1 `Copyright Professor Perry Spring 2001 By: Sonali Shah I. Introduction A. Source of Copyright Law 1. Natural Law-certain basic truths of property rights-inherent rights a. Derived from John Locke b. Instinctive Theory 2. Benefit to Society-Constitution Art. 1 §8 Cl. 8 a. Govt. created rights-to encourage invention, public maximization of goods b. Utilitarian Theory II. Copyrightable Subject Matter §102(a) A. © protection exists in original works of authorship fixed in a tangible medium B. Originality & Fixation 1. Original = independent creation by author + minimal degree of creativity 2. Low threshold for originality (original < novelty) 3. Writings may be construed broadly to encompass photographs (Burrow-Giles(1884)) 4. Originality does not necessarily mean fine art (Bleistein; chromolithograph used in ad poster was copyrightable(1903)) a. Copyright law/judges are not going to judge whether art is good or bad i © protection will apply to bad art b. B/c a work is commercial it doesn’t preclude copyright protection 5. Fixation-“embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced or otherwise communicated for a period of more than transitory duration” a. §1101-Anti-bootlegging-before this amendment it was allowed b/c it wasn’t fixed it was allowed, now it is illegal b. change from 1909 Act 6. Distinguished variations are worthy of © protection(Alfred Bell (1951)); mezzotint engravings of public domain paintings, © protection b/c author contributed more than mere variation, little more than actual copying) 7. Work must be product of independent creation a. copyright doesn’t extend to cliched expression, fragmentary words or phrases (i.e. names, titles, slogans, familiar symbols or designs, form of expressions dictated solely by functional considerations (i.e. instructions, recipes), and typefaces (Magic Marketing v. Mailing Service (1986); envelopes wit phrases such s “telegram”, “gift check”, and “priority message” below the line minimal creativityno ©) 2 8. 102(b) excluded from © protection 9. Class Examples: a. Pep Boys Parts Numbers-yes b. Homer-Doh!-if a catch phrase then no c. Bart-Don’t have a cow man!-same as Homer d. Warhol’s Campbell Soup cans-yes (Alfred Bell) e. Coke can on top of book-possibly, originality is low threshold C. Idea/Expression Dichotomy 1. No © protection for ideas only to the expression (Baker v. Selden: P published a book and claimed © protection for the book that explained a method of bookkeeping and included blank forms using the methodno ©) a. Court: when the art taught by a work of authorship cannot be used without copying some aspect of the work of authorship, then that aspect of the work will not be protected by © b. No © in blank forms c. No monopoly in useful accounting idea (idea or process) without patent protection 2. Merger Doctrine-where only a limited number of ways to express something, idea merges with the expressionneither is protectible (otherwise a de facto monopoly would result)—err on the side of leaving things in the public domain a. Morrissey 1967; rules for a sweepstakes, only a few ways to express rules i Difficult to obtain © in functional/utilitarian forms of expression (instructions, recipes) b. Lotus 1996; infringement claim concerning menu command hierarchy of computer software. Court agreed that it was a method of operation-B/c the user must use the commands in order to make the program work. “Methods of operation are the means by which a user operates something. no © i Supposed to protect the end product not the method of arriving at it ii Computer program gets protection b/t it is original, fixed, and a writing. But it does something else-doing something is not protected by © iii If specific words are essential to operating something, then they are part of a method of operation and, as such, are unprotectable. iv §102(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.” c. American Dental-ADA’s taxonomy of procedure held to be ©, descriptions didn’t merge with the facts d. Blank Forms that don’t convey info. aren’t ©, but forms with integrated text are (Bibbero Systems) 3 D. Facts and Compilations 1. Compilation-§101-a work formed by the collection and assembling of preexisstin materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship (Feist 1991; © denied for a phone book, the underlying facts are arranged in ABC order—too common-needed “a modicum of creativity”) a. Overrules sweat of the brow b. The more obscure you chose to categorize, the more likely it will be given ©--traditional modes are less likely to be given protection b/c of lack of originality, even though the public tends to buy this way c. Does not need to satisfy novelty, or aesthetic merit d. No one may claim originality as to factsfacts do not owe their origin to an author. 2. The © expression in a compilation is that expression contributed by the compilation author 3. Facts are NOT ©, only the arrangement of them is a. Compilation of the facts doesn’t give you any rights over the underlying facts (Nash v. CBS1990; Dillinger story, if the story was fiction would have been afforded more protection, b/c original thought not simply historic facts) b. Bender v. West; D allowed to copy case text and other info from West case reports b/c selection and arrangement is insufficiently original. c. If selection is based on marketability, same reasoning underlying merger doctrine-done this way b/c it’s the best wayno © (CCC; publication of used car valuations 4. What is © is the work/product, even thought the determination is based on the process (expression, selection, and arrangement) 5. Any compilation can be broken down into unoriginal partsmust look at the end result 6. News events are not ©, but the manner of expression, analysis, interpretation of events, the way he structures his material, and choice of words (Wainwright) 7. “Total Concept Feel”-Roth Greeting Cards; common text and prosaic drawing together gained © protection, court looked at all of the element of the card as a whole and found it to be © 8. Maps are © compilations a. something can be protected in more ways than one E. Derivative Works 1. Definition-§101-“ a work based upon one or more preexisting works…” a. Modification of an existing work b. Derivative work can be based on: i Work in the public domain, OR ii © work, if permission was obtained from the original’s author 4 2. © protection extends only to the original material contributed by the derivative author, not to the preexisting material 3. No © for pirated works 4. Trivial Variation of original will not warrant © protection-not sufficiently original (Batlin v. Snyder; 1976-Uncle Sam bank, plastic v. metal) a. Batlin suggests that level and amount of artistic skill is relevant (so did, Alfred Bell & Alva Studio)-courts may be split??? i Class Example: colorization of movies-© b/c differences are sufficiently discernible, requires artistic ability, skill and technique— “complexity and exactitude” 5. Substantial Variation Test-Some courts require a higher standard for originality for derivative works, b/c it would otherwise be hard to tell what is protected by the © a. If a 3rd work came it will be tough to tell if it is a derivative work on the 1st or 2nd work, you can’t tell which work was drawn onresult in giving a © and pulling something out of the original work and taking something out of the public domain b. Minority view argue both to be safe F. Pictorial, Graphic, and Sculptural Works 1. Definition §101-“pictorial, graphic, and sculptural works. . . . Such works shall include works of artistic craftsmanship insofar as their form, but not their mechanical or utilitarian aspects are concerned.” 