Jussim Copyright Summer 2011

8/3/2019 Jussim Copyright Summer 2011

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Prof. Dan Hunter Copyright Fall 2011

COPYRIGHT LAW OUTLINE

I. ANALYZING COPYRIGHT PROBLEMSa. Context-- is this litigation or transactional

b. Subject matter -- is there a protectable work under copyright?

c. Duration & formalities -- as to each work, is it actually protected?d. Rights protected -- what rights have been infringed/are to be utilizede. Ownership & transfer -- who owns the rights?

i. transfers have to be in writing nowf. Infringement -- is the use infringing?g. Are there valid defenses?

i. fair use -- affirmative defenseh. Remedies -- what are available

i. injunctionii. damages

1. measure of damages

2. Statutory damages?i. Beyond Copyright -- are other claims available

II. SUBJECT MATTER IS THERE A PROTECTABLE WORK?a. 1909 Copyright Act (still valid for works created up to 12/31/77)

i. includes all writings of an author1. did not need to be original

ii. to secure protection the work needs1. publication with notice of copyright affixed to each copy or 2. by deposit, with claim of copyright

b. 1976 Copyright Act (works created after Jan 1, 1978)

i. 102(a) Copyright protection subsists in (i) original works of authorship (ii) fixed in anytangible 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 amachine or device.

1. Stems from Art. I 8 of the Constitution that gives congress thepower to enact laws in order To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors theexclusive Right to their respective Writings and Discoveries;

a. Author the person that the work owes its origin; originator; maker b. Writings -- are defined by statute as any physical

rendering (could be a picture, recording, sculpture etc)

ii. Elements for Protection Fixation + Originality (independent creation + creativity)1. Fixationa. RULE: Fixation is defined by 101 as the (i) embodiment of a work (ii)

by or under the authority of the author in a tangible medium of expression (iii) sufficiently permanent or stable to permit it to be

perceived or transmission w/simultaneous fixation for a period of morethan transitory duration

i. embodiment of work

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1. copy or phonorecorda. sheet music copy / CD phonorecord

2. perceivable directly or indirectly w/aid of device or future device

ii. by or under the authority of author

1. author does not need to be the one to do the fixation, butneeds to give authorization2. bootlegger at a concert would not have authorization

iii. for more than transitory durationa. when computer temporarily copies something into

memory yes they are fixed, but 117/501exempt from being infringing

iv. or transmission w/simultaneous fixation (live broadcasts protected)

b. Anti-Bootlegging Statute (1101) live concerts -- protected by anti- bootleg statutes that protect a performance whether it has been fixed in

the past or not (whether these are constitutional or not remains aquestion)=2. Originality

a. General Rule: In order to be original a work of authorship must have been (i) independently created by the author and (ii) contain a modicumof creativity. ( Fiest)(holding that a there was no copyright in atelephone book that listed data alphabetically because facts are not independently created by author and alphabetical arrangement not creative enough)

i. Independent Creation copyright protection extends only inthe elements of the work that the author created

1. Facts & Discoveries are not copyrightable because theydo not originate in the mind of an author a. Copyright Estoppel -- if an author purports or

presents something to be a fact, it is not protectable even if it is not true, so noinfringement if copied

b. however, estimates or conclusions based oninterpretation of facts may be protectable (see car value cases)

2. NO NEED FOR NOVELTY unlike patent law, thecreation just has to be novel to the author, not the world

a. if author creates a work where there is a similar inexistence there will be protection (but may beinfringement if access + sub. similarity is proven)

i. if parts of work are commonly used, maynot be protection to those parts under scenes a faire

ii. Modicum of Creativity1. low standard that just requires a spark of creativity

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2. NO CREATIVITY INa. listing data in alphabetical order

b. numbering pages sequentiallyc. blank formsd. Slavish Copy: if the intent was to make an

accurate copy of someone elses work, andnothing is added no copyright for lack of originality, just a copy regardless of skill or effort

put into it ( Meshworks v. Toyota)i. if copy is made w/o permission of owner

infringement of reproduction righte. mechanical reproduction Xerox, photo of non

protectable thing with nothing added to it etc b. Originality in Compilations, Derivative Works

i. Compilations: If made up on several elements of PD or Factsask whether these objects or images are expressed in an

original way1. If yes protection only extends to this original

expression (not the separate parts within)2. look to the work as a whole to see if author added

anything, not parts to determine originalitya. always look to arrangement, selection and

organization to find protective expressionii. Derivative Works: Standard for derivative works is a bit higher

author must put in creative choices for aesthetic or artistic purposes ( Batlin)

3. small scale model or large statute YES 4. simply changing medium no d/w just copy

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c. LIMITATIONS TO COPYRIGHTi. Idea/Expression Dichotomy - 102(b)

1. Rule: In no case does copyright protection for an original work of authorshipextend 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.a. Policy congress does not want to create monopolies of ideas/methods/systems (that is the sum of patent law)

2. No protection for a. Ideas ideas are not the subject matter of copyright, it is a particular

expression of the idea that may be protectableb. Systems / Methods of Operation

i. if the only way to exercise a function is to copythose words or a paraphrase, then it will not be aninfringement

1. no protection for book that copied accounting system in

previous book. Protection only extended to theexplanation of the system, not the system itself ( Baker v.Seldon)

2. c/f protection granted for book that used system topredict baseball outcome, because of authors choice touse 9 factors.however if the book would have TOLDwhat was outcome then it would have been facts(Craigos

3. Merger Doctrinea. Even if there is an expression of an idea or system, if

there is only one or a very limited number of ways of

expressing an idea of system, none of those expressionsshould enjoy protection, even if the particular expressionis deliberately adopted, because the idea andexpression merge and protection would extend tothe underlying idea

i. SIMPLE instructions for sweepstakes that weresimple, not protected, therefore copying was notinfringement. ( Morrissey)

a. c/f book w/values of cars is protected, because theidea that cars have value is broad and can beexpressed in many way

b. Function (Useful Object Utilitarian View)i. If the work is something purely useful there will be

no protection or very thin protection to only thoseelements that are separable (physically orconceptually)

c. Historical facts / Research / Interpretation of Facts(even if proven not to be true)

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i. Works must be original and facts or interpretation of such donot originate w/author

ii. sweat of the brow not relevant to determine subject matter of copyright, therefore research is not protectable

ii. Other Exceptions things that will prevent copyright protection

1. Scenes A Fairea. General/Common themes in an industry are not protectable2. Animals

a. Copyright will be very thin if anyi. Sculpture/photos of animals

1. no copyright in animal2. no copyright in sculpture (because it is a method)3. thin copyright in any variation added by

sculptor/photographer 3. Government Works

a. Federal

i. The federal government cannot receive protection for government works or be the initial holder of copyrights1. government works work that is (i) prepared by a US

government employee or officer (ii) as part of officialduties

2. EXCEPTIONa. fed gov. can get copyright by assignment, transfer

etc. b. STATE

i. can get protection for works but judicial policy bars protectionfor inherently public materials

1. laws, court decisions, regulationsD. SUBJECT MATTER i. LITRARY WORKS

1. Books, Plays, Literary Characters, Computer Programs etc2. Limitations

a. Fact Based Works: No copyright protections for Facts, Fact BasedResearch or interpretation thereof because facts do not originate with theauthor. ( Miller v. Universal)

b. Ideas/Scenes A Faire: No protection for general plots, themes,characters or Scenes A Faire because until each has been sufficientlydelineated you would be protecting an idea, thus granting a monopoly to

the author which is against the policy of Ci. Abstraction Spectator Test1. genre2. plot3. mood4. setting5. Pace

