Real Estate Finance Outline

Downloaded From OutlineDepot.
com
Wayne State University Law School

Copyright Fall 2012
Rothchild
I.
Introduction/Overview of Copyright Act
2 views on Copyright:
1.
Right wing- thinks creations are your property, so there is a natural right to
complete ownership of your intellectual product
Rationale: The stronger the copyright, the more stuff will be produced because
people will have incentive to produce more things because it is protected
Left wing- copyright is an evil, its a monopoly.
Rationale: Copyright makes it more expensive for people to get access to works of
authorship
We need some level, but the current version is too overprotective and only helps the
Disneys of the world
Two visions of copyright:
Natural rights of the author, aka moral rights

Because you created something you have a natural right to ownership regardless of
what the law says, and you hope the laws will promote that
Utilitarian considerations
We protect copyright because we want to give people an incentive to produce works
of authorship
In US the basis is almost always utilitarian, in Europe its natural right basis
What do you have to do to get a valid copyright?

have to "fix" it in any tangible medium of expression: its 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.
must be original
used to have to put copyright notice/register for protection (before 1989)
Right to
Reproduce
(make copies)
Copyright gives you 5 Basic Rights:

Right to create
Right to
Right to Publicly
Derivative Works Distribute Works Display Works
Right to Publicly
Perform Works
Downloaded From OutlineDepot.com
II.
Basic hurdles of copyright protection: Fixation,

Originality, and Originality of Derivative Works
Three Requirements for Copyrightable Subject Matter

1) Fixed in a tangible
2) It must be an original
3) Copyright protection for a
medium of expression
work of authorship
work that is both fixed and
original will not extend to
elements of the work that
constitute ideas, procedures,
and the like
Fixation
102 (a)- original works of authorship are copyrightable if they are
fixed
o
102(a) states that a work must be fixed in any tangible medium of

expression to be protected by copyright.
o Under 101, a work is fixed if it is sufficiently permanent or stable
to permit it to be perceived, reproduced or otherwise communicated
for a period of more than transitory duration. A work consisting of
sounds, images, or both, that are being transmitted, is fixed for
purposes of this title if fixation of the work is being made
simultaneously with its transmission.
Doesnt matter what medium, all that is required is a fairly
material permanent form so that it can be perceived with or
without the aid of a machine.
Example: Thus, live radio and television broadcasts are
embodied in a ''medium of expressionfrom which they
can be perceived, reproduced, or otherwise
communicated,'' but the projected sounds and images are
ephemeral, and hence not ''fixed.''
Fritz v. Arthur D. Little, Inc. (1996) (pg 34)

Facts: Fritz gave a lecture. Kiefer added Fritz's lectures into his course. Fritz never
fixed the lecture (not tangible medium).
Issue: Whether there is a copyright in what is delivered orally?

Rule:
works created extemporaneously and not fixed in a tangible medium of
communication are not protectable( 101 definition of fixed)
o e.g., a speech that is delivered extemporaneously; a jazz or dance
improvisation
works may be fixed by someone other than the author, if authorized.
Holding:
Fritz doesn't meet the requirement for fixation.
Fritz did not fix his notes, they were just spoken orally
o If Kiefer independently created notes based on Fritz's oral "creations",
then there's no copyright infringement since it's not a copyrighted
source.
Independent creation doctrine- theoretically possible for two
authors to create the same work independently (ex: same riff by
two different musicians)
If Fritz had premade notes, then they would be fixed.
o But Fritz had implicitly authorized people to fix his creation by letting
them take notes during the lecture
What if Fritz had delivered the material orally, then Kiefer takes notes, then
afterwards Fritz writes it down?
o Fritz would be the author, because it is his independent creation, and it
was eventually fixed under his authority.
o If Kiefer wrote it down before Fritz fixed it, Kiefer would not be
infringing copyright but he would not be the owner/author.
However, as soon as its fixed, then the author (Fritz) owns the
copyright.
Cartoon Network LLLP v. CSC Holdings, Inc. (2008) (pg 39)
Facts: Cablevision had a "remote storage DVR system": customers w/o a DVR
system in their homes could record cable programming on hard drives at a remote
location and could access recordings via RS-DVR software. Copyrighted works are
"embodied" in the buffer period.
Issue: Is a transmission of 1.2 seconds long enough to be considered
fixed?
Rule: Must be fixed for a period of more than transitory duration.
101( a work is fixed if it is sufficiently permanent or stable to permit it to
be perceived, reproduced or otherwise communicated for a period of more
than transitory duration.)
Holding:
A TV program that remains in a buffer for 1.2 seconds is not fixed
o note: the courts interpretation of the 101 definition is questionable
The data here is transitory so it doesn't meet the requirement (only 1.2
seconds).
o class commentary: Transitory = it's about how long it can be perceived,
not embodied.
What has to last for a sufficiently long period is not the copy, but the
perception, reproduction, or communication of that copy.
o Also, it's not Cablevision responsible for making these copies, it's the
customers pushing the record button.
Williams v. Arctic International (pg 55)

Facts: Williams (P) had three copyright registrations covering its Defender video
game. One covered the computer program itself and the other two covered the
audiovisual effects displayed during the games attract and play mode. D sells
electronic components for video games, including a memory device with a program
virtually identical to Ps. D argues no infringement because Ps work fails to meet
the fixation requirement
Rule: a computer game is fixed in the ROM chip that contains its code, even though
the images generated by the game code are transient
102(a) (either directly or with the aid of a machine or device)
Holding: Features in a video game that repeat themselves over and over are
sufficiently permanent to be considered more than transitory, the program that
operates this function is fixed within the chips of the game. Even though the
images are transitory, its the same as an image in film, its fixed in the read only
chips.
Fixation requirement is met whenever the work is sufficiently permanent to
permit it to be reproduced or otherwise communicated for more than a
transitory period
The memory device of the game satisfies the statutory requirement of a copy
in which the work is fixed, so the statute is satisfied
U.S. v. Martignon (2007) (pg 49)
Facts: Martignon owned a record store in NYC. The gov alleged that he sold
unauthorized recordings of live musical performances both at his store and via mail
order. He was indicted for violating a federal criminal statute forbidding such
activities.
Rule: Certain live performances are eligible for protection under 1101 of Title
17, which is not a copyright provision
it is illegal to fix a live musical performance without authorization; 1101
the criminal version of 1101 is constitutional: enactment under Commerce
Clause doesnt conflict with Intellectual Property Clause power
17 USC 1101: provides a civil cause of action for a performer whose
performance was recorded without her consent
18 USC 2319A: provides criminal remedies to the government

Holding:
The law allows the gov't (in criminal version of this) to go after people making
unauthorized fixations since the Constitution enables Congress to "secure
rights."
o "Secure" = create, bestow, and allocate, rather than adding protection
for separately created and existing rights.
o The law creates a power in the gov't to protect the interests of the
performers, but it does not grant the performer the right to exclude
others from the performance.
17 USC 1101: This anti-bootlegging provision applies only to live musical
performances
o the statute creates a cause of action against any person who, without
the consent of the performers, takes any of the following actions:
(1) fixes the sound, or sounds and images of a live musical
performance in a copy or phonorecord, or reproduces copies or
phonorecords of such a performance from an unauthorized
fixation;
(2) transmits or otherwise communicates to the public the
sounds, or sounds and images, of a live musical performance; or
(3) distributes, offers to distribute, sells, offers to sell, rents,
offers to rent, or traffics in any copy or phonorecord fixed as
described in paragraph (1), regardless of whether the fixations
occurred in the US.
Despite its placement in Title 17, 1101 is not, strictly speaking, a copyright
statute, because live performances are not fixed in a tangible medium of
expression, and therefore do not qualify as writings under the Copyright
Clause.
o The legislative history of 1101 specifically invokes Congresss authority
under the Commerce Clause.
o Nonetheless, courts and commentators have questioned the
constitutionality of 1101, rasing the question whether Congress should
be permitted to invoke its Commerce Clause Power in order to enact
copyright-like protection that exceeds Congresss powers under the
Copyright Clause
Originality
The second requirement for copyrightability is that a work be an original

work of authorship. 17 U.S.C 102(a).
Originality is both a constitutional and a statutory requirement
The 1976 Act does not indicate exactly what Congress meant by original
works of authorship. The task of interpreting the scope of the statutory grant
of copyright protection was left to the courts.
Basic Requirements For Originality:
independent creation + at least some minimal creativity; Feist

Publications, Inc. v. Rural Telephone Service Co. (1991)
A work's originality itself must exhibit a modicum of intellectual labor in order for
the work to constitute the product of an author. Still, such intellectual labor may be
sufficient to establish authorship even if only slightly greater than de minimis.
Any distinguishable variation of a prior work will constitute sufficient originality to
support a copyright if such variation is the product of the author's independent
efforts, and is more than merely trivial. This doctrine owes its origin in large part to
the words of Justice Holmes in Bleistein v. Donaldson Lithographing Co.
It would be a dangerous undertaking for persons trained only to the law to
constitute themselves judges of the worth of pictorial illustrations, outside of
the narrowest and most obvious limits.
The smaller the effort (e.g., two words) the greater must be the degree of creativity
in order to claim copyright protection.
If two people create the same (or substantially similar) work independently, they
may both hold a copyright on it: novelty is not required (Feist Publications)
Bleistein v. Donaldson Lithographing Co. (1903) (pg 60)
Facts: Donaldson Lithographic Co. copied in reduced form three chromolithographs
that Bleistein had prepared to advertise Wallaces circus.
Ds argument: This is drawn from life rather than being generated from the
imagination
Rule/Holding:
Artistic merit is irrelevant:
o a poster created to advertise a circus has sufficient originality to be
protectable under the Intellectual Property Clause, regardless of any
judgments of the artistic merit of the work
It would be a dangerous undertaking for persons trained only to
the law to constitute themselves final judges of the worth of
pictorial illustrations, outside of the narrowest and most obvious
limits.
We do not want the government putting a stamp on what
constitutes art.
Copying from real life doesnt defeat originality, since there is always
something original in ones personal reaction to nature
It is not infringing to copy a public-domain item, even if somebody else has
already copied it
o Others are free to copy the original. They are not free to copy the
copy.
Question of what is original. If you took a picture of Oscar Wilde
similar to the one in the book, you would be infringing on a
copyright because you are copying the original authors original
expression.
Prunt v. Universal Music Group, Inc. (pg 65)

Facts: Plaintiff submitted songs for feedback to Universal and alleged that his
songs were copied by Universal Artists.
Rule:
Song titles and short phrases lack sufficient originality to be protectable
Holding:
Why are these things not protected?
o Themes: Not original, used over and over again. You also need certain
themes for movies/songs. E.g. some movies need car chases...if they
were copyrighted, then we couldn't have any more of those movies.
However, if someone copied a lot of unique elements of a
particular car chase, that might be infringement.
The theme itself is not protected, its just an idea (lack of originality and
expression).
Policy:
If we grant people a monopoly on these short phrases, it takes too much stuff
out of the available stock in creating new works. And its counterproductive;
you would have to get a license, its inefficient, and bad public policy
Mannion v. Coors Brewing Co. (2005) (pg 72)
Facts: Free-lance photographer (P) took picture of a basketball star. Ds imitated
the picture in beer billboard advertisement.
Issue: Whether and to what extent what was copied (a photograph) is protected.
Rule: a photograph may satisfy the originality requirement through originality in
rendition, timing, or subject creation
note: timing alone is unlikely to supply the requisite originality
Holding:
3 elements of photographs that make them protectable:
(1) Rendition:
originality of the lighting/shading/angle/use of filters/etc not the scene itself
but the effects that result from all these photography decisions
(problematic?)
(2) Timing:
Being at the right place at the right time. Hard work, but not sure if it's
original. (e.g. picture of a fish jumping into a bear's mouth) a little
problematic
(3) Creation of the subject:
photographer created the subject and then photographed it so that part is
original makes more sense
Originality and Derivative Works

( 101) Derivative Work: Is a work based upon one or more preexisting works
in which a work may be recast, transformed, or adapted. A work consisting of
editorial revisions, annotations elaborations, other modifications, which, as whole,
represent an original work of authorship. (e.g. translation, musical arrangement,
dramatization, fictionalization, etc).
Based on a preexisting work, not merely inspired by it, but must actually
incorporate original expression in some form. A review that incorporates plot
summary and quotes would be derivative.
o No matter how much and how little, the copyright only protects the
new stuff for the derivative author, but if a derivative work is an
infringement it isnt protected.
Originality of Derivative Work: Is there enough originality to support a copyright?
Just look at what derivative author contributed
Under 103, copyright in derivative works extends only to the original material
contributed by the person who created the derivative work.
If the underlying work is in the public domain, it remains so.
If the underlying work is protected by copyright, that copyright is
independent of, and unaffected by, the derivative work copyright.
L. Batlin & Son, Inc. v. Snyder (1976) (pg 83)
Facts:
Uncle Sam mechanical banks were made a long time ago. D obtained
copyright of a plastic bank as a sculpture. It is plastic and shorter than the
original, but otherwise the same.
Batlin saw these plastic versions of an Uncle Sam piggy bank that D made,
and he wanted to make the same thing.
o He commissioned someone else to copy Snyder's version of the bank.
Defendant argued: You didn't put enough originality in it to have a protected
work. --> Infringement here?
Rule:
A reproduction of a work must contain a substantial variation (more than
trivial), to obtain copyright protection
Underlying work of art may be in the public domain, but the reproduction
must contain an original contribution not present in the underlying work of
art and be more than a mere copy
Holding:
a copy of a public-domain Uncle Sam bank is found not to have sufficient
originality to be protectable
o Bank does not meet the requirement for originality, and so cannot be
copyrightable
Although the test for originality is a low one, a replica must be more than a
mere copy to gain copyright protection.
Originality in a derivative work requires original elements that are not merely
trivial here the plastic model made only subtle, trivial variations for
functional reasons that were not sufficient for copyright protection
o Any variation in the actual design here appears to be done out of
making it cheaper to produce rather than a decision for design.
Dissent: "Substantial variation" standard is too high. Should be "any

distinguishable variation" of a prior work instead. It only takes a small degree of
creativity to qualify for a copyright, so it should be the same for derivative works.
Policy:
Trivial differences: the court is concerned that if it grants copyright for trivial
differences, then it could allow one person to monopolize all public domain
works, removing the public benefit.
III. Fundamental exceptions to copyright protection ( Facts and
Compilations; Abstraction and Ideas; Characters and Plots)
102(b) of 1976 Act explicitly itemizes the aspects of a copyrighted work that are
nonetheless not covered by the exclusive rights granted under the law.
102(b) states that copyright protection for an original work of authorship does not
extend to the following 8 categories: idea, procedure, process, system, method of
operation, concept, principle, or discovery (courts don't analyze these separately
except for "ideas") regardless of the form in which it is described, explained,
illustrated, or embodied in such work.
Facts and Compilations
101: A compilation is a work formed by:
o the [1] collection and assembling of preexisting materials or of
data that are
o [2] selected, coordinated, or arranged in such a way that the
resulting work as a whole constitutes
o [3] an original work of authorship.
o The term compilation includes collective works.
Feist Publications, Inc. v. Rural Telephone Service Co. (1991) (pg 99)
Facts:
After Feist took 1,309 listings from Rurals white pages when compiling Feists
own white pages, Rural filed suit for copyright infringement.
Rule: basic requirements for originality: independent creation + at least some
minimal creativity
must have originality in selection/arrangement of the data to be
copyrightable.
Holding:
To be copyrightable, a work must be original to the author and possesses at

least some minimal degree of creativity.
o Facts, which do not originate with authors, cannot be said to possess
originality.
Factual compilations, on the other hand, may have been made by
exerting the requisite originality if the selection and arrangement
are original.
Feist took from Rurals white pages a substantial amount of factual
information. But Rural was not the author of the names, towns, and telephone
numbers it presented. Rural simply took the data provided by its subscribers
and listed it alphabetically by surname.
o An alphabetically arranged white pages is not even slightly creative.
o Rural expended sufficient effort to make the white pages directory
useful, but there was insufficient creativity to make original.
Because Rurals white pages lack the requisite originality, Feists use of the
listings cannot constitute infringement.
Low Standard of Creativity: Originality requires . . . some minimal level of

creativity. Presumably, the vast majority of compilations will pass this test, but
not all will. [107]
Was there anything original about the listings going into the white pages?
o No, because the selection was just everyone living in a geographical
area (already required by law) and the arrangement was alphabetical
(standard arrangement). No copying of original elements.
Unfair to Compiler of Data?:
It may seem unfair that much of the fruit of the compilers labor may be used by
others without compensation. [T]his is not some unforeseen byproduct of a
statutory scheme. . . . It is, rather, the essence of copyright, and a constitutional
requirement. The primary objective of copyright is not to reward the labor
of authors, but [t]o promote the Progress of Science and useful Arts.
[103]
Note: look at what was copied, was the arrangement or the selection copied,
or was it only a fact or set of facts
Abstractions and Ideas (Idea/Expression

Dichotomy)
Hoehling v. University City Studios, Inc. (1980) (pg 115)
Facts: Hoehling wrote a book about the destruction of the Hindenburg, advancing a
theory that sabotage caused the disaster. Ten years later Mooney published a
literary novel advancing the same theory. The rights to Mooneys book were sold to
Universal Studios. Hoeling sued for copyright infringement, claiming Mooney copied
the plot of his book.
10
Rule: "Where, as here, the idea at issue is an interpretation of a historical event,

our cases hold that such interpretations are not copyrightable as a matter of law."
Holding: Neither factual information nor interpretations of it can be subject to
copyright. Hoehlings theory was based on interpretation of historical facts, and
such facts are not protected by copyright.
Suggests that only works explicitly duplicating prior works will infringe
o Factual information is in the public domain
Scenes a faire- (Things that arent ideas or facts) incidents, characters or

settings which are as a practical matter indispensable, or at least standard, in
the treatment of a given topic.
o Because it is virtually impossible to write about a particular historical
era or fictional theme without employing certain stock or standard
literary devices, scenes a faire are not copyrightable as a matter of law
The Merger Doctrine: Applies when it is necessary for the second-comer to
use the words of the first because the idea may not be expressed in another
way.
CCC Information Services, inc. v. Maclean hunter (pg 120)

Facts: Car valuations based on Maclean editors' predictions, based on a lot of info
sources and their professional judgment (not historical market prices or
mathematical formulas which would be facts/processes). Also statements of opinion
rather than just facts.
Rule: These valuations are protectable because it wasnt just a matter of writing a
name and address, they were coming up with these valuations using their own
creative and unique methodologies.
Holding:
District Court: These valuations are protectable
o the district court was simply mistaken in its conclusion that the Red
book valuations, were like the telephone numbers in Feist, pre-existing
facts that had merely been discovered by the Red book editors. [121]
Are these different from facts?
o the valuations themselves are original creations of Maclean.
o Usually with databases, it is only the selection and arrangement that is
copyrightable
Hard ideas: those ideas that undertake to advance the understanding of
phenomena or the solution of problems [145]- probably not copyrightable
Soft ideas: those, like the pitching form [in Kregos], that do not undertake
to explain phenomena or furnish solutions, but are infused with the authors
taste or opinion. [145-46]
11
CHARACTERS AND PLOT

Nichols v. Universal Pictures (pg 125)
Facts: Abies Irish Rose-play about Jewish-Irish Catholic romance. Universal tried
to buy the rights, but negotiations broke down. Universal hired a screen writer and
gave them a copy of Nichols script and asked its writers to write a movie similar to
it but not like it, because they couldnt copyright rights to Abies Irish Rose
Rule:
the "abstractions" approach: you can describe the plot in more/less abstract ways.
Depending on how abstract your description is, copying your description isn't
infringement. The more general the premise is, the less likely it'll be protected.
Nobody's been able to establish that boundary clearly though.
In some point of generality you cross from protected expression to
unprotectable ideas
Depending on how abstract your description is, then you may only be copying
the idea (very abstract) or expression
It will always be a matter of judgment whether a given amount of nonliteral
copying amounts to infringement- Judge Hand
Holding:
No actionable copying here: In the two plays at bar we think both as to
incident and character, the defendant took no moreassuming that it took
anything at allthan the law allowed. [128]
No verbatim copying of lines, only a similarity of plot and characters (Irish
and Jewish family, their kids falling in love and having animosity between the
families).
However, just because there is not literal copying, it does not mean that
there is no infringement
o Once you get away from literal copying then its a coin toss how the
case will come out
o the right of protection can't be limited literally to the text.
It is of course essential to any protection of literary property,
whether at common-law or under the statute, that the right
cannot be limited literally to the text, else a plagiarist
would escape by immaterial variations. That has never been the
law, but, as soon as literal appropriation ceases to be the test,
the whole matter is necessarily at large, so that, as was recently
well said by a distinguished judge, the decisions cannot help
much in a new case. [127]
Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., Inc. (pg 134)
Facts: Honda del sol commercial features character and scene thats clearly a
James Bond knockoff.
Rule:
2 tests
12
(1) Sam Spade "story being told" test --> does the character constitute the
"story being told" or is the character just a chessman in the game of telling the
story? (here, James Bond makes the movie).
Certain character traits developed that are unique to the character.
"Audiences don't watch Tarzan, Superman, Sherlock Holmes, or James Bond
for the story, they watch these films to see their heroes at work."
[I]t is clear that James Bond films are unique in their expression of the spy
thriller idea. A filmmaker could produce a helicopter chase scene in
practically an indefinite number of ways, but only James Bond films
bring the various elements Casper describes together in a unique and original
way. [136]
(2) "Character delineation test"
Nichols- the second circuit has adopted an alternative test for determining
whether dramatic characters are protectable under copyright law
copyright protection is granted to a character if it is developed with enough
specificity so as to constitute protectable expression
o This has been viewed to be a less stringent standard than Sam
Spades story being told test
Holding:
"Scenes a faire" doctrine- sequences of events that necessarily result

from the choice of setting or situations, known as scenes a faire, and stock
themes or settings that often arise in works of a particular genre are not
protected.
...chase scenes usually aren't copyrightable.
Court holds that James Bond chase scenes are copyrightable because James
Bond is in them. (Rothchild: seems kind of odd. What if you had a chase
scene with some random German guy in a BMW? Not copyrightable because
James Bond isn't there? Shouldn't give people a monopoly on these stock
plots).
However, James Bond films represented a fresh and novel approach because
they hybridized the spy thriller with the genres of adventure, comedy
(particularly, social satire and slapstick), and fantasy
Because many actors can play Bond is a testament to the fact that Bond is a
unique character whose specific qualities remain constant despite the
change in actors - a James Bond film without James Bond is not a James
Bond film
Literary characters vs. visually depicted: literary characters may have
lots of details/expressions added by the reader (most characters aren't
described with that much detail that every reader will have the same image),
but characters that have been graphically depicted such as Mickey Mouse
are more easily protected (Mickey Mouse has been fleshed out more).
Is James Bond a graphical or literal character? Both.
9th Circuit hasn't really said which test is correct, so this Court applies both
tests. (Doesn't make too much sense...if anything passes the "story
13
being told" test, it will pass the abstraction test too. Pretty
conclusory).
Merger
When the idea and its expression are . . . inseparable, copying the
expression will not be barred, since protecting the expression in such
circumstances would confer a monopoly of the idea upon the copyright
owner free of the conditions and limitations imposed by the patent law.
[144]
quoting Herbert Rosenthal Jewelry Corp. v. Kalpakian
When the idea and its expression are inseparable, copying the expression
isn't barred (protecting the expression in this case would confer a monopoly
of the idea, which isn't the role of copyright).
CCC Information Services v. Maclean Hunter Market Reports, Inc.
(2nd Circuit) (1994) (pg 143)
Facts:
the takings by CCC from the Red Book are of virtually the entire compendium
They are not copying a few entries from a compilation, but rather the
copying is so extensive that CCC effectively offers to sell its customers
Macleans Red book through CCCs database.
D says ideas here = selection of genres in compilations (e.g. best value
restaurants). Expression = valuations.
Rule:
2 types of ideas:
"hard" ideas: ideas that advance the understanding of phenomena or
solution of problems
o
if hard idea, Court doesn't let the copyright protection apply (Rothchild:
seems kind of perverse).
"soft" ideas: ideas (like pitching form here) that don't purpose to explain
certain phenomena or give solutions, but are infused with the author's own
taste/opinion.
Holding:
Car valuations are soft ideas:
The consequences of giving CCC the benefit of the merger doctrine are too
destructive of the protection the Act intends to confer on compilations,
without sufficient benefit to the policy of copyright that seeks to preserve
public access to ideas. [146]
In cases of wholesale takings of compilations, a selective application of the
merger doctrine, withholding its application as to soft ideas infused
with taste and opinion, will carry out the statutory policy to protect
14
innovative compilations without impairing the policy that requires public

access to ideas of a more important and useful kind.
In this circuit, consideration of the merger doctrine takes place in light of the
alleged copying to determine if infringement has occurred, rather than
analyzing the copyrightability of the original work.
Policy
If this compilation isn't protectable, no compilations will be protectable, and
Sec. 103 of the Copyright Act will be illusory.
It is apparent that virtually any independent creation of the compiler
as to selection, coordination, or arrangement will be designed to add to the
usefulness or desirability of his compendium for targeted groups of potential
customers, and will represent an idea. [145]
i.e., expression of idea
D: Idea is "utility of the nine selected stats in helping a fan predict the
outcome."
Ct: idea is the "general idea that stats can be used to assess pitching
performance."
Morrissey v. Procter & Gamble Co. (1st Cir.) (n.2 on pg 148)
Facts: P suing D because instructions for a sweepstake contest copied
almost verbatim
Rule:
Merger Doctrine- where there are limited ways to express an idea, the idea
and the expression merge and a second party is free to copy the
expression in order to have access to the idea.
1) Merger shields verbatim copying from liability even when limited
alternative expressions is available,
2) and merger is not just a defense to liability, but renders the expression
uncopyrightable: for example copyright in the sweepstakes instructions could
not be registered.
Holding:
Court finds that though the contest rule was original, but providing
copyright protection is inconsistent with the public interest. There
are a limited way to express this rule, dont want P to get a monopoly on
contest design just because theyve locked up the wording.
If they gave copyright protection to these instructions, what would happen?