2. 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 a part of a useful article is considered a useful article” 3. B/c useful doesn’t necessarily mean out-“Works of art are ©as the writings of an author, that original works of art do not cease to be © as works of art when they are embodied in useful articles.” (Mazer v. Stein) a. The following factors make NO difference: i The ability to obtain a design patent ii Aesthetic value, or lack thereof iii Intention of the artist as to commercial application and mass production of design iv Mass production of design 4. Usefulness of Costumes v. Masks a. Mask-no utility in masks of animal noses, utility flows solely from appearance (Masquerade Novelty) b. Costumes-have a dual purpose: the appearance and the functionality articles of clothes haveuseful article, © only upon a finding of artistic authorship 5 5. Separability Tests-pictorial, graphic, or sculptural features of a useful article may be © if they are physically or conceptually separable from the utilitarian aspects of the article (Kieseltstein-Cord; belt buckles were © b/c ornamental aspect was separable from their subsidiary utilitarian features evidenced by the fact that they were also worn as jewelry) a. Physical Separability-pull the art off the object(i.e. can you pull the bees off the can) b. Conceptual Separability-focuses on the purpose of the underlying design i If the design features were influenced by utilitarian consideration, then the features are inextricably intertwined with the utilitarian function of the article and are not conceptually separable ii If the design features were not influenced by the utilitarian function, but reflect purely aesthetic choice, then the deign features are conceptually separable and subject to © if sufficiently original iii Tests to prove conceptually separable: (1) Primary v. subsidiary-art is primary part of object, utility is being 2nd (2) Marketed just for aesthetic sake (i.e. belt buckle) (3) Temporal Displacement Theory-the article can simulate an artistic idea separately from the utilitarian functions (4) Merger of form and function-Is the function the determining factor of the form/design-© only if the artistic dimensions are not driven by the function (i.e. Brandir; bike rack & Barnhart; mannequin bust case-form followed function, can’t separate the artistic element) artistic dimensions not driven by the function c. NOTE: once you determine there is separability, you must still determine if there is sufficient originality to merit © protection G. Architectural Works 1. 1990 Architectural Protection Act: 2. Built Prior to 1990-Any building built prior to 1990 is not covered by the amendment, so must go through useful article tests/applied art test 3. 1990 & Onwards-Buildings were added to the © Act in 1990 a. Test: i Are original design elements present, if yes, then ii Are the design elements functionally required, if no, the © b. Definition includes building, architecture plans or drawings, overall form, including the arrangement and composition of space, does NOT include individual standard features H. Characters 1. Not mentioned in the © Act. SC has not ruled on it yet, but lower courts have 2. Tests for determining © of characters separate from the work in which they appeared in 6 a. Specificity Test: Learned Hand-The less developed the characters the less than can be © (Nichols 1930) i sufficient delineation b. Story being told-Grant of exclusive movie rights does NOT prevent the author from using the characters in other stories (WB v. CBS; 1954) i The characters were vehicles for the story told, and the vehicles did not go with the sale of the story. ii It is conceivable that the character really constitutes the story being told, but if the character is only the chessman in the game of telling the story he is not within the area of protection afforded by the ©. iii Higher standard than the Hand Test c. Although not entitled to a monopoly of the idea of Superman, you make invoke © to the extent your work embodies an arrangement of incidents and literary expressions original with the author d. Anderson v. Stallone; characters were sufficiently delineated, “not stock” and they are the story being told, the story is about their relationships (doesn’t matter that it took 4 movies to make them this distinct-Rocky IV) III. Ownership of Copyright 1. Individual Ownership-1976 Act: §201(a): copyright vests initially with author(s) of work. Authors of joint work are co-authors. a. Conception v. Execution b. Author/owner-the party who actually creates the work, that is the person who translates an idea into an expression that is embodied in a copy by himself, or who authorizes another to embody the expression in a copy (Andrien 1991; P gather info to make a map, took to printer to prepare the map for printing, including coordinating scales, re-lettering street names and added points of interest, all done at Ps direction—P is the author) c. A work is fixed in a tangible medium of expression when its embodiment in a copy by or under the authority of the author is sufficiently permanent to permit it to be reproduced i A party can be considered an author when his or her expression of an idea is transposed by mechanical or rote transcription into tangible form under the authority of the party-originality of expression has to lie with you, can get someone else to print it ii Transcription must NOT require intellectual modification or highly technical enhancements or may authorship issues will arise d. Control during the process of fixation-high degree of control over the embodiment of the work, such that the final product duplicates his conception and