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6. relation of characters to dialogue (for expertwitnesses)

a. sex of characters is immaterial7. total concept or feel

c. Issue: Character Rights

i. 2 tests1. 2 nd Circuit: In order for a character to gaincopyright protection it must be sufficientlydelineated to be more than an abstractidea

a. the more developed, the morelikely to be protected

b. Graphic Charactersi. When character is used with

visual image (think comic books)it is more likely to be sufficiently

delineated.2. 9 th Circuit: If the character represent the storybeing told it may be fully protectable,whereas if it is merely a pawn in the chessgame it has not been rounded out enough.(Warner v. Columbia Sam Spade)

3. Other considerationsa. When an author tries to reuse a

character he created, but assignedaway, the courts may try to find equityin holding that there was not sufficient

delineationb. If character appears first in PD works,

then later in protected works, thecharacter can be reused but only in theway it was in PD works

3. Computer Programs (including OS system)a. Definition - a set of statements or instructions to be used directly or

indirectly in a computer to bring about a certain resulti. all computer programs are protectable as literary works, the issue

is what portions are protectable ( apple v. franklin)

1. OS systems are protectable but only to the extent of their expression of instructions, not the method that theinstruction is telling the computer to do

b. To determine what is protectable we use abstraction, filtration andcomparison test

i. abstract the process in reverse order from source code to most basic idea

ii. filter out factors

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1. that are standard in industry (scenes a faire)2. necessitated by efficiency3. dictated external factors

iii. If expression is there1. merger

2. utilitarian3. scenes a fairsiv. what is left is protectable

c. remember reverse engineering is fair use to create new programs fromunprotect able elements

II. PICTORAL, GRAPHIC, SCULPTURAL WORKS1. Maps

a. Major issue is originality because usually rearrangement of factsi. Analyze selection, design and synthesis to find protectable

expression1. plans for development fall into this category and are

protectable to the extent that they present originalinformation detailing proposed physicalimprovements

ii. direct observation no longer needed (under rejection of sweat of brow)

2. Photographsa. A photograph is protected under the act so long as it is an original

intellectual conception of the author and not just a mechanicalreproduction (think Xerox copy).

b. Test for Originality Rendition, timing, creativityi. Rendition

1. what the author put into it fx, angles etcii. Timing (narrow protection)1. decision to take photo at particular time and place

iii. Creativity1. mental conception choices of lighting, wardrobe, poses

etc ( Sarony v. Burrow-Giles)a. WATCH OUT Photos of animals are usually

held to be non-copyrightable because most of theimage is the animal itself

b. WATCH OUT Photo of an object may not becopyrightable if entire image is that of an object

which is not subject matter of copyright ( SkyyVodka Case)3. Advertisements copyrightable (if og, fix, creativity), even if purely for

commercial purposes (the courts do not judge what is or is not fine art)4. Works of Art Embodied in Useful Objects

a. RULE: The design of a useful article shall be considered a pictoral,graphical or sculptural work only if, and only to the extent that, suchdesign incorporates pictoral, graphic or sculptural features that can be

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identified separately from and are capable of existing independently of ,the utilitarian aspects of the article.

i. Useful object A useful article is an article having anintrinsic utilitarian function that is not merely to portray theappearance of the article or to convey information.

b. TEST FOR PROTECTION (disjunctive)i. Physical Separability (works for 3d objects)1. whether the artistic material to be severed physically

from the industrial designa. example: Lamp stand was able to be separated

from lamp in order to provide the design of it protection ( Mazer v. Stein)

ii. Conceptual Separability1. exists when the artistic aspects of an article can be

conceptualized as existing independently of their utilitarian function

a. Functional artistic features are primarily/utilitarian features are subsidiary b. Aesthetic Appeal article is marketable to some

people solely because of aesthetic design or properties

c. article stimulates in mind of beholder a conceptseparate from the articles utilitarian function-thisconcept displaces the utilitarian function

d. Designer Process the artistic design wasntsignificantly influenced by functionalconsideration (i.e. look at the process)

e. whether the design elements can be identified asreflecting the designers artistic judgmentexercised independently of functional influences

i. design of facial features on mannequin protectable because the artist was notgiven any specs for the design, thereforesolely based on artistic judgment notfunctional needs. ( Pivot Point)

f. Usage -- how is the article primarily usedg. Stand Alone -- physical separability

iii. DRAMATIC WORKS (Including accompanying music)

1. a work that relates a story thru acting or singing rather than narrationa. music that tells story is grand rightsi. not subject to 115 compulsory licenses and performance rights

societies do not license performance -- must be authorized byowner

iv. PANTOMINES / CHOREOGRAPHIC WORKSv. MUSICAL WORKS (Including accompanying words)

1. Includes both instrumental component and accompanying words

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a. if one person provides lyrics and other music -- joint work issue?2. Fixation can be accomplished by various media written notation, electronic

recording etc3. Originality (this is what cts look to in order to test for infringement)

a. Melody

b. Harmonyc. Rhythmi. Originality becomes an issue when the musical work

1. derivative work -- inc. sources of PD or 2. merger -- so simple that the genre itself provides and

limited number of usable elements4. Arrangements of musical works are covered by derivative works so long as

arranger adds the requisite amount of original authorship5. distinguished from sound recording

a. the author of the lyrics/music is owner of musical work b. producer or engineer (or label is wfh) is author of sound recording

c. when sound recording is put on cd/lp/mp3 it is fixed and if copied theyhave violated both the musical work and sound recording6. Rights

a. Most important is the right to prepare and distribute mechanicalreproductions

7. compulsory licensinga. 115 provides that the copyright owner gets first crack at authorizing the

creation and dist of phonorecordsi. Anyone after can follow the procedures laid out by statute and

pay the stat. fees to release cover so long as the new versiondoes not change the basic melody or fundamental character of the work

vi. SOUND RECORDINGS1. Not protected by Fed Act until 2/15/19722. who are the authors?

a. performers, creative producers etc b. look for wmfh

3. SR is the particular rendition of a music, literary or dramatic work a. limited rights 114

i. reproduction verbatim copying of THAT recording, thisincludes sampling such as looping

1. Unauthorized duplication is an infringement, however

imitation is not. (see 115 compulsory license)ii. derivative rights sampling that embodies original recording but remixes or rearranges

iii. distribution b. NO public performance right (except for digital transmission)

i. there is no performance royalty due to the owner of the copyrightin a sound recording (it is only due to the copyright owner of thesong)

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4. Fixation -- Phonorecorda. mechanical object that captures music or sound recording

b. sound recording and the underlying music work are NOT the samei. the rendition may be a derivative work, created by the

performers and engineers

1. the original work is still the copyright of the composer 2. to gain protection, the underlying work must be obtainedlawfully

3. performance as well as engineering/mixing selections canmeet the standards for originality

vii. MOTION PICS / AUDIO VISUAL WORKS1. series of related images

a. Related meant for the same audiencei. Do not need to be shown sequentially

1. Ex. Computer game where display is predetermined butorder is dictated by player intervention

2. Originality individual objects show do not need to OG, it is their selection,arrangement or organization that must be originalviii. ARCHITECTURAL WORKS

1. An architectural work is the design of a building as embodied in any tangiblemedium of expression, including a building, architectural plans, or drawings.

a. Protection extends toi. the structure itself (interior as well)

1. MUST be a building (not a overpass, highway etc)habitable structures and those used by people

ii. Architectural plans (including rough plans)2. TEST for protection

a. Work is examined to determine whether there are original designelements presenti. Originality is claimed in the overall shape and arrangement of

what could be PD or non protectable elements that areIndependently created by author and not copied from someoneelses work with a dash of creativity.

b. If original, then these are evaluated to determine if they are functionallyrequired

i. If required conceptual separability tests to determine what is protectable

ii. if they are not functionally required the they get copyright

protection regardless of physical or conceptual separability1. therefore the aesthetically pleasing overall shape of ana/w can be protected if it is not functionally required

3. Exceptionsa. CR owner cannot prevent the distribution of pics/paintings or

photographs of the work if building is located in a place visible to the public.