No one would be able to have a basic sweepstakes asking for
name/number/etc. The law says people shouldn't have to waste their time to
change their wording in something that accomplishes the same thing.
Merger idea works here.
When the uncopyrightable subject matter is very narrow, so that the topic
necessarily requiresif not only one form of expression, at best only a
limited number, to permit copyrighting would mean that party or parties, by
15
copyrighting a mere handful of forms, could exhaust all possibilities of future

use of the substance.
Blank Forms
Baker v. Selden (1879) (Supreme Court) (pg 150)
Facts: Selden copyrighted a book in which he used an introductory essay to explain
his system of bookkeeping after which he included the forms needed to put the
system to use. Baker subsequently began selling forms with differently arranged
columns that achieved the same result. Selden sues his for infringement.
Rule:
"Blank form" rule: Blank account books aren't the subject of copyright.
Courts look at the forms and see if there's enough conveyance of information
in the forms to take them out of this rule.
Holding: The protection afforded by a copyright on a book explaining an art or
system extends only to the authors unique explanation thereof and does not
preclude others form using the system or the forms necessarily incidental to
such use.
When an art taught by a book can't be used without employing the

methods/diagrams used to illustrate the book, they're considered necessary
incidents to the art and thus in the public domain - no protection. Merger of
idea and expression; expression loses its copyright.
Copyright does not extend to systems, just the original expression to explain
those systems.
o If the law doesnt protect the system, then the diagrams
necessary to project the system arent copyrightable either.
Drawing the line between protected expression and unprotected
systems is extremely difficult.
Policy
We don't want to extend copyright where it gives people a monopoly of ideas. Don't
want to give people an effective patent like this.
Utopia Provider Systems, Inc. v. Pro-Med Clinical Systems, L.L.C.

(2010) (eleventh circuit) (pg 158)
Facts: Pro-Med uses a paper template (Pro-Med Maximus) to capture a
patient/physician encounter, and Utopia claims this is copying its own ED
Maximus template.
Questions on the form included: where's the pain? how severe is it? did you
have contact with a sick person? etc.
Rule: relevant test is whether the forms convey any information
16
How does this sort of form convey information? asking the right questions
(as opposed to dumb questions); saying some things and not saying other
things.
2 step test: 1) look to whether the headings are anything other than what
would be expected on a medical template, and 2) whether the terms actually
convey info to the treating physician (Rothchild: not sure how we'd get past
the first test and not pass the second test).
Holding:
Court says it doesn't convey info - not protected.
Expert witness spoke to whether or not the form conveyed information. Is
that how the Court is supposed to decide a legal issue (this is the ultimate
conclusion)? This isn't what an expert witness is supposed to do. (This is a
matter of law, to be decided by the judge. The expert witness can only talk
about factual issues, not legal ones).
Does the form convey information? Any decent physician knows this
information, but the questions may be a good reminder (reminding them
what to ask/check). Is this an idea or expression?
Idea = asking patients a bunch of questions to figure out what's wrong is not
protectable. But how about these specific questions?
Is this form a compilation? It has a lot of words selected and arranged in a
certain way...there's a debate (footnote 18, p. 161).
Computer Programs
Definition: a set of statements or instructions to be used directly or indirectly in a
computer in order to bring about a certain result. 117 limits the copyright
holders exclusive rights. Software owners can make copies to adapt the
software and make it run on their machines. They may also take whatever steps
are necessary to repair or maintain the software.
Policy: if protect expression, companies can price so that it is cheaper to buy the
copy than write the program, allows authors to protect investment. However,
doesnt protect the underlying method of operation if there is only one way to write
commands, want others to be able to build on prior success.
1) Whether computers should be

protected?
Two Issues:
2) Whether it was infringement if
someone uses a computer to view or
interact with a work?
117. Limitations on exclusive rights: Computer programs

o
17
Computer programs were copyrightable as literary works: literary works

include: computer programs to the extent that they incorporate authorship
in the programmers expression of original ideas, as distinguished from the
ideas themselves.
With the exceptions, under 117, computer programs are just like
everything else in the copyright statute
Unlike conventional literary works, there isnt a large body of
work already in the public domain
Source Code: Short hand code that

people can read intelligible to humans.
Computers cant read, they respond to
electronic impulses saying on or off.
o
o
Object Code: Code that a machine can

respond to that consists of endless
strings of 1s and 0s intelligible to
computers but not to humans.
Translation is mechanical, not committing
authorship when it translates
Copyright protects the program as long as it remains fixed in tangible

medium of expression but does not protect the electro mechanical
functioning of the machine.
Confusion of whether computer programs should be considered text or
machine.
o Copyrights, Trade Secrecy or some new software specific intellectual
property regime reason copyright is said to be right regime is
because it protects the code, and leaves how the computer functions
unprotected. If not limited to code then difficult to differentiate the
code from the method; describe it as causing the computer to do
something.
Apple Computer, Inc. v. Franklin Computer Corp. (pg 165)

Facts: Franklin made computers that were "Apple compatible". Its operating
system copied Apple's so it could use Apple's software/peripheral equipment. The
district court denied Apples motion to preliminarily enjoin Franklin from infringing
the copyrights Apple held on 14 programs.
On appeal, the central contention by Franklin was that computer operating
system programs, as distinguished from application programs, are per se
uncopyrightable, because such programs are either a process, system, or
method of operation.
Franklin argues that Computer programs might be protectable if they're in

source code, but not in object code: source code has some English words,
but object code is just 0's and 1's. Franklin said that object codes aren't
literary works (literary works are copyrightable under sec. 102(a)) because
the numbers don't mean anything to humans and don't communicate
directly to them.
Issue: If the operating system program is copyrightable, then this is infringement.
Difficult to separate function from expression in computer programs since

they are primarily functional.
Rule: court says "literary work" includes numbers and symbols; expands the
common usage of "literary works". So, all computer programs (either source
or object code) are "literary works".
18
Holding:
17 U.S.C. Section 101: Def'n of a computer program - "computer program
is a set of statements/instructions to be used directly or indirectly in a
computer." object code = directly, source code = indirectly.
Franklin wasn't trying to copy the method, just the actual instructions (i.e.
distinction between idea and expression).
But, Apple isn't trying to copyright the method of instructing the computer to
perform its operating functions, but rather the actual instructions
themselves.
Court compares the computer program to a book and finds that there is
protectable expression.
Court finds that Apple is protecting the expression by protecting its
instruction, not the method, though no principled distinctions can be drawn
between an application and operating system.
Court says RAM is a material object that is a work of authorship, so it's
copyrightable.
The fact that the code has utilitarian function doesn't make it unprotectable,
because if other programs can be written to perform the same function,
there's no problem.
If other programs can be written or created which perform the same
function as an Apples operating system program, then that program is an
expression of the idea and hence copyrightable. [170]
The Court found that there was evidence suggesting that there were other
possible ways to write the operating system, so there wasn't a single
expression, and the doctrine of merger didn't apply.
Is there only a single way to express that idea of Apple's operating system?
If there is, the two will merge and there will be no protection. This issue is
remanded to the Dist. Ct.
Franklin could have theoretically done some reverse engineering and
developed their own program that was still interoperable with Apple's
products, but they chose instead to take the cheaper and easier route of just
taking what Apple had created. That was economically efficient for Franklin,
but it didn't justify their actions.
USER INTERFACE
A computer programmer may be able to replicate the user interface of
another program without replicating any of its code.
The question of the copyrightability- and in turn, the utility- of the user
interfaces is thus conceptually distinct from the same question concerning
the underlying program.
Lotus Development Corp. v. Borland Intl, Inc.
19
Facts: P sued D because copying the look and feel of its program rather
than the underlying code. Lotuss has a spreadsheet program for users to
control via a series of menu commands. D introduced their own program
which had a virtually identical copy of the command hierarchy. D creates a
program that mimics the look but not the text/code. Lotus is trying to
protect the look/feel/menu command hierarchy.
Issue: Are the aspects of the user interface that was copied an
unprotectable method of operation?
Rule: A computer menu command hierarchy is not copyrightable subject matter. A
menu command hierarchy is an uncopyrightable method of operation it provides
the means by which users control and operate a programs functional capabilities. It
has a mechanical utility, an instrumental role, in accomplishing the world's work
Holding:
The look/feel/menu command hierarchy is not copyrightable since D didn't
copy any of the original code (just the arrangement of the words on these
menus).
Just as it would be impossible to operate a VCR without buttons, it would be
impossible to operate a Lotus 1-2-3 without employing its menu command
hierarchy.
Courts Reasoning:
1. A method of operation is the means by which a user operates
something
2. The menu command structure is how a user operates 1-2-3
3. Therefore, the command structure is a method of operation
Applied art: when a design has artistic features but are incorporated into a
utilitarian object.
If you allow a copyright on a utilitarian object, then the copyright is
substituting as a patent. (Hypo: design a new wrench that has some
innovations shaped uniquely and works better. Not novel enough to get
patentable or too expensive --> call it a work of art and register it as a
sculpture under copyright? Don't want to allow people to do this/get around
the rules of patent protection!).
Methodology for Infringement:
Figure out what the Copyright Figure out whether defendant Whether the stuff that
Protects
copied plaintiffs works
defendant copied is
protected
Pictorial, Graphic and Sculptural Works

o
20
Definition of pictorial, graphic, and sculptural works in 101: Such works

shall include works of artistic craftsmanship insofar as their form but not their
mechanical or utilitarian aspects are concerned; the design of a useful article,
as defined in this section, shall be considered a pictorial, graphic, or

sculptural work only if, and only to the extent that, such design incorporates
pictorial, graphic, or sculptural features that can be identified separately
from, and are capable of existing independently of, the utilitarian aspects
of the article.
PGS works are copyrightable except to the extent that they are
useful articles: protectable to the extent that it has distinguishable features
capable of protection separate from the useful part. ( 113). Visual art
divided into two categories:
Ornamental: drawings and photographs are protectable. ( 101(1))
Utilitarian: includes industrial design, which is protectable only to the
extent that the design has elements that are separable and capable of
protection. ( 101(A)). When something is useful, want people to have to go
through the patent system for protection. If it is not useful in a patent sense
then want to be able to protect the creativity.
Mazer v. Stein (1954) (pg 176)
Facts: Stein obtained a copyright on a statuette which was put into mass
production and used as a base for table lamps. Mazer began producing duplicate
statuettes for use in table lamps.
Holding:
An article having a utilitarian application may be copyrighted.
An item can fall in both the copyright and patent area.
The copyright act includes statutes the statuette is copyrightable, this
being so, their industrial application did not make Mazers copying any less
an infringing act.
If we have an otherwise copyrightable work of art, and if an author wants to
publish it as a useful object, it doesnt automatically make it not
copyrightable.
Basically, this case said that just because a thing has a utilitarian use (like
being a lamp or a doorknocker), that usefulness doesn't automatically
preclude copyright protection of the artistic/aesthetic parts of the thing.
Ct. ruling: There is a valid copyright here, because the decorative functions
of the lamp base are independent enough from the functional aspects.
Galiano v. Harrah's Operating Company, Inc. (2005) (pg 181)

Facts: Galiano designed clothes for Harrah's, Harrah's used the designs after
the agreement ended.
21
Issue: Is the design of a uniform copyrightable/within the scope of

copyright? May clothing be a pictorial/graphic/sculptural work?
Rule:
Galiano separability test: whether the useful article would still be
marketable to some significant segment of the community simply because of
its aesthetic qualities
pivot point separability test: whether the design elements can be
identified as reflecting the designers' artistic judgment exercised
independently of functional influence. (Court declines to use this)
Holding:
P makes no showing that its designs would be marketable independently of
their utilitarian function as casino uniforms.
Court looks at whether clothing is PGS
If it's a useful article, must do separability determination.
Ct: It is useful article because it clothes people.
Are the creative elements and industrial design features separable?
Some approaches:
whether the artistic features are primary or secondary (e.g. look at the
wrench)
whether the article stimulates in the mind of the beholder a concept that's
separate from the concept evoked by its utilitarian function
whether the design was animated by functional considerations (whether the
placement of the buttons on the uniform had a functional purpose or was just
a design choice)
Functionality test (applies to architectural works)
First, an architectural work should be examined to determine whether there
are original design elements present, including overall shape and interior
structure. . . . If the design elements are not functionally required,
the work is protectable without regard to physical or conceptual
separability. [192]
Separability: cant tell if an element is copyrightable unless it can be
separated from the useful article and exist independently of the useful
article.
Policy: copyright office will deny copyright registration to a design whenever
the effect of copyright would be to tender a monopoly to manufacture of a
useful article.
If there are elements that can be protected without giving exclusive rights to
the useful part, copyright office will register those parts.
Line drawing limited by imagination of the judge. Court looks for physical
separation of the function from the art.
22
a. Clothing: designs and patterns designs on fabric are copyrightable as

long as show originality. The clothing itself is not copyrightable.
b. Masks: protectable as sculpture. Costumes for kids protectable as long
as dont function as clothing.
IV. Proving infringement of the reproduction right

(Statutory References Section 106(1); 501)
The Reproduction Right
Section 106(1) grants to the copyright owner the exclusive right ''to reproduce the
copyrighted work in copies or phonorecords.''
Phonorecords are defined as ''material objects in which sounds, other than
those accompanying a motion picture or other audiovisual work, are fixed by
any method now known or later developed.
Copies are defined as ''material objects, other than phonorecords, in which a
work is fixed by any method now known or later developed.''
Thus, in order to infringe the reproduction right, the defendant must embody
the plaintiff's work in a ''material object.'' Therefore, the performance or oral
rendition of a work does not constitute a reproduction thereof.
The Substantially Similar Copy
-How you tell that a given work is an infringing copy of a different work
1. Access +
2. Substantial Similarity +
3. Substantial Similarity of protected expression
Proving Infringement: COPYING AS A FACTUAL

MATTER
Arnstein v. Porter (pg 197)
Facts:
Arnstein was a songwriter who had published a number of popular songs. He
claimed that another songwriter named Porter had plagiarized some of his
songs. He sued for copyright infringement.
Arnstein argued that Porter had 'stooges' following Arnstein around and had
even ransacked his apartment and stole some of his unpublished songs!
Porter argued that he had never heard any of Arnstein's songs and that he
came up with his songs himself (aka independent creation).
The Trial Court found for Porter in summary judgment. Arnstein appealed.
Issue: Have to determine whether Porters songs are similar to Arnsteins.
23
Holding:
Two tests:
Ordinary Listener Test: If the songs sound alike, then it could hurt the
market for the first song (one would buy the similar song in place of the
original)
Expert Analysis: Are the melodic, rhythmic elements similar, more similar
than usual, similar in ways that make it unlikely that similarities are
coincidental
-Look at individual similarities then might miss the overall gestalt of the song.
1)
2)
3)
First Question: Copying in fact?

o For this expert analysis are very useful
They know how unusual similar portions are
Then try to figure out if that copying is improper appropriation.
o Or You can ask the jury to compare the two songs and ask for a lay
listener response.
Threshold question asked to jury if the songs are similar enough
to infer copying.
Some copying is ok, but too much is theft
Rather than relying on battle of experts you can rely on opinion of the
community
o Should we pay attention to the two markets? Intent?
o Arnstein Test has been adopted in one form or another by every court
1) Access
a. Dissection to figure out whether the similarities are probative of
copying
i. Sources, constraints in genre etc.
Substantial Similarity
Substantial similarity of protected expression
a. Want to get rid of unprotected stuff to compare the protected stuff
The plaintiff must show (1) that the defendant copied from his work, and (2)
that the copying was improper, meaning that what was copied was both too
much and the wrong kind of material
Plaintiff must prove:
1. that defendant copied from plaintiffs copyrighted work
aka factual copying
2. that the copying . . . went so far as to constitute improper
appropriation
aka illicit copying or substantial similarity [198]
Proving factual copying
1) Copying as a factual matter
May be proven: directly; via access + probative similarity; or via striking
similarity
24
Analysis and expert testimony permissible

Evidence of access here: many copies of the music out there
2) Copying as a legal matter (illicit copying)
May consist of: (1) literal copying; (2) comprehensive nonliteral similarity; or
(3) fragmented literal similarity
No dissection or expert testimony permissible (except on likely audience
reaction)
Because the expert would be giving a legal conclusion which we do not allow
If the works were so obviously different, the Ct. could direct a verdict/SJ in
favor of D, but that's not the case here. There are some similarities that
aren't trifling. There's enough so it should go to the jury.
Clark dissent: There's very little similarity between these 2 songs; not
enough probative similarity to go to the jury, nor is there too much copying
to go to the jury.
Collapsing the two inquiries
In some cases, the similarities between the plaintiffs and defendants work
are so extensive and striking as, without more, both to justify an inference of
copying and to prove improper appropriation. [199]
Jones v. Blige (2009) (pg 207)
Facts:
P sued Blige (D) for infringement/copying his song. P sent the song demo to
a company and there was evidence the song was opened up/listened to, so P
said that D had access to it.
D testified that they never received the song. There was no evidence that
the middle agent passed the song on to D.
3rd party theory (both D and P had some dealings w/the 3rd party and some
case law shows that this is enough evidence for access): D dealt with
Universal in some aspects, but they didn't deal with the 3rd party at all.
P could win without access (by showing striking similarity).
Holding:
Ct: The songs are not so strikingly similar as to preclude the possibility of
independent creation.
Maybe if it were a smaller corporation, there'd be stronger evidence of
access, but Universal is so large...it doesn't make sense that everyone has
access to everyone's stuff.
A defendant must first have had access to a copyrighted work to commit
copyright infringement.
Access is "essentially hearing or having a reasonable opportunity to hear the
plaintiff's work and thus having the opportunity to copy."
Here, even though a copy of "Party Ain't Crunk" was delivered to Universal,
the plaintiff's couldn't prove that the defendant song creators had access.
25
The plaintiff's tried to establish that it was reasonable that one of the song
creators could have gotten a copy of the demo while it was at Universal, but
it couldn't meet the burden of proof here. The plaintiffs even tried to
establish access by virtue of the "corporate receipt" doctrine, but the court
refused to adopt this doctrine. "The plaintiffs... have set forth no evidence
tending to show that a reasonable possibility that their work made its way
from the plaintiffs to the creators of 'Family Affair.'"
Furthermore, the Court reasoned that Universal had submitted ample
evidence to show that there was an independent creation because it showed
that "Family Affair" was created before Universal got a copy of "Party Ain't
Crunk."
Criticism / Analysis:
The Court seems to be setting a high bar here in terms of what the plaintiff
must prove. The Court says that it's "cautious of making it overly difficult for
plaintiffs to establish access where the chain of possession of a work within a
corporation is difficult to prove," but nothing it says in this opinion seems to
indicate that it's giving any hope to a plaintiff in White's situation. One would
wonder how someone in his situation could possibly make a showing that
meets the standards of what the court's laying out here without the
Corporate Receipt doctrine.
Keep in mind, this is summary judgment here. The court seems to shirk the
ideas laid out beforehand that defendants should seldom be granted
summary judgment in copyright infringement cases.
Bright Tunes Music Corp. v. Harrisongs Music, Ltd. (1976) (pg 215)
Facts:
George Harrison wrote a song My Sweet Lord. George Harrisons song was
similar to a top 40 hit in Europe and America. P claims he plagiarized it from
their song "He's So Fine".
Rule: Subconscious copying can be an act of infringement.
Holding:
Court allows strong evidence of access to compensate for weak
evidence of similarity.
Plagiarism vs. copyright: Plagiarism = copying someone's work and
presenting it as your own. You can have plagiarism without copyright
infringement (if you copy it when it's in the public domain without attributing
the source).
Analysis of similarity: four repetitions of motif A followed by four repetitions
of B (highly unique pattern), and in the 2nd use of motif B, there's an
identical grace note inserted. Also, the harmonies are identical.
26
Access analysis? "He's so Fine" was a big hit and well-known. There was a
very reasonable possibility that he heard the song.
There's enough to show access and it seems plausible.
Do we think these songs are "strikingly similar"?
Maybe overstated....there are some similarities but the total look/feel don't
sound all that much alike. The songs are pretty simple and short; there are
bound to be some similarities.
Odd/surprising about this case: nobody thinks that Harrison consciously
copied this. The judge thinks that the copying was subconscious. However,
he says that it's the very same song and he had access to it, so this is
infringement under the law.
All creators build on what has come before...this may inhibit the creative
process. Is he supposed to think through all the music he knows to make
sure he's not copying anything in the future?
Since all the songs are on the web, does that mean there's always access?
No - maybe depends on the popularity of the song/likelihood that it's heard
(depends on particular facts/context).
Rationale: Although defendant had not plagiarized the song intentionally,
composer's subconscious mind remembered that a similar song composed
earlier had appealed to the audience. His conscious mind did not remember
that the composition had already been produced. So, even though
subconsciously accomplished, composition was infringement of copyright.
Price v. Fox Entertainment Group, Inc. (2007) (pg 222)
P is suing Fox, saying they ripped "Dodgeball" off of their screenplay.
Procedural posture: 1) D: we should win because there's no striking similarity
between the two as a matter of law. 2) Even if there is striking similarity, D
seeks to preclude testimony of P's expert
Rule: Various similarities exist, but there are sufficient dissimilarities so it's
not "striking similarity"
(Rothchild) Court shouldn't be focusing on the differences; it should be
focusing on the similarities and see if one of them must have been copied
from the other.
Proving Infringement: Improper Appropriation

Gottlieb Development LLC v. Paramount Pictures Corp. (2008) (pg
231)
27
Facts:
P sues D b/c they used the "Silver Slugger" pinball machine in the movie
"What Women Want". [The case was dismissed pursuant to FRCP 12(b)(6)].
The pinball machine was in the background, out of focus.
Holding:
Is there copying as a factual matter? Court: yes (no arguing that the
machine was there)
Is it de minimus/trivial? (Did the pinball machine have a substantial part in
the movie?) It is de minimus.
Applicable legal standards: P must show - 1) it was protected
expression in the earlier work that was copied; 2) the amount copied is
more than de minimus.
To determine substantial similarity, court must decide whether the average
observer would recognize the challenged material as having been copied
from the copyrighted work.
There's a difference between factual and actionable copying.
They look at observability, length of time, focus, lighting, camera angles,
and prominence.
Here: the scene in question is only 3.5 min; the machine appears
sporadically, no more than a few seconds at a time. More importantly, it's
always in the background and never appears by itself or in a close-up. It's
never mentioned and plays no role in the plot.
Dist. Ringgold case (use of copyrighted poster in a tv episode): sometimes
the poster appeared at the center of the screen so it was plainly visible.
There was also a qualitative connection between the poster and the show
(actually used in the plot).
The average lay observer wouldn't be able to discern any distinctive
elements of Gottlieb's design.
(You would think the manufacturer would be happy about this instead of
suing, for getting free advertising in the movie...)
p.237 n.1: Sometimes the average audience is not the lay observer but
someone with specialized skills (e.g. computer programs or music).
To determine whether the quantitative threshold of substantial similarity is
met in cases involving visual works, courts consider the extent to which the
copyrighted work is copied in the allegedly infringing work. The
observability of the copyrighted work is critical, and courts will consider the
length of time the copyrighted work is observable as well as factors such
as focus, lighting, camera angles, and prominence. [234]
Literal and Non-literal Copying

Allen v. Scholastic Inc. (2011) (pg 240)
28
Facts: P claims that J.K. Rowling copied his short book "The Adventures of
Willy the Wizard" in her "Goblet of Fire" book.
Rule/Holding: We have to look at only the protectable elements (total concept and
feel test)
Reasoning:
The court conducted the ordinary observer test which asks whether an
average lay observer would recognize the alleged copy as having been
appropriated from the copyrighted work.
o The court explained that where the allegedly infringing work contains
both protectable and non-protectable elements, the usual ordinary
observer test becomes more discerning, and requires the court to
attempt to extract the unprotectable elements from consideration and
ask whether the protectable elements, standing alone, are
substantially similar.
Applying the ordinary observer test to the protectable elements in each
book, the court compared the total concept and feel, theme, characters, plot,
sequence, pace and setting of the works.
o The court held that, because the works at issue are primarily created
for children, the total concept and feel of the works - rather than their
plot and character development - is the most important factor for
purposes of establishing copyright infringement.
o According to the court, the contrast between the total concept and
feel of the works is so stark that any serious comparison of the two
strains credulity.
It was just a general story about a wizard. There was little similarity between
the plot and sequence of the books. The allegedly infringing plot features
were not protectable. The general theme of a wizard society is
unprotectable.
Boisson v. Banian, Ltd. (pg 253)

Facts:
P sued D over quilt designs. 6 rows by 5 columns with the alphabet. Many
colors and pictures on them. D even admitted that they used the quilts as a
basis for developing their own but they were dissimilar enough to not
constitute infringement.
Court acknowledges that use of the alphabet may not in itself provide a basis
for infringement b/c it's public domain.
Protectable elements: arrangement and shapes of the letters, colors chosen to

represent the letters/other parts of the quilt, the quilting patterns, the particular
icons chosen and their placement.
Ct is doing dissection and analysis while claiming they're looking at the
general aesthetic. (Rothchild): Doesn't seem too original...just letters of the
alphabet on a quilt with funny pictures.
29
Ct: Lower court said that the alphabet, formation of alphabet, and color were
in the public domain - This court says that was erroneous.
Arrangement of letters
Ps obtained valid copyright certificates and their layout required some
minimum degree of creativity (which is all that's required for copyright)
presumption that layout is original. So, Ds bear the burden of proof to show
the particular layout isn't original.
Color
P stated she picked the colors on a trial/error basis without referencing other
works. Choice of colors is protectable element.
Substantial similarity: ordinary observer vs. more discerning observer
since only some elements here are protected, the observer's inspection must
be more discerning (can't just be looking at overall aesthetic). The lower
court was correct in choosing that test, but their scope was too narrow.
Holding: The Appellate Court found that many elements of the quilt design like the
alphabet are not copyrightable. However, elements such as the layout and color
combinations are.
The Court found that the courts needed to consider the "total concept and
feel" of the two works.
Copying computer programs

Distinguishing Idea from Expression in Software
o It became settled law that both source and object code, whether for
operating systems or applications, are protected by copyright the same
limiting doctrines that apply to literary works generally also apply to
computer programs.
Computer Associates International, Inc. v. Altai, Inc.