vision of what the product should look like (Lindsay v. Titanic 1999; P instructed crew who went underwater to film the wreckage, P is the author, don’t have to be the one working the camera to be the author) 7 2. Work for Hire a. Analysis: 1. is there an e’ee relationship? a. Yes-§101 (1) is it in the scope of employment i Yes, K saying no WMFH, if no K then WMFH ii No-not WMFH b. No-§101(2) specifically commissioned works (9 categories) i No, no WMFH ii If one of the 9 categories, is there a K (must have both a K & be in one of 9 categories) b. §201 (b) if WMFH, then employer or person for whom work was prepared is considered the author/owner for the purposes of the title, unless the parties have agreed otherwise in a written instrument signed by them. (WMFH a defined term in §101) i This is the default rule, unless the parties expressly agreed otherwise in a written agreement c. Definition WMFH §101 i Employee-a work prepared by an employee within the scope of his employment, OR (1) Restatement: Test of Scope of Employment-(not strict, balancing) a) the work is of the type the e’ee was hired to do b) Temporal and geographic boundaries of the job-work was created within the time and space of the job c) The work was intended, at least in part, to serve the e’er interest ii Independent Contractor-A specially commissioned or ordered for use as a contribution to a collective work, part of a motion picture or other audiovisual work, sound recording, translation, supplementary work, compilation, instructional text, test, answer material for a test, or an atlas, (9) if the parties expressly agree in a written agreement. (1) note sculpture not included in the list NOTE: WMFH is an Exception to the rule that the author is the person who fixes an idea in a tangible medium of expression d. What is an Employer i Not in statute, must look to restatement of agency, leg. history, regs., case law or Nimmer treatise e. Employee a. The hiring party retains the right to control the product 8 b. The hiring party has actually wielded control with respect to he creation of a particular work (control over the process of creation) c. Formal salaried e’ee d. Carries common law agency principles f. Employee v. Independent Contractor 1. Non-exhaustive list from restatement §220. Level of control has a big role, check to see if there is control over day to day activity? If yes—e’ee. a. hiring party’s right to control the manner and means by which the product is accomplished b. skill required c. the source of the instrumentalities and tools d. the location of the work e. the duration of the relationship of the parties f. whether the hiring party has the right to assign additional projects g. the extent of the hired party’s discretion over when and how long to work h. the method of payment i. the hired party’s role in hiring and paying assistants j. whether the work is part of the regular business of the hiring party k. whether the hiring party is in business l. the provision of the employee benefits m. tax treatment of the hired party 2. Different ways to analyze control a. Titanic-control to determine who made decisions, who had control over the creative process-who is the author b. CCNV-WMFH-control is one of the issues that will be weighed when determining the existence of an e’ee relationship 3. Teacher Exception-“publish or perish” although arg can be made for WMFH, it is academic tradition for professors to have © in their articles 4. Off duty cop who develops educational material for school children a. check to see if it is the scope of employment b. whether he is on duty 24hrs/day 5. Bank employee who created computer program he is the director of Information Systems, he brought work home and did the work at home on his computer. a. fin the scope of his employment, 2) not at work, 3) in the banks interest makes it more efficientthis was considered to be a work made for hire 3. Joint Ownership §201 a. Definition §101: “a work prepared by 2 or more authors with the intention that their contribution be merged into inseparable or interdependent parts of a unitary whole” b. Intent-All the details need not be planned out, don’t have to know the specific person, the person must simply intend at the time the work is done that their work 9 be part of a joint work (i.e. song lyrics) (Thomson v. Larson; 1998 P hired to be dramaturg) c. Undivided Rights-each author has undivided rights in the whole i Can use any part without getting permission from the other author ii Must be an accounting of profits iii Joint author cannot give away exclusive rights to the whole without permission d. Co-authorship claimant bears the burden of establishing co-authorship: (not in the statute) Childress Test: i Each must have made non de minimus independently copyrightable contributions ii Each fully intended to be co-authors iii Sources of proof (1) *Written K (2) control and authority exercised (3) billing (4) sharing of profits (5) 3rd parties e. If found to be a WMFH instead of joint ownership, no royalties will be paid to the e’ee/indep. contractor f. Claim as sole author to non de minimus contributions is still unanswered??? 4. Transfer of Ownership-© is divisible a. Definition §101-Transfer of ownership’ defined -§ 101: excludes nonexcllusiv licenses, but includes exclusive licenses, mortgages, etc. “whether or not …limited in time or place” b. §204-Execution of transfers of © ownership (a) must be a written instrument, signed by the owner or the owner’s agent (b) certificate of acknowledgement is not required c. can also occur by operation of law d. Implied license/non-exclusive license may be granted orally or implied from conduct, written agreement is not needed (not subject to §204 e. Recordation of transfer serves as constructive notice of the transfer to others f. New Use Problem/Scope of Grant-holder of grant should not reap the windfall benefits of a new medium (Cohen v. Paramount Pictures 1988 9th Cir.; license conferring the right to exhibit a film by means of TV did not include the right to distribute the film on videocassettes, the fact that VCRs didn’t exist at the time of the K didn’t matter, should have included clause for future technology) 10 i Cf. Boosey & Hawkes v. Disney 1998 2nd Cir.; Stravinsky licensed to Disney music for Fantasia to perform for use in a motion picture, videocassette use was deemed ok) ii Two competing approaches to ‘new use’ problem: (1) Only such rights as fall within the unambiguous core meaning of the term, to the exclusion of those in the ‘ambiguous penumbra’ (Cohen) (Perry prefers this one); and (2) Any uses which may be said to reasonably fall within medium described in license (Disney) 5. Duration§302 a. 1976 Act: works created on or after 1/1/78 i A work that was published or created near ’76, check to see if gets protection under a grandfather clause (bubble of gray area) ii All terms end at the end of the year (i.e. published 4/1/99, ends life +70 on 12/31/--) iii General §302(a) Commencement of © is upon creation of work, when it is first fixed, endures for life of author + 70 years (1) Sonny Bono Extension Act (1998) added 20 years, it used to be life + 50, the extension only applies to existing © and ones created after it) iv Joint works 302(b)-life of last surviving author + 70 years after such last surviving authors death v Anonymous, pseudonymous, or work for hire §302(c)-the shorter of 95 years from publication or 120 years from creation (whichever is first). vi §302 (d) – records relating to death vii §302 (e)-presumption as to author’s death b. §303-Works created but unpublished on 1/1/78 became protected on that date, © will last the life of author + 70 (302 coverage) or until 12/31/02, whichever is longer. If the works is published on or before 12/31/02 the © will not expire before 12/31/47 i I.e. Author writes a journal in 1911, author dies in 1930, granddaughter finds it in 1932. If regular rule it would have expired in 2000 (life + 70) but since not published it won’t expired till 12/31/02, but if the granddaughter publishes it before 2002, it will last till 2047. c. Exception-no dead ©’s ever come back to life, EXCEPT, §104(a) certain foreign works which fell into the public domain in the US, because of the dumb formalities in place in the US, would be revived/restored i only exception, doesn’t apply to US authors, only foreign ones d. 1909 Act-any © that was originally subject to the 1909 Act is still subject to it, not the ’76 Act i The 1909 Act proved to problematic, people often times forgot to renew and are then denied their right to renew b/c of a mere technicality. And 11 the work prematurely enters the public domain-unintended loss of valuable © (85% were not renewed) ii 2-term system: 2 terms of 28 years© commences upon publication of the work with proper notice. If you remember to file for renewal in the last year of your first term you get the second 28 year term. If you forget to file it is all over after 28 years. (if you get itnew estate, everything comes back to you in the 2nd term) 1976 extended the 2nd term 19 years, (total a 47 years). Sonny Bono Extension Act-further extended the 2nd term of pre-1976 ©, any 2nd term in existence in ’98, © got an additional 20 years (if already expired you are dead) (total 67 years) (1) © prior to the effective date of the 1976 Act28 years, if renewed, + 67 yearsa total term of 95 years (2) If the author is dead the author’s heirs are allowed to file for renewal. The right to renew travels by statute, the surviving spouse, child or next of kin, no matter what, cannot be disinherited from the right to renew. (even if you hate your spouse-they still have the right to renew). 2nd term does not vest until the filing a) If an author conveys all his rights in a work to an assignee, the smart thing to ask for would be rights in the 2nd term. b) Only the author or his heirs can renew, so even if the author conveys all his rights to an assignee and rights to renew, the rights to renew do not come into effect, if the author dies before renewal, **if author is alive at time of renewal and conveys the right to renew the right is vested in the assignee (think privity of K) c) The spouse may still renew regardless of the authors conveyance to the assignee if author is already dead (b/c she is not privy to the K b/w her dead husband and assingee) d) All the author is giving away is his rights to a future estate (right to renew)—a contingent future interest, can’t give away more than you have (3) Renewal process was changed in 1992. Still deemed to have 2 terms of © protection but the 2nd term automatically renews, no longer have to file for the 2nd term to commence a) RULE: In renewal term, a derivative right author must secure additional rights b) If you reg. for renewal you get benefits: i.e. derivative rights, all rights return to you (you don’t own the derivative work-movie, but the author of it just can’t use it any longer) but if you allow your © to automatically renew the holder of derivative rights does not have to renew he holds on to them (Stewart v. Abend; 1990)-limited buy 304(a)(4)(a) c) The derivative © only protects the new material contained in the derivative work, not the matter derived from the underlying work, 12 thus the derivative work may enter public domain, but the underlying work doesn’t (Russell v. Price; 9th Cir. 1979) Important Dates: ----1/1/78-’76 Act takes effect ----1992-auto renewal provision ----1998 Sonny Bono-20 years more, (1909 and 1976 ©) ----12/31/02-cutoff date for the undiscovered works that existed prior to ‘76 that have not been published ----12/31/47-works that were undiscovered that were published before 2002 will expire ----12/31/05-all of the renewals of 1909 Act will have occurred 6. Termination of Transfer a. The ’76 Act eliminated the renewable © terms, but to promote the purpose underlying the renewal provisions-provide authors with a second chance to negotiate for assignments and licenses once the work has been published and its economic value can more readily be ascertained-authors are now given 2nd chance at the “negotiation apple” b. §203-Transfers on or after 1/1/78: all assignments and licenses of a © executed by the author on or after 1/1/78,(equivalent of 2nd term of 1909 Act) are subject to termination, unless WMFH or transfer was by will. Does not matter when the work that was the subject of transfer was created i Cannot be K’ed away 203 rights (unlike 2nd term of 1909 Act) ii Transfers by an author, the author may terminate, if the author is dead, §203 designates the successors to his termination rights (spouse, kids, grandchildren) iii Only grants made by the actual author can be terminated (can be terminated by the author or the heirs) iv The heirs can make grants but they can’t be terminated v 5 year period following the expiration of 35 years from the execution of the grant (cf. To automatic renewal under 1909 Act) vi Right of publication-5 year period begins earlier of 35 years from the publication or 40 years from the grant vii Written notice must be given to the person whom the grant is given to viii Derivative Right holder gets to keep the grant, it is not subject to termination under §203 13 a) can’t be kept from exploiting his work, but can be kept from making new works §203(b)(1) b) cf. Stewart v. Abend c. §304(c)-pre-’78 transfers-gives the author or successors the chance to recapptur the windfall for the extensions of the protection. Termination applies to all assignments and licenses of rights in the renewal © term executed before 1/1/78. 