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i. Includes sculptural works that are meant to be part of building place ( Leicester no infringement when Batman used film of sculptures that were in front of building but part of overall design plan)

ii. However Can prevent distribution of plans, models etc

b. Owner of building can make alterations or destroy notwithstanding theCR owners right to make and authorize derivative worksi. Can change building w/o permission from copyright owner

E. DERIVATIVE WORKSi. Derivative Works Rule: a work based upon one or more preexisting works (that are

subject matter of copyright), may be proper subject matter of copyright to the extent of the variations added provided the author

ii. Elements1. based on and incorporate the original copyrighted work; and

2. Fixation (for protection/not for infringement); and3. Originality comes from modifying, transforming, recasting, adapting original

work a. needs a little more creativity than the original work

i. Merely changing medium is not enoughii. policy: to protect original authors ability to create future worksiii. remember, giving someone the license to create a derivative

work DOES NOT mean you have assigned them the right of adaptation, so the ct wants to protect the authors future rights

iv. also encourages competitionb. something more than trivial, standards have varied

i. Batlin - substantial, non-trivial variation1. difference in size of work (statue to miniature), recasting,

adaptation, transformation etc2. creating an accurate copy with the intent to make a

copy will not be a d/w because nothing original wasadded ( Meshworks v. Toyota)

4. Scope: Protection only extends to the variation, not underlying work a. if underlying work is not subject matter of copyright was there an

original expression?i. Picture of vodka bottle not d/w because bottle not subject matter

of copyright and no original expression added b. if underlying work is pd then no claim to pd elementsc. if underlying work is copyrighted, then look for authorization,

i. if none violation and not copyright protection because it wasunlawfully acquired

5. Unlawful Incorporationa. Protection is withheld for a d/w or compilation that incorporates

anothers copyrighted work unlawfully

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i. No protection if underlying work runs throughout derivativework

1. but may be able to get partial protection for a compilation6. PD

a. when underlying work goes into PD

i. Original elements of d/w still protected b. When d/w goes into pd but original still protectedi. Cts will try to keep out of PD by arguing the original work that is

still protected is fused throughout the derivative work 7. Examples

a. Art Reproductionsi. Changing medium of artwork is not sufficient to meet originality

standard to create a new copyrightii. Colorizations derivative work because more than trivial

variationiii. Mounting/Framing no derivative work for lack of originality

iii. COMPILATIONS1. Def: work formed by the collection and assembling of materials or data that are

selected, coordinated or arranged in such a way that the resulting work as awhole constitutes an original work of authorship.

a. Include collective works2. Scope of protection

a. Extends only to expression which is the selection, arrangement or organization, not to underlying elements

i. Issue when defendant claims he only copied non protectableelements

3. Elementsa. Fixation b. Originality

i. Authors selection, arrangement or organization must beindependently created and possess a minimal degree of creativity

1. Protected works need permission or 2. Could be compilation of PD works3. non protectable works such as facts

a. as long as the facts are selected or arranged in acreative way

b. Fiest : phone book company did not arrange facts

in a creative way therefore no protection, anddefendant could use the facts to create their owncompilation and get a copyright on their expression of these facts.

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III. DURATION & FORMALITIES -- as to each work, is it actually protected?a. Formalities

i. NOTICE & PUBLICATION1. 1909 1977

a. In order to get copyright protection a work must be published with

notice.i. Publication1. general publication -- divested common law and invested

federal protection if distributed to the world, who couldfurther distribute (ie. no restrictions on resale or a displaywith no restrictions on taking pictures)

a. if you made a general publication without noticepublic domain

2. limited publication -- did not divest and still could be protected if done w/o notice

a. limited group for limited purpose without rights

for further copying or distributioni. limitations can be implied from factsii. commercial purpose weighs against

limited publication3. PERFORMANCE DID NOT EQUAL PUBLICATION

ii. Notice1. If a work was published without proper notice it was

divested of all protection and thrust into the PublicDomain

a. CAVEAT - some foreign works thrust into PD for non compliance w/notice formalities had their

copyrights restorediii. Notice Elements1. copyright, copr, or (c) or (p) for SR 2. name of proprietor 3. year of first publication4. position detailed in statute

a. generally first page or volumeiv. Notice Errors

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1. omission pd unless accidental from particular copy/copies

2. if you put down the wrong date by more than 1 year PD

3. if you put an earlier date measure term from notice

date4. error in name pd5. need to record assignment before using assignee name in

notice2. Published between Jan 1 1978 and Feb 28 1989 (Pre Berne)

a. Notice not required to secure protection, but notice is required to publishand keep protection

b. Elementsi. copyright, copr or (c) or (p) for sound recordings

ii. name of owner iii. year of first publication

iv. reasonably perceptible positionc. Notice Errors

i. Published without Notice PD subject to cure1. small number of copies go out2. if register work within 5 years upon discovery (when

infringement happens or when you make a consciousdecision to not include notice or when you realize youhavent included notice) and reasonable effort is made toadd notice in the US to all future copies

3. reasonable efforts is a strict standard , general notice willnot suffice

ii. express condition in license but no notice then copyright owner were forgiven)

iii. mistake in name no pd but innocent infringer defense standsiv. mistake in date

1. earlier measure from that date3. Published after March 1 1989 (Berne)

a. notice is not required to receive or maintain valid federal copyright protection

b. but lack of notice may allow for a reduction in amount of statutorydamages for innocent infringer

i. if there is proper notice, defense of innocent infringer is barredif infringer had access

b. REGISTRATIONi. 1909 act required in order to renew copyright (MUST REGISTER BEFORE OR IN

28 th year)ii. 1976 not required for c/r but there are benefits

1. you need to register the original, or copy of originala. you cannot make a reconstruction of the original ( Beavis and Butthead

case)

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2. BENEFITSa. Prima Facie case of copyright validity

i. defendant needs to prove it is not proper subject matter b. Prerequisite to Litigation for infringement 411 - ct cannot entertain the

case without registration

i. POST BCIA: non-usa works not prerequisite to suit, but you getmore damagesii. if there are some works registered and some not in same cause of

action, if the ct gets smj over one, they have smj over all, so youonly need one to be registered

iii. Collective works1. within a collective work, the notice and registration from the author of the

collective work will protect the individual works within, but to bring a cause of action, the individual author must bring the cause of action

iv. Derivative work 1. if it is the same author, you can sue on either the underlying work or derivative

work assuming both are registered2. if different parties, you need both authors

c. Duration (term of copyright)

Created and Copyrighted* before1978

but not copyrighted before1/1/78

Created on or after Jan 1 1978

1909 Act: 28 years + 28 year possible renewal

62-76 year by year extensions from

if still c/r in 76 +191992 automatic renewalif still c/r in 1998extended by 20 years for a total renewal of 67years

Same as post 77 works BUTminimum term of at least until12/31/2002

if published by

12/31/2002 extendedto 12/31/2047

life + 50, if still c/r in 1998Sonny Bono extends by 20to life + 70wfh/anonymous/pseudo =

earlier of 95 years from publication or 125 fromcreation

j/w = 90 years from lastsurviving author

* Copyrighted means published w/notice or unpublished but registered

d. Renewals of Copyrighti. 1909 Act

1. work had to be registered and renewal had to be done in 28 th year 2. who gets renewal right?

