COPYRIGHT

I. INTRODUCTION
A. Policies Supporting Copyright
1. Public benefit theory.
a. Not primarily for the benefit of the author, but primarily for the benefit of
the public, such rights are given. HOUSE REPORT on 1909 Act.
b. The immediate effect of our copyright law is to secure a fair return for an
“author’s” creative labor. But the ultimate aim is, by this incentive, to
stimulate artistic creativity for the general public good. Twentieth
Century Music v. Aiken.
c. Jefferson emphasized public benefit and favored means test.
d. Supreme Court very conservative about extending protection. Mazer,
Aiken, Sony.

2. Droit morale d’artiste.

a. there being no property more peculiarly a man’s own than which is
procured by the labor of his mind. MASSACHUSETTS STATUTE.
b. Intellectual property is, after all the only absolute possession in the world
... The man who brings out of nothingness some child of his thought has
rights therein which cannot belong to any other sort of property.
Nathaniel Shaler, quoted in Chafee.

3. Encouragement theory.
a. Encouragement of individual effort by personal gain is the best way to
advance public welfare through the talents of authors and inventors.
Mazer v. Stein.
b. Balancing rights: An exercise in effecting the difficult balance between
the interest of authors and inventors in the control and exploitation of
their writings and discoveries on the one hand, and society’ competing
interest in the free flow of information on the other ... Sony v. University
City Studios.

B. History
1. Copyright not needed pretechnology.
a. Few copies, few literate, laborious reproduction.
b. Property interest was physical object, not intangible expression.

2. With invention of printing press, possible for works to proliferate; property

interest in expression embodied in physical object.

3. Copyright conceived in censorship. Stationers’ Company given monopoly in

exchange for aid in ferreting out underground presses. Printers agree to respect

© 1993 Michael K. Cantwell

 each other’s monopoly. Last Star Chamber decree lapses 1694.

4. Statute of Anne (1710).

a. Monopoly in name of author (not publisher; but assigned). Significant
shift in recognition of rights of authors.
b. Limited monopoly — 14 +14 (renewal if living); 21 years for previously
published works.
c. Applies only upon publication. Does not apply to unpublished works.
d. Registration requirement.
(1) Register title at Stationers’ Hall.
(2) Deposit nine copies at official libraries.
e. Remedies to public as well as authors/owners of copyright. Consumerism
also striking.
(1) Public petition if book sold “high and unreasonable price.”
(2) Repealed in 1739 as ineffective.
(3) But contained in pre-Constitution New York, Connecticut, and
Georgia statutes.
f. Protected only UK authors publishing in UK — did not apply to foreign
authors publishing in UK or any books published abroad.

5. U.S. copyright statutes enacted under authority of Article I, § 8: To promote the

Progress of Science and useful Arts, by securing for limited Times to Authors and
Inventors the exclusive Right to their respective Writings and Discoveries.
a. First U.S. statute (1790) modeled on Statute of Anne.
(1) Protection: 14 + 14. Extended to 28 + 14 in 1831. Under 1976
Act, life + 50.
(2) Registration.
(a) Record title.
(b) Publish copy of record.
(c) Deposit copy of work with Secretary of State.
(3) Under 1988 modifications, notice of copyright is optional and
registration no longer a prerequisite to suit for non-U.S. works.
b. Also nationalistic — did not protect foreign authors until 1890.
c. Coverage.
(1) Map, chart, book or books.
(2) Prints added in 1802.
(3) Photographs added in 1870. See Sarony.
(4) Original works of authorship fixed in any tangible medium of
expression. Not certain that even this extends to the total range of
Congress’s authority.

6. In both UK and US, source of monopoly is statute. Donaldson, Apollo Music.

C. Coverage
1. Extends to photographs. Sarony.
a. Arguments against.
 (1) Photograph not a writing. Production of machine, not human
hand.
(2) Photographer not an author. Prototypical copyright hero creates
worlds from his head.
b. Court.
(1) Writing means only that you fix something in tangible form.
(2) Author is “he to whom anything owes its origin; originator; maker
...”
(a) Photograph was not merely mechanical. Photographer
arranged subject, set, etc.
(b) Court silent on “ordinary production” of photograph.
c. Zimmerman: anything that falls below admittedly low standard of
originality?
(1) Colorize old black and white movie by computer?
(2) Computer-authored work?
(3) Computer programs in machine-readable forms?

2. Extends to poster used for advertising purposes. Bleistein.

a. Fact that subject matter is not fine art does not render it inappropriate.
The least pretentious picture has more originality in it than
directories and the like, which may be copyrighted.
b. Realism cannot be the standard for disqualification.
Even if they had been drawn from life, that fact would not
deprive them of protection. Others are free to copy the
original. They are not free to copy the copy.
c. Courts must avoid making subjective value judgments.
It would be a dangerous undertaking for persons trained
only to the law to constitute themselves final judges ...
outside the narrowest and most obvious limits.
(1) There is the sleaze factor in fair use, but Acuff-Rose quotes
Holmes.

3. Extends to anything independently created/added (mezzotints of Old Masters).

Alfred Bell.
a. Minimal standard of originality.
All that is needed to satisfy both the Constitution and the
statute is that the “author” contributed something more
than a “merely trivial” variation, something recognizably
his own. No matter how poor artistically the “author’s”
addition, it is enough if it be his own. Bleistein.
b. Protection extends only to author’s addition.
c. Posner argues for more innovation (but protection is limited in this
instance).

D. Interplay with Other Forms of Protection

 1. Patents.
a. Patents have much higher standard.
(1) Novelty.
(2) Utility.
(3) Nonobviousness.
b. Higher standard accords with the far greater protection afforded patentee.
(1) No fair use.
(2) Subsequent independent creation is violation of patent but not
copyright.
(3) Patent protects ideas reduced to practice; copyright never protects
ideas (only expression).

2. Trademarks.
a. Original statute invalidated because Congress lacked authority under
Article 1, § 8 and Trademark Statute was not limited to interstate
commerce and thus not valid under Interstate Commerce Clause. Trade-
Mark Cases.
b. Identification of source protects public.
c. Covers titles, which cannot be copyrighted.
d. Trademark protection is limited to certain purposes; copyright covers all
uses.
e. Trademark and copyright not mutually exclusive. Frederick Warne.
(1) Fact that copyright on cover expired did not mean it was
unprotected under trademark laws.
(2) Reproduction of work in public domain is permitted, but unfair
competition claim possible if party goes beyond mere copying to
suggest identification of source.
(3) But plaintiff’s burden to show that illustrations pointed to plaintiff
as publisher rather than Potter as author.

f. Trademark is potentially perpetual, unlike copyright.

(1) Material is restored to public domain after copyright expires.
(2) With showing of secondary meaning, trademark may remove what
had previously been in public domain.

E. Distinction between Copyright and Object

1. “First sale” doctrine. § 109(a): notwithstanding the provisions of § 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 the copyright
owner, to sell or otherwise dispose of the possession of that copy or phonorecord.

2. Prior to 1976 Act, copyright and physical possession could reside in different
persons (law could have developed differently and allowed copyright to transfer
when unique uncopyrighted work changed hands).
 a. Unpublished works covered by (potentially perpetual) common law
copyright.
b. Under state common law, copyright was permitted to pass without a
writing.
c. This led to disputes as to who owned copyright when time came to
publish.
d. To resolve, law created following presumptions.
(1) Common law copyright passed with physical object.
(2) Exception for letters; courts required something more explicit.

3. Presumption may be rebutted. Forward.

a. The ultimate question is one of intent.
b. Here tape was given in gratitude and for personal enjoyment of Forward.

4. 1976 Act abolishes common law copyright in unpublished works.

a. Works created post effective date of 1/1/78 are subject to statutory
copyright as soon as fixed in tangible form. § 302.
b. Unpublished works created prior to effective date are governed by ’76
Act. § 301.

5. 1976 Act abolishes common law presumption: Transfer of ownership of any

material object, including the copy or phonorecord in which the work is first
fixed, does not of itself convey any rights in the copyrighted work embodied in
the object. § 202.
II. COPYRIGHTABILITY
A. Fixation
1. Requirement for copyrightable under § 102.

2. Defined in § 101 as sufficiently permanent or stable to permit it to be perceived,

reproduced, or otherwise communicated for a period of more than transitory
duration.
a. Covers live transmission that is simultaneously being taped.
b. Covers broadcast of previously vidoetaped performance.
c. Does not cover live transmission that is not simultaneously taped.

3. Covers videogames because underlying program limits variation (although there

is variation with each player).

4. Must be capable of being perceived, reproduced or otherwise communicated,

directly or with the aid of a machine.

B. Copyrightable Subject Matter. § 102(a)

1. Literary works.
2. Musical works.
3. Dramatic works.
4. Pantomimes and choreographic works.
5. Pictorial, graphic, and sculptural works.
6. Motion pictures and other audiovisual works.
7. Sound recordings.
8. Architectural works.

C. Requirement of Originality
1. Envelopes with brief messages (PRIORITY MESSAGE: CONTENTS REQUIRE
IMMEDIATE ATTENTION) lack sufficient originality to be copyrightable.
Magic Marketing.
a. Phrase merely direction for use and not copyrightable.
b. Solid black stripe does not come under pictorial work.

2. Words and short phrases such as names, titles, and slogans; familiar symbols or
designs; mere variations of typographic ornamentation, lettering or coloring; mere
listing of ingredients or contents are not copyrightable. 37 C.F.R. § 202.1(a).

3. But directions for shampoo use (with puffery) qualifies though it pushes the limit.
Sebastian.
a. Labels subject to copyright if manifesting necessary modicum of
creativity.
 b. Language is more than simply a list of ingredients, direction, or a catchy
phrase.

4. Reconciling Magic Marketing with Sebastian.

a. Expressive element in puffery in Sebastian: more than mere directions;
more than one way of puffing.
b. But (DZ) more than one way of arranging envelope.
c. Thin line, like line separating Sarony and photocopying a snapshot.
d. May need more than some degree of manipulation. Kaplan: should be
more than a penny in the turnstile.

D. Idea–Expression Dichotomy
1. In no case does copyright protection . . . 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. §
102(b), Baker v. Selden.

2. What does copyright protect against? Some evidence early courts believed that
copyright protected only against unauthorized publication of entire work. But
copyright also protects against publication of material that is too much like the
underlying work.

3. What’s at stake in idea–expression dichotomy is preventing someone from

obtaining copyright protection for something that is properly the subject of patent.

4. Until 1950s, two ways of looking at Baker v. Selden.

a. Copyright protects expression, not physical useful object.
(1) Ledger was intended to be used rather than to communicate.
(2) Majority of courts read Baker in this fashion and denied copyright
to any useful object.
b. Ledger is communicative, but expression is so close to underlying idea
that to allow copyright would be to give someone copyright in idea.
Merger principle.

5. Utility of object no bar to copyrightable (absent merger). Mazer v. Stein.

a. Previously courts had viewed Baker as barring copyright in utilitarian
object.
b. But Copyright Office continues to treat forms as useful objects not subject
to copyright.
6. Three different approaches to blank forms following Baker.
a. Examine whether blank forms contain or are designed to record
information. Bibbero (medical superbill).
(1) Blank forms designed for recording information that do not in
themselves convey information are not copyrightable. 37 CFR §
202.1(c).
 (2) Where a work consists of text integrated with blank forms, the
forms have explanatory force because of the accompanying
copyrightable text. Contintental Casualty (forms with inseparable
instructions; Williams (combination of instruction book and blank
forms).
(3) Court disapproves of Norton (also medical bill) and Hartcourt
Brace (which is arguably distinguishable because answer sheets
contained unique symbols to guide students in recording answers).
b. Thin copyright on forms that contain explanatory prose (forms included
proposed bond, an affidavit of loss and indemnity agreement, and drafts of
an instruction letter and board resolutions). Continental Casualty.
(1) Baker distinguished between explanation and use, with the latter
protectable, if at all, only in patent. Mazer held that the fact that
otherwise copyrightable lamp bases were put to use did not destroy
their copyrightability.
(2) In Baker explanation of system was separable from the forms. In
Continental, however, the explanation is incorporated directly into
the forms.
(3) Because they contain copyrightable expression, form is
copyrightable.
(4) But copyright is “thin,” protecting against only the exact copying.
(a) To prohibit use of similar language would have effect of
giving copyright on the idea.
(b) Where defendant uses language only as incidental to use of
underlying idea, there is no infringement.
(5) Court does not say that there could never be a merger.
(6) Following this approach creates fact questions for juries.
(a) Could idea have been expressed differently?
(b) Was expression sufficiently different to escape thin
copyright?
c. No copyright for instructions that can only be expressed in limited number
of ways. Morrissey. (“When the uncopyrightable subject matter is very
narrow, so that the topic necessarily requires, if not only one form of
expression, at best only a limited number, to permit copyrighting would
mean that a party, by copyrighting a mere handful of forms, could obtain
a copyright in the idea.”)
(1) Treats merger as matter of law. By refusing to protect all
expression when there is only a limited means of expressing the
same idea
(2) Cf. Continental Casualty (by extending thin copyright, trial court
must determine extent to which precise expression has been
varied).

7. Applied. Hartcourt Brace v. Graphic Controls.

a. City of Buffalo begins using local printer for answer sheets to Stanford–
Binet tests (previously contained in books); pays $2500 v. $9000.
 b. If answer sheet is useful or falls in merger, out of court.
c. But court, relying on second circuit approach, rejects both and would
require a jury trial on amount of infringement.
(1) Rejects blank form rule.
(a) Form not only for recording but also conveys information
so Baker is not applicable.
(b) Copyright office granted registration despite 37 C.F.R.
202.1(c).
(2) Inclusion of inseparable explanatory prose also makes Baker inapt
under Continental Casualty. Court is not bothered by very limited
amount of such prose.
d. HB argues that it must charge high prices for answer sheets if it is to
generate enough profits to make venture worthwhile.
e. Other possibilities.
(1) Unfair competition law.
(2) Publish new questions.
(3) Charge more for scanning answers.
(4) Raise price of booklets (they eventually wear out).
f. But should these extralegal, nonlegal alternatives be considered? Not
everyone will have such alternatives. (Mis?)use of copyright to protect
noncopyright interests recurs throughout, stretching of copyright
principles to economically protect other industries.

E. Facts and Compilations

1. Facts.
a. Unprotected by copyright.
(1) Under § 102(b), not available for “idea, procedure, process,
system, method of operation, concept, principle or discovery,
regardless of form in which it is described, explained, illustrated or
embodied in such work.”
(2) § 102(b) universally understood to prohibit any copyright in facts.
Feist (citing Harper & Row).
b. Rationale for noncopyrightability of facts. Feist.
(1) Facts are not original to author.
The distinction is one between creation and
discovery: the first person to find and report a
particular fact has not created the fact; he or she
has merely discovered its existence.
(2) DZ: why does originality matter? Collection of facts results in
something important to society.
(3) Originality is a constitutional requirement. To promote the
Progress of Science and useful Arts, copyright assures authors
right (only) to original expression. It encourages others to build
freely upon the ideas and information conveyed by the work.
(4) Originality requires more than that the author did not copy.
 Compare Alfred Bell (requiring only that material “originated with
author rather than copied from somewhere else”) with Feist
(“Rural expended sufficient effort to make the white pages
directory useful, but insufficient creativity to make it original”).
c. Labor involved in collecting facts or in the compilation of facts is not
protectable under copyright. “Sweat of the brow” rejected on grounds
that originality is constitutional requirement.
(1) Among categories of works in § 5 of 1909 Act were books,
including directories, gazetteers, and other compilations.
(2) Some courts ignored § 4, providing that copyright was available to
“all the writings of an author,” failing to focus on meaning of
those terms.

2. Compilations of facts obtain thin copyright. Feist.

a. Compilation is 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. §
101. (Italics added.)
b. Copyright in a compilation ... extends only to the material contributed by
the author of such work, as distinguished from the preexisting material
employed in the work, and does not imply any exclusive right in the
preexisting material. § 103(b).
(1) May copy the underlying facts from a publication but not the
precise words used to present them. The 1909 Act did not require,
as “sweat of the brow” courts mistakenly assumed, that each
subsequent compiler must start from scratch and is precluded from
relying on research undertaken by another.
(2) It is just such wasted effort that the proscription against the
copyright of ideas and facts ... [is] designed to prevent. Rosemont.
(3) The revisions explain with painstaking clarity that copyright
requires originality, § 102(a); that facts are never original, §
102(b); that the copyright in a compilation does not extend to the
facts it contains, § 103(b); and that a compilation is copyrightable
only to the extent that it features an original selection,
coordination, or arrangement. § 101.
c. Even though only minimal originality is required to satisfy constitutional
requirement, alphabetical arrangement of phone directory is entirely
typical and does not qualify.
d. DZ: Feist seems straightforward but leaves much hanging.
(1) What if two different studies reach widely differing interpretations
of underlying data. Are the conclusions copyrightable facts?
(2) Does Feist leave open possibility that facts could be protected
elsewhere (e.g., repetition of holding in Trademark Cases).
(3) Or would this be preempted? Founders’ intent; “equivalent right?”
(4) Does First Amendment prohibit such restrictions on free flow of
 information? Would require that INS be distinguished or
disapproved.