2 Chances to Reclaim/terminate transfer: i Author may terminate any transfer for that windfall period-the 19 years. a) There is a 5 year window at the end of the 2nd period-the end of 56 years ii If the author doesn’t take back the 19 years at the end of 56 years, the author gets a 2nd chance from the Sonny Bono extension term at the end of 75 years (© is in existence they get it by virtue of law) a) the 1st 5 years of the Sonny Bono term the author again has an opp. to take back the rights (5 yrs commences at the end of 75 years from the date the © was secured) iii All grants can be terminated whether by the author or the heirs (cf. §203) iv Written notice required v Derivative rights are the same as those listed in §203(b)(1) 7. Formalities a. 1909-if you failed to give notice or did it wrong, your © would fail, and your work would enter the public domain b. 1976-Notice was still a requirement, but it liberalized chances of curing failure or omission –1989-notice requirement now became permissive rather than required i Berne Convention changed this-notice is now optional, no longer is it mandatory (US finally in line with int’l law) (1) Benefits of notice: a) infringer can’t make the affirmative defense of innocent infringement b) certain procedural benefits c) Basically it acts like a default, b/c without notice, things can fall into the public domain much quicker, and also it provides the public with information ii Registration-no longer mandatory, but you should do it, you get some procedural benefits and remedies at trial, as well as a presumption of a valid © -fee is nominal §408 iii Deposit-giving a copy of your © work to the library of Congress. Mandatory (with some exceptions i.e. large sculptures) §407 14 c. Publication i Limited Publication-communicated the contents of the work to a select group of people, for a limited purpose, and without the right of diffusion, reproduction, distribution, or sale (King v. CBS; 1999; I have a dream speech made available for those press people in the tent—not in the public domain) (1) limited publication NOT in the public domain ii General Publication-when a work was made available to a member of the public at large without regard to their identity or what they intended to do with it. (1) general publicationin the public domain IV. Infringement/Exclusive Rights A. Infringement-violation of any of the §106 rights B. §106 Exclusive Rights in Copyrighted Works-subject to §107-121, the owner of a © has the exclusive rights to do and to authorize any of the following (6) 1. To Reproduce 2. To prepare derivative works 3. To distribute copies to the public by sale, rental lease, or lending (limit-1st sale doctrine) 4. To perform publicly 5. To display publicly 6. For sound recordings to perform publicly by means of digital audio transmission C. Rules determining infringement are not very clear (Learned Hand-must be determined on an ad hoc basis, no bright line test) 1. Public §101-any place where a substantial number for people outside normal circle of family and its acquaintances is gathered 2. What is the intent of the infringer? Was it purposeful or innocent? a. Perry says this may be a way to reconcile the cases D. Copy 1. Definition §101-Defined in §101: material object…in which work is fixed by any method now known or hereafter developed ….and can be perceived, etc. …directly or with the aid of machine or device… includes object in which work is first fixed. 2. © arrangement is infringed by a CD-ROM disc when a machine or device that reads it perceives the embedded material in the © arrangement or in a substantially similar arrangement (West v. Bender 1998; no © infringement for use of star pagination) E. Test for Infringement (Arnstein v. Porter 1947; Arnstein’s music was not popular and was not published, it was sent only to a small number of band leaders. Porter had never seen the work, nor did he have access to it—no infringement) 1. D copied Ps copyrighted work (probative similarity) a. Access – subconscious awareness will suffice (Bright Tunes, intent irrelevant) 15 i Implied access -#1 hit on the billboards ii Actual access NOTE: If no proof of access, similarities must be “so strikingly similar” as to preclude the possibility that D independently created their works-access implied b. Similarity i Striking similarity-if 2 works are so alike, you can’t believe they are not copied (both protected and protected elements) (1) If you have enough similarity you don’t need to prove access it can be inferred so long as nothing in the public domain that could have inspired both works (Ty; beenie babies), if no similarity, access is irrelevant (2) Dissection is appropriate, and expert opinion is appropriate 2. Copying constituted improper appropriation a. Substantial similarity-to protected elements-ordinary observer standard (Peter Pan; 1960) (dissection and expert testimony are irrelevant) i Audience appreciation/community value ii Expert only used for guidance, not dispositive iii Ad hoc decision, Hand quote for Peter Pan b. De minimus quality 3. Intent is NOT required 4. Limitations on Exclusive Rights a. 1st sale doctrine b. Fair Use 5. Authors reproducing works in which they no longer own © a. Total Concept and Feel-buzz words that describe infringement even though no technical copying i (Gross 1914; photographer took a picture of a nude woman and sold ©, 2 years later took nearly an identical picture—infringement. But cf. Franklin Mint 1978; watercolors of cardinals for NEW, 3 years later painted cardinals again using some of the same sources—no infringement, 2nd picture sufficient to establish diversity of expression.) (1) Different outcomes can possibly be explained by the different media and different sources. ii Problematic b/c it could foreclose an artist who sells his © from making a new work with a similar distinctive style. F. Right to Prepare Derivative Works 1. Ordinary observer/substantial similarity test a. unless he set out to detect the differences would he be disposed to overlook them, and regard their aesthetic appeal as the same 16 2. When the allegedly infringing material is in a different medium, recreation of the original from the infringing material is unlikely if not impossible, but that is NOT a defense to infringement 3. A completely different medium can still be a derivative work and author ahs the right to keep anyone else from doing it. (Horgan v. MacMillan 1986; D produced book with pictures