Facts: Upon discovering that Altai may have appropriated parts of its Adapter
program, Computer Associates sued Altai for copyright infringement and trade
secret misappropriation.
Holding: To warrant a finding of copyright infringement, the protectable, non-literal
elements of one computer program must be substantially similar to those elements
in a second program. It is now well settled that the literal elements of computer
programs, their source and object code are subject to copyright protection. Altai
made sure that the literal elements of its revamped Oscar program were no longer
substantially similar to the literal elements of CAs Adapter.
o Basically, this case said that what the courts need to do is to sift out
all elements of the allegedly infringed program which were ideas
dictated by efficiency or external factors, or taken from the public
domain in order to find "a core of protectable expression." At that
point the courts should focus on whether there are substantial
30
similarities between any elements within this core in the two

programs.
Court adopts 3-Part Test Requiring Abstraction, Filtration and Comparison
Abstraction: Retrace and
Filtration: Examine
Compare: Whether Altai
map each of the designers
structural components at
copied any aspect of the
steps in the opposite order in each level of abstraction and
protected expression, as well
which they were taken during take out the stuff that is not
as an assessment of copied
the programs creation
copyrightable.
portions importance with
need to be computer literate
respect to CAs overall
to perform this test.
*Uncopyrightable because
program. Find copyrightable
they merged, dictated by
stuff, and go thru defendants
efficiency, external factors,
program and see if it has
or came from public domain
been copied
Two Strengths of Analysis
1) Its an adaptation of a traditional copyright 2) It makes sense to computer process
analysis
professionals asking meaningful questions
to them.
Downfalls: Cumbersome; Dissecting programs
There is essentially only one way to express an idea, the idea and its
expression are inseparable and copyright is no bar to copying that
expression. In computer context, this means that when specific instructions,
even though previously copyrighted, are the only and essential means of
accomplishing a given task, their later use by another will not amount to
infringement.
V. Fair use
Top 12 things about fair use
1) Every time you do fair use analysis, you have to look at all 4 factors together
2) The 4 factors in sec. 107 are not exhaustive; you can consider other factors too
(Like good faith/bad faith in Harper v. Row)
3) When looking at character of use under 1st factor....look at whether 2nd user is
creating something new. If yes, then there's a greater chance of public good and
also less chance they'll be harming the original creator
4) When assessing character of use (commercial or not), sometimes court will look
at ultimate purpose of the use, but in other cases it will look at immediate purpose
of use (e.g. Princeton copyshop case...immediate use was to make money).
5) Works that are primarily expressive/creative get more protection against fair use
than works that are primarily factual. Also applies to published/unpublished.
6) Under 3rd factor (trying to figure out if too much of the original was taken), have
to keep in mind what's reasonable in relation to the purpose of the copying (better
justification of copying the good stuff if you're doing a parody...but satires you don't
have any justification for copying the good stuff). (e.g. Harper v. Row, they took the
heart of the material...not justifiable when it's just a verbatim, superceding
publication)
7) When looking at market effect under 4th factor, look at both actual and potential
uses/effects on market. Look at both uses of orig. work and derivative uses.
31
Consider potential/hypothetical uses if the orig. work is not published (copyright

owner has ability to prevent people from using their work even if they themselves
aren't using it). Consider what would be the case if the challenged use became
widespread (aggregate effect).
8) Only certain types of harm are cognizable. Harm that results from something like
a negative/critical review that turns people off is not cognizable under the 4th
factor.
9) The fact that the use is commercial doesn't necessarily mean there's a harm
under 4th factor. If the use is transformative, there might not be market harm
(Perfect 10 thumbnails case...thumbnails don't substitute for the full size image). If
it's mere duplication, the court will almost always find there's market harm
(exception: Sony case...Court found no market harm b/c of private home use).
10) Burden of proof is on the D in fair use cases b/c it's an affirmative defense.
11) Not everything that imitates something else is a parody (e.g. Dr. Seuss case.
Might be viewed instead as a satire or free-riding work).
12) If the copyright holder has set up a system for licensing fees, that makes a
much stronger case for market harm (they'll say this is how much money I lost b/c D
didn't take out a license).
Fair Use
most important limitation on exclusive rights of owner (we use fair use every
day by making copies w/o paying, e.g.). Fair use includes use by
reproduction/copying for purposes of criticism, comment, news reporting,
teaching, scholarship, or research...not an infringement.
Sec. 107: 4 factor test:

1) purpose/character of the use, commercial or nonprofit
a. Does the defendant have a good reason to use material? Whether
defendant added something that added value, or whether
defendant copied it without adding anything to it
b. Whether the new work merely supersedes the objects of the
original or adds something new: transformative
i. The more transformative the new work, the less significance
the other factors will have in weighing against fair use
2) nature of the copyrighted work:
a. If work is largely factual research, author probably meant for it to
be used, if its idea/system copyright protection is thinner. Whether
its a work that is appropriate for the use made.
b. More likely to weigh in favor of fair use in cases involving factual
works and less if the work is highly creative
3) amount/substantiality of the portion used in relation to the
copyrighted work as a whole:
a. A lot less may have no infringement, a lot more then a court might
find fair use. Quantitative and Qualitative, whether the important
part was used
4) effect of the use upon the potential market:
a. If its harmed the market a lot then the use probably wont be fair
use
b. Need to consider effect on actual and derivative markets
32
Examples of fair use from House Report: parody; copying by library to replace
part of a damaged item; reproduction in legislative or judicial reports;
incidental and fortuitous reproduction of a work in a scene of a news
broadcast.
3 situations where fair use is appropriate (policy level):

1 1) uses that a copyright owner would certainly agree to, at no charge
(it would be a waste of effort to have to seek consent);
2 2) Uses that the copyright owner would agree to, upon payment of a
fee (but the transaction costs of complying would discourage use);
3 3) Uses that the owner might not agree to, like parody or criticism (but
that copyright law wants nonetheless to promote)
Fair Use: Time-Shifting

Sony Corp. of America v. Universal City Studios, Inc. (pg 282)
Facts:
D manufacture and sell home video tape recorders
P own the copyrights on some of the television programs that are broadcast
on public airwaves
Some members of the general public use video tape recorders sold by D to
records some of these broadcasts, as well as large number of other
broadcasts
Issue: Whether the sale of petitioners copying equipment to the general public
violates any of the rights conferred upon respondents by the Copyright act?
Holding: The sale of Ds copying equipment to the general public does not violate
the right conferred upon respondents by the copyright act and is fair use. (The sale
of home time-shifting is fair use)
Reasoning:
If the recorder were to make copies for a commercial or profit-making
purpose, this use would be presumptively unfair
But time-shifting for private home use must be characterized as a
noncommercial activity, even though the use is not productive and has no
public benefit. So the fair use defense applies
Used the 4-factor test in sec. 107
The first factor requires that the commercial or nonprofit character of an
activity be weighed in any fair use decision
o If petitioners video tape recorders (VTR) were used to make copies for
a commercial or profit making purpose, such use would
presumptively be unfair
o District Court: time-shifting for private home use must be
33
characterized as a noncommercial, nonprofit activity

Time shifting merely enables viewers to see works
theyve been invited to witness in its entirety free of
charge - reproduction of that doesnt equate to unfair
use
Another factor: effect on the potential market
o The purpose of copyright is to create incentives for creative work
o Even copying for noncommercial purposes may impair the copyright
holders ability to obtain the rewards that Congress intended him to
have
o But a use that has no demonstrable effect upon the potential market
need not be prohibited in order to protect the authors incentive to
create.
o The prohibition of such noncommercial uses would merely inhibit
access to idea without any countervailing benefit
o A challenge to a noncommercial use of a copyrighted work requires
proof that either that the particular uses is harmful, or that if it should
become widespread, it would adversely affect the potential market for
the copyrighted work.
Actual present harm need not be shown
Nor is it necessary to show with certainty that future harm will
result
What is necessary is a showing by a preponderance of evidence
that some meaningful likelihood future harm exists.
If the intended use is for commercial gain, that likelihood must
be presumed
o If the intended use is for noncommercial purpose, the likelihood must
be demonstrated
On the question of potential future harm from time shifting
o District Court rejected the argument that people watching via VTR
would not be measured and so the ratings would suffer
District Court rejected the argument that live television or movie audiences
will decrease as more people watch time-shifting devices as an alternative
o However, there is no factual basis for the underlying presumption
Rejected respondents argument that time-shifting will reduce audiences for
telecast-reruns,
o However, given current market practices, this should aid plaintiffs
rather than harm them
Rejected argument that theater or film rental exhibition of a program will
suffer because of time-shifting recording of that program
o However, this argument lacks merit
District court concluded that Harm from time shifting is speculative
and at best minimal
Dissent:
Although courts have constructed lists of factors to be considered in determining
whether a particular use is fair, no fixed criteria have emerged by which that
determination can be made
34
The house and senate reports explain that section 107 does no more
than give statutory recognition to fair use doctrine;
o it was intended to restate the present judicial doctrine of fair use, not
to change, narrow, or enlarge it in any way.
The fair use doctrine permits works to be used for socially laudable purposes.
o A productive use, resulting in some added benefit to the public beyond
that produced by the first authors work...here its just for
entertainment and so doctrine of fair use shouldnt apply
Conclude, at least when the proposed use is an unproductive one, a copyright
owner need prove only a potential for harm to the market for or the value of the
copyrighted work
o Proof of actual harm or even probable harm, may be impossible in an
area where the effect of a new technology is speculative
Studios have identified a number of ways in which VTR recordings could damage
their copyrights
o VTR could reduce studios ability to market their works in movie
theaters and through the rental or sale of pre-recorded videotapes or
videodiscs
o It could reduce their rerun audience, and consequently the license fees
available to them for repeated showings
o Advertisers may be willing to only pay for live viewing audiences, if
they believe VTR viewers will delete commercials or if rating services
are unable to measure VTR use; if this is the case, VTR recording could
reduce the license fees the Studios are able to charge even for first-run
showing
District Courts analysis of harm, failed to consider the effect of VTR recording on
the potential market for or the value of the copyrighted work, as required by
107(4).
It is thus apparent from the record and from the findings of the District Court that
time-shifting does have a substantial adverse effect upon the potential market
for the studios copyrighted works.
o
Fair Use: Published v. Unpublished

Harper & Row, Publishers, Inc. v. Nation Enterprises (1985) (pg 296)
Facts:
o President Ford wrote a book about Watergate and sold it to Harper & Row.
People were so excited to read the book that Harper & Row was able to sell
the exclusive right to print an excerpt to Time Magazine for $25k.
o Somehow, a guy named Navasky who owned a magazine called The Nation
got an unauthorized copy of the excerpt and published it in his magazine.
o Time canceled their deal with Harper & Row.
o Harper & Row sued Navasky for copyright infringement.
Preliminary issues:
o Purposes of the suit was to establish that fair use didnt apply to works that
were unpublished
o published vs. unpublished works - why is use less fair if it's an unpublished
work?
35
o
o
o
o
Publication of an author's expression before he's authorized its

dissemination seriously infringes the author's right to decide
when/whether it'll be made public.
Can undercut authors right to make money from the work
Author has privacy rights in a manuscript
Author may want to revise it etc.
But may want works that are unpublished released
Public needs access to this stuff J.S. Salingers letters,
we want access to them
Holding:
o Fair use traditionally has not been recognized as a defense to charges of
copying from an authors yet unpublished works
o D went beyond simply reporting uncopyrightable information and sought to
exploit the headline value of the infringement, which violated the authors
right to control first publication
First Amendment implications:
o Navasky argued that the 1st Amendment protected him because Ford was a
public figure. However, the Court found that if you bought Navasky's logic
there would be no way for a public figure to hold a copyright, and that wasn't
good for public discourse
o Ct. of Appeals held in favor of Nation because they published memoirs
of a President discussing his official actions, core first amendment
speech that should be granted fair use.
o The S. Ct. disagreed by noting that the idea/expression distinction
removes any 1st Amend conflict since copyright protects his expression,
Fords right to choose not to speak or to speak only in the forum of his
choosing.
Fair Use Factors: the preamble notes that fair use applies to news reporting, which
is what this is.
1. purpose of the use: news reporting
a. Ct: just b/c it's one of those categories, that's not dispositive...need to
look at other factors too.
b. Commercial use? Yes, designed to sell magazines.
c. Every commercial use = presumptively an unfair exploitation
[Campbell case negates this].
d. D is trying to supplant the prerogative of the copyright owner both to
license it to TIME magazine and also to publish the book.
e. D's purpose was to get this out before TIME got its magazine out.
[Good faith is not in sec.107 at all...Courts can take into consideration
other considerations aside from what's in sec. 107. It says "shall
include"...but not an all-inclusive list).
2. Nature of the copyrighted work: Unpublished (cuts against fair use) and
non-fiction (less scope for fair use if it's a factual use b/c facts are more
important)
3. Amt/substantiality of the portion used: only 13% was used, but what
they took was the "heart of the book" (most important part)
4. Effect on the market/ potential market (ALWAYS the most important
factor!!! Can't make it dispositive b/c they must apply all 4 factors, but it's
36
the most significant one): To negate fair use, one needs only to show that if
the challenged use should become widespread, it would adversely affect the
POTENTIAL market for the copyrighted work (dissent from Sony case above).
Brennan Dissent:
o Factual nature of the work/how it plays into analysis: Seems like Court is
trying to protect the author's labor/hard work (collecting the facts) rather
than the expression of the book, and copyright law doesn't protect
that...they're hindering the dissemination of factual matter.
o Argues that the Nation took unprotectable facts and very little
expression. This is not copyright infringement. Majority over
compensating for the taking of valuable material. Mucking up
copyright law by unreasonably narrowing the fair use privilege.
1. Commercial use/pre publication fair use presumptions are
unwarranted, inconsistent with the statute, and unfaithful to congressional
intent.
2. Suggest majority could only have reached their decision by ignoring the
idea/expression distinction and blaming D for taking unprotected facts.
3. Brennan proved right in history: OConnor opinion in Feist cites this
dissent for support.
Fair Use: Parodies

The Application of the Fair Use Doctrine to the Creation of New Works
1. Parody:
a. Application of the fair use factors:
(1) Purpose of Ds use: parody, a humorous form of criticism,
commercial rather than non-profit/educational.
(2) Nature of Ps work: tends to be well known and popular or else not
appropriate.
(3) Amount Taken: tends to focus on this factor. If take a whole lot,
not parody, just imitation. If take too little, no one will know what
you are parodying. Courts try to determine if D took more than
necessary.
(4) Effect on the Market: parody will never fulfill demand for the
original, but it may tarnish the original.
o
Different ways a parody can create market or derivative

harm:
o
o
37
1) substitution and
2) changing audience's view of the original (if it's a
criticism, i.e.)...copyright doesn't protect the latter (too

bad so sad). Otherwise, a copyright owner could
prohibit critical reviews/parodies.
3) harm to the market for derivative works (other
people deterred from making a parody of this song), in
the same genre (rap music here).
Parody has to comment on the thing that its parodying (and thus be
transformative)
o The parody must be able to "conjure up" at least enough of that original to
make it recognizable...the work's most distinctive/memorable features that
the parodist can be sure the audience will know.
o And that is not true of a satire, which is treated differently,
o because Satire has to stand on its own two feet (See Dr. Seuss
Enterprises, where the court rejected a fair use defense because it was
not a parody commenting on the original work. It was more like a
satire but it was too similar (didnt stand on its own two feet)).
Campbell v. Acuff-Rose Music, Inc. (1994) (pg 313)

Facts: dispute over 2 Live Crews spoof of Roy Orbisons Pretty Woman. Roy Orbison
wrote Oh, Pretty Woman and copyrighted it. 2 Live Crew wrote Pretty Woman,
which sought to parodied the original through comic lyrics. They offered to pay a
fee, were refused, and attributed credit anyway.
o Trial court said that this was fair use
o 6th Circuit said this was a commercial parody, and commercial uses are
presumptively unfair
Holding: Supreme Court emphasized that there was no presumption against
commercial fair use. Took back holding in Harper & Row.
1. Purpose of Ds use: fair use available for commercial parody, but first have
to establish that the second work is a parody of the first. Majority finds that
this work has enough of a critical element to qualify as parody,
transformative of the first work.
a. If its transformative, not only is the second user adding something to
society, but it is also less likely that it will serve as a substitute for the
work and thus it will not interfere with the rights of the original
copyright owner
i. The more transformative of the work, the less significant will be
the other factors
b. Dont want judges in the business of judging humor: court
should limit itself to asking if the parodic character may be reasonably
received.
c. There is enough criticism in these lyrics to qualify.
38
2. Nature of Ps work: Purely entertainment material, meant to be consumed

to make money.
a. Implied consent weak in these circumstances: the fact that the song
was popular would normally count against fair use.
b. Forced consent rationale: makes sense here because most parodies
target works that dont want to be made fun of.
3. Amount Taken: Parody will normally take qualitatively important parts.
Have to look not just at what D took but what he added. Here lyrics
transformed the first song, but underlying music was a closer questions,
remanded for determination.
4. Effect on value of the copyrighted work: often seen as the most

important factor.
(a) The greater the harm on Ps market, the less likely he is to
authorize the use.
(b) Circular:
(i) The fact that D used Ps work proves there is a market of
some sort to be exploited.
(ii) If decide that a license is required, then there is an effect on
the market.
(iii)If Ds use is commercial then of course there is a market
(c) Souter removes presumption of harm from commercial
use. Fair use is an affirmative defense, burden of proof is on D
to provide evidence. While P must introduce evidence that
markets actually exist.
(i) First time actual evidence of damage has been required.
(ii) Noting that criticism as damage is not cognizable.
(iii)Copyright doesnt protect the market for licensed critical uses:
assumes the owner is not likely to license these uses. The
fact that other parodist get licenses, does not require all
others to take these licenses.
Educational Use is not necessarily Fair Use: Accordingly, the mere fact that a
use is educational and not for profit does not insulate it from a finding of
infringement, any more than the commercial character of a use bars a finding of
fairness. [ Campbell, 318]
39
Fair Use: New Technologies

Princeton University Press v. MI Document Svcs, Inc. (1996) (en banc) (pg
331)
Facts:
o Professors at U. Michigan would compile a bunch of articles that they wanted
students to read in class, and give them to MDS. MDS would make copies of
these articles, bund them up, and sell them to students for a profit.
o A bunch of publishers, including Princeton, sued MDS for copyright
infringement.
o MDS argued that the copying of scholarly articles for academic purposes was
protected by the fair use provision (17 U.S.C. 107).
o The publishers argued that what MDS was doing was not fair use, because
(unlike the professors) MDS was making a profit on the copies. In addition,
there existed a mechanism called the Copyright Clearance Center (CCC)
where MDS could buy licenses to make copies.
o The other copy stores in the area all bought licenses, so MDS was making an
unfair profit by not doing likewise.
o The fact that some copyshops pay licensing fees doesnt effect the
analysis anymore than the fact that some parodist get licenses.
o The Trial Court said that it was not fair use and found for the publishers. MDS
appealed.
o The Appellate Court affirmed.
Holding: The Appellate Court found that based on 107 there is a four-factor test
for determining if something counts as fair use:
o Is the purpose and character of the use commercial or non-commercial?
o The Court found that the articles are noncommercial in nature.
However, MDS was using the articles for a commercial use. Nor had
MDS done anything to transform the original works.
o The nature of the copyrighted work.
o The amount of the original work used.
o The effect on the potential market.
o The Court found that the publishers were making about $500k a year
via the CCC. If MDS's use were found to be non-infringing, then the
publishers would lose that market.
o MDS argued that most academic writers aren't paid for their work and publish
in academic journals just to get the fame (and for the public good).
o However, the Court noted that it was the publishers who held the
copyrights and it was the publishers' rights that were at issue, not the
original authors.
Is student copying fair use?
1) For educational purposes, but done for own convenience or to save money
probably not
2) Nature of the work is factual and informative which opens it to broad
copying under fair use, unless its an item in an anthology, rather than a
40
law review article where the entire market is predicated on teachers

selling students books
3) Copying often involves a great deal, chapters and whole law review
articles more than Dr. Chickerin
4) Effect on market, depends on what you are copying.
-If anthology, if what you were copying significant parts of the casebook,
but widespread copying would destroy the market for textbooks since
there is no secondary market for it
-If publishers introduced smart copy-card
-If you can argue the first factor you may be able to shove a court to fit the
other factors
Perfect 10, Inc. v. Amazon.com, Inc. (2007)
Google image search: user enters image search request; Google delivers search
results page: text, and graphics instructions (URL where to find the graphics);
browser sends automatic request for search results/thumbnails; Google delivers
thumbnails. Then it leads you to the actual page/full size picture.
Perfect 10 has pics of nude woman and they charge money for people to see them.
Google had indexed those images.
In the absence of an excusing factor, Google would be infringing.
Courts Analysis:
1.purpose/character of use: emphasis that this is transformative. Image may
have been created originally to serve as entertainment, aesthetic, or informative
function; the search engine transforms image into a pointer directing user to a
source of info (Even making an exact copy of a work may be transformative as long
as the copy serves a different function than the original work).
o Commercial criterion: Dist. Ct. said that Google's use of thumbnails directed
users to AdSense partners containing infringing content. But, Dist. Ct. didn't
determine that this commercial element was significant.
2. Right of first publication: not relevant anymore b/c Perfect 10 has already put
this material out on the internet for its paid subscribers. They're no longer entitled
to the enhanced protection available for an unpublished work (so this factor only
weighs slightly in favor of Perfect 10).
3. Amount/substantiality: How much are they using? The whole thing! But it was
necessary to copy the entire image so people can identify it.
4. Market interference: POTENTIAL harm remains hypothetical (Rothchild: doesn't
seem to be consistent w/Supreme Ct's analysis in the Campbell case which takes
potential harm into consideration). Dist. Ct. didn't find that Google users have
downloaded thumbnail images for cell phone use.
Fair Use: Reverse Engineering

