COPYRIGHT OUTLINE

COPYRIGHT OUTLINE ANALYSIS SUMMARY: CAUSES OF ACTION COPYRIGHT DEFINED PRE-REQUISITES FOR COPYRIGHT PROTECTION (17 USC § 102) Original Work of Authorship Fixed in any Tangible Medium of Expression National Origin Categories of Authorship 4 5 6 6 6 7 9 9 COPYRIGHT PROTECTION FORMALITIES DERIVATIVE WORKS COPYRIGHT FORMALITIES (A) Definition (B) Requirement to get copyright on a Derivative Work COMPILATIONS (A) Definition (A) Phonebooks 10 12 12 12 13 13 13 COPYRIGHT DURATION AND TERMINATION Duration of Copyright Terms a. Measurement Convention b. Publication Defined: c. Pre-1909 Works d. 1909 Act Works e. 1976 Act Works Termination of Copyright 13 13 13 13 14 14 14 15 EXCLUSIVE COPYRIGHT RIGHTS LIMITATIONS ON EXCLUSIVE RIGHTS d. e. f. g. h. i. § 107: Fair Use § 108: Reproduction § 109(a) Right of First Sale § 113: Limited Uses § 114: Sound Recordings § 115 Music Compositions 16 20 20 20 20 21 21 21 j. § 120 Architectural Works 22 MORAL AND IMPORTATION RIGHTS Moral Rights Right to Control Importation of one’s own goods into the US 22 22 23 WORKS FOR HIRE, COLLECTIVE WORKS AND TRANSFERANCE OF RIGHTS Collective Works Joint Owners Licensing and Transfer of Ownership 24 24 25 25 DIRECT INFRINGEMENT § 501(A) Who has standing Procedure for enforcement i. Must show standing ii. Must show court has jurisdiction over claim(s) b. Must Show a Substantial Claim 4. Improper Appropriation a. Set Standard of what is improper: b. Determine if improper amount used by defendant c. Literary Copyright infringement d. Visual Works Infringement e. Example Infringement Analysis 27 27 27 27 27 29 29 29 29 30 31 31 STATE CAUSES OF ACTION Misappropriation of Ideas State Misappropriation Tort Claim Right of Publicity Claim 31 31 32 32 INDIRECT INFRINGEMENT Vicarious Liability Contributory Liability Active Inducement Liability 33 33 33 34 DMCA CAUSES OF ACTION DMCA: § 1201 a. Anti-Circumvention Provisions 35 35 35 b. Anti-Trafficking Provisions 35 DEFENSES AND LIMITATIONS TO COPYRIGHT INFRINGEMENT Limitations i. DMCA Affirmative Defenses i. Fair Use c. Copyright Misuse d. Statute of Limitations e. Laches f. Estoppel g. Abandonment / Forfeiture h. Material misrepresentation in copyright registration i. Innocent Infringer Defense 36 36 36 37 37 38 38 38 39 39 39 39 REMEDIES Civil Cases i. Injunctive Relief ii. Impoundment iii. Actual Damages iv. Statutory Damages v. Costs and Attorney‘s fees Criminal Cases 39 39 39 40 40 41 41 41 FEDERAL PREEMPTION DOCTRINE 42 ANALYSIS: (1) Plaintiff has to prove Standing a. A valid copyright: b. If registered; Presumption of valid copyright. i. Registration requirements: 1. Registration, Deposit + Fee ii. Defendant can attack – it is a rebuttable presumption. (P. 596 1 st full para.). c. If not registered: i. Prove each element of a valid copyright: 1. Determine if derivative work a. Must be authorized b. Determine new Work, only that may be copyrighted. 2. Original Work of Authorship a. Original i. Independent Creation ii. De-Minimis Creativity 3. Fixed in a Tangible Medium of Expression 4. Author = US Citizen or Foreign Author first publishing in a treaty country 5. Compliance with Statutory Formalities a. 1909 Act i. Protection established on Publication ii. Notice of Copyright iii. Registration may be required to sue. b. 1978 Act i. Protection upon fixation. d. Still In effect i. Duration 1. Still during exclusive rights period. ii. Termination 1. Not terminated by original author or technicality. e. That Plaintiff has an Interest in. i. Present Copyright Ownership ii. Original Author iii. Exclusive Licensee iv. Beneficial Owner v. Issues of ownership: 1. Joint authors 2. Collective Works 3. Work for Hire: 4. Assignments 5. Exclusive Licensee (2) Plaintiff Must Prove Court has Jurisdiction (3) Proof of an Act of infringement a. A violation of one or more i. § 106, 106a (VARA), DMCA § 1201 or § 602 importation rights b. Determine which rights we are dealing with c. Prove actual copying or Improper Appropriation (improper amount that is not fair use), (4) Defenses to Infringement a. § 107 Fair Use b. § 108 Reproduction Limitations c. § 109(a) Right of First Sale d. § 113 Limited pictorial, graphic and sculptural uses e. § 114 Sound Recording limited uses f. § 115 Musical Composition compulsory licensing g. Copyright Misuse h. Statute of Limitation i. Laches j. Estoppel k. Abandonment / Forfeiture l. Material Misrepresentation in copyright registration m. Innocent Infringer Defense (5) Secondary Liability Issues a. Suing anyone other than primary infringer? i. Contributory Infingement ii. Vicarious Infringement iii. Inducement Liability. (6) Remedies Available a. Civil i. Injunction ii. Impoundment iii. Actual Damages iv. Statutory Damages v. Costs and Fees b. Criminal i. Felony or Misdemeanor. (7) Related State Causes of Action a. Misappropriation b. Right of Publicity (8) Preemption Issues a. § 301 b. Supremacy + Dormant Commerce Clause CAUSES OF ACTION : (1) Federal: a. Copyright Act of 1909 (2) (3) (4) (5) b. Copyright Act of 1978 i. Sonny Bono Act ii. DMCA State Common Law Tort of Misappropriation Contract Law Right of Publicity COPYRIGHT DEFINED: (a) United States: Grants exclusive rights for a finite period to Authors of original expressions. Authority: a. US Constitution: Copyright Clause allows Congress to make laws to protect ‗writings‘ of authors. i. Supreme Court ―Goldstein v. CA‖ Writing = any physical rendering of the fruits of an author‘s creativity. b. Berne Convention – Provides for copyright reciprocity between nations, as well as a lowest common denominator in the law. c. Trade Relation Aspects of Intellectual Property (TRIPS) (b) International: Authors Rights Philosophy. An author is entitled to rights in IP because it is an extension of their personality. a. Moral Rights: PRE-REQUISITES FOR COPYRIGHT PROTECTION (17 USC § 102) ―Expression is copyrightable, not Ideas.‖ (a) Original Work of Authorship a. Original = Two requirements: i. Independent Creation: Must come up with yourself and not copied from someone else. 1. Work for Hire, Copyright Assignment, and Subsequent Independent Creation: a. If author hired to create expression, or sells expression, can create subsequent expression based on same original idea and may not be liable for infringement. b. Gross Case: If substantially similar to previous work, may meet standards for infringement. c. Whether it is a different idea or not, the expression of a subsequent work cannot be substantially similar to a previous expression if that expression is not owned or controlled by the author. ii. De-Minimis Creativity: work must have at least a modicum of creativity (as opposed to skill). 1. Look to selection and arrangement of the components in contemplation of the whole work. a. Doctrine of Aesthetic Non-Discrimination. Merits of work are irrelevant. i. Except: Obscene and illegal at law expression. 2. Do not look to individual components a. Could be boxes – but arranged in new way. 3. Examples of what may not meet threshold: a. Capturing Reality i. Photos of Food ii. Photos of Sports iii. Selection of Subject matter does not meet de-minimis standard. b. Short words and phrases c. Short musical phrases d. Slight variations of musical works e. Title of a song, book or other work unless very creative. iii. EXCEPTIONS: 1. Merger Doctrine a. If the expression is necessary to use the idea, the expression is not copyrightable. Protection of the expression would give author a virtual monopoly over the idea. The expression merges b. Blank Forms: i. Copyright office says not copyrightable. ii. Some courts, if info is on them, will grant copyright protection. b. Author = (b) Fixed in any Tangible Medium of Expression by Authority of Author a. Fixed in Tangible Medium: i. Embodied in a ―copy‖ that is, ii. Sufficiently Permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration 1. Perceived: a. Need not be long in duration b. Must be perceivable by looking at with eye (or ear for sound recording exception), or i. White Smith Music Publishing v. Apollo 1. Majority: Music roll that enabled mechanical piano not copyright infringement on sheet music because no one could read. 2. Dissent: Can copyright how notes are placed together and that co-location should be protected, therefore any thing that mechanically reproduces should be a protected use. c. With aid of any computer or device! (1976 act in response to White Smith) d. Fixation of Computer Drawn Images e. Midway v. Artic i. Pacman Case, Artic creates game mod that created derivative graphics. Artic argued no fixation of changing moving images in a game. Court ruled there is fixation because there are a finite number of changes possible and each image is perceivable for a short duration. ii. Now: Copyright office makes authors choose whether to protect the audio visual work or the computer code that generates the audio visual screens. Most register the audio visual screens because it indirectly protects the code used to create the audio visual screen as well as other ways of coding such a screen. f. Computer driven fireworks show i. Capable of being reproduced at different times so meets requirements. g. Drawings in Sand i. Not copyrightable because always being moved. h. Live Performances i. No fixation, therefore not copyright infringement when audience records, even if band records simultaneously (unless they can prove record a second before). ii. Except: 1. if live performance previously written down, or 2. LIVE BROADCAST EXCEPTION: a. ―A work consisting of sound images or both is fixed if a fixation of the work is being made simultaneously with its live broadcast.