3. Factual narratives/novel theories. Nash.

a. Two possible ways of protecting.
(1) Protect plot/events. Nichols, Sheldon (Hand’s “abstraction’s
test”).
(a) If court chooses a low level (protecting only precise words
employed), copier may take the plot, exposition, and all
other original material.
(b) If high level, then first author may claim protection for
whole genre of work (e.g., romantic novel) or any story
involving doomed lovers from rival clans (so that Romeo
and Juliet would cover West Side Story).
(c) But inapplicable because Nash presented his theory as fact.
(2) Protect labor expended in research. Toksvig. If laborious
research, including precise words, may be used freely, there will be
too few original investigations, and facts will not be available upon
which to build.
(a) Compare Hoehling (to avoid chilling effect on authors who
contemplate tackling a historical issue or event, broad
latitude must be granted to subsequent authors who use
historical subject matter, including theories or plots).
i. Explanatory hypotheses just as much in public
domain as documented facts.
ii. Scenes à faire (“incidents, characters, or setting that
are indispensable or at least standard in the
treatment of a given matter”) may be copied.
(b) Toksvig is probably not good law after Feist.
b. Prior to Feist, ironic situation that historical works received less protection
than directory-type compilation.
(1) Directories protected by sweat equity whereas research protected
(in second if not seventh circuit) only from copying of expression.
(2) Thus laborious factual research in historical work is not protected
from second comer who varies expression.
(3) Feist redresses the balance.
c. Any room for protecting Nash-type theories after Feist?
(1) Cannot use Toksvig to protect labor.
(2) Can protect expression but not idea/hypothesis, regardless of the
amount of labor involved.
(3) May be able to use Feist narrowly, however. See Mason.

4. Financial projections. Wainwright. Second circuit, which rejected Toksvig,

protects projections and analyses in financial newsletter.
a. Court rejects defendant’s argument that its report was simply financial
news coverage.
 (1) In abstracting, copier took “most creative and original aspects of
the reports, the financial analyses and predictions.”
(2) In doing so, it supplanted demand for original. Cf. Nash, where
demand may actually have been stimulated.
(3) “This was not legitimate coverage of a news event [but rather]
chiseling for personal profit.”
b. But is copyright designed to protect people who lose out in the provision
of information war? Should copyright or the marketplace protect
Wainwright?

5. Greeting cards. Roth.

a. “Total concept and feel” protected.
(1) Although stock trite phrases, it is not only the words but the whole
card (words plus picture) that is copyrighted.
(2) Defendant’s cards “would have been recognized as having been
taken from copyrighted work,” even absent exact copying.
(3) DZ: although there’s choice, there are limited number of pictures
to convey message of missing you — weeping man for weeping
boy is infringement. What about weeping woman?
(4) If you give copyright, better to give as thin copyright, protecting
only against exact copying. Otherwise plaintiff given copyright on
entire subject matter.
(5) This court applies to concept and feel and would allow people to
copyright message.
(6) Note that without picture this would be Magic Marketing–type
case.
b. Dissent: cannot “follow logic of the majority ... that the uncopyrightable
words and the imitated, but not copied art work, constitutes such total
composition as to be subject to protection under the copyright laws.

6. Yellow Pages. BellSouth.

a. Distinguishable from Feist because of headings?
b. District court finds three acts of copying (DZ: courts have been focusing
on intermediate levels of copying).
(1) Inputting coded (size and category of ad) list of BAPCO
customers.
(2) Printing out sales lead sheets.
(3) Publishing of directory.
c. Dissent would find copyright in original acts of
(1) Choice of geographic scope.
(2) Selecting 7000 headings from possible 41,700 headings in its
headings book. (Second circuit would give thin copyright. Key
Publications.)
(3) Arrangement of 100,000 business listings under these headings.
(4) Selection of only businesses with business telephone service.
d. Majority finds nothing original.
 (1) Selection of scope/closing date is required for any directory.
(2) Creative marketing techniques are techniques for gathering facts
and are no more protectable than facts themselves. (Under Feist,
“first person to find a report a particular fact has not created the
fact; he or she has merely discovered its existence.”
(3) Selection of headings.
(a) “Attorneys” or “Banks” obvious.
(b) Any expressive act in subdividing attorneys into of areas of
practice or churches into denominations would merge with
idea of such subdivision.
(c) Fact that there were other less useful ways of arranging
headings does not alter the fact that entirely typical method
was chosen.
(4) Placement of customer within heading.
(a) Customer’s choice.
e. By entering coded (size/type of BAPCO ad) listing into database,
Donnelly was merely extracting factual, uncopyrightable information.
f. Note that Key Publications gave thin copyright to heading structure
selecting for Asian community.

7. Page numbers. West Publishing.

a. Text of decisions published in West Reports not copyrightable.
(1) Under § 105 because federal government work. Under Wheaton
too.
(2) States follow similar rule for state government.
b. Other portions of cases are copyrightable. Callaghan.
(1) Headnotes and summaries copyrightable expression.
(2) Division of reports into volumes.
(3) Tables of cases.
(4) Anything that is the product of labor, talent, of judgment, says
Arnold (still true post-Feist?).
c. On page numbering, however, the “teaching of Callaghan does not come
through with unmistakable clarity.”
(1) The “numbering and paging of cases” part of the list.
(2) But Court accepted statement that “arrangement of law cases and
paging of the book may depend simply on the will of the printer.”
d. Distinguishing Banks holding that star pagination and case arrangement in
Supreme Court Reports uncopyrightable.
(1) Basis, says Arnold, was official status of reporter, statutorily
required to assemble cases, and not uncopyrightability of page
numbers.
(2) Rejects MDC claim that West is official reporter in those states
where it is the only publisher of decisions because not salaried
employee with statutorily fixed duties.
e. Yet West’s status as official reporter — even if nonsalaried, etc. — is in
fact the crux of the case because its numbering constitutes the official
 citation.
(1) Bar use of star pagination and you prevent competition with West
because competitors must be able to use what amounts to official
numbers.
(2) This is what distinguishes case from case involving historical
research. Biographers would still be able to compete. MDC
would not.
f. But failure to protect star pagination may lead to Lexis wholly supplanting
West and the market for physical volumes.
(1) If West unable to make adequate profit, it might be forced to stop
publishing hard copies.
(2) This would end public service of great value.
(3) This is the basis for distinguishing eighth circuit’s holding, the
previous year, that part numbers were uncopyrightable. Toro.
(4) Ironically, in Toro there was more originality in “random”
selection of numbers because at least selection was made by party
applying for copyright as opposed to merely on the basis of when
decisions were received from various courts.
g. Sequelae.
(1) Lexis sues West in another jurisdiction for antitrust and they reach
secret agreement.
(a) Justice Department currently investigating antitrust since
together West and Lexis can conspire to keep prices
artificially high.
(2) West attempts to copyright organization of state statutes into
codes.
(a) In response several states change their citation system,
allowing use of anything published so long as it can be
found.
h. West Publishing highly unlikely to survive Feist.

8. Parts numbers not copyrightable. Toro. See supra.

9. Maps. Mason.
a. DZ highly dubious of post-Feist holding that map is protectable because it
involved independent judgment as to where lines should be placed.
(1) Plaintiff used USGS (public domain) maps to make plat maps.
(2) Considerable effort (and judgment, says court) involved to resolve
inconsistencies among sources.
(3) Defendant used these maps to continuously update title
information.
b. But requiring that new mapmaker start from scratch — rather than use
prior maps — not only prevents maps from reaching the highest level of
accuracy but does exactly what Feist prohibits, namely protect sweat of
the brow.
c. Cf. 18th century maps, which were highly decorative personalized affairs.
 10. Summary.
a. Even post-Feist courts are trying to use copyright to protect economic
interests. Mason; BellSouth (district court and dissent).
b. Issue is whether Feist was solely about fact works or all low-authorship
works (i.e., works adding to something in public domain or subject to
another’s copyright).
c. Same issues arise in context of derivative works.

F. Derivative Works
1. Derivative work is a work based upon one or more preexisting works, such as a
translation, musical arrangement, dramatization, fictionalization, motion picture
version, sound recording, art reproduction, abridgment, condensation, or any other
form in which a work may be recast, transformed, or adapted. A work consisting
of editorial revisions, annotations, elaborations, or other modifications which, as a
whole, represent and original work of authorship, is a derivative work. § 101.

2. Contrasting compilation from derivative work.

a. Compilation amasses other material (subject to another’s copyright, public
domain, or uncopyrightable) without transformation (e.g., poetry
anthology).
b. Derivative work transforms underlying material in some way (e.g., film
adaption of novel).
c. Copyright in derivative work extends only to copyrightable material added
in this process.

3. Theories of what constitutes copyrightable element.

a. Exact copying into new medium. Alfred Bell (mezzotint) and Alva (scaled
reproduction of Rodin)
(1) Basis of protection is high degree of skill and difficulty involved.
Kuddle Toys (Dooling). The more nearly the mezzotints
approached perfection of copying, the more “brilliantly original”
within their own special art of copying they were: the
“authorship” lay in the very act of copying.
(2) Query whether this is still protected post-Feist.
b. More than merely trivial changes are required. Batlin (Oakes) (“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”). Accord Tomy (originality requirement not satisfied
by “mere reproduction in a different medium”).
(1) Exception for “degree of exactitude” of Alva.
c. Variation more than de minimis is sufficient. Batlin (Meskill). Would
give thin copyright.
d. Work must be substantially different. Gracen (Posner).

4. Advantages of “substantial variation” opposed to “more than de minimis”

 standard.
a. Prevents harassment.
(1) Infringement may be proved by access plus substantial similarity.
(2) Once first product is marketed, access is easy to prove.
(3) Substantial similarity would then be fact issue.
b. Avoids difficult fact determinations.
(1) A copies Mona Lisa and copyrights derivative based on slight
variation from original.
(2) B copies Mona Lisa, also with slight variation.
(3) If A sues B, “trier of fact will be hard-pressed to decide whether B
was copying A or copying the Mona Lisa.”
c. Prevents appropriation of material in public domain.
(1) To extend copyright to minuscule variations would simply put a
weapon for harassment in the hands of mischievous copiers intent
on appropriating and monopolizing public domain work. Batlin.
(2) Accord Gracen: if originality too liberally interpreted, it would
give first creator considerable power to interfere with the creation
of subsequent derivative works from same underlying work.
(3) DZ: two people competing in area where neither had contributed
the real value.
d. Prevents interference with ability of copyright holder in non–public
domain work to license other derivative works.
(1) Subsequent licensees would want either be buying a lawsuit.
(2) Or to avoid lawsuit they’d be forced to substantially deviate from
the licensed work. Tomy.

5. Advantage of “de minimis” approach.

a. It is uncertain what Oakes means by “substantial variation.”
b. Meskill approach is more workable at the copyrightability end because
“more than de minimis” standard is easier to understand.
c. At the infringement end, however, standard other than substantial
similarity would have to be used if derivative work is to be given only
“thin” copyright.
d. Also potential conflict with § 501 grant of derivative right.
6. Posner standard of substantially different offers protection but avoids
uncertainties of Batlin.
a. Note: substantially different sounds similar to substantial variation, and
Posner cites Batlin as authority.
b. DZ characterizes as fourth approach, and Nimmer would agree.
(1) Nimmer, questioning Posner’s application of Batlin, notes that
Oakes also acknowledged that a “distinguishable variation” would
suffice.
(2) This is example of potential ambiguity in Batlin.
c. Potential flaws in Posner’s application and approach.
(1) Since defendant admitting copying from plaintiff’s derivative
work, no problem of “harassing” litigation.
 (2) Removes incentive for anyone to make reproduction if there is no
protection.

7. Applications.
a. Plastic reproduction of metal Uncle Sam Bank. Batlin.
(1) Differences: medium and size plus “other very minute details”
(smooth, not rough, carpetbag; eagle clutching leaves rather than
arrows, which did not reproduce well in plastic; umbrella as part of
same mold).
(2) These changes were functional, resulting from practical necessities
of switch in medium, and are insufficiently original to support
copyright.
(3) Oakes would require something more than changes imposed by
new medium.
b. Plastic figures of Disney characters licensed from Disney insufficiently
different from original for copyright. Tomy.
(1) Mere transformation of medium cannot support copyrightability.
(2) Must be sufficiently different to allow others to copy from original
without risking suit for copying from copy.
(3) Would force subsequent licensees to make substantial variations in
order to avoid suit. (This would also limit Disney’s ability to sell
licenses.)
c. Composite drawings not substantially different from movie stills. Gracen.
d. “Changed proportions of hat, elimination of individualized fingers and
toes, and overall smoothing of lines” varied sufficiently from original
Paddington Bear to support derivative copyright. Eden Toys.
e. Insufficient changes from plaintiffs’ public domain towel to support
copyright in derivative. Sherry Manufacturing.
(1) Primary purpose of making the changes was to make the work
copyrightable.
(2) This — per casebook — is probably irrelevant to determination of
copyrightability.

8. Note that above analyses do not apply to copying from life. There Bleistein
would apply. Gracen.

9. Summary.
a. From Magic Marketing to Gracen and Batlin, claims of copyright
protection in low-authorship works.
b. Copyright principles should not be stretched to provide economic
protection that would be more appropriate under other areas of law (e.g.,
unfair trade practices).

G. Pictorial, Graphic, and Sculptural Works

1. Prior to Mazer, bright line divide between useful and informative works, with
 only the latter copyrightable. New dichotomy following Mazer, with works of
applied art copyrightable and works of industrial design not copyrightable.
a. Copyrightability unaffected by
(1) Availability of design patent protection.
(2) Artist’s commercial intent.
(3) Aesthetic value, or lack thereof.
(4) Fact that design was mass produced.
b. Separation of form and function is easier to say than apply.

2. Definitions. § 101.
a. A useful article is an article having an intrinsic utilitarian function that is
not merely to portray the appearance of the article or to convey
information.
b. 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.

3. Requisite level of creativity.

a. Work must embody some creative authorship in its delineation or form.
37 C.F.R. § 202.10(a), Muller (refusal to register arrow was not an abuse
of discretion). Accord Magic Marketing.
b. Pictures of cakes “have sufficient commercial artistry to entitle them to
protection against obvious copying.” Sara Lee.
(1) Evidence showed that defendant copied from plaintiff’s packages.
(2) But copyright unavailable for shape of label or list of ingredients.

4. Separation of form (design) and function (mechanical or utilitarian aspects).

a. Nose masks copyrightable because of communicative purpose to provide
mirth. Masquerade.
(1) Outweighs functional purpose of concealing identity?
b. Costumes are “useful articles, registrable only upon finding of separable
artistic authorship.” Whimsicality, Inc., 56 FR 56530.

5. Conceptual (and not just physical) separability. Kieselstein-Cord.

a. Elements that “physically or conceptually can be identified as separable
from the utilitarian aspects” are copyrightable. HOUSE REPORT (emphasis
added).
b. Belt cannot function without a buckle, so that design is physically
 inseparable.
c. Yet the primary ornamental aspect of belt buckles is conceptually
separable from their subsidiary utilitarian function (people have used them
for parts of the body other than the waist).
d. DZ: a difficult test to apply. How does one decide whether feature that is
not physically separable is conceptually separable (i.e., is aesthetically
pleasing by itself)?
(1) People use them as ornamentation for other parts of body?
(2) MOMA has them (along with teapots, watches, and scissors)?
(3) Because they contain creativity above and beyond the amount
normally seen in such articles?
(4) Better not to leave such judgments to the law?
e. Distinguish in context of sculpture of torso used as mannequin. Barnhart.
(1) Aesthetic and artistic features of the torsos are inseparable from
their use as utilitarian objects.
(2) With buckles, the unique artistic design was wholly unnecessary to
their performance of a utilitarian function; the features of the torso
claimed to be artistic — e.g., the life size breasts and width of the
shoulders, are inextricably intertwined with the utilitarian feature,
the display of clothes.
(3) Majority rejects lower standard for torso, based on
antidiscrimination principle of Bleistein.

6. Conceptual separability occurs when object engenders in the mind of the ordinary
observer two concepts of the object, and the utilitarian one is temporarily
displaced in the mind by the other. Barnhart (Newman, J., dissenting).
a. The test is not whether the observer fails to recognize the object as a chair
but only whether the concept of the utilitarian function can be displaced in
the mind by some other concept. That does not occur, at least for the
ordinary observer, when viewing even the most artistically designed chair.
b. Viewer of torso would, however, initially view it as work of art, having
been conditioned by viewing similar objects previously. Even upon
learning that it is used to display clothing, he or she would conclude that it
has both an artistic and utilitarian function.
c. Majority: too difficult to apply this test.

