Table of Contents

I. Introduction and Theories of Copyright..................................................................................................................3

Theories of Copyright..................................................................................................................................................4
General Principles.......................................................................................................................................................5
II. Copyrightable Subject Matter (What Earns CR).......................................................................................................6
Authorship..................................................................................................................................................................6
Originality...................................................................................................................................................................6
Fixation.......................................................................................................................................................................7
Idea/Expression Dichotomy........................................................................................................................................7
Facts and Compilations...............................................................................................................................................8
Derivative Works (Copyrightability)............................................................................................................................9
Pictorial, Graphic, and Sculptural Works...................................................................................................................11
Applied Art Problem.........................................................................................................................................................................11
Architectural works...................................................................................................................................................11
Characters.................................................................................................................................................................12
III. Ownership............................................................................................................................................................14
Initial Ownership (Ameneunsis, Work For Hire, Joint Author)...................................................................................14
Transfer of Copyright Ownership..............................................................................................................................18
Duration, Renewal, and Termination of Transfers.....................................................................................................19
IV. Exclusive Rights and Access..............................................................................................................................21
§106 - Exclusive rights in copyrighted works.............................................................................................................21
(1) The Right of Reproduction...................................................................................................................................21
Analytical Framework for Infringement...........................................................................................................................................21
Substantial Similarity........................................................................................................................................................................23
Approaches to Substantial Similarity...............................................................................................................................................25
What is a Copy?................................................................................................................................................................................27
Compulsory License Under §115.....................................................................................................................................................28
(2) Right To Create Derivative Works........................................................................................................................29
(3) The Right to Distribute and First Sale Doctrine....................................................................................................32
First Sale Doctrine (§109).................................................................................................................................................................32
(4 and 6) The Right of Public Performance................................................................................................................34
Performing Rights Societies.............................................................................................................................................................37
(5) The Right of Public Display...................................................................................................................................37
Limitations on Rights of Public Performance and Display...............................................................................................................38
Technological Protection and Access.........................................................................................................................38
DMCA...............................................................................................................................................................................................38
Access Protection (§1201) – Protection Against Circumvention.....................................................................................................39
What is a “Work Protected Under This Title”?................................................................................................................................41

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 Moral Rights.............................................................................................................................................................42
§106A - Rights of certain authors to attribution and integrity...................................................................................42
Rights of Integrity.............................................................................................................................................................................44
V. Fair Use.................................................................................................................................................................45
Parody and Satire.............................................................................................................................................................................45
Unpublished Works (Harper & Row)...............................................................................................................................................48
Remix Art..........................................................................................................................................................................................49
Companion Works............................................................................................................................................................................51
Application of Fair Use Doctrine to New Technologies...................................................................................................................52
VI. Liability.............................................................................................................................................................55
DMCA Safe Harbor Provisions (§512)..............................................................................................................................................58

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 I. INTRODUCTION AND THEORIES OF COPYRIGHT
MAGIC NUMBER: 1923 (works published prior to 1923 are in public domain)

England the Statute of Anne

o The Statute of Anne was the first statute of all time to specifically recognize the rights of authors and created the
foundation of all subsequent legislation on the subject of copyright.
 Its title and preamble identified “encouragement of learning” as a primary objective
 Renewable 14 year term so long as author was living
 Registration requirement
 Penalty for infringement
o In DONALDSON V. BECKET (H.L. 1769), the House of Lords overruled a King’s Bench decision that the Statute of
Anne did not in any way limit the common law copyright (which existed in perpetuity even after publication), but
only established additional remedies.
Colonies, the Constitution, and the First Copyright Statute
o Every state except Delaware adopted copyright statutes to protect authors, but protection was limited to the
boundaries of each state. Because of the problems arising from the environment, the Constitutional drafters
authorized congress “to promote the progress of science and useful arts, by securing the exclusive right to their
respective writings and discoveries.” (Art. 1, sec. 8, cl. 8)

The First Copyright Statute (and Revisions)

The Act of 1790
o The Act of 1790 protected the author or his assigns of any “map, chart or book” for fourteen years (with one
renewal term) upon registration, publication, and depositing a copy with the Secretary of State within six months
after publication.
 There was also a provision against unauthorized use of an author’s manuscript, thus recognizing the old
common-law right before publication without requiring observance of any formality.
 As to published works, however, the burden rested on the creator, and courts construed the Act very
strictly to require authors to proceed with the utmost caution in following process.
o WHEATON V. PETERS (US 1834) posed the question of whether common-law copyright existed in the U.S. and, if
so, whether and to what extent the Federal Copyright Act abrogated the right.
 The Court held that there was no federal common-law copyright and that any potential claim to common
law copyright descending from England had not been adopted by Pennsylvania (the relevant forum state).
The Court went on to state that common-law copyright in published works had not existed in any state but
was a right created by Congress.

The 1976 Act

o Exhaustive section-by-section analysis in House Judiciary Committee Report (H.R. Rep. No. 94-1476) regarded
as definitive expression of “legislative intent.”
o Marked a significant departure from earlier traditions
 Single federal system to protect all original works of authorship, whether published or unpublished, from
the moment they are fixed in a tangible medium of expression.
 Single term of protection (life + 50 years)
 Fair Use limitation
 Copyright liability on cable television and jukeboxes but subject to compulsory license fees

International Copyright and Its U.S. Impact

o Berne Convention makes protection automatic throughout all countries acceding to it without the need for authors
or artists to follow specific national formalities.
 Protection of unpublished works limited to citizens or residents of a Union country.
 When US finally ratified in 1988, adjustments to copyright act were made to be consistent with Berne.
o Universal Copyright Convention treaty offered a new route for international protection

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  Works by a national of a member nation as well as works first published within a member nation’s
borders were protected in every other member nation.

Purposes of Copyright
Constitutional Basis
 As reflected in the Constitution, the ultimate “purpose” of copyright is to foster the growth of learning and culture
for the public welfare, and the grant of exclusive rights to authors for a limited time is a means to that end.
 Therefore, in enacting a copyright law, Congress must consider (1) how much legislation will stimulate
production and benefit the public, and (2) how much the granted monopoly will be detrimental to the public
interest
o An author’s surviving family and the presence of publishers complicate the balancing of these interests, since
creation may be motivated by the possibility of securing future benefit for family members and since
publishers help to distribute works to the public. With these groups, we must ask how justifiable a
“monopoly tax” is.
 Publishers must get benefit of copyright to incentivize publication of creative works. Without
publishers, many creative works would not be distributed, so vesting publishers with copyright
helps authors.
Statutes
 17 U.S.C. §101-106, 202
 Copyright Term Extension Act (CTEA)
 Digital Millenium Copyright Act (DMCA)
 Visual Artists’ Rights Act (VARA)

THEORIES OF COPYRIGHT
1. Natural Law (Moral Rights; favored in EU): Authors should be given rights simply because they deserve it as
the fruits of their labor. There is a bond between the author and their work, and this bond should be recognized.
Recognizes two models (1) Lockean: when a person produces, there is a mixture of their labor and the
environment around them. God recognizes that it is right to give what you have mixed your labor into. (2)
Helegian: a “personality-based” model, which supports the idea that you have invested yourself into your work
product. The law should recognize this, that the work is yours and that you have put a part of yourself into it.
a. However, there are limitations. For one, the protection under this theory only extends to direct products
of your labor. Second, the Lockean Proviso: copyright must ensure that there is enough, and as good, left
in common for others. Finally, this extends only as long as it does not adversely affect others and make
them worse off.

2. Incentive Theory (favored in US): Theory that we want to encourage creation of expressive works. Copyright
exists to overcome free-rider problem. Rights are given as a kind of prize for creation. Copyright exists to solve a
market failure: in the absence of the right, there would be no production because of no incentive. The desire to
reap what you sow promotes creation.
a. However, there are two complications. (1) Authors will probably work anyways for a number of reasons
without this specific incentive. There are other things that prevent copying as well (e.g. inferior quality,
head start on first release, etc.). In certain cases, people also prefer the original anyway, like with artistic
masterpieces. (2) There is a need to balance the costs – the costs felt by the consumers and by the authors
when removed from the public domain.
b. “The primary objective of copyright is not to reward the labor of authors, but to promote the progress of
science and useful arts…To this end, copyright assures authors the right to their original expression, but
encourages others to build freely upon the ideas and information conveyed by a work” FEIST

3. Industrial Policy (Wu-made): Countries have copyright regimes because they want to promote and subsidize
beneficial and homegrown industries like entertainment or publishing or software. If they want to boost an
industry, then they dial up copyright protections. Focus is on giving what industries need or desire. However, the

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 government must hurt another industry to do this. Lots of tech companies are hurt by this, as they generally being
by violating copyright.
a. More normative subsets of this theory:
i. America wants to be a nation of creators
ii. Industrial trade theory – We want to be a country that is an exporter of creative works

4. Republican: There is a need to understand the goals of the 1st Amendment and the ideal forms of republicanism.
If we want a functioning democracy, we also need a functioning publishing industry. We also need people who
can make money publishing. Perhaps there is also a desire for a culturally-rich people – is it possible to be a
middle-class person in the arts? You need $ in the industries to have that. Creates competition for public support
and attention that is independent of the government.
a. Absent copyright, you need a wealthy patron to fund the arts, which wastes time because artists have to
seek out benefactors
i. However, this assumes that you need money to get ideas out, which may no longer be true
because of the Internet and lower costs for production of documents.

GENERAL PRINCIPLES
1. Copyright protection encompasses a broad scope of what constitutes “Writing,” including products that
exhibit some form of personal expression.
o BURROW-GILES LITHOGRAPHIC CO. V. SARONY: BGL used a lithograph of Sarony’s portrait of Oscar
Wilde. Sarony sues (he was a famous portrait photographer). Literary productions of authors include “all
forms of writing, printing, engraving, etching, etc., by which the ideas of the mind of the author are given
visible expression.”
 Held: writing is not construed narrowly, but should be interpreted broadly to include things like
photographs, books, maps, charts, etc. The photograph is an original work of art and the product
of plaintiff’s intellectual invention, of which the plaintiff is the author and of a class of inventions
for which the Constitution intended to secure copyright protections.
 Copyright law should expand to deal with new technologies.
 An author is “he to whom anything owes its origin; originator; maker; one who completes a work
of science or literature.”
 Wu: The creative spirit does not change, but the formal receptacle does, it is the creation
(“deliberate/authorial choices) rather than the receptacle that deserves protection (and it is these
choices that are productive.).
2. Decisional conception of creativity: originality creation (and thus, copyright) is defined by the presence of
choices – BURROW-GILES
o In photography, there are artistic choices made, including lighting, composition, subject. Labor went into
the photographs.
3. No artistic judgment or qualitative criteria is used to define what works deserve copyright
O BLEISTEIN V. DONALDSON LITHOGRAPHING CO.: Donaldson Lithographic copied lithographs of circus
advertisements. Court decided that copyright should extend to works that are commercial or not of high
artistic value. Rejects view that judges should be judging what is worthwhile and artistic.
 Held: the purpose of a work does not determine whether it deserves copyright protections.
 “The copy is the personal reaction of an individual upon nature.”
 Criticism: If the point is to incentivize creation, then do we really need copyright for
advertisements? The value of advertising is the product being sold.
 That being said, the art market is a commercial market and does not exist in a vacuum.
Also, just because an artist made an advertisement doesn’t mean that he doesn’t make
fine art.
 What if the value and effectiveness of the advertisement is in the artistic element of the
advertisement? If others copy the ad and enhance their business because of it, they are
stealing the labors and value of the ad. Does not seem to be equitable.
 Exhibits desire to promote idea that copyright is a general purpose commercial law.

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 II. COPYRIGHTABLE SUBJECT MATTER (WHAT EARNS CR)
AUTHORSHIP
According to Burrow Giles, an author is “he to whom anything owes its origin; originator; maker; one who completes a
work of science or literature.”

KELLY V. CHICAGO PARK DISTRICT (2011): Kelley, artist, commissioned to make a flower installation in Grant Park,
consisting of ovals and elliptical flower beds. Later, flowers got weeds and the park changed the shape. Kelley sued under
VARA to maintain integrity of his work. Court decides that the work is not an original work of authorship, that
authorship is an entirely human endeavor. Said gardens are “planted and cultivated, not authored.” Also had issues
with fixation – difficulty in figuring out when fixation occurred. Cf. Jeff Koons’ dog with flower.
 Held: Kelley’s garden is not copyrightable because it was not fixed and it was not authored.
 “We are not suggesting that artists who incorporate natural or living elements in their work can never claim
copyright.”
o This case seems to distinguish between works that incorporate living elements, and those that entirely
consist of living elements.
 One of the problems with this case is that the court confuses the right in physical property and the right to
copyright, which are two different rights. You can have a right to the copyright, and not the right to the
Human physical work.
Authorship?
 Wu: wrongly decided because the author made creative decisions. All works require some use of nature.
NARUTO V. SLATER (2016):
Court decides that monkey
cannot have ownership of
copyright. Only humans can Joint Ownership
have copyright.
 Also consider GARCIA V. GOOGLE, INC (2015): Garcia performed in Innocence of the Muslims.
example of Lorena Garcia was like wtf – so she asserted copyright ownership over her brief performance.
O’Neil’s Painting Court found that she was not a joint owner. Her theory of copyright would splinter the
With Puppies (using movie into a lot of different works. Not desirable. Copyright Office generally do not
treats to lead puppies allow copyright claim by an individual actor or actress in his or her performance
and paint canvas). contained within a motion picture.
Compendium of the U.S.
Copyright Office Practices ORIGINALITY
says for a work to qualify as
a work of “authorship” a
ALFRED BELL CO. CATALDA FINE ARTS: Mezzotint method engraving. Author
work must be created by a
applied for CR for reproduction of public domain work. Copyrights are different from
human being. Works that
patents in that they do not require that the person seeking copyright protection was the
cannot be registered include:
first author, but rather only that the work was independently arrived at and also affords
photographs taken by
less protection than a patent. “Original’ in reference to a copyrighted work means that
monkeys, mural painted by
the particular work ‘owes its origin’ to the ‘author.’”
elephants, claims based on
 Held: mezzotint reproductions are sufficiently original to have copyright.
appearance of animal skin,
driftwood shaped and o “All that is needed to satisfy both the Constitution and the statute is
smoothed by ocean, natural that the ‘author’ contributed something more than a ‘merely
stone, applications for song trivial’ variation, something recognizably ‘his own.’”
naming the Holy Spirit as the  The copyright law of 1909 covers “other versions of works in the public
author of the work. domain” and engravings constitute such other versions.
Similarly, the Office will not  The author is entitled to a copyright if he independently contrived a work
register works produced by a completely identical with what went before…
machine or mechanical
process that operates SHELDON V. METRO-GOLDWYN PICTURES CORP (1936): “Borrowed the work must
randomly or automatically indeed not be, for a plagiarist is not himself pro tanto
like reducing/enlarging size 6
of existing work, converting
from analog to digital
format, transposing song
from B to C.
MAGIC MARKETING V. MAILING SERVICES OF PITTSBURGH (1986): Magic Marketing designed envelopes with designs
that included words like “PRIORITY MESSAGE: CONTENTS REQUIRE IMMEDIATE ATTENTION.” Court decided
that the designs were not sufficiently original and were categorized as just short phrases and mere listing of ingredients or
contents. Required author must contribute more than a trivial variation of a previous work.
 Holding: Phrases printed on the envelopes are generic in nature & lack the minimal degree of creativity necessary
for CR protection.
 Things that are not copyrightable: fragmentary words and phrases, forms of expression dictated solely by
functional considerations, clichéd language and expressions communicating an idea which may only be conveyed
in a more or less stereotyped manner, directions or instructions for use

TIN PAN APPLE INC. V. MILLER BREWING CO. (1994): “Hugga-hugga” and “Brr” are copyrightable elements because
they are more complex than a single drum beat dand in the complexity “lies, arguably at least, the fruit of creativity.”
 Wu: Perhaps the way in which a short phrase is said could be copyrighted (because it is an expression rather than
the words itself); however, this would be a very thin copyright. The more unique aspects you add, the stronger the
copyright becomes.

I.C. V. DELTA GALIL (2015): The placement of Hi and Bye and smiley/sad faces might be original. The selection and
arrangement is enough to survive motion to dismiss. (Again, creative choices).

FIXATION
17 USC §101 – Fixation by video or taping of a work of art is not copyrightable unless the recorder has the permission of
the author; however, it is the performer who has the copyright (“by or under the authority of the author”).

IDEA/EXPRESSION DICHOTOMY
General principle: one cannot own facts or theories; however, one can own one’s expression of facts or theories
 Justification: Republican Theory: nobody owns the truth and to allow ownership of facts impedes the search for
the truth
 Wu: What constitutes an idea/standard/expression is a dynamic concept.
§102(b): In no case does copyright protection for an original work of authorship extend to any idea, procedure, process,
system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained,
illustrated, or embodied in such work.
 House Report: Copyright pertains to the literary, musical, graphic, or artistic form in which the author expressed
intellectual concepts.

Merger
Where an idea and the BAKER V. SELDEN (US 1879): Selden published book with his system of bookkeeping
expression of that idea are so (included a chart). Sues Baker who used similar chart for CR infringement. Court rules
closely related that they that Selden’s chart is the idea and that ideas are not copyrightable. No copyright on the
merge, in which case neither charts. Selden did not have the copyright in the first place and therefore Baker did not
the expression nor the idea infringe.
are copyrightable.  Held: ideas cannot be copyrighted; Selden’s chart was idea and expression that
Example: mathematical is merged; so closely related so as to be merged. The mere copyright of the
equations are not book did not confer upon the author the exclusive right to make and use
copyrightable, but an account-books configured in the manner described within the book.
explanation of a  Wu: reinforces the idea that CR that takes away too much from public domain
mathematical equation is. is not okay.
Question to ask: whether
other people could express SITUATION MANAGEMENT SYSTEMS, INC. V. ASP CONSULTING LLC (1ST CIR.
the same sentiment in 2009): Court found that training manuals to teach techniques for effective
different words. communication and negotiation within workplace could be copyrightable. “Others may
not appropriate SMS’s expression when describing that process or system.”

7
  Found that district court erred; the fact that the works describe processes doesn’t make the expression
noncopyrightable. Overall arrangement and structure are subject to CR.
 There are numerous ways to teach concepts and processes in the works.

BIKRAM YOGA COLLEGE OF INDIA, L.P. V. EVOLATION YOGA, LLC (9 TH CIR. 2015): Bikram attempted to CR a
series of yoga poses, tried to prevent Evolation from using his poses. Bikram says that the poses are uniquely chosen for
exact desired result – health benefits. Court finds that the poses are just a series of processes – just facts. Not
copyrightable.
 Held: facts and processes are not copyrightable material.
 Was Bikram defeated by himself? By saying that his sequence was the best sequence for the desired effect, he
might have led the court to believe there was a merger problem. He would have been better served by simply
stating that he designed the poses and the sequence in order to look good.

PUBLICATIONS INT’L, LTD. V. MEREDITH CORP (7TH CIR. 1996): recipes in cookbook of yogurt dishes are not
copyrightable.

FACTS AND COMPILATIONS

§101: Compilation – “a work formed by the collection and assembling of preexisting materials or of data that are selected,
coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The
term “compilation” includes collective works.”
§103(a) covers compilations and derivative works, does not confer an exclusive right to any preexisting work.
o Does not extend to any part of a work in which such material was used unlawfully.
o Copyright of a new version only extends to material that was added by the author and does not extend to
any preexisting material that is in the public domain. §103(a)(2)

Originality: The Feist Standard

FEIST PUBLICATIONS, INC. V. RURAL TELEPHONE SERVICE (1991): Rural published a phone directory that included
more information that Feist. They used Feist’s book to do so. Feist sued. Court found that Rural did not take anything that
was copyrightable.
 Held: The names, towns, and phone numbers copied by Feist were not original to Rural and therefore were not
protected by the copyright in Rural’s combined white and yellow pages directory. Facts are not copyrightable,
but compilations are.
o Facts don’t owe their origin to an author, but rather discovery. Seems to be a disavowing of labor theory.
o A directory can be copyrighted if it features an arrangement or selection that is original.
o The bar for creativity is very, very low. Originality is found in all but “a narrow category of works in
which the creative spark is utterly lacking or so trivial as to be virtually nonexistent.
 Three criteria for a compilation to be copyrightable :
o (1) The collection and assembly of pre-existing material, facts, or data
o (2) The selection, coordination, or arrangement of those materials, and
 Key criteria: focuses on the manner in which the collected facts have been selected, coordinated,
and arranged.
o (3) The creation, by virtue of the particular selection, coordination, or arrangement, of an “original” work
of authorship
 Alphabetical arrangement is insufficiently original to warrant a copyright.

ROCKFORD MAP PUBLISHERS V. DIRECTORY SERVICE CO.: “The copyright laws protect the work, not the amount of
effort expended. A person who produces a short, new work or makes a small improvement in a few hours gets a CR for
that contribution fully as effective as that on a novel written as a life’s work”

NASH V. CBS, INC. (7TH CIR. 1990): Nash wrote book about Dillinger, suggesting that he was not dead. Suggests that he
went out west and lived a full life. CBS made a TV episode taking the theory.
 Held: If you represent fiction as fact, it will be treated as thus.

8
HOEHLING V. UNIVERSAL
CITY STUDIOS
“To avoid a chilling effect
Key fact: Nash didn’t depict the book as fiction, but rather fact!
on authorsowho contemplate
tackling an historicalalso
o CBS acted
issue or their own “distinctive overlay” – they input sufficient creativity.
 Two
event, broadrationales:
latitude must be
granted oto Made-up facts shouldn’t determine whether my subsequent interpretation and expression based on them
subsequent
authors who are makefactual
use orofnot. Nash represented them as fact, so I can interpret them as so.
1st amendment protections: government shouldn’t determine what is true or not.
We needmatter,
historical o subject
 Court
including recognizes
theories need to balance: “Because any new work depends on others even if unconsciously, broad
or plots”
“CR law protection
does of notintellectual
protect property also creates a distinct possibility that the cost of litigation—old authors trying
to get a(divorced
hard work ‘piece of the
from action’ from current successes—will prevent or penalize the production of new works”
expression), o &“Yethardtowork
denyisauthors all reward for the value their labors contribute to the works of others also will lead
not an essentialtoingredient of little writing, just as surely as excessively broad rights will do”
inefficiently
CRable expression”
o Thus, “before the first work is published, broad protection of intellectual property seems best; after
“Explanatory it hypotheses”
is published, narrow protection seems best”
are just as much in the
public domain as
“documented facts” ATARI GAMES CORP. V. OMAN (D.C. 1992): Copyright for simple game (Breakout)
Scenes a faire (incidents, was denied because simple geometric shapes are not copyrightable. Court finds that the
characters, or settings arrangement itself can be indicative or authorship; says register failed to examine the
which are as a practical “flow of the game as a whole.” The elements that contribute to the creativity of the
matter indispensible, or at work include the rectangular paddles, choice of colors, placement and design of scores,
least standard, in the changes in speed, etc. Does not necessarily mean Breakout got the CR, but that the
treatment of a given topic) register just had to consider these things.
are not copyrightable as a Takeaway: You have to look at the work as a whole rather than its component parts;
matter of law the audiovisual display of a computer game is copyrightable independently from the
software program code
TOKSVIG V. BRUCE
PUBLISHING (endorses a
quasi-sweat of the brow DERIVATIVE WORKS (COPYRIGHTABILITY)
theory, but there was too §101: Definitions
much borrowing) A “derivative work” is a work based upon one or more preexisting works, such as a
Court held that the author of translation, musical arrangement, dramatization, fictionalization, motion picture
a biography of Hans version, sound recording, art reproduction, abridgement, condensation, or any other
Christian Anderson infringed form in which a work may be recast, transformed, or adapted. A work consisting of
the copyright of the author of editorial revisions, annotations, elaborations, or other modifications, which, as a whole,
an earlier biography by using represent an original work of authorship, is a “derivative work”
portions of Anderson’s
letters as well as some of the
themes and structure” Getting the CR for
o The author Derivative Works:
in Toksvig 1. You get the
“spent years copyright if you get
tracing permission or if you
down leads. take a work from the
If all [his] E TS -H OKIN V. Sdomain.
public KYY SPIRITS INC.
work, right 2. If your adaptation picture of their product. They didn’t like the photo
down to infringes, you don’t so they hired another one who took similar pictures.
[his] words, get the CR. First photographer sued.
may be used 3. CR is only in the  Held: Photographs that take picture of
without choices that are something that isn’t copyrightable are not derivative
compensatio made in the works.
n, there will derivative work. o The creativity manifested in the
be too few decisions are the lighting, shading, angle, and
original background. Original photographer doesn’t have CR
investigation in the subject, the Skyy vodka bottle.
s, and facts 9
will not be
available on
which to
build”
KEELING V. HARS (2D. CIR. 2015): The Point Break case. “We hold that if the creator of an authorized work stays
within the bounds of fair use and adds sufficient originality, she may claim protection under the Copyright Act for her
original contributions.”