‖Entertainment Exceptions: 3. ANTI-BOOTLEGGING ACT: Illegal to record or traffic in illegally recorded live musical performances (commerce clause jurisdiction). 4. CA & NY: Unfixed original works of authorship are protected by state statute. Protects extemporaneous songs or poems. a. Speak must put everyone on notice. 2. Sound When embodied in a phonorecord, 3. TV: A work consisting of sounds, images, or both, that are being transmitted, is "fixed" for purposes of this title if a fixation of the work is being made simultaneously with its transmission. iii. Works Created over Time: the portion of it that has been fixed at any particular time constitutes the work as of that time, and where the work has been prepared in different versions, each version constitutes a separate work. b. Of Expression: i. Must Define SCOPE of the idea to determine where idea stops and expression begins. 1. Idea = expression in most basic description. a. Angle, wardrobe, lighting are all decisions that give a particular expression. ii. Scope Determines Strength of Protection: Ways to Express Idea Strength of © Protection Protects Against (Scope) Numerous Strong Substantial Copying Limited Thin Virtually Identical copying Very Limited None (Merger) Can Copy (map, game instructions) 1. (c) National Origin a. Author must be US citizen, or b. Foreign Author who has, i. Not published the material ii. Is a resident of the US or Treaty Country iii. 1st Published in US or Treaty Country c. Exception: i. US Federal government Employees 1. No Copyright for work created in scope of employment (it is in public domain. 2. Nothing in Act about state or local gov‘ts (d) Categories of Authorship: a. Literary works; i. Mathematical formulas: generally not copyrightable because they usually are considered to be ideas and not expressions of ideas (except for theoretical math). ii. Computer Code: 1. RULE: Computer software tends to be useful functional expression, there are strong idea / expression limitations therefore only gets very thin protection. 2. Source Code vs. Object Code. a. Source code is the human written code that is translated by a compiler into object code a computer can read. b. Object Code is considered a work of authorship in numbers i. Counterargument is it is functional, not creative. Therefore it ought to be protected through patent. iii. Books 1. Thin protection if based on facts and told chronologically 2. Thick protection if creative decisions made on structure and perspective, and if fictionalization. iv. Characters 1. Comic Characters – Yes 2. Fictional Characters only described in writing: a. The more developed the stronger the copyright protection v. Computer Chip Designs 1. Semiconductor Chip Protection Act of 1984? a. Prevents copying of chip design for 10 years. b. Prevents making, selling using chip design by those who do not own it. c. ―Mask Work‖ or Mask Design refers to works protected under this act. b. Musical works, including any accompanying words; i. Must be committed to writing ii. Chords, notes and progressions do not get over de-minimis requirement. iii. Three Note Jingle probably not copyrightable c. dramatic works, including any accompanying music; i. d. pantomimes and choreographic works; e. pictorial, graphic, and sculptural works; f. motion pictures and other audiovisual works; g. sound recordings; and i. Sound Recordings fixed Feb 15th, 1972 or later are covered by Federal Law. ii. If earlier, then subject only to State Law iii. Music Compositions always have been covered. h. Architectural works. i. Added in 1984 to adhere to Berne Convention ii. Definition: ―Architectural work is the design of a building as embodied in any tangible medium, including a building or any plans and drawings. The work that‘s protected includes the overall forma and the arrangement of spaces and elements in the design but does not include individual standard features. 1. (BIG change as overall form would not previously have been copyrightable, still can argue would not usually meet de-minimis level of creativity under idea expression theory). 2. Ex. Original selection and arrangement of features that is not dictated by function (would not meet de-minimis creativity)) are copyrightable. 3. Included: Residences, Offices, Gazebos, Churches. 4. Not Included: Dams, Bridges. iii. Applies to: Buildings completed on or after Dec 1 st 1990. 1. If Design of building was embodied in an unpublished design or drawing as of that date, also covered. iv. Can also protect he plans as pictorial and graphic works COPYRIGHT PROTECTION FORMALITIES: 1909 Act Works Pub. Pre-'78 1976 Act Works Pub. 1-1-78 to 2-28-89 Works Pub. On or After 3-1-89 Notice Affixation of notice: Form Required 1.  or "Copyright" or "Copr." 2. Yr of first publication for printed literary, musical and dramatic works, and sound recs only. 3. Owner's name (Short form of notice allowed for certain works of art.) Required 401(b): Copies need: 1.  or Copyright or Copr. 2. Yr of first pub. 3. Name or other identifying info 402(b) Phonorecords need: 1. Letter P in circle re SR's 2. Yr SR first pub. 3. Name or other identifying info Optional Same as answer at left Location Specified locations for certain works; otherwise reasonable notice req‘d Reasonable notice: safe harbor locations contained in C.O. regulations Public domain unless (Sec. 405(a)): 1. Rel. small # affected; or 2. Reg before or w/i 5 yrs of pub w/o notice, and reas effort made to remedy upon "discovery;" or 3. Omission in violation of written req't of notice Same as answer at left Effect of Omission on Copyright Owner Public domain unless mechanical failure and only limited no. of copies affected Infringer entitled to prove innocent infringer defense to mitigate damages Registration Registration of Works Generally optional except to renew © for works publ‘d before 1964 Application, deposit of work and fee Registration generally required prior to filing suit Registration not required prior to infringement Generally must prove ownership of a valid copyright Optional except to cure omissions of notice Same as answer at left Same as answer at left Registration gen‘lly req‘d and must occur prior to infringement (or w/i 3 mos. of pub. if work infringed during this period) Registration creates rebuttable presumption of copyright ownership and validity if work registered w/i 5 yrs of pub Optional Requirements Same as answer at left Registration required for U.S. Works (those created or first publ‘d in U.S.— Treaty Country works exempted) Same as answer at left for U.S. and Treaty Country works Effect on Action for Infringement Effect on Seeking Statutory Damages Effect on Evidentiary Presumption of Validity Same as answer at left for U.S. and Treaty Country works Deposit Deposit of Works Generally required Generally required for works published in U.S. 2 complete copies of Same as answer at "best edition" of left work Promptly after pub. Within 3 months of pub. Fines and loss of Fines only. Does protection not affect validity of copyright. Same as answer at left Same as answer at left Same as answer at left Same as answer at left Form When Required Effect of Failure to Comply Upon Demand DERIVATIVE WORKS COPYRIGHT FORMALITIES (A) Definition: a. A Second generation work that is a recasting, transformation, or adaptation of one or more first generation works, b. In which the first generation work(s) is recognizable, and c. The Original work meets all the requirements for copyright, including originality and fixation. i. Must be eligible, not necessarily registered (B) Requirement to get copyright on a Derivative Work: a. Derivative work must be original work of authorship i. Originality 1. Must be sufficiently different from original work (Doran Case). a. 9th Circuit: A vastly different form can be enough to be different (generally rejected, but put forth in Doran v. Sunset House 1962). i. i.e. in Doran it was a 3d blowup santa clause made from a painting. b. 9th Circuit: a recasting of a work into a different media without more is not sufficient for a derivative works copyright. (Ent. Research Group 1997). c. ii. De-Minimis Requirement 1. Split: a. Some courts require derivative works to have substantial creativity to be register-able. (Gracen v. Bradford) 2. Changing or modifying a sound recording. a. Interpretation of § 114(b) for purposes of liability; i. 6th Circuit: No de-minimis exception, i.e. no originality required, any sampling is infringement per se ii. 9th Circuit: Amount sampled must be de minimis and must be substantially similar as a matter of law. b. Fixed in tangible medium of expression. (C) § 103 a. Derivative works unauthorized by the primary works author do not qualify for copyright protection b. The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. i. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material. (D) Special Category: Editorial Revisions and Annotations: Originality requirements on new work must be met to be considered original works eligible for copyright. COMPILATIONS (A) Definition: a. A work that is formed by collecting and assembling data, facts and/or independent works. i. Ex. Newspaper b. Facts & Data selected and arranged in an original way can qualify for copyright. c. De-minimus Creativity Standard Applies d. Copyright of author of compilation only extends to the original components the author adds. i. Ex. Only the selection and arrangement, not the facts themselves. ii. Thin protection (A) Phonebooks: Feist Publications Case: a. Phonebook cannot be copyrighted b. Order is mandated by law: alphabetical. c. Hold: more functional than expressive. Since selection and arrangement is dictated by the function and not creativity no copyright. d. There may be thin protection for the arrangement of the text to protect against literal copying, but it is essentially a database so the data could be copied. COPYRIGHT DURATION AND TERMINATION (1) Duration of Copyright Terms a. Measurement Convention i. All works deemed to expire at 12am on 12/31 of year of expiration. b. Publication Defined: i. 1976 Act: Distribution of at least 1 copy to the public ii. Offering to sell to distributors for further distribution. 1. Except: Not public performance or display. iii. 1909 Act: 1. Limited Publication a. Publication to limited group of persons for specific purpose. 2. General Publication c. Pre-1909 Works i. If published prior to 1923 then it is in the public domain. ii. If never published, then becomes a straddle act (go to 1976 act) d. 1909 Act Works i. Published with notice prior to 1978. ii. Protection commences on 1 st publication with notice. 1. Initial Term = 28 years 2. Renewal Term = 67 years (28+67 = 95 years total) a. Works published before 1923 i. Work is not in the public domain. b. Works published between 1923 and 1963: i. Need to have a renewal app filed during 28 th year.. ii. Must have been filed by author or author‘s heirs. iii. This renewal mechanism was a way to allow authors to reclaim the work. 1. Transfers and licenses where held to die at renewal unless the transfer or license specified to survived the renewal. 2. Hollywood made authors grant the right to use the work during the renewal period of the copyright. 3. If the author died before the 28 th year, the right to register would vest in spouse. And they would not be contractually bound to Hollywood to renew under contract. c. Works published between 1964 and 1977: i. Automatic renewal for 67 years (Sonny Bono Act). ii. Optional Renewal App: 1. Provides availability of statutory damages 2. Right of authors successors to terminate derivate works transfers or licenses. 3. Renewal must be by proper part: a. Individual and joint works: Author(s) or successors. b. Work For hire & Collective Works: Copyright Owner. e. 1976 Act Works i. Works Fixed on or after 1/1/78 1. Initial Term: Life of Author + 70 years 2. Work for Hire: Lesser of: 95 years from publication or 120 years from fixation. 3. Anonymous / Pseudonymous (fictitious name) Works: Lesser of: 95 years from publication or 120 years from fixation. ii. Works fixed but not published with notice until 1/1/78 or later. 1. Known as ―Straddle Works‖ 2. Subject to # 3 & 4 Below: a. Initial Term: Life of Author + 70 years b. Work for Hire: Lesser of: 95 years from publication or 120 years from fixation. c. Anonymous / Pseudonymous (fictitious name) Works: Lesser of: 95 years from publication or 120 years from fixation. 3. NO works expire prior to 12/31/2002 if work unpublished as of 12/31/2002. 4. If work published on or before 12/31/2002 work expires no sooner than 12/31/2047 (2) Termination of Copyright Terms a. An Author may terminate another‘s interest in author‘s original copyright upon the following conditions: i. Termination rights are: 1. Exercisable only by authors or their successors. 2. Are Non-waivable 3. do not apply to work‘s for hire (with narrow exception, company may be considered author) 4. Author must serve written termination notice not later than 2 years and no earlier than 10 years prior to the proposed termination date. 5. Derivative Works: Upon a valid exercise of termination rights, the initial transferee can continue to exploit old Derivative Works under the terms of the original transfer. ii. Transfers before 1978 (that included provision covering renewal period) 1. Termination Rights Exercisable: a. Within the 67th to 61st year from publication, iii. Transfers before 1978 & work published between 1923 and 1937 (that included provision covering renewal period) 1. Termination Rights Exercisable: a. Within the 76th to 80th year from publication if first termination right not exercised. iv. Transfers after 1977 (1909 & 1976 act works): 1. Termination right vests after 35 years for 5 years. a. i.e. right exercisable from 36 th to 40th year from transfer. b. EXCEPT: i. Where transfer included a publication right: 1. Then: 5 year termination window begins at earlier of 40 years after transfer or 35 years after publication. EXCLUSIVE COPYRIGHT RIGHTS The following rights are exclusive to the author, co-authors, or their respective transferee‘s – subject to all affirmative rights / defenses of non-authors. (A) § 106(1): Reproduction a. Exclusive right to reproduce ANY Copy, whether final or a work in progress. b. In any Medium. c. Covers any component of the Work that would otherwise by copyrightable. d. Incidental and technologically necessary temporary reproductions in the digital environment infringe this right unless authorized or exempted under DMCA. i. Electronic transmission is a violation unless simultaneously relinquish copy on senders hard drive. e. Limitations: i. No liability for temporary caching copies if: ii. Secondary Transmissions (superstations and networks stations) for private home viewing. iii. DMCA § 512 ISP Immunity iv. Courts are hesitant to find liability for copies computers make without people‘s intent. 1. Courts find no requisite causation by person. f. § 1101 Sound recordings & Music Videos i. Anyone who, without the consent of the performer or performers involved-(1) fixes the sounds and/or images of a live musical performance in a copy or phonorecord, or ii. reproduces copies or phonorecords of such a performance from an unauthorized fixation, iii. Is liable for copyright infringement. g. Architectural Works: i. § 120: 1. Taking a photo of a new building is making a copy of an architectural design and if unauthorized an infringement. 2. Except: If building can be viewed from a public place, a photo or painting or drawing is ok. a. Silent as to commercial or private use. b. We know that private use and public display are ok. c. Commercial use: i. Look to spectrum. If it is impractical to get licenses from every building then courts will probably say falls under exception. If one building, probably need a license. (B) § 106(a) VARA – See Moral Rights. (C) § 106(2): Make Derivative Works a. Must meet 3 requirements of a derivative work: i. Originality: 1. Split: a. Maj.: (9th) Must satisfy de-minimis creativity standard. b. Min: (7th) Need not satisfy de-minimis creativity standard. ii. Fixation: 1. Derivative works must be split to get copyright protection, HOWEVER, 2. Need not be fixed to infringe on original authors work. 3. Split: a. 9th Cir. Fixation Required. i. Duke Nukem Case. Don‘t know how applies outside videgames. b. Others: No Fixation Required. b. Sound Recordings: i. Changing or Modifying Sound Recording: 1. 6th Cir. No De-Minimis Originality requirement. Sampling is infringement per se. 2. 9th Cir. Amount Sampled must be de-minimis and must be substantially similar as a matter of law. c. Limitations: i. § 110(11) Masking Adult Content Ok (D) § 106(3) Distribute Copies to the Public a. Exclusive right 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.. b. Public = beyond close friends and family. c. Public Distribution on the Internet i. Transmission over internet has been held to be a distribution. Even if not fixed. ii. Merely making available on internet constitutes a distribution (A&M v. Napster & Hotaling Case). iii. 1996 WIPO 1. Prohibits the unauthorized ―making available to the public‖ of copyrighted material by means of digital networks. iv. 1998 DMCA d. Limitations: i. Right of First Sale (E) § 106(4) Public Performance a. Applies to all types of works except, i. Pictorial / Sculptural Works ii. Architectural Works iii. Sound Recordings b. ―Perform‖ means: to play, dance or act a work by any means or process, or in the case of a motion picture, to show its images in any sequence or to make the audio sounds audible. c. ―Public Performances‖ Means: i. direct performance in a place open to public ii. performance at a public gathering (substantial amount of persons outside of normal family and acquaintances) iii. Transmission or otherwise communicate a performance to a place covered in (i) or (ii), or iv. Transmit to the public at large. d. Grand Performance: Dramatic Performance of Works i. Defined: Story and Songs Together ii. Must Get permission from Copyright Owner e. Small Performance: Non-Dramatic Performance of just the songs. i. Get license from PRO‘s f. Public Performance on the Internet: i. Streaming Music or Video ii. Must pay DPA royalties in accordance with CARP. g. Exemptions: 1. 2. 3. 4. 5. § 107 Face to Face teaching activities § 110(1) & (2) Used for teaching purposes § 110(3) Performance of works in a place of worship.. § 110(4) No-Commercial Purpose § 110(5) ―Aiken Exemption‖ Exemption for secondary transmissions (ota radio or tv broadcasts, not cable or satellite transmissions) if you are using a standard home apparatus in a retail establishment for the purpose of background ambience. a. New Exemption: If business and want to use better equipment to play OTA broadcast of songs, can use a non-homestyle stereo but there are size limitations and square footage limitations. b. DirectTV sells commercial subscriptions for items like ―Monday Night Football‖ that gives a license to publically perform. 