7. Conceptual separability is limited to design that can be viewed as a separate work

of art (e.g., a print on blouse could be design on wall) and does not extend to
works that integrate form and function, however gracefully. Kieselstein-Cord
(Weinstein, J., dissenting). (Position of D.C. Circuit as well.)
a. Courts, both before and after Mazer, have tried to follow the principle of
the copyright act permitting copyright to extend only to ornamental or
superfluous designs contained within useful objects while denying it to
artistically designed functional components of useful objects.
b. Distinction under HOUSE REPORT NO. 94-1976.
(1) Protected.
 (a) Two-dimensional painting, drawing, or graphic work that is
capable of being identified as such when printed on or
applied to utilitarian articles such as fabrics, wallpaper,
containers, etc.
(b) Statue or carving used to embellish an industrial product
without losing its ability to exist independently as a work of
art.
(2) Not protected: industrial product, however aesthetically satisfying.
c. But under this standard those who avoid clutter are treated less favorably
than those who create silly extraneous decorations.

8. “Form follows function” test: conceptual separability is absent if functional

concerns influenced the work’s aesthetically pleasing appearance. Brandir.
If the design elements reflect a merger of aesthetic and functional
considerations, the artistic aspects of a work cannot be said to be
conceptually separable from the utilitarian elements. Conversely,
where design elements can be identified as reflecting the
designer’s artistic judgment exercised independently of functional
influences, conceptual separability exists. Denicola.
a. Base determination on how object is marketed and whether design
elements were adapted based on functional considerations.
(1) In order to make previous design work as bicycle rack, adaptions
were required.
(2) This relieves judges of improper burden of evaluating artistic
merits of nonfunctional art.
b. Test wholly eliminates conceptual separability (Winter, J., dissenting).
(1) Also involves judges in evaluating design process to determine
whether based on functional considerations.

9. Summary.
a. What are we trying to protect here?
(1) Sound practices in a capitalist economy to allow knock-offs
(reduces prices (pirates as Robin Hoods); avoids stratification of
society, with only wealthy able to afford; Tuchman — 14th
Century dress codes).
(2) Versus distaste at reaping where one has not sown.
b. Currently much pressure on U.S. (from EU, particularly) to give
protection for designs outside the design patent area.
(1) Difficulty with design patent is novelty/nonobviousness standard.
(2) But is copyright the proper body of law to provide this protection?

H. Architectural Works
1. Pre–Berne Amendments.
a. Decorative elements analyzed under PSG test.
b. Architectural plans themselves: protection extends to explanation but not
use of work. Demetriades (applying Baker).
 (1) Unauthorized reproduction of copyrighted plans is an
infringement; court may enjoin such copying and ultimately award
damages.
(2) But copyright does not protect use of art or work described by
copyrighted document.
(3) Although this effectively got plaintiffs relief they wanted, it would
not protect against “reverse engineering” of building.
c. Use of copyrighted plans to construct similar bridge approach is not an
infringement. Muller.

2. Berne Amendments cover architectural works created on or after 12/1/90 and any
work that on that date is unconstructed and embodied in unpublished plans if
plans are published by 12/31/02.
a. Architectural works are copyrightable subject matter. § 102(8).
(1) No longer need to be analyzed under § 102(5) (PSG).
(2) Includes overall form as well as arrangement and composition of
space and elements, but does not include individual standard
features.
b. Functionality: no longer analyzed under conceptual separability.
(1) Are there original design elements present, including shape and
interior architecture?
(2) Are these elements functionally required?
c. Scope of protection.
(1) Legislative history indicates that thick, not thin, copyright
intended.
(2) Pictures, paintings, photographs, or other pictorial representations
permitted if building ordinarily visible from public place. § 120(a).
(3) And owner of building permitted to modify or destroy without
consent of author or copyright owner. § 120(b).

I. Characters
1. “Sufficiently delineated” test. Nichols.
a. Characters protected when sufficiently well delineated to constitute
expression.
b. Application/limitation.
If Twelfth Night were copyrighted, it is quite possible that a second
comer might so closely imitate Sir Toby Belch or Malvolio as to
infringe, but it would not be enough that for one of his characters
he cast a riotous knight who kept wassail to the discomfort of the
household, or a vain and foppish steward who became amorous of
this mistress. These would be not more that Shakespeare’s
“ideas.”

2. “Story being told” test: copyright available only where character is not simply a
vehicle for telling the story but is the story itself. Warner Brothers.
 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 protected].
a. No explicit intention to convey character in contract and court will not
infer intent.
b. Inferences cut the other way, as compensation was grossly inadequate for
complete surrender of famous character.
c. Contract interpreted against plaintiff, its drafter.
d. Waiver in lack of objection to Hammet’s use of Spade in other stories.
e. Compare contractual purchase of character.
(1) Would bar originator from using subsequently.
(2) Would not bar third parties, however.

3. Compare Anderson (Rocky copyrightable).

a. Boomerang for plaintiff here: court rejects infringement claim, finding
similarities in story line a result of independent creation, and then holds
that plaintiff has infringed Stallone’s copyright in Rocky character.
b. Even though Rocky would seem no better delineated than Sam Spade or
no more “the story itself,” decisions may be harmonized insofar as both
courts protected originator of character.
c. Other factor is visual aspect. See 4.

4. Addition of visual component aids in delineation of character. Air Pirates.

a. While many literary characters may embody little more than an
unprotected ideas, a comic book character, which has physical as well as
conceptual qualities, is more likely to contain some unique elements of
expression.
b. Broad application in Barney Google. King Features (“We do not think it
avoids the infringement of the copyright to take the substance or idea and
produce it through a different medium.”)
c. Broad injunction in original Superman. Detective Comics (enjoining
printing or distributing any cartoon or book “portraying any of the feats of
strength of powers performed by ‘Superman’ or closely imitating his
costume or appearance in any feat whatever”).
(1) Similar characteristics of miraculous strength and speed, similar
antics of shedding clothes to reveal skin-tight costumes.
(2) Compare Great American Hero case, where sufficient distinction
between characters of heroes.
d. Intermediate characters.
(1) Tarzan: book, then cartoon, then movie. Protection can sometimes
relate back to book character.
(2) The more cartoon-like (limited number of sharply drawn
characteristics, the more likely to get protection).

5. Basic issues.
a. What is it that makes a character expression rather than idea?
 b. How close should taking have to be to find infringement?
c. Should copyright protect character or leave to contract?
d. Or to trademark/trade dress (if so, should construe narrowly).

J. Summary of Copyrightability
1. Opening questions.
a. What is plaintiff claiming copyright in?
b. What has defendant taken?
c. Is it subject to copyright protection?

2. Just because there is copyright in something and there is copying does not mean
there is infringement.
III. COPYRIGHT OWNERSHIP
A. Authorship
1. Contrasting the 1909 and 1976 Acts.
a. Under 1909 Act, copyright originated in party who owned work;
proprietor at time of publication; not necessarily the creator.
b. Under 1976, copyright vests in creator at time the work was fixed in
tangible form; copyright comes into being at time of fixation.

2. Generally, “the author is the party who actually creates the work, that is, the
person who translates an idea into a fixed, tangible expression entitled to
copyright protection.” CCNV.

3. “A work is fixed when “its embodiment in a copy ... by or under the authority of
the author, is sufficiently permanent .. to permit it to be ... reproduced.” § 101.

4. Determining authorship when creator of work is not responsible for its fixation
(when work is fixed “under authority of author”). Andrien (person who
commissions map from own research but leaves layout to
a. Where translation of person’s idea into expression involves rote or
mechanical transcription (so that one responsible for fixation is mere
amanuensis), copyright vests in creator of idea.
b. Where intellectual enhancement or highly technical modification is
required, originator of idea is not author.
c. Between these poles lies joint authorship?

5. Application. Andrien.
a. District court grants summary judgment against originator of idea of map
because copy delivered to mapmaker contained “varied scale and illegible
street names,” requiring employee (Haines) to transpose into legible
usable map.
b. Third circuit reverses.
(1) Andrien the type of person the 1976 Act intended to protect.
(2) Haines neither technically enhanced nor intellectually modified
Andrien’s idea.
c. DZ.
(1) But Andrien lacked ability to make map by himself (he had
idea/creative impulse but lacked skills to fix in tangible form).
(2) Two other possibilities would be joint authorship or work for hire.
(But under Childress Andrien could not be joint author because his
contribution is not copyrightable. See p. 27.)

B. Work for Hire

1. Defined. § 101.
a. Work prepared by employee within the scope of his or her employment.
b. Work specially ordered or commission for use as a contribution to a
collective work.
2. Second prong requires written agreement (DZ — interpreted as being before
creation) plus one of nine areas.
a. Contribution to a collective work.
b. Motion picture or other audiovisual work.
c. Translation.
d. Supplementary work.
e. Compilation.
f. Instructional text.
g. Test.
h. Answer for a test.
i. Atlas.

3. Work for hire had been included but not defined (left for courts) in 1909 Act.
Legislative history of 1976 indicates that Congress intended to cut back on work
for hire. Wasn’t eliminated entirely because vested interests opposed.

4. Possible interpretations of employee in § 101(1).

a. Formal salaried employee only.
(1) Would give the broadest protection to freelancers.
(2) But might go too far, given the compromise involved in enactment
of this section.
b. Agency law distinction between agent and independent contractor.
c. All commissioned works other than § 101(2) (right to control): too little
protection for freelancers.
d. All works in which commissioner actually controlled fixation process.
Aldon.
(1) Focus on who brought creative value (creative commissioner).
(2) Work would not have come into being otherwise.
(3) Under 1909 Act, with broader conception of work for hire, this
was way around treating idea person as nonentity.

5. Supremes settle on agency. CCNV.

a. If statute is to have meaning, must be interpreted to find few people
employees (DZ — not convincing; other ways to read statute).
b. Focus on policy underlying copyright — to give copyright to person who
is originator of work; where real thrust of creativity is from person fixing,
we should be reluctant to find works for hire.
c. Factors to consider in agency analysis.
(1) Skill required.
(2) Source of instrumentalities and tools.
(3) Location of the work.
(4) Duration of relationship between the parties.
(5) Whether hiring party has right to assign additional projects to hired
party.
(6) Extent of hired party’s discretion over when and how long to work.
 (7) Method of payment.
(8) Hired party’s role in hiring and paying assistants.
(9) Whether work is part of regular business of hiring party.
(10) Whether hiring party is in business.
(11) Provision of employee benefits.
(12) Tax treatment of hired party.
d. DZ: Supremes say reason to choose agency is certainty.
(1) If actual control test, wouldn’t know copyright owner until late in
the process.
(2) Disagreement among amici as to content of “salaried employee”
test.
e. Yet courts are all over the map on application of agency.

6. Post-CCNV applications.
a. Most important factors. Aymes (2d Cir.).
(1) Hiring party’s right to control manner and means of creation.
(2) Skill required.
(3) Provision of employee benefits.
(4) Tax treatment of hired party.
(5) Whether hiring party has right to assign additional projects.
b. No court has found employee relationship where the hiring party failed to
extend benefits or pay social security taxes. Aymes.
c. And even payment of these was not dispositive. Carter (artists continued
work after discontinuation of benefits, but still DZ may be cause for
reversal).
d. Freelancer or staff photographer? Marco.
(1) DZ: factors pretty evenly split. Accent is in business (increases the
possibility it would employ people), publishes photographs of own
conception, and exercised control over details of work — supplied
jewelry, props, models, sketches, and art director at some sessions.
(2) But skilled position, use of own equipment, work at own studio,
time of his choosing, without assistants hired by commissioner, for
discrete assignments, without benefits, without taxes withheld.

7. CCNV on remand: Reid owns exclusive right to do three-dimensional copies but

CCNV owns statute. Both can make two-dimensional copies, but Reid must omit
base and inscription (conception of CCNV) and CCNV must credit Reid as
sculptor.

8. Options available even where fixer is held to be independent contractor.

a. If hiring party contributes significant artistic effort, she is joint author with
independent contractor. Future Aldon’s.
b. If hiring party has contributed all the expression and the independent
contractor acts as mere amanuensis, hiring party should be considered the
sole author (as in Andrien).
c. Even if hiring party contributes only ideas or generalized expression
 incapable of copyright protection, so that independent contractor receives
copyright, hiring party can still obtain transfer of copyright as condition of
employment.

9. University teachers.
a. Exception for teachers was well settled under prior law.
b. Yet they would seem to be employees under 1976 Act.
c. Posner refuses to be literalist. Hayes.
(1) No Congressional intent.
(2) Would wreak havoc in settled practices of academic institutions.
d. Under § 201(b), work must be made for employer, but teachers do not
publish for their institutions. Proposition rests on academic freedom and
personal independence (medieval model of professor as itinerant scholar).

C. Joint Authors
1. Analogize to tenancy in common: each party shares in ownership of whole.
a. Either party can grant nonexclusive license.
b. Must share revenues among all joint authors.
c. Exclusive license can be granted only by all authors together.

2. Work prepared by two or more authors with the intention that their contributions
be merged into inseparable or interdependent parts of a unitary whole. § 101.
a. Parts of a unitary whole are “inseparable” when they have little or no
independent meaning standing alone. Childress.
b. They are interdependent when they have some meaning standing alone but
achieve their primary significance because of their combined effect, as in
the case of the words and music of a song. Id.

3. Intent plus copyrightable contribution by both parties required for joint work.
Childress.
a. Copyrightable contribution.
(1) Nimmer says not necessary. Arguments against.
(a) Not specified in Act.
(b) Author means originator.
(c) Not required of owner of work for hire.
(2) But case law supports requirement and party with
noncopyrightable contribution can protect rights through contract.
(3) DZ: what about collaboration of sculpture where you cannot tell
who did what? MC: second circuit would say separation irrelevant
if both parts clearly copyrightable. DZ: probably but literal
reading of Childress wouldn’t support that.
b. Intent.
(1) Subjective intent. Childress.
(a) DZ: Focus on subjective intent would allow party to deny
afterwards even while apparently collaborating. MC:
 becomes issue of credibility. Subjective intent requirement
has advantage of forcing parties to resolve up front, in
contract. Of course, it does not appear needed until there is
a falling out, at which point it is too late. But strictness of
requirement may be appropriate given seriousness of joint
author relationship.
(b) Leval would focus on dominant author’s intent. Fisher v.
Klein.
(2) Joint authors under the 1909 Act.
(a) First set of lyrics to Melancholy Baby a loser; author of
second set a joint author with composer because composer
understood there would be lyrics even if he didn’t know
who would write them. Marks Music.
(b) Shapiro, Bernstein & Co. held that intent of subsequent
author sufficient to create joint work. Probably motivated
by desire to avoid characterization of works as composite,
with attendant renewal of ownership by proprietor rather
than author. Not a problem under 1976 Act.
(3) 1976 Act clearly requires both authors to intend to create joint
work (rejecting Shapiro).
(a) Under Childress, collaboration is probably a prerequisite to
a showing of intent.
(b) Although simultaneous creation not required, unless
authors collaborated each author must prepare contribution
with the knowledge and intention that it would be merged
with the other contributions as “inseparable or
interdependent parts of unitary whole.” Presumably this
will not accommodate composer awaiting lyricist who
intends subsequent contribution but does not know identity
of contributor.
(c) DZ believes that this flows from Childress focus on
subjective rather than objective intent. Certainly, if intent is
to be subjective, couldn’t have joint work where composer
predeceased lyricist’s effort.

D. Summary
1. Problem is trying to impose unitary law on situations with equities cutting two
different ways.

2. If you identify someone as responsible for work coming into being you don’t
want to give someone who had minor share a joint copyright (e.g., writer and
copy editor or writer and researcher or Calder and foundry).

3. But where party has played a significant role in bringing work into being, you
push in the direction of joint authorship.
E. Transfer: Divisibility and Requirements
1. Divisibility.
a. Under 1909 Act, copyright had been indivisible.
b. Under 1976 Act, anyone who owns an exclusive right is owner of that part
of copyright and is entitled, to the extent of that right, to all of the
protection and remedies provided by Act. § 201(d)(2).

2. Copyright may be transferred in whole or part by any means of conveyance or by

operation of law. § 201(d)(1).
a. Transfer of exclusive right limits grantor to suit for breach of contract.
U.S. Naval Institute (Hunt for Red October).
b. Operation of law includes transfer in divorce in community property state.
Marriage of Susan M. (result questioned as inconsistent with economic
rationale).