a. wmfh -- proprietor b. other works natural author or heirs

i. surviving spouse, children, executor (if will), next of kin (if nowill)

3. Can you assign renewal term?

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a. WMFH proprietor can assign, since they are entitled to renewal right b. Natural Author

i. if you make an assignment and it mentions renewal rights, theycan vest in assignee

1. if no mention, they vest in original author

2. if you dont renew and assignment does not state renewalrights vest in assignee, then work becomes PDii. if you made any assignments in first term, then renewed,

assignments remain valid even if they run over termiii. If author makes assignment in original term, then dies before

renewal vests, assignment is invalid and renewal rights go tosuccessor on first day of 29 th year

4. Derivative works?a. abend case exploiting a d/w implicates rights in the preexisting work

and infringes if rights lapse (i.e. renewal rights go back to assignorssuccessors)

ii. Post 19921. automatic renewal, so no vesting, no registration needed for works that were to

be renewed in 1992 or later (1964-1977)2. Exception for Derivative Works

a. Prepared by licensee prior to termination or reversioni. For works created on or after 1/1/1978 you can continue to

distribute derivative work if a license was granted before firstterm expired, BUT CANNOT CREATE NEW D/W

1. not sure if a translation is a d/we. Termination

i. NO TERMINATION FOR WORKS FOR HIREii. GRANTS BEFORE 1978 304(c)(d)1. pre-1978 grants of the renewal term made by AUTHOR or anyone entitled to

renewal term2. may be terminated within 5 year window after original 56 year term (publication

w/notice) or 5 years after 75 year period (from publication w/notice)a. if notice is too late to cover initial publication NO termination ( Siegel

Superman case where the initial promos ran more than 56 years beforenotice)

3. by author, if dead by stat. heirsa. if grant was executed by heir, then that person has the termination right

4. NOTICE: must be given stating effective date of termination and has to beserved not less than 2 and not more than10 years of that date,a. must be recorded in C office before effective date

5. CANNOT BE WAIVED EVEN IF AGREEMENT TO CONTRARYa. but if you send notice, you can renegotiate in window

b. also if you terminate old agreement POST 1978 and enter into new one post 78 w/substantial consideration, no termination right

iii. GRANTS MADE AFTER 1978 203

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1. Grants made by author, nobody else2. can be terminated in 1 5 year window starting 35 years from date of execution

of grant by the author (j/a need majority)a. if dead by statutory heirs

i. widower interest, children and grand per stirpes

ii. must collectively owned more than the authors terminationinterest3. NOTICE: must be given stating effective date of termination and has to be

served not less than 2 and not more than10 years of that date,a. must be recorded in C office before effective date

i. DERIVATIVE WORKS1. if made before termination, the owner still gets right to

use and exploit, just no right to make moref. Restoration (Foreign Works)

i. As of January 1 1996 copyright protection is restored by operation of law for all worksthat have

1. work was published in an eligible country at least 30 days prior to publication inthe USAa. if published within 30 days in USA no restoration

2. at least one author that is a domiciliary or national of a member nation; and3. work has not passed into PD in source country4. work is in PD because of

a. noncompliance with formalities such asi. publication w/o notice

ii. failure to renew in 28 th year b. lack of national eligibility at time of creationc. SR prior to Feb 15 1972

i. CAVEAT pre 1900 Architectural works do not qualify becauseof old useful object doctrine

ii. Duration1. as long as would have been protected had it originally been protected

iii. Ownership1. author or right holder if Sound Recording

iv. Limitations for Reliance Parties1. reliance party

a. distributes the work thinking it was PD b. made derivative work relying on fact that the original was PD

2. Original Works those who own copies of restored works, or are engaged in

exploiting these works before the source country of that work becomes eligiblei. qualified immunity from liability for infringement unlesscopyright owner (i) files a general notice of intention to enforcerights w/copyright office w/in 2 years of the date of restoration;or (ii) serves on the reliance party at any time a specific notice of intention to enforce rights

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ii. if notice has been given, then reliance party has one year toeffectively liquidate existing inventory (but not make further copies)

3. Derivative Works relied on restored work that used to be PD to makederivative work

a. if the work is held to truly be derivative (new expression added toexisting one with more creativity than the original work) get acompulsory license

i. this party can pay the restored copyright holder reasonablecompensation to continue to exploit the d/w for the remainder of the restored copyright

b. if parties cannot agree then judicial mechanism to figure out reasonablefees is to determine

i. harm to the actual or potential market or value of restored work;as well as

ii. the relative contributions of expression the author of the restored

work and the reliance party to the derivative work 4. compare witha. English rule which state that the holder of the restored copyright has to

buy out the reliance party in order to have them cease to exploiti. if work is valuable you would prefer American rule of licensing

ii. if work is not significant then you may prefer to just be boughtout

v. Exceptions No Restoration if 1. if restored, copyright would go to adversaries of WWII

vi. Constitutional?1. two main arguments against restoration

a. there is an argument that restoring copyright is an attempt to chill freespeech. however, Ginsberg argues that first amendment rights are protected by idea/expression dichotomy

b. violates the principle that works that are in the Public Domain shouldremain the in PD

IV. OWNERSHIP & TRANSFER -- WHO OWNS THE RIGHTS?a. Individual Works

i. Initial ownership of the copyright, including all of the 106 exclusive rights in a work vests in the author. The authors of a joint work are co-owners of the copyright in the

work.1. author need not be identified2. could have worked with others, but controlled the pen

b. Works Made For Hirei. ownership of a work made for hire vests in the party who commissioned the work or

employer unless the parties have expressly agreed otherwise in a written instrumentsigned by all parties

ii. Under 1976 ACT A work made for hire occurs in two scenarios

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1. Independent Contractor: when a work is specially ordered or commissioned for use in one of the 9 specified categories with express written agreement signed

by both parties.a. specially ordered or commissioned

b. type of work must be

i. contribution to a collective work ii. motion pictureiii. other audiovisual work iv. supplementary work v. compilation

vi. instructional textvii. test

viii. answer material for a testix. atlas

c. express agreementi. SOA as to when it must be signed, contemporaneous or before

creation or memorialized later in written agreementii. some cts say that you can have an oral agreement concurrentlywith creation, but memorialized later in writing

2. Employer/Employee: Initial ownership of the work of an employee within thescope of his/her duties will vest in the employer.

a. USSC in CCNV v. Reid held that to determine whether anemployer/employee relationship arises the courts are to look to thecommon law of agency and weigh following factors

i. the hiring partys right to control the manner and means bywhich the product is accomplished*

ii. skill required of hired party*iii. existence of employee benefits*iv. tax treatment of hired party *v. source of tools

vi. location of work vii. duration of relationship

viii. whether hiring party has right to assign further projectsix. extent of discretion of hiring party of when and how long to

work x. method of payment

xi. who hires assistants and paysxii. whether work is part of regular business of hiring party

xiii. whether hiring party is a business1. NOTE: creative contributions are irrelevant

b. scope of employmenti. work is type employee is employed to perform

ii. work occurs substantially within authorized work hours andiii. whether its purpose, at least in part is to serve the employer

iii. 1909 act 0--> works created before Jan 1 1978

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1. work for hire occurred where creation was at the instance and expense of thehiring party or in anticipation of employment

a. did the hiring party motivate and finance the work?i. Fixed fee favored wmfh

ii. Royalties weighs against wmfh

1. 20 Century Fox v. Ent.- ct held that book written byEisenhower on WWII was a wmfh because publisher persuaded him to write it and paid a lump sum.

b. Right to supervise and controliv. ADVANTAGES OF WMFH

1. do not need to get transfer for permission from all partiesa. control remake and sequel rights

2. NO TERMINATION RIGHTS because hiring party is held to be author,initial ownership never vested in anyone else

3. TERM 95 years or 125 if not publishedc. Joint Works (Tenants In Common)

i. Initial ownership vests in all of the authors as co owners where there is a joint work. 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

1. inseparable dont make sense by themselves.2. interdependent some understanding by itself (lyrics to a song)

a. contrast with collective works, which may be separated and intention of merger and unity are lacking

ii. Is there a joint work?1. Independently Copyrightable Contributions

a. Caveat if each contribution would not be copyrightable by themselves, but when put together form original expression forego this step.