6. § 110(7) Record stores may play records in store for purpose of generating demand. Can‘t charge admission. 7. § 110(8)-(10) Performance of works to veterans, charities and disabled people 8. § 110(11) Allows companies an exemption to transmit movies edited to remove sex and violence into homes. 9. § 118 Public Radio exemption Compulsory License: 10. §111 (cable) / 119 / 122 (sat) Cable Satellite Transmissions Compulsory License a. Re-transmission of original transmissions qualifies as public performance b. As long as cable re-transmitters pay the statutory license they can rebroadcast. c. Satellite re-transmitter negotiate with content companies, then arbitrate in front of CARP. Limitations: d. This right only applies if the re-transmitter does not alter the broadcasters content. (F) § 106(5) Public Display a. Applies to all works except: i. Sound Recordings ii. Architectural Works b. ―Public‖ same as defined above. c. Motion Pictures: Applies to the showing of even one frame! i. Ringgold v. BET Case: BET acquired a poster of an artists quilt from a museum that had a license to sell the posters to the public, BET then used the poster as a background for a poster that was set dressing on one of their shows. It was on screen 3-4 seconds 9 times. Artist sues for copyright infringement based on theory that artist was only selling a copies of the original work, and those copies did not come with any copyright interest or license for public display & that mastering the show was creating one or more mechanical copies of her work under § 106(1), a derivative work since it‘s a new context under § 106(2), and a public distribution under § 106(3) by distributing tapes to affiliates. BET defenses: 1. Fair Use a. Hold: Doesn‘t qualify because this is commercial exploitation. 2. No De-Minimis Creativity a. Television stations can get statutory licensed to pictorial nonsculptural works and sound recordings. b. Hold: Librarian of Congress guidelines says if more than 3 seconds on screen it is a featured work, if less than 3 seconds then background work. There are two different license rates for each. ii. (G) § 106(6) Exclusive right to perform Sound Recordings publicly by means of a digital audio transmission. a. Digital Transmission = Transmission in while or in part of a public performance (live streaming feed) in a digital or other non-analogue format. b. If any part of a transmission is via digital technology it qualifies. c. Exemptions: i. OTA broadcasts via digital technology (HD radio) Licensing ii. Statutory License Real Time Transmission Services of a Non-Interactive Nature.. (XM, Music Choice). iii. Negotiated License: Real Time Transmission Services of Fully Interactive Nature. iv. iTunes Scenario: If you sell copies in digital form: the standard mechanical reproduction license does not completely cover you, you need a license that also allows for the public performance of such songs under 106(6) and probably 106(3) distribution rights. LIMITATIONS ON EXCLUSIVE RIGHTS d. § 107: Fair Use (see affirmative defenses) e. § 108: Reproduction by qualifying Libraries and Archives. i. Right to Reproduction 1. May be done by any employee in scope of employment 2. No more than 1 copy of each work 3. For no direct or indirect commercial advantage 4. Library must be: a. Open to the public, or b. Available not only to affiliated researchers but also to other scholars not affiliated. 5. Must maintain copyright notice 6. The rights of reproduction under this section do not apply to a musical work, a pictorial, graphic or sculptural work, or a motion picture or other audiovisual work other than an audiovisual work dealing with news, ii. Right to Limited Distribution 1. No more than 3 copies of an unpublished work duplicated for preservation. 2. May only distribute to other libraries or archives for security purposes. 3. The work must not be generally available to the public iii. Waiver of vicarious liability 1. Libraries and archives not liable for the misuse of their copying equipment or subsequent use of the copies that exceeds fair use. f. § 109(a) Right of First Sale : i. Once first sale made of a fixed copy by original owner, can‘t stop others from reselling or distributing that particular copy. This is a limitation on the exclusive right to distribute an owner‘s work. Separate from the adaptation an derivative works right. Elements: 1. Copy must be owned by person who sells or transfers the copy. (i.e. can‘t be stolen or illegally possessed or rented). 2. Copy has to be lawfully made (can‘t be an unauthorized or pirated copy). 3. First Sale doctrine does not apply insofar as the ability to ‗rent‘ is concerned: a. Phonograph Records b. Copies of Software c. Limited Exception: i. Non-Profits, Libraries and Schools can lend out records and software. 4. Applies only to distribution, not reproduction. ii. Visual Artist Rights Act of 1991 – Moral Rights to authors of fine art. iii. EU: P. 488 note 12 and 13: Resale Royalty Legislation: ―Droit de suite‖ laws. An original author iv. CA Resale Royalties Act: 1976 law, a resale of a work of fine art (original painting, sculpture, or drawing or glasswork, when seller is CA resident or sale occurs in CA, 5% of price must be paid to original author. 1. This is not seen as a preemption of copyright 109 distribution first sale rights but rather an augmentation – Morseburg v. Balyon. g. § 113: Limited Uses of pictorial, graphic and sculptural works. i. (a) & (b) Right of reproduction for these types of works when fixed on any kind of article, useful or not is still exclusive to copyright owner. ii. (c): May use any work lawfully reproduced in connection with News Purposes iii. (d)(1) Building owners: No liability for destruction or mutilation of Pre-VARA sculptures on buildings and post-VARA (1990) works with a mutually signed waiver. iv. (d)(2) If VARA work, must 1. Make Good faith effort to notify author he can reclaim work at his cost and reclaim copyright. 2. After 90 days may destroy. h. § 114: Sound Recordings: i. No Exclusive public performance right under § 106(4). 1. (d) Exempt from § 106(6): digital audio rebroadcast of terrestrial radio o 2. Exclusive right of performance only in musical compositions. ii. Exclusive rights pertain only to sounds fixed by author, and not to same sounds fixed by another author. iii. Exclusive rights in §106(1),(2), and (3) do not apply to a educational television and radio programs. 1. No public distribution of copies of the program i. § 115 Music Compositions – Mechanical Licensing. i. If composition has been recorded and commercially released than anyone can get a license to that song (for the purpose of recording it) ii. Must give owner notice and pay statutory fee. iii. Sales of composition must only be for private non-commercial use. iv. MAY make own arrangement of composition to the extent necessary to conform it to the style or manner of interpretation of the performance involved. v. MAY NOT: Change the basic melody or fundamental character of the work. vi. §(a)(2) Although in form the new arrangement is a derivative work, it cannot receive protection as such except with the express consent of the copyright owner. vii. § (b) Procedure for getting a license j. § 120 Architectural Works i. Developers are not liable to architect for infringement for modifications to a building designed by architect. 1. Must get copyright assignment if reasonably can. MORAL AND IMPORTATION RIGHTS (1) Moral Rights (§ 106(a) VARA) a. When US signed Berne Convention had to come in line with Moral Rights a bit. b. About 14 states recognize moral rights in certain ―works of fine art.‖ i. CA is one of them. 1. Limited Right of Integrity: Prohibits intentional mutilation, alteration of destruction of a work. 2. Limited Right of Attribution: An artist has right to claim or disclaim authorship for just and valid reasons. c. Right of Integrity i. Prevent an intentional mutilation alteration or destruction (??) of the work that would be prejudicial to the author‘s reputation, and ii. For those whose work has gained recognized stature: author has the right to prevent any destruction of that work by any intentional or grossly negligent act. d. Right of Attribution i. Lanham Act / Trademark Law in US. ii. Right to have attribution or not have attribution (on works created by author AND works not created by author). e. Right of Disclosure (when and in what form work will be presented to public. f. § 106(a) Visual Arts Rights Act (VARA): i. Author gets to exercise VARA rights, as opposed to the copyright owner. ii. Applies to: works of ―fine art‖ who has transferred the copyright to another. (P.554) iii. Applies to: paintings, drawings, sculpture, posters, and photos for exhibition when a single copy exists or a limited edition of 200 copies or less sequentially numbered and each one signed by the artist. 1. Excluded: a. Works of fine art for hire. iv. v. vi. vii. viii. b. Commercial, advertising, magazine, newpaper, and packaging materials, c. Any work not subject to copyright protection. 