COOLEY V. PENGUIN GROUP (SDNY 2014): Photograph only has CR in the creative choices he made, not the sculpture
he took a picture of.

L. BATLIN & SON V. SNYDER (2 ND CIR. 1976): Jeffrey Snyder (defendant) contracted with a company in Hong Kong to
create a smaller version of Uncle Sam bank made of plastic and with some of the symbols changed. Snyder obtained a
copyright registration for his version of the Uncle Sam mechanical bank. L. Batlin & Sons, Inc. (Batlin) (plaintiff)
attempted to import Uncle Sam mechanical banks, but its shipment was refused entry into the United States by the U.S.
Customs Service due to Snyder’s copyright registration. Batlin filed suit, seeking a declaration that Snyder’s copyright
was invalid. The district court granted Batlin a preliminary injunction. Snyder appealed.
 Held: Snyder’s copyright registration is invalid because a reproduction that requires minimal skill and varies only
minutely is not copyrightable.
o Snyder’s bank is a simple plastic reproduction of a public domain work.
o “Originality is, however, distinguished from novelty; there must be independent creation, but it need not
be invention in the sense of striking uniqueness, ingeniousness, or novelty”
o “To support a copyright there must be at least some substantial variation, not merely a trivial variation
such as might occur in the translation to a different medium”
 Originality cannot be demonstrated by simple demonstration of physical skill or special training. A considerably
higher degree is required—true artistic skill—to make the reproduction copyrightable.
o E.g. ALVA STUDIOS V. WINNINGER (Hand of God): Originality was found because “it takes an extremely
skilled sculptor many hours working directly in front of the original” to effectuate a scale reduction”
 Policy consideration: the purpose of copyright (progress) cannot be served unless there is some genuine
difference.
 Dissent: The author has made a distinguishable variation of a prior work – this should constitute sufficient
originality. Cases like Alva Studios “depend solely on difficulty of process to establish originality, since there was
no attempt to alter or improve the underlying work”
Takeaway: 2 ways for a reproduction in a ∆ medium to be CRable: 1) substantial variation, which constitutes
independent creation or 2) great skill (“true artistic skill”) and originality (cf. Hand of God). There is a higher bar for
originality for derivative works.
Wu: The CR plastic version competes with the metal version (the public domain one) in the market, b/c the public
policy of having something in the public domain is that we want people to have cheaper access to it, to give Batlin a CR
would contradict this policy choice.
 That the distinguishing factor between Batlin & Hand of God was creativity is in tension w/ Bleistein.

DURHAM INDUS., INC. V. TOMY CORP (2ND CIR. 1980): (∆ copies π’s authorized Disney toys) Rejects contention that
originality requirement of copyrightability can be satisfied by mere reproduction.
Vs.
EDEN TOYS, INC. V. FLORELEE UNDERGARMENT CO. (2ND CIR. 1982): (Paddington bear drawing insufficient for
originality) The court held that even a work having the “same aesthetic appeal” as an underlying work such as to
constitute an infringement if authorized might incorporate “non-trivial contributions” to the underlying work and thus be
copyrightable if authorized.
GRACEN V. BRADFORD (authorized painting of Dorothy in the Wizard of Oz for a contest run by the defendant, 3d P
copied)
Π’s painting (which essentially copied still-frames of the movie) lacked sufficient originality for copyright
Bear in mind that “the purpose of the term [originality] in copyright law is not to guide aesthetic judgments but to assure a
sufficiently gross difference between the underlying and the derivative work to avoid untangling subsequent artists
depicting the underlying work in copyright problems”
o The court wants to prevent overlapping claims when immaterial modifications are made

10
PICTORIAL, GRAPHIC, AND SCULPTURAL WORKS
Definition: “Pictorial, graphic, and sculptural works” include two-dimensional and three-dimensional works of fine,
graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical
drawings, including architectural plans. 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.

APPLIED ART PROBLEM

Copyright doesn’t extend to applied art because that would extend into area of patents. The lower standards of copyright
would allow rights holders to get patent monopolies, which implicates antitrust concerns.

A useful article is one “having an intrinsic utilitarian function that is not merely to portray the appearance of the
article or to convey information.”

HOME LEGEND LLC V. MANNINGTON MILLS INC. (11TH CIR. 2015): π copied maple design. Planks with maple design
deemed not functional by 11th circuit even though purpose was to hide defects on the ground. Court says even though
secondary purpose is to hide imperfections, it’s not enough to invalidate CR protection. Perhaps suggests primary
purpose/function is aesthetic?

MASQUERADE NOVELTY V. UNIQUE INDUS (3D CIR. 1990): Masks resembling the noses of animals is not useful article.
Function is not like clothes, which is to keep people warm and cover modesty. Masks are purely for aesthetic purposes
that has no real utilitarian use.
 Looks to GAY TOYS V. BUDDY L CORP (6TH CIR. 1983). Toy planes have no intrinsic utilitarian function.

STAR ATHLETICA, L.L.C. V. VARSITY BRANDS, INC. (US 2017): Varsity Brands copied design of Star Athletica
cheerleader uniforms.
 Held: Court finds that designs on cheerleading uniforms are copyrightable because they are separable from the
useful article.
 Under the new test, courts simply ask:
o Can the design feature be perceived as a two or three dimensional work of art separate from the useful
article?
o If so, would that feature qualify as a protectable work – on its own or in some other tangible medium of
expression – if imagined separately from the useful article into which it is incorporated?

ARCHITECTURAL WORKS
An “architectural work” is the design of a building as embodied in any tangible medium of expression, including a
building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition
of spaces and elements in the design, but does not include individual standard features. §101.

Copyright Protection Act of 1990

Protection for architectural work required by the Berne Convention, which U.S. ratified in 1988
Added “architectural works” to § 102(a), defined that term in § 101, and set out limitations in § 120.
Added protection for architectural works created on or after December 1, 1990 and any unconstructed works “embodied
in unpublished plans or drawings”

House Report, Architectural Works Copyright Protection Act

“Design” includes:
o Overall form
o Arrangement of spaces and elements within the design
Protection does not extend to individual standard features such as windows and doors

11
 o However, individual features are copyrightable if they “reflect the architect’s creativity.”
Does not include bridges, canals, dams, etc. (b/c of public policy concern in favor of making the best design available)
Not contained under pictorial/graphic works:
o Separability test does not apply to architectural works
o Two-step analysis instead:
1) Determine if original design elements are present
2) If so, then are they functionally required?
o If the answer is yes for both, the design is protectable without regard to physical or conceptual
separability
o If the answer to either question is no, the design is not protectable.

CHARACTERS
Character copyright is more than the sum of its parts; individually the aspects of a character might not be copyrightable,
but together they start to create one.

NICHOLS V. UNIVERSAL PICTURES CORP (2ND CIR. 1930): (Learned Hand) Play infringement case concerning
characters. “[T]he less developed the characters, the less they can be copyrighted; that is the penalty that an author must
bear for marking them too indistinctly.”
 Plot of a play can be copyrighted, and the same can sometimes be said of a character.
 Specificity test: if a character is specific and developed enough, it can be copyrighted.

WARNER BROS PICTURES V. COLUMBIA BROADCASTING SYSTEM (9TH CIR. 1954): Hammett (author) licensed certain
rights of Maltese Falcon to Warner. Independently gave CBS the right to use the Sam Spade character and name, along
with other characters on radio programs (just couldn’t use Falcon story). Warner sued, claiming infringement to story and
chracters.
 Held: The conveyance of rights to produce the “Maltese Falcon” did not sign away Hammett’s rights to cast the
characters in other stories or license others to do so.
 The rights to the characters were not explicitly included in Warner brothers contract. Hammett also produced
more stories with the characters – Warner didn’t complain then.
 Court thinks that including characters in rights to the story would be too much – would impede creativity.
Although they do leave an exception for stories in which the character is the story being told.
 “It is conceivable that the character really constitutes the story being told, but if the character is only the
chessman in the game of telling the story he is not within the area of the protection afforded by the copyright…
The characters were vehicles for the story told, and the vehicles did not go with the sale of the story.”
 INDICATION THAT THIS HAS BEEN OVERRULED.

ANDERSON V. STALLONE (C.D. 1989): After watching Rocky III, Anderson wrote treatment of Rocky IV, discussing it
with MGM. Stallone completed the script later and then movie released.
 Held: Anderson’s treatment was not copyrightable because he infringed upon the character copyrights of Rocky.
Characters can have copyright.
o Characters met the specificity test of Learned Hand and the story being told test in Warner Bros are
copyrightable.
 Court looked to (1) interrelationships and development of characters – they are all central to the film; (2) Rocky is
such a highly delineated character that his name is the title of all movies and his character is identified with very
specific character traits; (3) the story being told was the characters as they focused on the development and
relationships of the various characters.
o Feels weak? Also, court didn’t reach issue of whether a single character alone are delineated with enough
specificity to garner CR protection.
o Wu: actually naming the character might be important. Or making him the titular character.
 Nimmer: copyrightability of characters is “more properly framed as relating to the degree of substantial similarity
required to constitute infringement rather than in terms of copyrightability per se.”

12
MGM V. AMERICAN HONDA MOTOR CO. (C.D. CAL 1995): Court found ∆’s commercial copied from and were
substantially to James Bond films. Story being told and fully delineated test fulfilled. Also said that “characters visually
depicted in a television series or in a movie” are entitled to more protection than purely literary characters.
 Also noted that with certain characters like Tarzan, Superman, and Sherlock Holmes, audiences want to see
heroes at work, not the surrounding story. (Story being told test).

DC COMICS V. TOWLE (9TH CIR. 2015): ∆ makes full-scale Batmobile cars. DC comics sue, saying that he infringes on
copyright in comic book images of the Batmobile. Cars have been visually and physically distinct in various iterations.
Court still finds Batmobile is entitled to copyright protections.
 Held: Character copyright doesn’t have to be limited solely to human or speaking characters. Batmobile is
entitled to CR protection.
o Looks to HALICKI – Eleanor from Gone in 60 Seconds. Car has physical and conceptual qualities, and
does not need to maintain physical appearance in each context.
 Court finds that Batmobile is identified by its name and certain consistent traits like high tech and bat-motifs.
 Note: if the car was registered as a sculpture by DC, then it wouldn’t work probably.
Three Part Test for
Character is Entitled to CR GAIMAN V. MCFARLENE (7TH CIR. 2004): Gaiman co-wrote several issues of Spawn,
(from DC Comics): creating new characters like medieval Spawn, Angela, and the Count. Issue No. 9 was
1. Character must a huge success; Gaiman wanted more profits. McFarlene disputed that the characters
generally have were not copyrightable, arguing that they were scenes a faire, stock characters.
“physical as well as  Held: (Posner) Although the verbal description of [the character] may
conceptual well have been of a stock character, once he was drawn and named and
qualities.” given speech he became sufficiently distinctive to be copyrightable.
2. Character must be o Court also suggests that Warner Bros case is wrongly decided. Notes
“sufficiently that it was overruled in subsequent cases.
delineated” to be o The difference is that literary characters leave much up to the
recognizable as the imagination, but graphic characters are given exact expression.
same character  Stock characters cannot be copyrighted because “such stereotyped characters
whenever it appears. are the products not of the creative imagination but of simple observation of
a. Must display human comedy” and because they would take too much from the public
consistent, domain.
identifiable o Count and Medieval Spawn are not stock characters – they have
character specific characteristics and are drawn.
traits and  “As long as the character is distinctive” other authors can use stock characters
attributes, without fear. If it doesn’t take too much out of the public domain, then it is
although the copyrightable.
character  This case seems to suggest that it doesn’t necessarily mean that the more
need not detailed and deep a character is, the more CR the character is.
have a
consistent KLINGER V. CONAN DOYLE ESTATE, LTD (7TH CIR. 2014): Sherlock Holmes
appearance. copyrights for most stories (56) expired. Final 10 stories, due to CR extensions, were
3. Character must be not due to expire until starting 2018. Klinger co-edited anthology containing modern
“especially iterations of Sherlock and Watson stories. Didn’t ask for license, but estate told
distinctive” and publisher that it wanted $5k for the license; publisher agreed. Klinger wrote sequel;
“contain some estate asked for more cash. Threatened to prevent distribution. Klinger sued estate for
unique elements of declaratory judgment that he was free to use the materials out of CR. Estate argued that
expression.” the copyright was still active because the characters were still in CR for the 10 stories
still protected.
 Held: Derivative works (characters) only get copyright for what they add, not what they are based on. Estate only
gets copyright for the additional details in the stories from the 10 stories still in copyright, not the entire character
of Sherlock and friends.
o Court didn’t buy argument that authors would be discouraged from writing if they didn’t get copyright;
also thought their rule would encourage authors to reuse old characters instead of creating new ones.

13
 o ∆ argued that round characters develop over time but this has nothing to do with copyright. These
characters are only incomplete in the sense that Doyle might want to add additional features – these are
derivative works.
 If a copyright doesn’t vest until a character is complete, then a copyright could be perpetual .
 Hypo: what’s the best argument against the opinion?
o Economic based argument? Perhaps we need incentives for people to create and reap benefits. Maybe
we ought to prevent overgrazing (tragedy of the commons)?
 Has some weight, if you look at Air Pirates case maybe. Affects the value of the IP?
 Wu: case of an overreaching estate.

III. OWNERSHIP
INITIAL OWNERSHIP (AMENEUNSIS, WORK FOR HIRE, JOINT AUTHOR)
§201 - Ownership of copyright
(a) Initial Ownership.— Copyright in a work protected under this title vests initially in the author or authors of the
work. The authors of a joint work are coowners of copyright in the work.
(b) Works Made for Hire.— In the case of a work made for hire, the employer or other person for whom the work was
prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a
written instrument signed by them, owns all of the rights comprised in the copyright.
(c) Contributions to Collective Works.— Copyright in each separate contribution to a collective work is distinct from
copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an
express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to
have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective
work, any revision of that collective work, and any later collective work in the same series.
(d) Transfer of Ownership.—
(1) The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation
of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.
(2) Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by
section 106, may be transferred as provided by clause (1) and owned separately. The owner of any particular
exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the
copyright owner by this title.
(e) Involuntary Transfer.— When an individual author’s ownership of a copyright, or of any of the exclusive rights
under a copyright, has not previously been transferred voluntarily by that individual author, no action by any
governmental body or other official or organization purporting to seize, expropriate, transfer, or exercise rights of
ownership with respect to the copyright, or any of the exclusive rights under a copyright, shall be given effect under
this title, except as provided under title 11.

AMENEUNSIS
LINDSAY V. RMS TITANIC (SDNY 1999): In 1993, Lindsay directed independent documentary depicting salvage of
Titanic and conceived of another film project using high illumination lighting equipment in 1996. Negotiations followed
but not written agreement executed. Lindsay planned filming in advance, in much detail and during 1996 expedition
directed the cameras, the angles, etc even though he didn’t operate them himself. Lindsay sued for compensation,
claiming that ∆ were exploiting and profiting from his film. ∆ argued that π didn’t have any protectible right in footage
because he didn’t actually physically film the footage.
 Held: Since π gave the film crew specific instructions such that their contributions were essentially a
transcription, his contribution was not minimal, and thus, he was the author of the film and has a protectable
copyright in it. One can be an author of a work by dictating it to another who “fixes” the words or notes.
o Court: In the context of film and photography, it makes sense that the author is usually the one who films
or takes the picture, however the concept is actually broader than this argument.

14
 Which Standard to Apply:
There are four interpretations
of when the creator of a
o Based on the π’s work assertions, he meets the Burrow-Giles and Feist standards because he created
is an employee:
storyboards and gave the film crew
1) Whenever specific
the directions, and thus, the final footage is a product of π’s
original intellectual conceptions.
hiringHeparty
also reviewed
retains the footage everyday.
o In ADRIEN, the plaintiff was found to be
the right to control the author of a map where his “expression of an idea is
transposed by mechanical orthe roteproduct
transcription
(πs); into a tangible form under the authority of the party.”
 Appeals court in that case noted o Test that the printer did not “intellectually modif[y] or technically
enhance[] the concept articulated” failsby theb/c π.
o In GESHWIND, the court found that where it would plaintiff made only minimal contributions to the final
the
product and had only some, if any, of his suggestions incorporated into the final product, he was not the
include
author. works
 Where a π exercises a high degree of control over thattheare film operation – including the type and amount of lighting
used, the specific camera angles to be employed,commiss and other detail intensive artistic elements of a film – such that
the final product duplicates his conception and vision,ioned heinis the film’s author.
 Artistic control is important. EXAM CONTROL works AS FACT TRIGGER FOR BOTH INITIAL
OWNERSHIP AND JOINT AUTHORSHIP ISSUES created
while
WORKS FOR HIRE employe
With works for hire, the author is the employer or certaindcommissioning (b/c parties. It is an exception to the general rule that
the author is the party who actually creates the work one who
commiss
§ 101: Definitions: A work ions
made for hire is  The employeralways or person who commissioned the work is the author, and owns
1) a work prepared by an all of the rightshascomprised a in the copyright, unless the parties expressly agree
employee within the otherwise in writing.
right to §201(b)
scope of his employment  The differencecontrol between an assignment of rights and the W4H doctrine is that
or W4H are nottheeligible for §§202-03 termination of transfer. In addition,
2) a work specially duration of the copyright and moral rights are different under the W4H
product)
ordered or doctrine. , and
commissioned for use as under
[see below for CCNV V. REID (U.S. this 1989): CCNV commissioned a sculpture for homelessness w/ no
categories] if the parties written agreement, butreasonin
CCNV had certain approval rights (e.g. they approved Reid’s
expressly agree in a sketches). Reid controlledg there a lot of the creation.
written instrument  Held: Reid was would an independent contractor, and not an employee of CCNV, and
signed by them that the have was not a work for hire. Reid worked out of his studio, and
thus, the sculpture
work shall be considered retained for lessbeen thanno two months. Other than deadline, Reid had absolute
a work made for hire. reason
freedom on when and how long to work. CCNV paid Reid a sum dependent on
o Categories: completion offor the work. Rule is that employee refers to meaning of
1) a common-law Congresdoctrine.
contribution  As a general s rule, the to author is the party who actually creates the work;
to a however, thereseparate
is an explicitly carved out exception for works made for hire, in
collective which case thethese employer owns the copyright.
work, 2) a o A finding categorithat a work was made for hire is significant because this
motion findinges,determines ownership, duration, renewal and termination
picture or rights,which
and the right to import goods bearing the copyright.
other o Since usuallythe work is a sculpture (which does not fall in one of the
audiovisual include
categories in §101(2)) and since there was no agreement, in order for
work, 3) a workto be a work made for hire, it must have been a work
the work
translation, prepared
prepared by an employee within the scope of his employment.
4) a at the
supplementa  “To determineinstance, whether a work is for hire under the Act, a court first should
ry work, 5) a ascertain, using direction
principles of general common law of agency, whether the work
compilation, was prepared ,by anand employee or an independent contractor. After making this
6) an determination,risk the of
courta can apply the appropriate subsection of § 101.”
instructional publishe
test, 7) a test r 15 or
or answer producer
material which
therefore, or would
8) an atlas. qualify
 1) Each
putative co-
author must
o Factors to evaluate the hiring party’s (HP) right to control the manner and means of production: skill
have made
required, source of instrumentalities independentl
and tools, location of the work, duration of the relationship between
the parties, whether the HP has the right
y to assign additional projects to the hired party, the extent of the
HP’s discretion over when and how long to work, method of payment, the hired party’s role in hiring and
copyrightabl
paying assistants, whether the worke is part of the regular business of the HP, whether the HP is in
business, the provision of employee benefits,
contributionand the tax treatment of the hired party. (R. 2d of Agency)
 Note: CCNV may be a joint author if it and sReid to the prepared with work “with the intention that their contributions
be merged into inseparable or interdependentwork;parts ofanda unitary whole.” This was not the case, though.
Wu: Purpose of W4H is to suck all of the copyrights oof the people working on a project into one person to make it easier
Collabor
to sell ation
 This is a mechanism for avoiding anti-commons problems alone is (type of coordination breakdown, in which a single
resource has numerous rights holders who preventnot others from using it, frustrating what would be a socially
desirable outcome.) enough,
rather
W. Patry, The Copyright the work
Law (1986) must
The hiring party is the: make at
 Joint Author – if the least a
hiring party JOINT WORKS de
contributes A joint work is a work prepared by two or more authors with the intention that their
minimis
significant artistic contributions be merged into inseparable or interdependent parts of a unitary whole.
copyrigh
effort §101 table
 Sole Author – where contribu
the hiring party has Implication of Being tion.
a Joint Author:
contributed all of the  Each co-authors
2) The authors can do whatever they want with the work, including the
expression and the ability to grant
must havea non-exclusive license without the other owner’s agreement
independent  Each co-authorfully has the right to ask for an accounting of profits and, absent
contractor acts as a other agreements,
intendedreceive
to a pro rata share of the profits
mere amanuensis be co-
 No author – where THOMSON V. LARSON authors (2D CIR 1998): RENT case in which Thomson, a dramaturg
the hiring party playwriting professor
o Test: NYU, helped with dramaturgical assistance and research to
from
contributes only playwright and director. Nothing in K about CR. They worked together, but Larson
whether,
ideas or generalized inputted all changes directly
in and retained control over work. After Larson died,
the
expression incapable Thomson sued for joint-owner
absence status and profits.
of copyright  Held: Thomson of was not a co-owner because statute emphasizes intention of
protection, parties in jointcontract
work. Joint authorship copyright requires both 1) that each
regardless of author’s contributions
ual be independently copyrightable, and 2) that the
whether the hiring authors fully arrange
intended each to be co-authors (Childress test)
party has the right to o Childressments test: in a previous case the court set forth the “standards for
direct and supervise determining
concerni when a contributor to a copyrighted work is entitled to be
the manner in which regarded as a joint author” in the absence of a written contract:
ng listed
the writer performs  Wu: 2d Cir. requires
authorshintent to be joint authors rather than intention for
his work. contributions toip,beeach
merged (statutory)
participa
AALMUHAMMED V. LEE (9TH CIR. 2000) :π assisted in the ntmaking of Spike Lee’s Malcolm X, paid $35K, did not get co-
writer credit intended
 Held: Aalmuhammed was found not to be a joint-author that allbecause he lacked artistic control and there was no
evidence that Lee intended to be joint authors would
 Mastermind conception of joint-authorship be
o Cannot be a mere consultant or assistant identifie
or editor to be a joint-author. Must have creative control.
 Wu: Re: injunction. Thinks courts are reacting to a as d co- problem. Say there’s a big pot of gold at release and
hold-up
authors.
someone sues, they can hold everything up. Courts don’t like that.
o Also, suggests that here control has to do  withInte ameneunsis.
nt is
espe
16
ciall
y
imp
orta
RICHLIN V. METRO-GOLDWYN-MAYER PICTURES, INC. (9TH CIR. 2008): π co-wrote 14 pg. treatment that was basis for
The Pink Panther.
 Held: Richlin is not a joint-author because of no objective manifestations of intent to be joint-author and no
supervisory powers over film. First two factors of below against Richlin.
 Three criteria (“Aalmuhammed factors”) for determining when a work is a joint work (balancing test):
1) Whether the “putative coauthors made objective manifestations of a shared intent to be coauthors” (i.e. a
contract)
2) Whether the alleged author superintend the work by exercising control. “Control will often be the most
important factor”.
3) Whether the “audience appeal of the work” can be attributed to both authors, and whether “the share of each
in its success cannot be appraised”.