from the Nutcracker with out obtaining consent from the choreographer-infringing derivative work) 4. To infringe the right to derivative works, D must incorporate the underlying © work in some form, there is not a requirement for the infringing derivative work to be fixed a. In computer programs, a Ds creation of an exact, down to the last detail, description of an audiovisual display in a program component will count as a concrete or permanent form (Micro Star v. FormGen 1998; 5. To be derivative the work must be recast, transformed, or adapted (Lee v. ART 1997; D bought P notecards and then put them onto ceramic tiles, not a derivative work, (not infringing copy b/c the first sale doctrine allows you to do what you want once you buy it you just can’t copy it) a. National Geographic 1939; D buys the mag. And then creates his own compilations of the articles and binds them in a hard coverinfringing, violates Ps right to compile, adapt, arrange articles—distinguished from rebinndin a second hand book) 6. Moral Rights comes from French law. Not part of the US tradition b/c of our source for © law. Inherent rights/property rights v. const. grant. a. But now the US is part of the Berne Convention and it enforces moral rights. The convention however leaves to the signatory leg. to figure out their own method of compliance with moral rights. The US doesn’t however have a formal statute (1) Sources: state statutes, K law, defamation, and privacy b. Not transferable c. 3 Elements: a. Right to integrity-the artists right to keep the work from being mutilated or distorted (Gilliam v. ABC 1976; Monty Python was successful in their claim for distortion of their film when it was edited for swear words and commercials) (colorization not mutilation b. Artist’s right to paternity-attribution of the work to the author c. Right to disclosure-when and how the work will be disclosed to the public d. VARA-Visual Artists Rights Act-limited in protection to works of visual art, aimed at types of fine art-the art must be of a sufficient stature (effective 6/91) §106(a) G. Right to Distribute 1. Doctrine of First Sale §109-once you buy it, it is yours to do whatever you want with it (sell, destroy), except for the §106 rights 17 a. limits the derivative rights and at the same time the author retains the moral right so that in turn can limit the 1st sale doctrine b. Exclusive right to vend/distribute/publish §106(3) is limited to the first sale §109, and exerts no restriction on the future sale of that copy (Fawcett 1942; D resold Ps comic books under a different cover along with other comics, no copies were made—Ok, b/c D did not copy, reprint, or rearrange the © material, Ps exclusive right to vend only applied to the first sale) (cf. Nat’l Geographic 2. Importation Right §602(a)-importation into the US of copies acquired outside of the US is infringement of exclusive right to distribute a. Quality King Distr. v. L’Anza Research Int’l: ¶ exported shampoo bottle with copyrighted labels to Ð who exported them back to the US for retail sale. Ð argued first sale as a defense. Issue was whether §109(a) limits §602(a). Since violations of §602(a) are violations of the exclusive right to distribute under §106(3), and since §106(3) is subject to §109(a), §602(a) does not apply to resale. V. Fair Use §107 A. The Fair Use is an equitable & statutory (affirmative) defense which available upon a showing of infringement B. Fair Uses: include uses for purposes such as criticism, comment, news reporting, teaching scholarship, or research C. Preamble and the four factors are not exhaustive, each case must be decided on its facts (Harper & Row) D. The Four Factors: 1. Purpose and character of the use a. Commercial, transformative, or nonprofit educational purpose i Transformative-productive, whether the D added his own creativity to the material he took from the P, thus adding to the overall stock of useful works and benefiting the public—if so, more likely to be found fair, b/c it further the goals of © ii Does the new work merely supercede the first work-if so, probably unfair 2. Nature of the © work, the value of the material used a. Published v. unpublished (Harper & Row-use of unpublished works presumption of unfair b/c it undercuts the authors interest in determining the timing of publication) b. Fact v. fiction-narrower protection for factual works—thus probably easier to argue use was fair 3. Amount and substantiality of the portion used in relation to the © work as a whole a. are the quantity and value of material used reasonable in relation to the purpose of the copying, did he copy more than was necessary, if so, against a finding of fair use (Acuff-Rose; 1994) 18 b. Was heart of the work taken? If so, harder to use the defense 4. Effect of the use upon the potential market for or value of the © work a. Most important (Harper & Row) b. Copying that does not harm the market for the original or derivatives can be considered fair i Test: Whether the Ds test performs a different function from the Ps, if so, it will not fulfill demand for Ps work and weighs for a finding of fair use c. The decrease in public respect is NOT concerned here d. Proof of actual market harm will be very persuasive E. Parody Exception: parody based on a © work is more likely to be excused as a fair use if the parody is at least in part aimed at the © work itself, and the D only copied to the extent necessary to “conjure up” the © work in the audience’s mind 1. Can probably be seen as a transformative use if D’s parody is making a social comment 2. Parodist may be justified in taking the heart or the most distinctive part of the Ps work in order to “conjure up” the original 3. Disney v. Air Pirates 1978; Disney characters in sexual positions, fair use defense rejected took more than was necessary 4. Parody unlikely to displace demand for the serious work it parodies, the effect on the market (4th prong) is not concerned with decreasing public respect 5. Potential derivative market includes only those the author would license, usually there is no potential derivative market for criticism F. Reverse Engineering: where disassembly provides the only means of access to those elements of the code that are not protected by © and the copiers has a legit. reason for seeking such, fair use is a legit. defense. (Sega 1992;D reversed engineered Ps program to determine how to achieve compatibility, they then created their own program—fair use is a valid defense) Court thought that wrt the fourth factor, the use allowed Ð to enter into market, but did not usurp ¶’s market. Ð copied in order to make independent creative expression. Wrt third factor, Ð copied