2. Work as part of a building: building owner has a duty to make a good faith effort to notify the artist that the art may be mutilated or destroyed and the artist has 90 days to come in and save the design which will become the property of the artist. a. Except if the artist consented to the building prior to 1991 or if artist consented to possibility of mutilation or destruction in a signed writing. b. Ex: stain glass window. Rights: 1. Right of Integrity 2. Right of Attribution Term: when the artist dies the VARA rights die. Waiver: only expressly in a writing signed by artist. Remedies: A violation is treated as a standard copyright violation. Analysis: (a) Is it a qualifying work? (b) Does it violate one of the three protected rights? (c) Has the author waived his rights? a. Right to control Importation of one’s own goods into the US . § 602 (P. 491) 602(a) No importation of copyrighted copies made outside US (partly struck down) i. Bar on importing authorized copies purchased outside of US into the US without the prior approval of the copyright owner. ii. Practical Application: Price Descrimination, higher price in US and lower price outside US because of this barrier. iii. Essentially bars right of first sale for importations, but supreme court does not read it this way. In Quality King case they ruled that 602(a) applies to § 106 but since 106 is subject to § 107 to 122 then right of first sale still applies (so § 602 pretty much shot down). 1. One exception is for works authored in US but made outside the US, then is still an infringement under § 602(a). 2. There has not been a challenge under the Berne Convention‘s equal reciprocity principles (which would not allow the bifurcated interpretation above). 602(b) No importation of unauthorized copies. iv. If someone has made unauthorized copies of a n owners works, the owner can bar the importation of those copies into the US. v. If someone brings unauthorized copies into the US that is an infringement in and of itself (even if they did not make the copy). vi. Selling on the internet ala iTunes is under this right. Mechanical licenses should be sure to cover digital WORKS FOR HIRE, COLLECTIVE WORKS AND TRANSFERANCE OF RIGHTS (1) § 201 Works for Hire a. Types of Work for Hire §101 i. Work prepared within scope of employment as employee is a work for hire and owned by employer, 1. unless there is a mutually signed writing stating otherwise. 2. In determining employee status look to the regular tests, a. Control Test (most important factor, although a preponderance of factors the other way can rebut this). b. Who provides tools c. Where work is done d. Does contractor rely on employer for sole employment? ii. Under independent contractor provisions, the work must be a ―qualifying work‖, 1. Defined: Qualifying Work = a Work specially ordered or commissioned for use as a contribution to a collective work a. chapter in a book b. A part of a motion Picture (acting etc) c. An Audio Visual Work d. Supplementary work e. Instructional work f. A Test g. An Atlas 2. And the parties must expressly agree in a writing signed by both parties. iii. The general theme is that these works are collaborative and you have more than one person contributing. 1. Sound Recordings: a. Pre-1999 qualified as a work made for hire. b. Post-1999 deleted language that allowed work for hire status and instructed courts to not interpret artist‘s intent in the 1999 laws c. This is an issue because the 1976 Act provided for recording artists to terminate assignments of their copyrights 35 years post assignment (but not if they were a work for hire because). d. What if it is not a collective work (i.e. a single singer songwriter who is not collaborating with anyone?) iv. Specifying the transfer of a work for hire is a necessary but insufficient act for work for hire treatment. It must qualify under the rules above. (2) Collective Works § 201(c) 1978 Act Works: a. 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. b. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series. 1909 Act Works: c. d (3) Joint Owners § 101 a. A "joint work" is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. b. Each owner has an undivided right to exploit the whole and a duty to account for any profits equally to the joint authors.??? (4) Licensing and Transfer of Ownership a. 1909 Act: i. Can only transfer ownership of the entire bundle of rights. 1. Rights Considered inseparable. a. This diminished the value of copyrights. ii. Can separately license rights. 1. But couldn‘t enforce the copyright as against a 3 rd party. b. 1976 Act § 201(c) i. Policy: 1. Broad Alienability of Copyrights: Copyrights may be transferred in whole or in part and may be passed as personal property in intestate succession. 2. Unbundling Principle: Any of the exclusive rights including any subdivision of such rights may be transferred. The owner of the exclusive right is entitled to all the ownership and protection afforded a copyright owner. a. This allows for maximum commercial exploitation. 3. Sales of Copies: a. First Sale Doctrine: When a copy is sold, the copyright does not go with it, rather just the right to use the copy for noncommercial use. b. Limited Public Display Right ii. Execution of a Transfer 1. A ―Copyright‖ transfer is defined to Include: a. Assignment b. Mortgage c. Exclusive License i. Or any other conveyance of exclusive rights whether or not limited in time or place 2. Infringement Enforcement: a. A transferee of copyright steps into the shows of the original author and has the right to sue and directly enforce the rights transferred. i. Includes exclusive licensees. 3. Formalities to Accomplish a Transfer a. Must be in a signed writing. i. What constitutes a valid writing? 1. Buying all assets of a business is sufficient. ii. What constitutes a valid signature? 1. Check with signature to copyright owner who endorses by signing. a. Courts say it depends if the subject matter of the transfer is clearly indicated on the check itself. Then yes it is a sufficient writing. b. If not, then no. b. Can‘t be oral. i. If make an oral exclusive license or transfer and it is memorialized in writing within a reasonable time retroactive to the date of the oral grant then it is ok. ii. Effects Associates v. Cohen. 1. Effects Associates sues Cohen for using their footage (commissioned by Cohen but no written license) in a movie. 2. Court does not allow a ―Hollywood exception‖ (filmmakers do lunch not contracts) 3. Cohen claims non-exclusive license since it does not have to be in writing. 4. Hold: Court agrees non-exclusive license. Scope then becomes an issue. 4. Perfecting a Transferred or Licensed Interest in a copyright. a. Assignments and Exclusive Licenses i. 1st Recorded transfer prevails in any ownership dispute, even as to earlier non-recorded transfers and later recorded transfers. ii. Must be a bonafide purchaser for value. b. Non-Exclusive Licenses: i. Recording prevails over subsequent oral licenses, unless oral license was prior recorded. ii. Must be a bonafide purchaser for value. 5. Interpreting transfers in light of new Media formats. a. Two approaches to scope of a grant with respect to new media: i. Construe narrowly and literally ii. Construe broadly to mean any reasonably related means. b. Always include a reservation clause: i. ―Any rights not expressly granted herein are reserved by the grantor.‖ DIRECT INFRINGEMENT § 501(a) (1) Who has standing a. Owner of any of the copyright rights being infringed i. Owner of exclusive rights under § 106 & 106(a) ii. Rights holder who‘s phonorecords are imported without permission § 602. iii. Including Exclusive Licensee (2) Procedure for enforcement: i. Must show standing: 2. Must prove a valid copyright owner or exclusive licensee to sue for infringement during the time the infringement occurred, (under 106 or 601 or 602). a. If registered within 5 years of first publication then get a presumption of ownership of a valid copyright, or b. If suing under VARA must be original author. c. Copyright Act recognizes beneficial owners as well (exception to general rule). i. If original owner has enough of an interest in litigation between a second owner and another party then may be able to get standing. 1. Ex. Original owner‘s royalty stream would be affected. i. Original Owner always entitled to notice of litigation with regard to the original work. Courts may allow original owner to intervene in copyright action if they so desired ii. Must show court has jurisdiction over claim(s) : 1. Personal, and 2. Subject matter a. Federal Courts have exclusive jurisdiction over Copyright infringement. Therefore, b. Must show that the claims arise under the federal copyright act. i. Three forms of ―arising under‖ jurisdiction (P 580). 1. Complaint is for a remedy expressly granted by the Copyright Act, or a. Includes Declaratory Judgment actions. b. When a work is utilized according to a compulsory license. c. Court Split on the applicability of the well pleaded complaint rule to copyright: i. Defenses fall outside the well pleaded complaint rule (all claims in the complaint) but an affirmative defense could be enough to assert jurisdiction. ii. Others require jurisdiction based solely on the complaint. 2. Asserts a claim requiring construction of the Act, a. Ex. Interpretation of the work for hire or joint work provisions of the Act, b. May include whether a contract qualifies as a writing under § 204(a), but probably not under Jasper v. Bovina Music Inc, or 3. A distinctive policy of the Act requires that federal principles control the disposition of the claim. a. Ex. State claims may be preempted by copyright act therefore only federal jurisdiction. ii. Claims found not to arise under federal copyright law: 1. ―Mere breach of contract suit‖ a. No dispute over the scope of the copyright act. b. Failure to pay under a contract does not make a license invalid (which would automatically become an infringement). However, if the license was cancelled pursuant to its provisions and the licensee continued to exploit then you have statutory infringement. 