GAIMAN V. MCFARLANE (7TH CIR. 2004): Spawn comic book case

 Posner expressed skepticism that co-authorship truly requires each contribution to be independently copyrightable
o Posner rejected altogether this requirement in the context of comic books
o Notes that some types of creative processes often involve the combination of something uncopyrightable
(an idea… for example, of a stock character) with an expression (the artistic rendering of the character)
o Implies that, when considering the independent copyrightability requirement of co-authorship, we should
analyze the process that led to the creative output.

TRANSFER OF COPYRIGHT OWNERSHIP

A ‘transfer of copyright ownership’ is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or
hypothecation of a copyright or of any of the exclusive rights comprised in a copyright whether or not it is limited in time
or place of effect, but not including a nonexclusive license. §101

§201(d) - Transfer of Ownership:

(1) The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of
law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.
(2) Any of the exclusive rights comprised in copyright, including any subdivision of any of the rights specified by section
106, may be transferred as provided by clause (1) and owned separately. The owner of any particular exclusive right
is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by this
title.

§204(a) - Execution of Transfers of Copyright Ownership:

A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a
note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly
authorized agent.

EFFECTS ASSOCIATES V. COHEN (9TH CIR. 1991): special effects for ice-cream aliens movie. ∆ didn’t pay full price, but
used anyway.
 Held: Effects Associates gave Cohen an implied non-exclusive license to use their work. He granted it through
his conduct of giving over the work product, after being paid.
o Court rejects the ∆’s argument that moviemakers are exempt from the “in writing” requirement of §204
for transferring a copyright. Court holds that Effects has copyright in their footage used by the film.
o The purpose of §204 is that copyright holders will not give their copyright away inadvertently. Requiring
that a transfer of the right be done in writing protects copyright holders. Doing so “enhances
predictability and certainty of copyright ownership”.
o Exception to §204 – nonexclusive licenses are not subject to the “in writing” requirements of §204.
 “A nonexclusive license may be granted orally, or may even be implied from conduct”. Nimmer
on Copyright §10.03[A]
 ODDO V. RIES, had found an implied nonexclusive license between an author and a publisher of a
book to publish the book once it had been written.
17
  “π created a work at ∆’s request and handed it over, intending that ∆ copy and
distribute it”.
o This created an implied license.
o Without a license attached, the Court finds, the plaintiff’s contribution to the film would have been of
minimal value, and not worth the $56,000 paid for it by the defendant.
o Here, the passage of the physical channel is used to imply transfer of the license.
 Wu: This case was probably wrongly decided. What are the implied conditions for a nonexclusive license? Do
they need to get paid first?

Implied Licenses: (Asset Marketing Systems, Inc. v. Gagnon, interpreting Effects Associates)
 An implied license exists when:
o a person (the licensee) requests the creation of a work,
o the creator (the licensor) makes that particular work and delivers it to the licensee who requested it,
and
o the licensor intends that the licensee-requestor copy and distribute his work.

Quick lecture on Termination of Transfer, Formalities, and Terms: see notebook.

 Basically, CR owners can get rights back after 35 years if they assign away. (Comic book owners benefitted
from this greatly)
Formalities: see page 495.

DURATION, RENEWAL, AND TERMINATION OF TRANSFERS

Sony Bono Copyright Term Extension Act (1998) [See §§302-303]
 Extended the term of copyright from 50 to 70 years following the death of the author
 Anonymous works and works for hire were extended from 75 to 95 years after publication (rather than
creation)
 20 years were also added to copyrights that existed at the time of enactment; this vests in the current rights
holder

Wu: Five Ways to Explain Expansion of the CR Term:

1) Reflects a Europeanization of copyright law
2) Moving from an economic to a moral view of copyright
3) Powerful lobbying group who owned valuable copyrights wanted to extend them
4) Maybe people now live longer and the statute took account of that fact.
5) In the 18th Century we were a net importer of copyrights, which meant we had a strong interest in things going into
the public domain. Now that we are a net exporter, we have an interest in longer copyright terms.

Posner’s Proposal: Perpetual copyright term, but you have to renew the copyright every 5 years. This would result,
eventually, in only the valuable works retaining their copyrighted status.

Eldred: taken from another outline (see below)

Class Takeways:
 Wu: Copyright can restrict speech in advance, but it’s also an engine of free speech.
o Distinction of idea/expression.
o Fair Use.
Transition from 1909 Act to 1976 Act and Amendments
Date of Work When Protection First Term Renewal Term
Attaches
Created in 1978 or later. Upon being fixed in a Unitary term of life + 70 (or, if anonymous or pseudonymous work, or
tangible medium work for hire, 95 years from publication, or 120 years from creation,
whichever is shorter.

18
 ELDRED V. ASHCROFT, U.S.
2003 (πs have businesses whose
products or services build on
Published
CR works that 1964-1977
have gone into Upon publication with 28 years 67 years, second term began automatically; renewal
pubic domain) notice registration optional.
Published
Holding: 1) between
The CTEA 1923is a Upon publication with 28 years 67 years, if renewal was sought (for works whose first
and 1963,enactment
rational inclusive that was a notice terms expired after 1977, renewal registration remained
permissible exercise of necessary); otherwise in the public domain (unless the
Congress’ power under the work is a foreign work in which copyright has been
Copyright Clause. 2) The restored).
Published before
CTEA’s extension of the 1923 The work is now in the public domain.
Created,
duration of but notdoes is not a On Jan. 1, 1978, when
CRs Unitary term of at least life + 70 (or, if anonymous or pseudonymous
published,
content-neutral before 1978 of federal copyright
regulation work, or work for hire, 95 years from publication, or 120 years from
speech and does not violate thedisplaced state creation, whichever is shorter), but no expiration before 12/31/2002 (if
First Amendment. copyright. work remained unpublished) or 12/31/2047 (if work was published by
Does the CTEA’s extension end of 2002).
exceedrecordings
Sound congress’
fixed power Governed by state common law or statute.
(because
before Feb.it15,makes
1972 copyrights
unlimited)?
“Text, history and precedent …
Infringement
confirm that Requires the Copyright[Must
have
Clausealready
there
prescribe
empowers
is a valid
established
‘limitedCR &
IV. E
Congress thatto
that ∆for
times’
R
XCLUSIVE IGHTS AND CCESS A
copyright
owns
§106 - Eit]: protection
XCLUSIVE RIGHTS and INtoCOPYRIGHTED WORKS
secure
1) Copying the same
and level and
Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize
duration of
a.theDirect:protection
Admission all
for of
any of following:
copyrightcopying
holders, present and
(1) to reproduce the copyrighted work in copies or phonorecords;
future”
b. Indirect:
(2)
“Ato time
prepare derivative
span works based upon the copyrighted work;
appropriately
‘limited’ Circumstantial
as applied toorfuture
(3) to distribute
evidencedoescopies
(striking phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by
copyrights
rental,similarity
lease, or lending; not
automatically ceaseis to be
(4) in the probative)
‘limited’ casewhenof literary,
appliedmusical,to dramatic, and choreographic works, pantomimes, and motion pictures and other
audiovisual
* copyrights”
existing works,
Copying must be of to perform the copyrighted work publicly;
(5)
In in the case
constituent
deciding ofelements
whether literary,
the CTEA musical,
of dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural
is works,
athe rational
work thatexercise
including arethe by
individual
original images of a motion picture or other audiovisual work, to display the copyrighted work
Congress;
publicly; there domain
and
(Feist; public is much
deference with regard to the
(6) inexemplar)
the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.
rational-basis test: “It is
2) Misappropriation
Congress that has been assigned
a. Use of protected
(1) T
the limited
R
the task of defining the scope of
HE IGHT
expression R
monopoly that
OF EPRODUCTION
The right to
i. reproduce
Concept
should be granted to authors the
and copyrighted
feel
in work in copies or phonorecords means the right to produce a material object in
which the work testis
order to give the public duplicated, transcribed, imitated, or simulated in a fixed form from which it can be “perceived,
reproduced,
appropriate or otherwise
ii. access
Filtration communicated,
to their work either directly or with the aid of a machine or device.”
 This right
product” analysiswould be infringed by reproducing it in whole or in any substantial part, and by duplicating it
b. exactly
Taking o orof “Aby key factor or simulation.
imitation
market
promisedinto the the
creator CTEA’s
i. Ordinary passage was a
1993 test (cf.
observer
ANALYTICAL FRAMEWORK
European FOR INFRINGEMENT
Peter Pan)
Union (EU)
3) Defenses directive
a. Independent creation
instructing
(i.e. “I didn’t copy”)
EU members
b. Idea/Expression to establish a ARNSTEIN V. PORTER (2D CIR. 1946): Arnstein claimed Cole Porter copied his
Dichotomy (i.e. “I
copyright compositions. Court found no direct evidence that Porter had seen or heard Arnstein’s
only copied termtheofidea, life compositions. Arnstein alleged Porter stole the works from his apartment.
plus 70 years”
not the expression”)  Held: Arnstein did not prove Porter copied because he didn’t meet the two-part
c. FairoUseThe (i.e. “ICTEAwas test for proving copyright infringement.
entitled to may copy”) also
d. De Minimis provide
19
Doctrinegreater (i.e. “I
incentive for
took so little that this
American &
should not be
other authors
actionable to copying”)
create and
Two-Step Test for Proving
Infringement
1. Defendant copied
 Wu:fromBecause of the way that the Arnstein test works, there is a thumb on the scale in favor of the first author.
plaintiff’s
copyrighted work
(idea/expression
doctrine) BRIGHT TUNES MUSIC CORP V. HARRISONS MUSIC, LTD. (SDNY 1976): Bright
a. Evidence of Tunes sued George Harrison for copying their song, “He’s So Fine” in creating “My
copying can Sweet Lord.”
comprise of  Held: Court finds for CR infringement, even though Harrison didn’t
direct intentionally copy but because the two songs are substantially similar and
(admission Harrison had access to it (it was a popular song that played on the radio).
of copying) o Court says that Harrison probably subconsciously copied the song
or indirect  Rule: Copying does not need to be deliberate in order to be infringing.
(circumstant
ial evidence PRICE V. FOX ENTERTAINMENT GROUP, INC. (SDNY 2007): Dodgeball case.
like access Thomas and Price wrote a screenplay about dodgeball which was never sold or
from which produced. However, they gave Redick, an agent who worked with Thurber, the
the trier of defendant, at one point. Thurber then creates screenplay, titled Underdogs about a
fact can month later. The two screenplays had a lot of similarities, like a weird coach, lesbians,
reasonably and weird deaths. Thomas and Price sues.
infer  Held: Since there are sufficient similarities between the two works, there is an
copying) issue of material fact as to actual copying and the same is true for the defendant
evidence having access to the work, thus summary judgment is not appropriate.
b. In the o Similarities: similar plot structure, character names and traits,
absence of development. There is definitely enough material here to raise a
any question of material fact concerning the copying.
similarity, o Access: Plaintiffs had to demonstrate “a particular chain of events or
this step link by which the alleged infringer might have gained access to the
cannot be work.” There is an inverse relationship between access and probative
proven. similarity such that the stronger the proof of similarity, the less the
c. For access proof of access is required.
argument to o The burden that the plaintiffs need to meet is to show “a reasonable
succeed, probability of access on the part of Thurber or his intermediary.”
“the  Note: the software industry writes programs in isolation to avoid these kinds of
similarities infringement suits.
must be so  Defendants argued that the script was not really widely disseminated, unlike
striking as to the George Harrison case.
preclude the
possibility
that π and ∆
independentl
y arrived at
the same Re: Circumstantial
Evidence of Copying Independent Creation
result.” nd
2. Copying went so far Generally, 2 Circuit
LOMBARDI
adheres toV.Arnstein
WHITEHALL rule XII
of (SDNY
2010): Court emphasized that independent
as to constitute th creation is an affirmative defense and a question
improper striking similarity. 7 Circuit
has diverged, looking for of fact; denied ∆’s motion for SJ. ∆ contended that,
appropriation (tied notwithstanding access to π’s building and plans,
to independent other evidence to establish
access. the similarities were attributable to a prior
creation doctrine) nd architectural work.
a. The ordinary 2 Circuit
lay hearer HEIM V. UNIVERSAL
P ICTURES CO . (2ND CIR. Even though access and similarity can be show,
determines doesn’t mean copying occurred. In CBS
this. 1946): Second Circuit
BROADCASTING , I
declined to hold thatNC. V. ABC (SDNY 2003): Court rejected claim that ∆’s comedy
b. If the works
are similar, similarities between plaintiff
the jury and defendant’s songs
resulted from access and 20
essentially
determines copying. Court held that
this question similarities between songs
(similar to were derived from common
survival show with celebrities was copied the original survivor reality show. One relied on humor, and the other built
tension.
 Defendants independently came up with show. Also, they only shared elements that aren’t copyrightable (scenes a
faire).

SUBSTANTIAL SIMILARITY
Copying vs. Infringement
Plaintiffs must show not only that defendant copied their work, but that the copying was illicit. The substantial similarity
between the two works must go to expression, not just facts or ideas. Once copying is shown, substantial similarity
standard also requires evaluation of nature of correspondence between two works.

Wu on Substantial Similarity:
 Similarity can prove both misappropriation and copying [Maybe move this Wu rant to a separate section on
similarity]
 “Striking similarity” is “probative” of copying; substantial similarity constitutes misappropriation (c.p. de
minimis doctrine)
 Lack of similarity is also relevant b/c then you would need direct proof of copying
 There is an inverse relationship between similarity & necessary evidence of copying (Price)
Wu on Infringement:
 The point of infringement is where the infringing copy eats in to the benefit promised to the original creator by CR
law.
 Two elements for infringement via copying:
o Stealing the market (or part of it)
o Does the infringing product take market share from the copyright holder?
o Doctrinally: Arnstein says look to the lay hearer; Barney says look to the target market; Wu says look to the
market itself
o Taking of more of the creative expression than is warranted (i.e. idea/expression)

RINGGOLD V. BLACK ENTERTAINMENT TELEVISION (2 ND CIR. 1997): ∆s used a poster of π’s quilt (π had licensed to
make poster) on the set of a TV show. The poster was shown for only 26 seconds in total.
 Held: ∆’s use of the poster was not de minimis, and constituted infringement.
 De Minimis can occur in three contexts.
1) A technical violation of a right so trivial that the law will not impose legal consequences
2) Where copying has occurred to such a trivial extent as to fall below the qualitative threshold of substantial
similarity
o Substantial similarity is used in two different ways:
 “Probative” striking similarity – the threshold to determine the degree of similarity that
suffices, once access has been shown, as indirect proof of copying
 Substantial similarity - As the standard for determining that the degree of similarity suffices
to demonstrate misappropriation (i.e. actionable infringement).
o This distinction reflects the difference between factual copying and actionable copying.
o Substantial similarity requires that the copying is 1) qualitatively and 2) quantitatively sufficient
to support the legal conclusion that infringement has occurred
 The qualitative component concerns the copying of expression rather than ideas
 The quantitative component concerns the amount of copyrighted work that is copied
 The concept of de minimis copying applies to the quantitative component.
3) As a factor in the fair use defense (3rd factor)
o Court thinks that rather than using the fair use defense, the concept of de minimis copying should be
invoked to find that there was no infringement in the first place.
o Wu: Policy implications: to find this to be an infringement would require licenses and hurt people like
documentary filmmakers
o However, licenses are how artists make their money. To not find infringement in this case might
deprive artists of this key market.
21
 The Ordinary Observer
DAWSON V. HINSHAW
MUSIC INC. (4TH CIR. 1990):
o Compare with: GOTTLIEB DEVELOPMENT V. PARAMOUNT PICTURES CORP. (SDNY 2008): Court
Held that Arnsetin’s
substantial similarity test on the fleeting incorporation into the set of What Women Want when they included the
ruled de minimis
should be π’s pinballfrom
made machine. Court thinks it was simply a part of the background in one scene. They distinguish
from R INGGOLD by emphasizing that the machine was never fully visible and either out of focus or
perspective of audience that
was intended obscured.
by authorNobody
to would recognize it. There was also no “qualitative connection” between the
plaintiff’s
constitute the commercial work and the film, although maybe there was some “thematic relevance.” However overall, the
market. machine was just one of numerous background items.
o Also SANDOVAL V. NEW LINE CINEMAS, 2D CIR. 1998 : Use of a picture 1) for a total of 36
 Usually, the
seconds, 2) never in focus, 3) usually in the background, and 4) often obstructed from view
intended audience
constitutes
under this test will de minimis copying.
be comprised of
FOR EXAM: Ask what the ex ante effects of determining that something is or is not de minimis would be. SQUIRREL
“ordinary observers”
& TREE PROBLEM
[aka lay persons],
but this can change
when the work is
designed to appeal to APPROACHES TO SUBSTANTIAL SIMILARITY
an audience with
specialized There are two approaches to applying the substantial similarity analysis:
knowledge (e.g. a 1. Concept and Feel: The fact-finder judges substantial similarity with respect to
computer program the whole of the copied portions of the plaintiff’s work, including portions that
should be viewed viewed in solation might not be eligible for copyright.
from the perspective 2. Filtration: The fact-finder first removes from consideration the
of an expert; a uncopyrightable elements of the copied material (e.g. scenes a faire elements)
child’s toy should be and examines what is left.
viewed from the
perspective of a Concept and Feel
child). BOISSON V. BANIAN, LTD., (2D CIR. 2001): Court endorses concept and feel approach
so long as it is accompanied by a “more discerning scrutiny” of what is in the public
 Note that the
domain. Establishes the concept-and-feel approach.
“ordinary observer”
test should only be  Quoting FOLIO: a work is generally considered substantially similar if “the
displaced when the ordinary observer, unless he set out to detect the disparities, would be disposed
indeed audience has to overlook them, and regard their aesthetic appeal as the same.”
“specialized  In instances concerning elements from the public domain, “what must be
expertise”, and not shown is substantial similarity between those elements, and only those
just tastes that might elements, that provide copyrightability to the allegedly infringed compilation.”
differ from the lay  “A court is not to dissect the works at issue into separate components and
observer. compare only the copyrightable elements.”
 Test should be guided by “common sense.”
LYONS PARTNERSHIP, L.P.  “Concept and feel” test tends to be applied more in cases of pictorial
V. MORRIS CONSTUMES, copyright (also architecture & computer programs) instead of literary
INC., (4TH CIR. 2001): The copyright.
Barney suit. Duffy was
basically indistinguishable to Filtration Analysis
Barney according to Has gained favor in some courts, particularly in cases where:
children. Parents rented  The court is leery of a result that would suggest the monopolization of a
Duffy knowing this. Court common theme, or
adopts the ‘intended  When the work at issue is nonfiction, or
audience rule.”  When the work at issue is functional
 “The similarity of The problem with the filtration analysis is that you can filter almost anything and
child-oriented works almost always find a reason to hold that there was no infringement.
‘must be viewed  Thus, to the legal realist, if the filtration analysis is applied, the π usually loses.
from the perspective SAHUC V. TUCKER (5TH CIR. 2006): Two churches analysis.
of the child audience
for which the
products were 22
intended….’”
 Justifications for the
“intended audience
rule”:
BLEHM V. JACOBS (10 TH CIR. 2012): Blehm, a commercial artist, created stick figures called the “Penmen.” He
registered their copyrights. He sold a bunch of posters. Jacobs brothers also created Life is Good figures and t-shirts
around the same time, with stick figures doing shit like riding bikes and stuff. They named their guy Jake. Blehm sued for
infringement.
 Held: Infringement is not found because Blehm does not have a copyright to general human features. No juror
could determine that the Jake figure is substantially similar to the protected, expressive choices that Blehm used
for Penmen.
o Blehm does have some protection for expressive elements like the rounded-half moon smile and the
absence of eyes. He also drew them according to his own rules and guidelines, and give them four
gingers. They follow a uniform standard to achieve a unique expression.
o The smiles were probably the most similar features. They take up a lot of space on face. However, Jake
also has eyes and shit. Penman does not. Furthermore, Penman’s smile could be mistaken for face and
swoopy hair. Jake doesn’t have the same issue.
 Blehm urged a view to focus on similarities and not differences (concept and feel approach?). This approach
probably would have resulted in his win. However, court was reluctant to give him a monopoly over human
figures.
 Wu: Example in which the filtration analysis leads to another conclusion than the concept and feel approach.
Perhaps this is a case in which the decision is right but the reasoning is wrong.

HARNER V. SONY PICTURES TELEVISION, INC. (1ST CIR. 2013): Photographer Harney took a photo of Clark Rockefeller
in front of church. Photo was used in FBI “Wanted” poster and became quite famous. Sony copied the image and
recreated a photograph based on it for movie poster. Harney sued.
Held: Infringement did not occur because Harney’s creation mostly consisted of subject matter – the facts – the he had no
role in creating. What elements he did create were not necessarily copied by Sony.
 Although Harney has a copyrightable and protectible work (namely the actual photograph), Sony didn’t copy his
photograph, just the factual elements within the photograph.
o Harney’s ideas are expressed with artistic flair – the framing with the backdrop of the church, the
shadows and colors, the flash, professional editing. However ultimately, the creation is primarily just
facts.
 Court rejects Harney’s argument that the pose of the subjects was the expressive heart of the photo and should be
entitled to CR protection, especially given its role in the story of Rockefeller. Court thinks that the expression of
the story is attributable to the photograph but to the news around it.
 The placement of the man and daughter is an element of original composition, but court thinks that locating the
subject in the middle of a photograph is an “element of minimal originality and an insufficient basis, without
more, to find substantial similarity.”
Court applies the filtration analysis here. Under a concept-and-feel analysis, this case probably would have had a different
result. Was the court right here?
 On one hand, the court was informed by precedent. However, maybe this isn’t a good outcome for photographers
who rely on licenses for their market. Sony could have asked Harner for a license – why not? Instead, they
copied the photograph (recreated it).
o Maybe this is the distinguishing factor – that they recreated it instead of directly copying or appropriating
it.
Wu: did they take the market? It seems like they did, especially if you consider the licensing market. If this is the case,
then the case seems wrongly decided.