Sega Enterprises, Ltd. v. Accolade, Inc. (pg 357) (1992)
41
Facts: dispute over Accolades reverse engineering of the Sega console to create
interoperable, competing video games. Not possible to reverse engineer software
without making copies.
D wants to make games compatible with Sega Genesis. They had to do

reverse engineering of Sega's video game programs to discover the req's for
compatibility w/the Genesis console. Then they loaded the disassembled
code back into a computer and reworked it to make Sega-compatible games.
o Accolade copied Segas software solely in order to discover the
functional requirements for compatibility with the Genesis
console aspects of Segas programs that are not protected by
copyright. [360]
o Sega didn't like this b/c they get licensing fees from people making games for
them.
o Accolade considered entering into licensing agreement w/Sega, but decided
not to b/c of the requirement that Sega be the exclusive manufacturer of all
games produced by Accolade.
Holding: The Court held that intermediate copying for reverse engineering
purposes, to discover the underlying program, is not infringing. What Accolade did
was Fair Use.
o
Dont get to a fair use analysis unless first prove infringement. Issue
is whether Accolade ought to be able to get around Segas initialization code.
o 117 Limits on exclusive rights: Computer Programs: allows
Accolade to make back-up copies and adapt the programs to use in a
computer, but this doesnt cover what they are doing here. Here
they are translating the Sega program. They didnt need to make
copies to use the Sega machine.
o Using decompiler program to figure out Segas source code, this
creates a copy. Then they print this out, another copy. These are
unauthorized copies and derivative works.
o Revised games written for other machines to include the Sega
initialization code: this probably OK. Under Borland the
initialization string is an uncopyrightable method of operation, since it
is the only way to turn on the Sega Genesis console.
Fair Use Analysis:
o Is the purpose and character of the use commercial or non-commercial?
-Blatantly commercial
o The Court found that while Accolade ultimately intended to make
money selling video games, the direct purpose in copying Sega's code
was simply to study the functional requirements of the console's
42
compatibility.
In addition, Accolade's work helped the publics because lots of
companies started using their information to make exciting, creative
video games.
Copying is intermediate to understand underlying social benefits
The nature of the copyrighted work. - Entertainment not factual

o The Court found that there were aspects of Sega's code that were
unprotected by copyright. But there was no way to examine them
without also copying the copyrighted parts.
o The Court noted that if someone couldn't look at the code to see the
uncopyrighted parts, then Sega would have a de facto monopoly on
things they couldn't legitimately get a copyright on
o Contains functional aspects that cant be used without copying
The amount of the original work used.

o The Court found that there was no other way Accolade could have
learned about the functionality of the console without copying as much
as they did copy. While they did copy the entire code, that didn't mean
much because the final product (the video games) did not contain any
infringing material.
The effect on the potential market.- If this is widespread then no one would
buy licenses
o The Court found that Accolade's work did not stop people from buying
Sega's video games. Accolade's games could legitimately compete in
the marketplace with Sega's games, which might reduce Sega's sales.
However, this factor wasn't meant to be applied to competition like
that.
o For example, if a company made Pac-man and another company made
a Pac-man knock off, people who bought the knock off wouldn't buy the
original because they already had essentially the same game.
However, if one company sold Pac-man and another company sold
Space Invaders, some people would buy both, and people who only
bought one would pick the one they thought was more fun. No one
would say, "I don't need to buy Pac-man since I already have Space
Invaders."
Based on their balancing of the four factors, the Court found that Accolade's
copying was protected by fair use.
A. Judge Reinhardt- Bad behavior by copyright owner: attempt to monopolize
the market by making it impossible for others to compete runs counter to the
statutory purpose of promoting creative expression...
B. (Rothchild:) example of 1949 computer...you can figure out how it works by
disassembling it physically and looking at the gears. With current computer
code though, you can't see that just by looking at it. There has to be some
copying involved).
43
1201 Analysis: legitimate to make copies for reverse engineering if trying

to get at underlying unprotectible facts. Copies made in the course of doing
this are OK. Constitutionality of 1201 is questionable.
Sony Computer Entertainment, Inc. v. Connectix Corp (pg 364 note

3)
-Should this have come out a different way?
Facts:
1. Sony made video game consoles and licensed the rights to third-party
video game developers to make games for their console.
2. The video games were designed to only work with Sony's console.
3. Connectix made an 'emulator' program that allowed people to play the
video games on a computer.
4. Connectix got a Sony console, reverse engineered how the code on the
computer chips worked, and then wrote a computer program that would
do the same thing as Sony's code.
5. Sony sued Connectix for copyright infringement for copying the code on
their computer chips.
6. Connectix argued that reverse engineering was protected by the fair use
provision (17 U.S.C. 107).
7. The Trial Court found for Sony. Connectix appealed.
8. The Appellate Court reversed.
5
Analysis:
The Appellate Court found that based on 107 there is a four-factor test for
determining if something counts as fair use:
o Is the purpose and character of the use commercial or noncommercial?
The Court found that Connectix's work was 'moderately
transformative' because it let people play games on a platform
they couldn't otherwise use.
The Court found that although Connectix's ultimate purpose was
selling things, the direct purpose in copying Sony's code was just
to understand how they worked.
o The nature of the copyrighted work.
The Court found there were unprotectable elements within
Sony's chips that could only be protected by a patent. Since
Sony had no patent, Connectix could use those elements. And
the only way to see those elements was to copy all of the code
on the chip.
o The amount of the original work used.
The Court found that Connectix did copy a substantial portion of
Sony's copyrighted elements. However, that didn't mean much
because the final product (the emulator) did not contain any
infringing material.
o The effect on the potential market.
44
The Court found that Connectix's emulator was a legitimate

competitor to Sony. Any loss that Sony suffered as a result of
this competition did not compel a finding of no fair use.
Based on their balancing of the four factors, the Court found that Connectix's
copying was protected by fair use.
-Courts have generally held that reverse engineering is fair use
-Reverse engineering in order to gain access to underlying material is ok
VI. Enforcement and secondary liability

Individual, Vicarious, and Contributory Liability
501: an infringer is anyone who violates the exclusive rights in
106, which includes the rights to do or to authorize. Infringers are those that
do or authorize the infringing act (direct liability), and anyone who
supervises the infringing act (vicarious).
Direct liability: imposed on a strict liability basis: doesnt matter if D
knew or why they infringed except in connection with a fair use analysis or
calculation of damages. D will be liable even if he believed what he was
doing was legal.
Secondary Liability - Go after someone who assisted/contributed to the
infringement but didn't actually do it.
o
Vicarious liability - 2 step test: 1) control/supervision over infringing

activity; 2) direct financial interest in such activities.
imposed on D who did nothing actionable, but had power

to stop infringement and stood to benefit from the
infringement. (Nightclub owners).
Contributory infringement: 1) Knowledge of the infringing activity;

2) some sort of contribution (induces, causes, or materially contributes
to the infringing conduct of another).
Note that Ds can be held both vicariously and contributorily liable.
o
Direct infringement
Cartoon Network LP, LLLP v. CSC Holdings, Inc. (2008) (not about
secondary liability but primary) (pg 369)
- Who makes the copies on the DVR?
- Dist. Ct. granted SJ for P
- App. Ct. reverses.
45
They refer to Religious Tech. Center v. Netcom, idea of "volitional

conduct" as pre-req for direct liability.
o Copyright = strict liability statute, but there should be some element of
volition/causation which is lacking where a D's system is merely used
to create a copy by a third party. (Can't hold somebody liable for a tort
unless they did it).
o In Netcom case, D didn't do it.
Does that make sense doctrinally? That somebody that sets up something
that can cause tortious harm to others isn't liable just because they didn't
directly do anything?
o This court says setting up an automated system and letting it run
doesn't equate to direct liability.
Analogy of DVR with VCR...in both cases, the person who actually presses the
button to record supplies the necessary element of volition.
Analogy of DVR with Kinkos...nobody would say that they are liable for direct
infringement for reproduction made by customers using their copiers
(Rothchild: pretty good analogy)
Manufacturer of device isn't doing any copying, just enabling others to do it
Contributory Infringement & Vicarious Liability :
Fonovisa, Inc. v. Cherry Auction, Inc. (1996) (pg 377) (Secondary Liability)
Cherry Auction = flea market, Fonovisa = Latin/Hispanic music company.
Vendors @ Cherry Auction were selling bootlegged copies of Fonovisa's
music at this swap meet. Cherry Auction didn't do anything about it, so
Fonovisa sued.
Vicarious liability - 2 step test: 1) control/supervision over infringing
activity; 2) direct financial interest in such activities. No knowledge
requirement! Enough that you have the ability to stop the infringement and
you're making money off of it. Also no employer/employee relationship
requirement.
Here: Cherry Auction did have financial interest. They collected a daily rental
fee by the infringing vendors; an admission fee from each customer; and
payments for parking, food, and other services.
If this is a direct financial interest, what would be an indirect financial interest?
Contributory infringement: 1) Knowledge of the infringing activity; 2) some sort
of contribution (induces, causes, or materially contributes to the infringing conduct
of another).
[P]roviding the site and facilities for known infringing activity is sufficient to
establish contributory liability. [382]
Here: Court says that Cherry Auction strived to provide a good environment
and market. Setting up the swap meet and giving them electricity/plumbing
is enough to be material contribution. Knowledge part: no question that
there was knowledge. In 1991, the Sheriff's Dept. raided the swap meet and
seized 38,000 copyrighted recordings. But how does Cherry Auction know
that there was still infringement going on in 1995 when the case was
brought? (Rothchild: not exactly clear how to look at the knowledge
requirement).
46
Secondary Liability in the Age of Dispersed Infringement (The age we live in

now) (pg 388)
Sony Corp. v. Universal City Studios rule for staple article of commerce
doctrine:
"The sale of copying equipment, like the sale of other articles of commerce,
does not constitute contributory infringement if the product is widely used for
legit, unobjectionable purposes. Indeed, it need merely be capable of
substantial non-infringing uses." (389)
The Sony court emphasized that the only contct between Sony and the users
of the Betamax that is disclosed by the record occurred at the moment of
sale.
o In this scenario- under both vicarious liability/contributory
infringement, manufacturers aren't liable (no control and no
knowledge, respectively).
When there is continuing contact between producers and users of a device,
producers have other opportunities to learn of infringing conduct, and it
becomes more complicated to determine when the knowledge element of
contributory liability is satisfied.
A&M Records v. Napster (pg 390):
Napster is capable of non-infringing uses but they still lose under Sony b/c
there was evidence they have the actual knowledge needed for
contributory negligence.
o Napster is providing the site/facilities needed for infringement as well.
Also found vicarious liable for infringement.
o Napster sold advertising which was displayed to users when they were
logged on to the Napster System; because its advertising sales
increased as more users used Napster more frequently, the court found
that it received a direct financial benefit from infringing activity.
o The court also found that Napster had both the right and ability to
control the infringement by blocking the exchange of files that had
been specifically identified as infringing.
Inducement:
MGM v. Grokster, Ltd. (2005)(pg 393)
Grokster distributed free software products allowing users to share electronic

files via P2P networks. The computers directly communicate with each other
and not through a central server.
Allegation by MGM that Grokster knowingly/intentionally distributed their
software to enable users to reproduce/distribute the copyrighted movies.
The Ds just put the software into the marketplace and didn't do anything else.
9th Circuit said that - under existing case law, there isn't the requisite
knowledge here.
2. Sup. Ct. said that Ct. App. misapplied Sony. Doesn't have to be specific
knowledge of infringement to be liable.
47
3. One infringes contributorily by intentionally inducing or encouraging direct

infringement, see [Gershwin], and infringes vicariously by profiting from
direct infringement while declining to exercise a right to stop or limit it . . . .
[397]
9th cir misunderstanding of the sony rule: they believed that knowledge of
infringement was enough to find contributory liability, but that is not the case any
more. You need more than mere knowledge.
Meaning of the Sony rule: If an article is good for nothing else but infringement,
there's no legit public interest in its unlicensed availability, and there's no injustice
in presuming an intent to infringe. Conversely, if an item has substantial lawful and
unlawful uses, liability is limited to cases of more acute fault than mere
understanding that some of the products will be misused. (Knowledge would not be
enough in the latter case. Need something more to impose liability).
"Inducement" rule: "One who distributes a device with the object of promoting its
use to infringe copyright, as shown by the clear expression/other affirmative steps
taken to foster infringement, is liable for the resulting acts of infringement by 3rd
parties." (400)
What is not inducement: [M]ere knowledge of infringing potential or of actual
infringing uses would not be enough here to subject a distributor to liability. Nor
would ordinary acts incident to product distribution, such as offering customers
technical support or product updates, support liability in themselves. [400]
3 pieces of evidence of inducement: 1) each company showed itself to be
aiming to satisfy a known source of demand for copyright infringement (i.e. former
Napster users); 2) MGM showed neither D attempted to develop filtering tools to
diminish infringing activities using their software; 3) The Ds (Grokster and
StreamCast) make money by selling advertising space/directing ads to comp
screens. Their business model could only succeed with high-volume use, which
could only be infringement.
SAFE HARBOR
512 safe harbor and 1201 and circumvention of technological
protection measures
If you would otherwise be liable under existing rules but fit under the safe
harbor qualifications, no liability
Courts look to see if there is immunity first before going through the
secondary liability analysis
Eligibility for 512 safe harbor:

The entity must be a service provider
two different definitions in 512(k)
1 - k(a) - the term service provider means an entity offering the
transmission, routing, or providing of connections for digital online
communications, between or among points specified by a user, of
material of the users choosing, without modification to the content of
the material as sent or received.
2 -k(b)- the term service provider means a provider of online services
or network access, or the operator of facilities therefor, and includes an
48
entity described in subparagraph (A).
The entity must have, and inform subscribers of, a policy of terminating repeat
copyright infringers; 512(i)
Additional requirements for each of the four types of OSP functions
Additional requirements for 512(c), (d):
Additional requirements for hosters and search engines; 512(c), (d)
1 must designate agent for notifications
2 upon receiving knowledge of infringement, must take down (looks like
contributory infringement)
3 cant have financial benefit + ability to control (looks like vicarious
liability)
4 types of services = safe harbor:
a) Transmitting: maintaining "pipes" for data to go through
b) Caching: run a server that makes a copy that makes material on the web in
order for it to be physically closer to users who want to access that material
c) Hosting: hosting a site for user-generated content, or "UGC" (e.g. Youtube,
Facebook)
d) Linking: search engines
c and d heavily litigated
Notice-and-takedown-and-put back procedure
Copyright owner provides conforming notice to service provider (many req's to be

met to count as notice)
Service provider takes down the infringing material, and notifies the person who
posted it
The person who posted it may provide a conforming counter-notification to the
service provider (saying that it's not infringing/denying the notice sent by the
copyright owner)
If so, the service provider notifies the copyright owner, and puts back the material if
copyright owner doesn't file an action within 10 days.
Safe Harbor for OSPs

Viacom International Inc. v. YouTube, Inc.
The VIACOM V. YOUTUBE decision, decided: April 5,
2012 by the Second Circuit out of New York, deals with
issues of first impression related to the DMCA
knowledge standard, and issues related to what
automated software functions may disqualify a service
provider from the DMCA storage safe harbor.
I. THE KNOWLEDGE REQUIREMENT RULINGS
49
The DMCA requires the ISP to expeditiously remove or disable the

infringing material when the service provider has "actual"
knowledge or "red flag" knowledge of specific infringing activity on
its website or service. This case adds new clarity to the definition of
knowledge and sanctions applicability of a new theory of
knowledge" that is not in the DMCA itself to be applied to DMCA
cases.
First, the court rejected Viacoms argument that its estimates of
the large amount of infringing content on YouTube suggest that
YouTube was conscious that significant quantities of material on the
YouTube website were infringing. The Court said,
But
such
estimates
are
insufficient, standing alone, to
create a triable issue of fact as
to whether YouTube actually
knew, or was aware of facts or
circumstances
that
would
indicate, the existence of
particular
instances
of
infringement.
So, mere estimates of the amount of infringing content, by
themselves do not necessarily indicate that the service provider
had knowledge.
Second, the Court upholds a large body of precedent that requires
the service provider to remove infringing material only after it has
knowledge or awareness of specific and identifiable infringing
activity (as opposed to a general awareness that infringing material
may be present on the website or service). The Courts says:
Based on the text of 512(c)
(1)(A), as well as the limited
case law on point, we affirm
that actual knowledge or
awareness
of
facts
or
circumstances that indicate
specific
and
identifiable
instances of infringement will
disqualify a service provider
from the safe harbor.
Third, the Court clarifies the standards for actual knowledge and
red flag knowledge. The Court clearly specified the tests for
50
actual and red flag knowledge.

Actual knowledge = a subject test
Red Flag knowledge = an objective test
The Court says:

In other words, the actual knowledge provision turns
on whether the provider actually or
subjectively knew of specific infringement,
while the red flag provision turns on whether the
provider was subjectively aware of facts that
would have made the specific infringement
objectively obvious to a reasonable person. The
red flag provision, because it incorporates an
objective standard, is not swallowed up by the by the
actual knowledge provision under our construction of
the 512(c) safe harbor. Both provisions do
independent work, and both apply only to specific
instances of infringement.
51
The Court listed the previous decisions that looked at the issue (only 3 cases) and said,
While we decline to adopt the reasoning of those
decisions
in
toto, we note that no court has embraced
the
contrary
propositionurged by the plaintiffsthat the red flag
provision
requires less specificity than the actual knowledge
provision.
Fourth, the Court considered an issue of first impression and held that,
[A]although the DMCA does not mention willful
blindness, the willful blindness doctrine may be
applied, in appropriate circumstances, to demonstrate
knowledge or awareness of specific instances of
infringement under the DMCA.
Viacom argued that YouTube was willfully blind to specific infringing
activity. i.e., it applied the common law willful blindness doctrine in the DMCA
context.
A person is willfully blind or engages in conscious avoidance amounting to
knowledge where the person was aware of a high probability of the fact in
dispute and consciously avoided confirming that fact. The exact meaning of this
standard will be litigated in
DMCA cases to come.
Fifth, the Court reaffirmed that Section 512(m) is explicit: DMCA safe harbor
protection cannot be conditioned on affirmative monitoring by a service
provider.
II. RIGHT & CONTROL and Automated Software Functions That May Disqualify
the Service Provider from the Storage Safe Harbor.
The 512(c) storage safe harbor provides that an eligible service provider
must not receive a financial benefit directly attributable to the infringing
activity, in a case in which the service provider has the right and ability to
control such activity. 17 U.S.C. 512(c)(1)(B). This is called the right and
control provision.
Item-specific knowledge not required for 512(c)(1)(B):
Any service provider that has item-specific knowledge of infringing activity and
52
thereby obtains financial benefit would already be excluded from the safe
harbor under 512(c)(1)(A) for having specific knowledge of infringing material
and failing to effect expeditious removal.
Service providers usually incorporate many automated software functions
that run behind the scenes to make the user experience easier or to
decrease load on the providers servers and resources. The question is
whether or not these automated software functions constitute right and
control so that the service provider is disqualified from the storage safe
harbor.
The Court indicated that, the relevant case law makes clear that the
512(c)
safe
harbor
extends to software functions performed for the purpose of facilitating
access to user-stored material. Thus, the question for the Courts is to
determine if the software functions for that purpose or for some other purpose
(that would disqualify the service provider from immunity).
The Court said,
Accordingly, we conclude that the right and ability to
control
infringing activity under 512(c)(1)(B) requires
something
more
than the ability to remove or block access to materials
posted
on
a
service providers website. MP3tunes, LLC (emphasis
added)
(citations omitted).
The remainingand more difficultquestion is how
to define the something more that is required.
The something more means the Court looks to see what the service
provider is doing behind the scenes or in the back end to provide the service
to the user. This is a case by case
consideration - it all depending on what the service provider does in each
case.
The court ruled that the following automated software functions of YouTube were not
something more which means that by virtue of those functions, YouTube did
not have Right and Control and was still eligible for DMCA protection under
512(c).
A.
53
Transcoding & Playback. The Court found that transcoding and playback were
automated software functions that fell within the Storage safe harbor storage
(by reason of the storage at the direction of a user.). Transcoding involves
[m]aking copies of a video in a
different encoding scheme in order to render the video viewable over the
Internet to most
users. The playback process involves deliver[ing] copies of YouTube videos to
a users
browser cache in response to a user request. (citations omitted)
B. Thumbnails of related videos. The related videos function involves
a YouTube computer algorithm identifying and displaying thumbnails of clips
that are related to the video selected by the user. Viacom claimed that this
practice constitutes content promotion, not access to stored content, and
therefore falls beyond the scope of the safe harbor.
The Court said,

The record makes clear that the related videos
algorithm
is
fully
automated and operates solely in response to user input
without
the
active involvement of YouTube employees. (citation
omitted).
54
Furthermore, the related videos

function serves to help YouTube
users locate and gain access to
material stored at the direction
of
other users. Because the
algorithm is closely related
to, and
follows from, the storage itself,
and is narrowly directed
toward providing access to
material
stored
at
the
direction of users, (citation
omitted), we conclude that the
related videos function is also
protected by the 512(c) safe
harbor.
However, with respect to a function known as
third party syndication, the Court said this
software function is the closest case.
Here is what happened in the Courts words:
In or around March 2007,
YouTube transcoded a select
number
of
videos
into
a
format
compatible
with
mobile
devices
and
syndicated or licensed the
videos to Verizon Wireless and
other
companies. The plaintiffs argue
with
some
forcethat
business
transactions do not occur at
the direction of a user within
the
meaning of 512(c)(1) when
they
involve
the
manual
selection
of
copyrighted
material
for
licensing to a third party. The
parties
do
55
not dispute, however, that none

of the clips-in-suit were among
the
approximately 2,000 videos
provided to Verizon Wireless.
The Court sent the issue back down to the District Court (the trial
court) and said:
In order to avoid rendering
an advisory opinion on the
outer boundaries of the storage
provision, we remand for factfinding on the question of
whether any of the clips-insuit were in fact syndicated
to any other third party.
In other words, this is still an open issue for YouTube, yet to be
determined.
WHAT HAPPENS NEXT?
The trial court will consider the following issues:
1.
Whether, on the current record, YouTube had
knowledge or awareness of any specific
infringements (including any clips-in-suit not
expressly noted in this opinion);
2.
Whether, on the current record, YouTube
willfully blinded itself to specific infringements;
3. Whether YouTube had the right and ability to
control infringing activity within the meaning of
512(c)(1)(B);
4. Whether any clips-in-suit were syndicated to
a third party and, if so, whether such
syndication occurred by reason of the storage at the
direction of the user within the meaning of 512(c)
(1), so that YouTube may claim the protection of the
512(c) safe harbor.
Technical Protection Measures