2. State Probate actions involving copyrights 3. State Law unfair competition: i.e. a. Misrepresentation b. Violation of common law c. Supplemental Juris over related State Claims. i. In order for Federal Courts to take supplemental jurisdiction over state causes of action, need: 1. Related = Claim that derives from a common nucleus of facts. 2. Some sort of unfair competition claim. a. Misappropriation b. Misrepresentation c. Theft b. Must Show a Substantial Claim : That would make it past summary judgment (a material question of fact).. Prove: i. Ownership of a valid copyright 1. Or author with standing 2. Or Exclusive Licensee in area of infringement. ii. An Infringement of a copyright owner‘s exclusive rights by defendant. iii. In the case of an unauthorized reproduction or derivative work, an improper appropriation cause of action: 1. Actual Copying, or 2. Access by defendant to Plaintiff‘s work, AND 3. Substantial Similarly to Plaintiff‘s work, that is an a. Substantial Similarity is determined either: i. from the perspective of the ―Ordinary Consumer‖ of the product, or ii. From expert testimony b. Access + Substantial Similarity = rebuttable presumption of actual copying, then must show: 4. Improper Appropriation as to amount of work copied (ie not a fair use) a. Set Standard of what is improper: Ways to Express Idea Strength of © Protection Protects Against (Scope) Numerous Strong Substantial Copying Limited Thin Virtually Identical copying Very Limited None (Merger of idea and Can Copy (map, game instructions) expression) b. Determine if improper amount used by defendant: i. Court Approaches: 1. Subtract Approach 2. Total Look and Feel Approach (good for visual works) a. Substantially similar in the eyes of the intended audience? ii. Hybrid of both (Class Approach): 1. ID protected v. Non-Protected Elements of the Plaintiff‘s work. a. Unprotected Elements: i. Ideas, Facts, Research ii. Public Domain Materials iii. Licensed Materials iv. Scenes a Faire (??) v. Stock Figures or Characters (archetypes or general characters and basic elements) vi. General shapes of Architecture vii. Components of a copyrightable work that are driven by functional rather than expression determinations. 2. Subtract out (i.e. disregard) the unprotected elements 3. Once stripped down to the essence that is protected by copyright, compare protected aspects of the plaintiff‘s work to the entire defendant‘s work. 4. Then determine: Do we have substantial similarity between the plaintiff‘s work and the defendant‘s work? a. Look to the quantity and the quality that is copied? Are the essential aspects copied? b. Is the total look and feel similar? (more for visual works than literary). c. The intended audience is the judge, so must consider the sophistication of the intended audience. If it is an audience of experts then more difficult to show? If kids, maybe easier? d. If there is identical copying of plaintiff‘s expression then the inquiry shifts from substantial similarity to was too much copied? e. If substantially similar then we have an improper appropriation. f. If no substantial similarity then whatever was copied is ok. c. Literary Copyright infringement (Judge learned hand opinion in Nichols). Abstractions Approach. i. Subject Matter 1. Not protected ii. Plot 1. General Themes (Not protected) 2. Incidents (protected) a. Detailed outline is protected. iii. Characters 1. Stock Characters (not protected) 2. Detailed Characters (protected) iv. Settings v. Substantial Similarity in any of these layers is enough to prove infringement. 1. If Ordinary Observer does not see a difference when comparing d. Visual Works Infringement i. Total Look and Feel Test ii. From Perspective of whomever the ordinary observer would be. 1. If looks substantially the same then infringing. i.e if they can‘t tell the difference. iii. Still abstract components, once find protectable aspects to a look and feel comparison. e. Example Infringement Analysis: f. Laureyssens v. Idea Corp Case: i. MIT student bought a ―happy cube‖ and played with it then made one a little different. ii. Elements of Cause of Action: 1. Establish Access 2. Establish Actual Copying iii. Then, establish copyrightable elements and noncopyrightable elements. 1. P 637: Idea: a perfect hollow cube puzzle (not protect-able) 2. Design of puzzle pieces themselves (Protect-able) iv. Determine who the consumer is and how discriminating they are 1. Who is the ordinary puzzler? 2. Two types of tests: a. Indirect Evidence i. Expert Testimony ????? b. Ordinary Consumer of this product i. Would they find each product to be different or substantially similar? (3) STATE CAUSES OF ACTION a. Misappropriation of Ideas (not tort misappropriation) i. Usually based on state contract law. ii. Express Contract Agreement: Must show elements of express contract. 1. Show: a. Mutual Assent b. Consideration c. Contract Definiteness. i. Must be sufficiently definite to enforce the K. ii. If idea is at too general a level for a court to tell if studio took and used pitch, claim probably will fail. iii. Implied Contract Agreement. (when there is no writing between the parties or no express oral agreement) 1. Defendant implicitly agreed that if he used idea I would get credit and compensation. 2. Plaintiff must show 4 things: a. Novelty of Idea b. Concreteness i. Idea was sufficiently concrete for defendant to make actual use of. ii. Courts generally require that plaintiff have idea written down when submitted, iii. Or at least that it is sufficiently defined to be of use to other party c. Idea must have been disclosed under circumstances which would reasonably indicate an expectation of compensation. d. The Idea must be actually used by defendant. i. For movies, courts generally say the plot of the movie has to be based on the plaintiff‘s plot or idea. ii. A little bit of the plot won‘t fly. b. State Misappropriation Tort Claim i. Sometimes brought in conjunction with a copyright misappropriation claim. ii. Often has an issue with preemption. iii. Use this last if there is nothing else. Elements: 1. Substantial Investment created a valuable intangible asset not covered by Copyright, TM or patent. 2. Defendant utilized. 3. Plaintiff lost all incentive to continue creating product. c. Right of Publicity Claim i. Someone is exploiting ones name or person for commercial purposes. ii. Copyright claims generally fail here because name and likeness are not generally copyrightable. iii. Only approximately half the states recognize a right of publicity claim. Some under statute some under common law. iv. CA has a statute. v. Right of Publicity gives one the exclusive right to exploit ones own name and image. 1. Scope: Varies from State to State. Generally, requires three things be shown by plaintiff: a. Defendant is making a commercial use of, b. A well known persons name or likeness c. In a way where the public would identify the defendant‘s use of the name or likeness with that particular famous person. 2. Modern trend is towards an expansive reading. ―If you use a person‘s likeness or image in any way where the public can associate what you are doing with that well known person it can be an appropriation of the right of publicity‖. a. This includes nicknames and catchphrases. b. This can also include imitating voice or style. c. Attenuated visual likenesses are also being found to be protectible subject matter (i.e. silhouette). 3. Survivorship: Split all over. Some say cannot pass to heirs. Some say passes for finite duration. Some say passes for ever. 4. General Fair Use Privilege: Satires and Parodies are ok, unless they are in the commercial advertising context. a. Ex. Painting of 3 Stooges was created and offered for sale. Heir of stooges sued on right of publicity claim. State supreme court agreed that the likeness had been misappropriated in the painting. BUT, supreme court found that if the artist had done something very TRANSFORMATIVE, then it would have been ok because such use is privileged by the 1 st Amendment. (4) INDIRECT INFRINGEMENT a. Vicarious Liability i. Direct Infringement by a third party ii. Legal right and practical ability to control infringing acts 1. legal right can mean: a. an agreement between the parties b. established policies and practices 2. Practical ability: a. May not be available in the situation of a landlord tenant relationship because a landlord cannot just enter the premises. iii. Sufficiently Direct financial Benefit to 1 st party flowing from 3 rd parties acts. 1. Direct is broadly construed and means ―Sufficient nexus‖ a. Could be an admission fee b. Rental fee c. Substantial number of people b. Contributory Liability i. Direct Infringement by a third party ii. Knowledge of infringement 1. Can be proven as: a. Actual Knowledge b. Constructive Knowledge (should have known) i. Based on circumstantial evidence iii. First party materially contributes to the infringing activities. 1. May be: a. Providing a product or service that provider knows or should know will be used for infringement. i. Consumer manufacturers of electronic copying equipment. 