Compare with:

STEINBERG V. COLUMBIA PICTURES INDUSTRIES, (S.D.N.Y. 1987): New Yorker cover -> “Moscow on the Hudson”
poster. Court easily finds proof of access – the question now is whether misappropriation occurred.
Held: The two works are substantially similar enough to warrant a finding of copyright infringement because the ∆ copied
π’s expression of the city. Style is an element of expression.
 Court sees a “striking stylistic relationship” between the two works – style is an element of expression. Here, the
style was very similar, particularly in the renderings of the NYC buildings. Many of Steinberg’s buildings were

23
 inspired by UWS; Columbia copied them even though they had a different view of the city in their poster.
Columbia didn’t render the city realistically but rather just copied π.
o Neither party drew actual buildings. Hence, Columbia’s clearly copied style.
 “Substantial similarity” does not require identity, and “duplication or near identity is not necessary to establish
infringement.”
 Rejects ∆’s argument that similarities were just scenes a faire elements; the expression of the elements was
copied by the defendants. Even if some elements like lamps were scenes a faire, they copied the expression of
those elements.
 Court quotes SHELDON: “no plagiarist can excuse the wrong by showing how much of his work he did not pirate”
o “A copyright infringement may occur by reason of a substantial similarity that involves only a small
portion of each work”. Burroughs v. MGM, 2d Cir. 1982
Policy: what about the market? Did Columbia infringe on Steinberg’s market? After all, Steinberg was already paid by the
New Yorker. If posters are sold, are the markets the same? Who’s going to buy a movie poster vs. the New Yorker mag
cover? Perhaps the market was never infringed upon – wrongly decided?
Wu: The way to win this case is to define the idea broadly such that both expressions are just expressions of the same idea
w/in the same style, which is not protected (FIND THE RIGHT LEVEL OF ABSTRACTION). Essentially, you need to
argue idea/expression distinction properly and depending on who you represent.

 If a defendant purposefully incorporates minimal changes in order to distance himself from the original work, this
either counts against the defendant (since it shows that he copied the base illustration) or does not count in their
favor.
 However, “a defendant may legitimately avoid infringement by intentionally making sufficient changes in a work
that would otherwise be regarded as substantially similar to that of the plaintiff’s.” (Nimmer)
 Essentially a sliding scale, but it is hard to pin point how much you have to add to avoid copyright infringement.

Both of the above cases were about misappropriation and they should have been decided similarly. Perhaps one of
them was decided improperly?

PETER PAN FABRICS, INC. V.

MARTIN WEINER CORP.,
2d Cir. 1960
 “In deciding [how far an
imitator must depart from
an undeviating
reproduction to escape
infringement] one should
consider the uses for which
the design is intended,
especially the scrutiny that
observers will give to it as
used.”
 Test: whether “the
ordinary observer, unless
he set out to detect the
disparities, would be
disposed to overlook
them, and regard their
aesthetic appeal as the
same. That is enough.”
Franklin Mint v. National
Wildlife (3d. Cir. 1978): Artist
redrew bird and tree paintings
in court – court was like oh
that’s not infringement; also
idea/expression distinction.
WHAT IS A COPY?
Definition: “Copies” are material objects, other than phonorecords, in which a work is
fixed by any method now known or later developed, and from which the work can be
perceived, reproduced, or otherwise communicated, either directly or with the aid of a
machine or device. The term “copies” includes the material object, other than a
phonorecord, in which the work is first fixed.
CARTOON NETWORK LP V. CSC HOLDINGS, INC., (2D CIR.2008): CSC creates
Cablevision TiVo-like thing (RS-DVR). Stream has several steps in process. Stream
splits into two streams. Second stream flows into Broadband Media Router, which
reformats it and sends to Arroyo Server, which has two data buffers and hard disks.
Entire stream then moves to first buffer, at which point server inquires whether
customers want to record that programming. If requested, program moves from primary
buffer to secondary buffer, and then one of hard disks is allocated to customer. As data
flows into primary buffer, they overwrite corresponding data already on buffer. Ingest
buffer holds no more than 0.1 seconds of channel’s programming at any moment. Data
buffer in the BMR holds no more than 1.2 seconds. The BMR buffer and primary
ingest buffer are utilized absent any request. Essentially, Cablevision allows
customers who don’t have a DVR to record cable programming on hard drives
housed by Cablevision. CN sues for, among other thing, infringing right to make
copies.
Held: Since the works were not embodied in the buffers for a period of more than
transitory duration [here, 1.2 seconds] the works are not fixed in the buffers, and thus,
the acts of buffering in the operation of the RS-DVR does not create copies.
24
  While the process of operating the RS-DVR is quite complex, to the customer it is similar (and almost
indistinguishable) from the operation of a standard set-top DVR.
 The main difference is that instead of sending signals from the remote to a DVR located in the set, it sends a
signal through the cable to ∆’s central facility, a process that is similar to Video On Demand (VOD)
o However, unlike a VOD service, customers can only play content that they previously requested to be
recorded.
 Two Requirements Imposed by §101’s definitions of “copies” and “fixed”
o Fixation: The work must be embodied in a medium (i.e. placed in a medium such that it can be
perceived, reproduced, etc. from that medium; and
o Duration: It must remain thus embodied “for a period of more than transitory duration.”
 Doesn’t matter (for embodiment) that the data was loaded into the buffer one second at a time: “where every
second of an entire work is placed, one second at a time, in the buffer, we conclude that the work is embodied in
the buffer.”
 Since the works were not embodied in the buffers for a period of more than transitory duration [here, 1.2 seconds]
they works are not fixed in the buffers, and thus, the acts of buffering in the operation of the RS-DVR doe not
create copies.
Rule: Two elements of fixation for the purposes of copying are 1) embodiment and 2) duration (must be more than
transitory).
Policy Considerations:
 Maybe courts reluctant to jack up administrative costs to find licenses for each and every program? Perhaps CN
has already captured its economic gains (first sale?). Perhaps courts are reluctant to shut down tech?
Wu: Court basically finds that the RS-DVR was a passive Amanuensis of the user.
 Courts look to viewers for volition; the only thing that distinguishes this from copy shop cases is the human
element (whether the human is there doing the act of copying). There’s a difference between making a request to
a human employee and issuing a command directly to a system that automatically copies.

BLACKWELL PUBLISHING V. EXCEL RESEARCH GROUP, E.D.MICH. 2009 [Basically Vicarious Liability]
 Excel argued that because students made copies of course packs, they were not liable, even though the copies
were made from templates provided by Excel, on machines operated by Excel, and with the assistance of Excel
staff members
 Court calls bullshit since Excel controls the entire copying process, and thus, is the source of the reproduction.

DISNEY V. HOTFILE, S.D. FLA. 2011

 Court held that Hotfile (which hosted files) was not liable because “although the service makes and stores copies
of the uploaded videos, the service does not itself initially place the videos on the site.”

IN RE AUTOHOP LITIGATION (DISH NETWORK V. AMERICAN BROADCASTING COS., INC) (SDNY 2013): pivotal factor
for direct liability is initiation of the act of copy rather than the selection of offerings for possible copying or creation of
the technological structure.

COMPULSORY LICENSE UNDER §115

Compulsory licenses are essentially an alternative form of settling CR disputes. Essentially copyright acts as a liability
rule instead of a property rule (i.e. anyone can play/use song as long as they pay).
 Mechanical license – license to make a phonorecord
 Synchronization (“Synch”) license – where music accompanies a movie or TV show
 Performance license – i.e. cover songs.

House Report:
 A musical composition that has been reproduced in phonorecords with the permission of the copyright owner may
generally be reproduced in phonorecords by another person, if that person notifies the copyright owner and pays a
specified royalty.
 The compulsory license only extends to distribution to the public for private use
25
 The Royalty Rate, The Reproduction Rights in
Copyright Judges, and the Sound Recordings
“Harry Fox License”  Sound recordings pre
 Under a compulsory license, one1972
may (when make an arrangement of the work so long as it does not change the basic
 Congress has a panel of Federal CR
melody or fundamental character of the work.
law first recognized them)
3 Copyright Royalty
o One who arranges a work were under governed a compulsory
by state license may not claim a derivative copyright in the
judges to review the
arrangement. Goldstein,
laws. Derivative
statutory royalty rate in
ABKCO Rights
o and Derivative
lightMofUSIC , INCeconomic
current . V. STELLAR R ECORDS , INC
Since .,common
(2D CIR. law 1996): ∆ recorded π’s music onto karaoke CDs, which
included images and music. Lyrics Works
were in
displayed Copyright (1983)
protection for soundfound that compulsory licenses don’t give right to
as well. Court
evidence (one must have
publish lyrics on screen.
5 years as a judge,  The CRA’s incentive
recordings is
 another
Song lyrics enjoy
must separate
have structure
protection for
(literary
perpetual derivative
works) &
until the right to reproduce lyrics does not go along w/ the
compulsory license.
knowledge of CR law, works is
terminated differentby from
Federal
 and
Since
theitthird
is an must
audiovisual the CR
have work, karaoke law, are
incentive
CDs theynot will
structurenot
phonorecords.
for expire until
regulating copies 2067.
knowledge of
Capitol Records CR
o Prospective v.
economics) (2)
Naxos
owners R of IGHT
America, Tcan CREATE DERIVATIVE WORKS
O
2d
o Decisions are subject Cir. 2005
to review by the proportion their
 Imitation
Definition: A “derivative
investment(i.e. a recording in work”a is a work based upon one or more preexisting works,
Librarian of such as a translation,
Congress.
“that work’s expression to arrangement, dramatization, fictionalization, motion
consists musical
entirely of
picturean version,
independent
expected sound recording,
fixation
returns of art reproduction, abridgment, condensation, or
 The rate of the royalty any other form
otherfromsounds, inbothwhich
even a work
though may be recast, transformed, or adapted. A work
the first
for a compulsory license such
consistingmarket sounds imitate
of editorial revisions, or
and annotations, elaborations, or other modifications
is either 9.1 cents per which,simulate
as derivative
a whole, those representin the
markets an original work of authorship, is a “derivative work”
song or 1.75 cents per §101 copyrighted sound
o Because the original
minute, whichever is recording”) is not
greater. (Same for digital elements
infringement. (Butof
Wu’s Opinion on
derivative How worksDerivative Works Should be Dealt With:
downloads capturing
and 1) Derivative sounds
work by can
doctrine re-
should filter out cases before they reach fair use (but b/c
phonorecords) get their own CR
recording is
current law is unclear
protection, thereit puts
is stress on fair use)
 In order to obtain a 2) Someinfringement.)
goods are substitutes, others are compliments (i.e. do not directly compete).
incentive Music
 a.Bridgeport to add v.(generally) the same purpose and act as substitutes
compulsory license, the Only works that serve
original Films
Dimension expression (6th
licensee must serve the should be banned.
Cir.): to each
licenses arederivative
required
copyright owner with
work (even 3 note
to sample
notice of its intention to Nature of the Derivative Works Right
obtain a compulsory  The
sampleline is notbetween
de minimis) the
license 1) within 30 days right
o to
Also reproduce
held that copies
the SS
Scope of the Derivative Works Right
of making a phonorecord and the
test right
does to
not prepare
apply to
and 2) before derivative
sampling, works which is Circuit Tests for House Report
why there
marked by the creation was no de Determining Infringement
distributing any on §106(2)
phonorecords. of aminimis new defense market. A of Right to Create
 Right to DW is
 verbatim
The 1995
copy of a Sound novel Derivative Works
 Harry Fox Licenses are broader than
Recordings
doesn’t createActa new also 7th Circuit: Derivative
digital download right to
granted for
market copyright
the expressiveholders works require some
licenses that extend the of sound recordings the reproduce
elements – a film originality. The author of a
mechanical compulsory public performance because you can
adaptation does. derivative work has to do
license to cover right. get DW rights in
o The prospect of new
phonorecords made as Statutorymarkets Exemptioncreates for non-fixed works (e.g. ballet, pantomime)
part of time-limited Private incentives
Copying of Sound  To violate §106(2), the infringing work
downloads and on- to create
Recordings and Analog Video must incorporate a portion of a copyrighted work in
demand digital audio an original
 The underlying Audio Home some form
streams. work,
Recording Act of 1992 1)
o Such license allows and successive
expressly prohibits 7th Circuit Test:
works incorporating
for a server copy, LEE Vinfringement
. A.R.T. CO.,( 7TH CIR.
actions 1997): Art Co. mounted Lee’s works, after
elements from the
from which the based on noncommercial purchasing, on ceramic tiles and resold. Lee sued,
audio stream use underlying
by a consumerwork, of a claiming infringement of derivative work right.
digitaland audio then to make
recording
emanates as well as Held: Art Co.’s ceramic tiles were not derivative
device “still or newer
analog
transient copies works because they lacked an element of originality
successive
recording, 2) imposes works
(made in the course – they didn’t sufficiently recast, transform, or adapt
based on these” on
royalties
of communicating the work.
with the intended  §106(2)
manufacturers secures
and
computer) and buffer exclusive
distributors rights of to 26 all
digital
copies (on the derivative
recording markets, devices and for
intended computer). this
distributionallows to the CR
writers,
sound recorders,
proprietor to select any and
 1995 Digital
producers,for
direction andinvestment
3) required
Performance Right in
  “One might suppose that this is an open and shut case under the doctrine of first sale, … b/c π could capture the
value of her art’s contribution to the finished product as part of the price for the original transaction, the economic
rationale for protecting an adaptation as ‘derivative’ is absent”
 Artist is already paid by Art Co. (first sale): “An alteration that includes (or consumes) a complete copy of the
original lacks economic significance”
 “Framing and other traditional means of mounting and displaying art do not infringe authors’ exclusive right to
make derivative works.”
o Court looks at GRACEN: “If the framing process does not create a derivative work, then mounting art on a
tile, which serves as a flush frame, does not create a derivative work”
 “To prevail, then, Lee must show that ART altered her works in one of the ways mentioned in the first sentence
[of the definition of a derivative work]”
 “The tile is not an ‘art reproduction’; ART purchased and mounted Lee’s original works. That leaves the residual
clause: ‘any other form in which a work may be recast, transformed, or adapted.’ None of these words fits what
ART did”
o “The art was bonded to a slab of ceramic, but it was not changed in the process. It still depicts
exactly what it depicted when it left Lee’s studio”
Rule: 7th Circuit test.
Wu: Perhaps Easterbrook was concerned with interference with property rules. After all, anyone who remounts or recasts
a work in their own home might be infringing if they adopted π’s theory.

Compare With:

NATIONAL GEOGRAPHIC V. CLASSIFIED GEOGRAPHIC, (D. MASS. 1939): (∆ takes apart π’s magazines, compiles them
into his own)
Held: ∆’s activities were infringement because the defendant engaged in an unlawful compilation, adaption, or
arrangement
 The statue gives the plaintiff the exclusive right to compile, adapt or arrange its copyrighted articles.
 Although ∆ was the owner of the physical material, it was not the owner of the right to make these kinds of
unauthorized uses
Policy: Perhaps this was a matter of upsetting the market? The original CR owner, Nat Geo, already sold compilations of
their magazines. ∆ was essentially doing the same thing and entering a market that Nat Geo was already in.

MICRO STAR V. FORMGEN, (9th Cir. 1998): Duke Nukem case. ∆ took 300 user-generated maps for Duke Nukem,
burned them onto CDs, and sold them. Micro Star sues for declaratory judgment.
Held: Infringement has occurred because the Microstar substantially borrowed the work (Duke Nukem story and maps)
and fixated them.
 Court looked to GALOOB for guidance, where court considered whether Game Genie infringed Nintendo’s
derivative work right by modifying the audiovisual display (cheating). Court denied because it didn’t incorporate
in concrete or permanent form (pink screen analogy – once the screen is taken off, the effect is gone).
o Might be different outcome if Galoob had recorded…
 Here, Microstar fixated the audiovisual display of Duke Nukem in the CDs.
 Also, Microstar incorporated the expression – the story of Duke Nukem – in their derivative work. In GALOOB,
the defendants only kind of incorporated without substantial borrowing because they just altered individual
character traits.
 “In Galoob, the audiovisual display was defined by the original game cartridge, not by the Game Genie…In the
present case the audiovisual display that appears on the computer monitor when a N/I level is played is described
—in exact detail—by the N/I MAP file”
Wu: There is a subtle difference between something that modifies something as you watch is v.s. something that adds
something new to the game/movie.
Rule: 9th Circuit test (substantial borrowing + fixation): the rule of this case incentivizes creating things that change
the way we experience other things that do not fix those changes.
Q: perhaps Formgen gave an implied license by allowing users to create custom maps in the first place? Would probably
be a very limited license though.

27
ROWLING V. RDR BOOKS (SDNY 2008): J.K. Rowling (plaintiff) wrote seven books in the Harry Potter series, which
follows Harry Potter and his friends through a fictional magical world. To bring the magical world to life, Rowling
created many characters, places, and ideas. Rowling said in public interviews that she intended to create an encyclopedia
for the Harry Potter series after the seventh and final book was published. The Harry Potter series was hugely successful
internationally, and Warner Brothers Entertainment, Incorporation (Warner Bros.) (plaintiff) bought the movie rights.
Soon after the first Harry Potter book was published in the United States, Steven Vander Ark (defendant) began work on a
website to act as a resource for Harry Potter readers to use to keep track of the books’ details. The website, called the
Lexicon, was initially published in 2000 and was meticulously updated and maintained as new books were released. In
2007, the president of RDR Books (RDR) (defendant) approached Vander Ark about turning the content of his website
into a book. The book version of the Lexicon had entries, in alphabetical order, for the characters, places, and other
magical things in the Harry Potter book series. Many of the entries either directly quoted or closely paraphrased
descriptions in the books. Only some of the quotes had quotation marks. Warner Bros. and Rowling sued RDR and
Vander Ark for copyright infringement prior to publication of the Lexicon.
Held: The Lexicon, a companion work/guide, is not a derivative work because it gives Harry Potter material a new
purpose, which is to give the readers an understanding of individual elements in the world of Harry Potter.
 “By condensing, synthesizing, and reorganizing the preexisting material in an A-to-Z reference guide, the Lexicon
does not recast the material in another medium to retell the story of Harry Potter, but instead gives the
copyrighted material another purpose.”
 The purpose is the “understanding of individual elements in the elaborate world of Harry Potter that appear in
voluminous and diverse sources.”
 Court also looks to Ty, Inc. and Twin Peak; Twin Peak was a guidebook that became derivative work because it
contained a substantial amount of material of teleplays, transformed into a new medium. On the other hand, the
Beanie Baby book in Ty, Inc. was not a derivative work because guides don’t “recast, transform, or adapt the
things to which they are guides.”
Note
 RDR actually loses case on infringing right to reproduce (Vander copied and pasted wholesale from Harry Potter
derivative works and books into his work).
 Part of the issue is that user encyclopedias are a new kind of secondary market and courts are not clear on how to
deal with them.
 For the 2nd Circuit, the line for what makes a derivative work is whether the work has been repurposed.
o Theoretically, a guidebook retelling a story would not be okay. However, a guidebook that just states
facts about the world of Harry Potter is probably okay.
Wu: Court seems to be trying to distinguish between pure encyclopedic works versus substitutions for what J.K. Rowling
was trying to do. Depends on how you do it.
 E.g. if you can watch a TV show instead of reading the original book, this would be a substitution.
 However, what about show recaps? They seem to be derivative works, but rights owners don’t seem to care about
doing anything about them (e.g. Vulture TV recaps).

(3) THE RIGHT TO DISTRIBUTE AND FIRST SALE DOCTRINE

§106(3): “Right to prepare derivative works based upon the copyrighted work;”
 Remember that the right to distribute is always lurking in the background.

If the reproduction right is violated, then the sale of the infringing copies infringes the distribution right as well.
 Thus, the distribution right is often not given much attention since it tends to parallel whether the right to copy
was violated.
COLUMBIA PICTURES INDUS., INC. V. GARCIA, N.D.ILL. 1998 (∆ rented unauthorized copies of videocasettes)
 While he did not infringe on the right to copy, he did infringe on the right to distribute.
ORTIZ-GONZALEZ V. FONOVISA, 1ST CIR. 2002
 Unauthorized distribution is a direct infringement in itself, not an act of contributory or vicarious infringement.
PSIHOYYOS V. LIBERTARIAN, INC., SDNY 1997 (∆ copied π’s pictures in Austria, but distributed them in the US)
 Court held that this still infringed on the π’s right to distribute.

28
 FIRST SALE DOCTRINE (§109)
§109(a): Notwithstanding the provisions of section 106 (3), the owner of a particular copy or phonorecord lawfully made
under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or
otherwise dispose of the possession of that copy or phonorecord…

The first sale doctrine gives the purchaser of a particular copy of a work the right to do what they want with that copy,
notwithstanding the distribution right.
 It is a severance of the distribution right and a partial severance of the public display right
House Report – Re Distribution v.s. First Sale Doctrine
 The CR owner has the right to control the first public distribution of an authorized copy or phonorecord.
 However, under §109, the owner of the copyright’s rights under §106(3) cease with respect to a particular copy
once he has parted with ownership of it (i.e. the buyer of a particular copy is entitled to dispose of that copy
without the CR owner’s permission.)

VERNOR V. AUTODESK, INC., (9TH CIR. 2010): Vernor took old copies of Autodesk’s Release 14 software from one of
Autdesk’s direct customers, and resold them on eBay. Release 14 was accompanied by software license agreement, which
stated that Autodesk retained title to copies of software. Users could not rent or lease software. Vernor sought declaratory
judgement to establish resales didn’t infringe on copyright.
 Held: Purchasers of Autodesk’s program were licensees who were not entitled to sell their copies of Vernor, and
thus, Vernor did not acquire title to the copies of the program and could not pass ownership onto others.
o On one hand, the right to distribute is limited by the first sale doctrine, which is an affirmative defense to
infringement that allows owners of copies of copyrighted works to resell those copies; however it is
unavailable to those who are only licensed to use their copies of copyrighted works.
o Autodesk required the return of the software after the user finished using or wanted to dispose.
 Court applied test to determine whether a use is a licensee or a purchaser:
o A user is a licensee if the use agreement:
 (1) States that it is a license,
 (2) Reserves title in the copyright owner,
 (3) Significantly restricts transfer options, and
 (4) Significantly restricts allowable uses.
 US. V. WISE (9TH CIR. 1977): to determine whether the transferee became owner of copy or licensee, court can
consider (1) whether agreement was labeled a license, and (2) whether the CR owner retained title to copy.
 Essential step defense - a software owner who is the owner of a copy of copyrighted software does not infringe
by making a copy of the computer program if the new copy is created as an essential step in the utilization of
the computer program in conjunction with a machine and is used in no other manner. (§117(a)(1))
o Mai Cases - Licensees infringe a CR by loading it into a computer’s disk, but those who own a particular
copy do not so infringe.