Comparison of 1201 (anticrumvention) with Sony
1201
56
A device is banned if it:

is primarily designed or produced for the purpose of
circumventing
has only limited commercially significant purpose or use other than
to circumvent; or
is marketed . . . for use in circumventing
Sony
A device may be banned if it is not capable of substantial
noninfringing uses
3 anticircumvention prohibitions:
Basic provision, 1201(a)(1)(A):
prohibits the act of circumventing an access control
First anti-trafficking provision, 1201(a)(2):
prohibits providing a device that allows access to a protected work
Second anti-trafficking provision, 1201(b)(1):
prohibits providing a device that disables a protection against
copying (or other exclusive rights of copyright holder)
Section 1201
-Makes it illegal to circumvent technological protection
-Makes it illegal to make or sell or give away or traffic in any technology
designed to circumvent technological protection (encryption)
-Proponents of DMCA
-Important to prevent people from circumventing access controls, otherwise
that market place will never exist
-Meant we had to overrule the Sony standard
-Also prohibit devices designed for other uses, that have limited commercially
significant uses
-Sense that 1201 overrules Sony
-If it is a circumvention device it is independently illegal whether or not it has
significant non-infringement uses
-IP equivalent of breaking into someones hous
57
Summary of Anticircumvention Rules
Type of
prohibition
Type of technological protection
Access controls
Use controls
Against act of
circumvention
1201(a)(1)(A)
None
Against trafficking
1201(a)(2)
1201(b)(1)
Access and use controls on an e-book limited to use on one reader,

no printing:
A technology that allows you to read it on a different computer is
defeating an access control
if you use the technology, you violate (a)(1)(A)
if you traffic in the technology, you violate (a)(2)
A technology that allows you to print out copies is a use control
if you traffic in it, you violate (b)(1)
but if you use it, you dont violate 1201, but you may violate 106
sec. 1201/Circumvention of technological prevention - Not part of
Copyright Act (??????)
came about b/c of 2 treaties the US entered in 1996. Requires legal
protection against circumvention of technological prevention measures -->
58
encryption that limits access (e.g. encrypted DVDs makes it hard to copy). If
you want to make a copy of it, you have to circumvent the measures.
software DECSS (remove technological protection on DVDs) --> makers sued
and found liable under 1201.
Why isn't contributory infringement doctrine good enough to meet req's of
treaty? Seems good enough...but Congress decided it wasn't good enough
cuz of the Sony rule (a device may be banned if it's not "capable of
substantial noninfringing uses")
under 1201: a device is banned if it: is primarily designed or produced for
the purpose of circumventing; has only limited commercially significant
purpose or use other than to circumvent, or is marketed for use in
circumventing.
MDY Industries, LLC v. Blizzard Entertaiment, Inc. (pg 432)
Defendant distributed a play-enhancing bot that circumvented the

detection mechanisms designed to prevent bot assisted players from
accessing the plaintiffs online game
The 9th Cir. Held that 1201(a) applied even though the circumvention device
did not enable users to infringe any of the plainitffs exclusive rights under
section 106. In other words, the 9th Cir. Views access as an independent
right protected by section 1201
1) Basic provision, 1201(a)(1)(A): prohibits act of circumventing an access

control
2) First anti-trafficking provision, 1201(a)(2): prohibits trafficking of tech. in
(a)(1)(A)
3) Second anti-trafficking provision, 1201(b)(1): can't traffic in technologies
that circumvent tech. measures that protect a right of a copyright owner
(reproduction, distribution, public performance/display, etc)
Section (a) creates a new anti-circumvention right distinct from copyright
infringement, while section (b) strengthens the traditional prohibition against
copyright infringement.
Statutory exceptions in 1201(d) (j):
Nonprofit libraries, archives, and educational institutions
Reverse engineering
Encryption research
Protection of minors
Personal privacy protection
Security testing
Regulatory exceptions to 1201(a)
1.software protected by obsolete or malfunctioning access controls
59
2.literary works distributed in e-book formats that disable the e-books readaloud function
3.films on DVD where circumvention is to incorporate short portions of the
film into new works for criticism or comment and educational uses
4.circumventing controls on video games for security testing purposes
5.software on cell phones that prevents the phones owner from using the
phone when the owner switches to another cellular companys network
6.jailbreaking an iPhone to allow running applications that Apple doesnt
approve of
How 1201 addresses fair use:
Anti-circumvention rule doesnt apply to the act of unauthorized copying, so
that fair use remains available as a defense for what you do after you gain
access
Allows Register of Copyrights to exempt certain classes of uses from
1201(a)(1)(A)
Includes specific exemptions for uses that Congress deemed fair
VII. Publication, notice, deposit, registration

PUBLICATION AND FORMALITIES
WORKS PUBLISHED BEFORE 1/1/78
Federal protection began on publication with proper notice. Publication without
proper notice forfeited work to public domain
WORKS PUBLISHED BETWEEN 1/1/78 AND 3/1/89
Notice required for all published works. If work published without copyright,
copyright must comply with cure provisions within 5 years or work forfeited o public
domain
WORKS PUBLISHED AFTER 3/1/89
Notice is optional. 401404. Lack of notice still may allow the innocent infringer
defense. 401(d), 402(d).
Publication Under the 1909 Act: Before 1978, federal copyright protection
applied only to published works and was secured at the time the author
published a work with proper copyright notice.
60
Forfeiture: forfeiture required a "general publication", which mean the

work was available to members of the public without regard to their identity
or what they intended to do with the work; no forfeiture for "limited
publications" where the work was only available for selected persons and
for limited purposes

o I.e. if a person sold the story without a copyright notice it would be
forfeited but not if he just gave it to select members for criticism or
journalists
The 1909 Act excused the copyright owner if he tried to comply with the
notice requirement but by accident or mistake did not provide notice on
particular copies
o
Must have attempted to comply, no excuse if the author didn't know
Excuses only a small number of copies
But cannot recover damages from an innocent infringer without

notice
Publication Under the 1976 Act: For works published between Jan. 1,
1978 to Feb. 28, 1989, copyright was expanded to [1] include
unpublished works, and [2] began as soon as it was fixed in a tangible
medium of expression.
o
Notice on publications still required but omission did not

invalidate the copyright if:
Notice only omitted from a small number of copies, OR
Work was registered within 5 years of publication and there was

a reasonable effort to add notice to exiting copies, OR
Notice was omitted by a licensee despite an express contract to

do so
Formalities
A. Publication and Notice Before the 1976 Act
1. Policy: copyright is a bargain between the public and creators to incent
new works of authorship dont want to give out rights when they are not
needed to incent new works because exclusive rights tend to diminish
access and the publics ability to use the works. In this context, notice
makes sense because want copyright owners to indicate to others when
work was freely available. Here the court is the guardian of the public
interest insuring that it gets its share of the copyright bargain.
a. US is a proud defender of formalities: led to works from other
countries falling into the public domain because couldnt comply.
61
b. US is a net exporter of copyrighted works: willing to give up

formalities to increase this benefit under Berne. Didnt really give up
much, since courts are reluctant to enforce, makes Berne just
cosmetic.
c. Shift in attitude: now concerned more with protecting copyright
owners from pirates.
(1) US has broader universe of copyrightability with its low
originality and creativity bar. Only limited by who cares enough to
go through the steps to secure copyright protection. Result is that
works have been removed from the public domain, whether or not
they have real value worth protecting.
(2) Feist is an effort to limit the scope of protection by placing a
higher bar on originality.
(3) Old attitude of copyrights bargain to incent works for the public
benefit is obsolete: now believe that commodification
encourages the widest possible distribution. Want to ensure
that copyright holders can earn profits from access, believe that
distributors will invest in finding the works and the customers.
2. Formalities have loosened up over the last century:
a. Requirement that works copyrighted in the US be printed here was
vetoed by Reagan in 1985.
b. 1909 Act: publication with notice entitles the author to copyright,
based on dissemination to the public. If the work was published
without notice it fell into the public domain, placed the onus on the
author to notify the public.
(1) 19 required the word copyright, name of owner, date, year of first
publication (not creation).
(2) 20 required notice be placed on the title page or the following
page.
(3) Any substantial deviation from these rules was fatal.
(a) Placement: court held notice on the backcover of a pamphlet
resulted in publication without notice, so not copyrighted.
(b) Name: initially held that the name must be of the owner at that
moment. Later loosened up to allow corporations to use their
name as alter egos and pseudonyms.
(c) Collections: allowed single notice in a collection.
62
(d) Derivatives: allowed the name of just the author and date of
publication of the derivative.
(e) Date errors: not fatal, if earlier, count from first year and end
earlier. If later, count from when the work came into public
distribution. Dont want to deceive the public into believing the
copyright will last longer.
3. Publication:
a. Invested publication: transfer of a single copy with notice was
sufficient to allow the author to register copyright.
b. Divested publication: terminated copyright, putting works into the
public domain without notice.
(1) Courts were reluctant to allow transfer of one work to
remove copyright protection. Would prefer to avoid a forfeiture
of copyright in works before they were exploited commercially.
Dont want to penalize unsophisticated authors for failing to put
notice on the first copies that left their hands.
(a) Limited publication: distribution to a group for a limited
purpose.
(b) General publication: unlimited as to the recipient or as to the
purpose of use.
(2) Estate of Martin Luther King, Jr. v. CBS, Inc., 1998: Copies of
Kings I Have a Dream speech were made available to the press
before the march and later republished in the SCLC Newsletter
without copyright notice. The trial court held that the transfer of
copies to such a wide audience was general publication and put the
speech in the public domain. The court of appeals held that the
speech was of limited publication, which is not publication for
purposes of loosing your copyright.
B. 1976 Act Solutions as to Publication and Notice
1. Publication: Definition and Context
a. Definition: the distribution of copies or phonorecords of a work to the
public by sale or other transfer of ownership, or by rental, lease, or
lending. The offering to distribute copies or phonorecords to a group of
persons for purposes of further distribution, public performance, or
public display, constitutes publication. A public performance or display
of a work does not of itself constitute publication. ( 101)
The statute doesnt define distribution: but it remains an important pre-Berne
indicator because publication of the work triggers the obligation to deposit a copy
with the Library of Congress.
63
(1) ER Live: encourage people to tape, no copies were distributed, but

copies in the public domain were authorized by the copyright
owner. Not clear if this is distribution since public performance is
not enough.
b. Courts have translated the 1976 as declarative of prior law
Limited v. General Publication: distinction still part of determining publication.
(1) Investive v. Divestive: doesnt count anymore. A work is either
published or its not.
(2) Publication requires the authority and consent of the
copyright owner.
2. The Notice Requirement: 1978 to March 1989
a. Works first published before 1989 need notice:
Copyrighted works need (c), name, and date (year of first publication).
(1) Phonorecord works need (p), name, and date (since music is not
copied).
b. 401 Visually Perceptible Copies and 402 Phonorecords of
sound recordings
Distinguishing sound recordings and phonorecords: sound recording is a
copyrightable work, a phonorecord is the medium in which it is fixed. So a CD
contains two protectible works: the phonorecord and the underlying music.
(1) The owner of the work has the right to distribute both, but
law has not required notice of copyright in addition to
phonorecords. Sound recordings require a (p), but its a historical
accident that phonorecords were not thought to be a copy so dont
need a (c). So dont have to put copyright notice on phonorecords
in order to protect them.
(2) Works are published whether in copies or phonorecords:
when published in copies, needs a notice, as well as when
published in phonorecords. Until 1971, only needed notice on
phonorecords, then statute amended to add sound recordings,
making them copyrightable for the first time. Because Congress
didnt want to cause prior published works to go into the public
domain, it didnt require copyright notice on phonorecords or decide
to call them copies.
c. 405 Omission of notice on certain copies and phonorecords:
lack of notice is OK if:
Omitted from only a small number of copies.
Registered within 5 years of publication without notice and made a reasonable effort
to add notice to copies published after the omission was discovered.
Notice has been omitted in violation of an express requirement in writing that, as a
condition of the copyright owners authorization of the public distribution of copies
or phonorecords, they bear the prescribed notice.
406 Error in name or date on certain copies and phonorecords: copyright
will continue to be valid even if incorrect notice is given:
64
But the copyright holder will not be able to recover from an innocent infringer who
got a license from the wrong holder, unless he has recorded his name in the
copyright office prior to the infringement.
If an earlier date is incorrectly posted on a work for hire, it will lose the years, dated
from when enter distribution.
If an earlier date is incorrectly posted for an individual work, doesnt matter because
copyright still extends to 70 years after the death of the author without regard to
the year of notice.
If the posted date is more than a year after publication, in public domain without
notice refer to 405 to cure.
The copyright notice is still valid even if it lacks name and date of notice, refer to
405 to cure.
d. All of these exceptions made copyright notice unreliable. The
public could not assume that works published without notice were in
the public domain, still had to search to determine if an omission of
notice had been cured.
e. There have been no formal requirements since March of 1989
when the US entered the Berne Convention in an effort to align US
copyright law with the rest of the world.
Continuing US anomolies:
Alienability of copyright
Employer can be an author and exercise the authors rights
Incentives to use notice:
Prevent others from being able to claim that they are innocent, good faith infringers.
(Cant be a good faith infringer if relying on lack of notice when notice is not
required). Primarily applies to businesses with little experience in copyright, or if D
got a license from an infringer.
Of course this incentive is weakened in industries commonly protected by copyright,
because infringers should be on notice to check for cure.
C. Deposit and Registration
1. Deposit in Library of Congress
a. Copyright holders must deposit two complete copies within three
months of publication. ( 407)
b. The Library can fine those who fail to deposit ( 407(d))
c. Now that registration is permissive, hinders the collection of works.
2. Registration
a. Procedure:
(1) Permissive, however, if the copyrightholder is a US Citizen and the
work is first published in the US, he wont be able to sue until the
work is registered.
(2) Dont have to register at any particular time, can register the day
before going to court.
65
(3) There has been no significant drop off in registration since 1989.
b. Registers Authority and Effects of Registration:
(1) For works published before 1989, has curative effect on notice
defects.
(2) Evidentiary value of certificate of registration: establishes
rebuttable presumption that copyright is valid. Shifts the burden of
proof to D to disprove validity of copyright. Relieves P of having to
prove that his copyright is valid, or that his work is original, he just
has to prove it was copied.
(3) Copyright holders can only recover attorneys fees and
damages occurring after registration.
(4) Courts still harbor the belief that if the work is not registered, it is
not covered by copyright.
(5) Must be registered in order to receive compulsory licensing
fees.
(6) Pre-Berne, only US Citizens and nationals need to register to sue.
Publication
Academy of Motion PicturesArts & Sciences v. Creative House
Promotions, Inc. (1991)(pg 464)
The Oscar statuette was publicized a lot (displayed on TV, many pictures of it
all over the place, handed out to many people).
Issue: Did the Oscar enter the public domain?
Ct. made a distinction between general/limited publication.
General publication - standard publication. When a work is made available
to members of the public regardless of who they are or what they will do with
it.
Limited publication - doesn't count as publication for purposes of losing
common law copyright protection.
tangible copies of the work are distributed both (1) to a definitely selected
group (2) and for a limited purpose, without the right of further reproduction,
distribution or sale. White v. Kimmel
How about the fact that it was shown/displayed via TV, why doesn't that
constitute publication?
Under common law, mere display/exhibition of an artistic work doesn't count
as a publication. Publishing pics of the statuette doesn't count b/c publishing
2D pics doesn't constitute publication of 3D objects. (Rothchild: it's the form
66
of the statuette that matters...not so clear that this rule makes sense/should
be followed here).
Why doesn't distribution of copies count as publication?
The question is whether it's for a select group of people (limited publication
or not?) In a situation like this, the copyright owner isn't trying to make
money for it (making copies to sell it).
If you're only distributing it to a limited group for a limited purpose/not
getting financial benefits, you shouldn't lose copyright protection (not
everyone agrees with this justification but this is what they went with).
These aren't available for anyone to buy - they were only given to winners
of the award.
How about the clause "without the right of further reproduction, distribution,
or sale"? (from White v. Kimmel two part limitation test)
The court said there was an implied limitation on the right to sell the work.
implied restriction on recipients' use/distribution of the Oscar before 1941,
express restriction after
Nutt v. National Institute Inc. for the Improvement of Memory ( pg
474) (1929)
Rule: A public performance of a dramatic or musical composition doesn't
count as publication.(a rule from the common law)
Other cases: Showing/projecting a movie, public performance of a musical
composition, even if broadcast on the radio, doesn't make it published.
Why does this rule make sense? If a book seller is obligated to comply with
statutory formalities such as copyright notice, speech writers should have
the same obligation.
Speaking the speech is not a publication. Broadcasting it to millions of
people by radio/tv doesn't change anything (just reaching more people than
it would otherwise).
How about giving it out to the press in advance? It was distribution to a
limited group for a limited purpose...CL rights not lost.
So if someone gives a speech and doesnt distribute copies, the mere giving
of a lecture, as public as it might be, is deemed to be a limited publication
Policy Rationale why public performance is not a publication: Public
performance does not constitute publication, because in order to sue for
copyright infringement you would have to register it to be able to sue for
infringement, but if youre making changes up to the last moment then it
would be difficult to register beforehand
Publication and Notice
Letter Edged in Black Press, Inc. v. Public Building (pg 478)
Did Picasso mean to donate the copyright to the public domain?
Probably, can't give something to Chicago (they're not an entity to give
something to)
67
What does the copyright issue turn on? Limited vs. general publication.
Building commission and artist people no copyright notice on the
maquette...no restrictions on copying the maquette itself. It was a public
display with no restrictions on copying. Pictures allowed to be
taken/published. Officials made uncopyrighted pictures of it available. No
protection available.
So they could either put a notice on it, or register it with the
copyright office- to protect it
Sidwell Co., Inc. v. Real Estate Data, Inc. (1987)
Facts:
Sidwell was a printer and distributor of maps
Sidwell entered into a K with Cook County to produce maps for the county
the sample maps, provided by Sidwell, carried a notice identifying Sidwell as
the copyright owner, however the K itself did not provide that Sidwell would
own any resulting copyright
Sidwell marketed these maps commercially
A company called Real Estate Data, began selling copies of the maps and
Sidwell brought a copyright infringement suit.
in an earlier appeal in connection with that suit, the seventh circuit ruled that
any copyright in the maps would have belonged to Cook County, as
the commissioning party of the works, under the work-made-for-hire
doctrinre in place during the 1909 act.
Holding:
Although the original copyrights would have belonged to Cook County, the
copyright notices on the maps that were distributed by Sidwell indicated that
Sidwell was the copyright holder, not cook county.
in the absence of a prior written assignment of the copyright, this was a fatal
defect in the copyright notices that had the effect of injecting the maps into
the public domain
under the 1909 Act, the copyright notice was intended to inform the public of
the existence of the copyright, the time of commencement, and by whom it
is claimed
this court has found no cases under the 1909 act indicating that a copyright
can survive where, in the absence of a prior written agreement, the name of
an unrelated party appears on a copyright notice in place of the actual
proprietor.
Essentially, by not having the true copyright owners name on the notice, the
publication of the subject matter enters the public domain and loses
copyright protection
Shapiro & Son Bedspread Corp. v. Royal Mills Associates (1983)
68
Shapiro and Royal = competitors in manufacture/distribution of bedspreads.

Shapiro created the Lace Fantasy line of beds. Copyright notice was on a
flyer/insert contained in the packaging of the bedspread
Ct: Under the 1909 copyright law, this is defective/insufficient notice b/c its
not affixed to copies of the works (similar to a detachable tag that can be
discarded)
Dist. from Uneeda Doll Co. v. Goldfarb where the display package with a 3sided transparent window was ruled an integral part of the doll since it
remained useful as a keeping place for the doll.
The flyer in the bedspread cant be considered an integral part of the work
since theyre generally discarded after the bedspread is unwrapped
Ruling: The flyer saying Design Copyrighted was considered defective
notice; no copyright protection.
Formalities: registration and deposit
Deposit:
Must deposit the required number of copies in the Copyright Office within 3
months of the date of publication.
Some things are exempt (like electronic works published in the US only
available online)
If deposit isn't made within 3 months, there's a fine (but don't lose
protection)
Registration:
- submit form to Copyright Office. They look at it/perform an examination,
then provides certificate of registration (or not). It's very cursory, just a
matter of looking to see if there's copyrightable subject matter and whether
the claim accurately describes the subject matter.
- Surprising that registration is considered prima facie evidence of validity of
copyright (burden shifts to D if they argue invalid copyright), since there isn't
a heavy examination of the work.
- You have to register before bringing an infringement lawsuit.
sec. 411 - registration and civil infringement actions...ONLY for US works!
Foreigners don't have to register first. (Treating foreigners at least as good
as citizens)
- "Pre-registration": you can bring suit before actual registration. Work may
not even be completed yet, and takes time to get the certificate of
registration. Under this system, you pre-register online and it's instantly
valid.
Initial Ownership of Copyright
- sec.201(a): Initial ownership of copyright vests in the author.
Deposit
69
Section 407= mandatory deposit- this requirement can be thought of as

one means to further the constitutional purpose of copyright itself, to
promote the progress of Science, U.S. Const., Art. I, Sec. 1. Cl 8,, by
making available and preserving in a central location the nations- and much
of the worlds-cultural achievements
Section 408(b)= archival deposit- requires deposit in connection with
registration
Section 407 makes clear that mandatory or archival deposit is not a
condition of copyright, which means that the failure to make the deposit will
not affect ones ability to enforce the copyright against infringers.
Archival deposit requirement applies to works first published abroad as soon
as they are republished in the US
Deposit requirement applies regardless of the nationality of the author

Copyright Office Regulations provide for deposit of online-ony works only
upon demand by the Copyright Office
The government can demand that authors, painters, sculptures, movie
producers, sound engineers and other creators must donate copies of their
works to the government, because as Ladd v. Law & Technology Press held,
its analogous to a government fee required as a condition of a statutory
benefit.
section 401(a)- a notice of copyright as provided by this section may be
place on publicly distributed copies
401(d)- if you follow the rules for notice, then no weight will be given to a
copyright defendants saying that he didnt realize that it was not copyright
protected
section 504(c)(2)- court could reduce award to 200 dollars, but if you put
the notice then the court won't have to reduce to 200 dollars and you can
still get the full amount
VIII: Initial ownership of copyright

Sole and Joint Ownership
70
Andrien v. Southern Ocean County Chamber of Commerce (1991) (pg

540)
Real estate agent put a lot of hard work into re-creating a map. He made
some creative choices and the originality wasn't the issue here.
Issue: someone was assigned to do the artwork and he just supervised her.
Is he the author?
Rule: A party can be considered an author when his expression of an idea is
transposed by mechanical or rote transcription into tangible form under the
authority of the party.
Here, Haines' activity didn't intellectually modify or technically enhance any
of the concepts articulated by Andrien. Court considered her just like a
secretary who wrote down what she was told. They didn't think she did
anything that would take away authorship from Andrien.
Aalmuhammed v. Lee (2000)(pg 544)
Aalmuhammed was providing counsel and put a lot of time into a Malcolm X
movie (providing expertise). Lee gave him $25,000, but Aalmuhammed
wanted to be considered a joint author.
For a joint authorship, there must be 3 req's met: sec. 101 def'n 1) must be a work prepared by 2 or more authors,
2) with the intent that their contributions be merged/interdependent.
3) each contribution must be independently copyrightable (not part of the
statute)
Can any of Aalmuhammed's contributions be independently copyrightable?
Possibly (he added some scenes and did a lot of other original work). But
that's not enough!
First, an author "superintends" the work by exercising control.
(Aalmuhammed had no authority/control).
Second, putative coauthors make objective manifestations of a shared intent
to be coauthors (no manifestation here...Spike Lee wasn't even considered
an author, it was WB);
third, the audience appeal of the work turns on both contributions and the
share of each in its success cannot be appraised (not talked about here, but
probably satisfied since he made significant contributions)
Control in many cases will be the most important factor, and he didn't have it
here.
Can Aalmuhammed sue WB for copyright infringement? Unlikely. The fact
that he worked on this movie knowing that the whole point was to include his
contributions...at least implied authorization to use the material for that
purpose.
The Court found that Aalmuhammed was not 'superintending' anything. He
was working for Lee, the movie's director. Lee controlled all aspects of the
movie.
In addition, there was never an intent on the part of Lee or the movie's
producers to make Aalmuhammed a co-author. It was strictly work for hire.
71
The Court noted that even Lee was under contract with the movie studio in a
work for hire arrangement and so was not even an author himself. It would
be absurd to find that Aalmuhammed was author when Lee was not.
The Court found that it was good public policy to restrict the definition of
author. Otherwise people like Lee would never consult others because they'd
be worried about losing control of the rights. That would make the arts less
accurate and interesting.
17 USC 201(a)- copyright vests initially in the author
the authors of a joint work are co-owners of copyright in that work
If a work is deemed to be a joint work then all co-authors own equal shares
in the work unless they have agreed to the contrary, even if it is clear that
their contributions are not equal
Each co-author may grant non-exclusive licenses to others, allowing them to
use the work at whatever price he deems appropriate, subject to a duty to
share profits with other authors
Gaiman v. McFarlane (pg 553)
"There has to be some original expression contributed by anyone who claims
to be a co-author, and the rule (we'll consider an exception momentarily) is
that his contribution must be independently copyrightable".
Gaiman described, named, and wrote the dialogue for the characters. But is
the dialogue part of the character?
Seems weird that the work of the penciler wouldn't have sufficient originality
standing on its own (their interpretation of Gaiman's descriptions).
Is the dialogue part of the characterthe outcome is that a contributor to a work like this can become a co-author
even if everyone agrees that what was contributed was not copyrightable
exception to the general rule that each co author has to have an
independently copyrightable contribution to the work
Facts:
P= Gaiman, D= McFarlane
Gaiman brought suit under the copyright act against McFarlane seeking a
declaration that he (Gaiman) owns copyrights jointly with McFarlane in
certain comic-book characters.
McFarlane began publishing a series of comic books called Spawn, which
at first he wrote and illustrated himself
They were criticized for bad writing, so McFarlane sought out top writers
each to write a script for one issue of Spawn
Gaiman was one writer.
He accepted the invitation and wrote the script for Spawn issue number 9
Their contract was oral and there was no mention of copyright
72
Gaimans script introduced 3 new characters- Medieval Spawn, Angela,

and Count Nicholas Cogliostro
Gaiman described, named, and wrote the dialogue for them, but
McFarlane drew them
Gaiman contends that he and McFarlane are joint owners of the copyrights
on the 3 characters by reason of their respective contributions to joint
(indivisible) work.
McFarlane concedes Gaimans joint ownership of Angela, but not of the
other two.
Issue: Does Gaiman have joint ownership of the copyright with McFarlane
Holding: yes
Reasoning:
There has to be some original expression contributed by anyone who claims
to be a co-author, and the rule (well consider an exception momentarily) is
that this contribution must be independently copyrightable.
But where two or more people create a character jointly in such mixed media
as comic books and motion pictures and succeed in creating a copyrightable
character, it would be paradoxical if though the result of their joint labors
had more than enough originality and creativity to be copyrightable, no one
could claim copyright.
The decisions that say generally, that each contributor to a joint work must
make a contribution that if it stood alone would be copyrightable werent
thinking of the case in which it couldnt stand alone because of the nature of
the particular creative process that had produced it.
The finished product is copyrightable yet one can imagine cases in which
none of the separate contributions of the 4 collaborating artists would be
The writer might have contributed merely a stock character (not
copyrightable, as were about to see) that achieved the distinctiveness
required for copyrightability only by the combined contributions of the
penciler, the inker, and the colorist with each contributing too little to have
by his contribution alone carried the stock character over the line into
copyright land
Gaimans contributions may not have been copyrightable by itself,
but his contribution had expressive content without which
Cogliostro wouldnt have been a character at all, but merely a
drawing
The Gaiman court states that each co-author must contribute expression,
and not mere idea, but that such expression need not be independently
copyrightable.
However, a requirement of independent copyrightability is probably the
majority rule.
73
Works made for hire

