Chilean law, claim is under their law ii. US law has no extraterritorial affects, does not apply to infringements that take place in Chili 1. “infringing actions that take place entirely outside the US are not actionable” [under the Copyright Act] 2. what this would look like: you would bring a claim under US law and you would get dismissed for failure to state a claim, b/c nothing bad happened here iii. IMPORTANT PRINCIPAL: you could make a claim under Chile law. US court can apply Chilean law, get experts and translators b/c they have personal jurisdiction over the D 1. if do not feel like doing this – Forum non convenians a. However, the need to apply foreign law is not in itself reason to dismiss or transfer the case. b. an available alternative forum is necessary to validate dismissal of an action on the ground of forum non conveniens iv. Pay attention to where D is, cannot impose holding if do not have jurisdiction. F. Subafilms v. MGMPathe-( Producers of animated movie filed copyright infringement action against
distributors concerning foreign and domestic videotape distribution of movie)

a. Parties: P is from UK and D is from US b. Infringement occurred in Brazil, but authorization took place in US i. Court hold no separate claim for authorization of infringement c. RULE: “the mere authorization of acts of infringement that are not cognizable under the US copyrights laws because they occur entirely outside of the US does not state a claim for infringement under the Copyright Act” d. „[t]he applicable law is the copyright law of the state in which the infringement occurred,
not that of the state of which the author is a national or in which the work was first published

G. Creative Technology v. Aztech Systems – (Both distribute soundcards, based out of Singapore. Both have subsidiaries that distribute in the US) a. Both parties are from Singapore b. The party moving for forum non conveniens dismissal must demonstrate two things: i. (1) the existence of an adequate alternative forum; and 1. The key determination is whether “the remedy provided by the alternative forum is so clearly inadequate or unsatisfactory that it is no remedy at all ii. (2) that the balance of relevant private and public interest factors favor dismissal 1. private interest factors include: (1) relative ease of access to sources of proof; (2) the availability of compulsory process for attendance of unwilling witnesses, and cost of obtaining attendance of willing witnesses; (3) possibility of viewing subject premises; (4) all other factors that render trial of the case expeditious and inexpensive 2. public interest factors include: (1) administrative difficulties flowing from court congestion; (2) imposition of jury duty on the people of a community that has no relation to the litigation; (3) local interest in having localized controversies decided at home; (4) the interest in having a diversity case tried in a forum familiar with the law that governs the action: (5) the avoidance of unnecessary problems in conflicts of law. H. Gilliam v. American Broadcasting Co., Inc-(Monty Python Case) a. SCOPE OF LICENSING CASE i. Copyrights in a play: 1. Script: © wned by Monty Python a. Script is the underlying embodiment of the work i. Accordingly, the recorded performance becomes a derivative work, which itself is entitled to © protection b. Within the script © license, P “reserved all rights” not expressly stated within the agreement 2. Recording: work embodied in the recorded performance based on the script is copyrightable and licensed to ABC through a BBC license agreement. a. Remember: thief never gets good title – if unlawfully make a derivative work, then there is no © protection in the work ii. Telelvision performance si a performance of the: 1. script 2. the derivative work (i.e. recording) iii. Artist Right to Protect the Integrity of their Work: 1. Through the derivative works right (§106(2)), an artist may protect the integrity of their work 2. RULE: exceeding the scope of the license in a copyright work, gives rise to a claim for © infringement a. Here, the artist (MP) created a © infringement action through K law i. The all rights reserved clause is the means MP used to protect the integrity of their work (reserved control over editing with the clause)

1. the BBC licensing to ABC, exceed the scope of the license they possessed. This is what created the infringement of the derivative right (106(2)) 2. if you license away right to make a derivative without expressly reserving the right to prevent extensive editing – a. no ability to protect integrity b. NOTE: this is not a cause of action for mutilation (a moral right observed under the continental system) I. 104(a) Restored Works a. Dam Things v. Russ (P made trolls in Denmark and as a result of international action had his copyright restored in the US. D used P licensee molds to make trolls as well) i. Restored = copyrights that had allegedly been restored as a result of statute restoring copyrights held by foreign owners that had been canceled due to failure to comply with copyright formalities. ii. D is trying to demonstrate that these facts are in fact derivative b/c if they are, D is able to continue making rolls as a reliance party as long as he gives reasonable compensation iii. Rule: For a work to be a derivative work, it needs to be first substantially similar to the original work (to be infringing) and then it must contribute some distinguishable variation that is not trivial iv. Here the court must decide whether the works are derivative work reproductions 1. That is why the court looks for a change from the previous ( to see if they are derivative) J. Bridgeman Art Library v. Corel –( a. Parties: P is a UK company with US office, D is a CA company b. Infringement occurs in the US c. RULE: US law will be applied to determine whether something is copyrightable when applying US Copyright Act to infringement d. Court closes the loophole that weak copyright standard can grant copyright protection in the US e. There’s a constitutionality issue b/c we require original work of authorship and give limited periods of protection K. Copyright Act §§ 601 – 603 a. Quality King v. L’Anza International –( Manufacturer of copyrighted hair care products
brought action against importer that acquired products outside United States and sold them within United States)

i. Parties: P is a US company; D is a US company ii. Infringing Activity: happened in US 1. There is a cause of action for importation under §602(a) b/c it makes it a distribution under 106(3) 2. 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 §501. This subsection does not apply to –

3. 4. 5.


a. (1) imporation of copies or phonorecords under the authority or for the use of the Gov’t of the US or of any state or political subdivision of a state, but not including copies or honorecords for use in schools, or copies of any audiovisual work imported for purposes other than archival use; b. (2) importation for the private use of the importer and not for distribution, by any person with respect to no more than one copy or phonorecord of any one work at any one time, or by any person arriving from outside the US with respect to copies or phonorecords forming part of such person’s personal baggage; or c. (3) importation by or for an organization operated for scholarly, educational, or religious purposes and not for private gain, with respect to no more than one copy of an audiovisual work solely for its archival purposes, and no more than 5 copies or phonorecords of any other work for its library lending or archival purposes, unless the importation of such copies or phonorecords is part of an activity consisting of systematic repro or distribution, engaged in by such organization in violation of the provisions of §108(g)(2) 109(a) is a applicable defense to 602!! Note: 109(a) only gives firs tsale protectioni to copies lawfully made under US copyright Act Choice of Law – there is no cause of action for infringing foreign made reproductions, however §602(a) makes their imporation an exclusive §106(3) right that is not defended by §109(a) SO: if you take something, unlawfully copy it in the UK or even lawfully copy it in the UK and import it in violation of §602(without copyright owner authority) and sell it in the US you are liable for infringement of for the sale b/c of 106(3) with no §109(a) defense a. Quotable: “If the author of the work gave the exclusive US dist rights0enforceable under the Act to the publisher of the US edition and the exclusive British dist rights to the publisher of the British edition, however, presumably only those made by the publisher of the US edition would be “lawfully made under this title” within the meaning of §109(a). The first sale doctrine would not provide the publisher of the British edition who decided to sell in the American market with a defense to an action under §602(a) (or for that matter to an action under §106(3), if there was a distribution of the copies)

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