entirety of work, but the ultimate use of the copied materials was very limited, making the third factor of little relevance. a. §117 computer software is © but what the code does is not, the source code is considered functional thus not ©. What it is accomplishing can be ©, the expression of it can (the way it is written out). b. Computer programs have a utilitarian function, thus are afforded less © protection. c. Effect of not allowing reverse engineering would result in anti-competitiveness. G. Application of Fair Use to new technologies of copying and dissemination 1. If the product is widely used for legitimate, unobjectionable purposes—OK 19 a. Sony 1984; time shifting (not archiving) alleged to be the primary use of VTR’s, and the court said that it was fair use, and therefore no contributory infringing i Viewer was invited to see works anyway, must show a likelihood of future harm ii Presumption: if intended use is for commercial gain, likelihood of future harm maybe presumed, but if for non-commercial purposes, the likelihood must be demonstrated (this is now limited to facts of case, where verbatim copying of entire work) b. Princeton v. MDS 1996; coursepacks consisting of unlicensed excerpts from © works, applied Sony presumption-Ds use is commercial—fair use fails H. The modern trend, is to focus on: 1) transformative uses, also called productive use 2) the commercial nature/market effect is what the courts have been keying in on, also show actual harm to the P, and (commercial use alone is not enough alone) 3) The availability of a license 4) the transaction cost will also be considered NOTE: transformative uses should fit into the four factors, but courts are enamored by it alone VI. Infringement A. Direct Infringement 1. violation of the §106 rights 2. violation of moral rights of attribution or integrity in a work of visual art 3. lack of intent and lack of knowledge are NOT defenses (though they may affect the remedy) 4. Criminal Liability is possible B. Contributory Infringement (judge made law) 1. Test: a. Knowledge of [someone else’s direct] infringement b. Materially contributing to the infringement i inducing, causing, or materially contributing to the infringing conduct of others ii providing materials could be sufficient (cf. Sony) 2. “Exemption for staple articles or commodities of commerce suitable for substantial non-infringing uses” (Sony )widely used for legit non-objectionable purposes , NO contrib. Infringement a. Sony; no contrib. infringement even though they had knowledge that some purchasers would likely use it to infringe, b/c a person cannot simply be held liable for selling an item that could be used to infringe, but also had substantial non-infringing uses 20 3. Cherry Auction; vendor paid daily rental fee for booth space, Cherry also received entrance fee, and $ for food and parking. Cherry supplied parking and conducted advertising to promote flea market, and retained the right to exclude any vendor for any reason at any time. Cherry was warned by Sheriff that some of the vendors were selling counterfeit sound recordings. Cherry liable for contrib. Infringement b/c it had knowledge by virtue of Sheriffs warning and it actively participated by providing space, advertising, parking, and utilities. 4. A&M Records; D sold hundreds of time loaded cassettes to clients who used them to produce and market illegally counterfeited phonorecords. a. Contributory infringement b/c they had knowledge and they materially contributed by providing the means, Sony does not limit this b/c there are not enough substantial non-infringing uses 5. Religious Tech. Center; D posted published docs. of P. a. Contributory infringement: given notice of the infringement by the church, after such notice was given he had knowledge-vital time frame is after he received notice, materially contributed b/c he didn’t relinquish control over how its system is used (like a landlord) C. Vicarious Liability (Judge made law) **Knowledge is NOT a requirement 1. Test: a. The right and ability to control [the direct infringer], AND b. Direct financial benefit [from the exploitation of the © materials] 2. Grounded in tort, respondeat superior 3. Right to preclude is not sufficient to satisfy control (video store hypo) 4. Cherry; there was control-cherry retained the right to exclude vendors for any reason at any time, the vendors were subject to rules and regs, control is ok, if it is attenuated, doesn’t need to be so direct. Financial benefit was received the daily rental fee, entrance fee, and other $ from parking, food and beverages (ok that they didn’t get a cut from every sale) a. took a big leap in finding such attenuated direct financial benefit (cf. A&M) 5. A&M-No, had no control over the re-sale of the tape and was not directly financially benefiting b/c he was not getting $ connected to the resale of the tapehh was getting $ for his legal sale, no benefit from the subsequent illegal sale 6. Religious Tech Center-No, no proof of direct financial benefit 7. Landlord who lacked knowledge of the infringing acts of its tenants and who exercise no control over the leased premisesnot liable a. fixed rent is not direct financial benefit 21 8. Dance Hall cases-liable when they had the ability to control the premises and who obtained a direct financial benefit for the audience who paid to enjoy the infringing performance D. Infringement on the Internet-DMCA 1. §512(a) immunizes a mere conduit (the communication containing the infringing material must be initiated by a person other than the ISP, or if it is communicated through automatic process) will NOT be liable for contrib. Or vicarious liab. 2. Places storing info. i.e. chatrooms, bulletin boards could be liable 3. If users who infringe © works on the internet, the ISPs who provide the users with the means to transmit, distribute, post or locate the infringing © may be liable (direct or indirectly) 4. Service Provider Safe Harbor-purpose is to make sure that §512 does not make it too easy for the © owner to compel the removal of the alleged infringing material a. If you have no actual knowledge of the infringement and b. Getting no financial benefit directly attributable to the infringing activity, where the ISP has the ability to control such activity c. Receives “take down notice”, (like Netcom), ISP must expeditiously to remove or disable the access the alleged infringing material d. ISP has to notify the subscriber that X says its infringing. e. The subscriber can respond with counter notice, §1201, f. In response to the notification, the ISP has to sent the counter notification to the person who notified the service of the