Community for Creative Non-Violence v. Reid (1989) (pg 559)
"As a general rule, the author is the party who actually creates the work, that
is, the person who translates an idea into a fixed, tangible expression
entitled to copyright protection. sec. 102."
Issue: whether the sculpture made by an artist is considered "work made for
hire" by the organization hiring him.
Once we know a work is for hire, it goes to sec. 201(b) employer/hiring
person is considered the author. Unless the parties have expressly agreed
otherwise, the hiring party owns all the rights in the copyright.
Section 101 defines work made for hire- 2 categories
(1) a work prepared by an employee within the scope of his or her
employment; or
(2) Nine categories of specially commissioned works (sec.101(2)): a
contribution to a collective work; part of a motion picture/other audiovisual
work; a translation; a supplementary work; a compilation; an instructional
text; a test; answer material for a test; an atlas.
[How did these 9 categories come to be? 1963 proposal explicitly excluded
commissioned works; book publishers objected. 1964 proposal included all
commissioned works (if parties so agreed); authors objected; in 1965,
publishers and authors compromised, in a horse trade; four categories of
works added; In 1966, House Committee added four more categories; one
more category later added.]
To determine whether Reid was an employee, they looked at the common
law Restatement of agency (definitions of employer/employee).
Court found this artist was an independent contractor rather than an
employee. He was hired for only one specific task for a limited time, he
worked in his own studio with his own materials, and he was a skilled
sculptor.
Court rejected P's argument that ability to control determined whether the
work was made for hire (that was just one factor to look at, contained in the
Restatement of Agency)...weird that they rejected this because this is the
first factor listed.
Right to control work being performed, skill required, source of
instrumentalities and tools, location of work, duration of relationship, right to
assign additional projects, hired party's discretion, method of payment, role
in hiring and paying assistants, regular course of employer's business,
payment of employee's benefits and taxes. (pg 566)
Rothchild: This 13-factor test is kind of ridiculous/doesn't do a very good
job enhancing predictability. Courts can weigh certain factors more and just
decide however they want.
The dispute was originally about who gets possession of the sculpture. CCNV
wanted it back but Reid wanted to hang onto it.
Settlement: Reid gets to claim he made it (even though CCNV had
substantial involvement of it), but CCNV gets sole possession of the physical
74
sculpture. Reid gets exclusive right to make 3D copies of it. Either of them
can make 2D copies (pictures). Each party got some of what they wanted.
Avtec Systems, Inc. v. Peiffer (1995) (pg 570)
Peiffer = employee of Avtec. He made a computer program, and Avtec wants
to claim authorship under the "work for hire" doctrine. Issue is whether this
program was made under the scope of employment.
Look to CL for test to see whether this program was made within the scope of
employment (2nd Restatement of Agency). 3 factor test:
1) work was of the type for which Peiffer was hired to perform;
2) Peiffer's creation of the Program occurred "substantially within the
authorized time and space limits" of his job;
3) was "actuated, at least in part, by a purpose to serve" Avtec's interests.
Court analysis:
1st element undisputed.
2nd element not met (Dist. Court isn't clearly erroneous so App. Ct. won't
overrule it)...it was off-duty, at his own home with his own equipment,
without supervision, not directly related to any specific task he was assigned
to.
3rd element: "appreciable" motivation (perceptible but not quite substantial).
This doesn't mean that the slightest motivation is sufficient to satisfy this
test, otherwise this would be impossible for an employee to ever refute.
Court says Dist. Ct. isn't clearly erroneous (standard of review). They say
evidence that Peiffer might've been motivated to serve Avtec's interests
relates to incidents that occurred AFTER the initial fixing of the program
(after he had already created the program/the actual creation was his own
motivation and unrelated to the company).
Rothchild: development of technology has an impact on this rule (2nd rule
may be irrelevant now since people work at home with laptops and such)
Morris v. Atchity (2009)(pg 580)

Morris = author, wrote book "Jesus Augustus", enters into agreement with
company to prepare a novel based on her non-fiction work titled "The Ashes
of Christ".
She's suing Writer's Lifeline, a company and not a person, for using the work
in an unauthorized manner.
Court: It's not a specially commissioned work.
The work was not one of the specially commissioned works, it may have
been if it was translated into another language, but not a fictionalization of it.
No one is contending that the writers life line is the employee
A novel does not fall within any of these two categories of works for hire in
section 101
The derivative work was not to be added to the original work as a
supplemental text.
75
also, the derivative work was not compiling any preexisting materials; rather,
the editorial agreement commissioned a compelling dramatic story
Thus P has not established ownership of the Derivative work via the work for
hire doctrine.
Court: It's not a specially commissioned work.
Legally binding works
Veeck v. Southern Building Code Congress International, Inc (pg
590) (2003)
Person posted a non-commercial website containing info about N. Texas. He
purchased model building codes from SBCCI and cut/pasted the text onto his
site (even though the licensing agreement said no copying).
Original author: SBCCI, private non-profit entity. They develop model
business codes for the purpose of being enacted by municipalities. Very
technical/complex. State lawmakers don't have much expertise in this stuff
so it's a big benefit for small towns.
Dist. Ct. ruled in favor of SBCCI
Ct. App: 8 to 6 decision, reversed.
4 arguments/bases to decide the issue of whether the laws are
copyrightable:
1) The law is per se non-copyrightable; see Wheaton v. Peters, Banks v.
Manchester
One of the parties in Wheaton v. Peters argued that statutes aren't
copyrightable, the other side acknowledged but tried to distinguish.
Banks: whatever judges do in their official capacity can't be copyrighted.
Therefore, the law isn't copyrightable. [They jumped from decisional law to
statutory law here, saying both aren't copyrightable]
SBCCI argues 2 holdings from Banks: 1) judges don't need incentives to write
their opinions. Here, SBCCI argues it depends on copyright incentives to
preform their public service. 2) people have to be able to freely access the
law. SBCCI says there is public access to its codes (Rothchild: not sure what
they mean, b/c they charge $72 for the codes).
Ct's response: minimum accessibility isn't enough (go to town hall and look it
up) - the concept of Due Process is too narrow. "Citizens may reproduce
copies of the law for many purposes, not only to guide their actions but to
influence future legislation, educate their neighborhood association, or
simply to amuse." In re judge's incentives: the people are the real authors of
the laws (think of it like works made for hire; the people are the ultimate
employers of the lawmakers). Since the legislature can only do its work with
the consent of the people, everything they do is an act of the people. THIS is
what Banks is based on (not based on the need for economic incentives for
gov't employees to do their work)
2) The code, once enacted, is a fact; idea merges with expression
76
Veecks argues once the code becomes law, it becomes fact, which isn't
copyrightable. Also, there's only one way to express the meaning of the
building codes, the "idea" embodied in the law, so the idea and expression
merge. (Rothchild: seems like the law is more an existing thing in the world,
not a fact).
3) This case is different from situations where gov't merely references an
external standard
CCC and Practice Management: the alleged infringers cited to the Red Book
and Practice Management, and they were held liable. Distinction from this
case: the referenced works in those cases were created by private groups for
reasons other than being incorporated into the law. Here, SBCCI operates
with the sole motive/purpose of creating codes that will become obligatory in
law. (Rothchild: some difficulty with the Court's argument analytically).
4) Policy: SBCCI doesn't need the incentives
SBCCI argues that w/o full copyright protection, SBCCI will lack the revenue
to continue this public service of code drafting, so it needs the copyright
incentives.
Ct: SBCCI has survived and grown for more than 60 years without having
copyright protection. Second, there should be mutual cooperation...the
success of voluntary code-writing groups is attributable to the tech.
complexity of modern life. Third, SBCCI could easily publish these codes with
"value added" (commentary, questions, answers, etc.) and charge money for
interpretive info about the codes.
Dissent:
Veecks claim cannot be based on a violation of procedural due process,
because he was not denied access to the codes by either the towns or SBCCI
and Veecks has not pointed to any state actor who has purportedly denied
him due process.
SBCCI is a private sector, not for profit organization, which relies for its
existence and continuing services, in significant part, on revenues from sale
of its model codes.
The copyright systems goal of promoting the arts and sciences by granting
temporary monopolies to copyright holders was not at stake in Banks
because judges salaries provided adequate incentive to write opinions.
Without private code creating entities, the federal government would be
forced to author their own regulations, which would inefficiently expend the
time and resources of the legislative and executive bodies of these
governmental entities, not to mention the question of available expertise.
Ultimately, taxpayers would end up paying for a service that is currently
provided efficiently, expertly, and at no expense to them
IX. Transactions
6 stages of a transaction
77
1) Determining whether a transaction is necessary

2) Finding a person/organization that will sell/license the necessary rights
3) Determining whether that party has satisfactory title
4) Figuring out how copyright rules and other considerations may affect the
structure of the deal
5) Considering how the terms of the deal need to be expressed
6) Documenting and recording the deal
Orphan works
Orphan work: Copyrighted work where you can't locate the owner/can't get
a license to use it. Or, a work you don't know is copyrighted or not. Even if
it's in the public domain and you're not sure, you can't use it b/c you're not
sure if the copyright owner will show up and sue for infringement.
- Basic idea: if you use an old work in good faith and can't find the owner,
and if you're found to be infringing, the penalties are greatly reduced
(ongoing policy problem that hasn't been solved)
Transfer Formalities
sec. 201(d): ownership of a copyright may be transferred in whole or in part
by any means of conveyance (like ownership of any other thing/property).
Transfer of copyright defined (section 101): assignment...exclusive
license...of a copyright or of any of the exclusive rights of a copyright (NOT
including a nonexclusive license).
When you transfer a non exclusive license, you are not transferring
copyright ownership
Transferring a non exclusive license doesnt exclude granting the license to
someone else, the license is the permission, i.e. a promise not to sue you for
engaging in the conduct that is licensed
Copyright is indivisible.
Transfers and assignments
Effects Associates, Inc. v. Cohen (1990)
sec. 204: transfer of copyright must be in writing (applies only to exclusive
licenses)
Cohen = movie producer/director, hired Effects to make special effects for his
movie - they had an oral agreement. Cohen wasn't satisfied, didn't pay
Effects the full amount, and Effects sues for copyright infringement (Cohen
shouldn't be able to use effects without paying full amount).
Issue: Did Effects transfer to Cohen the rights to use the footage?
Ct: Copyright transfer must be in writing.
But....is there a nonexclusive license?
Rule: "A nonexclusive license may be granted orally, or may even be implied
from conduct. Effects created a work at D's request and handed it over,
78
intending that D copy and distribute it." The only reason Effects created
this footage in the first place is b/c D asked for it.
The Court found that since Effects made the footage to Cohen's
specifications and gave it to him, there was an implied license to use it. Since
Effects couldn't give an implied exclusive license, they must have just given
Cohen a nonexclusive license.
That means that Effects was free to sell the footage to other people for use
in other movies (if that's worth anything).
Did Effects intend to give away the rights without getting the full amount for
it? No, but Ct. says that's a factual matter, not a copyright matter. Court
doesn't want to grant an implied condition precedent.
Effects did not expressly state any conditions on using their effects only if
they satisfy preceding conditions. (To call it condition precedent would say
that Cohen would be licensed to use the film only if they agreed to pay the
contract amount, but Cohen didnt say that, all that was said was can I use
the film and Ill pay you money).
There was no preceding conditions that had to be met, it was interpreted as
not imposing any condition on the non exclusive license.
Court interprets this as not imposing any conditions on using the
nonexclusive license.
Effects can still sue in state court for a contract claim, that Cohen didn't pay
the full price agreed upon.
What can Cohen do (Effects v. Cohen) since he has a nonexclusive license?
He can incorporate the special effects into the film (but not keep using those
effects in other film because that would exceed the scope of the license).
Hypo: Suppose Effects had validly transferred copyright to Cohen for use in a
movie to be distributed in N. America only. Could Effects then license
another movie producer to use it in a film to be distributed in Japan only?
Can Effects divide the copyright rights? Yes, set of exclusive rights and
different parts can be given to different people.
What other rights would Cohen gain if he became an owner of copyright? He
can exclude other people from using the work (sec. 106 of Copyright Act, the
core of what copyright is); bring infringement actions. (Nonexclusive
licensees can't bring actions)
Why wasn't this a work for hire since Effects made it for Cohen? Effects
wasn't an employee under Cohen and there's supposed to be a written
agreement (there wasn't).
n.2 (629), sec. 202: transfer of ownership of any material object (including
the copy in which the work is fixed), doesn't itself convey any rights in the
copyrighted work embodied in the object. How is this consistent with
Cohen's ruling (transferred nonexclusive license)? It wasn't the mere
handing over of the object that gave the license, it was the context.
79
Breach and infringement

When is Breach an Infringement?
Jacobsen v. Katzer (2008)
Appellees offered competing software product based on the original. Ps sued
them for copyright infringement, but Appellees argued they had a license to
use the material so they can't be sued for infringement. Katzer argues the
terms don't limit the scope of license but are just covenants providing
contractual terms for use.
Language of the license: license is given PROVIDED THAT... No license
unless certain conditions are met (user inserts prominent notice in each
changed file stating how/when the user changed the file, AND at least one of
4 more conditions).
Question of interpretation of contract language.
Ct. ruling: There was infringement here.
As long as the licensee remains within the uses allowed by the licenser, then
the copyright owner cannot sue him.
But if the licensee goes beyond what he is allowed to do with the license,
then the copyright owner can sue for copyright infringement
Alternative copyright licensing survey
Alternative Copyright Licensing Schemes
This is not doing away with copyright and throwing these materials into the
public domain, but rather its using the copyright law to make those
materials more available
Using copyright law to enforce openness, to make sure that anyone can get
access to the source code and modify the source code, but if they do that
they have to release what they have done free of charge so other people can
benefit from it
Free software doesnt mean people are giving away software for free, but
rather they are licensing it on terms that allow people to use and modify the
source code
This is done through recursive licensing and viral licensing
A way of structuring a license agreement so that a person who engages in
some conduct thats allowed by the license agreement is required to put the
same provision in whatever he releases so the next generation will have the
same rights to modify that code that he was able to modify
Creative Commons is also pretty popular
80
Bartsch v. Metro-Goldwyn-Mayer, Inc. (1968) (pg 658)

Owners of a play transfer rights to Bartsch, who assigned to WB, who
assigned to MGM.
Language from Bartsch to WB: similar to the language from the owners to
Bartsch. "...the motion picture rights throughout the world...to project,
transmit, and otherwise reproduce the said musical play..." seems to
incorporate everything granted in the original grant to Bartsch.
WB presumably assigned to MGM all the rights they attained from Bartsch.
Issue: Does MGM have the rights to broadcast this movie on TV (it's licensing
TV broadcasters to use it)?
This is a derivative work based on the German play (like a movie based on a
book).
Bartsch: Showing it on TV wasn't in the scope of the rights granted.
The rights granted = very convoluted language.
Dist. Ct. looked at language: "authorization 'to project, transmit..by the art of
cinematography or any process analogous thereto...'"
Ct. App. says it seems like a completely different thing, not analogous
enough because it's "near miraculous". (Rothchild: not very satisfying
reasoning...we should think about what a copyright grantor would've meant
by using the word "cinematography" and then ask whether telecasting is
analogous)
"cinematography" = taking the picture...
Ct. analysis: 2 arguments from case law:
1) An all-encompassing grant found in one provision must be limited by the
context created by other terms of the agreement indicating that use of the
material in only one medium was contemplated
Ct rejects b/c the words of B's assignment were designed to give assignee
the broadest rights possible.
2) At the time of the grant in 1930, no one was thinking of TV cuz it wasn't a
widespread means of media. Therefore, it couldn't have been the intent of
the parties to assign TV rights.
Ct rejects. During the 1930s, knowledgeable people in the motion picture
industries like Bartsch recognized the future potential for TV
Bartsch's other argument: In 1930 WB often attempted to obtain an express
grant of TV rights from others and it failed (Rothchild: seems like a
reasonably strong argument)
Ct rejects, says maybe WB tried to be tactical and stick with the broader
language (speculation)
Court focuses on: "The authors grant B "the motion picture
rights...throughout the world", including the right to "exhibit such motion
picture photoplays throughout the world."
Possible principles of interpretation:
81
1) narrow interpretation of license language: license will be held to include a

particular use only if it's within the unambiguous core meaning of the term
and exclude any uses which lie within the ambiguous penumbra
2) broad interpretation: licensee may properly pursue any uses which may
reasonably be said to fall within the medium as described in the license.
Ct ruling: Court chooses the second interpretation, so TV rights fall under the
scope of the assignment.
If the language is broad enough, then the burden is on the grantor to limit
the scope.
What is the justification for the broad interpretation of license languageOne aspect is the utilitarian aspect- promote the progress of arts and
sciences
The narrower interpretation might exclude anything that comes along that is
a derivative
Pg 664 note 3- the problem with the narrow interpretation is that you would
have to have both MGM and Ms. Bartsch agreeing because each of them
would own different parts of the copyright. MGM owns the movie and Bartsch
on that assumption would own the television rights and its less likely that
they would agree, and therefore less access to the public
The other point the court makes is that if the words are broad enough to
cover a new use it seems fairer that the framing of the words should fall on
the grantor
The granting party that rights the license agreements- the burden is put on
the K to make it clear as possible- since the grantor of the license is
presumably the one that drafted the license agreement you should construe
it against the grantor where there is ambiguity
Is the broader interpretation a neutral approach that favors neither licensors
nor licensees- not really
it seems like the broader approach favors licensees, and the narrower
version seems like it favors licensors
Contributions to collective works: Copyright in each separate contribution to a
collective work is distinct from copyright in the collective work as a whole, and vests
initially in the author of the contribution. In the absence of an express transfer of
the copyright or any rights under it, the owner of copyright in the collective work is
presumed to have acquired only the privilege of reproducing and distributing the
contribution as part of that particular collective work, any revision of that collective
work, and any later collective work in the same series. ( 201(c))
Tasini v. NYT, 1999: Freelance authors sued the Times for licensing their works to
online publications without their permission. Contracts were silent on the issue and
had not contemplated online possibilities. Arguments revolve around interpretation
of 201(c):
Within the scope of 201(c): Online versions are just revisions of the original article.
NYT licensing whole paper to Lexis. Policy leans toward interpreting contract to
include online versions, otherwise effort to track down each author will make useful
82
archiving unavailable or available but very expensive. Dont need to give the
authors royalties as an incentive for creation.
Not within the scope of 201(c): online publishing is not the same as republishing
the whole work. When consumer calls up the article, not calling up the collective
work. Digital works provide a clean slate allowing the publisher to profit from
licensing the authors work in a way that conflicts with the authors expectation of
profiting from his own work. The author could individually license his retained
rights, the publisher should have to share some of the profit with the author.
2d agreed that online publication was not within the scope of 201(c): if find
that its covered then the residual non-exclusive rights are meaningless to the
author, not much left for him to exploit.
(ii)
Result is that NYT now requires its freelancers to sign over all of their rights in
work for hire contracts.
83
Duration
DATE OF WORK
PROTECTED FROM
TERM
Published before 1923
In public domain
Published from 1923 - 1963
When published with notice1
Published from 1964 - 1977
When published with notice
Created before 01/01/78, but

not published
01/01/78, (by 1976 Act)
None
28 years + could be renewed for 47
years, (now 67 years). If not
renewed it is in public domain
28 years for first term; + automatic
extension of 67 years for second
term
Life + 70 years, OR 12/31/2002,
whichever is greater
Created before
01/01/78, but published
between then and 12/31/2002
Created On or After 01/01/78.
01/01/78, (by 1976 Act).