2. Shared Intent at Time Of Creation (pre 1978 you could show intent afterwards)a. Objective Manifestations

i. Written contract is best evidence b. Subjective

i. Exercise of control the person who controls the pen is usuallythe author

1. If there is clearly a dominant party then that is a strongargument against co ownership

2. this test is goo to weed out writer/assistant or writer/editor situations

ii. Billing Test in absence of a contract who would be identifiedas author.

iii. Disbursement of fundsiv. Audience appeal who contributed the parts that make it

popular ( Pink Panther Case)3. Taylor v. Childress ct held no joint work for person who hired playwright

because (i) her contributions of ideas and historical research were notindependently protectable and (ii) playwright never had the intention at time of writing for work to be co-authored.

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4. Parties do not need to meet for there to be mutual intent5. if an author has assigned his work, then it is the intent of the assignee that

matters ( 12 th Street Rag)iii. If there is a Joint Work

1. co owners do not need each others permission to grant licenses or exploit work,

just need to account to others.a. Caveat cannot assign or give exclusive license w/o express written permission of other owners.

d. Collective Worksi. copyright in each contribution vests in the author of such contribution, and is separate

from the copyright in the work as a whole which vests in the party to compiled.1. in absence of a express transfer, owner of collective work presumed to have

acquired ONLY privilege of a. reproducing and distribution of the contribution as part of that collective

work as a wholei. same work

b. any revision of the collective work and any later collective work in thesame series1. revision placing in new medium like a cd rom or

database only if using same arrangement andcompilation. ( Tasini)

2. new arrangement like in an electronic database notrevision but new collective work

ii. later work is same series (taking an article from one edition and placing in another)

e. Transfersi. Transfer of Rights or Exclusive license

1. Unless by operation of law (termination rights, intestacy statutes) all transfers or exclusive licenses of the 106 exclusive rights must be (i) in writing and (ii)signed by owner or agent thereof.

a. Writing can be simple and does not need to describe the work b. No defense of lunch not contracts

ii. Non exclusive license1. written contract2. oral contract3. implied by conduct if

a. licensee requests creation of the work b. licensor creates and delivers the work to party that requested it

c. licensor intends that licensee will distribute the work iii. What Rights Granted?1. becomes an issue with new media uses, split in authority

a. 2 nd circuit favors licensee whether they intended to use in new media b. Other circuits favor licensor if they did not specify new media in

transfer, they reserved the rights2. motion picture rights

a. vague, but do not include home video rights

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iv. Recordation & Priorities Between Conflicting Grants1. all transfers of copyright ownership or rights MAY be recorded in the US

copyright officea. must specifically identify the work(s)

2. while recordation is not a MUST it is advisable because

a. gives constructive notice b. it protects against conflicting transfersi. if exclusive license and recorded within one month it will beat

any conflicting transfersii. if not recorded in one month, first to record prevails if for

1. valuable consideration2. in good faith and3. w/o notice of earlier transfer (remember registration that

identifies the work gives constructive noticec. non exclusive licenses effective if

i. in writing

ii. license granted before execution of transfer or taken in goodfaith without notice of transfer (remember constructive notice

V. EXCLUSIVE RIGHTS PROTECTED -- what rights have been infringed/are to be utilizeda. General Rule: Subject to the affirmative defenses, the owner of a copyright has the exclusive

right to do and to authorize any of the 106 rights b. Divisibility

i. 1909 act -- copyright was not divisibleii. 1976 act -- rights could be divided, subdivided, assigned, licensed, owed and enforced

separatelyc. REPRODUCTION RIGHT

i. the owner had the right to reproduce in copies of phonorecords1. extends to literal copies (Xerox) or non literal copies (copying the protected

elements of the work)2. Fixation in copy of phonograph is enough to violate even if

a. no other right is violated b. work in progress and no distribution (Filmation)c. might be less than entire work d. machine readable or short lived fixationse. includes copying for private usef. in different medium

ii. Issue: Internet Transmissions1. temporary copies in digital environment are copies but

a. 117(c) protects making temp. copy by activating a computer b. 512 protects ISPs for making transient copies

iii. Copying Must be Accompanied By Minimal showing of volition or causation1. this protects kinkos from allowing someone to come use copy machines and

then that person infringes someones copyright

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2. protects ISPs when customer uses their service to infringe, but only if they passively store.not if they get involved (see secondary liability). ( Costar, Netcom)

3. also no volition or causation when copies are made by instruction of acustomer.(Cartoon Network )

iv. Limitations -1. Sound Recordingsa. only literal copying infringes - one that recaptures the actual sounds

fixed in a particular sound recording b. because of 115 compulsory license to make and distribute (even

digitally) covers of i. non dramatic musical works

ii. after there has been authorized distribution of phonorecords inUSA

1. no compulsory license for bootlegged musical work 2. cannot change arrangement or character of musical work

2. Libraries and Archives3. First Sale4. Face to Face Teaching5. Secondary Transmissions6. home recordings7. Independent Creation8. Fair Use

d. ADAPTATION RIGHTi. RIGHTS: owner has the exclusive right to do and authorize the making of derivative

works based on the copyrighted work 1. 1909 act

a. translation b. dramatizationc. convert drama into noveld. arrange or adapt a musical work e. to complete or finish a model or work of art

2. 1976 act derivative work is a work that is based upon one or more preexistingworks such as

a. a translation, musical arrangement, dramatization, fictionalization,motion picture version, sound recording, art reproduction, abridgement,condensation

b. or any other form in which a work may be recast, transformed or adapted

ii. LIMITS IN SCOPE OF RIGHT:1. Derivative Works need more than a modicum of creativity to qualify for new

protection, therefore no infringement of adaptation right unless a derivativework is actually created.

a. does not give owner the right to control minimal mechanicalchanges or public evaluation

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i. simply mounting art on a tile or speeding up game play is notsufficient to claim infringement of right to make derivative work.( LEE v. ART Company)

ii. Guide books are not d/w because it does not recast, transform or adapt original work. However if it supplements original work it

may violate reproduction right because of non-literal copying.(Ty)1. Cts do not like guide books, so they will find them to

violate reproduction right 2. Substantial Similarity needed for infringement

iii. FIXATION1. derivative works need to be fixed for protection, BUT NOT TO INFRINGE

a. you could violate the adaptation right by performing an adaptation or a play w/o permission

b. ct held Duke Nukem customized levels infringed even though the program did not incorporate any of the protectable elements of the

original because it infringed on the right to create sequels of the storyitself.iv. USE OF DERIVATIVE WORK MAY INFRINGE UNDERLYING WORK

1. The infringing use of a derivative work, infringes the underlying work as well(subject to fair use defense)

2. if underlying work is in PD then no infringement unless derivative works makeuse of protected elements added by author of other derivative works