3. Formalities.
a. Unless by operation of law, transfer must be via written document signed
by the owner (or owner’s agent) of the rights conveyed. § 204(a).
b. Involuntary transfer by action of governmental body is not recognized
(protects against claim of infringement to censor dissidents’ work in
United States). § 201(e).
c. Nonexclusive license may be transferred orally or implied from conduct.
Effects Associates (implied because footage without right to use would
have been of no value).
(1) Plaintiff’s remedy for nonpayment of final installment is in breach
of contract.
(2) Defendant’s failure to arrange for transfer in writing
(“moviemakers do lunch, not contracts”) prevents any reuse of
footage.

4. Recordation of transfer establishes priority. § 205.

a. Document must bear actual signature of person executing transfer or
sworn or official certification that it is a true copy of the original signed
document. § 205(a).
b. Recording is constructive notice provided (1) that work has been
registered and (2) that document identifies work sufficiently well that after
indexing it may be found with reasonable search. § 205(c).

5. Collective works. § 201(c).

a. Copyright in each separate contribution to collective work is distinct from
copyright in the collective work as a whole.
b. Absent express transfer, owner of copyright in collective work is
presumed to have acquired only the privilege of reproducing and
distributing the contribution as part of that particular collection and later
 editions.

F. Transfer: Scope of Grant

1. Conveyance covers only what has expressly been granted. Cohen (VCR rights
not inferred from TV rights).
a. Cases that reached opposite results contained expansive language.
(1) “... by any means or methods now or hereafter known.” American
Graffiti.
(2) “... by any present or future methods or means.” Rooney.
b. Television distinguishable from VCR by means of viewer control.
c. Underlying motivation seems to be fear that broad reading of grant would
be counterproductive to copyright policy of encouraging authors.
d. “Broadcasting by television or any other similar device now known or
hereafter to be made known” contemplates new form of broadcasting, not
VCR. Tele-Pac, Inc. v. Grainger.

2. Other view is that ambiguities will be resolved in favor of recipient of

conveyance. Bartsch (“If the words are broad enough to cover the new use, it
seems fairer that the burden of framing and negotiating an exception should fall
on the grantor.”)
a. Policy concern here is that deadlock between grantor and grantee will
prevent public access to work in new medium.
b. Court finds television sufficiently predictable at time movie contract was
signed.
c. Also Bartsch was an experienced businessman, unlike plaintiff Ettore.
d. Court rejects inference that because Warner Brothers often attempted to
obtain express grant of television rights, absence of clause in Bartsch
contract was indicative of failure to obtain grant broad language
notwithstanding.
e. DZ: majority of courts follow Bartsch approach.

G. Transfer: Beneficial Ownership

1. Beneficial owner is author who parts with legal title to copyright in exchange for
percent of royalties.

2. Beneficial as well as legal owner can bring infringement action. § 501(b).

3. Beneficial owner can bring action to protect economic interest from dilution but
cannot create derivative of work in which he conveyed his interest. Fogerty.
a. Co-owners cannot sue one another because co-owner has independent
right and owner cannot infringe his own copyright.
b. But legal owner can sue beneficial owner because beneficial owner has no
such independent right.
4. Beneficial owner lack standing when copyright conveyed without royalties but
only promise of royalty if subsequent edition is published or reverter if it is not.
Cortner.
a. 1976 Act merely codified common law under 1909 Act and did not extend
beneficial ownership.

5. Assignment of copyright to financial institution for security does not divest owner
of right to enforce copyright. Hearst Corp.
IV. DURATION AND RENEWAL
A. Duration
1. Policy questions re length.
a. Reasons to increase from 28 + 28 to life + 50 (Copyright Office estimates
that copyright averages 75–80 years with life + 50)
(1) With greater life expectancy, authors living to see their works fall
into public domain (DZ: 14 + 14 was probably adequate in pre–
antibiotic era).
(2) Short term discriminates against serious works whose value may
not be recognized for years.
(a) DZ: with exception of these works, economic lifespan is
normally significantly shorter than author.
(3) Clear up confusion as to “publication” and provide simpler method
of calculating term.
(a) But also would result in author’s later, more mature works
having shorter overall period of protection.
(4) Eliminate substantial burden and expense of renewal.
(5) Worldwide uniformity.

b. Increase to life + 70?

(1) Berne is life + 50, but now EU is life + 70.
(2) But does addition of years increase productivity, spur authors?
(3) Distant relations or foundations often end up with copyright.
(4) No difficulty if treated as moral right, rather than statutory grant.

2. Period. § 302.
a. Life + 50 for author.
b. Joint authors: life + 50 of last to die.
c. Pseudonymous/anonymous works and works for hire: 100 years after
creation or 75 years after publication, whichever comes first.
(1) Pseudonymous/anonymous authors can register with Copyright
Office and get full protection of life + 50.
d. Presumption as to death: after 75 years from first publication or 100 years
from creation, obtain certificate from Copyright Office that no records
show person is alive or died less than 50 years earlier.

3. Application.
a. Faulkner short story written in 1950 (so 1909 Act applies).
(1) Unpublished? Under 1909 Act, unpublished works received
perpetual common law copyright. Under 1976 Act, state common
law copyright is preempted and unpublished works given life plus
50. § 303.
(a) In no case does copyright expire before 12/31/02.
(b) If published by 12/31/02, copyright extends to 12/31/27.
(2) If published, when?
(a) Publication date starts initial term.
 (b) If in first term, term endures 28 years, after which 47-year
renewal kicks in.
(3) If first term expired, was term renewed after 28 years? If renewed,
then second renewal period is 47 years. § 304(a)(2).
(a) If original copyright was secured before 1/1/64, author or
statutory successors must renew.
(b) If original copyright was secured after 1/1/64, there is
automa
tic
renewa
l under
§
304(a)(
2).

(c) If voluntary, renewal rights vest in party entitled to second

term when application is made. If automatic, renewal
rights do not vest until the last day of the initial term (so if
author dies during last year of initial term, statutory heirs
take if automatic renewal and assignees take if voluntary
renewal).

B. Renewal
1. Rationale under 1909 Act.
a. Housecleaning device to eliminate copyright protection from works that
lost value during initial term (no one will care enough to renew).
b. Grant of “new estate“ also protects author who may have undersold work
in first term. Hard to predict if work will be enduring or make comeback
with new technology (e.g., Forsythe Saga). Life + 50 might not be such a
good deal if copyright sold for peanuts in year 1. But see Termination
provisions.

2. Statutory successors. § 304.

a. Spouse/children.
b. Executors.
c. Next of kin (intestacy).

3. Statutory succession trumps will. Saroyan. (Statute provides “nondiscretionary

ordering of renewal rights” and author is required by statutory mandate to leave
renewal rights to spouse and children if there are any.)

4. Assignment of renewal rights trumps succession if author lives to renew. Fred

Fisher (“assignment of renewal rights made before the original copyright expires
is valid against the world, if the author is alive at the commencement of the
renewal period”).
 a. Publisher can get affidavit authorizing publisher to renew.
b. If author does not survive, however, next of kin obtain the renewal
copyright free of any assignment (assignee has only an expectancy).
Miller Music.
(1) Prudent publishers would seek assignments from all possible
parties, which can be a real crap shoot.
c. Given policy favoring protection of authors’ entitlement to receive new
rights, grant must be explicit. Corcovado Music (2d Cir.).

5. Exceptions to favoring author during renewal. Proprietor of copyright entitled to

renewal in following situations.
a. Work for hire.
(1) If confusion as to owner and wrong person files, copyright renewal
term is lost and work goes public domain. Epoch Producing
(Birth of a Nation was not a work for hire; only Griffith could
renew).
b. Copyright obtained by corporation in own name (same as WH?)
c. Posthumously published works. Bartok.
(1) Concerto for orchestra written during WW II, performed before but
not published until after Bartok’s death. Assignment made before
Bartok died (to provide widow royalties while she lived).
(2) Difficulty of determining publication and danger that unscrupulous
publishers could delay publication to obtain renewal rights.
(3) Because not posthumous, statutory scheme trumps assignment and
widow must share with stepsons.
(4) Decision given blessing in legislative history of 76 Act.

6. Exceptions to formalities of renewal.

a. Automatic renewal provision (1992 Amendment to § 304(a)).
(1) Copyrights secured after January 1, 1964, may be renewed for a
second term of 47 years. § 304(a)(2)/(3).
(a) If voluntary, the renewal rights vest immediately in the
person entitled to them.
(b) If automatic, the renewal rights vest on the last day of the
original term.
(c) Thus if author dies during last year of initial term, statutory
heirs take if automatic renewal and assignees take if
voluntary renewal.
(2) NB: automatic renewal does not apply to copyrights secured
before January 1, 1964. These works, if unrenewed, become
public domain.
b. Copyright recapture. § 104A (post-GATT).
(1) For foreign authors holding U.S. copyrights that expired after
initial term due to failure to follow renewal formalities, copyright
is restored for so long as it would have been if formalities had been
followed.
 (2) Anyone who had been making use of works because public domain
will have to pay owner a fair fee for future use.
(3) Query whether this amounts to unconstitutional taking.

7. Effect of “new estate” on derivative works.

a. Failure to obtain renewal rights prevents exploitation of work during
second term. Ricordi.
(1) Madame Butterfly based on 1897 and 1901 play.
(2) Paramount buys movie rights from novelist and playwright’s
estate.
(3) Paramount blocks owners of opera from filming opera.
(4) Court does not reach question of whether opera itself can be
enjoined but probably that would be the result of court’s treatment.
(5) Failure to obtain rights in second term led to films going off
screen.
b. Where author assigned renewal rights but died before renewal could be
effected, and where derivative work was far more famous/important than
underlying work, derivative work may be shown during renewal (although
limited to already created derivative; no new exploitation). Rohauer.
c. Supremes go back to Ricordi position in Abend (author of short story
underlying Rear Window assigns derative right in both periods but dies
before renewal and statutory successor bars showing of film in renewal
period).
(1) Statutory successor takes all renewal rights despite assignment if
author dies before renewal. Miller Music.
(2) A fortiori successor takes right to make derivative (only a piece of
the total copyright).
(3) Decision affects 600+ films.
(4) Dissent: distinguish licensee from value-adding creator of
derivative.

8. Protection for derivatives.

a. Partial Congressional response to Abend. § 304(a)(4)(A).
(1) Failure to file application to register a claim to the renewal term
within 1 year before expiration of the original term, or failure to
register claim pursuant to such application, will allow existing
derivative works to be exploited during second term (but new
derivative works not permitted).
(2) This would not have stopped an Abend, however.
b. Under termination provisions, derivative right cannot be terminated (but
right to make further derivatives can). § 203(b)(1), § 304(c)(6)(A).
(1) Friendly relied on legislative history in Rohauer.
(2) Only way to get derivative right back is to put in time limitation in
original grant.

9. Expiration of copyright in derivative work no defense to infringement claim so

 long as copyright in underlying work exists. Russell v. Price.
a. Derivative copyright protects only the new material contained in that
work.
b. Showing of derivative by one not licensed to make derivative is
infringement of the underlying copyright.
c. Accord Filmvideo Releasing Corp. v Hastings (expiration of copyright in
a film that incorporates portions of an underlying copyrighted work does
not cast the incorporated portions of the underlying work in to the public
domain along with the film).

10. Timing: all terms of copyrights provided by §§ 302–304 run to the end of the
calendar year in which they would otherwise expire. § 305.

C. Termination
1. General.
a. Analogue to new estate provision of renewal term, allowing author to reap
benefits of successful work.
(1) § 302(c) governs pre-1978 transfers.
(2) § 203(a) governs post-1978 transfers.
b. Provision trumps contract: cannot waive right to terminate. §§ 203(a)(5),
304(c)(5).
c. But contract can provide for shorter grant.

2. Key provisions under § 203(a).

a. Threshold requirements: grant must be post–1/1/78 and transfer by author.
b. Coverage: transfer or license by author of any rights.
(1) Compare § 304(c), which covers only renewals but includes grants
made by immediate survivors and statutory successors.
(2) Like § 304(c), excludes transfers by will and works for hire.
c. Persons entitled to terminate. Cf. renewal rights under § 304(a)(1)(C))
(spouse/children, executors, next of kin (intestacy)).
(1) Author or majority of co-authors. § 203(a)(1).
(2) Surviving spouse (if no children or grandchildren) or majority
action by children (and children of any deceased child) if no
surviving spouse. § 203(a)(2).
(3) Majority action by surviving spouse (50%) and children (and
children of any deceased child) (50%). § 203(a)(2).
(4) Children’s interests per stirpes and dead children’s interests
exercisable only by majority of them. § 203(a)(2).
d. Date. § 203(a)(3). Five-year window beginning
(1) At end of 35 years from the date of execution of grant.
(2) Or sooner of end of 35 years from date of publication of work or
40 years from date of execution of grant of right of publication.
(3) Note: unlike § 304(c) (and rest of Copyright Act) measures from
date of grant and not end of year.
 e. Notice. § 203(a)(4).
(1) Timing of notice (2–10 years prior to date of termination): between
end of 25 years from grant and end of 38 years from grant.
(a) Content of notice: written and signed by required persons to
grantee or grantee’s successor in title; state effective date of
termination; form, content, and manner of service in accord with
Copyright Office regulations; record copy of notice in Copyright
Office before date of termination as condition to its taking effect.
f. Effect. § 203(b).
(1) Interest vests upon service of notice. § 203(b)(2).
(a) Negotiation with grantee not required before termination
takes effect. Bourne Co.
(b) Original grantee has limited right of first refusal by being
only party permitted to enter into new grant in period prior
to expiration of grant. § 203(b)(4).
(2) Reversion of rights (even to those who voted against termination).
g. New grant.
(1) Same number/proportion required for termination.
(2) Effective only if made after effective date of termination (unless
with original grantee). § 203(b)(4).

3. Key provisions under § 304(c).

a. Threshold: both statutory copyright and transfer must be pre–1/1/78
(work subsisting in first or renewal term and pre-’78 grant).
b. Coverage: transfer or license of renewal rights.
(1) Transfers by will and works for hire cannot be terminated.
(2) Unpublished works subject to § 203 if transfer was post–1/1/78.
c. Persons entitled to terminate. Cf. renewal rights under § 304(a)(1)(C))
(spouse/children, executors, next of kin (intestacy)).
(1) If original grant was by author.
(a) Author or majority of co-authors. § 304(c)(1).
(b) Surviving spouse (if no children or grandchildren) or
majority action by children (and children of any deceased
child) if no surviving spouse. § 304(c)(2).
(c) Majority action by surviving spouse (50%) and children
(and children of any deceased child) (50%). § 304(c)(2).
(d) Children’s interests per stirpes and dead children’s interests
exercisable only by majority of them. § 304(c)(2).
(2) If original grant by others, all surviving grantors. § 304(c)(1).
(a) Cf. termination by majority of this same group sufficient if
renewal grant had been by author.
(b) If no one in this group alive, grant cannot be terminated.
d. Date: five-year window beginning 56 years after end of year in which
grant was made or 1/1/78, whichever is later. § 304(c)(3).
e. Notice. § 304(c)(4).
(1) Timing of notice (2–10 years prior to date of termination): at end
 of 46 years to end of 59 years after publication year.
(a) Content: written and signed by required persons to grantee or
grantee’s successor in title; state effective date of termination;
form, content, and manner of service in accord with Copyright
Office regulations; record copy of notice in Copyright Office
before date of termination as condition to its taking effect.
f. Effect. § 304(c)(6).
(1) Interest vests upon service of notice. § 304(c)(6)(B).
(a) Negotiation with grantee not required before termination
takes effect. Bourne Co.
(b) Original grantee has limited right of first refusal by being
only party permitted to enter into new grant in period prior
to expiration of grant. § 304(c)(6)(D).
(2) Reversion of rights (even to those who voted against termination).
g. New grant.
(1) Same number/proportion required for termination.
(2) Effective only if made after effective date of termination (unless
with original grantee). § 304(c)(6)(D).

D. Termination Problems
1. 1970 contract, assigning copyright and renewal right to P.
a. Renewal.
(1) First term to expire end of 1998. Must renew by end of 1997.
(2) If AA alive, can have her renew or renew in her name.
(3) If AA not alive, must bargain with her statutory heirs.
b. Termination of renewal term.
(1) Both copyright and transfer were pre–1/1/78, so § 304(c) governs
termination.
(2) Five-year window for recapture of rights beginning after end of
56th year: 1/1/27–12/31/31.
(3) Notice requirement: 2 to 10 years prior to effective date that falls
within window. Thus earliest date is 1/1/17 and last chance is
12/31/19.