UMG RECORDINGS, INC. V. AUGUSTO, (9TH CIR. 2011): π sent out promotional CDs to critics and radio programmers.
∆ took the promotional CDs and sold them. Π sued for infringement of distribution.
 Held: Under all the circumstances of the CD’s distribution, the recipients were entitled to use or dispose of them
in any manner they saw fit, & UMG did not enter a license agreement for the CDs with the recipients.
Accordingly, UMG transferred title to the particular copies of its promotional CDs and cannot maintain an
infringement action against ∆ for his subsequent sale of those copies.
o In addition to when a copy is first sold, the first sale doctrine also applies to when a copy is given away
or title is otherwise transferred without the accouterments of a sale.
 “Once a copyright owner places a copyrighted item in the stream of commerce…he has
exhausted his exclusive statutory right to control its distribution.” QUALITY KING
o Rule of BOBS-MERRILL (still in force): “a copyright owner who transfers title in a particular copy to a
purchaser or donee cannot prevent resale of that particular copy.” However, not every transfer constitutes
a transfer of title.
o The mere labeling of an arrangement as a license rather than a sale, although a factor to be considered, is
not by itself dispositive of the issue. VERNOR.
29
 The Meaning of “Public”
Under 1976 Act
 Wu: whether a
 However, UMG did not retain any control over their CDs after sending them off. If there
performance is
was a license, how were they supposed to enforce the license? They retained no “meaningful
public is the most
control” or “knowledge of the status of the CDs” after they were shipped. They also did not
general line
require the ultimate return of the CDs.
separating infringing
 UMG dispatched the CDs in a manner that permitted receipt and retention by the recipients
from non-infringing
without the recipients accepting the terms.
performances
 Rule of Law: Unrequested distribution of copies of a work may effect a gift or sale of that copy, in which case
 To perform
the first sale doctrine applies and the copyright owner cannot object to a further sale as infringing on their
“publicly” means
copyright.
(§101):
 Wu: This technically satisfies the Vernor test – why wasn’t the result the same?
1) To perform at a
place open to
Digital First Sale Doctrine: see casebook at pg. 840.
the public OR
where a
CAPITOL RECORDS, LLC V. REDIGI INC. (SDNY 2013): ReDigi Incorporated (ReDigi) (defendant) operated a website
substantial
that allowed users to sell copies
number of of legally acquired digital-music files to other ReDigi users. The music files had to be
purchased through iTunes or other registered sellers of digital-music files, and could not be copied from a CD or illegally
persons outside
downloaded. ReDigi’s
of a platform
normal required the users to download software that evaluated the music files on the computer to
ensure they were legally purchased digital files. Applicable files could then be uploaded from the user’s computer to
circle of a
ReDigi’s servers and either
family and used
its by the owner or sold to another user. Once the file was sold, the original owner no longer
had access to the digital file. Capitol Records, LLC (Capitol Records) (plaintiff) owned the copyright in some of the
social
musical worksacquaintances
in the digital-music files sold on ReDigi’s suit. Capital Records sued ReDigi, alleging violation of the
Copyright Act. Capitol Records filed a motion for partial summary judgment on claims of direct and secondary
is gathered, OR
infringement, [i.e.
arguingwhothat ReDigi’s business model clearly violated Capitol Records’s reproduction and distribution rights
the
in the underlying musical works.
audience is]
Held: The2)first-sale doctrine ordoes not quite apply to ReDigi’s method of digital music transfer, because the Redigi’s
To transmit
music cannot be transferred without infringing the reproduction right (copies are made).
otherwise
 Here, communicate
ReDigi essentially a replicated the creation of a physical copy.
 Courtperformance
also focuses onorthe fact that ReDigi’s methods don’t prevent users from making their own copies and
putting them on of
display a USBa drive or something before “selling” them on ReDigi’s market.
Rule: first-sale doctrine
work to acannot
place apply if the reproduction right is infringed.
specified in (1)
or to the (4 AND 6) THE RIGHT OF PUBLIC PERFORMANCE
public
by means of any
§106 PerformancedeviceRights or
(4) in the caseprocess,
of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other
whether
audiovisual works, to perform thethe copyrighted work publicly;
members of the
(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.
public capable
 No distinction between performances for-profit and free performances
of receiving the
 To be infringing, an act must be both 1) a performance and 2) public.
performance or
 There is no exhaustion of performance (cf. Shandley: every time there is a public performance someone should be
display receive
paid)
it in the same
place or in
House Report
separate places
 Underand § 101’s definitions
at the same of “perform,” “display,” “publicly,” and “transmit,” the concepts of public performance
and public
time display
or cover at the initial rendition or showing AND any further act by which that rendition or showing
is transmitted or communicated
different times. to the public.
 Use of any
o Underlined “device or process” as intermediary does not change designation as “performance”
portion added to
allow cable,
which sends the House Report
same content to  Performances in “semipublic” areas such as clubs, lodges, and schools are
people in ∆ time “public performances”
zones.
 To “transmit” a 30
performance or
display is to
communicate it by
any device or process
  Public performance includes transmission to remote locales, and “transmit” is broad enough to cover “all
conceivable forms of wired or wireless communications media
 To prove infringement, there is no need to prove that recipients were in the same place or that any of them actually
operated the “receiving apparatus” (so even if nobody is watching, the transmission is enough for infringement)

COLUMBIA PICTURES INDUS., INC. V. AVECO, INC. (3RD CIR. 1986): Aveco had model in which they rented out VCRs
and also allowed users to watch the VCRs in viewing rooms on their premises. Columbia sued.
 Held: Aveco infringed on public performance right by authorizing its customers to watch the VCR in their rooms.
 Quite clear that performances were being held on Aveco property (statute only requires “images in sequence”
or making “sounds accompanying it audible”) – the question is whether they were public performances or not.
 ∆’s customers operate the device, so the customers are performing the works, but ∆ can still be liable if it
“authorizes” public performances (i.e. this is a case of secondary liability)
 Central issue is what constitutes a “public” place?
 Court looks to REDD HORNE, which was case in which the ∆ played movies in central areas – customers
would choose and the ∆ would play and transmit performance to viewing room. There, the customers had no
control over the VCR. Court found that they were public performances; what’s important is not where the
VCRs are located, but rather on the nature of the stores. ∆ were willing to make a viewing room and VCRs
available to customers. This availability made ∆ liable.
o Here, Court finds that even though customers are in private rooms, CRA doesn’t require that a public
place be filled with people.
o The availability to the public makes ∆’s rooms public, not the actual make-up of the individual
viewing audiences
 “First Sale Doctrine” protects ∆’s practice of renting out its purchased videocassettes, but it does not protect
unauthorized public performance. The sale of the cassettes divests πs of their right to sell those particular
cassettes, but it does not divest them of their exclusive rights to public performance.
 Rule: public = available to public, not determined by audience make-up.
 Is this properly decided? What market is Aveco infringing on? People still going to theaters and Blockbuster still
around. Who cares if they watch in-store vs. watching at home? Also what is the benefit of incentivizing creation
in this case? Wu: “poorly reasoned decision.”

History of Cable Industry (CATV):

 People in remote locations would put up a tower and then retransmit the signal to individual houses
 Court held that the retransmission of the broadcast by cable companies was not a performance
 In the 1970s, the FCC regulated cable companies
 In the face of a suit over the FCC’s actions, broadcasters and cable companies agreed to call it a performance, but
got rid of the FCC’s regulation and used compulsory licenses

AMERICAN BROADCASTING CO. V. AEREO, INC (U.S. 2014): Aereo, Incorporated (Aereo) (defendant) was an internet-
based television subscription service. Aereo charged a subscription fee to its users, and the service allowed users to stream
live-broadcast television shows. Subscribers indicated which television show they wanted to watch and then had the
option to either view the show as it aired or save it for another time. To accommodate requests, Aereo dedicated one
antenna to each subscriber’s request, tuned the antenna to the selected broadcast signal, and stored the received
data on a server file dedicated to the requesting subscriber. Aereo was sued for copyright infringement. Q: did Aereo
publicly perform when it sent the stream to its subscribers?
Held: Aereo publicly performs when it transmits the stream to its subscribers, and thus, its actions violate the Transmit
Clause, which constitutes infringement.
 According Breyer, the public is whoever can buy or subscribe to Aereo’s services.
 Breyer is concerned with Aereo’s commercial objective; essentially he sees their model as a way to skirt around
the 1976 settlement (see below)
 “We conclude that when an entity communicates the same contemporaneously perceptible images and sounds to
multiple people, it transmits a performance to them regardless of the number of discrete communications it
makes”.

31
  “Whether Aereo transmits from the same or separate copies, it performs the same work; it shows the same images
and make audible the same sounds”
Congress amended the Copyright Act in 1976 in response to Court rulings that found several cable re-broadcasters to not
be public performers of copyrighted works
 The new language of the statute said that to perform an audiovisual work means “to show its images in any
sequence or to make the sounds accompanying it audible”. Under this new language, both the broadcaster and the
viewer of a television program “perform”, because they both show the program’s images and make audible the
program’s sounds
 Congress also added the Transmit Clause, which was designed to cover Cable system activities.
o An entity may transmit a performance through one or several transmissions, where the performance is of the
same work.
 Aereo’s activities are “substantially similar” to the activities of the cable systems Congress amended the act to
reach.
Dissent (Scalia):
 ∆ does not “perform” at all - it is the users who are making the copies, not ∆, which has not acted at all (cf.
photocopier
 There is a “volitional” element to claims of direct public-performance copyright infringement. Without the
volitional element of direct copyright liability, the ∆ between direct and secondary liability would collapse. Such a
rule does not excuse ∆s from accountability, but channels the claims against them into the correct analytical track.
Rule: Essentially, when you re-transmit content, you publicly perform, whether or not each transmission is a discrete,
individual copy.
 Aereo tried to argue that each transmission was a separate private performance. Court didn’t buy it.
Wu: Isn’t this just a rent-an-antenna service? What is the difference between someone having their antenna at home
versus renting one that someone else has?
Wu: This decision was aimed at destroying this company and meant to do nothing else. (Shanley Principle)
 Question presented boiled down to whether Aereo is an end run around the rule or a legitimately defensible
technology.
 The decision is a narrow one; took care not to overrule Cablevision. Court thought that Aereo was competing w/
cable, but not paying, and thus, was an end run around the rules. (Shanley Principle)
 One way to conceptualize the ∆ between Aereo and Cablevision is terrestrial/beaming through the sky
 Seems to discard the single copy/multiple copy distinction (good place to start on exam), may add volitional
aspect (in dissent)
 EXAM: Analogize to terrestrial/satellite radio & CATV
 Differences between Sony and Aereo: 1) Betamax is in the house whereas Aereo was a transmission to the house
(cf. user rights) and 2) Sony was an established player with millions of Betamaxes sold.
Breyer Exceptions (Ruling does not extend to):
1. Entities that don’t try to circumvent 1976 settlement.
2. Those who act as owners or possessors of relevant product (public lacks ownership) (e.g. iTunes)
3. Entity that does not transmit perceptible images/sounds (Netflix)
4. Where payment is primarily for not just transmission (cloud storage, Dropbox)
5. Small groups

§106(6) – Digital Audio Transmissions

This is an unusual right because it only applies to sound recordings. Was added by Congress to try to respond to the
internet
Linked to §114 which:
 States that the right does not apply to terrestrial, broadcast radio (i.e. only applies to Internet and satellite radio
transmissions)
 Sets up compulsory licenses for streaming, but none for on-demand music (i.e. still have to negotiate licenses for
on-demand)
o Sound Exchange collects money from compulsory licenses and pays it out
o Featured Artists get 45%, Rights Owners get 50%, and non-featured artists get 5%

32
 o Thus, streaming sites are dependent on the price of compulsory licenses (and thus their lobbyists) whereas on-
demand sites are dependent on the whims of record companies (and thus their lawyers). Policy question of
which is better.

PERFORMING RIGHTS SOCIETIES

 ASCAP (the American Society of Composers, Authors and Publishers) was created after the Copyright Act was
amended in 1909 to accord the owner of a copyright in a musical composition the right to perform it “publically
for profit” (also BMI)
o The purpose of ASCAP is to serve as a clearinghouse for performing-rights licensing, to monitor
performances, and police infringements.
o Does not deal with sound recording licenses.
 In HERBERT V. SHANLEY CO (1917), the Court found that a live performance of a popular song in a restaurant
was a public performance “for profit”, even though there was no separate admissions fee charged for the music.

(5) THE RIGHT OF PUBLIC DISPLAY

§106(5): “in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or
sculptural works, including the individual images of a motion picture or other audiovisual work, to display the
copyrighted work publicly; and”

§109(c): Notwithstanding the provisions of section 106(5), the owner of a particular copy lawfully made under this title,
or any person authorized by such owner, is entitled, without the authority of the copyright owner, to display that
copy publicly, either directly or by the projection of no more than one image at a time, to viewers present at the place
where the copy is located.

§101 To “display” a work means to show a copy of it, either directly or by means of a film, slide, television image, or any
other device or process or, in the case of a motion picture or other audiovisual work, to show individual images
nonsequentially.

PERFECT 10 V. AMAZON.COM, (9TH CIR. 2007): In response to image searches, Google, Inc.’s (Google) (defendant)
search engine communicated thumbnail versions of images to the user. Google stored the thumbnails on its servers.
Google did not store the full versions of the images on its servers. If users clicked on a thumbnail, Google sent HTML
instructions to the user’s computer on where to find the full image on a third party website. The image then appeared from
the third party website in a window, framed by additional information from Google. This process was known as “in-line
linking.” Google obtained revenue from certain of these third party websites through advertising agreements. Perfect 10
sues.
Held: The full-size images made available via Google are not infringing on display right because they are not stored by
Google’s servers, hence they are not actually “displaying” the images.
 Court ruled in favor of the “server test”, under which only websites who host the content that appeared on the
users’ screens can be deemed to have displayed that content.
 On one hand, Google did host the thumbnail images – prima facie case that Google did infringe display right
concerning the thumbnail images. However on the other hand, the full-size images were not “displayed” because
they just provided HTML instructions to the website publisher’s server.
o HTML is just lines of text, no photography. Also, HTML instructions only give address of image, and do not
actually cause the infringing images to appear.
Rule: images online must be hosted by a server in order for it to be displayed.
Policy: Perhaps this is a reaction to the possibility of a hold-out problem or anti-commons problem? Google would have
to go out to license images from each and every rights holder. Should they have to do this? (But also, why should we
support Google’s infringement?)

33
 LIMITATIONS ON RIGHTS OF PUBLIC PERFORMANCE AND DISPLAY

§110. Limitations of Exclusive Rights

The following are not infringements of CR:
o Performance by instructors or pupils in the course of face-to-face teaching activities of a non-profit
educational institution, unless they use what they know or should know to be was not a lawful copy of the
CR material
o Performance of nondramatic literary or musical work in the course of a live classroom session (or live
transmission of one) by a nonprofit accredited educational institution, IF:
o Made at the discretion of, or under the supervision of, an instructor as an integral part of a class session
offered as a regular part of the instructional activities
o The performance is directly related to the teaching content
o The performance and transmission is limited to “students officially enrolled in the course”
o Performance of literary, musical, or dramato-musical works of a religious nature in the course of services
at a place of worship or other assembly
o Performance of a nondramatic literary or musical work without any compensation to anyone or direct or
indirect commercial advantage to anyone, if—
o No direct or indirect admission charge, OR
o The proceeds, after deducting reasonable overhead, go exclusively to educational/religious/charitable
purposes, AND the CR owner has not formally objected
 (i) in writing
 (ii) served 7 or more days before the performance, AND
 (iii) in accordance with regulations form Register of Copyrights
o Public reception on a single, private-style receiving apparatus (subject to limitations)
o Free performance for promotion of retail sale of copies or phonorecords of the performed work

House Report
 Performance has to be by instructor or pupils (can’t bring in pros from outside to put on a play or
something). Guest lecturers would not be excluded.
 Audience must be confined to the enrolled students of a single class (no showings in school gym)
 Exemption unavailable where there is a profit-motive
 No payment for performance, but salaries for school employees don’t count as payment for the
performance.

(7) TECHNOLOGICAL PROTECTION AND ACCESS

DMCA
 The Digital Millennium Copyright Act adjusted the risks of copyright owners and service providers (OSPs) to
place the burden on copyright owners to identify and notify service providers of infringements carried by or
residing on the providers’ systems
o Does not cover service providers who originate or are otherwise actively implicated in the content residing on
their servers or transiting through their systems.
 The Online Copyright Infringement Liability Limitation Act (part of the DMCA) “establishes a series of four ‘safe
harbors’ that allow qualifying service providers to limit their liability for claims of copyright infringement based
on (a) ‘transitory digital network communications,’ (b) ‘system caching,’ (c) ‘information residing on systems or
networks at the discretion of users,’ and (d) ‘information location tools’”

DMCA Takeaways:
Courts have been struggling with the application of DMCA. Application has been narrowed in three ways:
1. Tie the rights closer to infringement; effectively a remedy for §106 rights. (Chamberlain)
2. Focus on circumvention language. Only mean “breaking the lock,” not “using a key” (IMS)
3. “Effectively controls access” language focus as a limiting principle. (Blizzard and Lexmark)

34
35
ACCESS PROTECTION (§1201) – PROTECTION AGAINST CIRCUMVENTION

§1201 - Circumvention of copyright protection systems

(a) Violations Regarding Circumvention of Technological Measures.—
(1)
(A) No person shall circumvent a technological measure that effectively controls access to a work protected under
this title. The prohibition contained in the preceding sentence shall take effect at the end of the 2-year period
beginning on the date of the enactment of this chapter.
(B) The prohibition contained in subparagraph (A) shall not apply to persons who are users of a copyrighted work
which is in a particular class of works, if such persons are, or are likely to be in the succeeding 3-year period,
adversely affected by virtue of such prohibition in their ability to make noninfringing uses of that particular
class of works under this title, as determined under subparagraph (C)…
…
(2) No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology,
product, service, device, component, or part thereof, that—
(A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively
controls access to a work protected under this title;
(B) has only limited commercially significant purpose or use other than to circumvent a technological measure
that effectively controls access to a work protected under this title; or
(C) is marketed by that person or another acting in concert with that person with that person’s knowledge for use
in circumventing a technological measure that effectively controls access to a work protected under this title.
(3) As used in this subsection—
(A) to “circumvent a technological measure” means to descramble a scrambled work, to decrypt an encrypted
work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the
authority of the copyright owner; and
(B) a technological measure “effectively controls access to a work” if the measure, in the ordinary course of its
operation, requires the application of information, or a process or a treatment, with the authority of the
copyright owner, to gain access to the work.
[Section 1201(b) forbids manufacturing or distribution of a product or service primarily designed to circumvent
“protection afforded by” a technological protection measure that “effectively protects a right of a copyright owner” in a
work – and otherwise parallels the terms of section 1201(a)(2)
(c) Other Rights, Etc., Not Affected.—
(1) Nothing in this section shall affect rights, remedies, limitations, or defenses to copyright infringement, including
fair use, under this title.
(2) Nothing in this section shall enlarge or diminish vicarious or contributory liability for copyright infringement in
connection with any technology, product, service, device, component, or part thereof.
[Section 1201(d)-(j) sets forth exceptions to the prohibition on circumvention of technological protections of access.
These include: nonprofit libraries, archives, and educational institutions (they can circumvent access controls in order to
determine whether to purchase a protected work); law enforcement, reverse engineering if the person has lawfully
obtained right to use copy for this purpose, and encryption research, and more.]

Access:
 The DMCA distinguishes between access to a work and the use after it is accessed (fair use doctrine deals with the
second stage)
 The notion of access goes beyond the traditional copyright concepts inherent in the exclusive distribution right
(§106(3))
o i.e. where you need an access code to use a work contained on a CD, you cannot try to circumvent this
measure
 B/c access is a prerequisite to use, by allowing CR holders to control the former, the owner may prevent or
condition the latter.

36
 Two Types of 1201 Protection
By User Trafficking
(a) access X X
(b) protects a 106 right Protected by 106* X
*Prohibition on circumventing measures to CR is already enforced by §106 rights.
Note: the disabling of the “explosive” is not a §1201(b) violation.

§1201 creates two distinct types of claims:

 It “prohibits the circumvention of any technological measure that effectively controls access to a protected work
and grants copyright owners the right to enforce that prohibition.”
 It also “prohibits trafficking in technologies that circumvent technological measures that effectively protect ‘a right
of a copyright owner.’”

Two ways to read the DMCA:

1. DMCA adds a new right to access (essentially just prevent circumvention). (Majority view)
2. It’s a remedy for violations of §106 rights; anti-circumvention is essentially a remedy.

CHAMBERLAIN V. SKYLINK, (FED. CIR. 2004): One of the garage door opener cases. Added the condition that the
protection against circumvention of an access control be related to protection against infringement (a nexus
requirement)
o To hold otherwise would create two distinct copyright regimes and give copyright holders unlimited rights to hold
circumventors liable under §1201(a)
o This is hard to reconcile with §1201(c)(1), which states “nothing in this section shall affect rights remedies,
limitations, or defenses to copyright infringement, including fair use, under this title.”

MDY INDUSTRIES, LLC V. BLIZZARD ENTERTAINMENT, INC., (9TH CIR. 2010): MDY created a bot, Glider, for users
to purchase and use so they can farm for xp and stuff. Glider is specifically designed to avoid detection by Blizzard’s
Warden program, which, prior to allowing a user access to Blizzard’s servers and periodically during game play, scans the
user’s computer for unauthorized “bot” programs. If Warden detects Glider on the user’s computer, the user is denied
access to Blizzard’s servers and cannot continue the game. MDY sued for declaratory judgment; Blizzard alleged
violation of 1201.
 Held: MDY infringed 1201(a)(2) right in respect to the dynamic non-literal elements (the gameplay);
o Court broke down WoW’s copyrightable elements into three elements: (1) literal elements (the code), (2)
individual non-literal elements (the visual and audio components and files), and (3) the dynamic non-literal
elements (the gameplay).
o Dynamic non-literal elements constitute copyrighted work (cites Atari for the proposition that the
audiovisual display of a computer game is copyrightable independently from the software program
code.)
 Reads the term “work protected by this title” as “extending a new form of protection, i.e., the right to prevent
circumvention of access controls, broadly to…copyrighted works.”
o 2 examples of actions that “circumvent a technological measure” – descrambling and decrypting –would not
give rise to liability under the traditional copyright rights. §1201(a)
 “A violation of §1201(a)(2), which prohibits trafficking in devices that facilitate circumvention of access control
measures, will not always be a violation of §1201(b)(1), which prohibits trafficking in devices that facilitate
circumvention of measures that protect against copyright infringement.”
o Six textual elements for violating §1201(a)(2): (1) traffics in (2) a technology or part thereof (3) that is
primarily designed, produced, or marketed for, or has limited commercially significant use other than (4)
circumventing a technological measure (5) that effectively controls access (6) to a copyrighted work.
[Wu focused on BOLD: 4 factors]
 Rejects Chamberlain’s nexus requirement “because it is contrary to the plain language of the statute.”
o Chamberlain’s concern w/ 2 CR regimes is dispelled by recognition that (a) creates a new right, thus it
doesn’t affect the rights, liabilities, remedies of the Copyright statute, and thus, there is no conflict to resolve
by imposing a nexus requirement.

37
Rule of Law: §1201(b) strengthens copyright owners’ traditional rights against copyright infringement whereas §1202(a)
grants copyright owners a new anti-circumvention right.
 To ‘circumvent a technological measure’ means ‘to descramble a scrambled work, to decrypt an encrypted work,
or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the
copyright owner” 1201(a)(3)\
 (a)(2) applies to both user & trafficker, (b)(1) applies only to the trafficker (b/c normal CR protections apply to the
user)

REALNETWORKS V. STREAMBOX, (W.D. WASH 2000): Real Networks has streaming service, functions through “secret
handshake” and “copy switch.” Streambox replicates the handshake and completely ignores the copy switch, allowing
user to download, regardless of whether rights owner permitted copying or not.
Held: By emulating the secret handshake, the VCR circumvents an access protection in violation of §1201(a)(2). By
avoiding the copy switch, the VCR circumvents an anticopying measure in violation of §1201(b).
 Finds that the secret handshake is a technological measure that effectively controls access and that the copy
switch is a technological measure that effectively protects the right of a CR owner to control the unauthorized
copying of its work.
o Even though other people could still copy stream by maybe handheld camera or something, the Copy
Switch prevented the creation of perfect copies – this is “effectively protects.”
 Distinguishes Sony because in that case there were a substantial number of CR owners who authorized or did not
object to having their works time-shifted, but here the CR owners specifically chose to prevent copying.
 To be an “effective protection” a measure need only “restrict[] and limit[] the ability of people to make perfect
digital copies of a copyrighted work.”
o Even without considering the copy switch, ∆ circumvented the secret handshake, which is enough to
establish liability.
Takeaway: Emulation of a secret handshake-like measure that effectively controls access constitutes circumventing
conduct.