3. if derivative work is in PD (could be because of lack of renewal or publish w/onotice pre 89) but OG is still protected, the owners of the original work mayenforce their rights if you make a work based on the PD derivative work.

v. SAMPLING1. if you sample the actual sound recording (you dont replay it) you have violated

thea. adaptation right if you have rearranged remixed or altered in sequence

b. reproduction right if just loop2. hard argument that it is de minimus if recognizable, not de minimus

vi. COMPUTER PROGRAMS1. no infringement if copy or adaptation made for archival or essential step in

usingvii. NO PROTECTION FOR ANY PORTION OF A DERIVATIVE WORK WHICH

USED MATERIAL UNLAWFULLY

e. DISTRIBUTION RIGHT (Right Of First Sale)i. right to (and authorize) distribute copies or phonorecords to the public by sale or other transfer of ownership or by rental, lease or lending

ii. Elements for infringement1. Transfer of Copies/Phonorecords

a. making a single unauthorized copy available to public with beinfringement ( Hotaling)

b. electronic transmission sufficient

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c. Make Available v. Distribute to Publici. issue arises with P2P or files in the internet

1. majority: need to prove acceptance to constitute an actualdistribution

2. Minority: can argue inferred acceptance when a party

has completed every step for a public distribution (makeavailable). London Sire Records2. Intent/Knowledge of infringement not necessary (strict Liability)

iii. LIMITS - First Sale Doctrine1. General Rule: The owner of a lawfully obtained copy can sell or dispose of it

as they please without permission of copyright owner.a. provided that they OWN and LAWFULLY made copy, they can sell,

lease, display or give it wayi. cannot make copies, adapt, distribute

ii. if copy was licensed, lent or rented no rights b. copyright owner does not have a right to control resale prices or

practices once they have transferred ownership in a single copy (butcould do this contractually)i. exception -- record rentals not allowed for commercial profit

ii. exception -- computer software rentals not allowed for commercial profit

1. except for video gamesiv. Importation Right

1. Illegally made goods infringement2. Legally Made goods manufactured outside USA need permission or

infringement under 602 importation statute3. Legally made goods manufactured in the USA, exported, then imported

(ROUND TRIP DOCTRINE SOA as to whether this is an infringement

f. PERFORMANCE RIGHTi. right to perform publicly or authorize public performance

1. Performance broadly construed to include playing a cd, streaming a song(musical work right) reading aloud, playing audio visual work in any sequence

a. does not apply to architectural, pic, sculptural or graphic works b. sound recordings are limited to digital transmission

i. no right in sound recording for playing cd or on radio station.c. but owner of MUSICAL WORK has rights see collective rights

organizations who collect these royalties and licensing fees

i. BUT have to get GRAND RIGHTS (music that tells story) fromauthor themselves

ii. Public Performance1. if open to public, regardless of how many people are there ( Aveco)2. semi public -- look to composition of audience

a. if more than family and acquaintances are present or need to pay cover etc.

3. or if work is transmitted to a public place, semi public place or to public

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a. think hotel that transmits videos to all roomsiii. LIMITATIONS

1. Secondary Transmissionsa. cable companies that rebroadcast are on the side of the viewer = no

infringement

2. Home Use Exemptiona. no infringement if type of system used to broadcast secondarytransmission is commonly used in private homes unless

i. direct charge to viewii. transmitted further to public

b. NOTE: congress said Aiken (speakers in fried chicken place) was as far as they would go with this

c. FAIRNESS IN MUSIC ACTi. no more than 4 speakers, you can perform musical works w/o

permission3. Face to Face Teaching

4. Distance Learning5. Religious Services

g. PUBLIC DISPLAY RIGHTi. covers all works except sound recordings and architectural works

1. for motion pics and audio visual is limited to individual images (more would beperformance

ii. Public = same as performance definition1. open to public2. semi public - who was there?3. transmit to public places

iii. Display -- show a copy directly or by means of device or process1. issue: what constitutes display for ESI?

a. rule: a computer owner that stores an image as ESI ands serves that ESIdirectly to a user -- display -- if no permission -- infringement

b. in line linking or framing -- NO displayi. JJ thinks this is wrong because it is so technical..if it looks like

a duckc. Perfect 10 v. Amazon

i. CT held that thumbnails were display and infringement (butsubject to fair use because of transformative use for indexingimages on internet) but in line linking/framing was not display

1. in line linking may be secondary liability but no directinfringement

iv. LIMITS1. First Sale -- legal owner of a copy has the right to display that copy to viewers

in place where the copy is located2. De Minimus Use

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a. if a copyrighted work is displayed but not recognizable (distorted,out of focus) , then the use is de minimus and no infringement

i. amount of time not relevant because there are differentcompulsory licensed for background and substantial uses

h. PERFORMANCE OF A SOUND RECORDING THROUGH DIGITAL TRANSMISSIONi. right to perform sound recording or authorize digitally1. streaming audio on the internet will implicate both the rights in the sound

recording and musical works2. whereas there is no performance right in sound recording if it is performed

analog (cd player, TV, radio station)i. 106A - moral rights

i. Under Berne (US does not recognize) -- cannot be negotiated for money1. right of integrity

a. prevent distortion or mutilation2. right of attribution (Credit)

a. claim/disclaim ownership b. disclosure - determine when a work should be publishedc. withdrawal - to take things out of publication

ii. US Equivalents1. right to derivative works2. contractual or implied obligation to give credit3. unfair competition / lanham act -- protects from distortion4. rights of privacy5. State Laws Copyright Laws

a. NY prevent publication/display of work or reproduction when it has been modified and such display would harm reputation of artist

i. protects reputation of artist b. CA -- prevents intentional mutilation of works of fine art and provides

for a right to claim/disclaimi. protects work

6. 106a VARAa. protects works of fine art from mutilation

b. limited to works of 200 or less copies

VI. INFRINGEMENT -- IS THE USE INFRINGING?a. Subject Matter Jx

i. Original Jx: The Federal Courts have original and exclusive jurisdiction over actionsthat arise under the federal Copyright Act

1. an action arises under the fed copyright act if ( TB HARMS TEST) :a. a complaint is for a remedy expressly granted by the Act

(damages/injunction) for infringement of any of the 106 rightsi. WATCH OUT: actions contemplating copyright ownership from

an assignment, transfer or contract DO NOT arise under. b. asserts a claim requiring construction of the Act

i. whether a work is WMFH / Joint Work etc

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c. presents a case where a distinctive policy of the Act requires that federal principles control the disposition of a claim

2. Well Pleaded Complaint Rulea. Ct cannot dismiss for lack of Jx because of an anticipated defense. If

the plaintiffs complaint alleged infringement or threat of infringement

of the exclusive rights of 106 and subject matter of copyright it stays infederal court until claims are proven spurious.i. then defendants should move for 12b6 failure to state a claim

ii. Pendant Jx: Fed Ct may choose hear state claims if 1. basis is Unfair Competition and federal claim attached is both substantial and

related.iii. Supplemental Jx: May hear state claim if they arise out of same case of controversy as

federal claim (infringement or threat thereof)1. BOTH pendant and supplemental are discretionary and the fed ct may decline jx

if a. novel or complex issues of state law

b. state claim substantially predominatesc. all fed claims are dismissedd. other compelling reasons

b. Personal Jxc. Standing - who can sue

i. legal or beneficial owner of one or more exclusive 106 rights at the time of infringement

1. legal owner author, proprietor if wmfh, or party who has been given anexclusive license or assigned ownership