2. 1970 publication and 1980 grant of movie rights, with additional right to one
remake, plus assigns renewal rights. P does unsuccessful picture and, with one
year left on grant, will not have time to make/exploit remake with star power.
a. Renewal.
(1) Same issues as 1a above re renewal of derivative grant.
(2) But double set of problems — rights they obtained and exploited
(first film) and rights they obtained but did not exploit (remake).
(3) If no one affirmatively renews copyright for second term (renewal
automatic for post–1/1/64 copyrights), then P can exploit original
derivative. § 304(a)(4).
(a) But if statutory heirs do file renewal, then P can’t even do
 that. Illustrates limited nature of Abend curative.
(b) As to remake, unless AA lives to renew, P cannot make
film without having heirs assign renewal rights.
b. Termination (if grant renewed in 1998).
(1) Since grant was post–1/1/78, § 203(a) governs termination.
(2) Five-year window opens at end of 35 years from date of grant.
(a) Thus earliest recapture will be 1998 + 35, or 2033;
copyright renewal term will expire at end of 2045, so AA
recaptures only 12, rather than 19, years.
(b) Makes sense not to have a 19-year recapture because
grantor (unlike pre–76 Act grantor) is aware of additional
years.
(3) Does not affect derivative works that were exercised.
(a) But you can’t count on right being exclusive in second
term.
(b) Also contract might limit term of derivative.

3. Book written in 1970, but unpublished. Author dies 1975 and widower sells
publication rights 1980.
a. Renewal not applicable because works under common law copyright as of
effective date of ’76 Act given statutory copyright as of 1/1/78. § 303.
(1) Term as given in § 302. Here author’s life plus 50, or 2025.
b. Termination.
(1) § 304(c) not applicable because work was not under statutory
copyright prior to 1/1/78.
(2) Under § 203 (unlike § 304(c)) only author can terminate grant, so
widower cannot terminate.

4. Book written in 1970, but unpublished. Author dies in 1980, leaving rights to
Bronx Zoo.
a. Termination not available for disposition by will.
b. Thus will trumps statutory succession.
c. Cf. Saroyan (statutory succession trumps will for renewal rights).

5. Publication rights assigned in 1975, book completed 1977 and published 1979.
a. Cannot be terminated.
(1) § 304(c) not applicable because copyright neither in first or
renewal term as of 1/1/78.
(2) § 203 not applicable because grant was pre-1/1/78.

6. Joint authors under § 203.

a. Majority required to terminate grant.
(1) But need all authors to make exclusive grant.
(2) But co-author can terminate nonexclusive license.
b. If one author is dead, leaving spouse and child, majority action requires
that both vote to terminate.
 c. If author has left spouse and two children, then spouse and one child are
sufficient to vote share.
d. If spouse and two grandchildren, however, both grandchildren needed to
vote child’s share, so spouse and grandchild insufficient to take action.
Difference from c is that grandchildren have vote in child’s share, not
author’s share, whereas child has direct vote in author’s share.
e. Limited number of beneficiaries.
(1) No provision for anyone to vote dead grandchild’s share.
(2) Parents, siblings, etc. not in statute.
(3) Cf. wide range of statutory successors under § 304(a).

7. Joint authors and non-author grantors under § 304.

a. Each joint author can terminate his or her own share (unlike majority
action under § 203). Congress may have felt bound by fact that as co-
tenants under ’09 Act they had expectation of managing own interest.
b. If author is not grantor, all grantors must join in termination.
(1) If all alive, all must act.
(2) If all dead, termination not possible.
(3) If some dead, unanimous action by remainder required.
(4) Cf. termination of grant by author, under § 304(c) as well as § 203,
where only majority action is required.
(5) Must always pay attention to who renewed — then you know who
may terminate.

8. Review: what is date of agreement? Issue is not whether copyright is under ’09 or
’76 Act, but when contract was made and who made it.
a. If pursuant to ’76 Act.
(1) Termination must be under § 203; if you don’t fit (e.g., grant is
pre-’78 but publication is post-’78, as in D5, cannot terminate).
(2) If author lives long enough, author can terminate.
(3) Otherwise limited class of statutory successors can terminate.
b. If prior to ’76 Act.
(1) Can recapture last 19 years of second term of copyright.
(2) Must be party who made grant or statutory successor to author.
c. Valid copyright? Valid grant? Valid renewal? Valid termination?
V. FORMALITIES
A. Notice
1. Under ’09 Act, failure to include copyright notice when work was “published”
injected work into public domain.
a. View that copyright is a privilege, not a right, and persons seeking the
privilege can be expected to adhere to the formalities.
b. Courts provided several cushions because of heaviness of penalty,
however.

2. Only “general” and not “limited” publication divests author of copyright.

a. General publication occurs when a work is made available to member of
the public regardless of who they are or what they will do with it. Burke.
b. Limited publication occurs when distribution is
(1) To a definitely selected group.
(2) For a limited purpose.
(3) Without the right of further reproduction, distribution, or sale.
White (interpreted in Academy).

3. Mere performance or exhibition of work does not amount to publication. Ferris.

4. Courts are more willing to find “investive” than “divestive” publication (more
convincing showing of general distribution needed to inject work into public
domain than for author who has affixed notice and seeks to claim copyright).
a. In Academy, pre-registration practices were — if anything — less
restrictive than post-registration practices (from 1929 to 1941, recipients
were not prohibited from selling their Oscars).
(1) Indirect commercial benefits (promotion of annual awards
ceremony) do not constitute distribution if no direct sales are
made.
(2) Two-dimensional reproductions in advertising not distribution.
b. Distribution of 200 copies of sheet music for “plugging” does not divest
copyright. Hirshon.
c. Delivery of speech before 200,000 and distribution of text to news media
not divestive publication. King.
(1) Speech was a performance.
(2) Copies of speech were offered to limited group.
d. But more widespread distribution of text may be divestive. Rickover
(copies sent to individuals at their request, batches of 50 sent to sponsors
of speeches, and mailings of unsolicited copies).

5. Downside of protectiveness was ability of some to exploit work while remaining

under (perpetual) common law copyright.
a. Could perform Broadway play so long as text not published without losing
common law copyright.
b. Distribution of phono recordings (treated as “captured performance,” not
publication).
6. Treatment under ’76 Act.
a. Statutory copyright kicks in as soon as work fixed; though publication not
critical, still important under ’76 Act.
(1) Governs copyright term for works for hire/anonymous works.
(2) Unpublished works protected regardless of nationality. § 104.
(3) Possibly narrower scope of fair use with unpublished works.
b. Notice.
(1) Divestive publication cannot occur because copyright upon
fixation.
(2) But (pre–Berne Amendment) publication without notice can still
lead to loss of copyright.
(a) Cure possible under § 405(a)(2). See infra, V.A.7.d.
(b) But no liability for innocent infringers.
(3) Under Berne, notice becomes permissive.
(a) Advantage to notice, even under Berne, is elimination of
innocent infringer defense. §§ 401(d), 402(d).
(b) Also UCC has modest notice requirement.
c. Publication (defined unlike ’09 Act). § 101.
(1) Distribution of copies or phonorecords of a work to the public by
sale or other transfer of ownership, or by rental, lease, or lending.
(2) Offering to distribute copies or phonorecords to group of persons
for purposes of further distribution, public performance, or public
display.
(3) But public performance or display still not a publication.

7. Provisions of ’76 Act.

a. Form of notice. § 401(b).
(1) Copyright, Corp., or © in manner or location to give reasonable
notice of the claim of copyright.
(2) Year of first publication of work or work as compilation.
(3) Name of copyright owner.
(4) Such notice eliminates innocent infringer defense. § 401(d).
b. Form of notice in sound recording. § 402(b).
(1) Ⓟ on label, container, or surface.
(2) Year of first publication of work or work as compilation or
derivative work.
(3) Name of copyright owner.
(4) Such notice eliminates innocent infringer defense. § 402(d).
c. Collective works. § 404.
(1) Single notice sufficient to eliminate innocent infringer defense
with respect to all contributions.
(2) Alternatively, individual contributions may also carry notice.
(3) Always ask who owns copyright — author or compiler.
(4) In addition to notice at front of work, copyright of individual
contributors may appear under their stories or at front, with list of
 copyrights.
(5) Cf. 1909 Act, § 19, notice was required to be in the name of owner.
(a) If published in name of magazine (problem 5), author of
contribution must choose between no copyright and no
ownership (must either say that she conveyed ownership to
magazine or see work go public domain).
(b) Second circuit treated as constructive trust (misreading
statute to achieve equity). No longer needed under ’76 Act.
d. Publication without notice does not necessarily invalidate copyright. §
405.
(1) Omission occurs in limited number of copies. § 405(a)(1).
(2) Omission is cured by registration before or <5 years after
publication without notice and reasonable efforts made to add
notice. § 405(a)(2).
(a) Unlike books, for which stickers can be created and which
undergo subsequent printings, with ephemera such as
weekly magazines it is difficult to add notice.
(b) Some courts say reasonable efforts are sufficient. Others
say that if you do nothing you haven’t cured.
(3) Notice omitted in violation of contract. § 405(a)(3).
(4) Even deliberate omission of notice can be cured. Hasbro.
(a) DZ: cure shouldn’t be necessary when initial omission was
deliberate because published outside U.S. and under Berne.
e. But publication without notice permits innocent infringer defense. §
405(b).
(1) No liability for actual or statutory damages if defendant “misled”
by lack of notice.
(2) An affirmative defense (“if such person proves”).
(3) But court’s discretion to allow recovery of profits attributable to
the infringement.
(4) Court’s discretion to enjoin continuation of infringing undertaking
or require payment of reasonable license as condition for
continuation of the infringement.
f. Innocent infringer defense not available when notice is removed,
destroyed, or obliterated. § 405(c).
g. Error in date. § 406(b).
(1) If earlier than actual publication, use publication date.
(2) If more than one year later than actual publication, treated as
publication without notice.
h. Error in name. § 406(a).
(1) Does not affect validity and ownership of copyright.
(2) Innocent infringers who have secured transfer or license from
person named in notice have complete defense unless
(a) work already registered in name of owner of copyright; or
(b) document executed by person named in notice showing
ownership of copyright has been recorded.
 Thus must always check with Copyright Office.
(3) Person named in notice must account to copyright owner for any
receipts from licenses or transfers.
i. Derivative works.
(1) Playwright doesn’t need permission from New Yorker for AA’s
story if AA owns copyright. Under § 201(c), New Yorker just had
license to publish story.
(2) Playwright doesn’t need to and won’t include information about
underlying work.
(3) This will be in registration if derivative work is registered; another
reason to check with Copyright Office.

B. Registration and Deposit

1. Incentives to registration.
a. Cures (pre-Berne) publication without notice. § 405.
b. Prerequisite to infringement action. § 411.
(1) All works pre-Berne.
(2) U.S. works post-Berne.
c. Without registration attorneys’ fees and statutory damages are not
available. § 412.
(1) For infringements of unpublished work before registration.
(2) For infringements of published works before registration (unless
registration made within three months after first publication of the
work).
d. Movement to get rid of §§ 411–412.
(1) Unsuccessful so far.
(2) Media oppose because it would permit copyright infringement
action for publication of unpublished memos as end run around
constitutional protections of defamation/privacy law.

2. Deposit. §§ 407–408.
a. Copyright Office can demand copy if not included, can levy fines for
refusal.
b. Purposes of deposit.
(1) Informational — makes clear coverage of copyright.
(2) Disclosure.
c. “Secure test” regulations allow deposit of “sufficient portions ... to
constitute a sufficient archival record” and thus protect LSATs etc. from
competitors. 37 C.F.R. § 202.20. Ditto with source codes for computer
programs.
VI. RIGHTS, LIMITATIONS, AND REMEDIES
A. Rights (General)
1. Exploitative. § 106.
a. Reproduction.
b. Preparation of derivative works (own and licensed).
c. Distribution.
d. Performance.
e. Display.

2. Moral rights (visual works only). § 106A.

a. Right of attribution.
b. Protection of work’s integrity.

B. Right to Make Copies

1. Spectrum.
a. Clear that wholesale copying (piracy) is an infringement.
b. Not until 1870 was copying by translation held an infringement
(comprehensive nonliteral similarity [plot/dialogue]).
c. Or fragmented literal similarity (exact copying scattered throughout)
(copying the heart, e.g., Harper & Row).

2. Infringement = (1) copying that (2) goes so far as to constitute improper

appropriation. Arnstein.
a. DZ — first (implicit) step is always whether copyright is valid (although
courts often don’t examine).
b. Registration establishes prima facie case of validity.

3. Proving copying. Arnstein.

a. Two ways: (1) defendant’s admission or (2) circumstantial evidence,
usually evidence of access, from which copying may be inferred.
b. Inverse relationship between degree of access and degree of similarity.
(1) If no similarities, no evidence of access will suffice to prove
copying.
(2) If access, trier of fact must determine whether similarities are
sufficient to prove copying.
(3) If evidence of access is missing, must show striking similarities (=
similarity so striking as to preclude possibility of independent
creation)
(4) Even striking similarity is insufficient to constitute infringement
unless there is evidence that would support reasonable inference of
copying. Selle.

c. Striking similarities are those that concern material so unique or appearing

in so complex a context in plaintiff’s work that defendant would be most
unlikely to have produced the same material in the same context by
 coincidence, accident, or independent creation.
d. Access + striking similarity = infringement? Bright Tunes (unconscious
copying).
(1) Does this eliminate possibility of independent creation?
(2) Six year time lag, circumstantial proof of access, and coauthored
by someone who may have had no access.
e. Seventh circuit holds that while striking similarity permits inference of
access, plaintiff must still meet some minimum threshold that
demonstrates the inference is reasonable. Selle.
f. Second circuit reaffirmed willingness to find copying, even without proof
of access, when works are strikingly similar. Gaste. Ginsburg: may in fact
be stricter standard than Selle because plaintiff must also show that the
evidence precludes any possibility of independent creation.

4. Relevant observer (use of experts).

a. Audience intended by author to constitute commercial market.
(1) If intended audience was choral directors having specialized
knowledge of choral music, rather than lay listeners, appropriate to
exclude recordings from trial and compare printed sheet music.
Dawson.
b. Ordinary observer test: infringement if “ordinary observer, unless he set
out to detect the disparities, would be disposed to overlook them.” Peter
Pan (Hand, J.) (extent to which infringement of fabric design extends
beyond exact photographic reproduction).
c. Experts appropriate for specialized subject matter (software, etc.).
(1) No expert needed in Nichols.
(2) What brought courts back to experts was computer software.
d. Two sides to ordinary observer approach.
(1) If defendant took something he wasn’t permitted to take, it
shouldn’t matter whether audience recognizes this.
(2) But if ordinary observer doesn’t recognize it, nothing of value has
been taken.
e. Look at whether products are competing or not.

5. Proving improper appropriation.

a. Important because can copy things without infringing, e.g., ideas,
noncopyrightable portions of work.
(1) No copyrightable expression in plaintiff’s daily bond cards.
Financial Information Inc. v. Moodys.
(2) Expression merges with idea of bee. Herbert Rosenthal.
b. Basing plagiarism on identity of “small detached portions” and “musical
filler” like finding Shakespeare a copyist based on use of prepositions,
articles, and pronouns. Arnstein (Clark, dissenting).
c. Music cases present special problems.
(1) Only limited number of notes.
(2) Tradition of using themes from other works and transcribing them
 into other forms of music.
(3) Despite exact copying of note sequences, work may end up
sounding very different.
d. Despite access and similarity, second circuit rejects copying where
similarities derived from common reference to (public domain) work and
plaintiff’s variations were insufficiently distinctive to permit finding that
defendant copied from plaintiff rather than underlying source. Heim.
(1) Accord Selle (where the allegedly copied material is standard to
the medium or derives from a prior source, it will not be deemed
striking).

6. Summary judgment on copying inappropriate where credibility at issue. Arnstein

(Frank, J.).

7. In copying involving comprehensive nonliteral similarity, it becomes necessary

to separate unprotected ideas from protected expression. Hand’s “abstractions
test” provides the framework: Upon any work, and especially upon a play, a great
number of patterns of increasing generality will fit equally well, as more and
more of the incident is left out. The last may perhaps be no more than the most
general statement of what the play is about, and at times might consists only of its
title; but there is a point in this series of abstractions where they are no longer
protected, since otherwise the playwright could prevent the use of his “ideas,” to
which, apart from their expression, his property is never extended. Nichols.