1. Sony Betamax Case a. Universal alleged 106(1) copying right infringed. b. Sony was facilitating. c. Court recognizes substantial noninfringing uses of product or service as a valid defense to constructive knowledge. d. If people can use product or service for fair use or under an implied license then can count for substantial non-infringing uses. 2. Napster Case a. If there are substantial non-infringing uses, must show actual knowledge to meet the bar for contributory copyright infringement. This worked in Napster because Napster had a central server matching requests for file exchange. b. Providing the market c. Providing the technology to infringe d. Providing the audience c. Active Inducement Liability Elements 1. Distributing a Device capable of infringing uses. 2. With the intent of promoting its use for 3. Direct Infringement (public distribution and copying § 106(1) & 106(3)) a. Grokster: Court looked to business model based on advertising that was going to drive traffic by allowing consumers to swap files. b. Defense is substantial non-infringing uses. i. Would the Sony Case have come out differently if this rule was applied? No, because there were substantial non-infringing uses in the Sony situation, but not in the Grokster case. 1. There is a split in the Supreme Court on whether the standard should be ―capable‖ of noninfringing uses as said verbatim in Sony Betamax, or ―actually‖ used for non-infringing purposes as Ginsberg says. 2. Outcome: Look to the majority of the use. ii. MGM v. Grokster Case 1. Unlike Napster, Grokster and Morpheus don‘t have a central server matching requests. 2. Both services are receiving sufficiently direct financial benefit because of ad revenue. 3. No control exercised over the users of their software. Therefore WON at the district level on summary judgement and the appellate level. Then it goes to the Supreme Court! 4. Supreme court Reverses in 9-0 decision. 5. Morpheus and Grokster had objective of helping people infringe on copyrights. a. Court focuses on bad intent. Comes up with third theory of liability, active inducement. b. If you intentionally aid and abet patent infringement you can be liable yourself (5) DMCA CAUSES OF ACTION DMCA: § 1201: a. Anti-Circumvention Provisions i. If you have built in security features (encryption, passwords) to protect a copyrighted work, it is a violation of Title 17 § 1200 to thwart those anticircumvention provisions. Civil Penalty. ii. Exceptions: 1. Law Enforcements may do so 2. Browsing privileges are given to Libraries and Schools to make good faith determination as to whether or not they want to purchase or copy the work. a. This is because it‘s a fair use. 3. Reverse engineering to check for interoperability 4. Testing Security 5. Clarification: it is not illegal to defeat anti-copying provisions to make a copy that you have a fair use right to make then it is ok. Problem is the additional provisions below (so would have to develop own hacking software). b. Anti-Trafficking Provisions i. Anti-Access Tools: If you make AND distribute in any way hacking software then you can be held liable under the anti-trafficking provisions. ii. Corley case: ―linking‖ to websites has been interpreted to be trafficking if meet following elements: 1. Must have actual knowledge 2. Must know the software is for circumvention 3. Intent to link for purpose of dissemination required. iii. Universal Garage Door openers allow customers to access software in garage doors, and this is circumvention. Lawyers are using DMCA for anti- competitive purposes and courts have largely rejected these arguments in the context of manufactured goods. (6) DEFENSES AND LIMITATIONS TO COPYRIGHT INFRINGEMENT a. Limitations i. DMCA Safe Harbors 17 USC: 1. 512(a) Just a Conduit (Comcast) a. May make mechanical copies for the purpose of caching. b. Several days is ok. 2. 512 (b) Just Cashing (Google) 3. 512(c) Just Storing for users. (AOL) a. Web Hosting Services Immunity (DMCA safe harbor) b. In order to be immune, must meet a series of statutory conditions: i. ISP‘s must not know or have reason to know that the material that posts to the websites they host is infringing ii. ISP must either be unable to control what is posted, OR, ISP get not direct financial benefits from those postings. iii. ISP must publicize AND implement a policy to terminate service to users who repeatedly infringe copyrights iv. ISP must not undercut the standard tools used to protect copyrights. v. ISP must comply with certain notice and takedown provisions. (P. 718). vi. If notices do not substantially comply with these requirements ISP is free to ignore. 1. Notice be sworn and physically or virtually signed by copyright owner 2. Based on good faith belief material being used without permission (clear not a fair use). 3. Copyright owner has to identify the original work that is being infringed. 4. Copyright owner has to identify the infringing material itself and provide information on locating it. c. Service provider must move expeditiously to remove or disable access to the material being infringed. d. Customer of the ISP may then fire back that the material removed was by mistake or was incorrect. e. Then ISP must pass the counter notification to the copyright owner and the owner has 10 working days to file suit against the ISP‘s customers for infringement. f. If that doesn‘t happen ISP has 4 working days to restore the material to the website. g. If the service provider acts in good faith within these parameters can claim immunity. 4. 512(d) Just Linking to page a. Just Linking: If linking to infringing material can the link provider be liable for contributory or vicarious copyright infringement? Still being litigated. b. In Line Linking: What happens when you pull up a picture of another website in your website and the other website is infringing? Is it direct? It is a copy, but it is hosted on the other server primarily. It‘s going this way with respect to search engines doing in line linking. 5. 512(h) Finding Infringers: Copyright owner can subpoena ISP for copyright infringers information. a. Copyright owners can go beyond fourth amendment ―unreasonable search and seizure‖ requirements and get information on alleged infringers. i. DC circuit requires that copyright owners have a separate complaint for each person who‘s information is sought, not just one complaint with a million names. 6. Must first have a user policy of no infringement. 7. WHEN ON NOTICE MUST TAKE DOWN a. Notice Requirements: i. What ii. Where iii. Right Person iv. Under Penalty of Perjury. b. Affirmative Defenses i. Fair Use § 107 1. Notwithstanding the provisions of § 106 and § 106(A) [moral rights] : Criticism, comment, teaching, scholarship or research is not an infringement of copyright. a. The main goal of copyright is to foster the progression of knowledge. Money is ancillary to that. 2. Factors that shall be considered: to determine if a use is fair: a. Purpose and Character of the Use i. Statutory Illustrations 1. Common Criticism is fair use ii. Non Profit v. Commercial 1. Non-Profit is not fair use iii. Transformative use 1. Transformative Use is Fair. 2. The more transformative the more likely it is fair. b. Nature of the Use of Copyrighted Work i. Non-Fictional v. Fictional 1. Non-Fictional is Fair Use ii. Published v. Unpublished 1. Published is Fair Use c. Amount and Importance of Portions Copied d. Effect of use on actual / potential market for original and derivative works. i. Generally, if the public gaining more than the dampening of the economic incentives to create the work in the first place then fair use. ii. If criticism hurts sales it was probably true. e. Fair Use Policy Discussion: i. Balance the harm to author and dis-incentivising creation against the public interest and ‗does this serve the purpose of the copyright law to promote the progress of science and the useful arts.‘ 1. Copyright is strict liability – motives to not matter. i. Arguments for ―Fair use‖ ii. Copyright does not halt the free flow of ideas, just the expression, therefore the core purpose of the 1 st amendment is not happered. iii. However, is there is happering of the 1 st amendment, the fair use doctrine comes in and helps maintain 1 st amendment protections. ii. Fair use privilege in EU is very small compared to US. ii. Statutory Fair Uses 1. Decompilation of Code for Interoperability: A copy is fair use when working to decompile and reverse engineer software to make another product that must be interoperable. (Accolade Case) c. Copyright Misuse: When a company tries to use copyright law to gain a monopoly on a goods or services. (Maser v. Stein). (Apple v. Franklin Computer – Franklin argued Apple tried to use copyright to gain a monopoly on operating systems). i. There must be significant anti-trust concerns. d. Statute of Limitations: i. Civil Cases: 1. 3 years from date claim accrues ii. Criminal Cases: 1. 5 years from date the claim accrues a. Debate over date of infringement or date of discovery e. Laches i. Claim that plaintiff‘s suit should be barred because the plaintiff waited too long and the delay prejudiced the defendant in 1 of 2 ways: 1. Plaintiff knew about infringement but didn‘t move on it and defendant continued to invest. 2. Plaintiff delayed so long that the evidence and witnesses are no longer available to defend the infringement claim. f. Estoppel: i. Affirmative representations by the plaintiff that create an implied license for the defendant to do whatever the defendant is doing. g. Abandonment / Forfeiture i. Forfeiture is a non-affirmative act: 1. i.e. under 1909 act a work is failed to be published with proper notice. 2. It‘s basically forfeiture by omission. ii. Abandonment: 1. When explicit statement made that a work is given to the public domain. 