(Works Published between
01/01/78 - 03/01/89 need Notice
or Cure)
When work is fixed in tangible
medium of expression.
(Works Published between
01/01/78 - 03/01/89 need Notice
or Cure)
Life + 70 years OR 12/31/2047

whichever is greater
Life + 70 years3 (OR if work of

corporate authorship, anonymous,
or pseudonymous: the shorter of
95 years from publication, or 120
years from creation2
1. Under the 1909 Act, works published without notice went into the public domain upon publication.
Works published without notice between 1/1/78 and 3/1/89, (date of the Berne Convention
Implementation Act), retained copyright only if registration was made within five years OR See 17
U.S.C. 405.
2. Works for hire, anonymous and pseudonymous works also have this term. 17 U.S.C. 302(c).
3. Term of joint works is measured by life of the longest-lived author.
- All terms expire at end of Calendar year ( 305).
84
Duration
1 1976 Act provided for a basic term of protection of life of
author plus 50 years, and for works made for hire or
anonymous works, 100 years from creation or 75 years
from publication, whichever is shorter
2 As a result of the Bono Act, current duration of copyright
protection is 20 years longer than that adopted under the
1976 Act
3 Works created on or after 1/1/78
1 Single author: life + 70
2 Joint authors: life of last surviving author + 70
3 Work made for hire/anonymous work: 120 years from
creation or 95 years from publication, whichever is
shorter
4 Works first published before 1/1/78
1 28-year term and 28-year renewal term
2 1976 Act extended protection by an additional 19
years to the renewal term
3 Possible total term of 75 years (after Bono, 95 years)
1 Works published prior to 1923 are in the public

domain
2 Works published in or after 1923 have potential
total duration of 95 years
5 Works created but unpublished prior to 1/1/78
1 Same duration rules: life + 50 (70)
2 But also applied a minimum term of protection for
previously unpublished works
1 Works created prior to 1978 but not published
as of then endures for the term otherwise
provided, but not before 12/31/02
2 Additional 25 (45) years if work were published
before 12/31/02
Duration
Two basic categories of works for duration purposes:
1. works created starting Jan. 1, 1978
2. works created before Jan. 1, 1978
1. Works created starting Jan. 1, 1978
When did author die?
Is it a WMFH?
When published?
Published with notice?
Duration rule for WMFH (post-CTEA)
Work created in 1980
If published in 2000:
term ends 2095, 95 years post-publication
2. Works created before Jan. 1, 1978

Published with notice?
Was copyright renewed (if published pre-1964)?
Date of publication
Published by Jan. 1, 1978?
If not, published by Dec. 31, 2002?
Categories of works created before Jan. 1, 1978
85
Published before 1923

Published 1923 -1963
Published 1964-1977
Created pre-1978 but not published by that date
Duration rule for works created pre-1978 but not published by then
Created 1920, author dies 1980, never published
life + 70 = 2050
This is later than Dec. 31, 2002, so minimum term inapplicable
Created 1920, author dies 1925, never published
life + 70 = 1995
This is earlier than 2002, so gets the minimum term ending 2002
Created 1920, author dies 1925, published in 2000
life + 70 = 1995
Since the work was published by 2002, gets the minimum term ending 2047
Little additional incentive from longer term
[A]n advantage that is to be enjoyed more than half a century after we are
dead, by somebody, we know not by whom, perhaps by somebody unborn,
by somebody utterly unconnected with us, is really no motive at all to
action. [not in CB]
Thomas Macaulay (1841)
Eldred v. Ashcroft (pg 696)
P's arguments:
1) Extension violates "limited times" provision of Copyright Clause
Ct: The fact that the term has been lengthened doesn't mean it's not "limited
time" ("limited time" just means fixed).
2) Regulation of speech violating 1st Amendment
Ct: No conflict...one thing Copyright clause does is to promote
creation/publication of free expression. But when, as in this case, Congress
hasn't altered the traditional contours of copyright protection, further 1st
Amendment scrutiny unnecessary.
Breyer Dissent: It's a "tax on readers" --> royalties that may be highe3r than
necessary to evoke creation of the relevant work; and req that one seeking
to reproduce a copyrighted work must obtain the copyright holder's
permission.
Petitioners argument essentially reads into the text of the Copyright Clause
the command that a time prescription, once set, becomes forever fixed or
inalterable. The word limited, however, does not convey a meaning so
constricted. [698]
Congresss historical practice:
86
History reveals an unbroken congressional practice of granting to authors of

works with existing copyrights the benefit of term extensions so that all
under copyright protection will be governed evenhandedly under the same
regime. [698]
Encouraging restoration?:
Older films, such as those from the 1920's, are constantly deteriorating and
in need of restoration. . . . Because the CTEA extends the copyrights on
many of these films for 20 more years, Moviecraft will be unable to
restore these films and many of them will be lost forever. If a surviving
print of one of these works from the 1920's were discovered by Moviecraft, it
could not be restored because Moviecraft could not exploit the film without
authorization of the copyright owner. To acquire copyright clearances often is
impossible.
Eldred v. Ashcroft Complaint
No Conflict With the First Amendment:
The Copyright Clause and First Amendment were adopted close in time.
This proximity indicates that, in the Framers view, copyrights limited
monopolies are compatible with free speech principles. Indeed, copyrights
purpose is to promote the creation and publication of free expression. [703]
Traditional Contours:
But when, as in this case, Congress has not altered the traditional contours
of copyright protection, further First Amendment scrutiny is unnecessary.
[704]
Stevens dissenting:
Ex post facto extensions of copyrights result in a gratuitous transfer of
wealth from the public to authors, publishers, and their successors in
interest. Such retroactive extensions do not even arguably serve either of
the purposes of the Copyright/Patent Clause. [not in CB]
Breyer dissenting:
A tax on readers
royalties that may be higher than necessary to evoke creation of the
relevant work; and
a requirement that one seeking to reproduce a copyrighted work must
obtain the copyright holders permission [707]
Congress passed the Sonny Bono Copyright Extension Act of 1998 (CTEA),
which extended the copyright of all works by 20 years.
This had the practical effect of stopping everything from entering the public
domain for the next 20 years.
Eldred, who maintained a library of works in the public domain sued.
87
Eldred argued that CTEA was unconstitutional because the Intellectual

Property Clause (Art. 1, 8, cl. 8) only empowers Congress to extend
copyrights for "limited times."
In addition, Eldred argued that the CTEA was a violation of the 1st
Amendment because it is a regulation of speech, and that it violated public
trust by transferring public property into private hands with no rational basis.
The Trial Court found CTEA constitutional. Eldred appealed.
The Trial Court found that the new copyright durations were still a 'limited'
time, they were just a longer limited time.
The Appellate Court affirmed. Eldred appealed.
The US Supreme Court affirmed.
The US Supreme Court found that the Copyright Act had been amended (and
durations extended) a number of times in the past, so Congress had set a
precedent that they could extend the duration.
In a dissent it was argued that it is highly unlikely any artist will be more
inclined to produce work knowing their great-grandchildren will receive
royalties, so CTEA did not achieve the goal of copyright law (encouraging
creation of new works).
In addition, the dissent felt that the retroactive copyright extension was
pointless because those works have already been produced.
"How will extension help todays Noah Webster create new works 50 years
after his death?"
After this decision, a number of private copyright agreements (like Creative
Commons) started to appear by people concerned with the extent of the
copyright system.
Limitations on Transfer
Renewal terms
Fred Fisher Music Co., Inc. v. M. Witmark & Sons (1943)
Authors of "When Irish Eyes are Smiling" under K with music publishers
Witmark. Graff (one of the authors) and Witmark made agreement, giving all
rights, title, and interest to Witmark, including rights to secure all copyrights
and renewals of copyrights in the songs.
Agreement was recorded in the Copyright Office
Witmark renewed when the first time was up
Graff then went in and claimed the renewal for himself and assigned to
someone else (thinking he should be able to get away with it)
Witmark sued
Issue: whether one can assign his renewal interests during the initial
copyright term
Ct ruling: Nothing that says you can't assign the renewal interests in the Act.
[Rothchild: opinion should've stopped here b/c that's all they needed].
88
Then court looks at legis. history...they did not refer to the author's
"assigns" (only widow/children).
(That doesn't necessarily mean that it's prohibited though)
For renewals: Mark Twain didn't make money out of "Innocents Abroad" for
the first term, but the second term he made all the profits.
There are policy reasons cutting both ways for allowing or prohibiting
renewal assignment. If Congress wanted to prohibit assignment of renewal
rights, they would have said so explicitly.
Miller Music Corp. v. Charles N. Daniels, Inc. (1960)
Black assigned renewal rights to Miller (before renewal term took effect), and
Black died before the end of the first 28 years. Statute sec. 24 of 1909 Act
says it goes to executor/next of kin if no widow/children.
Charles N. Daniels (nephew) claims the statute grants to them: Black
Executor Nieces and Nephews
Miller claims that there was already a prior assignment
Statutory Successors
1) The author, if living; but if not,
2) the widow/widower/children of the author; if none,
3) the executors of the author's will; but if no will,
4) the author's next of kin
Ct. rule: "Next of kin" takes precedence over prior assignments to the
contrary. Charles Daniels wins
These results follow b/c there was only a mere expectancy of
renewal/assignment (only effective if the expectancy came into effect)
What if the author disliked widow/children and wanted to give to someone
else? Can't do it under the statute
Policy of the Copyright Act that surviving spouse/children/next of kin get the
renewal term even if contrary to wishes of copyright owner.
There's really no way for an assignee to a renewal term to be sure he's going
to have the rights for sure (author can die before term ends).
Close decision (5-4). Some say it couldn't have been Congress' intention to
grant to author's heirs whom he hates and deny the good faith assignees.
p. 740 n.3: Presumption against transfer of renewal interest - courts tend to
construe any ambiguous assignment of language as not assigning the
renewal right. (e.g. "I assign copyright interests to x") Interpreted to mean
only the first term of 28 years, not the renewal term (don't want authors to
inadvertently give away too many rights).
Does this help or hurt the copyright owner? In some ways, might hurt owner
by reducing value of renewal term.
Stewart v. Abend (pg 742) (1990)
89
Author wrote "It Had to be Murder", sold story with renewal rights, died
before he could renew. Executor = Chase bank, for benefit of Columbia
University. Chase assigned renewal rights to Respondent Abend for $650
plus 10% of all proceeds
People who got the renewal rights say derivative work "Rear Window" can't
distribute without paying
Issue: Petitioner Stewart just wants to be able to continue showing their
movie (they put so much work into this movie and relied on the fact they had
the right to distribute). They concede Abend has the right to license another
company to make another movie based on "It Had to be Murder", but they
just want to show their movie.
Court ruling: Policy reasons cut both ways. Congress made their decision;
not for us to change what they did b/c we disagree with their policy
determination. Stewart was infringing by using the derivative work.
How about argument that the result that this one person can prevent this
movie from being shown? Isn't that contrary to purposes of the Copyright
Act? Ct: They can work something out with Abend (assume that everyone
will be reasonable).
Since 1992, renewal = automatic. But still could apply for renewal term. If
Stewart registered for renewal term instead of letting it happen
automatically, they'd retain the rights to keep showing the movie. But they
way they did it, Stewart loses.
Mere fact that derivative work is in pub. domain isn't enough to use the
original and make your own derivative work - also need to look to see if the
original work is in the public domain.
if there is a derivative work that is in the public domain you are copying, you
also need to see if the original work that its from is also in the public domain.
if the original work is not in the public domain then you are infringing
Technical conundrum: if the author applied for renewal term when he was
supposed to, but he dies before the start of the renewal term? Renewal term
remains a mere expectancy until the first day of the 29th year. If author dies
before then, it doesn't come into effect. Conflicting case law about who gets
the renewal term. Congress resolved this legislatively: depends on whether
there was auto renewal or whether person actually registered work for
renewal during first term. If no one applied for renewal, it goes to whoever
was entitled as of Day 1. If author applied, then the assignee gets it.
XI. Reproduction, distribution, and adaptation

rights
Public distribution and the first-sale doctrine
The reproduction right
Pg 784 exceptions to the six exclusive rights
90
The reproduction right

Section 117- important exception for computer software/use
Essential step doctrine- you can use a computer program without infringing
copyright because whenever you use a program it gets copied on to RAM and
that is making a copy, so in the absence of permission to do this, you would
technically be infringing copyright, but this is an exception (codified in 117)
117(c)- the computer maintenance rule
you are allowed to copy a program into RAM if you are doing maintenance
on, in order to avoid losing the software from the computer
so the above are limitations on the exclusive right to reproduction
other than fair use, most of the exceptions to section 106 rights are pretty
narrow
librarires, federal recordings, etc.
112: limitation; doesnt apply to audio-visual works.
pg 788- illustration of why we need section 112- you can make a temporary
copy or ephemeral recording to enable a time shifting of the broadcast and
there are various limitations on the scope of the right
audiovisual works is treated differently from other types of works- section
112 starts out by saying except in the case of a motion picture or
audiovisual works)
sometimes dramatic works are treated differently as well in the statute
section 102(a)- listing off diff types of works that can be protected by
copyright
musical works is one of those subject matters of copyrights
sound recordings is also on there
both musical works and sound recording are works of authorship that are
protectable but they are two different things that can be protected in
different ways
musical work is the composition- the notes, the words, nothing that you can
touch, its the composition
but when you write down the notes of a musical work on a piece of sheet
music, that is not a musical work but rather a copy
copy is a defined term in section 101- material objects, other than
phonorecords, in which a work is fixed
you can fix a musical work in a piece of paper and have a copy, but you can
also fix a musical work on a cd, tape, hard drive, etc. but that object we do
not call a copy but rather a phonorecord
a phonorecord- a material object in which sounds, other than those
accompanying a motion picture or other audiovisual work, are fixed
so essentially something in which sounds are fixed
so in addition to musical works there are sound recordings
sound recording- section 101 def- works that result from a fixation of a series
of musical. Spoken, or other sounds, but not including the sounds
accompanying a motion picture or other audiovisual work
91
sound recordings are treated differently from musical works

historically they werent protected, not until 1971
now the protection of sound recordings is more limited than the protection of
musical works
section 106(4)- there is a public performance right for musical works but not
sound recordings
so if you perform a piece of recorded music publicly, and you dont have
permission of the copyright owner, you may be infringing the copyright of
the composer of the musical work but you are not infringing the copyright of
the singer or producer (or whoever owns the copyright in the sound
recording), unless its a sound recording performed by means of digital
transmission
the protection of sound recordings is diff from the protection of musical
works, there is no general public performance right to sound recordings, and
a limited digitial transmission rights to sound recordings
you can have a physical object that contains two works at once, any time
you have a musical rendition on a cd, one is the musical work and one is the
sound recording
They are both protected from reproduction
so if you make a copy- you are infringing the copyright of the musical
copyright and the sound recording copyright
the first sale doctrine- 106(3)- has to do with the public distribution right
can be by sale, by other means of transferring ownership (by gift, rental,
lease, or lending)
public distribution right, usually if there is an infringement of the public
distribution right then there usually is an infringement of the reproduction
right
significant limitation on the public distribution right- first sale doctrine109(a)
once you have sold a copy or phonorecord, you have lost your public
distribution right as to that particular copy or phonorecord (the technical
term is exhaustion)- so the owner of the copy can publicly distribute it
without your authorization
if we didnt have the first sale rule then you wouldnt be able to sell a used
book, for example
you also would not be able to have libraries, a library is lending copies of
literary works which is a public distribution, so without the first sale rule that
wouldnt be allowed
just because you now own a copy, doesnt mean that you can make further
copies or derivative works, you couldnt publicly perform it, you cant make
movies from it
all the rights are still retained by the copyright owner, its only the public
distribution right which is limited by the first sale rule
92
what doesnt qualify you as a owner- if you are simply lent something (being
a bailee), if someone rents you a movie you cannot rent it to someone else,
so even though a copyright owner has a public distribution right, he looses
that right as it fits in the provision of 109
lawfully made is required
you can sell the copy, rent the copy, dispose of it in any of those ways
without the permission fo the copyright owner
Kirtsaeng v. John Wiley
involved someone who bought textbooks, had textbooks shipped to him, the
books were published outside the US, and were published for use outside the
US
he thought that he could make money by reselling
the publisher sues him, and he says you cannot sue me look at the first sale
doctrine, im the owner of the copy
however, although they were lawfully made, they were not made under
this title (109 requirement), so therefore its not within the scope of the first
sale rule and the public distribution right remains with the copyright owner
lawfully made under this title- meaning that its made with authorization in
the untied states
first sale rule is an exception to the public distribution act
109(b)- exceptions to the first sale rule
(b)(1)(a)- sound recordings and computer programs- if you are the owner of
a copy of a computer program or a phonorecord of a sound recording, you
can sell it if you want, but you cannot get rid of it through rental, lease or
lending
exceptions for nonprofit libraries
exceptions for video games, computer programs embodied in a machine or
product and which cannot be copied during the ordinary operation or use
(i.e. you can rent a car)
UMG Recordings v. Augusto (pg 804)
Issue: who is the owner of the copy?
its possible to distribute copies so that the recipient does not acquire title
that would make the first sale rule goes into effect
the CDs are dispatched to the recipients without being tracked or counted,
they just sent them out without a prior arrangement and they didnt keep
track of the copies, it certainly means that they were not being careful, but it
doesnt necessarily mean that that factor of not keeping track of the discs is
enough to show that title to the copies was transferred (according to
professor).
93
Professor thinks: that courts will not rely on the idea that not keeping track
of merchandise could transfer ownership
Unordered merchandise statute- if someone sends you something in the
mail, and you didnt order it, you own it. You dont have to pay for the thing
that was sent to you if you didnt order it
The way it applies here: these discs are being sent out to music people
unordered, and so the music recipients were owners of these copies, and
they could transfer them to Augusto and Augusto had the benefit of the first
sale rule
The statement on the CD says if you accept the cd then you agree with the
license terms- the court said that is not enough to create an acceptance
because there is no response
But professor doesnt agree: he thinks they did something, they accepted the
CD and used the discs and thus agreed to the terms. Professor thinks that
arguably it did form a K in terms of the license agreement
K issue- shrink wrap contracting
The court uses several different types of reasoning and then goes and talks
about the district courts reasoning and doesnt like the district courts
reasoning even though they came to the same result
The district court looked at Wise
Wise said that if the recipient doesnt have to return the copy, then they are
the owner of the copy
But the appellate court said no, and reconsidered that and has a different
rule now
The fact that the recipient never has to return the copy, the phonorecord,
does not show by itself that they are the owner of the copy
Its relevant, not determinative, but we can take that into account
The court cites the three element rule from vernor, on the bottom of pg 808809, but they say that it may not apply in this circumstance and why there is
transfer of ownership in this case
Vernor v. Autodesk (this is the main rule, the UMG case is the
exception)
Three step process to determine if a software user is a licensee rather than
an owner:
o 1) copyright owner specifies that its a license not a sale
o 2) significantly restricts the users ability to transfer software
o 3) imposes notable use restrictions
the software in this case was held to be that the ownership was not
transferred
there doesnt have to actually be a sale for the first sale rule to apply, it can
be a gift
94
Professor thinks that most of the courts get it wrong when dealing with
software and first sale rule:
from the start they go wrong when they ask if this is a sale or if this is a
license
because this is a false distinction. Software for example, there is both a sale
and a license. Typically the physical medium, the cd, is sold. But the
copyright of the computer program is not sold. The recipient receives a
license to make certain uses of the copyrighted program.
So there is two different transactions going wrong
But there really is a sale, there is a sale of the physical object, and a license
to make use of the computer program
They also get wrong that you can license a physical object. Example, this
disc is not sold but licensed to you.
There is no such thing as licensing an object. License means permission. But
you cannot license a physical good. You can rent, lease, lend it, but you
cannot license a physical good
The software developers have just invented that term to confuse the courts
So if they say in the license agreement, that a disc is licensed to you that
they havent transferred ownership, they could do this by a rental program.
But this is too cumbersome keeping track of those physical object. But that
would be the legitimate way from preventing the first sale rule from applying
in these transactions
The first sale rule only applies if you are an owner of the copy, but if you are
using a cloud service, you never have a copy of the software
Professor thinks that the criterion the district court relied on in UMG,
regarding the WISE case, that if someone gives you a physical item in return
for money then you are the owner of it
A lot of courts go wrong in analysis of the first sale rule because they forget
about the distinction between a copy and work of authorship. And they talk
about the ownership of the work as if that were the criterion, rather than
ownership of the object.
The criterion in the statute is ownership of the material object.
First sale exceptions
How to kill the used book market:
state on the notice on the outside of the shrinkwrapped book:
1) "this book is licensed to the user, not sold."
2) "this book may not be transferred to any other user without the advance
written approval of West Publishing, Inc."
3) "this book may be used by a single user only, and only w/in the US and its
territories and possessions
Difficulties: enforcement, market constraints (students would buy the
books from other companies possibly - although the profs choose which
books to use)
95
Brilliance Audio, Inc. v. Haights Cross Communications, Inc. (2007)

Ds were allegedly repackaging, relabeling, and renting out Brilliance's
audiobooks. Ps never authorized Ds to do this.
Brilliance argues exception to the first sale doctrine for sound recordings of
literary works based on sec. 109(b): owner of the copy can resell, but can't
rent it out.
poorly drafted provision. 2 phrases that are apparently contradictory:
1) exception from first sale rule applies to any sound recordings (and comp
programs)
2) only sound recordings of musical works
Ct solution: look at legislative history for help.
Ct. rule: First sale rule invented by SC in 1908 = part of the traditional
bargain process. Publisher gets to decide when to first sale copies to the
public. Once it has made that decision, it has gotten all its reward under the
Copyright Act and then the right shifts to the owner of the copy. (General
rule: If you own a thing, you can do whatever you want with it)
1984 Record Rental Amendment: "unless authorized by the owners of
copyright in the sound recording and in the musical works embodied by
therein, the owner of a particular phonorecord may not..."
economic justification for public lending: copyright owner gets some royalties
every time the material is lent. The amount received will be reflective of
how valuable the material actually is to society.
(how about private lending? this logic should apply to that too...lending to a
family member = giving more money to the publisher? hard to enforce that
though)
sec. 109(c): display right - owner of a copy is entitled to display that copy
publicly, either directly or via projection.
First sale and importation
Quality King Distributors, Inc. v. L'anza Research Int'l, Inc. (1998)
L'anza's mad b/c they only sold their shampoo in the US to certain salons
(marketing scheme). The products that went around the world and came
back were being sold at a discounted price. They claim infringement of the
copyrighted text of the label on the shampoo bottles.
What provision of the Copyright Act was being infringed? sec. 602 (prevents
importation to the US w/o consent of the copyright owner and makes
reference to distribution right). Also 501 (right to sue), and sec. 106
(distribution right).
Application of 602(a) here: Sup. Ct. rule - b/c of the first sale doctrine, 602(a)
doesn't apply (no right to prevent distribution after selling it off to someone).
[reversing Dist./App. cts]
96
Ct. accepts argument that 602(a) is infringement of distribution right under

106 under 106, all exclusive rights are limited by secs. 107-122.
Other argument: 1) statutory exceptions to 602 would be superfluous if first
sale doctrine is applicable - an importation implies that there's going to be a
first sale. Ct. lists other situations where first sale rule would still apply
(pgs. 824-25); 2) text of 501: anyone who violates under sec. 106 OR imports
under sec. 602.... (makes it look like they're separate things). Ct. says that
602 explicitly says it's subject to 106, AND if it's not subject to 106, it loses
all the limitations under 106 either (like fair use in sec. 107).
This was a poorly drafted statute that can't really be reconciled.
Ginsburg concur: only applies to roundtrip occurrences, not to copies
manufactured outside the US and then imported.
The adaptation right
Lee v. A.R.T. Co. (1997)
Lee = artist who sells her art through outlets. A.R.T. bought some
notecards/lithographs (with Lee's original work on them) from the outlets and
mounted them on ceramic tires and resold them.
P alleges these are derivative works that can't be resold.
Ct: These aren't derivative works b/c they're not transformative (not original
work of authorship, nor did it recast, transform, or adapt P's work). "No one
believes" a museum violates sec.106(2) when it frames a painting in a
museum.
(Rothchild: he is assuming the answer w/o providing any justification for
it..not very compelling reasoning).
Definition of "derivative work":
1) to be derivative work, it has to be based on a pre-existing work and
transformed/recast/adapted in some way.
2) to be a derivative work, it has to itself constitute an original work of
authorship (certain level of originality by the second user required)
P focuses on the 1st sentence, D focuses on the 2nd one
Ct: Don't have to choose sides. Even if we go w/P's focus, P loses b/c the
works were not transformed, recast, or adapted. (Rothchild: not very
obvious. Seems like a conclusory statement).
p.835: they're paying Lee for every tile they're making, so she's getting paid
the same way she would if they wanted to reproduce her work
photographically and paid her a royalty (typical way of licensing a work). As
economic matter, doesn't make sense to give her a right to control this use
of the copies.
so why would she make a big deal about this? Maybe moral rights (being
able to control your own works). J. Easterbrook says no moral right in U.S.
here.
97
Things to know about sec. 115 (compulsory mechanical license):

1) applies only to nondramatic musical works
2) right is to make/distribute phonorecords, not copies
3) right is only to make and distribute, not to perform or prep derivative
works
4) there must first be an authorized public distribution of phonorecords
5) primary purpose req
6) making an arrangement is permissible (but can't butcher it...can't change
basic melody/fundamental character of the work...e.g. doesn't allow what
Live Crew did to "Pretty Woman")
7) must serve the copyright owner w/timely notice
Sampling
Newton v. Diamond (pg 847) (2004)
Newton gave license for sound recording of "Choir" to ECM Records, who
gave license to Beastie Boys. He still has the rights to the composition.
Beastie Boys is using 3 notes/2% of "Choir" throughout their song.
Substantial similarity analysis: filter out similarities between unprotected
elements and only look at the protected elements. Court must filter
out/ignore elements of copying attributable to the sound recording.
Rule: 1) test for de minimus: only if the average audience would not
recognize the appropriation; 2) whether the copying goes to trivial or
substantial elements (considering qualitative/quantitative significance of the
copied portion in relation to the P's work as a whole, not in relation to the
copied work as a whole). Doesn't matter that it runs throughout the whole
Beastie Boys song if it's not a significant part of "Choir".
This was only 2% of the recording and wasn't a particularly significant part of
the song (according to an expert, doesn't go to the heart/hook of the song),
so it was de minimus.
Compare to Gottlieb (pinball) case...observability, length of time pretty
good correspondence.
The Court noted that Diamond had a license to use Newton's performance,
he just didn't have a license to use the underlying composition. Therefore, in
order to be infringement, the sample had to be such that the average person
would recognize that the notes were written by Newton.
Newton had argued that his flute playing technique was unique and that
people could tell he was playing just by listening to how the notes were
98
sounded. But the Court found that didn't matter because it was only the
underlying notes that were the basis for the infringement claim.
Newton should probably have added annotations to his sheet music so that
his unique play style would have been described in the underlying
composition. That would have granted him the protection he was looking for.
Dissent: There was expert testimony on the other side saying that the
composition itself was unique/distinctive enough, so the case shouldn't be
decided on SJ. (Rothchild: even if the segment was distinctive here, it had to
have more than 2% to be significant).
sec. 114(b): exclusive rights of the owner of copyright in a sound recording
(under clause 1 of sec. 106/reproduction right) don't extend to
making/duplication of separate, independent sound recording that's fixed.
If you make your own independent sounds in a sound recording, no matter
how closely you imitate another sound recording, you don't infringe (as long
as you don't copy the actual sounds/bytes).
(There's a difference between infringing a sound recording and infringing a
musical work).
Bridgeport Music, Inc. v. Dimension Films (2005)
"I Got the Hook Up" movie soundtrack in "100 Miles" song copied riff off of
"Get Off" by George Clinton Jr. It was a digital, direct sampling (undisputed).
2-second sample copied, pitch lowered, and "looped" to extend to 16 beats.
Appears 5 places in "100 Miles" (each segment about 7 secs).
Dist. Ct: This was de minimus and also not substantially similar
P: No substantial similarity/de minimus analysis should be used when D
acknowledges it digitally sampled a copyrighted sound recording
App. Ct: Agree with P. If it's not entirely of an independent fixation (sec.
114(b)), there's infringement.
Difference between capturing the actual sounds vs. imitating
independently
Policy reasons to interpret statute this way: get a license or do not sample
(very simple).
Fair use defense is still available; Dist. Ct. can consider this on remand (one
factor of fair use: substantiality of the use). (Rothchild: If this knocks out de
minimus, doesn't it also knock out fair use?)
The appellate court said that the de minimis copying rule does not apply to
sound recordings, since the copyright on sound recordings is limited. Other
types of copyrighted works are protected from reproduction of any significant
aspect of the works, while sound recordings are only protected against
unauthorized duplication of the actual recording.
The world at large is free to imitate or simulate the recorded performance.
99
The court relied upon 17 U.S.C. 114(b), which gives a sound recording
copyright owner the exclusive right to duplicate the sound recording and
also gives the copyright owner the exclusive right to create derivative works
in which the actual sounds fixed in the sound recording are rearranged,
remixed, or otherwise altered in sequence or quality. Thus, unauthorized
sampling, no matter how minor, is an infringement.
Public Performance/Display Rights