alleged infringement and must inform that person that the service will replace the material in 10 days g. if the counter notice is complying with all legal requirements than the ISP has 10-14 days to put the material back up, unless the get an injunction from the © owner 5. Anti – Circumvention-no person shall circumvent a technological measure that effectively controls access to a work protected under the © Act (civil and criminal penalties can be imposed) 6. DMCA gives different rights than the © Act a. things that are not infringing under the © Act, but will nevertheless be treated as infringing under the DMCA (i.e. decrypting b. DMCA is trying to prevent arms race in technology 7. Intellectual Reserve; reading something on-line can be a copy by virtue of reading you download it, making a copy, thus making it a fixed medium—direct infringer a. links telling you where to find stuff will make you contributory liable 8. Fair Use under the DMCA a. DMCA is not infringement it is something else, fair use is a defense to infringement, so it is not clear whether it is a defense to DMCA (Universal City Studios v. Reimerdes) 22 **Contributory and Vicarious Infringement are judge made law, not found in the statute. **Contributory and Vicarious Infringement are Qs of fact for the jury to determine, thus can’t be decided on summary judgement **Once found to be directly liable, can’t be found indirectly liable for that same §106 right **Look at everyone who touched the book when trying to determine who the possible Ds are (infringing manuscript hypo) VII. Preemption A. Supremacy Clause: Federal law prevails over conflicting state law 1. Sears and Compco cases (1964) a. In each case the D manufactured a lamp that was found to be confusingly similar to the Ps. Neither P had a patent. Ps brought c/o/a under the state unfair competition b. Court said c/o/a was preempted. Congress intended to balance conflicting public interests, given this balancing, inventions failing to qualify for patent protection must remain the public domain, any state law that would prevent copying of unpatented material would frustrate the intent of Congress 2. Goldstein (1973) a. When Congress has left an area unattended the states are free from preemption when no reason exists when the state should not be free to act (line drawing) 3. Kewanee (1974) a. Purposes of patent laws are threefold i Incentive to invent ii Promote public disclosure of inventions to inform the public iii Ensure that info already in the public domain would remain there b. Applying the 3-part test to trade secrets, trades secrets would not frustrate or interfere with accomplishment of 2 of 3 elementsno preemption 4. Bonita Boats 1989 a. Fl. Statutes which prohibited duplicating unpatented boat hulls is preempted b. Court reasoned that the patent act balances conflicting interests (Sears/Compco) and its Kewanee reasoning 5. Where do we stand now? a. State causes of action are preempted if they stand as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress in enacting a federal statute b. States will be preempted from taking something out of the public domain when congress put/left it there c. If Congress says no ©, the state can’t ©. d. If they have not spoken, then states can act e. States which prohibit copying will be tolerated only when: i Limited in scope so that level of interference with Congress is slight 23 ii Does not withdraw ideas that are already within the public domain or provide a strong disincentive to disclose iii It is intended to promote a legit. state police power B. §301 Two Prong Test: (intention of the framers to draft the mess left behind from the Sears/Compco line of cases—they failed!) 1. Equivalent rights-looking for an extra element in the state right claim, something more that the exclusive rights given in §106. a. If there are other elements there has to be a substantive difference that goes beyond the scope of © laws i Examples: conversion(theft)-Harper & Row; Contract (personal agreement)-ProcCD(shrinkwrap); trade secrets (even though the extra element is in the acquisition of the property-Altai ii *Focus on the personal relationships and the acquisition when trying to find an extra element* 2. Equivalent subject matter-© Act does not preempt state law that does not come within the subject matter of © as specified by §102 and §103, including works of authorship not fixed in any tangible medium of expression a. if congress put it in the public domain b/c it failed originality, than preempted 3. All legal or equitable rights that are equivalent to the §106 rights will be preempted—thus courts must look to the substance of the challenged state claims, and not just their label t determine if they are preempted 4. Once the work is a © work of authorship, all claims concerning the copying, whether protected or unprotected material, are governed exclusively by the federal law (Baltimore Orioles) 5. © Acts scope and protection are not synonymous, the shadow cast by the Act’s preemption is broader than the wings of its protection (Baltimore Orioles) 6. Hot News -State claim is misappropriation, the court says, you can use facts unless, you meet the 5 elements of the hot news exception: 1. owner is gather or generating the info at a cost 2. the info is time sensitive 3. the Ds use is free riding 4. the D is indirect competition with the owner 5. the free riding an potential other entrants threatens the existence of the product or service if you can meet these 5 elements you will survive preemption, state may pull facts out of the public domain here and gain © for facts (NBA v. Motorola) VIII. International Elements of US © Law A. Berne Convention 1. Main © convention-most major western nations are party to it 2. US joined in 1989, before that we engaged in bilateral treaties. 24 3. Not self-executing-The US laws are in compliance with the convention, but the Berne convention won’t give you any rights you don’t already have. Subject matter provision is very broad. 4. Protection is for published and unpublished works (not individuals), it will attach if: a. that works author is national of a member state or is domiciled in a member state. OR, b. if that work is first or simultaneously (within 30 days) published in a member state. 5. No formalities are required to be protected in the member states (this is why the US stayed out for so long, US likes the notice requirement, etc.) 6. Cannot give less protection than the convention sets out but can give more 7. Exclusive rights are similar to the US ones, also protects moral rights 8. National Treatment Rule-The law that attaches is the local law, not the law from where you are from