8. Issue becomes whether to filter before or after examination of copying.

a. Dissection/filtration before examining copying.
(1) After filtering immigrant families, melting plot theme, stock
characters, what is left are numerous differences: plaintiff’s play is
about religious (not socioeconomic) differences, four common
characters are much different (Jew is obsessed with religion and
warm and affectionate with daughter, v. ostentatious and vulgar;
Irishman is religious fanatic, proud father, v. truculent, won’t be
stopped from seeing his grandchild). Nichols.
(2) Similarities concerned scenes that were commonplace to depiction
of slavery in Old South. Alexander v. Haley.
(3) Public domain material and ideas in first author’s work are not
protected from copying by subsequent author. Musto (7% solution
taken from JAMA article).
(4) Dissection prevents danger of monopolization of common themes.
Hoehling (facts, scènes à faire, theories nonprotectible, but court
notes danger of overlooking wholesale usurpation of expression).
(5) Where design contains both protectable and unprotectable
elements, we have held that the observer’s inspection must be
“more discerning,” ignoring those aspects of a work that are
unprotectable in making the comparison. Peter Pan; Laureyssens.
b. Or examine whole work without first eliminating stock devices and
 uncopyrightable elements.
(1) A plagiarist cannot be excused by showing how much he did not
copy. Sheldon.
(a) Factual story + play + novel + film. Hand finds film copied
from play and not factual story or novel.
(b) Similarities include mise-en-scène same city and social
class, evil Latin lover, wiping of glass, killing in hotel,
district attorney questioning rather than trial. Heroines in
novel and real life wished merely to shake off a clandestine
intrigue and set themselves up in the world; defendant’s
tracks plaintiff’s heroine in being redeemed by higher love
and basically upright in nature.
(c) In effect, Hand gives “compilation” copyright in assembly
of common thematic devices.
(d) But (DZ) different result if you take out all basic facts and
dramatic devices that are public domain.
(2) Compilation copyright in computer programs: Because there ought
to be copyright protection for an innovative melding of elements
from preexisting works, elements which have been deemed
“unprotectible” should not be eliminated prior to the substantial
similarity of expression analysis. Apple Computer v. Microsoft
(compilation copyright).
(3) But appropriate to give less protection for compilation in fact-
based than fictional work. Altai (computer program somewhere in
between).
(4) Even though a television game show is made up entirely of stock
devices, an original selection, organization, and presentation of
such devices can nevertheless be protected. Barris/Fraser
Enterprises (Bamboozle/To Tell the Truth).
(5) There is a danger that in extracting noncopyrightable elements
courts will also excise copyrightable expression. Warner Bros.
(Great American Hero).
c. Chafee: similar look and feel.
(1) Under this, West Side Story would not infringe Romeo and Juliet
(whereas under Sheldon it would).
(2) Total concept and feel analysis more appealing when used to
provide defense to copying than when used, as in Roth Greeting
Cards, to make out an action for compilation infringement.
d. Kaplan: all plot should be public domain (comprehensive nonliteral
similarity should not exist for literature).
e. DZ: should be very little room for infringement except in cases of very
close paraphrasing.
(1) Balance incentives to create new works against inability to draw on
old works.
f. Courts will often look to “bad acts” to tip the scale.
(1) Failed attempt to negotiate license (e.g., Sheldon).
 (2) Directing outside artist to use poster to achieve New York look.
(3) Defendant had previously produced “knockoff” version of
plaintiff’s slippers, had stopped in response to cease and desist
letter, and then made changes in design. Animal Fair (bear paws).
(4) Best way to explain divergence from Kalpakian (bee pin) and
Banana Republic (zebra head), which found merger of expression
and idea
(5) Souter cautions against an inference of unfair use from license
negotiations, but not certain whether courts will listen. Acuff-
Rose.

9. Examples.
a. Test questions that substitute variables found infringing. ETS.
(1) DZ: how else do you test math?
b. Style a component of expression. Steinberg (summary judgment to
plaintiff).
(1) Same landscaping, typeface, building copied, cars, two-way street.
(2) Different avenues, Empire State and Chrysler buildings added.
(3) But overall feel very similar.
(4) Not surprising given defendant’s admission of intent to copy
“look.”
(5) Cf. Koons (many similarities but very different overall look and
feel).
c. Photographs of musician seated below poster at Village Vanguard. Kisch
(summary judgment denied defendant).
(1) Same lighting, location, feel in original and ad.
(2) Argue that finding of infringement would not impede progress of
arts and sciences because an advertising use.
(a) Raises commercial speech/First Amendment issues.
(b) Violates nondiscrimination rule of Bleistein.
d. What if defendant created but sold original copyright.
(1) No difference. Gross (1910 court offended by subject matter?).
(2) Permitted under idea–expression dichotomy. Franklin Mint.
(3) Permitted in Fogerty (distinguishable because didn’t copy notes or
words, just style?).
(4) Balance incentive to create new work and ability to draw on old.

C. Right to Make Phonorecords

1. 1909 Act.
a. Records were “captured performances” and not considered released for
purposes of statutory copyright until printed scores were published.
(1) Possibility of perpetual copyright.
(2) But also vulnerable to piracy.
b. State not preempted from fashioning remedies for piracy. Goldstein.
2. Current statute, § 114 of 1976 Act, derived from Sound Recording Act of 1971
(effective 1972).
a. Covers only captured sounds.
(1) Protects against literal copying of sound on recording.
(2) No protection against new arrangement of music on recording
(e.g., no right of performance under § 106(4)). § 114(a).
b. Sampling.
(1) Because holder of Ⓟ has only one right, many courts have strictly
interpreted prohibition on captured sound and protected against
sampling.
(2) Contra is that Congress intended only to protect against piracy, not
taking of small pieces.

3. Compulsory license after copyright owner distributes work to public. § 115.

a. Background.
(1) Copyright covers only the right to perform the music but not the
right to make the devices by which the music is performed (piano
rolls). White–Smith Music v. Apollo.
(2) In granting copyright owners the right to make these devices, fear
of monopoly by powerful music companies led Congress to
institute compulsory license requirement. §§ 1(e), 101(e) of the
1909 Act.
(3) Retained in § 115 of 1976 Act.
b. Within 30 days of distribution of recording, must serve notice of intent to
obtain compulsory license on copyright owner. § 115(b)(1).
(1) Failure to do so may lead to criminal as well as civil penalties
under §§ 502, 506–09.
c. Requirements and availability. § 115(a).
(1) Available only if primary purpose is to distribute “to the public for
private use” (not available if purpose is commercial, i.e., jukebox).
(2) Sound recording must be legally fixed and must be authorized by
copyright owner.
d. Scope: recording must “not change the basic melody or character of the
work,” although there is privilege of arranging work “to the extent
necessary to conform it to the style or manner of interpretation of the
performance involved.” § 115(a)(2).
(1) No right to travesty or pervert or distort work. H.R. REP. NO. 94-
1476. But see Acuff–Rose for fair use.
(2) Recording not protectible as a derivative work without express
consent of copyright owner.
e. Mechanics: Harry Fox agency (clearinghouse for enormous number of
composers). Contract rights replace statute.
f. Current economics.
(1) Companies and copyright owners debate rise in per-record royalty.
(a) Record prices have gone up more quickly than
compensation to copyright owners.
 (b) But higher rates would result in still higher record prices or
demise of marginal record companies, both with attendant
negative impact on consumers.
(2) Congress passes the buck to Copyright Tribunal.

4. Audio Home Recording Act of 1992. § 1000–10.

a. Imposes royalty requirement but allows home taping.
(1) Best compromise they could achieve?
(2) Alternative would be to outlaw equipment, which has variety of
nonviolative uses.
(3) Moreover, idea you can’t take advantage of new technology is
unpopular (e.g., proscribe photocopying of law review articles for
research purposes, requiring one to take elaborate notes).
(4) Use of copy protection on original did not work with software.
b. Terms of compromise.
(1) Compulsory royalty on tape.
(2) Equipment designed so that one copying is possible only from
original, not copy.
c. Biggest problem facing copyright lawyers is noncommercial copying.

D. Right to Make Derivative Copies

1. Introduction.
a. First sale doctrine permits purchaser to dispose of copy as he or she sees
fit. because copyright owner has already received expected value.
b. In some instances, however, this may collide with copyright owner’s right
to make derivative work.
(1) Gluing of original copies of art reprints from book onto tiles.
Mirage.
(2) Assembly of pictures from old issues of National Geographic.
c. These are not adaptations or derivative works in usual sense; neither are
they typical first sale uses, however.

2. Arguments against violation.

a. Copyright owner already profited on first sale.
b. Copyright protects against copying of particular work, not against
competition in particular market. But if it is a derivative work, owner
should have right to control that market, no?

3. Arguments for violation.

a. Transformation of original in way author might not have permitted, e.g.,
mutilation. See Gilliam.
b. Misattribution.
(1) Free riding.
(2) Tarnishment.
c. Moral rights. See infra.
 4. Derivative work must have “form or permanence.” Work that enhances but does
not replace copyrighted works is not a derivative work. Galoob Toys.
a. Game Genie does not make any permanent alterations in Nintendo game.
Temporary alteration of article does not constitute derivative work.
b. Standalone spell-checkers are not derivatives.

5. But speeded-up version of video game using computer chip that copies and
substantially replaces the original chip is a derivative work. Midway.
a. Purchasers of chip then resold the speeded-up version.

6. Still photographs of ballet a derivative of copyright choreography. Horgan.

a. Same as taking stills from a film.
b. Contra: in movies, copyright resides in individual frames but in
choreography copyright resides in the movement.
c. Market for such a book.
d. But rather than examining whether copyright owner would want to exploit
a new market, analysis should focus on what copyright protects and what
defendant has done.

7. No action for violation of moral right, but mutilation actionable as infringement

of derivative right and as false designation of source. Gilliam.
a. Contract.
(1) BBC had final say on disputes.
(2) BBC also had right to license to commercial broadcasters.
(3) Practice in industry of commercials favored insertion of
commercials but course of dealing between Pythons and BBC
favored no commercials
(4) Court: nothing in original contract gave BBC right to make
changes once program had been aired. ABC had no right to
bowdlerize script.
b. Bowdlerization constituted infringement of derivative right owned by
Pythons.
(1) Some question though whether less editing or only against
offensive material would constitute infringement.
(2) DZ: problem with this argument is that all license would have to be
renegotiated.
c. False designation of source.
(1) ABC disclaimer was insufficient.
(2) Theoretically disclaimer could eliminate remedy. DZ some
dispute.
d. First U.S. case to focus not on economic benefit but artistic integrity.
Recognized work as having special meaning to those who created it.

E. Moral Rights
1. Basis is Lockean notion that one has right to fruits of one’s own labor — a liberty
 interest, not just an economic interest. The right to ownership of one’s ideas and
the right to control how they are used by others.

2. Protects.
a. Right not to have work falsely attributed. Right to receive credit for what
you’ve done.
b. Right to be protected against deforming changes.
c. Right to reputation.
(1) Right not to have work used in ways that cast aspersions on you.
(2) May overlap with 2 but needn’t involve deforming changes, could
involve derisive use (but MC query First Amendment here).

3. Alienability.
a. Distinct from economic rights and exists following transfer of copyright.
b. Berne does not prohibit transfer or alienation of moral rights so long as
transfer of economic rights is not deemed of itself to effect a transfer of
moral rights.
(1) Under moral rights, Pythons would have had action even if they
had transferred copyright in underlying script.

4. Berne Convention.
a. Requires that copyright laws of member states provide minimum level of
protection for moral rights.
b. Debate whether already covered in United States under § 43(a) and
Gilliam reading of derivative rights.

5. Duration.
a. Duration of copyright under Berne. 6bis.
b. Life of author under VARA.

6. VARA.
a. Protects only works of visual art. § 106A. Reason is lobbying of book
publishers, magazines, and newspapers, who argued that it would interfere
with freedom to edit and muck up traditional expectations.
b. Works of visual art narrowly defined. § 101.
(1) Applies only to painting, drawing, print, sculpture, or photo (for
exhibition only) in single copy or signed, numbered, limited (200
or less) edition.
(2) Excludes posters, maps, globes, charts, technical drawings,
models, diagrams, applied art, films or other audiovisual works,
books, magazines, newspapers, periodicals, databases, and
electronic information services or publications.
c. Other exclusions.
(1) Work for hire.
(2) Works of applied art.
(3) Works not of recognized stature (do not qualify for protection from
 destruction).
d. Effective date: applies to works created after 6/1/91 or created before but
where ownership not transferred until after.
e. Scope of protection.
(1) Right of attribution. § 106A(a)(1).
(a) Claim authorship of work.
(b) Prevent use of name as author of work he or she did not
create.
(2) Right of integrity. § 106A(a)(2).
(a) Prevent use of name as author of work in event work is
distorted or mutilated or modified in way to damage his or
her reputation.
(b) Prevent distortion, mutilation or modification of work that
would be prejudicial to reputation.
(3) Prevent destruction of work or recognized stature (violated by
intentional or grossly negligent destruction), subject to limitations
in § 113. § 106A(a)(3).
(a) Destruction permitted if work installed before effective
date of act (6/1/91) or if author waives in writing. §
113(d)(1)
f. Preemption. § 301(f).
(1) Preempts state law covering similar rights.
(2) Does not preempt.
(a) State law protecting different rights.
(b) Works created before effective date.
(c) State law protecting similar rights after life of author.
g. Incorporation of elements of applied art does not preclude work from
being “work of visual art” under VARA. Carter.

7. Queries/problems with VARA.

a. Determining works of “recognized stature” is exactly what courts are
supposed to avoid. Bleistein.
b. Taking when landlord is bound by agreement made by bankrupt tenant.
Carter may be reversed on this or on questionable work for hire analysis.

8. Placing moral rights within our system.

a. Right of attribution doesn’t present any particular problem.
b. Right of integrity more problematic.
(1) Tension with First Amendment if used to censor negative
commentary. See, e.g., Wojnarowicz (distorted picture of artist’s
opus by selective fragmentation of most offensive portions).
(2) But § 106A yields to fair use, so parody would be allowed.
(3) If extended, could allow playwright to challenge adaptation despite
having granted derivative rights (Beckett included such limiting
language in derivative grant, but this would not be necessary under
moral rights).
F. Right to Distribute
1. Copyright owner’s right of distribution limited by first sale doctrine. § 109(a).
a. Limit profits copyright owner can earn from each sale if people can buy
(cheaper) second-hand copies. Based on concern that people should have
access to cheap copies. See STATUTE OF ANNE provision allowing petition
if book sold at “high and unreasonable price.”
b. Rebinding of comics into compilation protected under first sale doctrine.
Fawcett (§ 27 of ’09 Act). Cf. National Geographic (violation of
derivative right where compilation involves selection of particular
articles).
c. First sale doctrine supersedes importation right, § 602(a), whether original
was sold in U.S. or abroad. Sebastian Int’l.

2. Two statutory exceptions to first sale doctrine — Record Rental Amendment of

1984 and Computer Software Rental Amendment of 1988 — prohibit rentals of
records/software. § 109(b).
a. Rentals were not only cutting into profits but were displacing first sales.
b. DZ: with royalties required under Digital Software Act, is this now
redundant/unnecessary?

3. Droit de suite: based on belief that authors should share in the subsequent
profitable distribution of their works, provides that artist shares in profits accruing
to subsequent purchasers from appreciation of value of work.
a. Typically done with tax dollars in Europe.
b. In United States, only California has such a statute.

G. Right of Public Performance

1. Under 1909 Act, copyright owner had exclusive right to perform
a. Publicly.
b. For profit.
(1) Includes entertainment for which there is no direct charge.
Herbert (Holmes, J.) (music with dinner).

2. Major issue under ’09 Act was whether retransmission of live performance
created multiple performances.
a. Radio broadcast (without license) that is picked up in hotel and
rebroadcast to dinner room creates violation. Jewell–LaSalle.
(1) At least two performances — original radio broadcast and
retransmission to dining room — plus possible performance by
turning on radio.
(2) Peculiar facts made it unclear where violation lay — in original
broadcast without license, in turning on radio, or in retransmission.
b. Retransmission by cable company of television broadcast in local area is
not a performance. Fortnightly.
 (1) Only enhances ability of viewers to receive signal.
(2) Compensation by cable would be double dipping.
(3) Market mechanism exists to compensate copyright owner, namely
raise advertising rates based on enlarged audience.
(4) Confines Jewell–LaSalle to its facts (unauthorized broadcast says
book; which facts says DZ).
c. Importation of distant signals no differently functionally from
strengthening of local signals; neither is a separate performance.
Teleprompter.
(1) Fact that some advertisers may not choose to pay additional fee to
reach distant market not a consideration for courts.
(2) Nor is fact that rechanneling of programs into secondary markets
may diminish profitability of “second run” uses.
d. Rebroadcast of radio signals in fast-food restaurant not a performance.
Aiken.
(1) Confines Jewell–LaSalle to unauthorized broadcast.
(2) Virtually eliminates multiple performance doctrine.

3. 1976 Act accepts multiple performance doctrine: clause 2 of the definition of

“publicly” makes clear that the concepts of public performance and public display
include not only performances and displays that occur initially in a public place,
but also acts that transmit or otherwise communication a performance or display
to the public by means of any device or process.” H.T. REP. NO. 94-1476.