I.M.S. INQUIRY MANAGEMENT V. BERKSHIRE, (SDNY 2004): IMS is information service that allows advertisers access
to tracking information. Berkshire accessed the system and used its copyrighted formats to launch a competing product by
simply inputting password. IMS generated the password; Berkshire used it.
Held: Berkshire did not circumvent anything because it just inputted a valid password.
 Circumvention requires “either descrambling, decrypting, avoiding, bypassing, removing, deactivating or
impairing a technological measure qua technological measure.”
Wu: Probably should read this case narrowly. Effectively OK-ing “lockpicking” might be too much for other courts.

321 STUDIOS V. MGM, (NDCA 2004): device designed to decrypt DVDs.

Held that even though ∆’s “software does use the authorized key to access the DVD, it does not have authority to use
this key, as licensed DVD players do, and it therefore avoids and bypasses [the Content Scrambling System].”

WHAT IS A “WORK PROTECTED UNDER THIS TITLE”?

If you accept the argument that anything that is controlled by a computer program falls under the DMCA, than limitless
devices, that would not otherwise be covered by copyright, become protected by the DMCA.

LEXMARK V. STATIC CONTROL COMPONENTS, (6TH CIR. 2004): Garage door openers and printer cartridges.
Held: authentication sequence was insufficiently original to be protectable, however the printer engine program was
copyrightable.
 The fact that the program was copyrightable was not enough to bring access control within the scope of 1201.
Court said that the authentication sequence did not actually control access to the program.
 It blocked one form of access – the ability to make use of the Printer Engine Program by preventing the printer
from functioning. However, it did not prevent the ability to make a copy or use the literal elements.
 Not what Congress intended to protect, Court says: “In the essential setting where the DMCA applies, the CR
protection operates on two planes: [1] in the literal code governing the work and [2] in the visual or audio
manifestation generated by the code’s execution.” (cf. literal/nonliteral ∆ in WoW case)

38
Exceptions and Limitations
 Process: Every 4 years
the Librarian of
 “our reasoning does not turn on the degree to which a measure controls access to a work. It turns on the textual
Congress, in consultation
withrequirement that theofchallenged circumvention device must indeed circumvent something.”
the Register
Copyrights,
“Nowhere inconducts
its deliberations over the DMCA did Congress express an interest in creating liability for the
circumvention
rulemaking to identify of technological measures designed to prevent consumers from using consumer goods while
leaving the copyrightable
particular classes of content of a work unprotected.”
 Essentially,
works whosethereusersneeds to be something that prevents the use of the CR element for access to be infringed upon.
Wu:would
Where you be “adverselyto the code itself regardless of the protection in question—the front door is locked but the
can still get
backaffected
door is open by – there istheno circumvention protection.
Wu:prohibition…in
Perhaps it’s about whether
their you use the code or not? If access requires the use of the code, then Lexmark opinion is
incorrect.
ability to make
noninfringing uses under
this title” and to suspend MORAL RIGHTS
the application of the
prohibition on the act of Four Places in American Copyright Law Where we See Protection of Moral Rights:
access control 1) VARA (§106A)
circumvention as to 2) Using derivative works doctrine to protect moral rights (Gilliam)
those works until the 3) TM law: reverse passing off (liability for claiming that something that is not yours is
next rulemaking period. yours)
o Each rulemaking is 4) Termination right
de novo – prior
selection does not
3 Main Rights:
guarantee future
1. Attribution
inclusion.
2. Rights of integrity + Rights of prevent/destruction (only for works of recognized stature)
 First Rulemaking
3. Right to transfer in writing
o Lawfully made and
acquired DVDs can
have their CSS
circumvented when §106A - RIGHTS OF CERTAIN AUTHORS TO ATTRIBUTION AND INTEGRITY
such circumvention (a) Rights of Attribution and Integrity.— Subject to section 107 and independent of
is 1) solely in order the exclusive rights provided in section 106, the author of a work of visual art—
to incorporate short
portions into new (1) shall have the right—
works for the (A) to claim authorship of that work, and
purpose of criticism (B) to prevent the use of his or her name as the author of any work of visual art
or comment or 2) is which he or she did not create;
necessary for (2) shall have the right to prevent the use of his or her name as the author of the
educational uses, work of visual art in the event of a distortion, mutilation, or other modification
documentary of the work which would be prejudicial to his or her honor or reputation; and
filmmaking, or (3) subject to the limitations set forth in section 113 (d), shall have the right—
noncommercial (A) to prevent any intentional distortion, mutilation, or other modification of that
videos. work which would be prejudicial to his or her honor or reputation, and any
 Third Rulemaking – intentional distortion, mutilation, or modification of that work is a violation
extended authority to of that right, and
cover classes of users
(B) to prevent any destruction of a work of recognized stature, and any
(“audiovisual works
intentional or grossly negligent destruction of that work is a violation of that
included in the
right.
educational library of a
college or university’s (b) Scope and Exercise of Rights.— Only the author of a work of visual art has the
film or media studies rights conferred by subsection (a) in that work, whether or not the author is the
department” for copyright owner. The authors of a joint work of visual art are co-owners of the rights
educational use) conferred by subsection (a) in that work.
 Also exempted: (c) Exceptions.—
o E-books when all
existing versions
prevent the use of 39
the read-aloud
function or screen
readers that render
the text into a
 (1) The modification of a work of visual art which is a result of the passage of time or the inherent nature of the
materials is not a distortion, mutilation, or other modification described in subsection (a)(3)(A).
(2) The modification of a work of visual art which is the result of conservation, or of the public presentation,
including lighting and placement, of the work is not a destruction, distortion, mutilation, or other modification
described in subsection (a)(3) unless the modification is caused by gross negligence.
(3) The rights described in paragraphs (1) and (2) of subsection (a) shall not apply to any reproduction, depiction,
portrayal, or other use of a work in, upon, or in any connection with any item described in subparagraph (A) or
(B) of the definition of “work of visual art” in section 101, and any such reproduction, depiction, portrayal, or
other use of a work is not a destruction, distortion, mutilation, or other modification described in paragraph (3) of
subsection (a).

CARTER V. HELMSLEY-SPEAR, INC., (2D CIR. 1995): (new building owner removes sculpture)
Holding: The trial judge correctly ruled that the work is not applied art precluded from protection under the VARA.
 “Applied art” describes two-and three-dimensional ornamentation or decoration that is affixed to otherwise
utilitarian objects.
 If applied works included works such as the sculpture at issue in this case, it would render meaningless VARA’s
protection for works of visual art installed in buildings.
 Nothing in VARA proscribes protection of works of visual art that incorporate elements of, rather than constitute,
applied art.

FLACK V. FRIENDS OF QUEEN CATHERINE INC., (SDNY 2001): (Clay enlargement (“model”) of head stored and
damaged)
Holding: The clay enlargement is not a model because the artistic community considers such models to be independent
works of art and because preliminary sketches and drawings of painters are covered.
Takeaway: The understanding within the relevant artistic community is relevant to interpreting the words of the statute.

MARTIN V. CITY OF INDIANAPOLIS, (7TH CIR. 1999): (hobbyist sculptor’s statute was torn down)
Holding: The evidence introduced by the π is sufficient to find that the statue was one of recognized stature
 The evidence included articles and letters from newspapers and magazines containing compliments from a local
art critic and a college museum director.

PAVIA V. 1120 AVENUE OF THE AMERICAS ASSOCS, (SDNY 1995): (sculpture was dismantled before VARA &
displayed in 2 pieces)
Holding: Congress did not intend to give artists the right to prevent the continued display after VARA’s effective date of
works distorted, mutilated, or modified before that date.
 B/c VARA only outlaws the act of alteration itself, & not subsequent display in an altered state, it does not
preempt NY law
 VARA provides that works created before its effective date cannot be altered after that date; however, Congress
did not intend to give artists the right to prevent the continuing display of a work that was altered before the
effective date of VARA
 NB: HOWEVER, if an artist still owns title to his work at the time of VARA’s effective date, and the right
is infringed after, then artist does have recourse.

RIGHTS OF INTEGRITY

COHEN V. G&M REALTY (SDNY 2013): The 5Pointz compound, widely recognized for the “graffiti” artworks that
covered its walls, was owned Wolkoff, administered by Cohen. 5Pointz evolved into a “street art mecca.” In 2013,
Wolkoff decided to destroy the compound. To preserve their works, more than 20 artists filed a request for preliminary
injunctive relief asking the court to prevent Wolkoff from destroying the site. The Court first issued a temporary
restraining order but eventually denied artists’ request for injunctive relief on November 12, 2013, and on that same night,
the 5Pointz art was whitewashed. In June 2014, plaintiffs filed a complaint seeking “declaratory, injunctive, and equitable
relief, monetary damages and attorney fees to redress defendant’s unlawful destruction of their works of art in violation of
the Visual Artists Rights Act 1990 (“VARA”).”
40
Holding: Court recognized that at least some of the 24 works were of recognized stature.
 Defendant’s expert noted that for most of the works, there were no scholarly mentions of the work; thought the
widespread recognition that 5Pointz as a whole had would not satisfy VARA recognition unless visitors came to
see particular work.
 Plaintiff’s expert focused on quality of work, including design, color, shape, and form, deciding that the works
were “real artworks” based on this assessment. Also focused on what the loss of the works would mean: “if it was
missing from the canon of art history, that it would be a loss.”
Rule: Graffiti does have the potential of being visual works of recognized stature.

POLLARA V SEYMOUR, (2D CIR. 2003): Banner for political event torn & crumpled. Pollara had painted (had been
commissioned) the mural with intention that it would be affixed at convention. Banner was crumpled up and torn.
Holding: The banner is not protected by VARA because it is a promotional work, and thus, not a work of visual art.
Reasoning: VARA confers rights only on artists who have produced works of “recognized stature,” or whose “honor or
reputation” is such that it would be prejudiced by the modification of a work.
 VARA also only protects “works of visual art”
 In determining whether a particular work falls within the scope of “works of visual art,” courts are to use
common sense and generally accepted standards of the artistic community.
 Protection of a work under VARA will often depend upon the work’s objective and evident purpose.
o VARA does not protect advertisements or works for hire (among other things)
 Advertising: The banner was created for the purpose of drawing attention to an information desk, as part of a
lobbying effort, and the banner overtly promotes, in words and pictures, a lobbying message.
 Work for hire: The banner was commissioned and paid for by ∆ and ∆ determined in advance the banner’s
content, including its explicit textual message.
o While this does not necessarily make it a work for hire, it is evidence of the promotional and advertising
purpose that brings the banner outside the scope of the VARA.
 That a work was created for a non-commercial purpose does not affect the conclusion that it is an advertisement
that is not protected by VARA.
 Re concurrence: even though advertising may eventually become a work of recognized stature, it cannot become a
work of visual art, so this doesn’t matter.
o It must be both 1) a work of visual art and 2) of recognized stature.
 From Ginsberg article: “Moral rights afford protection for the author’s personal, non-economic interests in
receiving attribution for her work, and in preserving the work in the form in which it was created, even after its
sale or licensing.”
Rule of Law: To be afforded protection under VARA, a work must be both 1) a work of visual art and 2) of recognized
stature; advertisements can include works created for non-economic purposes.
Concurrence (Gleeson): would find that it is not covered by VARA because it is not of recognized stature, since it was
never displayed. Notes that some promotional materials may, over time, become of recognized stature (he disagrees
with Court’s finding that promotional materials can never be of recognized stature.) -

V. FAIR USE
§107 - Limitations on exclusive rights: Fair use
Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by
reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism,
comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an
infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to
be considered shall include—
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit
educational purposes (EXAM don’t forget §110 performance exceptions);
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
41
The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of
all the above factors.

House Report (1976)

 Examples: “quotation of excerpts in a review or criticism for purposes of illustration or comment; quotation of
short passages in a scholarly or technical work, for illustration or clarification of the author’s observations; use
in a parody of some of the content of the work parodied; reproduction by a library of a portion of a work to
replace part of a damaged copy; reproduction by a teacher or student of a small part of a work to illustrate a
lesson; reproduction of a work in legislative or judicial proceedings or reports; incidental and fortuitous
reproduction, in a newsreel or broadcast, of a work located in the scene of an event being reported”
 Fair use analysis is highly dependent on categories and which one the work falls into. Some tension between
categorical and “equitable rule of reason” (Sony, Ty.) approaches.
 Purpose (and whether the work is transformative) is the most important factor; market effect is also very
important.
 Fair use is an equitable doctrine and thus requires clean hands. (cf. Campbell n.18 “good faith”)

Wu: The question of transformativeness has become a meta-factor that is more weighty than any other.
 Judges have trouble balancing multiple factors, which is why factors 2 & 3 basically fall out and judges do a cost
(market value)/ benefit (transformativeness) analysis
 Fair use is a liability rule because it is essentially a compulsory license with a price of $0
 Factor 2 stands in for the idea/expression dichotomy; Factor 3 stands in for the de minimis doctrine.
 Market analysis: look to the past history to see what happened before (i.e. whether the author has a history of
licensing for remix)
 Also useful to look at derivative work doctrine and compare with fair use. Fair use isn’t categorical, but there are
some uses that generally qualify (like book reviews).

Theories of Fair Use

1. Market Failure (Posner): fair use is used to produce rights that the market fails to produce itself. This theory
works for reviews and parodies (the market would not allow these things to exist because of the possibility of
criticism leading to devaluation of the product). Essentially, fair use comes in where licenses fail. Posner would
also say that if a work is abandoned, fair use should allow efforts for others to pick it up.
2. Republican Theory: although copyright law allows for the accommodation of the 1 st Amendment and free
speech principles (e.g. idea/expression dichotomy), fair use functions as a kind of safety valve to protect against
censorship. Fair use promotes dialogue and free speech. Essentially it keeps copyright from doing things beyond
what it should be doing. This theory works for anything critical or political, like reviews, Harper, etc.
3. Equity

PARODY AND SATIRE

CAMPBELL V. ACUFF-ROSE MUSIC (US 1994): 2 Live Crew produced a parody of “Pretty Woman.” Acuff-Rose sued for
CR infringement.
Held: 2 Live Crew’s song is not not fair use based on its commercial nature; the use could be fair use.
 Court disagrees with lower court’s emphasis on the commercial nature of 2 Live Crew’s parody.
 Factor 1: Purpose and Character of Use
o Policy: “The goal of copyright, to promote science and the arts, is generally furthered by the creation of
transformative works”
o “whether and to what extent the new work is ‘transformative’” depends on “whether the new work
merely supersedes the object of the original creation…or instead adds something new, with a further
purpose or different character, altering the first with new expression, meaning, or message; its asks, in
other words,”
o Court thinks that satire and parody are closer to transformative than other uses: “Parody has an obvious
claim to transformative value”

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  “Parody needs to mimic an original to make its point, and so has some claim to use the creation
of its victim’s (or collective victims’) imagination, whereas satire can stand on its own two feet
& so requires justification for the very act of borrowing”
 “The threshold question when fair use is raised in defense of parody is whether a parodic
character may reasonably be perceived. Whether, going beyond that, parody is in good taste or
bad does not and should not matter to fair use”
o Parodies that loosely target original can still be transformative. Also, if a parody runs the risk of
substituting the market, then it is more important that the work be found transformative to assert fair use
defense.
o Also, good faith doesn’t bar a finding of infringement. Request for permission could just be an effort to
avoid litigation, not to avoid infringement.
 Factor 2: Nature of Copyrighted Work (the “value” of the materials used)
o Parody inherently copies the original work – not great for 2 Live Crew
o “This factor calls for recognition that some works are closer to the core of intended copyright that others,
with the consequence that fair use is more difficult to establish when the former works are copied”
 Factor 3: Amount and Substantiality of Portion Used
o This focuses on the “quantity and value of the materials used”
o “When parody takes aim at a particular original work, the parody must be able to ‘conjure up’ at least
enough of that material to make the object of its critical wit recognizable”
o “Once enough has been taken to assure identification, how much more is reasonable will depend…on the
extent to which the [work]’s overriding purpose and character is to parody the original, or, in contrast, the
likelihood that the parody may serve as a market substitute for the original”
o “Copying does not become excessive in relation to parodic purpose merely because the portion taken was
the original’s heart”
 Factor 4: Effect on Potential Markets
o This “requires courts to consider not only the extent of market harm caused by the particular actions of
the alleged infringer, but also whether unrestricted and widespread conduct of the sort engaged in by the
defendant would result in a substantially adverse impact on the potential market for the original” [i.e.
derivative markets (which do not include critical works)]
o “Since fair use is an affirmative defense, its proponent would have difficultly carrying the burden of
demonstrating fair use without favorable evidence about relevant markets”
o Quasi-Presumption of Market Harm for Duplicative Works – Transformative Nature of Work
Rebuts Presumption
 “When a commercial use amounts to mere duplication of the entirety of an original, it clearly
supersedes the objects…of the original and serves as a market replacement for it, making it likely
that cognizable market harm to the original will occur”
 “But when, on the contrary, the second use is transformative, market substitution is at least less
certain, and market harm may not be so readily inferred.”
o “The parody and the original usually serve different market functions”
o “the role of the courts is to distinguish between biting criticism that merely suppresses demand and
copyright infringement which usurps it”
o Parody that kills demand for the original, like a review, does not produce a harm cognizable under the
Copyright Act.
o Also – not clear if there is a derivative rap market for the plaintiff’s song.
 Note: Is it that Acuff-Rose didn’t want to enter the market, that they never considered the market,
or that they didn’t know about it?
o Moral Rights – Critical Harm to market is rejected as a market analysis test
Concurrence:
 “Fair use is an affirmative defense, so doubts about whether a given use is fair should not be resolved in favor of
the self-proclaimed parodist”
 “If we allow any weak transformation to qualify as parody…we weaken the protection of copyright”
Rule: No one factor is dispositive (case-by-case approach); parody can be transformative.

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  Wu: Problem with Campbell court’s approach is that it doesn’t give guidance to future cases (case-by-case
approach).

Parody vs. Satire – EXAM
Squishy line
 Parody targets the
original and almost
always creates a
kind of derivative
work, but criticizes
or provides
commentary on the
original work.
 Satire can stand on
its own, criticizing
or commentating on
its own.
infringing work comment on it
 Wu doesn’t like parody/satire line because a lot of satire is creative whereas a
lot of parody seems to lack creativity.
 fn.10 turns CR from a property to a liability rule for fair use, which allows
judges to create individual mini-licenses (Wu likes) EXAM: CTs have not taken
up this line but it is a good argument to make
 Shanley principle – satire is someone benefiting from a © work so the owner
should be able to pay
 Two Arguments for this Rule:
o Market Failure Argument - ∆s tried to license the song, the public
benefits by the parody song to exist, thus, the law needs to intervene when
there is such a market failure and it does this via fair use.
o 1st Amendment Safety Valve Argument – This song is a criticism, thus
the π is able to censor the opinion before publication by refusing a license,
so the fair use doctrine comes to the aid of the censored person
 EXAM: The line is manipulable: expand the domain of the original to make the

DR. SEUSS V. PENGUIN BOOKS (9TH CIR. 1997): (“The Cat NOT in the Hat,” which mimicked Dr. Seuss’s style to tell
story of OJ murder trial)
Held: work is not to be protected by fair use because the work was not transformative (i.e. it just borrowed the style
without criticizing something) and because the commercial nature of the work impaired the good will associated w/ Dr.
Seuss’s work.
 Is this rightly decided? Perhaps not – is it really a market substitution? Would people really get these two
confused? If so, isn’t that the realm of trademark?
 EXAM: resulting impact on the public view of the original work may fall under the 107(4) is diminishing the
honor of the artist as a moral right and thus the value of the original copyrighted work is
 EXAM: circularity – isn’t moral right harm actually evidence of the parody effect (this is a flawed argument)

LEIBOVITZ V. PARAMOUNT PICTURES (2ND CIR. 1998): (Naked Gun 3 poster with Leslie Nielson pictured as pregnant
(Demi Moore in Vanity Fair)
Held: The court held that it was fair use (b/c transformative & commented on the seriousness of the original photograph)
 Even when the parody does not strongly disparage the original, so that the first author might not automatically
decline to license it for a fee, a finding of fair use is not automatically negated.
 That a parody is used in connection w/ an advertisement may lessen the likelihood of fair use, but does not of
itself negate fair use
 The court also commented that the original photo alluded to Birth of Venus, and thus should expect some degree of
ridicule.

SUNTRUST BANK V. HOUGHTON MIFFLIN (11TH CIR. 2001): (Gone w/ the Wind from the slaves perspective – “The
Wind Done Gone”
Held: Wind Done Gone could be fair use.
 “We will treat a work as a parody if its aim is to comment upon or criticize a prior work by appropriating
elements of the original in creating a new artistic, as opposed to scholarly or journalistic, work”
o Randall used the elements to “make war” against them as a critique.
 The fact that TWDG was commercial was “strongly overshadowed and outweighed in view of its highly
transformative use”
 “It is hard to imagine how Randall could have specifically criticized GWTW without depending heavily upon
copyrighted elements of that book”

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PRINCETON UNIVERSITY PRESS V. MICHIGAN DOCUMENT SERVICES, INC. (6TH CIR. 1996): The corporate defendant,
Michigan Document Services, Inc., is a commercial copyshop that reproduced substantial segments of copyrighted works
of scholarship, bound the copies into "coursepacks," and sold the coursepacks to students for use in fulfilling reading
assignments given by professors at the University of Michigan. The copyshop acted without permission from the
copyright holders. Consequently, Princeton University Press, Macmillan, Inc., and St. Martin’s Press, Inc., collectively,
the plaintiffs, brought a copyright infringement claim against defendant for unfair use under 17 U.S.C.S. § 107. Finding
that the fair use doctrine did not obviate the need to obtain permission to reproduce the works and that the infringement
was willful, the trial court granted appellees summary judgment.
Held: reproduction of works without obtaining license or permission is not fair use.
 For purposes of profit-making by commercial enterprise. Also no transformation.
 Eats into licensing market – already well-established.