2. Implicit act of abandonment like putting it out there and telling people to share it around. h. Material misrepresentation in copyright registration i. Saying you are the owner when you are not. i. Innocent Infringer Defense : i. ―I didn‘t know they were under copyright protection‖ 1. Only effective if work has no notice on it. ii. Copyright is strict liability, this doctrine doesn‘t excuse liability, but it can mitigate damages. (7) REMEDIES: a. Civil Cases: i. Injunctive Relief (§ 102) 1. Preliminary Injunction a. TRO: i. Can go in ex parte and get until you can get the defendant in for a preliminary hearing. b. Prelim Injunction: i. Must get defendant into a preliminary hearing. c. Legal Standard: i. § 502(a) Any court with jurisdiction under this title, may grant injunctions on such terms as it deems reasonable to prevent or restrain infringement of a copyright. ii. Paramount Pictures Case P 881 (9 th circuit): 1. Must show irreparable harm should injunction not be granted, a. Often presumed if there is a likelihood of success on the merits, and 2. Either likely hood of success on the merits, a. Ownership of a valid copyright, or 3. Balance of hardships in plaintiff‘s favor. iii. 2nd Circuit Standards iv. Rest of Circuits Standards 1. Same as above, but go with 4 part test (note 7): 2. (d) Would the public interest be promoted or harmed by granting the injunction? v. Paramount Pictures Case 1. Book published ―the joy of Trek,‖ that encapsulates each character and synopsizes episodes. 2. Court finds substantially similar infringement. 3. Defense: Fair Use. Is this a transformative use? No, court finds infringement. 4. If can show likelihood of success in a prelim hearing then entitled to temporary injunctive relief. 2. Permanent Injunction § 502(a) a. on such terms as it may deem reasonable to prevent or restrain infringement of a copyright. b. Any such injunction may be served anywhere in the United States on the person enjoined; it shall be operative throughout the United States and shall be enforceable, by proceedings in contempt or otherwise, by any United States court having jurisdiction of that person. ii. Impoundment (§ 503) 1. Pre-Ruling: All copies and machines to make such may be impounded by the court – even before a ruling on infringement. a. Defendant is entitled to an adversarial hearing before this is granted. 2. Post Ruling: Destruction may be ordered of copies and equipment. iii. Actual Damages (§ 504(a)) 1. Can elect actual damages or statutory damages. 2. Actual Damages: a. Actual Damages + Plaintiff‘s profits that are not duplicative of actual damages. i. Actual Damages = Lost Profits (Plaintiff‘s estimated losses, incld lost licensing fees) + (defendant‘s actual profits above those estimated to be lost by plaintiff). 1. Copyright owner only must prove gross revenues, defendant then has burden to prove costs. Subtract and you have profit. 2. Defendant can also subtract revenue from noninfringing uses. b. Other impairments of value i. No lost goodwill.. c. No duplicative profits. d. THERE MUST BE PROXIMATE CAUSE BETWEEN INFRINGEMENT AND DAMAGES! e. Pre-judgment Interest is also available. iv. Statutory Damages § 504(c) 1. Only one statutory damage allowance per work infringed, even if infringed multiple times. 2. However, can get a statutory award per infringer. 3. Summary: One award per work per infringer. a. Parties acting jointly are treated as one infringer (i.e. in partnership). 4. Generally range of damages $750-$30,000. 5. Willful: Damage increased to $150,000 per infringement if can prove willful. Amount still in discretion of court. a. Willful, defendant knew or should have known that conduct was infringing. b. If acted with gross disregard for a plaintiff‘s copyrights, then may be sufficient to establish willful infringement. c. Court will bear in mind what the compensatory damages would have been to try and do justice. ―if the plaintiff had been able to prove statutory damages, what would they have looked like?‖ 6. Innocent: $200 to $30,000 per infringer per work if the infringement was innocent (work lacked proper copyright notice). a. Defendant must show did not know and should not have known conduct was infringing. b. Libraries and Schools may have $0 damage allocated. 7. Derivative works are considered one work for the purpose of damages. 8. Collective Work: Can either be an a per song basis or per collective work basis. v. Costs and Attorney’s fees: § 505: 1. Court may award a reasonable attorney‘s fee to the prevailing party. a. Used to be only to plaintiff prevailing parties. b. Now each treated equally. 2. Court may also award court costs to either side. b. Criminal Cases § 506 i. Knowledge Requirement: 1. Knowing and Willful ii. Situations eligible for criminal prosecution:: 1. Intent for Financial Gain, or 2. No Electronic Theft Act: Distributes one or more copyrighted works in any 6 month period that has a cumulative value of $1000 or more (i.e. 10x $100 software program). 3. Putting a work on the internet before it is commercially released. 4. Camcorder Provision iii. Can either be felony or misdemeanor penalties. 1. Felony if reproduced or distributed in a 6 month period works with a retail value of $2500 or more. Up to 5 years in prison. 2. Criminal Fines. iv. Misdemeanor 1. Fraudulently use copyright notice 2. Fraudulently remove copyright notice from another‘s work 3. Fraudulently misrepresent to copyright office. FEDERAL PREEMPTION DOCTRINE e. Comes up when someone sues under State Law. f. Copyright Law is exclusively federal due to commerce clause power. i. Look to see if there is section 301 pre-emption ii. Look to see if there is pre-emption under supremacy clause / commerce clause. g. Two main sources: i. § 301a of the Copyright Act 1. State Laws are preempted if: a. Grants rights that are equivalent to the § 106 exclusive rights, and b. Covers works enumerated in the general subject matter categories of § 102 and § 103, i. § 102: ―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.‖ (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) sound recordings; and (8) architectural works. ii. § 103: Compilations and Derivative Works c. Federal law prevents the states from protecting Works even if it fails to achieve Federal statutory copyright because it is too minimal or lacking originality to qualify, or because it has fallen into the public domain. d. Date of fixation and publishing do not matter.. 2. When State Law NOT preempted a. § 301(b) Supplementary state laws where the protections are of a different nature than the laws provided by federal copyright law. i. Unfixed works such as speeches and live musical works. ii. Ex. Where copyright and trademark law might apply to the same work of authorship. I.e. a trademark sufficiently original to qualify for state trademark protection. This is a different purpose. b. ESSENTIAL ELEMENT TEST: to determine if a state law is not preempted by Federal Law. i. Extra Element Sub-Test: In order to survive, the State law claim must not be equivalent to any of the § 106 rights (if it is, it is preempted). State law claim must: 1. Include an extra element beyond 106 rights, and: 2. Which changes the nature of the action so it is qualitatively different from a copyright infringement claim. a. If don‘t meet essential element test we have satisfaction of the second condition for preemption. b. Some federal courts will bootstrap the extra element into the federal cause of action. c. Contract claims almost always have an extra element. ii. There is a second doctrine of substantive analysis – Some courts look to see if the State Law Claim or Contract claim is qualitatively different than a federal copyright claim, and if it different, it SHOULD NOT BE PREEMPTED. If it is the same it should be preempted. 3. Argument Against Preemption a. Claim that interfering with the balance struck between states rights and federal rights. b. Case: Can‘t give an author more protection than in the copyright act. c. Case: State law void that gives less protection to an author then federal copyright law. ii. Supremacy Clause 1. Allows preemption of state laws that are broader than the copyright act under the dormant commerce clause power of congress where if Congress could conceivable have any rational basis for regulating a particular area then all state laws may be preempted. 2. If look to congressional intent in passing § 2 of the 1909 act and § 301 of the 1976 Act it is clear they intend to preempt state laws that cover the same ground as copyright. h. Copyright preemption of Federal and State Trademark claims: i. Daster Case: 1. Trademark is a good supplemental claim to copyright infringement. 2. However, if trademark claim crosses over into copyright space, courts will find copyright law preempts trademark law. 3. OR, courts will read the trademark law as narrowly as possible so they don‘t overlap. 4. Court would not use trademark to preempt copyright because it would create in essence a copyright in perpetuity. 5. DEFENSE: a. Copyright: Idea / expression dichotomy. 6. Trademark: If expression is functional, then not protectible. 7. When making trademark claim, often can also sue under trademark or trade dress. If claiming someone is making look and feel of product image the same as another‘s, basically making a claim that the expression is the same as that or the mark holder. a. If logo is original and has de-minimis creativity, then it may be protected by copyright.