4. 1976 Act.
a. To perform is to recite, render, play, dance, or act a work, either directly
or by means of any device or process. § 101.
b. To perform publicly means to
(1) To perform or display a work at a place open to the public or at
any place where a substantial number of persons outside of a
normal circle of a family and its social acquaintances are gathered;
or
(2) To transmit or otherwise communicate a performance or display of
the work to a place specified in (1), or to the public, by means of
any device or process, whether the members of the public capable
of receiving the performance or display receive it in the same place
or in separate places and at the same time or a different times.
c. Thus the fact that the program is received in your living room does not
make it private.
d. House Report: not only the initial rendition but any further act by which
that rendition is transmitted to public constitutes a performance.

5. First sale doctrine allows one who rents or buys tape to watch at home.

6. Major issue under ’76 Act is public versus private.

a. Pre-’76 decision held not public because private gathering (at public club).
 MGM v. Wyatt.
b. Under Act, Congress wanted to make clear that performances in
semipublic places (i.e., places that were not open to all but to segments of
public, e.g., private clubs or country clubs) were public performances
subject to copyright control.
c. Does public depend on nature of group or nature of place?
(1) Ninth circuit looks at group and nature of group rather than place.
(a) Would others outside group have access? If not, and group
is private, then private.
(b) MC: looking at nature of group distinguishes this from
MGM.
(2) Third circuit looks at nature of place. If it is quasi-public, that is,
open to public but you have exclusive use for a period, then it is
public. Aveco.
(a) In Redd Horne, performance from central area, open to
public, piped into private booths.
(b) Court holds that booth is not private simply because others
can be excluded while it is being used any more than taxi or
pay toilet is private.
(c) That is, court holds that pertinent place was the entire store,
so that private nature of viewing room is not relevant.
(d) And yet does it make sense that under first sale doctrine,
same renter can view same tape at home without liability?
(3) What about renting tapes in motel room?
(a) Under Aveco focus on quasi-public, would probably be
public; under nature of the group (private individuals
renting room) would not.
(b) Viewing is incidental to principal nature of hotel, providing
accommodations, and while hotel is open to public rented
room is not. Columbia Pictures v. Professional Real
Estate Investors (9th Cir.).
(4) But renting in hotel room, where signals are electronically
delivered from front desk to television in room, while not a
performance in a public place, under Columbia Pictures’ reading
of clause 1, nevertheless is a transmission under clause 2. On
Command Video (N.D. Cal.).

7. Clearinghouses.
a. Transaction costs have real impact on compliance.
(1) Difficulty and expense of finding copyright owners.
(2) Nightmare putting together copyrighted material for classes and
copyright owners (NYT) have inflated idea of worth of material.
DZ gave up.
b. In terrorem effect of suits. Ocasek v. Hegglund.

8. Homestyle (Aikens) exemption. § 110(5).

 a. Congressional intent was to track Aikens and exempt mom-and-pop
operations from obtaining license to play music for employees.
b. But statute does not restrict as to size of establishment: communication of
a transmissions embodying a performance or display of a work by the
public reception of the transmission on a single receiving apparatus of a
kind commonly used in private homes, unless (A) a direct charge is made
to see or hear the transmission; or (B) the transmission thus received is
further transmitted to the public.
c. Eighth Circuit refuses to go beyond plain meaning and finds exemption
where large chain that could afford license adheres to language of statute
(i.e., avoids complicated wiring or “commercial” sound system). Edison.
d. Second Circuit looks at intent for Aikens.
e. Size of chain irrelevant where there is only one recording system per store.
Clair’s Boutiques (669 receivers).
(1) Focus on individual situs where music is being played.
(2) Although financial strength of defendant (“small business owner”)
repeatedly noted in legislative history, text of statute makes
distinction on basis of type of sound equipment and mode of
transmission.
f. “Music on hold” does not qualify for exemption because it is not a home-
type apparatus. Prophet Music.

9. Other exemptions.
a. Many go to public performance and display. §§ 107–120.
b. Cable exemptions part of Congress’s attempt not to stifle expansion of
cable (§§ 111, 119 adopt Fortnightly, reject Teleprompter).
(1) Right to retransmit locally without violation of copyright . § 111.
(2) No right to broadcast outside area, must get license, but
compulsory license available if negotiations fail. § 119 (satellite
transmission).
(3) Broadcasters don’t like special advantages; argue that favorable
treatment should be eliminated because cable is no longer
operating at a disability.
c. Profit nature may affect.
(1) Teaching use in classroom of nonprofit institution.
(2) But some nonprofit institutions believed to have sufficient funds to
pay.
d. Juke boxes no longer automatically get compulsory licenses; now must
bargain with copyright owner first; if negotiations fail, then compulsory
license available. § 116.
VII. FAIR USE
A. Introduction
1. First articulated in Folsom v. Marsh.
a. Establishing as opposing poles “fair and reasonable criticism” and
usurpation designed “to supersede the original work,” Justice Story
suggested criteria under which use of copyrighted material would not
constitute an infringement.
b. If the idea–expression dichotomy defines the boundary between the First
Amendment and the Copyright Clause, the “fair use” doctrine carves an
exception to the limited monopoly from within copyright.
c. The general consensus is that the copyright interest will predominate in all
other instances (DZ: most other instances).

2. Judge-made doctrine now codified at § 107.

a. 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;
(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.

3. Why permit?
a. Benefit to public. Rosemont.
b. Implied consent (Latman).
(1) Saves search charges of obtaining consent that owner would have
granted in any case.
(2) But wouldn’t apply to parody.
c. Tort privilege like qualified privilege in defamation (Arthur Miller).
d. Best reason: mediate between Copyright Clause and First Amendment.

4. DZ: prior to Sony, leading fair use decision had been Rosemont.
a. Fair use advances goals of copyright to benefit public.
b. Hughes was buying up old copyrights in order to prevent dissemination of
information.
(1) Proper remedy was in privacy.
(2) Note also that book was trade — rather than scholarly —
biography.
c. Text notes that Rosemont and Folsom represent opposite poles of
doctrine, with Folsom concentrating on harm to original author and
Rosemont on benefit to public.

5. Use of videotape machine for “time shifting” is fair use. Sony.

a. Go after manufacturers as contributory infringers.
 b. Are there any noninfringing uses? Yes, time shifting (but library building
not okay). Compare machine that allowed purchaser to break anti-
copying code on commercial tapes; that would have no noninfringing use.
c. Does court’s (unfortunate) dictum that commercial use is presumptively
unfair mean that noncommercial uses are presumptively fair? Majority
seems to think so. (“The contrary presumption is appropriate here.”)
d. DZ: finding of no fair use would have prevented distribution of modern
equipment. MC: still, Blackmun still right on fair use analysis because use
was (1) nonproductive, (2) entirety of copyrighted material, and (3) people
did build libraries.
e. Best result would have been royalty on tapes, as with digital tape act.
f. Effect of Sony.
(1) Pushes the limits of liberality where defendant uses entirety of
work and use is nonproductive.
(2) Suggestion that burden of proof with noncommercial use is on
plaintiff to show absence of fair use, with burden shifting only
where use is commercial.
(3) Holding that fair use is an affirmative defense provides corrective.
Acuff-Rose.

6. Nature of the use.

a. Commercial use.
(1) Sony dictum that commercial use is presumptively unfair.
(2) Acuff-Rose corrective that commercial use is not dispositive; focus
on transformative nature of use. Folsom; first factor is “the soul of
fair use” (Leval).
(3) But neither is the absence of transformative use dispositive.
Duncan (selling of entire videoclip to subjects of report). Court
must examine all factors.
b. Enlivening text — not putting name to pedestrian sentence — weighs
against fair use.
c. Quotation to lend authenticity rejected. Harper & Row.
d. Quotation for historical accuracy, to show writer’s style, or to unmask
writer’s racism weighs in favor. Leval.
(1) DZ: this involves difficult line drawing, however.
(2) Miner rejects in dicta. New Era.
(3) More taking of quotation for this purpose permitted with respect to
published works, however. Craft (still court found the amount of
taking to be excessive).

7. Unpublished works.
a. Prior to ’76 Act, perpetual common law copyright in unpublished works
was not subject to fair use.
b. Prince Albert case enjoined even writing about details (facts) of
engraving.
c. With common law copyright subsumed into statutory copyright and the
 right of first publication in § 106 subject to fair use in § 107, question
became whether fair use should be applied differently with unpublished
works.
(1) Congress silent on this.
(2) Even after ’92 Amendment, no guidance on how to apply.
d. No one thought about impact of fair use on unpublished works until
Harper & Row raised the question and Salinger brought it home in a very
practical way.
e. Some works can be damaged more than others (e.g., workbooks designed
for one-time use will sell less copies if photocopied).

8. Unpublished works present issues not present in published works.

9. Nature of the work.

a. Right of first publication.
b. Allows copyright owner to bargain; once work is scooped, benefit is lost.
(1) But in Salinger and New Era, issue was preventing publication
entirely. Salinger used copyright to protect privacy interest
because as public figure who released letters, unlikely to have
succeeded on privacy claim.
(2) Yet value of letters flowed from their unpublished nature.
(3) And privacy right developed from common law copyright
(Brandeis and Warren from Prince Albert).
(4) Also note that publication of private diaries would present different
issue.
c. Right not to speak until ready. Inverse First Amendment.
(1) Artistic or intellectual control over work.
(2) These are moral rights.
(a) Limiting recovery to damages in First Amendment cases
would vindicate economic but not moral/privacy rights.
(b) Miner rejected but Court cites Leval in dicta in Acuff-Rose.
d. All these rights present issues not present with published works.

10. Amount and substantiality of use.

a. We’re not talking about copying entire work, like recently uncovered book
of Emily Dickinson poems, just selected pieces.
b. After Hamilton removes substantial number of quotations, left with 200
actual quotes and 59 close paraphrases. Value of work because never
published.
c. Ford account of Nixon pardon was heart of work (heart of work argument
applied to published works in Wainwright).
d. Without finding that the 300–400 quotations and close paraphrases in
Nation were heart of the work, effect on the market would have been
irrelevant.
(1) Second circuit had found that the “evidence did not support a
finding that it was the very limited use of expression per se which
 led to Time’s decision not to print the excerpt.”
(2) Court finds that “in using generous verbatim excerpts . . . to lend
authenticity to its account of the forthcoming memoirs, The Nation
effectively arrogated to itself the right of first publication.”

11. Effect on the market.

a. Supreme Court focus on noninfringing use of videotape limits discussion
to market effect of time shifting (harm in library building easier to
establish). Sony.
(1) Difficult to show harm from time shifting.
(a) Cannot measure loss of advertising revenue from
commercial zapping.
(b) Could argue that plaintiffs should have controlled
secondary market for time shifting, e.g., syndication and
rebroadcast.
(2) Case penalizes copyright owner for failure to exploit secondary
market.
(3) Many fair use cases involve the question of who is entitled to
exploit market created when a new technology, e.g., photocopying,
digital recording, etc., allows a new way of interacting with
copyright owner’s work.
b. Convincing showing of harm to the market in Harper & Row, but
dependent on finding that it was taking of protected expression — and not
unprotected facts, ideas, and information — that caused Time to cancel.
Brennan, J, dissenting (“The failure to distinguish between information
and literary form permeates every aspect of the Court’s fair-use analysis
and leads the Court to the wrong result in this case.”)
c. Unconvincing in Salinger. DZ: this amount of quotation wouldn’t stop
people from buying complete letters if Salinger had released them.

12. First Amendment.

a. Limit recovery to damages.
b. Don’t allow someone to put price on history. Geis.
B. Parody
1. Pro.
a. No plagiarism — author normally identifies the borrowed work and writes
for an audience familiar with that work.
b. No substitution because of likely stylistic differences.
c. To “work,” parody must conjure up original.
d. Unlikely original copyright owner would license parody.
e. Social benefit in shedding light on earlier work.
f. Criticism comes with the territory.

2. Con.
a. Negative impact on derivative market.
b. Disincentive to future works/moral rights argument.
c. Parody doesn’t extend human knowledge.

3. Tests.
a. No extra fair-use breathing space for parody. Loews.
(1) Fifteen-minute takeoff of “Gaslight” involved “substantial” taking.
(2) Affirmed by equally divided Court.
b. Can take enough to “conjure up” original. Berlin.
(1) Thin borrowing — few words, familiar meter.
(2) Irving Berlin cannot claim copyright in iambic pentameter.
c. But not permitted to make “best parody.” Air Pirates.
(1) Repudiates position in Loews but still grudging.
(2) See also Columbia Pictures (Sid Caesar parody of “From Here to
Eternity” was slapstick in the extreme and did not involve more
than was necessary to conjure up original.

4. Less justification for satire than parody because parody needs to take author’s
style to be effective (Van Graafeiland says no fair use unless parody of underlying
work).

5. Distinguish harm caused by parody from harm caused by substitution. Acuff-

Rose.

6. But substitution includes the derivative market.

a. Was there a market for a rap version of “Pretty Woman?”
(1) MC: think of derivatives more in terms of different medium.
(2) DZ: sound recordings compulsory license excludes “derivative”
work.
b. Pretty weak argument in Koons.

7. Nature of parody: Defendants traditional losers on sleaze factor But Acuff-Rose

holds that “whether parody is in good taste or bad does not and should not matter
to fair use.”
C. Photocopying
1. How does law deal with technological changes that result in faster, more effective
means of copying?
a. People used to take notes from articles — now they can photocopy entire
article and make notes in the margin.
b. With information superhighway will be possible to digitally download
enormous amounts of copyrighted data.
c. Photocopying left largely unresolved under current law because Congress
not willing to take on issue at the end of long struggle to pass ’76 Act.

2. Developing a standard.
a. Poles: commercial copying will normally be infringement and home use
(analogize to Sony) will normally be fair use, but schools and libraries fall
in between.
b. § 108 covers exemption for general and research libraries. Other libraries
must be analyzed under § 107.
(1) Requirements: library must be open to public, reproduction must
not involve commercial gain and must be for archival purpose, and
work must include copyright notice.
(2) Covers unpublished works in other libraries or own collection and
published works only for replacement of damaged or lost copy and
if no new copy can be obtained at fair price.
(3) Exemption extends to copier but not to person requesting copy.
c. Guidelines of Ad Hoc Committee, AAP, and Authors League incorporated
within comment into legislative history of ’76 Act for educational
copying.
(1) Ungenerous standard for college (or even high school) level.
(a) 2500 word limit for short story, 250 word limit for poem.
(b) Permitted only if pressing need/deadline.
(2) Many groups (e.g., American Association of Law Schools) refused
to sign on.
(3) Precedential value uncertain.
(a) Some say no value because not debated (dicta squared).
(b) Some courts say a minimum, others a maximum standard.

3. No fair use in large-scale commercial copying even though for educational

purpose. Kinko’s.
a. DZ: different result if school did this? Extremely onerous and costly to
assemble copyrighted handouts.
b. CCC an analogue to music licensing clearinghouses.
4. Adaption of score, with mimeos given to students, is not a fair use. Whitol.

5. Hapless home ec teacher hammered. Marcus (omits copyright notice in

incorporating 11-page booklet into home ec book).
6. Fair use in NIH/NLM copying of scientific articles. Williams & Wilkins.

7. Availability of CCC changes the analysis because now use displaces market.
Texaco.
a. First factor favors plaintiffs.
(1) Leval: neither transformative nor noncommercial.
(2) Newman: commercial link is somewhat attenuated and there is
some value in conversion of original articles into new format, but
act of copying is not transformative and use was primarily archival
rather than in aid of research.
(3) Jacobs: Transformative and in aid of research even if archived.
b. Second factor favors defendant because work is principally factual in
nature.
c. Third factor favors plaintiff because copying of entire work.
d. Fourth factor.
(1) Newman: favors plaintiff because with availability of CCC use
displaces a market.
(a) Congress implicitly accepted notion that licensing under
CCC should be recognized by law.
i. § 108 narrowly circumscribes conditions under
which libraries are permitted to make copies.
ii. Legislative history shows that Congress suggested
that an efficient mechanism be established to
license photocopying.
(2) Jacobs.
(a) Publishers are already being compensated for photocopying
by raising institutional subscription rate on their journals.
i. DZ: Isn’t this what the Court said in Sony? You’re
already getting paid for time shifting.
ii. No double dipping. Teleprompter.
(b) Moreover, CCC only covers 30% of journals which Texaco
buys.
(c) DZ: Should creation of a market eliminate fair use? What
if publishers united to fund a bureaucracy that would
collect fees for parody? But see d(1).
(d) DZ: not a zero-sum game because defendants could simply
go back to taking notes. Of course, this would impede the
progress of the arts and sciences.
e. Commercial realities: publishers fear desktop publishing.
VIII. COMPUTER SOFTWARE
A. Overview
1. Most forms of copyrightable material is designed to communicate with ultimate
user.
a. Protecting source code was not a problem for copyright law because there
are those who can read and understand.
b. Object code, which converts source code into digitized format readable by
machine, is more difficult. See Franklin.