2. beneficial owner one who retain interest (ie. royalties) from exclusive rightsa. owner who assigns rights in exchange for royalties retain beneficial

interest in musical works. Cortner v. Israel 3. exclusive rights cannot be an non exclusive license4. at time of infringement you must own or benefit from 106 rights when

infringement happenedii. assignment of right to sue does not mean beneficial owner

1. you can only sue if owner of exclusive rights agrees,2. even if they assign you the copyright as well because you would not have been

the owner at time of infringementd. Registration

i. is required as a pre-requisite to litigation and will provide a thin prima facie showing of ownership of a valid copyright

ii. exceptions (no registration needed for)1. foreign works by foreign authors do not need to be registered2. infringement of 106a visual arts3. refusal of copyright office SO long as applicant delivered the deposit,

publication and fee in proper forma. a defect will bar litigation

e. PREEMPTION

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i. General Rule: The Copyright Act will preempt a claim of the violation to ones rightof publicity when the rights

1. the claim falls within the subject matter of the Copyright Acta. while ideas themselves are not proper subject matter for

copyright protection , they may be proper subject matter

for copyright preemptioni. ideas that are embodied in a copyrightable workare within the scope of proper subject matter

b. the rights asserted are equivalent to those protectedunder the Copyright Act

i. Test: Is there some new element that changed thenature of the claim

2. preempted by Copyright Acta. misappropriationb. unjust enrichment

3. Not preempted (extra element)

a. fiduciary dutyb. agreement to pay for rights (desney v. wilder)c. agreement to be a partner (maybe)d. ownership of the copyright

i. unless interpreting if it is a work made for hire or joint work,the consists of construction of the ACT

e. agreement to pay for an ideai. SOA

1. 9 th circuit promise to pay for use of idea isnot an extra element because it is equivalentto the rights of use that an owner has under

the act2. 6 th Circuit promise to pay is sufficient toadd an extra element to a claim of breach of implied in fact K, so long as the promise isnot merely to pay for the rights protected inthe Act

a. the copyright act does not require thatone pays to use the copyrightableworks, just that one needs consent.

The added element of a promise andthen failure to pay adds an element

b. If the promise amounts only to apromise to refrain from reproducing,performing, distributing or displayingthe work, then the contract claim ispreempted.

f. Elements of the Plaintiffs case

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i. RULE: To establish infringement the plaintiff must proved (i) ownership of a validcopyright and (ii) copying of protected elements of work that rises to the level of misappropriation.

ii. Ownership1. registration gives presumption but can be rebutted by

a. proving not sm of copyright for protectioni. lacks originalityii. not fixed in a tangible medium of expression

iii. government work iv. utilitarian aspects outweigh creative aspectsv. infringes on a previous work

b. PD becausei. term expired (pre-1924 works)

ii. published without notice (pre 1989 works)iii. renewal not filed or not filed by party with rights (pre 1963

works)

iii. Direct Infringement1. Copying -- can be literal or non literal and shown by direct evidence (dadmitting or P providing witness) or indirectly by access coupled with a degreeof similarity that is probative of copying.

a. accessi. test: did the defendant see the plaintiffs work or have the

opportunity to see the work 1. opportunity to see will suffice ( Baltimore Ravens Case)2. could be subconsciously

a. constructive access where work played on TV or radio or was popular where defendant was at timeof creation. ( Bright Tunes)

b. probative similarity (can use non protected elements to prove)i. strikingly similar: the more a work is like another copyrighted

work and less like anything in the public domain, the more likelyit is that copying occurred.

1. Ty case - ct held that beenie babies that did not look likereal pigs were similar to each other therefore inferenceof access not independent creation.

ii. inverse ratio rule -the more similarity the less evidence of accessis needed. This does not work in the reverse!

1. this comes up with music cases -- because there are onlyso many themes or ways to play music so you need toshow similarity not just access.

2. Improper Appropriationa. rule: Plaintiff must prove that defendant copied protected elements of

work such that the works intended audience will recognize substantialsimilarity of protectable elements.

b. Substantial Similarityi. 2 nd circuit - Total feel and concept

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1. abstract the work to take out the unprotected elements2. compare the total concept and feel of what is left to see

whether the target audience would find a substantialsimilarity

ii. 9 th Circuit - Extrinsic/Intrinsic

1. Extrinsic (can have expert)a. theme b. plotc. sequence of eventsd. characterse. dialoguef. setting, mood and pace

2. Intrinsica. ordinary observer would see substantial similarity

between the works b. discerning observer -- used for when there is a

mix of protected and non protected elements or when there is a specific target audience such asDoctors, Children, Music.

c. misappropriationi. was what was taken de minimus?

1. general rule: The law does not care about trivial mattersa. sampling -- can argue de minimus (three note

sequence held to be de minimus) b. how long was it used and more importantly is it

recognizabled. Computer Cases ct in Altai used the following to show substantial

similarityi. abstraction

1. look at each level from the basic idea (mostabstract)through the flow chart to the specific code

ii. filtration1. remove elements dictated by efficiency2. external factors3. PD4. methods of operation5. scenes a faire

iii. comparison1. compare the remaining core of expressive material

e. Basically, this case said that what the courts need to do is tosift out all elements of the allegedly infringed program whichwas ideas of dictated by efficiency or external factors, or takenfrom the public domain in order to find " a core of

protectable expression ." At that point the courts shouldfocus on whether there are substantial similarities betweenany elements within this core in the two programs.

3. Defenses

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a. Independent Creationi. show that you created before Ps work

ii. had no opportunity to access not in any place where the work was around

iii. D can argue that the work was copied from PD materials or

things that are not subject matter of copyright1. rebutted by striking similarity.iv. SECONDARY LIABILITY

1. Vicarious Infringementa. Even absent the employer/employee relationship a party will be liable

for Vicarious Infringement if they have (i) the right and ability to controlthe direct infringer and (ii) a direct financial benefit

i. right and ability to control1. right to terminate relationship2. rent space / control terms of lease

ii. direct financial benefit

1. does infringing activity increase attractiveness of venue?a. admission fees b. concession salesc. parking fees

2. does not need to be a royalty or commission from sale of infringing works

b. KNOWLEDGE is not necessary, BUT a direct infringement IS2. Contributory Infringement

a. One who directly contributed to anothers infringement is liable if theyhave knowledge of the infringing activity and (ii) induces, causes or materially contributes to the infringing conduct.

i. knowledge of infringing conduct1. ACTUAL knowledge2. or constructive if only act is selling technology

a. knowledge will not be imputed if the technologyhas Substantial non-infringing uses Merelyneed to be capable of commercially significantnon infringing uses

i. VCRS are used for Time Shifting which isa substantial non infringing use

b. BUT Sony defense is not applicable where thereis evidence of ACTUAL knowledge

ii. induces, causes or materially contributes to infringing conduct1. providing site and facilities ( Fonovisa)2. substantial participation3. protecting identity of infringers

iii. Direct infringement NEEDED3. Inducement

a. clear expression of intent of infringement and affirmative steps b. MAY NOT NEED DIRECT INFRINGEMENT TO BE LIABLE

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4. Secondary Liability for Sale Of Technologya. No vicarious liability because relationship ends at sale therefore NO

RIGHT TO SUPERVISE OR CONTROL b. Contributory?