EXAM: Do you use the 1 vs. 4 balancing test or the parody vs. satire test because that might come out differently
 You can’t ignore the parody satire line because SCOUTUS used

EXAM: Character © and satire/parody – after the fact justification

 Simply parody argument — taking a character with certain characteristics and changing them will always be a
comment on the original work so that’s too easy (e.g. making Sherlock Holmes dumb)
 Pointed parody argument — putting a character in a position that comments on the author/actor/studio or the
story/intent being told provides more value (e.g. Airpirates putting mickey mouse in anarchist dirty comics which
comments on walt disney’s ultra-conservative and anti-semetic views as expressed in the cartoons)

EXAM: Don’t think, feel

 Holmes: the law is a prediction of what judges will do
 These FU cases are so complex that sometimes whether something is FU is a matter of feeling then justified
posthoc

UNPUBLISHED WORKS (HARPER & ROW)

HARPER & ROW V. NATION (1985) (∆s published a story that quoted Ford’s memoir, 13% it was taken from manuscript,
harmed π)
 “The monopoly created by copyright rewards the individual author in order to benefit the public”
Unpublished Works – Unpublished nature is a key factor that tends to negate the fair use defense
 “The author’s control of first public distribution implicates not only his personal interest in creative control but
his property interest in exploitation of prepublication rights, which are valuable in themselves & serve as a
valuable adjunct to publicity and marketing”
 “First publication is inherently different from other §106 rights in that only one person can be the first publisher; as
the contract with Time illustrates, the commercial value of the right lies primarily in exclusivity”
 “The applicability of the fair use doctrine to unpublished works is narrowly limited since, although the work is
unavailable, this is the result of a deliberate choice on the part of the copyright owner. Under ordinary
circumstances, the copyright owner’s right of first publication would outweigh any needs of reproduction for
classroom purposes”
The “public importance” of the works – No “Public Figure Exception”
 That a work “may…be newsworthy is not an independent justification for unauthorized copying of the author’s
expression prior to publication” (would act as a disincentive)
 “There is necessarily, and within suitably defined areas, a concomitant freedom not to speak publicly”
Factor 1: Purpose of Use – Cannot Intentionally Supplant a CR Holder’s Right to First Publication
 “∆ has every right to seek to be the first to publish information. But ∆ went beyond simply reporting
uncopyrightable information and actively sought to exploit the headline value of its infringement, making a ‘news
event’ out of its unauthorized first publication of a noted figure’s copyrighted expression”
 “The crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether
the user stands to profit from exploitation of the copyrighted material without paying the customary price”
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  ∆’s “use had not merely the incidental effect but the intended purpose of supplanting the copyright holder’s
commercially valuable right of first publication”
 “Fair use presupposes good faith and fair dealing”
Factor 2: Nature of the Copyrighted Work
 “The law generally recognizes a greater need to disseminate factual works that works of fiction or fantasy”
 ∆ did copy facts and “isolated phrases…and instead excerpted subjective descriptions and portraits of public
figures whose power lies in the author’s individualized expression. Such use, focusing on the most expressive
elements of the work, exceeds that necessary to disseminate the facts”
 “The fact that a work is unpublished is a critical element of its nature”
 Here “the copyright holders’ interest in confidentiality is irrefutable…A use that so clearly infringes the copyright
holder’s interests in confidentiality and creative control is difficult to characterize as fair use”
Factor 3: Amount and Substantiality – Only took 13%, but since it structured the article around these quoted excerpts, it
took too much.
 While the amount taken from the manuscript was not enormous ∆ took “the most interesting and moving parts of
the entire manuscript” [Heart of the Work]
 Moreover, “The Nation article is structured around the quoted excerpts which serve as its dramatic focal points”
Factor 4: Effect on the Market
 “This last factor is undoubtedly the single most important element of fair use”
 “Rarely will a case of copyright infringement present such clear-cut evidence of actual damage” (Time cancelled
the deal)
 Burden Shifting Test: “Once a copyright holder establishes with reasonable probability the existence of a causal
connection between the infringement and a loss of revenue, the burden properly shifts to the infringer to show that
this damage would have occurred had there been no taking of copyrighted expression”
 “More important, to negate fair use one need only show that if the challenged use should become widespread, it
would adversely affect the potential market for the copyrighted work…This inquiry must take account not only
of harm to the original but also of harm to the market for derivative works”
Dissent:
 Majority’s opinion will “stifle the broad dissemination of ideas and information CR is intended to nurture”
 The value of the work “lies primarily in the information and ideas revealed, and not in the particular collection of
words through which the information and ideas are expressed”
 “Whether a particular prepublication use will impair any interest the Court identifies as encompassed within the
right of first publication…will depend on the nature of the copyrighted work, the timing of prepublication use, the
amount of expression used, and the medium in which the second author communicates”
 “the Court … simply adopted an exceedingly narrow view of fair use in order to impose liability for what was in
essence a taking of unprotected information”
Takeaway: Ordinarily reporters can claim fair use, but this case carves out an exception because 1) the work was
unpublished, 2) it was coming out anyway (public would benefit), and 3) the article cost the author money.

Following Harper & Row,

Congress amended §107 to
say: “the fact that a work is
unpublished shall not itself
bar a finding of fair use if
such finding is made upon
consideration of all the
above factors.”
SUNDEMAN V. SEAJAY SOC’Y, INC. (4TH CIR. 1998): two unathorized copies were
made of manuscript by Rawlings (unpublished at death). One was to avoid damage and
other was for purposes of authentication.
Held: copying and quoting was for essentially non-commercial, educational and
transformative purpose without damaging market for novel.
REMIX ART

Q: is fair use transformative the same as derivative works transformative?

A: No, I don’t think so. DW transformative closer to recasting or translation, I think. Fair use has to transform the purpose
and recontextualize the work (give it new meaning).

MATTEL V. WALKING MOUNTAIN PICTURES (9TH CIR. 2003): (photographs depicting Barbie dolls w/out clothes being
victimized by kitchen appliances)
46
Held: Fair use.
 “The threshold question in the analysis of this first factor is whether a parodic character may reasonably be
perceived”
o “Parody is an objectively defined rhetorical device. Further, because parody is a form of social and literary
criticism, it has socially significant value as free speech under the First Amendment”
o “Use of surveys in assessing parody would allow majorities to determine the parodic nature of a work and
possibly silence artistic creativity”
 “Clearly, Forsythe had a commercial expectation and presumably hoped to find a market for his art. However, as
the Supreme Court noted in Campbell, even works involving comment and criticism are generally conducted for
profit in this country”
o “Given the extremely transformative nature and parodic quality of ∆’s work, its commercial qualities become
less important”
 “We do not require parodic works to take the absolute minimum amounts of the copyrighted work possible”
 B/c ∆’s work is parody it is “highly unlikely that it will substitute for products in π’s markets or the markets of π’s
licensees”
 “The public benefit in allowing artistic creativity and social criticism to flourish is great. The fair use exception
recognizes this important limitation on the rights of the owners of copyrights”

BLANCH V. KOONS (2D CIR. 2006): Koons scanned legs from “Niagara” and placed them on a new painting that showed
them standing over desserts in order to provide commentary on ways in which our basic appetites are mediated by popular
images.
Holding: Since the work was transformative & ∆ offered a justification for his act of copying, he is entitled to a fair use
defense.
Transformative Use:
 “We have declined to find a transformative use when the defendant has done no more than find a new way to
exploit the creative virtues of the original work.”
o The argument that the fair use defense may be invoked where “the defendant’s work, although containing
substantially similar material, performs a different function that that of the plaintiff’s” is defective because it
contradicts “the Copyright Act’s express grant to copyright holders of rights over derivative works.”
 However, that Koons had “sharply different objectives” than Blanch, “confirms the transformative nature of the
use.”
 “Where, as here, the copyrighted work is used as ‘raw material’…in furtherance of distinct creative or
communicative objectives, the use is transformative.”
o It is also important that Koons was using Blanch’s images “as fodder for his commentary on the social and
aesthetic consequences of mass media” (i.e. the target of the commentary was the underlying work itself.)
Parody, Satire, and Justification for Copying:
 Work is satire not parody: “its message appears to target the genre of which [π’s photograph] is typical, rather
than the individual photograph itself.”
 The question is “whether Koons had a genuine creative rationale for borrowing Blanch’s image, rather than using
it merely ‘to get attention or to avoid the drudgery in working up something fresh.’” Campbell.
 Creative Rationale: Koons stated “by using an existing image, I also ensure a certain authenticity or veracity that
enhances my commentary – it is the difference between quoting and paraphrasing – and ensure that the viewer
will understand what I am referring to.”
o Court concludes that ∆ “established a justification for the very act of his borrowing,” & thus, he is entitled to
the fair use ∆.
Rule of Law: In addition to the parody/satire distinction of CAMPBELL, a ∆ can establish a fair use defense where 1) his
work was transformative (using the Campbell test) and 2) he establishes a justification for his act of borrowing (such as
enhancing the commentary of the work).
 Cf. with Rogers v. Koons
Wu: Rationale for distinction between parody & satire: w/ satire there is always another way to tell your story (flimsy)
 This case creates a new category, separate from parody/satire: remix art
 The difference between a derivative work and a work entitled to fair use is that a derivative work serves the same
purpose as the original, whereas to qualify for fair use the work has to serve a completely different purpose.
47
  Satire needs justification – a creative rationale. Need to explain why you took what you did.

CARIOU V. PRINCE (2ND CIR. 2013): Rastafarian book, Prince takes images and alters them; π doesn’t get gallery deal, in
part, b/c of ∆.
Holding: Prince’s works were entitled to a fair use defense because they were transformative.
 Prince did not articulate a justification for his appropriation, however the court looks to “how the work in question
appears to the reasonable observer, not simply what an artist might say about a particular piece or body of
work.”
 Court finds that most of Prince’s works have “a different character, give Cariou’s photographs a new expression,
and employ new aesthetics with creative and communicative results distinct from Cariou’s.”
o However, “[a] secondary work may modify the original without being transformative.”
o “For instance, a derivative work that merely presents the same material but in a new form, such as a book of
synopses of televisions shows, is not transformative.”
 “Prince has not presented the same material as Cariou in a different manner, but instead has add[ed] something
new and presented images with a fundamentally different aesthetic.”
 Market: Prince and Cariou were not in the same market; Prince’s work sold for lots of money and famous and
wealthy people attended his galler openings at Gagosian. Cariou has not done the same, and “nothing in the record
suggests that anyone will not now purchase Cariou’s work…as a result of the market space that Prince’s work as
taken up.”
Wu: 2nd Circuit sees a lot of remix art cases which might be why they came out the way they did.
This is the most extreme version of 2nd Circ only engaging in a transformative use analysis

EXAM: WU thinks that the CTs are moving in the direction of saying that traditional transformation (book to movie)
should be infringing DW and inventive transformations (remix art) should be FU

COMPANION WORKS
Wu’s Theory of Companion Works Cases
 HP Lexicon & Seinfeld cases were wrongly decided; Ty was correctly decided
 Reference guides are transformative because they serve a similar purpose to search engines
 Purpose: benefit is obvious, not a lot of creativity, but enough to warrant some protection
 Market: does not compete or act as a substitute for the books and serves as a marketing tool
o In all of these cases, the original work was super successful, so the authors have already been
compensated.

TY. INC. V. PUBL’NS INT’L (7TH CIR. 2002): Beanie Baby guide case. Some guides were for kids (cutesy descriptions)
and others were for adults (collection guides). [WU LIKES THIS]
Held: Exploitation of new, complementary markets is the hallmark of fair use.
 “Copying that is complementary to the copyrighted work (in the sense that nails are complements of hammers) is
fair use, but copying that is a substitute for the copyrighted work (in the sense that nails are substitutes for pegs
or screws), or for derivative works from the copyrighted work, is not fair use.”
 “Were control of derivative works not part of a copyright owner’s bundle of rights, it would be clear that ∆’s
books fell on the complement side of the divide and so were sheltered by the fair-use defense.”
o Guides are not derivative works, but the guides have fully reproduced the Beanie Babies in their
photographs. The photos in themselves might be derivative works of the sculptural beanie baby works.
 Posner looks at the non-photographic materials – are they superfluous (like in the kids guides) or not (adult
guides)? If they add something, then closer to fair use.
 Wu: something that adds value should be fair use.
 Wu: this theory isn’t comprehensive because derivative works are complementary markets as well.

WARNER BROS. V. RDR BOOKS, (SDNY 2008) (Harry Potter Lexicon)

Holding: The defendant is not entitled to the fair use defense because it copied more than was necessary.

48
  The books serve an entertainment or aesthetic purpose, but the Lexicon serves “the practical purpose of making
information about the intricate world of Harry Potter readily accessible to readers in a reference guide.”
o The Lexicon 1) identifies elements, 2) extracts and synthesizes them, and 3) “presents that information in a
format that allows readers to access it quickly.”
o The work’s function as a reference guide distinguishes it from a book of trivia, which is an infringing
derivative work. Castle Rock (Seinfeld trivia book)
o The Lexicon does not seek to entertain, bur rather to aid the reader or student of Harry Potter.
 However, this transformative function is diminished because it “copies distinctive original language…in excess
of its otherwise legitimate purpose of creating a reference guide.”
 “A finding of verbatim copying in excess of what is reasonably necessary diminishes a finding of a transformative
use.”
Rule of Law: Even if a work serves a different purpose than the original, if it borrows too much then its transformative
status is given less weight.

CASTLE ROCK ENTERTAINMENT, INC. V. CAROL PUB. GROUP, INC., (2D CIR. 1998): Seinfeld Aptitude Test book,
contains quotes
Holding: Since none of the four fair use factors favor the defendants, they are not entitled to a fair use defense.
 The purpose of the SAT was not to educate, analyze, criticize or comment on Seinfeld, but rather, to repackage the
Seinfeld programs to entertain the reader and sate their passion for the show.
 While SAT contained minimally creative elements (such as formulating the questions and answers) it too
minimally altered the show’s expression and evinced no transformative purpose.
 It borrowed more than was necessary for the purpose of entertainment.
 Finally, the defendants argued that there was no adverse economic impact, but the court disagreed
o “The SAT substitutes for a derivative market that a television program copyright owner such as Castle Rock
would in general develop or license other to develop.”
o The SAT is not critical of Seinfeld and is not a parody of it.
o Finally, “it would…not serve the ends of the Copyright Act – i.e., to advance the arts – if artists were denied
their monopoly over derivative versions of their creative works merely because they made the artistic decision
not to saturate those markets with variations of their original.”
Rule of Law: If there is no parody or criticism, the mere fact that the copyright owner has not exploited the derivative
market does not justify an infringing derivative work.
Wu: wrongly decided.

CLEAN FLICKS OF COLO. V. SODERBERGH, (D. COLO. 2006): πs sell or rent movies that have had scenes w/ sex,
profanity, etc. edited out
Holding: The work is not entitled to a fair use ∆ b/c it is not transformative and because it infringed on the market of the
CR holder.
 Plaintiffs argue that they the studios benefit because plaintiffs maintain a one-to-one ratio of modified to original
works and that this allows the studios to tap a market that would not otherwise have purchased the movie.
o This argument “ignores the intrinsic value of the right to control the content of the copyrighted work which is
the essence of the law of copyright.”
 Whether the films should be edited in such a way “is more than merely a matter of marketing; it is a question of
what audience the copyright owner wants to reach.”
 The fair use defense “is predicated on a theory of an author’s implied consent to reasonable and customary use
when he releases his work for public consumption. That theory is not applicable here because the infringing parties
are exploiting a market for movies that is different from what the Studios have released into and for an audience
the Studios have not sought to reach.”
 Furthermore, the court held that the work was not transformative because it did not add anything new.
Rule of Law: The right to control the content of a copyrighted work has an intrinsic value, which allows the copyright
holder to determine which markets he wants to target.
Wu: Not sure how this affects the market; has to be a moral rights argument sneaking in via derivative works (cf. Gillian)

49
 APPLICATION OF FAIR USE DOCTRINE TO NEW TECHNOLOGIES

SONY CORP. OF AMERICA V. UNIVERSAL CITY STUDIOS, INC., (U.S. 1984): Betamax; time-shifting
Holding: Time-shifting is fair use.
Purpose - Time-shifting is a noncommercial, nonprofit activity;
Amount Copied
 It’s not significant that plaintiffs reproduce the entire works - those works were publicly broadcast, and plaintiffs,
as members of public, were “invited” to view the entire programs for free
 Time-shifting copies the programs exactly as they were broadcast, and those broadcasts were free and public
Market Effects
 If a ∆ copies for commercial purposes, there is a presumption of unfair use (for-profit  presumption of harmful
market effects)
 Test for Market Effect: “A challenge to a noncommercial use of a copyrighted work requires proof either [1] that
the particular use is harmful, or [2] that if it should become widespƒread, it would adversely affect the potential
market for the copyrighted work.”
o For [1], Plaintiffs just have to show, by preponderance of evidence, “some meaningful likelihood of future
harm”
 Eschews a categorical approach in favor of an “equitable rule of reason” analysis.
o Time-shifting expands public access to freely broadcast television programs (social benefits!)
o In equitable cost-benefit analysis, defendants win.
 Footnote 40 addresses the dissent: Plain meaning of statute does not create a strict dichotomy between
productive/unproductive uses for fair use analysis. It prescribes a factor test and a “sensitive balancing of
interests.” The balancing is multi-dimensional, and no one factor is dispositive.
Dissent: the purpose of the CR Act fair use exception is to allow subsequent authors to make use of copyrighted works for
the public good; when an individual copies a work for private benefit, there is no added benefit to the public, and thus, it
should not fall under the fair use exception.
 When there is an “unproductive use” at issue, the CR owner should only have to prove “a potential for harm to the
market or the value of the copyrighted work.”
 Fair use is justified by the external benefits to the public at large of allowing “productive use” or “socially laudable
purposes” of CR works.
 Fair Use usually doesn’t apply when an “ordinary user” reproduces an entire work and uses it for its original
purpose. There is no “added benefit to the public.”
 Court should be careful when extending Fair Use to ordinary uses
 It’s difficult to predict future harms, but CR owners shouldn’t bear this risk. That’s inimical to the purposes of CR
 Disagrees on how the factor test comes out
1. Noncommercial and nonprofit should mean that it creates some external benefit, not merely that the copier
doesn’t profit
2. Nature: copied works aren’t the type of thing that we need to disseminate more widely (such as news reports)
in order to encourage productive use by others
3. Amount: they duplicate entire programs. Fair use was supposed to let people incorporate bits and pieces of the
work of others into new works, not simply reproduce old works in their entirety for private consumption.
4. Market effects: Even if there is no harm to present markets, Court must evaluate harms to potential markets.
Sony is taking the potential market for re-runs or video sales by selling VTRs.
Rule of Law: In fair use analysis, if the copied works are not being used for commercial purposes, then burden is on
plaintiffs to show “meaningful likelihood of future harm” by preponderance of the evidence.
 In the categorical approach to fair use, time shifting is approved, so long as it is private.
o Wu: Apple used this approach to suggest iPod = space-shifting.
Wu: There seem to be things that you can do in private that you cannot do in public, which creates a domain of users
rights
 Do users in addition to authors have fair use rights?
Wu: weakest part of the case is the emphasis on the public good. Prior cases seemed to focus on market replacement.

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PERFECT 10, INC. V. AMAZON.COM, INC., 9TH CIR. 2007 (π’s images were stolen and used on infringing websites – π
sues everyone). Use of exact copies of pictures as thumbnails in a search engine is a transformative use since the purpose
is for reference rather than entertainment.
Holding: The transformative use and public benefit outweigh profit motive and potential market harm, thus Google is
entitled to a fair use defense.
 Once plaintiff makes out prima facie case of infringement, burden shifts to defendant to prove affirmative defense
of fair use
 Purpose: Strongly in favor of Google
 Google’s use of the thumbnails is highly transformative. New context + New purpose.
o Search engine transforms the image into a “pointer directing a user to a source of information”
o Provides social benefit by incorporating an original work into a new work: an electronic reference tool
 Google’s commercial benefit from the display are outweighed by transformative use and accompanying public
benefits
o The more transformative the use, the less significant the other factors, like commercialism.
 Nature: Slightly in favor of Perfect 10
o Images were creative in nature. Closer to core of CR than fact-based works.
o BUT they had already been published and disseminated. Infringing websites were already up before Google
indexed them in its search engine.
 Amount: Doesn’t favor either party
o It was necessary for ∆ to use entire images to help users recognize image, decide whether to pursue more
information about it
o Using less than full image would have reduced usefulness of the search engine
 Market Effects: Neither party
o Display of thumbnails doesn’t harm Perfect 10’s market for full-size images
o Although Sony indicated that market harm should be presumed where the works are used for commercial
gain, this presumption does not apply when the use is highly transformative
o Harm to market for mobile downloads is only hypothetical (Plaintiffs didn’t carry burden of proof)
Rule of Law:
 Under “purpose” prong: Transformative use strongly suggests fair use, since it has social benefits of creating a
new work.
 Under Market Effects prong: While commercial, for-profit use shifts burden to defendant to prove no harmful
market effects (Sony), a highly transformative, albeit commercial, use will defeat that burden-shift, and plaintiffs
will still have Sony burden to prove “meaningful likelihood of future harm.” Also, you might have to show actual,
rather than hypothetical, harm.
 Re clean hands: incidental infringement (i.e. linking to the infringing conduct) does not necessarily negate good
faith/clean hands
Wu: Consumer benefit and mass distribution of information are so useful that a whole, new product is created.

AUTHORS GUILD INC. V. GOOGLE INC. – (SDNY 2013) Google was scanning up millions of books for an online
database. Google didn’t seek authorization, but passively awaited copyright holders to come forward and opt out.
Searches of unauthorized copies will only display “snippets” and no advertising.
Held: Google Books is fair use.
 A party has a fair-use defense to a copyright-infringement claim if it copies books to a searchable online database
but allows users to view only small portions of the books. A fair use of copyrighted material is a defense to a
copyright-infringement claim.
 A work may be considered fair use under the first factor if the new work is transformative, meaning that it
communicates something new and different from the original. A finding of fair use is more likely if only small
amounts of the original work are copied. However, complete, unchanged copying is justified as fair use if the
copying was reasonably appropriate to achieve the copier’s transformative purpose.
 As to the second factor, courts have rarely found that this factor plays a large role in deciding fair use, and it does
not here.
 As to the third factor, copying entire books was necessary for Google’s transformative use. Additionally, Google
only made a small portion of the works available to the public.
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 Thus, looking at the fourth factor, it is unlikely that Google has created a copy that would compete with copyright
owners. Accordingly, Google’s copying constitutes an fair, non-infringing use. Google’s agreement to give copies
of the works to the libraries, to be used for the same purposes as the Google Books Project, is also non-infringing.
o The fourth factor: Google’s copies were made for a highly transformative purpose. Making a digital copy of
copyrighted books that allows users to search for terms of interest is the type of transformative use this factor
was meant to address. Although Google has a profit motivation in the project, that motivation should not be
used to deny fair use in light of this highly convincing transformative purpose.
 WU: Don’t point to a hypothetical market you have to actually point to a real market (one that the © holder is 1)
Actually engaged in 2) traditionally thought to have control over or 3) reasonably expected to be a participant in).

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 VI. LIABILITY
Direct Liability Vicarious Liability Contributory Liability Inducement? Safe Harbors
Requires either: Requires: Requires: Evidenced by: 1) §512 –
1) Volition or 1) Right & ability to 1) Either: (1) solicitation; Service
(Cablevision; control (Fonovisa) a. Intent (2) design; Providers
Aereo) 2) Financial Benefit (inducement?) or (3) commercial benefit Sony (if work
2) Authorization 3) Cf. b. Knowledge has substantial,
(Aveco) Employee/Employer i. Actual noninfringing
(can be implied; normal Knowledge uses)
agency law) (Grokster)
ii. Constructive
knowledge
(Sony)
iii. Willful
blindness (?)
2) Material
Contribution (to
the actual
infringement

FONOVISA, INC. V. CHERRY AUCTION, INC. (9TH CIR. 1996): Cherry Auction operates a flea market where vendors sold
counterfeit recordings; retains the right to exclude vendors for any reasons at any time & was aware that vendors in their
swap meet were selling counterfeit recordings.
Holding: ∆ was vicariously and contributorily liable for the copyright infringement taking place at their flea market.
Vicarious Liability
 “Even in the absence of an employer-employee relationship one may be vicariously liable if he has [1] the right
and ability to supervise the infringing activity and [2] also has a direct financial interest in such activity”.
o Shapiro case looked at landlord tenant (not liable because landlord lacked knowledge) and dance-hall cases
(liable because of above factors).
o Control Prong
o Because ∆ could get rid of vendors who they did not approve of, they had the ability to control the
activities of the vendors on the premises
 ∆ also promoted the swap meet and controlled customer access to the area – even more indicative of their
control of the situation
o “Pervasive participation in the formation and direction of the direct infringers, including promoting them” is
enough to show police ability and satisfy the control prong – Gershwin
o The combination of the existence of rules and regulations, policing to make sure rules and regulations are
followed, and active promotion of a direct infringer is enough to satisfy the control prong – Polygram.
o The financial benefit SHAPIRO (department store case) prong was easily satisfied through the admission fees,
concession stand sales and parking fees which flow directly from the customers (who want to buy counterfeit
recordings) to the defendant
o Implication is to make sure that the DESIRE TO BUY INFRINGING MATERIALS is what caused the
money to transfer from customer to the vicarious infringer.
o There is a line of cases that imposes vicarious liability on the operator of a business where infringing
performances enhance the attractiveness of the venue to potential customers
Contributory Liability
 Contributory infringement (which is distinct from vicarious infringement) is “one who, with knowledge of the
infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held
liable as a contributory infringer” – Gershwin
o Re Material Contribution:
o “It would be difficult for the infringing activity to take place… without the support services provided by the
swap meet” – including space, utilities, parking, advertising, plumbing and customers

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 o “Cherry Auction actively strives to provide the environment and the market for counterfeit recording sales to
thrive”
 Thus, active participation in the ongoing infringement seems to be an element of materiality as well
 This jives with the “enterprise theory” of contributory infringement liability
Rule of Law:
 When determining vicarious copyright infringement liability, analyze whether the relationship is more similar to
the landlord-tenant (where there is no knowledge, control, or financial gain relating to the direct infringement); or
to the “dance hall cases”, where the vicarious infringer had both control of the situation and also gained a financial
benefit from the infringement. No liability for the former, liability for the latter.
 Additionally, contributory infringement occurs when the defendant has knowledge of an ongoing infringement and
induces, causes or materially contributes to the infringing conduct.
o Contributory infringement exists when the defendant “expressly promotes or encourages the sale of
counterfeit products, or in some manner protects the identity of the infringers”
o “Providing the site and facilities for known infringing activity is sufficient to establish contributory liability”
In end user cases there is no right to control, so the infringement cannot be vicarious.