2. Separate out (for determining protection).

a. Literal language as written in source and expressed in object code.
b. Visual expression on screen.
c. Organizational parts.
d. User interface.

3. § 117 allows copying (1) to enter onto disk; (2) to make backup; and (3) to
transfer or lease so long as transferror retains no copy.

B. Object Code
1. Object code is copyrightable. Franklin.
a. Arguments against copyrightability.
(1) Source code is like the account book but object code is like the
ledger sheet in Baker v. Selden.
(2) Object code fails constitutional requirement of a writing because
only readable by expert few (like piano rolls in White–Smith
Music).
(3) What is communicated is not the writing but the application of the
program.
b. Arguments in favor of copyrightability.
(1) Language and legislative history make clear that 1976 Act was
intended to eliminate White–Smith Music distinction.
(2) CONTU majority took the position that object code is
copyrightable.
(3) Fits within definition of literary work: “numbers, or other . . .
numerical symbols or indicia.” § 101.
(4) Exception provided in § 117 to normal proscription against
copying indicates copyrightability of computer programs in
general.
(5) Copyright extends to works in any tangible means of expression
“from which they can be perceived, reproduced or otherwise
communicated, either directly or with the aid of a machine or
device.” § 102(a).
(6) Computer cannot read instructions until translated into object code
(DZ: like translating copyrightable work into foreign language).
2. Object code is subject of copyright whether embedded in ROM chip or contained
in written program. Franklin.
a. Rejects argument that it is copyrightable only in written form and not in
ROM.
b. ROM is how expression is fixed on computer.

3. Object code of operating system is copyrightable. Franklin.

a. Rejects argument that operating system software is unprotectable because
it involves a process, system, or method of operation, unlike applications
software.
(1) Both types of programs instruct the computer to do something. . . .
it should make no difference whether these instructions tell the
computer to help prepare an income tax return or to translate a
high level language program from source code into its binary
language object code form.
(2) § 101 does not distinguish between applications and operating
programs.
(3) Court does not address whether there should be a distinction
between computer programs that communicate directly to the
computer, but that nonetheless also yield a communication to a
human being, and programs that perform no function other than to
instruct the computer to perform internal operations and do not
produce further communications to human beings?
b. Rejects argument that operating system is purely utilitarian work, citing
Mazer and absence of distinction in § 101 definition of computer program
between operating system and application programs.
c. Rejects merger argument (i.e., limited number of ways to arrange
operating system to allow computer to run the vast majority of Apple-
compatible software).
(1) Idea which merges into expression is the idea which is the subject
of the expression. Here the idea of translating source code to
object code may be accomplished in other ways. If these other
ways do not create optimum compatibility with software written
for Apple, that is commercial reality and not merger.
(2) DZ — but then it is not functioning in the same way.
d. DZ — Franklin could have come out differently (with respect to operating
system object code). But without protection for object code, and
availability of cheap copying methods, developer’s investment would be
unprotected (INS of doubtful currency). Software developers add carrot of
manuals and tech support to induce purchase of legitimate copies. Reprise
of Breyer argument that copyright not necessary for books because other
market mechanisms exist.

4. Registration of only source code protects object code from copying. Data
General.
C. Nonliteral Elements
1. Copyright not limited to literal language (codes) but extends to “look and feel”
(structure/ sequence/ organization). Whelan.
a. Nonliteral elements protected by copyright (see comprehensive nonliteral
similarity) and computer programs covered by copyright.
b. Court thus uses Hand’s abstractions test.
c. Court does not distinguish between the level of protection for fiction
versus fact (see, e.g., Rosemont, Feist) or function (see Baker) and
minimizes fact that it’s easier to determine function of program than
function of literary work.
d. Court also very broadly identifies function as a program to run a dental
office. Since there is obviously more than one way to design program,
any similarities equal copying.
e. By contrast, Altai recognizes that there is no single “idea” for program but
that each subroutine may itself involve an idea.

2. Competing model offered by Judge Walker. Altai.

a. Two-step process.
(1) First identify similarities from the highest level of abstraction to
the most particular (cf. Whelan, which broadly identified idea).
(2) Then filter to remove elements (1) in public domain, (2) dictated
by external factors, (i.e., scènes a faire) and (3) dictated by
efficiency (i.e., merger).
b. Starting point is different from Whelan because of more sensitive
application of abstractions test.
c. Court also recognizes that essentially utilitarian nature of program means
that copyright in computer program should not be given the dense
protection available to copyright in novel (or that Whelan gave to
computer program).
(1) Somewhere between fact-based and fully creative work.
(2) Highly creative but for functional purpose.
d. Court hints that its analysis could leave no room for nonliteral language.
e. DZ.
(1) Third possibility is that none of this is expression and that
expression is limited to literal language.
(2) Cannot use copyright to protect competitive advantage. Borland
(3) Danger in expanding copyright law to protect because broader
protection would rebound into other areas of copyright.

D. User Interface
1. Crucial test in separating idea from expression is whether it could have been
expressed differently. Paperback, Borland (trial court) (macros and function
keys protected).
a. If you could do it differently, you must do it differently.
b. While spreadsheet would be hard to configure in fashion other than rotated
 “L” and few labels available to activate menu, there were many
alternatives to labeling of function keys and operation of macros.
(1) “Quit” for “exit” and so on.
(2) Design interface for translating macros, as did Quattro Pro.

2. User interface (function keys, macros, etc.) are not copyrightable because they are
methods of operation. Borland.
a. May look like words but basic character are buttons that operate machine.
b. Altai filtration not appropriate because this is literal copying of interface
rather than nonliteral copying of program.
c. DZ — danger of using Altai is that is starts from the premise that
something is there to be protected.

3. OTSOG: when someone develops something new and important, something that
becomes industry standard, it prevents others from building on it — and thus goes
against the rationale of copyright — if we allow them to control it. Borland.
a. Keeton — but if we don’t give protection, there’s no incentive; we should
not withdraw protection from the most creative designs just because they
become industry standards and protect only the mundane.
b. Borland — just because something is valuable doesn’t mean it’s
expression.
(1) Don’t ask copyright to protect something it’s not designed to
protect.
(2) Doing so will spill back into rest of copyright, broadening
protection.

E. Screen Displays
1. Pictorial screen display protected. Soft Clone.

2. “Look and feel” of Apple screen display not protected. Apple.

a. Overlapping windows
b. But summary judgment denied as to opening/closing screens (numerous
possible displays).
c. Iconic images may be protectible.
d. But protection is extremely thin.
The law of the Ninth Circuit makes plain, however, that
when any of the various doctrines that limit the scope of
protectibility are in operation, the affected expression may
provide a basis for a claim of infringement only if the
alleged copy is virtually identical to the plaintiff’s version.
e. Cf. protection of “look and feel” in Steinberg. Should we be treating
software less favorably? Does functional nature of program warrant
overlooking similar look and feel?

F. Fair Use
 1. Reverse engineering a fair use. Sega.
a. Similar problem to Franklin, copying to effect compatibility.
(1) Here, however, there is only intermediate copying as a step to
understanding how program interacts with hardware in order to
design compatible software.
(2) Court holds that plain meaning of Act rejects argument that
intermediate copying is not an infringement unless final program is
substantially similar.
b. Fair use analysis.
(1) Purpose of the use.
(a) Trial court awards first factor to plaintiff because
commercial purpose to compete with plaintiff.
(b) Ninth circuit points to fact that direct purpose of copying
was to understand code and not to compete (of course
competing was the ultimate purpose).
(c) Also points to the public benefit.
(2) Nature of the work: less protection available for functional/factual
than fictional works.
(3) Copying of all of work favors plaintiff but is not dispositive. Sony.
(4) Effect on the market.
(a) Does not compete because consumers typically buy more
than one game.
(b) But this ignores the fact that defendant could compete in
licensing of program that would be compatible.
c. Unique factors driving decision.
(1) Decompiling involved a great deal of effort; not like straight
copying, which involves minimal investment.
(2) Plaintiff already protected by Copyright Office’s deposit
requirements (only first and last 25 pages and ability to delete
“trade secrets” from program deposited).
d. We want originator to be able to recoup investment. Model for this is
Semiconductor Chip Act.

G. Semiconductor Chip Act

1. Copyright law rejected as source of protection.
a. As “two dimensional” and “three dimensional” works under § 113, they
would not be protectable because utility would be inseparable from
design.
b. Under UCC, also would require U.S. to protect other countries’ chips
while not requiring analogous protection of U.S. chips abroad.
c. Length of protection would impede progress in field because advances are
incremental and built upon existing technology.

2. Protection is limited to configuration of chip (and does not include informational

content).
3. Must show some originality (more than just originating with author).

4. Competitor and academics can reverse engineer and copy so long as they come
out with new product designed as advance (can build on but cannot pirate).
Required to keep a record of steps from reverse engineering through final product.

5. More protection for innocent infringers (no liability for accidental import or
purchase).

6. Questions.
a. Does Congress have authority to enact under Copyright Clause?
(Commerce Clause would be adequate of course).
b. No judicial gloss of terms in new statute.
c. Had to negotiate agreements separately with other countries because not
part of Copyright Act.
IX. APPENDIX

DURATION

Date of Work Protection Attaches First Term Renewal Term

Post-1/1/78 Upon fixation in Life + 50.

tangible medium. If anonymous or pseudonymous, 75 from
publication or 100 from creation, whichever
comes first.
1/1/64-12/31/77 Upon publication 28 years. 47 years; renewal is
with notice. automatic/registratio
n optional (but absent
voluntary renewal
statutory heirs will
take if author dies
during final year of
initial term)
75 years ago and Upon publication 28 years. 47 years if renewed
12/31/63 with notice. in final year of initial
term.
More than 75 years Work is now public domain.
ago.
Created, but not Covered by federal Unitary term of at least life + 50 (or, if
published, before copyright as of anonymous or pseudonymous, 75 from
1/1/78. 1/1/78 publication or 100 from creation, whichever
comes first), with earliest expiration on
12/31/02.
If published, term extends to 12/31/27.
 TERMINATION PROVISIONS
§ 304(c)
Grants Transfers or licenses of renewal
covered rights
Executed before 1/1/78
By author or immediate survivors,
statutory or intestate successors
Where statutory copyright existent
on 1/1/78 (does not cover common
law copyrights)
Person 1. If original grant was by author.
who may a. Author or majority of co-
exercise authors.
b. Surviving spouse (if no
children or grandchildren) or
majority action by children
(and children of any deceased
child) if no surviving spouse.
c. Majority action by surviving
spouse (50%) and children
(and children of any deceased
child) (50%).
d. Children’s interests per stirpes
and dead children’s interests
exercisable only by majority
of them.
2. If original grant by others, all
surviving grantors.
a. Cf. termination by majority of
this same group sufficient if
renewal grant had been by
author.
b. If no one in this group alive,
grant cannot be terminated.
Date Five-year window beginning at end of
56th year of copyright or 1/1/78,
whichever is later.
Upon 2–10 years’ notice.
§ 203
Transfers or licenses of any rights
Executed on or after 1/1/78
By author
As to any work (whether in first,
renewal, or unitary term or common
law)
1. Only available where initial grant
was by author.
a. Author or majority of co-
authors.
b. Surviving spouse (if no children
or grandchildren) or majority
action by children (and
children of any deceased child)
if no surviving spouse.
c. Majority action by surviving
spouse (50%) and children (and
children of any deceased child)
(50%).
d. Children’s interests per stirpes
and dead children’s interests
exercisable only by majority of
them.
Five-year window beginning at end of
35 years from date of grant (or if grant
covers right of publication, 35 years
after date of publication or 40 years
after date of grant).
Upon 2–10 years’ notice.
 FORMALITIES

Pre-1978 1978–Feb. 1989 Post-1989

Notice Federal copyright Copyright upon Optional. Incentive:

upon publication fixation; notice notice prevents
with notice; absent perfects; five years to innocent infringer
notice, work is public cure omissions, defense.
domain otherwise public
domain
Registration Optional until last Optional, but Optional for non-
year of first term; prerequisite to suit. U.S. Berne works.
mandatory for Incentive: statutory Remains prerequisite
renewal of works damages and to suit for all others.
first published before attorneys’ fees not Incentive: statutory
1964; prerequisite to available unless work damages and
infringement suit registered before attorneys’ fees not
during both terms. infringement (or < 3 available unless work
mo of publication) registered before
infringement (or < 3
mo of publication)
Deposit Prerequisite to suit; Prerequisite to suit; No longer
fines may be imposed fines may be imposed prerequisite to suit
for failure to deposit for failure to deposit for non-U.S. Berne
with Library of with Library of works, but fines may
Congress. Congress. still be imposed.
Recordation of Unrecorded transfer Same, plus a No longer
transfer void against prerequisite to suit. prerequisite to suit.
subsequent bona fide But unrecorded
purchaser for value. transfer is void
against subsequent
bona fide purchaser
for value.
 CONTENTS

I. .......................................................................................................................... INTRODUCTION
..............................................................................................................................................1
A............................................................................................ Policies Supporting Copyright
..................................................................................................................................1
B. ................................................................................................................................History
..................................................................................................................................1
C. ............................................................................................................................ Coverage
..................................................................................................................................3
D........................................................................... Interplay with Other Forms of Protection
..................................................................................................................................4
E. ........................................................................ Distinction between Copyright and Object
..................................................................................................................................4

II. .................................................................................................................COPYRIGHTABILITY
..............................................................................................................................................6
A............................................................................................................................... Fixation
..................................................................................................................................6
B. ............................................................................Copyrightable Subject Matter. § 102(a)
..................................................................................................................................6
C. ................................................................................................ Requirement of Originality
..................................................................................................................................6
D............................................................................................... Idea–Expression Dichotomy
..................................................................................................................................7
E. ...................................................................................................... Facts and Compilations
..................................................................................................................................9
F. ............................................................................................................... Derivative Works
................................................................................................................................15
G........................................................................... Pictorial, Graphic, and Sculptural Works
................................................................................................................................18
H............................................................................................................ Architectural Works
................................................................................................................................21
I. ........................................................................................................................... Characters
................................................................................................................................22
J. ............................................................................................. Summary of Copyrightability
................................................................................................................................23

III........................................................................................................ COPYRIGHT OWNERSHIP

............................................................................................................................................24
A...........................................................................................................................Authorship
 ................................................................................................................................24
B. ..................................................................................................................... Work for Hire
................................................................................................................................25
C. ...................................................................................................................... Joint Authors
................................................................................................................................27
D............................................................................................................................. Summary
................................................................................................................................29
E. ............................................................................ Transfer: Divisibility and Requirements
................................................................................................................................29
F. ....................................................................................................Transfer: Scope of Grant
................................................................................................................................30
G.......................................................................................... Transfer: Beneficial Ownership
................................................................................................................................31

IV. .................................................................................................. DURATION AND RENEWAL

............................................................................................................................................32
A.............................................................................................................................. Duration
................................................................................................................................32
B. ..............................................................................................................................Renewal
................................................................................................................................33
C. ........................................................................................................................ Termination
................................................................................................................................36
D.........................................................................................................Termination Problems
................................................................................................................................38

V.............................................................................................................................. FORMALITIES
............................................................................................................................................41
A.................................................................................................................................. Notice
................................................................................................................................41
B. .................................................................................................... Registration and Deposit
................................................................................................................................44

VI. ............................................................................RIGHTS, LIMITATIONS, AND REMEDIES

............................................................................................................................................45
A.................................................................................................................. Rights (General)
................................................................................................................................45
B. ........................................................................................................ Right to Make Copies
................................................................................................................................45
C. ............................................................................................. Right to Make Phonorecords
................................................................................................................................50
D....................................................................................... Right to Make Derivative Copies
 ................................................................................................................................51
E. ...................................................................................................................... Moral Rights
................................................................................................................................53
F. ..............................................................................................................Right to Distribute
................................................................................................................................55
G............................................................................................... Right of Public Performance
................................................................................................................................56

VII. ................................................................................................................................... FAIR USE

............................................................................................................................................60
A......................................................................................................................... Introduction
................................................................................................................................60
B. ................................................................................................................................ Parody
................................................................................................................................64
C. ..................................................................................................................... Photocopying
................................................................................................................................65

VIII. ....................................................................................................... COMPUTER SOFTWARE

............................................................................................................................................67
A............................................................................................................................. Overview
................................................................................................................................67
B. ....................................................................................................................... Object Code
................................................................................................................................67
C. ........................................................................................................... Nonliteral Elements
................................................................................................................................69
D...................................................................................................................... User Interface
................................................................................................................................70
E. .................................................................................................................. Screen Displays
................................................................................................................................70
F. .............................................................................................................................. Fair Use
................................................................................................................................71
G..................................................................................................... Semiconductor Chip Act
................................................................................................................................72

IX. .................................................................................................................................. APPENDIX

............................................................................................................................................73