i. actual knowledge Grokster case

1. Grokster showed actual knowledge of profiting fromtechnology (selling ad space) that was used for infringinguses by clear expression of intent and affirmative steps(telling people it was the new napster)

ii. constructive knowledge of infringing use1. will not be imputed if technology is capable of

substantial non infringing uses5. Secondary Liability Online ( RTC Case)

a. Contributoryi. reasonably could have had knowledge sufficient

1. notice claiming infringement not enough because there

could be valid fair useii. providing file store and transmission material contributionand may even be substantial participation

iii. Direct Infringement b. Vicarious

i. control:1. right to terminate or block accounts

ii. Financial Benefits1. fixed fee not enough for financial benefit2. but under Fonovisia lax policies may attract infringers

iii. Direct Infringement

6. TECH PROTECTION MEASURESa. DMCA b. 512 Safe Harbor

i. ISPs no liable for transient storage if 1. initiated by 3 rd party2. ISP does not select material3. ISP does not select recipients, except at auto reply to 3 rd

party request4. No additional copies made or keep longer than necessary5. ISP does not modify material

ii. ISP not liable to system caching

iii. ISP not liable for web site hosting if 1. doesnt know infringing2. if it becomes aware it acts expeditiously to take down or

block access3. no direct financial benefit or cant control4. complies w/notice and take down

c. ANTI - CIRCUMVENTION / TRAFFICKING

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i. liable if you circumvent or provide tech that circumvents a techmeasure that effectively controls access to a work

g. Caveat To All: Extraterritorialityi. Rule: Rights under 106 are not extraterritorial and therefore cannot be enforced for

acts that occur entirely outside of the United States.

1. Therefore in what would be an infringing act is authorized in the US, butcompleted entirely outside of the country there will be no secondary liability because there has been no direct infringement. (Subafilms)(ct held that therewas no secondary liability for US company that authorized duplication for home video without permission because duplication/distribution happened entirely in UK)

a. NBC case ct held no secondary liability for giving duplications thatwere authorized to UK company who then duplicated without

permission, because what would have been infringing act took placeoutside USA.

2. however, if infringement begins in the US and is completed outside, then the

Court will trace back to the USA3. also, if there are multiple infringing acts, and one is completed in the USA, thecourt will allow you to sue on all. (Update Art v. Modeen)

h. Conflict of Lawsi. Under Itar Tass ownership in copyright is determined by laws of country of origin

(because it is a property right), whereas infringement and available remedies aredetermined by laws of country where act took place.

1. therefore a ownership in a WFH may vest in a European company if it is madein the USA, even though European laws do not recognize WFH.

VII. ARE THERE VALID DEFENSES ?A. STATUTE OF LIMITATIONSi. 507(b) 3 years after claim accrues

1. claim accrues the moment when the copyright holder has knowledge of aviolation or should have reasonably known,

2. if there has been continuing infringements, cts will often allow copyright owner to recover for acts that occurred more than 3 years prior so long as they didntknow or could not have reasonably known

a. if you know and dont do shit your out of luck B. FAIR USE 107

i. RULE: Fair use of a copyrighted work, by reproduction in copies or phonorecords,

adaptation, public performance, distribution or display is NOT infringement. Todetermine fair use the court will weigh:1. The purpose and character of the use

a. commercial or not for profiti. not dispositive of unfair use

ii. commercial -- monetary gain or whether user will profit without paying customary price

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1. newspaper that gets an advance copy of a book and rips itoff commercial

b. transformative does the new work simply supersede the object of theoriginal work or does it add something new with a new purpose,different character, altering the first with new expression, meaning or

message.i. supersedes not transformative but may be a derivative work

ii. new purpose transformative1. parody 2 live crew2. criticism wind done gone3. thumbnail images on search engine indexes and

enables people to locate whereas original use was that of aesthetic artistic use

4. using pictures in a book w/comments and texttransformative use because original was to promote andaesthetic, new use is of historical analysis

2. The nature of the copyrighted work (of Plaintiffs work)a. Creative vs. Fact Based

i. creative fictional works strong protectionii. fact based works thin protection

b. Published or Unpublishedi. unpublished weighs heavily against a finding of fair use

(Salinger )3. The amount and substantiality of the portion used in relation to the copyrighted

work as a whole (of Plaintiffs work)a. quantitative how much of the work did you rip off?

i. pictures usually need to be taken in its entiretyii. parody necessitates a large use

b. qualitative is what you ripped off the heart of the copyrightmeaning the expression in the work or did you just take what wasnecessary to accomplish transformative use

4. The effect of the use upon the potential market for or value of the copyrightedwork

a. market that copyright owner is ini. newspapers use of excerpts destroyed a deal w. time magazine

for serial. (Harper v. Row)ii. copying and giving out journal articles to researchers above and

beyond your license harms market for licensing b. potential market for derivative worksi. does not matter if P would ever intend on entering in market

c. whether widespread conduct of the sort engaged in would result in asubstantially adverse impact on the potential markets

d. NO HARM from critical review, unflattering parodyII. PARODIES

1. No exception so you have to go through all 4 factors

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a. Parodies are commercial, but may be highly transformative b. often take from highly creative worksc. take entire work but must do so to conjure it upd. if transformative, not likely to act as a market substitute even though

commercial

2. key issue Targeta. a parody must target the work that it has taken from!iii. GUIDE BOOKS

1. THESE MAY BE HELD TO BE FAIR USE, BUT COULD BE HELD TOHARM MARKET FO DERIVATIVE WORKS

iv. REVERSE ENGINEERING FAIR USE1. intermediate copying is infringement,2. but in reverse engineering the copying is in order to find out how a program

works so that you can create a new program thus transformative usea. caveat if you make a new program that copies the protectable

elements of the program you reverse engineered boom substantial

similarity infringement (reproduction/adaptation)3. this increases competition and creation of expressive works heart of

copyright policyv. POLICIES

1. encourages creation of new works using preexisting materials heart of copyright law is to encourage creative expressions

2. promote wide dissemination3. benefit to society outweighs the costs and harm to the author

VIII. REMEDIESA. PRELIMINARY INJUNCTION

I. IRREPERABLE HARM AND1. Prima Facie case of infringement (copying + misappropriation) presumption

of irreparable harmII. LIKELIHOOD OF SUCCESS OR SERIOUS QUESTION GOING TO THE MERITS

& BALANCE OF HARDSHIPS TIPS DECIDEDLY IN MOVANTS FAVOR 1. Paramount v. Carol

a. ct granted preliminary injunction when D wrote a book about star trek that outlined the plot lines and characters because prima facie case of infringement that created a presumption of irreparable harm. Not fair use because not transformative, no parody because point was not tomake fun of Star Trek and harmed potential market for derivative workseven though Star Trek did not already license this type of work .

B. PERMANENT INJUNCTIONi. but when already published + distributed + ongoing relationship = likely to impose a

licensing feeC. DAMAGES

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I. MEASURE OF DAMAGES1. Actual Damages (Lost profits, defendants profits, defendants indirect profits)

a. determined by the loss in fair market value of the copyright as measure by the profits lost due to infringement is the value of use of thecopyright to the infringer

i. lost profitsii. profits of infringer iii. indirect profits

b. Two stepsi. Must show a casual link between the infringement and the

damages sought, then it is up to the defendant to weed out whatis attributable (But for causation)

1. expert testimony as to fair market value2. indirect profits of infringer by using the work such as

sales from a trade show where the work was shown as part of promotional materials ( Timex v. Polar Bear)

ii. Defendant then has the burden of weeding out those profits thatare not attributable or expenses that are deductableII. STATUTORY DAMAGES

1. copyright must be registered prior to infringement suit2. each work that is infringed is ONE infringement = 1 award of stat damages

a. show a work 15 times one infringement b. show a series each work in series is a separate infringementc. CD containing 12 songs

i. cd is a compilationii. if D made cd 12 infringements / if P made it with authority

1 infringement

III. PREJUDGMENT INTERESTIV. ATTORNEYS FEES AND COSTS

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Jussim Copyright Summer 2011

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