Sony As Applied Analysis:

1) What is the thing being SONY CORP. OF AMERICA V. UNIVERSAL CITY STUDIOS, INC (1984) (Betamax case)
used for? Holding: The sale of the video tape recorders to the general public does not violate any
2) Which uses are of the rights protected by the Copyright Act.
infringing/non- Contributory Infringement
infringing?  Court notes that this case does not meet the traditional criteria for contributory
3) What is the percentage infringement – namely, control and authorized the use of the infringing material
of infringing/non- without permission from copyright holder
infringing (i.e. are non- o [seems to be a different version of the Cherry Auction test, but note, this
infringing uses case was 10 years before Cherry Auction]
substantial)? o The only contact between Sony and the user of Betamax occurs at the
Things that fail the Sony test: moment of sale. Sony does not exercise influence over the use of the
preloaded tape, descrambler, Betamax, and nor does Sony encourage or influence users to infringe
maybe Bit Torrent (it is hard copyrighted material via advertisements.
to think of things that fail the  The only theory that ∆ could be found liable under would that they had
test b/c they are contraband “constructive knowledge” that their customers may use the equipment to make
and why would someone unauthorized copies – however, there is no precedent in CR law to find liability
create something that will under this theory
just get sued out of Patent Law
existence?)  Court looks to Patent Law for guidance, which makes it illegal to knowingly
sell a component especially made for use in connection with a particular patent.
Nonetheless, such a prohibition does not remove the component from the market altogether – it just makes it
illegal to knowingly sell the component to a would-be Patent infringer
o Courts have always recognized in patent cases the importance of not allowing the patentee to extend his
monopoly beyond the limits of his specific grant.
o In such cases, patentees are denied the right to control the distribution of unpatented articles “unless they are
unsuited for any commercial noninfringing use”.
o Essentially, the court is implying that VCRs have non-infringing uses … (for example, recording non
copyrighted work, or recording work w/ a license for that matter). Thus removing it from circulation merely
because it has the potential for being used to infringement simply isn’t justified – not even Patent Law, which
expressly outlaws contributory infringement, removes articles from commerce based on infringing potential
(unless of course there is literally no other use for the article besides infringement).
 “The sale of copying equipment does not constitute contributory (copyright) infringement if the product is widely
used for legitimate, unobjectionable purposes. … it need merely be capable of substantial non-infringing
use”.
 There is at least one use of the Betamax that plainly is not infringement – private, noncommercial time-shifting in
the home

54
 o Such use of the Betamax is not infringement because the respondents in this case do not have the right to
prevent other copyright holders from authorizing it for their programs; and
Rule of Law: So long as a copying technology is capable of substantial noninfringing use, it will not be blocked from
being sold in the marketplace, and its creators / manufacturers / sellers will not be found liable for contributory
infringement.
Notes:
 Plaintiffs seem to be worried about users potentially “librarying” the shows that they record. Whilst Sony can’t do
anything about that, most users are still using the Betamax for intended purposes of just time-shifting.
MGM STUDIOS V. GROKSTER (∆s distribute software that allows users to share electronic (infringing) files through peer-
to-peer networks)
Holding:
 “When a widely shared service or product is used to commit infringement, it may be impossible to enforce rights
in the protected work effectively against all direct infringers, the only practical alternative being to go against the
distributor of the copying device for secondary liability on a theory of contributory or vicarious liability”
 “One infringes contributorily by intentionally inducing or encouraging direct infringement, and infringes
vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it”
 Re Sony:
o “Where an article is good for nothing else but infringement, there is no legitimate public interest in its
unlicensed availability, and there is no injustice in presuming or imputing an intent to infringe.
Conversely, the doctrine absolves the equivocal conduct of selling an item with substantial lawful as well
as unlawful uses, and limits liability to instances of more acute fault than the mere understanding that
some of one’s products will be misused”
o “Nothing in Sony requires courts to ignore evidence of intent if there is such evidence, and the case was
never meant to foreclose rules of fault-based liability derived from the common law”
o “Where evidence goes beyond a product’s characteristics or knowledge that it may be put to infringing
uses, and shows statements or actions directed to promoting the infringement, Sony’s staple-article rule
will not preclude liability”
o “It is enough to note that the Ninth Circuit’s judgment rested on an erroneous understanding of Sony and
to leave further consideration of the Sony rule for a day when that may be required.”
 “The classic case of direct evidence of unlawful purpose occurs when one induces commission of infringement by
another, or entices or persuades another to infringe”
 “Evidence of active steps taken to encourage direct infringement, such as advertising an infringing use or
instructing how to engage in an infringing use, show an affirmative intent that the product be used to infringe, & a
showing that infringement was encouraged overcomes the law’s reluctance to find liability when a ∆ merely sells a
commercial product suitable for some lawful use”
o “The classic instance of inducement is by advertisement or solicitation that broadcasts a message
designed to stimulate others to commit violations.”
o Ads urging adoption of Open Nap invites customers of Napster to use – one concludes that software
is used similarly to Napster to get copyrighted files.
o However, “proving that a message was sent out is the preeminent but not exclusive way of showing
that active steps were taken”
o Here: (1) companies showed itself to aiming to satisfy known source of demand for CR infringement;
(2) neither company adopted filtering tools to diminish infringing activity; (3) financial benefit.
o “One who distributes a device with the object of promoting its use to infringe copyright, as shown by
clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of
infringement by third parties”
o “Mere knowledge of infringing potential or of actual infringing uses would not be enough here to subject
a distributor to liability…The inducement rule, instead, premises liability on purposeful, culpable
expression and conduct, and thus does nothing to compromise legitimate commerce or discourage
innovation having a lawful purpose”
 “In addition to intent to bring about infringement and distribution of a device suitable for infringing use, the
inducement theory of course requires actual infringement by recipients of the device”—“There is evidence of
infringement of a gigantic scale”
55
Concurrence (Ginsburg) [How useful are concurrences/dissents for these purposes?]
 “Here, there has been no finding of any fair use and little beyond anecdotal evidence of noninfringing uses”
 “Even if the absolute number of noninfringing files copied using the [∆s’] software is large, it does not follow that
the products are therefore put to substantial noninfringing use and are thus immune from liability”
 “Fairly appraised, the evidence was insufficient to demonstrate, beyond genuine debate, a reasonable prospect that
substantial or commercially significant noninfringing uses were likely to develop over time”
Dissent (Breyer)
 The amount of non-infringing use here was similar to that in Sony and many potential legal uses could develop in
the future
 “Sony’s rule, as I interpret it, has provided entrepreneurs with needed assurance that they will be shielded from
copyright liability as they bring valuable new technologies to market”
o The rule is clear, and helps innovators know what they can and cannot put out
o The rule protects technology and makes it difficult to find secondary liability
o The rule looks forward to potential lawful uses in the future
o The rule in mindful of the technical limitations of judges
 Ginsburg’s idea of requiring more proof of legal uses would be contrary to the purpose of the rule set out in Sony,
and it would create a ton of uncertainty for entrepreneurs and would deter innovation
 Breyer likes the Sony rule, and does not want to give more to the copyright holders while taking away from the
technological entrepreneurs
Wu (From Case): Good faith filtering may warrant a safe harbor against secondary liability
Takeaway: The knowledge standard can be satisfied by either 1) intent, 2) actual knowledge, or 3) constructive
knowledge

DMCA SAFE HARBOR PROVISIONS (§512)

 The Digital Millennium Copyright Act adjusted the risks of copyright owners and service providers (OSPs) to place
the burden on copyright owners to identify and notify service providers of infringements carried by or residing on the
providers’ systems
o Does not cover service providers who originate or are otherwise actively implicated in the content residing on
their servers or transiting through their systems.
 The Online Copyright Infringement Liability Limitation Act (part of the DMCA) “establishes a series of four ‘safe
harbors’ that allow qualifying service providers to limit their liability for claims of copyright infringement based on
(a) ‘transitory digital network communications,’ (b) ‘system caching,’ (c) ‘information residing on systems or
networks at the discretion of users,’ and (d) ‘information location tools’” Viacom
 §512(a) applies to the case of an OSP that sends digital communications of others across digital networks (“mere
conduit”)
 §512(b) applies to “system caching” by the OSP, where the OSP temporarily stores material so to reduce network
congestion
 §512(c) applies where the OSP, at the direction of the user, stores allegedly infringing material on a network for a
longer time
o Examples of such storage include providing server space for a user’s website or a chat room/forum
o Three conditions must be satisfied to qualify for the safe harbor
1) The OSP “does not have actual knowledge that the material or activity is infringing” or “in the absence of
such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent” or
“if upon obtaining such knowledge or awareness [red flag], the service provider acts expeditiously to remove
or disable access to, the material”
2) The OSP “does not receive a financial benefit directly attributable to the infringing activity, where the service
provider has the right and the ability to control such activity”
3) If the OPS receives from the copyright owner what has come to be known as a “take-down notice” identifying
allegedly infringing material, the OSP “responds expeditiously to remove, or disable access to, the material
that is claimed to be infringing or to be subject to infringing activity”
 Requirements for an effective take-down notification by the copyright owner are
 It must be in a signed writing
56
  It must identify the copyrighted work
 It must identify the allegedly infringing material and its location
o This section does not limit liability when it is the OSP that stores the material through its own acts or decisions
 §512(d) applies where an OSP links users to an online location containing infringing material or activity (such as
hyperlinks)
o This section also has notice and take-down provisions and a safe harbor
o To qualify for the safe harbor: Upon notification, the OSP must expeditiously (undefined) remove or block access
to the allegedly infringing material
 §512(g) applies where the OSP gives notice to the subscriber, who can then send a “counter notification,” which
results in the OSP putting the material back up within 10 business days
o The copyright owner then must file an action seeking a court order to restrain the subscriber from engaging in
infringing activity relating to the material on the OSP’s network
o If the copyright owner does not initiate the action, then the OSP must but the material back up within 10-14
business days
o Compliant OSPs are insulated from suits by individuals disgruntled at the removal of material from the server.
o Purpose: to ensure that §512 does not make it too easy for CR owners to compel removal
 §512(f) states that any person who knowingly misrepresents that material or activity is infringing will be subject to
damages incurred by any person injured as a result of the service provider’s removal of the material
 Note re Net Neutrality: if you discriminate in providing broadband, you may lose access to the safeharbor.
 One exception: J(1)(B) (allows injunctions in 2 situations)

VICAOM V. YOUTUBE, (2D CIR. 2012): 79,000 clips on YouTube that violated CRs; user agreement said you can’t upload
infringing works
 “To qualify for protection under any of the safe harbors, a party must meet a set of threshold criteria”
1) The party must be a “service provider” (§512(k)(1)(B))
2) Other eligibility requirements such as implementation of policies to deter repeat infringers (§512(i)(1)(A))
3) OSP must accommodate standard technical measures to be used by CR owners to identify/protect their works
(§512(i)(1)(B))
4) “a service provider must satisfy the requirements of a particular safe harbor” (i.e. §512(a)-(d); in this case,
§512(c))
 “A finding of safe harbor application necessarily protects a defendant from all affirmative claims for monetary
relief”
o [Also injunctive or other relief except as provided for in (J)]
Actual and “Red Flag” Knowledge: §512(c)(1)(A)
 “The nature of the removal obligation itself contemplates knowledge or awareness of specific infringing material,
because expeditious removal is possible only if the service provider knows with particularity which items to
remove”
 “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”
o “estimates [of the amount of infringing material] 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.”
 Willful Blindness
o “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”
o “DMCA safe harbor protection cannot be conditioned on affirmative monitoring by a service provider.
For that reason, §512(m) is incompatible with a broad common law duty to monitor or otherwise seek out
infringing activity based on general awareness that infringement may be occurring”
o “Accordingly, we hold that the willful blindness doctrine may be applied, in appropriate circumstances, to
demonstrate knowledge or awareness of specific instances of infringement under the DMCA”
Control and Benefit: §512(c)(1)(B)
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  “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 provider’s website…”
o Examples of ‘something more’
o Perfect 10 v. Cybernet: OSP forbid certain types of content & refused access to users who failed to
comply
o MGM v. Grokster: Inducement of infringement, which premises liability on purposeful, culpable
expression and conduct
 Both of these examples involve a service provider exerting substantial influence on the activities of users, without
necessarily – or even frequently – acquiring knowledge of specific infringing activity.
“By Reason of” Storage: §512(c)(1)
 “§512(c) is clearly meant to cover more than mere electronic storage lockers”
 “The §512(c) safe harbor extends to software functions performed for the purpose of facilitating access to user-
stored material”
o This is 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”
Repeat Infringer Policy
 §512(i) “conditions safe harbor eligibility on the service provider having adopted and reasonably implemented a
policy that provides for the termination in appropriate circumstances of subscribers and account holders of the
service provider’s system or network who are repeat infringers”
 According to §512(m), “the safe harbor expressly disclaims any affirmative monitoring requirement”—except to
the extent that such monitoring comprises a “standard technical measure” within the meaning of §512(i)
Takeaways:
 §512(c)(1)(A) requires knowledge or awareness of facts or circumstances that indicate specific and identifiable
instances of infringement
o For actual knowledge, ∆ must ‘subjectively’ know of specific infringement,
o For red flag knowledge, ∆ must be subjectively aware of facts that would have made the specific
infringement ‘objectively’ obvious to a reasonable person
o The willful blindness doctrine may be applied, in appropriate circumstances, to demonstrate knowledge or
awareness of specific instances of infringement
 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 provider’s website
Wu: The objectively obvious criteria essentially establishes a negligence standard
 Even though YouTube (sort of) wins, this decision tightens requirements on companies like YouTube (which may
have led them to enter into more deals with content providers
 Defeat for content industry b/c red flag was converted from general/specific to objective/subjective (strengthens safe
harbor)
 Mens rea is important in this area of copyright; for willful blindness you need intent to not have knowledge.

VII. REMEDIES AND MISUSE

 In order to avail yourself of remedies, you have to register your copyright
INJUNCTIVE RELIEF - §502

 Four Criteria [Ebay v. MercExchange (2006) Patent Law]

(1) that it has suffered an irreparable injury;
(2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
(3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted;
and
(4) that the public interest would not be disserved by a permanent injunction

MONETARY DAMAGES - §504

 Actual Damages - §504(b)
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 o Includes both damages suffered by CR holder and also profits attributable to the infringement
o CR owner has burden of proving gross revenue associated with the infringement and ∆ has the burden of
proving 1) deductible expenses and 2) any profit attributable to factors other than the infringement.
o Wu: Tends to be licensing fees.
 Statutory Damages - §504(c)
o If the infringement was willful, up to $150,000 per infringing work. §504(c)(2)
o If the infringer shows that he was not aware and had no reason to believe that his acts were infringing, the
court may reduce the award to $200 per work.
o The court shall remit statutory damages where the infringer believed and had reasonable grounds for
believing that his use of copyrighted work was fair use if the defendant is:
 an employee or agent of a nonprofit educational institution, library, or archives acting within the scope of
his or her employment which infringed by reproducing the work or
 a public broadcasting entity which, as a regular part of the nonprofit activities of a public broadcasting
entity who infringed either by 1) performing a published nondramatic literary or 2) reproducing a
transmission program embodying a performance of such a work
o If the infringement was not willful, the court can award between $750 and $30,000 per infringing work,
 Additional Damages - §504(d)
o Where the court finds that a ∆ who claimed exemption under §110(5) did not have reasonable grounds to believe
that it was exempt, the court shall require the ∆ to pay 2x the licensing fees that the ∆ would have had to pay over
the last 3 years
 Attorney’s Fees - §505
 Super high damages may constitute an unconstitutional fine (8th Amendment)
 CA may allow for an equitable estoppel (laches) defense

DAVIS V. THE GAP (2ND CIR. 2001): Plaintiff On Davis was the creator and designer of nonfunctional jewelry worn over
the eyes in the manner of eyeglasses. Defendant The Gap, Inc. was a major international retailer of clothing and
accessories. Gap, without Davis' permission, used a photograph of an individual wearing Davis' copyrighted eyewear in
an advertisement for the stores operating under the "Gap" trademark that was widely displayed throughout the United
States. Thereafter, Davis filed a lawsuit against Gap in federal district court seeking a declaratory judgment of
infringement and damages, including $ 2,500,000 in unpaid licensing fees, a percentage of Gap's profits, punitive
damages of $ 10,000,000, and attorney's fees. The district court granted summary judgment for Gap on the grounds that
Davis' claims for actual damages and profits under 17 U.S.C.S. § 504 (b) (1994) were too speculative to support recovery,
or were otherwise barred by a prior ruling from the United States Court of Appeals for the Second Circuit. Furthermore,
the district court held that Davis was not eligible for statutory damages or attorney's fees because he had not timely
registered his copyright, and the Copyright Act did not permit recovery of punitive damages.
Held: The appellate court vacated the district court's ruling on declaratory relief because the lower court overlooked
that aspect of relief. On the other hand, the court held that the district court properly precluded recovery based on Gap's
profits since Davis' claim was too speculative. However, the court held that the district court erred regarding Davis' claim
for damages based on Gap's failure to pay him a reasonable license fee. The district court properly concluded
that Davis was not entitled to punitive damages under the Copyright Act. The court rejected Gap's fair use and de minimis
use defenses.
Rule: In a copyright infringement case, the law exacts that the amount of damages may not be based on undue
speculation. The question is not what the owner would have charged for use of the protected material, but rather what is
the fair market value. In order to make out his claim that he has suffered actual damage because of the infringer's failure to
pay the fee, the owner must show that the thing taken had a fair market value. But if the plaintiff owner has done so, and
the defendant is thus protected against an unrealistically exaggerated claim, the United States Court of Appeals for the
Second Circuit sees little reason not to consider the market value of the uncollected license fee as an element of "actual
damages" under 17 U.S.C.S. § 504(b). Furthermore, the fair market value to be determined is not of the highest use for
which plaintiff might license but the use the infringer made.

CRIMINAL SANCTIONS - §506; 18 U.S.C. §2319

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Any person who willfully infringes a copyright shall be punished as provided under section 2319 of title 18, if the
infringement was committed— [Punishment from 18 U.S.C. §2319 incorporated for each offense (numbered lists)]
(A) for purposes of commercial advantage or private financial gain;
(1) shall be imprisoned not more than 5 years, or fined in the amount set forth in this title, or both, if the offense
consists of the reproduction or distribution, including by electronic means, during any 180-day period, of at least
10 copies or phonorecords, of 1 or more copyrighted works, which have a total retail value of more than $2,500;
(2) shall be imprisoned not more than 10 years, or fined in the amount set forth in this title, or both, if the offense is a
felony and is a second or subsequent offense under subsection (a); and
(3) shall be imprisoned not more than 1 year, or fined in the amount set forth in this title, or both, in any other case.
(B) by the reproduction or distribution, including by electronic means, during any 180–day period, of 1 or more copies or
phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1,000; or
(2) shall be imprisoned not more than 3 years, or fined in the amount set forth in this title, or both, if the offense
consists of the reproduction or distribution of 10 or more copies or phonorecords of 1 or more copyrighted works,
which have a total retail value of $2,500 or more;
(3) shall be imprisoned not more than 6 years, or fined in the amount set forth in this title, or both, if the offense is a
felony and is a second or subsequent offense under subsection (a); and
(4) shall be imprisoned not more than 1 year, or fined in the amount set forth in this title, or both, if the offense
consists of the reproduction or distribution of 1 or more copies or phonorecords of 1 or more copyrighted works,
which have a total retail value of more than $1,000.
(C) by the distribution of a work being prepared for commercial distribution, by making it available on a computer
network accessible to members of the public, if such person knew or should have known that the work was intended
for commercial distribution.
(1) shall be imprisoned not more than 3 years, fined under this title, or both;
(2) shall be imprisoned not more than 5 years, fined under this title, or both, if the offense was committed for
purposes of commercial advantage or private financial gain;
(3) shall be imprisoned not more than 6 years, fined under this title, or both, if the offense is a felony and is a second
or subsequent offense under subsection (a); and
(4) shall be imprisoned not more than 10 years, fined under this title, or both, if the offense is a felony and is a second
or subsequent offense under paragraph (2).

STATUTE OF LIMITATIONS
 For criminal offenses: 5 years
 For civil offenses: 3 years
 Statute runs from time of infringement

MISUSE

WU: Two types of misuse. (1) Patent-type of misuse, where the copyright owner uses copyright to restrain something that
is pro-competition. (2) Suppression of free speech (efforts to use K law to negate fair use).

Anti-competition Misuse
Patent misuse recognized by SCOTUS in MORTON SALT CO. V. G.S. SUPPIGER (1942) – Morton Salt claimed ∆
infringed patents on salt-depositing machine. License required its licenses to use only salt tablets produced by Morton.
Court said Morton improperly used its patent to restrain competition.

PRACTICE MANAGEMENT INFORMATION CORP. V. AMERICAN MEDICAL ASS’N (9TH CIR. 1997): HCFA entered
agreement with AMA, in which AMA granted non-exclusive royalty free and irrevocable license to CPT, and in exchange
HCFA agreed not to use any other system of nomenclature. When AMA declined discount, Practice Management sued on
copyright misuse. Court sustained claim that K in which AMA secured promise from HCFA is a misuse of the AMA CR.
Court reasoned that absence of agreement would not preclude HCFA from only using AMA’s system. “What offends…
doctrine is…limitation imposed by agreement on HCFA’s rights to decide whether to use or not.”

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Suppression of Free Speech
VIDEO PIPELINE, INC. V. BUENA VISTA HOME ENTERTAINMENT, INC (3D CIR. 2003): Video Pipeline had agreement
with Disney to show trailers. They used Disney material to make own trailers. Disney had agreement with them that they
would not say derogatory to or critical of the entertainment industry or of Disney. Sued. Claimed, among other things,
copyright misuse based on limiting agreement. “The alleged infringer not be subject to the purported misuse.” Court
didn’t think this was misuse – was Disney not able to get its material out? Other people can contract with Disney. You can
still write reviews and stuff. Not misuse.

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