"perform" (sec. 101): recite, render, play, dance, or act the work, directly or
by means of any device/process (or in motion pictures, showing its images in
any sequence or make the accompanying sounds audible).
Showing one frame of a movie is not a performance; it's a display
("display": show a copy of a work/show individual images nonsequentially).
sec. 106: copyright owner controls public performance right. applies to
literary, musical, dramatic, and choreographic works, pantomimes, motion
pictures, other audiovisual works (why aren't sound recordings included
here? Rothchild: As pub. policy matter, Congress didn't want to include
these. Radio stations have to pay royalties for musical compositions, but not
for the sound recordings).
sound recordings not protected at all until 1972.
There's performance right for sound recordings if they perform them by
means of digital audio transmission.
What can't you perform? PGS or architectural works (they can be displayed
though)
When you use a tv or radio, you're "performing" for purposes of copyright.
Don't need a license b/c you're not publicly performing it. Private
performances not covered.
"public" (sec. 101): perform/display at a place open to the public/other place
where subst. number of ppl outside a normal circle of a family/its social
acquaintances is gathered; or transmit performance/display of the work to
public place/to the public (only has to be transmitted to people CAPABLE of
receiving performance, don't need them to actually receive. Also, they don't
all need to be in the same place/time).
XII. Public performance and display rights

Public
Fermata International Melodies, Inc. v. Champions Golf Club, Inc. (pg
895) (1989)
100
- Rule: Restaurant of a private golf club is a semi-public place (substantial

number of persons outside the normal circle of a family/its social
acquaintances) (sec. 101)
performances in semipublic places such as clubs, lodges, factories, sumer
camps, and schools are public performances subject to copyright control.
Cartoon Network v. CSC Holdings, Inc. (2008) (pg 897)
Issue: whether the showing of recorded DVR programs are public
performances
There's a separate copy made each time an individual subscriber pushes a
button. When the subscriber wants to play the program, it's that specific
copy that's played - it's not sent to anyone else.
Is sending out all these individual programs considered public?
Ct App.: "performance" = watching the recorded program on the unit when
the user asks for it. Is this a transmission under the transmit clause?
No, b/c the recordings are all separate/unique.
(Dist. Ct: "performance" is the actual program (same movie), going to a large
number of people).
App. Ct: If this were the case, then every performance would be a public
one.
App. Ct. discredits House Report that says that it's a public performance
even if no one tunes in
Is this inconsistent with giving public performance rights to the copyright
owner? (It would've gone the other way if there was only one copy of the
movie made). (Rothchild: seems odd from the standpoint of copyright
policy).
The display right
Public Performance/Display
Display right: only real significance is with transmissions (109(c) exemption
allowing most in-person displays vs. transmitted, public displays of
copyrighted works) prevents many everyday activities from being
considered infringement (like taping cartoon outside office door or wearing
designed clothing)
Transmissions via internet more problematic than tv transmissions (more
control over internet transmissions; more likely to serve as a substitute for a
hard copy. In old days, you would purchase hard copies).
RAM copies doctrine isn't very significant (idea that every time something's
copied to RAM on comp it's copied and prima facie infringement without
permission) don't need that doctrine b/c we have the display right. Every
time something goes on your screen, that's potentially infringement of
display right (RAM copies doctrine = superfluous now).
Because of the display right a decision (by a court or Congress) that
temporarily storing data in RAM does not generally constitute the making of
101
a copy would not leave copyright owners defenseless in the modern world of
computer networks.
Since transmitting a copyrighted work for viewing over the Internet generally
involves making a public display, the public display right will generally allow
the copyright owner to hold the transmitting party liable for making such
transmissions without authorization, regardless of whether any data is stored
in RAM during the transmission, or whether that storage infringes the
reproduction right.
Limitations on the public performance and display rights
Section 110 exemptions (see handout)
Perfect 10, Inc. v. Amazon.com, Inc. (pg 912) (2007)
Case about searches/Perfect 10's copyrighted images. Google displaying
thumbnails.
Issue: is display right being infringed?
Copies of thumbnail images stored on Google servers. But in-line linking:
images coming from third party websites. Who's responsible for a display via
website image?
Rule: The server test - the entity operating the server that actually serves up
the image is responsible for the display. (But the entity that provides a link
to a website holding an infringing image is NOT responsible for the display
that results where a user clicks on a link)
Is Google doing any more than Cablevision with its DVR (how can we
distinguish? Is this volitional activity by Google?)? Seems the same...setting
up the system and doing nothing.
The website publisher's computer, rather than Google's, stores/displays
the infringing image.
On appeal, the Ninth Circuit upheld the district court's decision that the hyperlinks were not
infringing on Perfect 10's copyright. It agreed with the district court's assessment that
infringing websites existed before Google and would continue to exist without Google, thus it
was not a contributory infringer. Furthermore, Google had no control over infringing sites and
could not shut them down, so any profits it may or may not extract from users visiting those
sites did not constitute vicarious infringement.
The court also agreed that including an inline link is not the same as hosting the material
yourself. So in the case of framing, while it may "appear" that Google was hosting infringing
material, it was only hosting a link to the material which the browser interpreted should
appear in a certain way.[2]
The Ninth Circuit did, however, overturn the district court's decision that Google's
thumbnails were infringing. Google's argument, which was upheld by the court, was a fair
use defense. The appellate court ruled that Google's use of thumbnails was fair use, mainly
because they were "highly transformative." Specifically, the court ruled that Google
transformed the images from a use of entertainment and artistic expression to one of
retrieving information, citing the similar case, Kelly v. Arriba Soft Corporation. The court
reached this conclusion despite the fact that Perfect 10 was attempting to market thumbnail
102

images for cell phones, with the court quipping that the "potential harm to Perfect 10's
market remains hypothetical."[3]
The court pointed out that Google made available to the public the new and highly beneficial
function of "improving access to [pictorial] information on the Internet."[1][3] This had the
effect of recognizing that, "search engine technology provides an astoundingly valuable
public benefit, which should not be jeopardized just because it might be used in a way that
could affect somebody's sales." [4]
Google also raised a Digital Millennium Copyright Act (DMCA) safe harbor defense in respect
to the issue of hyperlinks, which Perfect 10 contested. However, the court did not reach an
opinion on the matter as it found that Perfect 10 was unlikely to succeed on the matters of
contributory and vicarious liability because of the other arguments.[1]
Simpleville Music v. Mizell (2006) (pg 920)

Live radio broadcast of copyrighted music that's being performed in a church
Why doesn't the exception apply? It's been transmitted to the public at large
as opposed to just being performed to the people at the service.
Morganactive Songs, Inc. v. Padgett (2006)(pg 923)
Charity benefit event at a bar.
Issue: whether proceeds actually went to charity (indirect admission charge
to pay for drinks)
testified that there was a net loss after donating to charity and paying for
drinks/food. Argued that she shouldn't be kept from using this exemption.
Money collected via alcohol sales > alcohol costs + what she gave to
charity...she also testified during deposition that the proceeds didn't go to
charity (she retracted the statement later but the Court wouldn't accept it).
(Rothchild: court didn't analyze this situation correctly??????. She did this for
a commercial purpose/got an indirect commercial advantage...getting good
publicity for her bar by doing the fundraiser there).
110(4) "commercial advantage"
Broadcast Music, Inc. v. Claire's Boutiques, Inc. (1991) (pg 925)
Chain store Claire's - each store has read the homestyle provision (110(5)(A))
and complied. BMI says no; they look at Claire's chain as a whole which has
thousands of speakers.
P: This exception is meant for small establishments like a restaurant, not for
big corporations that can pay a licensing fee
Issue: Do you aggregate all the stores in a chain for purposes of transmission
analysis?
Rule: Ct. says they look at the stores individually.
(They looked at legislative history but they shouldn't have since there wasn't
ambiguity).
Performing rights organizations
For band/performer to play at a public venue, they must secure a license
from ASCAP, BMI, etc. or else they're infringing. The venue purchases an
103
annual performing rights license (the band doesn't need to worry about it,
but is responsible if it's at a place without a license like club/hotel/arena).
Exception: ASCAP forbidden from licensing pub. performances of music in
connection w/the movie industry.
Digital Performance Right for Sound Recordings
Arista Records, LLC v. Launch Media, Inc. (2009)
Launch operated internet radio website (LAUNCHcast)
1) Exempt from the performance right (blanket license- does not
involve sound recordings)
- non-subscription broadcasts (i.e., regular broadcaster that broadcasts
digital signals)
- a transmission within a business establishment
- a transmission to a business establishment for use in the ordinary course of
business (e.g. Muzak)
2) subject to statutory license (but still protected transmission)
(statutory licensing fee set by copyright royalty board)
- non-interactive webcasting
- satellite radio
- cable TV music channels
- but many conditions apply for entitlement to the statutory
license
3) Non-exempt, and not subject to statutory license (negotiate for
individual licensing fees for each sound recording)
- interactive services
- non-interactive services if advance program scheduled is published, too
many cuts from a record played together, etc.
How does the court determine if it's an "interactive service"?
Statute: 17 USC 114(j)(7): enables a member of the public to receive a
transmission of a program specially created for the recipient, or on request, a
transmission of a particular sound recording...which is selected by or on
behalf of the recipient.
Ct: LAUNCH has a very complicated algorithm to determine which song to
play next and the user can't control it.
Ultimate criteria: whether or not Launchcast substitutes for buying records
(conclude that it doesn't).
(Rothchild): the court's discussion/analysis is completely wrong/illegitimate.
They should just read the first sentence of the statute and stop right there
(transmission is specially created for the recipient)
Subscription service? Transmission that's controlled and limited to particular
recipients, and is paid for
not a broadcast; it's a webcast
Broadcast transmission? Terrestrial broadcast station licensed by FCC (not
satellite)
104
This case is not in category 1; it's category 2.

SoundExchange (Perf. Rights Org. for sound recordings): collects royalties
based on public performances of sound recordings. Distribute money as
prescribed by statute in 114(g) to diff. categories of recipients. 50% of
royalties go to copyright owner of sound recording. 45% goes to recording
artist. 5% goes to backup musicians/vocalists. Artists/rights holders must
register for SoundExchange to get paid.
Hypo (p. 959 n.4): streaming music site on demand; how many licenses do
you need? Interactive service (not subject to statutory
license)...SoundExchange administers statutory license (so they wouldn't do
this consensual licensing...casebook is wrong). In this case you need a
category 3 license, not category 2 (so you need to negotiate for a license).
Remedies
17 USC 504: infringer liable for either actual damages/any additional profits
of the infringer, OR statutory damages (copyright holder can choose) -->
statutory damages = 30k for infringement, 150k for willful infringement
usually. Go for this if you won't make much money from the copyright works,
or if it's not possible to calculate the fair market value.
If you want to get statutory damages or attorney's fees for a published work,
you have to register the work in a timely manner (before infringement
commenced...3 month grace period).
Unpublished work: similar, but no 3 month grace period.
register the works ASAP!
sec. 411: you can wait until you have been infringed to register. Can't bring
suit until then though. And if after 3 months, you don't get statutory
damages/attorney's fees.
XIII. Remedies
Actual damages
Banff Ltd. V. Express, Inc. (pg 964)
Defendant Express, a retail clothing chain, infringed the copyright of plaintiff
Banff in the pattern of a fishermans sweater by selling a knockoff version of
that sweater. The jury awarded plaintiff $200,685 in actual damages.
Issue: Was there a causal connection between the infringement and the
copyright owners losses to warrant an award for actual damages?
Holding:
Section 504(b) enables a prevailing plaintiff "to recover actual damages
suffered by him or her as a result of the infringement.
A copyright owners actual damages are equal to the profits she would have
accrued but for defendants infringement.
105
The plain language of 504(b) contemplates that actual damages are only
available where there is a causal connection between the infringement and
the copyright owners losses.
Evidence at trial indicated that it was highly unlikely that Express would have
bought sweaters from Banff.
Express had never done any business with the division of Banff that designed
the fishermans sweaters.
The two parties sold different products at significantly different prices and
had different demographics
Banff offered little evidence that it could have supplied the quantity of
sweaters express needed.
Express purchased between 39,262 and 40,137 of the knockoff sweaters
By contrast, Banff sold only about 400 of its cotton sweaters
Expresss motion for a new trial on Banffs claim for actual damages is
granted.
if you can't prove lost sales or lost opportunities to license, figure out the fair
market value (what a reasonable user would pay)
Infringers Profits
Caffey v. Cook (2006)(pg 970)
Caffey developed idea for show "Three Mo' Tenors". Caffey registered
copyright for the show and it eventually got canceled.
Ds performed their own shows without Caffey's permission - he sues them for
damages
Choice between compensatory and statutory damages - Caffey chooses
compensatory.
statutory: up to $30k, up to $150k if willful. Could be $180k (6
infringements x $30k, maybe even 180 x 3 for 3 tenors?) NO b/c Copyright
Act says only 1 statutory award per work - 6 performances = copies of the
same work. Statutory = $30k or $150k.
Maybe since there was $330k gross revenue, they thought they would get
more money via compensatory damages.
Compensatory: 1) infringer's profits attributable to infringement; 2) copyright
owner's actual damages (example: see slide)
actual damages drops out quickly b/c Caffey's author fee was only $93.75
per performance.
1st thing P must do: show gross revenue reasonably related to infringement
(even though statute doesn't seem to indicate it needs to be related)
Davis case (980 n.4): P = maker of weird eyewear
This is an easy case: just look at the revenue from the shows: $330k
Next step: Ds need to prove deductible expenses - expenses like
salaries/other direct costs; allocated overhead; income taxes; profit
attributable to other factors
106
Direct costs/Overhead: prorated. 1/17th of the amount attributable to

infringing performances since they performed 17 concerts.
Income tax deduction: it's like another expense - makes sense it'd be a
deduction
Profit attributable to other factors: not all revenue from the show was made
from infringing the copyright. Always a mixture of infringing/non-infringing
conduct (Ds' talent; association w/"The Three Tenors"; the songs; everything
else not included in the thin copyright)
Judge determined "other factors" = 2/3, so P only gets 1/3
Actual damages: real question - what's the fair market value of a license fee
to put on a show? Court concluded 6 shows = $34k...license should've been
way more than $93
p.983 n.6: example: profit = $3k ("profits of the infringer"), license fee =
$2.5k (actual damages) can't recover $5.5k (of the 3k, 2.5k was the
unpaid license fee)
can recover 3k total
Statutory damages
Bryant v. Media Right Productions, Inc. (pg 984)
Bryant entered into agreement w/Media Right to market their album.
Copyrights were registered to both the album as a whole and the individual
songs
They specifically didn't give Media Right the rights to make more copies of
the albums (Bryant would provide the copies if more were needed)
Media Right entered into agreement with Orchard Agreement to distribute
albums. 4 years later, Orchard made digital copies of the album to sell
online (didn't inform Media Right or Appellants). They made $12.14 from
physical sales and $578.91 from digital downloads. Media Right didn't pay
Appellants the $331.06 they were entitled to.
Dist. Ct. awarded statutory damages of $2400
Issues w/award: Appellants argue 1) Ct. erred in refusing to grant separate
statutory damages for each song on the album; 2) Ct. erred in findings on
intent; 3) Ct. erred in determining amt of damages
App. Ct: Copyright Act only allows one award of statutory damages for any
"work" infringed - all parts of a compilation = one work. Only 1 statutory
damage award.
Contrary authority: alternative view - if each part of the compilation is
worth something on its own ("independent economic value" test), the parts
can be considered individually. App. Ct. says they can't deny the plain
statutory language. Congress can rewrite if they want to.
Innocence: Agreement stated Orchard could distribute the albums by any
means including digital Orchard reasonably relied on the agreement
language (Not clear error for Dist. Ct. to find innocence)
107
Willfulness: Not unreasonable for Maxwell not to have anticipated that the
Orchard Agreement granted Orchard the right to distribute digital copies of
the albums
Calculation of statutory damages: defer to Dist. Ct's discretion. $2.4k based
on meager profits from infringing sales and no deterrence needed
Dist. Ct. didn't abuse its discretion when deciding not to award attorney's
fees (appellee's defenses not objectively unreasonable)
Attorney's Fees
Matthew Bender & Company, Inc. v. West Publishing Co. (2001)
Dist Ct awarded attorney's fees against West.
App. Ct: You can do that sometimes, but the ground on which attorney's fees
were rewarded isn't defensible here.
Something that supports awarding attorney's fees: losing party = objectively
unreasonable (not present here) perfectly reasonable for West to adopt the
legal position it did (it got dissenting opinions here)
Another valid ground for awarding attorney's fees: losing party's
unreasonable CONDUCT during trial (not present here). If you're a
copyright owner, you're not required to cooperate with someone you think is
infringing.
Remand to Dist. Ct. to determine if there was any other specific pre-litigation
misconduct by West
Injunctions
Salinger v. Colting (2010) (pg 100)
Colting wrote sequel to Catcher in the Rye; Salinger didn't like this so he
wanted a preliminary injunction against Colting to bar him from
producing/selling the books
Dist. judge was applying existing rules in 2nd Circuit in a copyright case -->
presumption of irreparable harm to copyright owners who show a likelihood
of success on the merits when seeking a preliminary injunction
App. Ct: Can't presume irreparable harm in a patent or copyright case. Have
to go through the whole 4-factor test (equitable standard) to determine
whether an injunction is warranted.
4 factor test:
1) likelihood of success on the merits or sufficiently serious questions going
to the merits to make them a fair ground for litigation and a balance of
hardships tipping decidedly in favor of the P
2) P demonstrates he'd suffer irreparable injury in absence of injunction
3) balance of hardships tips in P's favor
4) Public interest wouldn't be disserved by issuance of preliminary injunction
Analysis of 2nd/3rd factors: Can't presume irreparable harm to copyright
owner who's established likelihood of success absent preliminary injunction,
but almost always there is irreparable harm. Proving loss of sales due to
infringement is always hard.
108
Remanded to Dist. Ct. to go through the 4 factors

Criminal Offenses see page 1011
XIV. Preemption
Orth-O-Vision, Inc. v. Home Box Office (1979) (pg 1063)
Contractual relationship between Orth-O-Vision and HBO to distribute HBO's
programming. Ortho stopped paying HBO and stopped supplying HBO
w/monthly subscriber reports req'd by K even though it kept marketing HBO's
program service to subscribers
Public performance right issue (CL claim of "misappropriation") --> copyright
claim in disguise
HBO's state law claims are clearly preempted by Copyright Act unless they
involve rights "not equivalent" to exclusive rights of copyright in 17 USCA
106.
Ct: CL unfair competition doctrine HBO relies on is equivalent, if not identical
to copyright rights recognized in fed statute.
HBO's motion for SJ denied
Toney v. L'Oreal USA, Inc. (2005)
Model Toney sued companies for using her image without her permission.
She brought claim under IRPA (Illinois Right of Publicity Act) --> grants
individuals right to choose whether/how to use their identity for commercial
purposes. Need written consent to use their identity for commercial
purposes
Not a work w/in subject matter of copyright b/c Toney's identity isn't fixed in
a tangible medium of expression as defined in 17 USCA 102(a). --> the
subject matter of such a claim isn't a particular photo/picture of P. The very
identity/persona of the P as a human being is protected here.
A persona can't constitute a "writing of an author" w/in meaning of Copyright
Clause of Constitution
Unlike copyright law, "commercial purpose" is a req'd element of IRPA (this is
the "extra element" that makes it different from the copyright claim)
Pro-CD, Inc. v. Zeidenberg (1996)
P produced phone directory on CD-rom. Sells it for commercial and noncommercial use.
Z buys the non-commercial (cheaper) one and uses it commercially.
Ct: limitation to non-commercial use is part of the license terms that apply to
Z's use of copyrighted work.
State law claim: breach of K.
Z says you can't bring breach of K claim b/c it's preempted by sec. 301.
109
Is it fixed in a tangible medium? Yes. Within one of the subject matters in

sec. 102 or a compilation/derivative work? Not one of the subject matters,
but yes, it's a compilation.
Does the state law protect rights equivalent to sec. 106 rights? Copyright =
rights against the world, Ks only affect their parties; strangers may do as
they please (so, Ks do not create exclusive rights but copyrights do).
(Rothchild: bad way to reason out this case...this is just about who the rights
apply to, but not the actual content of the rights).
"Extra element" here that makes the claim qualitatively different from
copyright claim: show K existed (consideration, mutual assent)
Some commentators: since it's shrinkwrap, there's no actual consent.
Anyone who uses it is subject to it, so it's not a qualitatively different claim
than copyright.
110

Real Estate Finance Outline

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Real Estate Finance Outline

Uploaded by

Copyright:

Available Formats

Downloaded From OutlineDepot.

Wayne State University Law School

Introduction/Overview of Copyright Act

Natural rights of the author, aka moral rights

What do you have to do to get a valid copyright?

Copyright gives you 5 Basic Rights:

Downloaded From OutlineDepot.com

Basic hurdles of copyright protection: Fixation,

Three Requirements for Copyrightable Subject Matter

102(a) states that a work must be fixed in any tangible medium of

Fritz v. Arthur D. Little, Inc. (1996) (pg 34)

Downloaded From OutlineDepot.com

Issue: Whether there is a copyright in what is delivered orally?

Downloaded From OutlineDepot.com

Williams v. Arctic International (pg 55)

Downloaded From OutlineDepot.com

18 USC 2319A: provides criminal remedies to the government

The second requirement for copyrightability is that a work be an original

Basic Requirements For Originality:

Downloaded From OutlineDepot.com

independent creation + at least some minimal creativity; Feist

Downloaded From OutlineDepot.com

Prunt v. Universal Music Group, Inc. (pg 65)

Downloaded From OutlineDepot.com

Originality and Derivative Works

Downloaded From OutlineDepot.com

Dissent: "Substantial variation" standard is too high. Should be "any

Downloaded From OutlineDepot.com

To be copyrightable, a work must be original to the author and possesses at

Low Standard of Creativity: Originality requires . . . some minimal level of

Abstractions and Ideas (Idea/Expression

Downloaded From OutlineDepot.com

Rule: "Where, as here, the idea at issue is an interpretation of a historical event,

Scenes a faire- (Things that arent ideas or facts) incidents, characters or

CCC Information Services, inc. v. Maclean hunter (pg 120)

Downloaded From OutlineDepot.com

CHARACTERS AND PLOT

Downloaded From OutlineDepot.com

"Scenes a faire" doctrine- sequences of events that necessarily result

Downloaded From OutlineDepot.com

Downloaded From OutlineDepot.com

innovative compilations without impairing the policy that requires public

If they gave copyright protection to these instructions, what would happen?

Downloaded From OutlineDepot.com

copyrighting a mere handful of forms, could exhaust all possibilities of future

When an art taught by a book can't be used without employing the

Utopia Provider Systems, Inc. v. Pro-Med Clinical Systems, L.L.C.

Downloaded From OutlineDepot.com

1) Whether computers should be

117. Limitations on exclusive rights: Computer programs

Computer programs were copyrightable as literary works: literary works

Downloaded From OutlineDepot.com

Source Code: Short hand code that

Object Code: Code that a machine can

Copyright protects the program as long as it remains fixed in tangible

Apple Computer, Inc. v. Franklin Computer Corp. (pg 165)

Franklin argues that Computer programs might be protectable if they're in

Issue: If the operating system program is copyrightable, then this is infringement.

Difficult to separate function from expression in computer programs since

Downloaded From OutlineDepot.com

Downloaded From OutlineDepot.com

Pictorial, Graphic and Sculptural Works

Definition of pictorial, graphic, and sculptural works in 101: Such works